Search and Information Resources Administration
  Classification Operations
  presents

  M P E P

  Manual of Patent Examining Procedure

  The Revision 3 of 6th Edition
  (To Start the MPEP, double-click the mouse here.)
  U.S. Patent and Trademark Office,
  Office of Classification Support

  MPEP

  Cover Page

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

  Superintendent of Documents  Telephone: (202)512 - 2267

  Mail List Section

  Washington, D.C. 20402

 Inquiries relating to purchasing the Manual should be
directed to:

  Superintendent of Documents  Telephone: (202)512 - 1800

  United States Government Printing Office 

  Washington, D.C. 20402

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

  Commissioner of Patents and Trademarks  Telephone: 1 -
(800)972 - 6382

  Attention: Certification Branch  or (703)308 - 9726

  Washington, D.C. 20231

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

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

  U.S. Patent and Trademark Office  Telephone: (703)306 -
2600

  Office of Electronic Information Products and Services

  Washington, D.C. 20231

 Employees of the Patent and Trademark Office should direct
their requests for the Manual, replacement pages, notices,
and revisions to the Patent Academy.  Telephone: (703)308 -
9660

  Additions to the text of the Manual are indicated by
arrows (><) inserted in the text. Deletions are indicated by
a single asterisk (*) where a single word was deleted and by
two asterisks (**) where more than one word was deleted. The
use of three or five asterisks in the body of the laws and
rules indicates a portion of the law or rule which was not
reproduced.

 First Edition, November 1949

 Second Edition, November 1953

 Third Edition, November 1961

 Fourth Edition, June 1979

 Fifth Edition, August 1983

 Sixth Edition, January 1995

  Revision 1, September 1995

  Revision 2, July 1996
  Revision 3, July 1997

  Foreword

 This Manual is published to provide Patent and Trademark
Office patent examiners, applicants, attorneys, agents, and
representatives of applicants with a reference work on the
practices and procedures relative to the prosecution of
patent applications before the Patent and Trademark Office.

It contains instructions to examiners, as well as other
material in the nature of information and interpretation,
and outlines the current procedures which the examiners are
required or authorized to follow in appropriate cases in the
normal examination of a patent application. The Manual does
not have the force of law or the force of the Patent Rules
of Practice in Title 37, Code of Federal Regulations.

 A separate manual entitled "Trademark Manual of Examining
Procedure" is published by the Patent and Trademark Office
as a reference work for trademark cases.

 Examiners will be governed by the applicable statues, the
Rules of Practice, decisions, and orders and instructions
issued by the Commissioner and the Assistant Commissioners.
Orders and Notices still in force which relate to the
subject matter included in this Manual are incorporated in
the text. Orders and Notices, or portions thereof, relating
to the examiners' duties and functions which have been
omitted or not incorporated in the text may be considered
obsolete. Interference procedure not directly involving the
Primary Examiner are not included in this Manual and,
therefore, Orders and Notices relating thereto remain in
force.

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

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

 **>Box MPEP
  Assistant Commissioner for Patents

 TABLE OF CONTENTS

  Foreword

  Introduction. . .  
  1

  100  Secrecy, Access, National Security, and Foreign
  Filing  . . 
  100 - 1

  200  Types, Cross - Noting, and Status of Application 
  200 - 1

  300  Ownership and Assignment  . . 
  300 - 1

  400  Representative of Inventor or Owner  . . 
  400 - 1

  500  Receipt and Handling of Mail and Papers  . . 
  500 - 1

  600  Parts, Form, and Content of Application  . . 
  600 - 1

  700  Examination of Applications  . . 

  700 - 1

  800  Restriction in Applications Filed Under 35 U.S.C.
  111; Double Patenting  . . 
  800 - 1

  900  Prior Art, Classification, Search  . . 
  900 - 1

  1000  Matters Decided by Various Patent and Trademark
  Office Officials  . . 
  1000 - 1

  1100  Statutory Invention Registration (SIR)  . . 
  1100 - 1

  1200  Appeal  . . 
  1200 - 1

  1300  Allowance and Issue  . . 
  1300 - 1

  1400  Correction of Patents  . . 
  1400 - 1

  1500  Design Patents  . . 
  1500 - 1

  1600  Plant Patents  . . 
  1600 - 1

  1700  Miscellaneous  . . 
  1700 - 1

  1800  Patent Cooperation Treaty  . . 
  1800 - 1

  1900  Protest  . . 
  1900 - 1

  2000  Duty of Disclosure  . . 
  2000 - 1

  2100  Patentability  . . 
  2100 - 1

  2200  Citation of Prior Art and Reexamination of Patents 
  2200 - 1

  2300  Interference Proceedings Under Public Law 98 - 622 
  2300 - 1

  2400  Biotechnology  . . 
  2400 - 1

  2500  Maintenance Fees  . . 
  2500 - 1

  Appendix I  . . 
  Partial List of Trademarks  . .  A
  - 1

  Appendix II  . . 
  List of Decisions Cited  . .  A
  - 5

  Appendix L  . . 
  Patent Laws  . .  L
  - 1

  Appendix R  . . 
  Patent Rules  . .  R
  - 1

  Appendix T  . . 
  Patent Cooperation Treaty  . .  T
  - 1

  Appendix AI  . . 
  PCT Administrative Instructions Under the PCT  . 
  AI - 1

  Appendix P  . . 
  Paris Convention for the Protection of Industrial
  Property  . .  P
  - 1

  Index  . .  I
  - 1

  Introduction

  The Constitution of the United States provides:

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

  Pursuant to the provision of the Constitution, Congress
has over the years passed a number of statutes under which
the Patent and Trademark Office is organized and our patent
system is established. The provisions of the statutes can in
no way be changed or waived by the Patent and Trademark
Office.

  Prior to January 1, 1953, the law relating to patents
consisted of various sections of the Revised Statutes of
1874, derived from the Patent Act of 1870 and numerous
amendatory and additional acts.

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

 35 U.S.C. 1.  Establishment.

  The Patent and Trademark Office shall continue an office
in  the  Department  of  Commerce,  where  records,  books,
drawings,  specifications,  and  other  papers  and  things
pertaining to patents and to trademark registrations shall

be kept and preserved, except as otherwise provided by law.

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

 37 CFR 1.351.  Amendments to rules will be published.

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

 37 CFR 1.352.  Publication  of  notice  of  proposed
amendments.

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

  (b) Oral hearings may be held at the discretion of the
Commissioner.

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

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

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

under specified circumstances.

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

  Orders should be addressed and remittances made payable
to Superintendent of Documents, U. S. Government Printing
Office, Washington, D. C. 20402.

  Patent Official Gazette. The official journal of the
Patent and Trademark Office relating to patents. Issued each
Tuesday, simultaneously with the weekly issuance of patents,
it contains a selected figure of the drawings and a claim of
each patent granted, indexes of patents, list of patents
available for license or sale, and general information such
as  orders,  notices,  changes  in  rules,  and  changes  in
classification.

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

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

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

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

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

manual, revisions, and change notices.

  Patent Attorneys and Agents Registered to Practice
Before  the  U.S.  Patent  and  Trademark  Office.  An
alphabetically and a geographically arranged listing of
patent attorneys and agents registered to practice before
the U. S. Patent and Trademark Office.

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

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

  Basic Facts About Patents.  Brief nontechnical answers
to questions most frequently asked about Patents.

  A Guide to Filing a Patent Application. Brief technical
description of the required parts of a patent application.

  Patents. Copies of the specification and drawings of all
patents are available at three dollars each. When ordering,
identify the patent by the patent number, or give full name
of the inventor and approximate date of issuance of the
patent.

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

  Weekly Class Sheets. Lists showing classification of
each patent in the weekly issue of the  Patent Official
Gazette.
  For a current list of Patent and Trademark Office (PTO)
  publications and the sources from which these publications are
  available, contact the PTO General Information Services Division
  at 1 - 800 - 786 - 9199 or 703 - 308 - 4357.

 Chapter 100 Secrecy, Access, National Security, and Foreign
  Filing

  101  General
  102  Information as to Status of an Application
  103  Right of Public to Inspect Patent Files and Some
  Application Files
  104  Power to Inspect Application
  105  Disbarred Attorney Cannot Inspect
  106  Control of Inspection by Assignee
  106.01 Rights of Assignee of Part Interest
  110  Confidential Nature of International Applications
  115  Review of Applications for National Security and
  Property Rights Issues
  120  Secrecy Orders
  121  Handling of Applications and Other Papers Bearing

  Security Markings
  130  Examination of Secrecy Order Cases
  140  Foreign Filing Licenses
  150  Statements to DOE and NASA
  151  Content of the Statements

101  General [R - 3]

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

 Applications for patents shall be kept in confidence by the
Patent and Trademark Office and no information concerning
the same given without authority of the applicant or owner
unless necessary to carry out the provisions of any Act of
Congress  or  in  such  special  circumstances  as  may  be
determined by the Commissioner.

 18 U.S.C. 2071.  Concealment, removal, or mutilation
generally.

 (a)  Whoever willfully and unlawfully conceals, removes,
mutilates, obliterates, or destroys, or attempts to do so,
or, with intent to do so takes and carries away any record,
proceeding, map, book, paper, document, or other thing,
filed or deposited with any clerk or officer of any court of
the United States, or in any public office, or with any
judicial or public officer of the United States, shall be
fined not more than $2,000 or imprisoned not more than three
years, or both.

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

 37 CFR 1.14.  Patent application preserved in
*>confidence<.

  **>(a)(1) Patent applications are generally preserved in
confidence pursuant to 35 U.S.C. 122. No information will be
given concerning the filing, pendency, or subject matter of
any application for patent, and no access will be given to,
or copies furnished of, any application or papers relating
thereto, except as set forth in this section.

  (2) Status information, which includes information such
as  whether  the  application  is  pending,  abandoned,  or
patented, as well as the application number and filing date,
may be supplied:

  (i) Concerning an application or any application claiming
the benefit of the filing date of the application, if the
application has been identified by application number or
serial  number  and  filing  date  in  a  published  patent
document,

  (ii) Concerning the national stage application or any
application claiming the benefit of the filing date of a

published international application, if the United States of
America has been indicated as a Designated State in the
international application, or

  (iii) When it has been determined by the Commissioner to
be necessary for the proper conduct of business before the
Office.

  (3) Access to, or copies of, an application may be
provided:

  (i) When the application is open to the public as
provided in § 1.11(b),

  (ii) When written authority in that application from the
applicant, the assignee of the application, or the attorney
or agent of record has been granted,

  (iii) When it has been determined by the Commissioner to
be necessary for the proper conduct of business before the
Office, or

  (iv) To any person on written request, without notice to
the  applicant,  when  the  application  is  abandoned  and
available and is:

  (A) Referred to in a U.S. patent,

  (B)  Referred  to  in  an  application  open  to  public
inspection,

  (C) An application which claims the benefit of the filing
date of an application open to public inspection, or

  (D) An application in which the applicant has filed an
authorization to lay open the complete application to the
public.

  (b)  Complete  applications  (  §  1.51(a))  which  are
abandoned may be destroyed and hence may not be available
for access or copies as permitted by paragraph (a)(3)(iv) of
this section after 20 years from their filing date, except
those to which particular attention has been called and
which have been marked for preservation.<

  *****

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

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

the public.

  Interoffice mail must be sent in appropriate envelopes.

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

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

  Applications must not be placed in desk drawers or other
locations where they might be easily overlooked or are not
visible to authorized personnel.

  Whenever an application is removed from the operating
area having custody of the file, a charge on the PALM system
must be properly and promptly made.

  Papers arriving within the groups must be properly and
promptly placed within the appropriate files. If papers are
received  with  faulty  identifications,  this  should  be
corrected at once. If papers are received at a destination
for which they are not intended due to faulty identification
or routing, appropriate corrective action should be taken at
once to ensure the prompt receipt thereof at destination.
See MPEP § 508.01 and § 508.03.

  All Patent and Trademark Office employees should bear in
mind at all times the critical importance of ensuring the
confidentiality  and  accessibility  of  patent  application
files and related documents, and in addition to the specific
procedures referred to above, should take all appropriate
action to that end.

  Examiners, classifiers, and other Patent and Trademark
Office employees who assist public searchers by outlining or
indicating a field of search, should also bear in mind the
critical  importance  of  ensuring  the  confidentiality  of
information revealed by a searcher when requesting field of
search assistance. See MPEP § 1701. Statutory requirements
and curbs regarding the use of information obtained by an
employee through Government employment are imposed by 15
U.S.C. 15(b) and 18 U.S.C. 1905.

  Examiners, while holding interviews with attorneys and
applicants, should be careful to prevent exposures of files
and drawings of other applicants.

  Extreme care should be taken to prevent inadvertent
disclosure of the filing date or serial number of any
application filed by another party. This applies not only to
Office actions but also to notes (usually in pencil) in the
file wrapper.

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

  Normally no information concerning pending or abandoned
patent  applications  (except  reissue  applications  and
reexamination  proceedings)  may  be  given  to  the  public

without the authorization of the applicant, the assignee of
record, or the attorney or agent of record. See 35 U.S.C.
122 and 37 CFR 1.14. Other exceptions are specified in 37
CFR 1.14.

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

  The following procedure should be followed before any
information about a pending or abandoned patent application
is given over the telephone:

  (1)  Obtain the caller's full name, the application
number, and the caller's telephone number. Ask the caller if
there is an attorney or agent of record.

  (a)  If there is an attorney or agent of record,
ask for his or her registration number. If the registration
number is not known, ask for the name of the attorney or
agent of record. Inform caller that an attorney or agent of
record will be called after verification of his/her identity
and that information concerning the application will be
released to that attorney or agent.

  (b)  If there is no attorney or agent of record,
ask the caller why he or she is entitled to information
concerning the application. If the caller identifies himself
or herself as an applicant or an authorized representative
of the assignee of record, ask for the correspondence
address  of  record  and  inform  caller  that  his  or  her
association with the application must be verified before any
information concerning the application can be released and
that he or she will be called back. If the caller indicates
that he or she is not an applicant or an authorized
representative of the assignee of record **>then status
information may only be given pursuant to MPEP 102.<

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

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

  (b)  If the caller identified himself or herself as
an applicant or an authorized representative of the assignee
of record, the 2950 PALM screen should be used to verify the
correspondence address of record. The 2954 PALM screen
should be used to determine if there is an attorney or agent
of record. If there is an attorney or agent of record, their
telephone number can be obtained from the 3552 PALM screen.

  (3)  Then, return the call using the telephone
number as specified below.

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

  (b)  If  the  applicant  or  an  authorized
representative  of  the  assignee  of  record  requests
information, and there is no attorney or agent of record and
the correspondence address of record has been verified,
information concerning the application can be released to
the caller using the telephone number given by the caller.
If the caller's association with the application cannot be
verified, no information concerning the application will be
released. However, the caller should be informed that the
caller's association with the application could not be
verified.

 In handling an in - person request, ask the requester to
wait while verifying their identification as in (2) above.

102  Information as to Status of an Application [R - 3]

 **>37 CFR 1.14.  Patent applications preserved in
confidence.

  *****

 (a)(2) Status information, which includes information such
as  whether  the  application  is  pending,  abandoned,  or
patented, as well as the application number and filing date,
may be supplied:

  (i) Concerning an application or any application claiming
the benefit of the filing date of the application, if the
application has been identified by application number or
serial  number  and  filing  date  in  a  published  patent
document,

  (ii) Concerning the national stage application or any
application claiming the benefit of the filing date of a
published international application, if the United States of
America has been indicated as a Designated State in the
international application, or

  (iii) When it has been determined by the Commissioner to
be necessary for the proper conduct of business before the
Office.

  Status  information  of  an  application  means  only  the
following information:

  (1)  whether the application is pending, abandoned,
or patented;

  (2)  the application number and filing date; and

  (3)  whether one or more applications claim the
benefit of the filing date of the identified application,
and if there is such other application(s), the application
number(s),  filing  date(s)  and  whether  the  other
application(s) is (are) pending, abandoned or patented.

  A  requester  seeking  status  information  regarding  an
application should contact the File Information Unit at
(703) 308 - 2733. The File Information Unit will check the
relevant  Office  records  and  will  inform  the  requester
whether the application has issued as a patent, and if the
application has issued as a patent, the patent number, issue
date and classification. If the application has not issued
as a patent, but is pending or abandoned then the File
Information Unit should determine whether the requester is:

  (a) an inventor;

  (b) the attorney or agent of record in the application;

  (c) the assignee of record in the application;

  (d) an inventor or legal representative of an inventor
who has not executed an oath or declaration under 37 CFR
1.63 in an application which has been granted status under
37 CFR 1.47 (see MPEP § 409.03(i)); or

  (e) a person with written authority from (a), (b), (c),
or (d).

 If the requester is (a), (b), (c), (d), or (e), set forth
above, then the requester is entitled to status information.
If the requester is inquiring about whether a reply was
received or when an Office action can be expected, the
requester should be directed to call the Examining Group to
which the application is assigned. The assignment of an
application to a Group can be determined from the 2952 PALM
screen.

  If the requester is not (a), (b), (c), (d), or (e), set
forth above, and the application is (1) identified by
application number (or serial number and filing date) in a
published patent document, or (2) an application claiming
the benefit of the filing date of an application identified
by application number (or serial number and filing date) in
a  published  patent  document,  then  a  written  request
including a copy of a published patent document (United
States or foreign) which refers to the specific application
must be provided when requesting status information for the
application. If the published patent document is not in
English, then a translation of the pertinent part thereof
must also be included. The published patent document may be
presented in person to the File Information Unit or in
written correspondence to the Patent and Trademark Office,
for  example,  by  facsimile  transmission.  Any  written
correspondence must include a return address or facsimile
number. If the application is referred to by application
number or serial number and filing date in a published
patent document, pursuant to 37 CFR 1.14(a)(2)(i), the
requester  is  entitled  to  status  information  for  the
application.  The  2960  PALM  screen  should  be  used  to
determine the status of the application. If the requester
asks whether there are any applications on file which claim
the  benefit  of  the  filing  date  of  the  identified
application,  pursuant  to  37  CFR  1.14(a)(2)(i),  status
information (application number, filing date and whether the
application is pending, abandoned or patented) for the
applications claiming benefit of the identified application
may be given to the requester as well. The 2962 PALM screen
should be used to determine the application number and

filing date of any applications claiming the benefit of the
filing date of the identified application. The requester
should be informed of the national applications listed in
the "child" section of the screen. If the child application
is not shown to have been patented on the 2962 PALM screen,
the 2960 PALM transaction should be used to determine
whether  the  application  is  pending  or  abandoned.
Alternatively, the 2963 PALM transaction may be used with
the patent number for continuity data for the patent. Other
information contained on the screen, such as whether it is a
C - I-P, continuation or divisional application, the date of
abandonment  of  the  application  and  issue  date  may  be
confidential information and should not be communicated. As
to the extent of the chain of applications for which status
information  is  available,  the  rule  applies  only  to
subsequent and not prior applications.

  Furthermore, if the requester is not (a), (b), (c), (d),
or (e), set forth above, but the application is a national
stage application or any application claiming the benefit of
the filing date of a published international application and
the United States of America has been indicated as a
Designated State in the international application, pursuant
to 37 CFR 1.14(a)(2)(ii), the requester is entitled to
status information for the national stage application as
well as any application claiming the benefit of the filing
date of the published international application. A copy of
the published international application must be supplied
with the status request. If the requester asks whether a
national stage application has been filed, then the 3133
PALM screen should be used and the requester should be
informed of any national stage application indicated. If
status information is requested for any application claiming
the benefit of the filing date of the referenced published
international  application,  there  is  no  single  PALM
transaction for this request. The status request should be
forwarded to the PCT Help desk for a response to this
inquiry. Alternatively, inquiries relating to applications
claiming the benefit of the filing date of a published
international application may be directed to the PCT Help
desk. Only the serial number and filing date, or application
number, as well as whether it is pending, abandoned or
patented may be given for the national stage application and
for any applications claiming the benefit of the filing date
of the referenced published international application. Other
information contained on the screen, such as whether it is a
C-I-P, continuation or divisional application, the date of
abandonment  of  the  application  and  issue  date  may  be
confidential information and should not be communicated.<

  STATUS LOCATION INFORMATION FOR OFFICE PERSONNEL

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

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

103  Right of Public to Inspect Patent Files and Some

Application Files [R - 3]

 37 CFR 1.11.  Files open to the public.

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

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

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

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

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

  > APPLICATIONS AVAILABLE UPON REQUEST

 37 CFR 1.14 Patent applications preserved in confidence.

  *****

 (a)(3) Access to, or copies of, an application may be
provided:

  (i) When the application is open to the public as
provided in § 1.11(b),

  (ii) When written authority in that application from the

applicant, the assignee of the application, or the attorney
or agent of record has been granted,

  (iii) When it has been determined by the Commissioner to
be necessary for the proper conduct of business before the
Office, or

  (iv) To any person on written request, without notice to
the  applicant,  when  the  application  is  abandoned  and
available and is:

  (A) Referred to in a U.S. patent,

  (B)  Referred  to  in  an  application  open  to  public
inspection,

  (C) An application which claims the benefit of the filing
date of an application open to public inspection, or

  (D) An application in which the applicant has filed an
authorization to lay open the complete application to the
public.

 Certain applications are available to the public without a
petition for access. ABANDONED applications meeting the
requirements of 37 CFR 1.14(a)(3)(iv) and any application
that is open to the public under 37 CFR 1.11 may be obtained
by any person upon written request to the File Information
Unit  without  the  specific  written  authority  of  the
applicant,  assignee,  attorney  or  agent  of  record  or
Commissioner.  The  following  abandoned  applications  are
available from the file information unit. (1) An ABANDONED
application referred to in the application which issued as a
patent; (2) a pending File Wrapper Continuation application
(FWC) filed under 37 CFR 1.62 of an abandoned application
that meets the requirements of 37 CFR 1.14(a)(3)(iv). Under
37 CFR 1.62(f), where access is permitted to an application
within the file wrapper of a FWC application, the applicant
has waived the right to keep all other applications in the
same file wrapper in confidence.

  37 CFR 1.14(a)(3)(iv)(B) relates only to United States
applications that are open to public inspection. Published
applications, such as PCT applications, are not applications
that  are  open  to  public  inspection  under  37  CFR
1.14(a)(3)(iv)(B).  Accordingly,  if  the  application  is
mentioned in a published PCT application as a priority
document, access is not available under 37 CFR 1.14(a)(3).

  An ABANDONED application referenced in a U.S. patent or
referenced in a U.S. application that is open to public
inspection may be ordered for inspection by any member of
the public through the File Information Unit. Furthermore,
an abandoned U.S. application which claims the filing date
of a U.S. application open to public inspection may also be
ordered by any member of the public through the File
Information Unit. Orders for files stored in repositories
within the Crystal City (Arlington, Virginia) area are
normally filled within 4 to 8 hours. Orders for files stored
at the Federal Records Center in Suitland, Maryland, are
normally filled within 4 to 5 days. An abandoned file
received by a member of the public must be returned to the
charge counter in the File Information Unit before closing
the same day it is received. If the abandoned application is
contained within a pending FWC application, the requester

will generally be routed to the appropriate examining group
to inquire as to the availability of the pending FWC
application. If the pending FWC application is available,
then it will be forwarded to the File Information Unit for
the requester to pick - up.

  Furthermore, copies of a patent application - as - filed
and the contents of a patent application file wrapper may be
ordered from Certification Division with a facsimile request
and payment of the appropriate fee under 37 CFR 1.19(b) by
PTO Deposit Account, MasterCard or Visa by any person having
a right to access to the originally filed application or
patent. Regular service requests for an application - as -
filed are processed in about 17 days, expedited requests for
an application as filed are processed in about 7 days.
Copies of a patent related file wrapper are generally made
in about 25 days.

  The Office does not provide for access to non - United
States applications.

  PETITION FOR ACCESS<

 37 CFR 1.14.  Patent applications preserved in
*>confidence<.

  *****

  **>(e) Any request by a member of the public seeking
access  to,  or  copies  of,  any  pending  or  abandoned
application preserved in confidence pursuant to paragraph
(a) of this section, or any papers relating thereto, must:

  (1) Be in the form of a petition and be accompanied by
the petition fee set forth in § 1.17(i); or

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

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

 **

  Any interested party may file a petition, accompanied by
the petition fee, to the Commissioner for access to an
application.  Inasmuch  as  the  Post  Office  address  is
necessary for the complete identification of the petitioner,
it should always be included complete with Zip Code number.
Petitions for access are handled in the Special Program Law
Office>, unless the application is involved an interference.
See MPEP 1002.02<.

  The petition may be filed either with proof of service
of copy upon the applicant, assignee of record, or attorney
or agent of record in the application to which access is
sought, or the petition may be filed in duplicate, in which
case the duplicate copy will be sent by the Office to the
applicant, assignee of record, or attorney or agent of
record  in  the  application  (hereinafter  "applicant").  A
separate petition, with fee, should be filed for each
application to which access is desired. Each petition should
show not only why access is desired, but also why petitioner

believes he or she is entitled to access. The applicant will
normally be given a limited period such as 3 weeks within
which to state any objection to the granting of the petition
for access and reasons why it should by denied. If applicant
states that he or she has no objection to the requested
access, the petition will be granted. If objection is raised
or applicant does not respond, the petition will be decided
on the record. A determination will be made whether "special
circumstances" are present which warrant a grant of access
under 35 U.S.C. 122. See below when the application is the
basis of a claim for benefit of an earlier filing date under
35  U.S.C.  120  or  the  application  is  incorporated  by
reference  in  a  United  States  patent.  >"Special
circumstances" could be found where an applicant has relied
upon his or her application as a means to interfere with a
competitor's business or customers. See In re Crossman,
Kenrick and Le Mieux , 187 USPQ 367 (PTO Solicitor 1975)  ;
In re Trimless Cabinets , 128 USPQ 95 (Comm'r Pat. 1960);
Ex Parte Bonnie - B Inc. , 1923 C.D. 42,43, 313 O.G. 453
(Comm'r Pat. 1922). Furthermore, "special circumstances"
could be found where an attorney of record in an application
in which a provisional double patenting rejection is made
does not have power of attorney in the copending application
having a common assignee or inventor. However, a more
expeditious means of obtaining access would be getting a
power to inspect from an assignee or inventor. See MPEP §
104 and § 106.01.<

  ACCESS WHERE PATENT CLAIMS 35 U.S.C. 120 BENEFIT

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

  ACCESS TO PROVISIONAL APPLICATIONS

  In provisional applications, access or certified copies
will only be given to parties with written authority from a
named inventor, the assignee of record, or the attorney or
agent of record. Since provisional applications do not
require an oath or declaration, there may be no power of
attorney in the application. If the person requesting a
certified copy is not a named inventor, assignee of record,
or an attorney or agent of record, the requested certified
copy will be supplied to the correspondence address of the
provisional application. >Provisional applications are also
available in the same manner as any other application. For
example, an application that is relied upon for priority in
a U.S. Patent and is abandoned is available under 37 CFR
1.14(a)(3)(iv)(A).<

  ACCESS WHERE APPLICATION INCORPORATED BY REFERENCE IN A
  UNITED STATES PATENT

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

  APPLICATION AT BOARD OF PATENT APPEALS AND INTERFERENCES

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

  PUBLISHED DOCUMENTS

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

  REISSUE APPLICATIONS

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

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

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

  (1)  The filing of reissue applications will be
announced in the Official Gazette and will include certain
identifying data as specified in 37 CFR 1.11(b). Any member
of the general public may request access to a particular
reissue application filed after March 1, 1977. Since no
record of such request is intended to be kept, an oral
request  will  suffice.  In  the  **>File  Information  Unit
(Record Room)<, only the regular application charge card
need be completed and submitted. The charge card will not be
made part of a pending or abandoned reissue application.

  (2)  The pending reissue application files will be

maintained in the examining groups and inspection thereof
will be supervised by group personnel. Although no general
limit is placed on the amount of time spent reviewing the
files, the Office may impose limitations, if necessary. No
access will be permitted while the application is actively
being processed.

  (3)  Where the reissue application has left the
examining group for administrative processing, requests for
access should be directed to the appropriate supervisory
personnel in the division or branch where the application is
currently located.

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

  REQUEST FOR REEXAMINATION

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

  >DECISIONS OF PATENT AND TRADEMARK OFFICE<

 37 CFR 1.14.  Patent applications preserved in
*>confidence<.

 **

  *****

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

  *****

 **

  37 CFR 1.14(d) makes explicit the conditions under which
significant decisions of the Patent and Trademark Office
will be made available to the public, and includes reference
to  decisions  of  the  Board  of  Patent  Appeals  and
Interferences  and  the  Commissioner.  The  section  is
applicable  to  decisions  deemed  by  the  Commissioner  to
involve an interpretation of patent laws or regulation that
would  be  of  significant  precedent  value,  where  such
decisions are contained in either pending or abandoned
applications or in interference files not otherwise open to
the public. It is applicable whether or not the decision is
a final decision of the Patent and Trademark Office.

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

 37 CFR 1.15.  Requests for identifiable records.

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

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

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

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

  A number of inquiries have been received from the patent
bar and other interested persons relating to discovery
practice in interferences before the Board of Patent Appeals
and Interferences. The inquiries indicate a need for making
available to the public nonfinal Board opinions, including
concurring and dissenting opinions, as well as orders, made
in the adjudication of discovery matters before the Board.
While nonfinal opinions need not be made available to the

public [5 U.S.C. 552(a)(2)], in order to satisfy the need,
copies of non - final opinions issued by the Board will be
kept in a file in the Service Branch of the Board in the
U.S. Patent and Trademark Office (Crystal Gateway 2, 1225
Jefferson Davis Highway, Room 10C01, Arlington, Virginia).
Opinions in the file may be reviewed by the public during
normal business hours (8:30 A.M. to 5:00 P.M.). Copies of
opinions may be made by the public on reproducing equipment,
or copies may be ordered at the cost set forth in 37 CFR
1.19(b)(3).

  In view of the provisions of 35 U.S.C. 122 and 37 CFR
1.14(a)>(3)(ii)<, a consent will be obtained by the Office
from all parties in an interference before an opinion issued
in connection with the interference is placed in the file if
the interference file is not otherwise available to the
public. Preliminary indications are that the parties and
their counsel generally consent.

  In  order  to  obtain  optimum  dissemination  of  the
information contained in the file, opinions placed therein
will be indexed according to specific topics. Copies of the
index will be updated from time to time as the need occurs.
Specific questions relating to the index and file may be
directed to the Patent Interference Examiners.

  The initial index is as follows:

  INDEX

  1.00  . .  Discovery in
  general [37 CFR 1.673]

  1.10  . .  Requests and
  service under 37 CFR 1.673

  1.20  . .  Requests under
  37 CFR 1.687(b)

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

  1.31  . .  Related to
  derivation

  1.32  . .  Related to
  abandonment, suppression, and concealment

  1.33  . .  Related to
  inequitable conduct

  1.34  . .  Other

  1.40  . .  Motions under
  37 CFR 1.673(c)

104  Power to Inspect Application [R - 3]

  No  person  but  the  applicant  (any  one  of  joint
applicants), applicant's legal representative, the assignee
whose assignment, is of record, or the attorney, agent or
associate attorney, or agent of record will be permitted to
have access to the file of any pending application, except
as provided for under 37 CFR 1.11(b) >, 37 CFR 1.62(f),< or
under the interference rules, unless written authority from

one  of  the  above  indicated  parties,  identifying  the
application to be inspected and the name of the person
authorized to have access, is made of record, or upon the
written order of the Commissioner, which will also become a
part of the record of the case.

  **

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

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

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

  A "power to inspect" is, in effect, the same as a "power
to inspect and make copies."

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

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

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

 ACCESS TO PATENT APPLICATIONS PROVISIONAL AND
  NONPROVISIONAL AND INTERFERENCE FILES

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

  (1)  Access, as provided for in the Rules of

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

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

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

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

105  Disbarred Attorney Cannot Inspect

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

106  Control of Inspection by Assignee

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

106.01  Rights of Assignee of Part Interest [R - 3]

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

exclusive right is entitled to inspect the application. >See
also MPEP § 402.10 for applications accorded status under 37
CFR 1.47.<

110  Confidential Nature of International Applications
[R - 3]

 PCT Article 30.  Confidential Nature of the International
Application.

 (1)(a)  Subject to the provisions of subparagraph (b),
the International Bureau and the International Searching
Authorities  shall  not  allow  access  by  any  person  or
authority  to  the  international  application  before  the
international  publication  of  that  application,  unless
requested or authorized by the applicant.

 (b)  The provisions of subparagraph (a) shall not apply
to any transmittal to the competent International Searching
Authority, to transmittals provided for under Article 13,
and to communications provided for under Article 20.

 (2)(a)  No national Office shall allow access to the
international application by third parties, unless requested
or authorized by the applicant, before the earliest of the
following dates:

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

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

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

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

 (c)  The  provisions  of  subparagraph  (a)  shall  not
prevent any designated Office from allowing access to the
international application for the purposes of the judicial
authorities.

 (3)  The provisions of paragraph (2)(a) shall apply to
any receiving Office except as far as transmittals provided
for under Article 12(1) are concerned.

 (4)  For the purposes of this Article, the term "
access" covers any means by which third parties may acquire
cognizance, including individual communication and general
publication, provided, however, that no national Office
shall generally publish an international application or its
translation before the international publication or, if
international  publication  has  not  taken  place  by  the
expiration of 20 months from the priority date, before the
expiration of 20 months from the said priority date.

 35 U.S.C. 368.  Secrecy of certain inventions; filing

international applications in foreign countries.

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

 (b)  In accordance with article 27(8) of the treaty, the
filing of an international application in a country other
than the United States on the invention made in this country
shall  be  considered  to  constitute  the  filing  of  an
application in a foreign country within the meaning of
chapter 17 of this title, whether or not the United States
is designated in that international application.

 (c)  If a license to file in a foreign country is
refused or if an international application is ordered to be
kept secret and a permit refused, the Patent and Trademark
Office when acting as a Receiving Office, International
Searching Authority, or International Preliminary Examining
Authority, may not disclose the contents of such application
to anyone not authorized to receive such disclosure.

 **

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

115  Review of Applications for National Security and
Property Rights Issues

  Secrecy Orders

 37 CFR 5.1.  Defense inspection of certain
applications.

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

 (b)  In accordance with the provisions of 35 U.S.C. 181,
patent applications containing subject matter the disclosure
of which might be detrimental to the national security are
made  available  for  inspection  by  defense  agencies  as
specified  in  said  section.  Only  applications  obviously
relating  to  national  security,  and  applications  within
fields indicated to the Patent and Trademark Office by the
defense agencies as so related, are made available. The
inspection will be made only by responsible representatives
authorized  by  the  agency  to  review  applications.  Such
representatives are required to sign a dated acknowledgement
of access accepting the condition that information obtained
from the inspection will be used for no purpose other than

the administration of 35 U.S.C. 181 - 188. Copies of
applications may be made available to such representatives
for inspection outside the Patent and Trademark Office under
conditions  assuring  that  the  confidentiality  of  the
applications will be maintained, including the conditions
that: (1) all copies will be returned to the Patent and
Trademark Office promptly if no secrecy imposed, or upon
rescission of such order if one is imposed, and (2) no
additional copies will be made by the defense agencies. A
record of the removal and return of copies made available
for defense inspection will be maintained by the Patent and
Trademark Office. Applications relating to atomic energy are
made available to the Department of Energy as specified in §
1.14 of this chapter.

 All applications filed in the Patent and Trademark Office
are screened for subject matter the disclosure of which
might impact the national security based on information
provided  by  the  Armed  Services  Patent  Advisory  Board
(ASPAB), the Department of Energy (DOE), and the National
Aeronautics  and  Space  Administration  (NASA).  Such
applications  are  referred  to  the  appropriate  agencies.
Authority for this referral can be found in 35 U.S.C. 181
which provides, in part:

 Whenever the publication or disclosure of an invention by
the granting of a patent, in which the Government does not
have a property interest, might, in the opinion of the
Commissioner, be detrimental to the national security, he
shall  make  the  application  for  patent  in  which  such
invention is disclosed available for inspection to the
Atomic Energy Commission, the Secretary of Defense, and the
chief officer of any other department or agency of the
Government designated by the President as a defense agency
of the United States.

 If the agency concludes that disclosure of the invention
would  be  detrimental  to  the  national  security,  the
Commissioner is notified. The Commissioner then issues a
Secrecy  Order and withholds the grant of a patent for such
period as the national interest requires.

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

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

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

  Some applications have a label (Form PTO - 1305) on the
upper right hand corner of the face of the file wrapper. A
Notice of Allowance and Issue Fee Due may not be mailed for
those applications if the "REV" on the label is circled
(although the Examiner may be given credit for a disposal).
Such cases must be forwarded to Licensing and Review to have
the security review completed before the Notice of Allowance
can be mailed. Cases in which only "DOE" and/or "NASA" is
circled should be counted for allowance and the notice of

allowance mailed before being sent to Licensing and Review
for processing under the Atomic Energy and Space Acts.

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

120  Secrecy Orders [R - 3]

 37 CFR 5.2.  Secrecy order.

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

 (b)  The secrecy order is directed to the applicant, his
successors,  any  and  all  assignees,  and  their  legal
representatives; hereinafter designated as principals.

 (c)  A copy of the secrecy order will be forwarded to
each principal of record in the application and will be
accompanied  by  a  receipt,  identifying  the  particular
principal, to be signed and returned.

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

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

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

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

 (b)  An interference will not be declared involving
national applications under secrecy order. However, if an
applicant whose application is under secrecy order seeks to
provoke an interference with an issued patent, a notice of
that fact will be placed in the file wrapper of the patent.
(See § 1.607(d)).

 (c)  When the national application is found to be in

condition for allowance except for the secrecy order the
applicant and the agency which caused the secrecy order to
be issued will be notified. This notice (which is not a
notice of allowance under § 1.311 of this chapter) does not
require response by the applicant and places the national
application in a condition of suspension until the secrecy
order is removed. When the secrecy order is removed the
Patent and Trademark Office will issue a notice of allowance
under § 1.311 of this chapter, or take such other action as
may then be warranted.

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

 37 CFR 5.4.  Petition for rescission of secrecy order.

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

 (b)  The petition must recite any and all facts that
purport to render the order ineffectual or futile if this is
the basis of the petition. When prior publications or
patents are alleged the petition must give complete data as
to such publications or patents and should be accompanied by
copies thereof.

 (c)  The petition must identify any contract between the
Government and any of the principals, under which the
subject matter of the application or any significant part
thereof was developed, or to which the subject matter is
otherwise  related.  If  there  is  no  such  contract,  the
petition must so state.

 (d)  Unless based upon facts of public record, the
petition must be verified.

 37 CFR 5.5.  Permit to disclose or modification of
secrecy order.

 (a)  Consent to disclosure, or to the filing of an
application abroad, as provided in 35 U.S.C. 182, shall be
made by a "permit" or "modification" of the secrecy order.

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

issued.

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

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

 (e)  The permit or modification may contain conditions
and limitations.

 37 CFR 5.6.  General and group permits.

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

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

 37 CFR 5.7.  Compensation.

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

 37 CFR 5.8.  Appeal to Secretary.

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

  SECRECY ORDER TYPES

 Three types of Secrecy Orders, each of a different scope,
are issued as follows:

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

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

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

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

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

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

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

  RELATED SUBJECT MATTER

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

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

  CORRESPONDENCE

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

  Subject matter under Secrecy Order must be safeguarded
under conditions that will provide adequate protection and
prevent access by unauthorized persons.

  When applicants desire to change the Power of Attorney
in an application under Secrecy Order, the name, date of
birth and Social Security number of the new attorney(s)
should be included in the change notice so that Licensing
and  Review  may  conduct  the  necessary  access  security
clearance checks.

  Applicants should also ensure that the correspondence
address (37 CFR 1.33) of any application under Secrecy Order
represents a location suitable for the receipt of security
information.

  PCT APPLICATIONS

  If the Secrecy Order is applied to an international
application, the application will not be forwarded to the
International Bureau as long as the Secrecy Order remains in
effect If the Secrecy Order remains in effect at the end of
the time limit under PCT Rule 22.3, the international
application will be considered withdrawn (abandoned) because
the Record Copy of the international application was not
received in time by the International Bureau (37 CFR 5.3(d),
PCT Article 12(3), and PCT Rule 22.3). If the United States

of America has been designated, however, it is possible to
save the U.S. filing date, by fulfilling the requirements of
35 U.S.C. 371(c) prior to the withdrawal.

  CHANGES IN SECRECY ORDERS

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

  IMPROPER OR INADVERTENT DISCLOSURE

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

  EXPIRATION

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

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

121  Handling of Applications and Other Papers Bearing
Security Markings

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

  Papers marked as prescribed in the Executive Order, and
showing that such marking is applied by, or at the direction
of,  a  government  agency,  are  accepted  in  patent
applications. All applications or papers in the Patent and
Trademark  Office  bearing  words  such  as  "Secret"  or
"Confidential" must be promptly referred to Group 220 for
clarification or security treatment. Under no circumstances
can any such application, drawing, exhibit, or other paper
be placed in public records, such as the patented files,
until  all  security  markings  have  been  considered  and
declassified or otherwise explained.

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

130  Examination of Secrecy Order Cases [R - 2]

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

  Secrecy Order cases are examined for patentability as in
other cases, but may not be passed to issue; nor will an
interference  be  declared  where  one  or  more  of  the
conflicting cases is classified or under Secrecy Order. See
MPEP § 2309.06. When requested to do so, by examiners
outside  *  Group*>2200<,  examiners  in  Group*>2200<  will
conduct the interference searches of those interference
files containing briefcards from classified or Secrecy Order
cases.

  In case of a final rejection, while such action must be
properly responded to, and an appeal, if filed, must be
completed by the applicant to prevent abandonment, such
appeal will not be set for hearing by the Board of Patent
Appeals and Interference until the Secrecy Order is removed,
unless specifically ordered by the Commissioner.

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

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

  Sometimes applications bearing security markings but no
Secrecy Order come up for examination. In this case, the
examiner should require the applicant to seek imposition of
a Secrecy Order or authority to cancel the markings. This
should preferably be done with the first action and, in any
event, prior to final disposition of the application.

140  Foreign Filing Licenses [R - 3]

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

 Except when authorized by a license obtained from the
Commissioner a person shall not file or cause or authorize
to be filed in any foreign country prior to six months after
filing in the United States an application for patent or for
the registration of a utility model, industrial design, or
model in respect of an invention made in this country. A
license shall not be granted with respect to an invention
subject to an order issued by the Commissioner pursuant to
section 181 of this title without the concurrence of the
head of the departments and the chief officers of the
agencies who caused the order to be issued. The license may
be granted retroactively where an application has been filed
abroad through error and without deceptive intent and the
application does not disclose an invention within the scope
of section 181 of this title.

 The term "application" when used in this chapter includes
applications  and  any  modifications,  amendments,  or
supplements thereto, or divisions thereof.

  The  scope  of  a  license  shall  permit  subsequent
modifications,  amendments,  and  supplements  containing
additional subject matter if the application upon which the
request for the license is based is not, or was not,
required to be made available for inspection under section
181 of this title and if such modifications, amendments, and
supplements  do  not  change  the  general  nature  of  the
invention in a manner which would require such application
to be made available for inspection under such section 181.
In any case in which a license is not, or was not, required
in order to file an application in any foreign country, such
subsequent modifications, amendments, and supplements may be
made, without a license, to the application filed in the
foreign country if the United States application was not
required to be made available for inspection under section
181 and if such modifications, amendments, and supplements
do not, or did not, change the general nature of the
invention in a manner which would require the United States
application to have been made available for inspection under
such section 181.

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

 Notwithstanding any other provisions of law any person, and
his successors, assigns, or legal representatives, shall not
receive a United States patent for an invention if that
person, or his successors, assigns, or legal representatives
shall, without procuring the license prescribed in section
184 of this title, have made, or consented to or assisted
another's making, application in a foreign country for a
patent  or  for  the  registration  of  a  utility  model,
industrial design, or model in respect of the invention. A
United  States  patent  issued  to  such  a  person,  his
successors,  assigns,  or  legal  representatives  shall  be

invalid, unless the failure to procure such license was
through error and without deceptive intent, and the patent
does not disclose subject matter within the scope of section
181 of this title.

 35 U.S.C. 186.  Penalty

 Whoever, during the period or periods of time an invention
has been ordered to be kept secret and the grant of a patent
thereon withheld pursuant to section 181 of this title,
shall,  with  knowledge  of  such  order  and  without  due
authorization, willfully publish or disclose or authorize or
cause  to  be  published  or  disclosed  the  invention,  or
material  information  with  respect  thereto,  or  whoever
willfully, in violation of the provisions of section 184 of
this title, shall file or cause or authorize to be filed in
any foreign country an application for patent or for the
registration of a utility model, industrial design, or model
in respect of any invention made in the United States,
shall, upon conviction, be fined not more than $10,000 or
imprisoned for not more than two years, or both.

 The amendments made to 35 U.S.C. 184, 185, and 186 by
Public Law 100 - 418 apply to all United States patents
granted before, on, or after August 23, 1988, to all
applications for United States patents pending on or filed
after August 23, 1988, and to all licenses under 35 U.S.C.
184 granted before, on, or after August 23, 1988.

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

 "Sec. 9101. INCREASED EFFECTIVENESS OF PATENT LAW

  *****

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

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

 (2)  The amendments made by this section shall not
affect any final decision made by a court or the Patent and
Trademark Office before the date of enactment of this
section with respect to a patent or application for patent,
if no appeal from such decision is pending and the time for
filing an appeal has expired.

 (3)  No United States patent granted before the date of
enactment of this section shall abridge or affect the right
of any person or his successors in business who made,
purchased,  or  used,  prior  to  such  date  of  enactment,
anything protected by the patent, to continue the use of, or
sell to others to be used or sold, the specific thing so
made, purchased, or used, if the patent claims were invalid
or otherwise unenforceable on a ground obviated by this
section and the person made, purchased, or used the specific

thing  in  reasonable  reliance  on  such  invalidity  or
unenforceability. If a person reasonably relied on such
invalidity or unenforceability, the court before which such
matter  is  in  question  may  provide  for  the  continued
manufacture, use, or sale of the thing made, purchased, or
used as specified, or for the manufacture, use, or sale of
which substantial preparation was made before the date of
enactment of this section, and it may also provide for the
continued practice of any process practiced, or for the
practice of which substantial preparation was made, prior to
the date of enactment of this section, to the extent and
under such terms as the court deems equitable for the
protection of investments made or business commenced before
such date of enactment.

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

 (A)  under any patent before the court, or

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

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

 The prohibitions and penalties of this chapter shall not
apply to any officer or agent of the United States acting
within the scope of his authority, nor to any person acting
upon his written instructions or permission.

 35 U.S.C. 188.  Rules and regulations, delegation of
power

 The Atomic Energy Commission, the Secretary of a defense
department, the chief officer of any department or agency of
the Government designated by the President as a defense
agency of the United States, and the Secretary of Commerce,
may separately issue rules and regulations to enable the
respective department or agency to carry out the provisions
of this chapter, and may delegate any power conferred by
this chapter.

 37 CFR 5.11.  License for filing in a foreign country
an application on an invention made in the United States or
for transmitting an international application.

 (a)  A license from the Commissioner of Patents and
Trademarks under 35 U.S.C. 184 is required before filing any
application  for  patent  including  any  modifications,
amendments, or supplements thereto or divisions thereof or
for the registration of a utility model, industrial design,
or model, in a foreign patent office or any foreign patent
agency or any international agency other than the United
States Receiving Office, if the invention was made in the
United States and:

 (1)  An application on the invention has been filed in
the United States less than six months prior to the date on

which the application is to be filed, or

 (2)  No application on the invention has been filed in
the United States.

 (b)  The license from the Commissioner of Patents and
Trademarks referred to in paragraph (a) would also authorize
the export of technical data abroad for purposes related for
purposes relating to the preparation, filing or possible
filing and prosecution of a foreign patent application
without separately complying with the regulations contained
in 22 CFR Parts 121 - 130 (International Traffic in Arms
Regulations of the Department of State), 15 CFR Part 379
(Regulations  of  the  Office  of  Export  Administration,
International Trade Administration, Department of Commerce)
and 10 CFR Part 810 (Foreign Atomic Energy Programs of the
Department of Energy).

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

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

 (e)  No license pursuant to paragraph (a) of this
section is required:

 (1)  If the invention was not made in the United States,
or

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

 (3)  For  subsequent  modifications,  amendments  and
supplements containing additional subject matter to, or
divisions of, a foreign patent application if:

 (i)  a license is not, or was not, required under
paragraph (e)(2) of this section for the foreign patent
application;

 (ii)  the corresponding United States application was not
required to be made available for inspection under 35 U.S.C.
181 and § 5.1; and

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

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

 37 CFR 5.12.  Petition for license.

 (a)  Filing of an application for patent for inventions
made in the United States will be considered to include a
petition for license under 35 U.S.C. 184 for the subject
matter of the application. The filing receipt will indicate
if a license is granted. If the initial automatic petition
is not granted, a subsequent petition may be filed under
paragraph (b) of this section.

 (b)  Petitions for license should be presented in letter
form and must include the required fee ( § 1.17(h)). If
expedited handling of the petition is also sought, the
petitioner's address, and full instructions for delivery of
the requested license when it is to be delivered to other
than the petitioner.

 37 CFR 5.13.  Petition for license; no corresponding
application.

 If no corresponding national or international application
has been filed in the United States, the petition for
license under § 5.12(b) must be accompanied by the required
fee ( § 1.17(h)), if expedited handling is sought of the
petition, and a legible copy of the material upon which
license is desired. This copy will be retained as a measure
of the license granted. For assistance in the identification
of the subject matter of each license so issued, it is
suggested that the petition be submitted in duplicate and
provide a title and other description of the material. The
duplicate copy of the petition will be returned with the
license or other action on the petition.

 37 CFR 5.14.  Petition for license; corresponding U.S.
application.

 (a)  Where  there  is  a  corresponding  United  States
application on file, a petition for license under § 5.12(b)
must include the required fee ( § 1.17(h)), if expedited
handling of the petition is also sought , and must identify
this application by serial number, filing date, inventor,
and title, and a copy of the material upon which the license
is desired is not required. The subject matter licensed will
be  measured  by  the  disclosure  of  the  United  States
application. Where the title is not descriptive, and the
subject matter is clearly of no interest from a security
standpoint, time may be saved by a short statement in the
petition as to the nature of the invention.

 (b)  Two or more United States applications should not

be referred to in the same petition for license unless they
are  to  be  combined  in  the  foreign  or  international
application, in which event the petition should so state and
the identification of each United States application should
be in separate paragraphs.

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

 37 CFR 5.15.  Scope of license.

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

 (1)  To  export  and  file  all  duplicate  and  formal
application  papers  in  foreign  countries  or  with
international agencies;

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

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

 (i)  Defense services or articles designated in the

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

 (ii)  Restricted Data, sensitive nuclear technology or
technology  useful  in  the  production  or  utilization  of
special nuclear material or atomic energy, the dissemination
of which is subject to restrictions of the Atomic Energy Act
of 1954, as amended, and the Nuclear Non - Proliferation Act
of 1978, as implemented by the regulations for Unclassified
Activities in Foreign Atomic Energy Programs, 10 CFR 810, in
effect at the time of foreign filing .

  (b) Applications or other materials which were required
to be made available for inspection under 35 U.S.C. 181 and
§ 5.1 will be eligible for a license of the scope provided
in this paragraph. Grant of this license authorizes the
export and filing of an application in a foreign country or
the transmitting of an international application to any
foreign  patent  agency  or  international  patent  agency.
Further, this license includes authority to export and file
all duplicate and formal papers in foreign countries or with
foreign  and  international  patent  agencies  and  to  make
amendments,  modifications,  and  supplements  to,  file
divisions of, and take any action in the prosecution of the
foreign  or  international  application,  provided  subject
matter additional to that covered by the license is not
involved.

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

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

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

manner as a foreign or international application.

 (f)  Licenses separately granted in connection with two
or more United States applications may be exercised by
combining or dividing the disclosures, as desired, provided:

 (1)  Subject matter which changes the general nature of
the subject matter disclosed at the time of filing or which
involves subject matter listed in paragraphs (a)(3)(i) or
(ii) of this section is not introduced, and

 (2)  In the case where at least one of the licenses was
obtained under § 5.12(b), additional subject matter is not
introduced.

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

 37 CFR 5.16.  Effect of secrecy order.

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

 37 CFR 5.17.  Who may use license.

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

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

 (a)  The exportation of technical data relating to arms,
ammunition, and implements of war generally is subject to
the  International  Traffic  in  Arms  Regulations  of  the
Department of State (22 CFR Parts 121 through 128); the
articles designated as arms, ammunition, and implements of
war are enumerated in the U.S. Munitions List, 22 CFR
121.01.  However,  if  a  patent  applicant  complies  with
regulations  issued  by  the  Commissioner  of  Patents  and
Trademarks under 35 U.S.C. 184, no separate approval from
the Department of State is required unless the applicant
seeks to export technical data exceeding that used to
support a patent application in a foreign country. This
exemption from Department of State regulations is applicable
regardless of whether a license from the Commissioner is
required by the provisions of § 5.11 and 5.15 (22 CFR
125.04(b), 125.20(b)).

 (b)  When a patent application containing subject matter
on the Munitions List (22 CFR 121.01) is subject to a
secrecy order under § 5.2 and a petition is made under § 5.5
for a modification of the secrecy order to permit filing
abroad, a separate request to the Department of State for
authority to export classified information is not required
(22 CFR 125.05(d)).

 37 CFR 5.19.  Export of technical data.

  (a) Under regulations (15 CFR 770.10(j)) established by
the  U.S.  Department  of  Commerce,  Bureau  of  Export
Administration, Office of Export Licensing, a validated

export license is not required in any case to file a patent
application or part thereof in a foreign country if the
foreign filing is in accordance with the regulations (37 CFR
5.11 through 5.33) of the Patent and Trademark Office.

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

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

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

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

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

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

 37 CFR 5.25.  Petition for retroactive license

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

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

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

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

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

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

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

and

 (4)  The required fee ( § 1.17(h)).

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

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

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

  GENERAL

 37 CFR 5.31.  Effect of modification, rescission or
license.

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

 37 CFR 5.32.  Papers in English language.

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

 37 CFR 5.33.  Correspondence.

 All correspondence in connection with this part, including
petitions, should be addressed to >"Assistant<Commissioner
*>for<  Patents  **  (Attention  Licensing  and  Review),
Washington, D.C. 20231. >"<

 In the interests of national security, the United States
government imposes restrictions on the export of technical
information. These restrictions are administered by the

Departments of Commerce, State, and/or Energy depending on
the subject matter involved. For the filing of patent
applications in foreign countries, the authority for export
control has been delegated to the Commissioner of Patents
and Trademarks.

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

  There are several means by which a foreign filing
license may be issued. First, every U.S. origin application
filed in the PTO is considered to include an implicit
petition for a foreign filing license. The grant of a
license is not immediate or even ensured. If the application
is not marked by the security screeners, the petition is
granted. This is indicated to the applicant by the presence
on the filing receipt of the phrase "Foreign Filing License
Granted" and a date. The license becomes effective on the
date shown. Further, grant of this license is made of record
in the application file by means of a similar notation on
the file jacket of the application below the "Foreign/PCT
Applications" data. The scope of this license is quite broad
as set forth in 37 CFR 5.15(a).

  Explicit petitions for foreign filing licenses will also
be accepted in accordance with 37 CFR 5.12(b). Applicants
may be interested in such petitions in cases (1) in which
the filing receipt license is not granted or (2) in which
the filing receipt has not yet been issued (37 CFR 5.14(a)
or (b)) or (3) in which there is no corresponding U.S.
application (37 CFR 5.13) or (4) in which subject matter
additional to that already licensed is sought to be licensed
(37 CFR 5.14(c) and 5.15(e)) or (5) in which expedited
handling is requested. The scope of any license granted on
these petitions is indicated on the license. If applicants
desire expedited processing (turn around time of 3 business
days or less starting with the date of receipt of the
petition in Licensing and Review) or, if the petition covers
subject matter corresponding to a U.S. application in which
the filing receipt has not yet been issued, a fee is charged
(See 37 CFR 1.17(h)). There is no fee for other petitions
under 37 CFR 5.12(b).

  Petitions under 37 CFR 5.14(a) or (b) as well as any
license granted on the petition are given paper numbers and
endorsed on the file wrapper. Petitions under 37 CFR 5.14(c)
are not ordinarily made of record in the file.

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

  Finally, a retroactive license may be sought if an
unlicensed foreign filing has occurred through error and
without deceptive intent. However, the requirements of 37
CFR 5.25 must be fulfilled in order for such a petition to

be granted. Note that licenses under 37 CFR 5.25 are only
made retroactive with respect to specific acts of foreign
filing, and therefore the countries, the actual dates of
filing and the establishing of the nature of the error must
be provided for each act of proscribed foreign filing for
which a retroactive license is sought. Also, the required
verified statement must be in oath or declaration form.

  Upon written notification from the Patent and Trademark
Office, any foreign filing license required by 37 CFR
5.11(a) may be revoked. Ordinarily, revocation indicates
that  additional  review  of  the  licensed  subject  matter
revealed the need for referral of the application to the
appropriate defense agencies. Revocation of a filing receipt
license (37 CFR 5.12(a)) does not necessarily mean that a
petition under 37 CFR 5.12(b) for a license of narrower
scope will not be granted. The revocation becomes effective
on the date on which the notice is mailed. Foreign filings
which occurred prior to revocation need not be abandoned or
otherwise specially treated; however, additional filings
without a license are not permitted unless 6 months have
elapsed  from  the  filing  of  any  corresponding  U.S.
application. Papers and other documents needed in support of
prosecution of foreign applications may be sent abroad if
they  comply  with  any  pertinent  export  regulations.  Of
course,  if  and  once  a  Secrecy  Order  is  issued,  the
restrictions thereof must immediately be observed.

  Only the imposition of a Secrecy Order will cause
revocation of the authority which arises from 35 U.S.C. 184
to file a foreign patent application 6 months or later after
the  date  of  filing  of  a  corresponding  U.S.  patent
application.

  The penalties for failing to obtain any necessary
license to file a patent application abroad are set forth in
35 U.S.C. 182, 35 U.S.C. 185, and 35 U.S.C. 186 and include
loss of patenting rights in addition to possible fine or
imprisonment.

150  Statements to DOE and NASA

 37 CFR 1.14.  Patent applications preserved in secrecy

  *****

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

  *****

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

 No patent for any invention or discovery, useful in the
production or utilization of special nuclear material or
atomic energy, shall be issued unless the applicant files

with the application, or within thirty days after request
therefor  by  the  Commissioner  of  Patents  (unless  the
Commission advises the Commissioner of Patents that its
rights  have  been  determined  and  that  accordingly  no
statement is necessary) a statement under oath setting forth
the full facts surrounding the making or conception of the
invention or discovery described in the application and
whether the invention or discovery was made or conceived in
the  course  of  or  under  any  contract,  subcontract,  or
arrangement entered into with or for the benefit of the
Commission, regardless of whether the contract, subcontract,
or arrangement involved the expenditure of funds by the
Commission. The Commissioner of Patents shall as soon as the
application is otherwise in condition for allowance forward
copies  of  the  application  and  the  statement  to  the
Commission.

 Similarly, 42 U.S.C. 2457 provides in part:

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

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

  Shortly after filing, an informal request for a property
rights statement will be mailed to those applicants whose
applications have been marked by the security screeners as
being of interest to DOE or NASA. While no formal time
period is set, a response by applicants within 45 days will
expedite processing. If the statement submitted during this
period is defective, another letter is sent from Licensing
and Review detailing the deficiencies and giving applicant
another  opportunity  to  respond  during  this  period  of
informal correspondence.

  If no response to the initial so called 45 - Day Letter
is received or if repeated efforts to correct a defective
statement evidence an absence of cooperation on the part of
the  applicant,  a  formal  request  for  a  statement  in
accordance with the statutes will be made. A 30 - day
statutory period for response is then set. There is no
provision for an extension of this time period. If no proper
and timely statement is received, the application will be
held  abandoned  and  the  applicant  so  notified.  Such
applications may be revived under the provisions of 35
U.S.C. 137, In re Rutan,231 USPQ 864 (Comm'r. Pat. 1986).

  Any papers pertaining to property rights under section
152 of the Atomic Energy Act, 42 U.S.C. 2182, (DOE), or
section 305(c) or the National Aeronautics and Space Act, 42

U.S.C. 2457, (NASA), that have not been associated with the
application file, or have not been made of record in the
file and processed by the Licensing and Review section, must
be sent to the Licensing and Review section immediately.

151  Content of the Statements

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

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

  In instances where an applicant does not have firsthand
knowledge whether the invention involved work under any
contract,  subcontract,  or  arrangement  with  or  for  the
benefit  of  the  Atomic  Energy  Commission,  or  had  any
relationship to any work under any contract of the National
Aeronautics and Space Administration, and includes in his
statement information of this nature derived from others,
his or her statement should identify the source of his or
her  information.  Alternatively,  the  statement  by  the
applicant could be accompanied by a supplemental declaration
or oath, as to the contractual matters, by the assignee or
other  person;  e.g.,  an  employee  thereof,  who  has  the
requisite knowledge.

  When an applicant is deceased or incompetent, or where
it is shown to the satisfaction of this Office that he or
she refuses to furnish a statement or cannot be reached
after diligent efforts, declarations or statements under
oath setting forth the information required by the statutes
may be accepted from an officer or employee of the assignee
who has sufficient knowledge of the facts. The offer of such
substitute  statements  should  be  based  on  the  actual
unavailability of or refusal by the applicant, rather than
mere inconvenience. Where it is shown that one of the joint
inventors is deceased or unavailable, a statement by all of
the other inventor(s) may be accepted.

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

declaration, a sworn oath is equally acceptable.

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

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

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

  I. (for Inventors Employed by an Organization)

  That I (we) made and conceived this invention while
employed by ____________________.

  That the invention is related to the work I am (we are)
employed to perform and was made within the scope of my
(our) employment duties;

 That the invention was made during working hours and with
the  use  of  facilities,  equipment,  materials,  funds,
information and services of__________________________.

  Other relevant facts are: ____________________.

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

 -OR-

 II. (For Self - Employed Inventors)

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

 Other relevant facts are _____________________________

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

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

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

  -AND/OR-

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

 The undersigned inventor(s) declare(s) further that all
statements made herein of his or her (their) own knowledge

are true and that all statements made on information and
belief are believed to be true and further that these
statements were made with the knowledge that willful false
statements and the like so made are punishable by fine or
imprisonment, or both, under Section 1001 of Title 18 of the
United States Code and that such willful false statements
may jeopardize the validity of the application or any patent
issuing thereon.

 Inventor's Signature _________________

 Post Office Address___________________

 Date _________________

 Inventor's Signature_______________________

 Post Office Address_______________________

 Date _________________

  - -- - -- END - -- - --

Chapter 200 Types, Cross - Noting, and Status of Application

  201  Types of Applications
  201.01 Sole
  201.02 Joint
  201.03 Correction of Inventorship in an Application
  201.04 Parent Application
  201.04(a)  Original Application
  201.04(b)  Provisional Application
  201.05 Reissue Application
  201.06 Division Application
  201.06(a)  Division - Continuation Program
  201.06(b)  File Wrapper Continuing Procedure
  201.07 Continuation Application
  201.08 Continuation - in - Part Application
  201.09 Substitute Application
  201.10 Refile
  201.11 Continuity Between Applications: When Entitled
  to Filing Date
  201.11(a)  Filing of Continuation or Continuation - in -
  Part  Application During Pendency of International
  Application Designating the United States
  201.12 Assignment Carries Title
  201.13 Right of Priority of Foreign Application
  201.13(a)  Right of Priority Based Upon an Application
  for an Inventor's Certificate
  201.13(b)  Right of Priority Based Upon an International
  Application Filed Under the Patent Cooperation Treaty
  201.14 Right of Priority, Formal Requirements
  201.14(a)  Right of Priority, Time for Filing Papers
  201.14(b)  Right of Priority, Papers Required
  201.14(c)  Right of Priority, Practice
  201.14(d)  Proper Identification of Priority Application
  201.15 Right of Priority, Overcoming a Reference
  201.16 Using Certificate of Correction to Perfect
  Claim for  Priority Under 35 U.S.C. 119 >a - d<
  202  Cross - Noting
  202.01 In Specification
  202.02 Notation on File Wrapper **>Regarding Prior
  U.S. Applications, Including Provisional Applications<
  202.03 Notation on File Wrapper When Priority Is

  Claimed for Foreign Application
  202.04 In Oath or Declaration
  202.05 In Case of Reissues
  203  Status of Applications
  203.01 New
  203.02 Rejected
  203.03 Amended
  203.04 Allowed or in Issue
  203.05 Abandoned
  203.06 Incomplete
  203.07 Abandonment for Failure to Pay Issue Fee
  203.08 Status Inquiries
  203.08(a)  Congressional and Other Official Inquiries

201  Types of Applications [R - 2]

 35 U.S.C. 111  Application.

  (a) IN GENERAL.-

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

  (2) CONTENTS.-Such application shall include-

  (A) a specification as prescribed by section 112 of this
title;

  (B) a drawing as prescribed by section 113 of this title;
and

  (C) an oath by the applicant as prescribed by section 115
of this title.

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

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

  (b) PROVISIONAL APPLICATION.-

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

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

  (B) a drawing as prescribed by section 113 of this title.

  (2) CLAIM.-A claim, as required by the second through
fifth paragraphs of section 112, shall not be required in a
provisional application.

  (3) FEE.-(A) The application must be accompanied by the
fee required by law.

  (B) The fee may be submitted after the specification and
any required drawing are submitted, within such period and
under such conditions, including the payment of a surcharge,
as may be prescribed by the Commissioner.

  (C) Upon failure to submit the fee within such prescribed
period, the application shall be regarded as abandoned,
unless it is shown to the satisfaction of the Commissioner
that the delay in submitting the fee was unavoidable or
unintentional.

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

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

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

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

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

 37 CFR 1.9  Definitions.

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

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

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

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

  *****

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

  Nonprovisional  and  provisional  applications  are
national applications. Treatment of national applications
under 35 U.S.C. 111 and national stage applications under 35
U.S.C. 371 are similar but not identical. Note the following
examples:

 (1)  Restriction  practice  under  MPEP  §  806+  is
applied to national applications under 35 U.S.C. 111(a)
while unity of invention practice under MPEP Chapter 1800 is
applied to national stage applications under 35 U.S.C. 371.

  (2) National applications filed under 35 U.S.C.
111(a) without an executed oath or declaration or filing fee
are governed by the notification practice set forth in 37
CFR 1.53(d)(1) while national stage applications filed under
35 U.S.C. 371 without an oath or declaration or national
stage fee are governed by the notification practice set
forth in 37 CFR 1.494 and 1.495.

  National patent applications fall under three broad
types: (1) applications for patent under 35 U.S.C. 101
relating to a "new and useful process, machine, manufacture,
or composition of matter, etc."; (2) applications for plant
patents under 35 U.S.C. 161; and (3) applications for design
patents under 35 U.S.C. 171. The first type of patents are
sometimes referred to as "utility" patents or "mechanical"
patents when being contrasted with plant or design patents.
The specialized procedure which pertains to the examination
of applications for design and plant patents are treated in
detail in Chapters 1500 and 1600, respectively. National
applications include original (nonprovisional), provisional,
plant,  design,  reissue,  divisional,  and  continuation
applications (which may be filed under 37 CFR 1.53, 37 CFR
1.60,  37  CFR  1.62),  and  continuation  -  in  -  part
applications (which may be filed under 37 CFR 1.53 or 37 CFR
1.62).

201.01  Sole

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

201.02  Joint

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

201.03  Correction of Inventorship in an Application [R -
3]

  Correction of inventorship is permitted by amendment
under 35 U.S.C. 116. If at least one of the correct
inventors has been named in an application but it is
discovered that correction of inventorship is necessary,

applicants  are  advised  to  consider  abandoning  the
application and the filing of a continuing application under
37 CFR 1.53 with the correct inventive entity named. This
will eliminate the need for a petition for correction of
inventorship under 37 CFR 1.48. See 35 U.S.C. 120 and 37 CFR
1.78 regarding claiming the benefit of the filing date of a
prior application. The overlap of inventors required by 35
U.S.C. 120 is present so long as it exists at anytime during
copendency of the prior and continuing applications.

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

 37 CFR 1.48 Correction of inventorship

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

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

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

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

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

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

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

  (2) The fee set forth in § 1.17(h).

  (c) If a nonprovisional application discloses unclaimed
subject matter by an inventor or inventors not named in the

application, the application may be amended pursuant to
paragraph (a) of this section to add claims to the subject
matter and name the correct inventors for the application.

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

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

  (2) the fee set forth in § 1.17(q).

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

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

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

  (3) the written consent of any assignee.

  37 CFR 1.48(a)

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

inventors to a different, but actual, sole inventor. In each
instance,  however,  the  Office  must  be  assured  of  the
presence of innocent error, without deceptive intention on
the  part  of  the  true  inventor  or  inventors,  before
permitting amendment.

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

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

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

 **

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

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

  When accompanied by a petition under 37 CFR 1.183
requesting waiver of a requirement under 37 CFR 1.48(a),
generally the verified statement of facts by an original
named inventor (decided in the Office of Petitions).

  Any attempt to effect a second conversion under 37 CFR
1.48(a) (decided by the Group Director).

  **

  The provisions of 37 CFR 1.312 apply to petitions for
correction of inventorship after allowance and before issue.
Where the petition is dismissed or is denied, the examiner
must determine whether a rejection under 35 U.S.C. 102(f) or
(g) is appropriate. If so, the application must be withdrawn
from issue and the rejection made.

  When a typographical or transliteration error in the
spelling of an inventor's name is discovered, a petition

under 37 CFR 1.48(a) is not required, nor is a new oath or
declaration  under  37  CFR  1.63  needed.  The  Patent  and
Trademark Office should simply be notified of the error and
reference to the notification paper will be made on the
previously filed declaration by the Office.

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

  Where a person is substituted, added, or removed as an
inventor during the prosecution of an application before the
Patent  and  Trademark  Office,  problems  may  occur  upon
applicant claiming U.S. priority in a foreign filed case.
Therefore, examiners should acknowledge any addition or
removal of inventors made in accordance with the practice
under 37 CFR 1.48 and include Form Paragraph 2.14 in the
next communication to applicant or his attorney. (Copy on
page 200 - 8)

  The grant or denial of the petition may result in the
loss of inventorship overlap between a parent application
and a continuing application and the consequent inability to
claim benefit in the continuing application of the parent
application's filing date under 35 U.S.C. 120. Intervening
references must then be considered.

  For correction of inventorship in a patent, see 37 CFR
1.324 and MPEP § 1481.  A court order under 35 U.S.C. 256
for correction of the inventorship of a patent should be
submitted to the Certificate of Correction Branch along with
the Office's certificate of correction form. A new 37 CFR
1.63 declaration is not required.

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

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

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

  Applicants should note that **>the< Office ** > will
issue a< filing receipt (which lists the **>originally named
inventors<) in applications filed under 37 CFR 1.53(b)(1)
when a petition under 37 CFR 1.48(a) has been filed**.>
After processing of the application is completed by the
Office of Initial Patent Examination, the application is
forwarded to the examining group and the petition under 37
CFR 1.48(a) will be decided by the primary examiner assigned
to the application. If the petition under 37 CFR 1.48(a) is
granted by the primary examiner, the application will be
returned to the Office of Initial Patent Examination for
correction  of  the  file  jacket  and  for  issuance  of  a
corrected filing receipt.<

  The original named inventors for applications filed
under  37  CFR  1.53(b)(1)  without  an  executed  oath  or
declaration are those named when filing the application such

as in an accompanying transmittal letter or unexecuted oath
or declaration. The application as filed must be executed by
the original named inventors submitting a signed oath or
declaration under 37 CFR 1.63 or if an error was made in the
original naming of the inventors, correction is required by
way of petition under 37 CFR 1.48(a) or (c). If correction
is required, the petition must be filed no later than the
maximum period to respond to the "Notice to File Missing
Parts of Application, Filing Date Granted" (i.e., 2 months
from the ** mail date of the Notice, * with an additional 4
months  available  under  37  CFR  1.136(a)  and  possibly
additional time under 37 CFR 1.136(b)). Failure to timely
execute the application as originally filed or to timely
file  the  petition  will  result  in  abandonment  of  the
application. The petition ** should be mailed to the Special
Handling  Unit  of  **>  the  Office  of  Initial  Patent
Examination< to be matched up with the application.

Example

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

  B refuses to execute declaration under § 1.63.

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

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

Example

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

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

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

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

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

  Verified Statement of Facts

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

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

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

  Where the named inventors would have no knowledge of how
the error occurred and the nature of the error indicates
what the correct inventive entity should have been, such as
a clerical error made in the patent attorney's or agent's
office in transcribing instructions from a client, waiver
under 37 CFR 1.183 would be appropriate if accompanied by a

verified statement by the parties with firsthand knowledge
of how the error occurred and any supporting evidence. A
statement from the original named inventors stating that
they have no knowledge of how the error occurred and that
they  agree  with  the  requested  correction  may  also  be
required.

  In those situations where an original named inventor
refuses to submit a statement supporting the addition or
deletion  of  another  inventor  and  that  original  named
inventor has assigned his or her entire right or interest to
an assignee who has given its consent to the requested
correction, waiver would be appropriate upon a showing of
such refusal and assignment **. Where no assignment has been
executed by the inventors, or if deletion of the refusing
inventor is requested waiver will not be granted absent
unequivocal support for the correction sought.

  Absent waiver where an original named inventor refuses
to file a statement, an available remedy is to refile the
application naming the correct inventive entity. A petition
under 37 CFR 1.48(a) would not then be required in the newly
filed application as no correction would be needed. Benefit
of the parent application's filing date would be available
under 35 U.S.C. 120 provided there is at least one inventor
overlap between the two applications. (Note: a sole - to -
sole correction would not obtain benefit under 35 U.S.C.
120.)  Where  the  desired  correction  is  deletion  of  an
inventor the application may be refiled under the provisions
of 37 CFR 1.60 and 37 CFR 1.62 as an alternative to filing
under 37 CFR 1.53(b)(1) and 35 U.S.C. 111(a) where the
parent application is a complete application under 37 CFR
1.51(a)(1) including the grant of any petition under 37 CFR
1.47 (usually not the case with initial filings under 37 CFR
1.53(b)(1)). For addition of an inventor the application
must be filed under 37 CFR 1.53(b)(1) and 35 U.S.C. 111(a).

  Oath or Declaration

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

  Where an application is filed with an executed 37 CFR
1.63 declaration naming an inventive entity that is in
conflict with another paper filed in the application, such
as the transmittal letter, the executed declaration will
govern. However, where an executed declaration has not been
submitted with the application papers and the application
papers are in conflict as to the inventorship each party
identified as an inventor on filing will be considered to
have been named as part of the inventive entity.

  While 37 CFR 1.47 does not apply to the requirement for
verified statements from each originally named inventor, 37
CFR 1.47 is available to meet the requirement for an oath or
declaration under 37 CFR 1.63 as for example where A, B, and
C were originally named and D who refuses to cooperate is to
be added. The verified statements need be supplied only by
A, B, and C. >Applications filed with both petitions under
37 CFR 1.47 and 1.48(a) will be forwarded to the Office of
Petitions, after mailing of the filing receipt by the Office

of Initial Patent Examination, for consideration of the
petitions.< In those instances wherein petitions under 37
CFR 1.48(a) and 37 CFR 1.47 have >both< been filed **>in an
application<, the ** Office >of Petitions< will first issue
a decision on the petition under 37 CFR 1.48(a) so as to
determine the appropriate oath or declaration under 37 CFR
1.63 required for the petition under 37 CFR 1.47.

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

 Fee

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

  Where a similar error has occurred in more than one
application a separate petition fee must be submitted in
each application in which correction is requested.

  If the petition fee has not been submitted or authorized
the petition will be dismissed and a rejection under 35
U.S.C. 102(f) or (g) considered.

  Written Consent of Assignee

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

  Where no assignee exists petitioner should affirmatively
state that fact. If the file record including the petition
is silent as to the existence of an assignee it will be
presumed that no assignee exists. Such presumption should be
set forth in the decision to alert petitioners to the
requirement.

  The title of the party signing on behalf of a corporate
assignee and the authority to do so should be set forth in
the written consent. Consent of a corporate assignee may be
signed by an officer (e.g., president, vice president,
secretary, or treasurer) of the corporation or may include a
statement in oath or declaration form that the person
signing the consent has authority to do so. Further, the
assignee must establish its ownership of the application in
accordance with 37 CFR 3.73.

  Continuing Applications

  On filing a continuing application under 37 CFR 1.60 or
37 CFR 1.62, it should not be assumed that an error in
inventorship made in a parent application was in fact

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

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

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

¶ 2.13  Correction of Inventorship Under 37 CFR 1.48(a),
Insufficient

  The  petition  to  correct  the  inventorship  of  this
nonprovisional application under 37 CFR 1.48(a) is deficient
because [1].

 Examiner Note:

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

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

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

  (b)  it  represents  an  attempt  to  effect  a  second
conversion under 37 CFR 1.48(a) - the second attempt must be
returned to the Group Director

  3.  Insert one or more of the following reasons in the
bracket:

  "the statement of facts by the originally named inventor
or inventors is insufficient." (explanation required, e.g.,
the statement of facts fails to explain how the inventorship
error occurred in view of the review of the specification
including  the  claims  and  understanding  thereof  by  the
original  named  inventors  when  executing  the  oath  or
declaration under 37 CFR 1.63, which is set forth therein);

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

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

  "it lacks the written consent of any assignee";

  "the  amendment  has  not  been  diligently  filed"
(explanation required).

¶ 2.13.01  Correction ofInventorship Under 37 
  CFR 1.48(b ),Insufficient

  The petition requesting the deletion of an inventor in
this nonprovisional application under 37 CFR 1.48(b) is
deficient because [1].

 Examiner Note:

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

 Potential rejections

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

  - The grant or denial of the petition may result in the
loss of inventorship overlap between a parent application
and a continuing application and an inability to claim
benefit  in  the  continuing  application  of  the  parent
applications filing date under 35 U.S.C. 120. Intervening
references must then be considered.

  2. Insert one or more of the following reasons in the

bracket:

  "the  petition  has  not  been  diligently  filed"
(explanation required);

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

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

¶ 2.13.02  Correction  of  Inventorship  Under  37  CFR
1.48(c), Insufficient

  The  petition  to  correct  the  inventorship  in  this
nonprovisional application under 37 CFR 1.48(c) requesting
addition of an inventor(s) is deficient because [1].

 Examiner Note:

  See paragraph 2.13.

¶  2.14  Correction of Inventorship Sufficient

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

 Examiner Note:

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

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

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

  > ¶  2.14.01  Correction of Inventorship Under 37
CFR 1.48(b), Sufficient

  In view of the papers filed [1], the inventorship of
this non - provisional application has been changed by the
deletion of [2].

 Examiner Note:

  1. This form paragraph is to be used only for 37 CFR
1.48(b) conversions.

  2.  In  bracket  2,  insert  the  names  of  the  deleted
inventor(s).<

¶ 10.10  Petition Under 37 CFR 1.48, Granted

  >Paper No. [1]<

  In re Application of [*>2<]

  Appl. No.: [*>3<] : DECISION ON PETITION

  Filed: [*>4<] : UNDER 37 CFR 1.48

  For: [*>5<] :

  This is a decision on the petition filed [*>6<] to
correct inventorship under 37 CFR 1.48

  The petition is granted. The inventorship in this
application has been corrected to [*>7<].

  >The application is being returned to the Office of
Initial Patent Examination for correction of the file jacket
and issuance of a corrected filing receipt, with the names
of the inventors as shown on the executed declaration under
37 CFR 1.63 on [8].<

 [*>9<]

 Primary Examiner,

 Art Unit [*>10<],

 Patent Examining Group [*>11<]

 [*>12<]

 Examiner Note:

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

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

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

  4.  In bracket*>7<, insert -add- or -delete- and the
name(s) of the added or deleted inventor(s).

  5.  Print this form paragraph on PTO letterhead.

  6.  In bracket*>12<, insert correspondence address of
record.

¶ 10.11  Petition Under 37 CFR 1.48 Dismissed

  In re Application of [1 ]

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

  Filed: [3] : UNDER 37 CFR 1.48

  For: [4]

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

  The petition is dismissed.

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

 [7]

 Primary Examiner,

 Art Unit [8],

 Patent Examining Group [9]

 [10]

 Examiner Note:

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

  2.  Print this form paragraph on PTO letterhead.

  3.  In bracket 10, insert correspondence address of
record.

¶ 10.12  Petition Under 37 CFR 1.48, Denied

 In re Application of [1 ]

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

 Filed: [3]  : UNDER 37 CFR 1.48

 For: [4]  :

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

  The petition is denied.

 [6]

 [7]

 Primary Examiner,

 Art Unit [8],

 Patent Examining Group [9]

 [10]

 Examiner Note:

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

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

  3.  In bracket 10, insert the correspondence address of
record.

  4.  Print this form paragraph on PTO letterhead.

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

  37 CFR 1.48(b)

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

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

  37 CFR 1.48(c)

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

cannot add new matter.

  37 CFR 1.48(d)

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

  37 CFR 1.48(e)

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

201.04  Parent Application [R - 1]

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

201.04(a)  Original Application [R - 2]

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

201.04(b)  Provisional Application [R - 3]

 35 U.S.C. 111  Application.

 ***

  (b) PROVISIONAL APPLICATION.-

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

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

  (B) a drawing as prescribed by section 113 of this title.

  (2) CLAIM.-A claim, as required by the second through
fifth paragraphs of section 112, shall not be required in a
provisional application.

  (3) FEE.-(A) The application must be accompanied by the
fee required by law.

  (B) The fee may be submitted after the specification and
any required drawing are submitted, within such period and
under such conditions, including the payment of a surcharge,
as may be prescribed by the Commissioner.

  (C) Upon failure to submit the fee within such prescribed
period, the application shall be regarded as abandoned,
unless it is shown to the satisfaction of the Commissioner
that the delay in submitting the fee was unavoidable or
unintentional.

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

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

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

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

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

 ***

 37 CFR 1.9  Definitions.

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

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

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

  *****

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

  *****

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

  *****

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

  The parts of a provisional application that are required
are set forth in 37 CFR 1.51(a)(2) and MPEP § 601.01 and §
601.01(b). The filing date of a provisional application is
the date on which (1) a specification which complies with 35
U.S.C. 112, first paragraph, and (2) any drawing required by
37 CFR 1.81(a) are filed in the name of the actual inventor

or inventors as required by 37 CFR 1.41. A provisional
application must also include a cover sheet identifying the
application as a provisional application. Otherwise, the
application will be treated as an application filed under 37
CFR 1.53(b)(1). The filing fee is set forth in 37 CFR
1.16(k).

 Note:

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

 (2)  No oath or declaration is required in a provisional
application.

 (3)  Provisional applications will not be examined for
patentability,  placed  in  an  interference,  or  made  the
subject of a statutory invention registration.

  A  provisional  application  will  automatically  be
abandoned 12 months after its filing date and will not be
subject  to  revival  to  restore  it  to  pending  status
thereafter. Since a provisional application can be pending
for no more than 12 months, if the last day of pendency is
on a Saturday, Sunday, or Federal holiday, copendency would
require that the later filed nonprovisional application be
filed prior to the Saturday, Sunday, or Federal holiday. See
37  CFR  1.78(a)(3).  >For  example,  if  a  provisional
application was filed on June 28,1996, the last day of
pendency of the provisional application under 35 U.S.C.
111(b)(5) is June 28, 1997. Since June 28, 1997 is a
Saturday, a nonprovisional application claiming the benefit
of the provisional application must be filed on the Friday,
June  27,  1997,  prior  to  the  Saturday  (See  37  CFR
1.78(a)(3)). However, note that new patent applications
filed in accordance with 37 CFR 1.10 will be stamped by the
Office with the date of deposit as "Express Mail" with the
United States Postal Service. For example, if a new patent
application is deposited in "Express Mail" in accordance
with 37 CFR 1.10 on a Saturday and the United States Postal
Service gives it a date of deposit of Saturday, the Office
will accord and stamp the correspondence with the Saturday
date. 37 CFR 1.6(a)(2).< A provisional application is not
entitled to claim priority benefits based on any other
application under 35 U.S.C. 119, 120, 121, or 365.

  An application filed under 37 CFR 1.53(b)(1) may be
converted to a provisional application provided a petition
requesting the conversion is submitted along with the fee as
set forth in 37 CFR 1.17(q). The petition and fee must be
submitted prior to the earlier of the abandonment of the
nonprovisional application, the payment of the issue fee,
the expiration of 12 months after the filing date of the
nonprovisional application, or the filing of a request for
statutory invention registration. The grant of any such
petition will not entitle applicant to a refund of the fees
which were properly paid in the application filed under 37
CFR 1.53(b)(1).

  Design applications may not make a claim for priority of
a provisional application under 37 CFR 1.78(a)(3).

 **  Double Click here to see the image  **

201.05  Reissue Application

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

201.06  Division Application [R - 1]

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

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

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

¶ 2.01  Definition of Division

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

 Examiner Note :

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

  2.  In bracket 2, insert the filing date of parent
application.

  >3.  An  application  claiming  the  benefits  of  a

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

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

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

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

201.06(a)  Division - Continuation Program [R - 3]

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

  (a) [Reserved]

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

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

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

  (3) the inventors named in the continuation or divisional
application are the same or less than all the inventors
named in the prior application; and

  (4) the application is filed before the patenting, or
abandonment of, or termination of proceedings on the prior
application. The copy of the prior application must be
accompanied by a statement that the application papers filed
are a true copy of the prior complete application. Such
statement must be by the applicant or applicant's attorney

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

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

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

  37 CFR 1.60 PRACTICE

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

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

  Where the immediate prior nonprovisional application was
not signed (for example, where it was filed under the former
37 CFR 1.147 or current 37 CFR 1.60 or 37 CFR 1.62
practice),  a  copy  of  the  most  recent  nonprovisional
application having a signed oath or declaration in the chain
of copending prior nonprovisional applications under 35
U.S.C. 120 must be used.

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

 37 CFR 1.60 APPLICATION CONTENT

  As mentioned previously, a 37 CFR 1.60 application must
consist of a copy of an executed nonprovisional application
as filed (specification, claims, drawings, and oath or
declaration). The application must also include a clear
indication that a filing under 37 CFR 1.60 is desired. The
use of transmittal form PTO/SB/13 is urged since it acts as
a checklist for both applicant and the Office and includes a
specific request for an application under 37 CFR 1.60. If an
application is filed under 37 CFR 1.60, all requirements of
that rule must be met.

  Although a copy of all original claims in the prior
nonprovisional application must appear in the 37 CFR 1.60
application, some of the claims may be canceled by request
in the 37 CFR 1.60 application in order to reduce the filing
fee (see form PTO/SB/13, item 5). Any preliminary amendment
presenting  additional  claims  (claims  not  in  the  prior
application as filed) should accompany the request for
filing an application under 37 CFR 1.60, but such an
amendment will not be entered until after the filing date
has been granted. Any claims added by amendment should be
numbered  consecutively  beginning  with  the  number  next
following the highest numbered original claim in the prior
executed nonprovisional application. The Office of Initial
Patent Examination should not review preliminary amendments
(in the transmitted letter or separate paper accompanying
the  application)  for  evidence  of  missing  claims  in
applications filed under 37 CFR 1.60. Any errors in the

numbering of claims in preliminary amendment(s) can be
corrected in the examining groups. Amendments made in the
prior nonprovisional application do not carry over into the
37 CFR 1.60 application. Any preliminary amendment should
accompany the 37 CFR 1.60 application and be directed to
"the accompanying 37 CFR 1.60 application" and not to the
prior nonprovisional application. Applicants should submit
preliminary amendments on filing or promptly thereafter to
assure  examiner  consideration  when  the  37  CFR  1.60
application is picked up for examination.

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

  A  copy  of  the  nonprovisional  application  must  be
prepared and submitted by the applicant, or his or her
attorney or agent, and include a statement that it is a true
copy. The copy of the oath or declaration need not show a
copy of the inventor's or notary's signature provided that
all other data is shown and an indication is made on the
oath or declaration that the oath or declaration has been
signed. For example, if the inventor's or notary's signature
is not shown on the copy of the oath or declaration, the
notation "/s/" may be added to the copy of the oath or
declaration on the line provided for the signature to
indicate that the original oath or declaration was signed.

  In order to obtain a filing date under 37 CFR 1.60 a
copy of all pages of the application, including description,
claims, any drawings, and the statement that the application
papers are a true copy of the prior application are required
to be submitted. If all these items are not submitted,
remedy is by way of petition under 37 CFR 1.60(b) and
payment of the fee under 37 CFR 1.17(i). Paragraph (d) of 37
CFR 1.60 which was added effective Jan. 4, 1993, provides
for  the  filing  fee  and/or  true  copy  of  the  oath  or
declaration from the prior nonprovisional application to be
filed on a date later than the filing date with payment of
the surcharge set forth in 37 CFR 1.16(e).

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

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

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

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

why the statement must be based only on belief.

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

  If the inventorship shown on the original oath or
declaration  has  been  changed  and  approved  during  the
prosecution of the prior nonprovisional application, the 37
CFR 1.60 application papers must indicate such a change has
been made and approved by providing a copy of the petition
for correction of inventorship under 37 CFR 1.48 in order
that the changed inventorship may be indicated in the 37 CFR
1.60 application. The 37 CFR 1.60 application papers should
also include any additions or changes in an inventor's
citizenship, residence or post office address made and
approved in the prior nonprovisional application.

  If small entity status has been established in a parent
application, it is not necessary to again file a verified
statement under 37 CFR 1.27 if the small entity status is
desired in a 37 CFR 1.60 application. The 37 CFR 1.60
application  must,  however,  include  a  reference  to  the
verified statement in the parent application if the small
entity, status is still proper and desired (37 CFR 1.28(a)).

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

  FORMAL DRAWINGS REQUIRED

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

¶ 2.02  37 CFR 1.60 Drawing Requirement

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

 Examiner Note:

  This form paragraph is to be used only when the parent

application contains approved formal drawings and has been
abandoned.

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

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

¶ 2.04  Correction of Drawings in 37 CFR 1.60 Cases

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

 Examiner Note:

  Use form paragraphs 6.39 and 6.40 with this paragraph.

  COPIES OF AFFIDAVITS

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

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

¶ 2.03  Affidavits and Declarations in Parent Application

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

  ABANDONMENT OF THE PRIOR NONPROVISIONAL APPLICATION

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

prior nonprovisional application as of the filing date
granted to a continuing application when filing such a
continuing application.

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

  If the prior nonprovisional application which is to be
expressly abandoned is before the Board of Patent Appeals
and Interferences, a separate notice should be forwarded by
the applicant to such Board, giving notice thereof.

  After a decision by the CAFC in which the rejection of
all claims is affirmed, proceedings are terminated on the
date of receipt of the Court's certified copy of the
decision by the Patent and Trademark Office; Continental Can
Company, Inc., et al.  v  . Schuyler168 USPQ 625 (D.D.C.
1970). See MPEP § 1216.01.

  EXAMINATION

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

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

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

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

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

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201.06(b)  File Wrapper Continuing Procedure [R - 3]

 37 CFR 1.62  File wrapper continuing procedure

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

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

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

  (d) If an application which has been accorded a filing
date pursuant to paragraph (a) of this section does not
include  the  appropriate  basic  filing  fee  pursuant  to
paragraph (b) of this section, or an oath or declaration by
the applicant in the case of a continuation - in - part
application pursuant to paragraph (c) of this section,
applicant will be so notified and given a period of time
within which to file the fee, oath, or declaration and to
pay the surcharge as set forth in § 1.16(e) in order to
prevent abandonment of the application. The notification
pursuant to this paragraph may be made simultaneously with
any notification of a defect pursuant to paragraph (a) of
this section.

  (e) An application filed under this section will utilize
the file wrapper and contents of the prior application to
constitute the new continuation, continuation - in - part,
or  divisional  application  but  will  be  assigned  a  new
application number. Changes to the prior application must be
made in the form of an amendment to the prior application as

it exists at the time of filing the application under this
section.  No  copy  of  the  prior  application  or  new
specification is required. The filing of such a copy or
specification will be considered improper, and a filing date
as of the date of deposit of the request for an application
under this section will not be granted to the application
unless a petition with the fee set forth in § 1.17(i) is
filed with instructions to cancel the copy or specification.

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

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

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

  (1) Title as originally filed and as last amended;

  (2) Name of applicant as originally filed and as last
amended;

  (3) Current correspondence address of applicant;

  (4) Identification of prior foreign application and any
priority claim under 35 U.S.C. 119.

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

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

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

  An applicant may file a continuation or division of a
pending  patent  application  by  simply  filing  a  request
therefor under 37 CFR 1.62 identifying the Application No.
(series code and serial number) of the prior complete
nonprovisional  application  and  paying  the  necessary
application filing fee. The filing of a copy of the prior
nonprovisional application (required under 37 CFR 1.60) is
unnecessary and improper under the procedure set forth in 37
CFR 1.62. To file a continuation - in - part application, an

amendment (not a new specification) adding the additional
subject matter and an oath or declaration relating thereto
are also required.

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

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

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

  Under 37 CFR 1.62, the specification, claims, and
drawings, and any amendments in the prior nonprovisional
application are used in the continuation, continuation - in
- part, or divisional application. A new filing fee is
required in accordance with 35 U.S.C. 41 and 37 CFR 1.16.
The only other statutory requirement under 35 U.S.C. 111(a)
is a signed oath or declaration. Since a continuation or
divisional application cannot contain new matter, the oath
or declaration filed in the prior nonprovisional application
would supply all the information required under the statute
and rules to have a complete application and to obtain a
filing date. Accordingly, the previously filed oath or
declaration will be considered to be the oath or declaration
of the 37 CFR 1.62 continuation or division. However, if a
continuation - in - part application is being filed, or a
correction of inventorship is being made, then a new oath or
declaration must be signed and filed by the applicant.

  The original disclosure of an application filed under 37
CFR 1.62 will be the original parent application, amendments
entered in the parent application, and amendments filed on
the filing date and referred to in the oath or declaration
by the inventor(s). However, the filing fee will be based on
the claims in the 37 CFR 1.62 application after entry of any
unentered  amendments  under  37  CFR  1.116  in  the  prior
application whose entry has been requested by the applicant
and any preliminary amendment which may accompany the FWC
request and filing fee. The Certificate of Mailing Procedure
under 37 CFR 1.8 does not apply to filing a request for a
"File Wrapper Continuing" application since the filing of
such a request is considered to be a filing of national
application  papers  for  the  purpose  of  obtaining  an
application filing date (37 CFR 1.8(a)(i)).

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

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

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

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

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

 EXTENSIONS OF TIME

  If an extension of time is necessary to establish
continuity  between  the  prior  application  and  the  FWC
application, the petition for extension of time must be
filed  as  a  separate  paper  directed  to  the  prior
nonprovisional  application.  A  general  authorization  to
charge  fees  to  a  deposit  account  filed  in  the  FWC
application  will  not  be  construed  as  a  petition  for
extension of time in the prior application. See In re Kokaji
, 2 USPQ2d 1309 (Comm'r Pat. 1987). Any petition for
extension of time directed to the prior application must be
accompanied by its own certificate of mailing under 37 CFR
1.8 (if mailed by first class mail **>(including "Priority
Mail" and "Express Mail"); see MPEP § 512) or should have
the "Express Mail" mailing label number in accordance with
37 CFR 1.10 (if mailed by "Express Mail"; see MPEP § 513),
if the benefits of those rules are desired. For the purposes
of 37 CFR 1.8(a)(1)(i)(A), first class mail is interpreted
as including "Express Mail" and "Priority Mail" deposited
with the USPS.<

  CERTIFIED COPY

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

  SMALL ENTITY STATUS

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

  PRIORITY CLAIM

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

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

¶ 2.28  Reference in § 1.62 Continuing Applications

  This application filed under 37 CFR 1.62 lacks the
necessary reference to the prior application. A statement
reading "This is a [1] of application no. [2], filed [3]"
should be entered following the title of the invention or as

the first sentence of the specification. Also, the present
status of the parent application(s) should be included.

 Examiner Note:

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

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

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

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201.07  Continuation Application [R - 1]

  A continuation is a second application for the same
invention claimed in a prior >nonprovisional< application
and filed before the original becomes abandoned or patented.
The continuation application may be filed under 37 CFR
1.53>(b)(1)<, 37 CFR 1.60, or 37 CFR 1.62. The applicant in
the *>continuation< application must include at least one
inventor named in the prior >nonprovisional< application.
The disclosure presented in the continuation must be the
same  as  that  of  the  original  application;  i.e.,  the
continuation  should  not  include  anything  which  would
constitute  new  matter  if  inserted  in  the  original
application.

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

  At any time before the patenting or abandonment of or
termination  of  proceedings  on  his  or  her  earlier
>nonprovisional< application, an applicant may have recourse
to filing a continuation in order to introduce into the case
a new set of claims and to establish a right to further
examination by the primary examiner. An application under 37
CFR 1.62, however, must be filed prior to payment of the
issue fee.

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

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

¶ 2.05  Possible Status as Continuation

  This application discloses and claims only subject

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

 Examiner Note:

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

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

  **

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

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

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

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

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

continuation - in - part application may derive from an
earlier sole application.

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

 1.  The  first  application  and  the  alleged
continuation> - in - part< application were filed with at
least one common inventor;

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

 3.  The  alleged  *>continuation  -  in  -  part<
application "contains or is amended to contain a specific
reference to the earlier filed application."

  For notation to be put on the file wrapper by the
examiner  in  the  case  of  a  continuation  -  in  -  part
application see MPEP § 202.02. See MPEP § 708 for order of
examination.

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

¶ 2.06  Possible Status as Continuation - in - Part

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

 Examiner Note:

  >1.<  This paragraph should only be used when it
appears that the application may qualify as a continuation -
in - part, but no claim has been filed.

  >2. An application claiming the benefits of a provisional
application under 35 U.S.C. 119(e) should not be called a
"continuation" of the provisional application since the
application will have its patent term calculated from its
filing date, whereas an application filed under 35 U.S.C.

120, 121, or 365(c) will have its patent term calculated
from the date on which the earliest application was filed,
provided a specific reference is made to the earlier filed
application(s), 35 U.S.C. 154(a)(2) and (a)(3).<

201.09  Substitute Application [R - 1]

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

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

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

¶ 2.07  Definition of a Substitute

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

201.10  Refile [R - 3]

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

  If the applicant designates his application as "Refile"
and the examiner finds that the application is in fact a
duplicate of a former application by the same party which
was abandoned prior to the filing of the second case, the
examiner  should  require  the  substitution  of  the  word
"substitute"  for  "refile",  since  the  former  term  has
official recognition. **

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

¶ 2.08  Definition of a Refile.

  It is noted that applicant refers to this application as
a "refile". No official definition has been given the term
"refile", though it is sometimes used as an alternative for
the term "substitute". Since this application appears to be
in fact a duplicate of a former application which was

abandoned prior to the filing of the second case, the
substitution of the word "substitute" for "refile," is
required  since  the  term  "substitute"  has  official
recognition.  Applicant  is  required  to  make  appropriate
corrections.

201.11  Continuity Between Applications: When Entitled to
Filing Date [R - 3]

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

 35 U.S.C. 120  .  Benefit of earlier filing date in
the United States.

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

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

 ***

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

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

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

 1.  The second application must be an application

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

  Form Paragraphs 2.09 and 2.10 should be used where the
disclosure of the second application is not for an invention
disclosed in the first application.

¶  2.09  Heading for Conditions for Domestic Priority
Under 35 U.S.C. 119(e) or 120

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

 Examiner Note:

  1.  In bracket 1 insert either -119(e)- or -120-, or
both.

  2.  One or more of the following form paragraphs 2.10
to 2.12 must follow depending upon the circumstances.

¶ 2.10  Disclosure Must Be the Same

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

 Examiner Note:

  This paragraph must be preceded by heading paragraph
2.09.

  Form Paragraph 2.29 should be used where the claim(s) of
the  nonprovisional  application  lacks  support  in  the
disclosure of the provisional application.

¶ 2.29  Domestic Priority Not Granted

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

 Examiner Note:

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

  2.  In bracket 2, provide an explanation of lack of
support.

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

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

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

¶ 2.12  Application Must Contain a Reference to Parent

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

 Examiner Note:

  This paragraph must be preceded by heading paragraph
2.09.

 4.  The second application must be filed by an
inventor  or  inventors  named  in  the  previously  filed
application.

  COPENDENCY

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

  Use Form Paragraphs 2.09 and 2.11 to indicate copendency
is required.

¶ 2.11  Application Must Be Copending With Parent

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

 Examiner Note:

  This paragraph must be preceded by heading paragraph
2.09 .

  If the first application issues as a patent, it is
sufficient for the second application to be copending with
it if the second application is filed on the same date, or
before  the  date  that  the  patent  issues  on  the  first
application. Thus, the second application may be filed while

the first is still pending before the examiner, while it is
in issue, or even (for applications filed under 37 CFR 1.53
or 1.60) between the time the issue fee is paid and the
patent issues.

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

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

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

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

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

  REFERENCE TO FIRST APPLICATION

  The third requirement of the statute is that the second
(or  subsequent)  application  must  contain  a  specific
reference to the first application. This should appear as

the first sentence of the specification following the title
preferably as a separate paragraph (37 CFR 1.78(a)). When
the nonprovisional application is entitled under 35 U.S.C.
120 to an earlier U.S. effective filing date, a statement
such as "This is a division (continuation, continuation - in
- part) of Application No. - --, filed - --" should appear
as the first sentence of the description, except in the case
of design applications where it should appear as set forth
in MPEP § 1503.01. >Where a nonprovisional application is
claiming the benefit under 35 U.S.C. 120 of a prior national
stage application filed under 35 U.S.C. 371, a suitable
reference would read "This application is a continuation of
U.S. Application No. 081 - --, filed - --, which was the
National Stage of International Application No. PCT/DE95/ -
--, filed - --."< When the nonprovisional application is
entitled to an earlier U.S. effective filing date of one or
more provisional applications under 35 U.S.C. 119(e), a
statement such as "This application claims the benefit of
U.S. Provisional Application No. 60/ - --, filed - --, and
U.S. Provisional Application No. 60/ - --, filed - --."
should appear as the first sentence of the description. In
addition, for an application which is claiming the benefit
under 35 U.S.C. 120 of a prior application, which in turn
claims the benefit of a provisional application under 35
U.S.C.  119(e),  a  suitable  reference  would  read,  "This
application is a continuation of U.S. Application No. 08/ -
--, filed - --, now abandoned, which claims the benefit of
U.S. Provisional Application No. 60/ - --, filed - --."
Status of nonprovisional parent applications (whether it is
patented or abandoned) should also be included. If a parent
application has become a patent, the expression, "Patent No.
_  _  "  should  follow  the  filing  date  of  the  parent
application. If a parent application has become abandoned,
the expression "abandoned" should follow the filing date of
the parent application. In the case of design applications,
it should appear as set forth in MPEP § 1503.01. In view of
this requirement, the right to rely on a prior application
may be waived or refused by an applicant by refraining from
inserting a reference to the prior application in the
specification of the later one. If the examiner is aware of
the fact that an application is a continuing application of
a prior one, he or she should merely call attention to this
in an Office action by using the wording of Form Paragraphs
2.15 or 2.16.

¶ 2.15  Reference to Parent Application, 35 U.S.C. 119(e)
or 120 Benefit

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

 Examiner Note:

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

¶ 2.16  Reference to Copending Application

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

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

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

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

¶ 2.17  Reference in Continuing Applications Under 37 CFR
1.60.

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

 Examiner Note:

  1.  In  bracket  1,  insert  either  -division-  or
-continuation-.

  2.  Use only for 37 CFR 1.60 applications. For File
Wrapper Continuing applications under 37 CFR 1.62, use form
paragraph 2.28.

  3.  Do  not  use  if  the  prior  application  is  a
provisional application.

  Where the applicant has inadvertently failed to make a
reference to the parent case in an application filed under
37 CFR 1.60 or 1.62 which is otherwise ready for issue, the
examiner should insert the required reference by examiner's
amendment.

  Sometimes a pending application is one of a series of

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

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

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

  If an applicant refers to a prior noncopending abandoned
application in the specification, the manner of referring to
it should make it evident that it was abandoned before
filing the second.

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

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

  SAME INVENTOR OR INVENTORS

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

previously filed application or provisional application.

  WHEN NOT ENTITLED TO BENEFIT OF FILING DATE

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

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

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

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

  It is possible to file a U.S. national application under
35 U.S.C. 111>(a)< and 37 CFR 1.53>(b)(1)< during the
pendency (prior to the abandonment) of an international
application  which  designates  the  United  States  without
completing the requirements for entering the national stage
under 35 U.S.C. 371(c). The ability to take such action is
based on provisions of the United States patent law. 35
U.S.C.  363  provides  that  "An  international  application
designating the United States shall have the effect from its
international filing date under article 11 of the treaty, of
a national application for patent regularly filed in the
Patent and Trademark Office...". 35 U.S.C. 371(d) indicates
that failure to timely comply with the requirements of 35
U.S.C. 371(c) "shall be regarded as abandonment by the
parties  thereof...".  It  is  therefore  clear  that  an

international application which designates the United States
has the effect of a pending U.S. application from the
international application filing date until its abandonment
as to the United States. The first sentence of 35 U.S.C.
365(c) specifically provides that "In accordance with the
conditions and requirements of section 120 of this title,...
a national application shall be entitled to the benefit of
the  filing  date  of  a  prior  international  application
designating the United States." The condition of 35 U.S.C.
120 relating to the time of filing requires the later
application to be "filed before the patenting or abandonment
of  or  termination  of  proceedings  on  the  first
application...".  The  filing  of  a  continuation  or
continuation - in - part application of an international
application may be useful to patent applicants where the
oath or declaration required by 35 U.S.C. 371(c)(4) cannot
be filed as required by 37 CFR 1.494(h) or 1.495. An
applicant filing an application under 35 U.S.C. 111>(a)< and
37 CFR 1.53>(b)(1)< may obtain additional time to file the
oath or declaration under 37 CFR 1.53(d)>(1)< and 1.136(a).

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

201.12  Assignment Carries Title [R - 1]

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

201.13  Right of Priority of Foreign Application [R - 3]

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

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

  (a) An application for patent for an invention filed in
this  country  by  any  person  who  has,  or  whose  legal
representatives or assigns have, previously regularly filed
an application for a patent for the same invention in a
foreign country which affords similar privileges in the case
of applications filed in the United States or to citizens of
the United States, shall have the same effect as the same
application would have if filed in this country on the date
on which the application for patent for the same invention
was first filed in such foreign country, if the application
in this country is filed within twelve months from the
earliest date on which such foreign application was filed;
but no patent shall be granted on any application for patent
for an invention which had been patented or described in a
printed publication in any country more than one year before
the date of the actual filing of the application in this
country, or which had been in public use or on sale in this
country more than one year prior to such filing.

  (b) No application for patent shall be entitled to this
right of priority unless a claim therefor and a certified
copy of the original foreign application, specification, and
drawings upon which it is based are filed in the Patent and
Trademark Office before the patent is granted, or at such
time during the pendency of the application as required by
the Commissioner not earlier than six months after the
filing  of  the  application  in  this  country.  Such
certification shall be made by the patent office of the
foreign country in which filed and show the date of the
application and of the filing of the specification and other
papers. The Commissioner may require a translation of the
papers filed if not in the English language and such other
information as he deems necessary.

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

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

 ***

 37 CFR 1.55  Claim for foreign priority.

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

certified copy is accurate. The statement must be a verified
statement if made by a person not registered to practice
before the Patent and Trademark Office.

  *****

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

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

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

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

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

 4.  The foreign application must be for the same
invention as the application in the United States.

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

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

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

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

  RECOGNIZED COUNTRIES OF FOREIGN FILING

  The right to rely on a foreign application is known as
the right of priority in international patent law and this
phrase has been adopted in the U.S. statute. The right of
priority originated in a multilateral treaty of 1883, to
which the United States adhered in 1887, known as the Paris
Convention for the Protection of Industrial Property (Paris
Convention).  The  treaty  is  administered  by  the  World
Intellectual  Property  Organization  (WIPO)  at  Geneva,
Switzerland. This treaty has been revised several times, the
latest revision in effect being written in Stockholm in July
1967 (copy at Appendix P of this Manual). Articles 13 - 30
of the Stockholm Revision became effective on September 5,
1970. Articles 1 - 12 of the Stockholm Revision became
effective on August 25, 1973. One of the many provisions of
the treaty requires each of the adhering countries to accord

the  right  of  priority  to  the  nationals  of  the  other
countries and the first United States statute relating to
this subject was enacted to carry out this obligation. There
is another treaty between the United States and some Latin
American countries which also provides for the right of
priority. A foreign country may also provide for this right
by reciprocal legislation.

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

  >Effective January 3, 1995, India became a country for
which the right of priority is recognized in the United
States. Accordingly, applicants seeking patent protection in
the United States may avail themselves of the right of
priority based on patent applications filed in India on or
after January 3, 1995.

  An application for patent filed in the United States on
or after January 1, 1996, by any person who has, or whose
legal representatives or assigns have, previously filed an
application for patent in Thailand shall have the benefit of
the filing date in Thailand in accordance with 35 U.S.C. 119
and 172.<

  NOTE: Following is a list of countries with respect to
which the right of priority referred to in 35 U.S.C. 119(a)
- (d) has been recognized. The letter "I" following the name
of the country indicates that the basis for priority in the
case of these countries is the Paris Convention for the
Protection of Industrial Property (613 O.G. 23, 53 Stat.
1748).  The  letter  "P"  after  the  name  of  the  country
indicates the basis for priority of these countries is the
Inter - American Convention relating to Inventions, Patents,
Designs, and Industrial Models, signed at Buenos Aires,
August 20, 1910 (207 O.G. 935, 38 Stat. 1811). The letter
"L" following the name of the country indicates the basis
for priority is reciprocal legislation in the particular
country.

 >Albania (I),< Algeria (I), Argentina (I), Armenia (I),
Australia (I), Austria (I), >Azerbaijan (I),< Bahamas (I),
Bangladesh (I), Barbados (I), Belarus (I), Belgium (I),
Benin (I), Bolivia (I,P), Bosnia and Herzegovina (I), Brazil
(I, P), Bulgaria, (I), Burkina Faso (I), Burundi (I),
Cameroon (I), Canada (I), Central African Republic (I), Chad
(I), Chile (I), China (I), >Colombia (I),< Congo (I), Costa
Rica (>I,<P), Cote d'Ivoire (I), Croatia (I), Cuba (I, P),
Cyprus (I), Czech Republic (I), Democratic People's Republic
of Korea (I), Denmark (I), Dominican Republic (I,P), Ecuador
(P), Egypt (I), El Salvador (I), Estonia (I), Finland (I),
France (I), Gabon (I), Gambia (I), Georgia (I), Germany (I),
Ghana (I), Greece (I), Guinea (I), Guinea - Bissau (I),
Guatemala (P), Guyana (I), Haiti (I,P), Holy See (I),
Honduras (I,P), Hungary (I), Iceland (I), >India (L),<
Indonesia (I), Iran (Islamic Republic of) (I), Iraq (I),
Ireland (I), Israel (I), Italy (I), Japan (I), Jordan (I),
Kazakstan (I), Kenya (I), Korea, Republic of (I), Kyrgyzstan
(I), Latvia (I), Lebanon (I), Lesotho (I), Liberia (I),
Libya (I), Liechtenstein (I), Lithuania (I), Luxembourg (I),

Madagascar (I), Malawi (I), Malaysia (I), Mali (I), Malta
(I), Mauritania (I), Mauritius (I), Mexico (I), Moldova,
Republic of (I), Monaco (I), Mongolia (I), Morocco (I),
Netherlands (I), New Zealand, (I), Nicaragua (>I,<P), Niger
(I), Nigeria (I), Norway (I), >Panama (I),< Paraguay (I,P),
Peru (I), Philippines (I), Poland (I), Portugal (I), Romania
(I), Russian Federation (I), Rwanda (I), Saint Kitts and
Nevis  (I),  Saint  Lucia  (I),  >Saint  Vincent  and  the
Grenadines (I),< San Marino (I), Senegal, Republic of (I),
Singapore (I), Slovakia (I), Slovenia (I), South Africa (I),
Spain (I), Sri Lanka (I), Sudan (I), Suriname (I), Swaziland
(I), Sweden (I), Switzerland (I), Syria (I), Taiwan (L)
Tajikistan (I), Tanzania, United Republic of (I), >Thailand
(L),< The former Yugoslav Republic of Macedonia (I), Togo
(I), Trinidad and Tobago (I), Tunisia (I), Turkey (I),
Turkmenistan (I), Uganda (I), Ukraine (I), >United Arab
Emirates  (I),<  United  Kingdom  (I),  Uruguay  (I,  P),
Uzbekistan (I), Viet Nam (I), Yugoslavia (I), Zaire (I),
Zambia (I), Zimbabwe (I).

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

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

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

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

 The Priority Claim

  In claiming priority of a foreign application previously
filed under such a treaty, certain information must be

supplied to the Patent and Trademark Office. In addition to
the application number and the date of the filing of the
application, the following information is required: (1) the
name of the treaty under which the application was filed and
(2)  the  name  and  location  of  the  national  or
intergovernmental authority which received such application.

  Certification of the Priority Papers

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

  Identity of Inventors

  The inventors of the U.S. nonprovisional application and
of the foreign application must be the same, for a right of
priority does not exist in the case of an application of
inventor A in the foreign country and inventor B in the
United States, even though the two applications may be owned
by the same party. However, the application in the foreign
country may have been filed by the assignee, or by the legal
representative or agent of the inventor which is permitted
in some foreign countries, rather than by the inventor
himself, but in such cases the name of the inventor is
usually given in the foreign application on a paper filed
therein. An indication of the identity of inventors made in
the oath or declaration accompanying the U.S. nonprovisional
application  by  identifying  the  foreign  application  and
stating that the foreign application had been filed by the
assignee, or the legal representative, or agent, of the
inventor, or on behalf of the inventor, as the case may be,
is acceptable. Joint inventors A and B in a nonprovisional
application filed in the United States Patent and Trademark
Office may properly claim the benefit of an application
filed in a foreign country by A and another application
filed in a foreign country by B, i.e., A and B may each
claim the benefit of their foreign filed applications. >See
MPEP § 605.07.<

  Time for Filing U.S. Nonprovisional Application

  The United States nonprovisional application, or its
earliest parent nonprovisional application under 35 U.S.C.
120, must have been filed within 12 months of the earliest
foreign filing. In computing this 12 months, the first day
is not counted; thus, if an application was filed in Canada
on January 3, 1983, the U.S. nonprovisional application may
be filed on January 3, 1984. The Convention specifies in
Article 4C(2) that "the day of filing is not counted in this
period." (This is the usual method of computing periods, for
example a 6 - month period for reply to an Office action
dated January 2 does not expire on July 1, but the reply may
be made on July 2.) If the last day of the 12 months is a
Saturday, Sunday, or Federal holiday within the District of
Columbia, the U.S. nonprovisional application is in time if
filed on the next succeeding business day; thus, if the
foreign application was filed on September 4, 1981, the U.S.
nonprovisional application is in time if filed on September
7, 1982, since September 4, 1982, was a Saturday and
September 5, 1982 was a Sunday and September 6, 1982 was a

Federal holiday. Since January 1, 1953, the Office has not
received applications on Saturdays and, in view of 35 U.S.C.
21, and the Convention which provides "if the last day of
the period is an official holiday, or a day on which the
Office is not open for the filing of applications in the
country where protection is claimed, the period shall be
extended until the first following working day" (Article
4C3), if the 12 months expires on Saturday, the U.S.
application may be filed on the following Monday. Note Ex
parte  Olah and Kuhn , 131 USPQ 41 (Bd. App. 1960). >See,
e.g.,  Dubost  v.  U.S. Patent and Trademark Office,777 F.2d
1561, 1562, 227 USPQ 977, 977 (Fed. Cir. 1985).<

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

  **>37 CFR 1.9(h) provides that the definition of "Federal
holiday  within  the  District  of  Columbia"  includes  an
official closing of the Office. When the entire Patent and
Trademark Office is officially closed for business for an
entire day, for reasons due to adverse weather or other
causes, the Office will consider each such day a "Federal
holiday within the District of Columbia" under 35 U.S.C. 21.
Any action or fee due on such a day may be taken, or fee
paid, on the next succeeding business day the Office is
open. In addition, 37 CFR 1.6(a)(1) provides "[t]he Patent
and  Trademark  Office  is  not  open  for  the  filing  of
correspondence on any day that is a Saturday, Sunday or
Federal holiday within the District of Columbia" to clarify
that any day that is a Saturday, Sunday or Federal holiday
within the District of Columbia is a day that the Patent and
Trademark Office is not open for the filing of applications
within  the  meaning  of  Article  4(C)(3)  of  the  Paris
Convention. Note further that in accordance with 37 CFR
1.6(a)(2), even when the Office is not open for the filing
of correspondence on any day that is a Saturday, Sunday or
Federal  holiday  within  the  District  of  Columbia,
correspondence deposited as Express Mail with the USPS in
accordance with 37 CFR 1.10 will be considered filed on the
date of its deposit, regardless of whether that date is a
Saturday, Sunday or Federal holiday within the District of
Columbia (under 35 U.S.C. 21(b) or 37 CFR 1.7).<

  When the Patent and Trademark Office is open for
business during any part of a business day between 8:30 a.m.
and 5:00 p.m., papers are due on that day even though the
Office may be officially closed for some period of time
during the business day because of an unscheduled event. The
procedures  of  37  CFR  1.10  may  be  used  for  filing
applications.

  Information regarding whether or not the Office is
officially closed on any particular day may be obtained by
calling (703)*>308 - 4357 which transposes to (703) 308 -
HELP<.

  First Foreign Application

  The 12 months is from earliest foreign filing except as
provided in 35 U.S.C. 119(c). If an inventor has filed an
application in France on January 4, 1982, and an identical
application in the United Kingdom on March 3, 1982, and then
files in the United States on February 2, 1983, the inventor
is not entitled to the right of priority at all; the
inventor would not be entitled to the benefit of the date of

the French application since this application was filed more
than twelve months before the U.S. application, and the
inventor would not be entitled to the benefit of the date of
the United Kingdom application since this application is not
the first one filed. Ahrens  v.  Gray , 1931 C.D. 9; 402
O.G. 261 (Bd. App. 1929). If the first foreign application
was filed in a country which is not recognized with respect
to the right of priority, it is disregarded for this
purpose.

  Public Law 87 - 333 modified 35 U.S.C. 119(c) to extend
the right of priority to "subsequent" foreign applications
if one earlier filed had been withdrawn, abandoned, or
otherwise disposed of, under certain conditions.

  The United Kingdom and a few other countries have a
system of "post - dating" whereby the filing date of an
application is changed to a later date. This "post - dating"
of the filing date of the application does not affect the
status of the application with respect to the right of
priority; if the original filing date is more than one year
prior to the U.S. filing no right of priority can be based
upon the application. See In re Clamp, 151 USPQ 423 (Comm'r
Pat. 1966).

  If an applicant has filed two foreign applications in
recognized countries, one outside the year and one within
the year, and the later application discloses additional
subject matter, a claim in the U.S. application specifically
limited to the additional disclosure would be entitled to
the date of the second foreign application since this would
be the first foreign application for that subject matter.

  EFFECT OF RIGHT OF PRIORITY

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

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

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

  **

 37 CFR 1.55 . Claim for foreign priority

  *****

  **>(b) An applicant in a nonprovisional application may
under certain circumstances claim priority on the basis of
one or more applications for an inventor's certificate in a
country granting both inventor's certificates and patents.
To  claim  the  right  of  priority  on  the  basis  of  an

application for an inventor's certificate in such a country
under 35 U.S.C. 119(d), the applicant when submitting a
claim for such right as specified in paragraph (a) of this
section, shall include an affidavit or declaration. The
affidavit or declaration must include a specific statement
that, upon an investigation, he or she is satisfied that to
the best of his or her knowledge, the applicant, when filing
the application for the inventor's certificate, had the
option to file an application for either a patent or an
inventor's certificate as to the subject matter of the
identified claim or claims forming the basis for the claim
of priority.<

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

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

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

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

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

  Effective Date

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

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

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

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

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

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

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

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

least one country other than, or in addition to, the United
States.

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

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

  Thus, if the priority document is an earlier national
application  and  did  not  accompany  the  international
application  when  filed  with  the  Receiving  Office,  an
applicant must submit such document to the International
Bureau not later than 16 months after the priority date.
However, should an applicant request early processing of his
international application in accordance with Article 23(2)
of the Treaty, the priority document would have to be
submitted to the International Bureau at that time (Rule
17.1(a) of the PCT Regulations). If priority is based on an
earlier international application, a copy does not have to
be  filed,  either  with  the  Receiving  Office  or  the
International  Bureau,  since  the  latter  is  already  in
possession of such international application.

  The formal requirements for obtaining the right of
priority under 35 U.S.C. 365 differ somewhat from those
imposed by 35 U.S.C. 119(a) - (d), although the 1 - year bar
of 35 U.S.C. 102(b), as required by the last clause of
section 119(a) is the same. However, the substantive right
of priority is the same, in that it is derived from Article
4 of the Paris Convention for the Protection of Industrial
Property (Article 8(2) of the Treaty).

  35 U.S.C. 365(c) recognizes the benefit of the filing
date of an earlier application under 35 U.S.C. 120. Any
international application designating the United States,
whether filed with a Receiving Office in this country or
abroad, and even though other countries may have also been
designated, has the effect of a regular national application
in the United States, as of the international filing date.
As  such,  any  later  filed  national  application,  or
international application designating the United States, may
claim  the  benefit  of  the  filing  date  of  an  earlier
international application designating the United States, if
the requirements and conditions of section 120 of title 35

U.S.C. are fulfilled. Under the same circumstances, the
benefit of the earlier filing date of a national application
may be obtained in a later filed international application
designating the United States. In those instances, where the
applicant  relies  on  an  international  application
designating, but not originating in, the United States the
Commissioner may require submission of a copy of such
application together with an English translation, since in
some instances, and for various reasons, a copy of that
international  application  or  its  translation  may  not
otherwise be filed in the Patent and Trademark Office.

 PCT Rule 17  The Priority Document

 17.1  Obligation to Submit Copy of Earlier National
Application

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

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

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

 17.2  Availability of Copies

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

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

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

  (i) the international application was withdrawn,

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

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

 *>(d)<  Paragraphs (a) and (b) shall apply also to any
earlier international application whose priority is claimed
in the subsequent international application.

 37 CFR 1.451.  The priority claim and priority document
in an international application.

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

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

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

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

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

  The requirements of the statute are (a) that the
applicant must file a claim for the right and (b) he or she
must also file a certified copy of the original foreign
application; these papers must be filed within a certain
time limit. The maximum time limit specified in the statute
is that the >claim for priority and the priority< papers
must be filed before the patent is granted, but the statute
gives the Commissioner authority to set this time limit at
an earlier time during the pendency of the application.
>Where a claim for priority under 35 U.S.C. 119(b) has not
been made in the parent application, the claim for priority
may be made in a FWC application filed under 37 CFR 1.62,
provided the parent application has been filed within 12
months from the date of the earliest foreign filing.< If the
required papers are not filed within the time limit set the

right of priority is lost. A reissue was granted in Brenner
v.  State of Israel , 862 O.G. 661; 158 USPQ 584 (D.C. Cir.
1968), where the only ground urged was failure to file a
certified copy of the original foreign application to obtain
the right of foreign priority under 35 U.S.C. 119 before the
patent was granted.

  It should be particularly noted that these papers must
be filed in all cases even though they may not be necessary
during the pendency of the application to overcome the date
of any reference. The statute also gives the Commissioner
authority to require a translation of the foreign documents
if not in the English language and such other information as
the Commissioner may deem necessary.

  37 CFR 1.63 requires that the oath or declaration shall
state in any application in which a claim for foreign
priority is made pursuant to 37 CFR 1.55 must identify the
foreign application for patent or inventors' certificate on
which priority is claimed, and any foreign applications
having a filing date before that of the application on which
priority is claimed, by specifying the application number,
country, day, month, and year of its filing.

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

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

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

 37 CFR 1.55  Claim for foreign priority.

  **

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

  *****

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

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

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

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

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

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

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

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

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

  DURING INTERFERENCE

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

  LATER FILED APPLICATIONS, REISSUES

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

  If the applicant fails to call attention to the fact

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

¶ 2.20  Priority Papers in Parent Application.

  Applicant is reminded that in order for a patent issuing
on the instant application to obtain the benefit of priority
based on priority papers filed in parent ** >application<
no. [1] under 35 U.S.C. 119>(a) - (d)<, a claim for such
priority must be made in this application. In making such
claim,  applicant  may  simply  identify  the  application
containing the priority papers.

  Where the benefit of a foreign filing date, based on a
foreign application, is claimed in a later filed application
or in a reissue application and a certified copy of the
foreign application, as filed, has not been filed in a
parent or related application, a claim for priority may be
made in the later application. In re Tangsru d, 184 USPQ 746
(Comm'r. Pat. 1973). When such a claim is made in the later
application and a certified copy of the foreign application
is placed therein, the examiner should acknowledge the claim
on form PTOL - 326. Note copy in MPEP § 707.

  WHERE AN ACTUAL MODEL WAS ORIGINALLY FILED IN GERMANY

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

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

  Article 4, section A(2) of the Paris Convention however
states that "(a)ny filing that is equivalent to a regular
national  filing  under  the  domestic  legislation  of  any
country of the Union . . shall be recognized as giving
rise to the right of priority." Article 4D(3) of the
Convention further provides that countries of the Union may
require any person making a declaration of priority to
produce  a  copy  of  the  previously  filed  application
(description, drawings, etc.) certified as correct by the
authority which received this application.

  As far as the physical production of a copy of the
earlier filed paper application is concerned, an applicant
should have no difficulty in providing a copy, certified by
the authority which received it, if the earlier filed
application contained drawings illustrating the design. A
problem,  however,  arises  when  the  only  prior  "regular
national filing" consisted of the deposit of an actual model
of the design. 35 U.S.C. 119>(a) - (d)< is silent on this
subject.

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

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

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

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

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

 NO IRREGULARITIES

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

¶ 2.26  Claimed >Foreign< Priority, and Papers Filed

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

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

¶ 2.27  Acknowledge >Foreign< Priority Paper in Parent

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

 Examiner Note:

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

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

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

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

  PAPERS INCONSISTENT

  If the certified copy filed does not correspond to the
application  identified  in  the  application  oath  or
declaration, or if the application oath or declaration does
not  refer  to  the  particular  foreign  application,  the
applicant has not complied with the requirements of the rule
relating to the oath or declaration. In such instances, the
examiner's  letter,  after  acknowledging  receipt  of  the
papers,  should  require  the  applicant  to  explain  the
inconsistency and to file a new oath or declaration stating
correctly the facts concerning foreign applications required
by 37 CFR 1.63 by using Form Paragraph 2.21.

 ¶  2.21 Oath, Declaration Does Not Contain Reference to
Foreign Filing

  Receipt is acknowledged of papers filed under 35 U.S.C.
119>(a) - (d)< based on an application filed in [1] on [2].
Applicant has not complied with the requirements of 37 CFR
1.63(c) since the oath or declaration does not acknowledge
the filing of any foreign application. A new oath or
declaration is required in the body of which the present
application should be identified by * >application< no. and
filing date.

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

  NO CLAIM FOR PRIORITY

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

¶ 2.22  Certified Copy Filed, But No Claim Made

  Receipt is acknowledged of a certified copy of the [1]

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

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

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

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

¶ 2.23  Foreign Filing More Than 12 Months

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

  SOME FOREIGN APPLICATIONS MORE THAN A YEAR BEFORE U.S.
  FILING

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

  CERTIFIED COPY NOT THE FIRST FOREIGN APPLICATION

¶ 2.24  Claimed >Foreign< Priority Date Not the Earliest
Date

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

 NO CERTIFIED COPY

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

¶ 2.25  Claimed >Foreign< Priority, No Papers Filed

  Acknowledgment is made of applicant's claim for priority
based on an application filed in [1] on [2]. It is noted,
however, that applicant has not filed a certified copy of
the [3] application as required by 35 U.S.C. 119>(a) - (d)<.

  Any unusual situation may be referred to the group
director.

  APPLICATION IN ISSUE

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

  RETURN OF PAPERS

  It is sometimes necessary for the examiner to return
papers filed under 35 U.S.C. 119>(a) - (d)< either upon
request  of  the  applicant,  for  example,  to  obtain  a
translation  of  the  certified  copy  of  the  foreign
application,  or  because  they  fail  to  meet  a  basic
requirement of the statute, such as where all foreign
applications were filed more than a year prior to the U.S.
filing date.

  When the papers have not been given a paper number and
endorsed on the file wrapper, it is not necessary to secure
approval of the Commissioner for their return but they
should be sent to the group director for cancellation of the
Office stamps. Where the papers have been made of record in
the file (given a paper number and endorsed on the file
wrapper), a request for permission to return the papers
should be addressed to the Commissioner of Patents and
Trademarks and forwarded to the Group Director for approval.
Where the return is approved, the written approval should be
placed in the file wrapper. Any questions relating to the
return of papers filed under 35 U.S.C. 119>(a) - (d)< should
be directed to the Office of the Assistant Commissioner for
Patents.

 FILLING OUT THE FOREIGN PRIORITY SECTION OF THE FILE JACKET
 LABEL  (PTO-436L)

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

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

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

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

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

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

  Proper  identification  of  priority  applications  is
essential  to  establishing  accurate  and  complete
relationships among various patent documents which reflect
the same invention. Knowledge of these relationships is
essential  to  search  file  management,  technology
documentation and various other purposes.

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

  Note particularly that in the simplified format that:

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

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

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

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

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

201.15  Right of Priority, Overcoming a Reference

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

  Form Paragraph 2.19 may be used in this instance.

¶ 2.19  Overcome Rejection by Translation

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

 Examiner Note:

  This paragraph should follow a rejection based on an
intervening reference.

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

  If the priority papers are already in the file when the
examiner finds a reference with the intervening effective
date, the examiner will study the papers, if they are in the
English language, to determine if the applicant is entitled
to their date. If the applicant is found to be entitled to

the date, the reference is simply not used but may be cited
to applicant on form PTO - 892. If the applicant is found
not entitled to the date, the unpatentable claims are
rejected on the reference with an explanation. If the papers
are not in the English language and there is no translation,
the examiner may reject the unpatentable claims and at the
same time require an English translation for the purpose of
determining the applicant's right to rely on the foreign
filing date.

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

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

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

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

  It may occasionally happen that the U.S. application
will be found entitled to the filing date of the foreign

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

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

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

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

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

  Although In re Van Esdonk involved the patent of a
continuation application filed under 37 CFR 1.60, it is
proper to apply the holding of that case in similar factual
circumstances to any patented application having benefits
under 35 U.S.C. 120. This is primarily because a claim to
foreign priority benefits in a continuing application, where
the claim has been perfected in the parent application,
constitutes in essence a mere affirmation of the applicant's
previously expressed desire to receive benefits under 35
U.S.C. 119>(a) - (d)< for subject matter common to the
foreign, parent, and continuing applications.

  In summary, a Certificate of Correction under 35 U.S.C.
255 and 37 CFR 1.323 may be requested and issued in order to
perfect a claim for foreign priority benefit in a patented
continuing application if the requirements of 35 U.S.C.
119>(a) - (d)< had been satisfied in the parent application
prior to issuance of the patent and the requirements of 37
CFR 1.55(a) are met.

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

202  Cross - Noting

202.01  In Specification [R - 3]

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

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

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

  (ii) entitled to a filing date as set forth in §
1.53(b)(1), § 1.60 or § 1.62 and include the basic filing
fee set forth in § 1.16; or

  (iii) entitled to a filing date as set forth in §
1.53(b)(1)  and  have  paid  therein  the  processing  and
retention fee set forth in § 1.21(l) within the time period
set forth in § 1.53(d)(1).

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

  *****

  See also 37 CFR 1.79 and MPEP § 201.11.

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

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

  The heading of a printed patent includes all identifying
parent data of continuation - in - part, continuation,
divisional, substitute, and reissue applications, as well as
any provisional application from which priority is claimed.
Therefore, the identifying data of all parent or prior
applications,  when  given  in  the  specification  must  be
inserted by the examiner in black ink on the file wrapper in

the case of a DIVISION, a CONTINUATION, a CONTINUATION - IN
- PART and, whether given in the specification or not, in
the  case  of  a  SUBSTITUTE  Application.  Similarly,  the
application number of any provisional application from which
priority is claimed should be printed on the file wrapper.

  Where  parent  or  prior  application  data,  including
provisional application data, is preprinted on the file
wrapper, the examiner should check that data for accuracy>,
including whether the application is, in fact, copending
with  the  parent  application  or  applications  of  which
priority  is  claimed<.  Where  the  data  is  correct,  the
examiner should initial the file wrapper in the provided
space. Should there be error in the preprinted >parent<
application >data< **, the application should be forwarded
to  *  Application  Division  >Customer  Corrections<  for
correction or entry of the data >in the PALM data base<,
accompanied by **>a completed Application Division Data Base
Routing Slip<. Only these terms should be used to specify
the relationship between applications because of clarity and
ease of printing. The status of the parent application, but
not a provisional application, should also be indicated if
it has been patented, abandoned, or published under either
the Defensive Publication Program or the Trial Voluntary
Protest Program. Note MPEP § 1302.04(f). The "None" boxes
must  be  marked  when  no  parent  or  prior  application
information is present on the file wrappers containing such
boxes. This should be done no later than the first action.

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

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

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

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

  In accordance with MPEP § 201.14(c), the examiner will
fill in the spaces concerning foreign applications on the
face of the older file wrappers.

  The information to be written on the face of the file
wrapper consists of the country, application date (filing
date), and if available, the application and patent numbers.
In some instances, the particular nature of the foreign
application  such  as  "utility  model"  (Germany
(Gebrauchsmuster) and Japan) must be written in parentheses
before the application number. For example: Application
Number (utility model) B62854.

  At the present time the computer printed file wrapper
labels include the prior foreign application information.
The examiner should check this information for accuracy.
Should  there  be  error,  the  examiner  should  make  the
appropriate corrections directly on the file wrapper in
black ink. The examiner should initial the file wrapper in
the  "VERIFIED"  space  provided  when  the  information  is
correct or has been amended to be correct. However, the

examiner must still indicate on the Office action and on the
file wrapper whether the conditions of 35 U.S.C. 119>(a) -
(d)< have been met.

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

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

202.04  In Oath or Declaration

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

202.05  In Case of Reissues

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

203  Status of Applications [R - 1]

203.01  New [R - 1]

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

203.02  Rejected [R - 1]

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

203.03  Amended [R - 1]

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

203.04  Allowed or in Issue [R - 1]

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

abandoned, as provided in 37 CFR 1.316. See MPEP § 712.

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

203.05  Abandoned [R - 3]

  An abandoned application is, inter alia , one which is
removed from the Office docket of pending cases (1) through
formal abandonment by the applicant (acquiesced in by the
assignee if there is one) or by the attorney or agent of
record,  **  (2)  through  failure  of  applicant  to  take
appropriate action at some stage in the prosecution of a
nonprovisional application, (3) for failure to pay the issue
fee (MPEP § § 203.07, 711 to 711.05, 712) , or (4) >in the
case of a provisional application,< no later than 12 months
after the filing date of *>the< provisional application (see
MPEP §*>711.03(e)< and 35 U.S.C. 111(b)(5)).

203.06  Incomplete

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

203.07  Abandonment for Failure to Pay Issue Fee

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

203.08  Status Inquiries [R - 2]

  NEW APPLICATION

  Current examining procedures now provide for the routine
mailing from the examining groups of Form PTOL -*>37< in
every case of allowance of an application. Thus, the mailing
of a form PTOL -*>37< in addition to a formal Notice of
Allowance (PTOL - 85) in all allowed cases would seem to
obviate  the  need  for  status  inquiries  even  as  a
precautionary measure where the applicant may believe his or
her new application may have been passed to issue on the
first  examination.  However,  as  an  exception,  a  status
inquiry would be appropriate where a Notice of Allowance is
not received within three months from receipt of ** form
PTOL -*>37<.

  Current examining procedures also aim to minimize the
spread in dates among the various examiner dockets of each
art  unit  and  group  with  respect  to  actions  on  new
applications. Accordingly, the dates of the "oldest new
applications" appearing in the Official Gazette are fairly
reliable guides as to the expected time frames of when the
examiners reach the cases for action.

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

  AMENDED APPLICATIONS

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

  IN GENERAL

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

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

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

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

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

  In those instances where the letter of inquiry goes
beyond mere matters of inquiry, it should not be marked as a
"status  letter".  Such  letters  must  be  entered  in  the
application file as a permanent part of the record. The

inquiry should be answered by the examiner, however, and in
a manner consistent with the provisions of 37 CFR 1.14.

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

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

203.08(a)  Congressional and Other Official Inquiries [R
- 3]

  Correspondence and inquiries from the White House,
Members of Congress, embassies, and heads of Executive
departments and agencies normally are cleared through the
Office  of  the  **>Administrator  for  Legislative  and
International< Affairs.

  When  persons  from  the  designated  official  sources
request services from the Office, or information regarding
the business of the Office, they should, under long -
standing instructions, be referred, at least initially, to
the **>Congressional liaison in the Office of Legislative
and International< Affairs.

  This procedure is used so that there will be uniformity
in the handling of contacts from the indicated sources, and
also so that compliance with directives of the Department of
Commerce is attained.

  Inquiries referred to in this section, particularly
correspondence from Congress or the White House, should
immediately  be  transmitted  to  the  **>Administrator  for
Legislative and International< Affairs by messenger, and the
**>Congressional liaison in the Office of Legislative and
International< Affairs should be notified by phone that such
correspondence has been received.

  - -- - -- END - -- - --

  Chapter 300 Ownership and Assignment

  301  Assignability of Patents and Applications
  301.01 Accessibility of Assignment Records
  302  Recording of Assignment Documents
  302.01 Assignment Document Must Be Original or True
  Copy for Recording
  302.02 Translation of Assignment Document
  302.03 Identifying Patent or Application
  302.04 Foreign Assignee May Designate Domestic
  Representative
  302.05 Address of Assignee
  302.06 Fee for Recording
  302.07 Assignment Document Must be Accompanied by a
  Cover Sheet

  302.08 Mailing Address for Submitting Assignment
  Documents
  303  Assignment Documents Not Endorsed on Pending
  Applications
  306  Assignment of Division, Continuation, Substitute,
  and Continuation - in - Part in Relation to Parent
  Case
  306.01 Assignment of an Application Claiming the
  Benefits of a Provisional Application
  307  Issue to Assignee
  309  Restrictions Upon Employees of Patent and Trademark
  Office
  310  Government License Rights to Contractor - Owned
  Inventions Made Under Federally Sponsored Research and
  Development
  311  Filing of Notice of Arbitration Awards
  313  Recording of Licenses, Security Interests, and
  Other Documents Other Than Assignments
  314  Certificates of Change of Name or of Merger
  315  Indexing Against a Recorded Certificate
  317  Handling of Documents in the Assignment Division
  317.01 Recording Date
  317.02 Correction of Returned Documents and Cover
  Sheets
  317.03 Effect of Recording
  318  Documents Not to be Placed in Files
  319  Examining Group May Request Report on Title
  320  Title Reports
  323  Procedures for Correcting Errors in Recorded
  Assignment Document
  323.01 Correction of Error in Recorded Cover Sheet
  324  Establishing Right of Assignee to Take Action

301  Assignability of Patents and Applications [R - 1]

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

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

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

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

 An assignment, grant, or conveyance shall be void as
against any subsequent purchaser or mortgagee for valuable
consideration, without notice, unless it is recorded in the
Patent and Trademark Office within three months from its

date or prior to the date of such subsequent purchase or
mortgage.

 35 U.S.C. 262.  Joint owners.

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

 37 CFR 3.1.  Definitions.

 For purposes of this part, the following definitions shall
apply:

 Application means a national application for patent, an
international application that designates the United States
of America, or an application to register a trademark unless
otherwise indicated.

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

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

 Office means the Patent and Trademark Office.

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

 Registration means a trademark registration issued by the
Office.

301.01  Accessibility of Assignment Records [R - 3]

 37 CFR 1.12.  Assignment records open to public
inspection.

 (a)(1)  Separate assignment records are maintained in
the Patent and Trademark Office for patents and trademarks.
The assignment records, relating to original or reissue
patents, including digests and indexes, for assignments
recorded on or after May 1, 1957, and assignment records
relating to pending or abandoned trademark applications and
to trademark registrations, for assignments recorded on or
after January 1, 1955, are open to public inspection at the
Patent and Trademark Office, and copies of those assignment
records may be obtained upon request and payment of the fee
set forth in § 1.19 and 2.6 of this chapter.

 (2)  All records of assignments of patents recorded
before May 1, 1957, and all records of trademark assignments
recorded before January 1, 1955, are maintained by the
National Archives and Records Administration (NARA). The
records  are  open  to  public  inspection.  Certified  and
uncertified copies of those assignment records are provided
by NARA upon requests and payment of the fees required by
NARA.

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

  (c) Any request by a member of the public seeking copies
of any assignment records of any pending or abandoned patent
application preserved in *>confidence< under § 1.14, or any
information with respect thereto, must:

  (1) Be in the form of a petition accompanied by the
petition fee set forth in § 1.17(i); or

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

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

 Assignment documents relating to patents, registrations of
trademarks, and applications for registration of trademarks
are open to public inspection.

  The  Office  will  not  open  only  certain  parts  of  an
assignment document to public inspection. If such a document
contains two or more items, any one of which, if alone,
would be open to such inspection, then the entire document
will be open. Thus, if a document covers either a trademark
or a patent in addition to one or more patent applications,
it will be available to the public ab initio ; and if it
covers a number of patent applications, it will be so
available as soon as any one of them is patented. Documents
relating only to one or more pending applications for patent
will not be open to public inspection.

 If the application on which a patent was granted is a
division or continuation of an earlier case, the assignment
records  of  that  earlier  case  will  be  open  to  public
inspection; similar situations involving continuation - in -
part applications will be considered on their individual
merits upon petition to the Office of Petitions in the
Office of the Assistant Commissioner for Patents.

 Assignment records relating to reissue applications are
open to public inspection.

 Requests for abstracts of title for assignments of patents
recorded after May 1, 1957, are provided by the Office upon
request and payment of fee required in 37 CFR 1.19. Requests
for copies of pre - 1957 records for patents should be
directed to the National Archives and Records Administration

(NARA). Since these records are maintained by NARA, it is
more expeditious to request copies directly from NARA,
rather than from the Office, which would then have to route
the requests to NARA. Payment of the fees required by NARA
should accompany all requests for copies.

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

302  Recording of Assignment Documents

 37 CFR 3.11.  Documents which will be recorded.

 Assignments of applications, patents, and registrations,
accompanied by completed cover sheets as specified in § 3.28
and 3.31, will be recorded in the Office. Other documents,
accompanied by completed cover sheets as specified in § 3.28
and 3.31, affecting title to applications, patents, or
registrations, will be recorded as provided in this part or
at the discretion of the Commissioner.

 Effective September 4, 1992, a Part 3 has been added to 37
CFR to set forth Office rules on recording assignments and
other documents and the rights of an as signee.

302.01  Assignment Document Must Be Original or True Copy
for Recording

 37 CFR 3.24.  Formal requirements for documents and
cover sheets.

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

 The Patent and Trademark Office will accept and record only
an original, or a true copy of an original assignment or
other document. See MPEP § 317.

 Certification shall be made by the person submitting a copy
of an original document that the document submitted is a
true copy of the original. The certification is not required
to be in oath or declaration form.

302.02  Translation of Assignment Document

 37 CFR 3.26.  English language requirement.

 The Office will accept and record non - English language
documents  only  if  accompanied  by  a  verified  English
translation signed by the individual making the translation.

 The assignment document, if not in the English language,
will not be recorded unless accompanied by a verified
English translation signed by the translator.

302.03  Identifying Patent or Application [R - 1]

 37 CFR 3.21.  Identification of patents and patent
applications.

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

 The patent or patent application to which an assignment
relates must be identified by patent number or application
number unless the assignment is executed concurrently with
or subsequent to the execution of the application but before
the application is filed. Then, the application must be
identified by the date of execution, the names(s) of the
inventors, and the title of the invention. >If an assignment
of  a  provisional  application  is  executed  before  the
provisional application is filed, it must identify the
provisional application by names(s) of the inventors and the
title of the invention.<

 The Office makes every effort to provide applicants with
the application numbers for newly filed patent applications
as soon as possible. It is suggested, however, that an
assignment be written to allow entry of the identifying
number after the execution of the assignment. An example of
acceptable wording is:

 "I hereby authorize and request my attorney, (Insert name),
of  (Insert  address),  to  insert  here  in  parentheses
(Application  number  ,  filed  )  the  filing  date  and
application number of said application when known."

302.04  Foreign Assignee May Designate Domestic
Representative

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

 Every patentee not residing in the United States may file
in the Patent and Trademark Office a written designation
stating the name and address of a person residing within the
United States on whom may be served process or notice of
proceedings affecting the patent or rights thereunder. If
the person designated cannot be found at the address given
in  the  last  designation,  or  if  no  person  has  been
designated,  the  United  States  District  Court  for  the

District of Columbia shall have jurisdiction and summons
shall be served by publication or otherwise as the court
directs. The court shall have the same jurisdiction to take
any action respecting the patent or rights thereunder that
it would have if the patentee were personally within the
jurisdiction of the court.

 37 CFR 3.61.  Domestic representative.

 If the assignee of a trademark application or registration
is not domiciled in the United States, the assignee must
designate,  in  writing  to  the  Office,  a  domestic
representative. An assignee of a patent application or
patent  may  designate  a  domestic  representative  if  the
assignee  is  not  residing  in  the  United  States.  The
designation shall state the name and address of a person
residing within the United States on whom may be served
process or notice of proceedings affecting the application,
patent or registration or rights thereunder.

 An assignee not domiciled in the United States may, by
written  document  signed  by  such  assignee,  designate  a
domestic  representative.  The  designation  of  domestic
representative should always be a paper separate from any
assignment document, in order that the paper of designation
can be retained in the appropriate application or patent
file. Also, there should be a separate paper of designation
of representative for each patent or application, so that a
designation  paper  can  be  placed  in  each  file.  The
designation of a domestic representative should be directed
to the Office of the Solicitor for processing.

302.05  Address of Assignee

  The  address  of  the  assignee  may  be  recited  in  the
assignment document and must be given in the required cover
sheet. See MPEP § 302.07.

302.06  Fee for Recording

 37 CFR 3.41.  Recording fees.

 All requests to record documents must be accompanied by the
appropriate fee. A fee is required for each application,
patent  and  registration  against  which  the  document  is
recorded as identified in the cover sheet. The recording fee
is set in § 1.21(h) of this chapter for patents and in §
2.6(q) of this chapter for trademarks.

 The recording fee set forth in 37 CFR 1.21(h) is charged
for each patent application and patent identified in the
required cover sheet.

302.07  Assignment Document Must Be Accompanied by a Cover
Sheet

 37 CFR 3.28.  Requests for recording.

 Each document submitted to the Office for recording must be
accompanied by at least one cover sheet as specified in §
3.31 referring either to those patent applications and
patents,  or  to  those  trademark  applications  and
registrations, against which the document is to be recorded.
If a document to be recorded includes interests in, or
transactions  involving,  both  patents  and  trademarks,

separate  patent  and  trademark  cover  sheets  must  be
submitted. Only one set of documents and cover sheets to be
recorded should be filed. If a document to be recorded is
not accompanied by a completed cover sheet, the document and
any incomplete cover sheet will be returned pursuant to §
3.51 for proper completion of a cover sheet and resubmission
of the document and a completed cover sheet.

 37 CFR 3.31.  Cover sheet content.

 (a)  Each patent or trademark cover sheet required by §
3.28 must contain:

 (1)  The name of the party conveying the interest;

 (2)  The name and address of the party receiving the
interest;

 (3)  A  description  of  the  interest  conveyed  or
transaction to be recorded;

 (4)  Each  application  number,  patent  number  or
registration number against which the document is to be
recorded, or an indication that the document is filed
together with a patent application;

 (5)  The  name  and  address  of  the  party  to  whom
correspondence concerning the request to record the document
should be mailed;

 (6)  The  number  of  applications,  patents  or
registrations identified in the cover sheet and the total
fee;

 (7)  The date the document was executed;

 (8)  An indication that the assignee of a trademark
application or registration who is not domiciled in the
United States has designated a domestic representative (see
§ 3.61); and

 (9)  A statement by the party submitting the document
that to the best of the person's knowledge and belief, the
information contained on the cover sheet is true and correct
and any copy submitted is a true copy of the original
document; and

 (10)  The signature of the party submitting the document.

 (b)  A cover sheet may not refer to both patents and
trademarks.

 Each assignment document submitted to the Office for
recording must be accompanied by a cover sheet as required
by 37 CFR 3.28. The patent cover sheet must contain:

 (1)  the name of the party conveying the interest;

 (2)  the name and address of the party receiving the
interest;

 (3)  a  description  of  the  interest  conveyed  or
transaction to be recorded;

 (4)  each patent application number or patent number

against  which  the  document  is  to  be  recorded,  or  an
indication that the document is filed together with a patent
application;

 (5)  the  name  and  address  of  the  party  to  whom
correspondence concerning the request to record the document
should be mailed;

 (6)  the number of patent applications and patents
identified in the cover sheet and the total fee;

 (7)  the date the document was executed;

 (8)  a statement by the party submitting the document
that to the best of the person's knowledge and belief, the
information contained on the cover sheet is true and correct
and any copy submitted is a true copy of the original
document; and

 (9)  the signature of the party submitting the document.

 The term "party" as used in 37 CFR 3.31 means the person
whose name appears on the documents to be recorded, that
person's attorney or registered agent, or an appropriate
official where a corporation's or other organization's name
appears on the document.

 Examples of the type of descriptions of the interest
conveyed  or  transaction  to  be  recorded  that  can  be
identified are: (1) assignment, (2) security agreement, (3)
merger, (4) change of name, (5) license, (6) foreclosure,
(7) lien and (8) contract.

  A  patent  cover  sheet  may  not  refer  to  trademark
applications or registrations.

302.08  Mailing Address for Submitting Assignment
Documents [R - 3]

 37 CFR 3.27.  Mailing address for submitting documents
to be recorded.

 Documents and cover sheets to be recorded should be
addressed to the Commissioner of Patents and Trademarks, Box
Assignments, Washington, DC 20231, unless they are filed
together with new applications or with a petition under §
3.81(b).

 37 CFR 3.27 has been added to set out how documents
submitted for recording should be addressed to the Office.
To ensure prompt and proper processing, documents and their
cover sheets should be addressed to the Commissioner of
Patents and Trademarks, Box Assignments, Washington, DC
20231, unless they are filed together with new applications
or with a petition under 37 CFR 3.81(b). Petitions under 37
CFR  3.81(b)  should  be  addressed  to  the  >Assistant<
Commissioner *>for< Patents **, Box DAC, Washington, DC
20231.  New  applications  and  other  petitions  should  be
addressed to the >Assistant< Commissioner *>for< Patents **,
Washington, DC 20231.

303  Assignment Documents Not Endorsed on Pending
Applications

 Certified copies of patent applications as filed do not

include an indication of assignment documents. Applicants
desiring an indication of assignment documents of record
should request separately certified copies of assignment
documents and submit the fees required by 37 CFR 1.19.

 When the determination of the assignment condition of an
application  is  significant,  as  when  applications  of
different  inventors  contain  conflicting  claims,  it  is
necessary for the examining group to submit the application
to the Assignment Search Branch for a title report. See MPEP
§ 319 and § 320.

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

 In the case of a division or continuation, a prior
assignment recorded against the original application is
applied to the division or continuation application because
the assignment recorded against the original application
gives the assignee rights to the subject matter common to
both applications.

 In the case of a substitute or continuation - in - part, a
prior assignment of the original application is not applied
to the substitute or continuation - in - part application
because  the  assignment  recorded  against  the  original
application gives the assignee rights to only the subject
matter  common  to  both  applications.  Substitute  or
continuation  -  in  -  part  applications  require  a  new
assignment if they are to be issued to an assignee.

  The  front  page  of  the  printed  patent  includes  all
identifying  parent  data  of  continuation  -  in  -  part,
continuation,  divisional,  and  reissue  applications.  It
should be noted, however, that inclusion of this information
does not necessarily indicate that the claims are entitled
to the benefit of the earlier filing date.

>306.01  Assignment of an Application Claiming the Benefits
of a Provisional Application [R - 1]

  An  application  claiming  the  priority  benefits  of  a
provisional application under 35 U.S.C. 119(e) should not be
called a continuation, division, or continuation - in - part
even though the claim for priority from a provisional
application would make it appear to be one of these types of
continuing applications. The benefit of an earlier filing
date for continuations, divisions, and continuations - in -
part may be claimed under the provisions of 35 U.S.C. 120
while the benefit of an earlier filing date of a provisional
application may be claimed under the provisions of 35 U.S.C.
119(e).

 As set forth in MPEP § 306, assignments recorded against an
original  application  gives  the  assignee  rights  to  the
subject matter common to both applications. Therefore, a
prior assignment in a parent application carries over into
continuation and division applications since all subject
matter contained in the continuation or division application
was included in the parent. Continuations - in - part
require new assignments due to the additional material
included therein.

 If an application which claims the earlier filing date of a
provisional application under 35 U.S.C. 119(e) includes only

subject matter which formed a part of the provisional
application, an assignment recorded against the provisional
application will be effective in the later application,
similar to the practice with respect to continuations and
divisions filed under 35 U.S.C. 120. If an application
claiming  the  earlier  filing  date  of  a  provisional
application includes subject matter that is not common with
subject  matter  of  the  provisional  application,  new
assignment  papers  must  be  submitted  in  the  later
application,  similar  to  the  practice  with  respect  to
continuations - in - part filed under 35 U.S.C. 120.<

307  Issue to Assignee [R - 3]

 35 U.S.C. 152.  Issue of patent to assignee.

 Patents may be granted to the assignee of the inventor of
record  in  the  Patent  and  Trademark  Office,  upon  the
application made and the specification sworn to by the
inventor, except as otherwise provided in this title.

 37 CFR 3.81.  Issue of patent to assignee.

 (a)  For a patent application, if an assignment of the
entire right, title and interest is recorded before the
issue fee is paid, the patent may issue in the name of the
assignee. If the assignee holds an undivided part interest,
the patent may issue jointly to the inventor and the
assignee. At the time the issue fee is paid, the name of the
assignee must be provided if the patent is to issue solely
or jointly to that assignee.

 (b)  If the assignment is submitted for recording after
the date of payment of the issue fee, but prior to issuance
of the patent, the assignee may petition that the patent
issue to the assignee. Any such petition must be accompanied
by the fee set forth in § 1.17(i)(1) of this chapter.

 Normally, for the patent to issue to an assignee, the
assignment must be recorded in the Patent and Trademark
Office at a date not later than the day on which the issue
fee is paid. If the assignment is submitted for recording
after the day on which the issue fee is paid, the patent may
issue to an assignee upon granting a petition filed under 37
CFR 3.81.

 Only the first appearing name of an assignee will be
printed on the patent where multiple names for the same
party are identified on the Issue Fee Transmittal form, PTOL
- 85B. Such multiple names may occur when both a legal name
and an "also known as" or "doing business as" name is also
included. This printing practice will not, however, affect
the existing practice of recording assignments with the
Office in the Assignment Division. The assignee entry on
form PTO - 85B should still be completed to indicate the
assignment data as recorded in the Office. For example, the
assignment filed in the Office and, therefore, the PTOL -
85B assignee entry might read "Smith Company doing business
as (d.b.a.) Jones Company." The assignee entry on the
printed patent will read "Smith Company."

 Irrespective of whether the assignee participates in the
prosecution of the application, the patent issues to the
assignee if so indicated on the Issue Fee Transmittal form
PTOL - 85B. Unless an assignee's name and address are

identified in item*>3< of the Issue Fee Transmittal form
PTOL  -  85B,  the  patent  will  issue  to  the  applicant.
Assignment data printed on the patent will be based solely
on the information so supplied.

 A request for a certificate of correction under 37 CFR
1.323 (see MPEP § 1481 and § 1485) arising from incomplete
or erroneous assignee's name furnished in item*>3< of PTOL -
85B will not be granted unless a petition under 37 CFR 1.183
has been granted. Any such petition under 37 CFR 1.183
should be directed to the Office of Petitions and should
include: (1) the petition fee required by 37 CFR 1.17(h);
(2) a request that 37 CFR 3.81(a) be waived to permit the
correct name of the assignee to be provided after issuance
of the patent; (3) a statement (verified if made by other
than a registered attorney or agent) that the failure to
include the correct assignee name on the PTOL - 85B was
inadvertent; and (4) a copy of the Notice of Recordation of
Assignment Document.

309  Restrictions Upon Employees of Patent and
Trademark Office

 35 U.S.C. 4.  Restrictions on officers and employees as
to interests in patents.

 Officers and employees of the Patent and Trademark Office
shall be incapable, during the period of their appointments
and for one year thereafter, of applying for a patent and of
acquiring, directly or indirectly, except by inheritance or
bequest, any patent or any right or interest in any patent,
issued or to be issued by the Office. In patents applied for
thereafter they shall not be entitled to any priority date
earlier  than  one  year  after  the  termination  of  their
appointment.

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

 Where a Government contractor retains U.S. domestic patent
rights, the contractor is required to include the following
statement at the beginning of the application and any
patents issued thereon:

 "The U.S. Government has a paid - up license in this
invention and the right in limited circumstances to require
the patent owner to license others on reasonable terms as
provided for by the terms of (contract No. or Grant No.)
awarded by (Agency)."

  If  reference  is  made  in  the  first  sentence  of  the
application  to  prior  copending  applications  of  the
applicant, such prior applications must be referred to in
the first sentence of the specification (37 CFR 1.78(a) and
MPEP § 201.11), and in this case the required "Government
License Rights" statement should follow immediately as the
second paragraph of the specification.

 If there is no reference to an earlier application, the
required "Government License Rights" statement should appear
as the first paragraph of the specification.

311  Filing of Notice of Arbitration Awards

 35 U.S.C. 294.  Voluntary arbitration.

 (a)  A contract involving a patent or any right under a
patent may contain a provision requiring arbitration of any
dispute relating to patent validity or infringement arising
under the contract. In the absence of such a provision, the
parties to an existing patent validity or infringement
dispute may agree in writing to settle such dispute by
arbitration. Any such provision or agreement shall be valid,
irrevocable, and enforceable, except for any grounds that
exist at law or in equity for revocation of a contract.

 (b)  Arbitration of such disputes, awards by arbitrators
and confirmation of awards shall be governed by title 9,
United States Code, to the ex tent such title is not
inconsistent with this section. In any such arbitration
proceeding, the defenses provided for under section 282 of
this title shall be considered by the arbitrator if raised
by any party to the proceeding.

 (c)  An award by an arbitrator shall be final and
binding between the parties to the arbitration but shall
have no force or effect on any other person. The parties to
an arbitration may agree that in the event a patent which is
the subject matter of an award is subsequently determined to
be invalid or unenforceable in a judgment rendered by a
court of competent jurisdiction from which no appeal can or
has been taken, such award may be modified by any court of
competent jurisdiction upon application by any party to the
arbitration. Any such modification shall govern the rights
and obligations between such parties from the date of such
modification.

 (d)  When an award is made by an arbitrator, the
patentee, his assignee or licensee shall give notice thereof
in writing to the Commissioner. There shall be a separate
notice prepared for each patent involved in such proceeding.
Such notice shall set forth the names and addresses of the
parties, the name of the inventor, and the name of the
patent owner, shall designate the number of the patent, and
shall contain a copy of the award. If an award is modified
by a court, the party requesting such modification shall
give notice of such modification to the Commissioner. The
Commissioner shall, upon receipt of either notice, enter the
same in the record of the prosecution of such patent. If the
required notice is not filed with the Commissioner, any
party to the proceeding may provide such notice to the
Commissioner.

 (e)  The award shall be unenforceable until the notice
required by subsection (d) is received by the Commissioner.

 37 CFR 1.335.  Filing of notice of arbitration awards.

 (a)  Written notice of any award by an arbitrator
pursuant to 35 U.S.C. 294 must be filed in the Patent and
Trademark Office by the patentee, or the patentee's assignee
or licensee. If the award involves more than one patent a
separate notice must be filed for placement in the file of
each patent. The notice must set forth the patent number,
the names of the inventor and patent owner, and the names
and addresses of the parties to the arbitration. The notice
must also include a copy of the award.

 (b)  If an award by an arbitrator pursuant to 35 U.S.C.

294 is modified by a court, the party requesting the
modification must file in the Patent and Trademark Office, a
notice of the modification for placement in the file of each
patent to which the modification applies. The notice must
set forth the patent number, the names of the inventor and
patent owner, and the names and addresses of the parties to
the arbitration. The notice must also include a copy of the
court's order modifying the award.

 (c)  Any award by an arbitrator pursuant to 35 U.S.C.
294 shall be unenforceable until any notices required by
paragraph (a) or (b) of this section are filed in the Patent
and Trademark Office. If any required notice is not filed by
the party designated in paragraph (a) or (b) of this
section, any party to the arbitration proceeding may file
such a notice.

 The written notices required by this section should be
directed to the attention of the Office of the Solicitor,
which  Office  will  be  responsible  for  processing  such
notices.

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

 In addition to assignments, other documents affecting title
to  a  patent  or  application  will  be  recorded  in  the
Assignment Division of the Patent and Trademark Office.
Documents  not  affecting  title  may  be  recorded  at  the
discretion of the Commissioner. (37 CFR 3.11).

  Thus,  some  documents  which  relate  to  patents  or
applications  will  be  recorded,  although  they  do  not
constitute a transfer or change of title. Typical of these
documents which are accepted for recording are license
agreements and agreements which convey a security interest.
Such documents are recorded in the public interest in order
to give third parties notification of equitable interests or
other matters relevant to the ownership of a patent or
application.

  Any  document  returned  unrecorded,  which  the  sender
nevertheless  believes  represents  an  unusual  case  which
justifies recordation, may be submitted to the Office of
Petitions in the Office of the Assistant Commissioner for
Patents with a petition under 37 CFR 1.181 requesting
recordation of the document.

 The recordation of a document is not a determination of the
effect  of  the  document  on  the  chain  of  title.  The
determination of what, if any, effect a document has on
title will be made by the Office at such times as ownership
must be established to permit action to be taken by the
Office in connection with a patent or an application. See
MPEP § 324.

314  Certificates of Change of Name or of Merger

 Certificates issued by appropriate authorities showing a
change of name of a business or a merger of businesses are
recordable.  Although  a  mere  change  of  name  does  not
constitute a change in legal entity, it is properly a link
in the chain of title. Documents of merger are also proper
links in the chain of title. They may represent a change of
entity as well as a change of name.

315  Indexing Against a Recorded Certificate [R - 3]

 **>Prior to amendment of the Rules of Practice to add Part
3 to 37 CFR, it had been the practice of the Patent and
Trademark Office to process requests for "indexing" or
"cross  -  referencing"  additional  patent  numbers  or
application  numbers  against  a  document,  other  than  an
assignment, previously recorded in the Assignment Division,
upon submission of a transmittal letter and recording fee.
The Office no longer processes such indexing requests. Such
requests do not comply with 37 CFR 3.11, 3.28, and 3.31,
which require that each request for recordation include the
document to be recorded and a cover sheet.

 Therefore, even where a document has already been recorded
in the Assignment Division in connection with a patent or
patent application, a party that wishes recordation of that
document with respect to additional patents and/or patent
applications must submit the following to the Assignment
Division:

 (1) the original document, or a true copy of the original
document (may consist of the previously recorded papers on
which the Assignment Division has stamped the reel and frame
numbers at which they are recorded, or a copy of such
papers);

 (2) a completed cover sheet (see 37 CFR 3.31 and MPEP §
302.07); and

 (3) the appropriate recording fee (see 37 CFR 1.21(h) and
3.41).The Office will assign a new recording date to that
submission, update the assignment database, and microfilm
the cover sheet and document, which shall become part of the
official record.<

317  Handling of Documents in the Assignment Division

 All documents and cover sheets submitted for recording are
examined for formal requirements in the Assignment Division
in order to separate documents which are recordable from
those which are not recordable.

 Documents and cover sheets which are considered not to be
recordable are returned to the sender by the Assignment
Division with an explanation. If the sender disagrees or
believes that the document represents an unusual case which
justifies recordation, the sender may present the question
to the Commissioner by way of petition under 37 CFR 1.181,
filed with the Office of Petitions in the Office of the
Assistant Commissioner for Patents.

 After an assignment and cover sheet have been recorded,
they will be returned to the name and address indicated on
the cover sheet to receive correspondence, showing the reel
and frame number.

317.01  Recording Date

 37 CFR 3.51.  Recording date.

 The date of recording of a document is the date the
document meeting the requirements for recording set forth in
this Part is filed in the Office. A document which does not

comply with the identification requirements of § 3.21 will
not  be  recorded.  Documents  not  meeting  the  other
requirements  for  recording,  for  example,  a  document
submitted without a completed cover sheet or without the
required fee, will be returned for correction to the sender
where a correspondence address is available. The returned
papers, stamped with the original date of receipt by the
Office, will be accompanied by a letter which will indicate
that if the returned papers are corrected and resubmitted to
the Office within the time specified in the letter, the
Office will consider the original date of filing of the
papers as the date of recording of the document. The
certification procedure under either § 1.8 or § 1.10 of this
Chapter may be used for resubmissions of returned papers to
have the benefit of the date of deposit in the United States
Postal Service. If the returned papers are not corrected and
resubmitted within the specified period, the date of filing
of the corrected papers will be considered to be the date of
recording of the document. The specified period to resubmit
the returned papers will not be extended.

 The date of recording of a document is the date the
document meeting the requirements for recording set forth in
the regulations is filed in the Office. A document which
does not comply with the identification requirements of 37
CFR 3.21 will not be recorded. Documents not meeting the
other requirements for recording, for example, a document
submitted without a completed cover sheet or without the
required fee, will be returned for correction to the sender
where a correspondence address is available.

317.02  Correction of Returned Documents and Cover Sheets
[R - 3]

 Assignment documents and cover sheets which are returned by
Assignment Division will be stamped with the original date
of receipt by the Office and will be accompanied by a letter
which  will  indicate  that  if  the  returned  papers  are
corrected and resubmitted to the Office within the time
specified in the letter, the Office will consider the
original date of filing of the papers as the date of
recording  of  the  document.  See  37  CFR  3.51.  The
certification procedure under * 37 CFR 1.8 or >the "Express
Mail"  procedure  under  37  CFR<  1.10  may  be  used  for
resubmissions of returned papers to obtain the benefit of
the date of deposit in the United States Postal Service. If
the returned papers are not corrected and resubmitted within
the specified period, the date of filing of the corrected
papers will be considered to be the date of recording of the
document. The specified period to resubmit the returned
papers will not be extended.

317.03  Effect of Recording

 37 CFR 3.54.  Effect of recording.

 The recording of a document pursuant to § 3.11 is not a
determination by the Office of the validity of the document
or  the  effect  that  document  has  on  the  title  to  an
application, a patent, or a registration. When necessary,
the Office will determine what effect a document has,
including whether a party has the authority to take an
action in a matter pending before the Office.

 37 CFR 3.56.  Conditional assignments.

 Assignments which are made conditional on the performance
of certain acts or events, such as the payment of money or
other condition subsequent, if recorded in the Office, are
regarded as absolute assignments for Office purposes until
canceled with the written consent of all parties or by the
decree of a court of competent jurisdiction. The Office does
not determine whether such conditions have been fulfilled.

 The recording of a document is not a determination by the
Office of the validity of the document or the effect that
document has on the title to an application or patent. When
necessary, the Office will determine what effect a document
has, including whether a party has the authority to take an
action in a matter pending before the Office. See MPEP §
324.

 37 CFR 3.56 provides that an assignment, which at the time
of its execution is conditional on a given act or event,
will be treated by the Office as an absolute assignment.
This rule serves as notification as to how a conditional
assignment will be treated by the Office in any proceeding
requiring a determination of the owner of an application,
patent, or registration. Since the Office will not determine
whether a condition has been fulfilled, the Office will
treat the submission of such an assignment for recordation
as signifying that the act or event has occurred. A security
agreement which does not convey the right, title, and
interest  of  a  patent  property  is  not  a  conditional
assignment.

318  Documents Not to be Placed in Files

 Assignment documents submitted for recording should not be
placed directly in application or patent files, but should
be forwarded to Assignment Division for recording.

319  Examining Group May Request Report on Title

 If the Examining Group requires a title report, the group
may forward the file to the Assignment Search Branch with a
request that the Assignment Search Branch furnish a title
report based upon the records of the Assignment Division.
The Assignment Search Branch will furnish a report as to the
owner of record relating to the particular file.

320  Title Reports

 The "title report" is a form which can be used under
certain circumstances by the Assignment Search Branch to
report to someone within the Office the name of the owner of
an application or patent as shown by the Assignment Division
records on the date the title report is made. For example, a
title report is requested by the Reexamination Preprocessing
Unit when a request for reexamination is filed. Title
reports are for internal Office use only, and are not
available for order by applicants or attorneys except as
provided by 37 CFR 1.171.

 Note: The public can request a certified abstract of title.
The fee for this service is set forth at 37 CFR 1.19(b)(4).
See MPEP § 301.01 for a discussion of which assignment
records are publicly available.

 It is not normally necessary for title to be ascertained by

an examiner by means of the "title report" form, since such
information is not required to examine the application.
However, a title report is required if an applicant orders a
title report in accordance with 37 CFR 1.171. See also MPEP
§ 303.

 For applicants, the normal method of establishing title is
to file in the Assignment Division of the Office all
assignment documents which convey title. After that is done,
a person may verify or declare that he or she is the owner
on the basis of the records of the Office.

323  Procedures for Correcting Errors in Recorded
Assignment Document

  An  error  in  a  recorded  assignment  document  will  be
corrected by Assignment Division only when the following
criteria are met:

 A new assignment document signed by the same party or
parties is submitted for recording. The new document must;

 (a)  acknowledge and correct the error in the original
assignment document,

 (b)  confirm title in the proper assignee, and

 (c)  identify  the  incorrectly  recorded  assignment
document by reel and frame number.

 A new recording fee is required (see MPEP § 302.06):

 If the correction pertains to the name of a corporation or
other  organization  or  individual,  a  verified  statement
setting forth how the error occurred is required.

 If a patent or patent application is incorrectly included
in a merger or change of name (see MPEP § 314), it can be
corrected by the party conveying the interest by lining out
the incorrect patent or application number on the original
recorded  document  and  having  the  party  conveying  the
interest initial and date the deletion. This document would
then be recorded as a correction document and given a new
reel and frame number and recording date. The recording fee
set forth in 37 CFR 1.21(h) is charged for each patent
application and patent against which the corrected document
is being recorded. If the patent or patent application
number is included in a list of properties which have been
incorporated into the merger or change of name document and
this appears on the official microfilm records of the Patent
and Trademark Office, the party conveying the interest must
then submit a verified statement attesting to the error,
stating the reel and frame number where the error appeared
and requesting that the incorrect number be deleted.

 Office policy regarding recordation of assignment documents
is directed toward maintaining a complete history of claimed
interests in property and, therefore, recorded assignment
documents will not be expunged even if subsequently found to
be invalid. See In re Ratny, 24 USPQ 2d 1713 (Comm'r Pat.
1992).

323.01  Correction of Error in Recorded Cover Sheet

 37 CFR 3.34.  Correction of cover sheet errors.

 (a)  An error in a cover sheet recorded pursuant to §
3.11 will be corrected only if:

 (1)  The error is apparent when the cover sheet is
compared with the recorded document to which it pertains,
and

 (2)  A corrected cover sheet is filed for recordation.

 (b)  The corrected cover sheet must be accompanied by
the originally recorded document or a copy of the originally
recorded document and by the recording fee as set forth in §
3.41.

 Any alleged error in a recorded cover sheet will only be
corrected if the error is apparent from a comparison with
the recorded assignment document. The corrected cover sheet
should be directed to Assignment Division.

324  Establishing Right of Assignee to Take Action [R -
3]

 37 CFR 3.73.  Establishing right of assignee to
prosecute.

 (a)  The inventor is presumed to be the owner of a
patent application, and any patent that may issue therefrom,
unless there is an assignment. The original applicant is
presumed to be the owner of a trademark application unless
there is an assignment.

 (b)  When the assignee of the entire right, title and
interest seeks to take action in a matter before the Office
with respect to a patent application, trademark application,
patent,  registration,  or  reexamination  proceeding,  the
assignee must establish its ownership of the property to the
satisfaction of the Commissioner. Ownership is established
by submitting to the Office documentary evidence of a chain
of title from the original owner to the assignee or by
specifying (e.g. reel and frame number, etc.) where such
evidence is recorded in the Office. Documents submitted to
establish ownership may be required to be recorded as a
condition to permitting the assignee to take action in a
matter pending before the Office. In addition, the assignee
of a patent application or patent must submit a statement
specifying that the evidentiary documents have been reviewed
and certifying that, to the best of assignee's knowledge and
belief, title is in the assignee seeking to take the action.

 When the assignee of the entire right, title, and interest
first seeks to take action in a matter before the Office
with  respect  to  a  patent  application,  patent,  or
reexamination proceeding, the assignee must establish its
ownership  of  the  property  to  the  satisfaction  of  the
Commissioner. 37 CFR 3.73(b). The assignee's ownership may
be established either

 (1)  by  submitting  to  the  Office  copies  of  the
documentary evidence of a chain of title from the original
inventor to the assignee, or

 (2)  by specifying, by reel and frame number, for
example, where such documentary evidence is recorded in the
Office.

 In addition to the establishment of ownership, there is a
further requirement that the assignee submit a statement
specifying that the evidentiary documents have been reviewed
and certifying that, to the best of the assignee's knowledge
and belief, title is in the assignee seeking to take action.
Once 37 CFR 3.73(b) is complied with by an assignee, that
assignee may continue to take action in that application,
patent, or reexamination proceeding without filing a 37 CFR
3.73(b) statement each time, provided that ownership has not
changed.

  When  an  assignee  files  a  continuation  or  divisional
application (under 37 CFR 1.53, 1.60, or 1.62), reference
may be made to a statement filed under 37 CFR 3.73(b) in the
parent application or a copy of that statement may be filed.
A newly executed statement under 37 CFR 3.73(b) must be
filed when a continuation - in - part application is filed
by an assignee.

 The statement by the assignee must be signed by a person
having authority to do so. For example, the statement under
37 CFR 3.73(b) may be signed on behalf of the assignee in
the following two manners if the assignee is an organization
(e.g.,  corporation,  partnership,  university,  government
agency, etc.).

 (1)  The statement may be signed by a person in the
organization having apparent authority to sign on behalf of
the organization. An officer (president, vice - president,
secretary, or treasurer) is presumed to have authority to
sign on behalf of the organization. The signature of the
chairman of the board of directors is acceptable, but not
the signature of an individual director. Modifications of
these basic titles are acceptable, such as vice - president
for sales, executive vice - president, assistant treasurer,
vice - chairman of the board of directors. A person having a
title (manager, director, administrator, general counsel)
that does not clearly set forth that person as an officer of
the assignee is not presumed to be an officer of the
assignee or to have authority to sign the statement on
behalf of the assignee. A power of attorney from the
inventors in an organization to a practitioner to prosecute
a patent application does not make the practitioner an
official of an assignee or empower the practitioner to sign
the statement on behalf of the assignee.

 (2)  The statement may be signed by any person, if the
statement includes an averment that the person is empowered
to sign the statement on behalf of the assignee. If not
signed by a registered practitioner, the statement including
the averment must be in oath or declaration form. Where a
statement does not comply with (1) or (2) above, evidence of
the person's authority to sign will be required.

 Examples of situations where ownership must be established
and the statement under 37 CFR 3.73(b) must be submitted are
when  the  assignee:  signs  a  request  for  status  of  an
application or gives a power to inspect an application (MPEP
§ 102); acquiesces to express abandonment of an application
(MPEP § 711); appoints its own legal representative (37 CFR
3.71 and MPEP § 402.07); signs a terminal disclaimer (MPEP §
1490); consents to the filing of a reissue application (MPEP
§ 1410.01); consents to the correction of inventorship (MPEP
§ 201.03 or 1481); files an application under 37 CFR 1.47(b)

(MPEP § 409.03(b)) or 37 CFR 1.475; signs an Issue Fee
Transmittal (PTOL - 85B) (MPEP § 1306); or signs a response
to an Office action.

  Examples  of  situations  where  ownership  need  not  be
established and a statement under 37 CFR 3.73(b) is not
required to be submitted are when the assignee: signs a
small entity statement (MPEP § 509.03); signs an affidavit
or declaration of common ownership of two inventions (MPEP §
706.02(k)); signs a NASA or DOE property rights statement
(MPEP § 151); signs an affidavit under 37 CFR 1.131 where
the  inventor  is  unavailable  (MPEP  §  715.04);  signs  a
certificate under 37 CFR 1.8 (MPEP § 512); or files a
request for reexamination of a patent under 37 CFR 1.510
(MPEP § 2210).

 Form PTO/SB/ 96 may be used for an acceptable certification
under 37 CFR 3.73(b).

 Form PTO - 1595, Recordation Form Cover Sheet, may be used
as the cover sheet for recording documents relating to
patent(s) and/or patent application(s) in the Office.

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  Chapter 400 Representative of Inventor or Owner

  401  Patent and Trademark Office Cannot Aid in Selection
  of Attorney
  402  Power of Attorney
  402.01 Exceptions as to Registration
  402.02 Appointment of Associate Attorney or Agent
  402.05 Revocation
  402.06 Attorney or Agent Withdraws
  402.07 Assignee Can Revoke Power of Attorney of
  Applicant
  402.08 Application in Interference
  402.09 International Application
  402.10 Appointment/Revocation by Less Than All
  Applicants or Owners
  403  Correspondence - With Whom Held
  403.01 Correspondence Held With Associate Attorney
  403.02 Two Attorneys for Same Application
  404  Conflicting Parties Having Same Attorney
  405  Attorney Not of Record
  406  Death of Attorney
  407  Disbarred Attorney
  408  Telephoning Attorney
  409  Death, Insanity, or Unavailability of Inventor
  409.01 Death of Inventor
  409.01(a)  Prosecution by Administrator or Executor
  409.01(b)  Proof of Authority of Administrator or
  Executor
  409.01(c)  After Administrator or Executor Has Been
  Discharged
  409.01(d)  Exception in Some Foreign Countries
  409.01(e)  If Applicant of Assigned Application Dies

  409.01(f)  Intervention of Executor Not Compulsory
  409.02 Insanity or Other Legal Incapacity
  409.03 Unavailability of Inventor
  409.03(a)  At Least One Joint Inventor Available
  409.03(b)  No Inventor Available
  409.03(c)  Legal Representatives of Deceased Inventor Not
  Available
  409.03(d)  Proof of Unavailability or Refusal
  409.03(e)  Statement of Last Known Address
  409.03(f)  Proof of Proprietary Interest
  409.03(g)  Proof of Irreparable Damage
  409.03(h)  >Processing and< Acceptance of a 37 CFR 1.47
  Application
  409.03(i)  Rights of the Nonsigning Inventor
  409.03(j)  Action Following Acceptance of a 37 CFR 1.47
  Application

401  Patent and Trademark Office Cannot Aid in
Selection of Attorney

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

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

 If patentable subject matter appears to be disclosed in a
pro se application and it is apparent that the applicant is
unfamiliar with the proper preparation and prosecution of
patent  applications,  the  examiner  may  suggest  to  the
applicant that it may be desirable to employ a registered
patent  attorney  or  agent.  It  is  suggested  that  Form
Paragraph 17.01 be incorporated in an Office action if the
use of an attorney or agent is considered desirable and if
patentable subject matter exists in the application.

¶ 17.01  Employ Services of Attorney or Agent

 An examination of this application reveals that applicant
is unfamiliar with patent prosecuting procedure. While an
inventor may prosecute the application, lack of skill in
this field usually acts as a liability in affording the
maximum protection for the invention disclosed. Applicant is
advised to secure the services of a registered patent
attorney or agent to prosecute the application, since the
value  of  a  patent  is  largely  dependent  upon  skillful
preparation  and  prosecution.  The  Office  cannot  aid  in
selecting an attorney or agent.

 Applicant is advised of the availability of the publication
"Attorneys and Agents Registered to Practice Before the U.S.
Patent and Trademark Office." This publication is for sale
by the Superintendent of Documents, U.S. Government Printing
Office, Washington, D.C. 20402.

 Examiner Note:

 The examiner should not suggest that applicant employ an
attorney or agent if the application appears to contain no

patentable subject matter.

402  Power of Attorney [R - 3]

 37 CFR 1.34.  Recognition for representation.

 (a)  When a registered attorney or agent acting in a
representative capacity appears in person or signs a paper
in practice before the Patent and Trademark Office in a
patent case, his or her personal appearance or signature
shall  constitute  a  representation  to  the  Patent  and
Trademark  Office  that  under  the  provisions  of  this
Subchapter and the law, he or she is authorized to represent
the particular party in whose behalf he or she acts. In
filing such a paper, the registered attorney or agent should
specify his or her registration number with his or her
signature.  Further  proof  of  authority  to  act  in  a
representative capacity may be required.

 (b)  When an attorney or agent shall have filed his or
her power of attorney, or authorization, duly executed by
the person or persons entitled to prosecute an application
or a patent involved in a reexamination proceeding, he or
she is a principal attorney of record in the case. A
principal attorney or agent, so appointed, may appoint an
associate attorney or agent who shall also then be of
record.

 The Patent and Trademark Office will continue to give
effect to powers of attorney and authorizations of agent
naming firms filed, in patent applications before July 2,
1971, and in all divisions and continuations thereof not
requiring execution by the applicant. Powers of attorney or
authorizations of agent naming firms of attorneys or agents
filed in patent applications after July 2, 1971, will not be
recognized. However, the Patent and Trademark Office will
construe any such powers or authorizations filed after July
2, 1971, as a direction to consider the address of the firm
as the correspondence address for the application.

 The privilege afforded by 37 CFR 1.34(a) as to recognition
of registered attorneys and agents not of record will apply
to all applications and reexamination proceedings whether
filed before or after July 2, 1971. Attention is called to
the replacement of 37 CFR 1.34(a) that a paper filed by a
registered patent attorney or agent in an application in
which he or she is not of record should include both his or
her signature and number.

 Powers of attorney and authorizations of agent under 37 CFR
1.34(b) naming one or more registered individuals >, or all
registered practitioners associated with a Customer Number,<
may be made. >See MPEP § 403 for Customer Number practice.<

 Acceptance of papers filed in patent applications and
reexamination proceedings by registered attorneys and agents
upon  a  representation  that  the  attorney  or  agent  is
authorized to act in a representative capacity is for the
purpose of facilitating responses on behalf of applicants in
patent applications and, further, to obviate the need for
filing powers of attorney or authorizations of agent in
individual applications or patents when there has been a
change in composition of law firms or corporate patent
staffs. Interviews with a registered attorney or agent not
of record will, in view of 35 U.S.C. 122, be conducted only

on the basis of information and files supplied by the
attorney or agent. A person acting in a representative
capacity may not sign a power of attorney or a document
granting access to an application.

 Usually a power of attorney is made a part of the
application oath or declaration. In order that this power
may be valid, the attorney or agent appointed must be
registered. A power of attorney or authorization given to a
registered Canadian patent agent, to be valid, must be given
by the applicants, all of whom are located in Canada. See 37
CFR 10.6(c).

 When an application for patent is filed accompanied by a
power of attorney or authorization of agent to a person not
registered to practice before the United States Patent and
Trademark  Office,  the  **>Office  of  Initial  Patent
Examination< will send the official filing receipt directly
to the applicant, together with an explanatory letter. A
copy of the letter will be sent to the person named in the
power or authorization and a copy placed in the file without
being given a paper number. The name of the unregistered
person will not be placed on the face of the file, and the
examiner will communicate only with the applicant directly
>at the correspondence address specified by the applicant<
unless  and  until  the  applicant  appoints  a  recognized
practitioner.  An  associate  power  of  attorney  or
authorization from the unregistered person will not be
recognized or accepted.

 In the event of a need to file a change in the power of
attorney in a plurality of applications or patents of a
common assignee or inventive entity, a single, original
paper may be used provided that a reproduction of this
original  paper  is  supplied  in  each  of  the  affected
applications or patents. The copy of the original paper must
identify in which application or patent the original paper
is located and authorize the public to inspect and copy the
original  paper  in  the  event  one  of  the  applications
containing a copy matures into or is a patent, and the
application containing the original paper is pending or has
become abandoned. See MPEP § 601.03. >See MPEP § 403 for the
addition and/or deletion of a practitioner from the list of
practitioners associated with a Customer Number<. For a
representative of a requester of reexamination see MPEP §
2213.

 37 CFR 10.18.  Signature and certificate of
practitioner.

 (a)  Every paper filed by a practitioner representing an
applicant or party to a proceeding in the Office must bear
the  signature  of,  and  be  personally  signed  by,  such
practitioner, except those papers which are required to be
signed  by  the  applicant  or  party.  The  signature  of
practitioner to a paper filed by him or her, constitutes a
certificate that:

 (1)  The paper has been read by the practitioner;

 (2)  The paper's filing is authorized;

 (3)  To the best of his or her knowledge, information,
and belief, there is good ground to support the paper,
including any allegation of improper conduct contained or

alleged therein; and

 (4)  It is not interposed for delay.

 (b)  Any practitioner knowingly violating the provisions
of this section is subject to disciplinary action. See §
10.23(c)(15).

 37 CFR 10.18 emphasizes every paper filed by a practitioner
must be personally signed by the practitioner except those
required to be signed by the applicant, and that there must
be  a  reasonable  basis  to  support  every  allegation  of
improper conduct made by a registered practitioner in any
Office proceeding. Although 37 CFR 10.18 is limited to
papers filed in Office proceedings, this is not intended to
imply that disciplinary action never will be taken against a
registered practitioner under 37 CFR 10.23(c)(18) and 10.131
for a groundless allegation of improper conduct in a court
proceeding.

 37 CFR 10.11.  Removing names from registers.

 (a)  Registered attorneys and agents shall notify the
Director of any change of address. Any notification to the
Director of any change of address shall be separate from any
notice  of  change  of  address  filed  in  individual
applications.

 (b)  A letter may be addressed to any individual on the
register, at the address of which separate notice was last
received by the Director, for the purpose of ascertaining
whether such individual desires to remain on the register.
The name of any individual failing to reply and give any
information requested by the Director within a time limit
specified will be removed from the register and names of
individuals so removed will be published in the Official
Gazette. The name of any individual so removed may be
reinstated on the register as may be appropriate and upon
payment of the fee set forth in § 1.21(a)(3) of this
subchapter.

 See also MPEP § 1702.

402.01  Exceptions as to Registration

 37 CFR 10.9.  Limited recognition in patent cases.

 (a)  Any individual not registered under § 10.6 may,
upon a showing of circumstances which render it necessary or
justifiable, be given limited recognition by the Director to
prosecute as attorney or agent a specified application or
specified applications, but limited recognition under this
paragraph shall not extend further than the application or
applications specified.

 (b)  When  registration  of  a  resident  alien  under
paragraphs (a) or (b) of § 10.6 is not appropriate, the
resident alien may be given limited recognition as may be
appropriate under paragraph (a) of this section.

 Sometimes in a joint application one of the co - inventors
gives to the other the power of attorney in the case. Such
power will be recognized even though the one to whom it is
given is not registered.

 If a request for special recognition accompanies the
application, the Application Division will forward the file
to the Director of Enrollment and Discipline.

402.02  Appointment of Associate Attorney or Agent

 The principal attorney or agent may appoint an associate
attorney or agent as provided in 37 CFR 1.34. The associate
attorney may not appoint another attorney. See also MPEP §
406.

402.05  Revocation

 37 CFR 1.36.  Revocation of power of attorney or
authorization; withdrawal of attorney or agent.

 A power of attorney or authorization of agent may be
revoked at any stage in the proceedings of a case, and an
attorney or agent may withdraw, upon application to and
approval by the Commissioner. An attorney or agent, except
an associate attorney or agent whose address is the same as
that of the principal attorney or agent, will be notified of
the revocation of the power of attorney or authorization,
and the applicant or patent owner will be notified of the
withdrawal of the attorney or agent. An assignment will not
itself operate as a revocation of a power or authorization
previously given, but the assignee of the entire interest
may revoke previous powers and be represented by an attorney
or agent of the assignee's own selection. See § 1.613(d) for
withdrawal  of  an  attorney  or  agent  of  record  in  an
interference.

 Upon revocation of the power of attorney, appropriate
notification is sent by the clerk of the examining group.

 Revocation of the power of the principal attorney revokes
powers granted by him or her to other attorneys.

 Revocation of the power of attorney becomes effective on
the date that the revocation is RECEIVED in the Office (in
contradistinction to the date of ACCEPTANCE).

402.06  Attorney or Agent Withdraws [R - 3]

 See 37 CFR 1.36 in MPEP § 402.05. See also 37 CFR 10.40.

 In the event that a notice of withdrawal is filed by the
attorney or agent of record, the file will be forwarded to
the  Group  Director  of  the  examining  group  where  the
application is assigned where appropriate procedure will be
followed pertaining to the withdrawal. The withdrawal is
effective when approved rather than when received.

 To expedite the handling of requests for permission to
withdraw as attorney, under 37 CFR 1.36, Form PTO/SB/83 may
be used. Because the Office does not recognize law firms,
each attorney of record must sign the notice of withdrawal,
or the notice of withdrawal must contain a clear indication
of one attorney signing on behalf of another.

 The Commissioner of Patents and Trademarks usually requires
that  there  be  at  least  30  days  between  approval  of
withdrawal and the later of the expiration date of a time
response period or the expiration date of the period which
can be obtained by a petition and fee for extension of time

under 37 CFR 1.136(a). This is so that the applicant will
have sufficient time to obtain other representation or take
other action. If a period has been set for response and the
period may be extended without a showing of cause pursuant
to 37 CFR 1.136(a) by filing a petition for extension of
time and fee, the practitioner will not be required to seek
such extension of time for withdrawal to be approved. In
such a situation, however, withdrawal will not be approved
unless at least 30 days would remain between the date of
approval and the last date on which such a petition for
extension of time and fee could properly be filed.

 For withdrawal during reexamination proceedings, see MPEP §
2223.

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402.07  Assignee Can Revoke Power of Attorney of Applicant
[R - 3]

 The assignee of record of the entire interest can revoke
the  power  of  attorney  of  the  applicant  unless  an
"irrevocable" right to prosecute the case had been given as
in some government owned applications.

 37 CFR 3.71.  Prosecution by assignee.

 The assignee of record of the entire right, title, and
interest in an application for patent is entitled to conduct
the prosecution of the patent application to the exclusion
of the named inventor or previous assignee. The assignee of
a  registered  trademark  or  a  trademark  for  which  an
application to register has been filed is entitled to
conduct the prosecution of the trademark application or
registration to the exclusion of the original applicant or
previous assignee.

 See 37 CFR 1.36 in MPEP § 402.05.

 A power of attorney by the assignee of the entire interest
revokes  all  powers  given  by  the  applicant  and  prior
assignees if the assignee establishes their right to take
action as provided in 37 CFR 3.73(b). See MPEP § 324.
Ordinarily, the applicant will still have access to the
application (MPEP § 106).

 >In an application that has been accorded status under 37
CFR 1.47(a), or for which status under 37 CFR 1.47(a) has
been requested, a power of attorney given by the inventors
who have signed the declaration (available inventors) may be
revoked by an assignee of the entire interest of the
available inventors. Rights of the assignee to take action
may be established as provided in 37 CFR 3.73(b) and MPEP §
324.<

402.08  Application in Interference

 While an application is involved in interference, no power
of  attorney  of  any  kind  should  be  entered  in  such
application by the clerk of the group.

 If a power of attorney or revocation is received for an
application which is in interference, it should be forwarded
to the Interference Service Branch because all parties to

the interference must be notified.

402.09  International Application

 37 CFR 1.455.  Representation in international
applications.

 (a)  Applicants of international applications may be
represented by attorneys or agents registered to practice
before the Patent and Trademark Office or by an applicant
appointed as a common representative (PCT Art. 49, Rules 4.8
and 90 and § 10.10). If applicants have not appointed an
attorney or agent or one of the applicants to represent
them, and there is more than one applicant, the applicant
first named in the request and who is entitled to file in
the U.S. Receiving Office shall be considered to be the
common representative of all the applicants. An attorney or
agent having the right to practice before a national office
with which an international application is filed and for
which  the  United  States  is  an  International  Searching
Authority or International Preliminary Examining Authority
may  be  appointed  to  represent  the  applicants  in  the
international application before that authority. An attorney
or agent may appoint an associate attorney or agent who
shall also then be of record (PCT Rule 90.1(d)). The
appointment  of  an  attorney  or  agent,  or  of  a  common
representative,  revokes  any  earlier  appointment  unless
otherwise indicated (PCT Rule 90.6(b) and (c)).

 (b)  Appointment  of  an  agent,  attorney,  or  common
representative (PCT Rule 4.8) must be effected either in the
Request form, signed by all applicants, or in a separate
power of attorney submitted either to the United States
Receiving Office or to the International Bureau.

 (c)  Powers of attorney and revocation thereof should be
submitted to the United States Receiving Office until the
issuance of the international search report.

 (d)  The  addressee  for  correspondence  will  be  as
indicated in Section 108 of the Administrative Instructions.

 For representation in international applications, see MPEP
§ 1807.

402.10  Appointment/Revocation by Less Than All Applicants
or Owners [R - 3]

 Papers giving or revoking a power of attorney in an
application  generally  require  signature  by  all  the
applicants or owners of the application. Papers revoking a
power of attorney in an application (or giving a power of
attorney) will not be accepted by the Office when signed by
less than all of the applicants or owners of the application
unless they are accompanied by a petition and fee under 37
CFR 1.182 giving good and sufficient reasons as to why such
papers should be accepted. The petition should be directed
to the Office of Petitions. The acceptance of such papers by
petition under 37 CFR 1.182 will result in more than one
attorney,  agent,  applicant,  or  owner  prosecuting  the
application at the same time. Therefore, each of these
parties must sign all subsequent responses submitted to the
Office. See In re Goldstein , 16 USPQ2d 1963 (Dep. Assist.
Comm'r Pat. 1988). *>In an application filed under 37 CFR
1.47(a), an assignee of the entire interest of the available

inventors who have signed the declaration may appoint or
revoke a power of attorney with a petition under 37 CFR
1.182. See MPEP § 402.07. However, in< applications accepted
under 37 CFR 1.47, such a petition under 37 CFR 1.182
submitted by a previously nonsigning inventor who has now
joined in the application will not be granted. See MPEP §
409.03(i). Upon accepting papers appointing and/or revoking
a power of attorney that are signed by less than all of the
applicants or owners, the Office will indicate to applicants
who must sign subsequent responses. An indication will be
placed on the file wrapper as to the number of signatures
necessary for accepting subsequent responses and the paper
number(s) where the split powers of attorney appear. Dual
correspondence will still not be permitted. Accordingly,
when the acceptance of such papers results in an attorney or
agent and at least one applicant or owner prosecuting the
application, correspondence will be mailed to the attorney
or agent. When the acceptance of such papers results in more
than one attorney or agent prosecuting the application, the
correspondence address will continue to be that of the
attorney or agent first named in the application, unless all
parties agree. Each attorney or agent signing subsequent
papers must indicate whom he or she represents.

 The following are examples of who must sign responses when
there is more than one person responsible for prosecuting
the application:

  (a)  If co - inventor A has given a power of
attorney and co - inventor B has not, responses must be
signed by the attorney of A and by co - inventor B.

  (b)  If co - inventors A and B have each appointed
their  own  attorney,  responses  must  be  signed  by  both
attorneys.

403  Correspondence - With Whom Held [R - 3]

 37 CFR 1.33.  Correspondence respecting patent
applications, reexamination proceedings, and other
proceedings.

 (a)  The residence and post office address of the
applicant must appear in the oath or declaration if not
stated elsewhere in the application. The applicant may also
specify and an attorney or agent of record may specify a
correspondence address to which communications about the
application  are  to  be  directed.  All  notices,  official
letters, and other communications in the case will be
directed to the correspondence address or, if no such
correspondence address is specified, to an attorney or agent
of record (see § 1.34(b)), or, if no attorney or agent is of
record, to the applicant, or to any assignee of record of
the entire interest if the applicant or such assignee so
requests, or to an assignee of an undivided part if the
applicant so requests, at the post office address of which
the Office has been notified in the case. Amendments and
other papers filed in the application must be signed: (1) By
the applicant, or (2) if there is an assignee of record of
an undivided part interest, by the applicant and such
assignee, or (3) if there is an assignee of record of the
entire interest, by such assignee, or (4) by an attorney or
agent of record, or (5) by a registered attorney or agent
not of record who acts in a representative capacity under
the provisions of § 1.34(a). Double correspondence with an

applicant and his attorney or agent, or with more than one
attorney or agent, will not be undertaken. If more than one
attorney or agent be made of record and a correspondence
address has not been specified, correspondence will be held
with the one last made of record.

 (b)  An  applicant  who  has  not  made  of  record  a
registered attorney or agent may be required to state
whether  he  received  assistance  in  the  preparation  or
prosecution of his application, for which any compensation
or consideration was given or charged, and if so, to
disclose  the  name  or  names  of  the  person  or  persons
providing such assistance. This includes the preparation for
the applicant of the specification and amendments or other
papers to be filed in the Patent and Trademark Office, as
well as other assistance in such matters, but does not
include merely making drawings by draftsmen or stenographic
services in typing papers.

 (c)  All  notices,  official  letters,  and  other
communications  for  the  patent  owner  or  owners  in  a
reexamination proceeding will be directed to the attorney or
agent of record (see § 1.34(b)) in the patent file at the
address listed on the register of patent attorneys and
agents maintained pursuant to § 10.5 and 10.11 or, if no
attorney or agent is of record, to the patent owner or
owners at the address or addresses of record. Amendments and
other papers filed in a reexamination proceeding on behalf
of the patent owner must be signed by the patent owner, or
if there is more than one owner by all the owners, or by an
attorney or agent of record in the patent file, or by a
registered attorney or agent not of record who acts in a
representative capacity under the provisions of § 1.34(a).
Double correspondence with the patent owner or owners and
the patent owner's attorney or agent, or with more than one
attorney or agent, will not be undertaken. If more than one
attorney or agent is of record and a correspondence address
has not been specified, correspondence will be held with the
last attorney or agent made of record.

 (d)  A "correspondence address" or change thereto may be
filed with the Patent and Trademark Office during the
enforceable life of the patent. The "correspondence address"
will be used in any correspondence relating to maintenance
fees unless a separate "fee address" has been specified. See
§ 1.363 for "fee address" used solely for maintenance fee
purposes.

 37 CFR 1.33(a) provides for an applicant to supply an
address  to  receive  correspondence  from  the  Patent  and
Trademark  Office  in  addition  to  his  or  her  residence
address, so that the Patent and Trademark Office may direct
mail to any address of applicant's selection, such as a
corporate patent department, a firm of attorneys or agents,
or an individual attorney, agent, or other person.

 37 CFR 1.33 states that when an attorney has been duly
appointed to prosecute an application correspondence will be
held with the attorney unless some other correspondence
address  has  been  given.  Double  correspondence  with  an
applicant  and  his  or  her  attorney,  or  with  two
representatives, will not be undertaken. See MPEP § 403.01,
§ 403.02, and § 714.01(d).

 If double correspondence is attempted, Form Paragraph 4.01

should be included in the next Office action.

¶ 4.01  Dual Correspondence

 Applicant has appointed an attorney or agent to conduct all
business before the Patent and Trademark Office. Double
correspondence with an applicant and applicant's attorney or
agent will not be undertaken. Accordingly, applicant is
required to conduct all future correspondence with this
Office through the attorney or agent of record. See 37 CFR
1.33.

 Examiner Note:

 1.  The first time a response is received directly from
applicant, include this paragraph in the Office action and
send a copy of the action to the applicant. See MPEP § 403
and § 714.01.

 2.  Should applicant file additional responses, do not
send copies of subsequent Office actions to the applicant.

 3.  Status  letters  from  the  applicant  may  be
acknowledged in isolated instances.

 In a joint application with no attorney or agent, the
applicant whose name first appears in the papers receives
the correspondence, unless other instructions are given. All
applicants must sign the responses. See MPEP § 714.01(a). If
the assignee of the entire interest is prosecuting the
application (MPEP § 402.07), the assignee may specify a
correspondence address.

 37 CFR 1.33(c) relates to which address communications for
the patent owner will be sent in reexamination proceedings.
See also MPEP § 2224.

 Powers of attorney to firms filed in executed applications
filed after July 2, 1971, are not recognized by the Patent
and Trademark Office. However, the firm's address will be
considered to be the correspondence address. The address
should appear as follows:

 John Doe (inventor)

 In care of Able, Baker, and Charlie (firm)

 1234 Jefferson Davis Highway

 Arlington, Virginia 22202

 See MPEP  § 601.03.

  >CUSTOMER NUMBER PRACTICE

  A Customer Number (previously a "Payor Number") may be
used to: (1) designate the correspondence address of a
patent application by a Customer Number such that the
correspondence address for the patent application would be
the  address  associated  with  the  Customer  Number;  (2)
designate the fee address (37 CFR 1.363) of a patent by a
Customer Number such that the fee address for the patent
would be the address associated with the Customer Number;
and (3) submit a list of practitioners by Customer Number
such that an applicant may in a Power of Attorney appoint

those practitioners associated with the Customer Number.
Thus, a Customer Number may be used to designate the address
associated with the Customer Number as the correspondence
address of an application (or patent) or the fee address of
a patent, and may also be used to submit a power of attorney
in  the  application  (or  patent)  to  the  registered
practitioners associated with the Customer Number.

  The following forms are suggested for use with the
Customer Number practice: (1) the "Request for Customer
Number" (PTO/SB/125) to request a Customer Number; (2) the
"Request for Customer Number Data Change" (PTO/SB/124) to
request  a  change  in  the  data  (address  or  list  of
practitioners) associated with an existing Customer Number;
(3) the "Change of Correspondence Address, Application"
(PTO/SB/122) to change the correspondence address of an
individual application to the address associated with a
Customer Number; (4) the "Change of Correspondence Address,
Patent" (PTO/SB/123) to change the correspondence address of
an individual patent to the address associated with a
Customer  Number;  and  (5)  the  "Correspondence  Address
Indication Form" (PTO/SB/121) to change the correspondence
address of a list of applications or patents to the address
associated with a Customer Number.

  The  Office  will  also  accept  requests  submitted
electronically via a computer - readable diskette to: (1)
change the correspondence address of a list of applications
or patents or the fee address for a list of patents to the
address associated with a Customer Number; and (2) submit a
power of attorney in a list of applications or patents to
the registered practitioners associated with the Customer
Number. Such electronic requests must be submitted in the
manner set forth in the Notice entitled "Extension of the
Payor  Number  Practice  (through  "Customer  Numbers")  to
Matters Involving Pending Patent Applications," published in
the  Federal Register at 61  Fed. Reg.54622, 54623 - 24
(October 21, 1996), and in the  Official Gazette at 1191
Off. Gaz. Pat. Office187, 188 - 89 (October 29, 1996).

  The Customer Number practice does not affect the current
practice of permitting a patentee to provide a "fee address"
for  the  receipt  of  maintenance  fee  correspondence.  A
patentee will be able to designate a "fee address" for the
receipt of maintenance fee correspondence, and a different
address for the receipt of all other correspondence. The
designation of a "fee address" by reference to a Customer
Number will not affect or be affected by the designation of
a correspondence address by reference to another Customer
Number,  in  that  the  Office  will  send  maintenance  fee
correspondence to the address associated with the Customer
Number designated as the "fee address" and will send all
other correspondence to the address associated with the
Customer Number designated as the correspondence address.

  The association of a list of practitioners with a
Customer Number will permit an applicant to appoint all of
the practitioners associated with the Customer Number merely
by reference to the Customer Number in the Power of Attorney
(i.e., without individually listing the practitioners in the
Power of Attorney). The addition and/or deletion of a
practitioner from the list of practitioners associated with
a Customer Number will result in the addition or deletion of
such practitioner from the list of persons authorized to
represent  any  applicant  who  appointed  all  of  the

practitioners associated with such Customer Number. This
will avoid the necessity for the filing of additional papers
in each patent application affected by a change in the
practitioners of the law firm prosecuting the application.
The appointment of practitioners associated with a Customer
Number will be optional, in that any applicant may continue
to individually name those practitioners to represent the
applicant in a patent application.

  The  Customer  Number  practice  does  not  affect  the
prohibition against and does not amount to an appointment of
a law firm (rather than specified practitioners). The Office
prohibits an appointment of a specified law firm because the
Office  cannot  ascertain  from  its  records  whether  a
particular practitioner submitting a paper to the Office is
associated with the law firm specified in an appointment.
The  Office  will  permit  an  appointment  of  all  of  the
practitioners associated with a specified Customer Number
because the Office can ascertain from its records for the
specified Customer Number whether a particular practitioner
is associated with such Customer Number.

  As  the  Office  will  not  recognize  more  than  one
correspondence address (37 CFR 1.33(a)), any inconsistencies
between the correspondence address resulting from a Customer
Number  being  provided  in  an  application  for  the
correspondence address and any other correspondence address
provided in that application would be resolved in favor of
the address of the Customer Number. Where an applicant
appoints all of the practitioners associated with a Customer
Number  as  well  as  a  list  of  individually  named
practitioners, such action would be treated as only an
appointment of all of the practitioners associated with a
Customer Number due to the potential for confusion and data
entry errors in entering registration numbers from plural
sources. Customer Numbers are designed to serve the dual
purpose in an application of providing a correspondence
address, and providing the list of practitioners appointed
with a power of attorney. Due to the prohibition against
dual correspondence in an application (37 CFR 1.33(a)), an
applicant will be permitted to provide only a single number
at a time as the Customer Number, and thus correspondence
address, for the application. In an instance in which an
applicant provides more than one Customer Number as the
correspondence address, the last provided Customer Number is
controlling. Thus, the appointment of a plurality (much less
a large number) of Customer Numbers will result in the
Office recognizing only the last mentioned Customer Number.
Applicants are strongly cautioned not to attempt to appoint
more than one Customer Number in a single communication, as
such action will not have a cumulative effect.

  The  Office  has  created  a  box  designation  for
correspondence related to a Customer Number ("Box CN"), and
all correspondence related to a Customer Number (e.g.,
requests for a Customer Number) should be addressed to this
box designation.<

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  PATENT APPLICATION FILED WITHOUT CORRESPONDENCE ADDRESS

  Effective  February  27,  1983,  in  accordance  with  the
provisions of 35 U.S.C. 111 and 37 CFR 1.53(b), a filing
date is granted to an application for patent, which includes
at least a specification containing a description pursuant
to 37 CFR 1.71 and at least one claim pursuant to 37 CFR
1.75, and any drawing referred to in the specification or
required by 37 CFR 1.81(a), which is filed in the Patent and
Trademark Office and which names the actual inventor or
inventors pursuant to 37 CFR 1.41(a). If an application
which has been accorded a filing date does not include the
appropriate filing fee or oath or declaration, the applicant
will be so notified and given a period of time within which
to file the missing parts to complete the application and to
pay the surcharge as set forth in 37 CFR 1.16(e) in order to
prevent abandonment of the application.

 In order for the Office to so notify the applicant, a
correspondence  address  must  also  be  provided  by  the
applicant. The address may be different from the Post Office
address of the applicant. For example, the address of the
applicant's registered attorney or agent may be used as the
correspondence address. If the applicant fails to provide
the Office with a correspondence address, the Office will be
unable  to  provide  the  applicant  with  notification  to
complete the application and to pay the surcharge as set
forth in 37 CFR 1.16(e). In such a case, the applicant will
be considered to have constructive notice as of the filing
date  that  the  application  must  be  completed  and  the
applicant will have 2 months from the filing date in which
to do so before abandonment occurs.

 The periods of time within which the applicant must
complete  the  application  may  be  extended  under  the
provisions of 37 CFR 1.136. Applications which are not
completed in a timely manner will be abandoned.

403.01  Correspondence Held With Associate Attorney [R -
3]

 Where the attorneys bear relation of principal attorney and
associate attorney, the correspondence will be had with the
associate attorney unless the principal attorney directs
otherwise, Ex parte Eggan , 1911 C.D. 213; 172 O.G. 1091
(Comm'r Pat. 1911). >The associate attorney may specify or
change the correspondence address to which communications
about the application are to be directed.<

403.02  Two Attorneys for Same Application

 If the applicant simultaneously appoints two principal
attorneys,  he  or  she  should  indicate  with  whom
correspondence is to be conducted. If one is a local
Washington metropolitan area attorney and the applicant
fails to indicate either attorney, correspondence will be
conducted with the local attorney.

 If, after one attorney is appointed, a second attorney is
later appointed without revocation of the power of the first
attorney, the name of the second attorney is entered on the
face of the file ( Ex parte Eggan , 1911 C.D. 213; 172 O.G.
1091 (Comm'r Pat. 1911)), with notation that the Office
letters are to be sent to him. This applies also to
associate attorneys.

404  Conflicting Parties Having Same Attorney

 See 37 CFR 10.66.

405  Attorney Not of Record

 Papers may be filed in patent applications by registered
attorneys or agents not of record under 37 CFR 1.34(a).
Filing of such papers is considered to be a representation
that the attorney or agent is authorized to act in a
representative capacity on behalf of applicant. However,
interviews with a registered attorney or agent not of record
will be conducted only on the basis of information and files
supplied by the attorney or agent in view of 35 U.S.C. 122.
Powers of attorney and documents granting access may not be
signed by an attorney or agent not of record.

406  Death of Attorney [R - 1]

  SOLE ATTORNEY

 If notification is received from the applicant or assignee
of  the  death  of  the  sole  principal  attorney  and  the
application is up for action by the examiner, correspondence
is held with the applicant or assignee who originally
appointed the deceased attorney.

 If notification is received from the office of the deceased
attorney and the application is up for action, the examiner
when preparing the Office action should add Form Paragraph
4.02.

¶ 4.02  Death of Attorney, Notice Received From Attorney's
Office

 In view of the notification of the death of the attorney of
record, the power of attorney is terminated. A new attorney
may be appointed.

 >Examiner Note:

 As the power of attorney has been terminated, Office
correspondence is sent to the applicant or the assignee who
originally appointed the deceased attorney or agent.<

 If notification of the death of the sole principal attorney
is received from the Office of Enrollment and Discipline or
some other source, there will be no paper of record in the
file wrapper to indicate that the attorney is deceased.
Correspondence therefore continues to be held with the

office of the deceased attorney but a copy of the Office
action is also mailed to the person who originally appointed
the attorney. In such an Office action where the application
is not ready for allowance, the examiner should add Form
Paragraph 4.03.

¶  4.03  Death of Attorney, Notice From Other Source

 Notice of the death of the attorney of record has come to
the attention of this Office. Since the power of attorney is
therefore terminated, a copy of this action is being mailed
to the [1].

 Examiner Note:

 In bracket 1, insert-applicant-or-assignee-if the assignee
originally appointed the deceased attorney.

 If notification of the death of the sole principal attorney
is received from the Office of Enrollment and Discipline or
some  other  source  and  the  application  is  ready  for
allowance,  the  examiner  prepares  the  application  for
allowance and writes a letter to the office of the deceased
attorney with a copy to the person who originally appointed
the  deceased  attorney  including  the  wording  of  Form
Paragraph 4.04.

¶ 4.04  Death of Attorney, Case is Ready for Allowance

 Notice of the death of the attorney of record has come to
the attention of this Office. Since the power of attorney is
thus terminated, and this application is now ready for
allowance, the Notice of Allowance will be mailed to the
office of the deceased attorney in the absence of a new
power of attorney.

 Examiner Note:

 A copy should also be mailed to the applicant or the
assignee who originally appointed the attorney.

 Note MPEP § 405.

 The power of a principal attorney will be revoked or
terminated by his or her death. Such a revocation or
termination of the power of the principal attorney will also
terminate the power of those appointed by him or her. Thus,
a principal attorney may appoint an associate attorney but
such a power terminates with that of the principal. The
principal attorney may not appoint a "substitute" and any
attempt by the principal to appoint a "substitute" attorney
whose power is intended to survive his or her own will not
be recognized by the Office.

407  Disbarred Attorney [R - 2]

 See MPEP § 105.

 >Form Paragraphs 4.06, 4.07, and 4.08 should be used where
power of attorney is given to an attorney agent who has been
suspended from practice before the office.

¶ 4.06  Attorney/Agent Suspended (Sole Practitioner, Sole
Inventor)

 The instant application contains a power of attorney to [1]
who has been [2] from practice before the Patent and
Trademark Office (Office). The Office does not communicate
with the attorneys or agents who have been suspended or
excluded from practice. Accordingly, the Office action is
being mailed to you as the inventor.

 Applicant may, of course, file a new power of attorney in
the application to have a registered attorney or agent
represent you before the Office. In the absence of an
attorney or agent of record, all amendments and other papers
filed in the application must be signed: (1) by you; or (2)
if there is an assignee of record of an undivided part
interest, by such assignee; or (3) if there is an assignee
of the entire interest, by such assignee; or (4) by a
registered patent attorney or agent, not of record, who acts
in a representative capacity under the provision of 37 CFR
1.34, i.e., who is not of record in the application.

 Applicant may obtain a list of registered patent attorneys
and  agents  located  in  your  area  by  writing  to  the
Commissioner of Patents and Trademarks, Box OED, Washington,
DC 20231, or by calling the Office of Enrollment and
Disciple at (703) 308 - 5316.

 Examiner Note:

 1.  In bracket 1, insert name of suspended or excluded
practitioner.

 2.  In  bracket  2,  insert  either  -suspended-  or
-excluded-

 3.  This form paragraph should be used when a suspended
or excluded practitioner is the only practitioner of record
and there is only a single inventor . Use form paragraph
4.07 if there are joint inventors.

 4.  The Office action is to be mailed only  to the
inventor at his/her current address of record.

¶ 4.07  Attorney/Agent Suspended (Sole Practitioner, Joint
Inventors)

 The instant application contains a power of attorney to [1]
who has been [2] from practice before the Patent and
Trademark Office (Office). The Office does not communicate
with attorneys or agents who have been suspended or excluded
from practice. Accordingly, the Office action is being
mailed to the address of the inventor first named in the
application.

 Applicant may, of course, file a new power of attorney in
the application to have a registered attorney or agent
represent them before the Office. In the absence of an
attorney or agent of record, all amendments and other papers
filed in the application must be signed: (1) by all named
applicants unless one named applicant has been given a power
of attorney to sign on behalf of the remaining applicants,
and the power of attorney is of record in the application;
or (2) if there is an assignee of record of an undivided
part interest, by all named applicants retaining an interest
and such assignee; or (3) if there is an assignee of the
entire interest, by such assignee; or (4) by a registered
patent attorney or agent not of record who acts in a

representative capacity under the provisions of 37 CFR
1.34(a). The Office will not hold telephone interviews with
or send communications to a registered patent attorney or
agent, acting in a representative capacity under 37 CFR
1.34, i.e., who is not of record in the application.

 Applicant may obtain a list of registered patent attorneys
and  agents  located  in  your  area  by  writing  to  the
Commissioner of Patents and Trademarks, Box OED, Washington,
DC 20231, or by calling the Office of Enrollment and
Discipline at (703) 308 - 5316.

 Examiner Note:

 1. In bracket 1, insert the name of the suspended or
excluded practitioner.

 2. In bracket 2, insert either -suspended- or -excluded-

 3. This form paragraph should be used when the suspended or
excluded practitioner is the only practitioner of record and
there are joint inventors . Use form paragraph 4.06 if there
is a single inventor.

 4. The Office action is to be mailed only to the inventor
first named in the declaration at his or her current post
office address of record.

¶ 4.08  Attorney/Agent Suspended (Plural Practitioners)

 The present application was filed containing a power of
attorney to [1] and [2]. A correspondence address was
supplied for [3]. No address was supplied for [4].

 [5] was [6] from practice before the Patent and Trademark
Office  (Office).  The  Office  does  not  communicate  with
attorneys or agents who have been suspended or excluded from
practice.

 As a correspondence address, other than to [7], is not of
record, this Office action is being mailed to [8] at his/her
last known address as listed on the register of patent
attorneys and agents. To ensure that a copy of this Office
action is received in a timely manner to allow for a timely
response, a copy of the Office action is being mailed
directly to the address of the inventor first named in the
declaration or oath. Any response by applicant(s) should be
by way of the remaining practitioner(s) of record and should
include a new correspondence address.

 Examiner Note:

 1. In brackets 1, 3, 5, and 7 insert the name of the
suspended or excluded practitioner.

 2. In brackets 2, 4, and 8 insert the name of the first
named unsuspended (unexcluded) registered practitioner of
record.

 3. In bracket 6, insert either -suspended- or -excluded-

 4. This form paragraph should be used when there is at
least one registered practitioner still of record who has
not been suspended or excluded from practice. Use one of
form paragraphs 4.06 or 4.07 if there are no remaining

registered attorneys or agents of record.

 5. The Office action is to be mailed both to the first
named registered attorney or agent of record (who is not
suspended or excluded) at the address currently listed in
the Attorney's Roster, and to the inventor first named in
the declaration at his or her current post office address of
record. <

408  Telephoning Attorney [R - 2]

 Present Office policy places great emphasis on telephone
interviews initiated by the examiner. For this reason, it is
not  necessary  for  an  attorney  to  request  a  telephone
interview. Examiners are not required to note or acknowledge
requests for telephone calls or state reasons why such
proposed  telephone  interviews  would  not  be  considered
effective to advance prosecution. However, it is desirable
for an attorney to call the examiner if the attorney feels
the call will be beneficial to advance prosecution of the
case. See MPEP § 713.01 and § 713.05.

  SPECIFIC TELEPHONE INTERVIEW SITUATIONS

 Restriction of invention (MPEP  § 812.01).

 Multiplicity (MPEP  §*>2173.05(n)<).

 Many attorneys have offices or representatives in the
Washington area and it sometimes expedites business to
interview them concerning an application. When the examiner
believes the progress of the application would be advanced
thereby, he or she may call the attorney in the case by
telephone and ask the attorney to come to the Office.

 Registered attorneys or agents not of record in a patent
application and acting in a representative capacity under 37
CFR  1.34(a)  should  not  be  telephoned  for  restriction
requirements, approval of examiner's amendments, or given
any information relative to such patent application by
telephone unless the telephone number of such attorney or
agent appears in a paper signed by the applicant or an
attorney or agent of record.

 Examiners should place all long distance telephone calls
through the FTS (Federal Telecommunications System), even
though  collect  calls  may  have  been  authorized  by  the
attorney.

  To  facilitate  any  telephone  calls  that  may  become
necessary,  it  is  strongly  recommended  that  amendments,
letters of transmittal, and powers of attorney include the
complete telephone number, with area code and extension, of
the  person  with  whom  the  interview  should  be  held,
preferably near the signature.

 In new applications, the telephone number may appear on the
letter of transmittal or in the power of attorney, oath, or
declaration, next to the attorney's name and address.

409  Death, Insanity, or Unavailability of Inventor

 If the inventor is dead, insane, or otherwise legally
incapacitated, refuses to execute an application, or cannot
be found, an application may be made by someone other than

the inventor, as specified in 37 CFR 1.42 - 1.47, and 1.423,
MPEP  § 409.01 - § 409.03(j).

409.01  Death of Inventor

 Unless a power of attorney is coupled with an interest
(i.e., an attorney is assignee or part - assignee), the
death of the inventor (or one of the joint inventors)
terminates the power of attorney and a new power from the
heirs, administrators, executors, or assignees is necessary
if the attorney is to remain of record (but see MPEP §
409.01(f)). See also 37 CFR 1.422.

409.01(a)  Prosecution by Administrator or Executor [R -
3]

 35 U.S.C. 117  .  Death or incapacity of inventor

 Legal representatives of deceased inventors and of those
under legal incapacity may make application for patent upon
compliance with the requirements and on the same terms and
conditions applicable to the inventor.

 37 CFR 1.42.  When the inventor is dead.

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

 One who has reason to believe that he or she will be
appointed legal representative of a deceased inventor may
apply for a patent as legal representative in accordance
with 37 CFR 1.42. Proof of the applicant's authority as
legal representative may be filed after the filing date of
the  application.  If  another  person  is  appointed  legal
representative and the application has been accorded a
filing date, an oath or declaration executed by the properly
appointed legal representative must be submitted as soon as
possible. The foregoing applies to the legal representative
of a deceased sole or deceased joint inventor.

 Application may be made by the heirs of the inventor, as
such, if there is no will or the will did not appoint an
executor and if accompanied by a certificate from the court
that they are all the heirs and that the estate was under
the sum required by state law for the appointment of an
administrator.

 If the court papers are in a language other than English,
an English translation of such papers is required. The
translation need not be sworn or affirmed.

 >If a court certificate is not available, then a legal
memorandum  prepared  and  signed  by  an  attorney  at  law
familiar with the law of the jurisdiction involved may be
submitted  to  demonstrate  that  the  persons  signing  the
declaration on behalf of the deceased inventor are all the
heirs of the deceased inventor and are authorized to act on
behalf of the deceased inventor. A copy (in the English
language) of any statute or any court decision relied upon

should be made of record.<

409.01(b)  Proof of Authority of Administrator or
Executor [R - 3]

 37 CFR 1.44.  Proof of authority.

 In the cases mentioned in § 1.42 and 1.43, proof of the
power or authority of the legal representative must be
recorded in the Patent and Trademark Office or filed in the
application before the grant of a patent.

 Whenever because of the death of an inventor the right of
applying  for  and  obtaining  a  patent  for  an  invention
devolves upon an executor or administrator, or whenever an
executor or administrator desires to intervene prior to the
granting of a patent, proof of the authority of such
executor or administrator should in all cases be made of
record in the Patent and Trademark Office by filing in the
application  or  recording  in  the  assignment  records  a
certificate of the clerk of a competent court or the
register of wills that his or her appointment is still in
full force and effect. Such certificate shall be signed by
an officer and authenticated by the seal of the court by
which the same was issued. The authority of other legal
representatives  of  the  inventor  must  be  similarly
established. If the certificate is not in the English
language, an English translation is also required.

 Should such certificate of appointment be found to be
insufficient for any reason, there may be required to be
filed or recorded a certified and properly authenticated
copy of the letters testamentary or of the letters of
administration so that the scope of authority of the persons
who seek to intervene may be a matter of record in this
Office.

  **>It  is  the  responsibility  of  the  examiner  of  the
application to ensure that proof of authority of the legal
representative has been submitted and to determine whether
the proof of authority is sufficient. The proof of authority
may either be recorded or filed in the application. If proof
of  authority  is  missing  from  the  application,  form<
paragraph 4.05 should be used to notify applicant that proof
of authority of the legal representative must be submitted.

¶ 4.05  Representative For Dead Or Insane Inventor

 Proof of authority of the legal representative under 37 CFR
1.44 has been omitted and must be provided.

 >If applicant responds with an indication that the proof of
authority documents have been recorded, then the assignment
records should be checked to determine whether the recorded
documents comply with 37 CFR 1.44.

 Deficiencies in the proof of authority should be pointed
out to applicant by the examiner in the next Office action
in order to avoid printer rush inquiries. In a national
stage application filed under 35 U.S.C. 371, if proof of
authority is insufficient, the application must be forwarded
to the PCT Legal Affairs Division. See MPEP § 1893.01(e).<

 In the case of foreign executors or administrators, a
consular officer of the United States or a notary public

from a member country to the Hague Convention Abolishing the
Requirement of Legalization for Foreign Public Documents
must authenticate the signature of the foreign officer
attesting to the papers submitted as proof of authority. If
documents are authenticated by a notary public in a member
country, an apostille must be used. See MPEP § 602.04.
Unusual situations may be referred to the Special Program
Law Office.

 >The examiner should acknowledge the filing of sufficient
proof of authority as soon as possible in an Office action
by  stating  that  proof  of  authority  of  the  legal
representative in compliance with 37 CFR 1.44 has been
submitted.<

409.01(c)  After Administrator or Executor Has Been
Discharged

 When an administrator or executor has performed his or her
functions and has been discharged and it is desired to make
an application for an invention of the deceased, it is
necessary for the administrator or executor to take out new
letters of administration in order that he or she may file a
new application of the deceased inventor.

409.01(d)  Exception in Some Foreign Countries

 The terms "Executor" and "Administrator" do not find an
exact counterpart in all foreign countries and the procedure
is governed by the necessity of construing those terms to
fit the circumstances of the case. Hence, the person or
persons having authority corresponding to that of executor
or administrator are permitted to make application as, for
example, the heirs in the Federal Republic of Germany where
no existing executor or administrator has been or will be
appointed. The authority of such persons must be proved by
an appropriate certificate. If the certificate is not in the
English language, an English translation thereof is also
required.

409.01(e)  If Applicant of Assigned Application Dies

 Where an applicant, carrying on the prosecution of an
application after assignment, dies, the administrator may
carry on the prosecution on filing letters of administration
unless and until the assignee intervenes (MPEP § 402.07).

409.01(f)  Intervention of Executor Not Compulsory [R -
3]

 When an inventor dies after filing an application, the
executor  or  administrator  should  intervene,  but  the
allowance of the application will not be withheld nor the
application  withdrawn  from  issue  if  the  executor  or
administrator does not intervene.

 This practice is applicable to an application which has
been placed in condition for allowance or passed to issue
prior to notification of the death of the inventor. See MPEP
§ 409.01.

 When a joint inventor of a pro se  application dies after
filing the application, the living joint inventors must
submit  proof  that  the  joint  inventor  is  dead.  Upon
submission of such proof, only the signatures of the living

joint inventors are required on the papers filed with the
PTO if the legal representative of the deceased inventor
does not intervene. If the legal representative of the
deceased inventor wishes to intervene, proof of authority
complying with 37 CFR 1.44 must be submitted. >See MPEP §
409.01(b) regarding proof of authority.< Once the legal
representative of the deceased inventor intervenes in the
pro se  application, the signatures of the living joint
inventors and the legal representative are required on the
papers filed with the PTO.

409.02  Insanity or Other Legal Incapacity

 37 CFR 1.43.  When the inventor is insane or legally
incapacitated.

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

 Where no legal representative has been appointed, one must
be appointed by a court of competent jurisdiction for the
purpose of execution of the oath or declaration of the
application. MPEP § 409.01(b) is also applicable in case of
insanity or other legal incapacity of an inventor.

409.03  Unavailability of Inventor [R - 2]

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

 (a)  If  a  joint  inventor  refuses  to  join  in  an
application for patent or cannot be found or reached after
diligent effort, the application may be made by the other
inventor on behalf of himself or herself and the omitted
inventor. The oath or declaration in such an application
must be accompanied by a petition including proof of the
pertinent facts and by the required fee ( § 1.17(h)) and
must state the last known address of the omitted inventor.
The Patent and Trademark Office shall forward notice of the
filing of the application to the omitted inventor at said
address. Should such notice be returned to the Office
undelivered, or should the address of the omitted inventor
be unknown, notice of the filing of the application shall be
published in the Official Gazette . The omitted inventor may
subsequently join in the application on filing an oath or
declaration of the character required by § 1.63. A patent
may be granted to the inventor making the application, upon
a showing satisfactory to the Commissioner, subject to the
same rights which the omitted inventor would have had if he
or she had been joined.

 (b)  Whenever  an  inventor  refuses  to  execute  an
application for patent, or cannot be found or reached after
diligent effort, a person to whom the inventor has assigned
or  agreed  in  writing  to  assign  the  invention  or  who
otherwise  shows  sufficient  proprietary  interest  in  the
matter justifying such action may make application for
patent on behalf of and as agent for the inventor. The oath
or declaration in such an application must be accompanied by
a petition including proof of the pertinent facts and a
showing that such action is necessary to preserve the rights
of the parties or to prevent irreparable damage, and by the
required fee ( § 1.17(h)) and must state the last known

address of the inventor. The assignment, written agreement
to assign or other evidence of proprietary interest, or a
verified copy thereof, must be filed in the Patent and
Trademark Office. The Office shall forward notice of the
filing of the application to the inventor at the address
stated in the application. Should such notice be returned to
the  Office  undelivered,  or  should  the  address  of  the
inventor be unknown, notice of the filing of the application
shall be published in the Official Gazette . The inventor
may subsequently join in the application on filing an oath
or declaration of the character required by § 1.63. A patent
may be granted to the inventor upon a showing satisfactory
to the Commissioner.

 35 U.S.C. 116.  Inventors

 When an invention is made by two or more persons jointly,
they shall apply for patent jointly and each make the
required oath, except as otherwise provided in this title.
Inventors may apply for a patent jointly even though (1)
they did not physically work together or at the same time,
(2)  each  did  not  make  the  same  type  or  amount  of
contribution, or (3) each did not make a contribution to the
subject matter of every claim of the patent.

 If a joint inventor refuses to join in an application for
patent or cannot be found or reached after diligent effort,
the application may be made by the other inventor on behalf
of himself and the omitted inventor. The Commissioner, on
proof of the pertinent facts and after such notice to the
omitted inventor as he prescribes, may grant a patent to the
inventor making the application, subject to the same rights
which the omitted inventor would have had if he had been
joined. The omitted inventor may subsequently join in the
application.

 Whenever through error a person is named in an application
for patent as the inventor, or through an error an inventor
is not named in an application and such error arose without
any deceptive intention on his part, the Commissioner may
permit the application to be amended accordingly, under such
terms as he prescribes.

 35 U.S.C. 118  .  Filing by other than inventor

 Whenever an inventor refuses to execute an application for
patent, or cannot be found or reached after diligent effort,
a person to whom the inventor has assigned or agreed in
writing to assign the invention or who otherwise shows
sufficient proprietary interest in the matter justifying
such action, may make application for patent on behalf of
and as agent for the inventor on proof of the pertinent
facts and a showing that such action is necessary to
preserve the rights of the parties or to prevent irreparable
damage; and the Commissioner may grant a patent to such
inventor upon such notice to him as the Commissioner deems
sufficient, and on compliance with such regulations as he
prescribes.

 Application papers submitted pursuant to 37 CFR 1.47 are
forwarded by the Application Division to the **Special
Program *>Law Office< for determination whether the papers
are proper, complete, and acceptable under 37 CFR 1.47.

 A bona fide attempt must be made to comply with the

provisions  of  37  CFR  1.47  at  the  time  the  oath  or
declaration is first submitted. If the oath or declaration,
and evidence submitted with the oath or declaration, are not
found acceptable, the 37 CFR 1.47 applicant will be notified
by the **Special Program *>Law Office< of the reasons why
the papers are not acceptable. The 37 CFR 1.47 applicant may
request reconsideration and file supplemental evidence in a
case where a bona fide attempt was made to comply with 37
CFR 1.47 from the outset.

409.03(a)  At Least One Joint Inventor Available [R - 3]

 37 CFR 1.47(a) and 35 U.S.C. 116, second paragraph,
requires  all  available  joint  inventors  to  file  an
application "on behalf of" themselves and on behalf of a
joint  inventor  who  "cannot  be  found  or  reached  after
diligent effort" or who refuses to "join in an application."

 In addition to other requirements of law (35 U.S.C. 111(a)
and  115),  an  application  deposited  in  the  Patent  and
Trademark Office pursuant to 37 CFR 1.47(a) must meet the
following requirements:

  (1)  All the available joint inventors must (i)
make oath or declaration on their own behalf as required by
37 CFR 1.63 or 1.175 (see MPEP § 602, § 605.01, and §
1401.08) and (ii) make oath or declaration on behalf of the
nonsigning joint inventor as required by 37 CFR 1.64. >An
oath or declaration signed by all the available joint
inventors with the signature block of the non - signing
inventor(s) left blank may be treated as having been signed
by all the available joint inventors on behalf of the non -
signing inventor(s), unless otherwise indicated.<

  (2)  The application must be accompanied by proof
that the nonsigning inventor (i) cannot be found or reached
after  diligent  effort  or  (ii)  refuses  to  execute  the
application papers. See MPEP § 409.03(d).

  (3)  The last known address of the nonsigning joint
inventor must be stated. See MPEP § 409.03(e).

409.03(b)  No Inventor Available [R - 3]

 Filing under 37 CFR 1.47(b) and 35 U.S.C. 118 is permitted
only where no inventor is available to make application and
allows a "person" with a demonstrated proprietary interest
to make application "on behalf of and as agent for" an
inventor who "cannot be found or reached after diligent
effort" or who refuses to sign the application oath or
declaration. The word "person" has been construed by the
Patent and Trademark Office to include juristic entities,
such as a corporation. Where 37 CFR 1.47(a) is available,
application cannot be made under 37 CFR 1.47(b).

 In addition to other requirements of law (35 U.S.C. 111(a)
and 115), an application deposited pursuant to 37 CFR
1.47(b) must meet the following requirements:

  (1)  The 37 CFR 1.47(b) applicant must make the
oath required by 37 CFR 1.63 and 1.64 or 1.175. Where a
corporation is the 37 CFR 1.47(b) applicant, an officer
(President,  Vice  -  President,  Secretary,  or  Treasurer)
thereof  should  normally  sign  the  necessary  oath  or
declaration.  A  corporation  may  authorize  any  person,

including an attorney or agent registered to practice before
the Patent and Trademark Office, to sign the application
oath  or  declaration  on  its  behalf.  Where  an  oath  or
declaration is signed by a registered attorney or agent on
behalf of a corporation, either proof of the attorney's or
agent's authority in the form of a statement signed by an
appropriate corporate officer must be submitted, or the
attorney or agent may simply state that he or she is
authorized to sign on behalf of the corporation. Where the
oath  or  declaration  is  being  signed  on  behalf  of  an
assignee, see MPEP § 324. An inventor may not authorize
another individual to act as his or her agent to sign the
application oath or declaration on his or her behalf,
Staeger v.  Commissioner , 189 USPQ 272 (D.D.C. 1976); In re
Striker  ,  182  USPQ  507  (Comm'r  Pat.  1973).  Where  an
application is executed by one other than the inventor, the
declaration  required  by  37  CFR  1.63  must  state  the
citizenship** and residence of the non - signing inventor
**>. Furthermore, < the post office address of the person
signing on behalf of the non - signing inventor >should be
provided in the oath or declaration if not stated elsewhere
in the application. See 37 CFR 1.33(a).< Also, the title or
position of the person signing must be stated if signing on
behalf of a corporation under 37 CFR 1.47(b).

  (2)  The 37 CFR 1.47(b) applicant must state his or
her relationship to the inventor as required by 37 CFR 1.64.

  (3)  The application must be accompanied by proof
that the inventor (i) cannot be found or reached after a
diligent effort or (ii) refuses to execute the application
papers. See MPEP § 409.03(d).

  (4)  The last known address of the inventor must be
stated. See MPEP § 409.03(e).

  (5)  The 37 CFR 1.47(b) applicant must make out a
prima facie case (i) that the invention has been assigned to
him or her or (ii) that the inventor has agreed in writing
to assign the invention to him or her or (iii) otherwise
demonstrate a proprietary interest in the subject matter of
the application. See MPEP § 409.03(f).

  (6)  The 37 CFR 1.47(b) applicant must prove that
the filing of the application is necessary (i) to preserve
the rights of the parties or (ii) to prevent irreparable
damage. See MPEP § 409.03(g).

409.03(c)  Legal Representatives of Deceased Inventor
Not Available [R - 2]

 37 CFR 1.47 should not be considered an alternative to 37
CFR 1.42 or 35 U.S.C. 117; since the language "*>cannot< be
found or reached after diligent effort" has no reasonable
application to a deceased inventor, In re Application Papers
Filed September 10, 1954 , 108 USPQ 340 (Comm'r Pat. 1955).
See 37 CFR 1.42 and MPEP § 409.01. However, 37 CFR 1.47 does
apply where a known legal representative of a deceased
inventor cannot be found or reached after diligent effort,
or refuses to make application. In such cases, the last
known address of the legal representative must be given (see
MPEP § 409.03(e)), and proof of the power or authority of
the legal representative must be established before the
grant of a patent, 37 CFR 1.44. Also, in hardship situations
where time or circumstances do not permit appointment of a

legal representative to make application, 37 CFR 1.47 may
apply, In re Schwarz , 147 USPQ 394 (Comm'r Pat. 1960). In
such situations, however, subsequent joinder of a properly
authorized legal representative will normally be required
before the grant of a patent.

409.03(d)  Proof of Unavailability or Refusal [R - 3]

 Where inability to find or reach a nonsigning inventor
"after diligent effort" is the reason for filing under 37
CFR 1.47, an affidavit or declaration of facts should be
submitted that fully describes the exact facts which are
relied on to establish that a diligent effort was made.

 The fact that a nonsigning inventor is on vacation or out
of town and is therefore temporarily unavailable to sign the
declaration is not an acceptable reason for filing under 37
CFR  1.47.  Such  a  petition  will  be  dismissed  as
inappropriate.

 The affidavit or declaration of facts must be signed, where
at all possible, by a person having firsthand knowledge of
the facts recited therein. Statements based on hearsay will
not normally be accepted. Copies of documentary evidence
such as certified mail return receipt, cover letter of
instructions, telegrams, etc., that support a finding that
the nonsigning inventor could not be found or reached should
be  made  part  of  the  affidavit  or  declaration.  It  is
important  that  the  affidavit  or  declaration  contain
statements of fact as opposed to conclusions.

 In cases where priority under 35 U.S.C. 119 is to be
claimed, the 37 CFR 1.47 applicant should explain what
efforts, if any, were made during the Convention year to
prepare the application and obtain the inventor's signature
thereon. The period allowed by the Convention year should
"be  sufficient  for  the  preparation  and  deposit  of  an
application . . (in the United States) in the form
required by the rules." Ex parte Sassin , 1906 C.D. 205
(Comm'r Pat. 1906). Accordingly, 37 CFR 1.47 may not be used
"to save the parties from the consequences of their delay."
Ex parte Sassin , supra. Attention is directed to the
material in MPEP § 608.01 entitled, "Filing of Non - English
Language Applications", for guidance in those instances
where  a  foreign  language  specification  attached  to  a
declaration executed by all named inventors is received from
abroad by counsel in this country. In those instances where
the nonsigning inventor later becomes available, joinder
papers are best submitted as soon as possible, preferably
before the 37 CFR 1.47 application is formally accepted.
Such joinder papers should be filed with a brief explanatory
letter requesting that they be incorporated with the earlier
37 CFR 1.47 application papers. The later submission of
joinder papers is not prejudicial to an earlier filing date
under 37 CFR 1.47 if acceptance of the application under
that rule would otherwise be warranted.

 Where a refusal of the inventor to sign the application
papers is alleged, the circumstances of this refusal must be
specified in an affidavit or declaration by the person to
whom the refusal was made. Statements by a party not present
when an oral refusal is made will not be accepted.

 Before a refusal can be alleged, it must be demonstrated
that a bona fide attempt was made to present a copy of the

application  papers  (specification,  including  claims,
drawings,  and  oath  or  declaration)  to  the  nonsigning
inventor for signature. >A copy of the application papers
should be sent to the last known address of the non -
signing inventor, or, if the non - signing inventor is
represented by counsel, to the address of the non - signing
inventor's attorney.<

 When there is an express oral refusal, that fact along with
the time and place of the refusal must be stated in the
affidavit or declaration. When there is an express written
refusal, a copy of the document evidencing that refusal must
be made part of the affidavit or declaration.

 When it is concluded by the 37 CFR 1.47 applicant that a
nonsigning inventor's conduct constitutes a refusal, all
facts upon which that conclusion is based should be stated
in an affidavit or declaration. If there is documentary
evidence to support facts alleged in the affidavit or
declaration, such evidence should be submitted. Whenever a
nonsigning inventor gives a reason for refusing to sign the
application oath or declaration, that reason should be
stated in the affidavit or declaration.

409.03(e)  Statement of Last Known Address

 An application filed pursuant to 37 CFR 1.47 must state the
last known address of the nonsigning inventor.

 That address should be the last known address at which the
inventor customarily receives mail. See MPEP § 605.03.
Ordinarily, the last known address will be the last known
residence of the nonsigning inventor. A post office box is
insufficient.

 Inasmuch as a nonsigning inventor is notified that an
application pursuant to 37 CFR 1.47 has been filed on his or
her behalf, other addresses at which the nonsigning inventor
may be reached should also be given.

409.03(f)  Proof of Proprietary Interest [R - 2]

 When an application is deposited pursuant to 37 CFR
1.47(b), the 37 CFR 1.47(b) applicant must prove that, as of
the date the application is deposited in the Patent and
Trademark Office, (1) the invention has been assigned to the
applicant, or (2) the inventor has agreed in writing to
assign the invention to the applicant, or (3) the applicant
otherwise has sufficient proprietary interest in the subject
matter to justify the filing of the application.

 If the application has been assigned, a copy of the
assignment (in the English language) must be submitted. The
assignment  must  clearly  indicate  that  the  invention
described in the 37 CFR 1.47(b) application was assigned to
the  37  CFR  1.47(b)  applicant  prior  to  the  date  the
application is deposited in the Patent and Trademark Office.
A statement under 37 CFR 3.73(b) by the assignee must also
be  submitted  (see  MPEP  §  324).  An  assignment  of  an
application and any "reissue, division, or continuation of
said application" does not  itself establish an assignment
of a continuation - in - part application, In re Gray , 115
USPQ 80 (Comm'r Pat. 1956). An assignment to a 37 CFR
1.47(b) applicant for the sole purpose of obtaining a filing
date for a 37 CFR 1.47(b) application is not considered an

assignment within the meaning of 35 U.S.C. 118 and 37 CFR
1.47(b).

 When an inventor has agreed in writing to assign an
invention described in an application deposited pursuant to
37  CFR  1.47(b),  a  copy  of  that  agreement  should  be
submitted. If an agreement to assign is dependent on certain
specified conditions being met, it must be established by
affidavit or declaration that those conditions have been
met.  A  typical  agreement  to  assign  is  an  employment
agreement where an employee (nonsigning inventor) agrees to
assign to his or her employer (37 CFR 1.47(b) applicant) all
inventions made during employment. When such an agreement is
relied on, it must be established by the affidavit or
declaration of a person having firsthand knowledge of the
facts that the invention was made by the employee while
employed by the 37 CFR 1.47(b) applicant.

 If the invention has not been assigned, or if there is no
written agreement to assign, the 37 CFR 1.47(b) applicant
must demonstrate that he or she otherwise has a sufficient
proprietary interest in the matter.

  A  proprietary  interest  obtained  otherwise  than  by
assignment or agreement to assign may be demonstrated by an
appropriate legal memorandum to the effect that a court of
competent jurisdiction (federal, state, or foreign) would
*>by< the weight of authority in that jurisdiction award
title of the invention to the 37 CFR 1.47(b) applicant. The
facts in support of any conclusion that a court would award
title to the 37 CFR 1.47(b) applicant should be made of
record by way of an affidavit or declaration of the person
having firsthand knowledge of same. The legal memorandum
should be prepared and signed by an attorney at law familiar
with the law of the jurisdiction involved. A copy (in the
English language) of a statute (if other than the United
States statute) or a court decision (if other than a
reported decision of a federal court or a decision reported
in  the  United  States  Patents  Quarterly)  relied  on  to
demonstrate a proprietary interest should be made of record.

409.03(g)  Proof of Irreparable Damage

 Irreparable damage may be established by showing that a
filing date is necessary to (1) avoid an imminent statutory
bar (35 U.S.C. 102) or (2) make a claim for priority (35
U.S.C. 119, 120, and 121). If a statutory bar is involved,
the act or publication which is believed to constitute the
bar should be identified. If a claim for priority is
involved, the prior application or applications should be
identified. A diligent effort to prepare the application and
obtain the inventor's signature to the oath or declaration
must be made (see MPEP § 409.03(d)) even if the application
is being filed to avoid a bar or to claim priority.

  Preservation  of  the  rights  of  the  parties  may  be
demonstrated by a showing that the inventor may reasonably
be expected to enter into competition with the 37 CFR
1.47(b) applicant, or that a firm plan for commercialization
of the subject matter of the application has been adopted.

409.03(h)  >Processing and< Acceptance of a 37 CFR 1.47
Application [R - 3]

 A filing date is assigned to an application deposited

pursuant to 37 CFR 1.47 provided the requirements of 37 CFR
1.53(b)(1) are complied with. A filing receipt will be sent
to the applicant *>and< the application **>will be forwarded
to< the Special Program Law Office>, Office of Petitions,
for consideration of the petition filed under 37 CFR 1.47<.

 When papers deposited pursuant to 37 CFR 1.47 are found
acceptable,  the  Special  Program  Law  Office  enters  a
memorandum or letter to that effect in the file.** >A notice
will be published in the Official Gazette identifying the
application number, filing date, the title of the invention
and the name(s) of the non - signing inventor(s).< The
Patent and Trademark Office will notify the nonsigning
inventor(s) of the filing of an application under 37 CFR
1.47 by sending a letter to the last known address of the
nonsigning inventor(s)**.

409.03(i)  Rights of the Nonsigning Inventor [R - 3]

 The nonsigning inventor (also referred to as an "inventor
designee")  may  protest  his  or  her  designation  as  an
inventor. The nonsigning inventor is entitled to inspect any
paper in the application**, order copies thereof at the
price set forth in 37 CFR 1.19, and make his or her position
of  record  in  the  file  wrapper  of  the  application.
Alternatively, the nonsigning inventor may arrange to do any
of the preceding through a registered patent attorney or
agent.

 While the Patent and Trademark Office will grant the
nonsigning inventor access to the application, inter partes
proceedings will not be instituted in 37 CFR 1.47 case. In
re Hough , 108 USPQ 89 (Comm'r Pat. 1955). A nonsigning
inventor is not entitled to a hearing (Cogar  v.  Schuyler ,
173 USPQ 389 (D.C. Cir. 1972)), and is not entitled to
prosecute the application >if status under 37 CFR 1.47 has
been accorded, or if proprietary interest of the 37 CFR
1.47(b) applicant has been shown to the satisfaction of the
Patent and Trademark Office<.

  A  nonsigning  inventor  may  join  in  a  37  CFR  1.47
application. To join in the application, the nonsigning
inventor must file an appropriate 37 CFR 1.63 oath or
declaration. Even if the nonsigning inventor joins in the
application, he or she cannot revoke or give a power of
attorney without agreement of the 37 CFR 1.47 applicant.

 The rights of a nonsigning inventor are protected by the
fact that the patent resulting from an application filed
under 37 CFR 1.47(b) and 35 U.S.C. 118 must issue to the
inventor, and an application filed under 37 CFR 1.47(a) and
35 U.S.C. 116, the inventor has the same rights that he or
she would have if he or she had joined in the application,
In re Hough , 108 USPQ 89 (Comm'r Pat. 1955).

 If a nonsigning inventor feels that he or she is the sole
inventor  of  an  invention  claimed  in  a  37  CFR  1.47
application naming him or her as a joint inventor, the
nonsigning inventor may file his or her own application and
request  that  his  or  her  application  be  placed  in
interference with the 37 CFR 1.47 application. If the claims
in both the nonsigning inventor's application and the 37 CFR
1.47  application  are  otherwise  found  allowable,  an
interference may be declared.

409.03(j)  Action Following Acceptance of a 37 CFR 1.47
Application [R - 2]

 After an application deposited pursuant to 37 CFR 1.47 is
found acceptable by the **Special Program*>Law Office<, the
examiner will act on the application in the usual manner**>.
Papers< filed by an inventor who did not originally join in
the application, and papers relating to its 37 CFR 1.47
status, will be **>placed in< the file wrapper **.

 In the event joinder papers are filed, **>the oath or
declaration  under  37  CFR  1.63  will  be  placed  in  the
application file.

  When  the  examiner  determines  that  a  37  CFR  1.47
application, or a file wrapper continuing application (37
CFR 1.62) thereof, is allowable, he or she must check the
file jacket to make sure that the phrase "Rule 47" appears
under the filing date. If the phrase "Rule 47" does not
appear under the filing date, the examiner must write in
black ink the phrase "Rule 47" under the filing date. The
examiner will then prepare the application for allowance in
accordance with MPEP Chapter 1300. It will not  be necessary
to forward the application to the Special Program Law
Office.

 Patents granted on applications accepted under 37 CFR 1.47
will have an indication on the face of the patent that the
application was filed under 37 CFR 1.47, regardless of
whether proper joinder of the previously nonsigning inventor
has been made.<

  - -- - --

  Chapter 500 Receipt and Handling of Mail and Papers

  501  Papers Received by Correspondence and Mail Division
  502  Depositing Correspondence
  502.01 Correspondence Transmitted by Facsimile
  502.02 Correspondence Signature Requirements
  503  Serial Number and Filing Receipt
  504  Assignment of Application for Examination
  505  "Office Date" Stamp of Receipt
  506  Completeness of Original Application
  506.01 Return of Incomplete Application
  506.02 Review of Refusal To Accord Filing Date
  507  Drafting Division
  508  Distribution
  508.01 Papers Sent to Wrong Group
  508.02 Papers Received After Patenting or Abandonment
  508.03 Unmatched Papers
  509  Payment of Fees
  509.01 Deposit Accounts
  509.02 Small Entity Status - Definitions
  509.03 Claiming Small Entity Status
  510  Patent and Trademark Office Business Hours
  511  Postal Service Emergency Contingency Plan
  512  Certificate of Mailing or Transmission
  513  Deposit as Express Mail With U.S. Postal Service

501  Papers Received by Correspondence and Mail
Division [R - 3]

 37 CFR 1.1.  **>Addresses for correspondence with the
Patent and Trademark Office.<

  **>(a)  Except  for  §  1.1(a)(3)  (i)  and  (ii),  all
correspondence intended for the Patent and Trademark Office
must be addressed to either "Commissioner of Patents and
Trademarks, Washington, D.C. 20231" or to specific areas
within the Office as set out in paragraphs (a)(1), (2) and
(3)(iii) of this section. When appropriate, correspondence
should also be marked for the attention of a particular
office or individual.

  (1) Patent correspondence . All correspondence concerning
patent matters processed by organizations reporting to the
Assistant Commissioner for Patents should be addressed to
"Assistant  Commissioner  for  Patents,  Washington,  D.C.
20231."

  (2)  Trademark  correspondence  .  All  correspondence
concerning trademark matters, except for trademark - related
documents sent to the Assignment Division for recordation
and  requests  for  certified  and  uncertified  copies  of
trademark application and registration documents, should be
addressed to "Assistant Commissioner for Trademarks, 2900
Crystal Drive, Arlington, Virginia 22202 - 3513." This
includes correspondence intended for the Trademark Trial and
Appeal Board.

  (3) Office of Solicitor correspondence .

  (i)  Correspondence  relating  to  pending  litigation
required by court rule or order to be served on the
Solicitor shall be hand - delivered to the Office of the
Solicitor or shall be mailed to: Office of the Solicitor,
P.O. Box 15667, Arlington, Virginia 22215; or such other
address as may be designated in writing in the litigation.
See § § 1.302(c) and 2.145(b)(3) for filing a notice of
appeal to the U.S. Court of Appeals for the Federal Circuit.

  (ii) Correspondence relating to disciplinary proceedings
pending  before  an  Administrative  Law  Judge  or  the
Commissioner shall be mailed to: Office of the Solicitor,
P.O. Box 16116, Arlington, Virginia 22215.

  (iii) All other correspondence to the Office of the
Solicitor shall be addressed to: Box 8, Commissioner of
Patents and Trademarks, Washington, D.C. 20231.

  (iv) Correspondence improperly addressed to a Post Office
Box specified in paragraphs (a)(3) (i) and (ii) of this
section will not be filed elsewhere in the Patent and
Trademark Office, and may be returned.<

 (b)  Letters  and  other  communications  relating  to
international applications during the international stage
and prior to the assignment of a national serial number
should be additionally marked "Box PCT."

 (c)  Requests for reexamination should be additionally
marked "Box Reexam."

 (d)  Payments of maintenance fees in patents and other
communications  relating  thereto  should  be  additionally
marked "Box M. Fee."

 (e)  Communications  relating  to  interferences  and
applications or patents involved in an interference should
be additionally marked "BOX INTERFERENCE."

 (f)  All applications for extension of patent term and
any communications relating thereto intended for the Patent
and Trademark Office should be additionally marked "Box
Patent Ext." When appropriate, the communication should also
be marked to the attention of a particular individual, as
where a decision has been rendered.

 (g)  **>[Reserved]<

 (h)  In applications under section 1(b) of the Trademark
Act, 15 U.S.C. 1051(b), all statements of use filed under
section 1(d) of the Act, and requests for extensions of time
therefor, should be additionally marked "Box ITU."

 (i)  The filing of all provisional applications and any
communications  relating  thereto  should  be  additionally
marked "Box Provisional Patent Application."

 NOTE. - Sections 1.1 to 1.26 are applicable to trademark
cases as well as to national and international patent cases
except for provisions specifically directed to patent cases.
See § 1..9 for definitions of "national application" and
"international application."

 37 CFR 1.4.  Nature of correspondence and signature
requirements.

 (a)  Correspondence with the Patent and Trademark Office
comprises:

 (1)  Correspondence relating to services and facilities
of the Office, such as general inquiries, requests for
publications supplied by the Office, orders for printed
copies of patents or trademark registrations, orders for
copies  of  records,  transmission  of  assignments  for
recording, and the like, and

 (2)  Correspondence in and relating to a particular
application  or  other  proceeding  in  the  Office.  See
particularly the rules relating to the filing, processing,
or other proceedings of national applications in Subpart B,
§ 1.31 to 1.378; of international applications in Subpart C,
§ 1.401 to 1.499; of reexamination of patents in Subpart D,
§ 1.501 to 1.570; of interferences in Subpart E; § 1.601 to
1.690; of extension of patent term in Subpart F, § 1.710 to
1.785; and of trademark applications § 2.11 to 2.189.

 (b)  Since each application file should be complete in
itself, a separate copy of every paper to be filed in an
application should be furnished for each application to
which the paper pertains, even though the contents of the
papers filed in two or more applications may be identical.

 (c)  Since  different  matters  may  be  considered  by
different branches or sections of the Patent and Trademark
Office, each distinct subject, inquiry or order should be
contained in a separate letter to avoid confusion and delay
in answering letters dealing with different subjects .

 (d)  Each piece of correspondence, except as provided
for in paragraphs (e) and (f) of this section, filed in a

patent or trademark application, reexamination proceeding,
patent or trademark interference proceeding, patent file or
trademark  registration  file,  trademark  opposition
proceeding, trademark cancellation proceeding, or trademark
concurrent  use  proceeding,  which  requires  a  person's
signature, must either:

 (1)  Be an original, that is, have an original signature
personally signed in permanent ink by that person; or

 (2)  Be a copy, such as a photocopy or facsimile
transmission ( § 1.6(d)), of an original. In the event that
a copy of the original is filed, the original should be
retained as evidence of authenticity. If a question of
authenticity arises, the Patent and Trademark Office may
require submission of the original.

 (e)  Correspondence requiring person's signature and
relating to registration practice before the Patent and
Trademark  Office  in  patent  cases,  enrollment  and
disciplinary  investigations,  or  disciplinary  proceedings
must be submitted with an original signature personally
signed in permanent ink by that person.

 (f)  When a document that is required by statute to be
certified must be filed, a copy, including a photocopy or
facsimile  transmission,  of  the  certification  is  not
acceptable.

 In addition to the Office of the Solicitor, as specified in
37 CFR 1.1*>(a)(3)<, the Office will now have three separate
addresses. The addresses are as follows.

 1)  FOR PATENT APPLICATIONS AND PATENT - RELATED PAPERS

 Correspondence in patent - related matters under the
direction of the Assistant Commissioner for Patents should
be addressed to:

 Assistant Commissioner for Patents

 Washington, D.C. 20231

 This change will affect correspondence such as: patent
applications, responses to notices of informality, requests
for extension of time, notices of appeal >to the Board of
Patent Appeals and Interferences (the Board)<, briefs in
support of an appeal >to the Board<, requests for oral
hearing >before the Board<, extensions of term of patent,
requests for publication of Statutory Invention Registration
(SIR), requests for reexamination, statutory disclaimers,
>certificates of correction,< petitions to the Assistant
Commissioner  for  Patents,  submission  of  information
disclosure statements, petitions to institute a public use
proceeding,  petitions  to  revive  abandoned  patent
applications, and other correspondence related to patent
applications and patents which is processed by organizations
reporting to the Assistant Commissioner for Patents.

 2)  FOR TRADEMARK APPLICATIONS AND TRADEMARK - RELATED
PAPERS

 Correspondence in trademark - related matters under the
direction  of  the  Assistant  Commissioner  for  Trademarks
should be addressed to:

 Assistant Commissioner for Trademarks

 2900 Crystal Drive

 Arlington, VA 22202 - 3513

  This change will affect all trademark applications and
other  trademark  -  related  mail,  except  for  trademark
documents sent to the Assignment Branch for recordation and
requests for certified and uncertified copies of trademark
documents. See Change of Address for Trademark Applications
and Trademark Related Papers , 1163 OG 80 (June 28, 1994).

 3)  FOR ALL OTHER CORRESPONDENCE

 Unless otherwise specified, correspondence that does not
fall into one of the categories designated above should be
addressed to:

 Commissioner of Patents and Trademarks

 Washington, D.C. 20231

  This  change  will  affect  such  correspondence  as:
communications  with  the  Board  of  Patent  Appeals  and
Interferences after jurisdiction of the application has been
transferred to the Board, patent services including **
patent copy sales, assignments, library services, requests
for lists of patents and SIRs in a subclass, requests for
the status of maintenance fee payments, as well as patent
practitioner  enrollment  matters  including  admission  to
examination, registration to practice, certificates of good
standing,  and  financial  service  matters  including
establishing a deposit account.

  All  correspondence  with  the  PTO,  except  for
communications relating to pending litigation >and certain
disciplinary  proceedings<  as  specified  in  37  CFR
1.1*>(a)(3)<, may continue to be filed directly at the
Attorney's Window located in Room 1B03 of Crystal Plaza 2,
2011 **>South Clark Place<, Arlington, VA.

 >Trademark - related papers may also be filed at the "walk
- up" window located on the third floor of the South Tower
Building, 2900 Crystal Drive, Arlington, Virginia. Hand
delivery of trademark papers and fees directly to the South
Tower Building will expedite processing.<

  Those who correspond with the PTO are requested not to
mix  correspondence  which  will  have  to  be  directed  to
different areas (e.g., Patents and Trademarks) of the Office
in a single envelope. At the present time, use of the wrong
mailing address will not affect the filing date assigned to
any application or correspondence received in the PTO,
except as specified in 37 CFR 1.1*>(a)(3)(iv)<.

 **>Except for certain mail addressed incorrectly to the
Office of the Solicitor, there will be no penalty for
addressing a document to the wrong area within the Office,
as long as one of the approved addresses is used. Use of the
specific addresses listed within 37 CFR 1.1 is strongly
encouraged because it will facilitate the process both for
the Office and the filer. Accordingly, a new application
incorrectly addressed to the Commissioner will be treated

the same as if the application was addressed to the specific
Assistant Commissioner.<

 All mailed communications are received by the Incoming -
Mail Section of the **>Office of Initial Patent Examination
(OIPE)<, which opens and distributes all official mail.

 Special boxes have been established to allow the forwarding
of particular types of mail to appropriate areas of the
Office as quickly as possible. A list of these boxes is
published  weekly  in  the  Official  Gazette.  Only  the
specified type of document for a particular box should be
placed in an envelope addressed to that box.

 If any documents other than the specified type identified
for each department are addressed to that department, they
will be significantly delayed in reaching the appropriate
area for which they were intended.

502  Depositing Correspondence [R - 3]

 37 CFR 1.5.  Identification of application, patent or
registration.

 (a)  No correspondence relating to an application should
be filed prior to **>receipt< of the application number **
from the Patent and Trademark Office. When a letter directed
to the Patent and Trademark Office concerns a previously
filed application for a patent, it must identify on the top
page in a conspicuous location, the application number
(consisting of the series code and the serial number; e.g.,
07/123,456), or the serial number and filing date assigned
to that application by the Patent and Trademark Office, or
the international application number of the international
application.  Any  correspondence  not  containing  such
identification will be returned to the sender where a return
address is available. The returned correspondence will be
accompanied with a cover letter which will indicate to the
sender that if the returned correspondence is resubmitted to
the Patent and Trademark Office within two weeks of the
*>mailing< date on the cover letter, the original date of
receipt of the correspondence will be considered by the
Patent and Trademark Office as the date of receipt of the
correspondence. Applicants may use either the Certificate of
Mailing or Transmission procedure under § 1.8 or the Express
Mail procedure under § 1.10 for resubmissions of returned
correspondence if they desire to have the benefit of the
date of deposit in the United States Postal Service. If the
returned correspondence is not resubmitted within the two -
week period, the date of receipt of the resubmission will be
considered to be the date of receipt of the correspondence.
The  two  -  week  period  to  resubmit  the  returned
correspondence will not be extended. ** In addition to the
application number, all letters directed to the Patent and
Trademark Office concerning applications for patents should
also state ** the name of the applicant, the title of the
invention, the date of filing the same, and, if known, the
group art unit or other unit within the Patent and Trademark
Office responsible for considering the letter and the name
of the examiner or other person to which it has been
assigned.

 (b)  When the letter concerns a patent other than for
purposes of paying a maintenance fee, it should state the
number and date of issue of the patent, the name of the

patentee, and the title of the invention. For letters
concerning payment of a maintenance fee in a patent, see the
provisions of § 1.366(c).

 (c)  A letter relating to a trademark application should
identify it as such and by the name of the applicant and the
serial number and filing date of the application. A letter
relating to a registered trademark should identify it by the
name of the registrant and by the number and date of the
certificate.

 (d)  A letter relating to a reexamination proceeding
should identify it as such by the number of the patent
undergoing reexamination, the reexamination request control
number assigned to such proceeding, and, if known, the group
art unit and name of the examiner to which it has been
assigned.

 (e)  When a paper concerns an interference, it should
state the names of the parties and the number of the
interference. The name of the examiner - in - chief assigned
to the interference ( § 1.610) and the name of the party
filing the paper should appear conspicuously on the first
page of the paper.

 >(f)  When a paper concerns a provisional application, it
should identify the application as such and include the
application number.<

 37 CFR 1.6.  Receipt of correspondence.

 (a)  Date of receipt and Express Mail date of deposit.
Correspondence received in the Patent and Trademark Office
is stamped with the date of receipt except as follows  :

 (1)  >The Patent and Trademark Office is not open for
the filing of correspondence on any day that is a Saturday,
Sunday, or Federal holiday within the District of Columbia.
Except  for  correspondence  transmitted  by  facsimile  as
provided for in paragraph (a)(3) of this section,< no
correspondence is received in the Patent and Trademark
Office on Saturdays, Sundays, or Federal holidays within the
District of Columbia.

 (2)  Correspondence filed in accordance with § 1.10 will
be stamped with the date of deposit as "Express Mail" with
the United States Postal Service **.

 (3)  Correspondence transmitted by facsimile to the
Patent and Trademark Office will be stamped with the date on
which the complete transmission is received in the Patent
and Trademark Office unless that date is a Saturday, Sunday,
or Federal holiday within the District of Columbia, in which
case the date stamped will be the next succeeding day which
is not a Saturday, Sunday, or Federal holiday within the
District of Columbia.

 **>(b) Patent and Trademark Office Post Office pouch . Mail
placed in the Patent and Trademark Office pouch up to
midnight on any day, except Saturdays, Sundays, and Federal
holidays within the District of Columbia, by the post office
at  Washington,  D.C.,  serving  the  Patent  and  Trademark
Office, is considered as having been received in the Patent
and Trademark Office on the day it was so placed in the
pouch by the U.S. Postal Service.<

 (c)  Correspondence delivered by hand. In addition to
being mailed, correspondence may be delivered by hand during
hours the Office is open to receive correspondence.

 (d)  Facsimile  transmission.  Except  in  the  cases
enumerated below, correspondence, including authorizations
to  charge  a  deposit  account,  may  be  transmitted  by
facsimile. The receipt date accorded to the correspondence
will be the date on which the complete transmission is
received in the Patent and Trademark Office, unless that
date is a Saturday, Sunday, or Federal holiday within the
District of Columbia. See § 1.6(a)(3). To facilitate proper
processing, each transmission session should be limited to
correspondence to be filed in a single application or other
proceeding before the Patent and Trademark Office. The
application number of a patent or trademark application, the
control  number  of  a  reexamination  proceeding,  the
interference  number  of  an  interference  proceeding,  the
patent number of a patent, or the registration number of a
trademark should be entered as a part of the sender's
identification  on  a  facsimile  cover  sheet.  Facsimile
transmissions are not permitted and, if submitted, will not
be accorded a date of receipt in the following situations:

 (1)  Correspondence as specified in § 1.4(e), requiring
an original signature;

 (2)  **>Certified< documents as specified in § 1.4(f);

 (3)  Correspondence which cannot receive the benefit of
the certificate of mailing or transmission as specified in §
1.8(a)(2)(i)(A) through (D) and (F); 1.8(a)(2)(ii)(A) and
(D); and 1.8(a)(2)(iii)(A) ;

 (4)  Drawings submitted under § 1.81, 1.83 through 1.85,
1.152, 1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;

 (5)  A request for reexamination under § 1.510;

 (6)  Correspondence to be filed in a patent application
subject to a secrecy order under § 5.1 through 5.8 of this
chapter and directly related to the secrecy order content of
the application;

 (7)  Requests  for  cancellation  or  amendment  of  a
registration under section 7(e) of the Trademark Act, 15
U.S.C. 1057(e); and certificates of registration surrendered
for cancellation or amendment under section 7(e) of the
Trademark Act, 15 U.S.C. 1057(e);

 (8)  Correspondence to be filed with the Trademark Trial
and Appeal Board, except the notice of ex parte appeal;

 (9)  Correspondence to be filed in an interference
proceeding which consists of a preliminary statement under §
1.621; a transcript of a deposition under § 1.676 or of
interrogatories,  cross  -  interrogatories,  or  recorded
answers under § 1.684(c); or an evidentiary record and
exhibits under § 1. 653.

 (e)  Interruptions in U.S. Postal Service .

 If interruptions or emergencies in the United States Postal
Service which have been so designated by the Commissioner

occur, the Patent and Trademark Office will consider as
filed on a particular date in the Office any correspondence
which is:

 (1)  Promptly filed after the ending of the designated
interruption or emergency; and

 (2)  Accompanied by a statement indicating that such
correspondence would have been filed on that particular date
if it were not for the designated interruption or emergency
in the United States Postal Service. Such statement must be
a verified statement if made by a person other than a
practitioner as defined in § 10.1(r) of this chapter.

 Applications (provisional and nonprovisional), amendments,
and other papers may be sent to the Patent and Trademark
Office by mail (see MPEP § 501), by facsimile (see MPEP §
502.01) or they may be deposited in the **>Office of Initial
Patent Examination (OIPE). Any correspondence sent to the
Patent and Trademark Office should include the sender's
return address and ZIP code designation.

  All  correspondence  with  the  Office,  except  for
communications relating to pending litigation and certain
disciplinary proceedings as specified in 37 CFR 1.1(a)(3),
may be filed directly at the Customer Service Window at the
following address, or delivered by private courier to:

 Assistant Commissioner for Patents [or Commissioner of
Patents  and  Trademarks,  or  Assistant  Commissioner  for
Trademarks] USPTO Correspondence and Mail Division Crystal
Plaza  Building  2,  Room  1B03  2011  South  Clark  Place
Arlington, VA 22202

 Trademark - related papers may also be filed or delivered
by private courier to the "walk - up" window located on the
third floor of the South Tower Building, 2900 Crystal Drive,
Arlington, Virginia. Hand delivery of trademark papers and
fees directly to the South Tower Building is recommended, to
expedite processing.<

 **

 All correspondence related to a national patent application
already filed with the Patent and Trademark Office must
include the identification of the serial number and either
the  series  code  or  the  filing  date  assigned  to  the
application by the Office. Any correspondence not containing
the proper identification set forth in 37 CFR 1.5(a) must be
sent by the group with a signed note to the **>OIPE< for
return to the sender. Each paper should be inspected to
assure that the papers being returned contain either a mail
room date stamp or a group date stamp. A minor error in the
identification of the application can be corrected by the
group provided the correct identification can be quickly
discovered. Examples of minor errors are transposed numbers,
typographical errors, and listing the parent application
number. The failure to give any serial number is not a minor
error. The Office often experiences difficulty in matching
incoming papers with the application file to which they
pertain because insufficient or erroneous information is
given. This applies especially to amendments, powers of
attorney, changes of address, status letters, petitions for
extension of time, and other petitions.

 Frequently, there are errors in the serial number or in the
group art unit number, or the incoming paper uses the old
group  art  unit  number  where  an  application  has  been
transferred and acted on by a different examining group.

 Where the group art unit number is entirely omitted, the
routine operations of the Correspondence and Mail Division
must be interrupted solely for the purpose of determining
the location of the application so that the communication
can be properly routed. Under these circumstances, the
efficiency  of  the  Correspondence  and  Mail  Division  is
impaired and the incoming paper is delayed in reaching its
proper destination. Where such papers are not essential to
compliance  with  a  statutory  period  or  time  limit  for
response, they may be returned for completion to identify
the location of the files.

 It would be of great assistance to the Office if all
incoming papers pertaining to a filed application carried
the following items:

  1.  Application number (checked for accuracy).

  2.  Group art unit number (copied from filing receipt
or most recent Office Action).

  3.  Filing date.

  4.  Name of the examiner who prepared the most recent
Office Action.

  5.  Title of invention.

 Applicants may be reminded of this provision by including
Form Paragraph 5.01.

¶ 5.01  Proper Heading for Incoming Papers.

 It would be of great assistance to the Office if all
incoming papers pertaining to a filed application carried
the following items:

 1.  Application number (checked for accuracy, including
series code and serial no.).

 2.  Group art unit number (copied from most recent
Office communication).

 3.  Filing date.

 4.  Name of the examiner who prepared the most recent
Office action.

 5.  Title of invention.

  During  pre  -  examination  processing,  drawings  are
temporarily separated from the rest of the application
papers. To facilitate the matching of drawings with the
application, it would be helpful if the applicant`s name,
docket number, and the title of the invention were put on
the back of the drawings. This may be done by writing
lightly on the drawings or by using gummed labels.

 When the Office receives formal or substitute drawings for
patent applications, a cover letter identifying the drawings

by application number should accompany them. The application
number should be placed on each sheet of drawings in
accordance with 37 CFR 1.84(c). It is possible to associate
the  drawings  with  the  files  when  this  information  is
missing.

 Identifying indicia should include the application number
or the title of the invention, inventor's name, docket
number (if any), and the name and telephone number of a
person to call. This information should be placed on the
back of each sheet of drawings with a minimum distance of
1.5 cm (5/8 - inch) down from the top of the page.

 **>It< is requested that the submission of additional or
supplemental papers on a newly filed application be deferred
until **>an application number< has been received. It also
would be appreciated if the filing of additional papers
relating to an allowed application were deferred until a
notice of allowance (PTOL - 85) is received.

 Patent and Trademark documents which have no particular
time or sequence requirements should be filed with materials
submitted  in  response  to  the  statutory  or  regulatory
requirements.  Examples  are  certified  copies  of  foreign
documents  to  support  priority  in  patent  applications,
changes of power of attorney, or changes in mailing address
following first action.

 All letters relating to a reexamination proceeding should
identify  the  proceeding  involved  by  patent  number  and
reexamination request control number.

 ISSUE BATCH NUMBER

 All papers filed by applicant in the Office after receiving
the Notice of Allowance and before the time the Issue Fee
Receipt is received should include the Issue Batch Number.
The Issue Batch Number is printed on the Notice of Allowance
form under the heading "Batch No.". The Issue Batch Number
consists of a capital letter followed by two digits, for
example; "A03", "D18", "F42", "J79." Use of the Issue Batch
Numbers is important since the allowed applications are
filed by these numbers.

 Any paper filed after receiving the Issue Fee Receipt
should include the indicated patent number rather than the
Issue Batch Number. At this time in the processing, the
Issue Batch Number is no longer useful since the application
has been removed from the batch at the time the patent
number was assigned.

 If the above suggestions are adopted, the processing of
both  new  and  allowed  applications  could  proceed  more
efficiently and promptly through the Patent and Trademark
Office .

  HAND - DELIVERY OF PAPERS

 Any paper which relates to a pending application may be
personally delivered to an examining group. However, the
examining group will accept the paper only if: (1) the paper
is accompanied by some form of receipt which can be handed
back to the person delivering the paper; and (2) the
examining  group  being  asked  to  receive  the  paper  is
responsible for acting on the paper. Patent applications,

including those filed under 37 CFR 1.60 and 1.62, may be
delivered  in  person  **>addressed  to  the  Assistant
Commissioner for Patents, USPTO Office of Initial Patent
Examination, Crystal Plaza Building 2, Room 1B03, 2011 South
Clark Place, Arlington, VA 22202<, but not to the examining
groups.

 The receipt accompanying a hand-delivered paper may take
the form of a card identifying the paper. The identifying
data on the card should be so complete as to leave no
uncertainty as to the paper filed. For example, the card
should  contain  the  applicant's  name(s),  application
*>number<, the filing date, and a description of the paper
being filed. If more than one paper is being filed for the
same application, the card should contain a description of
each paper or item.

 Under this procedure, the paper and receipt will be date
stamped with the group date stamp. Group personnel receiving
a paper will check it against the receipt to make sure that
the paper is accurately described on the receipt and that
the receipt does not list papers which are not being filed.
The  receipt  will  be  handed  back  to  the  person
hand-delivering the paper. The paper will be correlated with
the application and made an official paper in the file,
thereby avoiding the necessity of processing and forwarding
the paper to the examining group via the Mail Room.

 If duplicate copies of a request for an extension of time
under 37 CFR 1.136(b) are hand-delivered to an examining
group, both copies are dated, either stamped approved or
indicated as being denied, and signed. The duplicate copy is
returned to the delivering person regardless of whether the
request was signed by a registered attorney or agent, either
of record or acting in a representative capacity, the
applicant, or the assignee of record of the entire interest.

 The examining group will accept and date stamp a paper,
other  than  an  application,  even  though  the  paper  is
accompanied  by  a  check  or  the  paper  contains  an
authorization to charge a Deposit Account. However, in such
an  instance,  the  paper  will  be  hand-carried  by  group
personnel to the Office of Finance for processing and then
made an official paper in the file.

 All such papers, together with the cash, checks, or money
orders, shall be hand-carried to the *>Customer Service<
Window, >Crystal Plaza Building 2,< Room 2 - 1BO1 **.

  >"<EXPRESS MAIL>"< SERVICE

 There are two types of >"<Express Mail>"< delivery offered
by the U.S. Postal Service - "Post Office to Addressee" and
"Post Office to Post Office." The only type of service which
can be used for >"<Express Mail>"< directed to the Patent
and Trademark Office is >the< "Post Office to Addressee"
>service of the U.S. Postal Service. 37 CFR 1.10.< This
service provides for the use of a mailing label which
clearly indicates the date on which a particular paper or
fee was deposited.

 The *>addresses< that should be used for >"<Express Mail>"<
sent to the Patent and Trademark Office **>are set forth in
37 CFR 1.1 (see MPEP § 501).<

 "Post Office to Post Office" Express Mail does not provide
for delivery but instead is retained at the postal facility
of the addressee for pickup. The Postal Service  does not
notify the addressee that this type of Express Mail has been
received and is awaiting pickup. If not picked up, this mail
is held for 15 days and then returned to the sender.

 Therefore, since the Patent and Trademark Office does not
have resources for picking up any mail, including Express
Mail, the "Post Office to Post Office" Express Mail will not
reach the Patent and Trademark Office.

 See MPEP § 513 for the use of >the< Express Mail ** Mailing
procedure of 37 CFR 1.10.

502.01  Correspondence Transmitted by Facsimile [R - 3]

 37 CFR 1.6.  Receipt of correspondence.

  *****

 (d)  Facsimile  transmission  .  Except  in  the  cases
enumerated below, correspondence, including authorizations
to  charge  a  deposit  account,  may  be  transmitted  by
facsimile. The receipt date accorded to the correspondence
will be the date on which the complete transmission is
received in the Patent and Trademark Office, unless that
date is a Saturday, Sunday, or Federal holiday within the
District of Columbia. See § 1.6(a)(3). To facilitate proper
processing, each transmission session should be limited to
correspondence to be filed in a single application or other
proceeding before the Patent and Trademark Office. The
application number of a patent or trademark application, the
control  number  of  a  reexamination  proceeding,  the
interference  number  of  an  interference  proceeding,  the
patent number of a patent, or the registration number of a
trademark should be entered as a part of the sender's
identification  on  a  facsimile  cover  sheet.  Facsimile
transmissions are not permitted and, if submitted, will not
be accorded a date of receipt in the following situations:

 (1)  Correspondence as specified in § 1.4(e), requiring
an original signature;

 (2)  **>Certified< documents as specified in § 1.4(f);

 (3)  Correspondence which cannot receive the benefit of
the certificate of mailing or transmission as specified in §
§ 1.8(a)(2)(i)(A) through (D) and (F); 1.8(a)(2)(ii)(A) and
(D); and 1.8(a)(2)(iii)(A) ;

 (4)  Drawings submitted under § 1.81, 1.83 through 1.85,
1.152, 1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;

 (5)  A request for reexamination under § 1.510;

 (6)  Correspondence to be filed in a patent application
subject to a secrecy order under § 5.1 through 5.8 of this
chapter and directly related to the secrecy order content of
the application;

 (7)  Requests  for  cancellation  or  amendment  of  a
registration under section 7(e) of the Trademark Act, 15
U.S.C. 1057(e); and certificates of registration surrendered
for cancellation or amendment under section 7(e) of the

Trademark Act, 15 U.S.C. 1057(e);

 (8)  Correspondence to be filed with the Trademark Trial
and Appeal Board, except the notice of ex parte appeal;

 (9)  Correspondence to be filed in an interference
proceeding which consists of a preliminary statement under §
1.621; a transcript of a deposition under § 1.676 or of
interrogatories,  cross  -  interrogatories,  or  recorded
answers under § 1.684(c); or an evidentiary record and
exhibits under § 1.653.

  *****

 >Aside from the timeliness treatment provided when using a
Certificate of Transmission in accordance with 37 CFR 1.8,<
the date of receipt accorded to any correspondence permitted
to be sent by facsimile transmission is the date the
complete transmission is received by an Office facsimile
unit, unless the transmission is completed on a Saturday,
Sunday, or Federal holiday within the District of Columbia.
Correspondence for which transmission was completed on a
Saturday, Sunday, or Federal holiday within the District of
Columbia, will be accorded a receipt date of the next
succeeding day which is not a Saturday, Sunday, or Federal
holiday within the District of Columbia. For example, a
facsimile  transmission  to  the  Office  from  California
starting on a Friday at 8:45 p.m. Pacific time and taking 20
minutes, would be completed at 9:05 p.m. Pacific time. The
complete transmission would be received in the Office around
12:05 a.m. Eastern time on Saturday. The receipt date
accorded to the correspondence is the date of the following
business day, which in this case, would be Monday (assuming
that Monday was not a Federal holiday within the District of
Columbia).  >Note  however,  that  if  the  certificate  of
transmission is available (for documents not proscribed by
37  CFR  1.8(a)(2)),  then  the  above  facsimile  may  be
considered  timely  filed  on  Friday  if  it  contains  a
certificate of transmission and is in compliance with 37 CFR
1.8(a)(1)(i)(B) and (ii).<

 37 CFR 1.6(d) specifies the types of correspondence which
may  be  transmitted  by  facsimile.  These  would  include
amendments, declarations, petitions, issue fee transmittals
and  authorizations  to  charge  deposit  accounts.  The
situations where transmissions by facsimile are prohibited
are identified in 37 CFR 1.6(d)(1) - (9). Prohibitions cover
situations where originals are required as specified in 37
CFR  1.4(e)  and  (f),  and  situations  where  accepting  a
facsimile transmission would be unduly burdensome on the
Office. As a courtesy, the Office will attempt to notify
senders whenever correspondence is sent to the Office by
facsimile  transmission  that  falls  within  one  of  these
prohibitions.  Senders  are  cautioned  against  submitting
correspondence  by  facsimile  transmission  which  is  not
permitted under 37 CFR 1.6(d) since such correspondence will
not be accorded a receipt date.

 The following list itemizes types of correspondence which
may  not  be  filed  by  facsimile  transmission,  and,  if
submitted by facsimile, will not be accorded a date of
receipt:

  Correspondence Relative to Patents and Patent Applications
  Where Filing by Facsimile Transmission is Not Permitted

 (1)  A document that is required by statute to be
certified;

 (2)  A national patent application specification and
drawing  (provisional  or  nonprovisional)  or  other
correspondence for the purpose of obtaining an application
filing date;

 (3)  Drawings submitted under 37 CFR 1.81, 1.83 - 1.85,
1.152, 1.165, 1.174, or 1.437;

 (4)  Correspondence  in  an  interference  which  an
Administrative Patent Judge orders to be filed by hand or
"Express Mail";

 (5)  Agreements between parties to an interference under
35 U.S.C. 135(c);

 (6)  Correspondence to be filed in an interference
proceeding which consists of a preliminary statement under
37 CFR 1.621; a transcript of a deposition under 37 CFR
1.676 or of interrogatories, cross - interrogatories, or
recorded answers under 37 CFR 1.684(c); or an evidentiary
record and exhibits under 37 CFR 1.653;

 (7)  Correspondence to be filed in a patent application
subject to a secrecy order under 37 CFR 5.1 - 5.8 of this
chapter and directly related to the secrecy order content of
the application;

 (8)  An international application for patent;

 (9)  A copy of the international application and the
basic national fee necessary to enter the national stage, as
specified in 37 CFR 1.494(b) or 37 CFR 1.495(b);

 (10)  A request for reexamination under 37 CFR 1.510.

 Under 37 CFR 1.6(d)(4), drawings submitted under 37 CFR
1.81, 1.83 - 1.85, 1.152, 1.165, 1.174, or 1.437 may not be
filed  by  facsimile  in  patent  applications.  However,
applicants may submit by facsimile transmission proposed
drawing corrections for approval by the Office.

 See MPEP § 1834.01 for a discussion concerning facsimile
transmissions in PCT applications.

502.02  Correspondence Signature Requirements [R - 3]

 37 CFR 1.4.  Nature of correspondence and signature
requirements.

  *****

 (d)  Each piece of correspondence, except as provided *
in paragraphs (e) and (f) of this section, filed in a patent
or trademark application, reexamination proceeding, patent
or  trademark  interference  proceeding,  patent  file  or
trademark  registration  file,  trademark  opposition
proceeding, trademark cancellation proceeding, or trademark
concurrent  use  proceeding,  which  requires  a  person's
signature, must either:

 (1)  Be an original, that is, have an original signature

personally signed in permanent ink by that person; or

 (2)  Be a copy, such as a photocopy or facsimile
transmission ( § 1.6(d)), of an original. In the event that
a copy of the original is filed, the original should be
retained as evidence of authenticity. If a question of
authenticity arises, the Patent and Trademark Office may
require submission of the original.

 (e)  Correspondence requiring person's signature and
relating to registration practice before the Patent and
Trademark  Office  in  patent  cases,  enrollment  and
disciplinary  investigations,  or  disciplinary  proceedings
must be submitted with an original signature personally
signed in permanent ink by that person.

 (f)  When a document that is required by statute to be
certified must be filed, a copy, including a photocopy or
facsimile  transmission,  of  the  certification  is  not
acceptable.

 Correspondence filed in the Office, which requires a
person's signature, may be an original, or a copy thereof.
The  word  original,  as  used  herein,  is  defined  as
correspondence which is personally signed in permanent ink
by the person whose signature appears thereon. Where copies
of correspondence are acceptable, photocopies or facsimile
transmissions may be filed. For example, a photocopy or
facsimile transmission of an original of an amendment,
declaration (e.g., under 37 CFR 1.63 or 1.67), petition,
issue  fee  transmittal  form,  authorization  to  charge  a
deposit  account,  etc.,  may  be  submitted  in  a  patent
application. Where copies are permitted, second and further
generation copies (i.e., copy of a copy) are acceptable. For
example, a client may fax a paper to an attorney and the
attorney may then fax the paper to the office, provided the
paper is eligible to be faxed (see MPEP § 502.1). The
original, if not submitted to the Office, should be retained
as evidence of proper execution in the event that questions
arise as to the authenticity of the signature reproduced on
the photocopy or facsimile - transmitted correspondence. If
a question of authenticity arises, the Office may require
submission of the original.

 When a document that is required by statute to be certified
must be filed (such as a certified copy of a foreign patent
application, pursuant to 35 U.S.C. 119 or a certified copy
of an international application, pursuant to 35 U.S.C. 365)
a copy of the certification, including a photocopy or
facsimile  transmission,  will  not  be  acceptable.  The
requirement for an original certification does not apply to
certifications such as required under 37 CFR 1.8, * 1.60,
1.97(e) and 3.73(b), since these certifications are not
required by statute.

503  Serial Number and Filing Receipt [R - 3]

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

 (a)  It is desirable that all parts of the complete
application be deposited in the Office together; otherwise a
letter must accompany each part, accurately and clearly
connecting it with the other parts of the application. See §
1.53 with regard to completion of an application.

 (b)  Applicant will be informed of the application *
number and filing date by a filing receipt.

 Application numbers consisting of a series code and a
serial number are assigned **>by the Office of Initial
Patent Examination (OIPE)< immediately after mail has been
opened.

 If a self-addressed postcard is submitted with a patent
application, that postcard will be *>provided< with both the
receipt date and *>application< number prior to returning it
to the addressee. >The application number identified on such
a postcard receipt is merely the preliminary assignment of
an application number to the application, and should not be
relied upon (e.g., with respect to foreign filings) as
necessarily representing the application number assigned to
such application. The filing receipt represents the official
assignment by the PTO of a specific application number to a
particular  application.  See  37  CFR  1.53(b)(2).  The
application number officially assigned to an application on
the filing receipt may differ from the application number
identified  on  a  postcard  receipt  submitted  with  such
application, and, as between inconsistent filing receipts
and postcard receipts, the application number on the filing
receipt is controlling.<

 The identifying data on the postcard should include: (1)
applicant's name(s); (2) title of invention; (3) number of
pages  of  specification,  claims  (for  nonprovisional
applications), and sheets of drawing; (4) whether oath or
declaration  included;  (5)  provisional  application  cover
sheet; and (6) amount and manner of paying the fee.

 A return postcard should be attached to each patent
application for which a receipt is desired.

 It is important that the return postcard itemize all of the
components of the application. If the postcard does not
itemize each of the components of the application, it will
not serve as evidence that any component which was not
itemized was received by the Office.

 It should be recognized that the identification of an
application by serial number does not necessarily signify
that the Patent and Trademark Office has accepted the
application as complete (37 CFR 1.53(a)).

 A nonprovisional application is entitled to a filing date
as of the date of the identification of all of the inventors
and receipt of the specification, including claims, and any
required drawing. **>The filing receipt will be mailed at
the time a determination is made that the application meets
the minimum requirements to receive a filing date.< The oath
or declaration and filing fee may be filed later than the
remaining application papers, but if so, they must be
accompanied by the required surcharge. If the oath or
declaration, and/or filing fee, and appropriate surcharge
are not timely filed, the application will be abandoned **.

 A provisional application is entitled to a filing date as
of the date of the identification of all the inventors as
required by 37 CFR 1.41 and receipt of the specification and
any required drawing(s), and a cover sheet identifying the
application  as  a  provisional  application.  See  37  CFR

1.53(b)(2).

  In  the  **>OIPE<,  each  application  which  meets  the
requirements is given a filing date. It is important, when
referring to application files, to identify them by their
filing dates as well as by application numbers.

 The **>OIPE< mails a filing receipt to the attorney or
agent, if any, otherwise to the applicant, for each complete
application filed, giving the *>application< number, filing
date, and group to which assigned. See MPEP § 506.

 Attorney docket numbers must be limited to a maximum of 12
characters to prevent truncation. The Patent Application
Location and Monitoring (PALM) system data base allows a
maximum of 12 characters for the attorney docket numbers.
Spaces, slashes, and hyphens will no longer be included in
the entered docket number on the official filing receipt. In
an application where CASE or NAVY - CASE appears before the
first character in the docket number, only the characters
after CASE or NAVY - CASE will be entered on the official
filing receipt.

 In the **>OIPE<, the application papers are placed in a
file wrapper and certain data placed thereon.

 Applications which are entitled to a filing date and are
filed, whether by regular mail or "Express Mail" under 37
CFR 1.10, by hand - delivery or otherwise, will not be
returned to applicant even if requested. See 37 CFR 1.59.
Accordingly,  applicants  must  be  careful  not  to  file
applications which are not intended to be filed; e.g.,
duplicates of applications already filed. Since 37 CFR
1.26(a) precludes refund of an application filing fee when
applicant desires to withdraw an application, any request by
applicant not to process or charge an application filing fee
because the application was not intended to be filed must be
in the form of a petition under 37 CFR 1.183 requesting
suspension of the rules to the extent that the filing fee
not be processed or charged. Any such petition must include
the fee set forth in 37 CFR 1.17(h) and must be accompanied
by an express abandonment of the application in accordance
with 37 CFR 1.138. In order for such a petition to be
granted, it must ordinarily be filed and acted upon prior to
the date on which the application filing fee is processed or
charged by the Office with regard to the application.

  RETURN POSTCARD

 If a receipt of any paper filed in the Patent and Trademark
Office is desired, it may be obtained by enclosing with the
paper a self - addressed postcard identifying the paper. The
Patent and Trademark Office will stamp the receipt date on
the card and place it in the outgoing mail.

 The identifying data on the card should be so complete as
to  clearly  identify  the  paper  for  which  receipt  is
requested.  For  example,  the  card  should  identify  the
applicant's  name(s),  serial  number,  filing  date,
interference  number,  etc.,  and  the  paper(s)  should  be
identified by specifying the type thereof, namely affidavit,
amendment,  appeal,  components  of  applications,  brief,
drawings, fees, motions, supplemental oath or declaration,
petition, etc.

 Upon return of a postcard receipt from the PTO, the receipt
should be promptly reviewed by the person who filed the
papers to ensure that each itemized paper was received by
the PTO. If the postcard receipt has been annotated to
indicate that a particular paper was not received, the
postcard receipt will not serve as prima facie  evidence of
receipt of that paper in the PTO. Likewise, the postcard
receipt will not serve as  prima facie evidence of receipt
of papers which are not adequately itemized. For example,
merely listing on the postcard "a complete application" or
"patent application" will not serve as a proper receipt for
each of the required components of an application if one of
the components is found to be missing by the PTO. Instead,
each separate component; e.g., the number of pages of
specification,  number  of  claims  (nonprovisional
applications), number of sheets of drawings, cover sheet
(provisional applications), etc. should be itemized on the
postcard.

 The person receiving the paper(s) in the Patent and
Trademark Office should check the listing on the postcard
against the papers being filed to be sure they are properly
identified and that all the items listed are present. If any
of the items listed are not being filed, those items should
be  crossed  off  and  the  card  initialed  by  the  person
receiving the papers.

 A postcard receipt which itemizes and properly identifies
the papers which are being filed serves as prima facie
evidence of receipt in the PTO of all the items listed
thereon on the date stamped thereon by the PTO.

504  Assignment of Application for Examination [R - 1]

 The Application Division assigns * >a nonprovisional<
application to the examining group to which it appears to
belong. >Provisional applications will not be examined.<

505  "Office Date" Stamp of Receipt [R - 3]

 37 CFR 1.6.  Receipt of correspondence.

 (a)  Date of receipt and Express Mail date of deposit .
Correspondence received in the Patent and Trademark Office
is stamped with the date of receipt except as follows:

 (1)  **>The Patent and Trademark Office is not open for
the filing of correspondence on any day that is a Saturday,
Sunday, or Federal holiday within the District of Columbia.
Except  for  correspondence  transmitted  by  facsimile  as
provided  for  in  paragraph  (a)(3)  of  this  section,  no
correspondence is received in the Patent and Trademark
Office on Saturdays, Sundays, or Federal holidays within the
District of Columbia.<

 (2)  Correspondence filed in accordance with § 1.10 will
be stamped with the date of deposit as "Express Mail" with
the United States Postal Service **.

 (3)  Correspondence transmitted by facsimile to the
Patent and Trademark Office will be stamped with the date on
which the complete transmission is received in the Patent
and Trademark Office unless that date is a Saturday, Sunday,
or Federal holiday within the District of Columbia, in which
case the date stamped will be the next succeeding day which

is not a Saturday, Sunday, or Federal holiday within the
District of Columbia.

  *****

 The Office stamps papers and fees with the date of their
receipt in the Patent and Trademark Office. The stamp is
referred to as the "Office Date" stamp.

 When the last day for taking any action or paying any fee
in the U.S. Patent and Trademark Office falls on a Saturday,
Sunday,  or  a  Federal  holiday  within  the  District  of
Columbia, the action or the fee is considered timely if the
action is taken or the fee is paid on the next succeeding
business day.

 WARNING: Since a provisional application can be pending for
no more than twelve months, the last day of pendency may
occur on a Saturday, Sunday, or Federal holiday within the
District of Columbia which for copendency would require the
nonprovisional  application  to  be  filed  prior  to  the
Saturday, Sunday, or Federal holiday. See 37 CFR 1.78(a)(3).
>However,  note  that  new  patent  applications  filed  in
accordance with 37 CFR 1.10 will be stamped by the Office
with the date of deposit as "Express Mail" with the United
States  Postal  Service.  For  example,  if  a  new  patent
application is deposited in "Express Mail" in accordance
with 37 CFR 1.10 on a Saturday and the United States Postal
Service gives it a date of deposit of Saturday, the Office
will accord and stamp the correspondence with the Saturday
date. 37 CFR 1.6(a)(2).<

 If an application includes the necessary components for a
filing date (see 37 CFR 1.41(a) and 1.53(b) and MPEP § 506),
the "Office Date" stamp establishes the "filing date."
Applications  will  not  be  accepted  and  stamped  in  the
examining groups. They must be date stamped in the Mail
Room.

506  Completeness of Original Application [R - 2]

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

 (a) Any application for a patent received in the Patent and
Trademark Office will be assigned an application number for
identification purposes.

 (b)(1) The filing date of an application for patent filed
under this section, except for a provisional application, is
the date on which: a specification containing a description
pursuant to § 1.71 and at least one claim pursuant to §
1.75; and any drawing required by § 1.81(a), are filed in
the Patent and Trademark Office in the name of the actual
inventor or inventors as required by § 1.41. No new matter
may be introduced into an application after its filing date
§ 1.118). If all the names of the actual inventor or
inventors are not supplied when the specification and any
required drawing are filed, the application will not be
given a filing date earlier than the date upon which the
names are supplied unless a petition with the fee set forth
in § 1.17(i) is filed which sets forth the reasons the delay
in supplying the names should be excused. A continuation or
divisional application (filed under the conditions specified
in 35 U.S.C. 120 or 121 and § 1.78(a)) may be filed under

this section, § 1.60 or § 1.62. A continuation - in - part
application may be filed under this section or § 1.62.

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

 (i)  A provisional application must also include a cover
sheet  identifying  the  application  as  a  provisional
application. Otherwise, the application will be treated as
an application filed under § 1.53(b)(1).

 (ii)  An application for patent filed under § 1.53(b)(1)
may be treated as a provisional application and be accorded
the original filing date provided that a petition requesting
the conversion, with the fee set forth in § 1.17(q), is
filed prior to the earlier of the abandonment of the §
1.53(b)(1) application, the payment of the issue fee, the
expiration of 12 months after the filing date of the §
1.53(b)(1) application, or the filing of a request for a
statutory invention registration under § 1.293. The grant of
any such petition will not entitle applicant to a refund of
the fees which were properly paid in the application filed
under § 1.53(b)(1).

 (iii)  A provisional application shall not be entitled to
the right of priority under § 1.55 or 35 U.S.C. 119 or
365(a) or to the benefit of an earlier filing date under §
1.78  or  35  U.S.C.  120,  121  or  365(c)  of  any  other
application. No claim for priority under § 1.78(a)(3) may
>be made in a design application based on a provisional
application. No request under § 1.293 for a statutory
invention  registration  may  be  filed  in  a  provisional
application. The requirements of § § 1.821 - 1.825 regarding
application disclosures containing nucleotide and/or amino
acid  sequences  are  not  mandatory  for  provisional
applications.<

 (c)  If  any  application  is  filed  without  the
specification, drawing or name, or names, of the actual
inventor or inventors required by paragraph (b)(1) or (b)(2)
of this section, applicant will be so notified and given a
time  period  within  which  to  submit  the  omitted
specification,  drawing,  name,  or  names,  of  the  actual
inventor, or inventors, in order to obtain a filing date as
of the date of filing of such submission. A copy of the
"Notice  of  Incomplete  Application"  form  notifying  the
applicant should accompany any response thereto submitted to
the Office. If the omission is not corrected within the time
period set, the application will be returned or otherwise
disposed of; the fee, if submitted, will be refunded less
the handling fee set forth in § 1.21(n). Any request for

review of a refusal to accord an application a filing date
must be by way of a petition accompanied by the fee set
forth in § 1.17(i), if the application was filed under §
1.53(b)(1), or by the fee set forth in § 1.17(q), if the
application was filed under § 1.53(b)(2).

 (d)(1) If an application which has been accorded a filing
date pursuant to paragraph (b)(1) of this section does not
include the appropriate filing fee or an oath or declaration
by the applicant, applicant will be so notified, if a
correspondence address has been provided and given a period
of time within which to file the fee, oath, or declaration
and to pay the surcharge as set forth in § 1.16(e) in order
to prevent abandonment of the application. A copy of the
"Notice to File Missing Parts" form mailed to applicant
should accompany any response thereto submitted to the
Office. If the required filing fee is not timely paid, or if
the processing and retention fee set forth in § 1.21(l) is
not paid within one year of the date of mailing of the
notification required by this paragraph, the application
will be disposed of. No copies will be provided or certified
by the Office of an application which has been disposed of
or in which neither the required basic filing fee nor the
processing and retention fee has been paid. The notification
pursuant to this paragraph may be made simultaneously with
any notification pursuant to paragraph (c) of this section.
If no correspondence address is included in the application,
applicant has two months from the filing date to file the
basic filing fee, oath or declaration and to pay the
surcharge as set forth in § 1.16(e) in order to prevent
abandonment of the application; or, if no basic filing fee
has been paid, one year from the filing date to pay the
processing and retention fee set forth in § 1.21(l) to
prevent disposal of the application.

 (2)  If  a  provisional  application  which  has  been
accorded a filing date pursuant to paragraph (b)(2) of this
section does not include the appropriate filing fee or the
cover sheet required by § 1.51(a)(2), applicant will be so
notified if a correspondence address has been provided and
given a period of time within which to file the fee, cover
sheet and to pay the surcharge as set forth in § 1.16(l) in
order to prevent abandonment of the application. A copy of
the "Notice to File Missing Parts" form mailed to applicant
should accompany any response thereto submitted to the
Office. If the required filing fee is not timely paid, the
application will be disposed of. No copies will be provided
or certified by the Office of an application which has been
disposed of or in which the required basic filing fee has
not been paid. The notification pursuant to this paragraph
may be made simultaneously with any notification pursuant to
paragraph (c) of this section. If no correspondence address
is included in the application, applicant has two months
from the filing date to file the basic filing fee, cover
sheet and to pay the surcharge as set forth in § 1.16(l) in
order to prevent abandonment of the application.

 (e)(1) An application for a patent filed under paragraph
(b)(1) of this section will not be placed upon the files for
examination until all its required parts, complying with the
rules relating thereto, are received, except that certain
minor informalities may be waived subject to subsequent
correction whenever required.

 (2)  A provisional application for a patent filed under

paragraph (b)(2) of this section will not be placed upon the
files for examination and will become abandoned no later
than twelve months after its filing date pursuant to 35
U.S.C. 111(b)(1).

  INCOMPLETE NONPROVISIONAL APPLICATIONS

 If the nonprovisional application papers do not identify
all the inventors or include at least a specification
containing a description and at least one claim and **>a<
drawing,  **>if  necessary  under<  35  U.S.C.  113**>(first
sentence)<, or if the submitted application papers are too
informal to be given a filing date, the case is held in the
Application Division as an incomplete application and the
applicant is informed of the shortcomings of the papers. No
filing  date  is  granted  until  the  incompleteness  is
corrected.

 Form PTO - 1123, Notice of Incomplete Application Papers,
is prepared and mailed by the Application Division when
nonprovisional  application  papers  are  deemed  incomplete
under 35 U.S.C. 111(a).

 Such incompleteness may consist of the omission of any one
of the following parts of an application. The component
parts of a nonprovisional application necessary to obtain a
filing date are:

 An identification of the names of all of the inventors.

 A specification, 35 U.S.C. 112.

 A claim, 35 U.S.C. 112.

 A drawing, if **>necessary under< 35 U.S.C. 113**>(first
sentence)<.

 See 37 CFR 1.53(b)(1).

  Even  though  an  application  purports  to  include  the
component parts necessary to obtain a filing date, the
application will still be held to be incomplete and a filing
date will be refused if the component parts contain more
than minor informalities resulting in the application not
being acceptable for examination. See 37 CFR 1.53(c). ** If
the documents purporting to be a specification are so
obviously informal and incoherent that they would clearly
not constitute a specification as required by 37 CFR 1.71
and 35 U.S.C. 112, the application would not be acceptable
for examination and would not be accorded a filing date
until  corrections  are  made.  The  filing  date  of  the
application would be the date the corrections were made.

 Filing dates are accorded to nonprovisional applications
filed without the basic filing fee and without the oath or
declaration. In such cases, a notice is mailed by the
Application Division requiring that at least the basic
filing fee and the oath or declaration be filed, accompanied
by a surcharge ( § 1.16(e)). In those cases where the basic
filing fee is paid, but additional fees are required, a
notice is mailed by the examining group, requiring that the
balance of the fee be paid. See 37 CFR 1.53(d)(1).

  Occasionally,  nonprovisional  applications  which  have
already been signed by the inventors contain informal claims

that the attorney or agent feels should not be present in
the application upon filing. However, since alteration after
execution by the inventor and before filing is prohibited,
such applications must be filed by the attorney or agent in
the form in which they were executed by the inventors. A
nonprovisional application may be filed with a preliminary
amendment which is limited to the cancellation of claims.
This will diminish the number of claims to be considered for
calculation of the filing fee. Any other changes to the
application should be the subject of a separate amendment
which  may  be  entered  after  the  filing  fee  has  been
calculated and the filing date granted. If a preliminary
amendment  which  cancels  claims  does  not  accompany  the
application at the time the application is filed, the
notification of insufficient fee will inform the inventor,
attorney, or agent of the possibility of correcting the
insufficient payment by either (1) paying the additional
required fee amount, or (2) filing an amendment which
cancels claims to where the remaining claims are covered by
the fee submitted upon filing. However, no refund will be
made once the fee for claims is properly paid, even though
claims are later canceled.

 In the past, the Application Division has reviewed the
claimed  subject  matter  of  newly  filed  nonprovisional
applications to determine whether a filing date should be
granted. Such applications included those drawn to perpetual
motion  devices  and  methods  of  doing  business  and
applications for reissue signed by assignees or filed more
than 2 years after the grant of the patent which appear to
contain broadened reissue claims.

 Under the current practice, a filing date is normally
granted in such cases if the nonprovisional application is
otherwise sufficient and then forwarded to the examiner for
consideration and decision during the regular course of
examination.

  INCOMPLETE PROVISIONAL APPLICATIONS

 If the provisional application papers ** do not identify
all the inventors or include at least a specification
containing a description and **>a< drawing, **>if necessary
under< 35 U.S.C. 113**>(first sentence)< or if the submitted
application papers are too informal to be given a filing
date, the case is held in the Application Division as an
incomplete application and the applicant is informed of the
shortcomings of the papers. No filing date is granted until
the incompleteness is corrected.

 Such incompleteness may consist of the omission of any one
of the following parts of an application. The component
parts of a provisional application necessary to obtain a
filing date are:

 **

 An identification of the names of all of the inventors.

 A specification, 35 U.S.C. 112, first paragraph.

 A drawing, if **>necessary under< 35 U.S.C. 113**>(first
sentence)<.

  Even  though  an  application  purports  to  include  the

component parts necessary to obtain a filing date, the
application will still be held to be incomplete and a filing
date will be refused if the component parts contain more
than minor informalities resulting in the application not
being acceptable. See 37 CFR 1.53(c). ** If the documents
purporting to be a specification are so obviously informal
and incoherent that they would clearly not constitute a
specification as required by 37 CFR 1.71 and 35 U.S.C. 112,
the application would not be acceptable and would not be
accorded a filing date until corrections are made. The
filing date of the application would be the date the
corrections were made. If all the names of the actual
inventor  or  inventors  are  not  supplied  when  the
specification  and  any  required  drawing  are  filed,  the
provisional application will not be given a filing date
earlier than the date upon which the names are supplied
unless a petition with the fee set forth in § 1.17(q) is
filed which sets forth the reasons the delay in supplying
the names should be excused. A provisional application will
not be examined. However, a provisional application which
does not include a cover sheet identifying the application
as  a  provisional  application  will  be  treated  as  an
application filed under 37 CFR 1.53(b)(1).

 >NOTE: An application that does not include a cover sheet
identifying the application as a provisional application
will be treated as a nonprovisional application. See 37 CFR
1.53(b)(2)(i).<

 NOTE: No amendment, other than to make the provisional
application comply with all the applicable regulations, may
be made to the provisional application after the filing date
of the provisional application. See 37 CFR 1.53(b)(2).

  INFORMAL APPLICATIONS

 An application is informal if it is typed on both sides of
the paper, or is not permanent, legible, or reproducible. If
such informalities are timely corrected, the application is
given the filing date on which the original informal papers
were filed.

 The Application Division accords a filing date, as of the
date indicated by the "Office Date" stamp (see MPEP § 505),
to application papers which include the names of all of the
inventors, a specification containing a description and at
least one claim (nonprovisional applications), and *>a<
drawing **>, if necessary under< 35 U.S.C. 113**>(first
sentence)< but are informal because they do not comply with
the rules or notices. In such applications, the Application
Division  prepares  form  PTO  -  152,  Notice  of  Informal
Application, indicating the informality and places it in the
file wrapper. The examining group mails the letter to
applicant. Failure to correct the informality within the
specified time results in abandonment of the application.

 The letter of transmittal accompanying the filing of
continuing  applications  should  include  such  additional
information as the identification by application number of a
provisional or parent application, its status, and location
(if known) in the Patent and Trademark Office. The supplying
of this information will simplify the processing of these
applications.

506.01  Return of Incomplete Application

  If  a  request  is  made,  the  parts  of  an  incomplete
application which has not been assigned a filing date may be
returned by the Application Division. They may be used by
the applicant as part of a later complete application if the
missing parts are later supplied. See 37 CFR 1.53.

506.02  Review of Refusal To Accord Filing Date [R - 3]

 The filing date of the provisional or nonprovisional
application is the date of receipt in the Office of the
application which identifies the names of all the inventors
and includes a specification containing description pursuant
to 37 CFR 1.71 and at least one claim (nonprovisional
applications) pursuant to 37 CFR 1.75, and any drawings
required  by  37  CFR  1.81(a).  See  37  CFR  1.41(a)  and
1.53(b)(1) and (b)(2).

 If any of these items are missing, applicant will be
notified to file them and the filing date will be the date
of  receipt  of  the  missing  part(s).  If  the  oath  or
declaration for a nonprovisional application was executed
and filed with the application, a supplemental oath or
declaration  by  the  inventor  is  required  in  some
circumstances; e.g., where the missing item is the claim,
specification, or a drawing. The supplemental declaration
must identify the missing item and indicate, as appropriate,
that  it  accurately  claims,  describes,  or  illustrates
applicant's invention. See MPEP § 601.01(d) - (f) where the
application is filed without all the figures of the drawing.
An error in inventorship does not raise a filing date issue,
unless no inventors *>are< named or the application is
originally filed under 37 CFR 1.53(b) with "et al." as part
of the inventive entity (e.g., Jones et al.).

 Any review of the refusal to grant a filing date as of the
date of deposit of the application would be by way of
petition, accompanied by the petition fee (37 CFR 1.17(i)).
Petitioner should provide any arguments that he or she has
that the items noted were not missing or that a filing date
should be assigned in the absence of such items if they are
believed to be unnecessary. If petitioner alleges that no
defect exists, a request for refund of the petition fee may
be included in the petition.

 For applications properly filed under 37 CFR 1.10, the
filing date is the date that the application was deposited
as  "Express  Mail"  in  the  U.S.  Postal  Service.  **>For
example,  if  a  new  patent  application  is  deposited  in
"Express Mail" in accordance with 37 CFR 1.10 on a Saturday
and the United States Postal Service gives it a date of
deposit of Saturday, the Office will accord and stamp the
correspondence with the Saturday date. 37 CFR 1.6(a)(2).< If
the proper procedures were not followed, the application
will receive a filing date as of the date it was received in
the Office. Any review of these matters would be by way of
petition, accompanied by the petition fee (37 CFR 1.17(i)),
providing whatever arguments and evidence petitioner has
that the application is entitled to a filing date as of the
date it was mailed via "Express Mail."

 Any petition under this section should be marked to the
attention of the Special Program Law Office.

507  Drafting Division [R - 1]

 The drawing >in a nonprovisional application< is inspected
by the Drafting Division for formal compliance with the
rules.  If  the  drawing  is  satisfactory,  it  is  stamped
"approved." If the drawing contains defects which are not so
serious  as  to  warrant  holding  the  application  to  be
incomplete, the Draftsman checks the appropriate notation on
the "Notice of Informal Patent Drawing" form PTO - 948.

 See MPEP § 608.02(a) and (b) for handling of drawings so
informal as to render examination of the >nonprovisional<
application impractical.

508  Distribution [R - 1]

 The Micrographics Division prepares permanent prints made
of the drawings of all complete applications and secures the
prints in the file wrappers. The drawings and files are then
assembled and >nonprovisional applications are< forwarded to
the examining operation.

 When a new or substitute drawing is received, a print is
made and forwarded to the group to be placed in the file as
an official paper.

 As to the procedure to be followed when a model is filed,
see MPEP § 608.03 and § 608.03(a).

508.01  Papers Sent to Wrong Group

 If drawings, amendments, or other papers are delivered to
the wrong group, the current group assignment should be
obtained from PALM and be placed on the paper and then
forwarded to the appropriate group. The assignment indicated
by PALM may be verified by calling the group indicated
before forwarding the paper.

508.02  Papers Received After Patenting or Abandonment [R
- 2]

 After an application is patented or abandoned, any incoming
communication which is not to become part of the record **
>will be returned to the sender by the examining group.<

508.03  Unmatched Papers [R - 1]

 Unmatched papers >for nonprovisional applications< within a
group should be frequently reviewed to determine which
should be sent to the Paper Correlating Office (PCO).

 Item 1 below treats the papers in the "Serial number too
high" category. Items 2 - 6 below are directed to all other
unmatched  papers  not  in  the  "Serial  number  too  high"
category.

 1.  Unmatched papers in the "Serial No. Too High"
category

 This collection of papers being held by the group should be
reviewed at least once a week. Any paper having a serial
number which clearly should have already been received by
the group should be removed from this collection. Where the
group does not have a corresponding application for any of
these papers, inquiry should be made of the Application
Division to determine the group of record. If another group

number is indicated, the paper should be forwarded to that
group. If the Application Division does not yield a new
group number for the indicated Serial No., the paper should
be sent to the PCO.

 2.  Unmatched papers having a serial number

 It can be assumed that either the group number or the
serial number on these papers is incorrect. Inquiry should
be made of the Application Division and PALM to determine
the group of record and the procedure set out in item 1
above followed. An exception to this practice should be made
where the paper has thereon the name of an examiner in the
group. In these situations, a careful check of the group
records and files as well as consultation with the indicated
examiner should be made to determine the correct serial
number. If this does not yield a new serial number, the
paper should be sent to the PCO.

 3.  Unmatched papers relating to cases abandoned from
group

 The file should be ordered from Files Repository. If the
file  is  not  received  therefrom,  the  paper  should  be
forwarded to the PCO.

 4.  Papers for applications which have been sent to the
Patent Issue Division

 All papers for applications which PALM indicates to be
located in any of the locations 7400 through 7650 should be
forwarded to the Publishing Division.

 The instructions of this section (4) apply to all files in
Issue including those which have been assigned a Patent
Number and Issue Date. Papers requiring examiner review and
action  will  be  returned  to  the  examining  group  after
Publishing Division personnel have matched the paper to the
appropriate file.

 5.  Papers for applications which have been sent to the
Record Room

 If PALM indicates that the application for a paper is in
the Record Room (location code 9210), the paper should be
forwarded to the Paper Correlating Office for response.

 6.  Unmatched papers for cases which are known to be
pending in the group but cannot be located

 Generally, these are applications which PALM indicates are
present in the group, but the file is not available. These
papers should be retained in the group for processing.

 Each paper sent to the PCO must have a PCO Transmittal Form
stapled thereto. Each form attached to a paper should be
filled out as completely as possible. Transmittal Forms
attached to papers in categories 1 and 2 must have an
indication of the information obtained from both Application
Division and PALM. The PALM information should be inserted
in the large space at the bottom of the Form. This will help
eliminate duplication of effort by PCO personnel. Papers
received without transmittal forms or with incompletely
filled  out  transmittal  forms  may  be  returned  to  the
originating group .

509  Payment of Fees [R - 2]

 The latest fee schedule can be obtained by contacting the
Public Service Center at (703) 308 - 4357.

 37 CFR 1.22.  Fees payable in advance.

 (a)  Patent and trademark fees and charges payable to
the Patent and Trademark Office are required to be paid in
advance, that is, at the time of requesting any action by
the Office for which a fee or charge is payable with the
exception that under § 1.53 applications for patent may be
assigned a filing date without payment of the basic filing
fee.

 (b)  All patent and trademark fees paid to the Patent
and Trademark Office should be itemized in each individual
application, patent or other proceeding in such a manner
that it is clear for which purpose the fees are paid.

 37 CFR 1.23.  Method of payment.

 All payments of money required for Patent and Trademark
Office  fees,  including  fees  for  the  processing  of
international applications ( § 1.445), should be made in
U.S. specie, Treasury notes, national bank notes, post
office money orders, or by certified check. If sent in any
other form, the Office may delay or cancel the credit until
collection is made. Money orders and checks must be made
payable to the Commissioner of Patents and Trademarks.
Remittances from foreign countries must be payable and
immediately negotiable in the United States for the full
amount of the fee required. Money sent by mail to the Patent
and Trademark Office will be at the risk of the sender;
letters containing money should be registered.

 37 CFR 1.24.  Coupons.

 Coupons in denominations of three dollars, for the purchase
of  patents,  designs,  defensive  publications,  statutory
invention registrations, and trademark registrations are
sold by the Patent and Trademark Office for the convenience
of the general public; these coupons may not be used for any
other  purpose.  The  three  -  dollar  coupons  are  sold
individually and in books of 50 for $150.00. These coupons
are good until used; they may be transferred but cannot be
redeemed.

 37 CFR 1.26.  Refunds.

 (a)  Money paid >by actual mistake or< in excess will be
refunded, but a mere change of purpose after the payment of
money, as when a party desires to withdraw an application,
an appeal, or a request for oral hearing, will not entitle a
party to demand such a return. Amounts of twenty five
dollars or less will not be returned unless specifically
requested within a reasonable time, nor will the payer be
notified of such amount; amounts over twenty five dollars
may be returned by check or, if requested, by credit to a
deposit account.

 (b)  [Reserved]

 (c)  If the Commissioner decides not to institute a

reexamination proceeding, a refund of $1,690 will be made to
the requester of the proceeding. Reexamination requesters
should indicate whether any refund should be made by check
or by credit to a deposit account .

 >Where the Office has notified an applicant, in writing,
that a fee is due and has specified a particular dollar
amount for that fee, if the applicant timely submits the
specified  fee  amount  in  response  to  the  notice,  the
applicant should be considered to have complied with the
notice so as to avoid abandonment of the application. If the
fee paid by the applicant is insufficient, either because
the notice specified an incorrect dollar amount for the fee
or because of a fee increase effective after the mailing of
the notice and before payment of the fee by the applicant,
the applicant should be notified in writing by the Office of
the fee insufficiency and given a new time period in which
to submit the remaining balance. The written notification of
the fee insufficiency should set forth the reason (i.e., the
fee amount indicated by the Office in the earlier notice was
incorrect or the fees have increased since the earlier
notice was mailed) why applicant is being required to submit
an additional fee.<

509.01  Deposit Accounts [R - 1]

 37 CFR 1.25.  Deposit accounts.

 (a)  For the convenience of attorneys, and the general
public in paying any fees due, in ordering services offered
by the Office, copies of records, etc. deposit accounts may
be established in the Patent and Trademark Office upon
payment of the fee for establishing a deposit account ( §
1.21(b)(1)). A minimum deposit of $1,000 is required for
paying any fees due or in ordering any services offered by
the Office. However, a minimum deposit of $300 may be paid
to establish a restricted subscription deposit account used
exclusively for subscription order of patent copies as
issued.  At  the  end  of  each  month,  a  deposit  account
statement will be rendered. A remittance must be made
promptly upon receipt of the statement to cover the value of
items or services charged to the account and thus restore
the account to its established normal deposit. An amount
sufficient  to  cover  all  fees,  services,  copies,  etc.,
requested must always be on deposit. Charges to accounts
with insufficient funds will not be accepted. A service
charge ( § 1.21(b)(2)) will be assessed for each month that
the balance at the end of the month is below $1,000. For
restricted subscription deposit accounts, a service charge (
§ 1.21(b)(3)) will be assessed for each month that the
balance at the end of the month is below $300.

 (b)  Filing, issue, appeal, international - type search
report, international application processing, petition, and
post - issuance fees may be charged against these accounts
if sufficient funds are on deposit to cover such fees. A
general authorization to charge all fees, or only certain
fees, set forth in § 1.16 to 1.18 to a deposit account
containing sufficient funds may be filed in an individual
application,  either  for  the  entire  pendency  of  the
application or with respect to a particular paper filed. An
authorization to charge to a deposit account the fee for a
request for reexamination pursuant to § 1.510 and any other
fees required in a reexamination proceeding in a patent may
also  be  filed  with  the  request  for  reexamination.  An

authorization to charge a fee to a deposit account will not
be  considered  payment  of  the  fee  on  the  date  the
authorization to charge the fee is effective as to the
particular fee to be charged unless sufficient funds are
present in the account to cover the fee.

 An overdrawn account will be immediately suspended and no
charges will be accepted against it until a proper balance
is  restored,  together  with  a  payment  of  $10  (37  CFR
1.21(b)(1)) to cover the work done by the Patent and
Trademark Office incident to suspending and reinstating the
account and dealing with charges which may have been made in
the meantime.

 For applications filed prior to February 27, 1983, if the
Office discovers that a filing fee for an application was
charged to an account with insufficient funds, or to an
overdrawn account, the filing date of the application will
be withdrawn.

 For applications filed after February 27, 1983, if there is
an authorization to charge the filing fee to a deposit
account which is overdrawn or has insufficient funds, a
surcharge (37 CFR 1.16(e)) is required in addition to
payment of the filing fee. Failure to timely pay the filing
fee  and  surcharge  will  result  in  abandonment  of  the
application.

 It is expected, however, that reasonable precautions will
be taken in all cases to avoid overdrafts, and if an account
is suspended repeatedly it will be necessary to close it.

 Similarly, because of the burden placed on the Patent and
Trademark  Office  incident  to  the  operation  of  deposit
accounts, a charge of ten dollars (37 CFR 1.21(b)(1)) will
be made for opening each new account.

  DEPOSIT ACCOUNT AUTHORIZATIONS

 The rules of practice were amended effective Oct. 1, 1982,
at 37 CFR 1.25(b) to state that: "A general authorization to
charge all fees, or only certain fees, set forth in 37 CFR
1.16 to 1.18 to a deposit account containing sufficient
funds may be filed in an individual application, either for
the entire pendency of the application or with respect to a
particular paper filed." A general authorization does not
apply to document supply fees under 37 CFR 1.19, such as
those required for certified copies, to post - issuance fees
under 37 CFR 1.20, such as those required for maintenance
fees; * to miscellaneous fees and charges under 37 CFR 1.21,
such as assignment recording fees>, or as a basis for a
petition, such as a petition for an extension of time (see
MPEP § 201.06(b), Extensions of Time)<.

 Many applications filed prior to Oct. 1, 1982, contain
broad language authorizing any additional fees which might
have been due to be charged to a deposit account. The Patent
and  Trademark  Office  does  not  interpret  such  broad
authorizations, filed prior to Oct. 1, 1982, to include
authorization to charge to a deposit account the issue fee
or other fees in 37 CFR 1.16, 1.17, and 1.18 except those
associated  with  the  paper  containing  the  broad
authorization. However, such a broad authorization filed in
an application on or after Oct. 1, 1982, will be interpreted
as authorization to charge the issue fee; as well as any

other fee set forth in 37 CFR 1.16, 1.17, or 1.18. Fees
under 37 CFR 1.19, 1.20, and 1.21 will not be charged as a
result of a general authorization under 37 CFR 1.25.

 It is recommended that authorizations to charge fees to
deposit accounts include reference to the particular fees or
fee  sections  of  the  rules  which  applicant  intends  to
authorize. For example, if filing and processing fees under
37 CFR 1.16 and 1.17 only are intended to be included in the
authorization, and not the issue fee under 37 CFR 1.18, the
authorization  could  read:  "The  Commissioner  is  hereby
authorized to charge any fees under 37 CFR 1.16 and 1.17
which may be required during the entire pendency of the
application  to  Deposit  Account  No.---."  Such  an
authorization would clearly exclude issue fees under 37 CFR
1.18 while including all the filing and processing fees
listed in 37 CFR 1.16 and 1.17. Similarly, if it were
intended to authorize the charging of fees relating only to
a  specific  paper,  the  authorization  could  read  "The
Commissioner is hereby authorized to charge any fees under
37 CFR 1.16 and 1.17 which may be required by this paper to
Deposit Account No.---." Such authorizations would cover
situations in which a check to cover a filing and processing
fee under 37 CFR 1.16 and 1.17 was omitted or was for an
amount less than the amount required.

 It is extremely important that the authorization be clear
and unambiguous. If applicants file authorizations which are
ambiguous  and  deviate  from  the  usual  forms  of
authorizations,  the  Office  may  not  interpret  the
authorizations in the manner applicants intend. In such
cases, applicants could be subject to further expenses,
petitions, etc. in order to correct fees which were not
charged as intended due to an ambiguous authorization.

 When statutory fees are to be charged to a deposit account,
the processing of the application can be facilitated by
submitting  the  applicant's  transmittal  letter  or  other
correspondence specifying the account to be charged in
triplicate. Submission of these documents in triplicate will
eliminate the need for the mail room to photocopy the
document and will thereby reduce the processing time of
incoming mail.

509.02  Small Entity Status - Definitions [R - 3]

 Public Law 97 - 247, enacted August 27, 1982, provides that
effective Oct. 1, 1982, funds available under the Act to the
Patent and Trademark Office "shall be used to reduce by 50
per centum the payment of fees under section 41(a) and (b)
of title 35, United States Code, by independent inventors
and  nonprofit  organizations  as  defined  in  regulations
established by the Commissioner of Patents and Trademarks,
and by small business concerns as defined in Section 3 of
the Small Business Act and by regulations established by the
Small Business Administration." The fees which are reduced
include  patent  application  filing  fees  (37  CFR  1.16),
extension of time, revival, and appeal fees (37 CFR 1.17),
patent issue fees (37 CFR 1.18), statutory disclaimer fee
(37 CFR 1.20(d)), and maintenance fees on patents (37 CFR
1.20). Other fees, established under section 41(c) or (d) of
Title 37, United States Code, are not reduced for small
entities  since  such  a  reduction  is  not  permitted  or
authorized by Public Law 97 - 247.

 Fees which are not reduced include petition and processing
fees (other than revival), 37 CFR 1.17(h) - (k), document
supply fees, 37 CFR 1.19, certificate of correction fees, 37
CFR 1.20(a), request for reexamination fees, 37 CFR 1.20(c),
miscellaneous  fees  and  charges,  37  CFR  1.21,  and
international application fees, 37 CFR 1.445.

 Public Law 97 - 247 gave the Commissioner authority to
establish regulations defining independent inventors and
nonprofit  organizations.  These  definitions  have  been
established as 37 CFR 1.9(c) and (e). The Small Business
Administration  was  given  authority  to  establish  the
definition of a small business concern. This definition is
published in 37 CFR 1.9(d). A small entity for purposes of
paying reduced fees is defined in 37 CFR 1.9(f) as an
independent  inventor,  a  small  business  concern,  or  a
nonprofit organization.

 37 CFR 1.9.  Definitions.

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

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

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

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

 (c)  An independent inventor as used in this chapter
means any inventor who (1) has not assigned, granted,
conveyed, or licensed, and (2) is under no obligation under
contract or law to assign, grant, convey, or license, any
rights in the invention to any person who could not likewise
be classified as an independent inventor if that person had
made the invention, or to any concern which would not
qualify  as  a  small  business  concern  or  a  nonprofit
organization under this section.

 (d)  A small business concern as used in this chapter
means any business concern as defined by the regulations of
the Small Business Administration in 13 CFR 121.1301 through
121.1305, which define a small business concern as one whose
number of employees, including those of its affiliates, does
not exceed 500 persons and which has not assigned, granted,
conveyed, or licensed, and is under no obligation under
contract or law to assign, grant, convey, or license, any
rights in the invention to any person who could not be
classified as an independent inventor if that person had
made the invention, or to any concern which would not
qualify  as  a  small  business  concern  or  a  nonprofit
organization under this section. Questions related to size
standards for a small business concern may be directed to:

Small Business Administration, Size Standards Staff, 409
Third Street, SW, Washington, DC 20416.

 (e)  A nonprofit organization as used in this chapter
means (1) a university or other institution of higher
education located in any country; (2) an organization of the
type described in section 501(c)(3) of the Internal Revenue
Code of 1954 (26 U.S.C. 501(c)(3)) and exempt from taxation
under section 501(a) of the Internal Revenue Code (26 U.S.C.
501(a));  (3)  any  nonprofit  scientific  or  educational
organization  qualified  under  a  nonprofit  organization
statute of a state of this country (35 U.S.C. 201(i)); or
(4) any non - profit organization located in a foreign
country which would qualify as a nonprofit organization
under paragraphs (e)(2) or (3) of this section if it were
located in this country.

 (f)  A small entity as used in this chapter means an
independent inventor, a small business concern, or a non -
profit organization.

 (g)  For definitions in interferences see § 1.601.

 >(h)  A Federal holiday within the District of Columbia
as used in this chapter means any day, except Saturdays and
Sundays, when the Patent and Trademark Office is officially
closed for business for the entire day.<

  INDEPENDENT INVENTOR

 37 CFR 1.9(c) defines an independent inventor as any
inventor who (1) has not assigned, granted, conveyed, or
licensed, and (2) is under no obligation under contract or
law to assign, grant, convey, or license any rights in the
invention to any person who could not likewise be classified
as an independent inventor if that person had made the
invention, or to any concern which would not qualify as a
small business concern or a nonprofit organization. The
"rights in the invention" are the rights in the United
States. Once an individual sole inventor, or one of several
joint  inventors,  has  assigned,  granted,  conveyed,  or
licensed, or comes under an obligation to assign, grant,
convey, or license, any rights to the invention to anyone
who could not likewise obtain status as a small entity, the
inventor(s) will no longer be entitled to pay fees in the
amounts established for an independent inventor (37 CFR
1.9(c)).

 Rights in the invention include the right to exclude others
from making, using, offering for sale, or selling the
invention throughout the United States or importing the
invention into the United States. Therefore, for example,
status as a small entity is lost by an inventor who has
transferred or has an obligation to transfer a shop right to
an employer who could not qualify as a small entity.

 37 CFR 1.9(c) permits an individual inventor to make an
assignment, grant, conveyance, or license of partial rights
in the invention to another individual or individuals who
could qualify as an independent inventor or inventors if
they had made the invention. In addition, 37 CFR 1.9(c)
permits an individual inventor to make an assignment, grant,
conveyance, or license of partial rights in the invention to
a small business concern or nonprofit organization. Under
the circumstances described in the previous two sentences,

the  individual  inventor  could  still  qualify  as  an
independent inventor. However, if the independent inventor
assigned, granted, conveyed, or licensed, or came under an
obligation to assign, grant, convey, or license, any rights
to the invention to any individual or organization which
could not qualify as a small entity (37 CFR 1.9(f)), then
the inventor would no longer qualify as an independent
inventor.

  SMALL BUSINESS CONCERN

 37 CFR 1.9(d) provides that, in order to be a small
business, the number of employees of the concern, including
those  of  its  affiliates,  may  not  exceed  500  persons.
Concerns are affiliates of each other when either, directly
or indirectly, one concern controls or has the power to
control the other, or a third party or parties controls or
has the power to control both. For discussion and example of
what constitutes "control", see the regulations of the Small
Business  Administration.  The  number  of  employees  of  a
business concern is determined by averaging the number of
persons of the concern and its affiliates employed on a full
- time, part - time, or temporary basis during each of the
pay periods for the preceding completed twelve (12) calendar
months.

 The definition >in 37 CFR 1.9(d)< also requires a small
business for this purpose to be one "which has not assigned,
granted, conveyed, or licensed, and is under no obligation
under contract or law to assign, grant, convey, or license,
any rights in the invention to any person who could not be
classified as an independent inventor if that person had
made the invention, or to any concern which would not
qualify  as  a  small  business  concern  or  a  nonprofit
organization under this section."

  NONPROFIT ORGANIZATIONS

 37 CFR 1.9(e) defines a nonprofit organization by utilizing
and *>interpreting< the definition contained in 35 U.S.C.
201(i). The term "university or other institution of higher
education" as used in 37 CFR 1.9(e) means an educational
institution  which  (1)  admits  as  regular  students  only
persons having a certificate of graduation from a school
providing secondary education, or the recognized equivalent
of such a certificate, (2) is legally authorized within the
jurisdiction in which it operates to provide a program of
education  beyond  secondary  education,  (3)  provides  an
educational program for which it awards a bachelor's degree
or provides not less than a 2 - year program which is
acceptable for full credit toward such a degree, (4) is a
public or other nonprofit institution, and (5) is accredited
by  a  nationally  recognized  accrediting  agency  or
association.  The  definition  of  "university  or  other
institution  of  higher  education"  as  set  forth  herein
essentially follows the definition of "institution of higher
education" contained in 20 U.S.C. 1141(a). Institutions
which  are  strictly  research  facilities,  manufacturing
facilities, service organizations, etc., are not intended to
be included within the term "other institution of higher
education" even though such institutions may perform an
educational function or publish the results of their work.

 Nonprofit organizations also include organizations of the
type described in section 501(c)(3) of the Internal Revenue

Code of 1954 (26 U.S.C. 501(c)(3)) and which are exempt from
taxation under 26 U.S.C. 501(a). Organizations described in
26 U.S.C. 501(c)(3) include corporations, and any community
chest,  fund,  or  foundation,  organized  and  operated
exclusively for religious, charitable, scientific, testing
for public safety, literary, or educational purposes, or to
foster national or international amateur sports competition
(but only if no part of its activities involve the provision
of athletic facilities or equipment), or for the prevention
of cruelty to children or animals, no part of the net
earnings of which inures to the benefit of any private
shareholder  or  individual,  no  substantial  part  of  the
activities of which is carrying on propaganda, or otherwise
attempting to influence legislation and which does not
participate in, or intervene in (including the publishing or
distributing  of  statements),  any  political  campaign  on
behalf of any candidate for public office.

  LOCATION OF SMALL ENTITY

 Small entities may claim reduced fees regardless of the
country in which they are located. There is no restriction
requiring that the independent inventor, small business
concern, or nonprofit organization be located in the United
States. The same definitions apply to all applicants equally
in accordance with the Paris Convention for the Protection
of Industrial Property.

 TRANSFER OF RIGHTS

 With regard to transfer of rights in the invention, the
rights in question are those in the United States to be
covered by the application or patent. Transfer of rights to
a Japanese patent, for example, would not affect small
entity status if no rights in the United States patent were
likewise transferred.

 The payment of reduced fees under 35 U.S.C. 41 is limited
to those situations in which all of the rights in the
invention are owned by small entities; i.e., independent
inventors,  small  business  concerns,  or  nonprofit
organizations. To do otherwise would be clearly contrary to
the intended purpose of the legislation which contains no
indication that fees are to be reduced in circumstances
where rights are owned by non - small entities. For example,
a non - small entity is not permitted to transfer patent
rights to a small business concern which would pay the
reduced fees and grant a license to the entity.

 If rights transferred to a non - small entity are later
returned to a small entity so that all rights are held by
small entities, reduced fees may be claimed.

 The term "license" in the definitions includes nonexclusive
as well as exclusive licenses and royalty free as well as
royalty generating licenses. Implied licenses to use and
resell patented articles purchased from a small entity,
however, will not preclude the proper claiming of small
entity status. Likewise, an order by an applicant to a firm
to build a prototype machine or product for the applicant's
own use is not considered to constitute a license for
purposes of the definitions.

  RIGHTS HELD BY GOVERNMENT ORGANIZATIONS

 Also, although the Federal government agencies do not
qualify as nonprofit organizations for paying reduced fees
under the rules, a license to a Federal agency resulting
from a funding agreement with the agency pursuant to 35
U.S.C. 202(c)(4) will not preclude the proper claiming of
small entity status.

 Public Law 96 - 517 added a new chapter*>18< of Title 35 of
the United States Code entitled "Patent Rights in Inventions
Made With Federal Assistance." Under the provisions of the
statute, each funding agreement between a Federal agency and
an  individual,  small  business  firm,  or  nonprofit
organization must provide, inter alia, that " . . the
Federal agency shall have a nonexclusive, nontransferable,
irrevocable, paid - up license to practice or have practiced
for or on behalf of the United States any subject invention
. . ." See 35 U.S.C. 202(c)(4).

 Under the provisions of 37 CFR 1.9 and 1.27, an independent
inventor, small business concern, or nonprofit organization
cannot qualify for reduced patent fees if it has assigned,
granted, conveyed, or licensed or is under an obligation
under contract or law to assign, grant, convey, or license
any rights in the invention to other than an individual who
could be classified as an independent inventor if that
person had made the invention, a small business concern, or
a  nonprofit  organization.  The  Federal  agencies  do  not
qualify as nonprofit organizations for paying reduced patent
fees under the rules. Applying this construction to the
licensing  of  an  invention  to  a  Federal  agency  by  an
independent inventor, small business concern, or nonprofit
organization pursuant to a funding agreement under 35 U.S.C.
202(c)(4) would preclude their qualifying for paying reduced
fees. This, however, would frustrate the intent of Public
Law 97 - 247 and Public Law 96 - 517 when taken together.

 Government organizations as such, whether domestic or
foreign,  cannot  qualify  as  nonprofit  organizations  as
defined in 37 CFR 1.9(e). Thus, for example, a government
research facility or other government - owned corporation
could not qualify. 37 CFR 1.9(e) was based upon 35 U.S.C.
201(i),  as  established  by  Public  Law  96  -  517.  The
limitation to "an organization of the type described in
section 501(c)(3) of the Internal Revenue Code of 1954 (26
U.S.C. 501(c)(3)) and exempt from taxation under section
501(a) of the Internal Revenue Code (26 U.S.C. 501(a))"
would by its nature exclude the U.S. government and its
agencies and facilities, including research facilities and
government corporations. State and foreign governments and
governmental agencies and facilities would be similarly
excluded. 37 CFR 1.9(e) is not intended to include within
the  definition  of  a  nonprofit  organization  government
organizations  of  any  kind  located  in  any  country.  A
university or other institution of higher education located
in any country would qualify, however, as a "nonprofit
organization" under 37 CFR 1.9(e) even though it has some
government  affiliation  since  such  institutions  are
specifically included.

 A wholly owned subsidiary of a nonprofit organization or of
a  university  is  considered  a  part  of  the  nonprofit
organization  or  university  and  is  not  precluded  from
qualifying for small entity status.

509.03  Claiming Small Entity Status [R - 2]

 37 CFR 1.27.  Statement of status as small entity.

 (a)  Any person seeking to establish status as a small
entity ( § 1.9(f) of this part) for purposes of paying fees
in an application or a patent must file a verified statement
in the application or patent prior to or with the first fee
paid as a small entity. Such a verified statement need only
be filed once in an application or patent and remains in
effect until changed.

 (b)  Any verified statement filed pursuant to paragraph
(a) of this section on behalf of an independent inventor
must  be  signed  by  the  independent  inventor  except  as
provided in § 1.42, § 1.43, or § 1.47 of this part, and must
aver that the inventor qualifies as an independent inventor
in accordance with § 1.9(c) of this part. Where there are
joint inventors in an application, each inventor must file a
verified statement establishing status as an independent
inventor in order to qualify as a small entity. Where any
rights have been assigned, granted, conveyed, or licensed,
or there is an obligation to assign, grant, convey, or
license, any rights to a small business concern, a nonprofit
organization, or any other individual, a verified statement
must be filed by the individual, the owner of the small
business concern, or an official of the small business
concern or nonprofit organization empowered to act on behalf
of the small business concern or nonprofit organization
averring  to  their  status.  For  purposes  of  a  verified
statement under this paragraph, a license to a Federal
agency resulting from a funding agreement with that agency
pursuant to 35 U.S.C. 202(c)(4) does not constitute a
license as set forth in § 1.9 of this part.

 (c)  Any verified statement filed pursuant to paragraph
(a) of this section on behalf of a small business concern
must (1) be signed by the owner or an official of the small
business concern empowered to act on behalf of the concern;
(2) aver that the concern qualifies as a small business
concern as defined in § 1.9(d); and (3) aver that exclusive
rights to the invention have been conveyed to and remain
with the small business concern, or if the rights are not
exclusive, that all other rights belong to small entities as
defined in § 1.9. Where the rights of the small business
concern as a small entity are not exclusive, a verified
statement must also be filed by the other small entities
having rights averring to their status as such. For purposes
of a verified statement under this paragraph, a license to a
Federal agency resulting from a funding agreement with that
agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a
license as set forth in § 1.9 of this part.

 (d)  Any verified statement filed pursuant to paragraph
(a) of this section on behalf of a nonprofit organization
must  (1)  be  signed  by  an  official  of  the  nonprofit
organization empowered to act on behalf of the organization;
(2) aver that the organization qualifies as a nonprofit
organization as defined in § 1.9(e) of this part specifying
under which one of § 1.9(e)(1), (2), (3), or (4) of this
part the organization qualifies; and (3) aver that exclusive
rights to the invention have been conveyed to and remain
with the organization or if the rights are not exclusive,
that all other rights belong to small entities as defined in
§ 1.9 of this part. Where the rights of the nonprofit
organization as a small entity are not exclusive, a verified

statement must also be filed by the other small entities
having rights averring to their status as such. For purposes
of a verified statement under this paragraph, a license to a
Federal agency resulting from a funding agreement with that
agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a
conveyance of rights as set forth in this paragraph.

 37 CFR 1.27 provides in paragraph (a) that any person
seeking to establish status as a small entity, as defined in
37 CFR 1.9(f) for the purpose of paying reduced fees, must
file a statement to that effect prior to or with the payment
of the first fee paid as a small entity. 37 CFR 1.27(b)
provides  specifically  for  inventors  filing  statements
claiming status as independent inventors.

 37 CFR 1.27(c) provides for claiming status as a small
business concern.

 37 CFR 1.27(d) provides for claiming status as a nonprofit
organization. Under 37 CFR 1.27, as long as all of the
rights remain in small entities, the fees established for a
small entity can be paid. This includes circumstances where
the rights were divided between an independent inventor, a
small business concern, and a nonprofit organization, or any
combination thereof.

 The statement claiming small entity status must be a
verified statement; i.e., an oath or declaration. It is not
required that a new verified statement be filed with each
fee paid, but rather, once a statement is filed in an
application or patent, small entity status remains in the
application or patent until the Office is notified of a
change in status. Notification of change in status is
required by 37 CFR 1.28(b).

  Status  as  a  small  entity  may  be  established  in  a
provisional application by complying with 37 CFR 1.27.

 A nonprovisional application claiming benefit under 35
U.S.C. 119(e), 120, 121, or 365(c) of a prior application
may  rely  on  a  verified  statement  filed  in  the  prior
application if the nonprovisional application includes a
reference  to  the  verified  statement  in  the  prior
application, or includes a copy of the verified statement in
the prior application, and status as a small entity is still
proper and desired.

 The rules do not authorize a patent attorney to sign a
verified statement establishing status as a small entity on
behalf of a client. The client has to sign the verified
statement. Paragraph (b) of 37 CFR 1.27 requires that any
verified  statement  filed  on  behalf  of  an  independent
inventor must be signed by the independent inventor except
as provided in 37 CFR 1.42, 1.43, or 1.47. Paragraphs (c)
and (d) of 37 CFR 1.27 require that any verified statement
filed on behalf of a small business concern or nonprofit
organization must be signed by an official of the concern or
nonprofit organization empowered to act on behalf of the
concern or organization.

 The term "official" is intended to include any officer,
employee, or part - owner empowered to act on behalf of a
small  business  concern  or  nonprofit  organization.  For
example, an officer or employee of a corporation empowered
to act for the corporation by its board of directors would

be qualified to sign such a verified statement. The intent
of paragraphs (b) - (d) of 37 CFR 1.27 is that the verified
statement be signed by the person in the best position to
know the facts as to whether or not status as a small entity
can  be  properly  established  insofar  as  the  attorney's
responsibilities and duty to investigate are concerned.

 37 CFR 1.28.  Effect on fees of failure to establish
status, or change status, as a small entity.

 (a)The failure to establish status as a small entity ( § §
1.9(f) and 1.27 of this part) in any application or patent
prior to paying, or at the time of paying, any fee precludes
payment of the fee in the amount established for small
entities. A refund pursuant to § 1.26 of this part, based on
establishment of small entity status, of a portion of fees
timely paid in full prior to establishing status as a small
entity may only be obtained if a verified statement under §
1.27 and a request for a refund of the excess amount are
filed within two months of the date of the timely payment of
the full fee. The two - month time period is not extendable
under § 1.136. Status as a small entity is waived for any
fee by the failure to establish the status prior to paying,
at the time of paying, or within two months of the date of
payment of, the fee. Status as a small entity must be
specifically established in each application or patent in
which the status is available and desired. Status as a small
entity in one application or patent does not affect any
other  application  or  patent,  including  applications  or
patents which are directly or indirectly dependent upon the
application  or  patent  in  which  the  status  has  been
established. A nonprovisional application claiming benefit
under 35 U.S.C. 119(e), 120, 121, or 365(c) of a prior
application may rely on a verified statement filed in the
prior application if the nonprovisional application includes
a  reference  to  the  verified  statement  in  the  prior
application or includes a copy of the verified statement in
the prior application and status as a small entity is still
proper and desired. Once status as a small entity has been
established in an application or patent, the status remains
in that application or patent without the filing of a
further verified statement pursuant to § 1.27 of this part
unless the Office is notified of a change in status.

 (b)  Once status as a small entity has been established
in an application or patent, fees as a small entity may
thereafter be paid in that application or patent without
regard to a change in status until the issue fee is due or
any maintenance fee is due. Notification of any change in
status resulting in loss of entitlement to small entity
status must be filed in the application or patent prior to
paying, or at the time of paying, the earliest of the issue
fee or any maintenance fee due after the date on which
status as a small entity is no longer appropriate pursuant
to § 1.9 of this part. The notification of change in status
may be signed by the applicant, any person authorized to
sign on behalf of the assignee, or an attorney or agent of
record or acting in a representative capacity pursuant to §
1.34(a) of this part.

 (c)  If status as a small entity is established in good
faith, and fees as a small entity are paid in good faith, in
any application or patent, and it is later discovered that
such status as a small entity was established in error or
that through error the Office was not notified of a change

in status as required by paragraph (b) of this section, the
error will be excused (1) if any deficiency between the
amount paid and the amount due is paid within three months
after the date the error occurred or (2) if any deficiency
between the amount paid and the amount due is paid more than
three months after the date the error occurred and the
payment is accompanied by a statement explaining how the
error in good faith occurred and how and when the error was
discovered. The statement must be a verified statement if
made by a person not registered to practice before the
Patent and Trademark Office. The deficiency is based on the
amount of the fee, for other than a small entity, in effect
at the time the deficiency is paid in full.

 (d)(1) Any attempt to fraudulently (i) establish status as
a small entity or (ii) pay fees as a small entity shall be
considered as a fraud practiced or attempted on the Office.

 (2)  Improperly  and  with  intent  to  deceive  (i)
establishing status as a small entity or (ii) paying fees as
a small entity shall be considered as a fraud practiced or
attempted on the Office.

 37 CFR 1.28 provides guidance to the effect of failure to
establish or notify the Office of any change from small
entity status. 37 CFR 1.28(a) provides that once status as a
small entity has been established in an application or
patent, the status remains in that application or patent
without the filing of a further verified statement pursuant
to 37 CFR 1.27, unless the Office is notified of a change in
status. Under 37 CFR 1.28(a), status as a small entity in
one  application  or  patent  does  not  affect  any  other
application or patent, including applications or patents
which  are  directly  or  indirectly  dependent  upon  the
application  or  patent  in  which  the  status  has  been
established.  A  nonprovisional  application  claiming  the
benefit under 35 U.S.C. 119(e), 120, 121, or 365(c) of a
prior application may rely on a verified statement filed in
the prior application if the nonprovisional application
includes a reference to the verified statement in the prior
application, or includes a copy of the verified statement in
the prior application, and status as a small entity is still
proper  and  desired.  37  CFR  1.28(b)  requires  that
notification of any change in status resulting in loss of
entitlement  to  small  entity  status  be  filed  in  the
application or patent prior to paying, or at the time of
paying, the earliest of the issue fee or any maintenance fee
due after the date on which status as a small entity is no
longer appropriate. Notification is not required if rights
to an invention are transferred from one small entity to
another small entity but small entity status is not lost
thereby. This means that only four checks are required
during the pendency and term of a patent after initial
establishment of small entity status if such establishment
was made prior to payment of the issue fee.

 The Office will ordinarily require verified statements
claiming small entity status only from parties holding
rights in the invention. For example, if an in dependent
inventor has transferred all rights in the invention to a
small business concern, the Office will not require a
verified statement from the inventor as well as from the
small  business  concern.  A  verified  statement  from  the
independent inventor, however, will be required in the
situation where all rights in the invention have been

transferred  to  an  individual  who  files  the  verified
statement form entitled "Verified Statement (Declaration) By
a Non - Inventor Supporting A Claim by Another For Small
Entity Status." The language of this latter form clearly
shows that it is meant to be filed in addition to another
verified statement form.

 No confirming statement is required where there has been no
change in small entity status. Paragraph (c) of 37 CFR 1.28
requires a verified statement explaining how error in good
faith establishing small entity status and paying fees as a
small entity occurred only in situations where the error is
not corrected within 3 - months of the date on which the
error occurred. This will reduce paperwork and provides a 3
- month grace period to correct errors with no explanations
required for correction during that 3 - month period.

 37 CFR 1.28 also provides guidance as to the effect of
improperly establishing status as a small entity. The intent
of the reduced fees for small entities is to soften the
impact of the fee increases under § 41(a) and (b) of Title
35, United States Code, as such sections are amended by
Public Law 97 - 247, upon those who are least able to absorb
the increased fees without overall damage to their ability
to participate in the patent system through the filing,
issuing,  and  maintaining  of  patents.  Accordingly,  any
attempt to improperly establish status as a small entity
will be viewed as a serious matter by the Office and 37 CFR
1.28(d) indicates that any attempt to fraudulently establish
status as a small entity or pay fees as a small entity will
be considered as a fraud practiced or attempted on the
Office. In addition, improperly and with intent to deceive
establishing status as a small entity or paying fees as a
small entity will be considered as a fraud practiced or
attempted on the Office. Normally, the Office will not
question a claim to status as a small entity. However, if
the Office must resolve such an issue in a question arising
before it, the Office will look to the actual or practical
status of the individual or organization claiming status as
a small entity rather than the professed or apparent status.

 Request for refunds, along with the verified statements,
should be addressed to the >Assistant< Commissioner *>for<
Patents **, Washington, D.C. 20231, and directed to the
attention of the Refund Section, Accounting Division, Office
of Finance.

 The Patent and Trademark Office does not give advisory
opinions as to whether or not a specific individual or
organization qualifies for status as a small entity. In
establishing reduced fees for independent inventors, small
business  concerns,  and  nonprofit  organizations,  the
Congressional consideration of the legislation which became
Public Law 97 - 247 indicated an intent that the Patent and
Trademark Office rely exclusively on a self - certification
that  a  patent  applicant  qualifies  as  an  independent
inventor, small business concern, or nonprofit organization.
In  addition,  it  was  also  stated  during  Congressional
consideration  of  the  legislation  that  no  additional
resources would be required to administer the system whereby
fees would be reduced for small entities.

 In view of the intent expressed during Congressional
consideration of the legislation, it would be inappropriate
for  the  Patent  and  Trademark  Office  to  give  advisory

opinions  as  to  entitlement  to  small  entity  status.
Accordingly, any person seeking to establish status as a
small  entity  for  purposes  of  paying  the  fee  in  an
application or patent must file the verified statement
required by 37 CFR 1.27 and in so doing is self - certifying
entitlement to small entity status.

 Small entity status must not be established unless the
person  or  persons  signing  the  verified  statement  can
unequivocally make the required self - certification. Any
appropriately signed and filed verified statement will be
considered by the Patent and Trademark Office to be a self -
certification.

 If a verified statement claiming small entity status is
filed  in  a  language  other  than  English,  it  must  be
accompanied  by  a  verified  English  translation  (37  CFR
1.69(b)).  A  non  -  English  language  verified  statement
claiming small entity status will not be given any effect
until the verified English translation is filed and the full
fees will be due until then.

 When small entity status has been established in error and
small entity fees have been paid in error, the matter is to
be addressed under 37 CFR 1.28(c). Although the Office has
noted that it will no longer conduct inquiries under 37 CFR
1.28(c)(2), 1098 OG 502 (January 3, 1989), a verified
statement and payment of fee deficiencies (current fee level
at the time of a complete submission minus the small entity
fee paid in error) under 37 CFR 1.28(c)(2) are still
required. A verified statement by applicant's attorney, an
inventor or on behalf of the assignee (37 CFR 3.73(b) does
not apply) will be presumed to have been submitted on behalf
of a party with sufficient knowledge regarding the matters
to be averred to. Any paper under 37 CFR 1.28(c) should be
addressed to the attention of the Special Program Law
Office, Office of Petitions.

 A maintenance fee improperly paid as a small entity will be
treated as a matter under 37 CFR 1.28(c) and will not be
considered to involve expiration of the patent under 37 CFR
1.378.

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510  Patent and Trademark Office Business Hours [R - 3]

 **

 The Patent and Trademark Office working hours are 8:30 a.m.
to 5:00 p.m., Monday through Friday, excluding Federal
holidays in the District of Columbia. Outside these hours,
only Patent and Trademark Office employees are authorized to
be in areas of the Patent and Trademark Office other than
the Public Search Rooms.

 The hours for the Public Search Room are 8:00 a.m. to 8:00
p.m., and the hours for the Trademark Search Room are 8:00
a.m. to 6:00 p.m., Monday through Friday, excluding Federal
holidays in the District of Columbia.

 During working hours, all applicants, attorneys, and other
members of the public should announce their presence to the
Office  personnel  in  the  area  of  their  visit.  In  the
examining  groups,  visitors  should  inform  the  group
receptionist of their presence before visiting other areas
of the group.

  > Filing of Papers During Unscheduled Closings of the
  Patent and Trademark Offic e<

 **>37 CFR 1.9(h) provides that the definition of "Federal
holiday  within  the  District  of  Columbia"  includes  an
official closing of the Office. When the entire Patent and
Trademark Office is officially closed for business for an
entire day, for reasons due to adverse weather or other
causes, the Office will consider each such day a "Federal
holiday within the District of Columbia" under 35 U.S.C. 21.
Any action or fee due on such a day may be taken, or fee
paid, on the next succeeding business day the Office is
open. In addition, 37 CFR 1.6(a)(1) provides "[t]he Patent
and  Trademark  Office  is  not  open  for  the  filing  of
correspondence on any day that is a Saturday, Sunday or
Federal holiday within the District of Columbia" to clarify
that any day that is a Saturday, Sunday or Federal holiday
within the District of Columbia is a day that the Patent and
Trademark Office is not open for the filing of applications
within  the  meaning  of  Article  4(C)(3)  of  the  Paris
Convention. Note further that in accordance with 37 CFR
1.6(a)(2), even when the Office is not open for the filing
of correspondence on any day that is a Saturday, Sunday or
Federal  holiday  within  the  District  of  Columbia,
correspondence deposited as Express Mail with the USPS in
accordance with 37 CFR 1.10 will be considered filed on the
date of its deposit, regardless of whether that date is a
Saturday, Sunday or Federal holiday within the District of
Columbia (under 35 U.S.C. 21(b) or 37 CFR 1.7).<

 When the Patent and Trademark Office is open for business
during any part of a business day between 8:30 a.m. and 5:00
p.m., papers are due on that day even though the Office may
be officially closed for some period of time during the
business day because of an unscheduled event. The procedures
of 37 CFR 1.10 may be used for filing applications.

  Information  regarding  whether  or  not  the  Office  is
officially closed on any particular day may be obtained by
calling (703)*>308 - 4357 which transposes to (703) 308 -
HELP<.

 WARNING: Since a provisional application can be pending for
no more than twelve months, the last day of pendency may
occur on a Saturday, Sunday, or Federal holiday within the
District of Columbia which for copendency would require the
nonprovisional  application  to  be  filed  prior  to  the
Saturday, Sunday, or Federal holiday. See 37 CFR 1.78(a)(3).
>However,  note  that  new  patent  applications  filed  in
accordance with 37 CFR 1.10 will be stamped by the Office
with the date of deposit as "Express Mail" with the United
States  Postal  Service.  For  example,  if  a  new  patent

application is deposited in "Express Mail" in accordance
with 37 CFR 1.10 on a Saturday and the United States Postal
Service gives it a date of deposit of Saturday, the Office
will accord and stamp the correspondence with the Saturday
date. 37 CFR 1.6(a)(2).<

  REGULATIONS FOR THE PUBLIC USE OF RECORDS IN THE PUBLIC
 SEARCH ROOM FOR PATENTS OF THE PATENT AND TRADEMARK OFFICE

 The Patent and Trademark Office has established Procedures
and Regulations for using the facilities of the Public
Search Room for Patents. The procedures for the Search Room
include the requirement that users obtain and show, prior to
entering the Search Room facilities, a User Pass. This pass
can be obtained at the receptionist's desk in the lobby of
>Crystal Plaza< Building 3. User Passes will be issued to
persons  not  under  prohibition  from  using  the  search
facilities who sign an application form and acknowledge
receipt of a copy of the noted Regulations. User Passes are
nontransferable and are valid until reissue or revocation
for cause. Office employees must show their building pass in
order to enter the Public Search Room.

 The procedures also include the requirement that persons
entering and exiting the Search Room use designated lanes.
Persons exiting the Search Room will automatically pass
electronic sensing equipment designed to detect any marked
documents or materials being removed from the Search Room.
The  sensing  equipment  is  capable  of  detecting  marked
documents and materials in briefcases and parcels and under
clothing. The equipment does not use X - ray or other high
energy radiation and is, therefore, completely safe and
harmless to persons, photographic film, magnetic tape, and
electronic or mechanical devices such as wrist watches. New
patents are marked for sensing before being placed in the
Classified files.

 Whenever a marked document is transported past the sensing
equipment, Patent and Trademark Office officials and the
security guards will be alerted to the removal of the
document, and a gate on the exit lane will lock. Persons
triggering  the  alarm  will  be  asked  to  cooperate  in
identifying the source for the alarm. Failure to cooperate
when the alarm is triggered could result in detention of the
person, seizure of any briefcase or the like, or other legal
measures deemed necessary and appropriate in the specific
case.

 The regulations for the Search Room are reprinted in a
Regulation brochure. It is available in the Search Room. In
order to maintain an environment conductive to search, the
Regulations will be strictly enforced.

 Although these procedures and regulations may cause some
inconvenience, it is hoped that with understanding and
cooperation  they  will  result  in  improvement  in  search
facilities which will benefit all participants in the U.S.
patent system.

 Persons violating the regulations may be denied the use of
the facilities in the Public Search Room for Patents, and
may further be subjected to prosecution under the Criminal
Code. Additionally, the name of any person violating these
regulations who is registered to practice before the Patent
and Trademark Office may be forwarded to the Office of

Enrollment and Discipline for appropriate action under 37
CFR Part 10.

  USE OF PATENT EXAMINING GROUP FACILITIES

 The primary function of the Patent and Trademark Office is
the examination of nonprovisional applications for patents
and the issuance of valid patents based upon a search and
consideration of the best available prior art. This can be
accomplished only through maintaining strict search file
integrity within the patent examining group facilities.

 Therefore, the regulations appearing below were established
for  those  authorized  members  of  the  public  using  the
facilities of the patent examining groups.

 Although these regulations may cause some inconvenience, it
is believed that with the cooperation and understanding of
the public, a more efficient and reliable examination system
within the patent examining groups will result.

 A copy of the following "Regulations for Users of the
Patent Examining Group Facilities," is posted in each of the
Patent Examining Groups and the Public Search Room for
Patents:

  REGULATIONS FOR USERS OF THE PATENT EXAMINING GROUP SEARCH
  FACILITIES

 1.  Group facilities are defined as those areas in
Crystal City where the Examining Groups are located.

 2.  The use of the Group facilities for search purposes
by members of the public is strictly limited to the search
of materials not available in the Public Search Room for
Patents or the Scientific Library and when it does not
conflict with the regular business of Patent and Trademark
personnel and only between the hours of 8:45 a.m. and 4:45
p.m. on regular business days.

 3.  Authorized  Officials,  under  these  Regulations,
include Supervisory Patent Examiners and Examining Group
Directors.

 4.  Under  applicable  statutes  and  regulations,
including 40 U.S.C. 486(c); 41 CFR Subpart 101 - 20.3; and
appropriate Sections of Department Organization Orders 30 -
3A  and  30  -  3B  of  the  Department  of  Commerce,  the
Regulations  appearing  below  are  established  for  those
members of the public using the Group Facilities.

  A.  All persons using these facilities are subject to
the Regulations Governing Conduct on Federal Property, as
specified in 41 CFR Subpart 101 - 20.3.

  B.  All posted Official Notices are to be complied
with.

  C.  A valid User Pass must be prominently displayed
when searching in the Group Facilities. User Passes are
nontransferable and must be surrendered upon request to
authorized officials.

  D.  All persons holding User Passes must register with
the Group Receptionist, unless otherwise directed, in each

Examining Group where they search and must sign a log (e.g.,
indicating time - in, time - out, name, User Pass number,
class(es) and subclass(es) searched).

  E.  No patents, records, or other documents of the
Patent and Trademark Office shall be removed from the Group
Facilities except by express written authorization by an
authorized  official  in  the  Examining  Group  where  the
material resides. Such authorization will not be given for
U.S. patents and other material readily available through
the Scientific Library.

  F.  Smoking is not permitted except in designated
areas.

  G.  No food or beverages in any form are to be consumed
except in designated areas.

  H.  Loud talking, use of radios, and any other form of
activity which may disturb other members of the public or
Patent and Trademark Office personnel are forbidden.

  I.  Children brought into the Group Facilities must not
be allowed to disturb others.

  J.  The presence or use of equipment such as dictation
equipment,  reproducing  machines,  typewriters,  and
photographic  equipment  is  prohibited  without  prior
permission from an authorized official in the Examining
Group where the use is intended and then is permitted where
its use does not conflict with Regulation H.

  K.  Patents and other documents must not be removed
from their shoes for any reason other than for cursory study
thereof while kept in close proximate association with the
shoe and must not be moved out of their normal sequence.

  L.  All patent shoes must be promptly replaced in their
proper location in the shoe case.

  M.  All textbooks, journals, and the like must be
returned to their proper location.

  N.  The reserving of seats and/or working areas is
prohibited.

  O.  All packages, briefcases, or other personal effects
brought into the Group Facilities are subject to search by
authorized officials upon request and must be removed when
leaving the Group Facilities.

  P.  All verbal requests for compliance with these
regulations or other posted Patent and Trademark Office
Notices pertaining to activity in the Group Facilities, when
made by authorized officials, must be promptly complied
with.

 5.  Persons violating these regulations may be denied
the use of the facilities in the Examining Groups and Public
Search Room for Patents, and may further be subject to
prosecution under the Criminal Code. Additionally, the name
of any person violating these regulations who is registered
to practice before the Patent and Trademark Office may be
forwarded to the Office of Enrollment and Discipline for
appropriate action under 37 CFR Part 10.

 If any individual is observed in violation of any of the
regulations,  immediate  compliance  should  be  courteously
requested. If a verbal request is not complied with, a note
should be made of the individual's name and User's Pass
number, if possible (the User's Pass is required to be
prominently  displayed)  and  report  the  incident  to  the
Supervisory  Primary  Examiner,  Supervisory  Applications
Examiner, or other appropriate supervisor who will take
further action.

 In addition, if any individual in a search area appears to
be a stranger and is not wearing a User's Pass, some
identification, such as a Building or User's Pass, should be
requested. If the individual refuses, notify a supervisor.
Consequently, all Office employees are expected to carry
their Building Pass with them at all times, especially when
searching outside of their assigned groups.

  Supervisors,  when  aware  of  violations  of  the  posted
regulations, should prepare a memorandum detailing the facts
of the incident and forward this memorandum to the Deputy
Assistant Commissioner for Patents via their Group Director.
Supervisory  Patent  Examiners  and  Group  Directors  are
authorized to demand surrender of User Passes on - the -
spot. If the Supervisory Patent Examiner exercises this
function, the Group Director should be immediately notified,
followed up by a memorandum as previously set forth.

511  Postal Service Emergency Contingency Plan [R - 1]

 35 U.S.C. 21.  Filing date and day for taking action.

 (a)  The Commissioner may by rule prescribe that any
paper or fee required to be filed in the Patent and
Trademark Office will be considered filed in the Office on
the date on which it was deposited with the United States
Postal Service or would have been deposited with the United
States Postal Service but for postal service interruptions
or emergencies designated by the Commissioner.

  *****

 37 CFR 1.6.  Receipt of letters and papers.

  *****

 (e)  Interruptions in U.S. Postal Service .

 If interruptions or emergencies in the United States Postal
Service which have been so designated by the Commissioner
occur, the Patent and Trademark Office will consider as
filed on a particular date in the Office any correspondence
which is:

 (1)  Promptly filed after the ending of the designated
interruption or emergency; and

 (2)  Accompanied by a statement indicating that such
correspondence would have been filed on that particular date
if it were not for the designated interruption or emergency
in the United States Postal Service. Such statement must be
a verified statement if made by a person other than a
practitioner as defined in § 10.1(r) of this chapter.

  37  CFR  1.6(e)  provides  a  procedure  under  which
correspondence (papers and fees) which could not be filed on
a particular date because of an interruption or emergency in
the United States Postal Service which is so designated by
the Commissioner, may be promptly filed after the ending of
such  a  designated  interruption  or  emergency  and  be
considered as having been filed on that particular date.
Authority for such a practice is found in 35 U.S.C. 21(a),
as amended by Pub. L. 97 - 247.

 The U.S. Patent and Trademark Office is establishing the
following contingency plan for filing correspondence in the
Office  in  the  event  of  a  designated  interruption  or
emergency in the mail service in the United States. Upon
determination by the Commissioner of Patents and Trademarks
that such an emergency exists, a notice activating the plan
will be issued by the Commissioner. The activating notice
will be published in the Wall Street Journal and made
available by telephone at area code 703, 557 - INFO. Also,
certain  publications,  patent  bar  groups,  and  other
organizations closely associated with the patent system,
will  be  notified.  Termination  of  the  program  will  be
similarly announced. Where the postal emergency is not
nationwide, the Commissioner will designate the areas of the
United States in which the procedures outlined below will be
in effect.

 U.S. Department of Commerce District Offices will be
designated, on an emergency basis, as receiving stations for
filing correspondence in the U.S. Patent and Trademark
Office.

 Upon determination that an emergency exists, the following
procedures may be followed: All correspondence should be
enclosed in a sealed envelope addressed to the Patent and
Trademark Office and deposited in one of the District
Offices. Such papers will be considered as received in the
U.S. Patent and Trademark Office on the day of deposit. The
District Office will date stamp each envelope and the
accompanying receipt card which completely identifies the
deposited papers. The receipt card will be returned to the
depositor. Applicants or their representatives should assure
the legibility of the date stamp.

 District Office deposits should be limited to checks in
payment  of  issue  fees,  new  application  papers  wherein
priority dates or statutory bars may be involved, amendments
where the 6 - month statutory period for response is about
to expire, trademark oppositions, Section 8 affidavits,
trademark renewals, and to other papers for which the patent
and trademark statutes do not provide a remedy for failure
to obtain a particular date.

 Where papers originate from overseas, it is suggested that
the papers be mailed to a registered agent in Canada, with a
request that the papers be forwarded by courier to the
nearest District Office in the United States.

 In regard to pending applications, if the time for taking
any action or paying any fee expires during the period that
the Commissioner declares to be an emergency, the time will
be extended until 1 - month after the end of the emergency
period, provided that such extension does not exceed the
maximum period for response provided for in the statutes.

 Since this extension of time will be automatic, there will
be no record in the individual files to indicate that a
response filed during the extended period is in fact timely.
In order to provide a complete record, applicants or their
representatives should file a paper referring to this notice
in each case in which a response is filed during the
extended period.

 The addresses of the Department of Commerce District
Offices, subject to subsequent changes, are as follows:

  ALABAMA

 Birmingham - Room 302, 2015 2nd Avenue North, 3rd floor,
Berry Bldg. 35203, Area Code 205 Tel 731 - 1331.

  ALASKA

 Anchorage - 222 West 7th Ave., >#23,< 99513 -*>7575<, Area
Code 907 Tel 271 -*>5136<.

  ARIZONA

 Phoenix - **>Phoenix Plaza, Suite 970, 2901 N. Central
Avenue, 85012, Area Code 602 Tel 640 - 2513<.

  ARKANSAS

 Little Rock - ** >Suite 700, 425 W. Capital Avenue, 72201,
Area Code 501 Tel 324 - 5794<.

  CALIFORNIA

  Los  Angeles  -  Room*>9200<,  11000  Wilshire
Boulevard*>90024<, Area Code**>310 Tel 235 - 7104<.

 **>Newport Beach - Suite 305, 3300 Irvine Avenue, 92660,
Area Code 714 Tel 660 - 1688<.

 San Diego - Suite*>230<, 6363 Greenwich Drive 92122, Area
Code 619 Tel 557 - 5395.

 San Francisco - 14th Fl., 250 Montgomery St. 94104, Area
Code 415 Tel 705 -*>2300<.

 >Santa Clara - 5201 Great American Pkwy., #456, 95054, Area
Code 408 Tel 748 - 7450.<

  COLORADO

 Denver - Rm. 680, 1625 Broadway, ** 80202, Area Code 303
Tel 844 -*>6622<.

  CONNECTICUT

 Hartford - Room 610 - B, Federal Office Building, 450 Main
Street 06103, Area Code 203 Tel 240 - 3530.

  FLORIDA

 **

 Clearwater - 128 North Osceola Avenue 34615, Area Code 813
Tel 461 - 0011.

 Orlando - **>Eola Park Centre, Suite 695, 200 E. Robinson
St. 32801, Area Code 407 Tel 648 - 6756<.

 Tallahassee - ** Rm.*>366G<, 107 W. Gaines St. 32399 -
2000, Area Code 904 Tel 488 - 6469.

  GEORGIA

 Atlanta - Suite 310, 4360 Chamblee - Dunwoody Rd., 30341,
Area Code 404 Tel 452 - 910*>1<.

 Savannah - 120 Barnard Street, A - 107 31401, Area Code 912
Tel**>652 - 4204<.

  HAWAII

 Honolulu - P.O. Box 50026, 300 Ala Moana Boulevard 96850,
Area Code 808 Tel 541 - 1782.

  IDAHO

 Boise - 2nd Fl., Hall of Mirrors, 700 W. State St., 83720,
Area Code 208 Tel 334 - 3857.

  ILLINOIS

 **

 Rockford - 515 North Court Street, P.O. Box 1747 61110 -
0247, Area Code 815 Tel 987 - 8123.

 >Wheaton - c/o Illinois Institute of Technology, 201 E.
Loop Road, 60187, Area Code 312 Tel 353 - 4332.<

  INDIANA

  Indianapolis  -  **>Penwood  One,  Suite  106,  11405  N.
Pennsylvania Street, 46032, Area Code 317 Tel 582 - 2300.<

 IOWA

 Des Moines - 817 Federal Building, 210 Walnut Street 50309,
Area Code 515 Tel 284 - 4222.

  KANSAS

 Wichita - 151 North *>V< olutsia, 67214 - 4695, Area Code
316 Tel 269 - 6160.

  KENTUCKY

 Louisville - **>Marmaduke Building, 3rd Floor, 520 South
4th Street, 40202, Area Code 502 Tel 582 - 5066.<

  LOUISIANA

 New Orleans - **>Hale Boggs Federal Building, 501 Magazine
Street, Room 1043, < 70130, Area Code 504 Tel 589 - 6546.

  MAINE

 Augusta -**>187 State Street,< Area Code 207 Tel 622 -
8249.

 **

  MASSACHUSETTS

 Boston - World Trade Center, Suite 307**>164 Northern
Ave.,< 02210, Area Code 617 Tel**>424 - 5990<.

  MICHIGAN

 Detroit - 1140 McNamara Bldg. 477 Michigan Avenue, 48226,
Area Code 313 Tel 226 - 3650.

 Grand Rapids - 300 Monroe N.W., Rm. 409 49503, Area Code
616 Tel 456 - 2411.

  MINNESOTA

 Minneapolis - 108 Federal Building, 110 South Fourth Street
55401, Area Code 612 Tel 348 - 1638.

  MISSISSIPPI

 Jackson -**>201 West Capitol St., 310 Millsaps Bldg. 39201
- 2005<, Area Code 601 Tel 965 - 4388.

  MISSOURI

 St. Louis -**>8182 Maryland Avenue, Suite 303<, 63105, Area
Code 314 Tel 425 - 3302 - 4.

 Kansas City - Room 635, 601 East 12th Street 64106, Area
Code 816 Tel**>426 - 3141<.

  NEBRASKA

 Omaha - 11133 O Street 68137, Area Code 402 Tel 221 - 3664.

  NEVADA

 Reno - 1755 E. Plumb Lane, #152, 89502, Area Code 702 Tel
784 - 5203.

  NEW JERSEY

 Trenton - 3131 Princeton Pike Bldg., 6, Suite 100, 08648,
Area Code 609 Tel 989 -*>2395<.

  NEW MEXICO

 **

 >Sante Fe (Dallas Tx, District) - Attn: c/o New Mexico
Dept. of Economic Development, 1100 St. Francis Dr., 87503,
Area Code 505 Tel 827 - 0350.<

  NEW YORK

 Buffalo - 1312 Federal Building, 111 West Huron Street
14202, Area Code 716 Tel 846 - 4191.

 New York - Room 3718, Federal Office Building, 26 Federal
Plaza, 10278, Area Code 212 Tel 264 - 0634.

  NORTH CAROLINA

 Greensboro - Suite 400,**>400< West Market Street, 27401,

Area Code*>910< Tel 333 - 5345.

 OHIO

 Cincinnati - 9504 Federal Office Building, 550 Main Street
45202, Area Code 513 Tel 684 - 2944.

 Cleveland - **>Bank One Center, 600 Superior Ave., Suite
700< 44114, Area Code 216 Tel 522 - 4750.

  OKLAHOMA

 Oklahoma City - 6601 Broadway Extension, Suite 200*>73116<,
Area Code 405 Tel 231 - 5302.

 Tulsa - 440 S. Houston St. 74127, Area Code 918 Tel 581 -
7650.

  OREGON

 Portland - One World Trade Center, 121 S.W. Salmon, Suite
242, 97204, Area Code 503 Tel*>326 - 3001<.

  PENNSYLVANIA

 Philadelphia - Suite 202,**>600 American Ave.<, King Of
Prussia 19406, Area Code 215 Tel 962 -*>4990<.

 Pittsburgh - 2002 Federal Building, 1000 Liberty Avenue
15222, Area Code 412 Tel 644 - 2850.

  PUERTO RICO

 San Juan (Hato Rey) - Room G - 55 - Federal Building,
Chardon Ave. 00918, Area Code 809 Tel 766 - 5555.

  RHODE ISLAND

 Providence - 7 Jackson Walkway 02903, Area Code 401 Tel 528
- 5104.

  SOUTH CAROLINA

 Charleston - **>c/o Trident Technical College, PO Box
118067, 66 Columbus St., 29423, Area Code 803 Tel 727 -
4051.<

 Columbia - Strom Thurmond Fed. Bldg., Suite 172, 1835
Assembly Street 29201, Area Code 803 Tel 765 - 5345.

  TENNESSEE

 Memphis - 22 N. Front St., Suite 200, 3810*>3<, Area Code
901 Tel*>544 - 4137<.

  Nashville  -  Suite*>114<,  Parkway  Towers,  404  James
Robertson Pkwy., 37219 - 1505, Area Code 615 Tel 736 - 5161.

  TEXAS

 Dallas -**>2050 N. Stemmons Fwy, Suite 170, 75258, Area
Code 214 Tel 767 - 0542.<

 Houston - **>#1 Allen Ctr. 500 Dallas, Suite 1160,< 77002,
Area Code 713 Tel 229 - 2578.

 UTAH

 Salt Lake City - 324 South State St., Suite 105, 84111,
Area Code 801 Tel 524 - 5116.

  VIRGINIA

 Richmond -**>700 Centre, 704 E. Franklin St., Suite 550,
23219,<, Area Code 804 Tel 771 - 2246.

  WASHINGTON

 Seattle - 3131 Elliott Ave., Suite 290, 98121, Area Code
206 Tel 553 - 561*>5<.

  WEST VIRGINIA

 Charleston - 405 Capitol Street>, Suite 807,< 25301, Area
Code 304 Tel 347 - 5408.

  WISCONSIN

 Milwaukee -*>596< Federal Bldg., 517 East Wisconsin Avenue
53202, Area Code 414 Tel 291 - 3470.

512  Certificate of Mailing or Transmission [R - 3]

 37 CFR 1.8.  Certificate of mailing or transmission.

 (a)  Except in the cases enumerated in paragraph (a)(2)
of this section,correspondence required to be filed in the
Patent and Trademark Office within a set period of time will
be  considered  as  being  timely  filed  if  the  procedure
described in this section is followed. The actual date of
receipt will be used for all other purposes.

 (1)  Correspondence will be considered as being timely
filed if:

 (i)  The correspondence is mailed or transmitted prior
to expiration of the set period of time by being:

 (A)  **>Addressed as set out in § 1.1(a) and deposited
with the U.S. Postal Service with sufficient postage as
first class mail< ; or

 (B)  Transmitted  by  facsimile  to  the  Patent  and
Trademark Office in accordance with § 1.6(d); and

 (ii)  The correspondence includes a certificate for each
piece of correspondence stating the date of deposit or
transmission. The person signing the certificate should have
reasonable basis to expect that the correspondence would be
mailed or transmitted on or before the date indicated.

 (2)  The procedure described in paragraph (a)(1) of this
section does not apply to, and no benefit will be given to a
certificate of Mailing or Transmission on, the following:

 (i)  Relative to Patents and Patent Applications-

 (A)  The  filing  of  a  national  patent  application
specification and drawing or other correspondence for the
purpose of obtaining an application filing date;

 (B)  The filing of correspondence in an interference
which an examiner - in - chief orders to be filed by hand or
"Express Mail";

 (C)  The filing of agreements between parties to an
interference under 35 U.S.C. 135(c);

 (D)  The filing of an international application for
patent;

 (E)  The filing of correspondence in an international
application before the U.S. Receiving Office, the U.S.
International Searching Authority, or the U.S. International
Preliminary Examining Authority;

 (F)  The  filing  of  a  copy  of  the  international
application and the basic national fee necessary to enter
the  national  stage,  as  specified  in  §  §  1.494(b)  or
1.495(b).

 (ii)  Relative to Trademark Registrations and Trademark
Applications:

 (A)  The filing of a trademark application.

 (B)  **>[Reserved]<

 (C)  **>[Reserved]<

 (D)  **>[Reserved]<

 (E)  **>[Reserved]<

 (F)  **>[Reserved]<

 (iii)  Relative to Disciplinary Proceedings-

 (A)  Correspondence  filed  in  connection  with  a
disciplinary proceeding under part 10 of this chapter.

 (B)  Reserved

 (b)  In the event that correspondence is considered
timely filed by being mailed or transmitted in accordance
with paragraph (a) of this section, but not received in the
Patent and Trademark Office, and the application is held to
be abandoned or the proceeding dismissed, terminated, or
decided  with  prejudice,  the  correspondence  will  be
considered  timely  if  the  party  who  forwarded  such
correspondence:

 (1)  Informs the Office of the previous mailing or
transmission of the correspondence promptly after becoming
aware that the Office has no evidence of receipt of the
correspondence,

 (2)  Supplies an additional copy of the previously
mailed or transmitted correspondence and certificate, and

 (3)  Includes a statement which attests on a personal
knowledge basis or to the satisfaction of the Commissioner
to  the  previous  timely  mailing  or  transmission.  Such
statement must be a verified statement if made by a person
other than a practitioner as defined in § 101(r) of this

chapter.  If  the  correspondence  was  sent  by  facsimile
transmission, a copy of the sending unit's report confirming
transmission may be used to support this statement.

 (c)  The Office may require additional evidence to
determine if the correspondence was timely filed.

 A suggested format for a Certificate of Mailing and a
Certificate of Transmission under 37 CFR 1.8 to be included
with the correspondence is reproduced below.

  Certificate of Mailing

  I  hereby  certify  that  this  correspondence  is  being
deposited  with  the  United  States  Postal  Service  with
sufficient postage as first class mail in an envelope
addressed to:

 Assistant Commissioner for Patents Washington, D.C. 20231

 on ___________.

 (Date)

 Typed or printed name of person signing this certificate

 ___________________________________________

 Signature________________________________________

  Certificate of Transmission

  I  hereby  certify  that  this  correspondence  is  being
facsimile transmitted to the Patent and Trademark Office
(Fax No. (703)___ - ____)

 on____________.

 (Date)

 Typed or printed name of person signing this certificate

 ___________________________________________

 Signature________________________________________

¶  5.02  Format  of  Certificate  of  Mailing  or
Transmission

  The  following  are  suggested  formats  for  either  a
Certificate of Mailing or Certificate of Transmission under
37 CFR 1.8(a). The certification may be included with all
correspondence concerning this application or proceeding to
establish a date of mailing or transmission under the Rules.
Proper  use  of  this  procedure  will  result  in  such
communication being considered as timely if the established
date  is  within  the  required  period  for  response.  The
Certificate should be signed by the individual actually
depositing or transmitting the correspondence or by an
individual who, upon information and belief, expects the
correspondence to be mailed or transmitted in the normal
course of business by another no later than the date
indicated.

  Certificate of Mailing

  I  hereby  certify  that  this  correspondence  is  being
deposited  with  the  United  States  Postal  Service  with
sufficient postage as first class mail in an envelope
addressed to:

 Assistant Commissioner for Patents Washington, D.C. 20231

 on ___________.

 (Date)

 Typed or printed name of person signing this certificate

 ___________________________________________

 Signature________________________________________

  Certificate of Transmission

  I  hereby  certify  that  this  correspondence  is  being
facsimile transmitted to the Patent and Trademark Office Fax
No. (703)___ - ____

 on____________.

 (Date)

 Typed or printed name of person signing this certificate

 ___________________________________________

 Signature________________________________________

 Please refer to 37 CFR 1.6(d) and 1.8(a)(2) for filing
limitations concerning facsimile transmissions and mailing,
respectively.

 For a Pro Se inventor, Form Paragraph 17.11 may be used in
place of Form Paragraph 5.02.

¶ 17.11  Suggestion of Certificate of Mailing, Pro Se

  It  is  called  to  applicant's  attention  that  if  a
communication is mailed before the response time has expired
applicant may submit the response with a "Certificate of
Mailing" in accordance with 37 CFR 1.8(a) which merely
asserts that the response is being mailed on a given date.
So mailed, before the period of response has expired, the
response is considered timely. A suggested format for a
certificate follows .

  Certificate of Mailing

  I  hereby  certify  that  this  correspondence  is  being
deposited  with  the  United  States  Postal  Service  with
sufficient postage as first class mail in an envelope
addressed to:

 Assistant Commissioner for Patents Washington, D.C. 20231

 on ___________.

 (Date)

 Typed or printed name of person signing this certificate

 ___________________________________________

 Signature________________________________________

 Under 37 CFR 1.8, a person may state on certain papers
directed to the Office (exceptions are stated in 37 CFR
1.8), the date on which the paper will be deposited in the
United States Postal Service or transmitted by facsimile. If
the date stated is within the period for response, the
response in most instances will be considered to be timely.
This is true even if the paper does not actually reach the
Office until after the end of the period for response. The
Certificate of Mailing procedure does not apply to papers
mailed in a foreign country.

 The Certificate of Transmission procedure, however, also
applies to papers transmitted to the Office from a foreign
country provided that the correspondence being transmitted
is not prohibited from being transmitted by facsimile and is
not otherwise precluded from receiving the benefits under 37
CFR 1.8.

 It should be noted, however, that the Office will continue
its normal practice of stamping the date of receipt (Mail
Room Stamp) on all papers received through the mail or by
facsimile except those filed under 37 CFR 1.10 (See MPEP §
513). The date stamped will also be the date which is
entered on Office records and from which any subsequent
periods are calculated. For example, 37 CFR 1.192 gives an
appellant 2 months from the date of the appeal to file an
appeal brief. For example, if the last day to respond to a
final  rejection  was  November  10,  1976,  and  applicant
deposited a Notice of Appeal with fee in the U.S. mail on
November 10, 1976, and so certified, that appeal is timely
even if it was not received in the Patent and Trademark
Office until November 17, 1976. Since the date of receipt
will be used to calculate the time at which the brief is
due, the brief was due on January 17, 1977. This is 2 months
after the Mail Room date.

  Procedure by Applicant

 (A)  The  certification  requires  a  signature.
Specifically, if the certification appears on a paper that
requires a signature, two signatures are required, one for
the paper and one for the certification. Although not
specifically required by 37 CFR 1.8, it is preferred that
the certificate be signed by the applicant, assignee, or
registered practitioner.

 (B)  When possible, the certification should appear on a
portion of the paper being submitted. However, if there is
insufficient space to make the certification on the same
paper, the certification should be on a separate sheet
securely attached to the paper.

 (C)  When the certification is presented on a separate
sheet, that sheet must (1) be signed and (2) fully identify
and be securely attached to the paper it accompanies. The
required identification should include the serial number and
filing date of the application as well as the type of paper
being filed, e.g., response to rejection or refusal, Notice
of Appeal, etc. An unsigned certification will not be

considered acceptable.

  Moreover,  without  the  proper  identifying  data,  a
certification presented on a separate sheet will not be
considered acceptable if there is any question or doubt
concerning the connection between the sheet and the paper
filed.

 If the sheet should become detached from the paper and
thereafter  not  associated  with  the  appropriate  file,
evidence that this sheet was received in the Office can be
supported  by  submitting  a  copy  of  a  postcard  receipt
specifically identifying this sheet and the paper and by
submitting  a  copy  of  the  sheet  as  originally  mailed.
Attention is directed to MPEP § 503 relative to the use of
postcards as receipts.

 (D)  In situations wherein the correspondence includes
papers  for  more  than  one  application  (e.g.,  a  single
envelope containing separate papers responding to Office
actions in different applications) or papers for various
parts of the Office (e.g., a patent issue fee transmittal
form **>PTOL - 85B< and an assignment), each paper must have
its own certification as a part thereof or attached thereto.

 Although Form PTOL -*>85B<, Issue Fee Transmittal Form, may
contain  a  Certificate  of  Mailing  thereon,  a  separate
Certificate of Mailing is required for all papers included
with this form, including formal drawings, since papers are
separated and flow to different areas of the Office. Checks
submitted  with  the  papers  do  not  require  a  separate
certification.

 (E)  In situations wherein the correspondence includes
several papers directed to the same area of the Office for
the same application (for example, a proposed response under
37 CFR 1.116 and a Notice of Appeal), each paper should have
its own certification as a part thereof or attached thereto.

 >(F) For the purposes of 37 CFR 1.8(a)(1)(i)(A), first
class mail is interpreted as including "Express Mail" and
"Priority Mail" deposited with the U.S. Postal Service.<

 Alternatively, the correspondence may be submitted with a
cover or transmittal letter which itemizes the papers and on
which is placed the certificate under 37 CFR 1.8.

  Use of Stamped Certification

 Some practitioners place the certification language on the
first page of a paper with an inked stamp. Such a practice
is encouraged because the certification is not only readily
visible but also forms an integral part of the paper.

  Office Procedure

  Mail Room

 The Mail Room will continue to date stamp the actual date
of receipt of all papers received by mail in the Office. No
attempt will be made to retain the envelopes in which the
papers are received or to indicate on the papers the postal
cancellation date (postmark).

 However, the benefits of 37 CFR 1.8 or 1.10 apply only to

documents  delivered  to  the  Office  by  the  U.S.  Postal
service. A number of instances have been uncovered where
individuals are certifying that documents were deposited
with the U.S. Postal Service when, in fact, the documents
were  hand  -  carried  or  delivered  to  the  Office  via
commercial  couriers;  e.g.,  "Federal  Express,"  "DHL,"
"Purolator," "Air Borne," "UPS," etc. In those instances
where documents include a Certificate of Mailing under 37
CFR 1.8 or >"Express Mail" mailing label (commonly used to
comply with 37 CFR< 1.10>)< but were delivered to the Office
by other than the U.S. Postal Service, Mail Room personnel
are  placing  a  notice  indicating  that  fact  on  the
correspondence involved to alert Office personnel that the
benefits of 37 CFR 1.8 or 1.10 do not apply.

  Processing Areas

 When papers are received in an examining group, the date of
receipt in the group is stamped on the papers.

 The date indicated on the Certificate of Mailing or of
Transmission will be used by the Office only to determine if
the paper was deposited in the United States Postal Service
or transmitted by facsimile within the period for response.
If the paper was actually received in the Office within the
period for response, there is no need to refer to the
Certificate. >Note however, that 37 CFR 1.6(a)(3) provides
that  "[c]orrespondence  transmitted  by  facsimile  to  the
Patent and Trademark Office will be stamped with the date on
which the complete transmission is received in the Patent
and Trademark Office unless that date is a Saturday, Sunday,
or Federal holiday within the District of Columbia, in which
case the date stamped will be the next succeeding day which
is not a Saturday, Sunday, or Federal holiday within the
District of Columbia."<

 When papers are received in an examining group, the date of
receipt in the group should be stamped on the papers **>in
accordance with 37 CFR 1.6(a)<.

 If, however, the paper was received in the Patent and
Trademark Office after the end of the period for response,
the paper should be inspected to determine if a Certificate
of Mailing or of Transmission has been included. Where no
such Certificate is found, the paper is untimely since
applicant did not respond within the period for response.
This may result in abandonment of the application or other
loss of rights.

 In those instances where a Certificate of Mailing or of
Transmission does appear in the paper or a cover letter
thereto, a check should be made to determine whether the
indicated date of deposit or transmission is within the
period  for  response.  If  the  date  indicated  in  the
Certificate is after the end of the period for response, the
paper is untimely and no notation of the date need be made.
Where the date indicated on the Certificate is within the
period for response, the paper should be considered to be
timely filed. A notation should be made adjacent to the
Office stamp indicating the date of receipt (Mail Room
Stamp) which notes the date stated on the Certificate. This
notation should be "C of Mail" or "C of Fax" followed by the
date. A paper with a certificate dated November 10, 1976,
would be noted next to the Mail Room Stamp "(C of Mail. 11 /
10 /76)." This notation should also appear on the "Contents"

portion of the file wrapper.

 If the period set for taking an action in the Patent and
Trademark Office ends on a Saturday, Sunday, or Federal
holiday within the District of Columbia (37 CFR 1.7), the
action will be considered to be timely if deposited in the
United States mail or transmitted by facsimile and certified
under 37 CFR 1.8(a) on the next succeeding day which is not
a Saturday, Sunday, or a Federal holiday.

 It should be noted that the filing of a paper for the
purpose of obtaining a continuation or division application
under 37 CFR 1.60 or 1.62 is excluded from the Certificate
practice  under  37  CFR  1.8(a)(2)(i)>(<A>)<  since  it  is
considered  to  be  the  filing  of  a  national  patent
application.

 >WARNING: Since a provisional application can be pending
for no more than twelve months, the last day of pendency may
occur on a Saturday, Sunday, or Federal holiday within the
District of Columbia which for copendency would require the
nonprovisional  application  to  be  filed  prior  to  the
Saturday, Sunday, or Federal holiday. See 37 CFR 1.78(a)(3).
No benefit will be given to a Certificate of Mailing or
Transmission relative to the filing of a national patent
application  specification  and  drawing  or  other
correspondence for the purpose of obtaining an application
filing date. However, note that new patent applications,
filed in accordance with 37 CFR 1.10 will be stamped by the
Office with the date of deposit as "Express Mail" with the
United States Postal Service. For example, if a new patent
application is deposited in "Express Mail" in accordance
with 37 CFR 1.10 on a Saturday and the United States Postal
Service gives it a date of deposit of Saturday, the Office
will accord and stamp the correspondence with the Saturday
date. 37 CFR 1.6(a)(2).<

 All Certificates of Mailing or Transmission filed in
applications should be placed in the file wrappers directly
below the papers to which they refer.

 Group personnel receiving a hand - delivered paper from
other than U.S. Postal Service personnel should inspect the
paper to ensure that the benefits of 37 CFR 1.8 or >"Express
Mail" benefits under 37 CFR< 1.10 are not accorded in error.
If the paper contains a certificate of mailing under 37 CFR
1.8 or >"Express Mail" mailing label (commonly used to
comply with 37 CFR< 1.10>)<, the words "HAND DELIVERED"
should be written adjacent to the group date stamp.

 Applicant should be notified in the next Office action when
a paper containing a Certificate of Mailing has been denied
the benefits under 37 CFR 1.8 or >a paper containing an
"Express Mail" mailing label (commonly used to comply with
37 CFR 1.10) is denied benefits under 37 CFR<1.10 by
including, for example, form paragraph 5.0*>4.<

¶  5.0  *>4< Benefit of Certificate of Mailing Denied

  The [1] filed [2] is not entitled to the benefits of 37
CFR [3] since it was not delivered to the Patent and
Trademark Office by the U.S. Postal Service. Therefore, the
date of receipt in the Patent and Trademark Office has been
used to determine the timeliness of the paper.

 Examiner Note:

 This form paragraph is to be used in those situations where
correspondence contains a Certificate of Mailing under 37
CFR 1.8 or **>requests the benefit of< "Express Mail" under
37  CFR  1.10  but  the  correspondence  was  not  actually
deposited with the U.S. Postal Service.

 Misuse of a Certificate of Mailing under 37 CFR 1.8 or
>improperly claiming the benefit of 37 CFR< 1.10 which
appears to be more than a one - time, inadvertent error
should  be  brought  to  the  attention  of  the  Office  of
Enrollment and Discipline.

  Original Mailed Paper Not Delivered

 Paragraphs (b) and (c) of 37 CFR 1.8 concern the situation
where a paper containing a Certificate was timely deposited
in the U.S. mail or transmitted by facsimile, but never
received by the Patent and Trademark Office.  In the
examining groups, all submissions under these paragraphs
should be considered and the sufficiency thereof determined
by the Group Director.

513  Deposit as Express Mail With U.S. Postal Service
[R - 3]

 35 U.S.C. 21.  Filing date and day for taking action.

 (a)  The Commissioner may by rule prescribe that any
paper or fee required to be filed in the Patent and
Trademark Office will be considered filed in the Office on
the date on which it was deposited with the United States
Postal Service or would have been deposited with the United
States Postal Service but for postal service interruptions
or emergencies designated by the Commissioner.

 >37 CFR 1.6.  Receipt of correspondence.

 (a)  Date of receipt and Express Mail date of deposit .
Correspondence received in the Patent and Trademark Office
is stamped with the date of receipt except as follows:

  (1) The Patent and Trademark Office is not open for the
filing of correspondence on any day that is a Saturday,
Sunday, or Federal holiday within the District of Columbia.
Except  for  correspondence  transmitted  by  facsimile  as
provided  for  in  paragraph  (a)(3)  of  this  section,  no
correspondence is received in the Patent and Trademark
Office on Saturdays, Sundays, or Federal holidays within the
District of Columbia.

  (2) Correspondence filed in accordance with § 1.10 will
be stamped with the date of deposit as "Express Mail" with
the United States Postal Service.

  (3) Correspondence transmitted by facsimile to the Patent
and Trademark Office will be stamped with the date on which
the complete transmission is received in the Patent and
Trademark Office unless that date is a Saturday, Sunday, or
Federal holiday within the District of Columbia, in which
case the date stamped will be the next succeeding day which
is not a Saturday, Sunday, or Federal holiday within the
District of Columbia.<

  *****

 37 CFR 1.10.  Filing of **>correspondence< by "Express
Mail" **.

 **>(a) Any correspondence received by the Patent and
Trademark Office (Office) that was delivered by the "Express
Mail Post Office to Addressee" service of the United States
Postal Service (USPS) will be considered filed in the Office
on the date of deposit with the USPS. The date of deposit
with the USPS is shown by the "date - in" on the "Express
Mail" mailing label or other official USPS notation. If the
USPS deposit date cannot be determined, the correspondence
will be accorded the Office receipt date as the filing date.
See § 1.6(a).

 (b) Correspondence should be deposited directly with an
employee of the USPS to ensure that the person depositing
the correspondence receives a legible copy of the "Express
Mail" mailing label with the "date - in" clearly marked.
Persons dealing indirectly with the employees of the USPS
(such as by deposit in an "Express Mail" drop box) do so at
the risk of not receiving a copy of the "Express Mail"
mailing label with the desired "date - in" clearly marked.
The paper(s) or fee(s) that constitute the correspondence
should also include the "Express Mail" mailing label number
thereon. See paragraphs (c), (d) and (e) of this section.

 (c) Any person filing correspondence under this section
that was received by the Office and delivered by the
"Express Mail Post Office to Addressee" service of the USPS,
who can show that there is a discrepancy between the filing
date accorded by the Office to the correspondence and the
date of deposit as shown by the "date - in" on the "Express
Mail" mailing label or other official USPS notation, may
petition the Commissioner to accord the correspondence a
filing date as of the "date - in" on the "Express Mail"
mailing label or other official USPS notation, provided
that:

 (1) The petition is filed promptly after the person becomes
aware that the Office has accorded, or will accord, a filing
date other than the USPS deposit date;

 (2) The number of the "Express Mail" mailing label was
placed  on  the  paper(s)  or  fee(s)  that  constitute  the
correspondence prior to the original mailing by "Express
Mail;" and

 (3) The petition includes a true copy of the "Express Mail"
mailing label showing the "date - in," and of any other
official notation by the USPS relied upon to show the date
of deposit.

 (d) Any person filing correspondence under this section
that was received by the Office and delivered by the
"Express Mail Post Office to Addressee" service of the USPS,
who can show that the "date - in" on the "Express Mail"
mailing label or other official notation entered by the USPS
was incorrectly entered or omitted by the USPS, may petition
the Commissioner to accord the correspondence a filing date
as of the date the correspondence is shown to have been
deposited with the USPS, provided that:

 (1) The petition is filed promptly after the person becomes

aware that the Office has accorded, or will accord, a filing
date based upon an incorrect entry by the USPS;

 (2) The number of the "Express Mail" mailing label was
placed  on  the  paper(s)  or  fee(s)  that  constitute  the
correspondence prior to the original mailing by "Express
Mail"; and

 (3) The petition includes a showing which establishes, to
the satisfaction of the Commissioner, that the requested
filing date was the date the correspondence was deposited in
"Express Mail Post Office to Addressee" service prior to the
last scheduled pickup for that day. Any showing pursuant to
this paragraph must be corroborated by evidence from the
USPS or that came into being after deposit and within one
business day of the deposit of the correspondence in the
"Express Mail Post Office to Addressee" service of the USPS.
Any  statement  submitted  in  support  of  such  a  showing
pursuant to this paragraph must be a verified statement if
made by a person other than an employee of the USPS or a
practitioner as defined in § 10.1(r) of this chapter.

 (e) Any person mailing correspondence addressed as set out
in § 1.1(a) to the Office with sufficient postage utilizing
the "Express Mail Post Office to Addressee" service of the
USPS but not received by the Office, may petition the
Commissioner to consider such correspondence filed in the
Office on the USPS deposit date, provided that:

 (1) The petition is filed promptly after the person becomes
aware that the Office has no evidence of receipt of the
correspondence;

 (2) The number of the "Express Mail" mailing label was
placed  on  the  paper(s)  or  fee(s)  that  constitute  the
correspondence prior to the original mailing by "Express
Mail;"

  (3)  The  petition  includes  a  copy  of  the  originally
deposited  paper(s)  or  fee(s)  that  constitute  the
correspondence showing the number of the "Express Mail"
mailing label thereon, a copy of any returned postcard
receipt, a copy of the "Express Mail" mailing label showing
the "date - in," a copy of any other official notation by
the USPS relied upon to show the date of deposit, and, if
the requested filing date is a date other than the "date -
in" on the "Express Mail" mailing label or other official
notation  entered  by  the  USPS,  a  showing  pursuant  to
paragraph (d)(3) of this section that the requested filing
date was the date the correspondence was deposited in
"Express Mail Post Office to Addressee" service prior to the
last scheduled pickup for that day; and

 (4) The petition includes a statement which establishes, to
the satisfaction of the Commissioner, the original deposit
of  the  correspondence,  and  that  the  copies  of  the
correspondence, the copy of the "Express Mail" mailing
label, the copy of any returned postcard receipt, and any
official notation entered by the USPS are true copies of the
originally mailed correspondence and original "Express Mail"
mailing  label,  returned  postcard  receipt,  and  official
notation entered by the USPS. Such statement must be a
verified  statement  if  made  by  a  person  other  than  a
practitioner as defined in § 10.1(r) of this chapter.

 (f) The Office may require additional evidence to determine
if the correspondence was deposited as "Express Mail" with
the USPS on the date in question.<

  **>The statutory authority for the granting of a filing
date based on the date of deposit for correspondence sent by
"Express Mail" and received by the Office is found in
section 21(a) of Title 35 of the United States Code.

  The specific regulation for obtaining a filing date as
of the date of deposit in "Express Mail" (rather than the
date of receipt at the Office) is 37 CFR 1.10, as revised,
effective December 2, 1996.

  EFFECTIVE DATE, WEEKENDS & HOLIDAYS

  Effective December 2, 1996, 37 CFR 1.6(a)(2) provides
that  correspondence  deposited  as  "Express  Mail"  in
accordance with 37 CFR 1.10 will be stamped, and, therefore,
considered as filed on the date of its deposit, regardless
of whether that date is a Saturday, Sunday or Federal
holiday  within  the  District  of  Columbia.  37  CFR  1.10
provides a procedure for assigning the date on which any
paper or fee is deposited as "Express Mail" with the United
States Postal Service (USPS) as the filing date of the paper
or fee in the Patent and Trademark Office (Office). The date
of deposit with the USPS is shown by the "date - in" on the
"Express  Mail"  mailing  label  or  other  official  USPS
notation.  This  holds  true  for  any  day  that  the
correspondence may be accepted as "Express Mail" by the
USPS, even when the paper or fee is deposited and accepted
on a Saturday, Sunday or Federal holiday within the District
of Columbia. For example, if a person files a patent
application by "Express Mail" with the USPS on a Saturday in
compliance with 37 CFR 1.10, he or she will receive the
benefit of the Saturday date, even though the Office is
closed on Saturdays and, therefore, the person could not
have filed the application by depositing it directly at the
Office on that Saturday. See 37 CFR 1.6(a)(1). In those
cases where the procedure of 37 CFR 1.10(a) has not been
properly followed, e.g., the "date - in" is illegible, the
filing date of the correspondence will be the date of actual
receipt in the Office. An applicant may file a petition
under the conditions specified in 37 CFR 1.10(c), (d) or (e)
(discussed below) presenting whatever arguments and evidence
that the paper or fee is entitled to a filing date other
than the filing date accorded by the Office.

 DATE - IN, DIRECT DEPOSIT, "EXPRESS MAIL" BOX RECEPTACLES &
  LOG BOOKS

  The procedure in 37 CFR 1.10(a) requires the use of the
"Express Mail Post Office to Addressee" service of the USPS.
This service provides for the use of a mailing label on
which the USPS clearly indicates the date on which it was
deposited. Correspondence sent by the "Express Mail Post
Office to Addressee" service is considered filed in the
Office on the "date - in" entered by the USPS. The "date -
in" on the "Express Mail" mailing label must be completed by
the USPS, not by the applicant. For correspondence filed in
accordance with 37 CFR 1.10, Office personnel will routinely
look to the "Express Mail" mailing label, and stamp the
"date - in" or other official USPS notation as the filing
date of the correspondence. Accordingly, if the USPS enters
the deposit date as its "date - in," the correspondence will

receive the deposit date as its filing date. If the USPS
deposit date cannot be determined, the correspondence will
be accorded the date of receipt in the Office as the filing
date. An applicant may file a petition under the conditions
specified in 37 CFR 1.10(c), (d), or (e) (discussed below)
presenting whatever arguments and evidence that the paper or
fee is entitled to a filing date other than the filing date
accorded by the Office.

  37  CFR  1.10(b)  further  provides  that  correspondence
should be deposited directly with an employee of the USPS to
ensure  that  the  person  depositing  the  correspondence
receives a legible copy of the "Express Mail" mailing label
with the "date - in" clearly marked, and that persons
dealing indirectly with the employees of the USPS (such as
by depositing correspondence in an "Express Mail" drop box)
do so at the risk of not receiving a copy of the "Express
Mail" mailing label with the desired "date - in" clearly
marked. On petition, the failure to obtain an "Express Mail"
receipt  with  the  "date  -  in"  clearly  marked  may  be
considered an omission that could have been avoided by the
exercise of due care, as discussed below. While the Office
strongly  urges  direct  deposit  of  "Express  Mail"
correspondence in order to obtain a legible copy of the
"Express Mail" mailing label, parties are not precluded from
using "Express Mail" drop boxes, but do so at their own
risk.

  A  paper  or  fee  placed  in  an  "Express  Mail"  box
receptacle after the box has been cleared for the last time
on a given day will be considered to be deposited as of the
date of receipt ("date - in") indicated on the "Express
Mail" mailing label by the Postal Service "Express Mail"
acceptance clerk. 37 CFR 1.10(d) permits the Office to
correct a USPS "date - in" error when the correspondence is
deposited in an "Express Mail" drop box prior to last
scheduled pick up of the day, that is, the time clearly
marked on the "Express Mail" drop box indicating when the
box will be cleared for the last time on the date of
deposit. 37 CFR 1.10(d) sets forth the procedures to be
followed to be entitled to such a correction.

  Parties who do use drop boxes can protect themselves
from  uncertainty  due  to  illegible  mailing  labels  by
routinely maintaining a log of "Express Mail" deposits in
which notations are entered by the person who deposited the
correspondence as "Express Mail" within one business day
after deposit with the USPS. Such evidence could be useful
to later support a petition filed under 37 CFR 1.10(c), (d)
or (e). Evidence that came into being after deposit and
within one day after the deposit of the correspondence as
"Express Mail" may be in the form of a log book which
contains information such as the "Express Mail" number; the
application number, attorney docket number or other such
file identification number; the place, date and time of
deposit; the time of the last scheduled pick - up for that
date and place of deposit; the depositor's initials or
signature; and the date and time of entry in the log. Any
statement submitted in support of such a showing must be
verified if made by a person other than an employee of the
USPS or a practitioner as defined in 37 CFR 10.1(r).

  "EXPRESS MAIL" MAILING LABEL NUMBER

  Effective December 2, 1996, 37 CFR 1.10(b) no longer

requires a certificate of mailing by "Express Mail" or that
the "Express Mail" mailing label number be placed on the
correspondence prior to mailing. Correspondence deposited
with the USPS on or after December 2, 1996, and which is
actually received by the Office will not be denied a filing
date as of the "date - in" appearing on the "Express Mail"
mailing label because the number of the "Express Mail"
mailing label was not placed thereon prior to the original
mailing. However, if the number of the mailing label did not
appear on the correspondence as originally filed, relief
will not be granted on petition under 37 CFR 1.10(c) through
(e),  even  if  the  party  who  filed  the  correspondence
satisfies the other requirements of 37 CFR 1.10(c), 1.10(d)
or 1.10(e). To be effective, the number must be placed on
each separate paper and each fee transmittal either directly
on the document or by a separate paper firmly and securely
attached thereto. In situations wherein the correspondence
includes several papers directed to the same application
(for example, the specification, drawings, and declaration
for a new application), the correspondence may be submitted
with a cover or transmittal letter which should itemize the
papers. It is not necessary that the number be placed on
each page of a particular paper or fee transmittal. Merely
placing  the  number  in  one  prominent  location  on  each
separate  paper  or  fee  transmittal  (or  cover  sheet  or
transmittal letter which should itemize the separate papers
and fees) will be sufficient.

  Since the filing of correspondence under 37 CFR 1.10
without the number of the "Express Mail" mailing label
thereon is an oversight that can be avoided by the exercise
of reasonable care, requests for waiver of this requirement
will not be granted on petition. A party's inadvertent
failure to comply with the requirements of a rule is not
deemed to be an extraordinary situation that would warrant
waiver of a rule under 37 CFR 1.183, 2.146(a)(5) or 2.148,
nor  is  such  an  inadvertent  omission  considered
"unavoidable," within the meaning of 15 U.S.C. 1062(b), 35
U.S.C.  133,  37  CFR  1.137(a)  or  37  CFR  2.66(a).  See
Honigsbaum v. Lehman , 903 F. Supp. 8, 37 USPQ2d 1799
(D.D.C. 1995) (Commissioner did not abuse his discretion in
refusing to waive requirements of 37 CFR 1.10(c) in order to
grant filing date to patent application, where applicant
failed to produce "Express Mail" customer receipt or any
other evidence that application was actually deposited with
USPS as "Express Mail"),  aff'd without opinion , 95 F.3d
1166 (Fed. Cir.1996);  Nitto Chemical Industry. Co., Ltd. v.
Comer , 39 USPQ2d 1778, 1782 (D.D.C. 1994) (Commissioner's
refusal to waive requirements of 37 CFR 1.10 in order to
grant  priority  filing  date  to  patent  application  not
arbitrary and capricious, because failure to comply with the
requirements of 37 CFR 1.10 is an "avoidable" oversight that
could have been prevented by the exercise of ordinary care
or diligence, and thus not an extraordinary situation under
37 CFR 1.183);  Vincent v. Mossinghoff , 230 USPQ 621
(D.D.C.  1985)  (Misunderstanding  of  37  CFR  1.8  not
unavoidable  delay  in  responding  to  Office  Action);
Gustafson v. Strange , 227 USPQ 174 (Comm'r Pats. 1985)
(Counsel's unawareness of 37 CFR 1.8 not extraordinary
situation warranting waiver of a rule);  In re Chicago
Historical Antique Automobile Museum, Inc. , 197 USPQ 289
(Comm'r Pats. 1978) (Since certificate of mailing procedure
under 37 CFR 1.8 was available to petitioner, lateness due
to mail delay not deemed to be extraordinary situation).

  PETITIONS

  37 CFR 1.10(c) through 1.10(e) set forth procedures for
petitioning the Commissioner to accord a filing date as of
the date of deposit as "Express Mail." Briefly, 37 CFR
1.10(c) applies where there is a discrepancy between the
filing date accorded by the Office and the "date - in"
entered by the USPS on the "Express Mail" mailing label or
other official USPS notation; 37 CFR 1.10(d) applies where
the "date - in" is incorrectly entered by the USPS; and 37
CFR 1.10(e) applies where correspondence deposited with the
USPS as "Express Mail" is not received by the Office.

  PETITION TO CORRECT FILING DATE AND DATE - IN DISCREPANCY

  37  CFR  1.10(c)  sets  forth  procedures  for  filing  a
petition to the Commissioner for a filing date as of the
date of deposit with the USPS, where there is a discrepancy
between the filing date initially accorded by the Office and
the "date - in" entered by the USPS or other official USPS
notation. Such a petition should: (1) be filed promptly
after the person becomes aware that the Office has accorded,
or will accord, a filing date other than the USPS deposit
date, (2) include a showing that the number of the "Express
Mail"  mailing  label  was  placed  on  each  piece  of
correspondence  prior  to  the  original  mailing,  and  (3)
include a true copy of the "Express Mail" mailing label
showing the "date - in" or other official notation by the
USPS.

  PETITION TO CORRECT INCORRECTLY ENTERED DATE - IN

  37  CFR  1.10(d)  sets  forth  procedures  for  filing  a
petition to the Commissioner to accord a filing date as of
the actual date of deposit with the USPS, where the "date -
in" or other official notation is incorrectly entered by the
USPS. Such a petition should: (1) be filed promptly after
the person becomes aware that the Office has accorded, or
will accord, a filing date based upon an incorrect entry by
the USPS, (2) include a showing that the number of the
"Express Mail" mailing label was placed on each piece of
correspondence  prior  to  the  original  mailing,  and  (3)
include a showing that the correspondence was deposited as
"Express Mail" prior to the last scheduled pickup on the
requested filing date. The showing under 37 CFR 1.10(d) must
be corroborated by (1) evidence from the USPS, or (2)
evidence that came into being after deposit and within one
business  day  of  the  deposit  of  the  correspondence  as
"Express Mail". Evidence from the USPS may be the "Express
Mail" Corporate Account Mailing Statement. Evidence that
came into being within one day after the deposit of the
correspondence as "Express Mail" may be in the form of a log
book which contains information such as the "Express Mail"
number; the application number, attorney docket number or
other such file identification number; the place, date and
time of deposit; the time of the last scheduled pick - up
for that date and place of deposit; the depositor's initials
or signature; and the date and time of entry in the log. Any
statement submitted in support of such a showing must be
verified if made by a person other than an employee of the
USPS or a practitioner as defined in 37 CFR 10.1(r).

  The reason the Office considers correspondence to have
been filed as of the date of deposit as "Express Mail" is
that this date has been verified by a disinterested USPS

employee, through the insertion of a "date - in," or other
official USPS notation, on the "Express Mail" mailing label.
Due to the questionable reliability of evidence from a party
other  than  the  USPS  that  did  not  come  into  being
contemporaneously with the deposit of the correspondence
with the USPS, 37 CFR 1.10(d) specifically requires that any
petition under 37 CFR 1.10(d) be corroborated either by
evidence from the USPS, or by evidence that came into being
after deposit and within one business day after the deposit
of the correspondence as "Express Mail."

  A petition alleging that the USPS erred in entering the
"date - in" will be denied if it is supported only by
evidence (other than from the USPS) which was: (1) created
prior to the deposit of the correspondence as "Express Mail"
with  the  USPS  (e.g.,  an  application  transmittal  cover
letter, or a client letter prepared prior to the deposit of
the correspondence), or (2) created more than one business
day after the deposit of the correspondence as "Express
Mail" (e.g., an affidavit or declaration prepared more than
one business day after the correspondence was deposited with
the USPS as "Express Mail"). On the other hand, a notation
in a log book, entered after deposit by the person who
deposited the correspondence as "Express Mail" within one
business day of such deposit, setting forth the items
indicated above, would be deemed on petition to be an
adequate showing of the date of deposit under 37 CFR
1.10(d)(3).

  37 CFR 1.10(d)(3) further provides that a party must show
that correspondence was deposited as "Express Mail" before
the last scheduled pickup on the requested filing date in
order to obtain a filing date as of that date.

  PETITION FOR CORRESPONDENCE NEVER RECEIVED

  37  CFR  1.10(e)  sets  forth  procedures  for  filing  a
petition to the Commissioner to accord a filing date as of
the date of deposit with the USPS, where correspondence
deposited as "Express Mail" is never received by the Office.
Such a petition should: (1) be filed promptly after the
person becomes aware that the Office has no evidence of
receipt of the correspondence, (2) include a showing that
the number of the "Express Mail" mailing label was placed on
each piece of correspondence prior to the original mailing,
(3)  include  a  true  copy  of  the  originally  deposited
correspondence showing the number of the "Express Mail"
mailing label thereon, a copy of any returned postcard
receipt, a copy of the "Express Mail" mailing label showing
the "date - in" or other official notation entered by the
USPS, and (4) include a statement, signed by the person who
deposited the documents as "Express Mail" with the USPS,
setting forth the date and time of deposit, and declaring
that  the  copies  of  the  correspondence,  "Express  Mail"
mailing label, and returned postcard receipt accompanying
the petition are true copies of the correspondence, mailing
label and returned postcard receipt originally mailed or
received. Any statement in support of a petition under 37
CFR 1.10(e) must be verified if made by a person other than
a practitioner as defined in 37 CFR 10.1(r).

  37 CFR 1.10(e) provides for the filing of a petition to
accord correspondence a filing date as of the date of
deposit with the USPS as "Express Mail" only where the
correspondence  was  mailed  with  sufficient  postage  and

addressed  as  set  out  in  37  CFR  1.1(a).  There  is  no
corresponding  provision  that  correspondence  be  properly
addressed and mailed with sufficient postage in 37 CFR
1.10(a), (c) and (d), because these sections apply only to
correspondence that is actually received by the Office.
Correspondence mailed by "Express Mail" that is  actually
received by the Office will not be denied a filing date as
of the date of deposit as "Express Mail" simply because the
correspondence was not mailed with sufficient postage or not
addressed as set out in 37 CFR 1.1(a). 37 CFR 1.10(e)(3)
provides that if the requested filing date is a date other
than the "date - in" on the "Express Mail" mailing label,
the  petition  should  include  a  showing  under  37  CFR
1.10(d)(3), as discussed above, that the correspondence was
deposited as "Express Mail" before the last scheduled pickup
on the requested filing date in order to obtain a filing
date as of that date. 37 CFR 1.10(e) applies only in those
situations in which the correspondence at issue was lost  in
toto(i.e., the entire correspondence was not delivered to
the Office). Where there is a dispute as to the contents of
correspondence submitted to the Office (e.g., an applicant
asserts that three sheets of drawings were submitted under
37 CFR 1.10 with an application, but the Office records
indicate receipt of only two sheets of drawings with the
application), an applicant may not rely upon the provisions
of 37 CFR 1.10(e) to establish what document(s) and/or
fee(s) were filed in the Office with such correspondence.
Rather, where the records of the Office (e.g., the file of
the  application)  contain  any  document(s)  or  fee(s)
corresponding to the contents of the correspondence at
issue, the Office will rely upon its official record of the
contents of such correspondence in absence of convincing
evidence  (e.g.,  a  postcard  receipt  under  MPEP  §  503
containing specific itemization of the document(s) or fee(s)
purported to have been filed with the correspondence at
issue)  that  the  Office  received  and  misplaced  any
document(s) or fee(s) that is not among the official records
of the Office.

  ADDITIONAL EVIDENCE MAY BE REQUIRED

  37 CFR 1.10(f) provides that the Office may require
additional evidence to determine whether the correspondence
was deposited as "Express Mail" with the USPS on the date in
question.<

  - -- - -- END - -- - --

  Chapter 600 Parts, Form, and Content of Application

  601  Content of Provisional and Nonprovisional
  Applications
  601.01 Complete Application >601.01(a)
  Nonprovisional Applications Filed Under 35 U.S.C.
  111(a)
  601.01(b)  Provisional Applications Filed Under 35 U.S.C.
  111(b)
  601.01(c)  Conversion to a Provisional Application
  601.01(d)  Application Filed Without All Pages of
  Specification
  601.01(e)  Nonprovisional Application Filed Without at
  Least One Claim
  601.01(f)  Applications Filed Without Drawings
  601.01(g)  Applications Filed Without All Figures of

  Drawings
  601.01(h)  Forms<
  601.02 Power of Attorney or Authorization of Agent
  601.03 Change of Correspondence Address
  601.04 National Stage Requirements of the United
  States as a Designated Office
  602  Original Oath or Declaration
  602.01 Oath Cannot Be Amended
  602.02 New Oath or Substitute for Original
  602.03 Defective Oath or Declaration
  602.04 Foreign Executed Oath
  602.04(a)  Foreign Executed Oath Is Ribboned to Other
  Application Papers
  602.05 Oath or Declaration - Date of Execution
  602.05(a)  Oath or Declaration in Division and
  Continuation Cases
  602.06 Non - English Oath or Declaration
  602.07 Oath or Declaration Filed in United States as
  a Designated Office
  603  Supplemental Oath or Declaration
  603.01 Supplemental Oath or Declaration Filed After
  Allowance
  604  Administration or Execution of Oath
  604.01 Seal
  604.02 Venue
  **
  604.03(a)  Notarial Powers of Some Military Officers
  604.04 Consul
  604.04(a)  Consul - Omission of Certificate
  604.06 By Attorney in Case
  605  Applicant
  605.01 Applicant's Citizenship
  605.02 Applicant's Residence
  605.03 Applicant's Post Office Address
  605.04(a)  Applicant's Signature and Name
  605.04(b)  One Full Given Name Required
  605.04(c)  Inventor Changes Name
  605.04(d)  Applicant Unable to Write
  605.04(e)  May Use Title With Signature
  605.04(f)  Signature on Joint Applications - Order of
  Names
  605.04(g)  Correction of Inventorship
  605.05 Administrator, Executor, or Other Legal
  Representative
  605.07 Joint Inventors
  606  Title of Invention
  606.01 Examiner May Require Change in Title
  607  Filing Fee
  607.02 Returnability of Fees
  608  Disclosure
  608.01 Specification
  608.01(a)  Arrangement of Application
  608.01(b)  Abstract of the Disclosure
  608.01(c)  Background of the Invention
  608.01(d)  Brief Summary of Invention
  608.01(e)  Reservation Clauses Not Permitted
  608.01(f)  Brief Description of Drawings
  608.01(g)  Detailed Description of Invention
  608.01(h)  Mode of Operation of Invention
  608.01(i)  Claims
  608.01(j)  Numbering of Claims
  608.01(k)  Statutory Requirement of Claims
  608.01(l)  Original Claims
  608.01(m)  Form of Claims
  608.01(n)  Dependent Claims

  608.01(o)  Basis for Claim Terminology in Description
  608.01(p)  Completeness
  608.01(q)  Substitute or Rewritten Specification
  608.01(r)  Derogatory Remarks About Prior Art in
  Specification
  608.01(s)  Restoration of Cancelled Matter
  608.01(t)  Use in Subsequent Application
  608.01(u)  Use of Formerly Filed Incomplete Application
  608.01(v)  Trademarks and Names Used in Trade
  608.02 Drawing
  608.02(a)  New Drawing -When Required
  608.02(b)  Informal Drawings
  608.02(c)  Drawing Print Kept in File Wrapper
  608.02(d)  Complete Illustration in Drawings
  608.02(e)  Examiner Determines Completeness of Drawings
  608.02(f)  Modifications in Drawings
  608.02(g)  Illustration of Prior Art
  608.02(h)  Additional, Duplicate, or Substitute Drawings
  608.02(i)  Transfer of Drawings From Prior Applications
  608.02(m)  Drawing Prints
  608.02(n)  Duplicate Prints in Patentability Report Cases
  608.02(o)  Dates Entered on Drawing
  608.02(p)  Correction of Drawings
  608.02(q)  Conditions Precedent to Amendment of Drawing
  608.02(r)  Separate Letter to Draftsman
  608.02(t)  Cancellation of Figures
  608.02(v)  Drawing Changes Which Require Sketches
  608.02(w)  Drawing Changes Which May Be Made Without
  Applicant's Sketch
  608.02(x)  Disposition of Orders for Amendment of Drawing
  608.02(y)  Return of Drawing
  608.02(z)  Allowable Applications Needing Drawing
  Corrections or Formal Drawings
  608.03 Models, Exhibits, Specimens
  608.03(a)  Handling of Models, Exhibits, and Specimens
  608.04 New Matter
  608.04(a)  Matter Not in Original Specification, Claims,
  or Drawings
  608.04(b)  New Matter by Preliminary Amendment
  608.04(c)  Review of Examiner's Holding of New Matter
  608.05 Deposit of Computer Program Listings
  609  Information Disclosure Statement

601  Content of Provisional and Nonprovisional
Applications [R - 3]

 35 U.S.C. 111  Application

  (a) IN GENERAL.-

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

  (2) CONTENTS.-Such application shall include-

 (A)  a specification as prescribed by section 112 of
this title;

 (B)  a drawing as prescribed by section 113 of this
title; and

 (C)  an oath by the applicant as prescribed by section

115 of this title.

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

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

  (b) PROVISIONAL APPLICATION.-

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

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

 (B)  a drawing as prescribed by section 113 of this
title.

  (2) CLAIM.-A claim, as required by the second through
fifth paragraphs of section 112, shall not be required in a
provisional application.

  (3) FEE.-(A) The application must be accompanied by the
fee required by law.

 (B)  The fee may be submitted after the specification
and any required drawing are submitted, within such period
and under such conditions, including the payment of a
surcharge, as may be prescribed by the Commissioner.

 (C)  Upon  failure  to  submit  the  fee  within  such
prescribed period, the application shall be regarded as
abandoned, unless it is shown to the satisfaction of the
Commissioner that the delay in submitting the fee was
unavoidable or unintentional.

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

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

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

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

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

 37 CFR 1.51.  General requisites of an application.

  (a)  Applications  for  patents  must  be  made  to  the
Commissioner of Patents and Trademarks.

  (1) A complete application filed under § 1.53(b)(1)
comprises:

  (i) A specification, including a claim or claims, see § §
1.71 to 1.77;

  (ii) An oath or declaration, see § § 1.63 and 1.68;

  (iii) Drawings, when necessary, see § § 1.81 to 1.85; and

  (iv) The prescribed filing fee, see § 1.16.

  (2) A complete provisional application filed under §
1.53(b)(2) comprises:

  (i) A cover sheet identifying:

  (A) The application as a provisional application,

  (B) The name or names of the inventor or inventors, (see
§ 1.41),

  (C) The residence of each named inventor,

  (D) The title of the invention,

  (E) The name and registration number of the attorney or
agent (if applicable),

  (F) The docket number used by the person filing the
application to identify the application (if applicable),

  (G) The correspondence address, and

  (I) The name of the U.S. Government agency and Government
contract number (if the invention was made by an agency of
the U.S. Government or under a contract with an agency of
the U.S. Government);

  (ii) A specification as prescribed by 35 U.S.C. 112,
first paragraph, see § 1.71;

  (iii) Drawings, when necessary, see § § 1.81 to 1.85; and

  (iv) The prescribed filing fee, see § 1.16.

  (b) Applicants are encouraged to file an information
disclosure statement in nonprovisional applications. See § §
1.97 and 1.98. No information disclosure statement may be
filed in a provisional application.

  (c) Applicants may desire and are permitted to file with,
or in, the application or authorization to charge, at any
time during the pendency of the application, any fees
required under any of § § 1.16 to 1.18 to a deposit account
established and maintained in accordance with § 1.25.

 GUIDELINES FOR DRAFTING A NONPROVISIONAL PATENT APPLICATION
  UNDER 35 U.S.C. 111(a)

  The following guidelines illustrate the preferred layout
and content of patent applications filed under 35 U.S.C.
111(a). These guidelines are suggested for the applicant's
use. >See also 37 CFR 1.77 and MPEP § 608.01(a).<

 Arrangement and Contents of the Specification

  The following order of arrangement is preferable in
framing the specification **>. Except for the reference to
the "microfiche appendix" and the drawings, each of the
lettered  items  should  appear  in  upper  case,  without
underlining or bold type, as section headings. If no text
follows the section heading, the phrase "Not Applicable"
should follow the section heading.

  (a)  Title of the invention.

  (b)  Cross - reference to related applications.

  (c) Statement  regarding  federally  sponsored
research or development.

  (d)  Reference to a "Microfiche appendix." (See 37
CFR 1.96(c)).

  (e)  Background of the invention.

  (1)  Field of the invention.

  (2)  Description  of  related  art  including
information disclosed under 37 CFR 1.97 and 37 CFR 1.98.

  (f)  Brief summary of the invention.

  (g)  Brief description of the several views of the
drawing.

  (h)  Detailed description of the invention.

  (i)  Claim(s) (commencing on a separate sheet).

  (j)  Abstract of the Disclosure (commencing on a
separate sheet).

  (k)  Drawings.

  (l)  Sequence Listing (See 37 CFR 1.821 through
1.825). <

  Content

  (a) Title of the Invention : (See 37 CFR 1.72(a).) The
title of the invention should be placed at the top of the
first page of the specification. It should be brief but
technically accurate and descriptive preferably from two to
seven words.

  (b) Cross - *>Reference< to Related Applications : (See
37 CFR 1.78 and MPEP § 201.11.)

  (c) Statement ** >Regarding< Federally Sponsored Research
* >or< Development ** : (See MPEP § 310).

  (d) > Reference to a "Microfiche Appendix" : (See 37 CFR
1.96(c) and MPEP § 608.05). The total number of microfiche
and total number of frames should be specified.<

  (* >e<) Background of the Invention: The specification
should set forth the Background of the Invention in two
parts:

 (1) Field of the Invention: A statement of the field
of art to which the invention pertains. This statement may
include  a  paraphrasing  of  the  applicable  U.S.  patent
classification definitions. The statement should be directed
to the subject matter of the claimed invention. This item
may also be titled "Technical Field".

 (2)  Description  of  the  Related  Art  Including
Information  Disclosed  Under  37  CFR  1.97  and  1.98:  A
paragraph(s)  describing  to  the  extent  practical  the
information known to the applicant, including references to
specific documents where appropriate. Where applicable, the
problems involved in the information disclosed which are
solved by the applicant's invention, should be indicated.
This item may also be titled "Background Information".

  (* >f<) >Brief< Summary of the Invention : A brief
summary or general statement of the invention as set forth
in 37 CFR 1.73. The summary is separate and distinct from
the abstract and is directed toward the invention rather
than the disclosure as a whole. The summary may point out
the advantages of the invention or how it solves problems
previously existent in the art (and preferably indicated in
the Background of the Invention). In chemical cases the
summary should point out in general terms the utility of the
invention. If possible, the nature and gist of the invention
or the inventive concept should be set forth. Objects of the
invention should be treated briefly and only to the extent
that they contribute to an understanding of the invention.
**

  (* >g< ) Brief Description of the >Several Views of the <
Drawing(s) : A reference to and brief description of each
Figure in the drawing(s) as set forth in 37 CFR 1.74.

  (* >h<) >Detailed< Description of the ** >Invention< : A
description of the preferred embodiment(s) of the invention
as required in 37 CFR 1.71. The description should be as
short  and  specific  as  is  necessary  to  adequately  and
accurately describe the invention. **

  Where elements or groups of elements, compounds, and
processes, which are conventional and generally widely known
in the field to which the invention pertains, form a part of
the invention described and their exact nature or type is

not necessary for an understanding and use of the invention
by a person skilled in the art, they should not be described
in detail. However, where particularly complicated subject
matter is involved or where the elements, compounds, or
processes may not be commonly or widely known in the field,
the specification should refer to another patent or readily
available publication which adequately describes the subject
matter.

  (*  >i<)  Claim(s)  :  (See  37  CFR  1.75  >and  MPEP  §
608.01(m).<) ** >The claim or claims must commence on a
separate sheet. Where a claim sets forth a plurality of
elements or steps, each element or step of the claim should
be separated by a line indentation.< There may be plural
indentations to further segregate subcombinations or related
steps.

  Reference characters corresponding to elements recited
in the detailed description and the drawings may be used in
conjunction with the recitation of the same element or group
of  elements  in  the  claims.  The  reference  characters,
however, should be enclosed within parentheses so as to
avoid confusion with other numbers or characters which may
appear in the claims. The use of reference characters is to
be considered as having no effect on the scope of the
claims.

  Claims should preferably be arranged in order of scope
so  that  the  first  claim  presented  is  the  *  >least
restrictive<.  >All  dependent  claims  should  be  grouped
together with the claim or claims to which they refer to the
extent practicable.< Where separate species are claimed, the
claims of like species should be grouped together where
possible ** >.< Similarly, product and process claims should
be separately grouped. Such arrangements are for the purpose
of facilitating classification and examination.

  The form of claim required in 37 CFR 1.75(e) is
particularly adapted for the description of improvement -
type  inventions.  Such  a  claim  is  to  be  considered  a
combination claim and should be drafted with this thought in
mind.

  In drafting claims in accordance with 37 CFR 1.75(e),
the preamble is to be considered to positively and clearly
include all the elements or steps recited therein as a part
of the claimed combination.

  (* >j<) Abstract of the Disclosure:(See 37 CFR 1.72(b)
and MPEP § 608.01(b).)

  >(k) Drawings: (See 37 CFR 1.81 and 1.83 - 1.85, and MPEP
§ 608.02).

  (l) Sequence Listing: (See 37 CFR 1.821 - 1.825).<

 Oath or Declaration

  (See 37 CFR 1.63, 1.68, and 1.69.) Where one or more
previously filed foreign applications are cited or mentioned
in the oath or declaration, complete identifying data,
including the application or serial number as well as the
country and date of filing, should be provided.

  GUIDELINES FOR DRAFTING A PROVISIONAL APPLICATION UNDER 35

  U.S.C. 111(b)

  A provisional application should preferably conform to
the arrangement guidelines for nonprovisional applications.
The specification must, however, comply with the first
paragraph of 35 U.S.C. 112 and refer to drawings, where
necessary for an understanding of the invention. Unlike an
application filed under 35 U.S.C. 111(a), a provisional
application does not need claims. Furthermore, no oath or
declaration is required. See MPEP § 201.04(b).

  A cover sheet providing identifying information is
required  for  a  complete  provisional  application.  In
accordance with 37 CFR 1.51(a)(2)(i) the cover sheet must
state that it is for a provisional application, it must
identify  and  give  the  residence  of  the  inventor  or
inventors, and it must give a title of the invention. The
cover sheet must also give the name and registration number
of the attorney or agent (if applicable), the docket number
used by the person filing the application (if applicable)
and the correspondence address. If there is a governmental
interest, the cover sheet must include a statement as to
rights to inventions made under Federally sponsored research
and development (See MPEP § 310). 37 CFR 1.51(a)(2)(i)(H)
requires the name of the Government agency and the contract
number, if the invention was developed by or while under
contract with an agency of the U.S. Government.

  Unlike  applications  filed  under  35  U.S.C.  111(a),
provisional applications should not include an information
disclosure statement. Since no substantive examination is
made, such statements are unnecessary. The Office will not
accept an information disclosure statement in a provisional
application. Any such statement received, will be returned
or disposed of at the convenience of the Office.

  This cover sheet information enables the Office to
prepare a proper filing receipt and provides the Application
Processing Division with most of the information needed to
process the provisional application. See MPEP § 201.04(b)
for a sample cover sheet.

  THE APPLICATION

  The specification must be filed in or translated into
the English language and must be legibly * written **
>either by a typewriter or mechanical printer< in permanent
>dark< ink or its equivalent **. >Except for the drawing,
the application papers (specification, including claims,
abstract, oath or declaration, and all papers which are to
become part of the permanent records of the Patent and
Trademark Office) must be on sheets of paper which are the
same size and are either 21.0 cm. by 29.7 cm. (DIN A4) or
21.6 cm. by 27.9 cm. (81/2 by 11 inches) <. See 37 CFR 1.52
and MPEP § 608.01.

  The parts of the application may be included in a single
document.

  Determination of completeness of an application is
covered in MPEP § 506 and § 601.01 - § 601.01(g).

  The elements of the application are secured together in
a  file  wrapper,  bearing  appropriate  identifying  data
including the application number and filing date (MPEP §

717).

 Note

  Provisional applications, MPEP § 201.04(b).

  Division applications, MPEP § 201.06.

  Continuation applications, MPEP § 201.07.

  Reissue applications, MPEP § 1401.

  Design applications, MPEP Chapter 1500.

  Plant applications, MPEP Chapter 1600.

  Reexamination, MPEP Chapter 2200.

  A model, exhibit, or specimen is not required as part of
the application as filed, although it may be required in the
prosecution of the application (37 CFR 1.91 - 1.93, MPEP §
608.03).

 37 CFR 1.59.  Papers of application with filing date
not returned.

  Papers in an application which has received a filing
date pursuant to § 1.53 will not be returned for any purpose
whatever. If applicants have not preserved copies of the
papers, the Office will furnish copies at the usual cost of
any application in which either the required basic filing
fee ( § 1.16) or the processing and retention fee ( §
1.21(l))  has  been  paid.  See  §  1.618  for  return  of
unauthorized and improper papers in interferences.

  See, however, MPEP § 201.14(c) and § 604.04(a) >with
regard to the return of papers<. >The PTO is waiving, sua
sponte , the requirements of 37 CFR 1.59 (and 37 CFR
1.53(d)(1) and (d)(2)) for payment of either the basic
filing fee or the processing and retention fee in an
application before any copies of the application will be
provided by the PTO. Copies of an application will be
provided by the PTO upon request at the usual cost without
regard to whether the basic filing fee or the processing and
retention  fee  has  been  paid  in  the  application.  See,
however, MPEP § 601.01(a) and § 601.01(b).<

  All applicants are requested to include a preliminary
classification  on  newly  filed  patent  applications.  The
preliminary classification, preferably class and subclass
designations, should be identified in the upper right - hand
corner  of  the  letter  of  transmittal  accompanying  the
application papers, for example "Proposed Class 2, subclass
129."

601.01  Complete Application [R - 2]

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

  (a) Any application for a patent received in the Patent
and Trademark Office will be assigned an application number
for identification purposes.

  (b)(1) The filing date of an application for patent filed

under this section, except for a provisional application, is
the date on which: a specification containing a description
pursuant to § 1.71 and at least one claim pursuant to §
1.75; and any drawing required by § 1.81(a), are filed in
the Patent and Trademark Office in the name of the actual
inventor or inventors as required by § 1.41. No new matter
may be introduced into an application after its filing date
( § 1.118). If all the names of the actual inventor or
inventors are not supplied when the specification and any
required drawing are filed, the application will not be
given a filing date earlier than the date upon which the
names are supplied unless a petition with the fee set forth
in § 1.17(i) is filed which sets forth the reasons the delay
in supplying the names should be excused. A continuation or
divisional application (filed under the conditions specified
in 35 U.S.C. 120 or 121 and § 1.78(a)) may be filed under
this section, § 1.60 or § 1.62. A continuation - in - part
application may be filed under this section or § 1.62.

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

  (i) A provisional application must also include a cover
sheet  identifying  the  application  as  a  provisional
application. Otherwise, the application will be treated as
an application filed under § 1.53(b)(1).

  (ii) An application for patent filed under § 1.53(b)(1)
may be treated as a provisional application and be accorded
the original filing date provided that a petition requesting
the conversion, with the fee set forth in § 1.17(q), is
filed prior to the earlier of the abandonment of the §
1.53(b)(1) application, the payment of the issue fee, the
expiration of 12 months after the filing date of the §
1.53(b)(1) application, or the filing of a request for a
statutory invention registration under § 1.293. The grant of
any such petition will not entitle applicant to a refund of
the fees which were properly paid in the application filed
under § 1.53(b)(1).

  (iii) A provisional application shall not be entitled to
the right of priority under § 1.55 or 35 U.S.C. 119 or
365(a) or to the benefit of an earlier filing date under §
1.78  or  35  U.S.C.  120,  121  or  365(c)  of  any  other
application. No claim for priority under § 1.78(a)(3) may be
made  in  a  design  application  based  on  a  provisional
application. No request under § 1.293 for a statutory
invention  registration  may  be  filed  in  a  provisional
application. The requirements of § § 1.821 - 1.825 regarding
application disclosures containing nucleo tide and/or amino
acid  sequences  are  not  mandatory  for  provisional

applications.

  (c)  If  any  application  is  filed  without  the
specification, drawing or name, or names, of the actual
inventor or inventors required by paragraph (b)(1) or (b)(2)
of this section, applicant will be so notified and given a
time  period  within  which  to  submit  the  omitted
specification,  drawing,  name,  or  names,  of  the  actual
inventor, or inventors, in order to obtain a filing date as
of the date of filing of such submission. A copy of the
"Notice  of  Incomplete  Application"  form  notifying  the
applicant should accompany any response thereto submitted to
the Office. If the omission is not corrected within the time
period set, the application will be returned or otherwise
disposed of; the fee, if submitted, will be refunded less
the handling fee set forth in § 1.21(n). Any request for
review of a refusal to accord an application a filing date
must be by way of a petition accompanied by the fee set
forth in § 1.17(i), if the application was filed under §
1.53(b)(1), or by the fee set forth in § 1.17(q), if the
application was filed under § 1.53(b)(2).

  (d)(1) If an application which has been accorded a filing
date pursuant to paragraph (b)(1) of this section does not
include the appropriate filing fee or an oath or declaration
by the applicant, applicant will be so notified, if a
correspondence address has been provided and given a period
of time within which to file the fee, oath, or declaration
and to pay the surcharge as set forth in § 1.16(e) in order
to prevent abandonment of the application. A copy of the
"Notice to File Missing Parts" form mailed to applicant
should accompany any response thereto submitted to the
Office. If the required filing fee is not timely paid, or if
the processing and retention fee set forth in § 1.21(l) is
not paid within one year of the date of mailing of the
notification required by this paragraph, the application
will be disposed of. No copies will be provided or certified
by the Office of an application which has been disposed of
or in which neither the required basic filing fee nor the
processing and retention fee has been paid. The notification
pursuant to this paragraph may be made simultaneously with
any notification pursuant to paragraph (c) of this section.
If no correspondence address is included in the application,
applicant has two months from the filing date to file the
basic filing fee, oath or declaration and to pay the
surcharge as set forth in § 1.16(e) in order to prevent
abandonment of the application; or, if no basic filing fee
has been paid, one year from the filing date to pay the
processing and retention fee set forth in § 1.21(l) to
prevent disposal of the application.

  (2) If a provisional application which has been accorded
a filing date pursuant to paragraph (b)(2) of this section
does not include the appropriate filing fee or the cover
sheet  required  by  §  1.51(a)(2),  applicant  will  be  so
notified if a correspondence address has been provided and
given a period of time within which to file the fee, cover
sheet and to pay the surcharge as set forth in § 1.16(l) in
order to prevent abandonment of the application. A copy of
the "Notice to File Missing Parts" form mailed to applicant
should accompany any response thereto submitted to the
Office. If the required filing fee is not timely paid, the
application will be disposed of. No copies will be provided
or certified by the Office of an application which has been
disposed of or in which the required basic filing fee has

not been paid. The notification pursuant to this paragraph
may be made simultaneously with any notification pursuant to
paragraph (c) of this section. If no correspondence address
is included in the application, applicant has two months
from the filing date to file the basic filing fee, cover
sheet and to pay the surcharge as set forth in § 1.16(l) in
order to prevent abandonment of the application.

  (e)(1) An application for a patent filed under paragraph
(b)(1) of this section will not be placed upon the files for
examination until all its required parts, complying with the
rules relating thereto, are received, except that certain
minor informalities may be waived subject to subsequent
correction whenever required.

  (2) A provisional application for a patent filed under
paragraph (b)(2) of this section will not be placed upon the
files for examination and will become abandoned no later
than twelve months after its filing date pursuant to 35
U.S.C. 111(b)(1).

  37 CFR 1.53 relates to application numbers, filing dates,
and completion of applications. 37 CFR 1.53(a) indicates
that  an  application  number  is  assigned  to  any  filed
application  for  identification  purposes,  even  if  the
application  is  incomplete  or  informal.  The  remaining
sections of 37 CFR 1.53 treat nonprovisional applications
filed under 35 U.S.C. 111(a) separately from provisional
applications filed under 35 U.S.C. 111(b).

601.01(a)  Nonprovisional Applications Filed Under 35
U.S.C. 111(a) [R - 3]

  37 CFR 1.53(b)(1) provides that a filing date is assigned
to  a  nonprovisional  application  as  of  the  date  a
specification containing a description and claim and any
necessary drawing and the names of all inventors are filed
in the Patent and Trademark Office. Failure to meet any of
the requirements in 37 CFR 1.53(b)(1) will result in the
application being denied a filing date. The filing date to
be accorded such an application is the date on which all of
the requirements of 37 CFR 1.53(b)(1) are met. Although the
filing fee and oath or declaration can be submitted later,
no amendments can be made to the specification or drawings
which will introduce new matter. This practice is authorized
by 35 U.S.C. 111 as amended by Pub. L. 97 - 247. 37 CFR
1.53(c) provides for notifying applicant of any application
incomplete because the specification or drawing is missing
and giving the applicant a time period to correct any
omission.  Applicant  will  also  be  notified  if  all  the
inventors are not named, such as by the use of "et al." If
the omission is not corrected within the time period given,
the application will be returned or otherwise disposed of
and a handling fee set forth in 37 CFR 1.21(n) will be
retained from any refund of a filing fee. 37 CFR 1.53(d)(1)
provides that, where a filing date has been assigned to a
filed specification and drawing, the applicant will be
notified if a correspondence address has been provided and
be given a period of time in which to file the missing fee,
oath, or declaration and to pay the surcharge due in order
to prevent abandonment of the application. The time period
usually set is**>2 months< from the date of notification by
the Patent and Trademark Office**. This time period is
subject to the provisions of 37 CFR 1.136(a).

  If the required basic filing fee is not timely paid, or
the processing and retention fee set forth in 37 CFR 1.21(l)
is not paid within 1 year of the date of mailing of the
notification, the application will be disposed of. ** The
notification  under  37  CFR  1.53(d)(1)  may  be  made
simultaneously with any notification pursuant to paragraph
(c) of 37 CFR 1.53. If no correspondence address is included
in the application, applicant has 2 months from the filing
date to file the fee, oath or declaration and to pay the
surcharge as set forth in 37 CFR 1.16(e) in order to prevent
abandonment of the application or one year from the filing
date to pay the processing and retention fee set forth in 37
CFR 1.21(l) to prevent disposal of the application.

 >  The PTO is waiving, sua sponte , the requirement of
37 CFR 1.53(d)(1) for payment of either the basic filing fee
or the processing and retention fee in an application before
any copies of the application will be provided by the PTO.
Copies of an application will be provided by the PTO upon
request at the usual cost without regard to whether the
basic filing fee or the processing and retention fee has
been paid in the application. While copies of an application
will be provided without regard to whether the basic filing
fee or the processing and retention fee has been paid, the
basic filing fee or the processing and retention fee must
still be paid in a nonprovisional application, if any claim
for benefits under 35 U.S.C. 120, 121, or 365(c) based on
that application is made in a subsequently filed copending
nonprovisional application. 37 CFR 1.78(a)(1). See also MPEP
§ 601 and § 601.01(b).<

  37 CFR 1.53(e)(1) indicates that a patent application
will not be forwarded for examination on the merits until
all required parts have been received. 37 CFR 1.53(f)
indicates that international applications filed under the
Patent Cooperation Treaty which designate the United States
of America are considered to have a United States filing
date under PCT Article 11(3), except as provided in 35
U.S.C. 102(e), on the date the requirements of PCT Article
11(1) (i) to (iii) are met.

  Effective February 27, 1983, in accordance with the
provisions of 35 U.S.C. 111 and 37 CFR 1.53(b)(1), a filing
date is granted to an application for patent, which includes
at least a specification containing a description pursuant
to 37 CFR 1.71 and at least one claim pursuant to 37 CFR
1.75, and any drawing referred to in the specification or
required by 37 CFR 1.81(a), which is filed in the Patent and
Trademark Office and which names the actual inventor or
inventors pursuant to 37 CFR 1.41(a). If an application
which has been accorded a filing date does not include the
appropriate filing fee or oath or declaration, applicant
will be so notified and given a period of time within which
to file the missing parts to complete the application and to
pay the surcharge as set forth in 37 CFR 1.16(e) in order to
prevent abandonment of the application.

  Applicants should submit a copy of the notice(s) to file
missing parts and the notice(s) of incomplete applications
with the response submitted to the Patent and Trademark
Office.  Applicants  should  also  include  the  application
serial number on all correspondence to the Office. These
measures  will  aid  the  Office  in  matching  papers  to
applications,  thereby  expediting  the  processing  of
applications.

  In order for the Office to so notify the applicant, a
correspondence  address  must  also  be  provided  in  the
application. The address may be different from the Post
Office address of the applicant. For example, the address of
applicant's registered attorney or agent may be used as the
correspondence address. If applicant fails to provide the
Office with a correspondence address, the Office will be
unable to provide applicant with notification to complete
the application and to pay the surcharge as set forth in 37
CFR 1.16(e). In such a case, applicant will be considered to
have constructive notice as of the filing date that the
application must be completed within 2 months from the
filing date before abandonment occurs per 37 CFR 1.53(d)(1).
This time period may be extended pursuant to 37 CFR 1.136.

  The oath or declaration filed in response to such a
notice under 37 CFR 1.53(d)(1) must be executed by the
inventors named on filing unless a petition for correction
of inventorship complying with 37 CFR 1.48 is filed within
the time period set.

  The oath or declaration filed in response to such a
notice must identify the specification and any amendment
filed with the specification which is intended to be part of
the original disclosure. If an amendment is filed with the
oath or declaration filed after the filing date of the
application, it may be identified in the oath or declaration
but may not include new matter. No new matter may be
included after the filing date of the application. See MPEP
§ 608.04(b). If the oath or declaration improperly refers to
an amendment containing new matter, a supplemental oath or
declaration will be required pursuant to 37 CFR 1.67(b),
deleting the reference to the amendment containing new
matter. If an amendment is filed on the same day that the
application filed under 37 CFR 1.53(b)(1) is filed and is
referred to in the original oath or declaration filed with
or after the application, it constitutes a part of the
original application papers and the question of new matter
is not considered. Similarly, if the application papers are
altered prior to execution of the oath or declaration and
the  filing  of  the  application,  new  matter  is  not  a
consideration since the alteration is considered as part of
the original disclosure.

  An amendment which adds additional disclosure filed with
a request for a continuation - in - part application under
37 CFR 1.62 is automatically considered a part of the
original disclosure of the application by virtue of the
rule. Therefore, the oath or declaration filed in such an
application must identify the amendment adding additional
disclosure as one of the papers which the inventor(s) has
"reviewed and understands" in order to comply with 37 CFR
1.63. If the original oath or declaration submitted in a
continuation - in - part application filed under 37 CFR 1.62
does not contain a reference to the amendment filed with the
request for an application under 37 CFR 1.62, the examiner
must require a supplemental oath or declaration referring to
the amendment.

  37 CFR 1.63 requires that an oath or declaration identify
the specification to which it is directed. The declaration
form suggested by the Office includes spaces for filling in
the names of the inventors, title of invention, application
number,  filing  date,  foreign  priority  application

information  and  United  States  priority  application
information. While this information should be provided, it
is not essential that all of these spaces be filled in in
order to adequately identify the specification in compliance
with 37 CFR 1.63(a)(2).

  The following combinations of information supplied in an
oath or declaration filed on the application filing date
with  a  specification  are  acceptable  as  minimums  for
identifying a specification and compliance with any one of
the  items  below  will  be  accepted  as  complying  with
identification requirement of 37 CFR 1.63:

 (1)  name  of  inventor(s),  and  reference  to  an
attached specification which is both attached to the oath or
declaration at the time of execution and submitted with the
oath or declaration on filing;

 (2) name of inventor(s), and attorney docket number
which was on the specification as filed; or

 (3) name of inventor(s), and title which was on the
specification as filed.

  Filing dates are now granted on applications filed
without an oath or declaration in compliance with 37 CFR
1.63, the oath or declaration being filed later with a
surcharge.  The  following  combinations  of  information
supplied in an oath or declaration filed after the filed
date  are  acceptable  as  minimums  for  identifying  a
specification and compliance with any one of the items below
will  be  accepted  as  complying  with  the  identification
requirement of 37 CFR 1.63:

 (1) name of inventor(s), and application number
(consisting of the series code and the serial number; e.g.,
08/123,456);

 (2) name of inventor(s), serial number and filing
date;

 (3) name of inventor(s) and attorney docket number
which was on the specification as filed;

 (4) name of inventor(s), title which was on the
specification as filed and filing date;

 (5) name of inventor(s), title which was on the
specification  as  filed  and  reference  to  an  attached
specification  which  is  both  attached  to  the  oath  or
declaration at the time of execution and submitted with the
oath or declaration; or

 (6) name of inventor(s), title which was on the
specification as filed and accompanied by a cover letter
accurately identifying the application for which it was
intended by either the application number (consisting of the
series code and the serial number; e.g., 08/123,456), or
serial number and filing date. Absent any statement(s) to
contrary, it will be presumed that the application filed in
the PTO is the application which the inventor(s) executed by
signing the oath or declaration.

  Any specification that is filed attached to an oath or
declaration on a date later than the application filing date

will not be compared with the specification submitted on
filing.  Absent  any  statement(s)  to  the  contrary,  the
"attached" specification will be presumed to be a copy of
the specification and any amendments thereto which were
filed in the Office in order to obtain a filing date for the
application.

  Any variance from the above guidelines will only be
considered upon the filing of a petition for waiver of the
rules under 37 CFR 1.183 accompanied by a petition fee (37
CFR 1.17(h)).

  Further an oath or declaration attached to a cover
letter referencing an incorrect application may not become
associated with the correct application and, therefore,
could result in the abandonment of the correct application.

  Supplemental oaths or declarations in accordance with 37
CFR 1.67 will be required in applications in which the oaths
or  declarations  are  not  in  compliance  with  the  other
requirements  of  37  CFR  1.63  but  contain  sufficient
information to identify the specifications to which they
apply as detailed above.

  A copy, such as a photocopy or facsimile transmission,
of an originally executed oath or declaration is acceptable
and may be filed (see MPEP § 502.01). In the event that a
copy of the original is filed, the original should be
retained as evidence of authenticity. If a question of
authenticity arises, the Patent and Trademark Office may
require submission of the original. See 37 CFR 1.4(d)(2).

  See MPEP § 1896 for the identification requirements for
a declaration filed in a U.S. national stage application
filed under 35 U.S.C. 371.

  The periods of time within which applicant must complete
the application may be extended under the provisions of 37
CFR 1.136. Applications which are not completed in a timely
manner will be abandoned.

601.01(b)  Provisional Applications Filed Under 35
U.S.C. 111(b) [R - 3]

  A provisional application will be given a filing date in
accordance with 37 CFR 1.53(b)(2) as of the date the written
description, any necessary drawings and the names of all
inventors  are  filed  in  the  Office.  The  filing  date
requirements for a provisional application set forth in
paragraph (b)(2) parallel the requirements set forth in
paragraph  (b)(1),  except  that  no  claim  is  required.
Amendments,  other  than  those  required  to  make  the
provisional application comply with applicable regulations,
are not permitted after the filing date of the provisional
application.

  When the specification, drawing, or name or names of the
actual inventors are omitted, 37 CFR 1.53(c) requires that
the applicant be notified and given a time period in which
to submit the missing element to complete the filing. The
filing  date  will  become  the  date  of  the  completed
submission. If the omission is not provided within the
prescribed  time,  the  application  will  be  returned  or
otherwise disposed of and any fee submitted will be refunded
less the handling fee set forth in 37 CFR 1.21(n).

  37  CFR  1.53(b)(2)(i)  requires  all  provisional
applications be filed with a cover sheet identifying the
application as a provisional application. The Office will
treat an application as having been filed under paragraph
(b)(1), unless the application is clearly identified as a
provisional application. A provisional application, which is
identified as such, but which does not have a complete cover
sheet as required by 37 CFR 1.51(b)(2)(i) will be treated as
a provisional application. However, the complete cover sheet
and a surcharge will be required to be submitted at a later
date in conformance with 37 CFR 1.53(d)(2).

  When  the  provisional  application  does  not  have  a
complete cover sheet or the appropriate fee, the applicant
will be notified pursuant to 37 CFR 1.53(d)(2) and given a
time period in which to provide the necessary fee or cover
sheet and to pay the surcharge as set forth in 37 CFR
1.16(l) in order to prevent abandonment of the application.
The time period will usually be set at**>2 months< from the
date of notification **. This time period is subject to the
provisions of 37 CFR 1.136(a). If the filing fee is not
timely paid, the provisional application will be disposed
of. ** If no correspondence address has been provided,
applicant has 2 months from the filing date to file the
basic filing fee, cover sheet, and to pay the surcharge as
set forth in 37 CFR 1.16(l) in order to prevent abandonment
of the provisional application.

 >  The PTO is waiving, sua sponte , the requirement of
37 CFR 1.53(d)(2) for payment of the basic filing fee in a
provisional application before any copies of the application
will be provided by the PTO. Copies of a provisional
application will be provided by the PTO upon request at the
usual cost without regard to whether the basic filing fee
has been paid in the application. While copies of an
application will be provided without regard to whether the
basic filing fee has been paid, the basic filing fee must
still be paid in a provisional application, if any claim for
benefits under 35 U.S.C. 119(e) based on that application is
made  in  a  subsequently  filed  copending  nonprovisional
application. 37 CFR 1.78(a)(3). See also MPEP § 601 and §
601.01(a).<

  Section 1.53(c) requires that any request for review of
a refusal to accord an application a filing date be made by
way of a petition accompanied by the fee set forth in 37 CFR
1.17(q) (see MPEP § 506.02).

**>601.01(c)  Conversion to a Provisional Application [R -
2]<

  An application filed under 37 CFR 1.53(b)(1) may be
converted to a provisional application in accordance with
the  procedure  described  in  37  CFR  1.53(b)(2)(ii).  The
procedure requires the filing of a petition requesting the
conversion and the petition fee set forth in 37 CFR 1.17(q).
Filing of the petition in the application is required prior
to the abandonment of the 37 CFR 1.53(b)(1)application, the
payment of the issue fee, the expiration of 12 months after
the filing date of the 37 CFR 1.53(b)(1) application, or the
filing of a request for a statutory invention registration
under 37 CFR 1.293, whichever event is earlier. The grant of
any such petition does not entitle applicant to a refund of
the fees properly paid in the application filed under 37 CFR

1.53(b)(1).

>601.01(d)  Application Filed Without All Pages of
Specification [R - 2]

  The Initial Application Examination Division reviews
application papers to determine whether all of the pages of
specification  are  present  in  the  application.  If  the
application is filed without all of the page(s) of the
specification,  but  containing  something  that  can  be
construed as a written description, at least one drawing
figure, if necessary under 35 U.S.C. 113 (first sentence),
the names of all the inventors, and, in a nonprovisional
application, at least one claim, the Initial Application
Examination Division will mail a "Notice of Omitted Items"
indicating that the application papers so deposited have
been accorded a filing date, but are lacking some page(s) of
the specification.

  The mailing of a "Notice of Omitted Items" will permit
the  applicant  to  either:  (1)  promptly  establish  prior
receipt in the PTO of the page(s) at issue (generally by way
of a date - stamped postcard receipt (MPEP § 503)); or (2)
promptly submit the omitted page(s) in a nonprovisional
application and accept the date of such submission as the
application filing date. An applicant asserting that the
page(s)  was  in  fact  deposited  in  the  PTO  with  the
application papers must, within 2 months from the date of
the "Notice of Omitted Item(s)", file a petition under 37
CFR 1.53(c) with the petition fee set forth in 37 CFR
1.17(i) (37 CFR 1.17(q) for a provisional application),
along with evidence of such deposit (37 CFR 1.181(f)). The
petition fee will be refunded if it is determined that the
page(s) was in fact received by the PTO with the application
papers deposited on filing. An applicant desiring to submit
the omitted page(s) in a nonprovisional application and
accept the date of such submission as the application filing
date must, within 2 months from the date of the "Notice of
Omitted Item(s)", file any omitted page(s) with an oath or
declaration  in  compliance  with  37  CFR  1.63  and  1.64
referring to such page(s) and a petition under 37 CFR 1.182
with  the  petition  fee  set  forth  in  37  CFR  1.17(h),
requesting the later filing date (37 CFR 1.181(f).

  An applicant willing to accept the application as
deposited in the PTO need not respond to the "Notice of
Omitted Items," and the failure to file a petition under 37
CFR 1.53(c) or 37 CFR 1.182 (and the required petition fee)
as discussed above within 2 months of the date of the
"Notice of Omitted Item(s)" (37 CFR 1.181(f)) will be
treated as constructive acceptance by applicant of the
application as deposited in the PTO. Amendment of the
specification is required in a nonprovisional application to
renumber the pages consecutively and cancel any incomplete
sentences caused by the absence of the omitted page(s). Such
amendment  should  be  by  way  of  preliminary  amendment
submitted prior to the first Office action to avoid delays
in the prosecution of the application.

  If the application does not contain anything that can be
construed as a written description, the Initial Application
Examination  Division  will  mail  a  Notice  of  Incomplete
Application (PTO - 1123) indicating that the application
lacks the specification required by 35 U.S.C. 112. Applicant
may file a petition under 37 CFR 1.53(c) with the petition

fee set forth in 37 CFR 1.17(i) (37 CFR 1.17(q) for a
provisional application), asserting that: (1) the missing
specification was submitted; or (2) the application papers
as deposited contain an adequate written description under
35 U.S.C. 112. The petition under 37 CFR 1.53(c) must be
accompanied by sufficient evidence (37 CFR 1.181(b)) to
establish applicant's entitlement to the requested filing
date ( e.g. , a date - stamped postcard receipt (MPEP § 503)
to establish prior receipt in the PTO of the missing
specification).  Alternatively,  applicant  may  submit  the
omitted specification, including at least one claim in a
nonprovisional  application,  accompanied  by  an  oath  or
declaration  in  compliance  with  37  CFR  1.63  and  1.64
referring to the specification being submitted and accept
the date of such submission as the application filing date.

  Original claims form part of the original disclosure and
provide their own written description. See  In re Anderson ,
471 F.2d 1237, 176 USPQ 331 (CCPA 1973). As such, an
application that contains at least one claim, but does not
contain  anything  which  can  be  construed  as  a  written
description of such claim(s), would be unusual.

  In  instances  in  which  a  "Notice  of  Incomplete
Application" has been mailed, further action by applicant is
necessary for the application to be accorded a filing date.
As such, the application will be retained in the Initial
Application  Examination  Division  to  await  such  action.
Unless applicant either completes the application or files a
petition under 37 CFR 1.53(c) with the petition fee set
forth in 37 CFR 1.17(i) or 1.17(q), within the period set in
the "Notice of Incomplete Application," the application will
be processed as an incomplete application under 37 CFR
1.53(c).

  In instances in which a "Notice of Omitted Items" has
been mailed, the application will be retained in the Initial
Application Examination Division for a period of 2 months
from the mailing date of "Notice of Omitted Items" to permit
applicant to either: (1) establish prior receipt in the PTO
of the page(s) or drawing(s) at issue; or (2) promptly
submit the omitted page(s) or drawing(s) in a nonprovisional
application and accept the date of such submission as the
application filing date. As an applicant may, but is not
required to, respond to such a "Notice of Omitted Items,"
extensions of time under 37 CFR 1.136 will not be applicable
to this two - month time period.

  Unless applicant timely files a petition under 37 CFR
1.53(c)  or  1.182  with  the  required  petition  fee,  the
application will maintain the filing date as of the date of
de posit of the application papers in the PTO, and the
original application papers ( i.e. , the original disclosure
of the invention) will include only those application papers
present in the PTO on the date of deposit. Nonprovisional
applications that are complete under 37 CFR 1.51(a)(1) will
then be forwarded to the appropriate examining group for
examination of the application. Provisional applications
that are complete under 37 CFR 1.51(a)(2) will then be
forwarded to Files Repository. The current practice for
treating applications that are not complete under 37 CFR
1.51(a) will remain unchanged (37 CFR 1.53(d)).

  Any petition under 37 CFR 1.53(c) or 1.182 not filed
within the two - month period set in the "Notice of Omitted

Item(s)" may be dismissed as untimely. 37 CFR 1.181(f).
Under the adopted procedure, the PTO may strictly adhere to
the two - month period set forth in 37 CFR 1.181(f), and
dismiss as untimely any petition not filed within the two -
month period. This strict adherence to the two - month
period set forth in 37 CFR 1.181(f) is justified as such
applications will now be forwarded for examination at the
end of the two - month period. It is further justified in
instances in which applicant seeks to submit the omitted
page(s) or drawing(s) in a nonprovisional and request the
date of such submission as the application filing date as:
(1) according the application a filing date later than the
date of deposit may affect the date of expiration of any
patent issuing on the application due to the changes to 35
U.S.C. 154 contained in Public Law 103 - 465, § 532, 108
Stat. 4809 (1994); and (2) the filing of a continuation - in
- part application is a sufficiently equivalent mechanism
for adding additional subject matter to avoid the loss of
patent rights.

  The submission of omitted page(s) or drawing(s) in a
nonprovisional application and acceptance of the date of
such submission as the application filing date is tantamount
to simply filing a new application. Thus, applicants should
consider filing a new application as an alternative to
submitting a petition under 37 CFR 1.182 (with the petition
fee under 37 CFR 1.17(h)) with any omitted page(s) or
drawing(s),  which  is  a  cost  effective  alternative  in
instances in which a nonprovisional application is deposited
without filing fees. Likewise, in view of the relatively low
filing fee for provisional applications, and the PTO's
desire  to  minimize  the  processing  of  provisional
applications, the PTO will not grant petitions under 37 CFR
1.182 to accept omitted page(s) or drawing(s) and accord an
application filing date as of the date of such submission in
provisional applications. The applicant should simply file a
new completed provisional application.<

>601.01(e)  Nonprovisional Application Filed Without At
Least One Claim [R - 2]

  35 U.S.C. 111(a)(2) requires that an application for
patent include, inter alia , "a specification as prescribed
by section 112 of this title," and 35 U.S.C. 111(a)(4)
provides that the "filing date of an application shall be
the date on which the specification and any required drawing
are received in the Patent and Trademark Office." 35 U.S.C.
112,  first  paragraph,  provides,  in  part,  that  "[t]he
specification shall contain a written description of the
invention," and 35 U.S.C. 112, second paragraph, provides
that "[t]he specification shall conclude with one or more
claims particularly pointing out and distinctly claiming the
subject  matter  which  the  applicant  regards  as  his
invention." Also, the Court of Appeals for the Federal
Circuit stated in Litton Systems, Inc.  v.  Whirlpool Corp.
:

  Both  statute,  35  U.S.C.  111  [(a)],  and  federal
regulations,  37  CFR  1.51  [(a)(1)],  make  clear  the
requirement that an application for a patent must include .
. . a specification and claims . . The omission of any
one of these component parts makes a patent application
incomplete and thus not entitled to a filing date.

  728  F.2d  1423,  1437,  221  USPQ  97,  105  (Fed.  Cir.

1984)(citing Gearon  v . United States , 121 F.Supp 652,
654, 101 USPQ 460, 461 (Ct. Cl. 1954), cert. denied , 348
U.S. 942, 104 USPQ 409 (1955))(emphasis in the original).

  Therefore, in an application filed under 35 U.S.C.
111(a), a claim is a statutory requirement for according a
filing date to the application. 35 U.S.C. 162 and 171 make
35 U.S.C. 112 applicable to plant and design applications,
and 35 U.S.C. 162 specifically requires the specification in
a plant patent application to contain a claim. 35 U.S.C.
111(b)(2), however, provides that "[a] claim, as required by
the second through fifth paragraphs of section 112, shall
not be required in a provisional application." Thus, with
the exception of provisional applications filed under 35
U.S.C. 111(b), any application filed without at least one
claim is incomplete and not entitled to a filing date.

  If a nonprovisional application does not contain at
least one claim, a "Notice of Incomplete Application" will
be mailed to the applicant(s) indicating that no filing date
has been granted and setting a period for submitting a
claim. The filing date will be the date of receipt of at
least one claim. See In re Mattson , 208 USPQ 168 (Comm'r
Pat. 1980). An oath or declaration in compliance with 37 CFR
1.63 and 1.64 referring to the claim being submitted is also
required.

  As 37 CFR 1.53(b)(2)(ii) permits the conversion of an
application filed under 35 U.S.C. 111(a) to an application
under 35 U.S.C. 111(b), an applicant in an application,
other than for a design patent, filed under 35 U.S.C. 111(a)
on or after June 8, 1995, without at least one claim has the
alternative of filing a petition under 37 CFR 1.53(b)(2)(ii)
to convert such application into an application under 35
U.S.C. 111(b), which does not require a claim to be entitled
to its date of deposit as a filing date. Such a petition,
however, must be filed prior to the expiration of 12 months
after the date of deposit of the application under 35 U.S.C.
111(a), and comply with the other requirements of 37 CFR
1.53(b)(2)(ii). See MPEP § 601.01(c).

  The treatment of an application subsequent to the
mailing of a "Notice of Incomplete Application" is discussed
in MPEP § 601.01(d).<

>601.01(f)  Applications Filed Without Drawings [R - 2]

  35 U.S.C. 111(a)(2)(B) and 35 U.S.C. 111(b)(2)(B) each
provide, in part, that an "application shall include . . a
drawing as prescribed by section 113 of this title" and 35
U.S.C. 111(a)(4) and 35 U.S.C. 111(b)(4) each provide, in
part, that the "filing date . . shall be the date on which
. . . any required drawing are received in the Patent and
Trademark Office." 35 U.S.C. 113 (first sentence) in turn
provides that an "applicant shall furnish a drawing where
necessary for the understanding of the subject matter sought
to be patented."

  Applications  filed  without  drawings  are  initially
inspected to determine whether a drawing is referred to in
the  specification,  and  if  not,  whether  a  drawing  is
necessary for the understanding of the invention. 35 U.S.C.
113 (first sentence).

  It has been PTO practice to treat an application that

contains  at  least  one  process  or  method  claim  as  an
application for which a drawing is not necessary for an
understanding of the invention under 35 U.S.C. 113 (first
sentence).  The  same  practice  has  been  followed  in
composition applications. Other situations in which drawings
are usually not considered necessary for the understanding
of the invention under 35 U.S.C. 113 (first sentence) are:

  I.  Coated articles or products : where the invention
resides solely in coating or impregnating a conventional
sheet ( e.g. , paper or cloth, or an article of known and
conventional  character  with  a  particular  composition),
unless significant details of structure or arrangement are
involved in the article claims;

  II.  Articles made from a particular material or
composition : where the invention consists in making an
article of a particular material or composition, unless
significant details of structure or arrangement are involved
in the article claims;

  III.  Laminated  structures  :  where  the  claimed
invention involves only laminations of sheets (and coatings)
of  specified  material  unless  significant  details  of
structure or arrangement (other than the mere order of the
layers) are involved in the article claims; or

  IV. Articles, apparatus, or systems where sole
distinguishing feature is presence of a particular material
: where the invention resides solely in the use of a
particular material in an otherwise old article, apparatus
or system recited broadly in the claims, for example:

 (a) A hydraulic system distinguished solely by the
use therein of a particular hydraulic fluid;

 (b)  Packaged  sutures  wherein  the  structure  and
arrangement of the package are conventional and the only
distinguishing feature is the use of a particular material.

  A nonprovisional application having at least one claim,
or  a  provisional  application  having  at  least  some
disclosure, directed to the subject matter discussed above
for which a drawing is usually not considered essential for
a  filing  date,  not  describing  drawing  figures  in  the
specification, and filed without drawings will simply be
processed  for  examination,  so  long  as  the  application
contains something that can be construed as a written
description  and  the  names  of  all  the  inventors.  A
nonprovisional application having at least one claim, or a
provisional application having at least some disclosure,
directed to the subject matter discussed above for which a
drawing is usually not considered essential for a filing
date, describing drawing figure(s) in the specification, but
filed without drawings will be treated as an application
filed without all of the drawing figures referred to in the
specification as discussed in MPEP § 601.01(g), so long as
the application contains something that can be construed as
a written description and the names of all the inventors. In
a  situation  in  which  the  appropriate  examining  group
determines that drawings are necessary under 35 U.S.C. 113
(first sentence) the filing date issue will be reconsidered
by the PTO. The application will be returned to Initial
Application Examination Division for mailing of a "Notice of
Incomplete Application."

  If a nonprovisional application does not have at least
one claim directed to the subject matter discussed above for
which a drawing is usually not considered essential for a
filing date, or a provisional application does not have at
least  some  disclosure  directed  to  the  subject  matter
discussed  above  for  which  a  drawing  is  usually  not
considered essential for a filing date, and is filed without
drawings, the Initial Application Examination Division will
mail a "Notice of Incomplete Application" indicating that
the application lacks drawings and that 35 U.S.C. 113 (first
sentence)  requires  a  drawing  where  necessary  for  the
understanding of the subject matter sought to be patented.

  Applicant may file a petition under 37 CFR 1.53(c) with
the petition fee set forth in 37 CFR 1.17(i) (37 CFR 1.17(q)
for a provisional application), asserting that (1) the
drawing(s) at issue was submitted, or (2) the drawing(s) is
not necessary under 35 U.S.C. 113 (first sentence) for a
filing date. The petition must be accompanied by sufficient
evidence  to  establish  applicant's  entitlement  to  the
requested filing date ( e.g. , a date - stamped postcard
receipt (MPEP § 503) to establish prior receipt in the PTO
of the drawing(s) at issue). Alternatively, applicant may
submit drawing(s) accompanied by an oath or declaration in
compliance with 37 CFR 1.63 and 1.64 referring to the
drawing(s) being submitted and accept the date of such
submission as the application filing date.

  In  design  applications,  the  Initial  Application
Examination Division will mail a "Notice of Incomplete
Application"  indicating  that  the  application  lacks  the
drawings required under 35 U.S.C. 113 (first sentence). The
applicant may: (1) promptly file a petition under 37 CFR
1.53(c) with the petition fee set forth in 37 CFR 1.17(i),
asserting that the missing drawing(s) was submitted; or (2)
promptly  submit  drawing(s)  accompanied  by  an  oath  or
declaration in compliance with 37 CFR 1.63 and 1.64 and
accept the date of such submission as the application filing
date. 37 CFR 1.154(a) provides that the claim in a design
application "shall be in formal terms to the ornamental
design for the article (specifying name) as shown, or as
shown and described." As such, petitions under 37 CFR
1.53(c) asserting that drawings are unnecessary under 35
U.S.C. 113 (first sentence) for a filing date in a design
application will not be found persuasive.

  The treatment of an application subsequent to the
mailing of a "Notice of Incomplete Application" is discussed
in MPEP § 601.01(d).<

>601.01(g)  Applications Filed Without All Figures of
Drawings [R - 2]

  The Initial Application Examination Division reviews
application papers to determine whether all of the figures
of the drawings that are mentioned in the specification are
present in the application. If the application is filed
without all of the drawing figure(s) referred to in the
specification, and the application contains something that
can be construed as a written description, at least one
drawing, if necessary under 35 U.S.C. 113 (first sentence),
the names of all the inventors, and, in a nonprovisional
application, at least one claim, the Initial Application
Examination Division will mail a "Notice of Omitted Item(s)"

indicating that the application papers so deposited have
been accorded a filing date, but are lacking some of the
figures of drawings described in the specification.

  The mailing of a "Notice of Omitted Item(s)" will permit
the  applicant  to  either:  (1)  promptly  establish  prior
receipt in the PTO of the drawing(s) at issue (generally by
way of a date - stamped postcard receipt (MPEP § 503)); or
(2)  promptly  submit  the  omitted  drawing(s)  in  a
nonprovisional application and accept the date of such
submission as the application filing date. An applicant
asserting that the drawing(s) was in fact deposited in the
PTO with the application papers must, within 2 months from
the date of the "Notice of Omitted Item(s)," file a petition
under 37 CFR 1.53(c) with the petition fee set forth in 37
CFR  1.17(i)  and  37  CFR  1.17(q)  for  a  provisional
application, along with evidence of such deposit (37 CFR
1.181(f)). The petition fee will be refunded if it is
determined that the drawing(s) was in fact received by the
PTO with the application papers deposited on filing. An
applicant desiring to submit the omitted drawings in a
nonprovisional application and accept the date of such
submission as the application filing date must, within 2
months from the date of the "Notice of Omitted Item(s)",
file any omitted drawing(s) with an oath or declaration in
compliance with 37 CFR 1.63 and 1.64 referring to such
drawing(s) and a petition under 37 CFR 1.182 with the
petition fee set forth in 37 CFR 1.17(h), requesting the
later filing date (37 CFR 1.181(f)).

  An applicant willing to accept the application as
deposited in the PTO need not respond to the "Notice of
Omitted Item(s)," and the failure to file a petition under
37 CFR 1.53(c) or 37 CFR 1.182 with the required petition
fee as discussed above within 2 months of the date of the
"Notice of Omitted Item(s)" (37 CFR 1.181(f)) will be
treated as constructive acceptance by applicant of the
application as deposited in the PTO. Amendment of the
specification is required in a nonprovisional application to
cancel all references to the omitted drawing, both in the
brief  and  detailed  descriptions  of  the  drawings  and
including any reference numerals shown only in the omitted
drawings. In addition, a separate letter is required in a
nonprovisional application to renumber the drawing figures
consecutively (showing the proposed changes in red ink), if
necessary, and amendment of the specification is required to
correct the references to the drawing figures to correspond
with any relabelled drawing figures, both in the brief and
detailed descriptions of the drawings. Such amendment and
correction to the drawing figures, if necessary, should be
by way of preliminary amendment submitted prior to the first
Office action to avoid delays in the prosecution of the
application.

  The treatment of an application subsequent to the
mailing of a "Notice of Omitted Item(s)" is discussed in
MPEP § 601.01(d).<

601.01(h)  Forms [R - 3]

  The following forms used by Application Branch to notify
applicants of defects are reproduced on the following pages.
"Notice to File Missing Parts of Application - Filing Date
Granted" Form PTO - 1533; "Notice to File Missing Parts of
Application - No Filing Date," Form PTO - 1532; "Notice of

Informal Application" Form PTO - 152; "Notice of Incomplete
Application," Form PTO - 1123; and "Notice of * >Improper<
Application Filed ** >Under< 37 CFR 1.60," Form PTO - 1534;
"Notice to File Missing Parts of Application Filed Under 37
CFR 1.60 Filing Date Granted" Form PTO - 1607; "Notice to
File Missing Parts of Application Filed Under 37 CFR 1.60,
No Filing Date," Form PTO - 1608; "Notice of Improper FWC
Filing under 37 CFR 1.62, No Filing Date Granted," Form PTO
-*>1673<; "Notice of Omitted Item(s)," Form PTO - 1669;
"Notice of Omitted Item(s) in a Provisional Application
Filed Under 37 CFR 1.53(b)(2)," Form PTO - 1672.

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601.02  Power of Attorney or Authorization of Agent

  The attorney's or agent's full post office address
(including ZIP code number) must be given in every power of
attorney or authority of agent. The telephone number of the
attorney or agent should also be included in the power. The
prompt  delivery  of  communications  will  thereby  be
facilitated.

  Usually a power of attorney or authorization of agent is
incorporated in the oath or declaration form. (See MPEP §
402.)

601.03  Change of Correspondence Address [R - 3]

  Where an attorney or agent of record (or applicant, if
he or she is prosecuting the application pro se ) changes
his or her correspondence address, he or she is responsible
for promptly notifying the Patent and Trademark Office of
the new correspondence address (including ZIP Code number).
The notification should also include his or her telephone
number.

  * >Unless the correspondence address is designated as
the address associated with a Customer Number, a< separate
notification must be filed in each application for which a
person  is  intended  to  receive  communications  from  the
Office. >See MPEP § 403 for Customer Number Practice.< In
those instances where a change in the correspondence address
of  a  registered  attorney  or  agent  is  necessary  in  a
plurality of applications, the notification filed in each
application may be a reproduction of a properly executed,
original notification. The original notice may either be
sent  to  the  Office  of  Enrollment  and  Discipline  as
notification to the Attorney's Roster of the change of
address,  or  may  be  filed  in  one  of  the  applications
affected, provided that the notice includes an authorization
for the public to inspect and copy the original notice in
the event one of the applications containing a copy matures
into a patent and the application containing the original
paper  is  either  pending  or  has  become  abandoned.
Alternatively, the paper containing the original signature
may be retained by applicant. See MPEP § 502.02. The copies
submitted in each affected application must identify where
the original paper is located.

  See MPEP § 711.03(c) for treatment of petitions to
revive applications abandoned as a consequence of failure to
timely  receive  an  Office  action  addressed  to  the  old
correspondence address.

  The required notification of change of correspondence
address need take no particular form. However, it should be
provided in a manner calling attention to the fact that a
change of address is being made. Thus, the mere inclusion,
in a paper being filed for another purpose, of an address
which  is  different  from  the  previously  provided
correspondence address, without mention of the fact that an
address  change  is  being  made  would  not  ordinarily  be
recognized  or  deemed  as  instructions  to  change  the
correspondence address on the file record.

  The obligation (see 37 CFR 10.11) of a registered
attorney or agent to notify the Attorney's Roster by letter
of any change of his or her address for entry on the
register is separate from the obligation to file a notice of
change of address filed in individual applications. See MPEP
§ 402.

601.04  National Stage Requirements of the United States
as a Designated Office [R - 1]

  See MPEP Chapter 1800, especially MPEP §**>1893.01< for
requirements for entry into the national stage before the
Designated  Office  or  Elected  Office  under  the  Patent
Cooperation Treaty (PCT).

602  Original Oath or Declaration [R - 3]

 35 U.S.C. 25.  Declaration in lieu of oath.

  (a) The Commissioner may by rule prescribe that any
document to be filed in the Patent and Trademark Office and
which is required by any law, rule, or other regulation to
be under oath may be subscribed to by a written declaration
in  such  form  as  the  Commissioner  may  prescribe,  such
declaration to be in lieu of the oath otherwise required.

  (b)  Whenever  such  written  declaration  is  used,  the
document  must  warn  the  declarant  that  willful  false
statements  and  the  like  are  punishable  by  fine  or
imprisonment, or both (18 U.S.C. 1001).

 35 U.S.C. 26.  Effect of defective execution.

  Any document to be filed in the Patent and Trademark
Office and which is required by any law, rule, or other
regulation to be executed in a specified manner may be
provisionally  accepted  by  the  Commissioner  despite  a
defective execution, provided a properly executed document
is submitted within such time as may be prescribed.

 35 U.S.C. 115.  Oath of the applicant.

  The applicant shall make oath that he believes himself
to be the original and first inventor of the process,
machine,  manufacture,  or  composition  of  matter,  or
improvement thereof, for which he solicits a patent; and
shall state of what country he is a citizen. Such oath may
be  made  before  any  person  within  the  United  States
authorized by law to administer oaths, or, when made in a
foreign country, before any diplomatic or consular officer
of the United States authorized to administer oaths, or
before any officer having an official seal and authorized to
administer  oaths  in  the  foreign  country  in  which  the
applicant may be, whose authority is proved by certificate
of a diplomatic or consular officer of the United States, or
apostille of an official designated by a foreign country
which, by treaty or convention, accords like effect to
apostilles of designated officials in the United States.
Such oath is valid if it complies with the laws of the state
or country where made. When the application is made as
provided in the title by a person other than the inventor,
the oath may be so varied in form that it can be made by
him.

 37 CFR 1.63.  Oath or declaration.

  (a) An oath or declaration filed under § 1.51(a)(1)(ii)
as a part of a nonprovisional application must:

  (1) Be executed in accordance with either § 1.66 or §
1.68;

  (2) Identify the specification to which it is directed;

  (3) Identify each inventor and the residence and country
of citizenship of each inventor; and

  (4) State whether the inventor is a sole or joint
inventor of the invention claimed.

  (b) In addition to meeting the requirements of paragraph
(a), the oath or declaration must state that the person
making the oath or declaration,

  (1) Has reviewed and understands the contents of the
specification, including the claims, as amended by any
amendment  specifically  referred  to  in  the  oath  or
declaration;

  (2) Believes the named inventor or inventors to be the
original and first inventor or inventors of the subject

matter which is claimed and for which a patent is sought;
and

  (3) Acknowledges the duty to disclose to the Office all
information  known  to  the  person  to  be  material  to
patentability as defined in § 1.56.

  (c) In addition to meeting the requirements of paragraphs
(a) and (b) of this section, the oath or declaration in any
application in which a claim for foreign priority is made
pursuant to § 1.55 must identify the foreign application for
patent  or  inventor's  certificate  on  which  priority  is
claimed, and any foreign application having a filing date
before that of the application on which priority is claimed,
by specifying the application number, country, day, month
and year of its filing.

  (d) In any continuation - in - part application filed
under the conditions specified in 35 U.S.C. 120 which
discloses and claims subject matter in addition to that
disclosed in the prior copending application, the oath or
declaration must also state that the person making the oath
or declaration acknowledges the duty to disclose to the
Office all information known to the person to be material to
patentability as defined in § 1.56, which became available
between the filing date of the prior application and the
national  or  PCT  international  filing  date  of  the
continuation - in - part application.

 37 CFR 1.68.  Declaration in lieu of oath.

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

 18 U.S.C. 1001.  Statements or entries generally.

  Whoever, in any matter within the jurisdiction of any
department or agency of the United States knowingly and
willfully falsifies, conceals, or covers up by any trick,
scheme, or device a material fact, or makes any false,
fictitious or fraudulent statements or representations, or
makes or uses any false writing or document knowing the same
to contain any false, fictitious or fraudulent statement or
entry, shall be fined not more than $10,000 or imprisoned
not more than five years, or both.

  STATUTORY DECLARATIONS

  Patent and Trademark Office personnel are authorized to
accept a statutory declaration under 28 U.S.C. 1746 filed in
the Patent and Trademark Office in lieu of an "oath" or
declaration under 35 U.S.C. 25 and 37 CFR 1.68, provided
that the statutory declaration otherwise complies with the
requirements of law.

  Section 1746 of Title 28 of the United States Code
provides:

  Whenever, under any law of the United States or under
any rule, regulation, order, or requirement made pursuant to
law, any matter is required to be supported, evidenced,
established, or proved by sworn declaration, verification,
certificate, statement, oath or affidavit, in writing of the
person making the same (other than a deposition, or an oath
of office, or an oath required to be taken before a
specified official other than a notary public), such matter
may, with like force and effect, be supported, evidenced,
established,  or  proved  by  the  unsworn  declaration,
certificate, verification, or statement, in writing of such
person which is subscribed by him, as true under penalty of
perjury, and dated, in substantially the following form:

  [1] If executed without the United States:

  "I declare (or certify, verify, or state) under penalty
of perjury under the laws of the United States of America
that the foregoing is true and correct. Executed on (date).

  (Signature)."

  [2]  If  executed  within  the  United  States  its
territories, possessions, or commonwealths:

  "I declare (or certify, verify, or state) under penalty
of perjury that the foregoing is true and correct. Executed
on (date).

  (Signature)."

  Oaths and declarations submitted in applications filed
after May 1, 1975 must make reference to applications for
inventor's certificates on which priority is claimed and any
filed prior to the filing date of an application on which
priority is claimed.

  A 37 CFR 1.68 declaration need not be ribboned to the
other papers, even if signed in a country foreign to the
United States. When a declaration is used, it is unnecessary
to appear before any official in connection with the making
of the declaration. It must, however, since it is an
integral part of the application, be maintained together
therewith.

  By statute, 35 U.S.C. 25, the Commissioner has been
empowered to prescribe instances when a written declaration
may be accepted in lieu of the oath for "any document to be
filed in the Patent and Trademark Office".

  The filing of a written declaration is acceptable in
lieu of an original application oath that is informal.

  If all foreign applications have been filed within 12
months of the U.S. filing date, applicant is required only
to recite the first such foreign application of which
priority is claimed, and it should be clear that the foreign
application  referred  to  is  the  first  filed  foreign
application. The applicant is required to recite all foreign

applications  filed  prior  to  the  application  on  which
priority is claimed. It is required to give the foreign
serial number and name of the country or office in which
filed, as well as the filing date of the first filed foreign
application.

  In the oath, the jurat must be filled out, and the word
"sole" or "only" must appear if there is but one inventor,
and "joint" if two or more inventors.

  When  joint  inventors  execute  separate  oaths  or
declarations, each oath or declaration should make reference
to the fact that the affiant is a joint inventor together
with each of the other inventors indicating them by name.
This may be done by stating that he or she does verily
believe himself or herself to be the original, first and
joint inventor together with "A or A & B, etc." as the facts
may be.

  A seal is usually impressed on an oath. See MPEP § 604
and § 604.01 and 37 CFR 1.66. However, oaths executed in
many  states  including  Alabama,  Louisiana,  Maryland,
Massachusetts, New Jersey, New York, Rhode Island, South
Carolina, and Virginia need not be impressed with a seal.

  If a claim is presented for matter not originally
claimed or embraced in the original statement of invention
in the specification a supplemental oath or declaration is
required, 37 CFR 1.67, MPEP § 603.

  A provisional application does not require an oath or
declaration to be complete. See 37 CFR 1.51(a)(2).

  The following form paragraphs may be used to indicate
errors in the oath or declaration.

¶ 6.05  Oath or Declaration Defective

  The oath or declaration is defective. A new oath or
declaration in compliance with 37 CFR 1.67(a) identifying
this application by Application Number and filing date is
required. See MPEP § § 602.01 and 602.02.

  The oath or declaration is defective because:

 Examiner Note :

  1. One or more of the appropriate paragraphs 6.05.01 to
6.05.17 must follow this paragraph.

  2. If none of the paragraphs apply, then an appropriate
explanation  of  the  defect  should  be  given  immediately
following this paragraph.

  > ¶  6.05.01  Improper Execution

  It was not executed in accordance with either 37 CFR
1.66 or 1.68.

 Examiner Note:

  This paragraph must be preceded by form paragraph 6.05.<

¶ 6.05.04  Sole or Joint Designation Omitted

  It does not state whether the inventor is a sole or
joint inventor of the invention claimed.

 Examiner Note:

  This paragraph must be preceded by paragraph 6.05.

¶ 6.05.05  "Reviewed and Understands" Statement Omitted

  It does not state that the person making the oath or
declaration has reviewed and understands the contents of the
specification, including claims, as amended by any amendment
specifically referred to in the oath or declaration.

 Examiner Note:

  This paragraph must be preceded by paragraph 6.05.

¶ 6.05.06  Original and First Omitted

  It does not state that the person making the oath or
declaration believes the named inventor or inventors to be
the original and first inventor or inventors of the subject
matter which is claimed and for which a patent is sought.

 Examiner Note:

  This paragraph must be preceded by paragraph 6.05.

¶ 6.05.07  Duty of Disclosure Omitted

  It does not state that the person making the oath or
declaration acknowledges the duty to disclose to the Office
all information known to the person to be material to
patentability as defined in 37 CFR 1.56.

 Examiner Note:

  This paragraph must be preceded by paragraph 6.05.

¶ 6.05.08  Identification of Foreign Applications Omitted

  It does not identify the foreign application for patent
or inventor's certificate on which priority is claimed
pursuant to 37 CFR 1.55, and any foreign application having
a filing date before that of the application on which
priority is claimed, by specifying the application number,
country, day, month and year of filing.

 Examiner Note:

  This paragraph must be preceded by paragraph 6.05.

¶ 6.05.09  Duty to Disclose in C - I-P Omitted

  It does not state that the person making the oath or
declaration in a continuation - in - part application filed
under the conditions specified in 35 U.S.C. 120 which
discloses and claims subject matter in addition to that
disclosed in the prior copending application, acknowledges
the duty to disclose to the Office all information known to
the person to be material to patentability as defined in 37
CFR 1.56 which became available between the filing date of
the prior application and the national or PCT international
filing date of the continuation - in - part application.

 Examiner Note:

  This paragraph must be preceded by paragraph 6.05.

¶ 6.05.15  Not in Permanent Ink

  The[1] is not in permanent ink, or its equivalent in
quality, as required under 37 CFR 1.52(a).

 Examiner Note:

  1.  In  bracket  1,  insert  either  signature  or
oath/declaration.

  2. This paragraph must be preceded by paragraph 6.05.

  3. If other portions of the disclosure are not in
permanent ink, use paragraph 6.32.

¶ 6.05.16  Non - Initialed Alterations

  Non - initialed alterations have been made to the oath
or declaration (see 37 CFR 1.52(c) **).

 Examiner Note:

  This paragraph must be preceded by paragraph 6.05.

¶ 6.05.17  Declaration Clause Omitted

  The clause regarding "willful false statements ...."
required by 37 CFR 1.68 has been omitted.

 Examiner Note:

  This paragraph must be preceded by paragraph 6.05.

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

602.01  Oath Cannot Be Amended [R - 1]

  The wording of an oath or declaration cannot be amended
altered or changed in any manner after it has been signed.
If the wording is not correct or if all of the required
affirmations have not been made, or if it has not been
properly subscribed to, a new oath or declaration must be
required. However, in some cases, a deficiency in the oath
or declaration can be corrected by a supplemental paper and
a new oath or declaration is not necessary.

  For example, if the oath does not set forth evidence
that the notary was acting within his or her jurisdiction at
the time he or she administered the oath, a certificate of
the notary that the oath was taken within his or her
jurisdiction will correct the deficiency. See MPEP § 602 and
§ 604.02.

  Applicant may be so advised by using Form Paragraph
6.03.

¶ 6.03  Oath, Declaration Cannot Be Amended

  A new oath or declaration is required because [1]. The
wording of an oath or declaration cannot be amended. If the
wording  is  not  correct  or  if  all  of  the  required
affirmations have not been made or if it has not been
properly  subscribed  to,  a  new  oath  or  declaration  is
required. The new oath or declaration must properly identify
the application of which it is to form a part, preferably by
*>application< number and filing date in the body of the
oath or declaration. See MPEP § 602.01 and § 602.02.

 Examiner Note:

  1.  This paragraph is intended primarily for use in pro
se applications.

  2.  Use Paragraph 6.05 and one or more of paragraphs
6.05.>0< 1 to 6.05.17 for a defective oath or declaration in
a case where there is a power of attorney.

602.02  New Oath or Substitute for Original

  In requiring a new oath or declaration, the examiner
should always give the reason for the requirement and call
attention to the fact that the application of which it is to
form a part must be properly identified in the body of the
new oath or declaration, preferably by giving the serial
number and the date of filing.

  Where neither the original oath or declaration, nor the
substitute oath or declaration is complete in itself, but
the two taken together give all the required data, no
further oath or declaration is needed.

602.03  Defective Oath or Declaration [R - 1]

  In the first Office action the examiner must point out
every deficiency in a declaration or oath and require that
the  same  be  remedied.  Applicant  may  be  informed  of
deficiencies in the declaration or oath by Form Paragraphs
6.05 and 6.05.1 - 6.05.17.

¶ 6.05  Oath or Declaration Defective

  The oath or declaration is defective. A new oath or
declaration in compliance with 37 CFR 1.67(a) identifying
this application by *>application< number and filing date is
required. See MPEP > § § < 602.01 and 602.02.

  The oath or declaration is defective because:

 Examiner Note:

  1. One or more of the appropriate paragraphs 6.05.>0<1 to
6.05.17 must follow this paragraph.

  2. If none of the paragraphs apply, than an appropriate
explanation  of  the  defect  should  be  given  immediately
following this paragraph.

  However, when an application is otherwise ready for
issue, an examiner with full signatory authority may waive
the following minor deficiencies:

  Minor  deficiencies  in  the  body  of  the  oath  or
declaration where the deficiencies are self - evidently
cured in the rest of the oath or declaration, as in an oath
or declaration of plural inventors couched in plural terms
except for use of "sole inventors" is asserted; In re
Searles, 164 USPQ 623.

  If the above is waived, the examiner with full signatory
authority should write in the margin of the declaration or
oath a notation such as "Reference to the sole inventor
rather than joint inventors waived; Application ready for
issue." and his or her initials and the date.

  Of course, requirements of the statute; e.g., that the
applicant state his or her citizenship or believes himself
or herself to be the original and first inventor or that the
oath  be  administered  before  a  person  authorized  to
administer oaths or that a declaration pursuant to 35 U.S.C.
25 or 28 U.S.C. 1746 contain the language required therein,
cannot be waived.

  If the defect cannot be waived, Form Paragraph 6.46
should be used when the application is allowable.

¶ 6.46  *>Application<  Allowed,  Substitute  Declaration
Needed

  Applicant  is  now  required  to  submit  a  substitute
declaration or oath to correct the deficiencies set forth
[1]. The substitute oath or declaration must be filed within
the THREE MONTH shortened statutory period set for response
in the "Notice Of Allowability" (PTOL - 37). Extensions of
time  may  be  obtained  under  the  provisions  of  37  CFR
1.136(a). Failure to timely file the substitute declaration
(or oath) will result in ABANDONMENT of the application. The
transmittal letter accompanying the declaration (or oath)
should indicate the following in the upper right hand
corner:  Issue  Batch  Number,  date  of  the  "Notice  of
Allowance," and *>application< number.

 Examiner Note:

  In the bracket, insert appropriate information, e.g.,

 in this communication - or-

 in the Office action mailed  _____________ - or-

 in the PTO - 152 attached to >Paper No.<  _______________

602.04  Foreign Executed Oath [R - 3]

  An oath executed in a foreign country must be properly
authenticated. See MPEP § 604 and 37 CFR 1.66.

  Where the authority of the foreign officer is not
certified, Form Paragraphs 6.05 and 6.05.13 may be used.

¶ 6.05.13  Authority of Foreign Officer Not Certified

  It  does  not  include  an  apostille,  a  consular
certificate, or the position of authority of the officer
signing an apostille or consular certificate, see 37 CFR
1.66(a).

 Examiner Note:

  This paragraph >applies only to foreign executed oaths
and< must be preceded by >form< paragraph 6.05.

602.04(a)  Foreign Executed Oath Is Ribboned to Other
Application Papers [R - 1]

 37 CFR 1.66. Officers authorized to administer oaths.

  *****

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

  Where the papers are not properly ribboned, use Form
Paragraphs 6.05 and 6.05.14.

¶ 6.05  Oath or Declaration Defective

  The oath or declaration is defective. A new oath or
declaration in compliance with 37 CFR 1.67(a) identifying
this application by * >Application< Number and filing date
is required. See MPEP > § § < 602.01 and 602.02.

  The oath or declaration is defective because:

 Examiner Note:

  1. One or more of the appropriate paragraphs 6.05.1 to
6.05.17 must follow this paragraph.

  2. If none of the paragraphs apply, then an appropriate
explanation  of  the  defect  should  be  given  immediately
following this paragraph.

¶ 6.05.14  No Ribbon Properly Attached

  It does not have a ribbon properly attached.

 Examiner Note:

  This paragraph must be preceded by paragraph 6.05.

  U.S. Accession to Hague Convention Abolishing the
  Requirement of Legalization for Foreign Public  Documents

  On Oct. 15, 1981, the Hague "Convention Abolishing the
Requirement of Legalization for Foreign Public Documents"
entered into force between the United States and thirty -
eight foreign countries that are parties to the Convention.
The Convention applies to any document submitted to the
United States Patent and Trademark Office for filing or
recording, which is sworn to or acknowledged by a notary

public in any one of the member countries. The Convention
abolishes the certification of the authority of the notary
public in a member country by a diplomatic or consular
officer of the United States and substitutes certification
by a special certificate, or apostille, executed by an
officer of the member country. Accordingly, the Office will
accept for filing or recording a document sworn to or
acknowledged before a notary public in a member country if
the document bears, or has appended to it, an apostille
certifying the notary's authority. The requirement for a
diplomatic or consular certificate, specified in 37 CFR
1.66, will not apply to a document sworn to or acknowledged
before a notary public in a member country if an apostille
is used.

  The member countries that are parties to the Convention
are:

 Antigua  Hungary Panama

  & Barbuda

 Argentina  Israel Portugal

 Austria  Italy Seychelles

 Bahamas  Japan Spain

 Belgium  Lesotho Suriname

 Botswana  Liechtenstein Swaziland

 Brunei  Luxembourg Switzerland

 Cyprus  Malawi The Russian

  Federation

 Fiji  Malta Tonga

 Finland  Marshall Islands Turkey

 France  Mauritius U.K. of

  Great Britain

  and

  N. Ireland

 Germany  Netherlands United States

 Fed Rep. of

 Greece  Norway Yugoslavia

  The Convention prescribes the following form for the
apostille:

 **  Double Click here to see the image  **

  Note that a declaration in lieu of application oath (37
CFR 1.68) need not be ribboned to the other papers. It must,
however, be maintained together therewith.

602.05  Oath or Declaration - Date of Execution [R - 1]

  **>The Office no longer checks the date of execution of
the oath or declaration and the Office will no longer
require a newly executed oath or declaration based on an
oath or declaration being stale (that is when the date of
execution is more than 3 months prior to the filing date of
the application). However, applicants are reminded that they
have a continuing duty of disclosure under 37 CFR 1.56.<

602.05(a)  Oath or Declaration in Division and
Continuation Cases

  Where the date of filing the application is not the date
that determines the statutory 12 - month period, as in
divisional and continuation cases, it is immaterial, so far
as concerns the acceptability of the oath or declaration,
how long a time intervenes between the execution of the oath
or declaration and the filing of the application.

  When a divisional application is identical with the
original application as filed, signing and execution of the
oath or declaration in the divisional case may be omitted.
(See 37 CFR 1.60 and 1.62, MPEP § 201.06(a).)

602.06  Non - English Oath or Declaration

 37 CFR 1.69.  Foreign language oaths and declarations.

  (a) Whenever an individual making an oath or declaration
cannot understand English, the oath or declaration must be
in a language that such individual can understand and shall
state that such individual understands the content of any
documents to which the oath or declaration relates.

  (b) Unless the text of any oath or declaration in a
language other than English is a form provided or approved
by the Patent and Trademark Office, it must be accompanied
by a verified English translation, except that in the case
of an oath or declaration filed under § 1.63 the translation
may be filed in the Office no later than two months from the
date applicant is notified to file the translation.

  37 CFR 1.69 requires that oaths and declarations be in a
language which is understood by the individual making the
oath or declaration; i.e., a language which the individual
comprehends.  If  the  individual  comprehends  the  English
language, he or she should preferably use it. If the
individual cannot comprehend the English language, any oath
or declaration must be in a language which the individual
can comprehend. If an individual uses a language other than
English for an oath or declaration, the oath or declaration
must include a statement that the individual understands the
content of any documents to which the oath or declaration
relates. If the documents are in a language the individual
cannot comprehend, the documents may be explained to him or
her so that he or she is able to understand them.

  The Office will accept a single non - English language
oath or declaration where there are joint inventors, of
which only some understand English but all understand the
non - English language of the oath or declaration.

602.07  Oath or Declaration Filed in United States as a
Designated Office [R - 1]

  See MPEP §*>1893.01.<

603  Supplemental Oath or Declaration [R - 1]

 37 CFR 1.67.  Supplemental oath or declaration.

  (a)  A  supplemental  oath  or  declaration  meeting  the
requirements of § 1.63 may be required to be filed to
correct any deficiencies or inaccuracies present in an
earlier filed oath or declaration.

  **>(b) A supplemental oath or declaration meeting the
requirements of § 1.63 must be filed when a claim is
presented for matter originally shown or described but not
substantially embraced in the statement of invention or
claims originally presented or when an oath or declaration
submitted in accordance with § 1.53(d)(1) after the filing
of the specification and any required drawings specifically
and improperly refers to an amendment which includes new
matter.  No  new  matter  may  be  introduced  into  a
nonprovisional application after its filing date even if a
supplemental oath or declaration is filed. In proper cases,
the oath or declaration here required may be made on
information and belief by an applicant other than inventor.<

  (c)  A  supplemental  oath  or  declaration  meeting  the
requirements of § 1.63 must also be filed if the application
was altered after the oath or declaration was signed or if
the oath or declaration was signed: (1) In blank; (2)
Without review thereof by the person making the oath or
declaration; or (3) Without review of the specification,
including the claims, as required by § 1.63(b)(1).

  37  CFR  1.67  requires  in  the  supplemental  oath  or
declaration substantially all the data called for in 37 CFR
1.63 for the original oath or declaration. As to the purpose
to be served by the supplemental oath or declaration, the
examiner should bear in mind that it cannot be availed of to
introduce new matter into an application.

  >When an inventor who executed the original declaration
is refusing or cannot be found to execute a required
supplemental  declaration,  it  is  possible  that  the
requirement may be suspended or waived in accordance with 37
CFR 1.183.<

  A new oath may be required by using Form Paragraph 6.06.

¶ 6.06  New Oath for Subject Matter not Originally Claimed

  This application presents a claim for subject matter not
originally claimed or embraced in the statement of the
invention.  [1].  A  supplemental  oath  or  declaration  is
required under 37 CFR 1.67. The new oath or declaration must
properly identify the application of which it is to form a
part, preferably by * >application< number and filing date
in the body of the oath or declaration. See MPEP > § § <
602.01 and 602.02.

 Examiner Note:

  Explain new claimed matter in bracket 1. The brief
summary of the invention must be commensurate with the
claimed invention and may be required to be modified. See
MPEP > § § < 1302>and< 608.01(d), and 37 CFR 1.73.

603.01  Supplemental Oath or Declaration Filed After
Allowance

  Since the decision in Cutter Co.  v.  Metropolitan
Electric  Mfg.  Co.  ,  275  F.  158  (CA  2  1921),  many
supplemental oaths and declarations covering the claims in
the case have been filed after the case is allowed. Such
oaths and declarations may be filed as a matter of right and
when received they will be placed in the file by the Office
of Publications, but their receipt will not be acknowledged
to the party filing them. They should not be filed or
considered as amendments under 37 CFR 1.312, since they make
no change in the wording of the papers on file. See MPEP §
714.16.

604  Administration or Execution of Oath

 37 CFR 1.66.  Officers authorized to administer oaths.

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

  *****

  See MPEP § 602.04(a) for foreign executed oath.

604.01  Seal [R - 1]

  When the person before whom the oath or affirmation is
made in this country is not provided with a seal, his or her
official  character  shall  be  established  by  competent
evidence, as by a certificate from a clerk of a court of
record or other proper officer having a seal, except as
noted in MPEP § 604.03(a), in which situations no seal is
necessary. When the issue concerns the authority of the
person administering the oath, the examiner should require
proof of authority. Depending on the jurisdiction, the seal
may be either embossed or rubber stamped. The latter should
not be confused with a stamped legend indicating only the
date of expiration of the notary's commission.

  See also MPEP § 602.04(a) on foreign executed oath and
seal. In some jurisdictions, the seal of the notary is not
required but the official title of the officer must be on
the oath. This applies to Alabama, California (certain
notaries), Louisiana, Maryland, Massachusetts, New Jersey,
New York, Ohio, Puerto Rico, Rhode Island, South Carolina,
and Virginia.

¶ 6.05  Oath or Declaration Defective

  The oath or declaration is defective. A new oath or
declaration in compliance with 37 CFR 1.67(a) identifying
this application by its * >application< number and filing
date is required. See MPEP > § § < 602.01 and 602.02.

  The oath or declaration is defective because:

 Examiner Note:

  1. One or more of the appropriate paragraphs 6.05.>0<1 to
6.05.17 must follow this paragraph.

  2. If none of the paragraphs apply, then an appropriate
explanation  of  the  defect  should  be  given  immediately
following this paragraph.

¶ 6.05.11  Notary Signature

  It does not include the notary's signature, or the
notary's signature is in the wrong place.

 Examiner Note:

  This paragraph must be preceded by paragraph 6.05.

¶ 6.05.12  Notary Seal and Venue Omitted

  It does not include the notary's seal and venue.

 Examiner Note:

  This paragraph must be preceded by paragraph 6.05.

604.02  Venue [R - 2]

  That portion of an oath or affidavit indicating where
the oath is taken is known as the venue. Where the county
and state in the venue agree with the county and state in
the seal, no problem arises. If the venue and seal do not
correspond in county and state, the jurisdiction of the
notary must be determined from statements by the notary
appearing on the oath ** . Venue and notary jurisdiction
must correspond or the oath is improper. The oath should
show on its face that it was taken within the jurisdiction
of the certifying officer or notary. This may be given
either in the venue or in the body of the jurat. Otherwise,
a new oath or declaration, or a certificate of the notary
that the oath was taken within his or her jurisdiction, must
be required, Ex parte Delavoye , 1906 C.D. 320; 124 O.G.
626;  Ex parte Irwin,1928 C.D. 13; 367 O.G. 701.

  Form Paragraph 6.07 may be used where the venue is not
shown.

¶ 6.07  Lack of Venue

  The oath lacks the statement of venue. Applicant is
required to furnish either a new oath or declaration in
proper form, identifying the application by application
number and filing date, or a certificate by the officer
before whom the original oath was taken stating that the
oath was executed within the jurisdiction of the officer
before  whom  the  oath  was  taken  when  the  oath  was
administered. The new oath or declaration must properly
identify the application of which it is to form a part,
preferably by application number and filing date in the body
of the oath or declaration. See MPEP § 602.01 and § 602.02.

  Where  the  seal  and  venue  differ  the  appropriate
statement on the "Notice of Informal Patent Application"
form PTO - 152 should be checked.

 **

604.03(a)  Notarial Powers of Some Military Officers

  Public Law 506 (81st Congress, Second Session) Article
136: (a) The following persons on active duty in the armed
forces . . shall have the general powers of a notary
public and of a consul of the United States, in the
performance of all notarial acts to be executed by members
of any of the armed forces, wherever they may be, and by
other persons subject to this code [Uniform Code of Military
Justice]  outside  the  continental  limits  of  the  United
States:

  (2) All law specialists;

  (3) All summary courts - martial;

  (4) All adjutants, assistant adjutants, acting adjutants,
and personnel adjutants;

  (5) All commanding officers of the Navy and Coast Guard;

  (6) All staff judge advocates and legal officers, and
acting  or  assistant  staff  judge  advocates  and  legal
officers; and

  (7) All other persons designated by regulations of the
armed forces or by statute.

  (8) The signature without seal of any such person acting
as notary, together with the title of his office, shall be
prima facie evidence of his authority.

604.04  Consul

  On Oct. 15, 1981, the "Hague Convention Abolishing the
Requirement of Legalization for Foreign Public Documents"
entered into force between the United States and 28 foreign
countries that are parties to the Convention. See MPEP §
604.04(a).

  When the oath is made in a foreign country not a member
of  the  Hague  Convention  Abolishing  the  Requirement  of
Legalization for Foreign Public Documents, the authority of
any officer other than a diplomatic or consular officer of
the United States authorized to administer oaths must be
proved by certificate of a diplomatic or consular officer of

the United States. See 37 CFR 1.66, MPEP § 604. This proof
may be through an intermediary; e.g., the consul may certify
as to the authority and jurisdiction of another official
who,  in  turn,  may  certify  as  to  the  authority  and
jurisdiction of the officer before whom the oath is taken.

604.04(a)  Consul - Omission of Certificate [R - 2]

  Where the oath is taken before an officer in a foreign
country other than a diplomatic or consular officer of the
United States and whose authority is not authenticated or
accompanied  with  an  apostille  certifying  the  notary's
authority  (see  MPEP  §  602.04(a)),  the  application  is
nevertheless  accepted  for  purposes  of  examination.  The
examiner, in the first Office action, should note this
informality and require authentication of the oath by an
appropriate diplomatic or consular officer, the filing of
proper apostille, or a declaration (37 CFR 1.68).

  Form Paragraph 6.08 may be used to notify applicant.

¶ 6.08  Consul - Omission of Certificate

  The oath is objected to as being informal. It lacks
authentication by a diplomatic or consular officer of the
United States; 37 CFR 1.66(a). This informality can be
overcome either by forwarding the original oath to the
appropriate  officer  for  authentication  or  by  filing  a
declaration (37 CFR 1.68), if applicant wishes to preserve
the original filing date. If authentication is desired,
applicant  should  request  return  of  the  oath  for  this
purpose. Such request must be accompanied by an order for a
copy of the oath to be retained in the file until the
properly authenticated oath is returned. After the oath has
been authenticated, it should be returned promptly to the
Patent and Trademark Office. ** See MPEP § § 602.01 and
602.02.

  At the time of the next Office action, the request for
return of the oath, together with the application file and
the copy of the oath, is submitted to the Group Director. If
the request is approved by the Group Director, the oath will
be returned to the applicant by the examining group. A copy
of the original oath will be retained in the file.

604.06  By Attorney in Case

  The language of 37 CFR 1.66 and 35 U.S.C. 115 is such
that  an  attorney  in  the  case  is  not  barred  from
administering the oath as notary. The Office presumes that
an attorney acting as notary is cognizant of the extent of
his or her authority and jurisdiction and will not knowingly
jeopardize his or her client's rights by performing an
illegal act. If such practice is permissible under the law
of the jurisdiction where the oath is administered, then the
oath is a valid oath.

  The law of the District of Columbia prohibits the
administering of oaths by the attorney in the case. If the
oath is known to be void because of being administered by
the attorney in a jurisdiction where the law holds this to
be invalid, the proper action is to require a new oath or
declaration and refer the file to the Office of Enrollment
and Discipline. ( Riegge r v. Beierl , 1910 C.D. 12; 150
O.G. 826). See 37 CFR 1.66 and MPEP § 604.

605  Applicant [R - 1]

 37 CFR 1.41.  Applicant for patent.

  (a) A patent must be applied for in the name of the
actual inventor or inventors. Full names must be stated,
including the family name and at least one given name
without abbreviation together with any other given name or
initial.

  (b) Unless the contrary is indicated the word "applicant"
when used in these sections refers to the inventor or joint
inventors who are applying for a patent, or to the person
mentioned in § 1.42, 1.43, or 1.47 who is applying for a
patent in place of the inventor.

  (c) Any person authorized by the applicant may file an
application  for  patent  on  behalf  of  the  inventor  or
inventors, but an oath or declaration for the application (
§ 1.63) can only be made in accordance with § 1.64.

  (d) A showing may be required from the person filing the
application  that  the  filing  was  authorized  where  such
authorization comes into question.

 37 CFR 1.45.  Joint inventors.

  (a) Joint inventors must apply for a patent jointly and
each must make the required oath or declaration; neither of
them alone, nor less than the entire number, can apply for a
patent for an invention invented by them jointly, except as
provided in § 1.47.

  (b) Inventors may apply for a patent jointly even though

  (2) Each inventor did not make the same type or amount of
contribution, or

  (3) Each inventor did not make a contribution to the
subject matter of every claim of the application.

  *>(c) If multiple inventors are named in a nonprovisional
application,  each  named  inventor  must  have  made  a
contribution, individually or jointly, to the subject matter
of at least one claim of the application and the application
will be considered to be a joint application under 35 U.S.C.
116. If multiple inventors are named in a provisional
application,  each  named  inventor  must  have  made  a
contribution, individually or jointly, to the subject matter
disclosed in the provisional application and the provisional
application will be considered to be a joint application
under 35 U.S.C. 116.<

  The rules (37 CFR 1.41(a) and 1.53(b)) clearly require
that the name(s) of the inventor(s) be identified in the
application papers in order to accord the application a
filing date. Therefore, particular care should be exercised
when filing an application without an executed oath or
declaration to ensure that the names of all inventors are
identified  somewhere  in  the  application.  *>In  a
nonprovisional application,< good practice is to submit an
oath  or  declaration  form  (whether  signed  or  unsigned)
identifying the names of all inventors in every application
being filed.

  >An error in inventorship does not raise a filing date
issue, unless no inventors is named or the application is
originally filed under 37 CFR 1.53(b) with "et al." as part
of the inventive entity (e.g., Jones et al.).< If all of the
inventors are not named in the application papers; e.g.,
Jones et al., a "Notice of Incomplete Application" will be
mailed to the applicant(s) indicating that no filing date
has been granted and setting a period for submitting all of
the names. The filing date will be the date of receipt of
the names of all the inventors unless a petition is filed
which sets forth the reasons the delay in supplying the
names should be excused.

  For correction of inventorship, see MPEP § 201.03.

 37 CFR 1.46.  Assigned inventions and patents.

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

  This section concerns filing by the actual inventor. If
the application is filed by another, see MPEP § 409.03.

 NOTE

  Assignments of application by inventor, see MPEP § 301.
Inventor dead or insane, see MPEP § 409.

605.01  Applicant's Citizenship [R - 1]

  The statute (35 U.S.C. 115) requires an applicant >, in
a  nonprovisional  application<  to  state  his  or  her
citizenship. Where an applicant is not a citizen of any
country,  a  statement  to  this  effect  is  accepted  as
satisfying the statutory requirement, but a statement as to
citizenship applied for or first papers taken out looking to
future citizenship in this (or any other) country does not
meet the requirement.

  Form Paragraphs 6.05 and 6.05.>0<3 may be used to notify
applicant that the applicant's citizenship is omitted.

¶ 6.05  Oath or Declaration Defective

  The oath or declaration is defective. A new oath or
declaration in compliance with 37 CFR 1.67(a) identifying
this application by * >application< number and filing date
is required. See MPEP > § § < 602.01 and 602.02.

  The oath or declaration is defective because:

 Examiner Note:

  1. One or more of the appropriate paragraphs 6.05.>0<1 to
6.05.17 must follow this paragraph.

  2. If none of the paragraphs apply, then an appropriate
explanation  of  the  defect  should  be  given  immediately
following this paragraph.

¶ 6.05.>0<3  Citizenship Omitted

  It does not identify the citizenship of each inventor.

 Examiner Note:

  This paragraph must be preceded by paragraph 6.05.

605.02  Applicant's Residence [R - 3]

  Applicant's place of residence, that is, the city and
either state or foreign country, is required to be included
in the oath or declaration in a nonprovisional application,
for compliance with 37 CFR 1.63. In the case of an applicant
who is in one of the U.S. Armed Services, a statement to
that effect is sufficient as to residence. For change of
residence, see MPEP § 717.02(b). Applicant's residence must
be  included  on  the  cover  sheet  for  a  provisional
application.

  If the residence is not included in the oath or
declaration as filed, the Application Branch will normally
so indicate on a form PTO - 152, "Notice of Informal Patent
Application," so as to require a new declaration when the
form is sent out with an Office action. If the examiner
notes that the residence has not been included in the oath
or declaration, Form Paragraph 6.05.02 should be used to
notify the applicant if no post office address has been
supplied in the declaration.

¶ 6.05.02  Residence Omitted

  It does not identify the city and either state or
foreign country of residence of each inventor.

 Examiner Note:

  1.  This  paragraph  must  be  preceded  by
paragraph*>6.05<.

  2.  If  the  post  office  address  appears  in  the
declaration. DO NOT use this paragraph; use paragraph 6.09.

  If the post office address has been provided somewhere
in the application papers, but no residence is included,
Form Paragraph 6.09 should be used.

¶ 6.09  Residence Omitted from Declaration

  Applicant's  residence  has  been  omitted  from  the
declaration. The city and either state or foreign country of
applicant's post office address provided in the declaration
will be presumed to be the city and either state or foreign
country of residence. If the above is incorrect, applicant
should submit a statement as to place of residence no later
than at the time of payment of the issue fee.

 Examiner Note:

  1.  If both the post office address and residence are
incomplete, not uniform or omitted, use paragraphs 6.05 and
6.05.02.

  2.  Paragraph  6.09.01  should  be  used  to  notify

applicant if only the post office address is incomplete or
omitted.

605.03  Applicant's Post Office Address [R - 3]

  Each  applicant's  post  office  address,  in  a
nonprovisional application, must be supplied on the oath or
declaration, 37 CFR 1.33(a), if not stated elsewhere in the
application. Applicant's post office address means that
address at which he or she customarily receives his or her
mail.  Either  applicant's  home  or  business  address  is
acceptable as the post office address. The post office
address should include the ZIP Code designation.

  When a township is listed in the applicant's address, a
county name must also be given.

  The object of requiring each applicant's post office
address is to enable the Office to communicate directly with
the applicant if desired; hence, the address of the attorney
with instruction to send communications to applicant in care
of the attorney is not sufficient.

  In situations where an inventor does not execute the
oath or declaration and the inventor is not deceased, such
as in an application filed under 37 CFR 1.47, the inventor's
most recent home address must be given to enable the Office
to communicate directly with the inventor as necessary.

  Where having given complete data as to residence, the
applicant identifies his or her post office address only by
street and number, it is assumed that the city and either
state or foreign country of residence are the city and state
of his or her post office address and no requirement for
submission of the post office address will be made.

  >Where a full street address is given for applicant's
residence,  the  given  address  will  be  presumed  to  be
applicant's post office address. Form paragraph 6.09.02
should be used to notify applicant of this presumption.

¶ 6.09.02  Residence Given As Full Address, Post Office
Omitted

  Applicant's post office address has not been given
anywhere in the application papers. However, applicant's
residence as given in the oath or declaration, includes a
full street address. The given address will be presumed to
be  the  applicant's  post  office  address.  If  this  is
incorrect, applicant must submit a signed statement as to
the correct post office address in response to this office
action.

 Examiner Note:

  If both the post office address and residence are
incomplete, not uniform or correct, use form paragraphs 6.05
and 6.05.02.<

  The "Notice of Informal Patent Application" attachment
form PTO - 152 or Form Paragraph 6.09.01 is used to notify
applicant that the post office address is incomplete or
omitted. Note 37 CFR 1.33(a).

¶ 6.09.01  Post Office Address Omitted

  Applicant has not given a post office address anywhere
in the application papers as required by 37 CFR 1.33(a). A
statement over applicant's signature providing a complete
post office address is required.

 Examiner Note:

  If both the post office address and residence are
incomplete, not uniform or omitted, use form paragraphs 6.05
and 6.05.02.

605.04(a)  Applicant's Signature and Name [R - 1]

 37 CFR 1.64.  Person making oath or declaration.

  (a) The oath or declaration must be made by all of the
actual inventors except as provided for in § 1.42, 1.43, or
1.47.

  (b) If the person making the oath or declaration is not
the  inventor  (  §  1.42,  1.43,  or  1.47),  the  oath  or
declaration shall state the relationship of the person to
the inventor and, upon information and belief, the facts
which the inventor is required to state.

  EXECUTION OF OATHS OR DECLARATIONS OF PATENT APPLICATIONS

  United States patent applications which have not been
prepared and executed in accordance with the requirements of
Title 35 of the United States Code and Title 37 of the Code
of  Federal  Regulations  may  be  abandoned.  Although  the
statute and the rules have been in existence for many years,
the Office continues to receive a number of applications
which have been improperly executed and/or filed. Since the
improper execution and/or filing of patent applications can
ultimately result in a loss of rights, it is appropriate to
emphasize the importance of proper execution and filing.

  It is improper for an applicant to sign an oath or
declaration which is not attached to or does not identify a
specification and/or claims.

  Attached does not necessarily mean that all the papers
must be literally fastened. It is sufficient that the
specification,  including  the  claims,  and  the  oath  or
declaration are physically located together at the time of
execution. Physical connection is not required. >Copies of
declarations are accepted. See MPEP § 502.01 and § 502.02.<

  The  provisions  of  35  U.S.C.  363  for  filing  an
international  application  under  the  Patent  Cooperation
Treaty (PCT) which designates the United States and thereby
has the effect of a regularly filed United States national
application, except as provided in 35 U.S.C. 102(e), are
somewhat different than the provisions of 35 U.S.C. 111. The
oath  or  declaration  requirements  for  an  international
application before the Patent and Trademark Office are set
forth in 35 U.S.C. 371(c)(4) and 37 CFR 1.497.

  37 CFR 1.52(c) states that "(any interlineation, erasure,
cancellation or other alteration of the application papers
filed should be made before the signing of any accompanying
oath or declaration pursuant to § 1.63 referring to those
application papers and should be dated and initialed or

signed  by  the  applicant  on  the  same  sheet  of  paper.
Application papers containing alterations made after the
signing  of  an  oath  or  declaration  referring  to  those
application papers must be supported by a supplemental oath
or declaration under § 1.67(c)."

  In summary, it is emphasized that the application filed
must be the application executed by the applicant and it is
improper for anyone, including counsel, to alter, rewrite,
or partly fill in any part of the application, including the
oath  or  declaration,  after  execution  of  the  oath  or
declaration  by  the  applicant.  This  provision  should
particularly  be  brought  to  the  attention  of  foreign
applicants by their United States counsel since the United
States law and practice in this area may differ from that in
other countries.

  Any changes made in ink in the application or oath prior
to signing should be initialed and dated by the applicants
prior to execution of the oath or declaration. The Office
will not consider whether non - initialed and/or nondated
alterations were made before or after signing of the oath or
declaration but will require a new oath or declaration. Form
Paragraph 6.02.>0<1 may be used to call non - initialed
and/or non - dated alterations to applicant's attention.

¶ 6.02.>0<1  Non - Initialed and/or Non - Dated Alterations
in Application Papers

  The application is objected to because of alterations
which have not been initialed and/or dated as required by 37
CFR 1.52(c). A properly executed oath or declaration which
complies with 37 CFR 1.67(a) and identifies the application
by *>application< number and filing date is required.

  The signing and execution by the applicant of oaths or
declarations in certain applications may be omitted, MPEP §
201.06 and § 201.07.

  NOTE: For the signature on a response, see MPEP §
714.01(a) to (e).

605.04(b)  One Full Given Name Required [R - 3]

  All applications which disclose the full first and last
names with middle initial or name, if any, of the applicant
at any place in the application papers will be received and
considered as a sufficient compliance with 37 CFR 1.41.

  When a full given name of the applicant does not appear
either in the signature or elsewhere in the papers the
examiner will, in the first Office action, require an
amendment over applicant's signature supplying the omission,
and will not pass the application to issue until the
omission has been supplied unless a statement has been filed
over the applicant's own signature setting forth that his or
her name as signed contains at least one given name without
abbreviation or what is in fact his or her full given name.

  No affidavit should be required.

  The requirement should be made only when all of the
given names in the signature, or elsewhere in the papers,
appear  as  mere  initials  or  as  what  can  be  only  an
abbreviation of a name.

  Form Paragraph 6.10 may be used.

¶ 6.10  Full Given Name Does Not Appear

  It appears that at least one full given name of
applicant [1] is not present either in the signature or
elsewhere in the papers. This application will not be passed
to issue until the omitted name has been supplied or unless
a statement has been supplied over the applicant's signature
setting forth that the name as signed is the actual full
name of applicant [2]. See MPEP § 605.04.

  One given name without abbreviation, together with any
other given name or initial, must appear somewhere in the
papers  as  filed.  Otherwise,  appropriate  amendment  is
required. For example, if the applicant's full name is "John
Paul Doe," either "John P. Doe" or "J. Paul Doe" is
acceptable.

  In an application where the name is typewritten with a
middle name or initial , but the signature is without such
middle name or initial, the typewritten version of the name
will be used. * >Except for correction of a typographical or
transliteration error in the spelling of an inventor's name,
a< request to have the name changed to the signed version or
any other corrections in the name of the inventor(s) will
not be entertained, unless accompanied by a petition under
37 CFR 1.182 together with an appropriate petition fee. The
petition should be directed to the attention of the Office
of the Assistant Commissioner for Patents. Upon granting of
the petition, the file should be sent to the **>Office of
Initial Patent Examination< for correction of its records.
If the application is assigned, it will be forwarded by the
**>Office of Initial Patent Examination< to the Assignment
Branch for a change in the Assignment record.

  >When a typographical or transliteration error in the
spelling of an inventor's name is discovered, a petition is
not required, nor is a new oath or declaration under 37 CFR
1.63 needed. The Patent and Trademark Office should simply
be notified of the error and reference to the notification
paper will be made on the previously filed declaration by
the Office.

  When any correction or change is effected, the file
should be sent to the Office of Initial Patent Examination
for revision of its records and the change should be noted
on the original oath or declaration by writing in red ink in
the left column "See Paper No. __ for inventorship changes."
See MPEP § 201.03 and 605.04(g).<

605.04(c)  Inventor Changes Name

  In cases where an inventor's name has been changed after
the application has been filed and the inventor desires to
change his or her name on the application, he or she must
submit a petition under 37 CFR 1.182. The petition should be
directed to the attention of the Office of the Assistant
Commissioner for Patents. The petition must include an
appropriate petition fee and an affidavit signed with both
names and setting forth the procedure whereby the change of
name was effected, or a certified copy of the court order.

  If the petition is granted, the file should be sent to

the Application Processing Division for change of name on
the  file  wrapper  and  in  the  PALM  data  base.  If  the
application  is  assigned,  it  will  be  forwarded  by  the
Application Branch to the Assignment Branch for a change in
the assignment record.

605.04(d)  Applicant Unable to Write

  If the applicant is unable to write, his or her mark as
affixed to the oath or declaration must be attested to by a
witness. In the case of the oath, the notary's signature to
the jurat is sufficient to authenticate the mark.

605.04(e)  May Use Title With Signature

  It is permissible for an applicant to use a title of
nobility or other title, such as "Dr", in connection with
his signature. The title will not appear in the printed
patent.

605.04(f)  Signature on Joint Applications - Order of
Names

  The order of names of joint patentees in the heading of
the patent is taken from the order in which the typewritten
names appear in the original oath or declaration. Care
should therefore be exercised in selecting the preferred
order of the typewritten names of the joint inventors,
before filing, as requests for subsequent shifting of the
names would entail changing numerous records in the Office.
Since the particular order in which the names appear is of
no consequence insofar as the legal rights of the joint
applicants are concerned, no changes will be made except
when a petition under 37 CFR 1.182 is granted. The petition
should be directed to the attention of the Office of the
Assistant Commissioner for Patents. The petition to change
the order of names must be signed by either the attorney or
agent of record or all the applicants. It is suggested that
all  typewritten  and  signed  names  appearing  in  the
application papers should be in the same order as the
typewritten names in the oath or declaration.

  In those instances where the joint applicants file
separate oaths or declarations, the order of names is taken
from the order in which the several oaths or declarations
appear in the application papers unless a different order is
requested at the time of filing.

605.04(g)  Correction of Inventorship [R - 3]

  When >the Office is notified of a typographical or
transliteration error in the spelling of an inventor's name,
or< a petition is granted approving a correction or a change
in the order of the names of the inventors, or inventors are
added or deleted under 37 CFR 1.48, the change should be
noted in red ink in the left margin of the original oath or
declaration. The notation should read "See Paper No. ____
for inventorship changes." The file should be sent to the
**>Office of Initial Patent Examination< for correction on
the file wrapper label and the PALM data base regarding the
inventorship. A brief explanation on an "Application Branch
Data Base Routing Slip" (available from the examining group
clerical staff) should accompany the application file to the
Application Branch.

605.05  Administrator, Executor, or Other Legal
Representative

  In an application filed by a legal representative of the
inventor, the specification should not be written in the
first person.

  For prosecution by administrator or executor, see MPEP §
409.01(a).

  For prosecution by heirs, see MPEP § 409.01(a) and §
409.01(d).

  For  prosecution  by  representative  of  legally
incapacitated inventor, see MPEP § 409.02.

  For prosecution by other than inventor, see MPEP §
409.03.

605.07  Joint Inventors [R - 3]

 35 U.S.C. 116  Inventors

  When an invention is made by two or more persons
jointly, they shall apply for patent jointly and each make
the required oath, except as otherwise provided in this
title. Inventors may apply for a patent jointly even though
(1) they did not physically work together or at the same
time, (2) each did not make the same type or amount of
contribution, or (3) each did not make a contribution to the
subject matter of every claim of the patent.

  35 U.S.C. 116, as amended by Public Law 98 - 622,
recognizes the realities of modern team research. A research
project may include many inventions. Some inventions may
have contributions made by individuals who are not involved
in other, related inventions.

  35 U.S.C. 116 allows inventors to apply for a patent
jointly even though

  (i) they did not physically work together or at the same
time,

  (ii) each did not make the same type or amount of
contribution, or

  (iii) each did not make a contribution to the subject
matter of every claim of the patent. Items (i) and (ii)
adopt the rationale stated in decisions such as Monsanto Co.
v . Kamp , 269 F. Supp. 818, 154 USPQ 259 (D.D.C. 1967).

  Item (iii) adopts the rationale of cases such as SAB
Industrie AB v. Bendix Corp. , 199 USPQ 95 (E.D. Va. 1978).

  With regard to item (i), see Kimberly - Clark Corp.  v.
Procter & Gamble Distributing Co. Inc ., 972 F.2d 911, 23
USPQ2d 1921 (Fed. Cir. 1992) (Some quantum of collaboration
or connection is required in order for persons to be "joint"
inventors under 35 U.S.C. 116, and thus individuals who are
completely ignorant of what each other has done until years
after  their  individual  independent  efforts  cannot  be
considered joint inventors).

  Like  other  patent  applications,  jointly  filed

applications are subject to the requirements of 35 U.S.C.
121 that an application be directed to only a single
invention. If more than one invention is included in the
application, the examiner may require the application to be
restricted to one of the inventions. In such a case, a
"divisional" application complying with 35 U.S.C. 120 would
be entitled to the benefit of the earlier filing date of the
original application.

  It is possible that different claims of an application
or patent may have different dates of inventions even though
the  patent  covers  only  one  independent  and  distinct
invention  within  the  meaning  of  35  U.S.C.  121.  When
necessary, the Patent and Trademark Office or a court may
inquire of the patent applicant or owner concerning the
inventors and the invention dates for the subject matter of
the various claims.

  Guidelines

 37 CFR 1.45.  Joint inventors.

  *****

  (b) Inventors may apply for a patent jointly even though

  (1) They did not physically work together or at the same
time,

  (2) Each inventor did not make the same type or amount of
contribution, or

  (3) Each inventor did not make a contribution to the
subject matter of every claim of the application.

  (c) If multiple inventors are named in a nonprovisional
application,  each  named  inventor  must  have  made  a
contribution, individually or jointly, to the subject matter
of at least one claim of the application and the application
will be considered to be a joint application under 35 U.S.C.
116. If multiple inventors are named in a provisional
application,  each  named  inventor  must  have  made  a
contribution, individually or jointly, to the subject matter
disclosed in the provisional application and the provisional
application will be considered to be a joint application
under 35 U.S.C. 116.

  Since provisional applications may be filed without
claims, 37 CFR 1.45(c) states that each inventor named in a
joint provisional application must have made a contribution
to the subject matter disclosed in the application.

  The significant features resulting from the amendments
to 35 U.S.C. 116 by Public Law 98 - 622 are the following:

  (1) The joint inventors do not have to separately "sign
the application," but only need apply for the patent jointly
and make the required oath by signing the same; this is a
clarification, but not a change in current practice.

  (2) Inventors may apply for a patent jointly even though
"they did not work together or at the same time," thereby
clarifying (a) that it is not necessary that the inventors
physically work together on a project, and (b) that one
inventor may "take a step at one time, the other an approach

at different times." (Monsanto Co.  v.  Kamp,269 F. Supp.
818, 154 USPQ 259 (D.D.C. 1967)).

  (3) Inventors may apply for a patent jointly even though
"each did not make the same type or amount of contribution,"
thereby clarifying the "fact that each of the inventors play
a different role and that the contribution of one may not be
as great as that of another does not detract from the fact
that the invention is joint, if each makes some original
contribution, though partial, to the final solution of the
problem." Monsanto Co.  v. Kamp supra .

  (4) Inventors may apply for a patent jointly even though
"each did not make a contribution to the subject matter of
every claim of the patent."

  (5) Inventors may apply for a patent jointly as long as
each inventor made a contribution; i.e., was an inventor or
joint inventor, of the subject matter of at least one claim
of  the  patent;  there  is  no  requirement  that  all  the
inventors be joint inventors of the subject matter of any
one claim.

  (6) If an application by joint inventors includes more
than one independent and distinct invention, restriction may
be required with the possible result of a necessity to
change the inventorship named in the application if the
elected  invention  was  not  the  invention  of  all  the
originally named inventors.

  (7)  The  amendment  to  35  U.S.C.  116  increases  the
likelihood that different claims of an application or patent
may have different dates of invention; when necessary the
Office or court may inquire of the patent applicant or owner
concerning the inventors and the invention dates for the
subject matter of the various claims.

  Pending nonprovisional applications will be permitted to
be amended by complying with 37 CFR 1.48 to add claims to
inventions by inventors not named when the application was
filed as long as such inventions were disclosed in the
application as filed since 37 CFR 1.48 permits correction of
inventorship where the "correct inventor or inventors are
not named in an application for patent through error without
any deceptive intention on the part of the actual inventor
or inventors." This is specially covered in 37 CFR 1.48(c).

  Under 35 U.S.C. 116, an examiner may reject claims under
35  U.S.C.  102(f)  only  in  circumstances  where  a  named
inventor is not the inventor of at least one claim in the
application;  no  rejection  under  35  U.S.C.  102(f)  is
appropriate if a named inventor made a contribution to the
invention defined in any claim of the application.

  Under 35 U.S.C. 116, considered in conjunction with 35
U.S.C. 103(c) a rejection may be appropriate under 35 U.S.C.
102(f) / 103 where the subject matter; i.e., prior art, and
the claimed invention was not owned by, or subject to an
obligation of assignment to, the same person at the time the
invention was made.

  Applicants are responsible for correcting, and are
required to correct, the inventorship in compliance with 37
CFR 1.48 when the application is amended to change the
claims so that one (or more) of the named inventors is no

longer  an  inventor  of  the  subject  matter  of  a  claim
remaining in the application.

  In requiring restriction in an application filed by
joint inventors, the examiner should remind applicants of
the necessity to correct the inventorship pursuant to 37 CFR
1.48 if an invention is elected and the claims to the
invention of one or more inventors are cancelled.

  The examiner should not inquire of the patent applicant
concerning the inventors and the invention dates for the
subject matter of the various claims until it becomes
necessary  to  do  so  in  order  to  properly  examine  the
application.

  If an application is filed with joint inventors, the
examiner should assume that the subject matter of the
various claims was commonly owned at the time the inventions
covered therein were made, unless there is evidence to the
contrary. If inventors of subject matter, not commonly owned
at  the  time  of  the  later  invention,  file  a  joint
application, applicants have an obligation pursuant to 37
CFR 1.56 to point out the inventor and invention dates of
each claim and the lack of common ownership at the time the
later invention was made in order that the examiner may
consider the applicability of 35 U.S.C. 102(f) / 103 or 35
U.S.C. 102(g) / 103. The examiner should assume, unless
there is evidence to the contrary, that applicants are
complying with their duty of disclosure. It should be
pointed out that 35 U.S.C. 119>(a)< benefit may be claimed
to any foreign application as long as the U.S. named
inventor  was  the  inventor  of  the  foreign  application
invention and 35 U.S.C. 119>(a) - (d)< requirements are met.
Where two or more foreign applications are combined **>in a
single U.S. application, to take advantage of the changes to
35 U.S.C. 103 or 35 U.S.C. 116, the U.S. application may
claim benefit under 35 U.S.C. 119(a) to each of the foreign
applications provided all the requirements of 35 U.S.C.
119(a) - (d) are met. One of the conditions for benefit
under 35 U.S.C. 119(a) is that the foreign application must
be for "the same invention" as the application in the United
States. Therefore, a claim in the U.S. application which
relies on the combination of prior foreign applications may
not be entitled to the benefit under 35 U.S.C. 119(a) if the
subject matter of the claim is not sufficiently disclosed in
the prior foreign application. Cf. Studiengesellschaft Kohle
m.b.H. v.  Shell Oil Co. , 112 F.3d 1561, 42 USPQ2d 1674
(Fed. Cir. 1997). For example:

  If foreign applicant A invents X and files a foreign
application;  foreign  applicant  B  invents  Y  and  files
separate foreign application. A+B combine inventions X+Y and
A and B are proper joint inventors under 35 U.S.C. 116 and
file U.S. application to X+Y. The U.S. application may claim
benefit under 35 U.S.C. 119(a) to each of the foreign
applications provided the requirements of 35 U.S.C. 119(a) -
(d) are met.<

606  Title of Invention

 37 CFR 1.72.  Title and abstract.

  (a) The title of the invention, which should be as short
and specific as possible, should appear as a heading on the
first page of the specification, if it does not otherwise

appear at the beginning of the application.

  *****

606.01  Examiner May Require Change in Title [R - 3]

  Where the title is not descriptive of the invention
claimed, the examiner should require the substitution of a
new title that is clearly indicative of the invention to
which the claims are directed. Form Paragraph>s< 6.11 >and
6.11.01< may be used.

¶ 6.11  Title of Invention Is Not Descriptive

  The title of the invention is not descriptive. A new
title  is  required  that  is  clearly  indicative  of  the
invention to which the claims are directed.

 Examiner Note:

  If a title is suggested by the Examiner, add after form
paragraph  6.11:  The  following  title  is  suggested:
____________."

>¶  6.11.01  Title of Invention, Suggested Change

  The following title is suggested: " [1] "<

  This may result in slightly longer titles, but the loss
in brevity of title will be more than offset by the gain in
its informative value in indexing, classifying, searching,
etc.  If  a  satisfactory  title  is  not  supplied  by  the
applicant, the examiner may change the title by examiner's
amendment or by initialing, at the time of allowance.

  If a change in title is the only change being made by
the examiner at the time of allowance, a separate examiner's
amendment need not be prepared. The change in title will be
incorporated in the notice of allowance. This will be
accomplished by placing an "X" in the designated box on the
notice of allowance form and entering thereunder the title
as changed by the examiner who should initial the face of
the file wrapper.

  However, if an examiner's amendment must be prepared for
other reasons, any change in title will be incorporated
therein.

  Inasmuch as the words "improved," "improvement of," and
"improvement in" are not considered as part of the title of
an invention, the Patent and Trademark Office does not
include these words at the beginning of the title of the
invention.

607  Filing Fee [R - 1]

  Patent application filing fees are set in accordance
with 35 U.S.C. 41 and are listed in 37 CFR 1.16.

  See MPEP § 608.01(n) for multiple dependent claims.

  When filing * >a nonprovisional< application, a basic
fee entitles applicant to present 20 claims including not
more than 3 claims in independent form. If claims in excess
of the above are included at the time of filing, an

additional fee is required for each independent claim in
excess of three, and a fee is required for each claim in
excess of 20 claims (whether independent or dependent). Fees
for a proper multiple dependent claim are calculated based
on the number of claims to which the multiple dependent
claim refers, 37 CFR 1.75(c), and a separate fee is required
in each application containing a proper multiple dependent
claim. For an improper multiple dependent claim, the fee
charged is that charged for a single dependent claim.

  Upon submission of an amendment (whether entered or not)
affecting the claims, payment of fees for those claims in
excess of the number previously paid for is required.

  The Application Branch has been authorized to accept all
applications, otherwise acceptable, if the basic fee is
submitted, and to require payment of the deficiency within a
stated period upon notification of the deficiency.

  Amendments before the first action, or not filed in
response to an Office action, presenting additional claims
in excess of the number already paid for, not accompanied by
the full additional fee due, will not be entered in whole or
in part and applicant will be so advised. Such amendments
filed in reply to an Office action will be regarded as not
responsive thereto and the practice set forth in MPEP §
714.03 will be followed.

  The additional fees, if any, due with an amendment are
calculated  on  the  basis  of  the  claims  (total  and
independent) which would be present, if the amendment were
entered. The amendment of a claim, unless it changes a
dependent claim to an independent claim or adds to the
number of claims referred to in a multiple dependent claim,
and the replacement of a claim by a claim of the same type,
unless it is a multiple dependent claim which refers to more
prior claims, do not require any additional fees.

  For purposes of determining the fee due the Patent and
Trademark Office, a claim will be treated as dependent if it
contains reference to one or more other claims in the
application. A claim determined to be dependent by this test
will be entered if the fee paid reflects this determination.

  Any claim which is in dependent form but which is so
worded that it, in fact, is not a proper dependent claim, as
for example it does not include every limitation of the
claim on which it depends, will be required to be cancelled
as not being a proper dependent claim; and cancelation of
any further claim depending on such a dependent claim will
be similarly required. The applicant may thereupon amend the
claims to place them in proper dependent form, or may
redraft them as independent claims, upon payment of any
necessary additional fee.

  After a requirement for restriction, nonelected claims
will be included in determining the fees due in connection
with  a  subsequent  amendment  unless  such  claims  are
cancelled.

  An amendment canceling claims accompanying the papers
constituting the application will be effective to diminish
the number of claims to be considered in calculating the
filing fees to be paid.

  The additional fees, if any, due with an amendment are
required prior to any consideration of the amendment by the
examiner.

  Money paid in connection with the filing of a proposed
amendment will not be refunded by reason of the nonentry of
the amendment. However, unentered claims will not be counted
when calculating the fee due in subsequent amendments.

  Amendments affecting the claims cannot serve as the
basis for granting any refund.

  See MPEP § 1415 for reissue application fees.

607.02  Returnability of Fees [R - 1]

 >37 CFR 1.26.  Refunds.

  (a) Money paid by actual mistake or in excess will be
refunded, but a mere change of purpose after the payment of
money, as when a party desires to withdraw an application,
an appeal, or a request for oral hearing, will not entitle a
party to demand such a return. Amounts of twenty - five
dollars or less will not be returned unless specifically
requested within a reasonable time, nor will the payer be
notified of such amount; amounts over twenty - five dollars
may be returned by check or, if requested, by credit to a
deposit account.

  (b) [Reserved]

  (c) If the Commissioner decides not to institute a
reexamination proceeding, a refund of $1,690 will be made to
the requester of the proceeding. Reexamination requesters
should indicate whether any refund should be made by check
or by credit to a deposit account.

  Since 37 CFR 1.26(a) precludes refund of an application
filing  fee  when  applicant  desires  to  withdraw  an
application, any request by applicant not to process or
charge an application filing fee because the application was
not intended to be filed must be in the form of a petition
under 37 CFR 1.183 requesting suspension of the rules to the
extent that the filing fee not be processed or charged. Any
such petition must include the fee set forth in 37 CFR
1.17(h) and must be accompanied by an express abandonment of
the application in accordance with 37 CFR 1.138. In order
for such a petition to be granted, it must ordinarily be
filed and acted upon prior to the date on which the
application filing fee is processed or charged by the Office
with regard to the application.<

  All questions pertaining to the return of fees are
referred to the Refund Section of the Accounting Division of
the Office of Finance. No opinions should be expressed to
attorneys or applicants as to whether or not fees are
returnable in particular cases. Such questions may also be
treated, to the extent appropriate, in decisions on petition
decided by various Patent and Trademark Office officials.

608  Disclosure

  In  return  for  a  patent,  the  inventor  gives  as
consideration a complete revelation or disclosure of the
invention for which protection is sought. All amendments or

claims must find basis in the original disclosure, or they
involve new matter. Applicant may rely for disclosure upon
the specification with original claims and drawings, as
filed. See 37 CFR 1.118 and MPEP § 608.04.

  If  during  the  course  of  examination  of  a  patent
application, an examiner notes the use of language that
could be deemed offensive to any race, religion, sex, ethnic
group, or nationality, he or she should object to the use of
the  language  as  failing  to  comply  with  the  Rules  of
Practice. 37 CFR 1.3 proscribes the presentation of papers
which are lacking in decorum and courtesy. There is a
further basis for objection in that the inclusion of such
proscribed language in a Federal Government publication
would not be in the public interest. Also, the inclusion in
application drawings of any depictions or caricatures that
might reasonably be considered offensive to any group should
be similarly objected to, on like authority.

  The examiner should not pass the application to issue
until such language or drawings have been deleted, or
questions relating to the propriety thereof fully resolved.

  For design application practice, see MPEP § 1504.

608.01  Specification [R - 3]

 35 U.S.C. 22.  Printing of papers filed.

  The Commissioner may require papers filed in the Patent
and Trademark Office to be printed or typewritten.

 37 CFR 1.71.  Detailed description and specification of
the invention.

  (a) The specification must include a written description
of the invention or discovery and of the manner and process
of making and using the same, and is required to be in such
full, clear, concise, and exact terms as to enable any
person skilled in the art or science to which the invention
or discovery appertains, or with which it is most nearly
connected, to make and use the same.

  (b)  The  specification  must  set  forth  the  precise
invention for which a patent is solicited, in such manner as
to distinguish it from other inventions and from what is
old. It must describe completely a specific embodiment of
the process, machine, manufacture, composition of matter or
improvement invented, and must explain the mode of operation
or principle whenever applicable. The best mode contemplated
by the inventor of carrying out his invention must be set
forth.

  (c) In the case of an improvement, the specification must
particularly point out the part or parts of the process,
machine, manufacture, or composition of matter to which the
improvement relates, and the description should be confined
to the specific improvement and to such parts as necessarily
cooperate with it or as may be necessary to a complete
understanding or description of it.

  (d) A copyright or mask work notice may be placed in a
design or utility patent application adjacent to copyright
and mask work material contained therein. The notice may
appear at any appropriate portion of the patent application

disclosure. For notices in drawings, see § 1.84(o). The
content of the notice must be limited to only those elements
required by law. For example, " E1983 John Doe" (17 U.S.C.
401) and "M John Doe" (17 U.S.C. 909) would be properly
limited and, under current statutes, legally sufficient
notices of copyright and mask work, respectively. Inclusion
of a copyright or mask work notice will be permitted only if
the authorization language set forth in paragraph (e) of
this section is included at the beginning (preferably as the
first paragraph) of the specification.

  (e) The authorization shall read as follows:

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

  Certain cross notes to other related applications may be
made. References to foreign applications or to applications
identified only by the attorney's docket number should be
required to be cancelled. See 37 CFR 1.78 and MPEP § 202.01.

 37 CFR 1.52.  Language, paper, writing, margins.

  **>(a) The application, any amendments or corrections
thereto, and the oath or declaration must be in the English
language except as provided for in § 1.69 and paragraph (d)
of this section, or be accompanied by a verified translation
of the application and a translation of any corrections or
amendments into the English language. All papers which are
to become a part of the permanent records of the Patent and
Trademark  Office  must  be  legibly  written  either  by  a
typewriter or mechanical printer in permanent dark ink or
its equivalent in portrait orientation on flexible, strong,
smooth, non - shiny, durable, and white paper. All of the
application papers must be presented in a form having
sufficient clarity and contrast between the paper and the
writing thereon to permit the direct reproduction of readily
legible  copies  in  any  number  by  use  of  photographic,
electrostatic, photo - offset, and microfilming processes
and electronic reproduction by use of digital imaging and
optical character recognition. If the papers are not of the
required quality, substitute typewritten or mechanically
printed papers of suitable quality will be required. See §
1.125 for filing substitute typewritten or mechanically
printed papers constituting a substitute specification when
required by the Office.

  (b)  Except  for  drawings,  the  application  papers
(specification,  including  claims,  abstract,  oath  or
declaration, and papers as provided for in this part) and
also papers subsequently filed, must have each page plainly
written on only one side of a sheet of paper, with the claim
or claims commencing on a separate sheet and the abstract
commencing on a separate sheet. See § § 1.72(b) and 1.75(h).
The sheets of paper must be the same size and either 21.0
cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8 1/2
by 11 inches). Each sheet must include a top margin of at
least 2.0 cm. (3/4 inch), a left side margin of at least 2.5
cm. (1 inch), a right side margin of at least 2.0 cm. (3/4

inch), and a bottom margin of at least 2.0 cm. (3/4 inch),
and no holes should be made in the sheets as submitted. The
lines of the specification, and any amendments to the
specification, must be 1 1/2 or double spaced. The pages of
the specification including claims and abstract must be
numbered consecutively, starting with 1, the numbers being
centrally located above or preferably, below, the text. See
§ 1.84 for drawings.<

  (c) Any interlineation, erasure, cancellation or other
alteration of the application papers filed should be made
before the signing of any accompanying oath or declaration
pursuant to § 1.63 referring to those application papers and
should be dated and initialed or signed by the applicant on
the same sheet of paper. Application papers containing
alterations made after the signing of an oath or declaration
referring to those application papers must be supported by a
supplemental oath or declaration under § 1.67(c). After the
signing  of  the  oath  or  declaration  referring  to  the
application papers, amendments may only be made in the
manner provided by § § 1.121 and 1.123 through 1.125.

  (d) An application may be filed in a language other than
English. A verified English translation of the non - English
language application and the fee set forth in § 1.17(k) are
required to be filed with the application or within such
time as may be set by the Office.

 37 CFR 1.58.  Chemical and mathematical * >formulae<
and tables.

  (a) The specification, including the claims, may contain
chemical and mathematical formulas, but shall not contain
drawings or flow diagrams. The description portion of the
specification may contain tables; claims may contain tables
only if necessary to conform to 35 U.S.C. 112 or if
otherwise found to be desirable.

  (b) ** >[Reserved]

  (c) Chemical and mathematical formulae and tables must be
presented in compliance with § 1.52(a) and (b), except that
chemical and mathematical formulae or tables may be placed
in a landscape orientation if they cannot be presented
satisfactorily  in  a  portrait  orientation.  Typewritten
characters used in such formulae and tables must be chosen
from a block (nonscript) type font or lettering style having
capital letters which are at least 0.21 cm. (0.08 inch) high
( e.g. , elite type). A space at least 0.64 cm. (1/4 inch)
high should be provided between complex formulae and tables
and the text. Tables should have the lines and columns of
data closely spaced to conserve space, consistent with a
high degree of legibility.<

  In  order  that  specifications  may  be  expeditiously
handled by the Office, page numbers should be placed at the
center of the top or bottom of each page. It is a common
practice and a commendable one, to consecutively number all
the lines or every fifth line of each page. A top margin of
at least 3/4 inch * >must< be reserved on each page to
prevent possible mutilation of text when the papers are
punched for insertion in a file wrapper. >Except for the
drawings, the application papers (specification, including
claims, abstract, oath, or declaration, and all papers which
are to become a part of the permanent record of the Patent

and Trademark Office) must be on sheets of paper which are
the same size and are either 21.0 cm. by 29.7 cm. (DIN A4)
or 21.6 cm. by 27.9 cm. (81/2 by 11 inches).<

  Applicants should make every effort to file patent
applications in a form that is clear and reproducible. **
>All papers which are to become a part of the permanent
records of the Patent and Trademark Office must be legibly
written either by a typewriter or mechanical printer in
permanent dark ink or its equivalent in portrait orientation
on flexible, strong, smooth, nonshiny, durable, and white
paper.< Typed, mimeographed, xeroprinted, multigraphed or
nonsmearing  carbon  copy  forms  of  reproduction  are
acceptable.

  >Where an application is filed with papers that do not
comply with 37 CFR 1.52(a) or (b), the Office of Initial
Patent Examination will mail a "Notice to File Corrected
Application Papers" (PTO 1660) indicating the deficiency and
setting a time period within which the applicant must
correct the deficiencies to avoid abandonment. The failure
to submit application papers in compliance with 37 CFR
1.52(a) or (b) does not effect the grant of a filing date,
and original application papers that do not comply with 37
CFR 1.52(a) or (b) will be retained in the application file
as the original disclosure of the invention. The PTO will
not return papers simply because they do not comply with 37
CFR 1.52(a) or (b).<

  Legibility  includes  ability  to  be  photocopied  and
photomicrographed so that suitable reprints can be made >and
ability to be electronically reproduced by use of digital
imaging and optical character recognition.<. This requires a
high contrast, with black lines and a white background. Gray
lines  and/or  a  gray  background  sharply  reduce  photo
reproduction quality. Legibility of some application papers
may become impaired due to abrasion or aging of the printed
material during examination and ordinary handling of the
file. It may be necessary to require that legible and
permanent copies be furnished at later stages after filing,
particularly when preparing for issue.

  Some of the patent application papers received by the
Patent and Trademark Office are copies of the original,
ribbon copy. These are acceptable if, in the opinion of the
Office, they are legible and permanent.

  The paper used must have a surface such that amendments
may be written thereon in ink. So - called "Easily Erasable"
paper having a special coating so that erasures can be made
more easily may not provide a "permanent" copy>,< 37 CFR
1.52(a). If a light pressure of an ordinary (pencil) eraser
removes the imprint, the examiner should , as soon as this
becomes evident, notify applicant by use of Form Paragraph
6.32 that it will be necessary for applicant to order a copy
of the specification and claims to be made by the Patent and
Trademark  Office  at  the  applicant's  expense  for
incorporation in the file. It is not necessary to return
this copy to applicant for signature.

¶ 6.32  Application on Easily Erasable Paper

  The application papers are objected to because they are
not  a  permanent  copy  as  required  by  37  CFR  1.52(a).
Reference is made to [1].

  Applicant is required either (1) to submit permanent
copies of the identified parts or (2) to order a photocopy
of the above identified parts to be made by the Patent and
Trademark Office at applicant's expense for incorporation in
the file. See MPEP § 608.01.

 Examiner Note:

  In the "bracket" identify, 1) all of the specification;
2)  pages  of  the  specification;  3)  claims;  4)  oath,
declaration; 5) etc.

  See In re Benson , 1959 C.D. 5 * >,< 744 O.G.
353>(Comm'r Pat. 1959)<. Reproductions prepared by heat -
sensitive, hectographic, or spirit duplication processes are
also not satisfactory.

  The specification is sometimes in such faulty English
that  a  new  specification  is  necessary,  but  new
specifications encumber the record and require additional
reading, and hence should not be required or accepted unless
it is clear to the examiner that acceptance of a substitute
specification  would  facilitate  processing  of  the
application. See 37 CFR 1.125. >See also MPEP § 608.01(q).<

  Form Paragraph 7.29 may be used where the disclosure
contains informalities.

¶ 7.29  Disclosure Objected to, Minor Informalities

  The disclosure is objected to because of the following
informalities: [1] Appropriate correction is required.

 Examiner Note:

  Use this paragraph to point out minor informalities such
as spelling errors, inconsistent terminology, numbering of
elements,  etc.,  which  should  be  corrected.  See  form
paragraphs 6.28 to 6.32 for specific informalities.

  The specification does not require a date.

  If a newly filed application obviously fails to disclose
an invention with the clarity required by 35 U.S.C. 112,
revision of the application should be required. See MPEP §
702.01.

  As the specification is never returned to applicant
under any circumstances, the applicant should retain a line
for line copy thereof, each line, preferably, having been
consecutively  numbered  on  each  page.  In  amending,  the
attorney  or  the  applicant  requests  insertions,
cancellations, or alterations, giving the page and the line.

  37 CFR 1.52(c) relating to interlineations and other
alterations is strictly enforced. See In re Swanberg , 129
USPQ 364.

  Form Paragraphs 6.29 - 6.31 should be used where
appropriate.

¶ 6.29  Specification, Spacing of Lines

  The spacing of the lines of the specification is such as

to make reading and entry of amendments difficult. New
application papers with lines double spaced on good quality
paper are required.

¶ **>6.30  Numerous Errors in Specification

  36  U.S.C.  112,  first  paragraph,  requires  the
specification to be written in "full, clear, concise, and
exact terms." The specification is replete with terms which
are not clear, concise, and exact. The specification should
be revised carefully in order to comply with 35 U.S.C. 112,
first paragraph. Examples of some unclear, inexact, or
verbose terms used in the specification are: [1] .<

¶ 6.31  Lengthy Specification, Jumbo Case

  The lengthy specification has not been checked to the
extent necessary to determine the presence of all possible
minor  errors.  Applicant's  cooperation  is  requested  in
correcting any errors of which applicant may become aware in
the specification.

 Examiner Note:

  This paragraph is applicable in so - called "Jumbo
cases">(more than 20 pages, exclusive of claims).<

 USE OF METRIC SYSTEM OF MEASUREMENTS IN PATENT APPLICATIONS

  In order to minimize the necessity in the future for
converting  dimensions  given  in  the  English  system  of
measurements to the metric system of measurements when using
printed patents as research and prior art search documents,
all patent applicants should use the metric (S.I.) units
followed by the equivalent English units when describing
their  inventions  in  the  specifications  of  patent
applications.

  The initials S.I. stand for "Systeme International d'
Unites," the French name for the International System of
Units, a modernized metric system adopted in 1960 by the
International General Conference of Weights and Measures
based on precise unit measurements made possible by modern
technology.

 FILING OF NON - ENGLISH LANGUAGE APPLICATIONS

 37 CFR 1.52.  Language, Paper, Writing, Margins.

  *****

  (d) An application may be filed in a language other than
English. A verified English translation of the non - English
language application and the fee set forth in § 1.17(k) are
required to be filed with the application or within such
time as may be set by the Office.

  The Patent and Trademark Office will accord a filing
date to an application meeting the requirements of 35 U.S.C.
111(a), or a provisional application in accordance with 35
U.S.C. 111(b), even though some or all of the application
papers, including the written description and the claims, is
in a language other than English and hence does not comply
with 37 CFR 1.52.

  A verified English translation of the non - English
language papers, the filing fee, the oath or declaration (if
necessary) and fee set forth in 37 CFR 1.17(k) should either
accompany the application papers or be filed in the Office
within the time set by the Office.

  A subsequently filed verified English translation must
contain the complete identifying data for the application in
order to permit prompt association with the papers initially
filed. Accordingly, it is strongly recommended that the
original application papers be accompanied by a cover letter
and a self - addressed return postcard, each containing the
following  identifying  data  in  English:  (a)  applicant's
name(s); (b) title of invention; (c) number of pages of
specification, claims, and sheets of drawings; (d) whether
oath or declaration was filed and (e) amount and manner of
paying the filing fee.

  The translation must be a literal translation verified
as such by the translator and must be accompanied by a
signed request from the applicant, his or her attorney or
agent, asking that the verified English translation be used
as the copy for examination purposes in the Office. If the
verified English translation does not conform to idiomatic
English and United States practice, it should be accompanied
by a preliminary amendment making the necessary changes
without the introduction of new matter prohibited by 35
U.S.C. 132. In the event the verified literal translation is
not timely filed in the Office, the application will be
regarded as abandoned.

  It should be recognized that this practice is intended
for emergency situations to prevent loss of valuable rights
and should not be routinely used for filing applications.
There are at least two reasons why this should not be used
on a routine basis. First, there are obvious dangers to
applicant and the public if he or she fails to obtain a
correct literal translation. Second, the filing of a large
number of applications under the procedure will create
significant administrative burdens on the Office.

  ILLUSTRATIONS IN THE SPECIFICATION

  Graphical illustrations, diagrammatic views, flowcharts,
and diagrams in the descriptive portion of the specification
do not come within the purview of 37 CFR 1.58(a), which
permits tables and chemical formulas in the specification in
lieu of formal drawings. The examiner should object to such
descriptive illustrations in the specification and request
formal drawings in accordance with 37 CFR 1.81 when an
application contains graphs in the specification.

  Since the December 7, 1976, issue of patents, all tables
and  mathematical  equations  and  chemical  formulas,  or
portions thereof, have been reproduced for printing by a
computer process developed by the Data Base Contractor.
Those  portions  of  chemical  formulas  which  cannot  be
reproduced by the process, such as dotted, curved, broken
and wedge - shaped lines, must be drawn by hand on the
photocomposed  page.  There  are,  however,  some  chemical
structures which cannot be reproduced because they are
either too complex or involve too many lines which cannot be
generated by the computer process. The camera copy process,
which is used to insert these types of structures onto the
printed patent page, is both time consuming and costly to

the Office. Because of the reduction factor and failure to
comply with the guidelines set forth in 37 CFR>1.52(a) and<
1.58(a) ** the reproduction of these structures is often
poor.

  Therefore, the specification, including any claims, may
contain chemical formulas and mathematical equations, but
should not contain drawings or flow diagrams or diagrammatic
views of chemical structures. The description portion of the
specification may contain tables; claims may contain tables
only if necessary to conform to 35 U.S.C. 112.

  See MPEP § 601.01(d) for treatment of applications filed
without all pages of the specification.

608.01(a)  Arrangement of Application [R - 3]

 37 CFR 1.77.  Arrangement of application elements.

  **>(a) The elements of the application, if applicable,
should appear in the following order:

  (1) Utility Application Transmittal Form.

  (2) Fee Transmittal Form.

  (3) Title of the invention; or an introductory portion
stating  the  name,  citizenship,  and  residence  of  the
applicant, and the title of the invention.

  (4) Cross - reference to related applications.

  (5) Statement regarding federally sponsored research or
development.

  (6)  Reference  to  a  "Microfiche  appendix."  (See  §
1.96(c)). The total number of microfiche and total number of
frames should be specified.

  (7) Background of the invention.

  (8) Brief summary of the invention.

  (9)  Brief  description  of  the  several  views  of  the
drawing.

  (10) Detailed description of the invention.

  (11) Claim or claims.

  (12) Abstract of the Disclosure.

  (13) Drawings.

  (14) Executed oath or declaration.

  (15) Sequence Listing (See § § 1.821 through 1.825).

  (b) The elements set forth in paragraphs (a)(3) through
(a)(5), (a)(7) through (a)(12) and (a)(15) of this section
should appear in upper case, without underlining or bold
type, as section headings. If no text follows the section
heading, the phrase "Not Applicable" should follow the
section heading.<

 NOTE

  Design patent specification, MPEP § 1503.01.

  Plant patent specification, MPEP § 1605.

  Reissue patent specification, MPEP § 1411.

  The following order of arrangement >of specification
elements<  is  preferable  in  framing  the  nonprovisional
specification  and,  except  for  the  **  >reference  to  a
"Microfiche Appendix"<, each of the lettered items should **
>appear in upper case, without underlining or bold type, as
section headings. If no text follows the section heading,
the  phrase  "Not  Applicable"  should  follow  the  section
heading.< It is recommended that provisional applications
follow the same general format, although claims are not
required.

 (a) Title of the Invention.

 (b) Cross - References to Related Applications **.

 >(c)  Statement  Regarding  Federally  Sponsored
Research or Development.

 (d) Reference to a "Microfiche Appendix." (See 37
CFR 1.96.)<

 (* >e<) Background of the Invention.

 1.  Field of the Invention.

 2.  Description  of  the  related  art  including
information disclosed under 37 CFR 1.97and 1.98.

 (* >f<) >Brief< Summary of the Invention.

 (* >g<) Brief Description of the >Several Views of
the< Drawings.

 (* >h<) >Detailed< Description of the **>Invention<.

 (* >i<) Claim(s).

 (* >j<) Abstract of the Disclosure.

 >(k) Drawings.

 (l) Sequence Listing (See 37 CFR 1.821 - 1.825).<

  Applicant (typically a pro se ) may be advised of the
proper arrangement by using Form Paragraph 6.01 or 6.02.

¶ 6.01  Arrangement of Specification

  ** >The following guidelines illustrate the preferred
layout and content for patent applications. These guidelines
are suggested for the applicant's use.

 Arrangement of the Specification

  The following order or arrangement is preferred in
framing the specification and, except for the reference to a
"Microfiche Appendix" and the drawings, each of the lettered

items should appear in upper case, without underlining or
bold type, as section headings. If no text follows the
section heading, the phrase "Not Applicable" should follow
the section heading:

  (a) Title of the Invention.

  (b) Cross - Reference to Related Applications.

  (c) Statement Regarding Federally Sponsored Research or
Development.

  (d) Reference to a "Microfiche Appendix" (see 37 CFR
1.96).

  (e) Background of the Invention.

  1.  Field of the Invention.

  2.  Description of Related Art including information
disclosed under 37 CFR 1.97 and 1.98.

  (f) Brief Summary of the Invention.

  (g)  Brief  Description  of  the  Several  Views  of  the
Drawing(s).

  (h) Detailed Description of the Invention.

  (i) Claim or Claims (commencing on a separate sheet).

  (j) Abstract of the Disclosure (commencing on a separate
sheet).

  (k) Drawings.

  (l) Sequence Listing (see 37 CFR 1.821 - 1.825).

 Examiner Note:

  In this paragraph an introductory sentence will be
necessary. This paragraph is intended primarily for use in
pro se  applications.<

¶ 6.02  Content of Specification

 Content of Specification

  **>(a) Title of the Invention : See 37 CFR 1.72(a). The
title of the invention should be placed at the top of the
first page of the specification. It should be brief but
technically accurate and descriptive, preferably from two to
seven words.

  (b) Cross - Reference to Related Applications : See 37
CFR 1.78 and MPEP § 201.11.

  (c)  Statement Regarding Federally Sponsored Research and
Development: See MPEP § 310.

  (d) Reference to a "Microfiche Appendix" : See 37 CFR
1.96(c) and MPEP § 608.05. The total number of microfiche
and the total number of frames should be specified.

  (e)  Background of the Invention : The specification

should set forth the background of the invention in two
parts:

 (1)  Field of the Invention : A statement of the field
of art to which the invention pertains. This statement may
include  a  paraphrasing  of  the  applicable  U.S.  patent
classification definitions of the subject matter of the
claimed invention. This item may also be titled "Technical
Field."

 (2)  Description of the Related Art : A description of
the related art known to the applicant and including, if
applicable, references to specific related art and problems
involved  in  the  prior  art  which  are  solved  by  the
applicant's  invention.  This  item  may  also  be  titled
"Background Art."

  (f) Brief Summary of the Invention : A brief summary or
general statement of the invention as set forth in 37 CFR
1.73. The summary is separate and distinct from the abstract
and  is  directed  toward  the  invention  rather  than  the
disclosure as a whole. The summary may point out the
advantages of the invention or how it solves problems
previously  existent  in  the  prior  art  (and  preferably
indicated in the Background of the Invention). In chemical
cases it should point out in general terms the utility of
the invention. If possible, the nature and gist of the
invention or the inventive concept should be set forth.
Objects of the invention should be treated briefly and only
to the extent that they contribute to an understanding of
the invention.

  (g)  Brief  Description  of  the  Several  Views  of  the
Drawing(s) : A reference to and brief description of the
drawing(s) as set forth in 37 CFR 1.74.

  (h) Detailed Description of the Invention : A description
of the preferred embodiment(s) of the invention as required
in 37 CFR 1.71. The description should be as short and
specific  as  is  necessary  to  describe  the  invention
adequately and accurately. Where elements or groups of
elements, compounds, and processes, which are conventional
and generally widely known in the field of the invention
described, and their exact nature or type is not necessary
for an understanding and use of the invention by a person
skilled in the art, they should not be described in detail.
However, where particularly complicated subject matter is
involved or where the elements, compounds, or processes may
not  be  commonly  or  widely  known  in  the  field,  the
specification should refer to another patent or readily
available publication which adequately describes the subject
matter.

  (i) Claim or Claims : See 37 CFR 1.75 and MPEP §
608.01(m). The claim or claims must commence on a separate
sheet (37 CFR 1.52(b)). Where a claim sets forth a plurality
of elements or steps, each element or step of the claim
should be separated by a line indentation. There may be
plural indentations to further segregate subcombinations or
related steps. See 37 CFR 1.75.

  (j) Abstract of the Disclosure : A brief narrative of the
disclosure as a whole in a single paragraph of 250 words or
less commencing on a separate sheet following the claims.

  (k) Drawings: See 37 CFR 1.81, 1.83 - 1.85, and MPEP §
608.02.

  (l) Sequence Listing: See 37 CFR 1.821 - 1.825.

 Examiner Note:

  In this paragraph an introductory sentence will be
necessary. This paragraph is intended primarily for use in
pro se applications. See also "pro se" form paragraphs in
Chapter  1700  of  the  Manual  of  Patent  Examining  Form
Paragraphs.<

608.01(b)  Abstract of the Disclosure [R - 3]

 37 CFR 1.72  Title and abstract.

  *****

  **>(b) A brief abstract of the technical disclosure in
the  specification  must  commence  on  a  separate  sheet,
preferably following the claims under the heading "Abstract
of the Disclosure." The purpose of the abstract is to enable
the Patent and Trademark Office and the public generally to
determine quickly from a cursory inspection the nature and
gist of the technical disclosure. The abstract shall not be
used for interpreting the scope of the claims.<

  In all cases which lack an abstract, the examiner in the
first Office action should require the submission of an
abstract  directed  to  the  technical  disclosure  in  the
specification. See Form Paragraph 6.12 (below). Applicants
may use either "Abstract" or "Abstract of the Disclosure" as
a heading.

  If the abstract contained in the application does not
comply with the guidelines, the examiner should point out
the defect to the applicant in the first Office action, or
at the earliest point in the prosecution that the defect is
noted, and require compliance with the guidelines. Since the
abstract of the disclosure has been interpreted to be a part
of the specification for the purpose of compliance with
paragraph 1 of 35 U.S.C. 112 ( In re Armbruster , 512 F2d
676, 185 USPQ 152 (CCPA, 1975)), it would ordinarily be
preferable that the applicant make the necessary changes to
the  abstract  to  bring  it  into  compliance  with  the
guidelines. See Form Paragraphs 6.13 - 6.16 (below).

  Responses  to  such  actions  requiring  either  a  new
abstract or amendment to bring the abstract into compliance
with the guidelines should be treated under 37 CFR 1.111(b)
practice like any other formal matter. Any submission of a
new abstract or amendment to an existing abstract should be
carefully reviewed for introduction of new matter, 35 U.S.C.
132, MPEP § 608.04.

  Upon passing the case to issue, the examiner should see
that the abstract is an adequate and clear statement of the
contents of the disclosure and generally in line with the
guidelines. The abstract shall be changed by the examiner's
amendment in those instances where deemed necessary. This
authority and responsibility of the examiner shall not be
abridged by the desirability of having the applicant make
the necessary corrections. For example, if the application
is otherwise in condition for allowance except that the

abstract does not comply with the guidelines, the examiner
generally should make any necessary revisions by examiner's
amendment rather than issuing an Ex parte  Quayle action
requiring applicant to make the necessary revisions.

  Under current practice, in all instances where the
application contains an abstract when sent to issue, the
abstract will be printed on the patent.

  GUIDELINES FOR THE PREPARATION OF PATENT ABSTRACTS

  Background

  The Rules of Practice in Patent Cases require that each
application  for  patent  include  an  abstract  of  the
disclosure, 37 CFR 1.72(b).

  The content of a patent abstract should be such as to
enable the reader thereof, regardless of his or her degree
of familiarity with patent documents, to ascertain quickly
the character of the subject matter covered by the technical
disclosure and should include that which is new in the art
to which the invention pertains.

  The abstract is not intended nor designated for use in
interpreting the scope or meaning of the claims, 37 CFR
1.72(b).

  Content

  A  patent  abstract  is  a  concise  statement  of  the
technical disclosure of the patent and should include that
which is new in the art to which the invention pertains.

  If the patent is of a basic nature, the entire technical
disclosure may be new in the art, and the abstract should be
directed to the entire disclosure.

  If the patent is in the nature of an improvement in old
apparatus, process, product, or composition, the abstract
should include the technical disclosure of the improvement.

  In certain patents, particularly those for compounds and
compositions, wherein the process for making and/or the use
thereof are not obvious, the abstract should set forth a
process for making and/or a use thereof.

  If the new technical disclosure involves modifications
or alternatives, the abstract should mention by way of
example the preferred modification or alternative.

  The abstract should not refer to purported merits or
speculative applications of the invention and should not
compare the invention with the prior art.

  Where  applicable,  the  abstract  should  include  the
following: (1) if a machine or apparatus, its organization
and operation; (2) if an article, its method of making; (3)
if a chemical compound, its identity and use; (4) if a
mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of apparatus should
not be given.

  With  regard  particularly  to  chemical  patents,  for
compounds  or  compositions,  the  general  nature  of  the

compound or composition should be given as well as the use
thereof; e.g., "The compounds are of the class of alkyl
benzene sulfonyl ureas, useful as oral anti - diabetics."
Exemplification  of  a  species  could  be  illustrative  of
members of the class. For processes, the type reaction,
reagents and process conditions should be stated, generally
illustrated  by  a  single  example  unless  variations  are
necessary.

 Language and Format

  The abstract should be in narrative form and generally
limited to a single paragraph within the range of 50 to 250
words. The abstract should not exceed 25 lines of text.
Abstracts exceeding 25 lines of text should be checked to
see that it does not exceed 250 words in length since the
space provided for the abstract on the computer tape by the
printer is limited. If the abstract cannot be placed on the
computer  tape  because  of  its  excessive  length,  the
application will be returned to the examiner for preparation
of a shorter abstract. The form and legal phraseology often
used in patent claims, such as "means" and "said", should be
avoided.  The  abstract  should  sufficiently  describe  the
disclosure to assist readers in deciding whether there is a
need for consulting the full patent text for details.

  The language should be clear and concise and should not
repeat information given in the title. It should avoid using
phrases which can be implied, such as, "This disclosure
concerns," "The disclosure defined by this invention," "This
disclosure describes," etc.

  Responsibility

  Preparation of the abstract is the responsibility of the
applicant.  Background  knowledge  of  the  art  and  an
appreciation of the applicant's contribution to the art are
most important in the preparation of the abstract. The
review  of  the  abstract,  for  compliance  with  these
guidelines, with any necessary editing and revision on
allowance of the application is the responsibility of the
examiner.

  Sample Abstracts

  (1) A heart valve which has an annular valve body
defining an orifice and a plurality of struts forming a pair
of cages on opposite sides of the orifice. A spherical
closure member is captively held within the cages and is
moved by blood flow between open and closed positions in
check valve fashion. A slight leak or backflow is provided
in the closed position by making the orifice slightly larger
than the closure member. Blood flow is maximized in the open
position of the valve by providing an inwardly convex
contour on the orifice - defining surfaces of the body. An
annular rib is formed in a channel around the periphery of
the valve body to anchor a suture ring used to secure the
valve within a heart.

  (2) A method for sealing whereby heat is applied to seal,
overlapping closure panels of a folding box made from
paperboard having an extremely thin coating of moisture -
proofing thermoplastic material on opposite surfaces. Heated
air  is  directed  at  the  surfaces  to  be  bonded,  the
temperature of the air at the point of impact on the

surfaces being above the char point of the board. The
duration of application of heat is made so brief, by a
corresponding high rate of advance of the boxes through the
air stream, that the coating on the reverse side of the
panels remains substantially non - tacky. The bond is formed
immediately after heating within a period of time for any
one surface point less than the total time of exposure to
heated air of that point. Under such conditions the heat
applied to soften the thermoplastic coating is dissipated
after completion of the bond by absorption into the board
acting as a heat sink without the need for cooling devices.

  (3) Amides are produced by reacting an ester of a
carboxylic acid with an amine, using as catalyst an alkoxide
of an alkali metal. The ester is first heated to at least 75
_ C. under a pressure of no more than 500 mm. of mercury to
remove moisture and acid gases which would prevent the
reaction, and then converted to an amide without heating to
initiate the reaction.

¶ 6.12  Abstract Missing (Background)

  This application does not contain an abstract of the
disclosure as required by 37 CFR 1.72(b). An abstract on a
separate sheet is required.

 Examiner Note :

  For pro se applicant consider form paragraphs 6.14 -
6.16.

¶ 6.13  Abstract Objected to: Minor Informalities

  The abstract of the disclosure is objected to because
[1]. Correction is required. See MPEP 608.01(b).

 Examiner Note  :

  In bracket 1, indicate the informalities that should be
corrected. Use this paragraph for minor informalities such
as the inclusion of legal phraseology, undue length, etc.

¶ 6.14  Abstract of the Disclosure: Content

  Applicant is reminded of the proper content of an
abstract of the disclosure.

  A  patent  abstract  is  a  concise  statement  of  the
technical disclosure of the patent and should include that
which is new in the art to which the invention pertains. If
the patent is of a basic nature, the entire technical
disclosure may be new in the art, and the abstract should be
directed to the entire disclosure. If the patent is in the
nature of an improvement in an old apparatus, process,
product or composition, the abstract should include the
technical disclosure of the improvement. In certain patents,
particularly those for compounds and compositions, wherein
the process for making and/or the use thereof are not
obvious, the abstract should set forth a process for making
and/or use thereof. If the new technical disclosure involves
modifications or alternatives, the abstract should mention
by way of example the preferred modification or alternative.

  The abstract should not refer to purported merits or
speculative applications of the invention and should not

compare the invention with the prior art.

  Where  applicable,  the  abstract  should  include  the
following: (1) if a machine or apparatus, its organization
and operation; (2) if an article, its method of making; (3)
if a chemical compound, its identity and use; (4) if a
mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of apparatus should
not be given.

 Examiner Note  :

  See paragraph 6.16.

¶ 6.15  Abstract of the Disclosure, Chemical Cases

  Applicant is reminded of the proper content of an
abstract of the disclosure.

  In chemical patent abstracts, compounds or compositions,
the general nature of the compound or composition should be
given as well as its use, e.g., "The compounds are of the
class of alkyl benzene sulfonyl ureas, useful as oral anti -
diabetics."  Exemplification  of  a  species  could  be
illustrative of members of the class. For processes, the
type reaction, reagents and process conditions should be
stated, generally illustrated by a single example unless
variations are necessary. Complete revision of the content
of the abstract is required on a separate sheet.

¶ 6.16  Abstract of the Disclosure, Language

  Applicant is reminded of the proper language and format
of an abstract of the disclosure.

  The abstract should be in narrative form and generally
limited to a single paragraph on a separate sheet within the
range of 50 to 250 words. It is important that the abstract
not exceed 250 words in length since the space provided for
the abstract on the computer tape used by the printer is
limited. The form and legal phraseology often used in patent
claims, such as "means" and "said" , should be avoided. The
abstract should describe the disclosure sufficiently to
assist readers in deciding whether there is a need for
consulting the full patent text for details.

  The language should be clear and concise and should not
repeat information given in the title. It should avoid using
phrases which can be implied, such as, "The disclosure
concerns, " "The disclosure defined by this invention," "The
disclosure describes," etc .

 Examiner Note  :

  See also paragraph 6.14.

608.01(c)  Background of the Invention

  The Background of the Invention ordinarily comprises two
parts:

 (1) Field of the Invention: A statement of the field
of art to which the invention pertains. This statement may
include  a  paraphrasing  of  the  applicable  U.S.  patent
classification definitions. The statement should be directed

to the subject matter of the claimed invention.

 (2)  Description  of  the  related  art  including
information  disclosed  under  37  CFR  1.97  and  1.98:  A
paragraph(s) describing to the extent practical the state of
the prior art or other information disclosed known to the
applicant, including references to specific prior art or
other information where appropriate. Where applicable, the
problems involved in the prior art or other information
disclosed which are solved by the applicant's invention
should be indicated. See also MPEP § 608.01(a), § 608.01(p)
and § 707.05(b).

608.01(d)  Brief Summary of Invention [R - 1]

 37 CFR 1.73.  Summary of the invention.

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

  Since the purpose of the brief summary of invention is
to apprise the public, and more especially those interested
in the particular art to which the invention relates, of the
nature of the invention, the summary should be directed to
the specific invention being claimed, in contradistinction
to mere generalities which would be equally applicable to
numerous preceding patents. That is, the subject matter of
the invention should be described in one or more clear,
concise  sentences  or  paragraphs.  Stereotyped  general
statements that would fit one case as well as another serve
no useful purpose and may well be required to be cancelled
as surplusage, and, in the absence of any illuminating
statement, replaced by statements that are directly in point
as applicable exclusively to the case in hand.

  The brief summary, if properly written to set out the
exact nature, operation, and purpose of the invention, will
be of material assistance in aiding ready understanding of
the patent in future searches. ** The brief summary should
be more than a mere statement of the objects of the
invention, which statement is also permissible under 37 CFR
1.73.

  The brief summary of invention should be consistent with
the subject matter of the claims. Note final review of
application and preparation for issue, MPEP § 1302.

608.01(e)  Reservation Clauses Not Permitted

 37 CFR 1.79.  Reservation clauses not permitted.

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

608.01(f)  Brief Description of Drawings [R - 2]

 37 CFR 1.74.  Reference to drawings.

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

  ** >The Initial Application Examination Division will
review the specification, including the brief description,
to  determine  whether  all  of  the  figures  of  drawings
described  in  the  specification  are  present.  If  the
specification describes a figure which is not present in the
drawings, the application will be treated as an application
filed without all figures of drawings in accordance with
MPEP § 601.01(g), unless the application lacks any drawings,
in  which  case  the  application  will  be  treated  as  an
application filed without drawings in accordance with MPEP §
601.01(f).<

  The examiner should see to it that the figures are
correctly described in the brief description of the drawing,
that all section lines used are referred to, and that all
needed section lines are used.

  The specification must contain or be amended to contain
proper reference to the existence of drawings executed in
color as required by 37 CFR 1.84.

 37 CFR 1.84.  Standards for drawings.

  (a)Drawings . There are two acceptable categories for
presenting drawings in utility patent applications:

  (1)Black ink . Black and white drawings are normally
required India ink, or its equivalent that secures solid
black lines, must be used for drawings, or

  (2)Color . On rare occasions, color drawing may be
necessary as the only practical medium by which to disclose
the subject matter sought to be patented in a utility patent
application or the subject matter of a statutory invention
registration. The Patent and Trademark Office will accept
color drawings in utility patent applications and statutory
invention registrations only after granting a petition filed
under this paragraph explaining why the color drawings are
necessary. Any such petition must include the following:

  (i) The appropriate fee set forth in § 1.17(h);

  (ii) Three (3) sets of color drawings; and

  (iii)  The  specification  must  contain  the  following
language as the first paragraph in that portion of the
specification relating to the brief description of the
drawing:

  " The file of this patent contains at least one drawing
executed  in  color:  Copies  of  this  patent  with  color
drawing(s) will be provided by the Patent and Trademark
Office upon request and payment of the necessary fee.' '

  If the language is not in the specification, a proposed
amendment  to  insert  the  language  must  accompany  the

petition.

608.01(g)  Detailed Description of Invention

  A detailed description of the invention and drawings
follows  the  general  statement  of  invention  and  brief
description of the drawings. This detailed description,
required by 37 CFR 1.71, MPEP § 608.01, must be in such
particularity  as  to  enable  any  person  skilled  in  the
pertinent art or science to make and use the invention
without involving extensive experimentation. An applicant is
ordinarily permitted to use his or her own terminology, as
long  as  it  can  be  understood.  Necessary  grammatical
corrections, however, should be required by the examiner,
but it must be remembered that an examination is not made
for the purpose of securing grammatical perfection.

  The reference characters must be properly applied, no
single reference character being used for two different
parts or for a given part and a modification of such part.
In the latter case, the reference character, applied to the
given part, with a prime affixed may advantageously be
applied to the modification. Every feature specified in the
claims  must  be  illustrated,  but  there  should  be  no
superfluous illustrations.

  The description is a dictionary for the claims and
should provide clear support or antecedent basis for all
terms used in the claims. See 37 CFR 1.75, MPEP § 608.01(i),
§ 608.01(o), and § 1302.01.

  NOTE. - Completeness, MPEP § 608.01(p).

  USE OF SYMBOL "Phi" IN PATENT APPLICATION

  The Greek letter "Phi" has long been used as a symbol in
equations in all technical disciplines. It further has
special uses which include the indication of an electrical
phase or clocking signal as well as an angular measurement.
The recognized symbols for the upper and lower case Greek
Phi characters, however, do not appear on most typewriters.
This apparently has led to the use of a symbol composed by
first striking a zero key and then backspacing and striking
the "cancel" or "slash" key to result in an approximation of
accepted symbols for the Greek character Phi. In other
instances, the symbol is composed using the upper or lower
case letter "O" with the "cancel" or "slash" superimposed
thereon by backspacing, or it is simply handwritten in a
variety of styles. These expedients result in confusion
because of the variety of type sizes and styles available on
modern typewriters.

  In recent years, the growth of data processing has seen
the increasing use of this symbol ("O") as the standard
representation of zero. The "slashed" or cancelled" zero is
used to indicate zero and avoid confusion with the upper
case letter "O" in both text and drawings.

  Thus, when the symbol " Ø " in one of its many
variations,  as  discussed  above,  appears  in  patent
applications being prepared for printing, confusion as to
the intended meaning of the symbol arises. Those (such as
examiners, attorneys, and applicants) working in the art can
usually  determine  the  intended  meaning  of  this  symbol
because of their knowledge of the subject matter involved,

but editors preparing these applications for printing have
no such specialized knowledge and confusion arises as to
which symbol to print. The result, at the very least, is
delay until the intended meaning of the symbol can be
ascertained.

  Since the Office does not have the resources to conduct
a technical editorial review of each application before
printing, and in order to eliminate the problem of printing
delays associated with the usage of these symbols, any
question about the intended symbol will be resolved by the
editorial staff of the Office of Publications by printing
the symbol Ø whenever that symbol is used by the applicant.
Any Certificate of Correction necessitated by the above
practice will be at the patentee's expense (37 CFR 1.323)
because the intended symbol was not accurately presented by
the Greek upper or lower case Phi letters ( Ø  ,  Ø  ) in
the patent application.

608.01(h)  Mode of Operation of Invention [R - 1]

  The best mode contemplated by the inventor of carrying
out  his  or  her  invention  must  be  set  forth  in  the
description. see 35 U.S.C. 112. There is no statutory
requirement for the disclosure of a specific example. A
patent specification is not intended nor required to be a
production specification, In re Gay, 309 F2d 768, 135 USPQ
311 (CCPA 1962). The absence of a specific working example
is not necessarily evidence that the best mode has not been
disclosed, nor is the presence of one evidence that it has,
In re Honn, 364 F2d 454, 150 USPQ, 652 (CCPA 1966). In
determining the adequacy of a best mode disclosure, only
evidence of concealment (accidental or intentional) is to be
considered. That evidence must tend to show that the quality
of an applicant's best mode disclosure is so poor as to
effectively result in concealment; In re Sherwood, 204 USPQ
537 (CCPA 1980).

  The question of whether an inventor has or has not
disclosed what he or she feels is his or her best mode is a
question  separate  and  distinct  from  the  question  of
sufficiency of the disclosure, In re Gay,135 USPQ 311 (CCPA
1962);  In re Glass , 181 USPQ 31 (CCPA 1974). See 35 U.S.C.
112 and 37 CFR 1.71(b).  Sylgab Steel & Wire Corp. v.  Imoco
- Gateway Corp ., 357 F. Supp. 657, 178 USPQ 22 (N.D. Ill.
1973);  H. K. Porter Co., Inc . v.  Gates Rubber Co ., 187
USPQ 692, 708, (D. Colo. 1975).

  If the best mode contemplated by the inventor at the
time of filing the application is not disclosed, such defect
cannot be cured by submitting an amendment seeking to put
into the specification something required to be there when
the application was originally filed, In re Hay , 534 F2d
917, 189 USPQ 790 (CCPA 1976). Any proposed amendment of
this type should be treated as new matter.

  Patents have been held invalid in cases where the
patentee did not disclose the best mode known to him. See
Flick - Reedy Corp. v. Hydro - Line Manufacturing Co., 351
F.2d 546, 146 USPQ 694 (CA 7 1965), cert. denied, 383 U.S.
958, 148 USPQ 771 (1966); Indiana General Corp. v. Krystinel
Corp., 297 F. Supp. 427 161 USPQ 82 (S.D. N.Y. 1969),
affirmed, 421 F.2d 1033, 164 USPQ 321 (CA 2 1970); Dale
Electronics, Inc. v. R.C.L. Electronics, Inc., 488 F.2d 382,
180 USPQ 235 (CA 1 1973); Union Carbide Corp. v. Borg -

Warner Corp., 550 F.2d 355, 193 USPQ 1 (CA 6 1977); Reynolds
Metals Co. v. Acorn Building Components Inc., 548 F.2d 155,
163, 192 USPQ 737 (CA 6 1977).

  NOTE. - Completeness, >see< MPEP § 608.01(p) >and § 2165
to § 2165.04<.

608.01(i)  Claims [R - 3]

 37 CFR 1.75.  Claims

  (a)  The  specification  must  conclude  with  a  claim
particularly  pointing  out  and  distinctly  claiming  the
subject matter which the applicant regards as his invention
or discovery.

  (b) More than one claim may be presented provided they
differ substantially from each other and are not unduly
multiplied.

  (c) One or more claims may be presented in dependent
form, referring back to and further limiting another claim
or claims in the same application. Any dependent claim which
refers to more than one other claim ("multiple dependent
claim" ) shall refer to such other claims in the alternative
only. A multiple dependent claim shall not serve as a basis
for any other multiple dependent claim. For fee calculation
purposes under § 1.16, a multiple dependent claim will be
considered to be that number of claims to which direct
reference is made therein. For fee calculation purposes,
also, any claim depending from a multiple dependent claim
will be considered to be that number of claims to which
direct reference is made in that multiple dependent claim.
In  addition  to  the  other  filing  fees,  any  original
application which is filed with, or is amended to include,
multiple dependent claims must have paid therein the fee set
forth in § 1.16(d). Claims in dependent form shall be
construed to include all the limitations of the claim
incorporated  by  reference  into  the  dependent  claim.  A
multiple dependent claim shall be construed to incorporate
by reference all the limitations of each of the particular
claims in relation to which it is being considered.

  (d)(1) The claim or claims must conform to the invention
as set forth in the remainder of the specification and the
terms and phrases used in the claims must find clear support
or antecedent basis in the description so that the meaning
of the terms in the claims may be ascertainable by reference
to the description (See § 1.58(a).)

  (2) See § § 1.141 to 1.146 as to claiming different
inventions in one application.

  (e) Where the nature of the case admits, as in the case
of an improvement, any independent claim should contain in
the following order, (1) a preamble comprising a general
description of all the elements or steps of the claimed
combination which are conventional or known, (2) a phrase
such as "wherein the improvement comprises," and (3) those
elements, steps and/or relationships which constitute that
portion of the claimed combination which the applicant
considers as the new or improved portion.

  (f) If there are several claims, they shall be numbered
consecutively in Arabic numerals.

  **>(g) The least restrictive claim should be presented as
claim number 1, and all dependent claims should be grouped
together with the claim or claims to which they refer to the
extent practicable.

  (h) The claim or claims must commence on a separate
sheet.

  (i) Where a claim sets forth a plurality of elements or
steps, each element or step of the claim should be separated
by a line indentation.<

 NOTE

  Numbering of Claims, MPEP § 608.01(j).

  Form of Claims, MPEP § 608.01(m).

  Dependent claims, MPEP § 608.01(n).

  Examination of claims, MPEP § 706.

  Claims in excess of fee, MPEP § 714.10.

608.01(j)  Numbering of Claims [R - 1]

 37 CFR 1.126  .Numbering of claims.

  The original numbering of the claims must be preserved
throughout the prosecution. When claims are canceled the
remaining claims must not be renumbered. When claims are
added, except when presented in accordance with § 1.121(b),
they  must  be  numbered  by  the  applicant  consecutively
beginning  with  the  number  next  following  the  highest
numbered claim previously presented (whether entered or
not). When the application is ready for allowance, the
examiner,  if  necessary,  will  renumber  the  claims
consecutively in the order in which they appear or in such
order as may have been requested by applicant.

  In a single claim case, the claim is not numbered.

  Form Paragraph 6.17 may be used to notify applicant.

¶ 6.17  Numbering of Claims, 37 CFR 1.126

  The numbering of claims is not in accordance with 37 CFR
1.126.  The  original  numbering  of  the  claims  must  be
preserved  throughout  the  prosecution.  When  claims  are
canceled, the remaining claims must not be renumbered. When
claims are added, except when presented in accordance with
37 CFR * 1.121(b), they must be numbered consecutively
beginning  with  the  number  next  following  the  highest
numbered claims previously presented (whether entered or
not).

  Misnumbered  claims  [1]  have  been  renumbered  [2],
respectively.

608.01(k)  Statutory Requirement of Claims

  35  U.S.C.  112  requires  that  the  applicant  shall
particularly point out and distinctly claim the subject
matter which he or she regards as his or her invention. The

portion of the application in which he or she does this
forms the claim or claims. This is an important part of the
application, as it is the definition of that for which
protection is granted.

608.01(l)  Original Claims

  In establishing a disclosure, applicant may rely not
only on the description and drawing as filed but also on the
original claims if their content justifies it.

  Where subject matter not shown in the drawing or
described in the description is claimed in the case as
filed, and such original claim itself constitutes a clear
disclosure of this subject matter, then the claim should be
treated on its merits, and requirement made to amend the
drawing and description to show this subject matter. The
claim  should  not  be  attacked  either  by  objection  or
rejection because this subject matter is lacking in the
drawing and description. It is the drawing and description
that are defective; not the claim.

  It is, of course, to be understood that this disclosure
in the claim must be sufficiently specific and detailed to
support  the  necessary  amendment  of  the  drawing  and
description.

608.01(m)  Form of Claims [R - 3]

  >The claim or claims must commence on a separate sheet
and should appear after the detailed description of the
invention.< While there is no set statutory form for claims,
the present Office practice is to insist that each claim
must be the object of a sentence starting with "I (or we)
claim", "The invention claimed is" (or the equivalent). If,
at the time of allowance, the quoted terminology is not
present, it is inserted by the clerk. Each claim begins with
a capital letter and ends with a period. Periods may not be
used elsewhere in the claims except for abbreviations. See
Fressola  v.  Manbeck, >36 USPQ2d 1211< (D.D.C. 1995). **
>Where a claim sets forth a plurality of elements or steps,
each element or step of the claim should be separated by a
line indentation, 37 CFR 1.75(i).<

  There may be plural indentations to further segregate
subcombinations or related steps. In general, the printed
patent copies will follow the format used but printing
difficulties or expense may prevent the duplication of
unduly complex claim formats.

  Reference characters corresponding to elements recited
in the detailed description and the drawings may be used in
conjunction with the recitation of the same element or group
of  elements  in  the  claims.  The  reference  characters,
however, should be enclosed within parentheses so as to
avoid confusion with other numbers or characters which may
appear in the claims. The use of reference characters is to
be considered as having no effect on the scope of the
claims.

  Many of the difficulties encountered in the prosecution
of  patent  applications  after  final  rejection  may  be
alleviated if each applicant includes, at the time of filing
or no later than the first response, claims varying from the
broadest to which he or she believes he or she is entitled

to the most detailed that he or she is willing to accept.

  Claims should preferably be arranged in order of scope
so  that  the  first  claim  presented  is  the  *  >least
restrictive<.  >All  dependent  claims  should  be  grouped
together with the claim or claims to which they refer to the
extent practicable.< Where separate species are claimed, the
claims of like species should be grouped together where
possible ** >.< Similarly, product and process claims should
be separately grouped. Such arrangements are for the purpose
of facilitating classification and examination.

  The form of claim required in 37 CFR 1.75(e) is
particularly adapted for the description of improvement -
type inventions. It is to be considered a combination claim.
The  preamble  of  this  form  of  claim  is  considered  to
positively and clearly include all the elements or steps
recited therein as a part of the claimed combination.

  For rejections not based on prior art, see MPEP §
706.03.

  >The following form paragraphs may be used to object to
the form of the claims.

¶ 6.18.01  Claims: Placement

  The claims in this application do not commence on a
separate  sheet  in  accordance  with  37  CFR  1.52(b)(1).
Appropriate correction is required in response to this
action.

 Examiner Note:

  This paragraph should only be used for applications
filed on or after September 23, 1996.

¶ 7.29.01  Claims Objected To, Minor Informalities

  Claim[1]  objected  to  because  of  the  following
informalities: [2]. Appropriate correction is required.

 Examiner Note:

  1.  Use  this  form  paragraph  to  point  out  minor
informalities  such  as  spelling  errors,  inconsistent
terminology, etc., which should be corrected.

  2.  If  the  informalities  render  the  claim(s)
indefinite, use form paragraph 7.34.01 instead to reject the
claim(s) under 35 U.S.C. 112, second paragraph.

¶ 7.29.02  Claims Objected To, Reference Characters Not
Enclosed Within Parentheses

  The  claims  are  objected  to  because  they  include
reference  characters  which  are  not  enclosed  within
parentheses.

  Reference characters corresponding to elements recited
in the detailed description of the drawings and used in
conjunction with the recitation of the same element or group
of  elements  in  the  claims  should  be  enclosed  within
parentheses so as to avoid confusion with other numbers or
characters which may appear in the claims. See MPEP §

608.01(m).

 Examiner Note:

  1.  Use of this paragraph is optional. You may instead
choose to correct the error yourself at time of allowance by
informal examiner's amendment.

  2.  If the lack of parentheses renders the claim(s)
indefinite, use form paragraph 7.34.01 instead to reject the
claim(s) under 35 U.S.C. 112, second paragraph.

¶ 7.29.03  Claims Objected To, Spacing of Lines

  The claims are objected to because the lines are crowded
too closely together, making reading and entry of amendments
difficult. Substitute claims with lines double spaced on
good quality paper are required. See 37 CFR 1.52(b).<

  Amendments to the claims must be in compliance with 37
CFR 1.121. Form paragraphs 6.33 and 6.34 may be used to
inform applicant of non - entry of amendments to the claims.

¶ 6.33  Amendment to the Claims, 37 CFR 1.121

  The amendment to the claims has not been entered because
it requests the addition of more than 5 words in any one
claim. See 37 CFR 1.121(c) below:

 (c)  A particular claim may be amended in the manner
indicated for the application in paragraph (a) of this
section  to  the  extent  of  corrections  in  spelling,
punctuation, and typographical errors. Additional amendments
in this manner will be admitted provided the changes are
limited to (1) deletions and/or (2) the addition of no more
than five words in any one claim. Any amendments submitted
with instructions to amend particular claims but failing to
conform to the provisions of paragraphs (b) and (c) of this
section  may  be  considered  nonresponsive  and  treated
accordingly.

  The amendment to the claims should be made in accordance
with 37 CFR 1.121(b) which states:

 (b)  Except as otherwise provided herein, a particular
claim may be amended only by directions to cancel or by
rewriting such claim with underlining below the word or
words added and brackets around the word or words deleted.
The rewriting of a claim in this form will be construed as
directing the cancellation of the original claim; however,
the original claim num- ber followed by the parenthetical
word "amended" must be used for the rewritten claim. If a
previously rewritten claim is rewritten, underlining and
bracketing will be applied in reference to the previously
rewritten claim with the parenthetical expression "twice
amended",  "three  times  amend  ed",  etc.,  following  the
original claim number.

  Applicant is given a ONE MONTH TIME LIMIT from the date
of this letter, or until the expiration of the period for
response set in the last office action, whichever is longer,
to complete the response. NO EXTENSION OF THIS TIME LIMIT
MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b), but the
period for response set in the last Office action may be
extended up to a maximum of SIX MONTHS.

¶ 6.34  Amendment to the Claims, Brackets or Underlining
Cannot be Used

  The claims of this application contain underlining or
brackets that are intended to appear in the printed patent
or are properly part of the claimed material. The brackets
or underlining are not intended to indicate amendments or
changes in the claims. Under these conditions, proposed
amendments to the claims may not be made by underlining
words added or by bracketing words that are to be deleted.
Accordingly, the proposed amendments to the claims have not
been entered. See 37 CFR 1.121(d).

  Applicant is given a ONE MONTH TIME LIMIT from the date
of this letter, or until the expiration of the period for
response set in the last office action, whichever is longer,
to complete the response . NO EXTENSION OF THIS TIME LIMIT
MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b), but the
period for response set in the last Office action may be
extended up to a maximum of SIX MONTHS.

608.01(n)  Dependent Claims [R - 3]

  37 CFR 1.75(c) reads as follows for applications filed
prior to January 24, 1978:

  (c) When more than one claim is presented, they may be
placed in dependent form in which a claim may refer back to
and further re strict a single preceding claim. Claims in
dependent  form  shall  be  construed  to  include  all  the
limitations of the claim incorporated by reference into the
dependent claim.

  MULTIPLE DEPENDENT CLAIMS

  37 CFR 1.75(c) reads as follows for applications filed on
and after January 24, 1978.

 37 CFR 1.75. Claim(s).

  *****

  (c) one or more claims may be presented in dependent
form, referring back to and further limiting another claim
or claims in the same application. Any dependent claim which
refers to more than one other claim (multiple dependent
claim) shall refer to such other claims in the alternative
only. A multiple dependent claim shall not serve as a basis
for any other multiple dependent claim. For fee calculation
purposes under § 1.16, a multiple dependent claim will be
considered to be that number of claims to which direct
reference is made therein. For fee calculation purposes,
also, any claim depending from a multiple dependent claim
will be considered to be that number of claims to which
direct reference is made in that multiple dependent claim.
In  addition  to  the  other  filing  fees,  any  original
application which is filed with, or is amended to include,
multiple dependent claims must have paid therein the fee set
forth in § 1.16(d). Claims in dependent form shall be
construed to include all the limitations of the claim
incorporated  by  reference  into  the  dependent  claim.  A
multiple dependent claim shall be construed to incorporate
by reference all the limitations of each of the particular
claims in relation to which it is being considered.

  *****

  Generally, a multiple dependent claim is a dependent
claim which refers back in the alternative to more than one
preceding independent or dependent claim.

  The second paragraph of 35 U.S.C. 112 has been revised
in view of the multiple dependent claim practice introduced
by  the  Patent  Cooperation  Treaty.  Thus  35  U.S.C.  112
authorizes multiple dependent claims in applications filed
on and after January 24, 1978, as long as they are in the
alternative form (e.g., "A machine according to claims 3 or
4, further comprising - -- "). Cumulative claiming (e.g.,"A
machine according to claims 3 and 4, further comprising -
--" ) is not permitted. A multiple dependent claim may refer
in the alternative to only one set of claims. A claim such
as "A device as in claims 1, 2, 3, or 4, made by a process
of claims 5, 6, 7, or 8" is improper. Section 112 allows
reference  to  only  a  particular  claim.  Furthermore,  a
multiple dependent claim may not serve as a basis for any
other  multiple  dependent  claim,  either  directly  or
indirectly. These limitations help to avoid undue confusion
in determining how many prior claims are actually referred
to in a multiple dependent claim.

  A multiple dependent claim which depends from another
multiple dependent claim should be objected to by using Form
Paragraph 7.45.

¶ 7.45  Improper Multiple Dependent Claims

  Claim [1] objected to under 37 CFR 1.75(c) as being in
improper form because a multiple dependent claim [2]. See
MPEP § 608.01(n). Accordingly, [3] has not been further
treated on the merits.

 Examiner's Note:

  1.  In bracket 2, insert "should refer to other claims
in the alternative only" and/or, "cannot depend from any
other multiple dependent claim 4."

  2.  Use this paragraph rather than 35 U.S.C. 112, fifth
paragraph.

  3.  In bracket 3, insert "the claim has or these claims
have."

  Assume  each  claim  example  given  below  is  from  a
different application.

  ACCEPTABLE MULTIPLE DEPENDENT CLAIM WORDING

 Claim 5.  A gadget according to claims 3 or 4, further
comprising - --

 Claim 5.  A gadget as in any one of the preceding
claims, in which - --

 Claim 3.  A gadget as in either claim 1 or claim 2,
further comprising - --

 Claim 4.  A  gadget  as  in  claim  2  or  3,  further
comprising -

 Claim 16.  A gadget as in claims 1, 7, 12, or 15, further
comprising - --

 Claim 5.  A gadget as in any of the preceding claims, in
which - --

 Claim 8.  A gadget as in one of claims 4 - 7, in which -
--

 Claim 5.  A gadget as in any preceding claim, in which -
--

 Claim 10.  A gadget as in any of claims 1 - 3 or 7 - 9,
in which - --

 Claim 11.  A gadget as in any one of claims 1, 2, or 7 -
10 inclusive, in which - --

 UNACCEPTABLE MULTIPLE DEPENDENT CLAIM WORDING

 A. Claim does not refer back in the alternative only

 Claim 5.  A gadget according to claim 3 and 4, further
comprising - --

 Claim 9.  A gadget according to claims 1 - 3, in which -
--

 Claim 9.  A gadget as in claims 1 or 2 and 7 or 8, which
- --

 Claim 6.  A gadget as in the preceding claims in which -
--

 Claim 6.  A gadget as in claims 1, 2, 3, 4 and/or 5, in
which - --

 Claim 10.  A gadget as in claims 1 - 3 or 7 - 9, in which
- --

B. Claim does not refer to a preceding claim

 Claim 3.  A gadget as in any of the following claims, in
which - --

 Claim 5.  A gadget as in either claim 6 or claim 8, in
which - --

C. Reference to two sets of claims to different features

 Claim 9. A gadget as in claim 1 or 4 made by the process of
claims 5, 6, 7, or 8, in which - --

D. (Reference back to another multiple dependent claim)

 Claim 8. A gadget as in claim 5 (claim 5 is a multiple
dependent claim) or claim 7, in which - --

  35 U.S.C. 112 indicates that the limitations or elements
of each claim incorporated by reference into a multiple
dependent claim must be considered separately. Thus, a
multiple dependent claim, as such, does not contain all the
limitations of all the alternative claims to which it
refers, but rather contains in any one embodiment only those

limitations of the particular claim referred to for the
embodiment under consideration. Hence, a multiple dependent
claim must be considered in the same manner as a plurality
of single dependent claims.

  Restriction Practice

  For restriction purposes, each embodiment of a multiple
dependent claim is considered in the same manner as a single
dependent claim. Therefore, restriction may be required
between the embodiments of a multiple dependent claim. Also,
some embodiments of a multiple dependent claim may be held
withdrawn while other embodiments are considered on their
merits.

  Handling of Multiple Dependent Claims by the ** >Office of
  Initial Patent Examination<

  **  >The  Office  of  Initial  Patent  Examination<  is
responsible for verifying whether multiple dependent claims
filed with the application are in proper alternative form,
that they depend only upon prior independent or single
dependent claims and also for calculating the amount of the
filing fee. A new form, PTO - 1360, has been designed to be
used in conjunction with the current fee calculation form
PTO - 875.

  Handling of Multiple Dependent Claims by the Examining
  Group Clerical Staff

  The examining group clerical staff is responsible for
verifying compliance with the statute and rules of multiple
dependent claims added by amendment and for calculating the
amount of any additional fees required. This calculation
should be performed on form PTO - 1360.

  There is no need for a group clerk to check the
accuracy of the initial filing fee since this has already
been  verified  by  the  **  >Office  of  Initial  Patent
Examination< when granting the filing date .

  If a multiple dependent claim (or claims) is added in an
amendment  without  the  proper  fee,  either  by  adding
references to prior claims or by adding a new multiple
dependent claim, the amendment should not be entered until
the fee has been received. In view of the requirements for
multiple  dependent  claims,  no  amendment  containing  new
claims or changing the dependency of claims should be
entered before checking whether the paid fees cover the
costs of the amended claims. The applicant, or his or her
attorney or agent, should be contacted to pay the additional
fee. Where a letter is written in an insufficient fee
situation, a copy of the multiple dependent claim fee
calculation,  form  PTO  -  1360,  should  be  included  for
applicant's information.

  If an application filed prior to October 1, 1982, is
amended on or after October 1, 1982, to include a proper
multiple dependent claim for the first time, the fee set
forth in § 1.16(d) must be paid.

  If such an application contained a proper multiple
dependent claim prior to October 1, 1982, the fee set forth
in § 1.16(d) does not apply.

  Where the group clerk notes that the reference to the
prior claims is improper in an added or amended multiple
dependent claim, a notation should be made in the left
margin next to the claim itself and the number 1, which is
inserted in the "Dep. Claim" column of that amendment on
form PTO - 1360, should be circled in order to call this
matter to the examiner's attention.

  Handling of Multiple Dependent Claims by the Examiner

  Should any multiple dependent claim be in an application
filed  prior  to  January  24,  1978  or  include  a  claim
association or claim structure that violates any of the
prohibitions, the claim should be objected to as not being
in proper form as required by 37 CFR 1.75 in the next Office
action. Such an improper claim need not be further treated
on the merits.

  Public Law 94 - 131, the implementing legislation for
the Patent Cooperation Treaty amended 35 U.S.C. 112 to state
that "a claim in dependent form shall contain a reference to
a claim previously set forth ." The requirement to refer to
a previous claim had existed only in 37 CFR 1.75(c) before.

  The following procedures are to be followed by examiners
when faced with claims which refer to numerically succeeding
claims:

  If any series of dependent claims contains a claim with
an improper reference to a numerically following claim which
cannot be understood, the claim referring to a following
claim should normally be objected to and not treated on the
merits.

  However, in situations where a claim refers to a
numerically following claim and the dependency is clear,
both as presented and as it will be renumbered at issue, all
claims should be examined on the merits and no objection as
to form need be made. In such cases, the examiner will
renumber the claims into proper order at the time the
application is allowed. (See example B, below.)

  Any  unusual  problems  should  be  brought  to  the
supervisor's attention.

  Example A

  (Claims 4 and 6 should be objected to as not being
understood and should not be treated on the merits.)

  1.  Independent

  2.  Dependent on claim 5

  3.  Dependent on claim 2

  4.  " . . as in any preceding claim"

  5.  Independent

  6.  Dependent on claim 4

  Example B

  NOTE:  Parenthetical  numerals  represent  the  claim

numbering for issue should all claims be allowed.

  (All claims should be examined.)

  1.  (1) Independent

  2.  (5) Dependent on claim 5(4)

  3.  (2) Dependent on claim 1(1)

  4.  (3) Dependent on claim 3(2)

  5.  (4) Dependent on either claim 1(1) or claim 3(2)

  The following practice is followed by patent examiners
when making reference to a dependent claim - either singular
or multiple:

  1.  When identifying a singular dependent claim which
does not include a reference to a multiple dependent claim,
either directly or indirectly, reference should be made only
to the number of the dependent claim.

  2.  When identifying the embodiments included within a
multiple dependent claim, or a singular dependent claim
which includes a reference to a multiple dependent claim,
either directly or indirectly, each embodiment should be
identified by using the number of the claims involved,
starting with the highest, to the extent necessary to
specifically identify each embodiment.

  3.  When all embodiments included within a multiple
dependent claim or a singular dependent claim which includes
a reference to a multiple dependent claim, either directly
or indirectly, are subject to a common rejection, objection,
or requirement, reference may be made only to the number of
the dependent claim.

  The following table illustrates the current practice
where each embodiment of each claim must be treated on an
individual basis:

 1  Independent  1  1

 2  Depends from 1 2/1 2

 3  Depends from 2 3/2/1 3

 4  Depends from 2 or 3 4/2/1 4/2

  4/3/2/1 4/3

 5  Depends from 3 5/3/2/1 5

 6  Depends from 2, 3, or 5 6/2/1 6/2

  6/3/2/1 6/3

  6/5/3/2/1 6/5

 7  Depends from 6 7/6/2/1 7/6/2

  7/6/3/2/1 7/6/3

  7/6/5/3/2/1 7/6/5

  When all embodiments in a multiple dependent claim
situation (claims 4, 6, and 7 above) are subject to a common
rejection, objection, or requirements, reference may be made
to the number of the individual dependent claim only. For
example, if 4/2 and 4/3 were subject to a common ground of
rejection, reference should be made only to claim 4 in the
statement of that rejection.

  The provisions of 35 U.S.C. 132 require that each office
action make it explicitly clear what rejection, objection
and/or requirement is applied to each claim embodiment.

  Calculation of Fees When Multiple Dependent Claims Are
  Presented, Use of Form PTO - 1360

  To assist in the computation of the fees for multiple
dependent claims, a separate "Multiple Dependent Claim Fee
Calculation Sheet," form PTO - 1360, has been designed for
use with the current "Patent Application Fee Determination
Record", form PTO - 875. Form PTO - 1360 will be placed in
the file wrapper by the Application Branch where multiple
dependent  claims  are  in  the  application  as  filed.  If
multiple dependent claims are not included upon filing, but
are later added by amendment, the examining group clerical
staff will place the form in the file wrapper. If there are
multiple dependent claims in the application, the total
number of independent and dependent claims for fee purposes
will be calculated on form PTO - 1360 and the total number
of claims and number of independent claims is then placed on
form PTO - 875 for final fee calculation purposes.

 Calculating Fees for Multiple Dependent Claims

  Proper Multiple Dependent Claim

  35 U.S.C. 41(a), provides that claims in proper multiple
dependent form may not be considered as single dependent
claims for the purpose of calculating fees. Thus, a multiple
dependent claim is considered to be that number of dependent
claims to which it refers. Any proper claim depending
directly or indirectly from a multiple dependent claim is
also  considered  as  the  number  of  dependent  claims  as
referred to in the multiple dependent claim from which it
depends.

  Improper Multiple Dependent Claim

  If any multiple dependent claim is improper, Application
Branch may indicate that fact by placing an encircled
numeral "1" in the "Dep. Claims" column of form PTO - 1360.
The fee for any improper multiple dependent claim, whether
it is defective for either not being in the alternative form
or for being directly or indirectly dependent on a prior
multiple dependent claim, will only be one, since only an
objection to the form of such a claim will normally be made.
This procedure also greatly simplifies the calculation of
fees.  Any  claim  depending  from  an  improper  multiple
dependent claim will also be considered to be improper and
be counted as one dependent claim.

  Fee calculation example

  Claim No. . . Ind.  Dep .

 1.  Independent . . 1

 2 .  Dependent on claim 1 . . 1

 3.  Dependent on claim 2 . . 1

 4.  Dependent on claim 2 or 3 . . 2

 5.  Dependent on claim 4 . . 2

 6.  Dependent on claim 5 . . 2

 7.  Dependent on claim 4, 5 or 6 . .

  f

 1

 8.  Dependent on claim 7 . .

  f

 1

 9.  Independent . . 1

 10.  Dependent on claim 1 or 9 . . 2

 11.  Dependent on claims 1 and 9 . .

  f

 1

  ___________

  Total  2  13

  Comments on Fee Calculation Example

 Claim 1  - This is an independent claim; therefore, a
numeral "1" is placed opposite claim number 1 in the "Ind."
column.

 Claim 2 - Since this is a claim dependent on a single
independent claim, a numeral "1" is placed opposite claim
number 2 of the "Dep." column.

 Claim 3 - Claim 3 is also a single dependent claim, so a
numeral "1" is placed in the "Dep." column.

 Claim 4 -  Claim 4 is a proper multiple dependent claim. It
refers directly to two claims in the alternative, namely,
claim 2  or 3. Therefore, a numeral "2" to indicate direct
reference to two claims is placed in the "Dep." column
opposite claim number 4.

 Claim 5 -  This claim is a singularly dependent claim
depending  from  a  multiple  dependent  claim.  For  fee
calculation purposes, such a claim is counted as being that
number of claims to which direct reference is made in the
multiple dependent claim from which it depends. In this
case, the multiple dependent claim number 4 it depends from
counts as 2 claims; therefore, claim 5 also counts as 2
claims. Accordingly, a numeral "2" is placed opposite claim

number 5 in the "Dep." column.

 Claim 6 -  Claim 6 depends indirectly from a multiple
dependent claim 4. Since claim 4 counts as 2 claims, claim 6
also counts as 2 dependent claims. Consequently, a numeral
"2" is placed in the "Dep." column after claim 6.

 Claim 7 - This claim is a multiple dependent claim since it
refers to claims 4, 5, or 6. However, as can be seen by
looking at the "2' in the "Dep.' column opposite claim 4,
claim 7 depends from a multiple dependent claim. This
practice is improper under 35 U.S.C. 112 and 37 CFR 1.75(c).
Following the procedure for calculating fees for improper
multiple dependent claims, a numeral "1" is placed in the
"Dep." column with a circle drawn around it to alert the
examiner that the claim is improper.

 Claim 8 -  Claim 8 is improper since it depends from an
improper claim. If the base claim is in error, this error
cannot be corrected by adding additional claims depending
therefrom. Therefore, a numeral "1" with a circle around it
is placed in the "Dep." column.

 Claim 9 - Here again we have an independent claim which is
always indicated with a numeral "1" in the "Ind." column
opposite the claim number.

 Claim 10 - This claim refers to two independent claims in
the alternative. A numeral "2" is, therefore, placed in the
"Dep." column opposite claim 10.

 Claim 11 - Claim 11 is a dependent claim which refers to
two claims in the conjunctive ( "1"  and "9" ) rather than
in the alternative ( "1"  or  "9" ). This form is improper
under 35 U.S.C. 112 and 37 CFR 1.75(c). Accordingly, since
claim 11 is improper, an encircled number "1" is placed in
the "Dep." column opposite Claim 11.

  Calculation of Filing Fee Involving Dependent Claims

  After the number of "Ind." and "Dep." claims are noted
on form PTO - 1360, each column is added. In this example,
there are 2 independent claims and 13 dependent claims or a
total of 15 claims. The number of independent and total
claims can then be placed on form PTO - 875 and the fee
calculated.

  TREATMENT OF IMPROPER DEPENDENT CLAIMS

  The initial determination, for fee purposes, as to
whether a claim is dependent must be made by persons other
than examiners; it is necessary, at that time, to accept as
dependent virtually every claim which refers to another
claim, without determining whether there is actually a true
dependent relationship. The initial acceptance of a claim as
a dependent claim does not, however, preclude a subsequent
holding by the examiner that a claim is not a proper
dependent claim. Any claim which is in dependent form but
which is so worded that it, in fact is not, as, for example,
it does not include every limitation of the claim on which
it depends, will be required to be cancelled as not being a
proper dependent claim; and cancelation of any further claim
depending on such a dependent claim will be similarly
required. >Where a claim in dependent form is not considered
to be a proper dependent claim under 37 CFR 1.75(c), the

examiner should object to such claim under 37 CFR 1.75(c)
and require cancellation of such improper dependent claim or
rewriting of such improper dependent claim in independent
form. See  Ex parte Porter , 25 USPQ2d 1144, 1147 (Bd. of
Pat. App. & Inter., 1992) (A claim determined to be an
improper dependent claim should be treated as a formal
matter,  in  that  the  claim  should  be  objected  to  and
applicant should be required to cancel the claim (or replace
the improper dependent claim with an independent claim)
rather than treated by a rejection of the claim under 35
U.S.C. 112, fourth paragraph.).< The applicant may thereupon
amend the claims to place them in proper dependent form, or
may redraft them as independent claims, upon payment of any
necessary additional fee.

  >Claims which are in improper dependent form for failing
to further limit the subject matter of a previous claim
should be objected to under 37 CFR 1.75(c) by using Form
Paragraph 7.36.

¶ 7.36  Objection, 37 CFR 1.75(c), Improper Dependent Claim

  Claim[1] objected to under 37 CFR 1.75(c), as being of
improper dependent form for failing to further limit the
subject matter of a previous claim. Applicant is required to
cancel the claim(s), or amend the claim(s) to place the
claim(s) in proper dependent form, or rewrite the claim(s)
in independent form. [2].

 Examiner Note:

  1.  In bracket 2, insert an explanation of what is in
the  claim  and  why  it  does  not  constitute  a  further
limitation.

  2.  Note  Ex  parte  Porter  ,  25  USPQ2d  1144  for
situations where a method claim is considered to be properly
dependent upon a parent apparatus claim and should not be
objected  to  or  rejected  under  35  U.S.C.  112,  fourth
paragraph. See also MPEP § 608.01(n), "Infringement Test"
for dependent claims. The test for a proper dependent claim
is whether the dependent claim includes every limitation of
the parent claim. The test is not whether the claims differ

 in scope. A proper dependent claim shall not conceivably be
infringed by anything which would not also infringe the
basic claim.<

 INFRINGEMENT TEST

  The test as to whether a claim is a proper dependent
claim is that it shall include every limitation of the claim
from which it depends (35 U.S.C. 112, fourth paragraph) or
in other words that it shall not conceivably be infringed by
anything which would not also infringe the basic claim.

  A dependent claim does not lack compliance with 35
U.S.C. 112, fourth paragraph, simply because there is a
question  as  to  (1)  the  significance  of  the  further
limitation added by the dependent claim, or (2) whether the
further  limitation  in  fact  changes  the  scope  of  the
dependent claim from that of the claim from which it
depends. The test for a proper dependent claim under the
fourth paragraph of 35 U.S.C. 112 is whether the dependent
claim includes every limitation of the claim from which it

depends. The test is not one of whether the claims differ in
scope.

  Thus, for example, if claim 1 recites the combination of
elements A, B, C, and D, a claim reciting the structure of
claim 1 in which D was omitted or replaced by E would not be
a proper dependent claim, even though it placed further
limitations on the remaining elements or added still other
elements.

  Examiners  are  reminded  that  a  dependent  claim  is
directed to a combination including everything recited in
the base claim and what is recited in the dependent claim.
It is this combination that must be compared with the prior
art, exactly as if it were presented as one independent
claim.

  The fact that a dependent claim which is otherwise
proper might relate to a separate invention which would
require a separate search or be separately classified from
the claim on which it depends would not render it an
improper dependent claim, although it might result in a
requirement for restriction.

  The fact that the independent and dependent claims are
in different statutory classes does not, in itself, render
the latter improper. Thus, if claim 1 recites a specific
product, a claim for the method of making the product of
claim 1 in a particular manner would be a proper dependent
claim since it could not be infringed without infringing
claim 1. Similarly, if claim 1 recites a method of making a
product, a claim for a product made by the method of claim 1
could be a proper dependent claim. On the other hand, if
claim 1 recites a method of making a specified product, a
claim to the product set forth in claim 1 would not be a
proper dependent claim if the product might be made in other
ways. Note, that * >although< 37 CFR 1.75(c) requires the
dependent claim to further limit a preceding claim, this
rule does not apply to product - by - process claims.

  CLAIM FORM AND ARRANGEMENT

  A singular dependent claim 2 could read as follows:

 2. The product of claim 1 in which . .

  A series of singular dependent claims is permissible in
which a dependent claim refers to a preceding claim which,
in turn, refers to another preceding claim.

  A claim which depends from a dependent  claim should not
be separated therefrom by any claim which does not also
depend from said "dependent claim." It should be kept in
mind that a dependent claim may refer back to any preceding
independent claim. These are are the only restrictions with
respect  to  the  sequence  of  claims  and,  in  general,
applicant's sequence should not be changed. See MPEP §
608.01(j).  Applicant  may  be  so  advised  by  using  Form
Paragraph 6.18.

¶ 6.18  Series of Singular Dependent Claims

  A series of singular dependent claims is permissible in
which a dependent claim refers to a preceding claim which,
in turn, refers to another preceding claim.

  A claim which depends from a dependent claim should not
be separated by any claim which does not also depend from
said dependent claim. It should be kept in mind that a
dependent claim may refer to any preceding independent
claim. In general, applicant's sequence will not be changed.
See § 608.01(n) MPEP.

  During prosecution, the order of claims may change and
be in conflict with the requirement that dependent claims
refer to a preceding claim. Accordingly, the numbering of
dependent  claims  and  the  numbers  of  preceding  claims
referred to in dependent claims should be carefully checked
when claims are renumbered upon allowance.

  REJECTION AND OBJECTION

  If the base claim has been cancelled, a claim which is
directly or indirectly dependent thereon should be rejected
as incomplete. If the base claim is rejected, the dependent
claim should be objected to rather than rejected, if it is
otherwise allowable.

  Form Paragraph 7.43 can be used to state the objection.

¶ 7.43  Objection to Claims, Allowable Subject Matter

  Claim [1] objected to as being dependent upon a rejected
base  claim,  but  would  be  allowable  if  rewritten  in
independent form including all of the limitations of the
base claim and any intervening claims.

608.01(o)  Basis for Claim Terminology in Description

  The meaning of every term used in any of the claims
should be apparent from the descriptive portion of the
specification with clear disclosure as to its import; and in
mechanical cases, it should be identified in the descriptive
portion of the specification by reference to the drawing,
designating the part or parts therein to which the term
applies. A term used in the claims may be given a special
meaning in the description. No term may be given a meaning
repugnant to the usual meaning of the term.

  Usually the terminology of the original claims follows
the nomenclature of the specification, but sometimes in
amending the claims or in adding new claims, new terms are
introduced that do not appear in the specification. The use
of a confusing variety of terms for the same thing should
not be permitted.

  New claims and amendments to the claims already in the
case should be scrutinized not only for new matter but also
for new terminology. While an applicant is not limited to
the nomenclature used in the application as filed, yet,
whenever by amendment of his claims, he or she departs
therefrom, he or she should make appropriate amendment of
the specification so as to have therein clear support or
antecedent basis for the new terms appearing in the claims.
This is necessary in order to insure certainty in construing
the claims in the light of the specification, Ex parte
Kotler 1901 C.D. 62; 95 O.G. 2684. See 37 CFR 1.75, MPEP §
608.01(i) and § 1302.01.

  The specification should be objected to if it does not

provide proper antecedent basis for the claims by using Form
Paragraph 7.44.

¶ 7.44  Claimed Subject Matter Not in Specification

  The specification is objected to as failing to provide
proper antecedent basis for the claimed subject matter. See
37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the
following is required: [1].

608.01(p)  Completeness [R - 2]

  Newly filed applications obviously failing to disclose
an invention with the clarity required are discussed in MPEP
§ 702.01.

  A disclosure in an application, to be complete, must
contain such description and details as to enable any person
skilled in the art or science to which the invention
pertains to make and use the invention as of its filing
date, In re Glass, 492 F.2d 1228; 181 USPQ 31 (CCPA 1974).

  While the prior art setting may be mentioned in general
terms, the essential novelty, the essence of the invention,
must be described in such details, including proportions and
techniques, where necessary, as to enable those persons
skilled in the art to make and utilize the invention.

  Specific  operative  embodiments  or  examples  of  the
invention must be set forth. Examples and description should
be of sufficient scope as to justify the scope of the
claims. Markush claims must be provided with support in the
disclosure for each member of the Markush group. Where the
constitution and formula of a chemical compound is stated
only as a probability or speculation, the disclosure is not
sufficient to support claims identifying the compound by
such composition or formula.

  A complete disclosure should include a statement of
utility. This usually presents no problem in mechanical
cases. In chemical cases, varying degrees of specificity are
required.

  A disclosure involving a new chemical compound or
composition must teach persons skilled in the art how to
make the compound or composition. Incomplete teachings may
not  be  completed  by  reference  to  subsequently  filed
applications.

  For "Guidelines for Examination of Applications for
Compliance with the Utility Requirement of35 U.S.C. 101",
see MPEP § 706.03(a)(1).

  For " Overview of Legal Precedent Governing Utility
Requirement ", see MPEP § 2107.

  For a discussion of the utility requirement under 35
U.S.C. 112, first paragraph, in drug cases, see MPEP §
2164.07(a)(4).

  For  "Procedural  Considerations  Related  to  Utility
Rejections", see MPEP § 2107.01.

  For "Special Considerations for Asserted Therapeutic or
Pharmacological Utilities", see MPEP § 2107.02.

  INCORPORATION BY REFERENCE

  The  Commissioner  has  considerable  discretion  in
determining what may or may not be incorporated by reference
in a patent application. General Electric Co.  v.  Brenner ,
407 F.2d 1258, 159 USPQ 335 (D.C. Cir. 1968). The following
is the manner in which the Commissioner has elected to
exercise that discretion. Section 1 provides the guidance
for incorporation by reference in applications which are to
issue as U.S. patents. Section 2 provides guidance for
incorporation by reference in benefit applications; i.e.,
those domestic (35 U.S.C. 120) or foreign (35 U.S.C. 119)
applications relied on to establish an earlier effective
filing date.

 1.  Review of Applications Which Are To Issue As
Patents.

  An application as filed must be complete in it self in
order to comply with 35 U.S.C. 112. Material nevertheless
may be incorporated by reference, Ex parte Schwarze , 151
USPQ 426 (Bd. App. 1966). An application for a patent when
filed may incorporate "essential material" by reference to
(1) a U.S. patent or (2) ** >a pending< U.S. application **,
subject  to  the  conditions  set  forth  below.  "Essential
material" is defined as that which is necessary to (1)
describe the claimed invention, (2) provide an enabling
disclosure of the claimed invention, or (3) describe the
best mode (35 U.S.C. 112). In any application which is to
issue  as a U.S. patent, essential material may not be
incorporated by reference to (1) patents or applications
published by foreign countries or a regional patent office,
(2)  non  -  patent  publications,  (3)  a  U.S.  patent  or
application which itself incorporates "essential material"
by reference, or (4) a foreign application. See  In re
Fouche , 439 F.2d 1237, 169 USPQ 429 (CCPA 1971).

  Nonessential subject matter may be incorporated by
reference to (1) patents or applications published by the
United  States  or  foreign  countries  or  regional  patent
offices, (2) prior filed, commonly owned U.S. applications,
or (3) non - patent publications. Nonessential subject
matter  is  subject  matter  referred  to  for  purposes  of
indicating the background of the invention or illustrating
the state of the art.

  Mere  reference  to  another  application,  patent,  or
publication is not an incorporation of anything therein into
the application containing such reference for the purpose of
the disclosure required by 35 U.S.C. 112, first paragraph.
In re de Seversky , 474 F.2d 671, 177 USPQ 144, (CCPA 1973).
In addition to other requirements for an application, the
referencing application should include an identification of
the  referenced  patent,  application,  or  publication.
Particular attention should be directed to specific portions
of the referenced document where the subject matter being
incorporated may be found. Guidelines for situations where
applicant is permitted to fill in a number for Serial No.
__________ left blank in the application as filed can be
found in In re Fouche,439 F.2d 1237, 169 USPQ 429 (CCPA
1971) (Abandoned applications less than 20 years old can be
incorporated  by  reference  to  same  extent  as  copending
applications; both types are open to public upon referencing
application issuing as a patent).

  Complete Disclosure Filed

  If an application is filed with a complete disclosure,
essential material may be canceled by amendment and may be
substituted by reference to a U.S. patent or >an earlier
filed< pending >U.S.< application **. The amendment must be
accompanied by an affidavit or declaration signed by the
applicant, or a practitioner representing the applicant,
stating that the material cancelled from the application is
the same material that has been incorporated by reference.

  **

  If an application >as filed< incorporates essential
material by reference to a U.S. patent or a pending and
commonly owned * U.S. application **, applicant may be
required prior to examination to furnish the Office with a
copy of the referenced material together with an affidavit
or declaration executed by the applicant, or a practitioner
representing the applicant, stating that the copy consists
of the same material incorporated by reference in the
referencing application. However, if a copy of a printed
U.S. patent is furnished, no affidavit or declaration is
required.

  **

  >Prior to allowance of an application that incorporates
essential  material  by  reference  to  a  pending  U.S.
application, the examiner shall determine if the referenced
application has issued as a patent. If the referenced
application has issued as a patent, the examiner shall enter
the U.S. Patent No. of the referenced application in the
specification of the referencing application (see MPEP §
1302.04). If the referenced application has not issued as a
patent,< applicant will be required to amend the disclosure
of the referencing application to include the material
incorporated by reference. The amendment must be accompanied
by an affidavit or declaration executed by the applicant, or
a  practitioner  representing  the  applicant,  stating  the
amendatory  material  consists  of  the  same  material
incorporated by reference in the referencing application.

  Improper Incorporation

  The filing date of any application wherein essential
material  is  improperly  incorporated  by  reference  to  a
foreign application or patent or to a publication will not
be affected because of the reference. In such a case, the
applicant will be required to amend the specification to
include  the  material  incorporated  by  reference.  The
following form paragraphs may be used.

¶ 6.19  Incorporation  by  Reference,  Foreign  Patent  or
Application

  The incorporation of essential material by reference to
a foreign application or foreign patent or to a publication
inserted in the specification is improper. Applicant is
required to amend the disclosure to include the material
incorporated by reference. The amendment must be accompanied
by an affidavit or declaration executed by the applicant, or
a practitioner representing the applicant, stating that the
amendatory  material  consists  of  the  same  material

incorporated by reference in the referencing application. In
re Hawkins , 486 F. 2d 569, 179 USPQ 157 (CCPA 1973);  In re
Hawkins , 486 F. 2d 579, 179 USPQ 163 (CCPA 1973);  In re
Hawkins , 486 F. 2d 577, 179 USPQ 167 (CCPA 1973).

¶ 6.19.>0<1  Improper Incorporation by Reference

  The attempt to incorporate subject matter into this
application by reference to [1] is improper because [2].

 Examiner Note:

  1.  In  bracket  1,  identify  the  document  such  as
application or patent number or other identification.

  2.  In bracket 2, give reason why it is improper.

  The amendment must be accompanied by an affidavit or
declaration executed by the applicant, or a practitioner
representing the applicant, stating that the amendatory
material consists of the same material incorporated by
reference in the referencing application. In re Hawkins,486
F.2d 569, 179 USPQ 157 (CCPA 1973);  In re Hawkins , 486
F.2d 579, 179 USPQ 163 (CCPA 1973);  In re Hawkins,486 F.2d
577, 179 USPQ 167, (CCPA 1973).

  Reliance on a commonly assigned copending application by
a different inventor may ordinarily be made for the purpose
of completing the disclosure. See In re Fried , 329 F.2d
323, 141 USPQ 27, (CCPA 1964), and General Electric Co.  v.
Brenner , 407 F.2d 1258, 159 USPQ 335 (D.C. Cir 1968).

  Since a disclosure must be complete as of the filing
date,  subsequent  publications  or  subsequently  filed
applications cannot be relied on to establish a constructive
reduction to practice or an enabling disclosure as of the
filing date. In re Glass, 492 F.2d 1228, 181 USPQ 31 (CCPA
1974) ; In re Scarbrough , 500 F.2d 560, 182 USPQ 298 (CCPA
1974); White Consolidated Industries, Inc.  v.  Vega Servo -
Control, Inc. , 713 F.2d 788, 218 USPQ 961 (Fed. Cir. 1983).

 2.  Review of Applications Which Are Relied on To
Establish an Earlier Effective Filing Date.

  The  limitations  on  the  material  which  may  be
incorporated by reference in U.S. patent applications which
are to issue as U.S. patents do not apply to applications
relied on only to establish an earlier effective filing date
under 35 U.S.C. 119 or 35 U.S.C. 120. The reason for
incorporation  by  reference  practice  with  respect  to
applications which are to issue as U.S. patents is to
provide the public with a patent disclosure which minimizes
the public's burden to search for and obtain copies of
documents incorporated by reference which may not be readily
available. Through the Office's incorporation by reference
policy,  the  Office  ensures  that  reasonably  complete
disclosures are published as U.S. patents

  The same policy concern does not apply where the sole
purpose for which an applicant relies on an earlier U.S. or
foreign application is to establish an earlier filing date.
Incorporation by reference in the earlier application of (1)
patents or applications published by foreign countries or
regional patent offices, (2) nonpatent publications, (3) a
U.S.  patent  or  application  which  itself  incorporates

"essential  material"  by  reference,  or  (4)  a  foreign
application, is not critical in the case of a "benefit"
application.

  When an applicant, or a patent owner in a reexamination
or interference, claims the benefit of the filing date of an
earlier  application  which  incorporates  material  by
reference, the applicant or patent owner may be required to
supply copies of the material incorporated by reference. For
example, an applicant may claim the benefit of the filing
date of a foreign application which itself incorporates by
reference another earlier filed foreign application. If
necessary, due to an intervening reference, applicant should
be required to supply a copy of the earlier filed foreign
application, along with an English language translation. A
review can then be made of the foreign application and all
material incorporated by reference to determine whether the
foreign application discloses the invention sought to be
patented in the manner required by the first paragraph of 35
U.S.C. 112 so that benefit may be accorded, In re Gosteli ,
872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989).

 * SIMULATED OR PREDICTED TEST RESULTS OR PROPHETIC EXAMPLES

  Simulated or predicted test results and prophetical
examples  (paper  examples)  are  permitted  in  patent
applications. Working examples correspond to work actually
performed and may describe tests which have actually been
conducted and results that were achieved. Paper examples
describe the manner and process of making an embodiment of
the invention which has not actually been conducted. Paper
examples should not be represented as work actually done. No
results should be represented as actual results unless they
have actually been achieved. Paper examples should not be
described using the past tense.

  NOTE. For problems arising from the designation of
materials  by  trademarks  and  trade  names,  see  MPEP  §
608.01(v).

608.01(q)  Substitute or Rewritten Specification [R - 3]

 37 CFR 1.125.  Substitute specification.

  If the number or nature of the amendments shall render
it difficult to consider the case, or to arrange the papers
for printing or copying, the examiner may require the entire
specification, including the claims, or any part thereof, to
be rewritten. A substitute specification may not be accepted
unless it has been required by the examiner or unless it is
clear to the examiner that acceptance of a substitute
specification  would  facilitate  processing  of  the
application. Any substitute specification filed must be
accompanied by a statement that the substitute specification
includes no new matter. Such statement must be a verified
statement if made by a person not registered to practice
before the Office.

  The specification is sometimes in such faulty English
that a new specification is necessary; in such instances, a
new specification should be required.

  Form  Paragraph  6.28  may  be  used  *  where  the
specification is in faulty English.

¶ 6.28  Idiomatic English

  A substitute specification in proper idiomatic English
and in compliance with 37 CFR 1.52(a) and (b) is required.
The substitute specification filed must be accompanied by a
statement that it contains no new matter. Such statement
must be a verified statement if made by a person not
registered to practice before the Office.

  Form  Paragraph  6.28.01  may  be  used  to  require  a
substitute  specification  for  reasons  other  than  faulty
English.

¶ 6.28.01  Substitute Specification

  A substitute specification is required because [1]. The
substitute specification filed must be accompanied by a
statement that it contains no new matter. Such statement
must be a verified statement if made by a person not
registered to practice before the Office.

 Examiner Note:

  1. In bracket 1, insert clear and concise examples of why
a new specification is required.

  2.  A new specification is required if the number or
nature of the amendments render it difficult to consider the
application  or  to  arrange  the  papers  for  printing  or
copying, 37 CFR 1.125.

  3.  See also form paragraph 13.01 for partial rewritten
specification.

  Under current practice, substitute specifications may be
voluntarily filed by the applicant if desired. A substitute
specification will normally be accepted by the Office even
if it has not been required by the examiner. Substitute
specifications  will  be  accepted  if  applicant  submits
therewith a marked - up copy which shows the portions of the
original specification which are being added and deleted and
a statement that the substitute specification includes no
new matter and that the substitute specification includes
the same changes as are indicated in the marked - up copy of
the original specification showing additions and deletions.
Such statement must be a verified statement if made by a
person  not  registered  to  practice  before  the  Office.
Additions should be clearly indicated in the marked - up
copy  such  as  by  underlining,  and  deletions  should  be
indicated between brackets. Examiners may also require a
substitute  specification  where  it  is  considered  to  be
necessary.

  >Form Paragraphs 6.28.02 and 6.28.03 may be used where
an applicant submits a substitute specification without the
necessary supporting documentation.

¶ 6.28.02  Substitute  Specification  Not  Entered,  No
Marked - Up Copy

  The substitute specification filed [1] has not been
entered because it does not conform to MPEP § 608.01(q),
which requires the submission of a marked - up copy which
shows  additions  to  and/or  deletions  from  the  original
specification.

¶ 6.28.03  Substitute  Specification  Not  Entered,  No
Statement

  The substitute specification filed [1] has not been
entered because it does not conform to MPEP § 608.01(q),
which requires applicant to submit therewith a statement
that the substitute specification includes the same changes
as are indicated in the marked - up copy of the original
specification  showing  additions  and/or  deletions.  Such
statement must be a verified statement if made by a person
not registered to practice before the Office.<

  However, any substitute page of the specification, or
entire  specification,  filed  must  be  accompanied  by  a
statement indicating that no new matter was included. The
statement  must  be  verified  if  made  by  a  person  not
registered to practice before the Office. There is no
obligation on the examiner to make a detailed comparison
between the old and the new specifications for determining
whether or not new matter has been added. If, however, an
examiner becomes aware that new matter is present, objection
thereto should be made.

  The filing of a substitute specification rather than
amending the original application has the advantage for
applicants of eliminating the need to prepare an amendment
of the specification. If word processing equipment is used
by  applicants,  substitute  specifications  can  be  easily
prepared. The Office receives the advantage of saving the
time needed to enter amendments in the specification and a
reduction in the number of printing errors.

  A substitute specification should normally be entered.
See MPEP § 714.20.

  New matter in amendment, see MPEP § 608.04.

  Application prepared for issue, see MPEP § 1302.02.

608.01(r)  Derogatory Remarks About Prior Art
Specification

  The applicant may refer to the general state of the art
and the advance thereover made by his or her invention, but
he or she is not permitted to make derogatory remarks
concerning the inventions of others. Derogatory remarks are
statements disparaging the products or processes of any
particular person other than the applicant, or statements as
to the merits or validity of applications or patents of
another person. Mere comparison with the prior art are not
considered to be disparaging, per se.

608.01(s)  Restoration of Cancelled Matter

  Cancelled text in the specification or a cancelled claim
can be restored only by presenting the cancelled matter as a
new insertion. See 37 CFR 1.124, MPEP § 714.24.

608.01(t)  Use in Subsequent Application

  A reservation for a future application of subject matter
disclosed but not claimed in a pending application will not
be permitted in the pending application, 37 CFR 1.79, MPEP §
608.01(e).

  No part of a specification can normally be transferred
to another application. Drawings may be transferred to
another application only upon the granting of a petition
filed under the provisions of 37 CFR 1.182.

608.01(u)  Use of Formerly Filed Incomplete Application

  Parts of an incomplete application which have been
retained by the Office may be used as part of a complete
application if the missing parts are later supplied. See
MPEP § 506 and § 506.01.

608.01(v)  Trademarks and Names Used in Trade [R - 2]

  The expressions "trademarks" and "names used in trade"
as used below have the following meanings:

  Trademark: a word, letter, symbol, or device adopted by
one manufacturer or merchant and used to identify and
distinguish his or her product from those of others. It is a
proprietary word pointing distinctly to the product of one
producer.

  Names Used in Trade: a nonproprietary name by which an
article or product is known and called among traders or
workers in the art, although it may not be so known by the
public, generally. Names used in trade do not point to the
product of one producer, but they identify a single article
or product irrespective of producer.

  Names  used  in  trade  are  permissible  in  patent
applications if:

 (1)  Their  meanings  are  established  by  an
accompanying definition which is sufficiently precise and
definite to be made a part of a claim, or

 (2) In this country, their meanings are well - known
and satisfactorily defined in the literature.

  Condition (1) or (2) must be met at the time of filing
of the complete application.

  TRADEMARKS

  The relationship between a trademark and the product it
identifies  is  sometimes  indefinite,  uncertain,  and
arbitrary. The formula or characteristics of the product may
change from time to time and yet it may continue to be sold
under the same trademark. In patent specifications, every
element or ingredient of the product should be set forth in
positive, exact, intelligible language, so that there will
be no uncertainty as to what is meant. Arbitrary trademarks
which are liable to mean different things at the pleasure of
manufacturers do not constitute such language; Ex Parte
Kattwinkle, 12 USPQ 11 (Bd. Apps. 1931).

  However, if the product to which the trademark refers is
** set forth in such language that its identity is clear,
the examiners are authorized to permit the use of the
trademark if it is distinguished from common descriptive
nouns by capitalization. If the trademark has a fixed and
definite meaning, it constitutes sufficient identification
unless some physical or chemical characteristic of the

article or material is involved in the invention. In that
event, as also in those cases where the trademark has no
fixed and definite meaning, identification by scientific or
other explanatory language is necessary; In re Gebauer -
Fuelnegg,50 USPQ 125 (CCPA 1941).

  The matter of sufficiency of disclosure must be decided
on an individual case - by - case basis, In re Metcalfe and
Lowe,161 USPQ 789; 869 O.G. 691 (CCPA 1969).

  Where the identification of a trademark is introduced by
amendment, it must be restricted to the characteristics of
the product known at the time the application was filed to
avoid any question of new matter.

  If proper identification of the product sold under a
trademark, or a product referred to only by a name used in
trade,  is  omitted  from  the  specification  and  such
identification is deemed necessary under the principles set
forth  above,  the  examiner  should  hold  the  disclosure
insufficient and reject on the ground of insufficient dis
closure any claims based on the identification of the
product merely by trademark or by the name used in trade. If
the  product  cannot  be  otherwise  defined,  an  amendment
defining the process of its manufacture may be permitted.
Such amendments must be supported by satisfactory showings
establishing  that  the  specific  nature  or  process  of
manufacture of the product as set forth in the amendment was
known at the time of filing of the application.

  Although the use of trademarks having definite meanings
is  permissible  in  patent  applications,  the  proprietary
nature of the marks should be respected. Trademarks should
be identified by capitalizing **>each letter of the mark<.
Every effort should be made to prevent their use in any
manner  which  might  adversely  affect  their  validity  as
trademarks.

  Form Paragraph 6.20 may be used.

¶ 6.20  Trademarks and Their Use.

  The use of the trademark [1] has been noted in this
application. It should be capitalized wherever it appears
and be accompanied by the generic terminology.

  Although the use of trademarks is permissible in patent
applications, the proprietary nature of the marks should be
respected and every effort made to prevent their use in any
manner  which  might  adversely  affect  their  validity  as
trademarks.

 Examiner Note:

  Capitalize each letter of the word in the bracket.

  The examiner should not permit the use of language such
as "the product X (a descriptive name) commonly known as Y
(trademark)" since such language does not bring out the fact
that the latter is a trademark. Language such as "the
product X (a descriptive name) sold under the trademark Y"
is permissible.

  The use of a trademark in the title of an application
should be avoided as well as the use of a trademark coupled

with the word "type"; i.e., "Band - Aid type bandage."

  >In the event that the proprietary trademark is a
"device" depicted in a drawing, either the brief description
of the drawing or the detailed description of the drawing
should specify that the "device" is a registered trademark
of Company X.<

  The owner of a trademark may be identified in the
specification.

  Group directors should reply to all trademark misuse
complaint letters and forward a copy to the editor of this
manual.

  See Appendix I for a partial listing of trademarks and
the particular goods to which they apply.

  INCLUSION OF COPYRIGHT OR MASK WORK NOTICE IN PATENTS

 37 CFR 1.71  Detailed description ...

  *****

  (d) A copyright or mask work notice may be placed in a
design or utility patent application adjacent to copyright
and mask work material contained therein. The notice may
appear at any appropriate portion of the patent application
disclosure.  For  notices  in  drawings,  see  1.84(s).  The
content of the notice must be limited to only those elements
required by law. For example, " © 1983 John Doe" (17 U.S.C.
401) and "M John Doe" (17 U.S.C. 909) would be properly
limited and, under current statutes, legally sufficient
notices of copyright and mask work, respectively. Inclusion
of a copyright or mask work notice will be permitted only if
the authorization language set forth in paragraph (e) of
this section is included at the beginning (preferably as the
first paragraph) of the specification.

  (e) The authorization shall read as follows:

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

  *****

 37 CFR 1.84  Standards for drawings

  *****

  (s)Copyright or Mask Work Notice. A copyright or mask
work notice may appear in the drawing, but must be placed
within the sight of the drawing immediately below the figure
representing the copyright or mask work material and be
limited to letters having a print size of .32 cm. to .64 cm.
(1/8 to 1/4 inches) high. The content of the notice must be
limited to only those elements provided for by law. For
example, " © 1983 John Doe" (17 U.S.C. 401) and "M John Doe"
(17 U.S.C. 909) would be properly limited and, under current

statutes, legally sufficient notices of copyright and mask
work, respectively. Inclusion of a copyright or mask work
notice will be permitted only if the authorization language
set  forth  in  §  1.71(e)  is  included  at  the  beginning
(preferably as the first paragraph) of the specification.

  *****

  The  Patent  and  Trademark  Office  will  permit  the
inclusion of a copyright or mask work notice in a design or
utility patent application, and thereby any patent issuing
therefrom, which discloses material on which copyright or
mask work protection has previously been established, under
the following conditions:

 (1) The copyright or mask work notice must be placed
adjacent to the copyright or mask work material. Therefore,
the notice may appear at any appropriate portion of the
patent  application  disclosure,  including  the  drawing.
However, if appearing in the drawing, the notice must comply
with 37 CFR 1.84(s). If placed on a drawing in conformance
with these provisions, the notice will not be objected to as
extraneous matter under 37 CFR 1.84.

 (2) The content of the notice must be limited to
only those elements required by law. For example, " © 1983
John Doe"(17 U.S.C. 401) and "M John Doe" (35 U.S.C. 909)
would be properly limited, and under current statutes,
legally  sufficient  notices  of  copyright  and  mask  work
respectively.

 (3) Inclusion of a copyright or mask work notice
will be permitted only if the following authorization in 37
CFR 1.71(e) is included at the beginning (preferably as the
first paragraph) of the specification to be printed for the
patent:

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

 (4) Inclusion of a copyright or mask work notice
after  a  Notice  of  Allowance  has  been  mailed  will  be
permitted only if the criteria of 37 CFR 1.312 have been
satisfied.

  The inclusion of a copyright or mask work notice in a
design or utility patent application, and thereby any patent
issuing therefrom, under the conditions set forth above will
serve to protect the rights of the author/inventor, as well
as the public, and will serve to promote the mission and
goals of the Patent and Trademark Office. Therefore, the
inclusion of a copyright or mask work notice which complies
with  these  conditions  will  be  permitted.  However,  any
departure from these conditions may result in a refusal to
permit the desired inclusion. If the authorization required
under condition (3) above does not include the specific
language "(t)he [copyright or mask work] owner has no
objection to the facsimile reproduction by anyone of the
patent document or the patent disclosure, as it appears in
the Patent and Trademark Office patent files or records,..."

the notice will be objected to as improper by the examiner
of the application. If the examiner maintains the objection
upon reconsideration, a petition may be filed in accordance
with 37 CFR 1.181.

608.02  Drawing [R - 3]

 35 U.S.C. 113.  Drawings.

  The applicant shall furnish a drawing where necessary
for the understanding of the subject matter to be patented.
When  the  nature  of  such  subject  matter  admits  of
illustration  by  a  drawing  and  the  applicant  has  not
furnished such a drawing, the Commissioner may require its
submission within a time period of not less than two months
from the sending of a notice thereof. Drawings submitted
after the filing date of the application may not be used (i)
to overcome any insufficiency of the specification due to
lack of an enabling disclosure or otherwise inadequate
disclosure therein, or (ii) to supplement the original
disclosure thereof for the purpose of interpretation of the
scope of any claim.

 37 CFR 1.81.  Drawings required in patent application.

  (a) The applicant for a patent is required to furnish a
drawing of his or her invention where necessary for the
understanding of the subject matter sought to be patented;
this drawing , or a high quality copy thereof, must be filed
with  the  application.  Since  corrections  are  the
responsibility of the applicant, the original drawing(s)
should be retained by the applicant for any necessary future
correction.

  (b) Drawings may include illustrations which facilitate
an understanding of the invention (for example, flow sheets
in cases of processes, and diagrammatic views).

  (c) Whenever the nature of the subject matter sought to
be patented admits of illustration by a drawing without its
being necessary for the understanding of the subject matter
and the applicant has not furnished such a drawing, the
examiner will require its submission within a time period of
not less than two months from the date of the sending of a
notice thereof.

  (d) Drawings submitted after the filing date of the
application may not be used to overcome any insufficiency of
the specification due to lack of an enabling disclosure or
otherwise inadequate disclosure therein, or to supplement
the  original  disclosure  thereof  for  the  purpose  of
interpretation of the scope of any claim.

 37 CFR 1.84.  Standards for drawings.

  (a) Drawings . There are two acceptable categories for
presenting drawings in utility patent applications:

  (1)Black ink .  Black and white drawings are normally
required. India ink, or its equivalent that secures solid
black lines, must be used for drawings, or

  (2) Color  .  On rare occasions, color drawings may be
necessary as the only practical medium by which to disclose
the subject matter sought to be patented in a utility patent

application or the subject matter of a statutory invention
registration. The Patent and Trademark Office will accept
color drawings in utility patent applications and statutory
invention registrations only after granting a petition filed
under this paragraph explaining why the color drawings are
necessary. Any such petition must include the following:

  (i) The appropriate fee set forth in § 1.17(h);

  (ii) Three (3) sets of color drawings; and

  (iii)  The  specification  must  contain  the  following
language as the first paragraph in that portion of the
specification relating to the brief description of the
drawing:

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

  If the language is not in the specification, a proposed
amendment  to  insert  the  language  must  accompany  the
petition.

  (b) Photographs  .

  (1) Black and white . Photographs are not ordinarily
permitted  in  utility  and  design  patent  applications.
However, the Office will accept photographs in utility and
design patent applications only after granting a petition
filed under this paragraph which requests that photographs
be accepted. Any such petition must include the following:

  (i) The appropriate fee set forth in § 1.17(h); and

  (ii) Three (3) sets of photographs.

  Photographs must either be developed on double weight
photographic paper or be permanently mounted on bristol
board. The photographs must be of sufficient quality so that
all details in the drawing are reproducible in the printed
patent.

  (2)Color . Color photographs will be accepted in utility
patent applications if the conditions for accepting color
drawings have been satisfied. See paragraph (a)(2) of this
section.

  **>(c)Identification of drawings . Identifying indicia,
if provided, should include the application number or the
title of the invention, inventor's name, docket number (if
any), and the name and telephone number of a person to call
if the Office is unable to match the drawings to the proper
application. This information should be placed on the back
of each sheet of drawings a minimum distance of 1.5 cm. (5/8
inch) down from the top of the page. In addition, a
reference to the application number, or, if an application
number has not been assigned, the inventor's name, may be
included in the left - hand corner provided that the
reference appears within 1.5cm. (9/16 inch) from the top of
the sheet.<

  (d)Graphic forms in drawings. Chemical or mathematical
formulae, tables, and waveforms may be submitted as drawings

and are subject to the same requirements as drawings. Each
chemical or mathematical formula must be labeled as a
separate figure, using brackets when necessary, to show that
information is properly integrated. Each group of waveforms
must be presented as a single figure, using a common
vertical axis with time extending along the horizontal axis.
Each individual waveform discussed in the specification must
be identified with a separate letter designation adjacent to
the vertical axis .

  (e) Type of paper . Drawings submitted to the Office must
be made on paper which is flexible, strong, white, smooth,
nonshiny, and durable. All sheets must be free from cracks,
creases, and folds. Only one side of the sheet shall be used
for the drawing. Each sheet must be reasonably free from
erasures and must be free from alterations, overwritings,
and interlineations. Photographs must either be developed on
double weight photographic paper or be permanently mounted
on bristol board. See paragraph (b) of this section for
other requirements for photographs.

  **>(f)  Size  of  paper  .  All  drawing  sheets  in  an
application must be the same size. One of the shorter sides
of the sheet is regarded as its top. The size of the sheets
on which drawings are made must be:

  (1) 21.0 cm. by 29.7 cm. (DIN size A4), or

  (2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).

  (g) Margins . The sheets must not contain frames around
the sight; i.e., the usable surface, but should have scan
target  points,  i.e.,  cross  -  hairs,  printed  on  two
catercorner margin corners. Each sheet must include a top
margin of at least 2.5 cm. (1 inch), a left side margin of
at least 2.5 cm. (1 inch), a right side margin of at least
1.5 cm. (9/16 inch), and a bottom margin of at least 1.0 cm.
(3/8 inch), thereby leaving a sight no greater than 17.0 cm.
by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing
sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6
15 / 16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by
11 inch) drawing sheets.<

  (h)Views . The drawing must contain as many views as
necessary to show the invention. The views may be plan,
elevation, section, or perspective views. Detail views of
portions of elements, on a larger scale if necessary, may
also be used. All views of the drawing must be grouped
together and arranged on the sheet(s) without wasting space,
preferably in an upright position, clearly separated from
one  another,  and  must  not  be  included  in  the  sheets
containing the specifications, claims, or abstract. Views
must not be connected by projection lines and must not
contain center lines. Waveforms of electrical signals may be
connected by dashed lines to show the relative timing of the
waveforms.

  (1)Exploded views . Exploded views, with the separated
parts embraced by a bracket, to show the relationship or
order of assembly of various parts are permissible. When an
exploded view is shown in a figure which is on the same
sheet as another figure, the exploded view should be placed
in brackets.

  (2)Partial views . When necessary, a view of a large

machine or device in its entirety may be broken into partial
views on a single sheet, or extended over several sheets if
there is no loss in facility of understanding the view.
Partial views drawn on separate sheets must always be
capable of being linked edge to edge so that no partial view
contains parts of another partial view. A smaller scale view
should be included showing the whole formed by the partial
views and indicating the positions of the parts shown. When
a portion o f a view is enlarged for magnification purposes,
the view and the enlarged view must each be labeled as
separate views.

  (i) Where views on two or more sheets form, in effect, a
single complete view, the views on the several sheets must
be so arranged that the complete figure can be assembled
without concealing any part of any of the views appearing on
the various sheets.

  (ii) A very long view may be divided into several parts
placed one above the other on a single sheet. However, the
relationship between the different parts must be clear and
unambiguous.

  (3) Sectional views . The plane upon which a sectional
view is taken should be indicated on the view from which the
section is cut by a broken line. The ends of the broken line
should  be  designated  by  Arabic  or  Roman  numerals
corresponding to the view number of the sectional view, and
should have arrows to indicate the direction of sight.
Hatching must be used to indicate section portions of an
object,  and  must  be  made  by  regularly  spaced  oblique
parallel lines spaced sufficiently apart to enable the lines
to be distinguished without difficulty. Hatching should not
impede the clear reading of the reference characters and
lead lines. If it is not possible to place reference
characters outside the hatched area, the hatching may be
broken  off  wherever  reference  characters  are  inserted.
Hatching must be at a substantial angle to the surrounding
axes or principal lines, preferably 45  _ . A cross section
must be set out and drawn to show all of the materials as
they are shown in the view from which the cross section was
taken.  The  parts  in  cross  section  must  show  proper
material(s)  by  hatching  with  regularly  spaced  parallel
oblique strokes, the space between strokes being chosen on
the basis of the total area to be hatched. The various parts
of a cross section of the same item should be hatched in the
same manner and should accurately and graphically indicate
the nature of the material(s) that is illustrated in cross
section. The hatching of juxtaposed different elements must
be angled in a different way. In the case of large areas,
hatching may be confined to an edging drawn around the
entire inside of the outline of the area to be hatched.
Different  types  of  hatching  should  have  different
conventional meanings as regards the nature of a material
seen in cross section.

  (4) Alternate position . A moved position may be shown by
a broken line superimposed upon a suitable view if this can
be done without crowding; otherwise, a separate view must be
used for this purpose.

  (5)Modified forms . Modified forms of construction must
be shown in separate views.

  (i)Arrangement of views . One view must not be placed

upon another or within the outline of another. All views on
the same sheet should stand in the same direction and, if
possible, stand so that they can be read with the sheet
held in an upright position. If views wider than the width
of the sheet are necessary for the clearest illustration of
the invention, the sheet may be turned on its side so that
the top of the sheet, with the appropriate top margin to be
used as the heading space, is on the right - hand side.
Words must appear in a horizontal, left - to - right fashion
when the page is either upright or turned so that the top
becomes the right side, except for graphs utilizing standard
scientific convention to denote the axis of abscissas (of X)
and the axis of ordinates (of Y).

  (j)View for Official Gazette. One of the views should be
suitable for publication in the Official Gazette as the
illustration of the invention.

  (k) Scale  .

  (1) The scale to which a drawing is made must be large
enough to show the mechanism without crowding when the
drawing is reduced in size to two - thirds in reproduction.
Views of portions of the mechanism on a larger scale should
be used when necessary to show details clearly. Two or more
sheets may be used if one does not give sufficient room. The
number of sheets should be kept to a minimum.

  (2) When approved by the examiner, the scale of the
drawing may be graphically represented. Indications such as
"actual size" or "scale 1/2" on the drawings, are not
permitted, since these lose their meaning with reproduction
in a different format.

  (3) Elements of the same view must be in proportion to
each  other,  unless  a  difference  in  proportion  is
indispensable for the clarity of the view. Instead of
showing elements in different proportion, a supplementary
view may be added giving a larger - scale illustration of
the element of the initial view. The enlarged element shown
in the second view should be surrounded by a finely drawn or
"dot - dash" circle in the first view indicating its
location without obscuring the view.

  (l)  Character  of  lines,  numbers,  and  letters.  All
drawings must be made by a process which will give them
satisfactory  reproduction  characteristics.  Every  line,
number, and letter must be durable, clean, black (except for
color drawings), sufficiently dense and dark, and uniformly
thick and well - defined. The weight of all lines and
letters  must  be  heavy  enough  to  permit  adequate
reproduction. This requirement applies to all lines however
fine, to shading, and to lines representing cut surfaces in
sectional views. Lines and strokes of different thicknesses
may be used in the same drawing where different thicknesses
have a different meaning.

  (m) Shading . The use of shading in views is encouraged
if it aids in understanding the invention and if it does not
reduce legibility. Shading is used to indicate the surface
or shape of spherical, cylindrical, and conical elements of
an object. Flat parts may also be lightly shaded. Such
shading  is  preferred  in  the  case  of  parts  shown  in
perspective, but not for cross sections. See paragraph
(h)(3)  of  this  section.  Spaced  lines  for  shading  are

preferred. These lines must be thin, as few in number as
practicable, and they must contrast with the rest of the
drawings. As a substitute for shading, heavy lines on the
shade  side  of  objects  can  be  used  except  where  they
superimpose on each other or obscure reference characters.
Light should come from the upper left corner at an angle of
45  _ . Surface delineations should preferably be shown by
proper shading. Solid black shading areas are not permitted,
except when used to represent bar graphs or color.

  (n)Symbols. Graphical drawing symbols may be used for
conventional elements when appropriate. The elements for
which such symbols and labeled representations are used must
be adequately identified in the specification. Known devices
should be illustrated by symbols which have a universally
recognized conventional meaning and are generally accepted
in  the  art.  Other  symbols  which  are  not  universally
recognized may be used, subject to approval by the Office,
if  they  are  not  likely  to  be  confused  with  existing
conventional symbols, and if they are readily identifiable.

  (o) Legends  . Suitable descriptive legends may be used,
or may be required by the Examiner, where necessary for
understanding of the drawing, subject to approval by the
Office. They should contain as few words as possible.

  (p) Numbers, letters, and reference characters .

  (1) Reference characters (numerals are preferred), sheet
numbers, and view numbers must be plain and legible, and
must not be used in association with brackets or inverted
commas, or enclosed within outlines, e.g., encircled. They
must be oriented in the same direction as the view so as to
avoid having to rotate the sheet. Reference characters
should be arranged to follow the profile of the object
depicted.

  (2) The English alphabet must be used for letters, except
where another alphabet is customarily used, such as the
Greek  alphabet  to  indicate  angles,  wavelengths,  and
mathematical formulas.

  (3)  Numbers,  letters,  and  reference  characters  must
measure at least .32 cm. (1/8 inch) in height. They should
not be placed in the drawing so as to interfere with its
comprehension. Therefore, they should not cross or mingle
with the lines. They should not be placed upon hatched or
shaded  surfaces.  When  necessary,  such  as  indicating  a
surface or cross section, a reference character may be
underlined and a blank space may be left in the hatching or
shading where the character occurs so that it appears
distinct.

  (4) The same part of an invention appearing in more than
one view of the drawing must always be designated by the
same reference character, and the same reference character
must never be used to designate different parts.

  (5) Reference characters not mentioned in the description
shall not appear in the drawings. Reference characters
mentioned in the description must appear in the drawings.

  (q) Lead lines . Lead lines are those lines between the
reference characters and the details referred to. Such lines
may be straight or curved and should be as short as

possible. They must originate in the immediate proximity of
the reference character and extend to the feature indicated.
Lead lines must not cross each other. Lead lines are
required for each reference character except for those which
indicate the surface or cross section on which they are
placed. Such a reference character must be underlined to
make it clear that a lead line has not been left out by
mistake. Lead lines must be executed in the same way as
lines in the drawing. See paragraph (l) of this section.

  (r)Arrows . Arrows may be used at the ends of lines,
provided that their meaning is clear, as follows:

  (1) On a lead line, a freestanding arrow to indicate the
entire section towards which it points;

  (2) On a lead line, an arrow touching a line to indicate
the surface shown by the line looking along the direction of
the arrow; or

  (3) To show the direction of movement.

  (s) Copyright or Mask Work Notice . A copyright or mask
work notice may appear in the drawing, but must be placed
within the sight of the drawing immediately below the figure
representing the copyright or mask work material and be
limited to letters having a print size of .32 cm. to .64 cm.
(1/8 to 1/4 inches) high. The content of the notice must be
limited to only those elements provided for by law. For
example, "  e1983 John Doe" (17 U.S.C. 401) and "*M* John
Doe" (17 U.S.C. 909) would be properly limited and, under
current statutes, legally sufficient notices of copyright
and mask work, respectively. Inclusion of a copyright or
mask work notice will be permitted only if the authorization
language set forth in § 1.71(e) is included at the beginning
(preferably as the first paragraph) of the specification.

  (t) Numbering of sheets of drawings . The sheets of
drawings should be numbered in consecutive Arabic numerals,
starting with 1, within the sight as defined in paragraph
(g) of this section. These numbers, if present, must be
placed in the middle of the top of the sheet, but not in the
margin. The numbers can be placed on the right - hand side
if the drawing extends too close to the middle of the top
edge of the usable surface. The drawing sheet numbering must
be clear and larger than the numbers used as reference
characters to avoid confusion. The number of each sheet
should be shown by two Arabic numerals placed on either side
of an oblique line, with the first being the sheet number
and the second being the total number of sheets of drawings,
with no other marking.

  (u)Numbering of views.

  (1) The different views must be numbered in consecutive
Arabic  numerals,  starting  with  1,  independent  of  the
numbering of the sheets and, if possible, in the order in
which they appear on the drawing sheet(s). Partial views
intended to form one complete view, on one or several
sheets, must be identified by the same number followed by a
capital  letter.  View  numbers  must  be  preceded  by  the
abbreviation "FIG." Where only a single view is used in an
application to illustrate the claimed invention, it must not
be numbered and the abbreviation "FIG." must not appear.

  (2) Numbers and letters identifying the views must be
simple and clear and must not be used in association with
brackets, circles, or inverted commas. The view numbers must
be larger than the numbers used for reference characters.

  (v) Security markings  .  Authorized security markings
may be placed on the drawings provided they are outside the
sight, preferably centered in the top margin.

  (w) Corrections . Any corrections on drawings submitted
to the Office must be durable and permanent.

  **>(x)Holes . No holes should be made by applicant in the
drawing sheets.<

 **

  Drawings on paper are acceptable although bristol board
is preferred. Corrections thereto must be made in the form
of replacement sheets since the Office does not release
drawings for correction. See 37 CFR 1.85.

  Good  quality  copies  made  on  office  copiers  are
acceptable if the lines are uniformly thick, black, and
solid.  Facsimile  copies  of  drawings  however,  are  not
acceptable (37 CFR 1.6(d)(4)).

  Drawings are currently accepted in * >two< different
size formats. It is, however, required that all drawings in
a particular application be the same size for ease of
handling and reproduction.

  Design patent drawings, 37 CFR 1.152, MPEP § 1503.02.

  Plant patent drawings, 37 CFR 1.165, MPEP § 1606.

  Reissue application drawings, MPEP § 608.02(k) and §
1413.

  Correction  of  drawings,  MPEP  §  608.02(p).  Prints,
preparation and distribution, MPEP § 508 and § 608.02(m).
Prints, return of drawings, MPEP § 608.02(y).

  For pencil notations of classification and name or
initials of assistant examiner to be placed on drawings, see
MPEP § 717.03.

  The filing of a divisional or continuation case under
the provisions of 37 CFR 1.60 (unexecuted case) does not
obviate the need for formal drawings. See MPEP § 608.02(b).

  DEFINITIONS

  A number of different terms are used when referring to
drawings in patent applications. The following definitions
are used in this Manual.

  Original  drawings:  The  drawing  submitted  with  the
application when filed. It may be either a formal or an
informal drawing.

  Substitute drawing:  A drawing filed later than the
filing date of an application. Usually submitted to replace
an original informal drawing.

  Formal drawing : A drawing in a form that complies with
37 CFR 1.84. Formal drawings are stamped "approved" by the
Draftsman.

  Informal drawing: A drawing which does not comply with
the form requirements of 37 CFR 1.84. Drawings may be
informal because they are not on the proper size sheets, the
quality of the lines is poor, or for other reasons such as
the size of reference elements. Such objections are made by
the Draftsman on form PTO - 948.

  Drawing print : This term is used for the white paper
print prepared by the Micrographics Branch of the Office
Services Divisions of all original drawings. The drawing
prints contain the notation "Print of Drawing as originally
filed" near the top. Drawing prints should be placed on the
top on the right - hand flap of the application file
wrapper.

  Interference print:  This term is used to designate the
copy  prepared  of  the  original  drawings  filed  in  file
cabinets separate from the file wrappers and are used to
make interference searches.

  >Plan: This term is used to illustrate the top view.

  Elevation: This term is used to illustrate views showing
the height of objects.<

  The following Form Paragraphs should be used when
notifying applicants of drawing corrections.

¶ 6.38  Acknowledgment of Proposed Drawing Correction

  The proposed drawing correction and/or the proposed
substitute sheets of drawings, filed on [1] have been [2].

 Examiner Note:

  1.  In  bracket  2,  insert  either  approved  or
disapproved.

  2.  If approved, form paragraph 6.39 and one or more of
paragraphs 6.40 or 6.41 or 6.44 must follow.

  3  If disapproved, an explanation must be provided.

  > ¶  6.38.01  Proposed  Drawing  Correction
Disapproved, Changes Not Highlighted

  The proposed drawing correction filed on [1] has been
dis approved because it is not in the form of a pen - and -
ink sketch showing changes in red ink or with the changes
otherwise highlighted. See MPEP § 608.02(v).

¶ 6.38.02  Proposed Drawing Correction Disapproved, New
Matter

  The proposed drawing correction and/or the proposed
substitute sheets of drawings, filed on [1] have been
disapproved because they introduce new matter into the
drawings. 37 CFR 1.118 states that matter involving a
departure from or an addition to the original disclosure
cannot be added to the application after its filing date.
The original disclosure does not support the showing of  [2]

.

 Examiner Note:

  In bracket 2, explain which feature(s) of the proposed
drawing correction constitute(s) new matter.<

¶ 6.39  PTO No Longer Makes Drawing Changes

  The Patent and Trademark Office no longer makes drawing
changes. 1017 O.G.4. It is applicant's responsibility to
ensure that the drawings are corrected. Corrections must be
made in accordance with the instructions below.

 Examiner Note:

  This paragraph is to be used whenever the applicant has
filed a request for the Office to make drawing changes. Form
paragraph 6.40 must follow.

¶ 6.40  Information on How To Effect Drawing Changes

  INFORMATION ON HOW TO EFFECT DRAWING CHANGES

 1.  Correction of Informalities - - 37 CFR 1.85; 1097
OG 36

  New formal drawings must be filed with the changes
incorporated  therein.  The  art  unit  number,  application
number (including series code) and number of drawing sheets
should be written on the reverse side of the drawings.
Applicant may delay filing of the new drawings until after
receipt of the "Notice of Allowability" (PTOL - 37). If
delayed, the new drawing MUST be filed within the  THREE
MONTH shortened statutory period set for response in the
"Notice of Allowability" (PTOL - 37) to avoid extension of
time fees. Extensions of time may be obtained under the
provisions of 37 CFR 1.136(a) for filing the corrected
drawings (but not for the payment of the issue fee). The
drawing  should  be  filed  as  a  separate  paper  with  a
transmittal letter addressed to the Official Draftsperson.

 2.  Corrections  other  than  Informalities  Noted  by
Drafts person on form PTO - 948.

  All  changes  to  the  drawings,  other  than
informalities noted by the Draftsperson, MUST be made in the
same manner as above except that, normally, a highlighted
(preferably  red  ink)  sketch  of  the  changes  to  be
incorporated into the new drawings  MUST be approved by the
Examiner before the application will be allowed. No changes
ill be permitted to be made, other than correction of
informalities, unless the Examiner has approved the proposed
changes.

 Timing of Corrections

  Applicant  is  required  to  submit  acceptable
corrected  drawings  within  the  three  month  shortened
statutory period set in the "Notice of Allowability" (PTOL -
37). Within that three month  period, two weeks should be
allowed for review of the new drawings by the Office. If a
correction is determined to be unacceptable by the Office,
applicant must arrange to have an acceptable correction
resubmitted within the original three month period to avoid

the  necessity  of  obtaining  an  extension  of  time  with
extension fees. Therefore, applicant should file corrected
drawings as soon as possible.

  Failure to take corrective action within the set (or
extended)  period  will  result  in  ABANDONMENT  of  the
application.

¶ 6.41  Reminder That PTO No Longer Makes Drawing Changes

  Applicant is reminded that the Patent and Trademark
Office no longer makes drawing changes and that it is
applicant's responsibility to ensure that the drawings are
corrected in accordance with the instructions set forth in
paper no. [1], mailed on [2].

 Examiner Note:

  This paragraph is to be used when the applicant has been
previously  provided  with  information  on  how  to  effect
drawing changes (i.e., either by way of form paragraph 6.40
or a PTO - 948 has been previously sent).

¶ 6.42  Reminder That Applicant Must Make Drawing Changes

  Applicant  is  reminded  that  in  order  to  avoid  an
abandonment  of  this  application,  the  drawings  must  be
corrected in accordance with the instructions set forth in
paper no. [1] mailed on [2].

 Examiner Note:

  This  paragraph  is  to  be  used  when  allowing  the
application and when applicant has previously been provided
with information on how to effect drawing changes (i.e., by
way of form paragraph 6.40 or a PTO - 948 has been
previously sent).

¶ 6.43  Drawings Contain Informalities, Application Allowed

  The drawings filed on [1] are acceptable subject to
correction of the informalities indicated on the attached
"Notice of Draftsperson's Patent Drawing Review" (PTO -
948). In order to avoid abandonment of this application,
correction is required.

 Examiner Note:

  Use  this  paragraph  when  allowing  the  application,
particularly at time of first action issue. Form paragraph
6.40 or 6.41 must follow.

¶ 6.44  Drawing Informalities Previously Indicated

  In order to avoid abandonment, the drawing informalities
noted  in  paper  no.  [1],  mailed  on  [2],  must  now  be
corrected. Correction can only be effected in the manner set
forth in the above noted paper.

 Examiner Note:

  Use this paragraph when allowing the application and
applicant has previously been informed of informalities in
the drawings.

¶ 6.47  Examiner's Amendment Involving Drawing Changes

  The following changes to the drawings have been approved
by the examiner and agreed upon by applicant: [1]. In order
to avoid abandonment of the application, applicant must make
these agreed upon drawing changes.

 Examiner Note:

  1.  In bracket 1, Insert the agreed upon drawing
changes.

  2.  Form paragraphs 6.39 and 6.40 must follow.

  DRAWING SYMBOLS

  37 CFR 1.84(n) indicates that graphic drawing symbols and
other labeled representations may be used for conventional
elements where appropriate, subject to approval by the
Office. Also, suitable legends may be used, or may be
required, in proper cases.

  The publications listed below have been reviewed by the
Office  and  the  symbols  therein  are  considered  to  be
generally acceptable in patent drawings. Although the Office
will not "approve" all of the listed symbols as a group
because their use and clarity must be decided on a case - by
- case basis, these publications may be used as guides when
selecting graphic symbols. Overly specific symbols should be
avoided. Symbols with unclear meanings should be labeled for
clarification.

  These publications are available from the American
National Standards Institute Inc., 11 West 42nd Street, New
York, New York 10036.

  The publications reviewed are the following:

  Y32.2  -  1970  Graphic  Symbols  for  Electrical  &
Electronics Diagrams

  Y32.10 - 1967 Graphic Symbols for Fluid Power Diagrams

  Y32.11 - 1961 Graphic Symbols for Process Flow Diagrams
in the Petroleum & Chemical Industries

  Y32.14 - 1962 Graphic Symbols for Logic Diagrams

  Z32.2.3  -  1949  (R1953)  Graphic  Symbols  for  Pipe
Fittings, Valves and Piping

  Z32.2.4 - 1949 (R1953) Graphic Symbols for Heating,
Ventilating & Air Conditioning

  Z32.2.6  -  1950  Graphic  Symbols  for  Heat  -  Power
Apparatus

  The following symbols should be used to indicate various
materials where the material is an important feature of the
invention. The use of conventional features is very helpful
in making prior art searches.

 **  Double Click here to see the image  **

  See MPEP § 601.01(f) for treatment of applications filed
without drawings and MPEP § 601.01(g) for treatment of
applications filed without all figures of drawings.

  ILLUSTRATION SUBSEQUENTLY REQUIRED

  The acceptance of an application without a drawing does
not preclude the examiner from requiring an illustration in
the form of a drawing under 37 CFR 1.81(c) or 37 CFR
1.83(c). In requiring such a drawing, the examiner should
clearly indicate that the requirement is made under 37 CFR
1.81(c) or 37 CFR 1.83(c) and be careful not to state that
he or she is doing so "because it is necessary for the
understanding of the invention," as that might give rise to
an erroneous impression as to the completeness of the
application as filed. Examiners making such requirements are
to specifically require, as a part of the applicant's next
response, at least an ink sketch or permanent print of any
drawing proposed in response to the requirement, even though
no allowable subject matter is yet indicated. This will
afford the examiner an early opportunity to determine the
sufficiency of the illustration and the absence of new
matter. See 37 CFR 1.118 and 37 CFR 1.81(d). The description
should of course be amended to contain reference to the new
illustration. This may obviate further correspondence where
an amendment places the case in condition for allowance,
except for the formal requirement relating to the drawing.
In the event of a final determination that there is nothing
patentable in the case, a formal drawing will not be
required.

  BLACK AND WHITE PHOTOGRAPHS

 37 CFR 1.84.  Standards for drawings.

  *****

  (b)Photographs .

  (1) Black and white . Photographs are not ordinarily
permitted  in  utility  and  design  patent  applications.
However, the Office will accept photographs in utility and
design patent applications only after granting a petition
filed under this paragraph which requests that photographs
be accepted. Any such petition must include the following:

  (i) The appropriate fee set forth in § 1.17(h); and

  (ii) Three (3) sets of photographs.

  Photographs must either be developed on double weight
photographic paper or be permanently mounted on bristol
board. The photographs must be of sufficient quality so that
all details in the drawing are reproducible in the printed
patent.

  (2)Color . Color photographs will be accepted in utility
patent applications if the conditions for accepting color
drawings have been satisfied. See paragraph (a)(2) of this
section.

  *****

  Photographs are not normally considered to be proper
drawings. Photographs are acceptable for a filing date and

are  generally  considered  to  be  informal  drawings.
Photographs may be acceptable as formal drawings when a
petition filed under the provisions of 37 CFR 1.84(b) is
granted. The petition must be accompanied by the fee set
forth  in  37  CFR  1.17(h)  and  three  (3)  sets  of  the
photographs in question. Photolithographs of photo graphs
are never acceptable. See In re Taggart ** , 1957 C.D. 6,
725 O.G. 397 and  In re Myers,1959 C.D. 2, 738 O.G. 947.

  PETITIONABLE SUBJECT MATTER

  The Patent and Trademark Office is willing to accept
photographs or photomicrographs (not photolithographs or
other reproductions of photographs made by using screens)
printed on sensitized paper in lieu of India ink drawings,
to  illustrate  inventions  which  are  incapable  of  being
accurately or adequately depicted by India ink drawings;
e.g., crystalline structures, metallurgical microstructures,
textile fabrics, grain structures and ornamental effects.
The photographs or photomicrographs must show the invention
more clearly than they can be done by India ink drawings and
otherwise comply with the rules concerning such drawings.

  Such photographs to be acceptable must be made on
photographic  paper  having  the  following  characteristics
which are generally recognized in the photographic trade:
double weight paper with a surface described as smooth;
tint, white, or be photographs mounted on proper size
bristol board.

  See MPEP § 1503.02 for discussion of photographs used in
design patent applications.

  COLOR DRAWINGS OR COLOR PHOTOGRAPHS

 37 CFR 1.84.  Standards for drawings.

  (a) Drawings . There are two acceptable categories for
presenting drawings in utility patent applications:

  *****

  (2)Color .  On rare occasions, color drawings may be
necessary as the only practical medium by which to disclose
the subject matter sought to be patented in a utility patent
application or the subject matter of a statutory invention
registration. The Patent and Trademark Office will accept
color drawings in utility patent applications and statutory
invention registrations only after granting a petition filed
under this paragraph explaining why the color drawings are
necessary. Any such petition must include the following:

  (i) The appropriate fee set forth in § 1.17(h);

  (ii) Three (3) sets of color drawings; and

  (iii)  The  specification  must  contain  the  following
language as the first paragraph in that portion of the
specification relating to the brief description of the
drawing:

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

  If the language is not in the specification, a proposed
amendment  to  insert  the  language  must  accompany  the
petition.

  (b)Photographs .

  *****

  (2) Color . Color photographs will be accepted in utility
patent applications if the conditions for accepting color
drawings have been satisfied. See paragraph (a)(2) of this
section.

  *****

  Limited  use  of  color  drawings  in  utility  patent
applications is provided for in 37 CFR 1.84(a)(2) and
(b)(2).  Unless  a  petition  is  filed  and  granted,  the
Draftsman will not approve color drawings or color photo
graphs in a utility or design patent application. The
examiner  must  object  to  the  color  drawings  or  color
photographs as being improper and require applicant either
to cancel the drawings or to provide substitute black and
white drawings.

  Under 37 CFR 1.84(a)(2) and (b)(2), the applicant must
file a petition with fee requesting acceptance of the color
drawings or color photographs. The petition is decided in
the Office of the Group Director.

  Where color drawings or color photographs are filed in a
continuing application, applicant must renew the petition
under 37 CFR 1.84(a)(2) and (b)(2) even though a similar
petition was filed in the prior application. Until the
renewed petition is granted, the examiner must object to the
color drawings or color photographs as being improper.

  In light of the substantial administrative and economic
burden associated with printing a utility patent with color
drawings or color photographs, the patent copies which are
printed at issuance of the patent will depict the drawings
in black and white only. However, a set of color drawings or
color photographs will be attached to the Letters Patent.
Moreover, copies of the patent with color drawings or color
photographs attached thereto will be provided by the Patent
and Trademark Office upon special request and payment of the
fee  necessary  to  recover  the  actual  costs  associated
therewith.

  Accordingly, the petition must also be accompanied by a
proposed amendment to insert the following language as the
first  paragraph  in  the  portion  of  the  specification
containing a brief description of the drawings:

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

  It is anticipated that such a petition will be granted
only when the Patent and Trademark Office has determined
that a color drawing or color photograph is the only
practical medium by which to disclose in a printed utility
patent the subject matter to be patented.

  It is emphasized that a decision to grant the petition
should not be regarded as an indication that color drawings
or  color  photographs  are  necessary  to  comply  with  a
statutory requirement. In this latter respect, clearly it is
desirable to file any desired color drawings or color
photographs as part of the original application papers in
order to avoid issues concerning statutory defects (e.g.,
lack of enablement under 35 U.S.C. 112 or * >new< matter
under 35 U.S.C. 132). The filing of the petition, however,
may  be  deferred  until  acceptable  formal  drawings  are
required by the examiner.

  NOTIFYING APPLICANT

  If the original drawings are informal but may be
admitted for examination purposes, the draftsman indicates
on a 2 - part form, PTO - 948, what the informalities are
and that new corrected drawings are required. In either
case, the informal drawings are accepted as satisfying the
requirements of 37 CFR 1.51.

  The examiners are directed to advise the applicants by
way of form PTO - 948 (see MPEP § 707.07(a)) in the first
Office  action  of  the  conditions  which  the  draftsman
considers to render the drawing informal.

  Drawing corrections should be made when the application
is in issue unless the examiner requires correction at an
earlier date.

  If the examiner discovers a defect in the content of the
drawing, the applicant should be notified by using a Form
Paragraph, where appropriate.

¶ 6.21  New Drawings, Competent Draftsperson

  New formal drawings are required in this application
because [1]. Applicant is advised to employ the services of
a competent patent draftsperson outside the Office, as the
Patent and Trademark Office no longer prepares new drawings.

¶ 6.22  Drawings Objected To

  The drawings are objected to because [1]. Correction is
required.

 Examiner Note:

  Follow with paragraph 6.27, if appropriate.

  > ¶  6.22.01  Drawings Objected To, Details Not
Shown

  The drawings are objected to under 37 CFR 1.83(a)
because  they  fail  to  show  [1]  as  described  in  the
specification. Any structural detail that is essential for a
proper understanding of the disclosed invention should be
shown in the drawing. MPEP § 608.02(d). Correction is
required.

 Examiner Note:

  1.  In bracket 1, identify the structural details not
shown in the drawings.

  2.  Follow with form paragraph 6.27, if appropriate.

¶ 6.22.02  Drawings Objected To, Different Numbers Refer
To Same Part

  The drawings are objected to as failing to comply with
37 CFR 1.84(p)(4) because reference characters " [1] " and "
[2] " have both been used to designate  [3] . Correction is
required.

 Examiner Note:

  1.  In brackets 1 and 2, identify the numbers which
refer to the same part.

  2.  In bracket 3, identify the part which is referred
to by different numbers.

  3.  Follow with form paragraph 6.27, if appropriate.

¶ 6.22.03  Drawings Objected To, Different Parts Referred
To By Same Number

  The drawings are objected to as failing to comply with
37 CFR 1.84(p)(4) because reference character " [1] " has
been used to designate both  [2] and  [3] . Correction is
required.

 Examiner Note:

  1.  In bracket 1, identify the number which refers to
the different parts.

  2.  In brackets 2 and 3, identify the parts which are
referred to by the same number.

  3.  Follow with form paragraph 6.27, if appropriate.

¶ 6.22.04  Drawings Objected To, Incomplete

  The drawings are objected to under 37 CFR 1.83(b)
because  they  are  incomplete.  37  CFR  1.83(b)  reads  as
follows:

 When the invention consists of an improvement on an old
machine the drawing must when possible exhibit, in one or
more views, the improved portion itself, disconnected from
the old structure, and also in another view, so much only of
the old structure as will suffice to show the connection of
the invention therewith.

 Correction is required.

 Examiner Note:

  1.  Supply a full explanation, if it is not readily
apparent how the drawings are incomplete.

  2.  Follow with form paragraph 6.27, if appropriate.

¶ 6.22.05  Drawings Objected To, Modifications In Same
Figure

  The drawings are objected to under 37 CFR 1.84(h)(5)

because Figure [1] show(s) modified forms of construction in
the same view. Correction is required.

 Examiner Note:

  1.  In  brackets  1,  insert  the  appropriate  Figure
number(s).

  2.  Follow with form paragraph 6.27, if appropriate.

¶ 6.22.06  Drawings Objected To, Reference Numbers Not In
Drawings

  The drawings are objected to as failing to comply with
37 CFR 1.84(p)(5) because they do not include the following
reference  sign(s)  mentioned  in  the  description:  [1]  .
Correction is required.

 Examiner Note:

  1.  In bracket 1, specify the reference characters
which are not found in the drawings, including the page and
line number where they first occur in the specification.

  2.  Follow with form paragraph 6.27, if appropriate.

¶ 6.22.07  Drawings Objected To, Reference Numbers Not In
Specification

  The drawings are objected to as failing to comply with
37  CFR  1.84(p)(5)  because  they  include  the  following
reference sign(s) not mentioned in the description: [1] .
Correction is required.

 Examiner Note:

  1.  In bracket 1, specify the reference characters
which are not found in the specification, including the
figure in which they occur.

  3.  Follow with form paragraph 6.27, if appropriate.<

¶ 6.23  Subject Matter Admits of Illustration

  The  subject  matter  of  this  application  admits  of
illustration by a drawing to facilitate understanding of the
invention. Applicant is required to furnish a drawing under
37 CFR 1.81.

 Examiner Note:

  When requiring drawings before examination, use PTOL -
90 form and set a two - month time period.

>¶  6.23.01  Subject Matter Admits of Illustration (No
Examination of Claims)

  The  subject  matter  of  this  application  admits  of
illustration by a drawing to facilitate understanding of the
invention. Applicant is required to furnish a drawing under
37 CFR 1.81. No new matter may be introduced in the required
drawing.

  Applicant is given a TWO MONTH time limit to submit a
drawing in compliance with 37 CFR 1.81. Extensions of time

may be obtained under the provisions of 37 CFR 1.136(a).
Failure  to  timely  submit  a  drawing  will  result  in
ABANDONMENT of the application.

 Examiner Note:

  1.  Use of this form paragraph should be extremely rare
and limited to those instances where no examination can be
performed due to lack of an illustration of the invention
resulting in a lack of understanding of the claimed subject
matter.

  2.  Use a PTOL - 90 or PTO - 90C form as a cover sheet
for this communication.<

¶ 6.24.  Informal Drawings

  This application has been filed with informal drawings
which are acceptable for examination purposes only. Formal
drawings will be required when the application is allowed.

¶ 6.24.01  Photographs  and  Color  Drawings,  Petition
Required

  The drawings are considered to be informal because they
fail to comply with 37 CFR § 1.84(a)(1) which requires black
and white drawings using India ink or its equivalent.

  Photographs and color drawings are acceptable only for
examination purposes unless a petition filed under 37 CFR
1.84(a)(2) or (b)(1) is granted permitting their use as
formal drawings. In the event applicant wishes to use the
drawings currently on file as formal drawings, a petition
must be filed for acceptance of the photographs or color
drawings as formal drawings. Any such petition must be
accompanied by the appropriate fee as set forth in 37 CFR
1.17(h),  three  sets  of  drawings  or  photographs,  as
appropriate, and, if filed under the provisions of 37 CFR
1.84(a)(2), an amendment to the first paragraph of the brief
description of the drawings section of the specification
which states:

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

  Color photographs will be accepted if the conditions for
accepting color drawings have been satisfied.

 Examiner Note:

  This form paragraph should be used after form paragraph
6.24 only if the application contains photographs or color
drawings as the drawings required by 37 CFR 1.81.

>¶  6.25.01  Formal  Drawings  Suggested,  Allowable
Subject Matter Indicated

  Since allowable subject matter has been indicated,
applicant  is  encouraged  to  submit  formal  drawings  in
response to this Office action. The early submission of
formal  drawings  will  permit  the  Office  to  review  the
drawings for acceptability and to resolve any informali ties
remaining therein before the application is passed to issue.

This will avoid possible delays in the issue process.<

¶ 6.26  Informal Drawings Do Not Permit Examination

  The informal drawings are not of sufficient quality to
permit examination. Accordingly, new drawings are required
in response to this Office action.

 Examiner Note:

  Use PTOL - 90 form and set a 2 - month time period.

¶ 6.27  Correction Held in Abeyance

  Applicant is required to submit a proposed drawing
correction in response to this Office action. However,
execution of the noted defect will be deferred until the
application is allowed by the examiner.

  DRAWING REQUIREMENTS

  The first sentence of 35 U.S.C. 113 requires a drawing
to be submitted upon filing where such drawing is necessary
for the understanding of the invention. In this situation,
the lack of a drawing renders the application incomplete
and, as such, the application cannot be given a filing date
until the drawing is received. The second sentence of 35
U.S.C. 113 deals with the situation wherein a drawing is not
necessary for the understanding of the invention, but the
case admits of illustration and no drawing was submitted on
filing. The lack of the drawing in this situation does not
render the application incomplete but rather is treated much
in the same manner as an informality. The examiner should
require such drawings in almost all such instances. Such
drawings could be required during the processing of the
application but do not have to be furnished at the time the
application is filed. The applicant is allowed at least 2
months from the date of the letter requiring drawings to
submit them.

  Handling of Drawing Requirements Under the First Sentence
 of 35 U.S.C. 113

  The Initial Application Examination Division will make
the initial decision in all new applications as to whether a
drawing is "necessary" under the first sentence of 35 U.S.C.
113. A drawing will be considered necessary under the first
sentence of 35 U.S.C. 113 in all cases where the drawing is
referred to in the specification and one or more figures
have been omitted.

  The determination under 35 U.S.C. 113 (first sentence)
as to when a drawing is necessary will be handled in the
Initial Application Examination Division according to the
following procedure. The Initial Application Examination
Division will make the initial determination whether or not
drawings are required for the understanding of the subject
matter of the invention. Mechanical and electrical cases
which lack a drawing, but in which one appears to be needed
for an understanding of the invention, will be referred to
the  Classification  and  Routing  Unit  of  the  Initial
Application  Examination  Division  for  advice.  If  the
Classification and Routing Unit cannot reach a prompt and
decisive response, the application will be referred to the
supervisory  primary  examiner  for  a  determination.  When

drawings  are  required,  the  application  is  treated  as
incomplete and the applicant is so informed by the Initial
Application Examination Division. The filing date will not
be granted and applicant will be notified to complete the
application  (37  CFR  1.53).  However,  the  practice  with
respect to chemical cases is that, unless a drawing or
drawing  figure  is  specifically  referred  to  in  the
specification  of  the  application,  the  application  will
initially  be  considered  by  the  Initial  Application
Examination Division formality examiner as being complete
and will be given a filing date. Only in those chemical
cases wherein there is a reference in the specification to a
drawing and no drawing was present on filing will a chemical
application initially be held incomplete and denied a filing
date. If a drawing is later furnished, a filing date may be
granted as of the date of receipt of such drawing .

  If an examiner feels that a filing date should not have
been granted in an application because it does not contain
drawings, the matter should be brought to the attention of
the supervisory primary examiner (SPE) for review. If the
SPE decides that drawings are required to understand the
subject matter of the invention, the SPE should return the
application to the Application Branch with a typed, signed,
and dated memorandum requesting cancellation of the filing
date and identifying the subject matter required to be
illustrated.

608.02(a)  New Drawing - When Required [R - 1]

  Utility and design patent applications should be taken
up for the first Office action without a request for formal
drawings unless the informal drawings are so unclear that
they do not facilitate an understanding of the invention as
to permit examination of the application. If at the time of
the initial assignment of an application to an examiner's
docket, or if at the time the application is taken up for
action,  the  supervisory  primary  examiner  believes  the
informal drawings to be of such a condition as to not permit
reasonable examination of the application, applicant should
be required to immediately submit formal drawings. However,
if the informal drawings do not permit examination and the
supervisory primary examiner believes the drawings are of
such a character as to render the application defective
under 35 U.S.C. 112, examination should begin immediately
with a requirement for formal drawings and a rejection of
the claims as not being in compliance with 35 U.S.C. 112,
first paragraph, being made.

  Formal drawings should be required when the application
is allowed.

  Forms PTOL - 326 and 37 now provide items for requiring
formal drawings.

  Form Paragraph 6.45 may also be used to inform applicant
that formal drawings are required.

¶ 6.45  Application Allowed, Formal Drawings Needed

  Formal drawings are now required and must be filed
within the **>THREE MONTH< shortened statutory period set
for response in the "Notice of Allowability" (PTOL - 37).
Extensions of time may be obtained under the provisions of
37 CFR 1.136(a). Failure to timely submit the drawings will

result in ABANDONMENT of the application. The drawings
should be submitted as a separate paper with a transmittal
letter which is addressed to the Official *>Draftsperson<.
The art unit number, *>application< number, and number of
drawing sheets should be written on the reverse side of the
drawings.

  Handling of Drawing Requirements Under the Second Sentence
 of 35 U.S.C. 113

  35 U.S.C. 113 deals with the situation wherein the
drawing is not necessary for the understanding of the
invention, but the subject matter admits of illustration by
a drawing and the applicant has not furnished a drawing. The
lack of the drawing in this situation does not render the
application  incomplete  but  rather  is  treated  as  an
informality.  A  filing  date  will  be  accorded  with  the
original presentation of the papers, despite the absence of
drawings.  In  these  situations,  a  drawing  or  further
illustration will normally be required by the examiner. This
should be done prior to examination in a separate letter.
The  examiner  should  require  additional  drawings,  where
appropriate, as early as possible since the possession of
the additional drawings would facilitate the examination
process. A letter requiring drawings may contain wording
similar to the following:

  The examiner has decided that the subject matter of this
application admits of illustration by a drawing and that a
drawing would facilitate the understanding of the subject
matter disclosed. (Continue with a specific mention of those
items of which drawings are desired.) Applicant is required
to furnish a drawing under 37 CFR 1.81 (Incorporate in
Office action or send a separate letter setting a 2 - month
period for response.)

  The applicant should be given at least 2 months from the
date of a requirement to submit drawings made in a separate
letter. If the requirement for drawings is included in an
Office  action,  the  time  for  supplying  the  additional
drawings will be the same as the time for response to the
Office action.

  RECEIPT OF DRAWING AFTER THE FILING DATE

  If new matter is noticed by the examiner in a substitute
or additional drawing, the drawing should not be entered. It
should be objected to as containing new matter. A new
drawing without such new matter may be required if the
examiner feels a drawing is needed under 37 CFR 1.81 or
1.83.  The  examiner's  decision  would  be  reviewable  by
petition  to  the  Commissioner  under  37  CFR  1.181.  The
decision on such a petition would be handled by the group
director.

  UNTIMELY FILED DRAWINGS

  If a drawing is not timely received in response to a
letter  from  the  examiner  who  requires  a  drawing,  the
application becomes abandoned for failure to respond.

  For the handling of additional, duplicate, or substitute
drawing, see MPEP § 608.02(h).

608.02(b)  Informal Drawings [R - 1]

 37 CFR 1.85.  Corrections to drawings.

  (a) The requirements of § 1.84 relating to drawings will
be strictly enforced. A drawing not executed in conformity
thereto, if suitable for reproduction, may be admitted for
examination  but  in  such  case  a  new  drawing  must  be
furnished.

  (b) The Patent and Trademark Office will not release
drawings in applications having a filing date after January
1, 1989, or any drawings from any applications after January
1, 1991, for purposes of correction. If corrections are
necessary, new corrected drawings must be submitted within
the time set by the Office.

  (c) When corrected drawings are required to be submitted
at the time of allowance, the applicant is required to
submit acceptable drawings within three months from the
mailing of the "Notice of Allowability." Within that three -
month period, two weeks should be allowed for review of the
drawings by the Drafting Branch. If the Office finds that
correction is necessary, the applicant must submit a new
corrected drawing to the Office within the original three -
month  period  to  avoid  the  necessity  of  obtaining  an
extension of time and paying the extension fee. Therefore,
the applicant should file corrected drawings as soon as
possible  following  the  receipt  of  the  Notice  of
Allowability. The provisions with respect to obtaining an
extension of time relates only to the late filing of
corrected drawings. The time limit for payment of the issue
fee is a fixed three - month period which cannot be extended
as set forth in 35 U.S.C. 151.

  In  instances  where  the  drawing  is  such  that  the
prosecution can be carried on without the corrections,
applicant is informed of the reasons why the drawing is
objected to on Form PTO - 948 or in an examiner's action,
and that the drawing is admitted for examination purposes
only (see MPEP § 707.07(a)). To be fully responsive, an
amendment must include a request for drawing corrections
when the application is allowed or an appeal is filed. See
37 CFR 1.111(b).

 INFORMAL DRAWINGS

  To  expedite  filing,  applicants  sometimes  submit
applications with informal drawings. Such applications are
accepted by Application Branch for filing only, provided the
informal drawings are readable and reproducible. Applicant
is notified on Form PTO - 948 or in an Office action that
formal drawings, in compliance with 37 CFR 1.84 will be
required when the application is allowed. Form Paragraph
6.24 may be used for this purpose.

¶ 6.24  Informal Drawings

  This application has been filed with informal drawings
which are acceptable for examination purposes only. Formal
drawings will be required when the application is allowed.

  This form paragraph may be followed by Form Paragraph
6.24.>0<1 if applicable.

  Alternatively, the examiner may check the appropriate

box on the Office Action Summary, PTOL - 326.

  HANDLING OF NEW DRAWINGS

  In those situations where an application is filed with
informal drawings, applicants are requested to wait until
they  receive  their  "Notice  of  *>Draftsperson's<  Patent
Drawing Review" form, PTO - 948 or the first Office action
utilizing form PTOL - 326 or PTOL - 37 from the group art
unit before submitting the formal drawings. The letter of
transmittal accompanying the formal drawings should identify
the group art unit indicated on form PTO - 948 or form PTOL
- 326. If the informal notification appears on form PTOL -
37, the date of the mailing of the Notice of Allowance and
Issue Fee as well as the Issue Batch Number must be given.
Also, each sheet of the drawing should include the serial
number and group art unit in the upper right margin. In the
past, some drawings have been misdirected because the group
art unit indicated on the filing receipt was used rather
than that indicated on the informal notice forms.

  The draftsman is the judge of drawings, as to the
execution of the same, and the arrangement of the views
thereon,  while  the  examiner  is  the  judge  as  to  the
sufficiency of the showing. The drawings received with an
application are inspected by the *>draftsperson<. If the
drawing is satisfactory, he or she stamps on each sheet
"Approved by Draftsman" and checks the approved box on Form
PTO - 948. See also MPEP § 608.02.

  RECEIPT OF SUBSTITUTE DRAWINGS

  If substitute drawings are timely filed, the clerk
should immediately send the new substitute drawings with the
file wrapper to the *>Draftsperson< for approval as to form.

  If the application is allowed on the first action, the
examiner should require formal drawings using form PTOL -
37.

  COMPARISON OF SUBSTITUTE DRAWINGS

  In utility applications, the examination will normally
be conducted using any informal drawings presented. The
sufficiency of disclosure, as concerns the subject matter
claimed, will be made by the examiner utilizing the informal
drawings. IT IS APPLICANT'S RESPONSIBILITY TO SEE THAT NO
NEW MATTER IS ADDED when submitting substitute drawings
since they will not normally be reviewed by an examiner. Of
course, if the examiner notices new matter in the substitute
drawings, appropriate action to have the new matter deleted
should be undertaken.

608.02(c)  Drawing Print Kept in File Wrapper

  The drawing prints must always be kept on top of the
papers on the right side of the file wrapper so as to be
visible upon opening the wrapper and to permit them to be
easily detached.

  Applications may be sent to issue or to the Files
Repository without the original drawing, if any, if the
drawing cannot be located. For an application sent to issue
with missing drawings, see MPEP § 608.02(z). For abandoned
applications sent to the Files Repository, a notation should

be made on the Contents portion of the file wrapper that the
drawings were missing.

  Upon initial processing, the original drawings are
placed in the center portion of the application file wrapper
underneath  the  application  papers  by  the  Micrographics
Branch. The formal drawings should be retained in this
position.

608.02(d)  Complete Illustration in Drawings [R - 1]

 37 CFR 1.83.  Content of drawing.

  (a) The drawing must show every feature of the invention
specified in the claims. However, conventional features
disclosed  in  the  description  and  claims,  where  their
detailed  illustration  is  not  essential  for  a  proper
understanding of the invention, should be illustrated in the
drawing in the form of a graphical drawing symbol or a
labeled representation (e.g. a labeled rectangular box).

  (b) When the invention consists of an improvement on an
old machine the drawing must when possible exhibit, in one
or more views, the improved portion itself, disconnected
from the old structure, and also in another view, so much
only of the old structure as will suffice to show the
connection of the invention therewith.

  (c)  Where  the  drawings  do  not  comply  with  the
requirements of paragraphs (a) and (b) of this section, the
examiner shall require such additional illustration within a
time period of not less than two months from the date of the
sending of a notice thereof. Such corrections are subject to
the requirements of § 1.81(d).

  Any structural detail that is of sufficient importance
to be described should be shown in the drawing. ( Ex parte
Good , 1911 C.D. 43; 164 O.G. 739.)

  Form  Paragraph  6.36  should  be  used  to  require
illustration.

¶ 6.36  Drawings Do Not Show Claimed Subject Matter

  The drawings are objected to under 37 CFR 1.83(a). The
drawings must show every feature of the invention specified
in the claims. Therefore, the [1] must be shown or the
feature ** cancelled from the claim. No new matter should be
entered.

 Examiner Note:

  In bracket 1, insert the features that *>must< be shown.

  See also MPEP § 608.02(a).

608.02(e)  Examiner Determines Completeness of Drawings

  The examiner should see to it that the figures are
correctly  described  in  the  brief  description  of  the
specification and that the reference characters are properly
applied, no single reference character being used for two
different parts or for a given part and a modification of
such part, but there should be no superfluous illustrations.

608.02(f)  Modifications in Drawings

  Modifications may not be shown in broken lines on
figures which show in solid lines another form of the
invention. Ex parte Badger,1901 C.D. 195; 97 O.G. 1596.

  All modifications described must be illustrated, or the
text cancelled. ( Ex parte Peck , 1901 C.D. 136; 96 O.G.
2409.) This requirement does not apply to a mere reference
to minor variations nor to well - known and conventional
parts.

608.02(g)  Illustration of Prior Art [R - 1]

  Figures showing the prior art are usually unnecessary
and should be cancelled, Ex parte Elliott, 1904 C.D. 103;
109  O.G.  1337.  However,  where  needed  to  understand
applicant's invention, they may be retained if designated by
a legend such as "Prior Art."

  If the prior art figure is not labeled, the * >Form<
Paragraph>6.36.01< may be used.

  > ¶ 6.36.01 Illustration of "Prior Art" <

  Figure [1] should be designated by a legend such as
Prior Art in order to clarify what is applicant's invention.
(See MPEP § 608.02(g)).

608.02(h)  Additional, Duplicate, or Substitute Drawings

  When an amendment is filed stating that at the same time
substitute or additional sheets of drawings are filed and
such drawings have not been transmitted to the examining
group, the docket clerk in the examining group should call
the Application Branch before entering the amendment to
ascertain if the drawing was not received. In the next
communication of the examiner, the applicant is notified if
the drawings have been received and whether or not the
substitute or additional drawings have been entered in the
application.

  Additional and substitute drawings, together with the
file wrapper, are routed through the Drafting Branch where
any defects in execution will be noted. If there are none,
they will be stamped, "APPROVED BY DRAFTSMAN." When such
drawings are considered by the examiner, it should be kept
in mind that the "APPROVED" stamp applies only to the size
and quality of paper, lines rough and blurred, and other
details of execution. The additional or substitute drawing
sheets should be entered by the application clerk after
approval by both the draftsman and the examiner.

  The examiner should not overlook such factors as new
matter,  the  necessity  for  the  additional  sheets  and
consistency with other sheets. Clerks will routinely enter
all additional and substitute sheets on the file wrapper.
Additional  and  substitute  sheets  of  drawings  are  also
indicated on the face of the file wrapper under the heading
"Parts of application separately filed." If the examiner
decides that the sheets should not be entered, applicant is
so informed, giving the reasons. The entries made by the
clerk will be marked "(N.E.)."

  Form Paragraph 6.37 may be used to acknowledge corrected

or substituted drawings.

¶ 6.37  Acknowledgment of Corrected or Substituted Drawings

  The corrected or substitute drawings have been received
on [1]. These drawings are [2].

 Examiner Note :

  1.  In bracket 2, insert either - acceptable - or - not
acceptable - .

  2.  If not acceptable, an explanation must be provided.

  3.  If not acceptable because of informalities noted on
the PTO - 948, use form paragraph 6.43.

  Alternatively,  PTOL  -  326  Office  Action  Summary,
includes  a  block  for  acknowledgment  of  corrected  or
substitute drawings.

  If  an  additional  sheet  of  drawing  is  considered
unnecessary and the original drawing requires alterations
which are taken care of in the proffered additional sheet,
the latter may be used in lieu of the usual sketch required
in making the correction of the original drawing.

  For return of drawing, see MPEP § 608.02(y).

608.02(i)  Transfer of Drawings From Prior Applications

  Transfer of drawings from a first pending application to
another will be made only upon the granting of a petition
filed under 37 CFR 1.182 which must set forth a hardship
situation requiring such transfer of drawings.

608.02(m)  Drawing Prints

  Preparation  and  distribution  of  drawing  prints  is
discussed in MPEP § 508.

  Prints are made of the drawings of an acceptable
application. These prints are marked "Prints of drawing as
originally filed" and are entered in the application, given
a paper number, and kept on top of the papers on the right
side of the file wrapper, see MPEP § 717.01(b).

  All prints and inked sketches subsequently filed to be
part of the record are endorsed with the date of their
receipt in the Office and given their appropriate paper
number.

  The print being thus an official paper in the record
should not be marked or in any way altered. The original
drawing, of course, should not be marked up by the examiner.
Where, as in an electrical wiring case, it is desirable to
identify the various circuits by different colors, or in any
more or less complex case, it is advantageous to apply
legends, arrows, or other indicia, an additional print for
such use should be made or ordered by the examiner and
placed unofficially in the file.

  Prints remain in the file at all times except as
provided in MPEP § 608.02(c).

  INTERFERENCE PRINTS

  A print is prepared of each drawing in all applications
having a filing date. This interference print is in addition
to the drawing print on white paper.

  Primary examiners should place the classification and
the name of the examiner on the interference print.

  The interference prints are located above the drawing
prints on the right - hand portion of the file wrapper when
initially received in the examining group.

  After the application has been classified and assigned
to an examiner, the interference prints should be removed
and placed in the drawing cabinets.

  If an application has several sheets of drawings, the
interference prints should be stapled together at their
bottom edges before being filed. If the number of sheets of
prints is too large to be stapled, a fastener should be
placed through the holes at the top.

  The time when the interference prints are removed from
the drawing cabinets is determined by the group director.

  The drawings filed by applicant remain in the file
wrapper.

608.02(n)  Duplicate Prints in Patentability Report
Cases

  In patentability report cases having drawings, the
examiner to whom the case is assigned should normally obtain
a duplicate set of the interference prints of the drawing
for filing in the group to which the case is referred.

  When  a  case  that  has  had  patentability  report
prosecution  is  passed  for  issue  or  becomes  abandoned,
notification of this fact is given by the group having
jurisdiction of the case to each group that submitted a
patentability report. The examiner of each such reporting
group notes the date of allowance or abandonment on his or
her duplicate set of prints. At such time as these prints
become of no value to the reporting group, they may be
destroyed.

608.02(o)  Dates Entered on Drawing

  The Incoming Mail Section (mail room) stamp and the
"Corrected"  stamp  applied  by  the  Drafting  Branch  are
impressed on the back of the drawings. If the drawings are
filed in the Examining Group, the group receipt date stamp
should be applied to the back of the drawing near the top.

  Approval of the Drafting Branch is indicated by a legend
associated with the "O.G. Fig. Cl . . Sub . . "
stamp on the front of each sheet.

608.02(p)  Correction of Drawings

 37 CFR 1.123.  Amendments to the drawing.

  No change in the drawing may be made except with
permission  of  the  Office.  Permissible  changes  in  the

construction shown in any drawing may be made only by the
submission of a substitute drawing by applicant. A sketch in
permanent ink showing proposed changes, to become part of
the record, must be filed for approval by the examiner and
should be a separate paper.

  NOTE.-Correction is deferrable, see MPEP § 608.02(b);
correction at allowance and issue, see MPEP § 608.02(w) and
MPEP § 1302.05.

  A cancelled figure may be reinstated. An amendment
should  be  made  to  the  specification  adding  the  brief
description if a cancelled figure is reinstated.

608.02(q)  Conditions Precedent to Amendment of Drawing
[R - 1]

  No alterations will be permitted unless required by an
examiner's letter in each case or proposed in writing by
applicant or his or her attorney or agent. In either case,
the alterations or corrections as indicated in the sketches
filed with the request of the applicant or his or her
attorney or agent must be given written approval by the
examiner before the drawing is corrected.

  Correction of Informalities (Draftsman's Objections on PTO
  - 948)

  Form Paragraph 6.40 (reproduced in MPEP § 608.02) ** >,<
the back page of PTOL - 948, and the back page of PTOL - 37,
the "Notice of Allowability" provide detailed information on
how to effect drawing changes.

  In order to correct any informalities in the drawings,
applicants MUST comply with (a) below. Failure to do so will
result in  ABANDONMENT of the application.

  (a) File new drawings with the changes incorporated
therein. Applicant may delay filing of the new drawings
until  the  application  is  allowed  by  the  examiner.  If
delayed, the new drawings MUST be filed within the period
set for response in the "NOTICE OF ALLOWABILITY" (PTOL -
37). The drawings should be filed as a separate paper with a
transmittal letter addressed to the Official Draftsman which
indicates the following in the upper right - hand corner:

  Date of the Notice of Allowability

  Issue Batch Number

  Serial Number

 Corrections Other Than Informalities Noted by the Draftsman
 on the PTO - 948

  All changes to the drawings, other than informalities
noted by the Draftsman, MUST be made in the same manner as
above except that, normally, a sketch of the changes to be
incorporated into the new drawings  MUST be approved by the
examiner before the application will be allowed. No changes
will be permitted to be made, other than correction of
informalities, unless the examiner has approved the proposed
changes.

608.02(r)  Separate Letter to Draftsman

  Any proposal by the applicant for amendment of the
drawing to cure defects must be embodied in a separate
letter. Otherwise the case, unless in other respects ready
for issue, cannot be corrected, and applicant must be so
advised in the next action by the examiner.

  NOTE:-Changes  which  may  require  sketches,  MPEP  §
608.02(v).

608.02(t)  Cancellation of Figures

  Cancellation of one or more figures which do not occupy
entire sheets of the drawings is done by the clerk in the
examining group who encloses a figure and its legend with a
red ink line. No portion of the figure itself should be
crossed by the red line. The words "CANCEL per" and the date
of the amendment directing the cancellation or the date that
substitute sheets are filed should be written in red ink
within the red line. Cancellation of an entire sheet of
drawings is done by stamping the words "CANCEL per" in the
top right corner of the drawing. Cancelled drawing sheets
should be placed at the bottom of the papers on the right
fold of the file wrapper.

  When the cancellation of some of the figures from one
sheet of drawings has left the remaining figures with an
inartistic arrangement, the draftsmen should be consulted as
to whether the remaining figures should be transferred to
other sheets already in the case or shown in additional
drawings.  Cancellation  of  a  figure  may  necessitate
renumbering of the remaining figures.

608.02(v)  Drawing Changes Which Require Sketches

  When changes are to be made in the drawing itself, other
than mere changes in reference characters, designations of
figures, or inking over lines pale and rough, a print or pen
- and - ink sketch must be filed showing such changes in red
ink or with the changes otherwise highlighted. Ordinarily,
broken lines may be changed to full without a sketch.

  Sketches filed by an applicant and used for correction
of the drawing will not be returned. All such sketches must
be in ink or permanent prints.

608.02(w)  Drawing Changes Which May Be Made Without
Applicant's Sketch

  Where an application is ready for issue except for a
slight  defect  in  the  drawing  not  involving  change  in
structure, the examiner will prepare a letter indicating the
change to be made and note in pencil on the drawing the
addition or alteration to be made.

  The correction must be made at applicant's expense.

  As a guide to the examiner, the following corrections
are illustrative of those that may be made by penciling in
the change on the drawing without a sketch:

  (1)  Adding two or three reference characters or
exponents.

  (2) Changing  one  or  two  numerals  or  figure

ordinals. Garrett v.  Cox , 110 USPQ 52, 54 (CCPA 1956)

  (3)  Removing superfluous matter.

  (4)  Adding or reversing directional arrows.

  (5)  Changing Roman Numerals to Arabic Numerals to
agree with specification.

  (6)  Adding section lines or brackets, where easily
executed.

  (7)  Changing lead lines.

  (8)  Correcting misspelled legends.

608.02(x)  Disposition of Orders for Amendment of
Drawing

  Where the correction of the drawing is approved by the
examiner, the application and drawing are forwarded to the
Office of Publications along with the Notice of Allowance.

  CORRECTION NOT APPROVED

  Where the correction is not approved, for example,
because the proposed changes are erroneous, or involve new
matter or (although otherwise proper) do not include all
necessary corrections, the case and request for correction
of drawing are not approved. The examiner's reasons for not
approving the corrections to the drawing should be set forth
in the next Office action.

608.02(y)  Return of Drawing

  If there is a formal drawing in the case, non - entered
drawings (except those originally filed) that have been
finally denied admission will be returned to the applicant
only at applicant's request.

  A request for return of nonentered drawings must be
filed within a reasonable time; otherwise, the drawing may
be disposed of at the discretion of the Commissioner.

  When a drawing is to be returned, the file, the
examiner's  letter  stating  that  the  drawing  is  being
returned, and the drawing are taken to the Drafting Branch
where the letter will be stamped and the drawing returned.
The letter is mailed by the examining group .

  Before drawings are returned, prints are made and put in
the application file.

608.02(z)  Allowable Applications Needing Drawing
Corrections or Formal Drawings [R - 1]

  Allowable applications can be turned in for counting and
forwarding  to  the  Office  of  Publications  without  the
drawings  having  been  corrected.  When  sending  allowed
applications to the Office of Publications which require
drawing corrections, use yellow tag form PTO - 1364. The
approved formal drawings requiring correction should be
placed as the top papers in the center fold of the file
wrapper.  The  drawing  correction  instructions  should  be
stapled to the inside left flap of the file wrapper over the

area having the search information. Care should be taken to
make certain that the corrections have been approved by the
examiner. Such approval should be made by the examiner prior
to counting the allowance of the application.

  The yellow tag procedure normally should be used only
where drawing corrections are involved. The yellow tag
procedure must be used where the draftsman has objected to
the drawing because of an informality such as improper
shading or pale lines and has indicated that this can be
corrected.

  The yellow tag procedure should not normally be used in
other situations where corrected drawings have been filed
but have not been approved by the draftsman unless the
examiner is quite sure that the draftsman will approve the
new drawings or in the situation where the application was
examined utilizing an informal drawing and the request for
formal  drawings  was  not  made  until  the  Notice  of
Allowability was mailed. The yellow tag procedure should not
be used in design applications where the drawings have not
been approved by the draftsman because of shading problems
which can arise. If the substitute drawings are not approved
by the draftsman, the application should be promptly taken
up for action by the examiner.

 **  Double Click here to see the image  **

  APPLICATIONS HAVING LOST DRAWINGS

  A yellow tag is to be attached to the file wrapper and a
"Drawing Missing" memo is to be stapled to the front of the
file wrapper. The Notice of Allowability is verified and
printed using PALM III, and the Notice is mailed to the
applicant.

  The application is then forwarded to Licensing and
Review or the Allowed Files and Assembly Branch of the
Office of Publications, as appropriate, using the PALM III
transaction code after the application has been revised for
issue.

 UTILITY PATENT APPLICATIONS RECEIVING FORMAL DRAWINGS AFTER
  THE NOTICE OF ALLOWABILITY

  Where substitute drawings are received in utility patent
applications examined with informal drawings and the Notice
of Allowability was mailed prior to the receipt of the
substitute drawings, the clerk should enter the substitute
drawings into the application and forward the application to
the Allowed Files and Assembly Branch of the Office of
Publications via Licensing and Review, if appropriate, using
the yellow tag procedure. Submission to the examiner is not
necessary unless an amendment accompanies the drawings which
changes the specification, such as where the description of
figures is added or cancelled.

  BORROWING FILES FROM DRAFTING BRANCH

  Allowed files requiring drawing corrections are sent to
the draftsman from the Office of Publications. At times,
examiners have a need to borrow these applications. When
borrowing  applications,  examining  corps  personnel  must
submit a request to the Office of Publications.

  37 CFR 1.312 AMENDMENTS

  In handling 37 CFR 1.312 amendments, the examining corps
should process drawings cancelled in the normal manner. If
there  are  corrections  to  the  drawing,  approval,  if
appropriate, is indicated by the examiner on form PTOL - 271
in conjunction with form paragraph 6.48; the paragraph sets
the appropriate period for effecting the approved drawing
change.

¶ 6.48  Drawing Changes in*>37 CFR 1.312< Amendment

  Applicant is hereby given one month from the date of
this letter or until the expiration of the period set in the
"Notice of Allowance" (PTOL - 85) or Notice of Allowability
(PTOL  -  37),  whichever  is  longer,  to  file  corrected
drawings.

 Examiner Note:

  Use with 312 amendment notice where there is a drawing
correction proposal or request *.

  Formal  drawings  may  be  required  in  an  allowed
application by using Form Paragraph 6.25 in an Office action
or by checking the appropriate box on Form letter PTOL - 37.

¶ 6.25  Formal Drawings Required, Application Allowed

  The application having been allowed, formal drawings are
required in response to this Office action.

 Examiner Note:

  Use  this  form  paragraph  only  with  the  Notice  of
Allowability/Examiner's Amendment.<.

608.03  Models, Exhibits, Specimens

 35 U.S.C. 114.  Models, specimens.

  The Commissioner may require the applicant to furnish a
model of convenient size to exhibit advantageously the
several parts of his invention.

  When the invention relates to a composition of matter,
the  Commissioner  may  require  the  applicant  to  furnish
specimens or ingredients for the purpose of inspection or
experiment.

 37 CFR 1.91.  Models not generally required as part of
application or patent.

  Models were once required in all cases admitting a
model, as a part of the application, and these models became
a part of the record of the patent. Such models are no
longer generally required (the description of the invention
in the specification, and the drawings, must be sufficiently
full and complete, and capable of being understood, to
disclose the invention without the aid of a model), and will
not be admitted unless specifically called for.

 37 CFR 1.92.  Model or exhibit may be required.

  A model, working model, or other physical exhibit, may
be  required  if  deemed  necessary  for  any  purpose  on
examination of the application.

  With the exception of cases involving perpetual motion,
a  model  is  not  ordinarily  required  by  the  Office  to
demonstrate the operativeness of a device. If operativeness
of a device is questioned, the applicant must establish it
to the satisfaction of the examiner, but he or she may
choose his or her own way of so doing.

  A physical exhibit, not to be part of the case, is
generally not refused except when bulky or dangerous.

 37 CFR 1.93.  Specimens.

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

608.03(a)  Handling of Models, Exhibits, and Specimens

  All models and exhibits received in the Patent and
Trademark Office should be taken to the examining group
assigned  the  related  application  for  examination.  The
receipt of all models and exhibits must be properly recorded
on the "Contents" portion of the application file wrapper.

  A label indicating the application serial number, filing
date, and attorney's name and address should be attached to
the model or exhibit so that is is clearly identified and
easily returned after prosecution of the application is
closed, if return is requested.

  If the model or exhibit is too large to be kept in the
examining group during prosecution of the application, it
should not be accepted.

 37 CFR 1.94.  Return of models, exhibits or specimens.

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

  When a model is to be returned, a letter should be
written to applicant by the examining group stating that it
is being returned under separate cover, and the model should
be forwarded with a copy of the letter and an address label
to the Outgoing - Incoming Mail Branch for wrapping and
return.

  NOTE. - Disposition of exhibits which are part of the
record, MPEP § 715.07(d).

  Models, exhibits, and specimens may be presented to the
Office for purposes of interview and taken away by the
attorney at the end of the interview. See MPEP § 713.08.

  NOTE.-Plant specimens, MPEP § 1607, 37 CFR 1.166.

 37 CFR 1.95.  Copies of exhibits.

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

608.04  New Matter [R - 1]

 37 CFR 1.118.  Amendment of disclosure.

  (a) No amendment shall introduce new matter into the
disclosure of an application after filing date of the
application  (  §  1.53(b)).  All  amendments  to  the
specification, including the claims, and the drawings filed
after the filing date of the application must conform to at
least one of them as it was at the time of the filing of the
application.  Matter  not  found  in  either,  involving  a
departure from or an addition to the original disclosure,
cannot be added to the application after its filing date
even  though  supported  by  an  oath  or  declaration  in
accordance with § 1.63 or § 1.67 filed after the filing date
of the application.

  (b) If it is determined that an amendment filed after the
filing date of the application introduces new matter, claims
containing new matter will be rejected and deletion of the
new  matter  in  the  specification  and  drawings  will  be
required even if the amendment is accompanied by an oath or
declaration in accordance with § 1.63 or § 1.67.

  In establishing a disclosure, applicant may rely not
only on the specification and drawing, as filed but also on
the original claims if their content justifies it. Note MPEP
§ 608.01(l).

  While  amendments  to  the  specification  and  claims
involving new matter are ordinarily entered, such matter is
required to be cancelled from the descriptive portion of the
specification, and the claims affected are rejected under 35
U.S.C. 112, first paragraph.

  When new matter is introduced into the specification,
the amendment should be objected to under 35 U.S.C. 132 (35
U.S.C. 251 if a reissue application) and a requirement made
to cancel the new matter - clearly identified by the
examiner. If the new matter has been entered into the claims
or affects the scope of the claims, the claims affected
should be rejected under 35 U.S.C. 112, first paragraph,
because the new matter is not described in the application
as originally filed.

  A "new matter" amendment of the drawing is ordinarily
not entered; neither is an additional or substitute sheet
containing "new matter" even though stamped APPROVED by the
Draftsman and provisionally entered by the clerk. See MPEP §
608.02(h).

  The examiner's holding of new matter may be petitionable
or appealable, MPEP § 608.04(c).

  NOTE-New matter in reissue application, MPEP § 1411.02.

New matter in substitute specification, MPEP § 714.20.

  >NOTE-No  amendment  is  permitted  in  a  provisional
application after it receives a filing date.<

608.04(a)  Matter Not in Original Specification, Claims,
or Drawings

  Matter not in the original specification, claims, or
drawings is usually new matter. Depending on circumstances
such  as  the  adequacy  of  the  original  disclosure,  the
addition of inherent characteristics such as chemical or
physical properties, a new structural formula or a new use
may be new matter. See Ex parte Vander Wal, et al. , 1956
C.D. 11; 705 O.G. 5 (physical properties),  Ex parte Fox ,
1960 C.D. 28; 761 O.G. 906 (new formula) and  Ex parte
Ayers, et al. , 108 USPQ 444 (new use). For rejection of
claim involving new matter, see MPEP § 706.03(o).

  NOTE-Completeness  of  disclosure,  MPEP  §  608.01(p);
Trademarks and tradenames, MPEP § 608.01(v).

608.04(b)  New Matter by Preliminary Amendment

  An amendment is sometimes filed along with the filing of
the application. Such amendment does not enjoy the status as
part of the original disclosure in an application filed
under 37 CFR 1.53 unless it is referred to in the oath or
declaration filed therewith. Once an oath or declaration is
submitted  in  an  application  filed  under  37  CFR  1.53
identifying the papers which the inventor(s) has "reviewed
and understands" as required by 37 CFR 1.63, the original
disclosure of the application is defined and cannot be
altered merely by filing of a subsequent oath or declaration
referring to different papers. If the application is filed
without an executed oath or declaration pursuant to 37 CFR
1.53(b), the original oath or declaration submitted later
than the filing date must refer to the preliminary amendment
filed along with the application in order to comply with 37
CFR 1.63.

  An amendment which adds additional disclosure filed with
a request for a continuation - in - part application under
37 CFR 1.62 is automatically considered a part of the
original disclosure of the application by virtue of the
rule. Therefore, the oath or declaration filed in such an
application must identify the amendment adding additional
disclosure as one of the papers which the inventor(s) has
"reviewed and understands" in order to comply with 37 CFR
1.63. If the original oath or declaration submitted in a
continuation - in - part application filed under 37 CFR 1.62
does not contain a reference to the amendment filed with the
request for an application under 37 CFR 1.62, the examiner
must require a supplemental oath or declaration referring to
the amendment.

608.04(c)  Review of Examiner's Holding of New Matter

  Where the new matter is confined to amendments to the
specification, review of the examiner's requirement for
cancelation is by way of petition. But where the alleged new
matter is introduced into or affects the claims, thus
necessitating their rejection on this ground, the question
becomes an appealable one, and should not be considered on
petition even though that new matter has been introduced

into the specification also. 37 CFR 1.181 and 1.191 afford
the explanation of this seemingly inconsistent practice as
affecting new matter in the specification.

608.05  Deposit of Computer Program Listings [R - 3]

 37 CFR 1.96. Submission of computer program listings.

  **>(a) General.  Description  s of the operation and
general content of computer program listings should appear
in the description portion of the specification. A computer
program listing for the purpose of this section is defined
as  a  printout  that  lists  in  appropriate  sequence  the
instructions, routines, and other contents of a program for
a computer. The program listing may be either in machine or
machine - independent (object or source) language which will
cause a computer to perform a desired procedure or task such
as solve a problem, regulate the flow of work in a computer,
or control or monitor events. Computer program listings may
be  submitted  in  patent  applications  as  set  forth  in
paragraphs (b) and (c) of this section.

  (b) Material which will be printed in the patent. If the
computer program listing is contained on ten printout pages
or less, it must be submitted either as drawings or as part
of the specification.

  (1) Drawings. If the listing is submitted as drawings, it
must be submitted in the manner and complying with the
requirements for drawings as provided in § 1.84. At least
one figure numeral is required on each sheet of drawing.

  (2) Specification.(i) If the listing is submitted as
part  of  the  specification,  it  must  be  submitted  in
accordance with the provisions of § 1.52, at the end of the
description but before the claims.

  (ii) Any listing submitted as part of the specification
must  be  direct  printouts  (i.e.,  not  copies)  from  the
computer`s printer with dark solid black letters not less
than 0.21 cm. high, on white, unshaded and unlined paper,
and the sheets should be submitted in a protective cover.
Any amendments must be made by way of submission of a
substitute sheet.

  (c) As an appendix which will not be printed. If a
computer program listing printout is eleven or more pages
long, applicants must submit such listing in the form of
microfiche,  referred  to  in  the  specification  (see  §
1.77(a)(6)). Such microfiche filed with a patent application
is to be referred to as a "microfiche appendix." The
"microfiche appendix" will not be part of the printed
patent. Reference in the application to the "microfiche
appendix" must be made at the beginning of the specification
at the location indicated in § 1.77(a)(6). Any amendments
thereto must be made by way of revised microfiche.

  (1)  Availability  of  appendix.  Such  computer  program
listings on microfiche will be available to the public for
inspection, and microfiche copies thereof will be available
for purchase with the file wrapper and contents, after a
patent  based  on  such  application  is  granted  or  the
application is otherwise made publicly available.

  (2)  Submission  requirements.  Except  as  modified  or

clarified in this paragraph (c)(2), computer - generated
information submitted as a "microfiche appendix" to an
application shall be in accordance with the standards set
forth in 36 CFR Part 1230 (Micrographics).

  (i) Film submitted shall be a first generation (camera
film) negative appearing microfiche (with emulsion on the
back side of the film when viewed with the images right
reading).

  (ii) Reduction ratio of microfiche submitted should be
24:1 or a similar ratio where variation from said ratio is
required in order to fit the documents into the image area
of the microfiche format used.

  (iii) At least the left - most third (50 mm. x 12 mm.) of
the header or title area of each microfiche submitted shall
be clear or positive appearing so that the Patent and
Trademark Office can apply an application number and filing
date thereto in an eye - readable form. The middle portion
of the header shall be used by applicant to apply an eye -
readable application identification such as the title and/or
the first inventor's name. The attorney's docket number may
be  included.  The  final  right  -  hand  portion  of  the
microfiche  shall  contain  sequence  information  for  the
microfiche, such as 1 of 4, 2 of 4, etc.

  (iv) Additional requirements which apply specifically to
microfiche of filmed paper copy:

  (A) The first frame of each microfiche submitted shall
contain a test target.

  (B) The second frame of each microfiche submitted must
contain a fully descriptive title and the inventor's name as
filed.

  (C) The pages or lines appearing on the microfiche frames
should be consecutively numbered.

  (D) Pagination of the microfiche frames shall be from
left to right and from top to bottom.

  (E) At a reduction of 24:1, resolution of the original
microfilm shall be at least 120 lines per mm. (5.0 target).

  (F) An index, when included, should appear in the last
frame (lower right hand corner when data is right - reading)
of each microfiche.

  (v) Microfiche generated by Computer Output Microfilm.

  (A) The first frame of each microfiche submitted should
contain a resolution test frame.

  (B) The second frame of each microfiche submitted must
contain a fully descriptive title and the inventor's name as
filed.

  (C) The pages or lines appearing on the microfiche frames
should be consecutively numbered.

  (D) It is preferred that pagination of the microfiche
frames be from left to right and top to bottom but the
alternative, i.e., from top to bottom and from left to

right, is also acceptable.

  (E) An index, when included, should appear on the last
frame (lower right hand corner when data is right reading)
of each microfiche.<

  Special procedures for presentation of computer program
listings in the form of microfiche in U.S. national patent
applications are set forth in 37 CFR 1.96. Use of microfiche
is desirable in view of the number of computer program
listings being submitted as part of the disclosure in patent
applications. Such listings are often several hundred pages
in length. By filing and publishing such computer program
listings on microfiche rather than on paper, substantial
cost savings can result to the applicants, the public, and
the Patent and Trademark Office.

  BACKGROUND

  A computer program listing, as used in these rules,
means the printout that lists, in proper sequence, the
instructions, routines, and other contents of a program for
a computer. The listing may be either in machine or machine
- independent (object or source) programming language which
will cause a computer to perform a desired task, such as
solving a problem, regulating the flow of work in computer,
or controlling or monitoring events. The general description
of  the  computer  program  listing  will  appear  in  the
specification  while  >the<  computer  program  listing  may
appear either directly or as a microfiche * appendix to the
specification and be incorporated into the specification by
reference.

  DISCUSSION OF THE BACKGROUND AND MAJOR ISSUES INVOLVED

  The provisions of 37 CFR 1.52 and 1.84 for submitting
specifications  and  drawings  on  paper  have  been  found
suitable for most patent applications. However, when lengthy
computer program listings must be disclosed in a patent
application in order to provide a complete disclosure, use
of paper copies can become burdensome.

  The cost of printing long computer programs in patent
documents is also very expensive to the Patent and Trademark
Office.

  In the past, all disclosures forming part of a patent
application were presented on paper with the exception of
microorganisms. Under 37 CFR 1.96, several different methods
for submitting computer program listings, including the use
of microfiche, are set forth.

  **>A computer program listing contained on ten printout
pages or less must be submitted either as drawings (in
compliance with 37 CFR 1.84) or as part of the specification
(in compliance with 37 CFR 1.52). A computer program listing
contained on eleven printout pages or more must be submitted
as microfiche (in compliance with 37 CFR 1.96(c)).

  Form Paragraphs 6.02.02 through 6.02.04 may be used to
notify the applicant of this requirement.

¶ 6.02.02  Microfiche  Appendix  Requirement  (Computer
Program Listing in Specification)

  The description portion of this application contains a
computer program listing consisting of more than ten (10)
pages. In accordance with 37 CFR 1.96(c), a computer program
listing printout of more than ten pages must be submitted as
a "microfiche appendix" conforming to the standards set
forth  in  37  CFR  1.96(c)(2)  and  must  be  appropriately
referenced in the specification (see 37 CFR 1.77(a)(6)).
Accordingly, applicant is required to cancel the computer
program listing appearing in the specification on pages [1],
file a "microfiche appendix" in compliance with 37 CFR
1.96(c) and insert an appropriate reference to the newly
added  "microfiche  appendix"  at  the  beginning  of  the
specification.

 Examiner Note:

  1.  This  form  paragraph  must  be  used  whenever  an
application filed on or after September 23, 1996 contains a
computer program listing consisting of more than ten pages
as part of the descriptive portion of the specification.

  2. In bracket 1, insert the range of page numbers of the
specification which include the computer program listing.

¶ 6.02.03  Computer  Program  Listing  as  Printout  in
Appendix (Not More Than Ten Pages )

  This application contains an appendix consisting of a
computer program listing of no more than ten (10) pages. In
accordance with 37 CFR 1.96(b), a computer program listing
contained on ten (10) pages or less, must be submitted
either  as  drawings  or  as  part  of  the  specification.
Accordingly, applicant is required to cancel the appendix
and  either  incorporate  such  listing  in  a  drawing  in
compliance with 37 CFR 1.84 (identifying each page as a
separate figure), or insert the computer program listing in
the descriptive portion of the specification. If the listing
is submitted as part of the specification, it must appear
after the detailed description of the invention but before
the claims and must be in the form of direct printouts from
a computer's printer with dark solid black letters not less
than 0.21 cm. high, on white, unshaded and unlined paper.
The sheets should be submitted in a protective cover. See 37
CFR 1.96(b)(2).

 Examiner Note:

  This form paragraph must be used whenever an application
filed on or after September 23, 1996 contains a computer
program listing consisting of a paper printout appendix of
no more than ten pages.

¶ 6.02.04  Computer  Program  Listing  As  Printout  In
Appendix (More Than Ten Pages )

  This application contains an appendix consisting of a
computer program listing of more than ten (10) pages. In
accordance with 37 CFR 1.96(c), a computer program listing
contained on more than ten (10) pages, must be submitted as
a "microfiche appendix" conforming to the standards set
forth  in  37  CFR  1.96(c)(2)  and  must  be  appropriately
referenced in the specification (see 37 CFR 1.77(a)(6)).
Accordingly, applicant is required to cancel the computer
program listing appearing in the current appendix to the
specification, file a "microfiche appendix" in compliance

with 37 CFR 1.96(c), and insert an appropriate reference to
the newly added "microfiche appendix" at the beginning of
the specification.

 Examiner Note:

  This form paragraph must be used whenever an application
filed on or after September 23, 1996 contains a computer
program listing consisting of a paper printout appendix of
more than ten pages.  <

  Copies of publicly available computer program listings
are available from the Patent and Trademark Office on paper
and on microfiche at the cost set forth in 37 CFR 1.19(a)(5)
and (6).

 OTHER INFORMATION

  The micrographic standards >are set forth in 36 CFR part
1230.<

  ** A microfiche filed with a patent application will be
referred  to  as  a  "Microfiche  Appendix,"  and  will  be
identified as such on the front page of the patent but will
not be part of the printed patent. "Microfiche Appendix"
denotes the total microfiche, whether only one or two or
more. One microfiche is equivalent to a maximum of either 63
(9x7) or 98 (14x7) frames (pages), or less.

  The face of the file jacket will bear a label to denote
that a Microfiche Appendix is included in the application. A
statement must be included in the specification to the
effect  that  a  microfiche  appendix  is  included  in  the
application. The specification entry must appear at the
beginning of the specification immediately following any
cross  -  reference  to  related  applications,  37  CFR
1.77**>(a)(6)<. The patent front page and the Official
Gazette entry will both contain information as to the number
of  microfiche  and  frames  of  computer  program  listings
appearing in the microfiche appendix.

  When an application containing microfiche is received in
the Correspondence and Mail Division, a special pocket will
be affixed to the center section of the inside of the file
wrapper underneath all papers, and the microfiche inserted
therein. The application file will then proceed on its
normal course, and when it reaches the Application Branch, a
label which sticks up above the file wrapper will be placed
at the center section of the face of the wrapper. When the
application file reaches the Micrographics Division, the
Microfiche Appendix label will be placed on the face of the
file wrapper. When the Allowed Files and Assembly Branch of
the Office of Publications receives the application file,
the person placing the patent number on the face of the
file, upon seeing the Microfiche Appendix label, will give
the file to the Supervisor who will call Micrographics
Division and give the serial number and patent number, and
request copies of the microfiche. Micrographics Division
personnel  will  then  put  the  patent  number  on  the
microfiche(s), making certain each microfiche is the most
recent, and numbering each correctly; e.g., 1 of 1, 1 of 2,
etc. Upon completion, two copies will be produced and
provided to Allowed and Assembly Branch Files - one for the
grant head and one for the file wrapper.

  At the time of assembly, the Microfiche Appendix will be
placed inside the grant head behind the patent grant for
eyeletting, ribboning, and mailing to the patentee/attorney.
During the signing of the grant heads by the Attesting
Officer,  the  patent  will  be  checked  to  assure  proper
assembly prior to mailing.

609  Information Disclosure Statement [R - 3]

 37 CFR 1.97.  Filing of information disclosure
statement.

  **>(a) In order for an applicant for a patent or for a
reissue of a patent to have an information disclosure
statement in compliance with § 1.98 considered by the Office
during the pendency of the application, it must satisfy
paragraph (b), (c), or (d) of this section.

  (b)  An  information  disclosure  statement  shall  be
considered by the Office if filed by the applicant:

  (1) Within three months of the filing date of a national
application;

  (2) Within three months of the date of entry of the
national stage as set forth in § 1.491 in an international
application; or

  (3) Before the mailing date of a first Office action on
the merits,

 whichever event occurs last.

  (c)  An  information  disclosure  statement  shall  be
considered by the Office if filed after the period specified
in  paragraph  (b)  of  this  section,  provided  that  the
statement  is  accompanied  by  either  a  certification  as
specified in paragraph (e) of this section or the fee set
forth in § 1.17(p), and is filed before the mailing date of
either:

  (1) A final action under § 1.113 or

  (2) A notice of allowance under § 1.311,

 whichever occurs first.

  (d)  An  information  disclosure  statement  shall  be
considered by the Office if filed by the applicant after the
period specified in paragraph (c) of this section, provided
that the statement is filed on or before payment of the
issue fee and is accompanied by:

  (1) A certification as specified in paragraph (e) of this
section;

  (2)  A  petition  requesting  consideration  of  the
information disclosure statement; and

  (3) The petition fee set forth in § 1.17(i).<

  (e) A certification under this section must state either:

  (1) That each item of information contained in the
information  disclosure  statement  was  cited  in  a

communication from a foreign patent office in a counterpart
foreign application not more than three months prior to the
filing of the statement, or

  (2)  That  no  item  of  information  contained  in  the
information  disclosure  statement  was  cited  in  a
communication from a foreign patent office in a counterpart
foreign application or, to the knowledge of the person
signing the certification after making reasonable inquiry,
was known to any individual designated in § 1.56(c) more
than three months prior to the filing of the statement.

  (f) No extensions of time for filing an information
disclosure statement are permitted under § 1.136. If a bona
fide attempt is made to comply with § 1.98, but part of the
required content is inadvertently omitted, additional time
may be given to enable full compliance.

  (g)  An  information  disclosure  statement  filed  in
accordance with this section shall not be construed as a
representation that a search has been made.

  (h) The filing of an information disclosure statement
shall  not  be  construed  to  be  an  admission  that  the
information cited in the statement is, or is considered to
be, material to patentability as defined in § 1.56(b).

  (i) Information disclosure statements, filed before the
grant of a patent, which do not comply with this section and
§ 1.98 will be placed in the file, but will not be
considered by the Office.

 37 CFR 1.98.  Content of information disclosure
statement.

  (a) Any information disclosure statement filed under §
1.97 shall include:

  (1)  A  list  of  all  patents,  publications  or  other
information submitted for consideration by the Office;

  (2) A legible copy of :

  (i) Each U.S. and foreign patent;

  (ii) Each publication or that portion which caused it to
be listed; and

  (iii) All other information or that portion which caused
it to be listed, except that no copy of a U.S. patent
application need be included; and

  (3) A concise explanation of the relevance, as it is
presently understood by the individual designated in §
1.56(c)  most  knowledgeable  about  the  content  of  the
information,  of  each  patent,  publication,  or  other
information listed that is not in the English language. The
concise  explanation  may  be  either  separate  from  the
specification or incorporated therein.

  (b) Each U.S. patent listed in an information disclosure
statement shall be identified by patentee, patent number and
issue date. Each foreign patent or published foreign patent
application shall be identified by the country or patent
office which issued the patent or published the application,

an appropriate document number, and the publication date
indicated on the patent or published application. Each
publication shall be identified by author (if any), title,
relevant  pages  of  the  publication,  date  and  place  of
publication.

  (c) When the disclosures of two or more patents or
publications listed in an information disclosure statement
are substantively cumulative, a copy of one of the patents
or publications may be submitted without copies of the other
patents or publications provided that a statement is made
that these other patents or publications are cumulative. If
a written English - language translation of a non - English
language  document,  or  portion  thereof,  is  within  the
possession, custody or control of, or is readily available
to any individual designated in § 1.56(c), a copy of the
translation shall accompany the statement.

  (d)  A  copy  of  any  patent,  publication  or  other
information listed in an information disclosure statement is
not required to be provided if it was previously cited by or
submitted to the Office in a prior application, provided
that the prior application is properly identified in the
statement and relied upon for an earlier filing date under
35 U.S.C. 120.

  Information Disclosure Statements are not permitted in
provisional applications filed under 35 U.S.C. 111(b). Since
no  substantive  examination  is  given  in  provisional
applications, a disclosure of information is unnecessary.
Any such statement filed in a provisional application will
be returned or destroyed at the option of the Office. In
applications filed under 35 U.S.C. 111(a), applicants and
other  individuals  substantively  involved  with  the
preparation and/or prosecution of the application have a
duty to submit to the Office information which is material
to  patentability  as  defined  in  37  CFR  1.56.  These
individuals also may want the Office to consider information
for  a  variety  of  other  reasons;  e.g.,  without  first
determining whether the information meets any particular
standard of materiality, or because another patent office
considered the information to be relevant in a counterpart
or related patent application filed in another country, or
to make sure that the examiner has an opportunity to
consider the same information that was considered by the
individuals  that  were  substantively  involved  with  the
preparation or prosecution of a patent application.

  An information disclosure statement filed in accordance
with the provisions of 37 CFR 1.97 and 1.98 provides the
procedure available to an applicant to submit information to
the Office so that the information will be considered by the
examiner assigned to the application. The requirements for
the content of a statement have been simplified in the new
rules which became effective on March 16, 1992, to encourage
individuals associated in a substantive way with the filing
and  prosecution  of  a  patent  application  to  submit
information to the Office so the examiner can determine its
relevance to the claimed invention. The procedures for
submitting an information disclosure statement under the new
rules  are  designed  to  encourage  individuals  to  submit
information to the Office promptly.

  In order to have information considered by the Office
during the pendency of a patent application, an information

disclosure statement in compliance with 37 CFR 1.98 as to
content must be filed in accordance with the procedural
requirements of 37 CFR 1.97. The requirements as to content
are discussed in A below. The requirements based on the time
of filing the statement are discussed in B below. Examiner
handling of information disclosure statements is discussed
in C below.

  The Office has set forth the minimum requirements for
information to be considered in 37 CFR 1.97 and 1.98. Once
the minimum requirements are met, the examiner has an
obligation to consider the information. These rules provide
certainty for the public by defining the requirements for
submitting information to the Office so that the Office will
consider information before a patent is granted. Information
submitted to the Office that does not comply with the
requirements of 37 CFR 1.97 and 1.98 will not be considered
by the Office but will be placed in the application file.

  The filing of an information disclosure statement shall
not be construed as a representation that a search has been
made. 37 CFR 1.97(g). There is no requirement that an
applicant for a patent make a patentability search. Further,
the filing of an information disclosure statement shall not
be construed to be an admission that the information cited
in the statement is, or is considered to be, material to
patentability as defined in 37 CFR 1.56(b). 37 CFR 1.97(h).
See MPEP § 2129 regarding admissions by applicant.

  Multiple information disclosure statements may be filed
in a single application, and they will be considered,
provided  each  is  in  compliance  with  the  appropriate
requirements.  Use  of  form  PTO  -  1449,  "Information
Disclosure Citation," is encouraged as a means to provide
the required list of information. See C(2) below.

  Information which **>has been considered by< the Office
in the parent application of a file wrapper continuing
application under 37 CFR 1.62 will be part of the file
before the examiner and need not be resubmitted in the
continuing application to have the information considered
and listed on the patent. Likewise, the examiner will
consider information **>which has been considered by< the
Office in a parent application when examining a continuation
or  continuation  -  in  -  part  application  (See  MPEP
§*>201.06(b)<  which  is  not  a  file  wrapper  continuing
application, and a list of the information need not be
submitted in the * >continuation or continuation - in -
part< application unless applicant desires the information
to be printed on the patent. >Information which is cited or
submitted to the Office in the parent application of a
divisional  application  which  is  not  a  file  wrapper
continuing application under 37 CFR 1.62 must be resubmitted
in  the  divisional  application  to  have  the  information
considered and listed on the patent.<

  The examiner will consider the documents cited in the
international  search  report  in  a  PCT  national  stage
application, when the Form PCT/DO/EO/903 indicates that both
the international search report and the copies of the
documents are present in the national stage file. In such a
case, the examiner should consider the documents from the
international search report and indicate by a statement in
the first Office action that the information has been
considered. There is no requirement that the examiner list

the documents on a PTO - 892 form.

  A. CONTENT

  An information disclosure statement must comply with the
provisions of 37 CFR 1.98 as to content in order to be
considered  by  the  Office.  Each  information  disclosure
statement must comply with the applicable provisions of
A(1), A(2), and A(3) below.

A (1)  Each information disclosure statement must include
a list of all patents, publications, or other information
submitted for consideration by the Office  .

  37 CFR 1.98(b) requires that each U.S. patent listed in
an  information  disclosure  statement  be  identified  by
patentee, patent number, and issue date. Each foreign patent
or published foreign patent application must be identified
by the country or patent office which issued the patent or
published the application, an appropriate document number,
and  the  publication  date  indicated  on  the  patent  or
published application. Each publication must be identified
by  author  (if  any),  title,  relevant  pages  of  the
publication, date and place of publication. The date of
publication supplied must include at least the month and
year of publication, except that the year of publication
(without the month) will be accepted if the applicant points
out in the information disclosure statement that the year of
publication is sufficiently earlier than the effective U.S.
filing date and any foreign priority date so that the
particular month of publication is not in issue. The place
of publication refers to the name of the journal, magazine,
or  other  publication  in  which  the  information  being
submitted was published.

  To comply with this requirement, the list may not be
incorporated into the specification but must be submitted in
a separate paper. A separate list is required so that it is
easy  to  confirm  that  applicant  intends  to  submit  an
information disclosure statement and because it provides a
readily available checklist for the examiner to indicate
which identified documents have been considered. A copy of a
separate  list  will  also  provide  a  simple  means  of
communication to applicant to indicate the listed documents
that have been considered and those listed documents that
have  not  been  considered.  Use  of  form  PTO  -  1449,
Information Disclosure Citation, is encouraged. See C(2)
below.

 A (2)  In  addition  to  the  list,  each  information
disclosure statement must also include a legible copy of:

  (i) Each U.S. and foreign patent;

  (ii) Each publication or that portion which caused it to
be listed; and

  (iii) All other information or that portion which caused
it to be listed, except that no copy of a U.S. patent
application need be included.

  There are exceptions to this general rule that a copy
must be provided. First, 37 CFR 1.98(d) states that a copy
of any patent, publication, or other information listed in
an information disclosure statement is not required to be

provided if it was previously cited by or submitted to the
Office in a prior application, provided that the prior
application is properly identified in the statement and
relied on for an earlier filing date under 35 U.S.C. 120.
The examiner will consider information cited or submitted to
the Office in a prior application relied on under 35 U.S.C.
120.  This  exception  to  the  requirement  for  copies  of
information does not apply to information which was cited in
an international application under the Patent Cooperation
Treaty. If the information cited or submitted in the prior
application was not in English, a concise explanation of the
relevance of the information to the new application is not
required unless the relevance of the information differs
from its relevance as explained in the prior application.
See A(3) below.

  Second, 37 CFR 1.98(c) states that when the disclosures
of  two  or  more  patents  or  publications  listed  in  an
information  disclosure  statement  are  substantively
cumulative, a copy of one of the patents or publications may
be  submitted  without  copies  of  the  other  patents  or
publications provided that a statement is made that these
other patents or publications are cumulative. The examiner
will then consider only the patent or publication of which a
copy is submitted and will so indicate on the list or form
PTO - 1449 submitted; e.g., by crossing out the listing of
the cumulative information.

  37 CFR 1.98(c) further states that if a written English
language translation of a non - English language document,
or thereof, is within the possession, custody or control of,
or is readily available to any individual designated in 37
CFR 1.56(c), a copy of the translation shall accompany the
statement. Translations are not required to be filed unless
they  have  been  reduced  to  writing  and  are  actually
translations of what is contained in the non - English
language information. If no translation is submitted, the
examiner will consider the information in view of the
concise explanation and insofar as it is understood on its
face; e.g., drawings, chemical formulas, English language
abstracts, in the same manner that non - English language
information  in  Office  search  files  is  considered  by
examiners in conducting searches.

 A (3) Each information disclosure statement must further
include a concise explanation of the relevance, as it is
presently understood by the individual designated in 37 CFR
1.56(c)  most  knowledgeable  about  the  content  of  the
information  of  each  patent,  publication,  or  other
information listed that is not in the English language . The
concise  explanation  may  be  either  separate  from  the
specification or incorporated therein.

  The requirement for a concise explanation of relevance
is limited to information that is not in the English
language.  The  explanation  required  is  limited  to  the
relevance as understood by the individual designated in 37
CFR 1.56(c) most knowledgeable about the content of the
information at the time the information is submitted to the
Office. If a translation of the information into English is
submitted with the foreign language information, no concise
explanation is required. An English - language equivalent
application may be submitted to fulfill this requirement if
it  is,  in  fact,  a  translation  of  a  foreign  language
application  being  listed  in  an  information  disclosure

statement. There is no requirement for the translation to be
verified. Submission of an English language abstract of a
reference which does not deal with its relevance to the
invention will not fulfill the requirement for a concise
explanation. Where the information listed is not in the
English language, but was cited in a search report or other
action by a foreign patent office in a counterpart foreign
application, the requirement for a concise explanation of
relevance can be satisfied by submitting an English -
language version of the search report or action which
indicates the degree of relevance found by the foreign
office. This may be an explanation of which portion of the
reference is particularly relevant, to which claims it
applies, or merely an "X", "Y", or "A" indication on a
search report. The requirement for a concise explanation of
non - English language information would not be satisfied by
a statement that a reference was cited in the prosecution of
a United States application which is not relied on under 35
U.S.C. 120.

  If information cited or submitted in a prior application
relied on under 35 U.S.C. 120 was not in English, a concise
explanation of the relevance of the information to the new
application is not required unless the relevance of the
information differs from its relevance as explained in the
prior application.

  The concise explanation may indicate that a particular
figure or paragraph of the patent or publication is relevant
to the claimed invention. It might be a simple statement
pointing to similarities between the item of information and
the claimed invention. It is permissible but not necessary
to discuss differences between the cited information and the
claims.

  Applicants  may,  if  they  wish,  provide  a  concise
explanation of why English - language information is being
submitted and how it is understood to be relevant. Concise
explanations are helpful to the Office, particularly where
documents are lengthy and complex and applicant is aware of
a section that is highly relevant to patentability or where
a large number of documents are submitted and applicant is
aware that one or more are highly relevant to patentability.

 B. TIME FOR FILING

  The  procedure  and  requirements  for  submitting  an
information disclosure statement are linked to four stages
in the processing of a patent application: (1) within 3
months of filing, or before first Office action, whichever
is later; (2) after the period in (1), but before final
Office  action  or  a  Notice  of  Allowance,  whichever  is
earlier; (3) after the period in (2) but on or before the
date the issue fee is paid; and (4) after the period in (3)
and up to the time the patent application can be effectively
withdrawn from issue. The procedures and requirements apply
to applications filed under 35 U.S.C. 111 (utility), 161
(plants), 171 (designs), and 251 (reissue), as well as
international applications entering the national stage under
35 U.S.C. 371.

  The requirements based on the time when the in formation
disclosure statement is filed are summarized as follows.

Time when IDS is filed 37 CFR 1.97  Requirements

  (1) Within 3 months of filing or None (always

  before first Office action on considered).

  the merits, whichever is later.

  (2) After (1) but before final Certification or

  action or notice of allowance. 1.17(p) fee.

  (3)  After  final  action  or  notice
Certification,

  of allowance and before pay -  petition,
and

  ment of issue fee  
petition fee.

 B (1) Statement filed BEFORE first action on the merits or
within three (3) months of actual filing date (37 CFR
1.97(b)).

  An information disclosure statement will be considered
by the examiner if filed:

  (i) within 3 months of the filing date of a national
application;

  (ii) within 3 months of the date of entry of the national
stage as set forth in 37 CFR 1.491 in an international
application; or

  (iii) before the mailing date of a first Office action on
the merits,

 whichever event occurs last. A statement filed within this
period requires neither a fee nor a certification of prompt
filing.

  The term "national application" includes continuing
applications (continuations, divisions, continuations - in -
part) so 3 months will be measured from the actual filing
date of an application as opposed to the effective filing
date of a continuing application.

  All information disclosure statements that comply with
the content requirements of 37 CFR 1.98 and are filed within
three months of the filing date will be considered by the
examiner, regardless of whatever else has occurred in the
examination process up to that point in time. Thus, in the
rare instance that a final Office action or a notice of
allowance is prepared and mailed prior to a date which is 3
months from the filing date, any information contained in a
complete information disclosure statement filed within that
3 - month window will be considered by the examiner.

  Likewise, an information disclosure statement will be
considered if it is filed later than 3 months after the
filing date but before the mailing date of a first Office
action on the merits. An action on the merits means an
action which treats the patentability of the claims in an
application,  as  opposed  to  only  formal  or  procedural
requirements. An action on the merits would, for example,

contain a rejection or indication of allowability of a claim
or claims rather than just a restriction requirement (37 CFR
1.142) or just a requirement for additional fees to have a
claim considered (37 CFR 1.16(d)). Thus, if an application
was filed on January 1 and the first Office action on the
merits was not mailed until 6 months later on July 1, the
examiner  would  be  required  to  consider  any  proper
information disclosure statement filed prior to July 1.

  An information disclosure statement will be considered
to have been filed on the day it was received in the Office,
or on an earlier date of mailing if accompanied by a
properly  executed  certificate  of  mailing  or  facsimile
transmission under 37 CFR 1.8, or ** >if it is in proper
compliance with the provisions for "Express Mail" delivery<
under 37 CFR 1.10. An Office action is mailed on the date
indicated in the Office action.

 B (2)  Statement filed after B(1), but BEFORE mailing of
final action or notice of allowance (37 CFR 1.97(c))  .

  An information disclosure statement will be considered
by the examiner if filed after the period specified in B(1)
above, but before (not on the same day as) the mailing date
of either

  a final action under 37 CFR 1.113; e.g., final rejection
or notice of allowability, or

  a notice of allowance under 37 CFR 1.311,

 whichever occurs first, provided: (1) the statement is
accompanied by either a certification as specified in 37 CFR
1.97(e) or (2) the fee set forth in 37 CFR 1.17(p). If a
final  action  or  notice  of  allowance  is  mailed  in  an
application and later withdrawn, the application will be
considered as not having had a final action or notice of
allowance mailed for purposes of considering an information
disclosure statement.

  An Ex parte Quayle action is not a final action under 37
CFR 1.113 as referred to in 37 CFR 1.97. Therefore, an
information disclosure statement filed after an  Ex parte
Quayle action, but before mailing of a notice of allowance,
must comply with the provisions of 37 CFR 1.97(c) rather
than those of 37 CFR 1.97(d). However, where an  Ex parte
Quayle action is issued after a final rejection which has
not been withdrawn, any information disclosure statement
filed after the  Ex parte Quayle action must comply with the
provisions of 37 CFR 1.97(d).

  (i) If information submitted during the period set forth
in 37 CFR 1.97(c) with a certification is used in a new
ground of rejection on unamended claims, the next Office
action will not be made final since in this situation it is
clear that applicant has submitted the information to the
Office  promptly  after  it  has  become  known  and  the
information  is  being  submitted  prior  to  a  final
determination  on  patentability  by  the  Office.  The
information submitted with a certification can be used in a
new ground of rejection and the next Office action made
final,  however,  if  the  new  ground  of  rejection  was
necessitated by amendment of the application by applicant.
Where the information is submitted during this period with a
fee, the examiner may use the information submitted; e.g.,

printed publication or evidence of public use, and make the
next Office action final whether or not the claims have been
amended, provided that no other new ground of rejection
which was not necessitated by amendment to the claims is
introduced by the examiner. See MPEP § 706.07(a). If a new
ground  of  rejection  is  introduced  that  is  neither
necessitated by an amendment to the claims nor based on the
information submitted with the fee set forth in 37 CFR
1.17(p), the Office action shall not be made final.

  (ii) A certification under 37 CFR 1.97(e) must state
either

 (a) that each item of information contained in the
information  disclosure  statement  was  cited  in  a
communication from a foreign patent office in a counterpart
foreign application not more than three months prior to the
filing of the statement, or

 (b) that no item of information contained in the
information  disclosure  statement  was  cited  in  a
communication from a foreign patent office in a counterpart
foreign application or, to the knowledge of the person
signing the certification after making reasonable inquiry,
was known to any individual designated in 37 CFR 1.56(c),
more than three months prior to the filing of the statement.

  A certification can contain either of two statements.
One statement is that each item of information in an
information  disclosure  statement  was  cited  in  a
communication, such as a search report, from a patent office
outside the U.S. in a counterpart foreign application not
more  than  3  months  prior  to  the  filing  date  of  the
statement. Under this certification, it does not matter
whether any individual with a duty of disclosure actually
knew about any of the information cited before receiving the
search report. The date on the communication by the foreign
patent office begins the 3 - month period in the same manner
as the mailing of an Office action starts a 3 - month
shortened  statutory  period  for  response.  If  the
communication contains two dates, the mailing date of the
communication is the one which begins the 3 - month period.
The date which begins the 3 - month period is not the date
the communication was received by a foreign associate or the
date it was received by a U.S. registered practitioner.
Likewise, the statement will be considered to have been
filed on the date the statement was received in the Office,
or  on  an  earlier  date  of  mailing  or  transmission  if
accompanied by a properly executed certificate of mailing or
facsimile transmission under 37 CFR 1.8, or ** >if it is in
compliance with the provisions for "Express Mail" delivery<
under 37 CFR 1.10.

  The term counterpart foreign patent application means
that a claim for priority has been made in either the U.S.
application or a foreign application based on the other, or
that  the  disclosures  of  the  U.S.  and  foreign  patent
applications  are  substantively  identical  (e.g.,  an
application filed in the European Patent Office claiming the
same U.K. priority as claimed in the U.S. application).

  Communications from foreign patent offices in foreign
applications sometimes include a list of the family of
patents corresponding to a particular patent being cited in
the communication. The family of patents may include a

United  States  patent  or  other  patent  in  the  English
language.  Some  applicants  submit  information  disclosure
statements to the PTO which list and include copies of both
the particular patent cited in the foreign patent office
communication and the related United States or other English
language patent from the family list. Since this is to be
encouraged, the United States or other English language
patent will be construed as being cited by the foreign
patent office for purposes of a certification under 37 CFR
1.97(e)(1). The examiner should consider the United States
or other English language patent if 37 CFR 1.97 and 1.98 are
complied with.

  If an information disclosure statement includes a copy
of a dated communication from a foreign patent office which
clearly shows that the statement is being submitted within 3
months of the date on the communication, the copy will be
accepted as the required communication. It will be assumed,
in the absence of evidence to the contrary, that the
communication was for a counterpart foreign application.

  In the alternative, a certification can be made if no
item of information contained in the information disclosure
statement was cited in a communication from a foreign patent
office in a counterpart foreign application and, to the
knowledge of the person signing the certification after
making reasonable inquiry, neither was it known to any
individual having a duty to disclose more than 3 - months
prior to the filing of the statement.

  The phrase "after making reasonable inquiry" makes it
clear that the individual making the certification has a
duty to make reasonable inquiry regarding the facts that are
being  certified.  The  certification  can  be  made  by  a
registered practitioner who represents a foreign client and
who relies on statements made by the foreign client as to
the date the information first became known. A registered
practitioner who receives information from a client without
being informed whether the information was known for more
than  3  months,  however,  cannot  make  the  certification
without  making  reasonable  inquiry.  For  example,  if  an
inventor gave a publication to the attorney prosecuting an
application with the intent that it be cited to the Office,
the attorney should inquire as to when that inventor became
aware  of  the  publication  and  should  not  submit  a
certification under 37 CFR 1.97(e)(2) to the Office until a
satisfactory response is received. The certification can be
based  on  present,  good  faith  knowledge  about  when
information became known without a search of files being
made.

  Certification need not be in the form of an oath or a
declaration under 37 CFR 1.68. Certification by a registered
practitioner or any other individual that the statement was
filed within the 3 - month period of either first citation
by a foreign patent office or first discovery of the
information will be accepted as dispositive of compliance
with this provision in the absence of evidence to the
contrary.  For  example,  a  certification  could  read  as
follows:

  "I  hereby  certify  that  each  item  of  information
contained in this Information Disclosure Statement was cited
in a communication from a foreign patent office in a
counterpart foreign application not more than 3 months prior

to the filing of this statement.", or

  "I hereby certify that no item of information in the
Information Disclosure Statement filed herewith was cited in
a  communication  from  a  foreign  patent  office  in  a
counterpart foreign application or, to my knowledge after
making reasonable inquiry, was known to any individual
designated in 37 CFR 1.56(c) more than 3 months prior to the
filing of this Information Disclosure Statement."

  An information disclosure statement may include two
lists and two certifications, similar to the above examples,
in situations where some of the information listed was cited
in a communication from a foreign patent office not more
than 3 months prior to filing the statement and some was
not, but was not known more than 3 months prior to filing
the statement.

  A copy of the foreign search report need not be
submitted with the certification, but an individual may wish
to submit an English - language version of the search report
to satisfy the requirement for a concise explanation where
non - English language information is cited. The time at
which information was known to any individual designated in
37  CFR  1.56(c)  is  the  time  when  the  information  was
discovered in association with the application even if
awareness of the materiality came later. The Office wishes
to  encourage  prompt  evaluation  of  the  relevance  of
information and to have a date certain for determining if a
certification  can  properly  be  made.  A  statement  on
information and belief would not be sufficient. Examiners
should not remind or otherwise make any comment about an
individual's duty of candor and good faith, but questions
about the adequacy of any certification received in writing
by the Office should be directed to the Office of the
Assistant Commissioner for Patents.

 B(3)  Statement Filed After B(2), but Prior to Payment of
Issue Fee (37 CFR 1.97(d)).

  An information disclosure statement will be considered
by the examiner if filed on or after the mailing date of
either a final action under 37 CFR 1.113 or a notice of
allowance under 37 CFR 1.311, whichever occurs first, but
before or simultaneous with payment of the issue fee,
provided the statement is accompanied by:

  (i) a certification as specified in 37 CFR 1.97(e) (see
the discussion in B(2)(ii) above),

  (ii)  a  petition  requesting  consideration  of  the
information disclosure statement, and

  (iii) the petition fee set forth in 37 CFR 1.17(i)*.

  These requirements are appropriate in view of the late
stage  of  prosecution  when  the  information  is  being
submitted; i.e., after the examiner has reached a final
determination on the patentability of the claims presented
for examination. The petition should be directed to the
Group  Director  of  the  examining  group  handling  the
application. The petition need do nothing more than request
consideration of the information being submitted. Payment of
the petition fee (37 CFR 1.17(i)*)and submission of the
appropriate certification 37 CFR 1.97(e)) are the essential

elements for having information considered at this advanced
stage of prosecution, assuming the content requirements of
37 CFR 1.98 are satisfied.

  >Form Paragraph 6.52 may be used to inform the applicant
that  the  information  disclosure  statement  is  being
considered.

¶ 6.52  Information Disclosure Statement, Petition Granted

  The information disclosure statement (IDS) submitted on
[1] was filed after the mailing date of the  [2] on  [3] .
The submission is in compliance with the provisions of 37
CFR 1.97. Accordingly, the petition is granted and the
information disclosure statement is being considered by the
examiner.

 Examiner Note:

  1.  This form paragraph may be used in an Office action
only when signed by a Supervisory Patent Examiner.

  2.  In bracket 2, insert either - -final Office action
- - or - -Notice of Allowance - -, as appropriate.<

  The  requirements  of  37  CFR  1.97  provide  for
consideration  by  the  Office  of  information  which  is
submitted within a reasonable time; i.e., within 3 months
after an individual designated in 37 CFR 1.56(c) becomes
aware  of  the  information  or  within  3  months  of  the
information being cited in a communication from a foreign
patent office in a counterpart foreign application. This
undertaking by the Office to consider information would be
available throughout the pendency of the application until
the point where the patent issue fee was paid. If an
applicant chose not to comply, or could not comply, with the
requirements of 37 CFR 1.97(d), a continuing application
could be filed to have the information considered by the
examiner. The parent application could be permitted to
become abandoned by not paying the issue fee required in the
Notice of Allowance, for example, or by the filing of a file
wrapper continuing application under 37 CFR 1.62. >In order
to ensure consideration of information in a continuing
application which has not been considered in a parent
application, applicant must either resubmit the information
in compliance with the requirements of 37 CFR 1.97 and 1.98
or request that the previously submitted information be
considered in a continuing application filed under 37 CFR
1.62.< It would not be proper to make final a first Office
action in the continuing application if the information
submitted is used in a new ground of rejection.

 B(4)  Statement Filed After Payment of Issue Fee.

  After the issue fee has been paid on an application, it
is impractical for the Office to attempt to consider newly
submitted  information.  Information  disclosure  statements
filed after payment of the issue fee in an application will
not  be  considered  but  will  merely  be  placed  in  the
application file. See C below. The application may be
withdrawn from issue at this point, however, pursuant to 37
CFR 1.313(b)(5) so that the information can be considered in
a continuing application. In this situation, a file wrapper
continuing application under 37 CFR 1.62 could be filed even
though the issue fee had already been paid. The Office will

consider the filing of a petition under 37 CFR 1.313(b)(5)
as sufficient grounds to waive the requirement that an
application under 37 CFR 1.62 be filed before payment of the
issue fee. >In order to ensure consideration of information
in a continuing application which has not been considered in
a parent application, applicant must either resubmit the
information in compliance with the requirements of 37 CFR
1.97 and 1.98 or request that the previously submitted
information be considered in a continuing application filed
under 37 CFR 1.62.< Alternatively, for example, a petition
pursuant to 37 CFR 1.313(b)(3) could be filed if applicant
states that one or more claims are unpatentable. This
statement that one or more claims are unpatentable over the
information must be unequivocal. A statement that a serious
question as to patentability of a claim has been raised, for
example, would not be acceptable to withdraw an application
from issue under 37 CFR 1.313(b)(3). Form Paragraph 13.09
may be used.

¶ 13.09  Information Disclosure Statement, Issue Fee
Paid

  Applicant's Information Disclosure Statement of [1] was
filed after the issue fee was paid. Information Disclosure
Statements filed after payment of the issue fee will not be
considered, but will be placed in the file. However, the
application may be withdrawn from issue in order to file a
File Wrapper Continuing application upon the grant of a
petition filed under the provisions of 37 CFR 1.313(b)(5).
Alternatively, the other provisions of 37 CFR 1.313 may
apply, e.g., a petition to withdraw the application from
issue under the provisions of 37 CFR 1.313(b)(3) may be
filed  together  with  an  unequivocal  statement  by  the
applicant that one or more claims are unpatentable over the
information contained in the Statement. The Information
Disclosure  Statement  would  then  be  considered  upon
withdrawal of the application from issue under 37 CFR
1.313(b)(3).

 Examiner Note:

  1.  For Information Disclosure (Prior Art) Statements
submitted after the issue fee has been paid, use this
paragraph on form PTOL - 90.

  2.  In bracket 1, insert the filing date of the IDS.

  If an application has been withdrawn from issue under
one of the provisions of 37 CFR 1.313(b)(1) - (4), it will
be treated as though no notice of allowance had been mailed
and the issue fee had not yet been paid with regard to the
time for filing information disclosure statements. Petitions
under 37 CFR 1.313(b) should be directed to the Office of
Petitions in the Office of the Assistant Commissioner for
Patents.

 B(5)  Extensions of Time (37 CFR 1.97(f))

  No  extensions  of  time  for  filing  an  information
disclosure statement are permitted under 37 CFR 1.136(a) or
(b). If a bona fide attempt is made to comply with the
content requirements of 37 CFR 1.98, but part of the
required content is inadvertently omitted, additional time
may be given to enable full compliance.

  C. EXAMINER HANDLING OF INFORMATION DISCLOSURE STATEMENTS

  Information disclosure statements will be reviewed for
compliance with the requirements of 37 CFR 1.97 and 1.98 as
discussed in A and B above. Applicant will be notified of
compliance and noncompliance with the rules as discussed
below.

C(1)  Noncomplying Statements

  Pursuant to 37 CFR 1.97(i), submitted information, filed
before the grant of a patent, which does not comply with 37
CFR 1.97 and 1.98 will be placed in the file, but will not
be considered by the Office. Information submitted after the
grant of a patent must comply with 37 CFR 1.501.

 (i) If an information disclosure statement does not
comply with the requirements based on the time of filing the
statement  as  discussed  in  B  above,  including  the
requirements for fees and/or certification, the statement
will be placed in the application file, but none of the
information will be considered by the examiner. The examiner
may use Form Paragraph 6.49 which is reproduced below to
inform  applicant  that  the  information  has  not  been
considered.  Applicant  may  then  file  a  new  information
disclosure  statement  or  correct  the  deficiency  in  the
previously filed statement, but the date that the new
statement or correction is filed will be the date of the
statement for purposes of determining compliance with the
requirements based on the time of filing the statement (37
CFR 1.97).

  The  examiner  should  write  "not  considered"  on  an
information  disclosure  statement  where  none  of  the
information listed complies with the requirements; e.g., no
copies of listed items submitted. If none of the information
listed on a PTO - 1449 form is considered, a diagonal line
should also be drawn in pencil across the form and the form
placed on the right side of the application file to instruct
the printer not to list the information on the face of the
patent  if  the  application  goes  to  issue.  The  paper
containing the disclosure statement or list will be placed
in the record in the application file. The examiner will
inform  applicant  that  the  information  has  not  been
considered and the reasons why by using form * >paragraphs<
6.49 >through 6.49.09<. If the improper citation appears as
part of another paper; e.g., an amendment, which may be
properly entered and considered, the portion of the paper
which is proper for consideration will be considered.

¶ 6.49  Information Disclosure Statement Not Considered

  The information disclosure statement filed [1] fails to
comply with the provisions of MPEP § 609 because [2]. It has
been placed in the application file, but the information
referred to therein has not been considered as to the
merits. Applicant is advised that the date of any re -
submission of any item of information contained in this
information disclosure statement or the submission of any
missing element(s) will be the date of submission for
purposes of determining compliance with the requirements
based on the time of filing the statement, including all
certification requirements. See MPEP § 609 ¶ C(1).

 Examiner Note:

  See MPEP § 609 for situations where the use of this form
paragraph would be appropriate.

>¶  6.49.01  Information  Disclosure  Statement  Not
Considered, After First Action, Before Final or Allowance,
No Certification

  The information disclosure statement filed [1] fails to
comply with 37 CFR 1.97(c) because it lacks a certification
as specified in 37 CFR 1.97(e). It has been placed in the
application file, but the information referred to therein
has not been considered.

¶ 6.49.02  Information  Disclosure  Statement  Not
Considered, After First Action, Before Final or Allowance,
No Fee

  The information disclosure statement filed [1] fails to
comply with 37 CFR 1.97(c) because it lacks the fee set
forth  in  37  CFR  1.17(p).  It  has  been  placed  in  the
application file, but the information referred to therein
has not been considered.

¶ 6.49.03  Information  Disclosure  Statement  Not
Considered, After Final or Allowance, Issue Fee Not Paid, No
Certification

  The information disclosure statement filed [1] fails to
comply with 37 CFR 1.97(d) because it lacks a certification
as specified in 37 CFR 1.97(e). It has been placed in the
application file, but the information referred to therein
has not been considered.

¶ 6.49.04  Information  Disclosure  Statement  Not
Considered, After Final Or Allowance, Issue Fee Not Paid No
Petition Requesting Consideration

  The information disclosure statement filed [1] fails to
comply with 37 CFR 1.97(d) because it lacks a petition
requesting  consideration  of  the  information  disclosure
statement. It has been placed in the application file, but
the information referred to therein has not been considered.

¶ 6.49.05  Information  Disclosure  Statement  Not
Considered, After Final or Allowance, Issue Fee Not Paid No
Petition Fee

  The information disclosure statement filed [1] fails to
comply with 37 CFR 1.97(d) because it lacks the petition fee
set forth in 37 CFR 1.17(i)(1). It has been placed in the
application file, but the information referred to therein
has not been considered.

¶ 6.49.06  Information  Disclosure  Statement  Not
Considered, References Listed in Specification

  The listing of references in the specification is not a
proper information disclosure statement. 37 CFR 1.98(b)
requires a list of all patents, publications, or other
information submitted for consideration by the Office, and
MPEP § 609 A(1) states, "the list may not be incorporated
into the specification but must be submitted in a separate
paper." Therefore, unless the references have been cited by
the  examiner  on  form  PTO  -  892,  they  have  not  been

considered.

¶ 6.49.07  Information  Disclosure  Statement  Not
Considered, No Copy of References

  The information disclosure statement filed [1] fails to
comply with 37 CFR 1.98(a)(2), which requires a legible copy
of each U.S. and foreign patent; each publication or that
portion  which  caused  it  to  be  listed;  and  all  other
information or that portion which caused it to be listed. It
has been placed in the application file, but the information
referred to therein has not been considered.

¶ 6.49.08  Information  Disclosure  Statement  Not
Considered, No List of References

  The information disclosure statement filed [1] fails to
comply with 37 CFR 1.98(a)(1), which requires a list of all
patents, publications, or other information submitted for
consideration by the Office. It has been placed in the
application file, but the information referred to therein
has not been considered.

¶ 6.49.09  Information  Disclosure  Statement  Not
Considered, No Explanation of Relevance

  The information disclosure statement filed [1] fails to
comply with 37 CFR 1.98(a)(3) because it does not include a
concise explanation of the relevance, as it is presently
understood by the individual designated in 37 CFR 1.56(c)
most knowledgeable about the content of the information, of
each patent listed that is not in the English language. It
has been placed in the application file, but the information
referred to therein has not been considered.<

  (ii) If an information disclosure statement complies with
the requirements based on the time of filing the statement
as discussed in B above, including the requirements for
fees/or certification, but part of the content requirements
as discussed in A above has been inadvertently omitted, the
examiner may set a one - month time period to correct the
omission. Form paragraph 6.51 may be used for this purpose.

¶ 6.51  Time Limit for Completing Information Disclosure
Statement

  The information disclosure statement filed on [1] does
not comply with the requirements of 37 CFR 1.98 because [2].
Since the submission appears to be bona fide, but through an
apparent oversight or inadvertence failed to comply with the
necessary requirements, applicant is required to complete
the statement within a >time limit of >one month from the
date of this letter. NO EXTENSION OF THIS TIME LIMIT MAY BE
GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b). Failure to
comply with this notice will result in the information
disclosure statement being placed in the application file
with the non - complying information not being considered.

 Examiner Note:

  This practice does not apply where there has been a
deliberate omission of some necessary part of an information
disclosure statement or where the requirements based on the
time of filing the statement as set forth in 37 CFR 1.97
have not been complied with.

  If a statement fails to comply with requirements as
discussed in this section for an item of information, that
item of information in the statement will not be considered
and a line should be drawn through the citation to show that
it  has  not  been  considered.  However,  other  items  of
information that do comply with all the requirements will be
considered by the examiner.

  If information is listed in the specification rather
than  in  a  separate  paper,  or  if  the  other  content
requirements as discussed in A above are not complied with,
the examiner will notify applicant in the next Office action
that the information has not been considered. It should be
noted, however, that no copy of a U.S. patent application is
required to be submitted. See A(2)(iii) above. Where a U.S.
patent application is properly cited on a separate list, the
examiner should obtain access to that file within the
Office.

 C (2)  Complying Statements

  The information contained in information disclosure
statements which comply with both the content requirements
as discussed in A above and the requirements based on the
time of filing the statement as discussed in B above will be
considered by the examiner.

  Applicants, patent owners, reexamination requesters,
protestors, and others are encouraged to use form PTO -
1449), "Information Disclosure Citation," when preparing an
information disclosure statement. A copy of this form is
reproduced in this section to indicate how the form should
be completed. This form will enable persons to comply with
the requirement to list each item of information being
submitted and to provide the Office with a uniform listing
of  citations  and  with  a  ready  way  to  indicate  that
information has been considered. Examiners must consider all
citations submitted in conformance with the rules and this
section and their initials when placed adjacent to the
considered citations on the list or in the boxes provided on
a form PTO - 1449 provides a clear record of which citations
have been considered by the Office. The examiner must also
fill in his or her name and the date the information was
considered in blocks at the bottom of the PTO - 1449 form.
If the citations are submitted on a list other than on a
form PTO - 1449, the examiner may write "all considered" and
his or her initials to indicate that all citations have been
considered. If any of the citations are considered, a copy
of the submitted list or form PTO - 1449, as reviewed by the
examiner, will be returned to the applicant with the next
communication.  Those  citations  not  considered  by  the
examiner will have a line drawn through the citation and any
citations  considered  will  have  the  examiner's  initials
adjacent thereto. The original copy of the list or form PTO
- 1449 will be entered into the application file. The copy
returned to applicant will serve both as acknowledgement of
receipt of the information disclosure statement and as an
indication as to which references were considered by the
examiner. Forms PTO - 326 and PTOL - 37 include a box to
indicate the attachment of form PTO - 1449.

  Information  which  complies  with  requirements  as
discussed in this section but which is in a non - English
language  will  be  considered  in  view  of  the  concise

explanation submitted (A(3) above) and insofar as it is
understood on its face; e.g., drawings, chemical formulas,
in the same manner that non - English language information
in  Office  search  files  is  considered  by  examiners  in
conducting  searches.  The  examiner  need  not  have  the
information translated unless it appears to be necessary to
do so. The examiner will indicate that the non - English
language information has been considered in the same manner
as consideration is indicated for information submitted in
English. The examiner should not require that a translation
be filed by applicant. The examiner should not make any
comment such as that the non - English language information
has only been considered to the extent understood, since
this fact is inherent.

  Since information is required to be submitted in a
separate p aper listing the citations rather than in the
specification, there is no need to mark " All checked" or
"Checked"  in  the  margin  of  a  specification  containing
citations.

  If a statement fails to comply with requirements as
discussed in this section for an item of information, a line
should be drawn through the citation to show that it has not
been considered. The other items of information listed that
do comply with the rules and this section will be considered
by the examiner and will be appropriately initialed.

 C (3)  Documents Submitted As Part of Applicant's Response
to Office Action

  Occasionally, documents are submitted and relied on by
an applicant when responding to an Office action. These
documents may be relied on by an applicant, for example, to
show that an element recited in the claim is operative or
that a term used in the claim has a recognized meaning in
the art. Documents may be in any form but are typically in
the form of an affidavit, declaration, patent, or printed
publication.

  To the extent that a document is submitted as evidence
directed to an issue of patentability raised in an Office
action, and the evidence is timely presented, applicant need
not satisfy the requirements of 37 CFR 1.97 and 1.98 in
order  to  have  the  examiner  consider  the  information
contained in the document relied on by applicant. In other
words, compliance with the information disclosure rules is
not a threshold requirement to have information considered
when submitted by applicant to support an argument being
made in a response to an Office action.

  At the same time, the document supplied and relied on by
applicant as evidence need not be processed as an item of
information that was cited in an information disclosure
statement. The record should reflect whether the evidence
was considered, but listing on a form (e.g., PTO - 892 or
PTO - 1449) and appropriate marking of the form by the
examiner is not required.

  For example, if applicant submits and relies on three
patents as evidence in response to the first Office action
and also lists those patents on a PTO - 1449 along with two
journal articles, but does not file a certification or $200
fee, it would be appropriate for the examiner to indicate
that the teachings relied on by applicant in the three

patents have been considered, but to line through the
citation of all five documents on the PTO - 1449 and to
inform applicant that the information disclosure statement
did not comply with 37 CFR 1.97(c).

 D. INFORMATION PRINTED ON PATENT

  A citation listed on form PTO - 1449 and considered by
the examiner in accordance with this section will be printed
on the patent. A citation listed in a separate paper,
equivalent to but not on form PTO - 1449, and considered by
the examiner in accordance with this section will be printed
on the patent if the list is on a separate sheet which is
clearly identified as an information disclosure statement
and the list lends itself to easy capture of the necessary
information by the Office printing contractor; i.e., each
item of information is listed on a single line, the lines
are  at  least  double  -  spaced  from  each  other,  the
information is uniform in format for each listed item, and
the list includes a column for the examiner's initials to
indicate that the information was considered. If a U.S.
patent application serial number is listed on a PTO - 1449
form or its equivalent and the examiner considers the
information and initials the form, the serial number will be
printed on the patent.

  Applicants may wish to list U.S. patent application
serial numbers on other than a form PTO - 1449 format to
avoid the serial numbers of pending applications being
published on the patent. If a citation is not printed on the
patent but has been considered by the examiner in accordance
with this section, the patented file will reflect that fact
as noted in C(2) above.

 **  Double Click here to see the image  **

  Chapter 700 Examination of Applications

  701  Statutory Authority for Examination
  702  Requisites of the Application
  702.01 Obviously Informal Cases
  703  "General Information Concerning Patents"
  704  Search
  705  Patentability Reports
  705.01 Instructions re Patentability Reports
  705.01(a)  Nature of P.R., Its Use and Disposal
  705.01(b)  Sequence of Examination
  705.01(c)  Counting and Recording P.R.'s
  705.01(d)  Duplicate Prints of Drawings
  705.01(e)  Limitation as to Use
  705.01(f)  Interviews With Applicants
  706  Rejection of Claims
  706.01  Contrasted With Objections
  706.02 Rejections on Prior Art
  706.02(a)  Rejections Under 35 U.S.C. 102(a), (b), or
  (e); Printed  Publication or Patent
  706.02(b)  Overcoming a 35 U.S.C. 102 Rejection Based on
  a Printed Publication or Patent
  706.02(c)  Rejections Under 35 U.S.C. 102(a) or (b);
  Knowledge by Others or Public Use or Sale
  706.02(d)  Rejections Under 35 U.S.C. 102(c)
  706.02(e)  Rejections Under 35 U.S.C. 102(d)
  706.02(f)  Provisional Rejections Under 35 U.S.C. 102(e);

  Reference is a Copending U.S. Application
  706.02(g)  Rejections Under 35 U.S.C. 102(f)
  706.02(h) Rejections Under 35 U.S.C. 102(g)
  706.02(i)  Form Paragraphs for Use in Rejections Under 35
  U.S.C. 102
  706.02(j)  Contents of a 35 U.S.C. 103 Rejection
  706.02(k)  Provisional Rejection (Obviousness) Under 35
  U.S.C. 102(e) / 103
  706.02(l)  Rejections Under 35 U.S.C. 102(f) / 103 and 35
  U.S.C. 102(g) / 103 ; 35 U.S.C. 103(c)
  706.02(m)  Form Paragraphs for Use in Rejections Under 35
  U.S.C. 103
  706.02(n)  Biotechnology Process Applications; 35 U.S.C.
  103(b)
  706.03 Rejections Not Based on Prior Art
  706.03(a)  Rejections under 35 U.S.C. 101
  706.03(a)(1)  Guidelines For Examination of Applications for
  Compliance With the Utility Requirement of 35 U.S.C.
  101
  706.03(b)  Barred by Atomic Energy Act
  706.03(c)  Rejections under 35 U.S.C. 112, First
  Paragraph
  706.03(d)  Rejections Under 35 U.S.C. 112, Second
  Paragraph
  706.03(k)  Duplicate Claims
  706.03(m)  Nonelected Inventions
  706.03(o)  New Matter
  706.03(s)  Foreign Filing Without License
  706.03(u)  Disclaimer
  706.03(v)  After Interference or Public Use Proceeding
  706.03(w)  Res Judicata
  706.03(x)  Reissue
  706.04 Rejection of Previously Allowed Claims
  706.05 Rejection After Allowance of Application
  706.06 Rejection of Claims Copied From Patent
  706.07 Final Rejection
  706.07(a)  Final Rejection, When Proper on Second Action
  706.07(b)  Final Rejection, When Proper on First Action
  706.07(c)  Final Rejection, Premature
  706.07(d)  Final Rejection, Withdrawal of, Premature
  706.07(e)  Withdrawal of Final Rejection, General
  706.07(f)  Time for Response to Final Rejection
  706.07(g)  Transitional After - Final Practice
  707  Examiner's Letter or Action
  707.01 Primary Examiner Indicates Action for New
  Assistant
  707.02(a)  Cases Up for Third Action and 5 - Year Cases
  707.05 Citation of References
  707.05(a)  Copies of Cited References
  707.05(b)  Citation of Related Art by Applicants
  707.05(c)  Order of Listing
  707.05(d)  Reference Cited in Subsequent Actions
  707.05(e)  Data Used in Citing References
  707.05(f)  Effective Dates of Declassified Printed Matter
  707.05(g)  Incorrect Citation of References
  707.06 Citation of Decisions, Orders, Memorandums,
  and Notices
  707.07 Completeness and Clarity of Examiner's Action
  707.07(a)  Complete Action on Formal Matters
  707.07(b)  Requiring New Oath
  707.07(c)  Draftsman's Requirement
  707.07(d)  Language To Be Used In Rejecting Claims
  707.07(e)  Note All Outstanding Requirements
  707.07(f)  Answer All Material Traversed
  707.07(g)  Piecemeal Examination

  707.07(h)  Notify of Inaccuracies in Amendment
  707.07(i)  Each Claim To Be Mentioned in Each Letter
  707.07(j)  State When Claims Are Allowable
  707.07(k)  Numbering Paragraphs
  707.07(l)  Comment on Examples
  707.08 Reviewing and Initialing by Assistant Examiner
  707.09 Signing by Primary or Other Authorized
  Examiner
  707.10 Entry
  707.11 Date
  707.12 Mailing
  707.13 Returned Office Action
  708  Order of Examination
  708.01 List of Special Cases
  708.02 Petition To Make Special
  708.03 Examiner Tenders Resignation
  709  Suspension of Action
  709.01 Overlapping Applications by Same Applicant or
  Owned by Same Assignee
  710  Period for Response
  710.01 Statutory Period
  710.01(a)  Statutory Period, How Computed
  710.02 Shortened Statutory Period and Time Limit
  Actions  Computed
  710.02(b)  Shortened Statutory Period: Situations in
  Which Used
  710.02(c)  Time - Limit Actions: Situations in Which Used
  710.02(d)  Difference Between Shortened Statutory and
  Time - Limit Periods
  710.02(e)  Extension of Time
  710.04 Two Periods Running
  710.04(a)  Copying Patent Claims
  710.05 Period Ending on Saturday, Sunday, or a
  Federal Holiday
  710.06 Situations When Response Period is Reset or
  Restarted
  711  Abandonment
  711.01 Express or Formal Abandonment
  711.02 Failure To Take Required Action During
  Statutory Period
  711.02(a)  Insufficiency of Response
  711.02(b)  Special Situations Involving Abandonment
  711.02(c)  Termination of Proceedings
  711.03 Reconsideration of Holding of Abandonment;
  Revival
  711.03(a)  Holding Based on Insufficiency of Response
  711.03(b)  Holding Based on Failure To Respond Within
  Period
  711.03(c)  Petitions Relating to Abandonment
  711.03(d)  Examiner's Statement on Petition To Set Aside
  Examiner's Holding
  711.03(e)  Petitions Relating to Revival of Abandoned
  Provisional Applications
  711.04 Disposition of Abandoned Applications
  711.04(a)  Pulling and Forwarding Abandoned Applications
  711.04(b)  Ordering of Patented and Abandoned Files
  711.04(c)  Notifying Applicants of Abandonment
  711.05 Letter of Abandonment Received After
  Application is Allowed
  711.06 Abstracts, Abbreviatures, and Defensive
  Publications
  711.06(a)  Citation and Use of Abstracts, Abbreviatures,
  and Defensive Publications as References
  712  Abandonment for Failure To Pay Issue Fee
  713  Interviews

  713.01 General Policy, How Conducted
  713.02 Interviews Prior to First Official Action
  713.03 Interview for "Sounding Out" Examiner Not
  Permitted
  713.04 Substance of Interview Must Be Made of Record
  713.05 Interviews Prohibited or Granted, Special
  Situations
  713.06 No Inter Partes Questions Discussed  Ex Parte
  713.07 Exposure of Other Cases
  713.08 Demonstration, Exhibits, Models
  713.09 Finally Rejected Application
  713.10 Interview Preceding Filing Amendment Under 37
  CFR 1.312
  714  Amendments, Applicant's Action
  714.01 Signatures to Amendments
  714.01(a)  Unsigned or Improperly Signed Amendment
  714.01(c)  Signed by Attorney Not of Record
  714.01(d)  Amendment Signed by Applicant But Not by
  Attorney of Record
  714.02 Must Be Fully Responsive
  714.03 Amendments Not Fully Responsive Action To Be
  Taken
  714.04 Claims Presented in Amendment With No Attempt
  To Point Out Patentable Novelty
  714.05 Examiner Should Immediately Inspect
  714.06 Amendments Sent to Wrong Group
  714.07 Amendments Not in Permanent Ink
  714.08 Telegraphic Amendment
  714.09 Amendments Before First Office Action
  714.10 Claims Added in Excess of Filing Fee
  714.11 Amendment Filed During Interference
  Proceedings
  714.12 Amendments After Final Rejection or Action
  714.13 Amendments After Final Rejection or Action,
  Procedure Followed
  714.14 Amendments After Allowance of All Claims
  714.15 Amendment Received in Examining Group After
  Mailing of Notice of Allowance
  714.16 Amendment After Notice of Allowance, 37 CFR
  1.312
  714.16(a)  Amendments Under 37 CFR 1.312, Copied Patent
  Claims
  714.16(b)  Amendments Under 37 CFR 1.312, Filed With a
  Motion Under 37 CFR 1.633
  714.16(c)  Amendments Under 37 CFR 1.312, Additional
  Claims
  714.16(d)  Amendments Under 37 CFR 1.312, Handling
  714.16(e)  Amendments Under 37 CFR 1.312, Entry in Part
  714.17 Amendment Filed After the Period for Response
  Has Expired
  714.18 Entry of Amendments
  714.19 List of Amendments, Entry Denied
  714.20 List of Amendments Entered in Part
  714.21 Amendments Inadvertently Entered, No Legal
  Effect
  714.22 Entry of Amendments, Directions for
  714.23 Entry of Amendments, Directions for, Defective
  714.24 Amendment of Amendments
  714.25 Discourtesy of Applicant or Attorney
  715  Swearing Back of Reference - Affidavit or
  Declaration Under 37 CFR 1.131
  715.01  37 CFR 1.131 Affidavits versus 37 CFR 1.132
  Affidavits
  715.01(a)  Reference is a Joint Patent to Applicant and
  Another

  715.01(b)  Reference and Application Have Common Assignee
  715.01(c)  Reference is Publication of Applicant's Own
  Invention
  715.02 How Much of the Claimed Invention Must Be
  Shown, Including the General Rule as to Generic Claims
  715.03 Genus - Species, Practice Relative to Cases
  Where Predictability Is In Question
  715.04 Who May Make Affidavit or Declaration; Formal
  Requirements of Affidavits and Declarations
  715.05 Patent Claiming Same Invention
  715.07 Facts and Documentary Evidence
  715.07(a)  Diligence
  715.07(b)  Interference Testimony Sometimes Used
  715.07(c)  Acts Relied Upon Must Have Been Carried Out in
  This Country or a NAFTA or WTO Member Country
  715.07(d)  Disposition of Exhibits
  715.08 Passed Upon by Primary Examiner 715.09
  Seasonable Presentation 715.10 Review of Affidavit or
  Declaration for Evidence of Prior Public Use or Sale
  or Failure to Disclose Best Mode
  716  Affidavits or Declarations Traversing Rejections,
  37 CFR 1.132
  716.01 Generally Applicable Criteria
  716.01(a)  Objective Evidence of Nonobviousness
  716.01(b)  Nexus Requirement and Evidence of
  Nonobviousness
  716.01(c)  Probative Value of Objective Evidence
  716.01(d)  Weighing Objective Evidence
  716.02 Allegations of Unexpected Results
  716.02(a)  Evidence Must Show Unexpected Results
  716.02(b)  Burden on Applicant
  716.02(c)  Weighing Evidence of Expected and Unexpected
  Results
  716.02(d)  Unexpected Results Commensurate in Scope With
  Claimed Invention
  716.02(e)  Comparison with Closest Prior Art
  716.02(f)  Advantages Disclosed or Inherent
  716.02(g)  Declaration or Affidavit Form
  716.03 Commercial Success
  716.03(a)  Commercial Success Commensurate in Scope With
  Claimed Invention
  716.03(b)  Commercial Success Derived From Claimed
  Invention
  716.04 Long - Felt Need and Failure of Others
  716.05 Skepticism of Experts
  716.06 Copying
  716.07 Inoperability of References
  716.08 Utility and Operability of Applicant's
  Disclosure
  716.09 Sufficiency of Disclosure
  716.10 Attribution >718  Affidavit or Declaration to
  Disqualify Commonly Owned Patent as Prior Art, 37 CFR
  1.130< *>719<  File Wrapper *>719.01<  Papers in
  File Wrapper *>719.01(a)<  Arrangement of Papers in
  File Wrapper *>719.01(b)<  Prints *>719.02<  Data
  Entered on File Wrapper *>719.02(b)<  Name or
  Residence of Inventor or Title Changed *>719.03<
  Classification During Examination *>719.04<  Index of
  Claims *>719.05<  Field of Search *>719.06<  Foreign
  Filing Dates *>719.07<  Related Applications
  720  Public Use Proceedings
  720.01 Preliminary Handling
  720.02 Examiner Determination of Prima Facie Showing
  720.03 Preliminary Hearing
  720.04 Public Use Proceeding Testimony

  720.05 Final Decision
  724  Trade Secret, Proprietary, and Protective Order
  Materials
  724.01 Completeness of the Patent File Wrapper
  724.02 Method of Submitting Trade Secret,
  Proprietary, and/or Protective Order Materials
  724.03 Types of Trade Secret, Proprietary, and/or
  Protective Order Materials Submitted Under MPEP §
  724.02
  724.04 Office Treatment and Handling of Materials
  Submitted Under MPEP § 724.02
  724.04(a)  Materials Submitted in an Application Covered
  by 35 U.S.C. 122
  724.04(b)  Materials Submitted in Reissue Applications
  Open to the Public Under 37 CFR 1.11(b)
  724.04(c)  Materials Submitted in Reexamination Files
  Open to the Public Under 37 CFR 1.11(d)
  724.05 Petition To Expunge Materials Submitted Under
  MPEP § 724.02

701  Statutory Authority for Examination [R - 1]

 >35 U.S.C. 131.  Examination of application.

  The Commissioner shall cause an examination to be made
of the application and the alleged new invention; and if on
such examination it appears that the applicant is entitled
to a patent under the law, the Commissioner shall issue a
patent therefor.

  The main conditions precedent to the grant of a patent
to an applicant are set forth in 35 U.S.C. 101, 102, 103.

 35 U.S.C. 101.  Inventions patentable.

  Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and  useful  improvement  thereof,  may  obtain  a  patent
therefor, subject to the conditions and requirements of this
title.

  Form Paragraph 7.04 copies 35 U.S.C. 101.

 35 U.S.C. 100.  Definitions.

  When used in this title unless the context otherwise
indicates -

  (a) The term "invention" means invention or discovery.

  (b) The term " process" means process, art or method, and
includes a new use of a known process, machine, manufacture,
composition of matter, or material.

  (c) The terms "United States" and "this country" mean the
United States of America, its territories and possessions.

  (d) The word "patentee" includes not only the patentee to
whom the patent was issued but also the successors in title
to the patentee.<

702  Requisites of the Application [R - 1]

  >When a new application is assigned in the examining

group, the examiner should review the contents of the
application  to  determine  if  the  application  meets  the
requirements of 35 U.S.C. 111(a). Any matters affecting the
filing date or abandonment of the application, such as lack
of an oath or declaration, filing fee, or claims should be
checked before the application is placed in the storage
racks to await the first action.

  The  examiner  should  be  careful  to  see  that  the
application meets all the requisites set forth in MPEP
Chapter 600 both as to formal matters and as to the
completeness and clarity of the disclosure. If all of the
requisites are not met, applicant may be called upon for
necessary amendments. Such amendments, however, must not
include new matter.<

702.01  Obviously Informal Cases [R - 2]

  When an application is reached for its first action and
it is then discovered to be impractical to give a complete
action on the merits because of an informal or insufficient
disclosure, the following procedure may be followed:

  (1)  A reasonable search should be made of the
invention  so  far  as  it  can  be  understood  from  the
disclosure,  objects  of  invention  and  claims  and  any
apparently pertinent art cited. In the rare case in which
the disclosure is so incomprehensible as to preclude a
reasonable search the action should clearly inform applicant
that no search was made;

  (2) Informalities  noted  by  the  Application
Division and deficiencies in the drawing should be pointed
out by means of attachments to the examiner's letter (see
MPEP § 707.07(a));

  (3) A  requirement  should  be  made  that  the
specification be revised to conform to idiomatic English and
United States practice;

  (4)  The claims should be rejected as failing to
define the invention in the manner required by 35 U.S.C. 112
if  they  are  informal.  A  blanket  rejection  is  usually
sufficient.

  The examiner should * attempt to point out the * points
of informality in the specification and claims. The burden
is on the applicant to revise the application to render it
in proper form for a complete examination.

  If a number of obviously informal claims are filed in an
application, such claims should be treated as being a single
claim for fee and examination purposes.

  It is obviously to applicant's advantage to file the
application with an adequate disclosure and with claims
which conform to the U.S. Patent and Trademark Office usages
and requirements. This should be done whenever possible. If,
however, due to the pressure of a Convention deadline or
other reasons, this is not possible, applicants are urged to
submit  promptly, preferably within 3 months after filing ,
a  preliminary  amendment  which  corrects  the  obvious
informalities. The informalities should be corrected to the
extent that the disclosure is readily understood and the
claims  to  be  initially  examined  are  in  proper  form,

particularly as to dependency, and otherwise clearly define
the invention. "New matter" must be excluded from these
amendments  since  preliminary  amendments  do  not  enjoy
original disclosure status, MPEP § 608.04(b).

  Whenever, upon examination, it is found that the terms
or phrases or modes of characterization used to describe the
invention are not sufficiently consonant with the art to
which the invention pertains, or with which it is most
nearly  connected,  to  enable  the  examiner  to  make  the
examination specified in 37 CFR 1.104, the examiner should
make a reasonable search of the invention so far as it can
be  understood  from  the  disclosure.  The  action  of  the
examiner may be limited to a citation of what appears to be
the most pertinent prior art found and a request that
applicant correlate the terminology of the specification
with art - accepted terminology before further action is
made.

  Use Form Paragraph 7.01 where the terminology is such
that a proper search cannot be made.

¶ 7.01  Use of Terminology, Cannot Be Examined

  A preliminary examination of this application reveals
that it includes terminology which is so different from that
which is generally accepted in the art to which this
invention pertains that it is impractical to make a proper
search of the prior art.

  For example: [1]

  Applicant is required to provide a clarification of
these matters or correlation with art - accepted terminology
so that a proper comparison with the prior art can be made.
Applicant should be careful not to introduce any new matter
into the disclosure (i.e., matter which is not supported by
the disclosure as originally filed).

  A shortened statutory period for response to this action
is set  to expire THIRTY DAYS from the date of this letter.

 Examiner Note:

  1.  Use this or paragraph 7.02 when a proper search
cannot be made.

  2.  In bracket 1, fill in an appropriate indication of
the terminology, properties, units of data, etc., that are
the problem as well as the pages of specification involved.

  3.  For the procedure to be followed when only the
drawing is informal, see MPEP § § 608.02(a) and 608.02(b).

  Use Form Paragraph 7.02 where the application is so
incomprehensible that a reasonable search cannot be made.

¶ 7.02  Disclosure is Incomprehensible

  The disclosure is objected to under 37 CFR 1.71, as
being so incomprehensible as to preclude a reasonable search
of the prior art by the examiner. For example, the following
items are not understood: [1].

  Applicant is required to submit an amendment which

clarifies the disclosure so that the examiner may make a
proper comparison of the invention with the prior art.

  Applicant should be careful not to introduce any new
matter into the disclosure (i.e., matter which is not
supported by the disclosure as originally filed).

  A shortened statutory period for response to this action
is set  to expire THIRTY DAYS from the date of this letter.

 Examiner Note:

  1  Use this paragraph when a search cannot be made.

  2.  In  bracket  1,  indicate  the  page  numbers  and
features which are not understood.

  3.  See form paragraphs 6.28 and 6.30 for improper
idiomatic English.

  Use Form Paragraph 7.03 where the invention cannot be
understood because of illegible handwritten pages.

¶ 7.03  Pages Are Illegible

  The examiner cannot understand the invention because
certain  portions  of  the  disclosure  are  illegible.  The
illegible portion(s) consist of [1].

  Applicant is required to submit an appropriate amendment
rectifying this deficiency. In the alternative, a substitute
specification, preferably in typed, double spaced format,
may be filed. The filing of a substitute specification
requires the submission of a hand - corrected copy of the
portions of the original specification which are being added
or deleted with additions being underlined and deletions
being  bracketed.  In  addition,  a  statement  that  the
substitute specification contains no new matter and that the
substitute specification includes the same changes as are
indicated in the hand corrected original specification is
required. Such statement must be a verified statement if
made by a person not registered to practice before the
Office. See MPEP § 714.20.

  A shortened statutory period for response to this action
is set  to expire THIRTY DAYS from the date of this letter.

 Examiner Note:

  1.  In  bracket  1,  identify  the  portions  of  the
specification which are illegible.

  2.  This form paragraph is to be used only when the
invention cannot be understood because of the illegible
material; see MPEP § 702.01.

  3.  See Chapter 1700 for handwritten specifications
filed by pro se applicants.

  4.  Use form paragraph 7.02 when the disclosure is
incomprehensible.

  For the procedure to be followed when only the drawing
is informal, see MPEP § 608.02(a) and § 608.02(b).

703  "General Information Concerning Patents " [R - 1]

  >The pamphlet "General Information Concerning Patents"
for  use  by  applicants  contemplating  the  filing  or
prosecution of their own applications, may be purchased from
the Superintendent of Documents, U.S. Government Printing
Office, Washington, D.C. 20402.<

704  Search [R - 3]

  After reading the specification and claims, the examiner
searches the prior art.

  The subject of searching is more fully treated in MPEP
Chapter 900. See MPEP § 904 through § 904.02. The invention
should  be  thoroughly  understood  before  a  search  is
undertaken. However, informal cases, or those which can only
be imperfectly understood when they come up for action in
their regular turn are also given a search, in order to
avoid piecemeal prosecution.

  PREVIOUS EXAMINER'S SEARCH

  When an examiner is assigned to act on an application
which has received one or more actions by some other
examiner, full faith and credit should be given to the
search and action of the previous examiner unless there is a
clear error in the previous action or knowledge of other
prior art. In general the second examiner should not take an
entirely new approach to the case or attempt to reorient the
point of view of the previous examiner, or make a new search
in the mere hope of finding something. See MPEP §*>719.05.<

705  Patentability Reports [R - 1]

  >Where  an  application,  properly  assigned  to  one
examining group, is found to contain one or more claims, per
se, classifiable in one or more other groups, which claims
are not divisible  inter se or from the claims which govern
classification of the application in the first group, the
application may be referred to the other group or groups
concerned for a report as to the patentability of certain
designated claims. This report is known as a Patentability
Report (P.R.) and is signed by the primary examiner in the
reporting group.

  The report, if legibly written, need not be typed.

  Note  that  the  Patentability  Report  practice  is
suspended, except in extraordinary circumstances. See MPEP §
705.01(e).<

705.01  Instructions re Patentability Reports [R - 1]

  >When an application comes up for any action and the
primary examiners involved (i.e., from both the requesting
and the requested group) agree that a Patentability Report
is necessary, and if the Group Director of the requesting
group approves, the application is forwarded to the proper
group  with  a  memorandum  attached,  for  instance,  "For
Patentability Report from group - - as to claims - -."<

705.01(a)  Nature of P.R., Its Use and Disposal [R - 1]

  >The primary examiner in the group from which the

Patentability Report is requested, if he or she approves the
request, will direct the preparation of the Patentability
Report. This Patentability Report is written or typed on a
memorandum  form  and  will  include  the  citation  of  all
pertinent references and a complete action on all claims
involved. The field of search covered should be endorsed on
the file wrapper by the examiner making the report. When an
examiner  to  whom  a  case  has  been  forwarded  for  a
Patentability Report is of the opinion that final action is
in order as to the referred claims, he or she should so
state. The Patentability Report when signed by the primary
examiner in the reporting group will be returned to the
group to which the application is regularly assigned and
placed in the file wrapper.

  The examiner preparing the Patentability Report will be
entitled to receive an explanation of the disclosure from
the  examiner  to  whom  the  case  is  assigned  to  avoid
duplication of work.

  If the primary examiner in a reporting group is of the
opinion that a Patentability Report is not in order, he or
she should so advise the primary examiner in the forwarding
group.

  DISAGREEMENT AS TO CLASSIFICATION

  Conflict of opinion as to classification may be referred
to a patent classifier for decision.

  If the primary examiner in the group having jurisdiction
of the case agrees with the Patentability Report, he or she
should incorporate the substance thereof in his or her
action, which action will be complete as to all claims. The
Patentability Report in such a case is  not given a paper
number but is allowed to remain in the file until the case
is finally disposed of by allowance or abandonment, at which
time it should be removed.

  DISAGREEMENT ON PATENTABILITY REPORT

  If  the  primary  examiner  does  not  agree  with  the
Patentability Report or any portion thereof, he or she may
consult  with  the  primary  examiner  responsible  for  the
report. If agreement as to the resulting action cannot be
reached, the primary examiner having jurisdiction of the
case need not rely on the Patentability Report but may make
his or her own action on the referred claims, in which case
the Patentability Report should be removed from the file.

  APPEAL TAKEN

  When an appeal is taken from the rejection of claims,
all of which are examinable in the group preparing a
Patentability  Report,  and  the  application  is  otherwise
allowable, formal transfer of the case to said group should
be made for the purpose of appeal only. The receiving group
will take jurisdiction of the application and prepare the
examiner's answer. At the time of allowance, the application
may be sent to issue by said group with its classification
determined by the controlling claims remaining in the case.<

705.01(b)  Sequence of Examination [R - 1]

  >In the event that the supervisory primary examiners

concerned in a P.R. case cannot agree as to the order of
examination  by  their  groups,  the  supervisory  primary
examiner having jurisdiction of the case will direct that a
complete search be made of the art relevant to his or her
claims prior to referring the case to another group for
report. The group to which the case is referred will be
advised of the results of this search.

  If the supervisory primary examiners are of the opinion
that a different sequence of search is expedient, the order
of search should be correspondingly modified.<

705.01(c)  Counting and Recording P.R.'s [R - 1]

  >The forwarding of the application for a Patentability
Report is not to be treated as a transfer by the forwarding
group. When the P.R. is completed and the application is
ready for return to the forwarding group, it is not counted
either as a receipt or action by transfer. Credit, however,
is given for the time spent. See MPEP § 1705.

  The date status of the application in the reporting
group will be determined on the basis of the dates in the
group of original jurisdiction. To ensure orderly progress
in the reported dates, a timely reminder should be furnished
to the group making the P.R.<

705.01(d)  Duplicate Prints of Drawings [R - 1]

  >In Patentability Report cases having drawings, the
examiner to whom the case is assigned will furnish to the
group to which the case is referred, prints of such sheets
of the drawings as are applicable, for interference search
purposes. That this has been done may be indicated by a
pencil notation on the file wrapper.

  When  a  case  that  has  had  Patentability  Report
prosecution  is  passed  for  issue  or  becomes  abandoned,
NOTIFICATION of this fact will AT ONCE be given by the group
having jurisdiction of the case to each group that submitted
a Patentability Report. The examiner of each such reporting
group will note the date of allowance or abandonment on the
duplicate set of prints. At such time as these prints become
of no value to the reporting group, they may be destroyed.<

705.01(e)  Limitation as to Use [R - 1]

  >The above outlined Patentability Report practice is not
obligatory and should be resorted to only where it will save
total examiner time or result in improved quality of action
due to specialized knowledge. A saving of total examiner
time that is required to give a complete examination of an
application is of primary importance. Patentability Report
practice is based on the proposition that when plural,
indivisible inventions are claimed, in some instances either
less time is required for examination, or the results are of
better  quality,  when  specialists  on  each  character  of
claimed  invention  treat  the  claims  directed  to  their
specialty. However, in many instances a single examiner can
give a complete examination of as good quality on all
claims, and in less total examiner time than would be
consumed by the use of the Patentability Report practice.

  Where claims are directed to the same character of
invention  but  differ  in  scope  only,  prosecution  by

Patentability Report is never proper.

  Exemplary situation where Patentability Reports are
ordinarily not proper are as follows:

  (1) Where  the  claims  are  related  as  a
manufacturing process and a product defined by the process
of manufacture. The examiner having jurisdiction of the
process can usually give a complete, adequate examination in
less total examiner time than would be consumed by the use
of a Patentability Report.

  (2)  Where the claims are related as product and a
process which involves merely the fact that a product having
certain  characteristics  is  made.  The  examiner  having
jurisdiction of the product can usually make a complete and
adequate examination.

  (3)  Where the claims are related as a combination
distinguished  solely  by  the  characteristics  of  a
subcombination  and  such  subcombination,  per  se  .  The
examiner  having  jurisdiction  of  the  subcombination  can
usually make a complete and adequate examination.

  Where it can be shown that a Patentability Report will
save total examiner time, one is permitted with the approval
of the group director of the group to which the application
is assigned. The "Approved" stamp should be impressed on the
memorandum requesting the Patentability Report.<

705.01(f)  Interviews With Applicants [R - 1]

  >In  situations  where  an  interview  is  held  on  an
application  in  which  a  Patentability  Report  has  been
adopted, the reporting group may be called on for assistance
at the interview when it concerns claims treated by them.
See MPEP § 713 to § 713.10 regarding interviews in general.<

706  Rejection of Claims [R - 3]

  >After the application has been read and the claimed
invention understood, a prior art search for the claimed
invention is made. With the results of the prior art search,
including any references provided by the applicant, the
patent  application  should  be  reviewed  and  analyzed  in
conjunction with the state of the prior art to determine
whether the claims define a useful, novel, non - obvious,
and enabled invention that has been clearly described in the
specification.  The  goal  of  examination  is  to  clearly
articulate any rejection early in the prosecution process so
that the applicant has the opportunity to provide evidence
of patentability and otherwise respond completely at the
earliest opportunity. The examiner then reviews all the
evidence, including arguments and evidence responsive to any
rejection before issuing the next Office action.<

 Although this part of the Manual explains the procedure in
rejecting claims, the examiner should never overlook the
importance of his or her role in allowing claims which
properly define the invention.

 37 CFR 1.106.  Rejection of Claims

  (a) If the invention is not considered patentable, or not
considered patentable as claimed, the claims, or those

considered unpatentable will be rejected.

  (b) In rejecting claims for want of novelty or for
obviousness, the examiner must cite the best references at
his command. When a reference is complex or shows or
describes  inventions  other  than  that  claimed  by  the
applicant, the particular part relied on must be designated
as nearly as practicable. The pertinence of each reference,
if not apparent, must be clearly explained and each rejected
claim specified.

  (c) In rejecting claims the examiner may rely upon
admissions by the applicant, or the patent owner in a
reexamination  proceeding,  as  to  any  matter  affecting
patentability and, insofar as rejections in applications are
concerned, may also rely upon facts within his or her
knowledge pursuant to § 1.107.

  (d) Subject matter which is developed by another person
which qualifies as prior art only under 35 U.S.C. 102(f) or
(g) may be used as prior art under 35 U.S.C. 103 against a
claimed invention unless the entire rights to the subject
matter and the claimed invention were commonly owned by the
same person or organization or subject to an obligation of
assignment to the same person or organization at the time
the claimed invention was made.

  (e) The claims in any original application naming an
inventor will be rejected as being precluded by a waiver in
a published statutory invention registration naming that
inventor if the same subject matter is claimed in the
application and the statutory invention registration. The
claims in any reissue application naming an inventor will be
rejected as being precluded by a waiver in a published
statutory invention registration naming that inventor if the
reissue application seeks to claim subject matter (1) which
was not covered by claims issued in the patent prior to the
date of publication of the statutory invention registration
and (2) which was the same subject matter waived in the
statutory invention registration.

  UNIFORM APPLICATION OF THE PATENTABILITY STANDARD

  The  standards  of  patentability  applied  in  the
examination of claims must be the same throughout the
Office. In every art, whether it be considered "complex,"
"newly developed," "crowded," or "competitive," all of the
requirements for patentability (e.g., novelty, usefulness
and unobviousness, as provided in 35 U.S.C. 101, 102, and
103) must be met before a claim is allowed. The mere fact
that a claim recites in detail all of the features of an
invention (i.e., is a "picture" claim) is never, in itself,
justification for the allowance of such a claim.

  An application should not be allowed , unless and until
issues pertinent to patentability have been raised and
resolved in the course of examination and prosecution, since
otherwise  the  resultant  patent  would  not  justify  the
statutory presumption of validity (35 U.S.C. 282), nor would
it "strictly adhere" to the requirements laid down by
Congress in the 1952 Act as interpreted by the Supreme
Court. The standard to be applied in all cases is the
"preponderance of the evidence" test. In other words, an
examiner should reject a claim if, in view of the prior art
and evidence of record, it is more likely than not that the

claim is unpatentable.

  DEFECTS IN FORM OR OMISSION OF A LIMITATION; CLAIMS
  OTHERWISE ALLOWABLE

  When an application discloses patentable subject matter
and it is apparent from the claims and the applicant's
arguments that the claims are intended to be directed to
such patentable subject matter, but the claims in their
present form cannot be allowed because of defects in form or
omission of a limitation, the examiner should not stop with
a bare objection or rejection of the claims. The examiner's
action should be constructive in nature and when possible
should offer a definite suggestion for correction.

  PATENTABLE SUBJECT MATTER DISCLOSED BUT NOT CLAIMED

  If the examiner is satisfied after the search has been
completed that patentable subject matter has been disclosed
and the record indicates that the applicant intends to claim
such subject matter, he or she may note in the Office action
that certain aspects or features of the patentable invention
have not been claimed and that if properly claimed such
claims may be given favorable consideration.

  RECONSIDERATION OF CLAIMS AFTER RESPONSE BY APPLICANT

 37 CFR 1.112.  Reconsideration.

  After response by applicant or patent owner ( § 1.111),
the  application  or  patent  under  reexamination  will  be
reconsidered and again examined. The applicant or patent
owner will be notified if claims are rejected, or objections
or requirements made, in the same manner as after the first
examination. Applicant or patent owner may respond to such
Office action in the same manner provided in § 1.111, with
or without amendment. Any amendments after the second Office
action must ordinarily be restricted to the rejection or to
the objections or requirements made. The application or
patent under reexamination will be again considered, and so
on repeatedly, unless the examiner has indicated that the
action is final.

 See 37 CFR 1.112 for reexamination and reconsideration of a
patent under reexamination after responses by the patent
owner.

  REJECTIONS IN STATUTORY INVENTION REGISTRATIONS

 See MPEP Chapter 1100 for rejection of claims in an
application for a Statutory Invention Registration.

706.01  Contrasted With Objections [R - 1]

  >The refusal to grant claims because the subject matter
as  claimed  is  considered  unpatentable  is  called  a
"rejection." The term "rejected" must be applied to such
claims in the examiner's letter. If the form of the claim
(as  distinguished  from  its  substance)  is  improper,  an
"objection" is made. An example of a matter of form as to
which objection is made is dependency of a claim on a
rejected  claim,  if  the  dependent  claim  is  otherwise
allowable. See MPEP § 608.01(n). The practical difference
between a rejection and an objection is that a rejection,
involving the merits of the claim, is subject to review by

the Board of Patent Appeals and Interferences, while an
objection, if persisted, may be reviewed only by way of
petition to the Commissioner.

  Similarly, the Board will not hear or decide issues
pertaining to objections and formal matters which are not
properly before the Board. These formal matters should not
be combined in appeals to the Board.<

706.02  Rejection on Prior Art [R - 3]

 35 U.S.C. 102.  Conditions for patentability; novelty and
loss of right to patent.

 A person shall be entitled to a patent unless - -

  (a) the invention was known or used by others in this
country, or patented or described in a printed publication
in this or a foreign country, before the invention thereof
by the applicant for a patent, or

  (b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or
on sale in this country, more than one year prior to the
date of application for patent in the United States, or

  (c) he has abandoned the invention, or

  (d) the invention was first patented or caused to be
patented, or was the subject of an inventor's certificate,
by the applicant or his legal representatives or assigns in
a foreign country prior to the date of the application for
patent in this country on an application for patent or
inventor's certificate filed more than twelve months before
the filing of the application in the United States, or

  (e) the invention was described in a patent granted on an
application for patent by another filed in the United States
before the invention thereof by the applicant for patent, or
on an international application by another who has fulfilled
the requirements of paragraphs (1), (2), and (4) of section
371(c) of this title before the invention thereof by the
applicant for patent, or

  (f) he did not himself invent the subject matter sought
to be patented, or

  (g)  before  the  applicant's  invention  thereof  the
invention was made in this country by another who had not
abandoned,  suppressed,  or  concealed  it.  In  determining
priority of invention there shall be considered not only the
respective dates of conception and reduction to practice of
the invention, but also the reasonable diligence of one who
was first to conceive and last to reduce to practice, from a
time prior to conception by the other.

 35 U.S.C. 103.  Conditions for patentability; non -
obvious subject matter.

  (a) A patent may not be obtained though the invention is
not identically disclosed or described as set forth in
section 102 of this title, if the differences between the
subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been
obvious at the time the invention was made to a person

having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.

  (b)(1) Notwithstanding subsection (a), and upon timely
election by the applicant for patent to proceed under this
subsection, a biotechnological process using or resulting in
a composition of matter that is novel under section 102 and
nonobvious under subsection (a) of this section shall be
considered nonobvious if - -

  (A) claims to the process and the composition of matter
are contained in either the same application for patent or
in separate applications having the same effective filing
date; and

  (B) the composition of matter, and the process at the
time it was invented, were owned by the same person or
subject to an obligation of assignment to the same person.

  (2) A patent issued on a process under paragraph (1) - -

  (A) shall also contain the claims to the composition of
matter used in or made by that process, or

  (B) shall, if such composition of matter is claimed in
another patent, be set to expire on the same date as such
other patent, notwithstanding section 154

  (3)  For  purposes  of  paragraph  (1),  the  term
`biotechnological process' means - -

  (A)  a  process  of  genetically  altering  or  otherwise
inducing a single - or multi - celled organism to - -

  (i) express an exogenous nucleotide sequence,

  (ii) inhibit, eliminate, augment, or alter expression of
an endogenous nucleotide sequence or

  (iii) express a specific physiological characteristic not
naturally associated with said organism;

  (B) cell fusion procedures yielding a cell line that
expresses a specific protein, such as a monoclonal antibody;
and

  (C) a method of using a product produced by a process
defined by subparagraph (A) or (B), or a combination of
subparagraphs (A) and (B).

  (c) Subject matter developed by another person, which
qualifies as prior art only under subsection (f) or (g) of
section 102 of this title, shall not preclude patentability
under this section where the subject matter and the claimed
invention were, at the time the invention was made, owned by
the same person or subject to an obligation of assignment to
the same person.

  By far the most frequent ground of rejection is on the
ground of unpatentability in view of the prior art, that is,
that the claimed subject matter is either not novel under 35
U.S.C. 102, or else it is obvious under 35 U.S.C. 103. The
language  to  be  used  in  rejecting  claims  should  be
unequivocal. See MPEP § 707.07(d).

  CHOICE OF PRIOR ART; BEST AVAILABLE

  Prior art rejections should ordinarily be confined
strictly to the best available art. Exceptions may properly
be made, e.g., (1) where the propriety of a 35 U.S.C. 102 or
103 rejection depends on a particular interpretation of a
claim; (2) where a claim is met only in terms by a reference
which does not disclose the inventive concept involved; or
(3) where the most pertinent reference seems likely to be
antedated by a 37 CFR 1.131 affidavit or declaration. Such
rejections should be backed up by the best other art
rejections available. Merely cumulative rejections, i.e.,
those which would clearly fall if the primary rejection were
not sustained, should be avoided.

  See also MPEP § 707.05.

  REEXAMINATION

  For scope of rejections in reexamination proceedings see
MPEP § 2258.

  DISTINCTION BETWEEN 35 U.S.C. 102 AND 103

  The distinction between rejections based on 35 U.S.C.
102 and those based on 35 U.S.C. 103 should be kept in mind.
Under the former, the claim is anticipated by the reference.
No question of obviousness is present. In other words, for
anticipation under 35 U.S.C. 102, the reference must teach
every aspect of the claimed invention either explicitly or
impliedly.  Any  feature  not  directly  taught  must  be
inherently present. Whereas, in a rejection based on 35
U.S.C. 103, the reference teachings must somehow be modified
in order to meet the claims. The modification must be one
which would have been obvious to one of ordinary skill in
the art at the time the invention was made. See MPEP § 2131
- § 2146 for guidance on patentability determinations under
35 U.S.C. 102 and 103.

  DETERMINING THE EFFECTIVE FILING DATE OF THE APPLICATION

  (1) If  the  application  is  a  continuation  or
divisional of one or more earlier U.S. applications and if
the requirements of 35 U.S.C. 120 have been satisfied, the
effective filing date is the same as the earliest filing
date in the line of continuation or divisional applications.

  (2)  If the application is a continuation - in -
part of an earlier U.S. application, any claims in the new
application not supported by the specification and claims of
the parent application have an effective filing date equal
to the filing date of the new application. Any claims which
are fully supported under 35 U.S.C. 112 by the earlier
parent application have the effective filing date of that
earlier parent application.

  (3)  If the application claims foreign priority
under 35 U.S.C. 119(a) - (d), the effective filing date is
the filing date of the U.S. application, unless situation 1
or 2 as set forth above applies. The filing date of the
foreign priority document is not the effective filing date,
although the filing date of the foreign priority document

may be used to overcome certain references. See MPEP §
706.02(b) and § 2136.05.

  (4)  If the application is entitled to priority
under 35 U.S.C. 119(e) from a provisional application, the
effective filing date is the filing date of the provisional
application.

  >See MPEP § 1893.03(b) for determining the effective
filing date of an application filed under 35 U.S.C. 371. See
MPEP § 201.11(a) and § 1895 for determining the effective
filing date of a continuation, divisional, or continuation -
in - part of a PCT application designating the U.S. See also
MPEP § 1895.01 and § 1896 which discuss differences between
applications filed under 35 U.S.C. 111(a) and 35 U.S.C.
371.<

706.02(a)  Rejections Under 35 U.S.C. 102(a), (b), or
(e); Printed Publication or Patent [R - 1]

  >Once the examiner conducts a search and finds a printed
publication or patent which discloses the claimed invention,
the examiner should determine whether the rejection should
be made under 35 U.S.C. 102(a), (b), or (e).

  In order to determine which section of 35 U.S.C. 102
applies, the effective filing date of the application must
be determined and compared with the date of the reference.
See MPEP § 706.02 regarding determination of effective
filing date of the application.

  DETERMINING THE REFERENCE ISSUE OR PUBLICATION DATE

  The  examiner  must  also  determine  the  issue  or
publication  date  of  the  reference  so  that  a  proper
comparison between the application and reference dates can
be made. Where the last day of the year dated from the date
of publication falls on a Saturday, Sunday or Federal
holiday, the publication is not a statutory bar under 35
U.S.C. 102(b) if the application was filed on the next
succeeding business day. Ex parte Olah and Kuhn, 131 USPQ 41
(Bd. App. 1960). It should also be noted that a magazine is
effective as a printed publication under 35 U.S.C. 102(b) as
of the date it reached the addressee and not the date it was
placed in the mail.  Protein Foundation Inc. v.  Brenner,260
F. Supp. 519, 151 USPQ 561 (D.D.C. 1966). See MPEP §
707.05(f) for more information. For foreign patents see MPEP
§ 901.05. See MPEP § 2124, § 2126, and § 2128 - § 2128.02
for  case  law  holdings  in  regard  to  reference  date
determination.

  DETERMINING WHETHER TO APPLY 35 U.S.C. 102(a), (b), or (e)

  First,  the  examiner  should  consider  whether  the
reference qualifies as prior art under 35 U.S.C. 102(b)
because this section results in a statutory bar to obtaining
a patent. If the publication or issue date of the reference
is more than 1 year prior to the effective filing date of
the application (MPEP § 706.02), the reference qualifies as
prior art under 35 U.S.C. 102(b).

  If the publication or issue date of the reference is too
recent for 35 U.S.C. 102(b) to apply, then the examiner
should consider 35 U.S.C. 102(e). For section 102(e) to
apply:

  (1)  The reference must be a U.S. Patent with a
filing date earlier than the effective filing date of the
application. Note that, for purposes of 35 U.S.C. 102(e),
the filing date of the reference patent which has issued on
an application entitled to priority from a provisional
application under 35 U.S.C. 119(e) is the filing date of the
provisional application, except for a patent granted on an
international  application  (PCT)  in  which  applicant  has
fulfilled the requirements of paragraphs (1), (2) and (4) of
35 U.S.C. 371. The filing date of a patent granted on such a
35 U.S.C. 371 application is the date on which paragraphs
(1), (2) and (4) of 35 U.S.C. 371 have been fulfilled; and

  (2)  The inventive entity of the application must
be different than that of the reference. Note that, where
there  are  joint  inventors,  only  one  inventor  need  be
different for the inventive entities to be different and a
rejection under 35 U.S.C. 102(e) is applicable even if there
are some common inventors.

  If 35 U.S.C. 102(e) does not apply, then the examiner
should consider 35 U.S.C. 102(a). For section 102(a) to
apply, the reference must have a publication date earlier in
time than the effective filing date of the application, and
must not be applicant's own work.<

706.02(b)  Overcoming a 35 U.S.C. 102 Rejection Based on
a Printed Publication or Patent [R - 3]

  Rejection based on 35 U.S.C. 102(b)

  The rejection can be overcome by:

  (1) Persuasively  arguing  that  the  claims  are
patentably distinguishable from the prior art; or

  (2)  Amending the claims to patentably distinguish
over the prior art.

  Rejection based on 35 U.S.C. 102(e)

  The rejection can be overcome by:

  (1) Persuasively  arguing  that  the  claims  are
patentably distinguishable from the prior art;

  (2)  Amending the claims to patentably distinguish
over the prior art;

  (3)  Filing an affidavit or declaration under 37
CFR 1.132 showing that the reference invention is not by
"another." See MPEP § 715.01(a), § 715.01(c), and § 716.10;

  (4)  Filing an affidavit or declaration under 37
CFR 1.131 showing prior invention, if the reference is not a
U.S. patent**>(or application in the case of a provisional
rejection)<  claiming  the  same  patentable  invention  as
defined in 37 CFR 1.601(n). See MPEP § 715 for more
information on 37 CFR 1.131 affidavits. When the claims of
the reference and the application are directed to the same
invention  or  are  obvious  variants,  an  affidavit  or
declaration under 37 CFR 1.131 is not an acceptable method
of overcoming the rejection **. Under these circumstances,
the examiner must determine whether a double patenting

rejection or interference is appropriate. If there is a
common assignee or inventor between the application and
patent, a double patenting rejection must be made. See MPEP
§ 804. If there is no common assignee or inventor and the
rejection under 35 U.S.C. 102(e) is the only possible
rejection,  the  examiner  must  determine  whether  an
interference should be declared. See MPEP Chapter 2300 for
more information regarding interferences; *

  (5)  Perfecting a claim to priority under 35 U.S.C.
119(a) - (d). The foreign priority filing date must antedate
the reference and be perfected. The filing date of the
priority document is not perfected unless applicant has
filed a certified priority document in the application (and
an English language translation, if the document is not in
English) (see 37 CFR 1.55) and the examiner has established
that the priority document satisfies the enablement and
description requirements of 35 U.S.C. 112, first paragraph;
>or<

  (6)  Perfecting priority under 35 U.S.C. 119(e) by
amending the specification of the application to contain a
specific  reference  to  a  provisional  application  in
accordance with 37 CFR 1.78(a)(4).

  Rejection based on 35 U.S.C. 102(a)

  The rejection can be overcome by:

  (1) Persuasively  arguing  that  the  claims  are
patentably distinguishable from the prior art;

  (2)  Amending the claims to patentably distinguish
over the prior art;

  (3)  Filing an affidavit or declaration under 37
CFR  1.131.  See  MPEP  §  715  for  information  on  the
requirements of 37 CFR 1.131 affidavits.

  (4)  Filing an affidavit or declaration under 37
CFR 1.132 showing that the reference invention is not by
"another." See MPEP § 715.01(a), § 715.01(c), and § 716.10;

  (5)  Perfecting a claim to priority under 35 U.S.C.
119(a) - (d) as explained in reference to 35 U.S.C. 102(e)
above;

  (6)  Perfecting priority under 35 U.S.C. 119(e) by
amending the specification of the application to contain a
specific  reference  to  a  provisional  application  in
accordance with 37 CFR 1.78(a)(4).

706.02(c)  Rejections under 35 U.S.C. 102(a) or (b);
Knowledge by Others or Public Use or Sale [R - 2]

  An applicant may make an admission, or submit evidence
of sale of the invention or knowledge of the invention by
others, or the examiner may have personal knowledge that the
invention was sold by applicant or known by others in this
country. The language "in this country" means in the United
States only and does not include other WTO or NAFTA member
countries. In these cases the examiner must determine if 35
U.S.C. 102(a) or 102(b) applies. See MPEP § 2133.03 for a
discussion of case law treating the "public use" and "on
sale" statutory bars.

  If the activity is by an entity other than the inventors
or assignee, such as sale by another, manufacture by another
or disclosure of the invention by applicant to another then
both 35 U.S.C. 102(a) and (b) may be applicable. If the
evidence only points to knowledge within the year prior to
the effective filing date then 35 U.S.C. 102(a) applies.
However, no rejection under 35 U.S.C. 102(a) should be made
if there is evidence that applicant made the invention and
only disclosed it to others within the year prior to the
effective filing date.

  * 35 U.S.C. 102(b) is applicable if the activity **
occurred more than 1 year prior to the effective filing date
of the application **. See MPEP § 2133.03 for a discussion
of "on sale" and "public use" bars under 35 U.S.C. 102(b).

  Note that as an aid to resolving public use or on sale
issues, as well as to other related matters of 35 U.S.C.
102(b) activity, an applicant may be required to answer
specific questions posed by the examiner and to explain or
supplement any evidence of record. 35 U.S.C. 132, 37 CFR
1.104(b).  Regarding  reissues  see  37  CFR  1.175(b).
Information sought should be restricted to that which is
reasonably necessary for the examiner to render a decision
on patentability.

  A 1 - or 2 - month time period should be set by the
examiner for any response to the requirement, unless the
requirement is part of an Office action having a shortened
statutory period, in which case the period for response to
the Office Action will also apply to the requirement. If
applicant  fails  to  respond  in  a  timely  fashion  to  a
requirement  for  information,  the  application  will  be
regarded as abandoned, 35 U.S.C. 133. See MPEP § 2133.03.

  If there is not enough information on which to base a
public use or on sale rejection, the examiner should make a
requirement for more information. Form paragraph*>7.104< can
be used.

  An issue of public use or on sale activity has been
raised in this application. In order for the examiner to
properly consider patentability of the claimed invention
under 35 U.S.C. 102(b), additional information regarding
this issue is required as follows: [1].

  Applicant is reminded that failure to fully respond to
this requirement for information will result in a holding of
abandonment.

 Examiner Note:

  1. Information sought should be restricted to that which
is  reasonably  necessary  for  the  examiner  to  render  a
decision on patentability. See MPEP § 2133.03.

  2.  A one or two month time period should be set by the
examiner for response to the requirement unless it is part
of an Office action having an SSP, in which case the period
for response will apply also to the requirement.

  3.  If sufficient evidence already exists to establish

a prima facie case of public use or on sale, use form
paragraph 7.16 to make a rejection under 35 U.S.C. 102(b).
See MPEP § 2133.03.

706.02(d)  Rejections Under 35 U.S.C. 102(c) [R - 1]

  >Under 35 U.S.C. 102(c), abandonment of the "invention"
(as  distinguished  from  abandonment  of  an  application)
results in loss of right to a patent. See MPEP § 2134 for
case law which sets forth the criteria for abandonment under
35 U.S.C. 102(c).<

706.02(e)  Rejections Under 35 U.S.C. 102(d) [R - 1]

  >35 U.S.C. 102(d) establishes four conditions which, if
all are present, establish a statutory bar against the
granting of a patent in this country:

  (1)  The foreign application must be filed more
than 12 months before the effective filing date of the
United States application. See MPEP § 706.02 regarding
determination  of  the  effective  filing  date  of  the
application.

  (2)  The foreign and United States applications
must be filed by the same applicant, his or her legal
representatives or assigns.

  (3)  The foreign application must have actually
issued as a patent or inventor's certificate (e.g., granted
by sealing of the papers in Great Britain) before the filing
in the United States. It need not be published but the
patent rights granted must be enforceable.

  (4)  The same invention must be involved.

  If such a foreign patent or inventor's certificate is
discovered by the examiner, the rejection is made under 35
U.S.C. 102(d) on the ground of statutory bar.

  See MPEP § 2135.01 for case law which further clarifies
each of the four requirements of 35 U.S.C. 102(d).

  SEARCHING FOR 35 U.S.C. 102(d) PRIOR ART

  The examiner should only undertake a search for an
issued foreign patent for use as 35 U.S.C. 102(d) prior art
if there is a reasonable possibility that a foreign patent
covering the same subject matter as the U.S. application has
been granted to the same inventive entity before the U.S.
effective filing date, i.e., the time period between foreign
and U.S. filings is greater than the usual time it takes for
a patent to issue in the foreign country. Normally, the
probability of the inventor's foreign patent issuing before
the U.S. filing date is so slight as to make such a search
unproductive. However, it should be kept in mind that the
average pendency varies greatly between foreign countries.
In Belgium, for instance, a patent may be granted in just a
month after its filing, while in Japan the patent may not
issue for a decade.

  The search for a granted patent can be accomplished on
an electronic database either by the examiner or by the
staff of the Scientific and Technical Information Center.
See MPEP § 901.06(a) STIC SERVICES (2) for more information

on online searching. The document must be a patent or
inventor's certificate and not merely a published or laid
open application.<

706.02(f)  Provisional Rejections Under 35 U.S.C.
102(e); Reference is a Copending U.S. Patent Application [R
- 1]

  >If  a  copending  U.S.  patent  application  discloses
subject matter which would anticipate the claims in another
pending U.S. application which has a different inventive
entity, the examiner should determine whether a provisional
35 U.S.C. 102(e) rejection can be made.

 1.  Copending U.S. applications; at least one
common inventor or are commonly assigned.

  If (1) at least one common inventor exists between the
applications or the applications are commonly assigned and
(2)  the  effective  filing  dates  are  different,  then  a
provisional rejection of the later filed application should
be made. The provisional rejection is appropriate because if
the earlier filed application becomes a patent it would
constitute actual prior art under 35 U.S.C. 102. Since
neither  application  is  published  at  the  time  of  the
provisional rejection, the rejection must be made under 35
U.S.C. 102(e).

  A provisional rejection under 35 U.S.C. 102(e) can be
overcome  in  the  same  manner  that  a  35  U.S.C.  102(e)
rejection  can  be  overcome.  See  MPEP  §  706.02(b).  The
provisional rejection can also be overcome by abandoning the
applications and filing a new application containing the
subject matter of both.

  Form paragraph 7.15.01 should be used when making a
provisional rejection under 35 U.S.C. 102(e).

¶ 7.15.01  Provisional Rejection, 35 U.S.C. 102(e) -
Common Assignee or At Least One Common Inventor

  Claim[1] provisionally rejected under 35 U.S.C. 102(e)
as being anticipated by copending application no. [2] which
has a common [3] with the instant application.

  Based upon the earlier effective U.S. filing date of the
copending application, it would constitute prior art under
35 U.S.C. 102(e) if patented. This provisional rejection
under 35 U.S.C. 102(e) is based upon a presumption of future
patenting of the copending applica- tion. [4].

  This provisional rejection under 35 U.S.C. 102(e) might
be overcome either by a showing under 37 CFR 1.132 that any
invention  disclosed  but  not  claimed  in  the  copending
application  was  derived  from  the  inventor  of  this
application and is thus not the invention "by another," or
by an appropriate showing under 37 CFR 1.131.

  This rejection may not be overcome by the filing of a
terminal disclaimer. See  In re Bartfeld , 17 USPQ2d 1885
(Fed. Cir. 1991).

 Examiner Note:

  1.  This paragraph is used to provisionally reject over

a copending application with an earlier filing date that
discloses the claimed invention. The copending application
must have either a common assignee or at least one common
inventor.

  2.  If the claims are obvious over the invention
disclosed in the other copending application, use paragraph
7.21.01.

  3.  In  bracket  3,  insert  either  "assignee"  or
"inventor."

  4.  In bracket 4, an appropriate explanation may be
provided  in  support  of  the  Examiner's  position  on
anticipation, if necessary.

  5.  If the claims of the copending application conflict
with the claims of the instant application, a provisional
double  patenting  rejection  should  also  be  given  using
paragraphs 8.30 and 8.32.

  6.  If evidence is additionally of record to show that
either invention is prior art unto the other under 35 U.S.C.
102(f) or (g), a rejection using paragraphs 7.13 and/or 7.14
should also be made.

 2.  Copending applications; no common inventor or
assignee.

  If there is no common assignee or common inventor, the
confidential status of applications under 35 U.S.C. 122 must
be maintained and no rejection can be made relying on the
earlier filed application as prior art under 35 U.S.C.
102(e). If the filing dates of the applications are within 6
months of each other (3 months for simple subject matter)
then interference may be proper. See MPEP Chapter 2300.
Otherwise, the application with the earliest effective U.S.
filing date must be allowed to issue. After the allowed
application is published, it can be used as a reference in a
rejection under 35 U.S.C. 102(e) in the still pending
application.<

706.02(g)  Rejections Under 35 U.S.C. 102(f) [R - 1]

  >35 U.S.C. 102(f) bars the issuance of a patent where an
applicant did not invent the subject matter being claimed
and sought to be patented. See also, 35 U.S.C. 101, which
requires that whoever invents or discovers is the party who
may  obtain  a  patent  for  the  particular  invention  or
discovery. The examiner must presume the applicants are the
proper inventors unless there is proof that another made the
invention and that applicant derived the invention from the
true inventor.

  See MPEP § 2137 - § 2137.02 for more information on the
substantive  requirements  of  rejections  under  35  U.S.C.
102(f).<

706.02(h)  Rejections Under 35 U.S.C. 102(g) [R - 1]

  >35 U.S.C. 102(g) bars the issuance of a patent where
another made the invention in the United States before
applicant and had not abandoned, suppressed, or concealed
it. This section of 35 U.S.C. 102 forms a basis for
interference  practice.  See  MPEP  Chapter  2300  for  more

information on interference procedure. See MPEP § 2138 - §
2138.07 for more information on the requirements of 35
U.S.C. 102(g).<

706.02(i)  Form paragraphs for Use in Rejections Under
35 U.S.C. 102 [R - 2]

  The following form paragraphs should be used in making
the appropriate rejections.

  Note that the particular of the refence relied upon to
support the rejection should be identified.

¶ 7.07  Statement of Statutory Basis, 35 U.S.C. 102

  The  following  is  a  quotation  of  the  appropriate
paragraphs of 35 U.S.C. 102 that form the basis for the
rejections under this section made in this Office action:

  A person shall be entitled to a patent unless-

 Examiner Note:

  1.  The statute is no longer being *>recited< in all
Office actions. It is only required in first actions on the
merits and final rejections. Where the statute is not being
cited in an action on the merits, use paragraph*>7.103<.

  2.  Paragraphs 7.07 to 7.14 are to be used ONLY ONCE in
a given Office action.

¶  7.08  102(a), Activity by Another Before Invention
by Applicant

  (a) the invention was known or used by others in this
country, or patented or described in a printed publication
in this or a foreign country, before the invention thereof
by the applicant for a patent.

 Examiner Note:

  This paragraph must be preceded by paragraph 7.07.

¶ 7.09  102(b), Activity More Than One Year Prior to filing

  (b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or
on sale in this country, more than one year prior to the
date of application for patent in the United States.

 Examiner Note:

  This paragraph must be preceded by paragraph 7.07, and
may be preceded by paragraph 7.08.

¶ 7.10  102(c), Invention Abandoned

  (c) he has abandoned the invention.

 Examiner Note:

  This paragraph must be preceded by paragraph 7.07, and
may be preceded by one or more of paragraphs 7.08 and 7.09.

¶ 7.11  102(d), Foreign Patenting

  (d) the invention was first patented or caused to be
patented, or was the subject of an inventor's certificate,
by the applicant or his legal representatives or assigns in
a foreign country prior to the date of the application for
patent in this country on an application for patent or
inventor's certificate filed more than twelve months before
the filing of the application in the United States.

 Examiner Note:

  This paragraph must be preceded by paragraph 7.07, and
may be preceded by one or more of paragraphs 7.08 to 7.10.

¶ 7.12  102(e), Patent to Another With Earlier Filing Date

  (e) the invention was described in a patent granted on an
application for patent by another filed in the United States
before the invention thereof by the applicant for patent, or
on an international application by another who has fulfilled
the requirements of paragraphs (1), (2), and (4) of section
371(c) of this title before the invention thereof by the
applicant for patent.

 Examiner Note:

  This paragraph must be preceded by paragraph 7.07, and
may be preceded by one or more of paragraphs 7.08 to 7.11.

¶ 7.13  102(f), Applicant not the Inventor

  (f) he did not himself invent the subject matter sought
to be patented.

 Examiner Note:

  This paragraph must be preceded by paragraph 7.07, and
may be preceded by one or more of paragraphs 7.08 to 7.12.

¶ 7.14  102(g), Priority of Invention

  (g)  before  the  applicant's  invention  thereof  the
invention was made in this country by another who had not
abandoned,  suppressed,  or  concealed  it.  In  determining
priority of invention there shall be considered not only the
respective dates of conception and reduction to practice of
the invention, but also the reasonable diligence of one who
was first to conceive and last to reduce to practice, from a
time prior to conception by the other.

 Examiner Note:

  This paragraph must be preceded by paragraph 7.07 and
may be preceded by one or more of paragraphs 7.08 to 7.12.

¶ 7.15  Rejection,  35  U.S.C.  102(a),  (b)  Patent  or
Publication, and (g)

  Claim [1] rejected under 35 U.S.C. 102 ([2]) as being
[3] by [4]. *

 Examiner Note:

  1.  In bracket 2, insert the appropriate paragraph
letter or letters of 35 U.S.C. >.< 102 in parentheses. If

paragraph (e) of 35 U.S.C. 102 is applicable, use form
paragraph 7.15.02.

  2.  In  bracket  3,  insert  either  **  "clearly
anticipated" >or "anticipated" with an explanation at the
end of the paragraph< .

  3.  In bracket 4, insert the prior art relied upon.

  **

  *>4.< This rejection must be preceded either by paragraph
7.07 and paragraphs 7.08, 7.09, and 7.14 as appropriate, or
by paragraph*>7.103<.

  *>5.< If 35 U.S.C. 102(e) is also being applied, this
paragraph must be followed by either form paragraph 7.15.02
or 7.15.03.

¶ 7.15.01  Provisional Rejection, 35 U.S.C. 102(e) -
Common Assignee or At Least One Common Inventor

  Claim[1] provisionally rejected under 35 U.S.C. 102(e)
as being anticipated by copending application no. [2] which
has a common [3] with the instant application.

  Based upon the earlier effective U.S. filing date of the
copending application, it would constitute prior art under
35 U.S.C. 102(e) if patented. This provisional rejection
under 35 U.S.C. 102(e) is based upon a presumption of future
patenting of the copending application. [4].

  This provisional rejection under Section 102(e) might be
overcome either by a showing under 37 CFR 1.132 that any
invention  disclosed  but  not  claimed  in  the  copending
application  was  derived  from  the  inventor  of  this
application and is thus not the invention "by another," or
by an appropriate showing under 37 CFR 1.131.

  This rejection may not be overcome by the filing of a
terminal disclaimer. See  In re Bartfeld , 17 USPQ2d 1885
(Fed. Cir. 1991).

 Examiner Note:

  1.  This paragraph is used to provisionally reject over
a copending application with an earlier filing date that
discloses the claimed invention. The copending application
must have either a common assignee or at least one common
inventor.

  2.  If the claims are obvious over the invention
disclosed in the other copending application, use paragraph
7.21.01.

  3.  In  bracket  3,  insert  either  "assignee"  or
"inventor."

  4.  In bracket 4, an appropriate explanation may be
provided  in  support  of  the  Examiner's  position  on
anticipation, if necessary.

  5.  If the claims of the copending application conflict
with the claims of the instant application, a provisional
double  patenting  rejection  should  also  be  given  using

paragraphs 8.30 and 8.32.

  6.  If evidence is additionally of record to show that
either invention is prior art unto the other under 35 U.S.C.
102(f) or (g), a rejection using paragraphs 7.13 and/or 7.14
should also be made.

¶ 7.15.02  Rejection, 35 U.S.C. 102(e), Common Assignee
or Inventor(s)

  Claim[1] rejected under 35 U.S.C. 102(e) as being
anticipated by [2].

  The applied reference has a common [3] with the instant
application. Based upon the earlier effective U.S. filing
date of the reference, it constitutes prior art under 35
U.S.C. 102(e). This rejection under 35 U.S.C. 102(e) might
be overcome either by a showing under 37 CFR 1.132 that any
invention disclosed but not claimed in the reference was
derived from the inventor of this application and is thus
not the invention "by another," or by an appropriate showing
under 37 CFR 1.131.

 Examiner Note:

  1.  This paragraph is used to reject over a patent with
an earlier filing date that discloses but does not claim the
same  invention.  The  patent  must  have  either  a  common
assignee or a common inventor.

  2.  In  bracket  3,  insert  either  "assignee"  or
"inventor."

¶ 7.15.03  Rejection,  35  U.S.C.  102(e),  No  Common
Assignee or Inventor(s)

  Claim[1] rejected under 35 U.S.C. 102(e) as being *>[2]<
by *>[3]<.

 Examiner Note:

  >1.< This paragraph is used to reject over a patent with
an earlier filing date that discloses but does not claim the
same invention. The patent must have neither a common
assignee nor a common inventor.

  >In bracket 2, insert either "clearly anticipated" or
"anticipated"  with  an  explanation  at  the  end  of  the
paragraph.

  In bracket 3, insert the prior art relied upon.<

¶ 7.16  Rejection, 35 U.S.C. 102(b), Public use or on Sale

  Claim[1] rejected under 35 U.S.C. 102(b) based upon a
public use or sale of the invention. [2].

 Examiner Note:

  1.  This  paragraph  must  be  preceded  either  by
paragraphs 7.07 and 7.09 or by paragraph*>7.103.<

  2.  A full explanation of the evidence establishing a
public use or sale must be provided in bracket 2.

¶ 7.17  Rejection,  35  U.S.C.  102(c),  Abandonment  of
Invention

  Claim[1] rejected under 35 U.S.C. 102(c) because the
invention has been abandoned. [2].

 Examiner Note:

  1.  This paragraph must be preceded either by paragraph
7.07 and 7.10 or by paragraph*>7.103.<

  2.  In bracket 2, insert a full explanation of the
evidence establishing abandonment of the invention. See MPEP
§ 2134.

¶ 7.18  Rejection, 35 U.S.C. 102(d), Foreign Patenting

  Claim [1] rejected under 35 U.S.C. 102(d) as being
barred by applicant's [2]. [3].

 Examiner Note:

  1.  This  paragraph  must  be  preceded  either  by
paragraphs 7.07 and 7.11 or by paragraph*>7.103.<

  2.  In  bracket  3,  insert  an  explanation  of  this
rejection which must include appropriate dates and how they
make the foreign patent available under 35 U.S.C. 102(d).

  3.  Refer to MPEP § 2135 for applicable 102(d) prior
art.

¶ 7.19  Rejection, 35 U.S.C. 102(f), Applicant not the
Inventor

 Claim [1] rejected under 35 U.S.C. 102(f) because the
applicant did not invent the claimed subject matter. [2].

 Examiner Note:

  1.  This  paragraph  must  be  preceded  either  by
paragraphs 7.07 and 7.13 or by paragraph*>7.103.<

  2.  In  bracket  2,  insert  an  explanation  of  the
supporting evidence  establishing that applicant was not
the inventor.

706.02(j)  Contents of a 35 U.S.C. 103 Rejection [R - 2]

  35 U.S.C. 103 authorizes a rejection where to meet the
claim, it is necessary to modify a single reference or to
combine  it  with  one  or  more  other  references.  After
indicating that the rejection is under 35 U.S.C. 103, the
examiner should set forth in the Office action (1) the
relevant teachings of the prior art relied upon, preferably
with reference to the relevant column or page number(s) and
line number(s) where appropriate, (2) the difference or
differences in the claim over the applied reference(s), (3)
the  proposed  modification  of  the  applied  reference(s)
necessary to arrive at the claimed subject matter, and (4)
an explanation why **>one of ordinary skill in the art at
the time the invention was made would have been motivated to
make the proposed modification<.

  To establish a prima facie case of obviousness, three

basic criteria must be met. First, there must be some
suggestion  or  motivation,  either  in  the  references
themselves or in the knowledge generally available to one of
ordinary skill in the art, to modify the reference or to
combine  reference  teachings.  Second,  there  must  be  a
reasonable expectation of success. Finally, the prior art
reference  (or  references  when  combined)  must  teach  or
suggest  all  the  claim  limitations.  The  teaching  or
suggestion  to  make  the  claimed  combination  and  the
reasonable expectation of success must both be found in the
prior art, and not based on applicant's disclosure.  In re
Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991). See
MPEP § 2143 - § 2143.03 for decisions pertinent to each of
these criteria.

  The initial burden is on the examiner to provide some
suggestion of the desirability of doing what the inventor
has done. "To support the conclusion that the claimed
invention is directed to obvious subject matter, either the
references must expressly or impliedly suggest the claimed
invention or the examiner must present a convincing line of
reasoning as to why the artisan would have found the claimed
invention to have been obvious in light of the teachings of
the references." Ex parte Clapp , 227 USPQ 972, 973 (Bd.
Pat. App. & Inter. 1985). See MPEP § 2144 - § 2144.09 for
examples of reasoning supporting obviousness rejections.

  Where a reference is relied on to support a rejection,
whether or not in a minor capacity, that reference should be
positively included in the statement of the rejection. See
In re Hoch, ** 428 F.2d 1341, 166 USPQ 406, *>n.< 3
(>CCPA<1970).

  It is important for an examiner to properly communicate
the basis for a rejection so that the issues can be
identified  early  and  the  applicant  can  be  given  fair
opportunity  to  respond.  Furthermore,  if  an  initially
rejected application issues as a patent, the rationale
behind an earlier rejection may be important in interpreting
the scope of the patent claims. Since issued patents are
presumed valid (35 U.S.C. 282) and constitute a property
right (35 U.S.C. 261), the written record must be clear as
to the basis for the grant. Since patent examiners cannot
normally  be  compelled  to  testify  in  legal  proceedings
regarding their mental processes (see MPEP § 1701.01), it is
important  that  the  written  record  clearly  explain  the
rationale for decisions made during prosecution of the
application.

  See MPEP § 2141 - § 2144.09 generally for guidance on
patentability determinations under 35 U.S.C. 103, including
a discussion of the requirements of Graham v  . John Deere ,
383 U.S. 1, 148 USPQ 459 (1966). See MPEP § 2145 for
consideration of applicant's rebuttal arguments. See MPEP §
706.02(l) for a discussion of ** 35 U.S.C. 103>(c)<.

706.02(k)  Provisional Rejection (Obviousness) Under 35
U.S.C. 102(e) / 103 [R - 3]

  Where two applications of different inventive entities
are copending and the filing dates differ, a provisional
rejection under 35 U.S.C. 102(e) / 103 should be made in the
later filed application if the applications have a common
assignee or a common inventor. Otherwise the confidential
status  of  applications  under  35  U.S.C.  122  must  be

maintained. Such a rejection alerts the applicant that he or
she can expect an actual rejection on the same ground if one
of the applications issues and also lets applicant know that
action must be taken to avoid the rejection.

  This gives applicant the opportunity to analyze the
propriety of the rejection and possibly avoid the loss of
rights to desired subject matter. Provisional rejections of
the obviousness type under 35 U.S.C. 102(e) / 103 are
rejections  applied  to  copending  applications  having
different effective filing dates wherein each application
has a common assignee or a common inventor. The earlier
filed application, if patented, would constitute prior art
under 35 U.S.C. 102(e). The rejection can be overcome by:

  (1)  arguing patentability over the earlier filed
application;

  (2)  combining the subject matter of the copending
applications into a single application claiming benefit
under 35 U.S.C. 120 of the prior applications and abandoning
the  copending  applications>(Note  that  a  claim  in  a
subsequently filed application that relies on a combination
of prior applications may not be entitled to the benefit of
an earlier filing date under 35 U.S.C. 120 since 35 U.S.C.
120 requires that the earlier filed application contain a
disclosure  which  complies  with  35  U.S.C.  112,  first
paragraph  for  each  claim  in  the  subsequently  filed
application. Studiengesellschaft Kohle m.b.H. v.  Shell Oil
Co. , 112 F.3d 1561, 42 USPQ2d 1674 (Fed. Cir. 1997).)< ;

  (3)  filing an affidavit or declaration under 37
CFR 1.132 showing that any unclaimed invention disclosed in
the copending application was derived from the inventor of
the other application and is thus not invention "by another"
(see MPEP § 715.01(a), § 715.01(c), and § 716.10); or

  (4)  filing an affidavit or declaration under 37
CFR 1.131 showing a date of invention prior to the effective
U.S. filing date of the copending application. Where the
applications are claiming the same patentable invention, >a
terminal disclaimer and< an affidavit or declaration under
37 CFR*>1.130< may be used to overcome a rejection under 35
U.S.C. ** 103 ** in a common ownership situation >if the
earlier filed application has matured into a patent<. See
MPEP § 715 >and § 718<.

  If a provisional rejection is made and the copending
applications are combined into a single application and the
resulting single application is subject to a restriction
requirement, the divisional application would not be subject
to provisional or actual rejection under 35 U.S.C. 102(e) /
103 since the provisions of 35 U.S.C. 121 preclude the use
of a patent issuing therefrom as a reference against the
other application. Additionally, the resulting continuation
- in - part is entitled to 35 U.S.C. 120 benefit of each of
the prior applications. This is illustrated in Example 2,
below.

  The examples below are instructive as to the application
of 35 U.S.C. 102(e) / 103 :

  Example 1

 Assumption: Employees A and B work for C, each with

knowledge of the other's work, and with obligation to assign
inventions to C while employed.

 **  Double Click here to see the image  **

 In situation (2.) above, the result is a provisional
rejection by the examiner under 35 U.S.C. 102(e) / 103. The
rejection is provisional since the subject matter and the
prior art are pending applications.

  Example 2

 Assumption: Employees A and B work for C, each with
knowledge of the other's work, and with obligation to assign
inventions to C while employed

 **  Double Click here to see the image  **

  Statement of Principle:

  The disclosure of an earlier filed patent application
which issues as a patent continues to be prior art under 35
U.S.C. 102(e) against a later invented and filed application
of another inventor even though the patent and the later
invention were owned by, or subject to, an obligation of
assignment  to  the  same  person  at  the  time  the  later
invention was made.

  Examination of Applications of Different Inventive
Entities Where Common Ownership Is Established

  See MPEP § 706.02(l) for examination of applications of
different inventive entities where common ownership has not
been established.

  Once the examiner checks the applications and it is
established from the record that common ownership existed at
the time the later invention was made, he or she should:

  (1)  examine the applications as to all grounds
except 35 U.S.C. 102(f) and (g) as they apply through 35
U.S.C. 103,

  (2)  examine the applications for double patenting,
including double patenting of the obviousness type, and make
a provisional double patenting rejection, if appropriate
(See In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976)),

  (3)  examine the later filed application under 35
U.S.C. 102(e) as it applies through 35 U.S.C. 103 and make a
provisional rejection under 35 U.S.C. 102(e) / 35 U.S.C. 103
in the later filed application, if appropriate, and

  (4) permit  the  applicant  of  the  later  filed
application to file an affidavit or declaration under 37 CFR
1.131, **>or a terminal disclaimer and an affidavit or
declaration under 37 CFR 1.130< if the same patentable
invention is being claimed (see MPEP > § < 715.05 >and §
718<), or an affidavit or declaration under 37 CFR 1.132
showing the invention is not "by another," to overcome the
provisional or actual 35 U.S.C. 102(e) / 35 U.S.C. 103
rejection, if appropriate, and a terminal disclaimer to
overcome the provisional or actual rejection on double

patenting  of  the  obviousness  type.  >An  affidavit  or
declaration under 37 CFR 1.130 cannot be used to overcome a
provisional 35 U.S.C. 102(e) / 103 rejection. See MPEP §
718.<

  The practice of rejecting claims on the ground of double
patenting  in  commonly  owned  applications  of  different
inventive entities is in accordance with existing case law
and prevents an organization from obtaining two or more
patents with different expiration dates covering nearly
identical subject matter. See MPEP Chapter 800 for guidance
on double patenting issues. In accordance with established
patent law doctrines, double patenting rejections can be
overcome in certain circumstances by disclaiming, pursuant
to the existing provisions of 37 CFR 1.321, the terminal
portion of the term of the later patent and including in the
disclaimer a provision that the patent shall be enforceable
only for and during the period the patent is commonly owned
with the application or patent which formed the basis for
the rejection, thereby eliminating the problem of extending
patent life.

 The example below is illustrative:

 ASSUMPTION: Employees A and B work for C, each with
knowledge of the other's work, and with obligation to assign
inventions to C while employed:

 **  Double Click here to see the image  **

  Examination of Continuing Application Commonly Owned
With Abandoned Parent Application to Which Benefit Is
Claimed Under 35 U.S.C. 120

  An application claiming the benefit of a prior filed
copending national or international application under 35
U.S.C. 120 must name as an inventor at least one inventor
named in the prior filed application. The prior filed
application  must  also  disclose  the  named  inventor's
invention claimed in at least one claim of the later filed
application in the manner provided by the first paragraph of
35 U.S.C. 112. This practice contrasts with the practice in
effect prior to November 8, 1984 (the date of enactment of
Public Law 98 - 622) where the inventorship entity in each
of the applications was required to be the same for benefit
under 35 U.S.C. 120.

  So long as the applications have at least one inventor
in common and the other requirements are met, the Office
will permit a claim for 35 U.S.C. 120 benefit without any
additional  submissions  or  notifications  from  applicants
regarding inventorship differences.

  In addition to the normal examination conducted by the
examiner,  he  or  she  must  examine  the  earlier  filed
application  to  determine  if  the  earlier  and  later
applications have at least one inventor in common and that
the other 35 U.S.C. 120 requirements are met. The claim for
35 U.S.C. 120 benefit will be permitted without examination
of the earlier application for disclosure and support of at
least one claim of the later filed application under 35
U.S.C. 112, first paragraph unless it becomes necessary to
do so, for example, because of an intervening reference.

  Examination of Commonly Owned Pending Applications
Having Different Inventive Entities Claiming Benefit Under
35 U.S.C. 120

  See MPEP § 706.02(l) for examination of applications of
different inventive entities where common ownership is not
established.

  Commonly  owned  applications  of  different  inventive
entities may be rejected on the ground of double patenting.
Despite the fact that a later filed application claims 35
U.S.C. 120 benefit to an earlier application, a double
patenting rejection may also be appropriate so long as at
least one inventor is common to each application. The
rejection  based  on  a  pending  application  would  be  a
provisional rejection since no patent has issued.

  If the applications are commonly owned, a rejection of
the applications on the ground of double patenting can be
overcome by an appropriate terminal disclaimer as long as
the identical invention is not being claimed. See In re
Robeson , 331 F.2d 610, 141 USPQ 485 (CCPA 1964) and  In re
Kaye,332 F.2d 816, 141 USPQ 829 (CCPA 1964).

 The following example is illustrative:

  ASSUMPTION: Employees A and B work for C, each with
knowledge of the other's work, and with obligation to assign
inventions to C while employed.

 **  Double Click here to see the image  **

706.02(l)  Rejections Under 35 U.S.C. 102(f) / 103 and
35 U.S.C. 102(g) / 103 ; ** 35 U.S.C. 103>(c)< [R - 2]

 37 CFR 1.106. Rejection of Claims

  (a) If the invention is not considered patentable, or not
considered patentable as claimed, the claims, or those
considered unpatentable will be rejected.

  (b) In rejecting claims for want of novelty or for
obviousness, the examiner must cite the best references at
his command. When a reference is complex or shows or
describes  inventions  other  than  that  claimed  by  the
applicant, the particular part relied on must be designated
as nearly as practicable. The pertinence of each reference,
if not apparent, must be clearly explained and each rejected
claim specified.

  (c) In rejecting claims the examiner may rely upon
admissions by the applicant, or the patent owner in a
reexamination  proceeding,  as  to  any  matter  affecting
patentability and, insofar as rejections in applications are
concerned, may also rely upon facts within his or her
knowledge pursuant to § 1.107.

  (d) Subject matter which is developed by another person
which qualifies as prior art only under 35 U.S.C. 102(f) or
(g) may be used as prior art under 35 U.S.C. 103 against a
claimed invention unless the entire rights to the subject
matter and the claimed invention were commonly owned by the
same person or organization or subject to an obligation of
assignment to the same person or organization at the time

the claimed invention was made.

  (e) The claims in any original application naming an
inventor will be rejected as being precluded by a waiver in
a published statutory invention registration naming that
inventor if the same subject matter is claimed in the
application and the statutory invention registration. The
claims in any reissue application naming an inventor will be
rejected as being precluded by a waiver in a published
statutory invention registration naming that inventor if the
reissue application seeks to claim subject matter (1) which
was not covered by claims issued in the patent prior to the
date of publication of the statutory invention registration
and (2) which was the same subject matter waived in the
statutory invention registration.

  37 CFR 1.106 basically reiterates the requirements of **
35  U.S.C.  103>(c)<  which  provides  that  subject  matter
developed by another which qualifies as "prior art" only
under subsections 35 U.S.C. 102(f) or 35 U.S.C. 102(g) is
not to be considered when determining whether an invention
sought to be patented is obvious under 35 U.S.C. 103,
provided the subject matter and the claimed invention were
commonly owned at the time the invention was made. Note that
if the prior art is published and the inventive entity is
not identical then 35 U.S.C. 102(e) / 103 will apply and the
prior art will not be disqualified under 35 U.S.C. 103>(c)<
**.

  The subject matter that is disqualified as prior art
under 35 U.S.C. 103 is strictly limited to subject matter
that qualifies as prior art only under 35 U.S.C. 102(f) or
35 U.S.C. 102(g). If the subject matter qualifies as prior
art under any other subsection (e.g., subsection 35 U.S.C.
102(a), 35 U.S.C. 102(b), or 35 U.S.C. 102(e)) it will not
be disqualified as prior art under 35 U.S.C. 103>(c)< **.

  It is important to recognize that ** 35 U.S.C. 103>(c)<
applies only to consideration of prior art for purposes of
obviousness under 35 U.S.C. 103. It does not apply to or
affect subject matter which qualifies as prior art under 35
U.S.C. 102. A patent applicant urging that subject matter is
disqualified has the burden of establishing that it was
commonly owned at the time the claimed invention was made.
Absent proper evidence of common ownership at the time the
later invention was made, the appropriate rejection under 35
U.S.C. 102(f) or 35 U.S.C. 102(g) as it applies through 35
U.S.C. 103 should be made.

  Information learned from or transmitted to persons
outside the organization is not disqualified as prior art.
The term "subject matter" will be construed broadly, in the
same manner the term is construed in the remainder of 35
U.S.C. 103. The term "another" as used in 35 U.S.C. 103
means any inventive entity other than the inventor and would
include  the  inventor  and  any  other  persons.  The  term
"developed" is to be read broadly and is not limited by the
manner in which the development occurred. The term "commonly
owned" means wholly owned by the same person, persons, or
organization at the time the invention was made.

  Inventors of subject matter not commonly owned at the
time of the invention, but currently commonly owned, may
file as joint inventors in a single application. However,
the claims in such an application are not protected from a

35 U.S.C. 102(f) / 103 or 35 U.S.C. 102(g) / 103 rejection.
Applicants in such cases have an obligation pursuant to 37
CFR 1.56 to point out the inventor and invention dates of
each claim and the lack of common ownership at the time the
later invention was made to enable the examiner to consider
the applicability of a 35 U.S.C. 102(f) / 103 or 35 U.S.C.
102(g) / 103 rejection. The examiner will assume, unless
there is evidence to the contrary, that applicants are
complying with their duty of disclosure.

  Foreign applicants will sometimes combine the subject
matter of two or more related applications with different
inventors  into  a  single  U.S.  application  naming  joint
inventors. The examiner will make the assumption, absent
contrary evidence, that the applicants are complying with
their duty of disclosure if no information is provided
relative to invention dates and common ownership at the time
the later invention was made. Such a claim for 35 U.S.C.
119(a)  -  (d)  benefit  based  upon  the  foreign  filed
applications is appropriate and 35 U.S.C. 119(a) - (d)
benefit can be accorded based upon each of the foreign filed
applications.

 1. Definition of Common Ownership

  In order to be disqualified as prior art under 35 U.S.C.
103>(c)< **, the subject matter which would otherwise be
prior art to the claimed invention and the claimed invention
must be commonly owned at the time the claimed invention was
made.

  The term "commonly owned" is intended to mean that the
subject matter which would otherwise be prior art to the
claimed invention and the claimed invention are entirely or
wholly owned by the same person, persons, or organization at
the time the claimed invention was made. If the person,
persons, or organization owned less than 100 percent of the
subject matter which would otherwise be prior art to the
claimed invention, or less than 100 percent of the claimed
invention, then common ownership would not exist. Common
ownership requires that the person, persons, or organization
own 100 percent of the subject matter and 100 percent of the
claimed invention. As long as principal ownership rights to
either the subject matter or the claimed invention reside in
different persons or organizations common ownership does not
exist. A license of the claimed invention to another by the
owner where basic ownership rights are retained would not
defeat ownership.

  The requirement for common ownership at the time the
claimed invention was made is intended to preclude obtaining
ownership of subject matter after the claimed invention was
made in order to disqualify that subject matter as prior art
against the claimed invention.

  The question of whether common ownership exists at the
time the claimed invention was made is to be determined on
the  facts  of  the  particular  case  in  question.  Actual
ownership of the subject matter and the claimed invention by
the same individual or organization or a legal obligation to
assign both the subject matter and the claimed invention to
the same individual or organization must be in existence at
the time the claimed invention was made in order for the
subject matter to be disqualified as prior art. A moral or
unenforceable  obligation  would  not  evidence  common

ownership.

  Under 35 U.S.C. 103>(c)<**, an applicant's admission
that subject matter was developed prior to applicant's
invention would not make the subject matter prior art to
applicant if the subject matter qualifies as prior art only
under sections 35 U.S.C. 102(f) or 35 U.S.C. 102(g), and if
the subject matter and the claimed invention were commonly
owned at the time the invention was made. See In re Fout ,
675 F.2d 297, 213 USPQ 532 (CCPA 1982), for a decision
involving an applicants' admission which was used as prior
art against their application. If the subject matter and
invention were not commonly owned, an admission that the
subject matter is prior art would be usable under 35 U.S.C.
103.

  The burden of establishing that subject matter is
disqualified as prior art under**>35 U.S.C. 103(c)< is
intended to be placed and reside upon the person or persons
urging that the subject matter is disqualified. For example,
a  patent  applicant  urging  that  subject  matter  is
disqualified as prior art under 35 U.S.C. 103>(c)<**, would
have the burden of establishing that it was commonly owned
at the time the claimed invention was made. The patentee in
litigation would likewise properly bear the same burden
placed upon the applicant before the Patent and Trademark
Office. To place the burden upon the patent examiner or the
defendant in litigation would not be appropriate since
evidence as to common ownership at the time the claimed
invention was made might not be available to the patent
examiner or the defendant in litigation, but such evidence,
if it exists, should be readily available to the patent
applicant or the patentee.

  In view of 35 U.S.C. 103>(c)<**, the Commissioner has
reinstituted in appropriate circumstances the practice of
rejecting claims in commonly owned applications of different
inventive entities on the grounds of double patenting. Such
rejections can be overcome in appropriate circumstances by
the filing of terminal disclaimers. This practice has been
judicially authorized. See In re Bowers , 359 F.2d 886, 149
USPQ 57 (CCPA 1966). The use of double patenting rejections
which  then  could  be  overcome  by  terminal  disclaimers
preclude patent protection from being improperly extended
while still permitting inventors and their assignees to
obtain the legitimate benefits from their contributions.

  The following examples are provided for illustration
only:

  - Ownership of both inventions must be 100% the same

  - Parent Company owns 100% of Subsidiaries A and B

  - inventions of A and B are commonly owned.

  - Parent Company owns 100% of Subsidiary A and 90% of
subsidiary B

  - inventions of A and B not commonly owned.

  - If same person owns subject matter and invention at
time invention was made, license to another may be made
without the subject matter becoming prior art.

  -  Different  Government  inventors  retaining  certain
rights (e.g. foreign filing rights) in separate inventions
owned  by  Government  precludes  common  ownership  of
inventions.

  - Joint Venture

  Situation

  *  Company A and Company B form Joint Venture Company
C. Employees of A while working for C with an obligation to
assign inventions to C, invent invention #1, Employees of B
while working for C with an obligation to assign inventions
to C, invent invention #2, with knowledge of #1.

  Question: Are #1 and #2 commonly owned at the time
the later invention was made so as to preclude a rejection
under 35 U.S.C. 102(f) or (g) in view of 35 U.S.C. 103?

  Answer: Yes - An official of company C can sign an
affidavit that C owned both inventions.

  The examiner must examine the application as to all
grounds except 35 U.S.C. 102(f) and (g) as they apply
through 35 U.S.C. 103 only if the application file(s)
establishes common ownership at the time the later invention
was made. Thus, it is necessary to look to the time at which
common ownership exists. If common ownership does not exist
at the time the later invention was made, the earlier
invention is not disqualified as potential prior art under
35 U.S.C. 102>(f)< and (g) as they apply through 35 U.S.C.
103. An invention is *>"< made" when conception is complete
as defined in Mergenthaler  v.  Scudder,  II App. D.C. 264,
1897 C.D. 724 (D.C. Cir. 1897);  In re Tansel,253 F.2d 241,
117 USPQ 188 (CCPA 1958). Common ownership at the time the
invention was made for purposes of obviating a 35 U.S.C.
102(f) / 35 U.S.C. 103 or 35 U.S.C. 102(g) / 35 U.S.C. 103
rejection may be established irrespective of whether the
invention was made in the United States or abroad. The
provisions of 35 U.S.C. 104, however, will continue to apply
to other proceedings in the Patent and Trademark Office,
e.g.  in  an  interference  proceeding,  with  regard  to
establishing  a  date  of  invention  by  knowledge  or  use
thereof, or other activity with respect thereto, in a
foreign country. The foreign filing date will continue to be
used for interference purposes under 35 U.S.C. 119(a) - (d)
and 35 U.S.C. 365.

 2.  Evidence  Required  to  Establish  Common
Ownership

  It is important to recognize just what constitutes
sufficient evidence to establish common ownership at the
time the invention was made. The common ownership must be
shown to exist at the time the later invention was made. A
statement of present common ownership is not sufficient. In
re Onda, 229 USPQ 235 (Comm'r Pat. 1985).

  **>NATURE OF THE SHOWING<

 37 CFR 1.104. Nature of examination; examiner's action.

  *****

  (e) Co - pending applications will be considered by the

examiner to be owned by, or subject to an obligation of
assignment to, the same person if: (1) the application files
refer to assignments recorded in the Patent and Trademark
Office in accordance with part 3 of this chapter which
convey the entire rights in the applications to the same
person  or  organization;  or  (2)  copies  of  unrecorded
assignments  which  convey  the  entire  rights  in  the
applications to the same person or organization are filed in
each of the applications; or (3) an affidavit or declaration
by the common owner is filed which states that there is
common ownership and states facts which explain why the
affiant or declarant believes there is common ownership; or
(4) other evidence is submitted which establishes common
ownership of the applications. In circumstances where the
common owner is a corporation or other organization, an
affidavit or declaration may be signed by an official of the
corporation or organization empowered to act on behalf of
the corporation or organization.

  37  CFR  1.104  specifies  the  nature  of  the  showing
necessary  before  the  examiner  would  consider  copending
applications to be owned by, or subject to an obligation of
assignment to, the same person for purposes of 35 U.S.C.
102(f) / 103 , 35 U.S.C. 102(g) / 103 and 37 CFR 1.106(d).
If common ownership does not exist at the time the later
invention  was  made,  the  earlier  invention  is  not
disqualified as potential prior art under 35 U.S.C. 102(f)
and (g) as they apply through 35 U.S.C. 103.

  The rule permits the necessary showing to be made in
different alternative ways. The necessary showing will be
considered by the examiner to be present if the application
files refer to assignments which are recorded in the Patent
and Trademark Office in accordance with 37 CFR Part 3 as
long as the assignments conveyed the entire rights in the
applications to the same person or organization.

  A second alternative which can be used, if assignments
have not been recorded, permits the examiner to consider
copies of unrecorded assignments filed in each of the
applications by the applicants as long as the unrecorded
assignments convey the entire rights in the applications to
the same person or organization. The submission of copies of
assignment agreements that were filed in the Office and that
were executed at the time the application was filed would
not be sufficient to disqualify the earlier invention as
potential prior art against the later invention unless the
assignment document itself contained language which indicate
the  relevant  dates  involved  and  established  that  the
inventions  were  commonly  owned  at  the  time  the  later
invention  was  made.  Absent  specific  language  in  the
assignment  document  which  would  establish  that  the
inventions claimed in the applications were commonly owned
at  the  time  the  later  invention  was  made,  the
attorney/applicants would have to supply additional evidence
or showings establishing common ownership at the time the
later  invention  was  made.  This  additional  evidence  or
showing might take the form of an affidavit or declaration
by the common owner which refers to the assignment and
further avers that the inventors of the subject matter of
the applications were all under an obligation to assign the
inventions to the common owner at the time the later
invention  was  made,  e.g.,  by  virtue  of  employment
agreements>.<  The  affidavit  or  declaration  might  also
include copies of the employment agreements although the

submission of the copies of the employment agreements would
not be essential as long as unqualified averments are made
that the inventions were commonly owned at the time the
later invention was made.

  A third alternative permits an affidavit or declaration
to be filed by the common owner stating that there is common
ownership and stating facts which explain why the affiant or
declarant believes there is common ownership. Under this
alternative, sufficient facts will have to be presented in
order to enable the examiner to conclude that a prima facie
case of common ownership exists. It is expected that the
most common form of submission to establish common ownership
at the time the later invention was made will be verified
statements, i.e., oaths or declarations from the common
owner.  It  should  be  emphasized  that  such  oaths  or
declarations must be executed by the common owner or someone
empowered to act on behalf of the common owner. **

  The fourth alternative permits other evidence to be used
which would establish common ownership of the applications;
e.g., a court decision determining the owner.

  >SHOWING BY AFFIDAVIT OR DECLARATION; WHO MAY SIGN ON
  BEHALF OF AN ORGANIZATION<

  The terms "person" and "organization" in the rule would
include circumstances where the ownership resided in more
than  one  person  and/or  organization  as  long  as  the
applications are owned jointly by the same owners. Paragraph
(e)  also  provides  that  where  the  common  owner  is  a
corporation  or  other  organization  an  affidavit  or
declaration averring common ownership may be signed by an
official of the corporation or organization who is empowered
to act on behalf of the corporation or organization. >The
requirements of 37 CFR 3.73(b) do not apply.< A mere power
of attorney to prosecute a patent application will not make
an individual an official of the corporation or organization
or  empower  the  individual  to  act  on  behalf  of  the
corporation or organization for purposes of averring common
ownership. However, such an affidavit could be made by a
patent attorney, patent agent, or other individual if the
attorney, agent, or other individual has been appointed in
writing by the corporation or organization as an official of
the corporation or organization specifically empowered to
make affidavits or declarations on its behalf averring to
common ownership. In circumstances where such a written
appointment has been given to a patent attorney, patent
agent, or other individual, that person could then make
affidavits or declarations averring to common ownership as
long as the affidavit or declaration referred to an attached
copy  of  the  written  appointment  and  averred  that  the
authority is still in effect. Under this practice the
original signed copy of the written appointment would be
retained by the affiant or declarant unless the Patent and
Trademark Office specifically required it to be filed.
Unless some question arose as to the authority of the
individual to make the averment as to common ownership, the
Patent and Trademark Office would ordinarily not need to
require the original signed copy of the written appointment.
While this practice should simplify the establishing of
common ownership by necessitating only one original signed
written appointment, corporations and other organizations
must exercise care that the written appointment is only
given to those persons who are in a position to know that

common ownership does in fact exist and can therefore
properly make affirmative representations to that effect to
the Patent and Trademark Office.

 3.  Examination  of  Applications  of  Different
Inventive Entities Where Common Ownership is not Established

  See MPEP § 706.02(k) for examination of applications of
different  inventive  entities  where  common  ownership  is
established.

  Where  the  applications  do  not  establish  common
ownership, the examiner will:

  (a)  assume that the applications are not commonly
owned;

  (b)  examine the applications on all grounds other
than any conflict between the applications;

  (c)  consider the applicability of 35 U.S.C. 102(f)
/103 or 35 U.S.C. 102(g) / 103 if one application refers to
the other or if one inventor is common to both applications.
If there is no cross - reference or common inventor between
the applications it would be inappropriate for the examiner
to refer to one application in the other in view of 35
U.S.C. 122;

  (d)  consider interference if appropriate; and

  (e)  suspend the later filed application if it is
otherwise allowable until the earlier filed application is
abandoned or issues as a patent and then reject the later
filed  application  under  35  U.S.C.  102(e)  /  103  ,  if
appropriate.

706.02(m)  Form Paragraphs for Use in Rejections Under
35 U.S.C. 103 [R - 3]

  The following form paragraphs should be used in making
the appropriate rejections under 35 U.S.C. 103.

¶ 7.20  Statement of Statutory Basis, 35 U.S.C. 103(a)

  The following is a quotation of 35 U.S.C. 103(a) which
forms the basis for all obviousness rejections set forth in
this Office action:

  (a) A patent may not be obtained though the invention is
not identically disclosed or described as set forth in
section 102 of this title, if the differences between the
subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been
obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.

 Examiner Note:

  1.  The statute is not to be recited in all Office
actions. It is only required in first actions on the merits
employing 35 U.S.C. 103 and final rejections. Where the
statute is being applied, but is not cited in an action on
the merits, use paragraph 7.103.

  2  This paragraph should only be used ONCE in a given
Office action.

  3.  This paragraph must precede paragraphs 7.20.01 -
7.22 when this paragraph is used to cite the statute in
first actions and final rejections.

¶ 7.20.01  103(a) Rejection Using Art Disqualified Under
102(f) or (g)

  Applicant has provided evidence in this file showing
that the invention was owned by, or subject to an obligation
of assignment to, the same entity as [1] at the time this
invention was made. Accordingly, [2] is disqualified as
prior art through 35 U.S.C. 102(f) or (g) in any rejection
under 35 U.S.C. 103(a) in this application. However, this
applied  art  additionally  qualifies  as  prior  art  under
section  [3]  of  35  U.S.C.  102  and  accordingly  is  not
disqualified as prior art under 35 U.S.C. 103(a).

  Applicant may overcome the applied art either by a
showing under 37 CFR 1.132 that the invention disclosed
therein was derived from the invention of this application,
and is therefore, not the invention "by another", or by
antedating the applied art under 37 CFR 1.131.

 Examiner Note:

  1.  This paragraph must be included following paragraph
7.20 in all actions containing rejections under 35 U.S.C.
103(a) using art that is disqualified under 103(a) through
102(f) or (g), but which qualifies under another section of
35 U.S.C. 102.

  2.  In brackets 1 and 2, identify the commonly owned
applied art (patent or co - pending application).

  3  In bracket 3, insert "(a)" or "(e)" as appropriate.

¶ 7.20.02  Joint Inventors, Common Ownership Presumed

  This application currently names joint inventors. In
considering patentability of the claims under 35 U.S.C.
103(a), the examiner presumes that the subject matter of the
various claims was commonly owned at the time any inventions
covered  therein  were  made  absent  any  evidence  to  the
contrary. Applicant is advised of the obligations under 37
CFR 1.56 to point out the inventor and invention dates of
each claim that was not commonly owned at the time a later
invention was made in order for the examiner to consider the
applicability of potential 35 U.S.C. 102(f) or (g) prior art
under 35 U.S.C. 103(a).

 Examiner Note:

  This paragraph must be used in  all applications with
joint inventors (unless the claims are clearly restricted to
only one claimed invention, e.g., only a single claim is
presented in the application).

¶ 7.21  Rejection, 35 U.S.C. 103(a)

  Claim [1] rejected under 35 U.S.C. 103(a) as being
unpatentable over [2]. [3].

 Examiner Note:

  1.  This paragraph must be preceded by either paragraph
7.20 or by paragraph 7.103.

  2.  In bracket 3, an explanation of the rejection
applying the Graham et al v. Deere test must be provided.

  3.  If  this  rejection  relies  upon  art  that  is
disqualified under 35 U.S.C. 102(f) or (g) based upon common
ownership of the invention, paragraph 7.20.01 must follow
this paragraph.

  4.  If this rejection is a provisional 35 U.S.C. 103(a)
rejection based upon a copending application that would
comprise prior art under 35 U.S.C. 102(e) if patented, use
paragraph 7.21.01 instead of this paragraph.

¶ 7.21.01  Provisional Rejection, 35 U.S.C. 103 (a) ,
Common Assignee or At Least One Common Inventor Only

  Claim [1] provisionally rejected under 35 U.S.C. 103(a)
as being obvious over copending application no. [2] which
has a common [3] with the instant application. Based upon
the earlier effective U.S. filing date of the copending
application, it would constitute prior art under 35 U.S.C.
102(e) if patented. This provisional rejection under 35
U.S.C.  103(a)  is  based  upon  a  presumption  of  future
patenting of the conflicting application. [4].

  This provisional rejection might be overcome either by a
showing under 37 CFR 1.132 that any invention disclosed but
not claimed in the copending application was derived from
the inventor of this application and is thus not the
invention "by another", or by a showing of a date of
invention prior to the effective U.S. filing date of the
copending application under 37 CFR 1.131.

 Examiner Note:

  1.  This paragraph is used to provisionally reject
claims not patentably distinct from the disclosure in a
copending application having an earlier U.S. filing date and
also having either a common assignee or at least one common
inventor.

  2.  If the claimed invention is fully disclosed in the
copending application, use paragraph 7.15.01.

  3.  In  bracket  3,  insert  either  "assignee"  or
"inventor".

  4.  In bracket 4, insert explanation of obviousness.

  5.  If the claimed invention is also claimed in the
copending  application,  a  provisional  obviousness  double
patenting  rejection  should  additionally  be  made  using
paragraph 8.33 and 8.37.

  6.  If evidence of record indicates that the copending
application is also prior art under 35 U.S.C. 102(f) or (g)
and the copending application has not been disqualified as
prior art in a 35 U.S.C. 103(a) rejection based upon common
ownership, a rejection should additionally be made under 35

U.S.C. 103(a) using paragraph 7.21 (e.g., applicant has
named the prior inventor in response to a requirement made
using paragraph 8.28).

¶ 7.21.02  Rejection, 35 U.S.C. 103 (a) , Common Assignee
or At Least One Common Inventor

  **>Claim[1] rejected under 35 U.S.C. 103(a) as being
obvious over [2].

  The applied reference has a common [3] with the instant
application. Based upon the earlier effective U.S. filing
date of the reference, it constitutes prior art under 35
U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might
be overcome by: (1) a showing under 37 CFR 1.132 that any
invention disclosed but not claimed in the reference was
derived from the inventor of this application and is thus
not an invention "by another"; (2) a showing of a date of
invention for the claimed subject matter of the application,
which  corresponds  to  subject  matter  disclosed  but  not
claimed in the reference, prior to the effective U.S. filing
date of the reference under 37 CFR 1.131; or (3) an oath or
declaration under 37 CFR 1.130 stating that the application
and reference are currently owned by the same party and that
the inventor named in the application is the prior inventor
under 35 U.S.C. 104, together with a terminal disclaimer in
accordance with 37 CFR 1.321(c). [4].<

 Examiner Note:

  1.  This paragraph is used to reject over a patent with
an earlier filing date that discloses the claimed invention.
The patent must have either a common assignee or at least
one common inventor.

  2.  In  bracket  3,  insert  either  "assignee"  or
"inventor."

  3.  In bracket 4, insert explanation of obviousness.

¶ 7.22  Rejection, 35 U.S.C. 103(a), Further in View of

  Claim [1] rejected under 35 U.S.C. 103(a) as being
unpatentable over [2] as applied to claim [3] above, and
further in view of [4]. [5].

 Examiner Note:

  1.  This paragraph must be preceded by paragraph 7.21.

  2.  An explanation of the rejection applying the Graham
et al v.  Deere test must be provided in bracket 5.

¶ 7.23  Graham v . Deere, Test for Obviousness

  The factual inquires set forth in Graham et al  v  .
John  Deere  Co.,148  USPQ  459,  that  are  applied  for
establishing a background for determining obviousness under
35 U.S.C. 103(a) are summarized as follows:

  1.  Determining the scope and contents of the prior
art.

  2.  Ascertaining the differences between the prior art
and the claims at issue.

  3.  Resolving the level of ordinary skill in the
pertinent art.

  4.  Considering  objective  evidence  present  in  the
application indicating obviousness or unobviousness.

 Examiner Note:

  This paragraph may be used, if appropriate, in response
to an argument of the use of Graham et al v  . Deere.

¶  7.27  Rejection 35 U.S.C. 102 or 103 (a)

  Claim  [1]  rejected  under  35  U.S.C.  102  ([2])  as
anticipated by or, in the alternative, under 35 U.S.C.
103(a) as obvious over [3]. [4].

 Examiner Note:

  1.  This paragraph is NOT intended to be commonly used
as a substitute for a rejection under 35 U.S.C. 102. In
other words, a single rejection under either 35 U.S.C. 102
or 35 U.S.C. 103(a) should be made whenever possible using
appropriate form paragraphs 7.15 to 7.19, 7.21 and 7.22.
Examples of circumstances where this paragraph may be used
are as follows:

  a. When the interpretation of the claim(s) is or may be
in dispute, i.e. given one interpretation, a rejection under
35  U.S.C.  102  is  appropriate  and  given  another
interpretation,  a  rejection  under  35  U.S.C.  103(a)  is
appropriate. See MPEP § 2111 - § 2117 for guidelines on
claim interpretation.

  b. When the reference discloses all the limitations of a
claim except a property or function, and the examiner cannot
determine whether or not the reference inherently possesses
properties which anticipate or render obvious the claimed
invention but has basis for shifting the burden of proof to
applicant as in In re Fitzgerald  et al , 619 F.2d 67, 205
USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.

  c. When the reference teaches a small genus which places
a claimed species in the possession of the public as in In
re Schaumann , 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the
species would have been obvious even if the genus were not
sufficiently small to justify a rejection under 35 U.S.C.
102. See MPEP § 2131.02 and §*>2144.08< for more information
on anticipation and obviousness of species by a disclosure
of a genus.

  d. When the reference teaches a product that appears to
be the same as, or an obvious variant of, the product set
forth in a product - by - process claim although produced by
a different process. See In re Marosi ,218 USPQ 289 (Fed.
Cir. 1983) and  In re Thorpe , 227 USPQ 964 (Fed. Cir.
1985). See also MPEP § 2113.

  e. When the reference teaches all claim limitations
except a means plus function limitation and the examiner is
not certain whether the element disclosed in the reference
is an equivalent to the claimed element and therefore
anticipatory, or whether the prior art element is an obvious
variant of the claimed element. See MPEP § 2183 - § 2184.

  f. When the ranges disclosed in the reference and
claimed by applicant overlap in scope but the reference does
not contain a specific example within the claimed range. See
the concurring opinion in Ex parte Lee , 31 USPQ 2d 1105
(Bd. Pat. App. & Inter. 1993). See MPEP § 2131.03.

  2.  If the interpretation of the claim(s) renders the
claim(s) indefinite, a rejection under 35 U.S.C. 112, 2nd
paragraph, may be appropriate.

  3.  In bracket 2, insert the appropriate paragraph
letter(s) in parenthesis.

  4.  In  bracket  4,  a  full  explanation  should  be
provided.

  5.  This paragraph must be preceded by 7.07, one or
more  of  paragraphs  7.08  to  7.14  as  appropriate,  and
paragraph 7.20 or paragraph 7.103.

>706.02(n)  Biotechnology Process Applications; 35 U.S.C.
103(b) [R - 2]

 35 U.S.C. 103. Conditions for patentability; non - obvious
subject matter.

  *****

  (b)(1) Notwithstanding subsection (a), and upon timely
election by the applicant for patent to proceed under this
subsection, a biotechnological process using or resulting in
a composition of matter that is novel under section 102 and
nonobvious under subsection (a) of this section shall be
considered nonobvious if - -

  (A) claims to the process and the composition of matter
are contained in either the same application for patent or
in separate applications having the same effective filing
date; and

  (B) the composition of matter, and the process at the
time it was invented, were owned by the same person or
subject to an obligation of assignment to the same person.

  (2) A patent issued on a process under paragraph (1) - -

  (A) shall also contain the claims to the composition of
matter used in or made by that process, or

  (B) shall, if such composition of matter is claimed in
another patent, be set to expire on the same date as such
other patent, notwithstanding section 154

  (3)  For  purposes  of  paragraph  (1),  the  term
`biotechnological process' means - -

  (A)  a  process  of  genetically  altering  or  otherwise
inducing a single - or multi - celled organism to - -

  (i) express an exogenous nucleotide sequence,

  (ii) inhibit, eliminate, augment, or alter expression of
an endogenous nucleotide sequence or

  (iii) express a specific physiological characteristic not
naturally associated with said organism;

  (B) cell fusion procedures yielding a cell line that
expresses a specific protein, such as a monoclonal antibody;
and

  (C) a method of using a product produced by a process
defined by subparagraph (A) or (B), or a combination of
subparagraphs (A) and (B).

  *****

  35  U.S.C.  103(b)  is  applicable  to  biotechnological
processes only. 35 U.S.C. 103(b) precludes a rejection of
process claims which involve the use or making of certain
nonobvious biotechnological compositions of matter under 35
U.S.C. 103(a).

  35 U.S.C. 103(b) requires that:

 (1) the biotechnological process and composition of
matter be contained in either the same application or in
separate applications have the same effective filing date;

 (2)  both  the  biotechnological  process  and
composition of matter be owned or subject to an assignment
to the same person at the time the process was invented;

 (3) a patent issued on the process also contain the
claims to the composition of matter used in or made by the
process, or, if the process and composition of matter are in
different patents, the patents expire on the same date;

 (4) the biotechnological process falls within the
definition set forth in 35 U.S.C. 103(b); and

 (5) a timely election be made to proceed under the
provisions of 35 U.S.C. 103(b).

  An election to proceed under 35 U.S.C. 103(b) shall be
made by way of petition under 37 CFR 1.182. The petition
must establish that all the requirements set forth in 35
U.S.C. 103(b) have been satisfied.

  An election will normally be considered timely if it is
made no later than the earlier of either (1) the payment of
the issue fee, or (2) the filing of an appeal brief in an
application which contains a composition of matter claim
which has not been rejected under 35 U.S.C. 102 or 103.

  In an application where at least one composition of
matter claim has not been rejected under 35 U.S.C. 102 or
103, a 35 U.S.C. 103(b) election may be made by submitting
the petition and an amendment requesting entry of process
claims which correspond to the composition of matter claim.

  For applications pending on or after November 1, 1995,
in which the issue fee has been paid prior to March 26,
1996, the timeliness requirement for an election under 35
U.S.C. 103(b) will be considered satisfied if the conditions
of 37 CFR 1.312(b) are met. However, if a patent is granted
on an application entitled to the benefit of 35 U.S.C.
103(b) without an election having been made as a result of
error without deceptive intent, patentees may file a reissue

application to permit consideration of process claims which
qualify for 35 U.S.C. 103(b) treatment.

  See MPEP 2116.01 for a discussion of the Federal
Circuit's decisions in In re Ochiai, 71 F.3d 1565, 37 USPQ
1127 (Fed. Cir. 1995) and  In re Brouwer, 77 F.3d 422, 37
USPQ2d 1663 (Fed. Cir. 1996) which address the general issue
of  whether  an  otherwise  conventional  process  could  be
patented if it were limited to making or using a nonobvious
product. In view of the Federal Circuit's decisions in
Ochiai and  Brouwer , an applicant's need to rely upon 35
U.S.C. 103(b) should be rare. See also 1184 O G 86 (Comm'r
Pat.  1996).  See  35  U.S.C.  282  for  the  effect  of  a
determination of nonobviousness under 35 U.S.C. 103(b)(1) on
the presumption of validity.<

706.03  Rejections Not Based on Prior Art [R - 3]

  The primary object of the examination of an application
is to determine whether or not the claims **>are< patentable
* over the prior art. This consideration should not be
relegated to a secondary position while undue emphasis is
given to nonprior art or "technical" rejections. Effort in
examining should be concentrated on truly essential matters,
minimizing or eliminating effort on technical rejections
which are not really critical. Where a major technical
rejection is proper (e.g., lack of proper disclosure, undue
breadth, utility, etc.) such rejection should be stated with
a full development of the reasons rather than by a mere
conclusion coupled with some stereotyped expression.

  Rejections based on nonstatutory subject matter are
explained in MPEP § 706.03(a), § 2105, § 2106 - § 2106.02,
and § 2107 - § 2107.02. Rejections based on subject matter
barred by the Atomic Energy Act are explained in MPEP §
706.03(b).  Rejections  based  on  duplicate  claims  are
addressed  in  MPEP  §  706.03(k),  and  double  patenting
rejections are addressed in MPEP § 804. See MPEP § 706.03(o)
for rejections based on new matter. Foreign filing without a
license is discussed in MPEP § 706.03(s). Disclaimer, after
interference or public use proceeding, res judicata , and
reissue are explained in MPEP § 706.03(u) to § 706.03(x).
Rejections based on 35 U.S.C. 112 are discussed in MPEP §
2161 - § 2174. IF THE LANGUAGE IN THE FORM PARAGRAPHS ARE
INCORPORATED IN THE LETTER TO STATE THE REJECTION, THERE
WILL BE LESS CHANCE OF A MISUNDERSTANDING AS TO THE GROUNDS
OF REJECTION.

706.03(a)  Rejections under 35 U.S.C. 101 [R - 3]

  Patents  are  not  granted  for  all  new  and  useful
inventions  and  discoveries.  The  subject  matter  of  the
invention or discovery must come within the boundaries set
forth by 35 U.S.C. 101, which permits patents to be granted
only for "any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvement
thereof."

  The term "process" as defined in 35 U.S.C. 100, means
process, art or method, and includes a new use of a known
process, machine, manufacture, composition of matter, or
material.

  See MPEP § 2105 for patentability of microorganisms and
MPEP § 2106 - § 2106.02 for patentability of mathematical

algorithms or computer programs.

  LACK OF UTILITY

  A rejection on the ground of lack of utility includes
the more specific grounds of inoperativeness, involving
perpetual motion, frivolous, fraudulent, and against public
policy. The statutory basis for this rejection is 35 U.S.C.
101.  See  MPEP  §  706.03(a)(1)  for  guidelines  governing
rejections for lack of utility. See MPEP § 2107 - § 2107.02
for legal precedent governing the utility requirement.

  Decisions have determined the limits of the statutory
classes. Examples of subject matter not patentable under the
Statute follow:

  PRINTED MATTER

  For example, a mere arrangement of printed matter,
though seemingly a "manufacture," is rejected as not being
within the statutory classes. See In re Miller, 164 USPQ 46,
57 CCPA 809 (1969);  Ex parte Gwinn , 112 USPQ 439 (Bd. App.
1955); and  In re Jones, 153 USPQ 77, 54 CCPA 1218 (1967).

  NATURALLY OCCURRING ARTICLE

  Similarly,  a  thing  occurring  in  nature,  which  is
substantially unaltered, is not a "manufacture." A shrimp
with the head and digestive tract removed is an example. Ex
parte Grayson , 51 USPQ 413 (Bd. App. 1941).

  SCIENTIFIC PRINCIPLE

  A scientific principle, divorced from any tangible
structure, can be rejected as not within the statutory
classes. O'Reilly  v.  Morse,15 Howard 62.

  This subject matter is further limited by the Atomic
Energy  Act  explained  in  MPEP  §  706.03(b).  Use  Form
Paragraphs 7.04 through 7.05.03 to reject under 35 U.S.C.
101.

¶ 7.04  Statement of Statutory Basis, 35 U.S.C. 101:

 35 U.S.C. 101 reads as follows:

 "Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter or any new
and  useful  improvement  thereof,  may  obtain  a  patent
therefore, subject to the conditions and requirements of
this title".

 Examiner Note:

  This paragraph must precede the first use of 35 U.S.C.
101 in all first actions on the merits and final rejections.

¶ 7.05  Rejection, 35 U.S.C. 101, "Heading" only (Utility,
Non - Statutory, Inoperative)

 Claim[1] rejected under 35 U.S.C. 101 because

 Examiner Note:

  1.  This form paragraph must be followed by any one of

paragraphs 7.05.01 - 7.05.03 or another appropriate reason.

  2.  Explain the rejection following the recitation of
the statute and the use of form paragraphs 7.05.01 - 7.05.03
or other reason.

  3.  See MPEP § 706.03(a) and § 2105 - § 2107.02 for
other situations.

  4.  This paragraph must be preceded by paragraph 7.04
in first actions and final rejections.

¶ 7.05.01  Rejection, 35 U.S.C. 101, Non - Statutory

 the claimed invention is directed to non - statutory
subject matter. [1].

 Examiner Note:

  In bracket 1, insert identification of non - statutory
subject matter.

¶ 7.05.02  Rejection, 35 U.S.C. 101, Utility Lacking

 the claimed invention lacks patentable utility. [1].

 Examiner Note:

  In bracket 1, provide explanation of lack of utility,
such as, for example, that which is frivolous, fraudulent,
against public policy, or lacks proper chemical specificity,
etc. See MPEP § 706.03(a) and § 2105 - § 2107.02.

¶ 7.05.03  Rejection, 35 U.S.C. 101, Inoperative

 the disclosed invention is inoperative and therefore lacks
utility. [1].

 Examiner Note:

  In bracket 1, explain why invention is inoperative.

  > ¶  7.05.04  Utility Rejections Under 35 U.S.C. 101
and 35 U.S.C. 112, First Paragraph

  Claim[1] rejected under 35 U.S.C. 101 because the
claimed invention is not supported by either a [2] asserted
utility or a well established utility.

  [3].

  Claim[4] also rejected under 35 U.S.C. 112, first
paragraph. Specifically, since the claimed invention is not
supported by either a [5] asserted utility or a well
established utility for the reasons set forth above, one
skilled in the art clearly would not know how to use the
claimed invention.

 Examiner Note:

 Format A:

  a) Insert the same claim numbers in brackets 1 and 4.

  b) Insert "specific" in inserts 2 and 5.

  c) In bracket 3, insert the explanation as to why the
claimed invention is not supported by either a specific
asserted utility or a well established utility. Include
within the insert the following statement: "Note, because
the  claimed  invention  is  not  supported  by  a  specific
asserted  utility  for  the  reasons  set  forth  above,
credibility cannot be assessed."

  d) Format A is to be used when there is no asserted
utility and when there is an asserted utility but that
utility is not specific.

 Format B:

  a) Insert the same claim numbers in brackets 1 and 4.

  b) Insert "credible" in inserts 2 and 5.

  c) In bracket 3, insert the explanation as to why the
claimed invention is not supported by either a credible
asserted utility or a well established utility.

  For claims that have multiple utilities, some of which
are not specific, some of which are not credible, but none
of which are specific and credible:

  a) Insert the same claim numbers in brackets 1 and 4.

  b) Insert "specific asserted utility, a credible" in
inserts 2 and 5.

  c) In bracket 3, insert the explanation as to why the
claimed invention is not supported by either a specific
asserted utility, a credible asserted utility or a well
established  utility.  Each  utility  should  be  addressed.
Include within the insert the following statement for those
utilities which are not specific: "Note, because such a
utility for the claimed invention is not specific for the
reasons set forth above, credibility cannot be assessed for
that utility."

  1.  In each case, a separate rejection under 35 U.S.C.
112, first paragraph, enablement should be made using the
Forman Factors and an undue experimentation analysis.

  2.  A utility that is inoperative should be treated as
being not credible since a utility that is inoperative
cannot be credible.<

706.03(a)(1)  Guidelines For Examination of Applications
for Compliance With the Utility Requirement of 35 U.S.C. 101
and 35 U.S.C. 112 [R - 2]

  The following guidelines establish the policies and
procedures to be followed by Office personnel when examining
applications for compliance with the utility requirements of
35 U.S.C. 101 and 35 U.S.C. 112. The guidelines also address
issues that may arise during examination of applications
claiming  protection  for  inventions  in  the  field  of
biotechnology and human therapy. See MPEP § 2107 - § 2107.02
for a discussion of the legal precedent governing utility
rejections.

  GUIDELINES

  Office personnel must adhere to the following procedures
when reviewing applications for compliance with the useful
invention (utility) requirement of 35 U.S.C. 101 and 35
U.S.C. 112, first paragraph:

  (1)  Determine what the applicant has **>invented
and is seeking to patent:<

 (a)  Ensure that the **>claims define< statutory subject
matter (e.g., a process, a machine, a manufacture, or a
composition of matter); and

 (b)  **>Review the complete specification, including the
detailed  description  of  the  invention,  any  specific
embodiments that have been disclosed, the claims, and any
specific  utilities  that  have  been  asserted  for  the
invention.<

  (2) Review  the  specification  and  claims  to
determine if the applicant has asserted any credible utility
for the claimed invention.

 (a)  If the applicant has asserted that the claimed
invention is useful for any particular purpose (i.e., a
"specific utility") and that assertion would be considered
credible by a person of ordinary skill in the art, do not
impose a rejection based on lack of utility. Credibility is
to be assessed from the perspective of one of ordinary skill
in the art in view of any evidence of record (e.g., data,
statements, opinions, references, etc.) that is relevant to
the applicant's assertions. An applicant must provide only
one credible assertion of specific utility for any claimed
invention to satisfy the utility requirement.

 (b)  If the invention has a well - established utility,
regardless of any assertion made by the applicant, do not
impose a rejection based on lack of utility. An invention
has a well - established utility if a person of ordinary
skill in the art would immediately appreciate why the
invention is useful based on the characteristics of the
invention  (e.g.,  properties  of  a  product  or  obvious
application of a process).

 (c)  If the applicant has not asserted any specific
utility for the claimed invention and it does not have a
well - established utility, impose a rejection under 35
U.S.C. 101, emphasizing that the applicant has not disclosed
a specific utility for the invention. Also impose a separate
rejection under 35 U.S.C. 112, first paragraph, on the basis
that the applicant has not shown how to use the invention
due to lack of disclosure of a specific utility. The 35
U.S.C. 101 and 112 rejections should shift the burden to the
applicant to:

 (i)  explicitly identify a specific utility for the
claimed invention, and

 (ii)  indicate where support for the asserted utility can
be found in the specification.

  Review  the  subsequently  asserted  utility  by  the
applicant using the standard outlined in paragraph (2)(a)
above, and ensure that it is fully supported by the original
disclosure.

  (3)  If no assertion of specific utility for the
claimed invention made by the applicant is credible, and the
claimed  invention  does  not  have  a  well  -  established
utility, reject the claim(s) under 35 U.S.C. 101 on the
grounds that the invention as claimed lacks utility. Also
reject the claims under 35 U.S.C. 112, first paragraph, on
the basis that the disclosure fails to teach how to use the
invention as claimed. The 35 U.S.C. 112, first paragraph,
rejection imposed in conjunction with a 35 U.S.C. 101
rejection should incorporate by reference the grounds of the
corresponding 35 U.S.C. 101 rejection and should be set out
as a rejection distinct from any other rejection under 35
U.S.C. 112, first paragraph, not based on lack of utility
for the claimed invention.

  To  be  considered  appropriate  by  the  Office,  any
rejection  based  on  lack  of  utility  must  include  the
following elements:

 (a)  A prima  facie showing that the claimed invention
has no utility. A  prima  facie  showing of no utility must
establish that it is more likely than not that a person
skilled in the art would not consider credible any specific
utility asserted by the applicant for the claimed invention.
A  prima  facie showing must contain the following elements:

 (i)  a well - reasoned statement that clearly sets forth
the reasoning used in concluding that the asserted utility
is not credible;

 (ii)  support  for  factual  findings  relied  upon  in
reaching this conclusion; and

 (iii)  support for any conclusions regarding evidence
provided by the applicant in support of an asserted utility.

 (b)  Specific evidence that supports any fact - based
assertions needed to establish the prima  facie showing.
Whenever possible, Office personnel must provide documentary
evidence (e.g., scientific or technical journals, excerpts
from treatises or books, or U.S. or foreign patents) as the
form of support used in establishing the factual basis of a
prima facie showing of no utility according to items (a)(ii)
and  (a)(iii)  above.  If  documentary  evidence  is  not
available,  Office  personnel  shall  note  this  fact  and
specifically explain the scientific basis for the factual
conclusions relied on in sections (a)(ii) and (a)(iii).

  (4)  A rejection based on lack of utility should
not be maintained if an asserted utility for the claimed
invention would be considered credible by a person of
ordinary skill in the art in view of all evidence of record.

  Once a prima facie showing of no utility has been
properly established, the applicant bears the burden of
rebutting it. The applicant can do this by amending the
claims, by providing reasoning or arguments, or by providing
evidence in the form of a declaration under 37 CFR 1.132 or
a printed publication, that rebuts the basis or logic of the
prima facie showing. If the applicant responds to the  prima
facie rejection, Office personnel shall review the original
disclosure, any evidence relied upon in establishing the
prima facie showing, any claim amendments and any new
reasoning or evidence provided by the applicant in support

of an asserted utility. It is essential for Office personnel
to recognize, fully consider and respond to each substantive
element of any response to a rejection based on lack of
utility. Only where the totality of the record continues to
show that the asserted utility is not credible should a
rejection based on lack of utility be maintained.

  If the applicant satisfactorily rebuts a prima facie
rejection based on lack of utility under 35 U.S.C. 101,
withdraw the 35 U.S.C. 101 rejection and the corresponding
rejection imposed under 35 U.S.C. 112, first paragraph, per
paragraph (3) above.

  Office personnel are reminded that they must treat as
true a statement of fact made by an applicant in relation to
an asserted utility, unless countervailing evidence can be
provided that shows that one of ordinary skill in the art
would have a legitimate basis to doubt the credibility of
such a statement. Similarly, Office personnel must accept an
opinion from a qualified expert that is based upon relevant
facts whose accuracy is not being questioned; it is improper
to disregard the opinion solely because of a disagreement
over the significance or meaning of the facts offered.

706.03(b)  Barred by Atomic Energy Act [R - 1]

  >A limitation on what can be patented is imposed by the
Atomic Energy Act of 1954. Section 151(a) (42 U.S.C. 2181a)
thereof reads in part as follows:

  No patent shall hereafter be granted for any invention
or discovery which is useful solely in the utilization of
special nuclear material or atomic energy in an atomic
weapon.

  The terms "atomic energy" and "special nuclear material"
are defined in Section 11 of the Act (42 U.S.C. 2014).

  Sections 151(c) and 151(d) (42 U.S.C. 2181c and d) set
up categories of pending applications relating to atomic
energy  that  must  be  brought  to  the  attention  of  the
Department of Energy. Under 37 CFR 1.14(c), applications for
patents which disclose or which appear to disclose, or which
purport to disclose, inventions or discoveries relating to
atomic energy are reported to the Department of Energy and
the Department will be given access to such applications,
but such reporting does not constitute a determination that
the subject matter of each application so reported is in
fact useful or an invention or discovery or that such
application in fact discloses subject matter in categories
specified by the Atomic Energy Act.

  All applications received in the Patent and Trademark
Office are screened by Group 2200 personnel, under 37 CFR
1.14(c), in order for the Commissioner to fulfill his
responsibilities under section 151(d) (42 U.S.C. 2181d) of
the Atomic Energy Act. Papers subsequently added must be
inspected  promptly  by  the  examiner  when  received  to
determine whether the application has been amended to relate
to atomic energy and those so related must be promptly
forwarded to Licensing and Review in Group 2200.

  All rejections based upon sections 151(a)(42 U.S.C.
2181a), 152 (42 U.S.C. 2182), and 155 (42 U.S.C. 2185) of
the Atomic Energy Act must be made only by Group 2200

personnel.<

706.03(c)  Rejections Under 35 U.S.C. 112, First
Paragraph [R - 3]

  Rejections based on the first paragraph of 35 U.S.C. 112
are discussed in MPEP § 2161 - § 2165.04. For a discussion
of  the  utility  requirements  of  35  U.S.C.  112,  first
paragraph, and 35 U.S.C. 101, see MPEP § 706.03(a)(1) and §
2107 - § 2107.02. The appropriate Form Paragraphs>7.30.01
and < 7.31.01 through 7.33.01 should be used in making
rejections under 35 U.S.C. 112, first paragraph.

  > ¶  7.30.01  Statement of Statutory Basis, 35 U.S.C.
112, First Paragraph

  The following is a quotation of the first paragraph of
35 U.S.C. 112:

  The specification shall contain a written description of
the invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as
to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make
and  use  the  same  and  shall  set  forth  the  best  mode
contemplated by the inventor of carrying out his invention.

 Examiner Note:

  1. The statute is no longer being re - cited in all
Office actions. It is only required in first actions on the
merits and final rejections. Where the statute is not being
cited in an action on the merits, use paragraph 7.103.

  2. Paragraphs 7.30.01 and 7.30.02 are to be used ONLY
ONCE in a given Office action.<

¶ 7.31.01  Rejection,  35  U.S.C.  112,  1st  Paragraph,
Description Requirement, Including New Matter Situations

  Claim[1] rejected under 35 U.S.C. 112, first paragraph,
as the specification does not contain a written description
of the claimed invention, in that the disclosure does not
reasonably convey to one skilled in the relevant art that
the inventor(s) had possession of the claimed invention at
the time the application was filed. [2].

 Examiner Note:

  1.  In bracket 2, identify (by suitable reference to
page and line numbers and/or drawing figures) the subject
matter not described in the application as filed, and
provide an explanation of your position. The explanation
should include any questions examiners asked which were not
satisfactorily resolved and consequently raise doubt as to
possession of the claimed invention at the time of filing.

  >Form paragraph 7.31.02 should be used when it is the
examiner's position that nothing within the scope of the
claims is enabled. In such a rejection, the examiner should
explain all the reasons why nothing within the scope of the
claims is enabled. To make sure all relevant issues are
raised, this should include any issues regarding the breadth
of the claims relative to the guidance in the disclosure.<

¶ 7.31.02  Rejection,  35  U.S.C.  112,  1st  Paragraph,
Enablement

  Claim[1] rejected under 35 U.S.C. 112, first paragraph,
because the specification does not enable any person skilled
in the art to which it pertains, or with which it is most
nearly connected, to [2] the invention. [3].

 Examiner Note:

  1.  If the problem is one of scope, form paragraph
7.31.03 should be used.

  2.  In bracket 2, fill in only the appropriate portion
of the statute, i.e., one of the following "make," "use," or
"make and use."

  3.  In bracket 3, identify the claimed subject matter
for which the specification is not enabling along with an
explanation as to why the specification is not enabling. The
explanation  should  include  any  questions  posed  by  the
examiner  which  were  not  satisfactorily  resolved  and
consequently raise doubt as to enablement.

  4.  Where  an  essential  component  or  step  of  the
invention is not recited in the claims, use form paragraph
7.33.01.

  >Form paragraph 7.31.03 should be used when it is the
examiner's position that something within the scope of the
claims is enabled but the claims are not limited to that
scope.<

¶ 7.31.03  Rejection, 35 U.S.C. 112, 1st Paragraph, Scope
of Enablement

  Claim[1] rejected under 35 U.S.C. 112, first paragraph,
because the specification, while being enabling for [2],
does  not  reasonably  provide  enablement  for  [3].  The
specification does not enable any person skilled in the art
to which it pertains, or with which it is most nearly
connected, to [4] the invention commensurate in scope with
these claims. [5].

 Examiner Note:

  1.  This paragraph is to be used when the scope of the
claims is not commensurate with the scope of the enabling
disclosure.

  2.  In bracket 2, identify the claimed subject matter
for which the specification is enabling. This may be by
reference to specific portions of the specification.

  3.  In bracket 3, identify aspect(s) of the claim(s)
for which the specification is not enabling.

  4.  In bracket 4, fill in only the appropriate portion
of the statute, i.e., one of the following: "make" "use", or
"make and use".

  5.  In bracket 5, identify the problem along with an
explanation as to why the specification is not enabling. The
explanation  should  include  any  questions  posed  by  the
examiner  which  were  not  satisfactorily  resolved  and

consequently raise doubt as to enablement.

¶ 7.31.04  Rejection, 35 U.S.C. 112, 1st Paragraph, Best
Mode Requirement

  Claim[1] rejected under 35 U.S.C. 112, first paragraph,
because the best mode contemplated by the inventor has not
been disclosed. Evidence of concealment of the best mode is
based upon [2].

 Examiner Note:

  1.  In bracket 2, insert the basis for holding that the
best  mode  has  been  concealed,  e.g.,  the  quality  of
applicant's disclosure is so poor as to effectively result
in concealment.

  2.  Use of this form paragraph should be rare. See MPEP
§ 2165 - § 2165.04.

  >Form paragraph 7.33.01 should be used when it is the
examiner's position that a feature considered critical or
essential by applicant to the practice of the claimed
invention is missing from the claim.<

¶ 7.33.01  Rejection,  35  U.S.C.  112,  1st  Paragraph,
Essential Subject Matter Missing From Claims (Enablement)

  Claim[1] rejected under 35 U.S.C. 112, first paragraph,
as based on a disclosure which is not enabling. [2] critical
or essential to the practice of the invention, but not
included in the claim(s) is not enabled by the disclosure.
In re Mayhew,527 F.2d 1229, 188 USPQ 356 (CCPA 1976). [3].

 Examiner Note:

  1.  In bracket 2, recite the subject matter omitted
from the claims.

  2.  In bracket 3, give the rationale for considering
the omitted subject matter critical or essential.

  3.  The examiner shall cite the statement, argument,
date, drawing, or other evidence which demonstrates that a
particular  feature  was  considered  essential  by  the
applicant,  is  not  reflected  in  the  claims  which  are
rejected.

706.03(d)  Rejections Under 35 U.S.C. 112, Second
Paragraph [R - 3]

  Rejections under 35 U.S.C. 112, second paragraph, are
discussed in MPEP § 2171 - § 2174. Form paragraphs>7.30.02
and< 7.34 through 7.35.01 should be used to reject under 35
U.S.C. 112, second paragraph.

  > ¶  7.30.02  Statement of Statutory Basis, 35 U.S.C.
112, Second Paragraph

  The following is a quotation of the second paragraph of
35 U.S.C. 112:

  The specification shall conclude with one or more claims
particularly  pointing  out  and  distinctly  claiming  the
subject matter which the applicant regards as his invention.

 Examiner Note:

  1.  The statute is no longer being re - cited in all
Office actions. It is only required in first actions on the
merits and final rejections. Where the statute is not being
cited in an action on the merits, use paragraph 7.103.

  2.  Paragraphs 7.30.01 and 7.30.02 are to be used ONLY
ONCE in a given Office action.<

¶ 7.34  Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure To
Claim Applicant's Invention

  Claim[1] rejected under 35 U.S.C. 112, second paragraph,
as  failing  to  set  forth  the  subject  matter  which
applicant(s) regard as their invention. Evidence that claim
[2]  fail(s)  to  correspond  in  scope  with  that  which
applicant(s) regard as the invention can be found in paper
no. [3] filed [4]. In that paper, applicant has stated [5],
and this statement indicates that the invention is different
from what is defined in the claim(s) because [6].

 Examiner Note:

  1. This paragraph is to be used only where applicant has
stated, somewhere other than in the application, as filed,
that the invention is something different from what is
defined in the claim(s).

  2.  In brackets 3 and 4, identify the submission by
applicant (which is not the application, as filed, but may
be in the remarks by applicant, in the brief, in an
affidavit, etc.) by paper no. and the date the paper was
filed in the PTO.

  3.  In bracket 5, set forth what applicant has stated
in the submission to indicate a different invention.

  4.  In bracket 6, explain how the statement indicated
an invention other than what is being claimed.

¶ 7.34.01  Rejection,  35  U.S.C.  112,  2nd  Paragraph,
Failure To Particularly Point Out and Distinctly Claim
(Indefinite)

  Claim[1] rejected under 35 U.S.C. 112, second paragraph,
as being indefinite for failing to particularly point out
and distinctly claim the subject matter which applicant
regards as the invention.

 Examiner Note:

  This paragraph should be followed by one or more of the
following form paragraphs 7.34.02 - 7.34.06, as applicable.
If none of these form paragraphs are appropriate, a full
explanation of the deficiency of the claims should be
supplied. Whenever possible, identify the particular term(s)
or limitation(s) which render the claim(s) indefinite and
state  why  such  term  or  limitation  renders  the  claim
indefinite. If the scope of the claimed subject matter can
be determined by one having ordinary skill in the art, a
rejection  using  this  form  paragraph  would  not  be
appropriate. See MPEP § 2171 - 2174 for guidance. See also
form paragraph 17.07 for pro se applicants.

¶ 7.34.02  Terminology Used Inconsistent With Accepted
Meaning

  While applicant may be his or her own lexicographer, a
term in a claim may not be given a meaning repugnant to the
usual meaning of that term, In re Hill , 161 F.2d 367, 73
USPQ 482 (CCPA 1947). The term [1] in claim [2] is used by
the claim to mean [3], while the accepted meaning is [4].

 Examiner Note:

  1.  In bracket 3, point out the meaning that is
assigned to the term by applicant's claims, taking into
account the entire disclosure.

  2.  In bracket 4, point out the accepted meaning of the
term. Support for the examiner's stated accepted meaning
should be provided through the citation of an appropriate
reference source, e.g. text book or dictionary. See MPEP §
2173.05(a).

  3.  This form paragraph must be preceded by form
paragraph 7.34.01.

¶ 7.34.03  Relative Term - Term of Degree Rendering Claim
Indefinite

  The term [1] in claim [2] is a relative term which
renders the claim indefinite. The term [1] is not defined by
the claim, the specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill
in the art would not be reasonably apprised of the scope of
the invention. [3].

 Examiner Note:

  1.  In bracket 3, explain which parameter, quantity, or
other limitation in the claim has been rendered indefinite
by the use of the term appearing in bracket 1.

  2.  This form paragraph must be preceded by form
paragraph 7.34.01.

¶ 7.34.04  Broader  Range/Limitation  and  Narrow
Range/Limitation In Same Claim

  A broad range or limitation together with a narrow range
or  limitation  that  falls  within  the  broad  range  or
limitation (in the same claim) is considered indefinite,
since the resulting claim does not clearly set forth the
metes and bounds of the patent protection desired. Note the
explanation  given  by  the  Board  of  Patent  Appeals  and
Interferences in Ex parte  Wu , 10 USPQ2d 2031, 2033 (Bd.
Pat. App. & Inter. 1989), as to where broad language is
followed by "such as" and then narrow language. The Board
stated that this can render a claim indefinite by raising a
question or doubt as to whether the feature introduced by
such language is (a) merely exemplary of the remainder of
the claim, and therefore not required, or (b) a required
feature of the claims. Note also, for example, the decisions
of  Ex parte  Steigewald , 131 USPQ 74 (Bd. App. 1961);  Ex
parte  Hall , 83 USPQ 38 (Bd. App. 1948); and  Ex parte
Hasche , 86 USPQ 481 (Bd. App. 1949). In the present
instance, claim [1] recites the broad recitation [2], and

the claim also recites [3] which is the narrower statement
of the range/limitation.

 Examiner Note:

  1.  In bracket 2, insert the broader range/limitation
and where it appears in the claim; in bracket 3, insert the
narrow range/limitation and where it appears. This form
paragraph  may  be  modified  to  fit  other  instances  of
indefiniteness in the >claims<.

  2.  This form paragraph must be preceded by form
paragraph 7.34.01.

¶ 7.34.05  Lack of Antecedent Basis In the Claims

  Claim [1] recites the limitation [2] in [3]. There is
insufficient antecedent basis for this limitation in the
claim.

 Examiner Note:

  1.  In bracket 2, insert the limitation which lacks
antecedent basis, for example "said lever" or "the lever."

  2.  In bracket 3, identify where in the claim(s) the
limitation  appears,  for  example,  "line  3",  "the  3rd
paragraph of the claim", "the last 2 lines of the claim",
etc.

  3.  This form paragraph must be preceded by form
paragraph 7.34.01.

¶ 7.34.06  Use Claims

  Claim [1] provides for the use of [2], but, since the
claim  does  not  set  forth  any  steps  involved  in  the
method/process, it is unclear what method/process applicant
is intending to cover. A claim is indefinite where it merely
recites a use without any active, positive steps delimiting
how this use is actually practiced.

  Claim [3] is rejected under 35 U.S.C. 101 because the
claimed recitation of a use, without setting forth any steps
involved in the process, results in an improper definition
of a process, i.e., results in a claim which is not a proper
process claim under 35 U.S.C. 101. See for example Ex parte
Dunki , 153 USPQ 678 (Bd. App. 1967) and  Clinical Products,
Ltd  v.  Brenner,255 F. Supp. 131, 149 USPQ 475 (D.D.C.
1966).

 Examiner Note:

  1.  In bracket 2, insert what is being used. For
example, insert "the monoclonal antibodies of claim 4,"
where the claim recites "a method for using monoclonal
antibodies of claim 4 to purify interferon."

  2.  See also MPEP 2173.05(q).

  3.  This form paragraph must be preceded by form
paragraph 7.34.01.

>¶  7.34.07  Claims are a Literal Translation

  The claims are generally narrative and indefinite,
failing to conform with current U.S. practice. They appear
to be a literal translation into English from a foreign
document and are replete with grammatical and idiomatic
errors.

 Examiner Note:

  This form paragraph must be preceded by form paragraph
7.34.01.

¶ 7.34.08  Indefinite Claim Language: "For Example"

  Regarding claim [1], the phrase "for example" renders
the claim indefinite because it is unclear whether the
limitation(s) following the phrase are part of the claimed
invention. See MPEP § 2173.05(d).

 Examiner Note:

  This form paragraph must be preceded by form paragraph
7.34.01.

¶ 7.34.09  Indefinite Claim Language: "Or The Like"

  Regarding claim [1], the phrase "or the like" renders
the claim(s) indefinite because the claim(s) include(s)
elements not actually disclosed (those encompassed by "or
the like"), thereby rendering the scope of the claim(s)
unascertainable. See MPEP § 2173.05(d).

 Examiner Note:

  This form paragraph must be preceded by form paragraph
7.34.01.

¶ 7.34.10  Indefinite Claim Language: "Such As"

  Regarding claim [1], the phrase "such as" renders the
claim  indefinite  because  it  is  unclear  whether  the
limitations following the phrase are part of the claimed
invention. See MPEP § 2173.05(d).

 Examiner Note:

  This form paragraph must be preceded by form paragraph
7.34.01.

¶ 7.34.11  Modifier of "Means" Lacks Function

  Regarding claim [1], the word "means" is preceded by the
word(s) "[2]" in an attempt to use a "means" clause to
recite a claim element as a means for performing a specified
function. However, since no function is specified by the
word(s) preceding "means," it is impossible to determine the
equivalents of the element, as required by 35 U.S.C. 112,
sixth paragraph. See Ex parte Klumb , 159 USPQ 694 (Bd. App.
1967).

 Examiner Note:

  1. It is necessary for the words which precede "means" to
convey a function to be performed. For example, the phrase
"latch means" is definite because the word "latch" conveys
the function "latching." In general, if the phrase can be

restated as "means for ________," and it still makes sense,
it is definite. In the above example, "latch means" can be
restated as "means for latching." This is clearly definite.
However, if "conduit means" is restated as "means for
conduiting," the phrase makes no sense because the word
"conduit" has no functional connotation, and the phrase is
indefinite.

  2. This form paragraph must be preceded by form paragraph
7.34.01.

¶ 7.34.12  Essential Steps Omitted

  Claim  [1]  rejected  under  35  U.S.C.  112,  second
paragraph, as being incomplete for omitting essential steps,
such omission amounting to a gap between the steps. See MPEP
§ 2172.01. The omitted steps are: [2]

 Examiner Note:

  1. This rejection must be preceded by form paragraph
7.30.02 or 7.103.

  2. In bracket 2, recite the steps omitted from the
claims.

  3. Give the rationale for considering the omitted steps
critical or essential.

¶ 7.34.13  Essential Elements Omitted

  Claim  [1]  rejected  under  35  U.S.C.  112,  second
paragraph,  as  being  incomplete  for  omitting  essential
elements, such omission amounting to a gap between the
elements. See MPEP § 2172.01. The omitted elements are: [2]

 Examiner Note:

  1. This rejection must be preceded by form paragraph
7.30.02 or 7.103.

  2. In bracket 2, recite the elements omitted from the
claims.

  3.  Give  the  rationale  for  considering  the  omitted
elements critical or essential.

¶ 7.34.14  Essential Cooperative Relationships Omitted

  Claim  [1]  rejected  under  35  U.S.C.  112,  second
paragraph,  as  being  incomplete  for  omitting  essential
structural  cooperative  relationships  of  elements,  such
omission amounting to a gap between the necessary structural
connections. See MPEP § 2172.01. The omitted structural
cooperative relationships are: [2]

 Examiner Note:

  1. This rejection must be preceded by form paragraph
7.30.02 or 7.103.

  2.  In  bracket  2,  recite  the  structural  cooperative
relationships of elements omitted from the claims.

  3.  Give  the  rationale  for  considering  the  omitted

structural cooperative relationships of elements critical or
essential.<

¶ 7.35  Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure to
Particularly Point Out and Distinctly Claim - Omnibus Claim

  Claim  [1]  rejected  under  35  U.S.C.  112,  second
paragraph, as being indefinite in that it fails to point out
what is included or excluded by the claim language. This
claim is an omnibus type claim.

 Examiner Note:

  1.  Use this paragraph to reject an "omnibus" type
claim. No further explanation is necessary.

  2.  See MPEP § 1302.04(b) for cancellation of such a
claim by examiner's amendment upon allowance.

  3.  An example of an omnibus claim is: "A device
substantially as shown and described."

¶  7.35.01  Trademark or Trade Name as a Limitation in the
Claim

  Claim [1] contains the trademark/trade name [2]. Where
a trademark or trade name is used in a claim as a limitation
to identify or describe a particular material or product,
the claim does not comply with the requirements of 35 U.S.C.
112, second paragraph.  Ex parte Simpson, 21 8 USPQ 1020
(Bd. App. 1 982). The claim scope is uncertain since the
trademark or trade name cannot be used properly to identify
any particular material or product. A trademark or trade
name is used to identify a source of goods, and not the
goods themselves. Thus, a trademark or trade name does not
identify or describe the goods associated with the trademark
or trade name. In the present case, the trademark/trade name
is used to identify/describe [3] and, accordingly, the
identification/description is indefinite.

 Examiner Note:

  1.  In bracket 2, insert the trademark/trade name and
where it is used in the claim.

  2.  In bracket 3, specify the material or product which
is  identified  or  described  in  the  claim  by  the
trademark/trade name.

706.03(k)  Duplicate Claims [R - 3]

  Inasmuch as a patent is supposed to be limited to only
one  invention  or,  at  most,  several  closely  related
indivisible inventions, limiting an application to a single
claim, or a single claim to each of the related inventions
might appear to be logical as well as convenient. However,
court decisions have confirmed applicant's right to restate
(i.e., by plural claiming) the invention in a reasonable
number of ways. Indeed, a mere difference in scope between
claims has been held to be enough.

  Nevertheless, when two claims in an application are
duplicates, or else are so close in content that they both
cover  the  same  thing,  despite  a  slight  difference  in
wording, it is proper after allowing one claim to *>object

to<

 the other >claim under 37 CFR 1.75< as being a substantial
duplicate of the allowed claim.

  See MPEP Chapter 800 for double patenting rejections of
inventions not patentable over each other.

706.03(m)  Nonelected Inventions [R - 1]

  >See MPEP § 821 to § 821.03 for treatment of claims held
to be drawn to nonelected inventions.<

706.03(o)  New Matter [R - 2]

 35 U.S.C. 132. Notice of rejection; reexamination.

  Whenever, on examination, any claim for a patent is
rejected,  or  any  objection  or  requirement  made,  the
Commissioner shall notify the applicant thereof, stating the
reasons for such rejection, or objection or requirement,
together with such information and references as may be
useful in judging of the propriety of continuing the *
prosecution of his application; and if after receiving such
notice, the applicant persists in his claim for a patent,
with  or  without  amendment,  the  application  shall  be
reexamined. No amendment shall introduce new matter into the
disclosure of the invention .

  In amended cases, subject matter not disclosed in the
original application is sometimes added and a claim directed
thereto. Such a claim is rejected on the ground that it
recites elements without support in the original disclosure
under 35 U.S.C. 112, first paragraph, >Waldemar Link, GmbH &
Co. v. Osteonics Corp. 32, F.3d 556, 559, 31 USPQ2d 1855,
1857 (Fed. Cir. 1994);< In re Rasmussen, 650 F.2d 1212, 211
USPQ 323 (CCPA 1981). See MPEP § 2163.06 - § 2163.07(b) for
a discussion of the relationship of new matter to 35 U.S.C.
112, first paragraph. New matter includes not only the
addition of wholly unsupported subject matter, but may also
include adding specific percentages or compounds after a
broader original disclosure, or even the omission of a step
from a method. See MPEP § 608.04 to § 608.04(c). See In re
Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and MPEP §
2163.05 for guidance in determining whether the addition of
specific percentages or compounds after a broader original
disclosure constitutes new matter.

  In the examination of an application following amendment
thereof, the examiner must be on the alert to detect new
matter. 35 U.S.C. 132 should be employed as a basis for
objection to amendments to the abstract, specification, or
drawings attempting to add new disclosure to that originally
disclosed on filing.

  If subject matter capable of illustration is originally
claimed and it is not shown in the drawing, the claim is not
rejected but applicant is required to add it to the drawing.
See MPEP § 608.01(l).

  If new matter is added to the specification, it should
be objected to by using Form Paragraph 7.28.

¶ 7.28  Objection to New Matter Added To Specification

  The amendment filed [1] is objected to under 35 U.S.C.
132 because it introduces new matter into the disclosure. 35
U.S.C. 132 states that no amendment shall introduce new
matter into the disclosure of the invention. The added
material which is not supported by the original disclosure
is as follows: [2].

  Applicant is required to cancel the new matter in the
response to this Office action.

 Examiner Note:

  This form paragraph is not to be used in reissue
applications; use form paragraph 14.22.01 instead.

  1.  In bracket 2, identify the new matter by page and
the line numbers and/or drawing figures and provide an
appropriate explanation of your position. This explanation
should address any statement by applicant to support the
position  that  the  subject  matter  is  described  in  the
specification  as  filed.  It  should  further  include  any
unresolved  questions  which  raise  a  doubt  as  to  the
possession of the claimed invention at the time of filing.

  2.  If new matter is added to the claims, or affects
the  claims,  a  rejection  under  35  U.S.C.  112,  first
paragraph, using form paragraph 7.31.01 should also be made.
If new matter is added only to a claim, an objection using
this paragraph should not be made, but the claim should be
rejected using form paragraph 7.31.01. As to any other
appropriate prior art or 35 U.S.C. 112 rejection, the new
matter must be considered as part of the claimed subject
matter and can not be ignored.

706.03(s)  Foreign Filing Without License [R - 1]

 >35 U.S.C. 182  Abandonment of invention for unauthorized
disclosure.

  The invention disclosed in an application for patent
subject to an order made pursuant to section 181 of this
title may be held abandoned upon its being established by
the  Commissioner  that  in  violation  of  said  order  the
invention  has  been  published  or  disclosed  or  that  an
application for a patent therefor has been filed in a
foreign country by the inventor, his successors, assigns, or
legal representatives, or anyone in privity with him or
them,  without  the  consent  of  the  Commissioner.  The
abandonment shall be held to have occurred as of the time of
violation. The consent of the Commissioner shall not be
given  without  the  concurrence  of  the  heads  of  the
departments and the chief officers of the agencies who
caused the order to be issued. A holding of abandonment
shall  constitute  forfeiture  by  the  applicant,  his
successors, assigns, or legal representatives, or anyone in
privity with him or them, of all claims against the United
States based upon such invention.

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

  Except when authorized by a license obtained from the
Commissioner a person shall not file or cause or authorize
to be filed in any foreign country prior to six months after
filing in the United States an application for patent or for
the registration of a utility model, industrial design, or

model in respect of an invention made in this country. A
license shall not be granted with respect to an invention
subject to an order issued by the Commissioner pursuant to
section 181 of this title without the concurrence of the
head of the departments and the chief officers of the
agencies who caused the order to be issued. The license may
be granted retroactively where an application has been filed
abroad through error and without deceptive intent and the
application does not disclose an invention within the scope
of section 181 of this title.

  The  term  "application"  when  used  in  this  chapter
includes applications and any modifications, amendments, or
supplements thereto, or divisions thereof.

  The  scope  of  a  license  shall  permit  subsequent
modifications,  amendments,  and  supplements  containing
additional subject matter if the application upon which the
request for the license is based is not, or was not,
required to be made available for inspection under section
181 of this title and if such modifications, amendments, and
supplements  do  not  change  the  general  nature  of  the
invention in a manner which would require such application
to be made available for inspection under such section 181.
In any case in which a license is not, or was not, required
in order to file an application in any foreign country, such
subsequent modifications, amendments, and supplements may be
made, without a license, to the application filed in the
foreign country if the United States application was not
required to be made available for inspection under section
181 and if such modifications, amendments, and supplements
do not, or did not, change the general nature of the
invention in a manner which would require the United States
application to have been made available for inspection under
such section 181.

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

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

  If, upon examining an application, the examiner learns
of the existence of a corresponding foreign application
which appears to have been filed before the United States
application had been on file for 6 months, and if the
invention apparently was made in this country, he shall
refer the application to Licensing and Review Section of
Group 2200, calling attention to the foreign application.
Pending  investigation  of  the  possible  violation,  the
application may be returned to the examining group for
prosecution on the merits. When it is otherwise in condition
for allowance, the application will be again submitted to

Licensing and Review Section of Group 2200 unless the latter
has already reported that the foreign filing involves no bar
to the United States application.

  If it should be necessary to take action under 35 U.S.C.
185, Licensing and Review Section of Group 2200 will request
transfer of the application to it.<

706.03(u)  Disclaimer [R - 1]

  >Claims may be rejected on the ground that applicant has
disclaimed the subject matter involved. Such disclaimer may
arise, for example, from the applicant's failure:

  (a)  to make claims suggested for interference with
another application under 37 CFR 1.605 (See MPEP § 2305.02),

  (b)  to copy a claim from a patent when suggested
by the examiner (MPEP § 2305.02), or

  (c)  to respond or appeal, within the time limit
fixed, to the examiner's rejection of claims copied from a
patent (see MPEP § 2307.02).

  The rejection on disclaimer applies to all claims not
patentably distinct from the disclaimed subject matter as
well as to the claims directly involved.

  Rejections based on disclaimer should be made by using
one of Form Paragraphs 7.48 and 7.49.

¶ 7.48  Failure To Present Claims For Interference

  Claim [1] rejected under 35 U.S.C. [2] based upon claim
[3] of patent no. [4].

  Failure to present claims and/or take necessary steps
for  interference  purposes  after  notification  that
interfering  subject  matter  is  claimed  constitutes  a
disclaimer  of  the  subject  matter.  This  amounts  to  a
concession that, as a matter of law, the patentee is the
first inventor in this country, In re  Oguie , 186 USPQ 227
(CCPA 1975).

 Examiner Note:

  1.  This paragraph should be used only after applicant
has been notified that interference proceedings must be
instituted before the claims can be allowed and applicant
has refused to copy the claims.

  2.  In bracket 2, insert 102(g) or 102(g) / 103.

  3.  In bracket 4, insert the patent number, and "in
view of - " if another reference is also relied upon. When
the rejection is under 35 U.S.C. 103, the examiner's basis
for  finding  obviousness  should  be  included.  Note  that
interferences may include obvious variants, see MPEP § 2306.

¶ 7.49  Rejection, Disclaimer, Failure to Appeal

  Claim [1] stand finally disposed of for failure to
respond or appeal from the examiner's rejection of such
claims(s) presented for interference within the time limit
fixed. (See 37 CFR 1.661 and 1.663.)

706.03(v)  After Interference or Public Use Proceeding
[R - 2]

  For rejections following an interference, see MPEP §
2363.03.

  The outcome of public use proceedings may also be the
basis of a rejection. (See 37 CFR 1.292) (Note: In re Kaslow
, 217 USPQ 1089, Fed. Cir. 1983).

  Upon termination of a public use proceeding including a
case also involved in >an< interference, in order for a
prompt resumption of the interference proceedings, a notice
should  be  sent  to  the  Board  of  Patent  Appeals  and
Interferences notifying them of the disposition of the
public use proceeding.

706.03(w)  Res Judicata  [R - 2]

  Res  Judicata  may  constitute  a  proper  ground  for
rejection. However, as noted below, the Court of Customs and
Patent Appeals has materially restricted the use of res
judicata rejections. It should be applied only when the
earlier decision was a decision of the Board of Appeals or
any one of the reviewing courts and when there is no
opportunity for further court review of the earlier decision
.

  The timely filing of a second application copending with
an earlier application does not preclude the use of res
judicata as a ground of rejection for the second application
claims.

  When making a rejection on res judicata, action should
ordinarily  be  made  also  on  the  basis  of  prior  art,
especially in continuing applications. In most situations
the same prior art which was relied upon in the earlier
decision would again be applicable.

  In the following cases a rejection of a claim on the
ground of res judicata was sustained where it was based on a
prior adjudication, against the inventor on the same claim,
a patentably nondistinct claim, or a claim involving the
same issue.

  > In re Freeman,30 F.3d 1459, 31 USPQ 2d 1444 (Fed. Cir.
1994).<

  Edgerton  v.  Kingland , 75 USPQ 307 (D.C. Cir., 1947).

  In re Szwarc , 138 USPQ 208, 50 CCPA 1571 (1963).

  In re Katz , 167 USPQ 487, 58 CCPA 713 (1970), (prior
decision by District Court).

  In the following cases for various reasons, res judicata
rejections were reversed.

  In re Fried , 136 USPQ 429, 50 CCPA 954 (1963)
(differences in claims).

  In re Szwarc , 138 USPQ 208, 50 CCPA 1571 (1963)
(differences in claim).

  In re Hellbaum , 152 USPQ 571, 54 CCPA 1051 (1967)
(differences in claims).

  In re Herr , 153 USPQ 548, 54 CCPA 1315 (1967) (same
claims, new evidence, prior decision by CCPA).

  In re Kaghan , 156 USPQ 130, 55 CCPA 844 (1967) (prior
decision by Board of Appeals, final rejection on prior art
withdrawn by examiner "to simplify the issue," differences
in claims; holding of waiver based on language in MPEP at
the time).

  In re Craig , 162 USPQ 157, 56 CCPA 1438 (1969) (Board
of Appeals held second set of claims patentable over prior
art).

  In re Fisher , 166 USPQ 18, 57 CCPA 1099 (1970)
(difference in claims).

  In re Russell , 169 USPQ 426, 58 CCPA 1081 (1971) (new
evidence, rejection on prior art reversed by court).

  In re Ackermann , 170 USPQ 340, 58 CCPA 1405 (1971)
(prior decision by Board of Appeals, new evidence, rejection
on prior art reversed by court).

  Plastic Contact Lens Co.  v.  Gottschalk , 179 USPQ 262
(D.C. Cir., 1973) (follows  In re Kaghan ).

706.03(x)  Reissue [R - 1]

  >The examination of reissue applications is covered in
MPEP Chapter 1400.

  35  U.S.C.  251  forbids  the  granting  of  a  reissue
"enlarging the scope of the claims of the original patent"
unless the reissue is applied for within 2 years from the
grant of the original patent. This is an absolute bar and
cannot be excused. This prohibition has been interpreted to
apply to any claim which is broader in any respect than the
claims of the original patent. Such claims may be rejected
as being barred by 35 U.S.C. 251. However, when the reissue
is applied for within 2 years, the examiner does not go into
the question of undue delay.

  The same section permits the filing of a reissue
application by the assignee of the entire interest only in
cases where it does not "enlarge the scope of the claims of
the original patent." Such claims which do enlarge the scope
may also be rejected as barred by the statute. In In re
Bennett , 226 USPQ 413 (Fed. Cir. 1985), however, the court
permitted the erroneous filing by the assignee in such a
case to be corrected.

  A defective reissue oath affords a ground for rejecting
all the claims in the reissue application. See MPEP § 1444.

  Note that a reissue application is "special" and remains
so even if applicant does not make a prompt response.<

706.04  Rejection of Previously Allowed Claims [R - 1]

  >A claim noted as allowable shall thereafter be rejected
only after the proposed rejection has been submitted to the
primary examiner for consideration of all the facts and

approval of the proposed action.

  Great care should be exercised in authorizing such a
rejection. See Ex parte Grier , 1923 C.D. 27; 309 O.G. 223;
Ex parte  Hay , 1909 C.D. 18; 139 O.G. 197.

  PREVIOUS ACTION BY DIFFERENT EXAMINER

  Full faith and credit should be given to the search and
action of a previous examiner unless there is a clear error
in the previous action or knowledge of other prior art. In
general,  an  examiner  should  not  take  an  entirely  new
approach or attempt to reorient the point of view of a
previous examiner, or make a new search in the mere hope of
finding something.

  Because it is unusual to reject a previously allowed
claim, the examiner should point out in his or her letter
that the claim now being rejected was previously allowed by
using Form Paragraph 7.50.

¶ 7.50  Claims Allowed, Now Rejected, New Art

  The indicated allowability of claim [1] is withdrawn in
view of the newly discovered prior art to [2]. The delay in
citation of this art is regretted. Rejections based on the
newly discovered prior art follow.

 Examiner Note:

  1.  In bracket 2, insert the name(s) of the newly
discovered prior art.

  2.  Any action including this form paragraph requires
the signature of a primary examiner. MPEP § 1004.<

706.05  Rejection After Allowance of Application [R - 1]

  >See  MPEP  §  1308.01  for  a  rejection  based  on  a
reference.<

706.06  Rejection of Claims Copied From Patent [R - 1]

  >See MPEP § 2307.02.<

706.07  Final Rejection [R - 2]

 37 CFR 1.113.  Final rejection or action.

  (a) On the second or any subsequent examination or
consideration the rejection or other action may be made
final, whereupon applicant's or patent owner's response is
limited to appeal in the case of rejection of any claim ( §
1.191) or to amendment as specified in § 1.116. Petition may
be taken to the Commissioner in the case of objections or
requirements not involved in the rejection of any claim ( §
1.181). Response to a final rejection or action must include
cancellation of, or appeal from the rejection of, each
rejected claim. If any claim stands allowed, the response to
a  final  rejection  or  action  must  comply  with  any
*>requirements< or objection as to form.

  (b) In making such final rejection, the examiner shall
repeat or state all grounds of rejection then considered
applicable to the claims in the case, clearly stating the

reasons therefor.

  Before final rejection is in order a clear issue should
be developed between the examiner and applicant. To bring
the prosecution to as speedy conclusion as possible and at
the same time to deal justly by both the applicant and the
public, the invention as disclosed and claimed should be
thoroughly searched in the first action and the references
fully applied; and in response to this action the applicant
should amend with a view to avoiding all the grounds of
rejection and objection. Switching from one subject matter
to  another  in  the  claims  presented  by  applicant  in
successive amendments, or from one set of references to
another by the examiner in rejecting in successive actions
claims of substantially the same subject matter, will alike
tend to defeat attaining the goal of reaching a clearly
defined issue for an early termination; i.e., either an
allowance of the case or a final rejection.

  While the rules no longer give to an applicant the right
to "amend as often as the examiner presents new references
or  reasons  for  rejection,"  present  practice  does  not
sanction hasty and ill - considered final rejections. The
applicant who is seeking to define his or her invention in
claims that will give him or her the patent protection to
which he or she is justly entitled should receive the
cooperation  of  the  examiner  to  that  end,  and  not  be
prematurely cut off in the prosecution of his or her case.
But the applicant who dallies in the prosecution of his or
her  case,  resorting  to  technical  or  other  obvious
subterfuges in order to keep the application pending before
the primary examiner, can no longer find a refuge in the
rules to ward off a final rejection.

  The examiner should never lose sight of the fact that in
every case the applicant is entitled to a full and fair
hearing, and that a clear issue between applicant and
examiner should be developed, if possible, before appeal.
However, it is to the interest of the applicants as a class
as well as to that of the public that prosecution of a case
be confined to as few actions as is consistent with a
thorough consideration of its merits.

  Neither the statutes nor the Rules of Practice confer
any right on an applicant to an extended prosecution; Ex
parte  Hoogendam , 1939 C.D. 3, 499 O.G.3.

  STATEMENT OF GROUNDS

  In making the final rejection, all outstanding grounds
of rejection of record should be carefully reviewed, and any
such grounds relied on in the final rejection should be
reiterated. They must also be clearly developed to such an
extent that applicant may readily judge the advisability of
an appeal unless a single previous Office action contains a
complete statement supporting the rejection.

  However, where a single previous Office action contains
a complete statement of a ground of rejection, the final
rejection may refer to such a statement and also should
include  a  rebuttal  of  any  arguments  raised  in  the
applicant's response. If appeal is taken in such a case, the
examiner's answer should contain a complete statement of the
examiner's  position.  The  final  rejection  letter  should
conclude with Form Paragraph 7.39.

¶ 7.39  Action Is Final

  THIS ACTION IS MADE FINAL. Applicant is reminded of the
extension of time policy as set forth in 37 CFR 1.136(a).

  A shortened statutory period for response to this final
action is set to expire THREE MONTHS from the date of this
action. In the event a first response is filed within TWO
MONTHS of the mailing date of this final action and the
advisory action is not mailed until after the end of the
THREE - MONTH shortened statutory period, then the shortened
statutory period will expire on the date the advisory action
is mailed, and any extension fee pursuant to 37 CFR 1.136(a)
will be calculated from the mailing date of the advisory
action. In no event will the statutory period for response
expire later than SIX MONTHS from the date of this final
action.

 Examiner Note:

  1.  This paragraph should not be used in reissue
litigation  cases  (SSP  -  1  month)  or  in  reexamination
proceedings (SSP - 1 or 2 months).

  2.  37 CFR 1.136(a) should not be available in a reissue
litigation case and is not available in a reexamination
proceeding.

  The Office action first page form PTOL - 326 should be
used in all Office actions up to and including final
rejections.

  For amendments filed after final rejection, see MPEP §
714.12 and § 714.13.

  For  final  rejection  practice  in  reexamination
proceedings see MPEP § 2271.

706.07(a)  Final Rejection, When Proper on Second Action
[R - 3]

  Due to the change in practice as affecting final
rejections, older decisions on questions of prematureness of
final rejection or admission of subsequent amendments do not
necessarily reflect present practice.

  Under present practice, second or any subsequent actions
on the merits shall be final, except where the examiner
introduces a new ground of rejection *>that is neither<
necessitated by >applicant's< amendment **> of the claims
nor  based  on  information  submitted  in  an  information
disclosure statement filed during the period set forth in 37
CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). Where
information  is  submitted  in  an  information  disclosure
statement during the period set forth in 37 CFR 1.97(c) with
a fee, the examiner may use the information submitted; e.g.,
printed publication or evidence of public use, and make the
next Office action final whether or not the claims have been
amended, provided that no other new ground of rejection
which was not necessitated by amendment to the claims is
introduced  by  the  examiner.  See  MPEP  §  609(B)(2).<
Furthermore, a second or any subsequent action on the merits
in  any  application  or  patent  undergoing  reexamination
proceedings  will  not  be  made  final  if  it  includes  a

rejection, on newly cited art>, other than information
submitted in an information disclosure statement filed under
37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)<, of
any claim not amended by applicant or patent owner in spite
of the fact that other claims may have been amended to
require newly cited art.

  A second or any subsequent action on the merits in any
application or patent involved in reexamination proceedings
should not be made final if it includes a rejection, on
prior art not of record, of any claim amended to include
limitations which should reasonably have been expected to be
claimed. See MPEP § 904 et seq. For example, one would
reasonably expect that a rejection under 35 U.S.C. 112 for
the reason of incompleteness would be responded to by an
amendment supplying the omitted element.

  See MPEP § 809.02(a) for actions which indicate generic
claims not allowable.

  In the consideration of claims in an amended case where
no attempt is made to point out the patentable novelty, the
examiner should be on guard not to allow such claims. See
MPEP § 714.04. The claims may be finally rejected if, in the
opinion of the examiner, they are clearly open to rejection
on grounds of record.

  Form Paragraph 7.40 should be used where an action is
made final including new grounds of rejection necessitated
by applicant's amendment.

¶ 7.40  Action Is Final, Necessitated by Amendment

  Applicant's  amendment  necessitated  new  grounds  of
rejection. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
706.07(a). Applicant is reminded of the extension of time
policy as set forth in 37 CFR 1.136(a).

  A shortened statutory period for response to this final
action is set to expire THREE MONTHS from the date of this
action. In the event a first response is filed within TWO
MONTHS of the mailing date of this final action and the
advisory action is not mailed until after the end of the
THREE - MONTH shortened statutory period, then the shortened
statutory period will expire on the date the advisory action
is mailed, and any extension fee pursuant to 37 CFR 1.136(a)
will be calculated from the mailing date of the advisory
action. In no event will the statutory period for response
expire later than SIX MONTHS from the date of this final
action.

 Examiner Note:

  1.  This paragraph should not be used in reissue
litigation  cases  (SSP  -  1  month)  or  in  reexamination
proceedings (SSP - 1 or 2 months).

  2.  37 CFR 1.136(a) should not be available in a reissue
litigation case and is not available in a reexamination
proceeding.

> ¶  7.40.01  Action Is Final, Necessitated by IDS With
Fee

  Applicant's submission of an information disclosure

statement under 37 CFR 1.97(c) with the fee set forth in 37
CFR 1.17(p) on [1] prompted the new ground(s) of rejection
presented in this Office action. Accordingly,  THIS ACTION
IS MADE FINAL . See MPEP § 609(B)(2)(i). Applicant is
reminded of the extension of time policy as set forth in 37
CFR 1.136(a).

  A shortened statutory period for response to this final
action is set to expire THREE MONTHS from the date of this
action. In the event a first response is filed within TWO
MONTHS of the mailing date of this final action and the
advisory action is not mailed until after the end of the
THREE - MONTH shortened statutory period, then the shortened
statutory period will expire on the date the advisory action
is mailed, and any extension fee pursuant to 37 CFR 1.136(a)
will be calculated from the mailing date of the advisory
action. In no event will the statutory period for response
expire later than SIX MONTHS from the date of this final
action.

 Examiner Note:

  1.  This  paragraph  should  not  be  used  and  a  final
rejection is improper where there is another new ground of
rejection  introduced  by  the  examiner  which  was  not
necessitated by amendment to the claims.

  2.  In  bracket  1,  insert  the  filing  date  of  the
information  disclosure  statement  containing  the
identification of the item of information used in the new
ground of rejection.<

706.07(b)  Final Rejection, When Proper on First Action
[R - 2]

  The claims of a new application may be finally rejected
in the first Office action in those situations where (1) the
new  application  is  a  continuing  application  of,  or  a
substitute for, an earlier application, and (2) all claims
of the new application (a) are drawn to the same invention
claimed in the earlier application, and (b) would have been
properly finally rejected on the grounds and art of record
in the next Office action if they had been entered in the
earlier application.

  However, it would not be proper to make final a first
Office action in a continuing or substitute application
where that application contains material which was presented
in the earlier application after final rejection or closing
of prosecution but was denied entry for one of the following
reasons:

  (1)  New issues were raised that required further
consideration and/or search, or

  (2)  The issue of new matter was raised.

  Further, it would not be proper to make final a first
Office action in a continuation - in - part application
where any claim includes subject matter not present in the
earlier application.

  A request for an interview prior to first action on a
continuing or substitute application should ordinarily be
granted.

  A First Action Final rejection should be made by using
form paragraph 7.41.

¶ 7.41  Action Is Final, First Action

  This is a [1] of applicant's earlier application no.
[2]. All claims are drawn to the same invention claimed in
the earlier application and could have been finally rejected
on the grounds and art of record in the next Office action
if  they  had  been  entered  in  the  earlier  application.
Accordingly, THIS ACTION IS MADE FINAL even though it is a
first action in this case. See MPEP 706.07(b). Applicant is
reminded of the extension of time policy as set forth in 37
CFR 1.136(a).

  A shortened statutory period for response to this final
action *>is< set to expire THREE MONTHS from the date of
this action. In the event a first response is filed within
TWO MONTHS of the mailing date of this final action and the
advisory action is not mailed until after the end of the
THREE - MONTH shortened statutory period, then the shortened
statutory period will expire on the date the advisory action
is mailed, and any extension fee pursuant to 37 CFR 1.136(a)
will be calculated from the mailing date of the advisory
action. In no event will the statutory period for response
expire later than SIX MONTHS from the date of this final
action.

 Examiner Note:

  1.  In  bracket  1,  insert  either  continuation  or
substitute, as appropriate.

  2.  If an amendment was refused entry in the parent
case on the grounds that it raised new issues or new matter,
this paragraph cannot be used. See MPEP § 706.07(b).

  3.  This paragraph should not be used in reissue
litigation  cases  (SSP  -  1  month)  or  in  reexamination
proceedings (SSP - 1 or 2 months).

  4.  37 CFR 1.136(a) should not be available in a reissue
litigation case and is not available in a reexamination
proceeding.

706.07(c)  Final Rejection, Premature [R - 1]

  >Any question as to prematureness of a final rejection
should be raised, if at all, while the case is still pending
before the primary examiner. This is purely a question of
practice,  wholly  distinct  from  the  tenability  of  the
rejection. It may therefore not be advanced as a ground for
appeal, or made the basis of complaint before the Board of
Patent  Appeals  and  Interferences.  It  is  reviewable  by
petition under 37 CFR 1.181.<

706.07(d)  Final Rejection, Withdrawal of, Premature [R
- 1]

  >If, on request by applicant for reconsideration, the
primary examiner finds the final rejection to have been
premature, he or she should withdraw the finality of the
rejection.

  Form Paragraph 7.42 should be used when withdrawing a
Final Rejection.

¶ 7.42  Withdrawal of Final Rejection

  Applicant's request for reconsideration of the finality
of the rejection of the last Office action is persuasive
and, therefore, the finality of that action is withdrawn.<

706.07(e)  Withdrawal of Final Rejection, General [R -
1]

  >See MPEP § 714.12 and § 714.13, Amendments after final
rejection.

  Once a final rejection that is not premature has been
entered in a case, it should not be withdrawn at the
applicant's or patent owner's request except on a showing
under 37 CFR 1.116(b). Further amendment or argument will be
considered in certain instances. An amendment that will
place the case either in condition for allowance or in
better form for appeal may be admitted. Also, amendments
complying with objections or requirements as to form are to
be permitted after final action in accordance with 37 CFR
1.116(a).

  The examiner may withdraw the rejection of finally
rejected claims. If new facts or reasons are presented such
as to convince the examiner that the previously rejected
claims are in fact allowable or patentable in the case of
reexamination, then the final rejection should be withdrawn.
Occasionally, the finality of a rejection may be withdrawn
in order to apply a new ground of rejection.

  Although it is permissible to withdraw a final rejection
for the purpose of entering a new ground of rejection, this
practice  is  to  be  limited  to  situations  where  a  new
reference either fully meets at least one claim or meets it
except for differences which are shown to be completely
obvious.  Normally,  the  previous  rejection  should  be
withdrawn with respect to the claim or claims involved.

  The practice should not be used for application of
subsidiary references, or of cumulative references, or of
references which are merely considered to be better than
those of record.

  When a final rejection is withdrawn, all amendments
filed after the final rejection are ordinarily entered.

  New grounds of rejection made in an Office action
reopening prosecution after the filing of an appeal brief
require the approval of the supervisory primary examiner.
See MPEP § 1002.02(d).<

706.07(f)  Time for Response to Final Rejection [R - 3]

  (1)  All final rejections setting a three (3) month
shortened statutory period (SSP) for response should contain
one of the Form Paragraphs (7.39; 7.40; 7.41) advising
applicant that if the response is filed within two (2)
months of the date of the final Office action, the shortened
statutory period will expire at three (3) months from the
date of the final rejection or on the date the advisory
action is mailed, whichever is later. Thus, a variable

response period will be established. In no event can the
statutory period for response expire later than 6 months
from the date of the final rejection.

  (2)  If the paragraph setting a variable response
period is inadvertently not included in the final Office
action, the SSP for response will end 3 months from the date
of the final Office action and cannot be extended other than
by making a petition and paying a fee pursuant to 37 CFR
1.136(a). However, if an advisory action (including an
examiner's amendment) is mailed in such a case where the
response to the final action has been filed within 2 months,
the examiner should vacate the original SSP and reset the
period for response to correspond with the Office policy set
forth at 1027 OG 71. See paragraph (6) below.

  (3)  This procedure of setting a variable response
period in the final rejection dependent on when applicant
files a first response to a final office action does not
apply to situations where an SSP less than 3 months is set -
e.g.  reissue  litigation  cases  (1  month  SSP)  or  any
reexamination case.

 Advisory Actions

  (4)  Where the final Office action sets a variable
response period as set forth in paragraph 1 above, AND
applicant files a complete first response to the final
Office action within 2 months of the date of the final
Office action, the examiner must determine if the

 (a)  Response puts the application in condition for
allowance - then the application should be processed as an
allowance and no extension fees are due.

 (b)  Response puts the application in condition for
allowance except for matters of form which the examiner can
change without authorization from applicant, MPEP § 1302.04
- then the application should be amended as required and
processed as an allowance and no extension fees are due.

 (c)  Response does not put the application in condition
for allowance - then the advisory action should inform
applicant that the SSP for response expires 3 months from
the date of the final rejection or as of the mailing date of
the advisory action, whichever is later, by checking the
appropriate box at the top portion of the Advisory Action
form, PTOL - 303.

  If PTOL - 303 is not used, then use Form Paragraph
7.67.1 on all advisory actions where a first complete
response has been filed within 2 months of the date of the
final Office action.

  (5)  Where the final Office action sets a variable
response period as set forth in paragraph 1 above, and
applicant does NOT file a complete first response to the
final Office action within 2 months, examiners should use
the content of Form Paragraph 7.67.

  (6)  Where the final Office action does not set a
variable response period as set forth in paragraph 1 above,
AND applicant does file a complete first response to the
final Office action within 2 months, and if an advisory
action  (which  may  include  an  examiner's  amendment)  is

necessary and cannot be mailed within 3 months of the final
Office action, the examiner should vacate the original SSP
and reset the response period to expire on the mailing date
of the advisory action by using form paragraph 7.67.2. In no
case can the statutory period for response expire later than
6 months from the date of the final Office action. Note that
Form Paragraph 7.67.2 can be used with the advisory action
(preferable) or after the advisory action is mailed to
correct the error of not setting a variable response period.

  (7)  When an advisory action properly contains
either  Form  Paragraph  7.67.1  or  7.67.2,  the  time  for
applicant to take further action (including the calculation
of extension fees under 37 CFR 1.136(a)) begins to run 3
months from the date of the final rejection, or from the
date of the advisory action, whichever is later. Extension
fees cannot be prorated for portions of a month. In no event
can the statutory period for response expire later than 6
months from the date of the final rejection.

 Examiner's Amendments

  (8)  Where a complete first response to a final
Office action has been filed within 2 months of the final
Office  action,  an  examiner's  amendment  to  put  the
application in condition for allowance may be made without
the payment of extension fees if the examiner's amendment is
a part of the first action after said first response,
because the examiner's amendment will either set (7.67.1) or
reset (7.67.2) the period for response to expire on the date
the examiner's amendment is mailed if it is mailed more than
3 months from the date of the final Office action.

  (9)  Where a complete first response to a final
Office action has not been filed within 2 months of the
final Office action, applicant's authorization to make an
amendment  to  place  the  application  in  condition  for
allowance must be made either within the 3 month shortened
statutory period or within an extended period for response
that has been petitioned and paid for by applicant pursuant
to 37 CFR 1.136(a).

  (10)  An extension of time under 37 CFR 1.136(a)
requires a petition for an extension and the appropriate fee
provided for in 37 CFR 1.17. Where an extension of time is
necessary to place an application in condition for allowance
(e.g., when an examiner's amendment is necessary after the
shortened  statutory  period  for  response  has  expired),
applicant may file the required petition and fee or give
authorization to the examiner to make the petition of record
and charge a specified fee to a deposit account. When
authorization to make a petition for an extension of time of
record is given to the examiner, the authorization must be
**>given<  before  the  extended  period  expires.  The
authorization **>must< be made of record in an examiner's
amendment by indicating the name of the person making the
authorization,  >when  the  authorization  was  given,<  the
deposit account number to be charged, the length of the
extension requested and the amount of the fee to be charged
to the deposit account. Form Paragraph 13.02.02 should be
used.

¶ 13.02.02  Extension of Time and Examiner's Amendment
Authorized by Telephone

  An extension of time under 37 CFR 1.136(a) is required
in order to make an examiner's amendment which places this
application in condition for allowance. During a telephone
conversation conducted on [1], [2] requested an extension of
time for [3] MONTH(S) and authorized the Commissioner to
charge Deposit Account No. [4] the required fee of $[5] for
this  extension  and  authorized  the  following  examiner's
amendment.  Should  the  changes  and/or  additions  be
unacceptable to applicant, an amendment may be filed as
provided by 37 CFR 1.312. To ensure consideration of such an
amendment, it MUST be submitted no later than the payment of
the issue fee.

 Examiner Note:

  1.  **

  See MPEP 706.07(f), item 10 which explains when an
extension of time is needed in order to make amendments to
place the application in condition for allowance.

 Practice After Final

  (11)  Responses after final should be processed and
considered promptly by all Office personnel.

  (12)  Responses after final should not be considered
by the examiner unless they are filed within the SSP or are
accompanied by a petition for an extension of time and the
appropriate fee (37 CFR 1.17 and 1.136(a)). See also MPEP §
710.02(e). This requirement also applies to supplemental
responses filed after the first response.

  (13)  Interviews  may  be  conducted  after  the
expiration of the shortened statutory period for response to
a final office action but within the 6 - month statutory
period for response without the payment of an extension fee.

  (14)  Formal matters which are identified for the
first time after a response is made to a final Office action
and which require action by applicant to correct may be
required in an Ex parte Quayle action if the application is
otherwise in condition for allowance. No extension fees
would be required since the response puts the application in
condition for allowance except for the correction of formal
matters - the correction of which had not yet been required
by the examiner.

  (15)  If prosecution is to be reopened after a final
Office action has been responded to, the finality of the
previous Office action should be withdrawn to avoid the
issue of abandonment and the payment of extension fees. For
example, if a new reference comes to the attention of the
examiner which renders unpatentable a claim indicated to be
allowable, the Office action should begin with a statement
to the effect: The finality of the Office action mailed is
hereby withdrawn in view of the new ground of rejection set
forth below. Form Paragraph 7.42 could be used in addition
to this statement.

¶ 7.67.01  Advisory After Final, Heading, 1st Response
Filed Within 2 Months

  The shortened statutory period for response expires
THREE MONTHS from the date of the final rejection or as of

the mailing date of this Advisory Action, whichever is
later. In no event however, will the statutory period for
response expire later than SIX MONTHS from the date of the
final rejection. Any extension of time must be obtained by
filing a petition under 37 CFR 1.136(a) accompanied by the
proposed response and the appropriate fee. The date on which
the response, the petition, and the fee have been filed is
the date of the response and also the date for the purposes
of determining the period of extension and the corresponding
amount of the fee.

  Any extension fee pursuant to 37 CFR 1.17 will be
calculated from the date that the shortened statutory period
for response expires as set forth above.

 Examiner Note:

  1.  This paragraph should be used in all advisory
actions if:

  a. it was the first response to the final rejection, and

  b. it was filed within 2 months of the date of the final
rejection

  2.  If a notice of appeal has been filed, also use
paragraph 7.68.

  3.  DO NOT USE THIS FORM PARAGRAPH FOR REEXAMINATION
PROCEEDINGS.

  4.  Follow with form paragraph 7.41.01 IF transitional
provisions of 37 CFR 1.129(a) are applicable.

¶ 7.67.02  Advisory After Final, Heading, No Variable SSP
Set in Final

  Since the first response to the final Office action
**>was< filed within TWO MONTHS of the mailing date of that
action and the advisory action was not mailed within THREE
MONTHS of that date, the THREE MONTH shortened statutory
period for response set in the final Office action is hereby
vacated and reset to expire as of the mailing date of the
advisory action. See Notice entitled "Procedure for Handling
Amendments Under 37 CFR 1.116", published in the Official
Gazette at 1027 OG 71, February 8, 1983. In no event,
however, will the statutory period for response expire later
than SIX MONTHS from the date of the final Office action.

  Any extension fee required pursuant to 37 CFR 1.17 will
be calculated from the mailing date of the advisory action.

 Examiner Note:

  1.  This paragraph should be used in all advisory
actions where:

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

  a. the response is a first response to the final action;

  b. the response was filed within two months of the
mailing date of the final;  and

  c. the final action failed to inform applicant of a
variable SSP beyond the normal three month period, as is set
forth in form paragraph 7.39 - 7.41.

  2.  If the final action set a variable SSP, do not use
this paragraph. Use paragraph 7.67.01 instead.

  3.  If a notice of appeal has been filed, also use
paragraph 7.68.

  4.  Follow with form paragraph 7.41.01if transitional
provisions of 37 CFR 1.129(a) are applicable.

  Under the changed procedure, if an applicant initially
responds within 2 months from the date of mailing of any
final rejection setting a 3 - month shortened statutory
period for response and the Office does not mail an advisory
action until after the end of the 3 - month shortened
statutory period, the period for response for purposes of
determining the amount of any extension fee will be the date
on which the Office mails the advisory action advising
applicant of the status of the application, but in no event
can the period extend beyond 6 months from the date of the
final rejection. This procedure will apply only to a first
response to a final rejection and has been implemented by
including the following language in each final rejection
mailed after February 27, 1983:

  "A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL
ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS
ACTION. IN THE EVENT A FIRST RESPONSE IS FILED WITHIN TWO
MONTHS OF THE MAILING DATE OF THIS FINAL ACTION AND THE
ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE
THREE - MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED
STATUTORY PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION
IS MAILED, AND ANY EXTENSION FEE PURSUANT TO 37 CFR 1.136(a)
WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY
ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR RESPONSE
EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL
ACTION."

  For example, if applicant initially responds within 2
months from the date of mailing of a final rejection and the
examiner mails an advisory action before the end of 3 months
from the date of mailing of the final rejection, the
shortened statutory period will expire at the end of 3
months from the date of mailing of the final rejection. In
such a case, any extension fee would then be calculated from
the end of the 3 - month period. If the examiner, however,
does not mail an advisory action until after the end of 3
months, the shortened statutory period will expire on the
date  the  examiner  mails  the  advisory  action  and  any
extension fee may be calculated from that date.

706.07(g)  Transitional After - Final Practice [R - 2]

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

  (a) An applicant in an application, other than for
reissue or a design patent, that has been pending for at
least two years as of June 8, 1995, taking into account any

reference made in such application to any earlier filed
application under 35 U.S.C. 120, 121 and 365(c), is entitled
to have a first submission entered and considered on the
merits  after  final  rejection  under  the  following
circumstances: The Office will consider such a submission,
if the first submission and the fee set forth in § 1.17(r)
are filed prior to the filing of an appeal brief and prior
to abandonment of the application. The finality of the final
rejection is automatically withdrawn upon the timely filing
of the submission and payment of the fee set forth in §
1.17(r). If a subsequent final rejection is made in the
application,  applicant  is  entitled  to  have  a  second
submission entered and considered on the merits after the
subsequent  final  rejection  under  the  following
circumstances: The Office will consider such a submission,
if the second submission and a second fee set forth in §
1.17(r) are filed prior to the filing of an appeal brief and
prior to abandonment of the application. The finality of the
subsequent final rejection is automatically withdrawn upon
the timely filing of the submission and payment of the
second fee set forth in § 1.17(r). Any submission filed
after a final rejection made in an application subsequent to
the fee set forth in § 1.17(r) having been twice paid will
be treated as set forth in § 1.116. A submission as used in
this  paragraph  includes,  but  is  not  limited  to,  an
information  disclosure  statement,  an  amendment  to  the
written  description,  claims  or  drawings  and  a  new
substantive  argument  or  new  evidence  in  support  of
patentability.

  *****

  (c)  The  provisions  of  this  section  shall  not  be
applicable to any application filed after June 8, 1995.

  In order to facilitate the completion of prosecution of
applications pending in the PTO as of June 8, 1995 and to
ease the transition between a 17 - year patent term and a 20
- year patent term, Public Law 103 - 465 provided for the
further limited reexamination of an application pending for
2 years or longer as of June 8, 1995, taking into account
any reference made in the application to any earlier filed
application under 35 U.S.C. 120, 121, or 365(c). The further
limited reexamination permits applicants to present for
consideration, as a matter of right upon payment of a fee, a
submission after a final rejection has been issued on an
application. An applicant will be able to take advantage of
this  provision  on  two  separate  occasions  provided  the
submission and fee are presented prior to the filing of the
Appeal Brief and prior to abandonment of the application.
This will have the effect of enabling an applicant to
essentially reopen prosecution of the pending application on
two separate occasions by paying a fee for each occasion,
and avoid the impact of refiling the application to obtain
consideration  of  additional  claims  and/or  information
relative to the claimed subject matter. The transitional
after - final practice is only available to applications
filed on or before June 8, 1995 and it is not available for
reissue or design applications or reexamination proceedings.

  The following flowchart illustrates the transitional
after - final procedures set forth in 37 CFR 1.129(a).

 **  Double Click here to see the image  **

  Effective June 8, 1995, in any pending application
having an actual or effective filing date of June 8, 1993 or
earlier, applicant is entitled, under 37 CFR 1.129(a), to
have a first submission after final rejection entered and
considered on the merits, if the submission and the fee set
forth in 37 CFR 1.17(r) are filed prior to the filing of an
Appeal Brief under 37 CFR 1.192 and prior to abandonment.
For an application entering national stage under 35 U.S.C.
371 or an application filed under 35 U.S.C. 111(a) claiming
benefit under 35 U.S.C. 120 of a PCT application designating
the U.S., the PCT international filing date will be used to
determine whether the application has been pending for at
least 2 years as of June 8, 1995.

  >Form paragraph 7.41.01 may be used to notify applicant
that the application qualifies under 37 CFR 1.129(a).

¶ 7.41.01  Transitional  After  Final  Practice,  First
Submission, (37 CFR 1.129(a))

  This application is subject to the provisions of Public
Law 103 - 465, effective June 8, 1995. Accordingly, since
this application has been pending for at least two years as
of June 8, 1995, taking into account any reference to an
earlier filed application under 35 U.S.C. 120, 121 or
365(c), applicant, under 37 CFR 1.129(a), is entitled to
have a first submission entered and considered on the merits
if, prior to abandonment, the submission and the fee set
forth in 37 CFR 1.17(r) are filed prior to the filing of an
appeal brief under 37 CFR 1.192. Upon the timely filing of a
first submission and the appropriate fee of $[1] for a [2]
entity under 37 CFR 1.17(r), the finality of the previous
Office action will be withdrawn. If a Notice of Appeal and
the appeal fee set forth in 37 CFR 1.17(e) were filed prior
to or with the payment of the fee set forth in 37 CFR
1.17(r), the payment of the fee set forth in 37 CFR 1.17(r)
by applicant will be construed as a request to dismiss the
appeal and to continue prosecution under 37 CFR 1.129(a). In
view of 35 U.S.C. 132, no amendment considered as a result
of payment of the fee set forth in 37 CFR 1.17(r) may
introduce new matter into the disclosure of the application.

  If applicant has filed multiple proposed amendments
which,  when  entered,  would  conflict  with  one  another,
specific instructions for entry or non - entry of each such
amendment should be provided upon payment of any fee under
37 CFR 1.17(r).

 Examiner Note:

  1.  This  form  paragraph  may  follow  any  of  form
paragraphs 7.39 - 7.41, 7.67 - 7.67.02, 7.72 - 7.78 or 7.80
in any application filed prior to June 9, 1995, which has
been pending for at least two years as of June 8, 1995,
taking into account any reference under 35 U.S.C. 120, 121
or 365(c) to a previously filed application and no previous
fee has been paid under 37 CFR 1.17(r).

  2.  This form paragraph should NOT be used in a design
or reissue application, or in a reexamination proceeding.

  3.  In bracket 1, insert the current fee for a large or
small entity, as appropriate.

  4.  In bracket 2, insert - -small - - or - -large - -,
depending on the current status of the application.<

  The submission under 37 CFR 1.129(a) may comprise, but
is not limited to, an information disclosure statement, an
amendment to the written description, claims or drawings, a
new substantive argument and/or new evidence. No amendment
considered as a result of payment of the fee set forth in 37
CFR 1.17(r) may introduce new matter into the disclosure of
the application. 35 U.S.C. 132. In view of the fee set forth
in 37 CFR 1.17(r), any information disclosure statement
previously refused consideration in the application because
of applicant's failure to comply with 37 CFR 1.97(c) or (d)
will be treated as though it has been filed within one of
the time periods set forth in 37 CFR 1.97(b) and will be
considered without the petition and petition fee required in
37 CFR 1.97(d), if it complies with the requirements of 37
CFR 1.98.

  If the application qualifies under 37 CFR 1.129(a), that
is, it was filed on or before June 8, 1995 and the
application has an effective U.S. filing date of June 8,
1993 or earlier, the examiner must check to see if the
submission and 37 CFR 1.17(r) fee were filed prior to the
filing of the Appeal Brief and prior to abandonment of the
application. If an amendment was timely filed in response to
the final rejection but the fee set forth in 37 CFR 1.17(r)
did not accompany the amendment, examiners will continue to
consider these amendments in an expedited manner as set
forth  in  MPEP  §  714.13  and  issue  an  advisory  action
notifying applicant whether the amendment has been entered.
If the examiner indicated in an advisory action that the
amendment has not been entered, applicant may then pay the
fee set forth in 37 CFR 1.17(r) and any necessary fee to
avoid abandonment of the application and obtain entry and
consideration of the amendment as a submission under 37 CFR
1.129(a). If the submission and the fee set forth in 37 CFR
1.17(r) were timely filed in response to the final rejection
and no advisory action has been issued prior to the payment
of the fee set forth in 37 CFR 1.17(r), no advisory action
will be necessary. The examiner will notify applicant that
the  finality  of  the  previous  office  action  has  been
withdrawn pursuant to 37 CFR 1.129(a). It is noted that if
the submission is accompanied by a "conditional" payment of
the fee set forth in 37 CFR 1.17(r), i.e., an authorization
to charge the fee set forth in 37 CFR 1.17(r) to a deposit
account in the event that the submission would not otherwise
be entered, the PTO will treat the conditional payment as an
unconditional payment of the 37 CFR 1.17(r) fee.

  The finality of the final rejection is automatically
withdrawn upon the timely filing of the submission and
payment of the fee set forth in 37 CFR 1.17(r). Upon the
timely payment of the fee set forth in 37 CFR 1.17(r), all
previously unentered submissions, submissions filed with the
37 CFR 1.17(r) fee, and any submissions filed prior to the
mailing of the next Office action will be entered. Any
conflicting amendments should be clarified for entry by the
applicant upon payment of the 37 CFR 1.17(r) fee. Absent
specific instructions for entry, all submissions filed as of
the date of the withdrawal of the finality of the previous
final action will be entered in the order in which they were
filed. Form paragraph 7.42.01 should be used to notify
applicant that the finality of the previous Office action
has been withdrawn.

¶ 7.42.01  Withdrawal of Finality of Last Office Action
Transitional Application Under 37 CFR 1.129(a)

  Since this application is eligible for the transitional
procedure of 37 CFR 1.129(a) and * the fee set forth in 37
CFR 1.17(r) has been timely paid, the finality of the
previous Office action has been withdrawn pursuant to 37 CFR
1.129(a). Applicant's [1] submission filed on [2] has been
entered.

 Examiner Note:

  Insert "first" or "second" in bracket 1.

  If a Notice of Appeal and the appeal fee set forth in 37
CFR 1.17(e) were filed prior to or with the payment of the
fee set forth 37 CFR 1.17(r), the payment of the fee set
forth in 37 CFR 1.17(r) by applicant is construed as a
request to dismiss the appeal and to continue prosecution
under 37 CFR 1.129(a).

  Upon the timely payment of the fee set forth in 37 CFR
1.17(r), if the examiner determines that the submission is
not fully responsive to the previous Office action, e.g., if
the  submission  only  includes  an  information  disclosure
statement, applicant will be given a new shortened statutory
period of 1 month or 30 days, whichever is longer, to submit
a complete response. Form paragraph 7.42.02 should be used.

¶ 7.42.02  Non> - < responsive Submission Filed Under 37
CFR 1.129(a)

  The timely submission under 37 CFR 1.129(a) filed on [1]
is non - responsive to the prior Office action because [2].
Since the submission appears to be a bona fide attempt to
provide a complete response to the prior Office action,
applicant is given a shortened statutory period of ONE MONTH
or THIRTY DAYS from the date of this letter, whichever is
longer,  to  submit  a  complete  response.  This  shortened
statutory period supersedes the time period set in the prior
Office action. This time period may be extended pursuant to
37 CFR 1.136(a). If a Notice of Appeal and the appeal fee
set forth in 37 CFR 1.17(e)were filed prior to or with the
payment of the fee set forth in 37 CFR 1.17(r), the payment
of the fee set forth in 37 CFR 1.17(r) by applicant is
construed as a request to dismiss the appeal and to continue
prosecution  under  37  CFR  1.129(a).  The  appeal  stands
dismissed.

 Examiner Note:

  The reasons why the examiner considers the submission to
be >non - responsive< must be set forth in bracket 2.

  After submission and payment of the fee set forth in 37
CFR 1.17(r), the next Office action on the merits may be
made final only under the conditions for making a first
action in a continuing application final set forth in MPEP §
706.07(b).

  Form paragraph 7.42.03 may be used if it is appropriate
to make the first action final following a submission under
37 CFR 1.129(a).

¶ 7.42.03  Action  Is  Final,  First  Action  Following
Submission Under 37 CFR 1.129(a)

  All claims are drawn to the same invention claimed in
the application prior to the entry of the submission under
37 CFR 1.129(a) and could have been finally rejected on the
grounds and art of record in the next Office action if they
had been entered in the application prior to entry under 37
CFR 1.129(a). Accordingly, THIS ACTION IS MADE FINAL even
though it is a first action after the submission under 37
CFR 1.129(a). See MPEP § 706.07(b). Applicant is reminded of
the extension of time policy as set forth in 37 CFR
1.136(a).

  A shortened statutory period for response to this final
action is set to expire THREE MONTHS from the date of this
action. In the event a first response is filed within TWO
MONTHS of the mailing date of this final action and the
advisory action is not mailed until after the end of the
THREE - MONTH shortened statutory period, then the shortened
statutory period will expire on the date the advisory action
is mailed, and any extension fee pursuant to 37 CFR 1.136(a)
will be calculated from the mailing date of the advisory
action. In no event will the statutory period for response
expire later than SIX MONTHS from the date of this final
action.

 Examiner Note:

  Also use form paragraph 7.41.02 if this is a final
rejection  following  a  first  submission  under  37  CFR
1.129(a).

  If  a  subsequent  final  rejection  is  made  in  the
application, applicant would be entitled to have a second
submission entered and considered on the merits under the
same conditions set forth for consideration of the first
submission. Form paragraph 7.41.02 should be used.

¶ 7.41.02  Transitional  After  Final  Practice,  Second
Submission (37 CFR 1.129(a))

  Since the fee set forth in 37 CFR 1.17(r) for a first
submission  subsequent  to  a  final  rejection  has  been
previously  paid,  applicant,  under  37  CFR  1.129(a),  is
entitled to have a second submission entered and considered
on  the  merits  if,  prior  to  abandonment,  the  second
submission and the fee set forth in 37 CFR 1.17(r) are filed
prior to the filing of an appeal brief under 37 CFR 1.192.
Upon the timely filing of a second submission and the
appropriate fee of $[1] for a [2] >entity< under 37 CFR
1.17(r), the finality of the previous Office action will be
withdrawn. If a Notice of Appeal and the appeal fee set
forth in 37 CFR 1.17(e) were filed prior to the payment of
the fee set forth in 37 CFR 1.17(r), the payment of the fee
set forth in 37 CFR 1.17(r) by applicant will be construed
as  a  request  to  dismiss  the  appeal  and  to  continue
prosecution under 37 CFR 1.129(a). In view of 35 U.S.C. 132,
no amendment considered as a result of payment of the fee
set forth in 37 CFR 1.17(r) may introduce new matter into
the disclosure of the application.

 Examiner Note:

  1.  This form paragraph is to follow any of form

paragraphs 7.39 - 7.41 in any application filed prior to
June 9, 1995, which has been pending for at least two years
as of June 8, 1995, taking into account any reference under
35  U.S.C.  120,  121  or  365(c)  to  a  previously  filed
application and a first submission fee has been previously
paid under 37 CFR 1.17(r).

  2.  This form paragraph should NOT be used in a design
or reissue application or in a reexamination proceeding.

  3.  In bracket 1, insert the current fee for a large or
small entity, as appropriate.

  4.  In bracket 2, insert "small" or "large," depending
on the current status of the application.

  5.  If the fee set forth in 37 CFR 1.17(r) has been
twice paid, the provisions of 37 CFR 1.129(a) are no longer
available.

  Any submission filed after a final rejection made in the
application subsequent to the fee set forth in 37 CFR
1.17(r) having been twice paid will be treated in accordance
with the current after - final practice set forth in 37 CFR
1.116.

707  Examiner's Letter or Action [R - 2]

 37 CFR 1.104. Nature of examination; examiner's action

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

  (b) The applicant, or in the case of a reexamination
proceeding, both the patent owner and the requester, will be
notified of the examiner's action. The reasons for any
adverse action or any objection or requirement will be
stated and such information or references will be given as
may be useful in aiding the applicant or in the case of a
reexamination proceeding the patent owner, to judge the
propriety of continuing the prosecution.

  (c) An international - type search will be made in all
national applications filed on and after June 1, 1978.

  (d)  Any  national  application  may  also  have  an
international - type search report prepared thereon at the
time  of  the  national  examination  on  the  merits,  upon
specific  written  request  therefor  and  payment  of  the
international - type search report fee. See § 1.21(e) for
amount of fee for preparation of international - type search
report.

  NOTE. - The Patent and Trademark Office does not require
that a formal report of an international - type search be
prepared in order to obtain a search fee refund in a later
filed international application.

  (e) Co - pending applications will be considered by the
examiner to be owned by, or subject to an obligation of
assignment to, the same person if: (1) the application files
refer to assignments recorded in the Patent and Trademark
Office in accordance with Part 3 of this chapter which
convey the entire rights in the applications to the same
person  or  organization:  or  (2)  copies  of  unrecorded
assignments  which  convey  the  entire  rights  in  the
applications to the same person or organization are filed in
each of the applications; or (3) an affidavit or declaration
by the common owner is filed which states that there is
common ownership and states facts which explain why the
affiant or declarant believes there is common ownership; or
(4) other evidence is submitted which establishes common
ownership of the applications. In circumstances where the
common owner is a corporation or other organization, an
affidavit or declaration may be signed by an official of the
corporation or organization empowered to act on behalf of
the corporation or organization.

  For Office actions in reexamination proceedings, see
MPEP § 2260.

  Under the current first action procedure, the examiner
signifies on the action form PTOL - 326 certain information
including the period set for response, any attachments, and
a "summary of action," the position taken on all claims.

  Current procedure also allows the examiner, in the
exercise of his professional judgment to indicate that a
discussion with applicant's or patent owner's representative
may result in agreements whereby the application or patent
under reexamination may be placed in condition for allowance
and that the examiner will telephone the representative
within about 2 weeks. Under this practice the applicant's or
patent owner's representative can be adequately prepared to
conduct such a discussion. Any resulting amendment may be
made either by the applicant's or patent owner's attorney or
agent or by the examiner in an examiner's amendment. It
should be recognized that when extensive amendments are
necessary it would be preferable if they were filed by the
attorney  or  agent  of  record,  thereby  reducing  the
professional and clerical workload in the Office and also
providing the file wrapper with a better record, including
applicant's arguments for allowability as required by 37 CFR
1.111.

  The list of references cited appears on a separate form,
Notice of References Cited, PTO - 892 (copy in MPEP §
707.05) attached to applicant's copies of the action. Where
applicable, Notice of Informal Patent Drawings, PTO - 948
and Notice of Informal Patent Application, PTO - 152 are
attached to the first action.

  The attachments have the same paper number and are to be
considered as part of the Office action.

  Replies to Office actions should include the 4 - digit
art unit number and the examiner's name to expedite handling
within the Office.

  In  accordance  with  the  Patent  Law,  "Whenever,  on
examination, any claim for a patent is rejected >,< or any
objection . . made", notification of the reasons for

rejection and/or objection together with such information
and references as may be useful in judging the propriety of
continuing the prosecution (35 U.S.C. 132) should be given.

  When considered necessary for adequate information, the
particular figure(s) of the drawing(s), and/or page(s) or
paragraph(s)  of  the  reference(s),  and/or  any  relevant
comments briefly stated should be included. For rejections
under 35 U.S.C. 103, the way in which a reference is
modified or plural references are combined should be set
out.

  In exceptional cases, as to satisfy the more stringent
requirements under 37 CFR 1.106(b), and in pro se cases
where the inventor is unfamiliar with the patent law and
practice, a more complete explanation may be needed.

  Objections to the disclosure, explanation of references
cited but not applied, indication of allowable subject
matter, requirements (including requirements for restriction
if applicable) and any other pertinent comments may be
included. Summary sheet PTOL - 326, which serves as the
first page of the Office action, is to be used with all
first actions and will identify any allowed claims.

¶ 7.100  Name and Number of Examiner To Be Contacted

  An inquiry concerning this communication should be
directed to [1] at telephone number (703) [2].

 Examiner Note:

  1.  This paragraph or paragraph 7.101 should be used at
the conclusion of all actions.

  2.  In bracket 1, insert the name of the examiner
designated to be contacted first regarding inquiries about
the Office action. This could be either the non - signatory
examiner preparing the action or the signatory examiner.

  3.  In bracket 2, insert the individual phone number of
the examiner.

¶ 7.101  Telephone  Inquiry  Contacts  -  Non  5/4/9
Schedule

  Any inquiry concerning this communication or earlier
communications from the examiner should be directed to [1]
whose telephone number is (703) [2]. The examiner can
normally be reached on [3] from [4] to [5].

  If attempts to reach the examiner by telephone are
unsuccessful, the examiner's supervisor, [6], can be reached
on (703) [7]. The fax phone number for this group is (703)
[8].

  Any inquiry of a general nature or relating to the
status of this application or proceeding should be directed
to the group receptionist whose telephone number is (703)
[9].

 Examiner Note:

  1.  In bracket 1, insert your name.

  2.  In bracket 2, insert your individual phone number.

  3.  In bracket 3, insert the days that you work every
week, e.g., "Monday - Thursday" for an examiner off every
Friday.

  4.  In brackets 4 and 5, insert your normal duty hours.
e.g., "6:30 AM - 5:00 PM." Do not insert the core hours**.

  5.  In bracket 6, insert your SPE's name.

  6.  In bracket 7, insert your SPE's phone number.

  7.  In bracket 8, insert the group fax number.

  8.  In bracket 9, insert the telephone number for your
group receptionist.

¶ *>7.102<  Telephone Inquiry Contacts - 5/4/9 Schedule

  Any inquiry concerning this communication or earlier
communications from the examiner should be directed to [1]
whose telephone number is (703) [2]. The examiner can
normally be reached on [3] from [4] to [5]. The examiner can
also be reached on alternate [6].

  If attempts to reach the examiner by telephone are
unsuccessful, the examiner's supervisor, [7], can be reached
on (703) [8]. The fax phone number for this group is (703)
[9].

  Any inquiry of a general nature or relating to the
status of this application or proceeding should be directed
to the group receptionist whose telephone number is (703)
[10].

 Examiner Note:

  1.  In bracket 1, insert your name.

  2.  In bracket 2, insert your individual phone number.

  3.  In bracket 3, insert the days that you work every
week, e.g., "Monday - Thursday" for an examiner off on
alternate Fridays.

  4.  In brackets 4 and 5, insert your normal duty hours.
e.g., "6:30 AM - 5:00 PM." Do not insert the core hours**.

  5.  In bracket 6, insert the day in each pay period
that is your compressed day off, e.g., "Fridays" for an
examiner on 5/4/9 with the first Friday off.

  6.  In bracket 7, insert your SPE's name.

  7.  In bracket 8, insert the group phone number.

  8.  In bracket 9, insert your group fax number.

  9.  In bracket 10, insert the telephone number for your
group receptionist.

¶ *>7.103<  Statute Cited in Prior Action

  The text of those sections of Title 35, U.S.C. ode not

included in this action can be found in a prior Office
action.

 **  Double Click here to see the image  **

707.01  Primary Examiner Indicates Action for New
Assistant [R - 1]

  >After the search has been completed, action is taken in
the light of the references found. Where the assistant
examiner has been in the Office but a short time, it is the
duty of the primary examiner to go into the case thoroughly.
The usual procedure is for the assistant examiner to explain
the invention and discuss the references which he or she
regards as most pertinent. The primary examiner may indicate
the action to be taken, whether restriction or election of
species is to be required, or whether the claims are to be
considered on their merits. If action on the merits is to be
given, the examiner may indicate how the references are to
be applied in cases where the claim is to be rejected, or
authorize allowance if it is not met in the references and
no further field of search is known.<

707.02(a)  Cases Up for Third Action and 5 - Year Cases
[R - 1]

  >The supervisory primary examiners should impress their
assistants with the fact that the shortest path to the final
disposition  of  an  application  is  by  finding  the  best
references on the first search and carefully applying them.

  The  supervisory  primary  examiners  are  expected  to
personally check on the pendency of every application which
is up for the third or subsequent official action with a
view to finally concluding its prosecution.

  Any case that has been pending five years should be
carefully studied by the supervisory primary examiner and
every effort made to terminate its prosecution. In order to
accomplish  this  result,  the  case  is  to  be  considered
"special" by the examiner.<

 **

 707.05  Citation of References [R - 3]

  During  the  examination  of  an  application  or
reexamination  of  a  patent,  the  examiner  should  cite
appropriate prior art which is nearest to the subject matter
defined in the claims. When such prior art is cited, its
pertinence should be explained.

  Form Paragraph 7.96 may be used as an introductory
sentence.

¶ 7.96  Citation of Pertinent Prior Art

  The prior art made of record and not relied upon is
considered pertinent to applicant's disclosure. [1]

 Examiner Note :

  When such prior art is cited, its pertinence should be
explained in accordance with MPEP § 707.05.

  Effective June 8, 1995, Public Law 103 - 465 amended 35
U.S.C. 154 to change the term of a patent to 20 years
measured  from  the  filing  date  of  the  earliest  U.S.
application for which benefit under 35 U.S.C. 120, 121 or
365(c) is claimed. The 20 - year patent term applies to all
utility and plant patents issued on applications filed on or
after June 8, 1995. As a result of the 20 - year patent
term,  it  is  expected,  in  certain  circumstances,  that
applicants may cancel their claim to priority by amending
the  specification  to  delete  any  references  to  prior
applications.  Therefore,  examiners  should  search  all
applications based on the actual U.S. filing date of the
application rather than on the filing date of any parent
U.S. application for which priority is claimed. Examiners
should cite of interest all material prior art having an
effective filing date after the filing date of the U.S.
parent application but before the actual filing date of the
application being examined.

  Allowed applications should generally contain a citation
of pertinent prior art for printing in the patent, even if
no claim presented during the prosecution was considered
unpatentable over such prior art. Only in those instances
where a proper search has not revealed any prior art
relevant to the claimed invention is it appropriate to send
a case to issue with no art cited. In the case where no
prior art is cited, the examiner must write "None" on a form
PTO  -  892  and  insert  it  in  the  file  wrapper.  Where
references have been cited during the prosecution of parent
applications and a continuing application, having no newly
cited  references,  is  ready  for  allowance,  the  cited
references of the parent applications should be listed on a
form PTO - 892. The form should then be placed in the file
of the continuing application. See MPEP § 1302.12. In a file
wrapper continuing application under 37 CFR 1.62, it is not
necessary to prepare a new form PTO - 892 since the form
from the parent application is in the same file wrapper and
will be used by the printer.

  In all continuation and continuation - in - part
applications, the parent applications should be reviewed for
pertinent prior art.

  Applicants and/or applicants' attorney in PCT related
national  applications  may  wish  to  cite  the  material
citations from the PCT International Search Report by an
information disclosure statement under 37 CFR 1.97 and 1.98
in order to ensure consideration by the examiner.

  In those instances where no information disclosure
statement  has  been  filed  by  the  applicant  and  where
documents are cited in the International Search Report but
neither a copy of the documents nor an English translation
(or English family member) is provided, the examiner may
exercise discretion in deciding whether to take necessary
steps to obtain the copy and/or translation.

  Copies of documents cited will be provided as set forth
in MPEP § 707.05(a). That is, copies of documents cited by
the examiner will be provided to applicant except where the
documents

  A.  are cited by applicant in accordance with MPEP §
609, § 707.05(b), and § 708.02,

  B.  have been referred to in applicant's disclosure
statement,

  C.  are cited and have been provided in a parent
application, and

  D.  are U. S. Patents which are cited at allowance
(MPEP § 1302.04).

 37 CFR 1.107.  Citation of references.

  (a) If domestic patents are cited by the examiner, their
numbers and dates, and the names of the patentees ** must be
stated. If foreign published applications or patents are
cited, their nationality or country, numbers and dates, and
the names of the patentees must be stated, and such other
data must be furnished as may be necessary to enable the
applicant, or in the case of a reexamination proceeding, the
patent owner, to identify the published applications or
patents cited. In citing foreign published applications or
patents, in case only a part of the document is involved,
the particular pages and sheets containing the parts relied
upon must be identified. If printed publications are cited,
the author (if any), title, date, pages or plates, and place
of publication, or place where a copy can be found, shall be
given.

  (b) When a rejection in an application is based on facts
within the personal knowledge of an employee of the Office,
the data shall be as specific as possible, and the reference
must be supported, when called for by the applicant, by the
affidavit of such employee, and such affidavit shall be
subject to contradiction or explanation by the affidavits of
the applicant and other persons.

707.05(a)  Copies of Cited References [R - 1]

  >Copies of cited references (except as noted below) are
automatically furnished without charge to applicant together
with the Office action in which they are cited. Copies of
the cited references are also placed in the application file
for use by the examiner during the prosecution.

  Copies of references cited by applicant in accordance
with MPEP § 609, § 707.05(b) and § 708.02 are not furnished
to applicant with the Office action. Additionally, copies of
references cited in continuation applications if they had
been previously cited in the parent application are not
furnished. The examiner should check the left hand column of
form PTO - 892 if a copy of the reference is not to be
furnished to the applicant.

  Copies  of  foreign  patent  documents  and  nonpatent
literature (NPL) which are cited by the examiner at the time
of allowance will be furnished to applicant with the Office
action, and copies of the same will also be retained in the
file. This will apply to all allowance actions, including
first action allowances and Ex Parte Quayle  actions.

  In the rare instance where no art is cited in a
continuation application, all the references cited during
the prosecution of the parent application will be listed at
allowance for printing in the patent.

  To  assist  in  providing  copies  of  references,  the
examiner should:

  (a)  Write the citation of the references on form
PTO - 892, "Notice of References Cited".

  (b)  Place the form PTO - 892 in the front of the
file wrapper.

  (c)  Include in the application file wrapper all of
the references cited by the examiner which are to be
furnished to the applicant and which have been obtained from
the classified search file.

  (d)  Make two copies of each reference which is to
be supplied and which has been located in a place other than
the classified search file (i.e. textbooks, bound magazines,
personal search material, etc.). Using red ink identify one
copy  as  the  "File  Copy"  and  the  other  copy  as  the
"Applicant's Copy". Both copies should be placed in the
application file wrapper.

  (e)  Turn the application in to the Docket Clerk
for counting. Any application which is handed in without all
of the required references will be returned to the examiner.
The missing reference(s) should be obtained and the file
returned to the Docket Clerk as quickly as possible.

  In the case of design applications, procedures are the
same as set forth in MPEP § 707.05(a) - (g) except that less
than the entire disclosure of a cited U.S utility patent may
be supplied with the action by the Design Group. Copies of
all sheets of drawings relied on and of the first page of
the specification are furnished without charge. Any other
subject matter, including additional pages of specification
relied on by the examiner will be provided without charge.
Where an applicant desires a complete copy of a cited U.S.
utility patent, it may be obtained through the Customer
Services Division at the usual charge.<

 **  Double Click here to see the image  **

707.05(b)  Citation of Related Art by Applicants [R - 1]

  >MPEP  §  609  sets  forth  positive  guidelines  for
applicants, their attorneys and agents who desire to submit
prior art for consideration by the Patent and Trademark
Office.

  Submitted citations will not in any way diminish the
obligation of examiners to conduct independent prior art
searches, or relieve examiners of citing pertinent prior art
of which they may be aware, whether or not such art is cited
by the applicant.

  Prior art submitted by applicant in the manner provided
in MPEP § 609 will not be supplied with an Office action.<

707.05(c)  Order of Listing [R - 1]

  >In  citing  references  for  the  first  time,  the
identifying data of the citation should be placed on form
PTO - 892 "Notice of References Cited", a copy of which will
be attached to the Office action. No distinction is to be

made between references on which a claim is rejected and
those  formerly  referred  to  as  "pertinent".  With  the
exception of applicant submitted citations, MPEP § 609 and §
708.02, it is recommended that the pertinent features of
references which are not used as a basis for rejection, be
pointed out briefly.

  See MPEP § 1302.12.<

707.05(d)  Reference Cited in Subsequent Actions [R - 1]

  >Where an applicant in an amendatory paper refers to a
reference which is subsequently relied upon by the examiner,
such reference shall be cited by the examiner in the usual
manner using a form PTO - 892, "Notice of References Cited",
unless applicant has listed the reference on a PTO - 1449
which has been initialled by the examiner.<

707.05(e)  Data Used in Citing References [R - 3]

  37 CFR 1.107 ( MPEP § 707.05 and § 901.05(a)) requires
the examiner to give certain data when citing references.
The patent number, patent date, name of the patentee, class
and subclass and the filing date, if appropriate, *>are to<
be given in the citation of U.S. patents. This information
is listed on the "Notice of References Cited" form PTO - 892
(Copy at MPEP § 707.05). See MPEP § 901.04 for details
concerning the various series of U.S. patents and how to
cite them. Note that patents of the X - Series (dated prior
to July 4, 1836) are not to be cited by number. Some U.S.
patents issued in 1861 have two numbers thereon. The larger
number should be cited.

  If the patent date of a U.S. patent is after, and the
effective filing date of the patent is before, the effective
U.S. filing date of the application, the filing date of the
patent must be set forth along with the citation of the
patent. This calls attention to the fact that the particular
patent relied on is a reference because of its filing date
and not its patent date. Similarly, when the reference is a
continuation - in - part of an earlier filed application
which discloses the anticipatory matter and it is necessary
to go back to the earlier filing date, the fact that the
subject matter relied upon was originally disclosed on that
date in the first application should be stated.

  In the rare instance where no art is cited in a
continuation application, all the references cited during
the prosecution of the parent application will be listed at
allowance for printing in the patent. See MPEP § 707.05(a).

 CROSS - REFERENCES

  Official cross - references should be marked "X".

  FOREIGN PATENTS AND PUBLISHED APPLICATIONS

  In citing foreign patents, the patent number, citation
date, name of the country, name of the patentee, and U.S.
class and subclass>, if appropriate,< must be given. Foreign
patents  searched  in  those  Examining  Groups  filing  by
International Patent Classification (IPC) will be cited
using the appropriate IPC subclass/group/subgroup. On the
file wrapper "Searched" box and PTO - 892, the IPC subclass
shall be cited in the space provided for "Class", and IPC

group/subgroup shall be cited in the space provided for
"Subclass".

  In actions where references are furnished, and (1) less
than the entire disclosure is relied upon, the sheet and
page numbers specifically relied upon and the total number
of sheets of drawing and pages of specification must be
included (except applicant submitted citations); (2) the
entire disclosure is relied on, the total number of sheets
and pages are not included, and the appropriate columns on
PTO - 892 are left blank.

  Publications such as German allowed applications and
Belgian and Netherlands printed specifications should be
similarly handled. If the total number of sheets and pages
in any publication to be furnished(other than U.S. patents)
exceeds 15, the authorizing signature of the supervisory
primary examiner is required. Applicants who desire a copy
of the complete foreign patent or of the portion not "relied
on" must order it in the usual manner.

  See MPEP § 901.05(a) for a chart in which foreign
language terms indicative of foreign patent and publication
dates to be cited are listed.

  PUBLICATIONS

  See  MPEP  §  711.06(a)  for  citation  of  abstracts,
abbreviatures  and  defensive  publications.  See  MPEP  §
901.06(c)  for  citation  of  Alien  Property  Custodian
publications.  In  citing  a  publication,  sufficient
information should be given to determine the identity and
facilitate the location of the publication. For books the
data required by 37 CFR 1.107 (MPEP  § 707.05) with the
specific  pages  relied  on  identified  together  with  the
SCIENTIFIC LIBRARY call number will suffice. The call number
appears on the "spine" of the book if the book is thick
enough and, in any event, on the back of the title page.
Books on interlibrary loan will be marked with the call
numbers of the other library, of course. THIS NUMBER SHOULD
NOT BE CITED. The same convention should be followed in
citing articles from periodicals. The call number should be
cited for periodicals owned by the Scientific Library, but
not for periodicals borrowed from other libraries. In citing
periodicals, information sufficient to identify the article
includes the author(s) and title of the article and the
title, volume number issue number, date, and pages of the
periodical. If the copy relied on is located only in the
group making the action (there may be no call number), the
additional information,

  "Copy in Group

  Examples of nonpatent bibliographical citations:

 1. For books:

  Winslow. C. E. A. Fresh Air and Ventilation . N.Y., E.
P. Dutton, 1926. p. 97 - 112. TI17653.W5.

 2. For parts of books:

  Smith, J. F. "Patent Searching." in: Singer, T.E.R.,
Information and Communication Practice in Industry  (New
York, Reinhold, 1958), pp. 157 - 165. T 175.S5.

 3. For encyclopedia articles:

  Calvert, R. "Patents (Patent Law)." in: Encyclopedia of
Chemical Technology(1952 ed.), vol. 9, pp. 868 - 890. Ref.
TP9.E68.

 4. For sections of handbooks:

  Machinery's Handbook, 16th ed. New York, International
Press, 1959. pp. 1526 - 1527. TJ151.M3 1959.

 5. For periodical articles:

  Noyes, W. A.  A Climate for Basic Chemical Research.

  Chemical & Engineering News, Vol. 38, no. 42 (Oct. 17,
1960), pp. 91 - 95. TP1.I418.

  Note: DO NOT abbreviate titles of books or periodicals.

  A citation to P.S.E.B.M. is meaningless. References are
to be cited so that anyone reading a patent may identify and
retrieve the publications cited. Give as much bibliographic
information as possible, but at least enough to identify the
publication. For books, minimal information includes the
author, title and date. For periodicals, at least the title
of the periodical, the volume number, date, and pages should
be given. These minimal citations may be made ONLY IF the
complete bibliographic details are unknown or unavailable.

  If the original publication is located outside the
Office, the examiner should immediately make or order a
photocopy of at least the portion relied upon and indicate
the class and subclass in which it will be filed>,if any<.
**

707.05(f)  Effective Dates of Declassified Printed
Matter [R - 1]

  >In using declassified material as references there are
usually two pertinent dates to be considered, namely, the
printing date and the publication date. The printing date in
some instances will appear on the material and may be
considered as that date when the material was prepared for
limited distribution. The publication date is the date of
release when the material was made available to the public.
See Ex parte Harris et al ., 79 USPQ 439. If the date of
release does not appear on the material, this date may be
determined by reference to the Office of Technical Services,
Department of Commerce.

  In the use of any of the above noted material as an
anticipatory publication, the date of release following
declassification is the effective date of publication within
the meaning of the statute.

  For the purpose of anticipation predicated upon prior
knowledge  under  35  U.S.C.  102(a)  the  above  noted
declassified material may be taken as prima facie evidence
of such prior knowledge as of its printing date even though
such material was classified at that time. When so used the
material does not constitute an absolute statutory bar and
its printing date may be antedated by an affidavit or
declaration under 37 CFR 1.131.<

707.05(g)  Incorrect Citation of References [R - 1]

  >Where an error in citation of a reference is brought to
the  attention  of  the  Office  by  applicant,  a  letter
correcting the error, together with a correct copy of the
reference, is sent to applicant. See MPEP § 710.06. Where
the error is discovered by the examiner, applicant is also
notified and the period for response restarted. In either
case, the examiner is directed to correct the error, in ink,
in the paper in which the error appears, and place his or
her initials on the margin of such paper, together with a
notation of the paper number of the action in which the
citation has been correctly given. See MPEP § 710.06.

  Form PTOL - 316 is used to correct an erroneous citation
or an erroneously furnished reference. Clerical instructions
are outlined in the Manual of Clerical Procedures, § 410.C
(2) and (3).

  Form Paragraphs 7.81 - 7.83 may be used to correct
citations or copies of references cited.

¶ 7.81  Correction Letter re Last Office Action

  In response to applicant's [1] regarding the last Office
action, the following corrective action is taken.

  The period for response of [2] MONTHS set in said office
action is RESTARTED to begin with the date of this letter.

 Examiner Note:

  1.  In bracket 1, insert - - telephone inquiry of
_____________ . - - or - - communication dated _________. -
-

  2.  In bracket 2, insert the new period for response.

  3.  This paragraph must be followed by one or more of
paragraphs 7.82, 7.82.01 or 7.83.

  4.  Before restarting the period, the SPE should be
consulted.

¶ 7.82  Correction of Reference Citation

  The reference [1] was not correctly cited in the last
Office action. The corrected citation is shown on the
attached PTO - 892.

 Examiner Note:

  1.  Every correction MUST be reflected on a corrected
or new PTO - 892.

  2.  This paragraph must follow paragraph 7.81.

  3.  If a copy of the PTO - 892 is being provided
without correction, use paragraph 7.83 instead of this
paragraph.

  4.  Also use paragraph 7.82.01 if reference copies are
being supplied.

¶ 7.82.01  Copy of Reference(s) Furnished

  Copies  of  the  following  references  not  previously
supplied are enclosed:

 Examiner Note:

  1.  The reference copies being supplied must be listed
following this paragraph.

  2.  This paragraph must be preceded by paragraph 7.81
and may also be used with paragraph 7.82 or 7.83.

¶ 7.83  Copy of Office Action Supplied

  [1] of the last Office action is enclosed.

 Examiner Note:

  1.  In  bracket  1,  explain  what  is  enclosed.  For
example:

  a. "A corrected copy"

  b. "A complete copy"

  c. A specific page or pages, e.g., "Pages 3 - 5"

  d "A Notice of Reference Cited, Form PTO - 892"

  2.  This paragraph should follow paragraph 7.81 and may
follow paragraphs 7.82 and 7.82.01.

  In any case otherwise ready for issue, in which the
erroneous citation has not been formally corrected in an
official paper, the examiner is directed to correct the
citation on an examiner's amendment form PTOL - 37.

  If a FOREIGN patent is incorrectly cited: for example,
the wrong country is indicated or the country omitted from
the citation, the General Reference Branch of the Scientific
Library may be helpful. The date and number of the patent
are often sufficient to determine the correct country which
granted the patent.

  To correct a citation prior to mailing, see the Manual
of Clerical Procedures, § 410.C(1).<

707.06  Citation of Decisions, Orders Memorandums, and
Notices [R - 1]

  >In citing court decisions, the USPQ citation should be
given and, when it is convenient to do so, the U.S., CCPA or
Federal Reporter citation should also be provided.

  The citation of manuscript decisions which are not
available to the public should be avoided.

  It is important to recognize that a Federal District
Court decision that has been reversed on appeal cannot be
cited as authority.

  In citing a manuscript decision which is available to
the public but which has not been published, the tribunal
rendering the decision and complete data identifying the

paper should be given. Thus, a decision of the Board of
Patent  Appeals  and  Interferences  which  has  not  been
published but which is available to the public in the
patented file should be cited, as " Ex parte

  Decisions found only in patented files should be cited
only when there is no published decision on the same point.

  When a Commissioner's order, notice or memorandum not
yet incorporated into this manual is cited in any official
action,  the  title  and  date  of  the  order,  notice  or
memorandum should be given. When appropriate other data,
such as a specific issue of the Journal of the Patent Office
Society or of the Official Gazette in which the same may be
found, should also be given.<

707.07  Completeness and Clarity of Examiner's Action [R -
3]

 37 CFR 1.105. Completeness of examiner's action.

  The examiner's action will be complete as to all
matters, except that in appropriate circumstances, such as
misjoinder  of  invention,  fundamental  defects  in  the
application, and the like, the action of the examiner may be
limited to such matters before further action is made.
However, matters of form need not be raised by the examiner
until a claim is found allowable.

  Form Paragraphs 7.37 *>through< 7.38 may be used where
applicant's arguments are not persuasive or >are< moot.

¶ 7.37  Arguments Are Not Persuasive

  Applicant's  arguments  filed  [1]  have  been  fully
considered but they are not persuasive. [2].

 Examiner Note:

  1.  The examiner must address all arguments which have
not already been responded to in the statement of the
rejection.

  2.  In bracket 2, provide explanation as in non -
persuasiveness.

¶ 7.38  Arguments  Are  Moot  Because  of  New  Ground  of
Rejection

  Applicant's arguments with respect to claim [1] have
been considered but are moot in view of the new grounds of
rejection.

 Examiner Note:

  The  examiner  must,  however,  address  any  arguments
presented by the applicant which are still relevant to any
references being applied.

>¶  7.37.01  Unpersuasive  Argument:  Age  of
Reference(s)

  In response to applicant's argument based upon the age
of the references, contentions that the reference patents
are old are not impressive absent a showing that the art

tried and failed to solve the same problem notwithstanding
its presumed knowledge of the references. In re Wright , 569
F.2d 1124, 193 USPQ 332 (CCPA 1977).

 Examiner Note:

  This form paragraph must be preceded by form paragraph
7.37.

¶ 7.37.02  Unpersuasive Argument: Bodily Incorporation

  In response to applicant's argument that [1], the test
for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of
the primary reference; nor is it that the claimed invention
must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings
of the references would have suggested to those of ordinary
skill in the art. In re Keller , 642 F.2d 413, 208 USPQ 871
(CCPA 1981).

 Examiner Note:

  1. In bracket 1, briefly restate applicant's arguments
with respect to the issue of bodily incorporation.

  2. This form paragraph must be preceded by form paragraph
7.37.

¶ 7.37.03  Unpersuasive Argument: Hindsight Reasoning

  In response to applicant's argument that the examiner's
conclusion of obviousness is based upon improper hindsight
reasoning, it must be recognized that any judgment on
obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning. But so long as it takes into
account  only  knowledge  which  was  within  the  level  of
ordinary skill at the time the claimed invention was made,
and  does  not  include  knowledge  gleaned  only  from  the
applicant's disclosure, such a reconstruction is proper. In
re McLaughlin , 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).

 Examiner Note:

  This form paragraph must be preceded by form paragraph
7.37.

¶ 7.37.04  Unpersuasive  Argument:  No  Suggestion  To
Combine

  In response to applicant's argument that there is no
suggestion  to  combine  the  references,  the  examiner
recognizes that obviousness can only be established by
combining or modifying the teachings of the prior art to
produce the claimed invention where there is some teaching,
suggestion, or motivation to do so found either in the
references  themselves  or  in  the  knowledge  generally
available to one of ordinary skill in the art. In re Fine ,
837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988);  In re Jones
, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992). In this
case, [1].

 Examiner Note:

  1. In bracket 1, explain where the motivation for the

rejection is found, either in the references, or in the
knowledge generally available to one of ordinary skill in
the art.

  2. This form paragraph must be preceded by form paragraph
7.37.

¶ 7.37.05  Unpersuasive Argument: Nonanalogous Art

  In  response  to  applicant's  argument  that  [1]  is
nonanalogous  art,  it  has  been  held  that  a  prior  art
reference  must  either  be  in  the  field  of  applicant's
endeavor or, if not, then be reasonably pertinent to the
particular problem with which the applicant was concerned,
in order to be relied upon as a basis for rejection of the
claimed invention. In re Oetiker , 977 F.2d 1443, 24 USPQ2d
1443, 1445 (Fed. Cir. 1992). In this case, [2].

 Examiner Note:

  1. In bracket 1, enter the name of the reference which
applicant alleges is nonanalogous.

  2. In bracket 2, explain why the reference is analogous
art.

  3. This form paragraph must be preceded by form paragraph
7.37.

¶ 7.37.06  Unpersuasive Argument: Number of References

  In response to applicant's argument that the examiner
has combined an excessive number of references, reliance on
a large number of references in a rejection does not,
without more, weigh against the obviousness of the claimed
invention. In re Gorman , 933 F.2d 982, 18 USPQ2d 1885 (Fed.
Cir. 1991).

 Examiner Note:

  This form paragraph must be preceded by form paragraph
7.37.

¶ 7.37.07  Unpersuasive  Argument:  Applicant  Obtains
Result Not Contemplated by Prior Art

  In response to applicant's argument that [1], the fact
that applicant has recognized another advantage which would
flow naturally from following the suggestion of the prior
art  cannot  be  the  basis  for  patentability  when  the
differences would otherwise be obvious. Ex parte Obiaya ,
227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).

 Examiner Note:

  1. In bracket 1, briefly restate applicant's arguments
with respect to the issue of results not contemplated by the
prior art.

  2. This form paragraph must be preceded by form paragraph
7.37.

¶ 7.37.08  Unpersuasive  Argument:  Arguing  Limitations
Which Are Not Claimed

  In response to applicant's argument that the references
fail to show certain features of applicant's invention, it
is noted that the features upon which applicant relies
(i.e., [1]) are not recited in the rejected claim(s).
Although  the  claims  are  interpreted  in  light  of  the
specification, limitations from the specification are not
read into the claims. In re Van Guens , 988 F.2d 1181, 26
USPQ2d 1057 (Fed. Cir. 1993).

 Examiner Note:

  1. In bracket 1, recite the features upon which applicant
relies, but which are not recited in the claim(s).

  2. This form paragraph must be preceded by form paragraph
7.37.

¶ 7.37.09  Unpersuasive Argument: Intended Use

  In response to applicant's argument that [1] , a
recitation of the intended use of the claimed invention must
result  in  a  structural  difference  between  the  claimed
invention  and  the  prior  art  in  order  to  patentably
distinguish the claimed invention from the prior art. If the
prior art structure is capable of performing the intended
use, then it meets the claim. In a claim drawn to a process
of making, the intended use must result in a manipulative
difference as compared to the prior art.  In re Casey , 152
USPQ 235 (CCPA 1967);  In re Otto , 136 USPQ 458, 459 (CCPA
1963).

 Examiner Note:

  1. In bracket 1, briefly restate applicant's arguments
with respect to the issue of intended use.

  2. This form paragraph must be preceded by form paragraph
7.37.

¶ 7.37.10  Unpersuasive  Argument:  Limitation(s)  in
Preamble

  In response to applicant's arguments, the recitation
that [1] has not been given patentable weight because the
recitation occurs in the preamble. A preamble is generally
not accorded any patentable weight where it merely recites
the purpose of a process or the intended use of a structure,
and where the body of the claim does not depend on the
preamble for completeness but, instead, the process steps or
structural limitations are able to stand alone.  In re Hirao
, 535 F.2d 67, 190 USPQ 15 (CCPA 1976);  Kropa v. Robie , 88
USPQ 478, 481 (CCPA 1951).

 Examiner Note:

  1. In bracket 1, briefly restate the recitation about
which applicant is arguing.

  2. This form paragraph must be preceded by form paragraph
7.37.

¶ 7.37.11  Unpersuasive Argument: General Allegation of
Patentability

  Applicant's  arguments  fail  to  comply  with  37  CFR

1.111(b) because they amount to a general allegation that
the  claims  define  a  patentable  invention  without
specifically pointing out how the language of the claims
patentably distinguishes them from the references.

 Examiner Note:

  This form paragraph must be preceded by form paragraph
7.37.

¶ 7.37.12  Unpersuasive Argument: Novelty Not Clearly
Pointed Out

  Applicant's arguments do not comply with 37 CFR 1.111(c)
because they do not clearly point out the patentable novelty
which he or she thinks the claims present in view of the
state of the art disclosed by the references cited or the
objections  made.  Further,  they  do  not  show  how  the
amendments avoid such references or objections.

 Examiner Note:

  This form paragraph must be preceded by form paragraph
7.37.

¶ 7.37.13  Unpersuasive  Argument:  Arguing  Against
References Individually

  In  response  to  applicant's  arguments  against  the
references individually, one cannot show non - obviousness
by attacking references individually where the rejections
are based on combinations of references. In re Keller , 642
F.2d 413, 208 USPQ 871 (CCPA 1981);  In re Merck & Co., Inc.
, 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).

 Examiner Note:

 This form paragraph must be preceded by form paragraph
7.37.<

707.07(a)  Complete Action on Formal Matters [R - 1]

  >Forms are placed in informal applications listing
informalities noted by the Draftsman (Form PTO - 948) and
the Application Division (Form PTO - 152). Each of these
forms comprises an original for the file record and a copy
to be mailed to applicant as a part of the examiners first
action. They are specifically referred to as attachments to
the letter and are marked with its paper number. In every
instance where these forms are to be used, they should be
mailed with the examiner's first letter, and any additional
formal requirements which the examiner desires to make
should be included in the first letter.

  When any formal requirement is made in an examiner's
action, that action should, in all cases where it indicates
allowable subject matter, call attention to 37 CFR 1.111(b)
and state that a complete response must either comply with
all  formal  requirements  or  specifically  traverse  each
requirement not complied with.

¶ 7.43.03  Allowable Subject Matter, Formal Requirements
Outstanding

  As  allowable  subject  matter  has  been  indicated,

applicant's response must either comply with all formal
requirements or specifically traverse each requirement not
complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).

 Examiner Note:

  This paragraph would be appropriate when changes must be
made prior to allowance. For example, when there is a
requirement  for  drawing  corrections  that  have  to  be
submitted  for  approval  or  when  corrections  to  the
specification have to be made prior to allowance.<

707.07(b)  Requiring New Oath [R - 1]

  >See MPEP § 602.02.<

707.07(c)  Draftsman's Requirement [R - 1]

  >See MPEP § 707.07(a); also MPEP § 608.02(a), (e), and
(s).<

707.07(d)  Language To Be Used In Rejecting Claims [R -
3]

  Where a claim is refused for any reason relating to the
merits thereof it should be "rejected" and the ground of
rejection fully and clearly stated, and the word "reject"
must be used. The examiner should designate the statutory
basis for any ground of rejection by express reference to a
section of 35 U.S.C. in the opening sentence of each ground
of rejection. If the claim is rejected as too broad, the
reason for so holding should be given; if rejected as
indefinite  the  examiner  should  point  out  wherein  the
indefiniteness resides; or if rejected as incomplete, the
element or elements lacking should be specified, or the
applicant be otherwise advised as to what the claim requires
to render it complete.

  See MPEP § 706.02(i), (j), and (m) for language to be
used.

  Everything  of  a  personal  nature  must  be  avoided.
Whatever may be the examiners view as to the utter lack of
patentable  merit  in  the  disclosure  of  the  application
examined, he or she should not express in the record the
opinion that the application is, or appears to be, devoid of
patentable subject matter. Nor should he or she express
doubts as to the allowability of allowed claims or state
that every doubt has been resolved in favor of the applicant
in granting him the claims allowed.

  **

  The examiner should, as a part of the first Office
action on the merits, identify any claims which he or she
judges, as presently recited, to be allowable and/or should
suggest any way in which he or she considers that rejected
claims may be amended to make them allowable. If the
examiner does not do this, then by implication it will be
understood by the applicant or his or her attorney or agent
that in the examiner's opinion, as presently advised, there
appears to be no allowable claim nor anything patentable in
the subject matter to which the claims are directed.

 IMPROPERLY EXPRESSED REJECTIONS

  An omnibus rejection of the claim "on the references and
for the reasons of record" is stereotyped and usually not
informative  and  should  therefore  be  avoided.  This  is
especially true where certain claims have been rejected on
one ground and other claims on another ground.

  A plurality of claims should never be grouped together
in a common rejection, unless that rejection is equally
applicable to all claims in the group.

707.07(e)  Note All Outstanding Requirements [R - 1]

  >In taking up an amended case for action the examiner
should note in every letter all the requirements outstanding
against the case. Every point in the prior action of an
examiner which is still applicable must be repeated or
referred  to,  to  prevent  the  implied  waiver  of  the
requirement .

  As soon as allowable subject matter is found, correction
of all informalities then present should be required .<

707.07(f)  Answer All Material Traversed [R - 2]

  Where the requirements are traversed, or suspension
thereof requested, the examiner should make proper reference
thereto in his action on the amendment.

  Where  the  applicant  traverses  any  rejection,  the
examiner should, if he or she repeats the rejection, take
note of the applicant's argument and answer the substance of
it.

  If a rejection of record is to be applied to a new or
amended claim, specific identification of that ground of
rejection, as by citation of the paragraph in the former
Office letter in which the rejection was originally stated,
should be given.

  ANSWERING ASSERTED ADVANTAGES

  After an Office action, the response (in addition to
making amendments, etc.) may frequently include arguments
and affidavits to the effect that the prior art cited by the
examiner does not teach how to obtain or does not inherently
yield one or more advantages (new or improved results,
functions or effects), which advantages are urged to warrant
issue of a patent on the allegedly novel subject matter
claimed.

  If it is the examiner's considered opinion that the
asserted advantages are without significance in determining
patentability of the rejected claims, he or she should state
the  reasons  for  his  or  her  position  in  the  record,
preferably in the action following the assertion or argument
relative to such advantages. By so doing the applicant will
know  that  the  asserted  advantages  have  actually  been
considered by the examiner and, if appeal is taken, the
Board of Patent Appeals and Interferences will also be
advised.

  The  importance  of  answering  such  arguments  is
illustrated by In re Herrmann **>261 F.2d 598, 120 USPQ 182
(CCPA 1958)< where the applicant urged that the subject

matter claimed produced new and useful results. The court
noted that since applicant's statement of advantages was not
questioned by the examiner or the Board of Appeals, it was
constrained to accept the statement at face value and
therefore found certain claims to be allowable.

  >See also In re Soni , 54 F.3d 746, 751, 34 USPQ2d 1684,
1688 (Fed Cir. 1995) (Office failed to rebut applicant's
argument).<

707.07(g)  Piecemeal Examination [R - 2]

  Piecemeal examination should be avoided as much as
possible. The examiner ordinarily should reject each claim
on all valid grounds available, avoiding, however, undue
multiplication of references. (See MPEP § 904.02.) Major
technical rejections on grounds such as lack of proper
disclosure, undue breadth, serious indefiniteness and res
judicata should be applied where appropriate even though
there may be a seemingly sufficient rejection on the basis
of prior art. Where a major technical rejection is proper,
it should be stated with a full development of reasons
rather  than  by  a  mere  conclusion  coupled  with  some
stereotyped expression.

  In cases where there exists a sound rejection on the
basis of prior art which discloses the "heart" of the
invention (as distinguished from prior art which merely
meets the terms of the claims), secondary rejections on
minor technical grounds should ordinarily not be made.
Certain technical rejections (e.g. negative limitations,
indefiniteness) should not be made where the examiner,
recognizing the limitations of the English language, is not
aware of an improved mode of definition.

  Some  situations  exist  where  examination  of  an
application appears best accomplished by limiting action on
the claim thereof to a particular issue. These situations
include the following:

  (1)  Where an application is too informal for a
complete action on the merits; see MPEP § 702.01;

  (2) Where  there  is  an  undue  multiplicity  of
claims, and there has been no successful telephone request
for  election  of  a  limited  number  of  claims  for  full
examination; see MPEP §*>2173.05(n)<;

  (3)  Where there is a misjoinder of inventions and
there has been no successful telephone request for election;
see MPEP § 803, § 806.02, § 812.01;

  (4)  Where disclosure is directed to perpetual
motion; note Ex parte Payne , 1904 C.D. 42; 108 O.G. 1049.
However, in such cases, the best prior art readily available
should be cited and its pertinency pointed out without
specifically applying it to the claims.

  On the other hand, a rejection on the grounds of res
judicata , no  prima facie showing for reissue, new matter,
or inoperativeness (not involving perpetual motion) should
be accompanied by rejection on all other available grounds.

707.07(h)  Notify of Inaccuracies in Amendment [R - 1]

  >See MPEP § 714.23.<

707.07(i)  Each Claim To Be Mentioned in Each Letter [R
- 3]

  In every letter each claim should be mentioned by
number, and its treatment or status given. Since a claim
retains its original numeral throughout the prosecution of
the case, its history through successive actions is thus
easily traceable. Each action should conclude with a summary
of all claims presented for examination.

  Claims retained under 37 CFR 1.142 and claims retained
under 37 CFR 1.146 should be treated as set out in MPEP §
821 to § 821.03 and § 809.02(c).

  See MPEP § 2363.03 for treatment of claims in the
application of losing party in interference.

  The Index of Claims should be kept up to date as set
forth in MPEP §*>719.04<.

707.07(j)  State When Claims Are Allowable [R - 1]

  >INVENTOR FILED APPLICATIONS

  When, during the examination of a pro se  case, it
becomes apparent to the examiner that there is patentable
subject matter disclosed in the application, the examiner
shall draft one or more claims for the applicant and
indicate in his or her action that such claims would be
allowed if incorporated in the application by amendment.

  This practice will expedite prosecution and offer a
service  to  individual  inventors  not  represented  by  a
registered patent attorney or agent. Although this practice
may be desirable and is permissible in any case where deemed
appropriate by the examiner, it will be expected to be
applied in all cases where it is apparent that the applicant
is unfamiliar with the proper preparation and prosecution of
patent applications.

  ALLOWABLE EXCEPT AS TO FORM

  When an application discloses patentable subject matter
and it is apparent from the claims and the applicant's
arguments that the claims are intended to be directed to
such patentable subject matter, but the claims in their
present form cannot be allowed because of defects in form or
omission of a limitation, the examiner should not stop with
a bare objection or rejection of the claims. The examiner's
action should be constructive in nature and when possible
should offer a definite suggestion for correction. Further,
an examiner's suggestion of allowable subject matter may
justify indicating the possible desirability of an interview
to accelerate early agreement on allowable claims.

  If the examiner is satisfied after the search has been
completed that patentable subject matter has been disclosed
and the record indicates that the applicant intends to claim
such subject matter, the examiner may note in the Office
action that certain aspects or features of the patentable
invention have not been claimed and that if properly claimed
such claims may be given favorable consideration.

  If a claim is otherwise allowable but is dependent on a
cancelled claim or on a rejected claim, the Office action
should state that the claim would be allowable if rewritten
in independent form.

  EARLY ALLOWANCE OF CLAIMS

  Where the examiner is satisfied that the prior art has
been fully developed and some of the claims are clearly
allowable, the allowance of such claims should not be
delayed.

¶ 7.43  Objection to Claims, Allowable Subject Matter

  Claim [1] objected to as being dependent upon a rejected
base  claim,  but  would  be  allowable  if  rewritten  in
independent form including all of the limitations of the
base claim and any intervening claims.

¶ 7.43.01  Allowable  Subject  Matter,  Claims  Rejected
under 35 U.S.C. 112, Independent Claim

  Claim [1] would be allowable if rewritten or amended to
overcome the rejection(s) under 35 U.S.C. 112 set forth in
this Office action.

¶ 7.43.02  Allowable  Subject  Matter,  Claims  Rejected
under 35 U.S.C. 112, Dependent Claim

  Claim [1] would be allowable if rewritten to overcome
the rejection(s) under 35 U.S.C. 112 set forth in this
Office action and to include all of the limitations of the
base claim and any intervening claims.

  Form Paragraph 7.97 may be used to indicate allowance of
claims.

¶ 7.97  Claims Allowed

  Claim [1] allowed.<

707.07(k)  Numbering Paragraphs [R - 1]

  >It is good practice to number the paragraphs of the
letter consecutively. This facilitates their identification
in the future prosecution of the case.<

707.07(l)  Comment on Examples [R - 1]

  >The results of the tests and examples should not
normally be questioned by the examiner unless there is
reasonable  basis  for  questioning  the  results.  If  the
examiner  questions  the  results,  the  appropriate  claims
should  be  rejected  as  being  based  on  an  insufficient
disclosure under 35 U.S.C. 112, first paragraph, In re
Borkowski et al , 164 USPQ 642 (CCPA 1970). The applicant
must respond to the rejection or it will be repeated, for
example, by providing the results of an actual test or
example which has been conducted, or by providing relevant
arguments that there is strong reason to believe that the
result would be as predicted. Care should be taken that new
matter is not entered into the application.

  If questions are present as to operability or utility,
consideration should be given to the applicability of a

rejection under 35 U.S.C. 101.<

707.08  Reviewing and Initialing by Assistant Examiner [R
- 2]

  The full surname of the examiner who prepares the Office
action will, in all cases, be typed *>at the end of< the
action. The telephone number below this should be called if
the case is to be discussed or an interview arranged. Form
paragraph 7.101 or*>7.102< should be used.

¶ 7.101  Telephone  Inquiry  Contacts  -  Non  5/4/9
Schedule

  Any inquiry concerning this communication or earlier
communications from the examiner should be directed to [1]
whose telephone number is (703) [2]. The examiner can
normally be reached on [3] from [4] to [5].

  If attempts to reach the examiner by telephone are
unsuccessful, the examiner's supervisor, [6], can be reached
on (703) [7]. The fax phone number for this group is (703)
[8].

  Any inquiry of a general nature or relating to the
status of this application or proceeding should be directed
to the group receptionist whose telephone number is (703)
[9].

 Examiner Note:

  1.  In bracket 1, insert your name.

  2.  In bracket 2, insert your individual phone number.

  3.  In bracket 3, insert the days that you work every
week, e.g.

  "Monday - Thursday" for an examiner off every Friday.

  4.  In brackets 4 and 5, insert your normal duty hours,
e.g. "6:30 AM - 5:00 PM." **>Do< not insert the core hours.

  5.  In bracket 6, insert your SPE's name.

  6.  In bracket 7, insert you SPE's phone number.

  7.  In bracket 8, insert the group fax number.

  8>.<  In bracket 9, insert the telephone number for
your group  receptionist.

¶ *>7.102<  Telephone Inquiry Contacts - 5/4/9 Schedule

  Any inquiry concerning this communication or earlier
communications from the examiner should be directed to [1]
whose telephone number is (703) [2]. The examiner can
normally be reached on [3] from [4] to [5]. The examiner can
also be reached on alternate [6].

  If attempts to reach the examiner by telephone are
unsuccessful, the examiner's supervisor, [7], can be reached
on (703) [8]. The fax phone number for this group is (703)
[9].

  Any inquiry of a general nature or relating to the
status of this application or proceeding should be directed
to the group receptionist whose telephone number is (703)
[10].

 Examiner Note:

  1.  In bracket 1, insert your name.

  2.  In bracket 2, insert your individual phone number.

  3.  In bracket 3, insert the days that you work every
week, e.g.,  "Monday - Thursday" for an examiner off on
alternate Fridays.

  4.  In bracket 4 and 5, insert your normal duty hours,
e.g. "6:30  AM - 4:00 PM." **>Do< not insert the core
hours.

  5.  In bracket 6, insert the day in each pay - period
that is your  compressed day off, e.g. "Fridays" for an
examiner on 5/4/9 with the first Friday off.

  6.  In bracket 7, insert your SPE's name.

  7.  In bracket 8, insert your SPE's phone number.

  8.  In bracket 9, insert the group fax number.

  9.  In bracket 10, insert the telephone number for your
group  receptionist.

  After the action is typed, the examiner who prepared the
action reviews it for correctness. >The surname or initials
of the examiner who prepared the action and the date on
which action was typed should appear below the action.< If
this examiner does not have the authority to sign the
action, he or she should initial above the typed name >or
initials<,  and  forward  the  action  to  the  authorized
signatory examiner for signing.

707.09  Signing by Primary or Other Authorized Examiner [R
- 1]

  >Although  only  the  original  is  signed,  the  word
"Examiner" and the name of the signer should appear on the
original and copies.

  All letters and issues should be signed promptly.<

707.10  Entry [R - 1]

  >The original, signed by the authorized examiner, is the
copy which is placed in the file wrapper. The character of
the action, its paper number and the date of mailing are
entered in black ink on the outside of the file wrapper
under "Contents".<

707.11  Date [R - 1]

  >The date should not be typed when the letter is
written, but should be stamped or printed on all copies of
the letter after it has been signed by the authorized
signatory examiner and the copies are about to be mailed.<

707.12  Mailing [R - 1]

  >Copies of the examiner's action are mailed by the group
after the original, initialed by the assistant examiner and
signed by the authorized signatory examiner, has been placed
in the file. After the copies are mailed the original is
returned for placement in the file.<

707.13  Returned Office Action [R - 1]

  >Letters are sometimes returned to the Office because
the Post Office has not been able to deliver them. The
examiner should use every reasonable means to ascertain the
correct address and forward the letter again, after stamping
it "remailed" with the date thereof and redirecting it if
there be any reason to believe that the letter would reach
applicant at such new address. If the Office letter was
addressed to an attorney, a letter may be written to the
inventor or assignee informing him or her of the returned
letter. The period running against the application begins
with the date of remailing. ( Ex parte Gourtoff , 1924 C.D.
153, 329 O.G. 536.)

  If the Office is not finally successful in delivering
the letter, it is placed, with the envelope, in the file
wrapper. If the period dating from the remailing elapses
with no communication from applicant, the case is forwarded
to the Abandoned Files Repository.<

708  Order of Examination [R - 2]

 37 CFR 1.101.  Order of examination.

  (a) *> Nonprovisional applications filed in the Patent
and Trademark Office and accepted as complete applications
are assigned for examination to the respective examining
groups  having  the  classes  of  inventions  to  which  the
applications relate.  *> Nonprovisional applications shall
be taken up for examination by the examiner to whom they
have been assigned in the order in which they have been
filed except for those applications in which examination has
been advanced pursuant to § 1.102. See § 1.496 for order of
examination of international applications in the national
stage.

  (b) Applications which have been acted upon by the
examiner, and which have been placed by the applicant in
condition  for  further  action  by  the  examiner  (amended
applications) shall be taken up for action in such order as
shall be determined by the Commissioner.

  Each examiner will give priority to that applicant in
his or her docket, whether amended or new, which has the
oldest  effective  U.S.  filing  date  .  Except  as  rare
circumstances  may  justify  group  directors  in  granting
individual exceptions, this basic policy applies to all
applications.

  The actual filing date of a continuation - in - part
application is used for docketing purposes. However, the
examiner may act on a continuation - in - part application
by using the effective filing date, if desired.

  If  at  any  time  an  examiner  determines  that  the
"effective filing date" status of any application differs

from what the records show, the clerk should be informed,
who should promptly amend the records to show the correct
status, with the date of correction.

  The order of examination for each examiner is to give
priority to reissue applications, with top priority to those
in which litigation has been stayed (MPEP § 1442.03), then
to those special cases having a fixed 30 - day due date,
such as examiner's answers and decisions on motions. Most
other  cases  in  the  "special"  category  (for  example,
interference cases, cases made special by petition, cases
ready for final conclusion, etc.) will continue in this
category, with the first effective U.S. filing date among
them normally controlling priority.

  All  amendments  before  final  rejection  should  be
responded to within two months of receipt.

708.01  List of Special Cases [R - 1]

 >37 CFR 1.102.  Advancement of examination.

  (a) Applications will not be advanced out of turn for
examination or for further action except as provided by this
part, or upon order of the Commissioner to expedite the
business of the Office, or upon filing of a request under
paragraph (b) of this section or upon filing a petition
under paragraphs (c) or (d) of this section with a verified
showing which, in the opinion of the Commissioner, will
justify so advancing it.

  (b) Applications wherein the inventions are deemed of
peculiar importance to some branch of the public service and
the head of some department of the Government requests
immediate action for that reason, may be advanced for
examination.

  (c) A petition to make an application special may be
filed without a fee if the basis for the petition is the
applicant's  age  or  health  or  that  the  invention  will
materially  enhance  the  quality  of  the  environment  or
materially contribute to the development or conservation of
energy resources.

  (d) A petition to make an application special on grounds
other than those referred to in paragraph (c) of this
section must be accompanied by the petition fee set forth in
§ 1.17(i).

  Certain procedures by the examiners take precedence over
actions even on special cases.

  For example, all papers typed and ready for signature
should be completed and mailed.

  All issue cases returned with a "Printer Waiting" slip
must be processed and returned within the period indicated.

  Reissue applications, particularly those involved in
stayed litigation, should be given priority.

  Cases in which practice requires that the examiner act
within a set period such as two months after appellants
brief to furnish the examiner's answers (MPEP § 1208),
necessarily  take  priority  over  special  cases  without

specific time limits.

  If an examiner has a case in which he or she is
satisfied that it is in condition for allowance, or in which
he or she is satisfied will have to be finally rejected, he
or she should give such action forthwith instead of making
the case await its turn.

  The following is a list of special cases (those which
are advanced out of turn for examination):

  (a)  Applications wherein the inventions are deemed
of peculiar importance to some branch of the public service
and when for that reason the head of some department of the
Government requests immediate action and the Commissioner so
orders (37 CFR 1.102).

  (b)  Cases made special as a result of a petition.
(See MPEP § 708.02.)

  Subject alone to diligent prosecution by the applicant,
an application for patent that has once been made special
and advanced out of turn for examination by reason of a
ruling made in that particular case (by the Commissioner or
an Assistant Commissioner) will continue to be special
throughout its entire course of prosecution in the Patent
and Trademark Office, including appeal, if any, to the Board
of Patent Appeals and Interferences; and any interference in
which such an application becomes involved shall, in like
measure  be  considered  special  by  all  Office  officials
concerned.

  (c)  Applications for reissues, particularly those
involved in stayed litigation (37 CFR 1.176).

  (d)  Applications remanded by an appellate tribunal
for further action.

  (e)  An application, once taken up for action by an
examiner according to its effective filing date, should be
treated as special by an examiner, art unit or group to
which  it  may  subsequently  be  transferred;  exemplary
situations include new cases transferred as the result of a
telephone election and cases transferred as the result of a
timely response to any official action.

  (f)  Applications which appear to interfere with
other applications previously considered and found to be
allowable, or which will be placed in interference with an
unexpired patent or patents (37 CFR 1.201).

  (g)  Applications ready for allowance, or ready for
allowance except as to formal matters.

  (h)  Applications which are in condition for final
rejection.

  (i) Applications  pending  more  than  5  years,
including those which, by relation to a prior United States
application, have an effective pendency of more than 5
years. See MPEP § 707.02(a).

  (j)  Reexamination Proceedings, MPEP § 2261.

  See also MPEP § 714.13, § 1207 and § 1309.<

708.02  Petition To Make Special [R - 3]

 37 CFR 1.102  Advancement of examination.

  (a) Applications will not be advanced out of turn for
examination or for further action except as provided by this
part, or upon order of the Commissioner to expedite the
business of the Office, or upon filing of a request under
paragraph (b) of this section or upon filing a petition
under paragraphs (c) or (d) of this section with a verified
showing which, in the opinion of the Commissioner, will
justify so advancing it.

  (b) Applications wherein the inventions are deemed of
peculiar importance to some branch of the public service and
the head of some department of the Government requests
immediate action for that reason, may be advanced for
examination.

  (c) A petition to make an application special may be
filed without a fee if the basis for the petition is the
applicant's  age  or  health  or  that  the  invention  will
materially  enhance  the  quality  of  the  environment  or
materially contribute to the development or conservation of
energy resources.

  (d) A petition to make an application special on grounds
other than those referred to in paragraph (c) of this
section must be accompanied by the petition fee set forth in
§ 1.17(i).

  New applications ordinarily are taken up for examination
in the order of their effective United States filing dates.
Certain exceptions are made by way of petitions to make
special, which may be granted under the conditions set forth
below.

  I. MANUFACTURE

  An application may be made special on the ground of
prospective  manufacture  upon  the  filing  of  a  petition
accompanied by the fee under 37 CFR 1.17(i) and a verified
statement by the applicant or assignee or a statement by an
attorney/agent  registered  to  practice  before  the  PTO
alleging:

  (1)  The possession by the prospective manufacturer
of  sufficient  presently  available  capital  (stating
approximately the amount) and facilities (stating briefly
the nature thereof) to manufacture the invention in quantity
or that sufficient capital and facilities will be made
available if a patent is granted;

  If the prospective manufacturer is an individual,
there  must  be  a  corroborating  affidavit  from  some
responsible party, as for example, an officer of a bank,
showing that said individual has the required available
capital to manufacture;

  (2)  That the prospective manufacturer will not
manufacture,  or  will  not  increase  present  manufacture,
unless certain that the patent will be granted;

  (3)  That the prospective manufacturer obligates

himself, herself or itself, to manufacture the invention, in
the  United  States  or  its  possessions,  in  quantity
immediately upon the allowance of claims or issuance of a
patent which will protect the investment of capital and
facilities; and

  (4) That the applicant or assignee has made or caused to
be made a careful and thorough search of the prior art, or
has a good knowledge of the pertinent prior art.

  >Applicant  must  provide  one  copy  of  each  of  the
references deemed most closely related to the subject matter
encompassed by the claims if said references are not already
of record.<

  II. INFRINGEMENT

  Subject to a requirement for a further showing as may be
necessitated  by  the  facts  of  a  particular  case,  an
application  may  be  made  special  because  of  actual
infringement (but not for prospective infringement) upon
payment of the fee under 37 CFR 1.17(i) and the filing of a
petition  accompanied  by  a  verified  statement  by  the
applicant or assignee or a statement by an attorney/agent
registered to practice before the PTO alleging: (1) That
there is an infringing device or product actually on the
market or method in use; (2) That a rigid comparison of the
alleged infringing device, product, or method with the
claims of the application has been made, and that, in his or
her opinion, some of the claims are unquestionably infringed
; and (3) That he or she has made or caused to be made a
careful and thorough search of the prior art or has a good
knowledge of the pertinent prior art.

  Applicant  must  provide  one  copy  of  each  of  the
*>references< deemed most closely related to the subject
matter encompassed by the claims if said references are not
already of record.

  Models or specimens of the infringing product or that of
the application should not be submitted unless requested.

  III. APPLICANT'S HEALTH

  An application may be made special upon a petition by
applicant accompanied by any evidence showing that the state
of health of the applicant is such that he might not be
available to assist in the prosecution of the application if
it were to run its normal course, such as a doctor's
certificate or other medical certificate. No fee is required
for such a petition, 37 CFR 1.102(c).

  IV. APPLICANT'S AGE

  An application may be made special upon filing a
petition including any evidence showing that the applicant
is 65 years of age, or more, such as a birth certificate or
applicant's verified statement. No fee is required with such
a petition, 37 CFR 1.102(c).

  V. ENVIRONMENTAL QUALITY

  The Patent and Trademark Office will accord "special"
status to all patent applications for inventions which
materially enhance the quality of the environment of mankind

by contributing to the restoration or maintenance of the
basic life - sustaining natural elements - air, water, and
soil.

  All applicants desiring to participate in this program
should  petition  that  their  applications  be  accorded
"special" status. Such petitions should be accompanied by
verified statements under 37 CFR 1.102 by the applicant or
assignee or statements by an attorney/agent registered to
practice before the PTO ** explaining how the inventions
contribute to the restoration or maintenance of one of these
life - sustaining elements. No fee is required for such a
petition, 37 CFR 1.102(c).

  VI. ENERGY

  The Patent and Trademark Office will, on petition,
accord "special" status to all patent applications for
inventions which materially contribute to (1) the discovery
or  development  of  energy  resources,  or  (2)  the  more
efficient utilization and conservation of energy resources.
Examples of inventions in category (1) would be developments
in fossil fuels (natural gas, coal, and petroleum), nuclear
energy,  solar  energy,  etc.  Category  (2)  would  include
inventions relating to the reduction of energy consumption
in  combustion  systems,  industrial  equipment,  household
appliances, etc.

  All applicants desiring to participate in this program
should  petition  that  their  applications  be  accorded
"special" status. Such petitions should be accompanied by
verified statements under 37 CFR 1.102 by the applicant or
assignee or statements by an attorney/agent registered to
practice  before  the  PTO  explaining  how  the  invention
materially contributes to category (1) or (2) set forth
above. No fee is required for such a petition, 37 CFR
1.102(c).

  VII. INVENTIONS RELATING TO RECOMBINANT DNA

  In recent years revolutionary genetic research has been
conducted  involving  recombinant  deoxyribonucleic
acid("recombinant DNA"). Recombinant DNA research appears to
have extraordinary potential benefit for mankind. It has
been suggested, for example, that research in this field
might lead to ways of controlling or treating cancer and
hereditary  defects.  The  technology  also  has  possible
applications  in  agriculture  and  industry.  It  has  been
likened in importance to the discovery of nuclear fission
and fusion. At the same time, concern has been expressed
over the safety of this type of research. The National
Institutes of Health (NIH) has released guidelines for the
conduct  of  research  concerning  recombinant  DNA.  These
"Guidelines  for  Research  Involving  Recombination  DNA
Molecules," were published in the Federal Register of July
7, 1976, 41 FR 27902 - 27943. NIH is sponsoring experimental
work to identify possible hazards and safety practices and
procedures.

  In view of the exceptional importance of recombinant DNA
and the desirability of prompt disclosure of developments in
the field, the Patent and Trademark Office will accord
"special" status to patent applications relating to safety
of  research  in  the  field  of  recombinant  DNA.  Upon
appropriate petition and payment of the fee under 37 CFR

1.17(i), the Office will make special patent applications
for inventions relating to safety of research in the field
of recombinant DNA. Petitions for special status should be
accompanied by verified statements under 37 CFR 1.102 by the
applicant or assignee or statements by an attorney/agent
registered  to  practice  before  the  PTO  explaining  the
relationship of the invention to safety of research in the
field of recombinant DNA research. The fee set forth under
37 CFR 1.17(i) must also be paid.

  VIII. SPECIAL EXAMINING PROCEDURE FOR CERTAIN NEW
  APPLICATIONS - ACCELERATED EXAMINATION

  A new application (one which has not received any
examination by the examiner) may be granted special status
provided that applicant (and this term includes applicant's
attorney or agent) complies with each of the following
items:

 (a) Submits a petition to make special accompanied
by the fee set forth in 37 CFR 1.17(i);

 (b)  Presents  all  claims  directed  to  a  single
invention, or if the Office determines that all the claims
presented are not obviously directed to a single invention,
will make an election without traverse as a prerequisite to
the grant of special status.

  The election may be made by applicant at the time of
filing the petition for special status. Should applicant
fail to include an election with the original papers or
petition and the Office determines that a requirement should
be made, the established telephone restriction practice will
be followed.

  If otherwise proper, examination on the merits will
proceed on claims drawn to the elected invention.

  If  applicant  refuses  to  make  an  election  without
traverse, the application will not be further examined at
that time. The petition will be denied on the ground that
the claims are not directed to a single invention, and the
application will await action in its regular turn.

  Divisional  applications  directed  to  the  nonelected
inventions will not automatically be given special status
based on papers filed with the petition in the parent case.
Each such application must meet on its own all requirements
for the new special status;

 (c) Submits a statement(s) that a pre - examination
search was made, * listing the field of search by class and
subclass, publication, Chemical Abstracts, foreign patents,
etc. A search made by a foreign patent office satisfies this
requirement;

 (d) Submits one copy each of the references deemed
most closely related to the subject matter encompassed by
the claims if said references are not already of record; and

 (e) Submits a detailed discussion of the references,
which discussion points out, with the particularity required
by 37 CFR 1.111(b) and (c), how the claimed subject matter
is patentable over the references.

  In those instances where the request for this special
status does not meet all the prerequisites set forth above,
applicant will be notified and the defects in the request
will be stated. The application will remain in the status of
a new application awaiting action in its regular turn. In
those instances where a request is defective in one or more
respects, applicant will be given one opportunity to perfect
the request in a renewed petition to make special. If
perfected,  the  request  will  then  be  granted.  If  not
perfected in the first renewed petition, any additional
renewed  petitions  to  make  special  may  or  may  not  be
considered at the discretion of the Group Director.

  Once a request has been granted, prosecution will
proceed according to the procedure set forth below; there is
no provision for "withdrawal" from this special status.

  The special examining procedure of VIII (accelerated
examination) involves the following procedures:

  (1) The  new  application,  having  been  granted
special  status  as  a  result  of  compliance  with  the
requirements set out above will be taken up by the examiner
before all other categories of applications except those
clearly in condition for allowance and those with set time
limits, such as examiner's answers, etc., and will be given
a complete first action which will include all essential
matters of merit as to all claims. The examiner's search
will be restricted to the subject matter encompassed by the
claims . A first action rejection will set a 3 - month
shortened period for response.

  (2)  During the 3 - month period for response,
applicant is encouraged to arrange for an interview with the
examiner in order to resolve, with finality, as many issues
as possible. In order to afford the examiner time for
reflective consideration before the interview, applicant or
his or her representative should cause to be placed in the
hands of the examiner at least one working day prior to the
interview, a copy (clearly denoted as such) of the amendment
that he proposes to file in response to the examiner's
action. Such a paper will not become a part of the file, but
will form a basis for discussion at the interview.

  (3)  Subsequent to the interview, or responsive to
the  examiner's  first  action  if  no  interview  was  had,
applicant will file the "record" response. The response at
this  stage,  to  be  proper,  must  be  restricted  to  the
rejections, objections, and requirements made. Any amendment
which would require broadening the search field will be
treated as an improper response.

  (4)  The examiner will, within 1 month from the
date of receipt of applicant's formal response, take up the
application for final disposition. This disposition will
constitute either a final action which terminates with the
setting of a 3 - month period for response, or a notice of
allowance.  The  examiner's  response  to  any  amendment
submitted after final rejection should be prompt and by way
of form PTO - 303 or PTO - 327, by passing the case to
issue, or by an examiner's answer should applicant choose to
file an appeal brief at this time. The use of these forms is
not intended to open the door to further prosecution. Of
course, where relatively minor issues or deficiencies might
be easily resolved, the examiner may use the telephone to

inform the applicant of such.

  (5)  A personal interview after final Office action
will not be permitted unless requested by the examiner.
However,  telephonic  interviews  will  be  permitted  where
appropriate for the purpose of correcting any minor matters
which remain outstanding.

  After  allowance,  these  applications  are  given  top
priority for printing. See MPEP § 1309.

  IX. SPECIAL STATUS FOR PATENT APPLICATIONS RELATING TO
 SUPERCONDUCTIVITY

  In accordance with the President's proposal directing
the Patent and Trademark Office to accelerate the processing
of  patent  applications  and  adjudication  of  disputes
involving superconductivity technologies when requested by
the applicant to do so, the Patent and Trademark Office
will, on request, accord "special" status to all patent
applications  for  inventions  involving  superconductivity
materials. Examples of such inventions would include those
directed to the superconductive materials themselves as well
as to their manufacture and application. In order that the
Patent and Trademark Office may implement this procedure, we
invite  all  applicants  desiring  to  participate  in  this
program to request that their applications be accorded
"special" status. Such requests should be accompanied by a
statement under 37 CFR 1.102 that the invention involves
superconductive materials. No fee is required. The statement
must be verified if made by a person not registered to
practice before the Patent and Trademark Office.

 X. INVENTIONS RELATING TO HIV/AIDS AND CANCER

  In view of the importance of developing treatments and
cures for HIV/AIDS and cancer and the desirability of prompt
disclosure of advances made in these fields, the Patent and
Trademark Office will accord "special" status to patent
applications relating to HIV/AIDS and cancer.

  Applicants who desire that an application relating to
HIV/AIDS or cancer be made special should file a petition
and the fee under 37 CFR 1.17(i) requesting the Patent and
Trademark  Office  to  make  the  application  special.  The
petition for special status should be accompanied by a
statement explaining how the invention contributes to the
diagnosis, treatment or prevention of HIV/AIDS or cancer.
Such statement must be verified unless it is signed by a
registered practitioner.

  >XI. INVENTIONS FOR COUNTERING TERRORISM

  In view of the importance of developing technologies for
countering  terrorism  and  the  desirability  of  prompt
disclosure of advances made in these fields, the Patent and
Trademark Office will accord "special" status to patent
applications relating to counter - terrorism inventions.

  International terrorism as defined in 18 U.S.C. 2331
includes "activities that (A) involve violent acts or acts
dangerous to human life that are a violation of the criminal
laws of the United States or of any State, or that would be
a criminal violation if committed within the jurisdiction of
the United States or of any State; [and] (B) appear to be

intended (i) to intimidate or coerce a civilian population;
(ii) to influence the policy of a government by intimidation
or coercion; or (iii) to affect the conduct of a government
by assassination or kidnapping." The types of technology for
countering terrorism could include, but are not limited to,
systems  for  detecting/identifying  explosives,  aircraft
sensors/security systems, and vehicular barricades/disabling
systems.

  Applicants who desire that an application relating to
inventions for countering terrorism be made special should
file a petition with the petition fee under 37 CFR 1.17(i)
requesting the Patent and Trademark Office to make the
application special. The petition for special status should
be accompanied by a statement explaining how the invention
contributes to countering terrorism. Such statement must be
verified unless it is signed by a registered practitioner.

  XII. SPECIAL STATUS FOR APPLICATIONS RELATING TO
  BIOTECHNOLOGY FILED BY APPLICANTS WHO ARE SMALL ENTITIES

  Applicants who are small entities may request that their
biotechnology  applications  be  granted  "special"  status.
Applicant must file a petition with the petition fee under
37 CFR 1.17(i) requesting the special status and must: (1)
state that small entity status has been established or
include  a  verified  statement  establishing  small  entity
status; (2) state that the subject of the patent application
is a major asset of the small entity; and (3) state that the
development of the technology will be significantly impaired
if  examination  of  the  patent  application  is  delayed,
including  an  explanation  of  the  basis  for  making  the
statement.<

  FORMAL REQUIREMENTS OF PETITION TO MAKE SPECIAL

  Any petition to make special should:

 (1) be in writing; and

 (2) identify the application by application number
and filing date.

  HANDLING OF PETITIONS TO MAKE SPECIAL

  Applications which have been made special will be
advanced out of turn for examination and will continue to be
treated as special throughout the entire prosecution in the
PTO.

  Each petition to make special, regardless of the ground
upon which the petition is based and the nature of the
decision,  is  made  of  record  in  the  application  file,
together with the decision thereon. The Office that rules on
a  petition  is  responsible  for  properly  entering  that
petition and the resulting decision in the file record. The
petition,  with  any  attached  papers  and  supporting
affidavits, will be given a single paper number and so
entered in the "Contents" of the file. The decision will be
accorded a separate paper number and similarly entered. To
ensure entries in the "Contents" in proper order, the clerk
in the examining group will make certain that all papers
prior to a petition have been entered and/or listed in the
application file before forwarding it for consideration of
the petition. Note MPEP § 1002.02 * (c) **.

  Petitions to make special ** are decided by the Director
of the patent examining group to which the application is
assigned. **

708.03  Examiner Tenders Resignation [R - 1]

  >Whenever an examiner tenders his or her resignation,
the  supervisory  primary  examiner  should  see  that  the
remaining time as far as possible is used in winding up the
old complicated cases or those with involved records and
getting as many of his amended cases as possible ready for
final disposition.

  If the examiner has considerable experience in his or
her particular art, it is also advantageous to the Office if
he or she indicates (in pencil) in the file wrappers of
cases in his or her docket, the field of search or other
pertinent data that he considers appropriate.<

709  Suspension of Action [R - 3]

 37 CFR 1.103.  Suspension of action.

  (a) Suspension of action by the Office will be granted
for good and sufficient cause and for a reasonable time
specified upon petition by the applicant and, if such cause
is not the fault of the Office, the payment of the fee set
forth in § 1.17(i). Action will not be suspended when a
response by the applicant to an Office action is required.

  (b)  If  action  by  the  Office  on  an  application  is
suspended when not requested by the applicant, the applicant
shall be notified of the reasons therefor.

  (c) Action by the examiner may be suspended by order of
the Commissioner in the case of applications owned by the
United States whenever publication of the invention by the
granting of a patent thereon might be detrimental to the
public safety or defense, at the request of the appropriate
department or agency .

  (d) Action on applications in which the Office has
accepted a request to publish a defensive publication will
be suspended for the entire pendency of these applications
except  for  purposes  relating  to  patent  interference
proceedings under Subpart E.

  Suspension of action (37 CFR 1.103) should not be
confused with extension of time for reply (37 CFR 1.136). It
is to be noted that a suspension of action applies to an
impending Office action by the examiner whereas an extension
of time for reply applies to action by the applicant. In
other  words,  the  action  cannot  be  suspended  in  an
application which contains an outstanding Office action or
requirement awaiting response by the applicant. It is only
the action by the examiner which can be suspended under 37
CFR 1.103.

  A request that action in an application be delayed will
be granted only under the provisions of 37 CFR 1.103, which
provides  for  "Suspension  of  Action."  A  petition  for
suspension of action must be presented as a separate paper
accompanied by the petition fee, must request a specific and
reasonable period of suspension not greater than six months,

and  must  present  good  and  sufficient  reasons  why  the
suspension is necessary. If the requirements of 37 CFR 1.103
are  not  met,  applicants  should  expect  that  their
applications, whether new or amended, will be taken up for
action by the examiner in the order provided in 37 CFR
1.101, Order of Examination.

  A petition for suspension of action to allow applicant
time to submit an information disclosure statement will be
denied as failing to present good and sufficient reasons,
since 37 CFR 1.97 provides adequate recourse for the timely
submission of prior art for consideration by the examiner.

  In  new  applications,  the  mere  inclusion  in  the
transmittal form letter of a request that action be delayed
cannot be relied upon to avoid immediate action in the
application. Many Group Art Units and examiners have short
pendency to first action, and new applications may be taken
up for action before preliminary amendments are filed in
those  applications.  Where  a  preliminary  amendment  and
petition to suspend action have been filed, it would be
helpful to telephone the examiner in that regard to avoid
having the amendment and the first office action cross in
the mail.

  Paragraph (b) of the rule provides for a suspension of
Office action by the examiner on his or her own initiative,
as in MPEP § 709.01 and § 2315.01. The primary examiner may
grant an initial suspension of action for a maximum period
of  six  months.  This  time  limitation  applies  to  both
suspensions granted at the request of the applicant and
suspensions imposed sua sponte by the examiner. Any second
or subsequent suspension of action in patent applications
under 37 CFR 1.103 are decided by the group director. See
MPEP § 1002.02(c), item*>10<.

  Suspension of action under 37 CFR 1.103(c) is decided by
the Director of Group 2200.

  **

  Form Paragraphs 7.52 - 7.56 should be used in actions
relating to suspension of action.

¶ 7.52  Suspension of Action, Awaiting New Reference

  A  reference  relevant  to  the  examination  of  this
application may soon become available. Ex parte prosecution
is SUSPENDED FOR A PERIOD OF [1] MONTHS from the date of
this letter. Upon expiration of the period of suspension,
applicant should make an inquiry as to the status of the
application.

 Examiner Note:

  1.  Maximum period for suspension is six months.

  2.  The group director should approve all second or
subsequent suspensions. See MPEP § 1003, paragraph 10.

¶ 7.53  Suspension of Action, Possible Interference

  All claims are allowable. However, due to a potential
interference, ex parte prosecution is SUSPENDED FOR A PERIOD
OF [1] MONTHS from the date of this letter. Upon expiration

of the period of suspension, applicant should make an
inquiry as to the status of the application.

 Examiner Note:

  1.  Maximum period for suspension is six months.

  2.  The group director should approve all second or
subsequent suspensions. See MPEP § 1003, paragraph 10.

  3.  Director's approval must appear on the letter
granting any second or subsequent suspension.

¶ 7.54  Suspension of Action, Applicant's Request

  Pursuant to applicant's request filed on [1], action by
the Office is suspended on this application under 37 CFR
1.103(a) for a period of [2] months. At the end of this
period, applicant is required to notify the examiner and
request continuance of prosecution or a further suspension.
See MPEP § 709.

 Examiner Note:

  1.  Maximum period of suspension is six months.

  2.  Only  the  group  director  can  grant  second  or
subsequent suspensions, see MPEP § 1003, paragraph 10. Such
approval must appear on the Office letter.

¶ 7.56  Petition for Suspension, Denied, Outstanding Office
Action

  Applicant's request for suspension of action in this
application  under  37  CFR  1.103(a)  is  denied  as  being
improper. Action cannot be suspended in an application
awaiting a response by the applicant. See MPEP § 709.

709.01  Overlapping Applications by Same Applicant or
Owned by Same Assignee [R - 1]

  >Examiners should not consider ex parte, when raised by
an applicant, questions which are pending before the Office
in inter partes proceedings involving the same applicant.
(See Ex parte Jones, 1924 C.D. 59; 327 O.G. 681.)

  Because of this where one of several applications of the
same inventor which contain overlapping claims gets into an
interference it was formerly the practice to suspend action
by the Office on the applications not in the interference in
accordance with Ex parte McCormick , 1904 C.D. 575; 113 O.G.
2508.

  However, the better practice would appear to be to
reject  claims  in  an  application  related  to  another
application  in  interference  over  the  counts  of  the
interference and in the event said claims are not cancelled
in the outside application, prosecution of said application
should be suspended pending the final determination of
priority in the interference.

  If, on the other hand applicant wishes to prosecute the
outside application, and presents good reasons in support,
prosecution should be continued. Ex parte Bullier , 1899
C.D. 155, 88 O.G. 1161;  In re Seebach , 1937 C.D. 495, 484

O.G. 503;  In re Hammell , 1964 C.D. 733, 808 O.G. 25. See
MPEP § 804.03.<

710  Period for Response [R - 1]

 >35 U.S.C. 133.  Time for prosecuting application.

  Upon  failure  of  the  applicant  to  prosecute  the
application within six months after any action therein, of
which notice has been given or mailed to the applicant, or
within such shorter time, not less than thirty days, as
fixed by the Commissioner in such action, the application
shall be regarded as abandoned by the parties thereto,
unless it be shown to the satisfaction of the Commissioner
that such delay was unavoidable.

 35 U.S.C. 267.  Time for taking action in Government
applications.

  Notwithstanding the provisions of sections 133 and 151
of this title, the Commissioner may extend the time for
taking any action to three years, when an application has
become the property of the United States and the head of the
appropriate department or agency of the Government has
certified to the Commissioner that the invention disclosed
therein is important to the armament or defense of the
United States.

  See MPEP Chapter 1200 for period for response when
appeal is taken or court review sought.

  Extension of time under 35 U.S.C. 267 is decided by the
Director of Group 2200.<

710.01  Statutory Period [R - 1]

 >37 CFR 1.135.  Abandonment for failure to respond within
time limit.

  (a) If an applicant of a patent application fails to
respond within the time period provided under § § 1.134 and
1.136, the application will become abandoned unless an
Office action indicates otherwise.

  (b)  Prosecution  of  an  application  to  save  it  from
abandonment pursuant to paragraph (a) of this section must
include such complete and proper action as the condition of
the case may require. The admission of an amendment not
responsive to the last Office action, or refusal to admit
the same, and any proceedings relative thereto, shall not
operate to save the application from abandonment.

  (c) When action by the applicant is a bona fide attempt
to respond and to advance the case to final action, and is
substantially a complete response to the Office action, but
consideration  of  some  matter  or  compliance  with  some
requirement has been inadvertently omitted, opportunity to
explain and supply the omission may be given before the
question of abandonment is considered.

  The maximum statutory period for response to an Office
action is 6 months, 35 U.S.C. 133. Shortened periods are
currently  used  in  practically  all  cases,  see  MPEP  §
710.02(b).

  37 CFR 1.135 provides that if no response is filed within
the time set in the Office action under 37 CFR 1.134 or as
it may be extended under 37 CFR 1.136, the application will
be abandoned unless an Office action indicates that another
consequence, such as disclaimer, will take place.

  Paragraph (c) has been amended to add that applicant's
reply must be a bona fide attempt to respond as well as to
advance the case to final action in order for applicant to
be given an opportunity to supply any omission.<

710.01(a)  Statutory Period, How Computed [R - 1]

  >The actual time taken for response is computed from the
date stamped or printed on the Office action to the date of
receipt by the Office of applicant's response. No cognizance
is taken of fractions of a day and applicant's response is
due on the corresponding day of the month 6 months or any
lesser number of months specified after the Office action.

  Response to an Office action with a 3 - month shortened
statutory period, dated November 30 is due on the following
February 28 (or 29 if it is a leap year), while a response
to an Office action dated February 28 is due on May 28 and
not on the last day of May. Ex parte Messick , 7 USPQ
57;1930 C.D. 6; 400 O.G. 3 (Comm'r Pat. 1930) .

  A 1 - month extension of time extends the time for
response to the date corresponding to the Office action date
in the following month. For example, a response to an Office
action mailed on January 31 with a 3 - month shortened
statutory period would be due on April 30. If a 1 - month
extension of time were given, the response would be due by
May 31. The fact that April 30 may have been a Saturday,
Sunday, or Federal holiday has no effect on the extension of
time. Where the period for response is extended by some time
period other than "1 - month" or an even multiple thereof,
the person granting the extension should indicate the date
upon which the extended period for response will expire.

  When a timely response is ultimately not filed, the
application is regarded as abandoned after midnight of the
date the period for response expired. In the above example
where May 31 is not a Saturday, Sunday, or Federal holiday
and no further extensions of time are obtained prior to the
end of the 6 - month statutory period, the application would
be abandoned as of June 1. The fact that June 1 may be a
Saturday, Sunday, or Federal holiday does not change the
abandonment date since the response was due on May 31, a
business day. See MPEP § 711.04(a) regarding the pulling and
forwarding of abandoned applications.

  A 30 - day period for response in the Office means 30
calendar days including Saturdays, Sundays, and federal
holidays. However, if the period ends on a Saturday, Sunday,
or Federal holiday, the response is timely if it is filed on
the next succeeding business day. If the period for response
is extended, the time extended is added to the last calendar
day of the original period, as opposed to being added to the
day it would have been due when said last day is a Saturday,
Sunday, or Federal holiday.

  The date of receipt of a response to an Office action is
given by the "Office date" stamp which appears on the
responding paper.

  In some cases the examiner's letter does not determine
the beginning of a statutory response period. In all cases
where the statutory response period runs from the date of a
previous action, a statement to that effect should be
included.

  Since extensions of time are available pursuant to 37
CFR 1.136(a), it is incumbent upon applicants to recognize
the date for response so that the proper fee for any
extension will be submitted. Thus, the date upon which any
response is due will normally be indicated only in those
instances where the provisions of 37 CFR 1.136(a) are not
available.  See  MPEP  Chapter  2200  for  reexamination
proceedings.<

710.02  Shortened Statutory Period and Time Limit Actions
Computed [R - 2]

 37 CFR 1.136.  Filing of timely responses with petition
and fee for extension of time and extensions of time for
cause.

  (a) If an applicant is required to respond within a non -
statutory or shortened statutory time period, applicant may
respond up to four months after the time period set if a
petition for an extension of time and the fee set in § 1.17
are  filed  prior  to  or  with  the  response,  unless  (1)
applicant is notified otherwise in an Office action or (2)
the application is involved in an interference declared
pursuant to § 1.611. The date on which the response, the
petition, and the fee have been filed is the date of the
response and also the date for purposes of determining the
period of extension and the corresponding amount of the fee.
The expiration of the time period is determined by the
amount of the fee paid. In no case may an applicant respond
later than the maximum time period set by statute, or be
granted an extension of time under paragraph (b) of this
section when the provisions of this paragraph are available.
See  §  1.645  for  extension  of  time  in  interference
proceedings,  and  §  1.550(c)  for  extension  of  time  in
reexamination proceedings.

  (b) When a response with petition and fee for extension
of time cannot be filed pursuant to paragraph (a) of this
section, the time for response will be extended only for
sufficient cause, and for a reasonable time specified. Any
request for such extension must be filed on or before the
day on which action by the applicant is due, but in no case
will the mere filing of the request effect any extension. In
no case can any extension carry the date on which response
to an Office action is due beyond the maximum time period
set  by  statute  or  be  granted  when  the  provisions  of
paragraph (a) of this section are available. See § 1.645 for
extension of time interference proceedings and § 1.550(c)
for extension of time in reexamination proceedings.

  37 CFR 1.136 implements 35 U.S.C. 41(a)(8) which directs
the Commissioner to charge fees for extensions of time to
take action in patent applications.

  Under 37 CFR 1.136 (35 U.S.C. 133) an applicant may be
required to respond in a shorter period than 6 months, not
less than 30 days. Some situations in which shortened
periods  for  response  are  used  are  listed  in  MPEP  §

710.02(b).

  In other situations, for example, the rejection of a
copied patent claim, the examiner may require applicant to
respond on or before a specified date. These are known as
time limit actions and are established under authority of 35
U.S.C. 6. Some situations in which time limits are set are
noted in MPEP § 710.02(c). The time limit requirement should
be typed in capital letters where required.

  An indication of a shortened time for reply should
appear prominently on the first page of all copies of
actions in which a shortened time for reply has been set so
that a person merely scanning the action can easily see it.

  Shortened statutory periods ** are subject to the
provisions of 37 CFR 1.136(a) unless applicant is notified
otherwise in an Office action. See MPEP § 710.02(e) for a
discussion of extensions of time. See Chapter 2200 for
reexamination proceedings.

710.02(b)  Shortened Statutory Period: Situations In
Which Used [R - 3]

  Under the authority given him by 35 U.S.C. 133, the
Commissioner has directed the examiner to set a shortened
period for response to every action. The length of the
shortened statutory period to be used depends on the type of
response  required.  Some  specific  cases  of  shortened
statutory period for response to be given are:

  **>ONE MONTH (not less than 30 days)<

  Requirement for restriction or election of species - no
claim rejected ......MPEP § 809.02(a) and § 817.

  TWO MONTHS

  Winning party in terminated interference to reply to
unanswered Office action ......MPEP § 2363.02.

  Where,  after  the  termination  of  an  interference
proceeding, the application of the winning party contains an
unanswered Office action, final rejection or any other
action, the primary examiner notifies the applicant of this
fact. In this case response to the Office action is required
within a shortened statutory period running from the date of
such notice. See Ex parte Peterson, 49 USPQ 119, 1941 C.D.
8, 525 O.G. 3 (Comm'r Pat. 1941).

  Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11, 453 O.G. 213
(Comm'r Pat. 1935) ......... MPEP § 714.14.

  When an application is in condition for allowance,
except  as  to  matters  of  form,  such  as  correction  of
specification, a new oath, etc., the case will be considered
special and prompt action taken to require correction of
formal matters. Such action should include an indication on
the first page of form letter PTOL - 326 that prosecution on
the merits is closed in accordance with the decision in Ex
parte Quayle , 1935 C.D. 11, 453 O.G. 213. A 2 - month
shortened statutory period for response should be set.

  Multiplicity rejection - no other rejection........MPEP
§ 2173.05(n)>.<

  A new ground of rejection in an examiner's answer on
appeal ......MPEP § 1208.01>.<

  THREE MONTHS

  To respond to any Office action on the merits.

  PERIOD FOR RESPONSE RESTARTED

  Incorrect citation by examiner - regardless of time
remaining in original period .... MPEP § 710.06.

  The above periods may be changed under special, rarely
occurring circumstances.

  A shortened statutory period may not be less than 30
days (35 U.S.C. 133).

710.02(c)  Time - Limit Actions: Situation In Which Used
[R - 1]

  >As stated in MPEP § 710.02, 35 U.S.C. 6 provides
authority  for  the  Commissioner  to  establish  rules  and
regulations for the conduct of proceedings in the Patent and
Trademark Office. Among the rules are certain situations in
which the examiner sets a time limit within which some
specified  action  should  be  taken  by  applicant.  Some
situations in which a time limit is set are as follows:

 (a) A portion of 37 CFR 1.605(a) provides that in
suggesting claims for interference:

  The applicant to whom the claim is suggested shall amend
the application by presenting the suggested claim within a
time specified by the examiner, not less than one month.
Failure or refusal of an applicant to timely present the
suggested claim shall be taken without further action as a
disclaimer by the applicant of the invention defined by the
suggested claim.

  See MPEP § 2305.02.

 (b) When applicant has made a bona fide attempt to
respond but has made an inadvertent omission, applicant
should be given a time limit of 1 month, which cannot be
extended under 37 CFR 1.136(a) or (b), to complete the
response by submitting the omission in accordance with 37
CFR 1.135(c).

  37 CFR 1.135(c). When action by the applicant is a bona
fide attempt to respond and to advance the case to final
action and is substantially a complete response to the
Office  action,  but  consideration  of  some  matter  or
compliance with some requirement has been inadvertently
omitted, opportunity to explain and supply the omission may
be given before the question of abandonment is considered.

  Under 37 CFR 1.135(c), the missing matter or lack of
compliance must be considered by the examiner as being
"inadvertently omitted." Once an inadvertent omission is
brought to the attention of the applicant, the question of
inadvertence no longer exists. Therefore, any further time
to complete the response would not be appropriate under 37
CFR 1.135(c). Accordingly, no extension of time will be

granted in these situations and 37 CFR 1.136(a) is not
applicable. See MPEP § 710.02(e) and § 714.03.

 (c) If an amendment is filed which amends the claims
and/or  presents  additional  claims  so  as  to  require
additional fees pursuant to 37 CFR 1.16(b), (c), or (d),
applicant should be given a time limit of 1 month or the
remainder of the period for response, whichever is longer,
within which to remit the additional fees due or to submit
an amendment which amends or cancels the claims so that no
additional fee is due. The 1 - month time limit is not
extendable under 37 CFR 1.136(a) or (b). However, the period
for response set in the previous Office action may be
extended pursuant to 37 CFR 1.136(a) provided the extension
does not go beyond the 6 - month period from the date of the
previous Office action. See MPEP § 607 and § 714.03.

 (d) To correct an unsigned or improperly signed
amendment, applicant should be given a time limit of 1 month
or the remainder of the period for response, whichever is
longer,  to  supply  a  duplicate  paper  or  ratification,
properly signed. The 1 - month time limit is not extendable
under 37 CFR 1.136(a) or (b). However, the period for
response set in the previous Office action may be extended
pursuant to 37CFR 1.136(a) provided the extension does not
go beyond the 6 - month period from the date of the previous
office action. See MPEP § 714.01(a).

 (e) Where an application is otherwise allowable but
contains a traverse of a requirement to restrict, 1 month is
given to cancel claims to the nonelected invention or
species or take other appropriate action. See 37 CFR 1.141
and 1.144, and MPEP § 809.02(c) and § 821.01.<

710.02(d)  Difference Between Shortened Statutory and
Time - Limit Periods [R - 1]

  >The distinction between a limited time for reply and a
shortened statutory period under 37 CFR 1.136 should not be
lost sight of. The penalty attaching to failure to reply
within the time limit (e.g., from the suggestion of claims)
is loss of the subject matter involved on the doctrine of
disclaimer. A rejection on the ground of disclaimer is
appealable. On the other hand, a complete failure to respond
within the set statutory period results in abandonment of
the entire application. This is not appealable, but a
petition  to  revive  may  be  granted  if  the  delay  was
unavoidable (37 CFR 1.137(a)) or unintentional (37 CFR
1.137(b)). Further, where applicant responds a day or two
after the time limit, this may be excused by the examiner if
satisfactorily explained. The examiner may use his or her
discretion to request an explanation for the delay if the
reason for the delay is not apparent from the response. A
response 1 day late in a case carrying a shortened statutory
period under 35 U.S.C. 133, no matter what the excuse,
results in abandonment; however, an extension of the period
may be obtained under 37 CFR 1.136 provided the extension
does not go beyond the 6 - months statutory period from the
date of the Office action.

  The situation sometimes occurs where a nonfinal Office
action with a 3 - month shortened statutory period is sent
to applicant. Just before or on the last day of the maximum
permitted statutory period of 6 months, applicant files a
petition for an extension of time of 3 months and the

required fee, and a response, which is a bona fide attempt
but through apparent oversight or inadvertence omits some
necessary point. A letter is sent out with a 1 - month time
limit, seemingly giving applicant more than 6 months to
respond.

  However, by determining that the response is a bona fide
attempt, 37 CFR 1.135(c), the examiner has determined that
applicant has prosecuted the application within 6 months as
required by 35 U.S.C. 133, and the period for response has
been tolled. The time limit of 1 month given to applicant is
not and should not be construed as an extension of time to
the statutory period. Rather, it is a time limit in order to
give applicant an opportunity to supply the inadvertent
omission.

  If, however, applicant fails to supply or correct the
inadvertent omission within the 1 - month time limit, that
failure constitutes evidence that the holding that the
response was a bona fide attempt was in error. In that
event, the response would not be considered to meet the
requirements of 37 CFR 1.111 and the application would,
therefore, be abandoned as of the end of the shortened
statutory period (per 37 CFR 1.135(a) and (b)), as extended
by any timely filed petition for extension of time, per 37
CFR 1.136(a).

  In the above situation, therefore, the application would
not have become abandoned upon expiration of the 1 - month
time limit. Rather, it would be abandoned as of midnight of
the last day of the 6 - month statutory period.

  In another example, if an Office action is mailed on
April 22, 1991 setting a 3 - month shortened statutory
period for response, the response would be due on July 22,
1991. If applicant files an amendment that is deemed to be a
bona fide response on July 15, 1991 but through apparent
oversight or inadvertence omits some necessary point, a
letter holding the amendment nonresponsive would be mailed
giving the applicant a 1 - month time limit or the remainder
of the period for response, whichever is longer, in order to
complete the response. Assuming the letter holding the
amendment  nonresponsive  is  mailed  on  August  12,  1991,
applicant would have until September 12 to complete his
response. Further assuming that applicant failed to respond
to the August 12, 1991 letter at all, then the application
would have become abandoned as of midnight on July 22, 1991
with the date of abandonment being July 23, 1991.

  Time periods such as time periods for responding to a
requirement for information or filing a brief on appeal to
the Board of Patent Appeals and Interferences are normally
subject  to  37  CFR  1.136(a),  but,  in  exceptional
circumstances, additional time may be granted under 37 CFR
1.136(b) where no further time is available under 37 CFR
1.136(a). This is possible since these periods are not
statutory periods subject to the requirement of 35 U.S.C.
133. See MPEP § 710.02(e).<

710.02(e)  Extension of Time [R - 2]

 37 CFR 1.136  Filing of timely responses with petition
and fee for extension of time and extensions of time for
cause.

  (a)(1) If an applicant is required to respond within a
nonstatutory or shortened statutory time period, applicant
may respond up to four months after the time period set if a
petition for an extension of time and the fee set in § 1.17
are filed prior to or with the response, unless:

  (i) Applicant is notified otherwise in an Office action,

  (ii) The response is a reply brief submitted pursuant to
§ 1.193(b),

  (iii) The response is a request for an oral hearing
submitted pursuant to § 1.194(b),

  (iv) The response is to a decision by the Board of Patent
Appeals and Interferences pursuant to § 1.196, § 1.197 or §
1.304, or

  (v)  The  application  is  involved  in  an  interference
declared pursuant to § 1.611,

  (a)(2) The date on which the response, the petition, and
the fee have been filed is the date of the response and also
the date for purposes of determining the period of extension
and the corresponding amount of the fee. The expiration of
the time period is determined by the amount of the fee paid.
In no case may an applicant respond later than the maximum
time period set by statute, or be granted an extension of
time under paragraph (b) of this section when the provisions
of  this  paragraph  are  available.  See  §  1.136(b)  for
extensions of time relating to proceedings pursuant to § §
1.193(b), 1.194, 1.196 or 1.197. See § 1.304 for extension
of time to appeal to the U.S. Court of Appeals for the
Federal Circuit or to commence a civil action. See §
1.550(c) for extension of time in reexamination proceedings
and  §  1.645  for  extension  of  time  in  interference
proceedings.

  (b)  When  a  response  with  petition  and  fee  for
*>extension< of time cannot be filed pursuant to paragraph
(a) of this section, the time for response will be extended
only  for  sufficient  cause  and  for  a  reasonable  time
specified. Any request for such extension must be filed on
or before the day on which action by the applicant is due,
but in no case will the mere filing of the request effect
any extension. In no case can any extension carry the date
on which response to an Office action is due beyond the
maximum time period set by statute or be granted when the
provisions of paragraph (a) of this section are available.
See § 1.304 for extension of time to appeal to the U.S.
Court of Appeals for the Federal Circuit or to commence a
civil action, § 1.645 for extension of time in interference
proceedings,  and  §  1.550(c)  for  extension  of  time  in
reexamination proceedings.

  37 CFR 1.136 provides for two distinct procedures to
extend the period for action or response in particular
situations. The procedure which is available for use in a
particular situation will depend upon the circumstances. 37
CFR 1.136(a) permits an applicant to file a petition for
extension of time and a fee as in 37 CFR 1.17(a), (b), (c),
or (d) up to 4 months after the end of the time period set
to take action except (1) where prohibited by statute, (2)
where prohibited by one of the items listed in the rule, or
(3) where applicant has been notified otherwise in an Office

action. The petition and fee must be filed within the
extended time period for response requested in the petition
and can be filed prior to or with the response. The filing
of the petition and fee will extend the time period to take
action up to 4 months dependent on the amount of the fee
paid except in those circumstances noted above. 37 CFR
1.136(a) will effectively reduce the amount of paperwork
required by applicants and the Office since the extension
will be effective upon filing of the petition and payment of
the appropriate fee and without acknowledgment or action by
the Office and since the petition and fee can be filed with
the  response.  Paragraph  (b)  provides  for  requests  for
extensions of time upon a showing of sufficient cause when
the procedure of paragraph (a) is not available. Although
the petition and fee procedure of 37 CFR 1.136(a) will
normally be available within 4 months after a set period for
response has expired, an extension request for cause under
37 CFR 1.136(b) must be filed during the set period for
response. Extensions of time in interference proceedings are
governed by 37 CFR 1.645.

  It should be very carefully noted that neither the
primary examiner nor the Commissioner has authority to
extend the shortened statutory period unless a petition for
the extension is filed. While the shortened period may be
extended within the limits of the statutory 6 months period,
no extension can operate to extend the time beyond the 6
months.

  Compare, however, 37 CFR 1.135(c) and MPEP § 714.03.

  Any request under 37 CFR 1.136(b) for extension of time
for reply must state a reason in support thereof. Such
extensions will only be granted for sufficient cause and
must be filed prior to the end of the set period for
response.

  Extensions of time with the payment of a fee pursuant to
37 CFR 1.136 are possible in response to most Office actions
of the examiner. Exceptions include (1) all extensions in a
reexamination proceeding (see 37 CFR 1.550(c) and MPEP §
2265) (2) all extensions during an interference proceeding
(but not preparatory to an interference such as where a
claim is suggested for interference), (3) those specific
situations where an Office action states that the provisions
of 37 CFR 1.136(a) are not applicable; e.g., in reissue
applications  associated  with  litigation,  or  where  an
application in allowable condition has nonelected claims and
time is set to cancel such claims, and (4) those limited
instances where applicant is given a 1 - month time limit to
complete an incomplete response pursuant to 37 CFR 1.135(c).

  The fees for extensions of time are set forth in 37 CFR
1.17(a) - (d) and are subject to a 50% reduction for persons
or concerns qualifying as small entities. The fees itemized
at 37 CFR 1.17(a) - (d) are cumulative. Thus, if an
applicant has paid an extension fee in the amount set forth
in 37 CFR 1.17(a) for a 1 - month extension of time and
thereafter decides that an additional 1 month is needed, the
proper fee would be the amount set forth in 37 CFR 1.17(b)
less the amount set forth in 37 CFR 1.17(a) which was
previously paid.

  The statute at 35 U.S.C. 41(a)(8) requires the filing of
(1) a petition to extend the time and (2) the appropriate

fee. Such a petition need not be in any required format, but
the petition should explicitly request, in writing, an
extension of time for the specific number of months needed.

  Although a preferred 37 CFR 1.136(a) petition includes
the above noted request for a specific number of months, an
acceptable petition will be considered to comprise (1) a
response accompanied by (2) a writing which specifically
refers to the provisions of 37 CFR 1.136(a) and thereby
manifests a clear intent by applicant to obtain an extension
of time.

  A general authorization under 37 CFR 1.25(b) to charge
any necessary fees under 37 CFR 1.16 or 1.17 to a deposit
account will NOT be interpreted as a petition for an
extension of time.

  A petition for an extension of time must be filed in
response to each Office action or requirement for which the
extension is requested. A general request for an extension
of time filed prior to examination would NOT be effective
since it is not provided for, and it would not be a petition
in response to an Office action or requirement as intended
by the statute and rules. A proper petition may be a mere
sentence such as

  `The applicant herewith petitions the Commissioner of
Patents and Trademarks to extend the time for response to
  ____
the Office action dated ____ for  ____  month(s) from
  ____
____ ____ to  ____ Submitted herewith is a check for
_____
  ____ to cover the cost of the extension [Please Charge
  ____
my deposit account number  ____  , in the amount of
____ ____ to cover the cost of the extension. Any deficiency
or overpayment should be charged or credited to the above
numbered deposit account.]'

  Where applicant desires to file a continuing application
rather than a response to a given action by the examiner, it
is appropriate to merely file a petition to extend the time
along with the proper fee in the pending application and
file the continuing application during the extension period.
It is not necessary to file a response in the pending
application. The petition plus fee provides the time for
applicant to take whatever action is appropriate. Desirably,
applicant should expressly abandon the prior application
after the filing of the continuing application. An extension
of time will not be effected in the prior application by
filing a petition for extension of time in a continuing
application. This is because the petition for extension of
time must be directed toward and filed in the application to
which it pertains in accordance with 37 CFR 1.4 and 1.5.

  Where a response is filed after the set period for
response has expired and no petition or fee accompanies it,
the response will not be accepted as timely until the
petition  and  the  appropriate  fee  are  submitted.  The
response, when filed late, must include both the petition
and the fee. If either is missing, the response is not
acceptable until such time as the missing petition or fee is
submitted. For example, if an Office action sets a 3 - month
period for response and applicant responds in the fourth
month and includes only the fee for a 1 - month extension of
time, the response is not acceptable until the petition is

filed. If the petition is not filed until the fifth month,
an additional fee for the second month extension would also
be required in order to render the response timely.

  >An extension of time under 37 CFR 1.136 is not
necessary when submitting a supplemental response to an
Office action if a complete first response was timely filed
in response to the Office action.<

  When  the  provisions  of  37  CFR  1.136(a)  are  not
applicable, extensions of time for cause pursuant to 37 CFR
1.136(b) are possible. Any such extension must be filed on
or before the day on which action by the applicant is due.
The mere filing of such a request will not effect any
extension. All such requests are to be decided by the Group
Director. No extension can operate to extend the time beyond
the 6 - month statutory period.

  If a request for extension of time under 37 CFR 1.136(b)
is filed in duplicate and accompanied by a stamped return -
addressed envelope, the Office will indicate the action
taken on the duplicate and return it promptly in the
envelope. Utilization of this procedure is optional on the
part of applicant. In this procedure, the action taken on
the request should be noted on the original and on the copy
which is to be returned. The notation on the original, which
becomes a part of the file record, should be signed by the
person granting or denying the extension, and the name and
title of that person should also appear in the notation on
the copy which is returned to the person requesting the
extension.

  When the request is granted, no further action by the
Office is necessary. When the request is granted in part,
the  extent  of  the  extension  granted  will  be  clearly
indicated on both the original and on the copy which is to
be returned. When the request is denied, the reason for the
denial will be indicated on both the original and on the
copy which is to be returned or a formal decision letter
giving the reason for the denial will be forwarded promptly
after the mailing of the duplicate.

  If the request for extension of time is granted, the due
date is computed from the date stamped or printed on the
action, as opposed to the original due date. See MPEP §
710.01(a). For example, a response to an action with a 3 -
month shortened statutory period, dated November 30, is due
on the following February 28 (or 29, if it is a leap year).
If the period for response is extended an additional month,
the response becomes due on March 30, not on March 28.

  For purposes of convenience, a request for an extension
of time may be personally delivered and left with the
appropriate area to become an official paper in the file
without routing through the mail room. The person who
accepts the request for an extension of time will have it
date stamped.

  If duplicate copies of a request for an extension of
time  under  37  CFR  1.136(b)  are  hand  delivered  to  an
examining group, both copies are dated, either stamped
approved or indicated as being approved in part or denied,
and signed. The duplicate copy is returned to the delivering
person regardless of whether the request was signed by a
registered attorney or agent, either of record or acting in

a representative capacity, the applicant or the assignee of
record of the entire interest.

  If the request for extension under 37 CFR 1.136(b) is
not presented in duplicate, the applicant should be advised
promptly by way of form letter PTOL - 327 regarding action
taken on the request so that the file record will be
complete.

  Form Paragraph 7.98 may be used where a response is
filed late but an extension of time is possible.

¶ 7.98  Response is Late, Extension of Time Suggested

  Applicant's response was received in the Office on [1],
which is after the expiration of the period for response set
in the last Office action mailed on [2]. This application
will become abandoned unless applicant obtains an extension
of time to reply to the last Office action under 37 CFR
1.136(a).

 Examiner Note:

  Since the provisions of 37 CFR 1.136(a) do not apply to
reexamination proceedings or to litigation related reissue
applications,  do  not  use  this  paragraph  in  these
applications.

  FINAL REJECTION - TIME FOR RESPONSE

  **>If< an applicant initially responds within 2 months
from the date of mailing of any final rejection setting a 3
- month shortened statutory period for response and the
Office does not mail an advisory action until after the end
of the 3 - month shortened statutory period, the period for
response for purposes of determining the amount of any
extension fee will be the date on which the Office mails the
advisory action advising applicant of the status of the
application, but in no event can the period extend beyond 6
months from the date of the final rejection. This procedure
**>applies< only to a first response to a final rejection.
**>The<  following  language  >must  be  included  by  the
Examiner< in each final rejection **.

  A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL
ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS
ACTION. IN THE EVENT A FIRST RESPONSE IS FILED WITHIN TWO
MONTHS OF THE MAILING DATE OF THIS FINAL ACTION AND THE
ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE
THREE - MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED
STATUTORY PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION
IS MAILED, AND ANY EXTENSION FEE PURSUANT TO 37 CFR 1.136(a)
WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY
ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR RESPONSE
EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL
ACTION .

  For example, if applicant initially responds within 2
months from the date of mailing of a final rejection and the
examiner mails an advisory action before the end of 3 months
from the date of mailing of the final rejection, the
shortened statutory period will expire at the end of 3
months from the date of mailing of the final rejection. In
such a case, any extension fee would then be calculated from
the end of the 3 month period. If the examiner, however,

does not mail an advisory action until after the end of 3
months, the shortened statutory period will expire on the
date  the  examiner  mails  the  advisory  action  and  any
extension fee may be calculated from that date.

  See also MPEP § 706.07(f).

  EXTENSIONS OF TIME TO SUBMIT AFFIDAVITS AFTER FINAL
  REJECTION

  Frequently, applicants request an extension of time,
stating as a reason therefor that more time is needed in
which to submit an affidavit. When such a request is filed
after final rejection, the granting of the request for
extension of time is without prejudice to the right of the
examiner to question why the affidavit is now necessary and
why it was not earlier presented. If applicant's showing is
insufficient, the examiner may deny entry of the affidavit,
notwithstanding the previous grant of an extension of time
to submit it. The grant of an extension of time in these
circumstances serves merely to keep the case from becoming
abandoned while allowing the applicant the opportunity to
present the affidavit or to take other appropriate action.
Moreover, prosecution of the application to save it from
abandonment must include such timely, complete and proper
action as required by 37 CFR 1.113. The admission of the
affidavit  for  purposes  other  than  allowance  of  the
application, or the refusal to admit the affidavit, and any
proceedings relative thereto, shall not operate to save the
application from abandonment.

  Implicit  in  the  above  practice  is  the  fact  that
affidavits submitted after final rejection are subject to
the same treatment as amendments submitted after final
rejection; In re Affidavit Filed After Final Rejection , 152
USPQ 292, 1966 C.D. 53.

  Failure  to  file  a  response  during  the  shortened
statutory period results in abandonment of the application.

  REQUIREMENT FOR A RESPONSE UNDER 37 CFR 1.136 AND 1.137
  WHERE CONTINUING APPLICATION IS BEING FILED

  In those instances where an extension of time or a
revival of an abandoned application is sought solely for the
purpose of filing a continuing application under 35 U.S.C.
120 and where the prior application is to be abandoned in
favor  of  the  continuing  application,  the  filing  of  a
response as required by 37 CFR 1.111, 1.113, 1.192 or other
regulation is considered to be an unnecessary expenditure of
resources  by  the  applicant.  Accordingly,  in  these
situations, the Patent and Trademark Office will accept the
filing of a continuing application as a response under 37
CFR 1.136 or 1.137. However, the filing of a continuing
application is not a proper response where (1) the response
needed is payment of the issue fee, or (2) there is a need
to  respond  under  37  CFR  1.135(c)  to  complete  an
inadvertently incomplete response.

  To  facilitate  processing  by  the  Office,  any  such
petition for extension of time or petition to revive should
specifically refer to the filing of a continuing application
and  also  include  an  express  abandonment  of  the  prior
application conditioned upon the granting of the petition
and  the  granting  of  a  filing  date  to  the  continuing

application.

  Extensions of time to appeal to the courts under 37 CFR
1.304 is covered in MPEP § 1216.

  EXTENSION OF TIME AFTER PAYMENT OF ISSUE FEE

  The statutory (nonextendable) time period for payment of
the issue fee is 3 months from the date of the Notice of
Allowance (35 U.S.C. 151). In situations where informalities
such as drawing corrections or submission of supplemental or
corrected  declarations  are  outstanding  at  the  time  of
allowance, applicants will be notified on the PTOL - 37
(Notice  of  Allowablility)  of  such  informalities.  While
extensions of time under 37 CFR 1.136(a) are available to
correct such informalities, the issue fee must be paid
within the 3 - month period.

710.04  Two Periods Running [R - 1]

  >There sometimes arises a situation where two different
periods for response are running against an application, the
one limited by the regular statutory period, the other by
the limited period set in a subsequent Office action. The
running of the first period is not suspended nor affected by
an Ex parte limited time action or even by an appeal
therefrom. For an exception, involving suggested claims, see
MPEP § 2305.03.<

710.04(a)  Copying Patent Claims [R - 1]

  >Where,  in  an  application  in  which  there  is  an
unanswered rejection of record, claims are copied from a
patent and all of these claims are rejected there results a
situation where two different periods for response are
running against the application. One period, the first, is
the regular statutory period of the unanswered rejection of
record, the other period is the limited period set for
response to the rejection (either first or final). The date
of the last unanswered Office action on the claims other
than the copied patent claims is the controlling date of the
statutory period. ( Ex parte Milton , 164 Ms. D. 1, 63 USPQ
132 and Ex parte Nelson , 164 Ms. D. 361, 26 J.P.O.S. 564.)
See also MPEP § 2305.02.<

710.05  Period Ending on Saturday, Sunday, or a Federal
Holiday [R - 1]

 >35 U.S.C. 21  Filing date and day for taking action.

  *****

  (b) When the day, or the last day, for taking any action
or paying any fee in the United States Patent and Trademark
Office falls on Saturday, Sunday, or a Federal holiday
within the District of Columbia the action may be taken, or
the fee paid, on the next succeeding secular or business
day.

 37 CFR 1.7.  Times for taking action; Expiration on
Saturday, Sunday, or Federal holiday.

  Whenever periods of time are specified in this part in
days, calendar days are intended. When the day, or the last
day fixed by statute or by or under this part for taking any

action or paying any fee in the Patent and Trademark Office
falls on Saturday, Sunday, or on a Federal holiday within
the District of Columbia, the action may be taken, or the
fee paid, on the next succeeding day which is not a
Saturday, Sunday, or a Federal holiday. See § 1.304 for time
for appeal or for commencing civil action.

  The Federal holidays are New Year's Day, January 1;
Martin Luther King's birthday, the third Monday in January;
Washington's  Birthday,  the  third  Monday  in  February;
Memorial Day, the last Monday in May; Independence Day, July
4; Labor Day, the first Monday in September; Columbus Day,
the second Monday in October; Veteran's Day, November 11;
Thanksgiving Day, the fourth Thursday in November; Christmas
Day, December 25; Inauguration day (January 20, every 4
years). Whenever a Federal holiday falls on a Sunday, the
following day (Monday) is also a Federal holiday, Ex. Order
10,358; 17 FR. 5269; 5 U.S.C. 6103.

  When  a  Federal  holiday  falls  on  a  Saturday,  the
preceding day, Friday, is considered to be a Federal holiday
and the Patent and Trademark Office will be closed for
business on that day (5 U.S.C. 6103). Accordingly, any
action or fee due on such a Federal holiday Friday or
Saturday is to be considered timely if the action is taken,
or the fee paid, on the next succeeding day which is not a
Saturday, Sunday, or a Federal holiday.

  When an amendment is filed a day or two later than the
expiration of the period fixed by statute, care should be
taken to ascertain whether the last day of that period was
Saturday, Sunday, or a Federal holiday and if so, whether
the amendment was filed or the fee paid on the next
succeeding day which is not a Saturday, Sunday, or a Federal
holiday.

  An amendment received on such succeeding day which was
due on Saturday, Sunday, or Federal holiday is endorsed on
the file wrapper with the date of receipt. The Saturday,
Sunday, or Federal holiday is also indicated.<

710.06  Situations When Response Period Is Reset or
Restarted [R - 1]

  >Where the citation of a reference is incorrect or an
Office action contains some other defect and this error is
called to the attention of the Office within 1 month of the
mail date of the action, the Office will restart the
previously set period for response to run from the date the
error is corrected, if requested to do so by applicant. If
the error is brought to the attention of the Office within
the period for response set in the Office action but more
than 1 month after the date of the Office action, the Office
will set a new period for response, if requested to do so by
the applicant, to substantially equal the time remaining in
the response period. For example, if the error is brought to
the attention of the Office 5 weeks after mailing the
action, then the Office would set a new 2 - month period for
response. The new period for response must be at least 1
month and would run from the date the error is corrected.
See MPEP § 707.05(g) for the manner of correcting the record
where there has been an erroneous citation.

  Where for any reason it becomes necessary to remail any
action (MPEP § 707.13), the action should be correspondingly

redated, as it is the remailing date that establishes the
beginning of the period for response; Ex parte Gourtoff ,
1924 C.D. 153, 329 O.G. 536.

  A supplementary action after a rejection explaining the
references more explicitly or giving the reasons more fully,
even though no further references are cited, establishes a
new date from which the statutory period runs.

  If the error in citation or other defective Office
action is called to the attention of the Office after the
expiration of the period for response, the period will not
be restarted and any appropriate extension fee will be
required to render a response timely. The Office letter
correcting the error will note that the time period for
response remains as set forth in the previous Office action.

  See MPEP § 505, § 512, and § 513 for Patent and
Trademark Office practice on date stamping documents.

  In the event that correspondence from the Office is
received late due to (1) delays in the U.S. Postal Service,
or (2) because the mail was delayed in leaving the PTO (the
postmark date is later than the mail date printed on the
correspondence), applicants may petition to reset the period
for response, which petitions shall be evaluated according
to  the  guidelines  which  follow.  Where  the  PTO  action
involved in the petition was mailed by an examining group,
the authority to decide such petitions has been delegated to
the Group Director. See 1160 O.G. 14.

  PETITIONS TO RESET A PERIOD FOR RESPONSE DUE TO LATE
  RECEIPT OF A PTO ACTION

  The PTO will grant a petition to restart the previously
set period for response to a PTO action to run from the date
of receipt of the PTO action at the correspondence address
when the following criteria are met:

 (1) the petition is filed within 2 weeks of the date
of receipt of the PTO action at the correspondence address;

 (2) a substantial portion of the set response period
had elapsed on the date of receipt (e.g., at least 1 month
of a 2 - or 3 - month response period had elapsed); and

 (3) the petition includes (a) evidence showing the
date of receipt of the PTO action at the correspondence
address (e.g., a copy of the PTO action having the date of
receipt of the PTO action at the correspondence address
stamped thereon, a copy of the envelope (which contained the
PTO action) having the date of receipt of the PTO action at
the correspondence address stamped thereon, etc.), and (b) a
statement (verified if made by other than a registered
practitioner) setting forth the date of receipt of the PTO
action at the correspondence address and explaining how the
evidence being presented establishes the date of receipt of
the PTO action at the correspondence address.

  There is no statutory requirement that a shortened
statutory period of longer than 30 days to respond to a PTO
action be reset due to delay in the mail or in the PTO.
However, when a substantial portion of the set response
period  had  elapsed  on  the  date  of  receipt  at  the
correspondence address (e.g., at least 1 month of a 2 - or 3

- month period had elapsed), the procedures set forth above
for late receipt of a PTO action are available. Where a PTO
action was received with less than 2 months remaining in a
shortened statutory period of 3 months, the period may be
restarted  from  the  date  of  receipt.  Where  the  period
remaining is between 2 and 3 months, the period will be
reset only in extraordinary situations; e.g., complex PTO
action suggesting submission of comparative data.

  PETITIONS TO RESET A PERIOD FOR RESPONSE DUE TO A POSTMARK
  DATE LATER THAN THE MAIL DATE PRINTED ON A PTO ACTION

  The PTO will grant a petition to restart the previously
set period for response to a PTO action to run from the
postmark date shown on the PTO mailing envelope which
contained the PTO action when the following criteria are
met:

 (1) the petition is filed within 2 weeks of the date
of receipt of the PTO action at the correspondence address;

 (2) the response period was for payment of the issue
fee; or the response period set was 1 month or 30 days; and

 (3)  the  petition  includes  (a)  evidence  showing
address (e.g., copy of the PTO action having the date of
receipt of the PTO action at the correspondence address
stamped thereon, etc.), (b) a copy of the envelope which
contained the PTO action showing the postmark date, and (c)
a statement (verified if made by other than registered
practitioner) setting forth the date of receipt of the PTO
action at the correspondence address and stating that the
PTO action was received in the postmarked envelope.

  The provisions of 37 CFR 1.8 and 1.10 apply to the
filing of the above - noted petitions with regard to the
requirement that the petition be filed within 2 weeks of the
date of receipt of the PTO action.

  The showings outlined above may not be sufficient if
there are circumstances that point to a conclusion that the
PTO action may have been delayed after receipt rather than a
conclusion that the PTO action was delayed in the mail or in
the PTO.<

711  Abandonment [R - 1]

 >37 CFR 1.135.  Abandonment for failure to respond within
time limit.

  (a) If an applicant of a patent application fails to
respond within the time period provided under § 1.134 and
1.136, the application will become abandoned unless an
Office action indicates otherwise.

  (b)  Prosecution  of  an  application  to  save  it  from
abandonment pursuant to paragraph (a) of this section must
include such complete and proper action as the condition of
the case may require. The admission of an amendment not
responsive to the last Office action, or refusal to admit
the same, and any proceedings relative thereto, shall not
operate to save the application from abandonment.

  (c) When action by the applicant is a bona fide attempt
to respond and to advance the case to final action, and is

substantially a complete response to the Office action, but
consideration  of  some  matter  or  compliance  with  some
requirement has been inadvertently omitted, opportunity to
explain and supply the omission may be given before the
question of abandonment is considered.

 37 CFR 1.138.  Express abandonment.

  An application may be expressly abandoned by filing in
the Patent and Trademark Office a written declaration of
abandonment signed by the applicant and the assignee of
record,  if  any,  and  identifying  the  application.  An
application may also be expressly abandoned by filing a
written declaration of abandonment signed by the attorney or
agent of record. A registered attorney or agent acting under
the provision of § 1.34(a), or of record, may also expressly
abandon a prior application as of the filing date granted to
a continuing application when filing such a continuing
application. Express abandonment of the application may not
be recognized by the Office unless it is actually received
by appropriate officials in time to act thereon before the
date of issue.

  Abandonment may be either of the invention or of an
application. This discussion is concerned with abandonment
of the application for patent.

  An abandoned application, in accordance with 37 CFR
1.135 and 1.138, is one which is removed from the Office
docket of pending cases through:

 (1) formal abandonment

 (a) by the applicant (acquiesced in by the assignee
if there be one), or

 (b) by the attorney or agent of record including an
associate attorney or agent appointed by the principal
attorney or agent and whose power is of record but not
including  a  registered  attorney  or  agent  acting  in  a
representative capacity under 37 CFR 1.34(a) except where a
continuing application is filed; or

 (2) failure of applicant to take appropriate action
within a specified time at some stage in the prosecution of
the case.

  Where  an  applicant,  himself  or  herself,  formally
abandons an application and there is a corporate assignee,
the acquiescence must be made through an officer whose
official position is indicated.

  See MPEP § 712 for abandonment for failure to pay issue
fee.<

711.01  Express or Formal Abandonment [R - 1]

  >The applicant (acquiesced in by an assignee of record),
or the attorney/agent of record, if any, can sign an express
abandonment. It is imperative that the attorney or agent of
record exercise every precaution in ascertaining that the
abandonment of the application is in accordance with the
desires and best interests of the applicant prior to signing
a letter of express abandonment of a patent application.
Moreover, special care should be taken to ensure that the

appropriate  application  is  correctly  identified  in  the
letter of abandonment.

  A  letter  of  abandonment  properly  signed  becomes
effective when an appropriate official of the Office takes
action thereon. When so recognized, the date of abandonment
may be the date of recognition or a different date if so
specified  in  the  letter  itself.  For  example,  where  a
continuing application is filed with a request to abandon
the prior application as of the filing date accorded the
continuing application, the date of the abandonment of the
prior application will be in accordance with the request
once it is recognized.

  Action in recognition of an express abandonment may take
the form of an acknowledgment by the examiner or the
Publishing  Division  of  the  receipt  of  the  express
abandonment, indicating that it is in compliance with 37 CFR
1.138. Alternatively, recognition may be no more than the
transfer of drawings to a new application pursuant to
instructions  which  include  a  request  to  abandon  the
application containing the drawings to be transferred (see
37 CFR 1.60 and MPEP § 608.02(i)).

  It is suggested that divisional applications being
submitted under 37 CFR 1.60 be reviewed before filing to
ascertain whether the prior application should be abandoned.
Care should be exercised in situations such as these as the
Office  looks  on  express  abandonments  as  acts  of
deliberation, intentionally performed.

  Applications may be expressly abandoned as provided for
in 37 CFR 1.138. When a letter expressly abandoning an
application (not in issue) is received, the examiner should
acknowledge receipt thereof, and indicate whether it does or
does not comply with the requirements of 37 CFR 1.138.

  The filing of a request for a file wrapper continuing
application (FWC) under 37 CFR 1.62(g) is considered to be a
request to expressly abandon the prior application as of the
filing date granted the continuing application.

  Form Paragraph 7.88 may be used to acknowledge proper
express abandonments.

¶ 7.88  Acknowledge Express Abandonment

  This application is abandoned in view of the letter of
express abandonment complying with 37 CFR 1.138 filed on
[1].

 Examiner Note:

  1.  With  the  exception  of  express  abandonments
resulting from the filing of a file wrapper continuation
application or filed with a continuing application, all
express abandonments must be signed by all the inventors,
the owners of the entire interest, or an attorney of record.

  2.  The provisions of 37 CFR 1.34 do not apply to
express  abandonments  unless  filed  with  a  continuing
application.

  If the letter expressly abandoning the application does
comply with 37 CFR1.138, the examiner should respond by

using form PTOL - 1432 and by checking the appropriate boxes
which indicate that the letter is in compliance with 37 CFR
1.138 and that the application is being forwarded to the
Files Repository. The examiner's signature may appear at the
bottom of the form. If such a letter does not comply with
the requirements of 37 CFR 1.138, a fully explanatory letter
should be sent.

  Form Paragraph 7.89 may be used to acknowledge improper
express abandonments.

¶ 7.89  Letter of Express Abandonment, Improper

  The letter filed on [1] does not comply with the
requirements of 37 CFR 1.138, and therefore is not a proper
letter of express abandonment.

 Examiner Note:

  The reasons why the letter fails to comply with 37 CFR
1.138 must be fully explained, e.g., the individual signing
the express abandonment is not of record. See the Examiner
Notes of form paragraph 7.88.

  A letter of express abandonment which is not timely
filed (because it was not filed within the period for
response),  is  not  acceptable  to  expressly  abandon  the
application. The letter of express abandonment should be
endorsed on the file wrapper and placed in the application
file but not formally entered.

  The application should be pulled for abandonment after
expiration of the minimum permitted period for response (see
MPEP § 711.04(a)) and applicant notified of the abandonment
for failure to respond within the statutory period. See MPEP
§ 711.02 and § 711.04(c).

  In view of the doctrine set forth in Ex parte Lasscell ,
1884 C.D. 66, 29 O.G. 861 (Comm'r Pat. 1884), an amendment
canceling all of the claims, even though said amendment is
signed by the applicant himself and the assignee, is not an
express  abandonment.  Such  an  amendment  is  regarded  as
nonresponsive and should not be entered, and applicant
should be notified as explained in MPEP § 714.03 to §
714.05. But see MPEP § 608.02(i) for situation where an
application is abandoned along with transfer of drawings to
a new application.

  An attorney or agent not of record in an application may
file a withdrawal of an appeal under 37 CFR 1.34(a) except
in those instances where such withdrawal would result in
abandonment  of  the  application.  In  such  instances  the
withdrawal of appeal is in fact an express abandonment.

  AFTER NOTICE OF ALLOWANCE

  Letters of abandonment of allowed applications are
acknowledged by the Publishing Division.

  37 CFR 1.313 provides that an allowed application will
not be withdrawn from issue except by approval of the
Commissioner, and that after the issue fee has been paid, it
will not be withdrawn for any reason except

 (1) mistake on the part of the Office,

 (2) a violation of 37 CFR 1.56 or illegality in the
application,

 (3) unpatentability of one or more claims,

 (4) for interference, or

 (5) for abandonment to permit consideration of an
information disclosure statement under 37 CFR 1.97 in a
continuing application. See MPEP § 711.05 and § 1308.

  In cases where 37 CFR 1.313 precludes giving effect to
an  express  abandonment,  the  appropriate  remedy  is  a
petition,  with  fee,  under  37  CFR  1.183,  showing  an
extraordinary situation where justice requires suspension of
37 CFR 1.313.

  APPLICATION IN INTERFERENCE

  A written declaration of abandonment of the application
signed only by an attorney or agent of record, when the
application sought to be expressly or formally abandoned is
the subject of an interference proceeding under 35 U.S.C.
135, is not effective to terminate the interference, and
will not be considered until after ex parte prosecution is
resumed.  In  order  to  be  effective  to  terminate  an
interference proceeding, an abandonment of the application
must be signed by the inventor in person with the written
consent of the assignee where there has been an assignment.<

711.02  Failure To Take Required Action During Statutory
Period [R - 3]

  37 CFR 1.135(a) specifies that an application becomes
abandoned if applicant "fails to prosecute" his or her
application within the fixed statutory period. This failure
may result either from (1) failure to respond with in the
statutory period, or (2) insufficiency of response, i.e.,
failure  to  take  "complete  and  proper  action,  as  the
condition of the case may require" within the statutory
period (37 CFR 1.135(b)).

  When an amendment is filed after the expiration of the
statutory period, the case is abandoned and the remedy is to
petition to revive it. The examiner should notify the
applicant or attorney at once that the application has been
abandoned by using form letter PTOL - 1432. The proper boxes
on the form should be checked and the blanks for the dates
of the proposed amendment and the Office action completed.
The late amendment is endorsed on the file wrapper but not
formally entered. (See MPEP § 714.17.)

  Form Paragraph 7.90 may also be used.

¶ 7.90  Abandonment, Failure To Respond

  This application is abandoned in view of applicant's
failure to submit a response to the Office action mailed on
[1] within the required period for response.

 Examiner Note:

  1. A letter of abandonment should not be mailed until
after the period for requesting an extension of time under

37 CFR 1.136(a) has expired.

  2. In pro se cases see form paragraph 17.10.

  To pass on questions of abandonment, it is essential
that the examiner know the dates that mark the beginning and
end  of  the  statutory  period  under  varying  situations.
Applicant's response must reach the Office within the set
shortened statutory period for reply dating from the date
stamped or printed on the Office letter or within the
extended time period obtained under 37 CFR 1.136. (See MPEP
§ 710 to § 710.06.)

  PETITION TO WITHDRAW HOLDING OF ABANDONMENT BASED ON
  FAILURE TO RECEIVE OFFICE ACTION

  An allegation that an Office action was not received may
be considered as a petition for the withdrawal of the
holding of abandonment. If the allegation is adequately
supported, the petition may be granted and a new Office
action mailed. **

  >In  order  to  minimize  costs  and  burdens  to  the
practitioner and the Office when an application has become
abandoned due to a failure to receive an Office action, the
Office has modified (1156 O.G. 53, November 16, 1993) the
showing required to make a petition to withdraw the holding
of abandonment grantable. The showing required to establish
the failure to receive an Office action must consist of a
statement from the practitioner stating that the Office
action was not received by the practitioner and attesting to
the fact that a search of the file jacket and docket records
indicates that the Office action was not received. A copy of
the docket record where the nonreceived Office action would
have been entered had it been received and docketed must be
attached to and referenced in practitioner's statement.

  The showing outlined above may not be sufficient if
there are circumstances that point to a conclusion that the
Office action may have been lost after receipt rather than a
conclusion that the Office action was lost in the mail,
e.g., if the practitioner has a history of not receiving
Office actions. Two additional procedures are available for
reviving an application that has become abandoned due to a
failure to respond to an Office Action: (1) a petition based
on unintentional abandonment or delay; and (2) a petition
based on unavoidable delay. See MPEP § 711.03(c).<

711.02(a)  Insufficiency of Response [R - 1]

  >Abandonment  may  result  from  a  situation  where
applicant's reply is within the period for response but is
not fully responsive to the Office action. But see MPEP §
710.02(c), par. (c). See also MPEP § 714.02 to § 714.04.

 ¶ 7.91 Reply is Not Fully Responsive, Extension of Time
Suggested

  Applicant's reply received [1] is not deemed to be fully
responsive to the prior Office action because [2]. Since the
period for response set in the prior Office action has
expired,  this  application  will  become  abandoned  unless
applicant corrects the deficiency and obtains an extension
of time under 37 CFR 1.136(a).

  The date on which the corrected response, the petition
under 37 CFR 1.136(a), and the petition fee are filed will
be  the  date  of  the  response  and  also  the  date  for
determining the period of extension and the corresponding
amount of the fee. In no case may an applicant respond later
than the six month statutory period or obtain an extension
for more than four months beyond the date of response set in
an Office action.

 Examiner Note:

  1.  In bracket 2, set forth why the examiner considers
there to be a failure to take "complete and proper action"
within the statutory period.

  2. If the response appears to be a bona fide attempt to
respond with an inadvertent omission, do not use this
paragraph; instead use form paragraph 7.95.<

711.02(b)  Special Situations Involving Abandonment [R -
1]

  >The  following  situations  involving  questions  of
abandonment often arise, and should be specially noted:

 (1) Copying claims from a patent when not suggested
by the Patent and Trademark Office does not constitute a
response to the last Office action and will not save the
case from abandonment, unless the last Office action relied
solely on the patent for the rejection of all the claims
rejected in that action.

 (2) A case may become abandoned through withdrawal
of, or failure to prosecute, an appeal to the Board of
Patent Appeals and Interferences. See MPEP § 1215.01 to §
1215.04.

 (3)  Likewise  it  may  become  abandoned  through
dismissal of appeal to C.A.F.C. or civil action, where there
was not filed prior to such dismissal an amendment putting
the case in condition for issue or fully responsive to the
Board's  decision.  Abandonment  results  from  failure  to
perfect an appeal as required by C.A.F.C. See MPEP § 1215.05
and § 1216.01.

 (4) Where claims are suggested for interference near
the end of the period for response running against the case,
see MPEP § 2305.

 (5) When an FWC application under 37 CFR 1.62 is
filed. See MPEP § 201.06(b) and § 711.01.<

711.02(c)  Termination of Proceedings [R - 1]

  >"Termination of proceedings" is an expression found in
35 U.S.C. 120. As there stated, a second application is
considered to be copending with an earlier case if it is
filed before (a) the patenting, (b) the abandonment of, or
(c) other termination of proceedings in the earlier case.
"Before" has consistently been interpreted, in this context,
to mean "not later than."

  In each of the following situations, proceedings are
terminated:

 (1)  When  the  issue  fee  is  not  paid  and  the
application is abandoned for failure to pay the issue fee,
proceedings are terminated as of the date the issue fee was
due and the application is the same as if it were abandoned
after midnight on that date (but if the issue fee is later
accepted, on petition, the application is revived). See MPEP
§ 712.

 (2) If an application is in interference involving
all the claims present in the application as counts and the
application loses the interference as to all the claims,
then proceedings on that application are terminated as of
the date appeal or review by civil action was due if no
appeal or civil action was filed.

 (3) Proceedings are terminated in an application
after  decision  by  the  Board  of  Patent  Appeals  and
Interferences as explained in MPEP § 1214.06.

 (4) Proceedings are terminated after a decision by
the court as explained in MPEP § 1216.01.<

711.03  Reconsideration of Holding of Abandonment; Revival
[R - 1]

  >When  advised  of  the  abandonment  of  his  or  her
application, applicant may either ask for reconsideration of
such holding, if he or she disagrees with it on the basis
that there is no abandonment in fact; or petition for
revival under 37 CFR 1.137.<

711.03(a)  Holding Based on Insufficiency of Response [R
- 1]

  >Applicant may deny that the response was incomplete.

  While the primary examiner has no authority to act upon
an application in which no action by applicant was taken
during the period for response, he or she may reverse his or
her holding as to whether or not an amendment received
during such period was responsive and act on a case of such
character which he or she has previously held abandoned.
This is not a revival of an abandoned application but merely
a holding that the case was never abandoned. See also MPEP §
714.03.<

711.03(b)  Holding Based on Failure To Respond Within
Period [R - 1]

  >When an amendment reaches the Patent and Trademark
Office after the expiration of the period for response and
there is no dispute as to the dates involved, no question of
reconsideration  of  a  holding  of  abandonment  can  be
presented.

  However, the examiner and the applicant may disagree as
to the date on which the period for response commenced to
run  or  ends.  In  this  situation,  as  in  the  situation
involving sufficiency of response, the applicant may take
issue with the examiner and point out to him or her that his
or her holding was erroneous.<

711.03(c)  Petitions Relating to Abandonment [R - 3]

 37 CFR 1.137. Revival of abandoned application.

  (a) An application abandoned for failure to prosecute may
be revived as a pending application if it is shown to the
satisfaction of the

 Commissioner that the delay was unavoidable. A petition to
revive an abandoned application must be promptly filed after
the applicant is notified of, or otherwise becomes aware of,
the abandonment, and must be accompanied by:

  (1) a proposed response to continue prosecution of that
application, or filing of a continuing application, unless
either has been previously filed;

  (2) the petition fee as set forth in § 1.17(l); and

  (3) a showing that the delay was unavoidable. The showing
must  be  a  verified  showing  if  made  by  a  person  not
registered to practice before the Patent and Trademark
Office.

  (b) An application unintentionally abandoned for failure
to prosecute may be revived as a pending application if the
delay  was  unintentional.  A  petition  to  revive  an
unintentionally abandoned application must be:

  (1)  accompanied  by  a  proposed  response  to  continue
prosecution  of  that  application,  or  the  filing  of  a
continuing application, unless either has been previously
filed;

  (2) accompanied by the petition fee as set forth in §
1.17(m);

  (3)  accompanied  by  a  statement  that  the  delay  was
unintentional. The statement must be a verified statement if
made by a person not registered to practice before the
Patent and Trademark Office. The Commissioner may require
additional information where there is a question whether the
delay was unintentional; and

  (4) filed either:

  (i) within one year of the date on which the application
became abandoned; or

  (ii) within three months of the date of the first
decision on a petition to revive under paragraph (a) of this
section which was filed within one year of the date on which
the application became abandoned.

  (c) Any petition pursuant to paragraph (a) of this
section  not  filed  within  six  months  of  the  date  of
abandonment of the application, must be accompanied by a
terminal disclaimer with fee under § 1.321 dedicating to the
public a terminal part of the term of any patent granted
thereon equivalent to the period of abandonment of the
application. The terminal disclaimer must also apply to any
patent granted on any continuing application entitled under
35 U.S.C. 120 to the benefit of the filing date of the
application for which revival is sought.

  (d) Any request for reconsideration or review of a
decision refusing to revive an application upon petition
filed pursuant to paragraphs (a) or (b) of this section, to

be considered timely, must be filed within two months of the
decision refusing to revive or within such time as set in
the decision.

  (e) The time periods set forth in this section cannot be
extended, except that the three - month period set forth in
paragraph (b)(4)(ii) and the time period set forth in
paragraph (d) of this section may be extended under the
provisions of § 1.136.

  Public Law 97 - 247 provided at 35 U.S.C. 41(a)7, a fee
for the revival of an unintentionally abandoned application
for a patent or for the unintentionally delayed payment of
the fee for issuing each patent unless the petition is filed
under 35 U.S.C. 133 or 151 (revival based upon unavoidable
delay), in which case a different fee is applicable. These
fees are expressly set forth in 37 CFR 1.17(l) and 1.17(m)
and provide for a 50% reduction for small entities.

  The standard which is applied in situations where the
delay resulting in abandonment is unavoidable is the same
standard which has previously been applied prior to Public
Law 97 - 247.

  37 CFR 1.17(m) provides for a fee for filing each
petition for revival, or for acceptance of the delayed
payment of an issue fee, where the abandonment or the
failure to pay the issue fee is unintentional. The standard
which is applied is substantially less rigorous than the
standard applied for unavoidable delay petitions. Generally,
a statement that the delay was unintentional, plus the
proper petition fee, and the proposed response is all that
is required. The statement that the delay was unintentional
should be made by a person involved with the application
during the entire period of delay. A description of the
circumstances surrounding the delay should not be submitted
unless  there  is  a  question  whether  the  delay  was
unintentional. Where a question arises whether the delay was
unintentional, additional information may be required. For
example, a letter of express abandonment in the abandoned
application  would  prompt  a  requirement  for  further
information where the record does not make clear that such a
delay was unintentional.

  An applicant is not precluded from filing a petition
based upon unintentional delay where a petition plus fee
based upon unavoidable delay is unsuccessful. In such an
instance,  a  petition  to  revive  on  the  ground  of
unintentional abandonment accompanied by the proper fee and
the appropriate response could be filed. For this purpose, a
mere statement that the delay was unintentional is all that
is required.

  In the instances where an application is abandoned and
revival is based upon unintentional delay or unavoidable
delay is desired solely for the purpose of continuity in
order to effect the filing of a continuing application, it
is not necessary to file the appropriate response. The
filing of the continuing application will be accepted as the
appropriate response in such situations. If revival is
desired  for  other  than  the  filing  of  a  continuing
application, a complete petition must include the proposed
response which resulted in the holding of abandonment. To
facilitate action, the petition to revive should include
reference to the filing of the continuing application and a

letter of express abandonment conditional upon the granting
of the petition and of a filing date to the continuing
application.

  An application which is abandoned for failure to respond
within a set period, with no extension fees having been
paid, would not require the payment of extension fees as a
condition of revival.

  PETITIONS TO WITHDRAW THE HOLDING OF ABANDONMENT

  Prior to 1971, the only relief available to an applicant
alleging the nonreceipt of an Office communication, wherein
the period for response had expired, was by way of a
petition to revive. The Office was not receptive to treating
such contentions as petitions for the withdrawal of the
holding of abandonment regardless of the evidence presented
in support of the contention that the Office action was not
received. However, in 1971, the District Court, District of
Columbia, in Delgar Inc. v.  Schuyler , 172 USPQ 513 (D.D.C.
1971), decided that the Commissioner should mail a new
Notice of Allowance in view of the evidence presented in
support of the contention that plaintiff's attorney never
received the first Notice.

  While the decision may have been based on the fact that
a petition to revive was not available in a case abandoned
for failure to pay the issue fee, the reasoning of the court
can appropriately be applied to cases abandoned for failure
to prosecute. Accordingly, the form of relief provided in
Delgar  is  extended  to  cover  the  abandonment  of  an
application for failure to respond to an Office action which
was  not  received  by  the  applicant  or  his  or  her
representative. Henceforth, an allegation that an Office
action was not received may be considered as a petition for
the  withdrawal  of  the  holding  of  abandonment.  If  the
allegation is adequately supported, the petition may be
granted and a new Office action mailed.

  In  order  to  minimize  costs  and  burdens  to  the
practitioner and the Office when an application has become
abandoned due to a failure to receive an Office action, the
Office has modified (1156 O.G. 53, November 16, 1993) the
showing required to make a petition to withdraw the holding
of abandonment grantable. The showing required to establish
the failure to receive an Office action must consist of a
statement from the practitioner stating that the Office
action was not received by the practitioner and attesting to
the fact that a search of the file jacket and docket records
indicates that the Office action was not received. A copy of
the docket record where the nonreceived Office action would
have been entered had it been received and docketed must be
attached to and referenced in practitioner's statement.

  The showing outlined above may not be sufficient if
there are circumstances that point to a conclusion that the
Office action may have been lost after receipt rather than a
conclusion that the Office action was lost in the mail,
e.g., if the practitioner has a history of not receiving
Office actions. Two additional procedures are available for
reviving an application that has become abandoned due to a
failure to respond to an Office Action: (1) a petition based
on unintentional abandonment or delay; and (2) a petition
based on unavoidable delay.

  A petition to revive an abandoned application should not
be confused with a petition from an examiner's holding of
abandonment. Where the holding of abandonment is predicated
on the insufficiency of the response, or disagreement as to
controlling dates, the petition from such holding comes
under 37 CFR 1.181 and does not require a fee.

  UNAVOIDABLE DELAY PETITIONS

  A  decision  on  a  petition  to  revive  an  abandoned
application under 37 CFR 1.137(a) is based solely on whether
a satisfactory showing has been made that the delay was
unavoidable (35 U.S.C. 133). A petition to revive is not
normally considered unless the petition fee has been paid
and will not be granted unless a proposed response to the
last Office action has been received (37 CFR 1.137). While a
response to a nonfinal action may be either an argument or
an amendment under 37 CFR 1.111, a response to a final
action "must include cancellation of, or appeal from the
rejection of, each claim so rejected" under 37 CFR 1.113.
Accordingly, in any case where a final rejection had been
made, the proposed response required for consideration of a
petition to revive must be either an appeal or an amendment
that cancels all the rejected claims or otherwise prima
facie places the application in condition for allowance or
the filing of a continuing application. When a notice of
appeal is the appropriate response accompanying a petition
to revive, the brief required by 37 CFR 1.192 will be due
within the time set by the Commissioner in the decision
granting the petition. In those situations where abandonment
occurred because of the failure to file an appeal brief, the
proposed response, required for consideration of a petition
to revive, must include a proper brief accompanied by the
proper fee.

  A copy of an appropriate form for use in filing a
petition to revive an unavoidably abandoned application is
reproduced below.

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  In all applications filed before June 8, 1995 and in all
design applications filed on or after June 8, 1995, which
application has been abandoned for at least 6 months before
the filing of a granted petition to revive, an appropriate
terminal disclaimer is required 37 CFR 1.137(c).

  When a terminal disclaimer is a necessary component of
the petition, the period to be disclaimed must equal the
number of months between the date of abandonment and the
date a grantable petition is filed. The date of abandonment
is the date the period for response has expired (see MPEP §
711.04(a)). This is normally the end of the 3 - month
shortened statutory period. The requirement for a terminal
disclaimer should not be viewed as a substitute for the
promptness requirement of 37 CFR 1.137(a). Moreover, the
terminal disclaimer should employ the format shown below.

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  Applicants may petition under the provisions of 37 CFR
1.183  for  a  waiver  of  the  requirement  that  a  period
equivalent to the period of abandonment be disclaimed if it
can be shown that an extraordinary situation exists in which
justice requires waiver of this requirement.

  In  situations  where  petitions  to  revive  are  not
grantable because of insufficient evidence submitted or
petitioner's failure to comply with certain requirements,
the Office may dismiss those petitions with an indication as
to  the  missing  items  and  warn  petitioners  that  if
reconsideration is desired a renewed petition supplying the
omissions has to be filed within 2 months from the date of
the decision or such time as may be set in the dismissal as
being  the  appropriate  deadline  for  requesting
reconsideration.  In  those  situations  where  petitioners
require more time to gather additional evidence or items
needed for reconsideration, an extension of time of up to 4
months may be obtained under the provisions of 37 CFR
1.136(a). The filing of a renewed petition within the period
specified in the decision or within the extended period
permitted under 37 CFR 1.136(a) will satisfy the promptness
requirement of petitions under the unavoidable standard.

  Upon failure to timely file a renewed petition under the
unavoidable standard, the Office will require a showing of
unavoidable delay for the entire period of abandonment. To
be  entitled  to  relief  under  the  unavoidable  standard,
petitioner must be able to show unavoidable delay from a
time prior to abandonment to the filing of a grantable
petition. In re Application of Takeo , 17 USPQ2d 1155
(Comm'r Pat. 1990).

  It should also be recognized that a petition to revive
an  abandoned  application  under  37  CFR  1.137  alleging
nonreceipt of the Office action may be treated as a request
to  withdraw  the  holding  of  abandonment.  However,  any
petition fee, filed with a 37 CFR 1.137 petition so treated,
may be returned or credited to petitioner's account by
indicating in the decision that a request should be made to
the Office of Finance.

  The  granting  of  a  petition  to  revive  does  not
necessarily mean that the proposed response is complete. The
Office of Petitions will normally route the application for
determining if the response to a final Office action places
the application in condition for allowance before granting a
petition to revive. The patent examiner is instructed that
if the response places the application in condition for
allowance, the patent examiner should write in the margin of
the response "OK to enter upon revival." If, on the other
hand, the response would not place the application in
condition for allowance, the patent examiner is instructed
to complete form PTOL - 303 and return the unmailed form to
the  Office  of  Petitions  with  the  application.  If  the
petition is otherwise grantable and the patent examiner
indicates  that  the  response  places  the  application  in
condition for allowance, the petition will be granted. If
such an amendment does not place the application into
condition for allowance, the petition will not be granted. A
copy of the form PTOL - 303 is not mailed with the decision
on the petition but merely serves as an advisory to the

Office of Petitions regarding the decision of the patent
examiner on the amendment after final rejection.

  Where the proposed response is to a nonfinal Office
action, the petition may be granted if the response appears
to be bona fide. After revival of the application, the
patent examiner may, upon more detailed review, determine
that the response is bona fide but lacking in some respect.
In this limited situation, the patent examiner should send
out a letter giving a 1 - month (or 30 days in the event
that a 1 - month period for response would be less than 30
days) shortened statutory period in order to correct the
error or omission. Extensions of time under 37 CFR 1.136(a)
are permitted. If applicant does not complete the response
within  the  shortened  statutory  period  including  any
extension, the application is again abandoned.

  See MPEP § 712 for a petition for late payment of the
issue fee .

  UNINTENTIONAL ABANDONMENT

  A decision on a petition to revive an unintentionally
abandoned  application  under  37  CFR  1.137(b)  is  based
substantially on whether the statement that the delay was
unintentional is present along with the required fee and the
proposed  response.  Generally,  nothing  else  is  required
unless there is reason to believe that the abandonment was
intentional such as a letter of express abandonment being of
record in the abandoned application. In such an instance,
the Office might inquire as to the circumstances surrounding
the abandonment in order to clarify that the abandonment
was, in fact, unintentional.

  A petition to revive based upon unintentional delay does
not require the submission of a terminal disclaimer. 37 CFR
1.137(c) specifically states that such disclaimers are only
required when a grantable petition based on unavoidable
delay  is  not  filed  within  6  months  of  the  date  of
abandonment in all applications filed before June 8, 1995
and in all design applications filed on or after June 8,
1995.

  If a petition to revive based upon unavoidable delay is
unsuccessful, an applicant is not estopped from filing a
petition based upon unintentional delay so long as such
petition is filed within 1 year of the date of abandonment
of the application or within 3 months of the date of the
first decision on a petition to revive based upon avoidable
delay, which was filed within 1 year of the date of
abandonment of the application. The petition must include a
statement that the delay was unintentional, a proposed
response if not filed previously, and the required petition
fee. The statement that the delay was unintentional must be
verified if made by a person not registered to practice
before the Office. The 3 - month period referred to above
which is measured from the date of the first decision on a
petition  to  revive  based  upon  unavoidable  delay  is
extendable for a period of up to 4 months under 37 CFR
1.136(a), but no further extensions under 37 CFR 1.136(b)
will be granted.

  The manner of determining the end of the 1 - year period
set forth in 37 CFR 1.137(b) is the same as that for
determining the date of abandonment. If the 1 - year

anniversary falls on a Saturday, Sunday, or Federal holiday,
the 1 - year anniversary date is deemed to be the next
succeeding business day. The 1 - year period would be over
after midnight of the 1 - year anniversary date.

  A copy of an appropriate form for use in filing a
petition to revive an unintentionally abandoned application
is reproduced below.

  37 CFR 1.137(b) is permissive in the sense that it does
not require a showing of unavoidable delay and does not
require a terminal disclaimer, but it is not meant to
encourage delay. Applicants who have received a Notice of
Abandonment in their applications sometimes calculate the
time when the 1 - year period for filing a petition for
unintentional abandonment ends with a view toward delaying
the filing of a petition until the end of the period.
Applicants are not permitted to do this. The Office has
amended 37 CFR 1.137(b) (effective Sept. 20, 1993) to
require applicant to state that the delay was unintentional,
rather than the abandonment was unintentional. A person
seeking revival should not make a statement that the delay
was unintentional unless the entire delay, including the
delay from the date it was discovered that the application
was abandoned up until the petition to revive was actually
filed, was unintentional. For example, a statement that the
delay  was  unintentional  would  not  be  proper  when  an
applicant  becomes  aware  of  an  abandonment  and  then
intentionally  delays  filing  a  petition  to  revive  the
application under 37 CFR 1.137.

  Applicants are cautioned against intentionally delaying
the filing of a petition to revive an abandoned application
because it may preclude any revival from an abandoned
status. Applicants have delayed filing a petition under the
unintentional standard until after expiration of the 1 -
year period because of a miscalculation of the 1 - year
period. This miscalculation resulted in the applicant being
unable to show that the delay was unavoidable. In re
Application of S , 8 USPQ2d 1630 (Comm'r Pat. 1988). Note
that 37 CFR 1.137(a) requires that petitions under that
section of the Rule be promptly filed after the application
is notified, or otherwise becomes aware of, the abandonment.

  Upon failure to timely file a renewed petition under the
unintentional  standard  (see  37  CFR  1.137(d),  1.155(e),
1.316(e), and 1.317(e)), petitioner may be subject to a loss
of the right to proceed under the unintentional standard if
more than 1 year lapsed between the date of abandonment and
the date the renewed petition is filed.

  The  unintentional  provisions  specified  in  37  CFR
1.137(b)  apply  to  applications  abandoned  under  37  CFR
1.53(d). Prior to Sept. 20, 1993, 37 CFR 1.137(b) specified
that  unintentional  revival  was  not  permitted  if  the
application had been abandoned under 37 CFR1.53(d). However,
on November 5, 1990, the Commissioner waived, under 37 CFR
1.183, that exception as to applicability of petitions under
the unintentional standards to applications abandoned under
37 CFR 1.53(d). See "Petitions to Revive Patent Applications
Waiver of Provisions of 37 CFR 1.137(b)," 1121 Off. Gaz.
Pat. Office 6 (December 4, 1990).

  PETITIONS UNDER 37 CFR 1.183 TO WAIVE THE 1 - YEAR TIME
  PERIOD REQUIREMENT IN 37 CFR 1.137(b), 1.155(c), AND

  1.316(c)

  Petitions  to  revive  an  unintentionally  abandoned
application  (37  CFR  1.137(b))  or  to  accept  an
unintentionally late paid issue fee (37 CFR 1.155(c) or
1.136(c)) must be filed within one year of the date on which
the application became abandoned.

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  The prohibition against requests for waiver previously
found in 37 CFR 1.137(b), 1.155(c), 1.316(c), and 1.317(c)
have  been  deleted,  effective  Sept.  20,  1993.  However,
applicants are cautioned that waiver of the 1 - year
deadline under the unintentional standard will continue to
be subject to strictly limited conditions. The Office has
determined that under certain very limited conditions, the
interests of the patent system would be better served by
waiving the 1 - year time period.

  These very limited conditions arise when an application
becomes abandoned due to an action or inaction by applicant
and the Patent and Trademark Office performs a documented
and Official act (e.g., by issuing an Official document)
which could lead a reasonable individual to conclude that
the action or inaction was appropriate. If this conclusion
is a contributing factor in the applicant's failure to
realize the "true" abandoned status of his application in
time to file a petition under one of the above - noted
subsections, then conditions exist under which a 37 CFR
1.183 petition will be considered.

  For  example,  if  an  applicant  files  papers  for  a
continuing application under 37 CFR 1.60 or 1.62 on a date
when  the  parent  application  is  abandoned  (e.g.,  the
applicant neglected to obtain an extension of time in the
parent application), the requirements of these regulations
are not satisfied and the papers should not be processed
into an application. However, if in spite of this error the
Office  issues  a  filing  receipt  for  the  continuing
application, a reasonable individual could conclude that the
continuing application had been properly filed on a date
when the parent application was pending. Further, if the
lack of copendency between the parent and the continuing
applications is not discovered until after 1 year from the
date on which the parent application became abandoned, the
opportunity to obtain copendency by reviving the parent
application under 37 CFR 1.137(b) is lost. As an additional
example, if an applicant submits a check for payment of the
issue fee and the payment is improper (e.g., the check is
not timely submitted or is returned to the Office unpaid due
to insufficient funds), the application should be held
abandoned. However, if in spite of the improper issue fee
payment the Office issues the application as a patent, a
reasonable individual could conclude that the issue fee
payment had been proper. Further, if the improper issue fee
payment is not discovered until after one year from the date
on which the application became abandoned, the opportunity
to request acceptance of a late paid issue fee under 37 CFR
1.155(c) or 1.316(c) is lost.

  The abandonment problems described in the above noted
examples are clearly attributed to an error on the part of
the  applicant.  Nevertheless,  such  a  problem  could  be
aggravated  when  the  Office  performs  a  documented  and
Official act which, in the circumstances recounted above,
may be a contributing factor in the loss of an opportunity
to rectify this problem by filing a petition under one of
the above noted subsections. In light of these factors, the
Commissioner will exercise his authority under 37 CFR 1.183
to waive the 1 - year period requirement for filing a
petition pursuant to 37 CFR 1.137(b), 1.155(c) or 1.316(c)
providing the following strictly limited conditions are
present:

 (1) The applicant's action or inaction which caused
the  application  to  become  abandoned  was  clearly  an
unintentional oversight which resulted from a bona fide
attempt,  as  evidenced  by  Patent  and  Trademark  Office
records,  to  comply  with  patent  statutes,  rules,  and
procedures in order to keep the application pending as
desired;

 (2) The Office performed a documented and Official
act which could lead a reasonable individual to conclude
that the action or inaction was proper and this conclusion
was  contributing  factor  in  the  applicant's  failure  to
realize the true abandoned status of his application in time
to  file  a  petition  under  one  of  the  above  -  noted
subsections;

 (3) A petition under 37 CFR 1.183 and one of the
above - noted subsections is filed promptly after the
applicant is notified by the Office or otherwise becomes
aware of the "true" abandoned status of the application; and

 (4) If the period of delay is over 6 months, the
petition must be accompanied by a terminal disclaimer with
fee under 37 CFR 1.321 dedicating to the public a terminal
part, equivalent to the period of abandonment, of the term
of  any  patent  granted  on  the  application  or  on  any
application entitled to the benefit of the filing date of
the application under 35 U.S.C. 120.

  Applicants should note that this is intended to be a
very limited extension of the Commissioner's discretion in
exercising his authority to waive the 1 - year period
required under the above - mentioned subsections.

  NOTIFICATION OF CHANGE OF ADDRESS

  Applications have become abandoned as a consequence of a
change of correspondence address therein, where an Office
action is mailed to the old, uncorrected address and fails
to reach the addressee sufficiently early to permit filing
of a timely response. One factor for consideration in
deciding  petitions  under  37  CFR  1.137  to  revive  such
applications is the degree of care that has been exercised
in adhering to the requirement (see MPEP § 601.03) for
prompt notification in each concerned application of the
change of address. In such instances, the showing of the
cause of unavoidable delay must include an adequate showing
that a timely notification of the change of address was
filed  in  the  application  concerned,  and  in  a  manner
reasonably calculated to call attention to the fact that it
was  a  notification  of  a  change  of  address.  The  mere

inclusion, in a paper filed in an application for another
purpose,  of  an  address  differing  from  the  previously
provided correspondence address, without mention of the fact
that an address change was being made, ordinarily will not
be  considered  sufficient  notification  of  a  change  of
address. If no such notification was filed, or was filed
belatedly, the showing must include an adequate explanation
of that failure or delay A showing that notification was
made on a paper filed in the Patent and Trademark Office
listing plural applications as being affected will not be
considered to constitute a proper notification. The showing
should include an indication of whether the Postal Service
was notified of the change of address and, if so, the date
of that notification.

 OFFICE ACTION - TIMELY RESPONSE

  The Patent and Trademark Office has in the past received
an excessively large volume of petitions to revive based
primarily  on  the  late  filing  of  amendments  and  other
responses to official actions. Many of these petitions
indicate that the late filing was due to unusual mail
delays; however, the records generally show that the filing
was only 2 or 3 days late.

  In order to alleviate, for applicants and the Office,
the problems and expenditures of time and effort occasioned
by abandonments and petitions to revive, it is suggested
that unless the certificate of mailing provisions of 37 CFR
1.8 or >"Express Mail" delivery procedure of< 37 CFR 1.10
are used that responses to Office actions be mailed to the
Patent and Trademark Office at least 1, and preferably 2,
week(s) prior to the expiration of the period within which a
response  is  required.  This  suggestion  is  made  in  the
interest of improving efficiency, thereby providing better
service to the public.

  CONDITIONAL PETITION TO REVIVE FOR APPLICANTS RESIDING IN
  FOREIGN COUNTRIES AND MAILING BY AIR CARRIER SERVICE

  Since applications that became abandoned unintentionally
present burdens to both the Patent and Trademark Office and
the applicant, a simplified procedure has been devised to
alleviate these burdens when the abandonment results from a
delay in the mails from foreign countries. This procedure
provides for an automatic petition to revive or petition to
accept the delayed payment of issue fee when mailing by
using an air carrier service.

  The Certificate of Mailing procedures under 37 CFR 1.8
and >"Express Mail" delivery procedure under< 37 CFR 1.10
can only be used in the United States of America. Therefore,
it is suggested that when a communication, complying with
the circumstances enumerated below, is mailed from a foreign
country to the Patent and Trademark Office, a conditional
petition be attached to the communication.

  However,  foreign  applicants  are  expected  to  avail
themselves of the fee extension of time provisions under 37
CFR 1.136(a) before they rely upon a conditional petition to
revive. Therefore, the Conditional Petition to Revive is
only appropriate when the period for response cannot be
extended under the provisions of 37 CFR 1.136(a).

  If the communication is received in the Patent and

Trademark Office after the due date and the application
becomes abandoned, the conditional petition will become
effective,  subject  to  the  following  requirements.  The
petition must include (1) payment of the appropriate fee or
an  authorization  to  charge  a  deposit  account  for  any
required fees, including the petition fee, and (2) an oath
or  declaration  signed  by  the  person  mailing  the
communication and also signed by the applicant or his or her
registered attorney or agent. The wording of the petition is
dependent on the type of air carrier service used to forward
the communication.

  The oath and declaration must identify the type of air
carrier service used and set forth the number of days
expected for delivery by that air carrier service from the
point of origin to the United States Patent and Trademark
Office and must be deposited with that air carrier service
at least the specified number of days prior to the due date.
Any mail delay beyond the time stated will be considered to
constitute unavoidable delay and sufficient cause to grant a
petition to revive (35 U.S.C. 133) or a petition to accept
delayed payment of an issue fee (35 U.S.C. 151). For
example, if a response was due in the Patent and Trademark
Office on June 17, 1987, and mail is expected to take two
days  by  the  air  carrier  service  designated,  the
communication and conditional petition must be posted no
later than June 15, 1987 in order for the conditional
petition to be effective.

  The circumstances under which this procedure may be used
are those where the communication, if timely filed, (1)
would be a proper and complete response to an action or
request by the Patent and Trademark Office, and (2) would
stop  a  period  for  response  from  continuing  to  run.
Accordingly, this procedure would be appropriate for:

 (1) A response to a nonfinal Office action.

 (2) A response to a final Office action in the form
of  an  amendment  that  cancels  all  rejected  claims  or
otherwise prima facie places the application in condition
for allowance.

 (3) A notice of appeal and requisite fee.

 (4) An appeal brief, in triplicate, and requisite
fee.

 (5) An issue fee.

  Examples  for  which  this  procedure  would  not  be
appropriate and will not apply include the following types
of communications when they are forwarded to the Patent and
Trademark Office.

 (1) Application papers.

 (2) A response to a final Office action other than
that indicated in categories 2 and 3, above.

 (3) Extensions of time.

 (4) Amendments under 37 CFR 1.312.

 (5) Priority documents.

  Normal petition practices are not affected in those
situations where this procedure is either not elected or
appropriate.

  A suggested format for the conditional petition is shown
below:

  CONDITIONAL PETITION TO REVIVE

 Applicant(s)

 Application No.

 Filing Date:

 For:

 I hereby certify that the attached communication is being
deposited in the mail outside the United States as air mail
(here specifically designate the type of air carrier service
and the time stated by that carrier service required to
deliver mail from the point of origin to the United States
Patent and Trademark Office) in an envelope addressed to :
>Assistant< Commissioner *>for< Patents **, Washington D.C.
20231, on (date) from (location) by (name of individual
mailing the communication).

 In the event that such communication is not timely filed in
the  United  States  Patent  and  Trademark  Office,  it  is
requested that this paper be treated as a petition and that
the delay be held unavoidable. The petition fee of $
_____________ is enclosed.

 The undersigned declares further that all statements made
herein are true, based upon the best available information;
and further, that these statements were made with the
knowledge that willful false statements and the like so made
are punishable by fine or imprisonment, or both, under
Section 1001 or Title 18 of the United States Code, and that
such willful false statements may jeopardize the validity of
the application or any patent issuing thereof.

 ________  _____________________________________

 (date)  (Signature  of  applicant  or  signature  and
registration number of a Registered Representative)

 ________  _____________________________________  (date)
(Signature of person mailing, if other than the above)

  The  procedure  for  handling  applications  becoming
abandoned due to late filing of a communication having a
conditional petition attached thereto is as follows:

 (1) Forward the papers and the application file
wrapper to the Office of Petitions.

 (2) Do not mail a form PTOL - 1432 or forward the
file wrapper to the Abandoned File Unit.

 (3) In the event that the application is revived,
the file wrapper will be returned to the forwarding group
for further action. In view of the availability of 37 CFR
1.136(a), the Certificate of Mailing practice, and the

Express Mail practice, the Conditional petition to revive
practice is not expected to be used frequently.

711.03(d)  Examiner's Statement on Petition To Set Aside
Examiner's Holding [R - 1]

  >37 CFR 1.181 states that the examiner "may be directed
by the Commissioner to furnish a written statement within a
specific time setting forth the reasons for his or her
decision upon the matters averred in the petition, supplying
a  copy  thereof  to  the  petitioner."  Unless  requested,
however, such a statement should not be prepared. See MPEP §
1002.01.<

711.03(e)  Petitions Relating to Revival of Abandoned
Provisional Applications [R - 1]

 >37 CFR 1.139  Revival of provisional application.

  (a) A provisional application which has been accorded a
filing date and abandoned for failure to timely respond to
an Office requirement may be revived so as to be pending for
a period of no longer than twelve months from its filing
date if it is shown to the satisfaction of the Commissioner
that the delay was unavoidable. Under no circumstances will
the provisional application be pending after twelve months
from its filing date. A petition to revive an abandoned
provisional application must be promptly filed after the
applicant is notified of, or otherwise becomes aware of, the
abandonment, and must be accompanied by:

  (1) the required response unless it has been previously
filed;

  (2) the petition fee as set forth in § 1.17(l); and

  (3) a showing that the delay was unavoidable. The showing
must  be  a  verified  showing  if  made  by  a  person  not
registered to practice before the Patent and Trademark
Office.

  (b) A provisional application which has been accorded a
filing date and abandoned for failure to timely respond to
an Office requirement may be revived so as to be pending for
a period of no longer than twelve months from its filing
date if the delay was unintentional. Under no circumstances
will the provisional application be pending after twelve
months from its filing date. A petition to revive an
abandoned provisional application must be:

  (1) accompanied by the required response unless it has
been previously filed;

  (2) accompanied by the petition fee as set forth in §
1.17(m);

  (3)  accompanied  by  a  statement  that  the  delay  was
unintentional The statement must be a verified statement if
made by a person not registered to practice before the
Patent and Trademark Office. The Commissioner may require
additional information where there is a question whether the
delay was unintentional; and

  (4) filed either:

  (i) within one year of the date on which the provisional
application became abandoned; or

  (ii) within three months of the date of the first
decision on a petition to revive under paragraph (a) of this
section which was filed within one year of the date on which
the provisional application became abandoned.

  (c) Any request for reconsideration or review of a
decision refusing to revive a provisional application upon
petition filed pursuant to paragraphs (a) or (b) of this
section, to be considered timely, must be filed within two
months of the decision refusing to revive or within such
time as set in the decision.

  (d) The time periods set forth in this section cannot be
extended, except that the three - month period set forth in
paragraph (b)(4)(ii) of this section and the time period set
forth in paragraph (c) of this section may be extended under
the provisions of § 1.136.

  37 CFR 1.139(a) sets forth the procedure for reviving an
abandoned  provisional  application  where  the  delay  was
unavoidable. 37 CFR 1.139(b) sets forth the procedure for
reviving an abandoned provisional application where the
delay was unintentional. The requirements for reviving an
abandoned provisional application set forth in 37 CFR 1.139
parallel the existing requirements set forth in 37 CFR
1.137. See MPEP § 711.03(c).

  A provisional application is abandoned, by operation of
law, 12 months from its filing date, 35 U.S.C. 111(b)(5). A
provisional application may be abandoned prior to 12 months
from its filing date for failure to respond to an Office
requirement, e.g., failure to submit the filing fee and/or
cover sheet. Applicant may petition to have an abandoned
provisional application revived as a pending provisional
application for a period of no longer than 12 months from
the filing date of the provisional application where the
delay  was  unavoidable  or  unintentional.  It  would  be
permissible to file a petition for revival later than 12
months from the filing date of the provisional application
but only to revive the application for the 12 - month period
following the filing of the provisional application. Thus,
even if the petition were granted to establish the pendency
up to the end of the 12 - month period, the provisional
application would not be considered pending after 12 months
from its filing date.<

711.04  Disposition of Abandoned Applications [R - 3]

  37 CFR 1.14(b) states that "Complete applications ( §
1.51(a)) which are abandoned may be destroyed >and hence may
not be available for access or copies as permitted by
paragraph (a)(3)(iv) of this section< after 20 years from
their  filing  date,  except  those  to  which  particular
attention has been called and which have been marked for
preservation. **

  As explained in MPEP § 1302.07, a retention label is
used to indicate applications not to be destroyed.

711.04(a)  Pulling and Forwarding Abandoned Applications
[R - 1]

  >The files of abandoned applications are pulled and
forwarded to the Files Repository on a biweekly basis 1
month after the full 6 - month statutory period has expired.
However, the date of abandonment is after midnight of the
date on which the set shortened statutory period, including
any extensions under 37 CFR 1.136, expired.

  They should be carefully scrutinized by the appropriate
examiner to verify that they are actually abandoned. A check
should be made of files containing a decision of the Board
of Appeals for the presence of allowed claims to avoid their
being erroneously sent to the Files Repository.

  Although the abandoned files are not pulled until the
maximum permissible period for which an extension of time
under 37 CFR 1.136(a) plus 1 month has expired, the date of
the abandonment is after midnight of the date the period for
response actually expired. This is normally the end of the 3
month shortened statutory period.<

711.04(b)  Ordering of Patented and Abandoned Files [R -
1]

  >In examination of an application it is sometimes
necessary to inspect the application papers of a previously
patented or abandoned application. It is always necessary to
do so in the examination of a reissue application.

  Recently patented and abandoned files are stored at the
Files Repository located near the other PTO buildings in
Crystal City. Older files are housed in a warehouse located
in Suitland, Maryland.

  Patented and abandoned files are ordered by means of a
PALM video display transaction. To place such an order, the
examiner is required to input his/her PALM location code,
employee  number,  and  patent  number(s)  and/or  serial
number(s) of the file(s) that are needed. After transmission
of the request transaction by the examiner, a "response"
screen appears on the video display terminal which informs
him/her of the status of the request for each file. The
examiner is informed that the request (1) is accepted; (2)
is accepted, but for which the file is located at the
Suitland  warehouse  (in  which  case  delivery  time  is
increased); or that the request is not accepted since (3)
the file is not located at the repository or warehouse; (4)
a previous request for the file has not yet been filled; or
(5) the patent or serial number inputted is not valid.

  Periodically each day, personnel at the Files Repository
perform a PALM print transaction which produces a list of
all accepted requests in patent number order and, for
requests for abandoned files, in serial number order. The
printed record of each request is detached from the list
when its associated file is found. It is then stapled to it.
Throughout the day, periodic deliveries of files are made
directly  to  the  offices  of  their  requestors  by  Files
Repository personnel. Upon delivery of files at the various
locations, files that are ready to be returned to the
repository are picked up.

  With the exception of certain older files, the drawings
of patented and abandoned files, if any, are now stored
within their respective application file jackets. Since it
is desired not to separate one from the other, both the file

and its drawings are delivered when a file is ordered.<

711.04(c)  Notifying Applicants of Abandonment [R - 1]

  >The Patent Examining Corps currently mails to the
correspondence address of record, a Notice of Abandonment
Form PTOL - 1432 in all applications which become abandoned
in the Corps for failure to prosecute. However, in no case
will mere failure to receive a notice of abandonment affect
the status of an abandoned application.

  This  procedure  should  enable  applicants  to  take
appropriate and diligent action to reinstate an application
inadvertently abandoned for failure to timely respond to an
official communication. In most cases, a petition to revive
under 37 CFR 1.137 will be the appropriate remedy. It may be
that a response to the Office action was mailed to the
Office with a certificate of mailing declaration as a part
thereof (MPEP § 512) but was not received in the Office. In
this instance, adequate relief may be available by means of
a petition to withdraw the holding of abandonment.

  In any instance, if action is not taken promptly after
receiving the notice of abandonment, appropriate relief may
not be granted. If a lack of diligent action is predicated
on the contention that neither the Office action nor the
notice of abandonment was received, one may presume that
there is a problem with the correspondence address of
record. Accordingly, attention is directed to MPEP § 402 and
§ 601.03 dealing with changes of address. In essence, it is
imperative that a paper notifying the Office of a change of
address be filed promptly in each application in which the
correspondence address is to be changed.

  If an application is abandoned for more than 6 months, a
terminal disclaimer may be required (37 CFR 1.137(c)).<

711.05  Letter of Abandonment Received After Application
is Allowed [R - 1]

  >Receipt of a letter of abandonment while an application
is allowed is acknowledged by the Publishing Division.

  An express abandonment arriving after the issue fee has
been paid will not be accepted without a showing of one of
the reasons indicated in 37 CFR 1.313(b), or else a showing
under 37 CFR 1.183 justifying suspension of 37 CFR 1.313.<

711.06  Abstracts, Abbreviatures, and Defensive
Publications [R - 1]

  >Abstracts were prepared and published in accordance
with the Notice of January 25, 1949, 619 O.G. 258. Each
abstract  includes  a  summary  of  the  disclosure  of  the
abandoned application, and in applications having drawings,
a figure of the drawing. The publication of such abstracts
was discontinued in 1953.

  ABBREVIATURES

  Abbreviatures were prepared and published in accordance
with the procedure indicated in the Notice of October 13,
1964, 808 O.G. 1. Each abbreviature contains a specific
portion of the disclosure of the abandoned application,
preferably  a  detailed  representative  claim,  and,  in

applications having drawings, a figure of the drawing. The
publication of such abbreviatures was discontinued in 1965.

  DEFENSIVE PUBLICATIONS

  The Defensive Publication Program, set forth in 37 CFR
1.139, which provided for the publication of the abstract of
the technical disclosure of a pending application if the
applicant waived his or her rights to an enforceable patent,
was removed from the rules effective May 8, 1985, in view of
the applicant's ability to obtain a Statutory Invention
Registration.

  An application is laid open for public inspection laid
open  under  the  Defensive  Publication  Program  and  the
applicant provisionally abandons the application, retaining
rights to an interference for a limited period of 5 years
from the earliest effective U.S. filing date.

  The defensive publication of an application precluded a
continuing application (divisional, continuation - in -
part, or continuation) filed under 35 U.S.C. 120 from being
entitled  to  the  benefit  of  the  filing  date  of  the
defensively  published  application  unless  a  continuing
application is filed within 30 months after the earliest
effective U.S. Filing date. Where a similar application is
not filed until after expiration of the 30 month period, the
application was examined, but it may not claim the benefit
of the earlier filing date of the defensive publication
application. The examiner should require the cancellation of
any claim or statement intended to obtain the benefit of the
earlier  filing  date  in  such  cases,  objecting  to  its
inclusion on the ground of estoppel.

  If a first continuing application was filed within 30
months from the earliest U.S. effective filing date of the
application  published  under  the  Defensive  Publication
Program, later copending continuing applications (such as
divisions if restriction is required during the prosecution
of the first continuing application) were not barred and
could be filed during the pendency of the first continuing
application, even though beyond the 30 month period, without
loss of the right to claim the benefit of the filing date of
the Defensive Publication application.

  The Defensive Publication Abstract and a selected figure
of the drawing, if any, were published in the Official
Gazette . Defensive Publication Search Copies, containing
the defensive publication abstract and suitable drawings, if
any, were provided for the application file, the Public
Search Room and the examiner's search files.

  The  defensive  publication  application  files  are
maintained in the Record Room.

  Defensive Publication Application Interferences

  During the 5 - year period from its earliest U.S.
effective filing date, interferences may be declared between
defensive publication applications and other applications
and/or patents in accordance with existing interference
rules and procedures.

  Examiners search the Defensive Publication Search Copies
in  the  regular  patent  search  files,  when  making

patentability searches. Where the claims of a defensive
publication  application  recite  substantially  the  same
subject matter as the allowed claims, the allowed claims
should  be  suggested  for  interference  purposes  to  the
defensive publication application if these claims would be
allowable therein.

  Abandonment of a defensive publication application will
be stayed during the period beginning with the suggestion of
claims or the filing of claims copied from a patent and
ending with the termination of the interference proceedings
or the mailing of a decision refusing the interference.

  Termination  of  the  interference  in  favor  of  the
defensive publication application would render the express
abandonment ineffective but would not result in the issuance
of an enforceable patent. The examiner cancels by examiner's
amendment all the claims in the case except those awarded to
applicant and sends the case to issue. The Notice of
Allowance in these cases will be accompanied by a statement
informing the applicant that when the issue fee is remitted,
a disclaimer of the entire term of the patent to be granted,
must be included in accordance with 35 U.S.C. 253.

  Distinct  numbers  are  assigned  to  all  Defensive
Publications published December 16, 1969 through October
1980, for example.

 T 869 001

 Number series, 001 - 999 available monthly.

 O.G. volume number,

 Documents category, T for Technical

 disclosure.

  For  Defensive  Publications  published  or  and  after
November 4, 1980, a different numbering system is used.

  The revised numbering system is as follows:

 T XXX XX

 Sequential Document Number

 Official Gazette Volume Number

 Document Category. T denotes

 Technical Disclosure

  Defensive Publications are included in subclass lists
and subscription orders. The distinct numbers are used for
all official reference and document copy requirements.

  A conversion table from the application serial number to
the distinct number for all Defensive Publications published
before December 16, 1969 appears at 869 O.G. 687.<

711.06(a)  Citation and Use of Abstracts, Abbreviatures,
and Defensive Publications as References [R - 1]

  >It is important that abstracts, abbreviatures, and
defensive  publications  (O.G.  Defensive  Publication  and
Defensive  Publication  Search  Copy)  be  referred  to  as
publications.

  These printed publications are cited as prior art under
35 U.S.C. 102(a) or 102(b) effective from the date of
publication  in  the  Official  Gazette  .  See  Ex  parte
Osmond,191 USPQ 334 (Bd. Appl. 1973) and In re Osmond191
USPQ 340, (Bd. Appl. 1976).

  An  application  or  portion  thereof  from  which  an
abstract, abbreviature or defensive publication has been
prepared, in the sense that the application is evidence of
prior knowledge, may be used as a reference under 35 U.S.C.
102(a), effective from the actual date of filing in the
United States.

  These publications may be used alone or in combination
with other prior art in rejecting claims under 35 U.S.C. 102
and 103.

  Defensive Publications are listed with "U.S. Patent
Documents." Abstracts and Abbreviatures are listed under
"Other References" in the citation thereof as follows:

 (a) Abstracts and Abbreviatures Brown, (abstract or
abbreviature) of Serial No. ........, filed .............,
published  in  O.G.  .........,  on  ........,  (list
classification).

 (b) Applications or designated portions thereof,
abstracts, abbreviatures, and defensive publications Jones,
Application Serial No. ........, filed ............., laid
open to public inspection on ............... as noted at
.......... O.G. (portion of application relied on), (list
classification; if any).<

712  Abandonment for Failure To Pay Issue Fee [R - 2]

 37 CFR 1.316. Application abandoned for failure to pay
issue fee.

  >(a) If the issue fee is not paid within 3 months from
the date of the notice of allowance, the application will be
regarded as abandoned. Such an abandoned application will
not be considered as pending before the Patent and Trademark
Office.

  (b) The Commissioner may accept the payment of the issue
fee later than three months after the mailing of the notice
of allowance as though no abandonment had ever occurred if
upon petition the delay in payment is shown to have been
unavoidable. The petition to accept the delayed payment must
be promptly filed after the applicant is notified of, or
otherwise becomes aware of, the abandonment and must be
accompanied by:

  (1)  The  issue  fee,  unless  it  has  been  previously
submitted;

  (2) The fee for delayed payment ( § 1.17(l)); and

  (3) A showing that the delay was unavoidable. The showing

must  be  a  verified  showing  if  made  by  a  person  not
registered to practice before the Patent and Trademark
Office.

  (c) The Commissioner may, upon petition, accept the
payment of the issue fee later than three months after the
mailing of the notice of allowance as though no abandonment
had ever occurred if the delay in payment was unintentional.
The petition to accept the delayed payment must be:

  (1) Accompanied by the issue fee, unless it has been
previously submitted;

  (2) Accompanied by the fee for unintentionally delayed
payment ( § 1.17(m));

  (3)  Accompanied  by  a  statement  that  the  delay  was
unintentional. The statement must be a verified statement if
made by a person not registered to practice before the
Patent and Trademark Office. The Commissioner may require
additional information where there is a question whether the
delay was unintentional; and

  (4) Filed either:

  (i) Within one year of the date on which the application
became abandoned; or

  (ii) Within three months of the date of the first
decision on a petition under paragraph (b) of this section
which was filed within one year of the date on which the
application became abandoned.

  (d) In all applications filed before June 8, 1995, any
petition pursuant to paragraph (b) of this section not filed
within  six  months  of  the  date  of  abandonment  of  the
application, must be accompanied by a terminal disclaimer
with fee under § 1.321 dedicating to the public a terminal
part of the term of any patent granted thereon equivalent to
the period of abandonment of the application. The terminal
disclaimer must also apply to any patent granted on any
continuing application entitled under 35 U.S.C. 120 to the
benefit of the filing date of the application for which
revival is sought.

  (e) Any request for reconsideration or review of a
decision  refusing  to  accept  the  delayed  payment  upon
petition filed pursuant to paragraphs (b) or (c) of this
section, to be considered timely, must be filed within two
months of the decision refusing to accept the delayed
payment or within such time as set in the decision.

  (f) The time periods set forth in this section cannot be
extended, except that the three - month period set forth in
paragraph (c)(4)(ii) and the time period set forth in
paragraph (e) of this section may be extended under the
provisions of § 1.136.<

  35 U.S.C. 41(a)7 establishes two different fees for
filing petitions with different standards to accept the
delayed payment of the fee for issuing a patent. The fees
set forth in this section are due on filing the petition.
Since the section provides for two alternative fees with
different  standards,  the  section  permits  the  applicant
seeking acceptance of a delayed payment of the fee for

issuing a patent to choose one or the other of the fees and
standards.

  Under  35  U.S.C.  41(a)(7)  the  Commissioner  has
established time limits within which petitions under each of
the different fees and standards can be filed. 37 CFR
1.17(m) establishes the fee for filing each petition for
acceptance of the delayed payment of an issue fee where the
abandonment  or  the  failure  to  pay  the  issue  fee  is
unintentional. In order to prevent abuse and injury to the
public the Commissioner can require a terminal disclaimer in
all applications filed before June 8, 1995 equivalent to the
period of abandonment and require applicants to act promptly
after becoming aware of the abandonment. 37 CFR 1.17(l)
establishes the fee for filing a petition under 35 U.S.C.
151 in accordance with standards requiring that the delay in
payment of the issue fee be unavoidable. Under this section,
a petition accompanied by either the fee under 37 CFR
1.17(m) or the fee under 37 CFR 1.17(l) would not be granted
where the failure to pay the fee for issuing the patent was
intentional  as  opposed  to  being  unintentional  or
unavoidable.

  37 CFR 1.316 implements the statutory provisions of 35
U.S.C. 41(a) with regard to petition fees for revival of
applications abandoned for failure to pay the issue fee.
Paragraph (b) provides for petitions for revival with the
fee in 37 CFR 1.17(1) where the delay in payment was
unavoidable, indicates that the petition must be promptly
filed,  and  states  when  showings  that  the  delay  was
unavoidable must be verified. Paragraph (c) provides for
petitions for revival with the fee in 37 CFR 1.17(m) where
the delay was unintentional. Paragraph (c) also indicates
when such petitions can be filed. Paragraph (d) requires a
terminal disclaimer in all applications filed before June 8,
1995 if a grantable petition under 37 CFR 1.316(b) is not
filed within 6 months of the date of abandonment. The period
to be disclaimed must equal the number of months between the
date of abandonment and the date a grantable petition is
filed. The terminal disclaimer should employ the format
referred to in MPEP § 711.03(c). See MPEP § 711.03(c) for a
general discussion of petitions relating to abandonment.

713  Interviews [R - 3]

  The personal appearance of an applicant, attorney, or
agent before the examiner or a telephone conversation >or
video conference< between such parties presenting matters
for the examiner's consideration is considered an interview.

713.01  General Policy, How Conducted [R - 3]

 37 CFR 1.133.  Interviews.

  (a) Interviews with examiners concerning applications and
other matters pending before the Office must be had in the
examiners' rooms at such times, within office hours, as the
respective examiners may designate. Interviews will not be
permitted at any other time or place without the authority
of the Commissioner. Interviews for the discussion of the
patentability of pending applications will not be had before
the first official action thereon. Interviews should be
arranged for in advance.

  (b) In every instance where reconsideration is requested

in view of an interview with an examiner, a complete written
statement of the reasons presented at the interview as
warranting favorable action must be filed by the applicant.
An interview does not remove the necessity for response to
Office actions as specified in § § 1.111, 1.135.

  Interviews are permissible on any working day except
during periods of overtime work.

  >VIDEO CONFERENCE CENTER

  In the interest of providing better service to its
customers,  the  Patent  and  Trademark  Office  (PTO)  has
established a Video Conference Center (VCC) to expedite
patent and trademark prosecution. The VCC is presently
administered by the Patent Academy and is available for
authorized official business during normal business hours
(8:30 AM - 5:00 PM, EST). The VCC equipment includes a high
resolution  document  camera,  direct  computer  input,  VCR
display capability, and a high speed, high resolution G - 4
facsimile  machine.  The  Patent  and  Trademark  Depository
Library Program office maintains a current list of all the
off - site locations where a video conference may be held.
At this time, use of the VCC will be limited to our
partnership  Patent  and  Trademark  Depository  Libraries
(PTDLs) located at Sunnyvale, Calif. and the Great Lakes
Patent and Trademark Center at the Detroit Public Library,
which have duplicate video equipment. Customers wishing to
utilize the facilities at the above noted PTDLs, rather than
coming to the PTO for a face - to - face interview, should
contact the patent examiner or trademark examining attorney
and identify two alternative dates and times for a video
conference.  The  patent  examiner  or  trademark  examining
attorney will then contact Patent Academy personnel who
will, in turn, make all the arrangements. The customer will
be notified as to the date and time of the video conference.

  SCHEDULING AND CONDUCTING AN INTERVIEW<

  An interview should normally be arranged for in advance,
as by letter, >facsimile,< telegram or telephone call, in
order  to  insure  that  the  primary  examiner  and/or  the
examiner in charge of the application will be present and
available  in  the  Office.  >An  interview  in  the  Video
Conference Center must be arranged at least three days in
advance.< When a second art unit is involved (Patentability
Report), the availability of the second examiner should also
be checked. (See MPEP § 705.01(f).) An appointment for
interview once arranged should be kept. Many applicants and
attorneys plan trips to Washington >or off - site video
conferencing locations< in reliance upon such appointments.
When, after an appointment has been made, circumstances
compel the absence of the examiner or examiners necessary to
an effective interview, the other party should be notified
immediately so that substitute arrangements may be made.

  When a telephone call is made to an examiner and it
becomes evident that a lengthy discussion will ensue or that
the examiner needs time to restudy the situation, the call
should be terminated with an agreement that the examiner
will call back at a specified time. Such a call and all
other calls originated by the examiner should be made
through the FTS (Federal Telecommunications System) even
though a collect call had been authorized. It is helpful if
amendments  and  other  papers,  such  as  the  letter  of

transmittal, include the complete telephone number with area
code and extension, preferably near the signature of the
writer.

  The unexpected appearance of an attorney or applicant
requesting an interview without any previous notice to the
examiner may well justify his refusal of the interview at
that time, particularly in an involved case.

  An examiner's suggestion of allowable subject matter may
justify  indicating  the  possibility  of  an  interview  to
accelerate early agreement on allowable claims.

  An interview should be had only when the nature of the
case is such that the interview could serve to develop and
clarify specific issues and lead to a mutual understanding
between the examiner and the applicant, and thereby advance
the prosecution of the application. Thus the attorney when
presenting himself or herself for an interview should be
fully prepared to discuss the issues raised in the Office
action. When it is obvious that the attorney is not so
prepared, an interview should not be permitted. It is
desirable that the attorney or applicant indicate in advance
what issues he or she desires to discuss at the interview by
submitting, in writing, a proposed amendment. This would
permit the examiner to prepare in advance for the interview
and to focus on the matters set forth in the proposed
amendment.

  Examiners should avoid unnecessary interruptions during
interviews with attorneys or inventors. In this regard,
examiners  should  notify  their  receptionist,  immediately
prior to an interview, to not complete incoming telephone
calls  unless  such  are  of  an  emergency  nature.  As
appropriate, examiners should familiarize themselves with
the  status  and  existing  issues  in  an  application  or
reexamination proceeding before an interview.

  The examiner should not hesitate to state, if such be
the case, that claims presented for consideration at the
interview require further search and study. Nor should the
examiner hesitate to conclude an interview when it appears
that no common ground can be reached nor when it becomes
apparent that the application requires further amendment or
an additional action by the examiner. However, the examiner
should attempt to identify issues and resolve differences
during the interview as much as possible.

  It  is  the  responsibility  of  both  parties  to  the
interview to see that it is not extended beyond a reasonable
period, usually not longer than 30 minutes. It is the duty
of the primary examiner to see that an interview is not
extended beyond a reasonable period even when he does not
personally participate in the interview.

  During an interview with an applicant who is prosecuting
his or her own case and is not familiar with Office
procedure  the  examiner  may  make  suggestions  that  will
advance the prosecution of this case; this lies wholly
within his or her discretion. Too much time, however, should
not be allowed for such interviews.

  Examiners may grant one interview after final rejection.
See MPEP § 713.09.

  Where the response to a first complete action includes a
request for an interview or a telephone consultation to be
initiated by the examiner >or a video conference<, or where
an out - of - town attorney under similar circumstances
requests that the examiner defer taking any further action
on the case until the attorney's next visit to Washington
(provided such visit is not beyond the date when the Office
action would normally be given), the examiner, as soon as he
or she has considered the effect of the response, should
grant such request if it appears that the interview or
consultation would result in expediting the case to a final
action.

  Where agreement is reached as a result of an interview,
applicant's  representative  should  be  advised  that  an
amendment pursuant to the agreement should be promptly
submitted. If the amendment prepares the case for final
action, the examiner should take the case up as special. If
not, the case should await its turn.

  Consideration of a filed amendment may be had by hand
delivery of a duplicate copy of said amendment.

  Early communication of the results of the consideration
should be made to applicant; if requested, indicate on
attorney's copy any agreement; initial and date both copies.

  Although entry of amendatory matter usually requires
actual presence of the original paper, examiner and clerical
processing should proceed as far as practicable based on the
duplicate copy. The extent of processing will depend on each
amendment.

  The substance of any interview, whether in person>, by
video conference,< or by telephone must be made of record in
the application. See MPEP § 713.04.

  VIEWING OF VIDEO TAPES DURING INTERVIEWS

  The Patent and Trademark Office has video tape equipment
available in the facilities of the Patent Academy for
viewing video tapes from applicants during interviews with
patent examiners.

  The video tape equipment may use VHS and UHS (3/4 - inch
tape) cassettes.

  Attorneys or applicants wishing to show a video tape
during an examiner interview must be able to demonstrate
that the content of the video tape has a bearing on an
outstanding issue in the application and its viewing will
advance the prosecution of the application. Prior approval
of viewing of a video tape during an interview must be
granted by the Supervisory Primary Examiner. Also, use of
the room and equipment must be granted by the Training
Manager to avoid any conflict with the Patent Academy.

  Requests to use video tape viewing equipment for an
interview should be made at least 1 week in advance to allow
the Patent Academy staff sufficient time to ensure the
availability and proper scheduling of both a room and
equipment.

  Interviews using Office video tape equipment will be
held only in the Patent Academy facilities located in *

Crystal **>Square Four, Suite 700<. Attorneys or applicants
should not contact the Patent Academy directly regarding
availability  and  scheduling  of  video  equipment.  All
scheduling of rooms and equipment should be done through and
by the examiner conducting the interview. The substance of
the interview, including a summary of the content of the
video tape must be made of record in the application. See
MPEP § 713.04.

  EXAMINATION BY EXAMINER OTHER THAN THE ONE WHO CONDUCTED
  THE INTERVIEW

  Sometimes the examiner who conducted the interview is
transferred to another group or resigns, and the examination
is continued by another examiner. If there is an indication
that an interview had been held, the second examiner should
ascertain if any agreements were reached at the interview.
Where conditions permit, as in the absence of a clear error
or knowledge of other prior art, the second examiner should
take a position consistent with the agreements previously
reached. See MPEP § 812.01 for a statement of telephone
practice in restriction and election of species situations.

713.02  Interviews Prior to First Official Action [R - 1]

  >Prior to filing, no interview is permitted. However, in
the examiner's discretion, a limited amount of time may be
spent in indicating the field of search to an attorney,
searcher or inventor.

  A request for an interview prior to the first Office
action is ordinarily granted in continuing or substitute
applications. A request for an interview in all other
applications before the first action is untimely and will
not be acknowledged if written, or granted if oral; 37 CFR
1.133(a).

 SEARCHING IN GROUP

  Search in the group art unit should be permitted only
with the consent of a primary examiner.

  EXPOUNDING PATENT LAW

  The Patent and Trademark Office cannot act as an
expounder of the patent law, nor as a counsellor for
individuals.<

713.03  Interview for "Sounding Out" Examiner Not
Permitted [R - 1]

  >Interviews that are solely for the purpose of "sounding
out" the examiner, as by a local attorney acting for an out
- of - town attorney, should not be permitted when it is
apparent  that  any  agreement  that  would  be  reached  is
conditional  upon  being  satisfactory  to  the  principal
attorney. <

713.04  Substance of Interview Must Be Made of Record [R -
3]

  A complete written statement as to the substance of any
face - to - face>, video conference,< or telephone interview
with regard to the merits of an application must be made of
record in the application, whether or not an agreement with

the examiner was reached at the interview. See 37 CFR
1.133(b), MPEP § 713.01.

 37 CFR 1.133  Interviews

  *****

  (b) In every instance where reconsideration is requested
in view of an interview with an examiner, a complete written
statement of the reasons presented at the interview as
warranting favorable action must be filed by the applicant.
An interview does not remove the necessity for response to
Office actions as specified in § § 1.111, 1.135.

 37 CFR 1.2  Business to be transacted in writing.

  All business with the Patent and Trademark Office should
be  transacted  in  writing.  The  personal  attendance  of
applicants or their attorneys or agents at the Patent and
Trademark Office is unnecessary. The action of the Patent
and Trademark Office will be based exclusively on the
written record in the Office. No attention will be paid to
any alleged oral promise, stipulation, or understanding in
relation to which there is disagreement or doubt.

  The action of the Patent and Trademark Office cannot be
based exclusively on the written record in the Office if
that record is itself incomplete through the failure to
record the substance of interviews.

  It is the responsibility of the applicant or the
attorney or agent to make the substance of an interview of
record  in  the  application  file,  unless  the  examiner
indicates he or she will do so. It is the examiner's
responsibility to see that such a record is made and to
correct material inaccuracies which bear directly on the
question of patentability.

  Examiners must complete an Interview Summary Form for
each  interview  where  a  matter  of  substance  has  been
discussed during the interview by checking the appropriate
boxes and filling in the blanks. Discussions regarding only
procedural  matters,  directed  solely  to  restriction
requirements for which interview recordation is otherwise
provided for in MPEP § 812.01, or pointing out typographical
errors in Office actions or the like, are excluded from the
interview recordation procedures below. >Where a complete
record  of  the  interview  has  been  incorporated  in  an
examiner's amendment, it will not be necessary for the
examiner to complete an Interview Summary Form.<

  The Examiner Interview Summary Form PTOL 413 shall be
given an appropriate paper number, placed in the right hand
portion of the file, and listed on the "Contents" list on
the file wrapper. In a personal interview, the duplicate
copy of the Form is given to the applicant (or attorney or
agent) at the conclusion of the interview. In the case of a
telephonic >or video conference< interview, the copy is
mailed to the applicant's correspondence address either with
or prior to the next official communication. >In addition, a
copy of the form may be faxed to applicant (or applicant's
attorney or agent) at the conclusion of the interview.< If
additional correspondence from the examiner is not likely
before an allowance or if other circumstances dictate, the
Form should be mailed promptly after the telephonic >or

video  conference<  interview  rather  than  with  the  next
official communication.

  The Form provides for recordation of the following
information:

  The  Form  also  contains  a  statement  reminding  the
applicant  of  his  or  her  responsibility  to  record  the
substance of the interview.

  It is desirable that the examiner orally remind the
applicant of his or her obligation to record the substance
of the interview in each case unless both applicant and
examiner agree that the examiner will record same. Where the
examiner agrees to record the substance of the interview, or
when it is adequately recorded on the Form or in an
attachment to the Form, the examiner will check a box at the
bottom of the Form informing the applicant that he or she
need not supplement the Form by submitting a separate record
of the substance of the interview.

  It should be noted, however, that the Interview Summary
Form  will  not  be  considered  a  complete  and  proper
recordation of the interview unless it includes, or is
supplemented by the applicant or the examiner to include,
all of the applicable items required below concerning the
substance of the interview.

  The complete and proper recordation of the substance of
any  interview  should  include  at  least  the  following
applicable items:

 (1) A brief description of the nature of any exhibit
shown or any demonstration conducted,

 (2) an identification of the claims discussed,

 (3)  an  identification  of  specific  prior  art
discussed,

 (4) an identification of the principal proposed
amendments of a substantive nature discussed, unless these
are  already  described  on  the  Interview  Summary  Form
completed by the examiner,

 (5) the general thrust of the principal arguments of
the applicant and the examiner should also be identified,
even where the interview is initiated by the examiner. The
identification  of  arguments  need  not  be  lengthy  or
elaborate. A verbatim or highly detailed description of the
arguments  is  not  required.  The  identification  of  the
arguments is sufficient if the general nature or thrust of
the principal arguments can be understood in the context of
the application file. Of course, the applicant may desire to
emphasize and fully describe those arguments which he or she
feels were or might be persuasive to the examiner,

 (6) a general indication of any other pertinent
matters discussed, and

 (7) if appropriate, the general results or outcome
of the interview unless already described in the Interview
Summary Form completed by the examiner.

  Examiners  are  expected  to  carefully  review  the

applicant's record of the substance of an interview. If the
record is not complete or accurate, the examiner will give
the applicant one month from the date of the notifying
letter  or  the  remainder  of  any  period  for  response,
whichever is longer, to complete the response and thereby
avoid abandonment of the application by using Form paragraph
7.84 (37 CFR 1.135(c)).

¶ 7.84  Amendment Is Non - Responsive to Interview

  The communication filed on [1] is non - responsive
because it fails to include a complete or accurate record of
the substance of the [2] interview. [3].

  Applicant is given a ONE MONTH TIME LIMIT from the date
of this letter, or until the expiration of the period for
response set in the last office action, whichever is the
longer, to complete the response. NO EXTENSION OF THIS TIME
LIMIT MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b).

 Examiner Note:

  1.  In bracket 2, insert the date of the interview.

  2.  In bracket 3, explain the deficiencies.

  EXAMINER TO CHECK FOR ACCURACY

  Applicant's summary of what took place at the interview
should be carefully checked to determine the accuracy of any
argument or statement attributed to the examiner during the
interview. If there is an inaccuracy and it bears directly
on the question of patentability, it should be pointed out
in the next Office letter. If the claims are allowable for
other reasons of record, the examiner should send a letter
setting forth his or her version of the statement attributed
to him or her.

  If the record is complete and accurate, the examiner
should place the indication "Interview record OK" on the
paper recording the substance of the interview along with
the date and the examiner's initials.

713.05  Interviews Prohibited or Granted, Special
Situations [R - 3]

  Saturday interviews, see MPEP § 713.01.

  Except in unusual situations, no interview is permitted
after the brief on appeal is filed or after a case has been
passed to issue.

  An interview may be appropriate before applicant's first
response when the examiner has suggested that allowable
subject matter is present or where it will assist applicant
in judging the propriety of continuing the prosecution.

  Office employees are forbidden to hold either oral or
written communication with an unregistered or a disbarred
attorney regarding an application unless it *>is< one in
which said attorney is the applicant. See MPEP § 105.

  Interviews are frequently requested by persons whose
credentials are of such informal character that there is
serious question as to whether such persons are entitled to

any information under the provisions of 37 CFR 1.14. In
general, interviews are not granted to persons who lack
proper authority from the applicant or attorney of record in
the form of a paper on file in the case or do not have in
their possession a copy of the application file. A MERE
POWER TO INSPECT IS NOT SUFFICIENT AUTHORITY FOR GRANTING AN
INTERVIEW INVOLVING THE MERITS OF THE APPLICATION.

  However,  interviews  may  be  granted  to  registered
individuals who are known to be the local representatives of
the attorney in the case, even though a power of attorney to
them is not of record in the particular application. When
prompt action is important an interview with the local
representative may be the only way to save the application
from abandonment. (See MPEP § 408.)

  If a registered individual seeking the interview has in
his or her possession a copy of the application file, the
examiner may accept his or her statement that he or she is
authorized to represent the applicant under 37 CFR 1.34 or
is the person named as the attorney of record.

  Interviews normally should not be granted unless the
requesting  party  has  authority  to  bind  the  principal
concerned.

  The  availability  of  personal  interviews  in  the
"Conference Period," which is the time between the filing of
applicant's thorough first response and a concluding action
by the * examiner, for attorneys resident or frequently in
Washington is obvious. For others more remote, telephone >or
video conference< interviews may prove valuable. However,
present Office policy places great emphasis on telephone
interviews initiated by the examiner to attorneys and agents
of record. See MPEP § 408.

  The examiner, by making a telephone call, may be able to
suggest minor, probably quickly acceptable changes which
would result in allowance. If there are major questions or
suggestions,  the  call  might  state  them  concisely,  and
suggest a further telephone or personal interview, at a
prearranged later time, giving applicant more time for
consideration before discussing the points raised.

  For an interview with an examiner who does not have
negotiation authority, arrangements should always include an
examiner who does have such authority, and who is familiar
with the case, so that authoritative agreement may be
reached at the time of the interview.

 GROUPED INTERVIEWS

  For attorneys remote from Washington who prefer personal
>or video conference< interviews, the grouped interview
practice is effective. If in any case there is a prearranged
interview, with agreement to file a prompt supplemental
amendment putting the case as nearly as may be in condition
for concluding action,  prompt filing of the supplemental
amendment gives the case special status, and brings it up
for immediate special action.

713.06  No Inter Partes Questions Discussed  Ex Parte  [R
- 1]

  >The examiner may not discuss inter partes questions ex

parte with any of the interested parties.<

713.07  Exposure of Other Cases [R - 3]

  Prior to an interview >in the examiner's room,< the
examiner should arrange his or her desk so that all files,
drawings and other papers, except those necessary in the
interview, are placed out of view. See MPEP § 101.

713.08  Demonstration, Exhibits, Models [R - 2]

  The  invention  in  question  may  be  exhibited  or
demonstrated during the interview by a model thereof. A
model received by the examiner from the applicant or his or
her attorney must be properly recorded on the "Contents"
portion of the application file wrapper. See MPEP § 608.03
and § 608.03(a).

  Oftentimes a model or exhibit is not given into the
custody of the Office but is brought directly into the group
by the attorney solely for inspection or demonstration
during the course of the interview. This is permissible.
Demonstrations of apparatus or exhibits too large to be
brought into the Office may be viewed by the examiner
outside of the Office (in the Washington >area) with the
approval of the supervisory primary examiner. It is presumed
that the witnessing of the demonstration<* or the reviewing
of the exhibit is actually essential in the developing and
clarifying of the issues involved in the application.

713.09  Finally Rejected Application [R - 1]

  >Normally,  one  interview  after  final  rejection  is
permitted. However, prior to the interview, the intended
purpose and content of the interview should be presented
briefly, preferably in writing. Such an interview may be
granted if the examiner is convinced that disposal or
clarification for appeal may be accomplished with only
nominal further consideration. Interviews merely to restate
arguments of record or to discuss new limitations which
would require more than nominal reconsideration or new
search should be denied. See MPEP § 714.13.

  Interviews may be held after the expiration of the SSP
and prior to the maximum permitted statutory period of 6
months without an extension of time. See MPEP § 706.07(f).

  A second or further interview after a final rejection
may be held if the examiner is convinced that it will
expedite  the  issues  for  appeal  or  disposal  of  the
application.<

713.10  Interview Preceding Filing Amendment Under 37 CFR
1.312 [R - 3]

  After a case is sent to issue, it is technically no
longer under the jurisdiction of the primary examiner, 37
CFR 1.312. An interview with an examiner that would involve
a detailed consideration of claims sought to be entered and
perhaps  entailing  a  discussion  of  the  prior  art  for
determining whether or not the claims are allowable should
not be given. Obviously an applicant is not entitled to a
greater degree of consideration in an amendment presented
informally than is given an applicant in the consideration
of an amendment when formally presented, particularly since

consideration of an amendment filed under 37 CFR 1.312
cannot be demanded as a matter of right.

  Requests for interviews on cases where *>notice< of
allowance has been mailed should be granted only with
specific approval of the Group Director upon a showing in
writing of extraordinary circumstances.

714  Amendments, Applicant's Action [R - 1]

 >37 CFR 1.115. Amendment.

  The applicant may amend before or after the first
examination  and  action  and  also  after  the  second  or
subsequent examination or reconsideration as specified in §
1.112 or when and as specifically required by the examiner.
The patent owner may amend in accordance with § 1.510(e) and
1.530(b) prior to reexamination, and during reexamination
proceedings in accordance with § § 1.112 and 1.116.

  See also MPEP § 714.12.

  For amendments in reexamination proceedings see MPEP §
2250 and § 2266.<

714.01  Signatures to Amendments [R - 1]

  >To facilitate any telephone call that may become
necessary, it is recommended that the complete telephone
number with area code and extension be given, preferably
near the signature. Note MPEP § 605.04 to § 605.05(a) for a
discussion of signatures to the application.<

714.01(a)  Unsigned or Improperly Signed Amendment [R -
1]

  >An unsigned amendment or one not properly signed by a
person  having  authority  to  prosecute  the  case  is  not
entered. This applies, for instance, where the amendment is
signed by one only of two applicants and the one signing has
not been given a power of attorney by the other applicant.

  If copies (carbon or electrostatic) of papers which
require an original signature as set forth in 37 CFR 1.4(e)
are filed, the signature must be applied after the copies
are made. MPEP § 714.07.

  An amendment filed with a copy of a signature rather
than  an  original  signature,  may  be  entered  if  an
accompanying transmittal letter contains a proper original
signature.

  When an unsigned or improperly signed amendment is
received the amendment will be listed on the file wrapper,
but not entered. The examiner will notify applicant of the
status of the case, advising him or her to furnish a
duplicate  amendment  properly  signed  or  to  ratify  the
amendment already filed. Applicant should be given either
the time remaining in the period for response or a 1 - month
time limit in which to ratify the previously filed amendment
(37 CFR 1.135(c)).

  Applicants may be advised of unsigned amendments by use
of Form Paragraph 7.84.01.

¶ 7.84.01  Amendment Is Unsigned

  The proposed [1] filed on [2] has not been entered
because it is unsigned.

  Applicant is given either the time remaining in the
response period of the last Office action or a ONE MONTH
TIME LIMIT from the date of this letter, whichever is
longer,  within  which  to  supply  a  duplicate  paper  or
ratification, properly signed. NO EXTENSION OF THIS TIME
LIMIT MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b).

 Examiner Note:

  In  the  first  "bracket"  insert  (1)  amendment  (2)
substitute oath (3) substitute declaration whichever is
applicable.

  Sometimes problems arising from unsigned or improperly
signed amendments may be disposed of by calling in the local
representative of the attorney of record, since he or she
may have the authority to sign the amendment.

  An amendment signed by a person whose name is known to
have been removed from the registers of attorneys and agents
under the provisions of 37 CFR 1.347 or § 1.348 is not
entered. The file and unentered amendment are submitted to
the Office of Enrollment and Discipline for appropriate
action.<

714.01(c)  Signed by Attorney Not of Record [R - 1]

  >See MPEP § 405. A registered attorney or agent acting
in a representative capacity under 37 CFR 1.34, may sign
amendments even though he does not have a power of attorney
in the application. See MPEP § 402.<

714.01(d)  Amendment Signed by Applicant But Not by
Attorney of Record [R - 1]

  >If an amendment signed by the applicant is received in
an application in which there is a duly appointed attorney,
the amendment should be entered and acted upon. Attention
should be called to 37 CFR 1.33(a) in patent applications
and to 37 CFR 1.33(c) in reexamination proceedings. Two
copies of the action should be prepared, one being sent to
the attorney and the other directly to the applicant. The
notation: "Copy to applicant" should appear on the original
and on both copies.<

714.02  Must Be Fully Responsive [R - 2]

 37 CFR 1.111. Reply by applicant or patent owner.

  (a) After the Office action, if adverse in any respect,
the applicant or patent owner, if he or she persists in his
or her application for a patent or reexamination proceeding,
must  reply  thereto  and  may  request  reconsideration  or
further examination, with or without amendment.

  (b) In order to be entitled to reconsideration or further
examination, the applicant or patent owner must make request
therefor in writing. The reply by the applicant or patent
owner  must  distinctly  and  specifically  point  out  the
supposed errors in the examiner's action and must respond to

every ground of objection and rejection in the prior Office
action. If the reply is with respect to an application, a
request may be made that objections or requirements as to
form not necessary to further consideration of the claims be
held  in  abeyance  until  allowable  subject  matter  is
indicated. The applicant's or patent owner's reply must
appear throughout to be a bona fide attempt to advance the
case to final action. A general allegation that the claims
define a patentable invention without specifically pointing
out how the language of the claims patentably distinguishes
them  from  the  references  does  not  comply  with  the
requirements of this section.

  (c) In amending in response to a rejection of claims in
an  application  or  patent  undergoing  reexamination,  the
applicant  or  patent  owner  must  clearly  point  out  the
patentable novelty which he or she thinks the claims present
in view of the state of the art disclosed by the references
cited or the objections made. He or she must also show how
the amendments avoid such references or objections. (See § §
1.135 and 1.136 for time for reply.)

  In  all  cases  where  response  to  a  requirement  is
indicated as necessary to further consideration of the
claims, or where allowable subject matter has been indicated
in an application, a complete response must either comply
with the formal requirements or specifically traverse each
one not complied with.

  Drawing and specification corrections, presentation of a
new oath and the like are generally considered as formal
matters. However, the line between formal matter and those
touching the merits is not sharp, and the determination of
the merits of a case may require that such corrections, new
oath, etc., be insisted upon prior to any indication of
allowable subject matter.

 37 CFR 1.119.  Amendment of claims.

  The claims may be amended by canceling particular
claims, by presenting new claims, or by rewriting particular
claims as indicated in § 1.121. The requirements of § 1.111
must  be  complied  with  by  pointing  out  the  specific
distinctions believed to render the claims patentable over
the references in presenting arguments in support of new
claims and amendments.

  An amendment submitted after a second or subsequent
nonfinal action on the merits which is otherwise responsive
but which increases the number of claims drawn to the
invention  previously  acted  upon  is  not  to  be  held
nonresponsive for that reason alone. (See 37 CFR 1.112, MPEP
§ 706.)

  The prompt development of a clear issue requires that
the responses of the applicant meet the objections to and
rejections of the claims. Applicant should also specifically
point out the support for any amendments made to the
disclosure. See MPEP §*>2163.06<.

  An amendment attempting to "rewrite" a claim in the
manner  set  forth  in  37  CFR  1.121(b)  may  be  held
nonresponsive if it uses parentheses, ( ), where brackets, [
], are called for; see MPEP § 714.22.

  Responses to requirements to restrict are treated under
MPEP § 818.

714.03  Amendments Not Fully Responsive Action To Be Taken
[R - 1]

  >If there is sufficient time remaining in the 6 - month
statutory period or set shortened statutory period when
applicant's amendment is found to be not fully responsive to
the last Office action, a letter should at once be sent
applicant pointing out wherein his or her amendment fails to
fully respond coupled with a warning that the response must
be completed within the time period in order to avoid the
question of abandonment. See MPEP § 714.05.

  Where a bona fide response to an examiner's action is
filed before the expiration of a permissible period, but
through an apparent oversight or inadvertence some point
necessary to a complete response has been omitted - such as
an amendment or argument as to one or two of several claims
involved or signature to the amendment - the examiner, as
soon as he or she notes the omission, should require the
applicant to complete his or her response within a specified
time limit (usually one month) if the period for response
has already expired or insufficient time is left to take
action before the expiration of the period. If this is done
the application should not be held abandoned even though the
prescribed period has expired.

  Under 37 CFR 1.135(c), the missing matter or lack of
compliance must be considered by the examiner as being
"inadvertently omitted." Once an inadvertent omission is
brought to the attention of the applicant, the question of
inadvertence no longer exists. Therefore, any further time
to complete the response would not be appropriate under 37
CFR 1.135(c). Accordingly no extensions of time can be
granted in such situations.

  The practice of giving applicant a 1 - month time limit
in order to complete and/or correct a bona fide effort to
file a response does not , however, normally apply after a
final rejection or final action. Amendments after final are
normally  only  approved  for  entry  if  they  place  the
application in condition for allowance or in better form for
appeal. Otherwise, they are not approved for entry. See MPEP
§ 714.12 and § 714.13. Thus even if some point necessary for
a complete response (after final) was omitted through an
apparent oversight or inadvertence, the amendment should be
denied entry. A 1 - month time limit to correct the omission
should  not  be  given.  Applicant  may,  however,  obtain
additional time under 37 CFR 1.136(a) to file another or
supplemental amendment in order to correct and/or complete
the response. Two exceptions to the normal practice exist.
An applicant may be given a 1 - month time limit for an
amendment after final if the amendment is not acceptable
because: (1) it is not signed or not properly signed, or (2)
additional fees are due for additional claims. See MPEP §
710.02(c).

  In these limited circumstances, the applicant may be
given a 1 - month time limit to complete the response.

  Where  there  is  an  informality  as  to  the  fee  in
connection with an amendment presenting additional claims,
the applicant is notified by the clerk on form PTOL - 319.

See MPEP § 607 and § 714.10.

  The examiner must exercise discretion in applying the
practice under 37 CFR 1.135(c) to safeguard against abuses
thereof.

  The practice outlined above does not apply where there
has been a deliberate omission of some necessary part of a
complete response. For example, if an election of species
has been required and applicant does not make election
because he or she holds the requirement to be wrong, the
amendment on its face is not a "bona fide attempt to advance
the case to final action" (37 CFR 1.135(c)), and the
examiner is without authority to postpone decision as to
abandonment.

  If there is ample time for applicant's reply to be filed
within the time period, no reference is made to the time for
response other than to note in the letter that the response
must be completed within the period for response dating from
the last Office action or within any extension pursuant to
37 CFR 1.136(a).

  Form Paragraph 7.95 may be used where a bona fide
response is not entirely responsive.

¶ 7.95  Bona Fide Non - Responsive Amendments

  The communication filed on [1] is non - responsive to
the prior Office action because [2]. Since the response
appears to be bona fide, but through an apparent oversight
or inadvertence failed to provide a complete response,
applicant is required to complete the response within a TIME
LIMIT of ONE MONTH from the date of this letter or within
the time remaining in the response period of the last Office
action, whichever is the longer. NO EXTENSION OF THIS TIME
LIMIT MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b) but
the period for response set in the last office action may be
extended up to a maximum of SIX MONTHS.

 Examiner Note:

  This practice does not apply where there has been a
deliberate omission of some necessary part of a complete
response. Under such cases, the examiner has no authority to
grant an extension if the period for response has expired.
See form paragraph 7.91.<

714.04  Claims Presented in Amendment With No Attempt To
Point Out Patentable Novelty [R - 1]

  >In the consideration of claims in an amended case where
no attempt is made to point out the patentable novelty, the
claims should not be allowed. (See 37 CFR 1.111, MPEP §
714.02.)

  An amendment failing to point out the patentable novelty
which the applicant believes to exist in his case may be
held to be nonresponsive and a time limit set to furnish a
proper response if the statutory period has expired or
almost expired (MPEP § 714.03). However, if the claims as
amended are clearly open to rejection on grounds of record,
a final rejection should generally be made.<

714.05  Examiner Should Immediately Inspect [R - 1]

  >Actions by applicant, especially those filed near the
end  of  the  period  for  response,  should  be  inspected
immediately  upon  filing  to  determine  whether  they  are
completely responsive to the preceding Office action so as
to  prevent  abandonment  of  the  application.  If  found
inadequate, and sufficient time remains, applicant should be
notified of the deficiencies and warned to complete the
response within the period. See MPEP § 714.03.

  All amended cases put on the examiner's desk should be
inspected at once to determine the following:

  If the amendment is properly signed (MPEP § 714.01).

  If the amendment has been filed within the statutory
period, set shortened period, or time limit (MPEP § 710).

  If the amendment is fully responsive (MPEP § 714.03 and
§ 714.04).

  If the changes made by the amendment warrant transfer
(MPEP § 903.08(d)).

  If the case is special (MPEP § 708.01).

  If  claims  suggested  to  applicant  for  interference
purposes have been inserted.

  If there is a traverse of a requirement for restriction
(MPEP § 818.03(a)).

  If "easily erasable" paper has been used or other
nonpermanent method of preparation or reproduction (MPEP §
714.07).

  If applicant has cited references (MPEP § 707.05(b) and
§ 1302.12).

  If a terminal disclaimer has been filed (MPEP § 508.01,
§ 804.02, § 804.03, and § 1490).

  If any matter involving security has been added (MPEP §
107.01).

  ACTION CROSSES AMENDMENT

  A supplemental action is usually necessary when an
amendment is filed on or before the mailing date of the
regular action but reaches the examining group later. The
supplemental action should be promptly prepared. It need not
reiterate all portions of the previous action that are still
applicable but it should specify which portions are to be
disregarded, pointing out that the period for response runs
from the mailing of the supplemental action. The action
should be headed "Responsive to amendment of (date) and
supplemental to the action mailed (date)."<

714.06  Amendments Sent to Wrong Group [R - 1]

  >See MPEP § 508.01.<

714.07  Amendments Not in Permanent Ink [R - 3]

  37 CFR 1.52(a) requires "permanent >dark< ink or its

equivalent **" to be used on papers which will become part
of part of the record and In re Benson , 1959 C.D. 5, 744
O.G. 353, holds that documents on so - called "easily
erasable" paper violate the requirement. The fact that 37
CFR 1.52(a) h as not been complied with may be discovered as
soon as the amendment reaches the examining group or, later,
** when the case is reached for action. In the first
instance, applicant is promptly notified that the amendment
is not entered and is required to file a permanent copy
within 1 month or to order a copy to be made by the Patent
and Trademark Office at his or her expense. Physical entry
of the amendment will be made from the permanent copy.

  If there is no appropriate response within the 1 - month
period, a copy is made by the Patent and Trademark Office,
applicant being notified and required to remit the charges
or authorize charging them to his deposit account.

  In the second instance, when the nonpermanence of the
amendment is discovered only when the case is reached for
action, similar steps are taken, but action on the case is
not held up, the requirement for a permanent copy of the
amendment being included in the Office action.

  Office copier or good carbon copies on satisfactory
paper are acceptable. But see In re Application Papers Filed
Jan. 20, 1956 , 706 O.G. 4. Although a good copy is
acceptable, signatures must be applied after the copy is
made if the papers require an original signature as set
forth in 37 CFR 1.4(e).

  See MPEP § 608.01 for more discussion on acceptable
copies.

714.08  Telegraphic  Amendment [R - 3]

  When a telegraphic amendment is received, the telegram
is placed in the file but not entered. **>Applicant will be<
notified that the telegram **>is not< accepted as a response
to the former Office action >and is not entered<. The time
period for response to the Office action continues to run
and is extendable under 37 CFR 1.136.

  **

714.09  Amendments Before First Office Action [R - 1]

  >An amendment filed before the first Office action, but
not filed along with the original application, does not
enjoy the status of part of the original disclosure. See
MPEP § 608.04(b). However, an application will be accorded a
filing date based upon identification of the inventor(s) and
the submission of a complete specification including claims
and any required drawings. The oath or declaration and/or
filing fee can be submitted later. Thus, in the instance
where  an  application  is  filed  without  the  oath  or
declaration  and  such  application  is  accompanied  by  an
amendment, that amendment is considered a part of the
original  disclosure.  The  subsequently  filed  oath  or
declaration must refer to both the application and the
amendment. Any copy of the application as filed must include
a  copy  of  the  amendment  as  well,  particularly  where
certified copies for priority purposes are requested.

  In the case of 37 CFR 1.60 or 1.62 (unexecuted)

applications, an amendment to the specification stating
that, "This application is a division (continuation) of
application Serial No. ............ filed ............." and
canceling any irrelevant claims as well as any preliminary
amendment  should  accompany  the  application.  Amendments
should either accompany the application or be filed after
the application has received its serial number and filing
date. See MPEP § 201.06(a).<

714.10  Claims Added in Excess of Filing Fee [R - 1]

  >The patent statute provides for the presentation of
claims added in excess of the filing fee. On payment of an
additional fee (see MPEP § 607), these excess claims may be
presented any time after the application is filed, which of
course, includes the time before the first action.<

714.11  Amendment Filed During Interference Proceedings [R
- 1]

  >See MPEP § 2364.01.<

714.12  Amendments After Final Rejection or Action [R - 1]

 >37 CFR 1.116.  Amendments after final action.

  (a) After final rejection or action ( § 1.113) amendments
may  be  made  canceling  claims  or  complying  with  any
requirement  of  form  which  has  been  made.  Amendments
presenting rejected claims in better form for consideration
on appeal may be admitted. The admission of, or refusal to
admit,  any  amendment  after  final  rejection,  and  any
proceedings relative thereto, shall not operate to relieve
the application or patent under reexamination from its
condition as subject to appeal or to save the application
from abandonment under § 1.135.

  (b) If amendments touching the merits of the application
or patent under reexamination are presented after final
rejection, or after appeal has been taken, or when such
amendment  might  not  otherwise  be  proper,  they  may  be
admitted upon showing of good and sufficient reasons why
they are necessary and were not earlier presented.

  (c) No amendment can be made as a matter of right in
appealed cases. After decision on appeal, amendments can
only be made as provided in § 1.198, or to carry into effect
a recommendation under § 1.196.

  Once a final rejection that is not premature has been
entered in a case, applicant or patent owner no longer has
any right to unrestricted further prosecution. This does not
mean  that  no  further  amendment  or  argument  will  be
considered. Any amendment that will place the case either in
condition for allowance or in better form for appeal may be
entered.  Also,  amendments  complying  with  objections  or
requirements as to form are to be permitted after final
action in accordance with 37 CFR 1.116(a). Ordinarily,
amendments filed after the final action are not entered
unless approved by the examiner. See MPEP § 706.07(f), §
714.13 and § 1207.

  The prosecution of an application before the examiner
should  ordinarily  be  concluded  with  the  final  action.
However,  one  personal  interview  by  applicant  may  be

entertained  after  such  final  action  if  circumstances
warrant. Thus, only one request by applicant for a personal
interview after final should be granted, but in exceptional
circumstances, a second personal interview may be initiated
by the examiner if in his judgment this would materially
assist in placing the application in condition for allowance
.

  Many of the difficulties encountered in the prosecution
of  patent  applications  after  final  rejection  may  be
alleviated if each applicant includes, at the time of filing
or no later than the first response, claims varying from the
broadest to which he or she believes he or she is entitled
to the most detailed that he or she is willing to accept.<

714.13  Amendments After Final Rejection or Action,
Procedure Followed [R - 3]

  FINAL REJECTION - TIME FOR RESPONSE

  If an applicant initially responds within two months
from the date of mailing of any final rejection setting a 3
- month shortened statutory period for response and the
Office does not mail an advisory action until after the end
of the 3 - month shortened statutory period, the period for
response for purposes of determining the amount of any
extension fee will be the date on which the Office mails the
advisory action advising applicant of the status of the
application, but in no event can the period extend beyond 6
months from the date of the final rejection. This procedure
applies only to a first response to a final rejection. The
following language must be included by the Examiner in each
final rejection mailed after February 27, 1983:

 A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL
ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS
ACTION. IN THE EVENT A FIRST RESPONSE IS FILED WITHIN TWO
MONTHS OF THE MAILING DATE OF THIS FINAL ACTION AND THE
ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE
THREE - MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED
STATUTORY PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION
IS MAILED, AND ANY EXTENSION FEE PURSUANT TO 37 CFR 1.136(a)
WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY
ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR RESPONSE
EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL
ACTION.

  This  wording  is  part  of  Form  Paragraphs  7.39,
7.40,>7.40.01< and 7.41. Form Paragraph 7.39 appears in MPEP
§ 706.07. Form **>Paragraphs 7.40 and 7.40.01 appear< in
MPEP § 706.07(a). Form Paragraph 7.41 appears in MPEP §
706.07(b).

  For example, if applicant initially responds within 2
months from the date of mailing of a final rejection and the
examiner mails an advisory action before the end of 3 months
from the date of mailing of the final rejection, the
shortened statutory period will expire at the end of 3
months from the date of mailing of the final rejection. In
such a case, any extension fee would then be calculated from
the end of the 3 - month period. If the examiner, however,
does not mail an advisory action until after the end of 3
months, the shortened statutory period will expire on the
date  the  examiner  mails  the  advisory  action  and  any
extension fee may be calculated from that date. In the event

that a first response is not filed within two months of the
mailing date of the final rejection, any extension fee
pursuant to 37 CFR 1.136(a) will be calculated from the end
of the response period set in the final rejection.

  Failure  to  file  a  response  during  the  shortened
statutory period results in abandonment of the application
unless the time is extended under the provisions of 37 CFR
1.136.

  ENTRY NOT A MATTER OF RIGHT

  It should be kept in mind that applicant cannot, as a
matter of right, amend any finally rejected claims, add new
claims after a final rejection (see 37 CFR 1.116) or
reinstate previously canceled claims.

  Except where an amendment merely cancels claims, adopts
examiner suggestions, removes issues for appeal, or in some
other way requires only a cursory review by the examiner,
compliance with the requirement of a showing under 37 CFR
1.116(b)  is  expected  in  all  amendments  after  final
rejection.  Failure  to  properly  respond  to  the  final
rejection results in abandonment.

  An amendment filed at any time after final rejection but
before an appeal brief is filed, may be entered upon or
after filing of an appeal >brief< provided the total effect
of the amendment is to (1) remove issues for appeal, and/or
(2) adopt examiner suggestions.

  See also MPEP § 1207 and § 1211.

  >The Patent and Trademark Office does not recognize
"conditional" authorizations to charge an appeal fee if an
amendment submitted after a final Office action is not
entered. Any "conditional" authorization to charge an appeal
fee set forth in 37 CFR 1.17(e) will be treated as an
unconditional payment of the fee set forth in 37 CFR
1.17(e).<

 ACTION BY EXAMINER

  See also MPEP § 706.07(f).

  In the event that the proposed amendment does not place
the case in better form for appeal, nor in condition for
allowance, applicant should be promptly informed of this
fact, whenever possible, within the statutory period. The
refusal to enter the proposed amendment should not be
arbitrary. The proposed amendment should be given sufficient
consideration  to  determine  whether  the  claims  are  in
condition for allowance and/or whether the issues on appeal
are simplified. Ordinarily, the specific deficiencies of the
amendment need not be discussed. The reasons for nonentry
should be concisely expressed. For example:

 (1) The claims, if amended as proposed, would not
avoid any of the rejections set forth in the last Office
action, and thus the amendment would not place the case in
condition for allowance or in better condition for appeal.

 (2) The claims, if amended as proposed, would raise
the issue of new matter.

 (3)  The  claims  as  amended  present  new  issues
requiring further consideration or search.

 (4) Since the amendment presents additional claims
without canceling any finally rejected claims it is not
considered as placing the application in better condition
for appeal; Ex parte Wirt , 1905 C.D. 247, 117 O.G. 599.

  Examiners should indicate the status of each claim of
record or proposed in the amendment, and which proposed
claims would be entered on the filing of an appeal if filed
in a separate paper.

  Applicant should be notified, if certain portions of the
amendment would be acceptable as placing some of the claims
in better form for appeal or complying with objections or
requirements as to form, if a separate paper were filed
containing only such amendments. Similarly, if the proposed
amendment to some of the claims would render them allowable,
applicant should be so informed. This is helpful in assuring
the filing of a brief consistent with the claims as amended.
A statement that the final rejection stands and that the
statutory period runs from the date of the final rejection
is also in order.

  Form letter PTOL - 303 should be used to acknowledge
receipt of a response from applicant after final rejection
where such response is prior to filing of an appeal brief
and  does  not  place  the  application  in  condition  for
allowance. This form has been devised to advise applicant of
the disposition of the proposed amendments to the claims and
of the effect of any argument or affidavit not placing the
application in condition for allowance or which could not be
made allowable by a telephone call to clear up minor
matters.

  Any amendment timely filed after a final rejection
should be immediately considered to determine whether it
places the application in condition for allowance or in
better form for appeal. An examiner is expected to turn in a
response to an amendment after final rejection within 10
calendar days from the time the amendment is received by the
examiner. A response to an amendment after final rejection
should be mailed within thirty (30) days of the date the
amendment is received by the Office. In all instances, both
before and after final rejection, in which an application is
placed in condition for allowance as by an interview or
amendment, applicant should be notified promptly of the
allowability of all claims by means of Interview Summary PTO
- 413 or a Notice of *>Allowability< PTOL - 37.

  Such a letter is important because it may avoid an
unnecessary appeal and act as a safeguard against a holding
of abandonment. Every effort should be made to mail the
letter before the period for response expires.

  If no appeal has been filed within the period for
response and no amendment has been submitted to make the
case allowable or which can be entered in part (see MPEP §
714.20), the case stands abandoned.

  It should be noted that under 37 CFR. 1.181(f), the
filing of a 37 CFR 1.181 petition will not stay the period
for reply to an examiner's action which may be running
against an application. See MPEP § 1207 for appeal and post

- appeal procedure. For after final rejection practice
relative to affidavits or declarations filed under 37 CFR
1.131 and 1.132, see MPEP § 715.09 and § 716.

  Form Paragraphs 7.67 - 7.80 are to be used when issuing
advisory actions after a final rejection.

¶ 7.67  Advisory After Final, Heading, Before Appeal

  The period for response [1] to run [2] MONTHS from the
date of the final rejection. Any extension of time must be
obtained  by  filing  a  petition  under  37  CFR  1.136(a)
accompanied by the proposed response and the appropriate
fee. The date on which the response, the petition, and the
fee have been filed is the date of the response and also the
date for the purposes of determining the period of extension
and the corresponding amount of the fee.

 Examiner Note:

  1.  This paragraph should appear as a heading in all
advisory  actions  prior  to  appeal.  After  appeal,  use
paragraph 7.68.

  2.  In Bracket 1, insert "continues" if applicant has
not submitted a petition for an extension of time along with
the  appropriate  fee  under  37  CFR  1.136.  If  a  proper
extension has been requested under 37 CFR 1.136, insert "is
extended" in bracket 1.

  3.  In bracket 2, insert the full statutory period
resulting from any extensions of time which have been
granted, e.g., "FOUR" months.

  4.  DO NOT USE THIS FORM PARAGRAPH FOR REEXAMINATION
PROCEEDINGS.

  5.  Follow with form paragraph 7.41.01 IF transitional
provisions of 37 CFR 1.129(a) are applicable.

¶ 7.67.01  Advisory After Final, Heading, 1st Response
Filed Within 2 Months

  The shortened statutory period for response expires
THREE MONTHS from the date of the final rejection or as of
the mailing date of this Advisory Action, whichever is
later. In no event however, will the statutory period for
response expire later than SIX MONTHS from the date of the
final rejection. Any extension of time must be obtained by
filing a petition under 37 CFR 1.136(a) accompanied by the
proposed response and the appropriate fee. The date on which
the response, the petition, and the fee have been filed is
the date of the response and also the date for the purposes
of determining the period of extension and the corresponding
amount of the fee.

  Any extension fee required pursuant to 37 CFR 1.17 will
be calculated from the date that the shortened statutory
period for response expires as set forth above.

 Examiner Note:

  1.  This paragraph should be used in all advisory
actions if:

  a. it was the first response to the final rejection, and

  b. it was filed within two months of the date of the
final rejection.

  2.  If a notice of appeal has been filed, also use
paragraph 7.68.

  3.  DO NOT USE THIS FORM PARAGRAPH FOR REEXAMINATION
PROCEEDINGS.

  4.  Follow with form paragraph 7.41.01 IF transitional
provisions of 37 CFR 1.129(a) are applicable.

¶ 7.67.02.  Advisory After Final, Heading, No Variable SSP
Set in Final

  Since the first response to the final Office action has
been filed within TWO MONTHS of the mailing date of that
action and the advisory action was not mailed within THREE
MONTHS of that date, the THREE MONTH shortened statutory
period for response set in the final Office action is hereby
vacated and reset to expire as of the mailing date of the
advisory action. See Notice entitled "Procedure for Handling
Amendments Under 37 CFR 1.116", published in the Official
Gazette at 1027 O.G. 71, February 8, 1983. In no event,
however, will the statutory period for response expire later
than SIX MONTHS from the date of the final Office action.

  Any extension fee required pursuant to 37 CFR 1.17 will
be calculated from the mailing date of the advisory action.

 Examiner Note:

  1. This paragraph should be used in all advisory actions
where:

  a. The response is a first response to the final action;

  b. the response was filed within two months of the
mailing date of the final;  and

  c. the final action failed to inform applicant of a
variable SSP beyond the normal three month period, as is set
forth in form paragraphs 7.39 - 7.41.

  2. If the final action set a variable SSP, do not use
this paragraph. Use paragraph 7.67.01.

  3. If a notice of appeal has been filed, also use
paragraph 7.68.

  4. Follow with form paragraph 7.41.01if transitional
provisions of 37 CFR 1.129(a) are applicable.

¶ 7.68  Advisory After Final, Heading, After Appeal

  An  appeal  under  37  CFR  1.191  was  filed  in  this
application on [1]. Appellant's brief is due on [2] in
accordance with 37 CFR 1.192(a).

 Examiner Note :

  1.  This paragraph must precede paragraph 7.70 if the
amendment is entered.

  2.  This paragraph must precede paragraph 7.71 if the
amendment is not entered.

¶ 7.69  Advisory After Final, Before Appeal, Amendment To
Be Entered

  The amendment filed [1] under 37 CFR 1.116 in response
to the final rejection will be entered upon the filing of an
appeal, but is not deemed to place the application in
condition for allowance. Upon the filing of an appeal and
entry of the amendment, the status of the claims would be as
follows:

 Allowed claim(s): [2]

 Rejected claim(s): [3]

 Claim(s) objected to: [4]

 Examiner Note :

  1. This paragraph must be preceded by paragraph 7.67,
7.67.01, or 7.67.02.

  2. In brackets 2 - 4 indicate the status of all claims

  3.  An  explanation  of  any  changes  in  the  rejection
necessitated by the amendment, a statement of reasons for
allowance, or other appropriate information may be added
following the listing of the claims.

¶ 7.70  Advisory  After  Final,  After  Appeal,  Amendment
Entered

  The amendment filed [1] under 37 CFR 1.116 in response
to the final rejection has been entered, but is not deemed
to place the application in condition for allowance. For
purposes of appeal, the status of the claims is as follows:

  Allowed claim(s): [2]

  Rejected claim(s): [3]

  Claim(s) objected to: [4]

  The brief should be directed to the rejection of claim
[5].

 Examiner Note :

  1. This paragraph must be preceded by paragraph 7.68.

  2. In brackets 2 - 4, indicate the status of all pending
claims.

  3. An explanation of appropriate changes, such as a
change in the rejection or a statement of reasons for
allowance, may be added following the listing of the claims.

  4. In bracket 5, repeat claims identified in bracket 3.

¶ 7.71  Advisory After Final, Amendment not Entered

  The amendment filed [1] under 37 CFR 1.116 in response

to the final rejection has been considered but is not deemed
to place the application in condition for allowance and will
not be entered because:

 Examiner Note :

  1. This paragraph must be preceded by paragraph 7.67,
7.67.01 or 7.67.02 if an appeal has not been taken, or by
paragraph 7.68 if an appeal has been taken.

  2. If it is not known whether a notice of appeal has been
filed and the full six month period has expired, do not use
paragraphs 7.67, 7.67.01, 7.67.02 or 7.68; use instead the
following:

  "If an appeal under 37 CFR 1.191 has not been properly
filed, this application is abandoned."

  3. One or more of the appropriate paragraphs 7.72 - 7.76
must directly follow this paragraph.

¶ 7.72  Advisory After Final, Lacks Showing, Why Necessary
and not Earlier Presented

  There is no convincing showing under 37 CFR 1.116(b) why
the proposed amendment is necessary and was not earlier
presented.

 Examiner Note  :

  1.  Paragraph 7.71 must precede this paragraph.

  2.  Do not use this paragraph as the sole reason for
refusing entry of the amendment unless the situation is
aggravated, in which case a full explanation is necessary.

  3.  Follow with form paragraph 7.41.01IF transitional
provisions of 37 CFR 1.129(a) are applicable and only if not
used in previous action.

¶ 7.73  Advisory After Final, Raises New Issues

  The proposed amendment raises new issues that would
require further consideration and/or search. [1].

 Examiner Note:

  1. This paragraph must be preceded by paragraph 7.71.

  2. The new issues including questions of new matter must
be clearly identified in bracket 1. (Examples are sufficient
if the new issues are extensive.)

  3. Follow with form paragraph 7.41.01 if transmitional
provisions of 37 CFR 1.129(a) are applicable and only if not
used in previous action.

¶ 7.75  Advisory After Final, Form for Appeal Not Improved

  The proposed amendment is not deemed to place the
application  in  better  form  for  appeal  by  materially
simplifying the issues for appeal.

 Examiner Note:

  1.  This paragraph must be preceded by paragraph 7.71.

  2.  Follow with form paragraph 7.41.01 IF transitional
provisions of 37 CFR 1.129(a) are applicable and only if not
used in previous action.

¶ 7.76  Advisory After Final, Additional Claims Presented

  The  proposed  amendment  presents  additional  claims
without  cancelling  a  corresponding  number  of  finally
rejected claims.

 Examiner Note:

  1.  This paragraph must be preceded by paragraph 7.71.

  2.  Follow with form paragraph 7.41.01 IF transitional
provisions of 37 CFR 1.129(a) are applicable and only if not
used in previous action.

¶ 7.78  Advisory After Final, Proposed New Claims Would Be
Allowable

  Claim [1] as proposed would be allowable if submitted in
a separately filed amendment cancelling all non - allowed
claims.

 Examiner Note:

  1.  This paragraph must be preceded by paragraph 7.71.

  2.  Follow with form paragraph 7.41.01 IF transitional
provisions of 37 CFR 1.129(a) are applicable and only if not
used in previous action.

¶ 7.79  Advisory  After  Final,  Affidavit,  Exhibit,  or
Request for Reconsideration Considered

  The [1] has been entered and considered but does not
overcome the rejection because [2].

 Examiner Note:

  1.  This paragraph must be preceded by either paragraph
7.67, 7.67.01, 7.67.02, or 7.68.

  2.  In bracket 1, insert "affidavit", "declaration",
"exhibit", or "request for reconsideration".

  3.  An explanation should be provided in bracket 2.

  4.  Follow with form paragraph 7.41.01 IF transitional
provisions of 37 CFR 1.129(a) are applicable and only if not
used in previous action.

¶ 7.80  Advisory After Final, Affidavit or Exhibit Not
Considered

  The  [1]  will  not  be  considered  because  good  and
sufficient reasons why it was not earlier presented have not
been shown. [2].

 Examiner Note:

  1.  This paragraph must be preceded by either paragraph

7.67, 7.67.01, 7.67.02, or 7.68.

  2.  In bracket 1, insert "affidavit", "declaration",
"exhibit", or "request for reconsideration".

  3.  An explanation should follow in bracket 2.

  4.  Follow with form paragraph 7.41.01 IF transitional
provisions of 37 CFR 1.129(a) are applicable and only if not
used in previous action.

  HAND DELIVERY OF PAPERS

  Any paper which relates to a pending application may be
personally delivered to an examining group. However, the
examining group will accept the paper only if: (1) the paper
is accompanied by some form of receipt which can be handed
back to the person delivering the paper; and (2) the
examining  group  being  asked  to  receive  the  paper  is
responsible for acting on the paper.

  The receipt may take the form of a card identifying the
paper. The identifying data on the card should be so
complete as to leave no uncertainty as to the paper filed.
For  example,  the  card  should  contain  the  applicant's
name(s), Serial No. filing date, and a description of the
paper being filed. If more than one paper is being filed for
the same application, the card should contain a description
of each paper or item.

  Under this procedure, the paper and receipt will be date
stamped with the group date stamp. The receipt will be
handed back to the person hand delivering the paper. The
paper will be correlated with the application and made an
official paper in the file, thereby avoiding the necessity
of processing and forwarding the paper to the examining
group via the Mail Room.

  The examining group will accept and date stamp a paper
even though the paper is accompanied by a check or the paper
contains an authorization to charge a Deposit Account.
However, in such an instance, the paper will be hand carried
by group personnel to the Office of Finance for processing
and then made an official paper in the file.

  All such papers, together with the cash, checks, or
money orders, shall be hand - carried to the **>Customer
Service Window, Crystal Plaza Building 2<, Room *1B01**.

  The papers shall be processed by the accounting clerk,
Office of Finance, for pickup at the *>Customer Service<
Window by 3:00 p.m. the following work day. Upon return to
the group, the papers will be entered in the application
file wrappers.

  Expedited Procedure for Processing Amendments and Other
  Responses After Final Rejection (37 CFR 1.116)

  In an effort to improve the timeliness of the processing
of amendments and other responses under 37 CFR 1.116, and
thereby provide better service to the public, an expedited
processing procedure has been established which the public
may utilize in filing amendments and other responses after
final  rejection  under  37  CFR  1.116.  In  order  for  an
applicant to take advantage of the expedited procedure the

amendment or other response under 37 CFR 1.116 will have to
be marked as a "Response under 37 CFR 1.116 - Expedited
Procedure - Examining Group (Insert Examining Group Number)"
on the upper right portion of the amendment or other
response and the envelope must be marked "Box AF" in the
lower left hand corner. The markings preferably should be
written in a bright color with a felt point marker. If the
response is mailed to the Office, the envelope should
contain only responses under 37 CFR 1.116 and should be
mailed to "Box AF, Assistant Commissioner for Patents,
Washington, D.C. 20231." Instead of mailing the envelope to
"Box AF" as noted above, the response may be hand - carried
to the particular Examining Group or other area of the
Office in which the application is pending and marked on the
outside envelope "Response Under 37 CFR 1.116 - Expedited
Procedure  -  Examining  Group  (Insert  Examining  Group
Number)."

  Upon receipt by the Patent and Trademark Office from the
Postal Service of an envelope appropriately marked "Box AF,"
the envelope will be specially processed by the Patent and
Trademark Office Mail Room and forwarded promptly to the
Examining Group, via the Office of Finance if any fees have
to be charged or otherwise processed. Upon receipt of the
response  in  the  Examining  Group  it  will  be  promptly
processed by a designated clerical employee and forwarded to
the examiner, via the Supervisory Primary Examiner (SPE),
for action. The SPE is responsible for ensuring that prompt
action on the response is taken by the examiner. If the
examiner  to  which  the  application  is  assigned  is  not
available and will not be available for an extended period,
the SPE will ensure that action on the application is
promptly taken to assure meeting the PTO goal described
below.  Once  the  examiner  has  completed  his  or  her
consideration of the response, the examiner's action will be
promptly typed and mailed by clerical employees designated
to expedite the processing of responses filed under this
procedure. The Examining Group supervisory personnel; e.g.,
the Supervisory Primary Examiner, Supervisory Applications
Clerk, and Group Director are responsible for ensuring that
actions on responses filed under this procedure are promptly
processed and mailed. The Patent and Trademark Office goal
is to mail the examiner's action on the response within 1
month from the date on which the amendment or response is
received by the Patent and Trademark Office.

  Applicants are encouraged to utilize this expedited
procedure in order to facilitate Patent and Trademark Office
processing of responses under 37 CFR 1.116. If applicants do
not utilize the procedure by appropriately marking the
envelope and enclosed papers, the benefits expected to be
achieved therefrom will not be attained. The procedure
cannot be expected to result in achievement of the goal in
applications in which the delay results from actions by the
applicant; e.g., delayed interviews, applicant's desire to
file a further response, or a petition by applicant which
requires a decision and delays action on the response. In
any application in which a response under this procedure has
been filed and no action by the examiner has been received
within the time referred to herein, plus normal mailing
time, a telephone call to the SPE of the relevant Group Art
Unit would be appropriate in order to permit the SPE to
determine the cause for any delay. If the SPE is unavailable
or if no satisfactory response is received, the Group
Director of the Examining Group should be contacted.

714.14  Amendments After Allowance of All Claims [R - 1]

  >Under the decision in Ex parte Quayle , 1935 C.D. 11;
453 O.G. 213, after all claims in a case have been allowed
the prosecution of the case on the merits is closed even
though there may be outstanding formal objections which
preclude fully closing the prosecution.

  Amendments touching the merits are treated in a manner
similar to amendments after final rejection, though the
prosecution may be continued as to the formal matters. See
MPEP § 714.12 and § 714.13.

  See MPEP § 714.20 for amendments entered in part.

  See MPEP § 607 for additional fee requirements.

  Use Form Paragraph 7.51 to issue an Ex parte Quayle
action.

¶ 7.51  Quayle Action

  This application is in condition for allowance except
for the following formal matters: [1].

  Prosecution on the merits is closed in accordance with
the practice under Ex parte  Quayle , 1935 C.D. 11, 453 O.G.
213.

  A shortened statutory period for response to this action
is set to expire TWO MONTHS from the date of this letter.

 Examiner Note:

  1.  Explain the formal matters which must be corrected
in bracket 1.<

714.15  Amendment Received in Examining Group After
Mailing of Notice of Allowance [R - 1]

  >Where an amendment, even though prepared by applicant
prior to allowance, does not reach the Office until after
the notice of allowance has been mailed, such amendment has
the status of one filed under 37 CFR 1.312. Its entry is a
matter of grace. For discussion of amendments filed under 37
CFR 1.312, see MPEP § 714.16 to § 714.16(e).

  If, however, the amendment is filed in the Office prior
to the mailing out of the notice of allowance, but is
received by the examiner after the mailing of the notice of
allowance, it has the same standing in the case as though
the notice had not been mailed. Where the case has not been
closed to further prosecution, as by final rejection of one
or more claims, or by an action allowing all of the claims,
applicant may be entitled to have such amendment entered
even though it may be necessary to withdraw the application
from issue. Such withdrawal, however, is unnecessary if the
amendatory matter is such as the examiner would recommend
for entry under 37 CFR 1.312.

  As above implied, the case will not be withdrawn from
issue for the entry of an amendment that would reopen the
prosecution if the Office action next preceding the notice
of allowance closed the case to further amendment, i.e., by

indicating the patentability of all of the claims, or by
allowing some and finally rejecting the remainder.

  After an applicant has been notified that the claims are
all allowable, further prosecution of the merits of the case
is a matter of grace and not of right ( Ex parte Quayle ,
1935 C.D. 11; 453 O.G. 213). To this extent the practice
affecting the status of an amendment received in the Office
on the date of mailing the notice of allowance, as set forth
in  Ex parte  Miller , 1922 C.D. 36; 305 O.G. 419, is
modified.<

714.16  Amendment After Notice of Allowance, 37 CFR 1.312
[R - 2]

 37 CFR 1.312.  Amendments after allowance.

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

  (b) Any amendment pursuant to paragraph (a) of this
section filed after the date the issue fee is paid must be
accompanied by a petition including the fee set forth in §
1.17(i) and a showing of good and sufficient reasons why the
amendment is necessary and was not earlier presented.

  The amendment of an application by applicant after
allowance falls within the guidelines of 37 CFR 1.312.
Further, the amendment of an application broadly encompasses
any  change  in  the  file  record  of  the  application.
Accordingly, the following are examples of "amendments" by
applicant after allowance which must comply with 37 CFR
1.312: An amendment to the specification, a change in the
drawings, an amendment to the claims, a change in the
inventorship, the submission of prior art, etc. Finally, it
is pointed out that an amendment under 37 CFR 1.312 filed on
or before the date the issue fee is paid must comply with
paragraph (a) and that such an amendment filed after the
date the issue fee is paid must comply with paragraph (b).

  The  Commissioner  has  delegated  the  approval  of
recommendations under 37 CFR 1.312(a) to the supervisory
primary examiners.

  A supplemental oath is not treated as an amendment under
37 CFR 1.312, see MPEP § 603.01.

  After the Notice of Allowance has been mailed, the
application is technically no longer under the jurisdiction
of the primary examiner. He or she can, however, make
examiner's amendments (See MPEP § 1302.04) and has authority
to enter amendments submitted after Notice of Allowance of
an application which embody merely the correction of formal
matters in the specification or drawing, or formal matters
in a claim without changing the scope thereof, or the
cancellation  of  claims  from  the  application,  without
forwarding to the supervisory primary examiner for approval.

  Amendments other than those which merely embody the
correction of formal matters without changing the scope of
the claims require approval by the supervisory primary

examiner. The Group Director establishes group policy with
respect to the treatment of amendments directed to trivial
informalities which seldom affect significantly the vital
formal requirements of any patent; namely, (1) that its
disclosure be adequately clear, and (2) that any invention
present be defined with sufficient clarity to form an
adequate basis for an enforceable contract.

  Consideration of an amendment under 37 CFR 1.312 cannot
be demanded as a matter of right. Prosecution of a case
should be conducted before, and thus be complete including
editorial revision of the specification and claims at the
time of the Notice of Allowance. However, where amendments
of the type noted are shown (1) to be needed for proper
disclosure or protection of the invention, and (2) to
require no substantial amount of additional work on the part
of the Office, they may be considered and, if proper, entry
may be recommended by the primary examiner.

  The requirements of 37 CFR 1.111(c) (MPEP § 714.02) with
respect to pointing out the patentable novelty of any claim
sought to be added or amended, apply in the case of an
amendment under 37 CFR 1.312, as in ordinary amendments. See
MPEP § 713.04 and § 713.10 regarding interviews. As to
amendments affecting the disclosure, the scope of any claim,
or that add a claim, the remarks accompanying the amendment
must fully and clearly state the reasons on which reliance
is placed to show:

 (1) why the amendment is needed;

 (2) why the proposed amended or new claims require
no additional search or examination;

 (3) why the claims are patentable*>;< and

 (4) why they were not presented earlier.

  NOT TO BE USED FOR CONTINUED PROSECUTION

  37 CFR 1.312 was never intended to provide a way for the
continued prosecution of an application after it has been
passed for issue. When the recommendation is against entry,
a detailed statement of reasons is not necessary in support
of  such  recommendation.  The  simple  statement  that  the
proposed claim is not obviously allowable and briefly the
reason why is usually adequate. Where appropriate, any one
of the following reasons is considered sufficient:

 (1) an additional search is required, or

 (2) more than a cursory review of the record is
necessary, or

 (3) the amendment would involve materially added
work on the part of the Office; e.g., checking excessive
editorial changes in the specification or claims.

  Where claims added by amendment under 37 CFR 1.312 are
all of the form of dependent claims, some of the usual
reasons for nonentry are less likely to apply although
questions of new matter, sufficiency of disclosure, or undue
multiplicity of claims could arise.

  See MPEP § 607 and § 714.16(c) for additional fee

requirements.

  AMENDMENTS FILED AFTER PAYMENT OF ISSUE FEE

  37 CFR 1.312(b) provides that amendments under 37 CFR
1.312 filed after the date the issue fee has been paid must
include a petition and fee under 37 CFR 1.17(i) and a
showing of good and sufficient reasons why such an amendment
is necessary and was not earlier presented. Such petitions
are decided by the Group Director. >Form Paragraph 13.10
should be used where no petition and/or fee has been filed.

¶ 13.10  Rule  312  Amendment,  Issue  Fee  Paid,  No
Petition/Fee

  Applicants amendment of [1] was filed after the issue
fee was paid. 37 CFR 1.312(b) requires a petition and the
fee set forth in 37 CFR 1.17(i).

 Examiner Note:

  1.  For Rule 312 amendments submitted after the issue
fee has been paid and not complying with 37 CFR 1.312(b),
use this paragraph on form PTOL - 90.

  2.  In bracket 1, insert the date of the amendment.<

714.16(a)  Amendments Under 37 CFR 1.312, Copied Patent
Claims [R - 1]

  >See MPEP § 2305.04 for the procedure to be followed
when an amendment is received after notice of allowance
which includes one or more claims copied or substantially
copied from a patent.

  The entry of the copied patent claims is not a matter of
right. See MPEP § 714.19 item (4).

  See MPEP § 607 and § 714.16(c) for additional fee
requirements.<

714.16(b)  Amendments Under 37 CFR 1.312 Filed With a
Motion Under 37 CFR 1.633 [R - 1]

  >Where an amendment filed with a motion under 37 CFR
1.633(c)(2) applies to a case in issue, the amendment is not
entered unless and until the motion has been granted. See
MPEP § 2333.<

714.16(c)  Amendments Under 37 CFR 1.312, Additional
Claims [R - 1]

  >If the amendment under 37 CFR 1.312 adds claims (total
and independent) in excess of the number previously paid
for, additional fees are required. The amendment is not
considered by the examiner unless accompanied by the full
fee required. See MPEP § 607 and 35 U.S.C. 41.<

714.16(d)  Amendments Under 37 CFR 1.312, Handling [R -
1]

  >AMENDMENTS AFFECTING THE DISCLOSURE OF THE SPECIFICATION,
  ADDING CLAIMS, OR CHANGING THE SCOPE OF ANY CLAIM

  Amendments  under  37  CFR  1.312  are  sent  by  the

Correspondence and Mail Division to the Publishing Division
which, in turn, forwards the proposed amendment, file, and
drawing (if any) to the group which allowed the application.
In the event that the class and subclass in which the
application is classified has been transferred to another
group  after  the  application  was  allowed,  the  proposed
amendment,  file  and  drawing  (if  any)  are  transmitted
directly to said other group and the Publishing Division
notified. If the examiner who allowed the application is
still employed in the Patent and Trademark Office but not in
said other group, he or she may be consulted about the
propriety of the proposed amendment and given credit for any
time spent in giving it consideration. The amendment is
PROMPTLY considered by the examiner who indicates whether or
not its entry is recommended by writing "Enter - 312," "Do
Not Enter" or "Enter In Part" thereon in red ink in the
upper left corner.

  If the amendment is favorably considered, it is entered
and a notice of entry (PTOL - 271) is prepared. No "Entry
Recommended  under  Rule  312"  stamp  is  required  on  the
amendment or on the notice of entry in view of the use of
form (PTOL - 271). The primary examiner indicates his or her
recommendation by stamping and signing his or her name on
the notice of entry form (PTOL - 271). Form Paragraph 7.85
may be used to indicate entry.

¶ 7.85  Amendment under 37CFR 1.312, Entered

 The amendment filed on [1] under 37 CFR 1.312 has been
entered.

 Examiner Note:

 1. Use this form for both Order 3311 amendments that do not
affect the scope of the claims, and for other amendments
being entered under 37 CFR 1.312.

 2. Entry of amendments under Order 3311 require the
approval of a Primary Examiner and entry of amendments under
37 CFR 1.312(a) require approval by the Supervisory Patent
Examiner on recommendation of the Primary Examiner. See MPEP
§ 714.16.

 3. Amendments filed after payment of the issue fee require
a petition and fee. These petitions are first decided by the
Group Director.

  If the examiner's recommendation is completely adverse,
a report giving the reasons for nonentry is typed on the
notice of disapproval (PTOL - 271) and signed by the primary
examiner.

  Form Paragraph 7.87 may be used to indicate nonentry.

¶ 7.87  Amendment under 37CFR 1.312, not Entered

 The proposed amendment filed on [1] under 37 CFR 1.312 has
not been entered. [2].

 Examiner Note:

 The reasons for non - entry should be specified in bracket
2.

  In either case, whether the amendment is entered or not
entered,  the  file,  drawing,  and  unmailed  notices  are
forwarded  to  the  supervisory  primary  examiner  for
consideration, approval, and mailing.

  For entry - in - part, see MPEP § 714.16(e).

  The filling out of the appropriate form by the clerk
does not signify that the amendment has been admitted; for,
though actually entered it is not officially admitted unless
and until approved by the supervisory primary examiner.

  See MPEP § 607 and § 714.16(c) for additional fee
requirements.

  Petitions to the Commissioner relating to the refusal to
enter an amendment under 37 CFR 1.312 and relating to entry
of an amendment under 37 CFR 1.312 filed after payment of
the issue fee are decided by the group director.

  If the 37 CFR 1.312 amendment includes proposed drawing
changes which are acceptable, the Office response should
include Form Paragraph 6.48.

¶ 6.48  Drawing Changes in 37 CFR1.312 Amendment

 Applicant is hereby given ONE MONTH from the date of this
letter or until the expiration of the period set in the
"Notice  of  Allowance"  (PTOL  -  85)  or  "Notice  of
Allowability" (PTOL - 37), whichever is longer, to file
corrected drawings.

 Examiner Note:

 Use with 37 CFR 1.312 amendment notice where there is a
drawing correction proposal or request.

  AMENDMENTS WHICH EMBODY MERELY THE CORRECTION OF FORMAL
  MATTERS IN THE SPECIFICATION, FORMAL CHANGES IN A CLAIM
 WITHOUT CHANGING THE SCOPE THEREOF, OR THE CANCELLATION OF
  CLAIMS

  The examiner indicates approval of amendments concerning
merely formal matters by writing "Enter Formal Matters Only"
thereon. Such amendments do not require submission to the
supervisory primary examiner prior to entry. See MPEP §
714.16. The notice of entry (PTOL - 271) is date stamped and
mailed by the examining group. If such amendments are
disapproved either in whole or in part, they require the
signature of the supervisory primary examiner.<

714.16(e)  Amendments Under 37 CFR 1.312, Entry in Part
[R - 1]

  >The general rule that an amendment cannot be entered in
part and refused in part should not be relaxed, but when,
under 37 CFR 1.312, an amendment, for example, is proposed
containing a plurality of claims or amendments to claims,
some of which may be entered and some not, the acceptable
claims or amendments should be entered in the case. If
necessary,  the  claims  should  be  renumbered  to  run
consecutively with the claims already in the case. The
refused claims or amendments should be canceled in lead
pencil on the amendment.

  The examiner should then submit a report (PTOL - 271)
recommending the entry of the acceptable portion of the
amendment and the nonentry of the remaining portion together
with his reasons therefor. The claims entered should be
indicated  by  number  in  this  report.  Applicant  may  be
notified by using Form Paragraph 7.86.

¶ 7.86  Amendment under 37 CFR 1.312, Entered in Part

 The amendment filed on [1] under 37 CFR 1.312 has been
entered in part. [2].

 Examiner Note:

 When an amendment under 37 CFR 1.312 is proposed containing
plural changes, some of which may be entered and some not,
the acceptable changes should be entered. An indication of
which  changes  have  and  have  not  been  entered  with
appropriate explanation should follow in bracket 2.

  Handling is similar to complete entry of a 37 CFR 1.312
amendment.

  Entry in part is not recommended unless the full
additional fee required, if any, accompanies the amendment.
See MPEP § 607 and § 714.16(c).<

714.17  Amendment Filed After the Period for Response Has
Expired [R - 3]

  When an application is not prosecuted within the period
set for response and thereafter an amendment is filed with
out a petition for extension of time and fee pursuant to 37
CFR 1.136(a), such amendment shall be endorsed on the file
wrapper of the application, but not formally entered. The
clerk shall immediately notify the applicant, by telephone
and form letter PTOL - 327, that the amendment was not filed
within the time period and therefore cannot be entered and
that the application is abandoned unless a petition for
extension of time and the appropriate fee are timely filed.
See MPEP § 711.02.

  A mere authorization to charge a deposit account for any
fee required will not be considered to be a petition for an
extension of time.

  The Patent and Trademark Office has been receiving an
excessively  large  volume  of  petitions  to  revive  based
primarily  on  the  late  filing  of  amendments  and  other
responses to official actions. Many of these petitions
indicate that the late filing was due to unusual mail
delays; however, the records generally show that the filing
was only 2 or 3 days late.

  In order to alleviate, for applicants and the Office,
the problems and expenditures of time and effort occasioned
by abandonments and petitions to revive, it is suggested
that responses to official action be mailed to the office at
least one, and preferably 2 week(s) prior to the expiration
of the period within which a response is required or that
the Certificate of Mailing procedure under 37 CFR 1.8 (MPEP
§ 512) or >the "Express Mail" delivery procedure under< 37
CFR 1.10 (MPEP § 513) be utilized. This suggestion is made
in the interest of improving efficiency, thereby providing
better service to the public.

714.18  Entry of Amendments [R - 2]

  Amendments are stamped with the date of their receipt in
the group. It is important to observe the distinction which
exists between the stamp which shows the date of receipt of
the amendment in the group ("Group Date" stamp) and the
stamp bearing the date of receipt of the amendment by the
Office ("Office Date" stamp). The latter date, placed in the
left - hand corner, should always be referred to in writing
to the applicant with regard to his or her amendment.

  All amendments received in the clerical sections are
processed  and  with  the  applications  delivered  to  the
supervisory primary examiner for his or her review and
distribution to the examiners.

  Every mail delivery should be carefully screened to
remove all amendments responding to a final action in which
a  time  period  is  running  against  the  applicant.  Such
amendments should be processed within the next 24 hours.

  The purpose of this procedure is to ensure uniform and
prompt treatment by the examiners of all cases where the
applicant is awaiting a reply to a proposed amendment after
final action. By having all of these cases pass over the
supervisory primary examiner's desk, he or she will be made
aware  of  the  need  for  any  special  treatment,  if  the
situation so warrants. For example, the supervisory primary
examiner will know whether or not the examiner in each case
is on extended leave or otherwise incapable of moving the
case within the required time periods (** see MPEP §
714.13). In cases of this type, the applicant should receive
an Office communication in sufficient time to adequately
consider his or her next action if the case is not allowed.
Consequently, the clerical handling will continue to be
special when these cases are returned by the examiners to
the clerical sections.

  The amendment or letter is placed in the file, given its
number as a paper in the application, and its character
endorsed on the file wrapper in red ink.

  When several amendments are made in an application on
the same day no particular order as to the hour of the
receipt or the mailing of the amendments can be assumed, but
consideration of the case must be given as far as possible
as though all the papers filed were a composite single
paper.

  After entry of the amendment the application is "up for
action." It is placed on the examiner's desk, and he or she
is responsible for its proper disposal. The examiner should
immediately inspect the amendment as set forth in MPEP §
714.05. After inspection, if no immediate or special action
is required, the application awaits examination in regular
order.

714.19  List of Amendments, Entry Denied [R - 2]

  The following types of amendments are ordinarily denied
entry:

 (1) An amendment presenting an unpatentable claim,
or a claim requiring a new search or otherwise raising a new

issue  in  a  case  whose  prosecution  before  the  primary
examiner has been closed, as where

 (a) All claims have been allowed,

 (b) All claims have been finally rejected (for
exceptions see MPEP § 714.12, § 714.13, and § 714.20(4)),

 (c)  Some  claims  allowed  and  remainder  finally
rejected. See MPEP § 714.12 to § 714.14.

 (2) Substitute specification that does not comply
with 37 CFR 1.125. See MPEP § 608.01(q) and § 714.20.

 (3) A patent claim suggested by the examiner and not
presented within the time limit set or an extension thereof,
unless entry is authorized by the Commissioner. See MPEP §
2305.03.**

 (4)  While  copied  patent  claims  are  generally
admitted even though the case is under final rejection or on
appeal, under certain conditions, the claims may be refused
entry. See MPEP § 2307.03.

 (5) An unsigned or improperly signed amendment or
one signed by a disbarred attorney.

 (6) An amendment filed in the Patent and Trademark
Office after the expiration of the statutory period or set
time limit for response and any extension thereof. See MPEP
§ 714.17.

 (7) An amendment so worded that it cannot be entered
with certain accuracy. See MPEP § 714.23.

 (8) An amendment cancelling all of the claims and
presenting no substitute claim or claims. See MPEP § 711.01.

 (9) An amendment in a case no longer within the
examiner's  jurisdiction  with  certain  exceptions  in
applications  in  issue,  except  on  approval  of  the
Commissioner. See MPEP § 714.16.

 (10) Amendments to the drawing held by the examiner
to contain new matter are not entered until the question of
new matter is settled. This practice of nonentry because of
alleged new matter, however, does not apply in the case of
amendments to the specification and claims. See MPEP §
608.04 and § 706.03(o).

 (11) An amendatory paper containing objectionable
remarks that, in the opinion of the examiner, brings it
within the condemnation of 37 CFR 1.3, will be submitted to
the group director for return to applicant. See MPEP §
714.25 and MPEP § 1003, item 3. If the group director
determines that the remarks are in violation of 37 CFR 1.3,
he will return the paper.

 (12) Amendments not in permanent ink. Amendments on
so - called "easily erasable paper." See MPEP § 714.07.

 (13)  An  amendment  presenting  claims  (total  and
independent) in excess of the number previously paid for and
not accompanied by the full fee for the claims or an
authorization to charge the fee to a deposit account.

 (14) An amendment canceling all claims drawn to the
elected invention and presenting only claims drawn to the
nonelected  invention  should  not  be  entered.  Such  an
amendment is nonresponsive. Applicant should be notified as
directed in MPEP § 714.03 and § 714.05. See MPEP § 821.03.

  While amendments falling within any of the foregoing
categories should not be entered by the examiner at the time
of filing, a subsequent showing by applicant may lead to
entry of the amendment.

714.20  List of Amendments Entered in Part [R - 2]

  To avoid confusion of the record the general rule
prevails that an amendment should not be entered in part. As
in the case of most other rules, the strict observance of
its letter may sometimes work more harm than would result
from its infraction, especially if the amendment in question
is received at or near the end of the period for response.
Thus,

 (1)  an  "amendment"  presenting  an  unacceptable
substitute specification along with amendatory matter, as
amendments to claims or new claims, should be entered in
part, rather than refused entry in toto. The substitute
specification should be denied entry and so marked, while
the rest of the paper should be entered.

  The case as thus amended is acted on when reached
in its turn, the applicant being advised that the substitute
specification ** has not been entered. **

  >See 37 CFR 1.125 and MPEP § 608.01(q) for information
regarding the submission of a substitute specification.<

  Under current practice, substitute specifications may be
voluntarily filed by the applicant if he or she desires. A
>proper< substitute specification will normally be accepted
by the Office even if it has not been required by the
examiner.

 **

 (2) An amendment under 37 CFR 1.312, which in part
is approved and in other part disapproved, is entered only
as to the approved part. See MPEP § 714.16(e).

 (3) In a case having all claims allowed and some
formal defect noted, where an amendment is presented at or
near the close of the statutory period curing the defect and
adding one or more claims some or all of which are in the
opinion of the examiner not patentable, or will require a
further search, the amendment in such a case will be entered
only as to the formal matter. Applicant has no right to have
new claims considered or entered at this point in the
prosecution.

 (4) In an amendment accompanying a motion granted
only in part, the amendment is entered only to the extent
that the motion was granted.

  NOTE. The examiner writes "Enter" in ink and his or her
initials in the left margin opposite the enterable portions.

714.21  Amendments Inadvertently Entered, No Legal Effect
[R - 1]

  >If the clerk inadvertently enters an amendment when it
should not have been entered, such entry is of no legal
effect, and the same action is taken as if the changes had
not been actually made, inasmuch as they have not been
legally made. Unless such unauthorized entry is deleted,
suitable notation should be made on the margin of the
amendatory paper, as "Not Officially Entered."

  If it is to be retained in the file an amendatory paper,
even though not entered, should be given a paper number and
listed on the file wrapper with the notation "Not Entered."
See 37 CFR 1.3 and MPEP § 714.25, for an instance of a paper
which may be returned.<

714.22  Entry of Amendments, Directions for [R - 1]

 >37 CFR 1.121.  Manner of making amendments.

 (a)  Erasures, additions, insertions, or alterations of
the Office file of papers and records must not be physically
entered by the applicant. Amendments to the application
(excluding the claims) are made by filing a paper (which
should conform to § 1.52), directing or requesting that
specified amendments be made. The exact word or words to be
stricken out or inserted by said amendment must be specified
and the precise point indicated where the deletion or
insertion is to be made.

 (b)  Except as otherwise provided herein, a particular
claim may be amended only by directions to cancel or by
rewriting such claim with underlining below the word or
words added and brackets around the word or words deleted.
The rewriting of a claim in this form will be construed as
directing the cancellation of the original claim; however,
the original claim number followed by the parenthetical word
"amended" must be used for the rewritten claim. If a
previously rewritten claim is rewritten, underlining and
bracketing will be applied in reference to the previously
rewritten claim with the parenthetical expression "twice
amended,"  "three  times  amended,"  etc.,  following  the
original claim number.*

 (c)  A particular claim may be amended in the manner
indicated for the application in paragraph (a) of this
section  to  the  extent  of  corrections  in  spelling,
punctuation, and typographical errors. Additional amendments
in this manner will be admitted provided the changes are
limited to (1) deletions and/or (2) the addition of no more
than five words in any one claim. Any amendment submitted
with instructions to amend particular claims but failing to
conform to the provisions of paragraphs (b) and (c) of this
section may be considered non - responsive and treated
accordingly.

 (d)  Where underlining or brackets are intended to
appear in the printed patent or are properly part of the
claimed material and not intended as symbolic of changes in
the particular claim, amendment by rewriting in accordance
with paragraph (b) of this section shall be prohibited.

 (e)  In  reissue  applications,  both  the  descriptive
portion and the claims are to be amended by either (1)

submitting a copy of a portion of the description or an
entire claim with all matter to be deleted from the patent
being placed between brackets and all matter to be added to
the patent being underlined, or (2) indicating the exact
word or words to be stricken out or inserted and the precise
point where the deletion or insertion is to be made. Any
word or words to be inserted must be underlined. See §
1.173.

 (f) Proposed amendments presented in patents involved in
reexamination proceedings must be presented in the form of a
full copy of the text of (1) each claim which is amended and
(2) each paragraph of the description which is amended.
Matter deleted from the patent shall be placed between
brackets and matter added shall be underlined. Copies of the
printed  claims  from  the  patent  may  be  used  with  any
additions being indicated by carets and deleted material
being placed between brackets. Claims must not be renumbered
and the numbering of the claims added for reexamination must
follow the number of the highest numbered patent claim. No
amendment may enlarge the scope of the claims of the patent.
No new matter may be introduced into the patent.

  The term "brackets" set forth in 37 CFR 1.121(b) means
angular brackets, thus: [ ]. It does not encompass and is to
be distinguished from parentheses ( ). Any amendment using
parentheses to indicate canceled matter in a claim rewritten
under  37  CFR  1.121(b)  may  be  held  nonresponsive  in
accordance with 37 CFR 1.121(c).

  Where, by amendment under 37 CFR 1.121(b), a dependent
claim is rewritten to be in independent form, the subject
matter from the prior independent claim should be considered
to be "added" matter and should be underlined.

  37 CFR 1.121(f) requires a complete copy of any new or
amended  claim  when  presented  during  reexamination
proceedings. See MPEP § 2221, § 2250, and § 2266. Form
Paragraphs 6.33 and 6.34 may be used to inform applicants if
the amendments are not in proper format.

¶ 6.33  Amendment to the Claims, 37 CFR 1.121

 The amendment to the claims has not been entered because it
requests the addition of more than 5 words in any one claim.
See 37 CFR 1.121(c) below:

 (c)  A particular claim may be amended in the examiner
indicated in for the application in paragraph (a) of this
section  to  the  extent  of  corrections  in  spelling,
punctuation, and typographical errors. Additional amendments
in this manner will be admitted provided the changes are
limited to: (1) deletions and/or (2) the addition of no more
than five words in any one claim. Any amendment submitted
with instructions to amend particular claims but failing to
conform to the provisions of paragraphs (b) and (c) of this
section  may  be  considered  nonresponsive  and  treated
accordingly.

 The amendments to the claims should be made in accordance
with 37 CFR 1.121(b) which states:

 (b) Except as otherwise provided herein, a particular claim
may be amended only by directions to cancel or by rewriting
such claim with underlining below the word or words added

and brackets around the word or words deleted. The rewriting
of a claim in this form will be construed as directing the
cancellation of the original claim; however, the original
claim number followed by the parenthetical word "amended"
must be used for the rewritten claim. If a previously
rewritten claim is rewritten, underlining and bracketing
will be applied in reference to the previously rewritten
claim with the parenthetical expression "twice amended"
"three times amended", etc., following the original claim
number.

 Applicant is given a ONE MONTH TIME LIMIT from the date of
this letter, or until the expiration of the period for
response set in the last Office action whichever is longer,
to complete the response. NO EXTENSION OF THIS TIME LIMIT
MAY BE GRANTED UNDER EITHER 37CFR 1.136(a) OR (b), but the
period for response set in the last office action may be
extended up to a maximum of six months.

¶ 6.34  Amendment of the Claims, Brackets or Underlining
Cannot Be Used

 The claims of this application contain underlining or
brackets that are intended to appear in the printed patent
or are properly part of the claimed material. The brackets
or underlining are not intended to indicate amendments or
changes in the claims. Under these conditions, proposed
amendments to the claims may not be made by underlining
words  added  or  by  bracketing  words  to  be  deleted.
Accordingly, the proposed amendment to the claims has not
been entered. See 37 CFR 1.121(d).

 Applicant is given a ONE month time limit from the date
this letter, or until the expiration of the period for
response set in the last Office action, whichever is longer,
to complete the response. NO EXTENSION OF THIS TIME LIMIT
MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b) but the
period for response set in the last Office action may be
extended up to a maximum of six months .<

714.23  Entry of Amendments, Directions for, Defective [R
- 1]

  >The directions for the entry of an amendment may be
defective, as, inaccuracy in the line designated, or lack of
precision where the word to which the amendment is directed
occurs more than once in the specified line. If it is clear
from the context what is the correct place of entry, the
amendatory paper will be properly amended in the examining
group;  and  notation  thereof,  initialed  in  ink  by  the
examiner,  who  will  assume  full  responsibility  for  the
change, will be made on the margin of the amendatory paper.
In the next Office action the applicant should be informed
of this alteration in the amendment and the entry of the
amendment as thus amended. The applicant will also be
informed of the nonentry of an amendment where defective
directions and context leave doubt as to the intent of
applicant.<

714.24  Amendment of Amendments [R - 1]

 >37 CFR 1.124. Amendment of amendments.

 When an amendatory clause is to be amended, it should be
wholly rewritten and the original insertion canceled, so

that no interlineations or deletions shall appear in the
clause as finally presented. Matter canceled by amendment
can be reinstated only by a subsequent amendment presenting
the canceled matter as a new insertion.

  However,  where  a  relatively  small  amendment  to  a
previous amendment can be made easily without causing the
amendatory matter to be obscure or difficult to follow, such
small amendment should be entered.<

714.25  Discourtesy of Applicant or Attorney [R - 1]

 >37 CFR 1.3.  Business to be conducted with decorum and
courtesy.

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

  All papers received in the Patent and Trademark Office
should be briefly reviewed by the clerk, before entry,
sufficiently to determine whether any discourteous remarks
appear therein.

  If the attorney is discourteous in the remarks or
arguments in his amendment, either the discourtesy should be
entirely  ignored  or  the  paper  submitted  to  the  group
director with a view toward its being returned. See MPEP §
1003, item 3. If the group director determines that the
remarks are in violation of 37 CFR 1.3, the Group Director
will return the paper.<

715  Swearing Back of Reference - Affidavit or
Declaration Under 37 CFR 1.131 [R - 3]

 37 CFR 1.131.  Affidavit or declaration of prior
invention to overcome cited patent or publication

 **>(a)(1) When any claim of an application or a patent
under reexamination is rejected under 35 U.S.C. 102(a) or
(e), or 35 U.S.C. 103 based on a U.S. patent to another or
others which is prior art under 35 U.S.C. 102(a) or (e) and
which substantially shows or describes but does not claim
the same patentable invention, as defined in § 1.601(n), or
on  reference  to  a  foreign  patent  or  to  a  printed
publication, the inventor of the subject matter of the
rejected claim, the owner of the patent under reexamination,
or the party qualified under § 1.42, 1.43, or 1.47, may
submit an appropriate oath or declaration to overcome the
patent or publication. The oath or declaration must include
facts showing a completion of the invention in this country
or in a NAFTA or WTO member country before the filing date
of the application on which the U.S. patent issued, or
before the date of the foreign patent, or before the date of
the  printed  publication.  When  an  appropriate  oath  or
declaration is made, the patent or publication cited shall
not bar the grant of a patent to the inventor or the
confirmation of the patentability of the claims of the
patent,  unless  the  date  of  such  patent  or  printed
publication is more than one year prior to the date on which
the inventor's or patent owner's application was filed in

this country.

 (2) A date of completion of the invention may not be
established under this section before December 8, 1993, in a
NAFTA country, or before January 1, 1996 in a WTO member
country other than a NAFTA country.<

 (b) The showing of facts shall be such, in character and
weight, as to establish reduction to practice prior to the
effective date of the reference, or conception of the
invention prior to the effective date of the reference
coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the
application. Original exhibits of drawings or records, or
photocopies thereof, must accompany and form part of the
affidavit or declaration or their absence satisfactorily
explained.

  37  CFR  1.131(a)  has  been  amended  to  implement  the
relevant provisions of Public Law 103 - 182, 107 Stat. 2057
(1993) (North American Free Trade Agreement Act) and Public
Law  103  -  465,  108  Stat.  4809  (1994)  (Uruguay  Round
Agreements Act), respectively. Under 37 CFR 1.131(a) as
amended, which provides for the establishment of a date of
completion of the invention in a NAFTA or WTO member
country, as well as in the United States, an applicant can
establish a date of completion in a NAFTA member country on
or after December 8, 1993, the effective date of section 331
of Public Law 103 - 182, the North American Free Trade
Agreement Act, and can establish a date of completion in a
WTO member country other than a NAFTA member country on or
after January 1, 1996, the effective date of section 531 of
Public Law 103 - 465, the Uruguay Round Agreements Act
(URAA). Acts occurring prior to the effective dates of NAFTA
or URAA may be relied upon to show completion of the
invention; however, a date of completion of the invention
may not be established under 37 CFR 1.131 before December 8,
1993 in a NAFTA country or before January 1, 1996 in a WTO
country other than a NAFTA country.

  Any printed publication dated prior to an applicant's or
patent owner's effective filing date, or any domestic patent
of prior filing date, which is in its disclosure pertinent
to the claimed invention, is available for use by the
examiner as a reference, either basic or auxiliary, in the
rejection of the claims of the application or patent under
reexamination.

  Such a rejection may be overcome, in certain instances
noted below, by filing of an affidavit or declaration under
37 CFR 1.131, known as "swearing back" of the reference.

  It should be kept in mind that it is the rejection that
is withdrawn and not the reference.

  SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS
  CAN BE USED

  Affidavits or declarations under 37 CFR 1.131 may be
used:

 (1) Where the date of the foreign patent or that of
the publication is less than 1 year prior to applicant's or
patent owner's effective filing date.

 (2) Where the reference, a U.S. Patent, with a
patent  date  less  than  one  year  prior  to  applicant's
effective filing date, shows but does not claim the same
patentable invention. See MPEP § 715.05 for a discussion of
"same patentable invention."

  SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS
 ARE INAPPROPRIATE

  An affidavit or declaration under 37 CFR 1.131 is not
appropriate in the following situations:

 (1) Where the reference publication date is more
than  one  year  back  of  applicant's  or  patent  owner's
effective filing date. Such a reference is a "statutory bar"
under 35 U.S.C. 102(b).

 (2) Where the reference U.S. patent claims the same
patentable invention. See MPEP § 715.05 for a discussion of
"same patentable invention" and MPEP § 2306. >Where the
reference  patent  and  the  application  or  patent  under
reexamination are commonly owned, and the inventions defined
by  the  claims  in  the  application  or  patent  under
reexamination and by the claims in the patent are not
identical  but  are  not  patentably  distinct,  a  terminal
disclaimer and an affidavit or declaration under 37 CFR
1.130 may be used to overcome a rejection under 35 U.S.C.
103. See MPEP § 718.<

 (3) Where the reference is a foreign patent for the
same invention to applicant or patent owner or his or her
legal representatives or assigns issued prior to the filing
date of the domestic application or patent on an application
filed more than 12 months prior to the filing date of the
domestic application. See 35 U.S.C. 102(d).

 (4) Where the effective filing date of applicant's
or patent owner's parent application or an International
Convention proved filing date is prior to the effective date
of the reference, an affidavit or declaration under 37 CFR
1.131 is unnecessary because the reference is not used. See
MPEP § 201.11 to § 201.15.

 (5) Where the reference is a prior U.S. patent to
the same entity, claiming the same invention. The question
involved is one of "double patenting."

 (6) Where the reference is the disclosure of a prior
U.S. patent to the same party, not copending. The question
is one of dedication to the public. Note however, In re
Gibbs  and  Griffin  ,  168  USPQ  578  (CCPA  1971)  which
substantially did away with the doctrine of dedication.

 (7) Where applicant has clearly admitted on the
record that subject matter relied on in the reference is
prior art. In this case, that subject matter may be used as
a basis for rejecting his or her claims and may not be
overcome by an affidavit or declaration under 37 CFR 1.131.
In re Blout , 333 F.2d 928, 142 USPQ 173 (CCPA 1964);  In re
Lopresti , 333 F.2d 932, 142 USPQ 177 (CCPA 1964);  In re
Garfinkel , 437 F.2d 1000, 168 USPQ 659 (CCPA 1971);  In re
Hellsund , 474 F.2d 1307, 177 USPQ 170 (CCPA 1973).

 (8) Where the subject matter relied upon is prior
art under 35 U.S.C. 102(f).

 (9) Where the subject matter relied on in the
reference is prior art under 35 U.S.C. 102(g). 37 CFR 1.131
is designed to permit an applicant to overcome rejections
under  35  U.S.C.  102(a)  and  (e)  based  on  patents  and
publications **>which are not statutory bars, but which have
publication dates, or in the case of U.S. patents, effective
filing dates,< prior to the effective filing date >of the
application< but subsequent to **>the applicant's< actual
date of invention. However, when the subject matter relied
on is also available under 35 U.S.C. 102(g), a 37 CFR 1.131
affidavit or declaration cannot be used to overcome it. In
re Bass , 474 F.2d 1276, 177 USPQ 178 (CCPA 1973). This is
because subject matter which is available under 35 U.S.C.
102(g)  by  definition  must  have  been  made  before  the
applicant made his invention. References under 35 U.S.C.
102(a) and (e), by contrast, merely establish a presumption
that  their  subject  matter  was  made  before  applicant's
invention date. It is this presumption which may be rebutted
by evidence submitted under 37 CFR 1.131.

 (10) Where the subject matter corresponding to a
lost count in an interference is either prior art under 35
U.S.C. 102(g) or barred to applicant by the doctrine of
interference estoppel. In re Bandel , 348 F.2d 563, 146 USPQ
389 (CCPA 1965);  In re Kroekel , 803 F.2d 705, 231 USPQ 640
(Fed. Cir. 1986). See also  In re Deckler24 USPQ2d 1448
(Fed. Cir. 1992) (Under the principles of  res judicata and
collateral estoppel , applicant was not entitled to claims
that were patentably indistinguishable from the claim lost
in interference even though the subject matter of the lost
count was not available for use in an obviousness rejection
under 35 U.S.C. 103). But see  In re Zletz , 893 F.2d 319,
13 USPQ2d 1320 (Fed. Cir. 1989) (A losing party to an
interference, on showing that the invention now claimed is
not "substantially the same" as that of the lost count, may
employ the procedures of 37 CFR 1.131 to antedate the filing
date of an interfering application). On the matter of when a
"lost count" in an interference constitutes prior art under
35 U.S.C. 102(g), see  In re McKellin , 529 F.2d 1342, 188
USPQ 428 (CCPA 1976) (A count is not prior art under 35
U.S.C. 102(g) as to the loser of an interference where the
count was lost based on the winner's foreign priority date).
Similarly, where one party in an interference wins a count
by establishing a date of invention in a NAFTA or WTO member
country (see 35 U.S.C. 104), the subject matter of that
count is unpatentable to the other party by the doctrine of
interference estoppel, even though it is not available as
statutory prior art under 35 U.S.C. 102(g) (see MPEP §
2138.01 and § 2138.02).

  REFERENCE DATE TO BE OVERCOME

  The date to be overcome under 37 CFR 1.131 is the
effective date of the reference (i.e., the date on which the
reference is available as prior art).

 1.  U.S. Patents

  See MPEP § 2136 through § 2136.03 for a detailed
discussion of the effective date of a U.S. patent as a
reference.

  Should it be established that the portion of the patent
disclosure relied on as the reference was introduced into

the patent application by amendment and as such was new
matter,  the  date  to  be  overcome  by  the  affidavit  or
declaration is the date of amendment. In re Willien , 74
F.2d 550, 24 USPQ 210 (CCPA 1935). The effective date of a
domestic patent when used as a reference is not the foreign
filing date to which the application for patent may have
been entitled under 35 U.S.C. 119(a) during examination.  In
re Hilmer , 359 F.2d 859, 149 USPQ 480 (1966). Therefore,
the date to be overcome under 37 CFR 1.131 is the effective
U.S. filing date, not the foreign priority date. Note,
however, that, when the U.S. patent reference is entitled to
a priority date based on an earlier filed international
application (PCT) >under 35 U.S.C. 120<, the effective
filing date of the reference is the international filing
date as defined by 35 U.S.C. 363. Further, note that the
effective date of a patent issued on an application entitled
to  priority  under  35  U.S.C.  119(e)  to  a  provisional
application filed under 35 U.S.C. 111(b) is the filing date
of the provisional application, except for a patent granted
on an international application in which applicant has
fulfilled the requirements of paragraphs (1), (2) and (4) of
35  U.S.C.  371>(c)<.  **>When  a  U.S.  national  stage
application filed under 35 U.S.C. 371 becomes a U.S. patent,
its effective date as a prior art reference< is the date on
which the requirements of paragraphs (1), (2) and (4) >of 35
U.S.C. 371(c)< were fulfilled.

 2. Foreign Patents

  See MPEP § 2126 through § 2127 regarding date of
availability of foreign patents as prior art.

 3. Printed Publications

  A printed publication, including a published foreign
patent application, is effective as of its publication date,
not its date of receipt by the publisher. For additional
information  regarding  effective  dates  of  printed
publications, see MPEP § 2128 through § 2128.02.

  FORM PARAGRAPHS

  Form Paragraphs 7.57 - 7.64 may be used to respond to 37
CFR 1.131 affidavits.

¶ 7.57  Affidavit  or  Declaration  Under  37CFR  1.131,
Ineffective, Heading

 The [1] filed on [2] under 37 CFR 1.131 has been considered
but is ineffective to overcome the [3] reference.

 Examiner Note:

  1.  In  bracket  1,  insert  either  "affidavit"  or
"declaration".

 2. This paragraph must be followed by one or more of
paragraphs 7.58 to 7.63 or a paragraph setting forth proper
basis for the insufficiency, such as a failure to establish
acts performed in this country, or that the scope of the
declaration or affidavit is not commensurate with the scope
of the claim(s).

¶ 7.58  Affidavit  or  Declaration  Under  37  CFR  1.131,
Ineffective, Claiming Same Invention

 The [1] reference is a U.S. patent that claims the rejected
invention. An affidavit or declaration is inappropriate
under 37 CFR 1.131(a) when the patent is claiming the same
patentable invention, see MPEP § 2306. The patent can only
be overcome by establishing priority of invention through
interference  proceedings.  See  MPEP  Chapter  2300  for
information on initiating interference proceedings.

 Examiner Note:

 1.  If  used  to  respond  to  the  submission  of  an
affidavit or declaration under 37 CFR 1.131 affidavit, this
paragraph must be preceded by paragraph 7.57.

 2.  This paragraph may be used without paragraph 7.57
when an affidavit under 37 CFR 1.131 has not yet been filed,
and the examiner desires to notify applicant that the
submission of an affidavit under 37 CFR 1.131 would be
inappropriate.

¶ 7.59  Affidavit  or  Declaration  Under  37  CFR  1.131,
Insufficient  Evidence  of  Reduction  to  Practice  Before
Reference Date

 The evidence submitted is insufficient to establish a
reduction to practice of the invention in this country or a
NAFTA or WTO member country prior to the effective date of
the [1] reference. [2].

 Examiner Note:

 1.  This paragraph must be preceded by paragraph 7.57.

 2.  An explanation of the lack of showing of the
alleged reduction to practice must be provided in bracket 2.

¶ 7.60  Affidavit  or  Declaration  Under  37  CFR  1.131,
Ineffective, Reference is a Statutory Bar

 The [1] reference is a statutory bar under 35 U.S.C. 102(b)
and thus cannot be overcome by an affidavit or declaration
under 37 CFR 1.131.

 Examiner Note:

 This paragraph must be preceded by paragraph 7.57.

¶ 7.61  Affidavit  or  Declaration  Under  37  CFR  1.131,
Ineffective, Insufficient Evidence of Conception

 The evidence submitted is insufficient to establish a
conception of the invention prior to the effective date of
the [1] reference. While conception is the mental part of
the inventive act, it must be capable of proof, such as by
demonstrative  evidence  or  by  a  complete  disclosure  to
another. Conception is more than a vague idea of how to
solve a problem. The requisite means themselves and their
interaction must also be comprehended. See Mergenthaler  v
. Scudder , 1897 C.D. 724, 81 O.G. 1417 (D.C. Cir. 1897).
[2].

 Examiner Note:

 1. This paragraph must be preceded by paragraph 7.57.

 2. An explanation of the deficiency in the showing of
conception must be presented in bracket 2.

 3. If the affidavit additionally fails to establish either
diligence  or  a  subsequent  reduction  to  practice,  this
paragraph should be followed by paragraph 7.62 and/or 7.63.
If  either  diligence  or  a  reduction  to  practice  is
established, a statement to that effect should follow this
paragraph.

¶  7.62  Affidavit or Declaration Under 37 CFR 1.131,
Ineffective, Diligence Lacking

  The  evidence  submitted  is  insufficient  to  establish
diligence from a date prior to the date of reduction to
practice of the [1] reference to either a constructive
reduction to practice or an actual reduction to practice.
[2].

 Examiner Note:

 1.  This paragraph must be preceded by paragraph 7.57.

 2.  If the affidavit additionally fails to establish
conception,  this  paragraph  must  also  be  preceded  by
paragraph 7.61. If the affidavit establishes conception, a
statement to that effect should be added to this paragraph.

 3.  If the affidavit additionally fails to establish an
alleged reduction to practice prior to the application
filing date, this paragraph must be followed by paragraph
7.63.  If  such  an  alleged  reduction  to  practice  is
established, a statement to that effect should be added to
this paragraph.

 4.  An explanation of the reasons for a holding of non
- diligence must be provided in bracket 2.

 5.  See MPEP § 715.07(a), Ex parte Merz, 75 USPQ 296
(Bd. App. 1947), which indicates that diligence is not
required after reduction to practice.

¶ 7.63  Affidavit  or  Declaration  Under  37  CFR  1.131,
Ineffective, Insufficient Evidence of Actual Reduction To
Practice

  The  evidence  submitted  is  insufficient  to  establish
applicant's alleged actual reduction to practice of the
invention in this country or a NAFTA or WTO member country
after the effective date of the [1] reference. [2].

 Examiner Note:

 1.  This paragraph must be preceded by paragraph 7.57.

 2.  If the alleged reduction to practice is prior to
the effective date of the reference, do not use this
paragraph. See paragraph 7.59.

 3.  If the affidavit additionally fails to establish
either conception or diligence, paragraphs 7.61 and/or 7.62
should precede this paragraph. If either conception or
diligence is established, a statement to that effect should
be included after this paragraph.

 4.  An explanation of the lack of showing of the
alleged reduction to practice must be given in bracket 2.

¶ 7.64  Affidavit  or  Declaration  Under  37  CFR  1.131,
Effective to Overcome Reference

 The [1] filed on [2] under 37 CFR 1.131 is sufficient to
overcome the [3] reference.

 Examiner Note:

  1.  In  bracket  1,  insert  either  "affidavit"  or
"declaration".

 2. In bracket 2, insert the filing date of the affidavit or
declaration.

 3. In bracket 3, insert the name of the reference.

715.01  37 CFR 1.131 Affidavits Versus 37 CFR 1.132
Affidavits [R - 1]

  >The purpose of a 37 CFR 1.131 affidavit or declaration
is to overcome a prior art rejection by proving invention of
the  claimed  subject  matter  by  applicant  prior  to  the
effective  date  of  the  reference  relied  upon  in  the
rejection.

  In some situations, an applicant may, alternatively, be
able to overcome prior art rejections relying on references
which are available as prior art under 35 U.S.C. 102(a) or
(e) by proving that the subject matter relied upon in the
reference was applicant's own invention.

  Similarly, where the reference relied upon in a 35
U.S.C. 103 rejection qualifies as prior art only under 35
U.S.C. 102(f) or (g), applicant may be able to overcome this
rejection by proving that the subject matter relied upon and
the claimed invention were commonly owned or subject to
common assignment at the time the latter invention was made.
In such situations, an affidavit or declaration under 37 CFR
1.132, rather than 37 CFR 1.131, would be appropriate. See
MPEP § 715.01(a) through § 715.01(c) for specific situations
where these issues may arise.<

715.01(a)  Reference Is a Joint Patent to Applicant and
Another [R - 1]

  >When subject matter, disclosed but not claimed in a
patent issued jointly to S and another, is claimed in a
later application filed by S, the joint patent is a valid
reference unless overcome by affidavit or declaration under
37 CFR 1.131 or an unequivocal declaration under 37 CFR
1.132 by S that he/she conceived or invented the subject
matter  disclosed  in  the  patent  and  relied  on  in  the
rejection. In re DeBaun , 214 USPQ 933 (CCPA 1982). See MPEP
§ 716.10 for a discussion of the use of 37 CFR 1.132
affidavits  or  declarations  to  overcome  rejections  by
establishing that the subject matter relied on in the patent
was the invention of the applicant. Disclaimer by the other
patentee should not be required but, if submitted, may be
accepted by the examiner.

  Although affidavits or declarations submitted for the

purpose  of  establishing  that  the  reference  discloses
applicant's invention are properly filed under 37 CFR 1.132,
rather  than  37  CFR  1.131,  such  affidavits  submitted
improperly under 37 CFR 1.131 will be considered as though
they were filed under 37 CFR 1.132 to traverse a ground of
rejection. In re Facius , 408 F.2d 1396, 161 USPQ 294 (CCPA
1969).<

715.01(b)  Reference and Application Have Common
Assignee [R - 2]

  The mere fact that the reference patent which shows but
does not claim certain subject matter and the application
which claims it are owned by the same assignee does not
avoid the necessity of filing an affidavit or declaration
under 37 CFR 1.131, in the absence of a showing under 37 CFR
1.132 that the patentee derived the subject matter relied on
from the applicant (MPEP § 716.10). The common assignee does
not obtain any rights in this regard by virtue of common
ownership which he would not have in the absence of common
ownership. In re Beck ,**>155 F.2d 398, 69 USPQ 520 (CCPA
1946)<;  Pierce v.  Watson ,>275 F.2d 890,< 124 USPQ
356>(D.C. Cir. 1960)<;  In re Frilette ** , 412 F.2d 269,
162 USPQ 163>(CCPA 1969)<. Where, however, a rejection is
applied under 35 U.S.C. 102(f) / 103 or 35 U.S.C. 102(g) /
103 using the reference patent, a showing that the invention
was commonly owned at the time the later invention was made
would preclude such a rejection or be sufficient to overcome
such a rejection.

715.01(c)  Reference Is Publication of Applicant's Own
Invention [R - 2]

  Unless it is a statutory bar, a rejection based on a
publication may be overcome by a showing that it was
published either by applicant himself/herself or on his/her
behalf. Since such a showing is not made to show a date of
invention by applicant prior to the date of the reference
under 37 CFR 1.131, the limitation in 35 U.S.C. 104 and in
37 CFR 1.131(a)(1) that only acts which occurred in this
country or in a NAFTA or WTO member country may be relied on
to establish a date of invention is not applicable. Ex parte
Lemieux , 115 USPQ 148, 1957 C.D. 47, 725 O.G. 4 (Bd. App.
1957);  Ex parte Powell **,1938 C.D. 15, 489 O.G. 231 (Bd.
App. 1938). See MPEP § 716.10 regarding 37 CFR 1.132
affidavits  submitted  to  show  that  the  reference  is  a
publication of applicant's own invention.

  COAUTHORSHIP

  Where the applicant is one of the co - authors of a
publication cited against his or her application, he or she
may  overcome  the  rejection  by  filing  an  affidavit  or
declaration under 37 CFR 1.131. Alternatively, the applicant
may overcome the rejection by filing a specific affidavit or
declaration under 37 CFR 1.132 establishing that the article
is  describing  applicant's  own  work.  An  affidavit  or
declaration by applicant alone indicating that applicant is
the sole inventor and that the others were merely working
under his direction is sufficient to remove the publication
as a reference under 35 U.S.C. 102(a). In re Katz, 687 F.2d
450, 215 USPQ 14 (CCPA 1982).

  DERIVATION

  When the unclaimed subject matter of a patent or other
publication is applicant's own invention, a rejection on
that patent or publication may be removed by submission of
evidence establishing the fact that the patentee or author
derived his or her knowledge of the relevant subject matter
from applicant. Moreover applicant must further show that he
or she made the invention upon which the relevant disclosure
in the patent or publication is based. In re Mathews , 408
F.2d 1393, 161 USPQ 276, 56 CCPA 1033 (CCPA 1969);  In re
Facius , 408 F.2d 1396, 161 USPQ 294, 56 CCPA 1384 (CCPA
1969).

715.02  How Much of the Claimed Invention Must Be Shown,
Including the General Rule as to Generic Claims [R - 2]

  The 37 CFR 1.131 affidavit or declaration must establish
possession  of  either  the  whole  invention  claimed  or
something falling within the claim (such as a species of a
claimed genus), in the sense that the claim as a whole reads
on it. In re Tanczyn , 146 USPQ 298 (CCPA 1965) (Where
applicant claims an alloy comprising both nitrogen and
molybdenum, an affidavit showing applicant made an alloy
comprising nitrogen but not molybdenum is not sufficient
under 37 CFR 1.131 to overcome a rejection under 35 U.S.C.
103  based  on  the  combined  teachings  of  one  reference
disclosing an alloy comprising nitrogen but not molybdenum
and  a  second  reference  disclosing  an  alloy  comprising
molybdenum but not nitrogen). Note, however, where the
differences between the claimed invention and the disclosure
of the reference(s) are so small as to render the claims
obvious over the reference(s), an affidavit or declaration
under 37 CFR 1.131 is required to show no more than the
reference shows.  In re Stryker , 168 USPQ 372 (CCPA 1971).
In other words, where the examiner, in rejecting a claim
under 35 U.S.C. 103, has treated a claim limitation as being
an obvious feature or modification of the disclosure of the
reference(s) relied upon, without citation of a reference
which teaches such feature or modification, a 37 CFR 1.131
affidavit or declaration **> may be sufficient< to overcome
the rejection **> even if< it does not show such feature or
modification.

  Further, ** a 37 CFR 1.131 affidavit is not insufficient
merely because it does not show the identical disclosure of
the reference(s) relied upon. If the affidavit contains
facts showing a completion of the invention commensurate
with the extent >of< the invention as claimed is shown in
the reference, the affidavit or declaration is sufficient,
whether or not it is a showing of the identical disclosure
of the reference. In re Wakefield , 422 F.2d 897, 164 USPQ
636 (CCPA 1970).

  Even if applicant's 37 CFR 1.131 affidavit is not fully
commensurate with the rejected claim, the applicant can
still overcome the rejection by showing that the differences
between the claimed invention and the showing under 37 CFR
1.131 would have been obvious to one of ordinary skill in
the art, in view of applicant's 37 CFR 1.131 evidence, prior
to the effective date of the reference(s). Such evidence is
sufficient because applicant's possession of what is shown
carries with it possession of variations and adaptations
which would have been obvious, at the same time, to one of
ordinary  skill  in  the  art.  However,  the  affidavit  or
declaration showing must still establish possession of the
invention (i.e., the basic inventive concept) and not just

of  what  one  reference  (in  a  combination  of  applied
references) happens to show, if that reference does not
itself teach the basic inventive concept. In re Spiller ,
500 F.2d 1170, 182 USPQ 614 (CCPA 1974) (Claimed invention
was  use  of  electrostatic  forces  to  adhere  dry  starch
particles to a wet paper web on the Fourdrinier wire of a
paper - making machine. 37 CFR 1.131 affidavit established
use of electrostatic forces to adhere starch particles to
wet blotting paper moved over a fluidized bed of starch
particles prior to the applied reference date. Affidavit was
sufficient in view of prior art reference showing that
deposition of dry coatings directly on wet webs on the
Fourdrinier wire of a paper - making machine was well known
in the art prior to the date of the applied reference. The
affidavit established possession of the basic invention,
i.e., use of electrostatic forces to adhere starch to wet
paper.).

  SWEARING BEHIND ONE OF A PLURALITY OF COMBINED REFERENCES

  Applicant may overcome a 35 U.S.C. 103 rejection based
on a combination of references by showing completion of the
invention by applicant prior to the effective date of any of
the references; applicant need not antedate the reference
with the earliest filing date. However, as discussed above,
applicant's 37 CFR 1.131 affidavit must show possession of
either the whole invention as claimed or something falling
within the claim(s) prior to the effective date of the
reference being antedated; it is not enough merely to show
possession of what the reference happens to show if the
reference does not teach the basic inventive concept.

  Where a claim has been rejected under 35 U.S.C. 103
based on Reference A in view of Reference B, with the
effective date of secondary Reference B being earlier than
that of Reference A, the applicant can rely on the teachings
of Reference B to show that the differences between what is
shown in his or her 37 CFR 1.131 affidavit or declaration
and the claimed invention would have been obvious to one of
ordinary skill in the art prior to the date of Reference A.
However, the 37 CFR 1.131 affidavit or declaration must
still establish possession of the claimed invention, not
just what Reference A shows, if Reference A does not teach
the basic inventive concept.

  GENERAL RULE AS TO GENERIC CLAIMS

  A reference applied against generic claims may (in most
cases) be antedated as to such claims by an affidavit or
declaration under 37 CFR 1.131 showing completion of the
invention of only a single species, within the genus, prior
to the effective date of the reference (assuming, of course,
that the reference is not a statutory bar or a patent
claiming the same invention). See Ex parte Biesecker, 144
USPQ 129 (Bd. App. 1964). See, also, In re Fong, 288 F.2d
932, 129 USPQ 264 (CCPA 1961); In re Defano, 392 F.2d 280,
157 USPQ 192 (CCPA 1968) (distinguishing chemical species of
genus compounds from embodiments of a single invention).
See, however, MPEP § 715.03 for practice relative to cases
in unpredictable arts.

715.03  Genus - Species, Practice Relative to Cases Where
Predictability Is in Question [R - 1]

  >Where generic claims have been rejected on a reference

which discloses a species not antedated by the affidavit or
declaration, the rejection will not ordinarily be withdrawn,
subject to the rules set forth below, unless the applicant
is able to establish that he or she was in possession of the
generic  invention  prior  to  the  effective  date  of  the
reference. In other words, the affidavit or declaration
under 37 CFR 1.131 must show as much as the minimum
disclosure required by a patent specification to furnish
support for a generic claim.

  REFERENCE DISCLOSES SPECIES

  Species Claim

  Where the claim under rejection recites a species and
the reference discloses the claimed species, the rejection
can be overcome under 37 CFR 1.131 directly by showing prior
completion of the claimed species or indirectly by a showing
of prior completion of a different species coupled with a
showing that the claimed species would have been an obvious
modification of the species completed by applicant. See In
re Spiller , 500 F.2d 1170, 182 USPQ 614 (1974).

  Genus Claim

  The principle is well established that the disclosure of
a species in a cited reference is sufficient to prevent a
later applicant from obtaining a "generic claim." In re
Gosteli , 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989);
In re Slayter , 276 F.2d 408, 125 USPQ 345 (CCPA 1960).

  Where the only pertinent disclosure in the reference is
a single species of the claimed genus, the applicant can
overcome the rejection directly under 37 CFR 1.131 by
showing prior possession of the species disclosed in the
reference. On the other hand, a reference which discloses
several species of a claimed genus can be overcome directly
under 37 CFR 1.131 only by a showing that the applicant
completed, prior to the date of the reference, all of the
species shown in the reference. In re tempel , 113 USPQ 77
(CCPA 1957).

  Proof of prior completion of a species different from
the reference species will be sufficient to overcome a
reference indirectly under 37 CFR 1.131 if the reference
species would have been obvious in view of the species shown
to have been made by the applicant. In re Clarke , 148 USPQ
665 (CCPA 1966);  In re Plumb , 176 USPQ 323 (CCPA 1973);
In re Hostettler , 356 F.2d 562, 148 USPQ 514 (CCPA 1966).
Alternatively, if the applicant cannot show possession of
the reference species in this manner, the applicant may be
able to antedate the reference indirectly by, for example,
showing prior completion of one or more species which put
him or her in possession of the claimed genus prior to the
reference date. The test is whether the species completed by
applicant prior to the reference date provided an adequate
basis  for  inferring  that  the  invention  has  generic
applicability.  In re Shokal , 242 F.2d 771, 113 USPQ 283
(CCPA 1957);  In re Rainer , 390 F.2d 771, 156 USPQ 334
(CCPA 1968);  In re Clarke , 148 USPQ 665 (CCPA 1966);  In
re Plumb , 176 USPQ 323 (CCPA 1973).

  It is not necessary for the affidavit evidence to show
that  the  applicant  viewed  his  or  her  invention  as
encompassing more than the species ** actually made. The

test is whether the facts set out in the affidavit are such
as would persuade one skilled in the art that the applicant
possessed so much of the invention as is shown in the
reference. In re Schaub , 537 F.2d 509, 190 USPQ 324 (CCPA
1976).

  Species Versus Embodiments

  References which disclose one or more embodiments of a
single claimed invention, as opposed to species of a claimed
genus, can be overcome by filing a 37 CFR 1.131 affidavit
showing prior completion of a single embodiment of the
invention, whether it is the same or a different embodiment
from that disclosed in the reference. See In re Fong , 288
F.2d  932,  129  USPQ  264  (CCPA  1961)  (Where  applicant
discloses  and  claims  a  washing  solution  comprising  a
detergent  and  polyvinylpyrrolidone  (PVP),  with  no
criticality alleged as to the particular detergent used, the
PVP being used as a soil - suspending agent to prevent the
redeposition of the soil removed, the invention was viewed
as the use of PVP as a soil - suspending agent in washing
with a detergent. The disclosure in the reference of the use
of PVP with two detergents, both of which differed from that
shown in applicant's 37 CFR 1.131 affidavit, was considered
a disclosure of different embodiments of a single invention,
rather than species of a claimed genus);  In re Defano , 392
F.2d 280, 157 USPQ 192 (CCPA 1968).

  REFERENCE DISCLOSES CLAIMED GENUS

  In general, where the reference discloses the claimed
genus, a showing of completion of a single species within
the genus is sufficient to antedate the reference under 37
CFR 1.131. Ex parte Biesecker , 144 USPQ 129 (Bd. App.
1964).

  In cases where predictability is in question, on the
other hand, a showing of prior completion of one or a few
species  within  the  disclosed  genus  is  generally  not
sufficient to overcome the reference. In re Shokal , 242
F.2d 771, 113 USPQ 283 (CCPA 1957). The test is whether the
species completed by applicant prior to the reference date
provided an adequate basis for inferring that the invention
has generic applicability.  In re Clarke , 356 F.2d 987, 148
USPQ 665 (CCPA 1965);  In re Rainer , 390 F.2d 771, 156 USPQ
334 (CCPA 1968);  In re DeFano , 392 F.2d 280, 157 USPQ 192
(CCPA 1968);  In re Mantell,454 F.2d 1398, 172 USPQ 530
(CCPA 1973). In the case of a small genus such as the
halogens, which consists of four species, a reduction to
practice of three, or perhaps even two, species might show
possession of the generic invention, while in the case of a
genus comprising hundreds of species, reduction to practice
of  a  considerably  larger  number  of  species  would  be
necessary.  In re Shokal, supra .

  It is not necessary for the affidavit evidence to show
that  the  applicant  viewed  his  or  her  invention  as
encompassing more than the species he or she actually made.
The test is whether the facts set out in the affidavit are
such as would persuade one skilled in the art that the
applicant possessed so much of the invention as is shown in
the reference. In re Schaub , 537 F. 509, 190 USPQ 324 (CCPA
1976).

715.04  Who May Make Affidavit or Declaration; Formal

Requirements of Affidavits and Declarations [R - 1]

  >WHO MAY MAKE AFFIDAVIT OR DECLARATION

 (A) All the inventors of the subject matter claimed.

 (B) An affidavit or declaration by less than all
named inventors of an application is accepted where it is
shown that less than all named inventors of an application
invented the subject matter of the claim or claims under
rejection. For example, one of two joint inventors is
accepted where it is shown that one of the joint inventors
is the sole inventor of the claim or claims under rejection.

 (C) The assignee or other party in interest when it
is not possible to produce the affidavit or declaration of
the inventor. Ex parte Foster , 1903 C.D. 213, 105 O.G. 261
(Comm'r Pat. 1903).

  Affidavits or declarations to overcome a rejection of a
claim or claims on a cited patent or publication must be
made by the inventor or inventors of the subject matter of
the rejected claim(s) or the assignee or other party in
interest when it is not possible to produce the affidavit or
declaration of the inventor(s). Thus, where all of the named
inventors of a pending application are not inventors of
every claim of the application, any affidavit under 37 CFR
1.131 could be signed by only the inventor(s) of the subject
matter of the rejected claims. Further, where it is shown
that a joint inventor is deceased, refuses to sign, or is
otherwise unavailable, the signatures of the remaining joint
inventors  are  sufficient.  However,  the  affidavit  or
declaration, even though signed by fewer than all the joint
inventors, must show completion of the invention by all of
the joint inventors of the subject matter of the claim(s)
under rejection. In re Carlson , 79 F.2d 900, 27 USPQ 400
(CCPA 1935).

  FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS

  An affidavit is a statement in writing made under oath
before a notary public, magistrate, or officer authorized to
administer oaths. See MPEP § 604 through § 604.06 for
additional  information  regarding  formal  requirements  of
affidavits.

  37 CFR 1.68 permits a declaration to be used instead of
an affidavit. The declaration must include an acknowledgment
by the declarant that willful false statements and the like
are punishable by fine or imprisonment, or both (18 U.S.C.
1001) and may jeopardize the validity of the application or
any patent issuing thereon. The declarant must set forth in
the body of the declaration that all statements made of the
declarant's own knowledge are true and that all statements
made on information and belief are believed to be true.<

715.05  Patent Claiming Same Invention [R - 3]

  When the reference in question is a noncommonly owned
patent claiming the same invention as applicant and its
issue date is less than one year prior to the filing date of
the application being examined, applicant's remedy, if any,
must be by way of 37 CFR 1.608 instead of 37 CFR 1.131. The
examiner should therefore take note whether the status of
the patent as a reference is that of a PATENT or a

PUBLICATION. If the patent is claiming the same invention as
the application, this fact should be noted in the Office
action. The reference patent can then be overcome only by
way of interference. Note, however, 35 U.S.C. 135 and MPEP §
2300.01.

 **>Where the reference patent and the application or patent
under reexamination are commonly owned, and the inventions
defined by the claims in the application or patent under
reexamination and by the claims in the patent are not
identical  but  are  not  patentably  distinct,  a  terminal
disclaimer and an affidavit or declaration under 37 CFR
1.130 may be used to overcome a rejection under 35 U.S.C.
103. See MPEP § 718.<

  A 37 CFR 1.131 affidavit is ineffective to overcome a
United States patent, not only where there is a verbatim
correspondence between claims of the application and of the
patent, but also where there is no patentable distinction
between the respective claims. In re Hidy , 303 F.2d 954,
133 USPQ 650 (CCPA 1962);  In re Wagenhorst , 20 CCPA 829,
62 F.2d 831, 16 USPQ 126 (CCPA 1933);  In re Teague , 254
F.2d 145, 117 USPQ 284 (CCPA 1958);  In re Clark , 457 F.2d
1004, 173 USPQ 359 (CCPA 1972);  In re Ward , 236 F.2d 428,
111 USPQ 101 (CCPA 1956).

  If the application (or patent under reexamination) and
the domestic patent contain claims which are identical, or
which are not patentably distinct, then the application and
patent are claiming the "same patentable invention," defined
by 37 CFR 1.601(n) as follows:

  Invention "A" is the "same patentable invention" as an
invention "B" when invention "A" is the same as (35 U.S.C.
102) or is obvious (35 U.S.C. 103) in view of invention "B"
assuming  invention  "B"  is  prior  art  with  respect  to
invention "A."

  As provided in 37 CFR 1.601(i), an interference may be
declared whenever an examiner is of the opinion that an
application and a patent contain claims for the "same
patentable invention." An applicant who is claiming an
invention which is identical to, or obvious in view of, the
invention as claimed in a domestic patent cannot employ an
affidavit under 37 CFR 1.131 as a means for avoiding an
interference with the patent. To allow an applicant to do so
would result in the issuance of two patents to the same
invention.

  Since 37 CFR 1.131 defines "same patentable invention"
in the same way as the interference rules (37 CFR 1.601(n),
the PTO cannot prevent an applicant from overcoming a
reference by a 37 CFR 1.131 affidavit or declaration on the
grounds  that  the  reference  domestic  patent  claims
applicant's invention and, at the same time, deny applicant
an interference on the grounds that the claims of the
application and those of the reference patent are not for
substantially the same invention. See In re Eickmeyer , 602
F.2d 974, 202 USPQ 655 (CCPA 1979). Where, in denying an
applicant's motion in interference to substitute a broader
count, it is held that the limitation to be deleted was
material for the opponent patentee, this constitutes a
holding that the proposed count is for an invention which is
not the "same patentable invention" claimed by the patentee.
Therefore,  the  applicant  may  file  an  affidavit  or

declaration under 37 CFR 1.131 to overcome a prior art
rejection based on the patent.  Adler v.  Kluver , 159 USPQ
511 (Bd. Pat. Int. 1968).

  Form paragraph 7.58 (reproduced in MPEP § 715) may be
used to note such a situation in the Office action.

715.07  Facts and Documentary Evidence [R - 2]

  GENERAL REQUIREMENTS

  The essential thing to be shown under 37 CFR 1.131 is
priority  of  invention  and  this  may  be  done  by  any
satisfactory evidence of the fact. FACTS, not conclusions,
must be alleged **>. Evidence< in the form of exhibits *>
may accompany< the affidavit or declaration. Each exhibit
relied upon should be specifically referred to in the
affidavit or declaration, in terms of what it is relied upon
to show. For example, the allegations of fact might be
supported by submitting as evidence one or more of the
following:

 (1) attached sketches;

 (2) attached blueprints;

 (3) attached photographs;

 (4) attached reproductions of notebook entries;

 (5) an accompanying model;

 (6) attached supporting statements by witnesses,
where verbal disclosures are the evidence relied upon, Ex
parte Ovshinsky , 10 USPQ2d 1075 (Bd. Pat. App. & Inter.
1989).

 (7)  testimony  given  in  an  interference.  Where
interference testimony is used, the applicant must point out
which parts of the testimony are being relied on; examiners
cannot be expected to search the entire interference record
for the evidence. Ex parte Homan , 1905 C.D. 288 (Comm'r
Pat. 1905).

 (8) Disclosure documents (MPEP § 1706) may be used
as documentary evidence of conception.

  A general allegation that the invention was completed
prior to the date of the reference is not sufficient. Ex
parte Saunders , 1883 C.D. 23, 23 O.G. 1224 (Comm'r Pat.
1883). Similarly, a declaration by the inventor to the
effect that his or her invention was conceived or reduced to
practice prior to the reference date without a statement of
facts demonstrating the correctness of this conclusion, is
insufficient to satisfy 37 CFR 1.131.

  ** 37 CFR 1.131(b) requires that original exhibits of
drawings or records, or photocopies thereof, accompany and
form part of the affidavit or declaration or their absence
satisfactorily explained.

  If the applicant made sketches he should so state, and
produce and describe them; if the sketches were made and
lost,  and  their  contents  remembered,  they  should  be
reproduced and furnished in place of the originals. The same

course should be pursued if the disclosure was by means of
models. If neither sketches nor models are relied upon, but
it is claimed that verbal disclosures, sufficiently clear to
indicate definite conception of the invention, were made the
witness should state as nearly as possible the language used
in imparting knowledge of the invention to others.

 Ex parte Donovan , 1890 C.D. 109, 52 O.G. 309 (Comm'r Pat.
1890).

  However, when reviewing a 37 CFR 1.131 affidavit or
declaration, the examiner must consider all of the evidence
presented in its entirety, including the affidavits or
declarations and all accompanying exhibits, records and
"notes."  An  accompanying  exhibit  need  not  support  all
claimed limitations, provided that any missing limitation is
supported by the declaration itself. Ex parte Ovshinsky , 10
USPQ2d 1075 (Bd. Pat. App. & Inter. 1989).

  The affidavit or declaration and exhibits must clearly
explain which facts or data applicant is relying on to show
completion of his or her invention prior to the particular
date. Vague and general statements in broad terms about what
the exhibits describe along with a general assertion that
the exhibits describe a reduction to practice "amounts
essentially to mere pleading, unsupported by proof or a
showing  of  facts"  and,  thus,  does  not  satisfy  the
requirements of 37 CFR 1.131(b). In re Borkowski , 505 F.2d
713, 184 USPQ 29 (CCPA 1974). >Applicant must give a clear
explanation of the exhibits pointing out exactly what facts
are established and relied on by applicant.  Id . at 33; see
also  In re Harry, 333 F.2d 920, 142 USPQ 164 (CCPA 1964)
(Affidavit "asserts that facts exist but does not tell what
they are or when they occurred.").<

  ESTABLISHMENT OF DATES

  If the dates of the exhibits have been removed or
blocked off, the matter of dates can be taken care of in the
body of the oath or declaration.

  When alleging that conception or a reduction to practice
occurred prior to the effective date of the reference, the
dates in the oath or declaration may be the actual dates or,
if the applicant or patent owner does not desire to disclose
his or her actual dates, he or she may merely allege that
the acts referred to occurred prior to a specified date.
However, the actual dates of acts relied on to establish
diligence must be provided. See MPEP § 715.07(a) regarding
the diligence requirement.

  THREE WAYS TO SHOW PRIOR INVENTION

  The affidavit or declaration must state FACTS and
produce such documentary evidence and exhibits in support
thereof as are available to show conception and completion
of invention in this country or in a NAFTA or WTO member
country (MPEP § 715.07(c)), at least the conception being at
a date prior to the effective date of the reference. Where
there has not been reduction to practice prior to the date
of the reference, the applicant or patent owner must also
show diligence in the completion of his or her invention
from a time just prior to the date of the reference
continuously up to the date of an actual reduction to
practice or up to the date of filing his or her application

(filing constitutes a constructive reduction to practice, 37
CFR 1.131).

  As discussed above, 37 CFR 1.131(b) provides three ways
in which an applicant can establish prior invention of the
claimed  subject  matter.  The  showing  of  facts  must  be
sufficient to show:

 (1) reduction to practice of the invention prior to
the effective date of the reference; or

 (2)  conception  of  the  invention  prior  to  the
effective date of the reference coupled with due diligence
from prior to the reference date to a subsequent (actual)
reduction to practice; or

 (3)  conception  of  the  invention  prior  to  the
effective date of the reference coupled with due diligence
from prior to the reference date to the filing date of the
application (constructive reduction to practice).

  A conception of an invention, though evidenced by
disclosure, drawings, and even a model, is not a complete
invention under the patent laws, and confers no rights on an
inventor, and has no effect on a subsequently granted patent
to another, UNLESS THE INVENTOR FOLLOWS IT WITH REASONABLE
DILIGENCE BY SOME OTHER ACT, such as an actual reduction to
practice or filing an application for a patent. Automatic
Weighing Mach. Co. v.  Pneumatic Scale Corp., Limited , 166
F.2d 288, 1909 C.D. 498, 139 O.G. 991 (1st Cir. 1909).

  Conception is the mental part of the inventive act, but
it must be capable of proof, as by drawings, complete
disclosure  to  another  person,  etc.  In  Mergenthaler  v.
Scudder , 1897 C.D. 724, 81 O.G. 1417 (D.C. Cir. 1897), it
was established that conception is more than a mere vague
idea of how to solve a problem; the means themselves and
their interaction must be comprehended also.

  In general, proof of actual reduction to practice
requires a showing that the apparatus actually existed and
worked for its intended purpose. However, "there are some
devices so simple that a mere construction of them is all
that is necessary to constitute reduction to practice." In
re Asahi/America Inc. , 94 - 1249 (Fed. Cir. 1995) (Citing
Newkirk v.  Lulegian , 825 F.2d 1581, 3USPQ2d 1793 (Fed.
Cir. 1987) and  Sachs v.  Wadsworth , 48 F.2d 928, 929, 9
USPQ 252, 253 (CCPA 1931). The claimed restraint coupling
held to be so simple a device that mere construction of it
was  sufficient  to  constitute  reduction  to  practice.
Photographs, coupled with articles and a technical report
describing the coupling in detail were sufficient to show
reduction to practice.).

  The facts to be established under 37 CFR 1.131 are
similar  to  those  to  be  proved  in  interference.  The
difference  lies  in  the  way  in  which  the  evidence  is
presented. If applicant disagrees with a holding that the
facts are in sufficient to overcome the rejection, his
remedy is by appeal from the continued rejection.

  See MPEP § 2138.04 through § 2138.06 for a detailed
discussion  of  the  concepts  of  conception,  reasonable
diligence, and reduction to practice.

  For the most part, the terms "conception," "reasonable
diligence,"  and  "reduction  to  practice"  have  the  same
meanings under 37 CFR 1.131 as they have in interference
proceedings. However, in In re Eickmeyer , 602 F.2d 974, 202
USPQ 655 (CCPA 1979), the court stated the following:

 The purpose of filing a [37 CFR 1.]131 affidavit is not to
demonstrate prior invention, per se, but merely to antedate
the effective date of a reference. See In re Moore , 58 CCPA
1340, 444 F.2d 572, 170 USPQ 260 (1971). Although the test
for sufficiency of an affidavit under Rule 131(b) parallels
that  for  determining  priority  of  invention  in  an
interference under 35 U.S.C. 102(g), it does not necessarily
follow that Rule 131 practice is controlled by interference
law.  To  the  contrary,  "[t]he  parallel  to  interference
practice found in Rule 131(b) should be recognized as one of
convenience rather than necessity."  Id . at 1353, 444 F.2d
at 580, 170 USPQ at 267. Thus, "the `conception' and
`reduction to practice' which must be established under the
rule need not be the same as what is required in the
`interference' sense of those terms."  Id .; accord,  In re
Borkowski , 505 F.2d 713, 718 - 19, 184 USPQ 29, 33 (CCPA
1974).

  One difference is that in interference practice a
reduction to practice requires a proof that a utility was
known, whereas under 37 CFR 1.131 practice, proof of a
utility must be shown only if the reference discloses a
utility. In re Wilkinson , 304 F.2d 673, 134 USPQ 171 (CCPA
1962);  In re Moore , 444 F.2d 572, 170 USPQ 260 (CCPA
1971). Where proof of utility is required, whether or not
test results are required to establish the utility of the
subject matter in question depends on the facts of each
case. The ultimate issue is whether the evidence is such
that one of ordinary skill in the art would be satisfied to
a reasonable certainty that the subject matter necessary to
antedate the reference possessed the alleged utility.  In re
Blake , 358 F.2d 149 USPQ 217 (CCPA 1966). Also, in
interference practice, conception, reasonable diligence, and
reduction  to  practice  require  corroboration,  whereas
averments made in a 37 CFR 1.131 affidavit or declaration do
not require corroboration; an applicant may stand on his own
affidavit or declaration if he so elects.  Ex parte Hook ,
102 USPQ 130 (Bd. App. 1953).

  Form Paragraph 7.59 or 7.63 (both reproduced in MPEP §
715) may be used where insufficient evidence is included in
a 37 CFR 1.131 affidavit.

715.07(a)  Diligence [R - 1]

  >Where conception occurs prior to the date of the
reference, but reduction to practice is afterward, it is not
enough merely to allege that applicant or patent owner had
been diligent. Ex parte Hunter , 1889 C.D. 218, 49 O.G. 733
(Comm'r Pat. 1889). Rather, applicant must show evidence of
facts establishing diligence.

  In determining the sufficiency of a 37 CFR 1.131
affidavit or declaration, diligence need not be considered
unless conception of the invention prior to the effective
date is clearly established, since diligence comes into
question only after prior conception is established. Ex
parte Kantor , 177 USPQ 455 (Bd. App. 1958).

  What is meant by diligence is brought out in Christie v.
Seybold , 1893 C.D. 515, 64 O.G. 1650 (6th Cir. 1893). In
patent law, an inventor is either diligent at a given time
or he is not diligent; there are no degrees of diligence. An
applicant may be diligent within the meaning of the patent
law when he or she is doing nothing, if his or her lack of
activity is excused. Note, however, that the record must set
forth an explanation or excuse for the inactivity; the PTO
or courts will not speculate on possible explanations for
delay or inactivity. See  In re Nelson , 420 F.2d 1079, 164
USPQ 458 (CCPA 1970). Diligence must be judged on the basis
of the particular facts in each case. See MPEP § 2138.06 for
a detailed discussion of the diligence requirement for
proving prior invention.

  Under 37 CFR 1.131, the critical period in which
diligence must be shown begins just prior to the effective
date of the reference and ends with the date of a reduction
to practice, either actual or constructive (i.e., filing a
United States patent application). Note, therefore, that
only diligence before reduction to practice is a material
consideration. The "lapse of time between the completion or
reduction to practice of an invention and the filing of an
application thereon" is not relevant to an affidavit or
declaration under 37 CFR 1.131. See Ex parte Merz , 75 USPQ
296 (Bd. App. 1947).

  Form Paragraph 7.62 (reproduced in MPEP § 715) may be
used to respond to a 37 CFR 1.131 affidavit where diligence
is lacking.<

715.07(b)  Interference Testimony Sometimes Used [R - 1]

  >In place of an affidavit or declaration the testimony
of the applicant in an interference may be sometimes used to
antedate a reference in lieu of 37 CFR 1.131 affidavit or
declaration.

  The part of the testimony to form the basis of priority
over the reference should be pointed out. Ex parte Bowyer ,
1939 C.D. 5, 42 USPQ 526 (Comm'r Pat. 1939).<

715.07(c)  Acts Relied Upon Must Have Been Carried Out
in This Country or a NAFTA or WTO Member Country [R - 1]

 >35 U.S.C. 104.  Invention Made Abroad

 In proceedings before the Patent and Trademark Office and
in the courts, an applicant for a patent, or a patentee, may
not establish a date of invention by reference to knowledge
or use thereof, or other activity with respect thereto, in a
foreign country other than a NAFTA country or a WTO member
country, except as provided in sections 119 and 365 of this
title. Where an invention was made by a person, civil or
military, while domiciled in the United States and serving
in a foreign country in connection with operations by or on
behalf of the United States, he shall be entitled to the
same rights of priority with respect to such invention as if
the same had been made in the United States.

  The 37 CFR 1.131 affidavit or declaration must contain
an allegation that the acts relied upon to establish the
date prior to the reference were carried out in this country
or in a NAFTA country or WTO member country. See 35 U.S.C.
104.

  Under  37  CFR  1.131(a),  which  provides  for  the
establishment of a date of completion of the invention in a
NAFTA or WTO member country, as well as in the United
States, an applicant can establish a date of completion in a
NAFTA member country on or after December 8, 1993, the
effective date of section 331 of Public Law 103 - 182, the
North American Free Trade Agreement Act, and can establish a
date of completion in a WTO member country other than a
NAFTA member country on or after January 1, 1996, the
effective date of section 531 of Public Law 103 - 465, the
Uruguay Round Agreements Act. Acts occurring prior to the
effective dates of NAFTA or URAA may be relied upon to show
completion of the invention; however, a date of completion
of the invention may not be established under 37 CFR 1.131
before December 8, 1993 in a NAFTA country or before January
1, 1996 in a WTO country other than a NAFTA country.<

715.07(d)  Disposition of Exhibits [R - 1]

  >Exhibits, such as those filed as part of an affidavit
or declaration under 37 CFR 1.131, that are too bulky to be
placed in the application file are retained in the examining
group until the case is finally disposed of. When the case
goes to issue (or abandonment) the exhibits are returned or
otherwise disposed of. See MPEP § 608.03(a).<

715.08  Passed Upon by Primary Examiner [R - 1]

  >The  question  of  sufficiency  of  affidavits  or
declarations under 37 CFR 1.131 should be reviewed and
decided by a primary examiner.

  Review of questions of formal sufficiency and propriety
are by petition. Such petitions are answered by the Group
Directors (MPEP § 1002.02(c), item 4(e)).

  Review on the merits of 37 CFR 1.131 affidavit or
declaration is by appeal to the Board of Patent Appeals and
Interferences.<

715.09  Seasonable Presentation [R - 1]

  >Affidavits or declarations under 37 CFR 1.131 must be
timely presented in order to be admitted. Affidavits and
declarations submitted under 37 CFR 1.131 and other evidence
traversing rejections are considered timely if:

 (a) submitted prior to a final rejection,

 (b) submitted before appeal in an application not
having a final rejection, or

 (c) submitted after final rejection and submitted

 (i) with a first response after final rejection for
the purpose of overcoming a new ground of rejection or
requirement made in the final rejection, or

 (ii)  with  a  satisfactory  showing  under  37  CFR
1.116(b) or 37 CFR 1.195, or

 (iii) under 37 CFR 1.129(a).

  All  admitted  affidavits  and  declarations  are

acknowledged and commented upon by the examiner in his or
her next succeeding action.

  For affidavits or declarations under 37 CFR 1.131 filed
after appeal, see 37 CFR 1.195 and MPEP § 1212.

  Review of an examiner's refusal to enter an affidavit as
untimely is by petition and not by appeal to the Board of
Appeals. In re Deters , 515 F.2d 1152, 185 USPQ 644 (CCPA
1975);  Ex parte Hale , 49 USPQ 209 (Bd. App. 1941). See
MPEP § 715.08 regarding review of questions of propriety of
37 CFR 1.131 affidavits and declarations.<

715.10  Review of Affidavit or Declaration for Evidence of
Prior Public Use or Sale or Failure to Disclose Best Mode [R
- 1]

  >Any affidavits or declarations submitted under 37 CFR
1.131  and  the  accompanying  evidence  must  be  reviewed
carefully by the examiner in order to determine whether they
show that the claimed invention was "in public use" or "on
sale" in this country more than one year prior to the
effective  filing  date  of  the  application,  which  acts
constitute a statutory bar under 35 U.S.C. 102(b). Although
the  rejection  based  on  the  reference(s)  sought  to  be
antedated may actually be overcome by such an affidavit or
declaration, the effect of the applicant's prior "public
use" or "on sale" activities may not be overcome under 37
CFR 1.131. See MPEP § 2133.03 regarding rejections based on
"public use" and "on sale" statutory bars.

  Where the 37 CFR 1.131 evidence relies on an embodiment
of the invention not disclosed in the application, the
question of whether the application includes the "best mode"
must be considered. However, a "best mode" rejection should
not be made unless the record, taken as a whole, establishes
by  a  preponderance  of  the  evidence  that  applicant's
specification has not set forth the best mode contemplated
by the inventor of carrying out the invention. See MPEP §
2165 - § 2165.04 regarding the best mode requirement of the
first paragraph of 35 U.S.C. 112.<

716  Affidavits or Declarations Traversing Rejections,
37 CFR 1.132 [R - 3]

 37 CFR 1.132.  Affidavits or declarations traversing
grounds of rejection.

  **>When any claim of an application or a patent under
reexamination is rejected on reference to a U.S. patent
which substantially shows or describes but does not claim
the same patentable invention, as defined in § 1.601(n), on
reference to a foreign patent, on reference to a printed
publication, or on reference to facts within the personal
knowledge of an employee of the Office, or when rejected
upon a mode or capability of operation attributed to a
reference, or because the alleged invention is held to be
inoperative, lacking in utility, frivolous, or injurious to
public  health  or  morals,  affidavits  or  declarations
traversing these references or objections may be received.<

  It is the responsibility of the primary examiner to
personally  review  and  decide  whether  affidavits  or
declarations submitted under 37 CFR 1.132 for the purpose of
traversing grounds of rejection, are responsive to the

rejection and present sufficient facts to overcome the
rejection.

  This rule sets forth the general policy of the Office
consistently followed for a long period of time of receiving
affidavit evidence traversing rejections or objections. The
enumeration of rejections in the rule is merely exemplary.
All affidavits or declarations presented which do not fall
within or under other specific rules are to be treated or
considered as falling under this rule.

  Form Paragraph 7.65 or 7.66>and any of form paragraphs
7.66.01 through 7.66.05, as appropriate,< should be used to
comment on a 37 CFR 1.132 affidavit or declaration.

¶ 7.65  Affidavit  or  Declaration  Under  37  CFR  1.132,
Effective To Withdraw Rejection

 The [1] under 37 CFR 1.132 filed [2] is sufficient to
overcome the rejection of claim [3] based upon [4].

 Examiner Note:

  1.  In  bracket  1,  insert  either  "affidavit"  or
"declaration".

 2. In bracket 2, insert the filing date of the affidavit or
declaration.

 3. In bracket 3, insert the affected claim or claims.

 4. In bracket 4, indicate the rejection that has been
overcome,  including  the  statutory  grounds;  i.e.,
insufficiency of disclosure under 35 U.S.C. 112, first
paragraph;  lack  of  utility  under  35  U.S.C.  101,
inoperativeness under 35 U.S.C. 101; a specific reference
applied under 35 U.S.C. 103, etc. See MPEP § 716.

¶ 7.66  Affidavit  or  Declaration  Under  37  CFR  1.132,
Insufficient

 The [1] under 37 CFR 1.132 filed [2] is insufficient to
overcome the rejection of claim[3] based upon [4] as set
forth in the last Office action because *>:<

 Examiner Note:

  1.  In  bracket  1,  insert  either  "affidavit"  or
"declaration".

 2. In bracket 2, insert the filing date of the affidavit or
declaration.

 3. In bracket 3, insert the claim or claims affected.

 4. In bracket 4, indicate the rejection that has been
overcome,  including  the  statutory  grounds;  i.e.,
insufficiency of disclosure under 35 U.S.C. 112, first
paragraph, lack of utility >and/or inoperativeness< under 35
U.S.C. 101,** a specific reference applied under 35 U.S.C.
103, etc. See MPEP § 716.

 5. **>Following this form paragraph,<, set forth the
reasons for the insufficiency; e.g., categories include:
"untimely", "fails to set forth facts", "facts presented are

not germane to the rejection at issue", "showing is not
commensurate in scope with the claims", etc. See MPEP § 716.
Also include a detailed explanation of the reasons why the
affidavit or declaration is insufficient. >Any of form
paragraphs 7.66.01 - 7.66.05 may be used as appropriate.

¶ 7.66.01  Reason Why Affidavit or Declaration Under 37
CFR 1.132 Is Insufficient: Affiant Has Never Seen Invention
Before

 It includes statements which amount to an affirmation that
the affiant has never seen the claimed subject matter
before. This is not relevant to the issue of nonobviousness
of the claimed subject matter and provides no objective
evidence thereof. See MPEP § 716.

 Examiner Note:

 1. This form paragraph must be preceded by form paragraph
7.66.

 2. A full explanation must be provided, if appropriate.

¶ 7.66.02  Reason Why Affidavit or Declaration Under 37
CFR 1.132 Is Insufficient: Invention Works as Intended

 It includes statements which amount to an affirmation that
the claimed subject matter functions as it was intended to
function.  This  is  not  relevant  to  the  issue  of
nonobviousness of the claimed subject matter and provides no
objective evidence thereof. See MPEP § 716.

 Examiner Note:

 1. This form paragraph must be preceded by form paragraph
7.66.

 2. A full explanation must be provided, if appropriate.

¶ 7.66.03  Reason Why Affidavit or Declaration Under 37
CFR 1.132 Is Insufficient: Refers Only To Invention, Not To
Claims

 It refers only to the system described in the above
referenced application and not to the individual claims of
the application. As such the declaration does not show that
the objective evidence of nonobviousness is commensurate in
scope with the claims. See MPEP § 716.

 Examiner Note:

 1. This form paragraph must be preceded by form paragraph
7.66.

 2. A full explanation must be provided, if appropriate.

¶ 7.66.04  Reason Why Affidavit or Declaration Under 37
CFR 1.132 Is Insufficient: No Evidence of Long - Felt Need

 It states that the claimed subject matter solved a problem
that was long standing in the art. However, there is no
showing that others of ordinary skill in the art were
working on the problem and if so, for how long. In addition,
there is no showing that persons skilled in the art who were
presumably working on the problem knew of the teachings of

the above cited references and still were unable to solve
the problem. See MPEP § 716.04.

 Examiner Note:

 1. This form paragraph must be preceded by form paragraph
7.66.

 2. A full explanation must be provided, if appropriate.

¶ 7.66.05  Reason Why Affidavit or Declaration Under 37
CFR 1.132 Is Insufficient: Conclusion

 In view of the foregoing, when all of the evidence is
considered,  the  totality  of  the  rebuttal  evidence  of
nonobviousness  fails  to  outweigh  the  evidence  of
obviousness.

 Examiner Note:

 This form paragraph should be presented as a conclusion to
your explanation of why the affidavit or declaration under
37 CFR 1.132 is insufficient, and it must be preceded by
form paragraph 7.66.<

716.01  Generally Applicable Criteria [R - 2]

  The following criteria are applicable to all evidence
traversing rejections submitted by applicants, including
affidavits or declarations submitted under 37 CFR 1.132:

  (1)  Timeliness

  Evidence  traversing  rejections  must  be  timely  or
seasonably  filed  to  be  entered  and  entitled  to
consideration. In re Rothermel **, 276 F.2d 393, 125 USPQ
328 (CCPA 1960).

  Affidavits and declarations submitted under 37 CFR 1.132
and other evidence traversing rejections are considered
timely if:

 (a) submitted prior to a final rejection,

 (b) submitted before appeal in an application not
having a final rejection, or

 (c) submitted after final rejection and submitted

 (i) with a first response after final rejection for
the purpose of overcoming a new ground of rejection or
requirement made in the final rejection, or

 (ii)  with  a  satisfactory  showing  under  37  CFR
1.116(b) or 37 CFR 1.195, or

 (iii) under 37 CFR 1.129(a).

  (2) Consideration of Evidence

  Evidence traversing rejections must be considered by the
examiner  whenever  present.  All  entered  affidavits,
declarations, and >other< evidence traversing rejections are
acknowledged and commented upon by the examiner in the next
succeeding action. The extent of the commentary depends on

the action taken by the examiner. Where an examiner holds
that the evidence is sufficient to overcome the prima facie
case, the comments should be consistent with the guidelines
for statements of reasons for allowance. See MPEP § 1302.14.
Where  the  evidence  is  insufficient  to  overcome  the
rejection, the examiner must specifically explain why the
evidence is insufficient. General statements such as "the
declaration lacks technical validity" or "the evidence is
not commensurate with the scope of the claims" without an
explanation supporting such findings are insufficient.

716.01(a)  Objective Evidence of Nonobviousness [R - 2]

  OBJECTIVE EVIDENCE MUST BE CONSIDERED WHENEVER PRESENT

  Affidavits or declarations *>containing< evidence of
criticality or unexpected results, commercial success, long
- felt but unsolved needs, failure of others, skepticism of
experts,  etc.,  must  be  considered  by  the  examiner  in
determining  the  issue  of  obviousness  of  claims  for
patentability under 35 U.S.C. 103. The Court of Appeals for
the Federal Circuit stated in Stratoflex, Inc. v.  Aeroquip
Corp. , 713 F.2d 1530, 218 USPQ 871, 879 (Fed. Cir. 1983)
that "evidence rising out of the so - called `secondary
considerations' must always when present be considered en
route to a determination of obviousness." Such evidence
might ** give light to circumstances surrounding the origin
of the subject matter sought to be patented. As indicia of
obviousness  or  unobviousness,  such  evidence  may  have
relevancy.  Graham v.  John Deere Co. , 383 U.S. 1, 148 USPQ
459 (1966);  In re Palmer , 451 F.2d 1100, 172 USPQ 126
(CCPA 1971);  In re Fielder and Underwood , 471 F.2d 640,
176 USPQ 300 (CCPA 1973). The  Graham v.  John Deere
pronouncements on the relevance of commercial success, etc.
to a determination of obviousness were not negated in
Sakraida v.  Ag Pro , 425 U.S. 273, 189 USPQ 449 (1979) or
Anderson's - Black Rock Inc. v.  Pavement Salvage Co. , 396
U.S. 57, 163 USPQ 673 (1969), where reliance was placed upon
A&P Tea Co. v.  Supermarket Corp. , 340 U.S. 147, 87 USPQ
303 (1950). See  Dann v.  Johnston , 425 U.S. 219, 189 USPQ
257, * 261 >, n. 4< (1976)**.

  Examiners  must  consider  comparative  data  in  the
specification which is intended to illustrate the claimed
invention in reaching a conclusion with regard to the
obviousness of the claims. In re Margolis , 785 F.2d 1029,
228 USPQ 940 (Fed. Cir. 1986). **>The< lack of objective
evidence of nonobviousness does not weigh in favor of
obviousness.  Miles Labs. Inc. v.  Shandon Inc ., 997 F.2d
870, 27 USPQ2d 1123, 1129 (Fed. Cir. 1993),  cert. denied ,
127 L. Ed. 232 (1994). However, where a  prima facie case of
obviousness is established, the failure to provide rebuttal
evidence is dispositive.

716.01(b)  Nexus Requirement and Evidence of
Nonobviousness [R - 1]

  >TO BE OF PROBATIVE VALUE, ANY SECONDARY EVIDENCE MUST BE
  RELATED TO THE CLAIMED INVENTION (NEXUS REQUIRED)

  The  weight  attached  to  evidence  of  secondary
considerations  by  the  examiner  will  depend  upon  its
relevance to the issue of obviousness and the amount and
nature of the evidence. Note the great reliance apparently
placed on this type of evidence by the Supreme Court in

upholding the patent in United States v.  Adams , 383 U.S.
39,148 USPQ 479 (1966).

  To be given substantial weight in the determination of
obviousness  or  nonobviousness,  evidence  of  secondary
considerations must be relevant to the subject matter as
claimed, and therefore the examiner must determine whether
there is a nexus between the merits of the claimed invention
and the evidence of secondary considerations. Ashland Oil,
Inc. v.  Delta Resins & Refractories, Inc. , 776 F.2d 281,
227 USPQ 657, 673 - 674, n. 42 (Fed. Cir. 1985),  cert.
denied , 475 U.S. 1017 (1986). The term "nexus" designates a
factually and legally sufficient connection between the
objective  evidence  of  nonobviousness  and  the  claimed
invention so that the evidence is of probative value in the
determination of nonobviousness.  Demaco Corp. v.  F. Von
Langsdorff Licensing Ltd. , 851 F.2d 1387, 7 USPQ 2d 1222
(Fed. Cir.),  cert. denied , 488 U.S. 956 (1988).<

716.01(c)  Probative Value of Objective Evidence [R - 2]

  TO BE OF PROBATIVE VALUE, ANY OBJECTIVE EVIDENCE SHOULD BE
  SUPPORTED BY ACTUAL PROOF

  Objective evidence which must be factually supported by
an appropriate affidavit or declaration to be of probative
value includes evidence of unexpected results, commercial
success, solution of a long - felt need, inoperability of
the prior art, invention before the date of the reference,
and allegations that the author(s) of the prior art derived
the disclosed subject matter from the applicant. See, for
example, In re De Blauwe , 736 F.2d 699, 222 USPQ 191, 196
(Fed. Cir. 1984) ("It is well settled that unexpected
results  must  be  established  by  factual  evidence."
"[A]ppellants  have  not  presented  any  experimental  data
showing that prior heat - shrinkable articles split. Due to
the absence of tests comparing appellant's heat shrinkable
articles with those of the closest prior art, we conclude
that appellant's assertions of unexpected results constitute
mere argument."). See also  In re Lindner , 457 F.2d 506,
508, 173 USPQ 356, 358 (CCPA 1972);  Ex parte George , 21
USPQ2d 1058 (Bd. Pat. App. & Inter. 1991).

  ATTORNEY ARGUMENTS CANNOT TAKE THE PLACE OF EVIDENCE

  The arguments of counsel cannot take the place of
evidence in the record. In re Schulze , 346 F.2d 600, 602,
145  USPQ  716,  718  (CCPA  1965).  Examples  of  attorney
statements  which  are  not  evidence  and  which  must  be
supported by an appropriate affidavit or declaration include
statements regarding unexpected results, commercial success,
solution of a long - felt need, inoperability of the prior
art,  invention  before  the  date  of  the  reference,  and
allegations that the author(s) of the prior art derived the
disclosed subject matter from the applicant. **

  See MPEP § 2145 generally for case law pertinent to the
consideration of applicant's rebuttal arguments.

  OPINION EVIDENCE

  Although factual evidence is preferable to opinion
testimony, such testimony is entitled to consideration and
some weight so long as the opinion is not on the ultimate
legal conclusion at issue. While an opinion as to a legal

conclusion is not entitled to any weight, the underlying
basis for the opinion may be persuasive. In re Chilowsky ,
306 F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that
an application meets the requirements of 35 U.S.C. 112 is
not entitled to any weight; however, facts supporting a
basis for deciding that the specification complies with 35
U.S.C. 112 are entitled to some weight);  In re Lindell ,
385  F.2d  453,  155  USPQ  521  (CCPA  1967)  (Although  an
affiant's or declarant's opinion on the ultimate legal issue
is not evidence in the case, "some weight ought to be given
to a persuasively supported statement of one skilled in the
art on what was not obvious to him." 155 USPQ at 524
(emphasis in original)).

  In assessing the probative value of an expert opinion,
the examiner must consider the nature of the matter sought
to be established, the strength of any opposing evidence,
the interest of the expert in the outcome of the case, and
the presence or absence of factual support for the expert's
opinion. Ashland Oil, Inc. v.  Delta Resins & Refractories,
Inc. , 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985),  cert.
denied , 475 U.S. 1017 (1986). See also  In re Oelrich , 198
USPQ 210 (CCPA 1978) (factually based expert opinions on the
level of ordinary skill in the art were sufficient to rebut
the  prima facie case of obviousness);  Ex parte Gray , 10
USPQ2d 1922 (Bd. Pat. App. & Inter. 1989) (statement in
publication dismissing the "preliminary identification of a
human  b - NGF - like molecule" in the prior art, even if
considered to be an expert opinion, was inadequate to
overcome the rejection based on that prior art because there
was no factual evidence supporting the statement);  In re
Carroll , 601 F.2d 1184, 202 USPQ 571 (CCPA 1979) (expert
opinion  on  what  the  prior  art  taught,  supported  by
documentary evidence and formulated prior to the making of
the claimed invention, received considerable deference);  In
re Beattie , 974 F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992)
(declarations of seven persons skilled in the art offering
opinion  evidence  praising  the  merits  of  the  claimed
invention were found to have little value because of a lack
of factual support);  Ex parte George , 21 USPQ2d 1058 (Bd.
Pat. App. & Inter. 1991) (conclusory statements that results
were  "unexpected,"  unsupported  by  objective  factual
evidence, were considered but were not found to be of
substantial evidentiary value).

  Although an affidavit or declaration which states only
conclusions may have some probative value, such an affidavit
or declaration may have little weight when considered in
light of all the evidence of record in the application. In
re Brandstadter , 484 F.2d 1395, 179 USPQ 286 (CCPA 1973).

  An affidavit of an applicant as to the advantages of his
claimed invention, while less persuasive than that of a
disinterested person, cannot be disregarded for this reason
alone. Ex parte Keyes , 214 USPQ 579 (Bd. App. 1982);  In re
McKenna , 203 F.2d 717, 97 USPQ 348 (CCPA 1953).

716.01(d)  Weighing Objective Evidence [R - 3]

  IN MAKING A FINAL DETERMINATION OF PATENTABILITY, EVIDENCE
  SUPPORTING PATENTABILITY MUST BE WEIGHED AGAINST EVIDENCE
  SUPPORTING PRIMA FACIE CASE

  When  an  applicant  submits  evidence  traversing  a
rejection, the examiner must reconsider the patentability of

the  claimed  invention.  The  ultimate  determination  of
patentability must be based on consideration of the entire
record,  by  a  preponderance  of  evidence,  with  due
consideration to the persuasiveness of any arguments and any
secondary evidence. In re Oetiker , 977 F.2d 1443, 24 USPQ2d
1443 (Fed. Cir. 1992). The submission of objective evidence
of  patentability  does  not  mandate  a  conclusion  of
patentability in and of itself.  In re Chupp , 816 F.2d 643,
2  USPQ2d  1437  (Fed.  Cir.  1987).  Facts  established  by
rebuttal evidence must be evaluated along with the facts on
which the conclusion of a  prima facie case was reached, not
against the conclusion itself.  In re Eli Lilly , 902 F.2d
943, 14 USPQ2d 1741 (Fed. Cir. 1990). In other words, each
piece of rebuttal evidence should not be evaluated for its
ability to knockdown the  prima facie case. All of the
competent rebuttal evidence taken as a whole should be
weighed against the evidence supporting the  prima facie
case.  In re Piasecki , 745 F.2d 1468, 223 USPQ 785, 788
(Fed. Cir. 1984). Although the record may establish evidence
of  secondary  considerations  which  are  indicia  of
nonobviousness, the record may also establish such a strong
case  of  obviousness  that  the  objective  evidence  of
nonobviousness is not sufficient to outweigh the evidence of
obviousness.  Newell Cos.  v.  Kenney Mfg. Co. , 864 F.2d
757, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988),  cert. denied ,
493 U.S. 814 (1989). See  In re Piasecki , 745 F.2d 1468,
223 USPQ 785 (Fed. Cir. 1984) for a detailed discussion of
the proper roles of the examiner's  prima facie case and
applicant's rebuttal evidence in the final determination of
obviousness.

  If, after evaluating the evidence, the examiner is still
not convinced that the claimed invention is patentable, the
next Office action should include a statement to that effect
and identify the reason(s) (e.g., evidence of commercial
success not convincing, the commercial success not related
to the technology, etc.). See Demaco Corp. v.  F. Von
Langsdorff Licensing Ltd. , 851F.2d 1387, 7 USPQ 2d 1222
(Fed. Cir.),  cert. denied , 488 U.S. 956(1988). See also
MPEP § 716.01. >See MPEP § 2144.08, part II.B. for guidance
in determining whether rebuttal evidence is sufficient to
overcome a  prima facie  case of obviousness.<

716.02  Allegations Of Unexpected Results [R - 2]

  Any differences between the claimed invention and the
prior art may be expected to result in some differences in
properties. The issue is whether the properties differ to
such an extent that the difference is really unexpected. In
re Merck & Co., *231 USPQ 375 (Fed. Cir. 1986) (differences
in sedative and anticholinergic effects between prior art
and claimed antidepressants were not unexpected). In  In re
Waymouth , 499 F.2d 1273, 182 USPQ 290, 293 (CCPA 1974), the
court held that unexpected results for a claimed range as
compared with the range disclosed in the prior art had been
shown by a demonstration of "a marked improvement, over the
results achieved under other ratios, as to be classified as
a difference in kind, rather than one of degree." Compare
In re Wagner , 152 USPQ 552, 560 (CCPA 1967) (differences in
properties cannot be disregarded on the ground they are
differences in degree rather than in kind);  Ex parte Gelles
, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) ("we
generally consider a discussion of results in terms of
`differences in degree' as compared to `differences in kind'
. . . to have very little meaning in a relevant legal

sense").

716.02(a)  Evidence Must Show Unexpected Results [R - 1]

 >GREATER THAN EXPECTED RESULTS ARE EVIDENCE OF
  NONOBVIOUSNESS

  "A greater than expected result is an evidentiary factor
pertinent to the legal conclusion of obviousness ... of the
claims at issue." In re Corkill , 226 USPQ 1005 (Fed. Cir.
1985). In  Corkhill , the claimed combination showed an
additive result when a diminished result would have been
expected. This result was persuasive of nonobviousness even
though the result was equal to that of one component alone.
Evidence of a greater than expected result may also be shown
by demonstrating an effect which is greater than the sum of
each of the effects taken separately (i.e., demonstrating
"synergism").  Merck & Co. Inc. v.  Biocraft Laboratories
Inc. , 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.),  cert.
denied , 493 U.S. 975 (1989). However, a greater than
additive effect is not necessarily sufficient to overcome a
prima facie case of obviousness because such an effect can
either be expected or unexpected. Applicants must further
show that the results were greater than those which would
have been expected from the prior art to an unobvious
extent, and that the results are of a significant, practical
advantage.  Ex parte The NutraSweet Co ., 19 USPQ2d 1586
(Bd. Pat. App. & Inter. 1991) (Evidence showing greater than
additive sweetness resulting from the claimed mixture of
saccharin  and  L  -  aspartyl  -  L-phenylalanine  was  not
sufficient to outweigh the evidence of obviousness because
the teachings of the prior art lead to a general expectation
of greater than additive sweetening effects when using
mixtures of synthetic sweeteners.).

  SUPERIORITY OF A PROPERTY SHARED WITH THE PRIOR ART IS
  EVIDENCE OF NONOBVIOUSNESS

  Evidence  of  unobvious  or  unexpected  advantageous
properties, such as superiority in a property the claimed
compound shares with the prior art, can rebut prima facie
obviousness.  "Evidence  that  a  compound  is  unexpectedly
superior in one of a spectrum of common properties . . can
be enough to rebut a  prima facie case of obviousness." No
set number of examples of superiority is required.  In re
Chupp , 816 F.2d 643, 2 USPQ2d 1437, 1439 (Fed. Cir. 1987)
(Evidence showing that the claimed herbicidal compound was
more effective than the closest prior art compound in
controlling quackgrass and yellow nutsedge weeds in corn and
soybean crops was sufficient to overcome the rejection under
35 U.S.C. 103, even though the specification indicated the
claimed compound was an average performer on crops other
than corn and soybean.). See also  Ex parte A , 17 USPQ2d
1716 (Bd. Pat. App. & Inter. 1990) (unexpected superior
therapeutic activity of claimed compound against anaerobic
bacteria was sufficient to rebut  prima facie obviousness
even though there was no evidence that the compound was
effective against all bacteria).

  PRESENCE OF AN UNEXPECTED PROPERTY IS EVIDENCE OF
  NONOBVIOUSNESS

  Presence of a property not possessed by the prior art is
evidence of nonobviousness. In re Papesch , 315 F.2d 381,
137 USPQ 43 (CCPA 1963) (rejection of claims to compound

structurally similar to the prior art compound was reversed
because  claimed  compound  unexpectedly  possessed  anti  -
inflammatory properties not possessed by the prior art
compound);  Ex parte Thumm , 132 USPQ 66 (Bd. App. 1961)
(Appellant showed that the claimed range of ethylene diamine
was effective for the purpose of producing " `regenerated
cellulose  consisting  substantially  entirely  of  skin'  "
whereas the prior art warned "this compound has `practically
no effect.' "). The submission of evidence that a new
product possesses unexpected properties does not necessarily
require  a  conclusion  that  the  claimed  invention  is
nonobvious.  In re Payne , 606 F.2d 303, 203 USPQ 245 (CCPA
1979).  See  the  discussion  of  latent  properties  and
additional advantages in MPEP § 2145, paragraph (b).

 ABSENCE OF AN EXPECTED PROPERTY IS EVIDENCE OF
  NONOBVIOUSNESS

  Absence of property which a claimed invention would have
been expected to possess based on the teachings of the prior
art is evidence of unobviousness. Ex parte Mead Johnson &
Co. 227 USPQ 78 (Bd. Pat. App. & Inter. 1985) (Based on
prior art disclosures, claimed compounds would have been
expected to possess beta - andrenergic blocking activity;
the  fact  that  claimed  compounds  did  not  possess  such
activity was an unexpected result sufficient to establish
unobviousness within the meaning of 35 U.S.C. 103.).<

716.02(b)  Burden on Applicant [R - 1]

  >BURDEN ON APPLICANT TO ESTABLISH RESULTS ARE UNEXPECTED
  AND SIGNIFICANT

  The evidence relied up should establish "that the
differences in results are in fact unexpected and unobvious
and of both statistical and practical significance." Ex
parte Gelles , 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter.
1992)  (Mere  conclusions  in  appellants'  brief  that  the
claimed  polymer  had  an  unexpectedly  increased  impact
strength "are not entitled to the weight of conclusions
accompanying the evidence, either in the specification or in
a declaration." 22 USPQ2d at 1319.);  Ex parte C , 27 USPQ2d
1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged
unexpected results with regard to the claimed soybean plant,
however  there  was  no  basis  for  judging  the  practical
significance of data with regard to maturity date, flowering
date, flower color, or height of the plant.). See also  In
re Nolan , 553 F.2d 1261, 193 USPQ 641, 645 (CCPA 1977) and
In re Eli Lilly , 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir.
1990) as discussed in MPEP § 716.02(c).

  APPLICANTS HAVE BURDEN OF EXPLAINING PROFFERED DATA

  "[A]ppellants have the burden of explaining the data in
any  declaration  they  proffer  as  evidence  of  non  -
obviousness." Ex parte Ishizaka , 24 USPQ2d 1621, 1624 (Bd.
Pat. App. & Inter. 1992).

  DIRECT AND INDIRECT COMPARATIVE TESTS ARE PROBATIVE OF
  NONOBVIOUSNESS

  Evidence of unexpected properties may be in the form of
a direct or indirect comparison of the claimed invention
with the closest prior art which is commensurate in scope
with the claims. See In re Boesch , 617 F.2d 272, 205 USPQ

215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e). See  In
re Blonde l, 499 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA
1974) and  In re Fouche , 439 F.2d 1237, 169 USPQ 429, 433
(CCPA 1971) for examples of cases where indirect comparative
testing was found sufficient to rebut a  prima facie case of
obviousness.

  The patentability of an intermediate may be established
by unexpected properties of an end product "when one of
ordinary skill in the art would reasonably ascribe to a
claimed intermediate the `contributing cause' for such an
unexpectedly superior activity or property." In re Magerlein
, 202 USPQ 473, 479 (CCPA 1979). "In order to establish that
the claimed intermediate is a `contributing cause' of the
unexpectedly  superior  activity  or  property  of  an  end
product,  an  applicant  must  identify  the  cause  of  the
unexpectedly superior activity or property (compared to the
prior art) in the end product and establish a nexus for that
cause between the intermediate and the end product." 202
USPQ at 479.<

716.02(c)  Weighing Evidence of Expected and Unexpected
Results [R - 1]

  >EVIDENCE OF UNEXPECTED AND EXPECTED PROPERTIES MUST BE
  WEIGHED

  Evidence of unexpected results must be weighed against
evidence supporting prima facie obviousness in making a
final  determination  of  the  obviousness  of  the  claimed
invention.  In re May , 197 USPQ 601 (CCPA 1978) (Claims
directed  to  a  method  of  effecting  analgesia  without
producing physical dependence by administering the levo
isomer of a compound having a certain chemical structure
were rejected as obvious over the prior art. Evidence that
the compound was unexpectedly nonaddictive was sufficient to
overcome the obviousness rejection. Although the compound
also had the expected result of potent analgesia, there was
evidence of record showing that the goal of research in this
area  was  to  produce  an  analgesic  compound  which  was
nonaddictive, enhancing the evidentiary value of the showing
of nonaddictiveness as an indicia of nonobviousness.). See
MPEP § 716.01(d) for guidance on weighing evidence submitted
to traverse a rejection.

  Where the unexpected properties of a claimed invention
are not shown to have a significance equal to or greater
than the expected properties, the evidence of unexpected
properties may not be sufficient to rebut the evidence of
obviousness. In re Nolan , 553 F.2d 1261, 193 USPQ 641, 645
(CCPA 1977) (Claims were directed to a display/memory device
which was  prima facie obvious over the prior art. The court
found that a higher memory margin and lower operating
voltage would have been expected properties of the claimed
device, and that a higher memory margin appears to be the
most significant improvement for a memory device. Although
applicant presented evidence of unexpected properties with
regard to lower peak discharge current and higher luminous
efficiency, these properties were not shown to have a
significance equal to or greater than that of the expected
higher memory margin and lower operating voltage. The court
held the evidence of nonobviousness was not sufficient to
rebut the evidence of obviousness.);  In re Eli Lilly , 902
F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (Evidence of
improved feed efficiency in steers was not sufficient to

rebut  prima facie case of obviousness based on prior art
which specifically taught the use of compound X537A to
enhance weight gain in animals because the evidence did not
show that a significant aspect of the claimed invention
would have been unexpected.).

  EXPECTED BENEFICIAL RESULTS ARE EVIDENCE OF OBVIOUSNESS

  "Expected beneficial results are evidence of obviousness
of a claimed invention, just as unexpected results are
evidence of unobviousness thereof." In re Gershon , 152 USPQ
602, 604 (CCPA 1967) (resultant decrease of dental enamel
solubility accomplished by adding an acidic buffering agent
to a fluoride containing dentifrice was expected based on
the teaching of the prior art);  Ex parte Blanc , 13 USPQ2d
1383 (Bd. Pat. App. & Inter. 1989) (Claims at issue were
directed  to  a  process  of  sterilizing  a  polyolefinic
composition which contains an antioxidant with high - energy
radiation. Although evidence was presented in appellant's
specification  showing  that  particular  antioxidants  are
effective, the Board concluded that these beneficial results
would have been expected because one of the references
taught a claimed antioxidant is very efficient and provides
better  results  compared  with  other  prior  art
antioxidants.).<

716.02(d)  Unexpected Results Commensurate in Scope With
Claimed Invention [R - 1]

  >Whether the unexpected results are the result of
unexpectedly improved results or a property not taught by
the prior art, the "objective evidence of nonobviousness
must be commensurate in scope with the claims which the
evidence is offered to support." In other words, the showing
of unexpected results must be reviewed to see if the results
occur over the entire claimed range. In re Clemens , 622
F.2d 1029, 206 USPQ 289, 296 (CCPA 1980) (Claims were
directed to a process for removing corrosion at "elevated
temperatures" using a certain ion exchange resin (with the
exception of claim 8 which recited a temperature in excess
of 100 5 C). Appellant demonstrated unexpected results via
comparative tests with the prior art ion exchange resin at
110 5 C and 130 5 C. The court affirmed the rejection of
claims 1 - 7 and 9 - 10 because the term "elevated
temperatures" encompassed temperatures as low as 60 5 C
where the prior art ion exchange resin was known to perform
well. The rejection of claim 8, directed to a temperature in
excess of 100 5 C, was reversed.). See also  In re Grasselli
, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed
to certain catalysts containing an alkali metal. Evidence
presented  to  rebut  an  obviousness  rejection  compared
catalysts containing sodium with the prior art. The court
held this evidence insufficient to rebut the  prima facie
case  because  experiments  limited  to  sodium  were  not
commensurate in scope with the claims.).

 NONOBVIOUSNESS OF A GENUS OR CLAIMED RANGE MAY BE SUPPORTED
 BY DATA SHOWING UNEXPECTED RESULTS OF A SPECIES OR NARROWER
  RANGE UNDER CERTAIN CIRCUMSTANCES

  The nonobviousness of a broader claimed range can be
supported by evidence based on unexpected results from
testing a narrower range if one of ordinary skill in the art
would be able to determine a trend in the exemplified data
which would allow the artisan to reasonably extend the

probative value thereof. In re Kollman , 201 USPQ 193 (CCPA
1979) (Claims directed to mixtures of an herbicide known as
"FENAC" with a diphenyl ether herbicide in certain relative
proportions were rejected as  prima facie obvious. Applicant
presented evidence alleging unexpected results testing three
species of diphenyl ether herbicides over limited relative
proportion ranges. The court held that the limited number of
species exemplified did not provide an adequate basis for
concluding that similar results would be obtained for the
other diphenyl ether herbicides within the scope of the
generic claims. Claims 6 - 8 recited a FENAC:diphenyl ether
ratio of 1:1 to 4:1 for the three specific ethers tested.
For two of the claimed ethers, unexpected results were
demonstrated  over  a  ratio  of  16:1  to  2:1,  and  the
effectiveness increased as the ratio approached the untested
region of the claimed range. The court held these tests were
commensurate in scope with the claims and supported the
nonobviousness thereof. However, for a third ether, data was
only provided over the range of 1:1 to 2:1 where the
effectiveness  decreased  to  the  "expected  level"  as  it
approached  the  untested  region.  This  evidence  was  not
sufficient to overcome the obviousness rejection.);  In re
Lindner , 173 USPQ 356, 359 (CCPA 1972) (Evidence of
nonobviousness consisted of comparing a single composition
within the broad scope of the claims with the prior art. The
court did not find the evidence sufficient to rebut the
prima facie case of obviousness because there was "no
adequate basis for reasonably concluding that the great
number and variety of compositions included in the claims
would  behave  in  the  same  manner  as  the  tested
composition.").

  DEMONSTRATING CRITICALITY OF A CLAIMED RANGE

  To establish unexpected results over a claimed range,
applicants should compare a sufficient number of tests both
inside and outside the claimed range to show the criticality
of the claimed range. In re Hill , 128 USPQ 197 (CCPA
1960).<

716.02(e)  Comparison With Closest Prior Art [R - 1]

  >An affidavit or declaration under 37 CFR 1.132 must
compare the claimed subject matter with the closest prior
art  to  be  effective  to  rebut  a  prima  facie  case  of
obviousness.  In re Burckel , 201 USPQ 67 (CCPA 1979). "A
comparison of the claimed invention with the disclosure of
each cited reference to determine the number of claim
limitations in common with each reference, bearing in mind
the relative importance of particular limitations, will
usually yield the closest single prior art reference."  In
re Merchant , 197 USPQ 785, 787 (CCPA 1978) (emphasis in
original). Where the comparison is not identical with the
reference  disclosure,  deviations  therefrom  should  be
explained,  In re Finley , 81 USPQ 383 (CCPA 1949), and if
not  explained  should  be  noted  and  evaluated,  and  if
significant,  explanation  should  be  required.  In  re
Armstrong , 126 USPQ 281 (CCPA 1960) (deviations from
example were inconsequential).

  THE CLAIMED INVENTION MAY BE COMPARED WITH PRIOR ART THAT
  IS CLOSER THAN THAT APPLIED BY THE EXAMINER

  Applicants may compare the claimed invention with prior
art that is more closely related to the invention than the

prior art relied upon by the examiner. In re Holladay , 199
USPQ 516 (CCPA 1978);  Ex parte Humber , 217 USPQ 265 (Bd.
App. 1961) (Claims to a 13 - chloro substituted compound
were rejected as obvious over nonchlorinated analogs of the
claimed compound. Evidence showing unexpected results for
the claimed compound as compared with the 9 - , 12 - , and
14 - chloro derivatives of the compound rebutted the  prima
facie case of obviousness because the compounds compared
against were closer to the claimed invention than the prior
art relied upon.).

  COMPARISONS WHEN THERE ARE TWO EQUALLY CLOSE PRIOR ART
  REFERENCES

  Showing unexpected results over one of two equally close
prior art references will not rebut prima facie obviousness
unless  the  teachings  of  the  prior  art  references  are
sufficiently similar to each other that the testing of one
showing  unexpected  results  would  provide  the  same
information as to the other.  In re Johnson , 223 USPQ 1260,
1264 (Fed. Cir. 1984) (Claimed compounds differed from the
prior art either by the presence of a trifluoromethyl group
instead of a chloride radical, or by the presence of an
unsaturated ester group instead of a saturated ester group.
Although applicant compared the claimed invention with the
prior art compound containing a chloride radical, the court
found this evidence insufficient to rebut the  prima facie
case of obviousness because the evidence did not show
relative effectiveness over all compounds of the closest
prior art. An applicant does not have to test all the
compounds taught by each reference, "[h]owever, where an
applicant tests less than all cited compounds,  the test
must be sufficient to permit a conclusion respecting the
relative effectiveness of applicant's claimed compounds and
the compounds of the closest prior art ." 223 USPQ at 1264
(quoting  In re Payne , 203 USPQ 245, 256 (CCPA 1979))
(emphasis in original).).

  THE CLAIMED INVENTION MAY BE COMPARED WITH THE CLOSEST
  SUBJECT MATTER THAT EXISTS IN THE PRIOR ART

  Although evidence of unexpected results must compare the
claimed invention with the closest prior art, applicant is
not required to compare the claimed invention with subject
matter that does not exist in the prior art. In re Geiger ,
2  USPQ2d  1276,  1279  (Fed.  Cir.  1987)  (Newman,  J.,
concurring)  (Evidence  rebutted  prima  facie  case  by
comparing claimed invention with the most relevant prior
art. Note that the majority held the Office failed to
establish a  prima facie case of obviousness.);  In re
Chapman , 357 F.2d 418, 148 USPQ 711 (CCPA 1966) (Requiring
applicant  to  compare  claimed  invention  with  polymer
suggested by the combination of references relied upon in
the rejection of the claimed invention under 35 U.S.C. 103
"would  be  requiring  comparison  of  the  results  of  the
invention with the results of the invention." 148 USPQ at
714.).<

716.02(f)  Advantages Disclosed or Inherent [R - 3]

 **>The totality of the record must be considered when
determining whether a claimed invention would have been
obvious to one of ordinary skill in the art at the time the
invention  was  made.  Therefore,  evidence  and  arguments
directed to advantages not disclosed in the specification

cannot be disregarded. In re Chu , 66 F.3d 292, 298 - 99, 36
USPQ2d  1089,  1094  -  95  (Fed.  Cir.  1995)(Although  the
purported advantage of placement of a selective catalytic
reduction catalyst in the bag retainer of an apparatus for
controlling  emissions  was  not  disclosed  in  the
specification,  evidence  and  arguments  rebutting  the
conclusion that such placement was a matter of "design
choice" should have been considered as part of the totality
of the record. "We have found no cases supporting the
position that a patent applicant's evidence or arguments
traversing a § 103 rejection must be contained within the
specification. There is no logical support for such a
proposition as well, given that obviousness is determined by
the totality of the record including, in some instances most
significantly, the evidence and arguments proffered during
the give - and - take of ex parte patent prosecution." 66
F.3d at 299, 36 USPQ at 1095.). See also<  In re Zenitz
,>333  F.2d  924,  928,<  142  USPQ  158>,161<  (CCPA  1964)
(evidence that claimed compound minimized side effects of
hypotensive  activity  must  be  considered  because  this
undisclosed property would inherently flow from disclosed
use as tranquilizer);  Ex parte Sasajima , 212 USPQ 103>,104
- 05< (Bd. App. 1981) (evidence relating to initially
undisclosed  relative  toxicity  of  claimed  pharmaceutical
compound must be considered).  **

  The specification need not disclose proportions or
values  as  critical  for  applicants  to  present  evidence
showing the proportions or values to be critical. In re
Saunders >, 444 F.2d 599, 607,<170 USPQ 213, 220 (CCPA
1971).

716.02(g)  Declaration or Affidavit Form [R - 1]

  >"The reason for requiring evidence in declaration or
affidavit  form  is  to  obtain  the  assurances  that  any
statements or representations made are correct, as provided
by  35  U.S.C.  25  and  18  U.S.C.  1001."  Permitting  a
publication  to  substitute  for  expert  testimony  would
circumvent the guarantees built into the statute. Ex parte
Gray , 10 USPQ2d 1922, 1928 (Bd. Pat. App. & Inter. 1989).
Publications may, however, be evidence of the facts in issue
and should be considered to the extent that they are
probative.<

716.03  Commercial Success [R - 3]

  NEXUS BETWEEN CLAIMED INVENTION AND EVIDENCE OF COMMERCIAL
 SUCCESS REQUIRED

  An applicant who is asserting commercial success to
support its contention of nonobviousness bears the burden of
proof of establishing a nexus between the claimed invention
and evidence of commercial success.

  >The Federal Circuit has acknowledged that applicant
bears the burden of establishing nexus, stating:

  In  the  ex  parte  process  of  examining  a  patent
application, however, the PTO lacks the means or resources
to gather evidence which supports or refutes the applicant's
assertion that the sales constitute commercial success.  C.f
.  Ex parte Remark , 15 USPQ2d 1498, 1503 (Bd. Pat. App. &
Int. 1990)(evidentiary routine of shifting burdens in civil
proceedings  inappropriate  in  ex  parte  prosecution

proceedings because examiner has no available means for
adducing evidence). Consequently, the PTO must rely upon the
applicant to provide hard evidence of commercial success.

 In re Huang , 100 F.3d 135, 139 - 40, 40 USPQ2d 1685, 1689
(Fed. Cir. 1996). See also  In re GPAC , 57 F.3d 1573, 1580,
35 USPQ2d 1116, 1121 (Fed. Cir. 1995);  In re Paulsen , 30
F.3d 1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994)
(Evidence of commercial success of articles not covered by
the claims subject to the 35 U.S.C. 103 rejection was not
probative of nonobviousness).<

  The term "nexus" designates a factually and legally
sufficient connection between the evidence of commercial
success and the claimed invention so that the evidence is of
probative value in the determination of nonobviousness.
Demaco Corp. v.  F. Von Langsdorff Licensing Ltd. ,>851 F.2d
1387,< 7 USPQ2d 1222 (Fed. Cir. 1988).

  COMMERCIAL SUCCESS ABROAD IS RELEVANT

  Commercial success abroad, as well as in the United
States,  is  relevant  in  resolving  the  issue  of
nonobviousness. Lindemann Maschinenfabrik GMBH v.  American
Hoist & Derrick Co. ,>730 F.2d 1452,< 221 USPQ 481 (Fed.
Cir. 1984).

716.03(a)  Commercial Success Commensurate  in Scope With
Claimed Invention [R - 1]

  >EVIDENCE OF COMMERCIAL SUCCESS MUST BE COMMENSURATE IN
  SCOPE WITH THE CLAIMS

  Objective  evidence  of  nonobviousness  including
commercial success must be commensurate in scope with the
claims. In re Tiffin , 448 F.2d 791, 171 USPQ 294 (CCPA
1971) (evidence showing commercial success of thermoplastic
foam "cups" used in vending machines was not commensurate in
scope  with  claims  directed  to  thermoplastic  foam
"containers" broadly). In order to be commensurate is scope
with the claims, the commercial success must be due to
claimed features, and not due to unclaimed features.  Joy
Technologies Inc. v.  Manbeck , 751 F. Supp. 225, 17 USPQ2d
1257, 1260 (D.D.C. 1990), aff'd, 959 F.2d 226, 22 USPQ2d
1153,  1156  (Fed.  Cir.  1992)  (Features  responsible  for
commercial success were recited only in allowed dependent
claims, and therefore the evidence of commercial success was
not commensurate in scope with the broad claims at issue.).

  An  affidavit  or  declaration  attributing  commercial
success to a product or process "constructed according to
the disclosure and claims of [the] patent application" or
other equivalent language does not establish a nexus between
the claimed invention and the commercial success because
there is no evidence that the product or process which has
been sold corresponds to the claimed invention, or that
whatever  commercial  success  may  have  occurred  is
attributable to the product or process defined by the
claims. Ex parte Standish , 10 USPQ2d 1454, 1458 (Bd. Pat.
App. & Inter. 1988).

 REQUIREMENTS WHEN CLAIMED INVENTION IS NOT COEXTENSIVE WITH
  COMMERCIAL PRODUCT OR PROCESS

  If a particular range is claimed, applicant does not

need to show commercial success at every point in the range.
"Where, as here, the claims are directed to a combination of
ranges and procedures not shown by the prior art, and where
substantial commercial success is achieved at an apparently
typical  point  within  those  ranges,  and  the  affidavits
definitely indicate that operation throughout the claimed
ranges approximates that at the particular points involved
in the commercial operation, we think the evidence as to
commercial success is persuasive." In re Hollingsworth , 117
USPQ 182, 184 (CCPA 1958). See also  Demaco Corp. v.  F. Von
Langsdorff Licensing Ltd. , 7 USPQ2d 1222 (Fed. Cir. 1988)
(where the commercially successful product or process is not
coextensive with the claimed invention, applicant must show
a  legally  sufficient  relationship  between  the  claimed
feature and the commercial product or process).<

716.03(b)  Commercial Success Derived From Claimed
Invention [R - 3]

  COMMERCIAL SUCCESS MUST BE DERIVED FROM THE CLAIMED
  INVENTION

  In considering evidence of commercial success, care
should be taken to determine that the commercial success
alleged is directly derived from the invention claimed, in a
marketplace where the consumer is free to choose on the
basis of objective principles, and that such success is not
the result of heavy promotion or advertising, shift in
advertising, consumption by purchasers normally tied to
applicant or assignee, or other business events extraneous
to the merits of the claimed invention, etc. In re Mageli ,
176 USPQ 305 (CCPA 1973) (conclusory statements or opinions
that increased sales were due to the merits of the invention
are entitled to little weight);  In re Noznick , 178 USPQ 43
(CCPA 1973).

  In ex parte proceedings before the Patent and Trademark
Office, an applicant must show that the claimed features
were responsible for the commercial success of an article if
the evidence of nonobviousness is to be accorded substantial
weight. >See  In re Huang, 100 F.3d 135, 140, 40 USPQ2d
1685, 1690 (Fed. Cir. 1996) (Inventor's opinion as to the
purchaser's reason for buying the product is insufficient to
demonstrate a nexus between the sales and the claimed
invention.).<  Merely  showing  that  there  was  commercial
success of an article which embodied the invention is not
sufficient.  Ex parte Remark , 15 USPQ2d 1498, 1502 - 02
((Bd. Pat. App. & Inter. 1990). Compare  Demaco Corp. v.  F.
Von Langsdorff Licensing Ltd. , 7 USPQ2d 1222 (Fed. Cir.
1988) (In civil litigation, a patentee does not have to
prove that the commercial success is not due to other
factors. "A requirement for proof of the negative of all
imaginable  contributing  factors  would  be  unfairly
burdensome,  and  contrary  to  the  ordinary  rules  of
evidence.").

  See also Pentec, Inc. v.  Graphic Controls Corp.227 USPQ
766 (Fed. Cir. 1985) (commercial success may have been
attributable to extensive advertising and position as a
market  leader  before  the  introduction  of  the  patented
product);  In re Fielder , 176 USPQ 300 (CCPA 1973) (success
of invention could be due to recent changes in related
technology or consumer demand; here success of claimed
voting ballot could be due to the contemporary drive toward
greater use of automated data processing techniques);  EWP

Corp. v.  Reliance Universal, Inc.225 USPQ 20 (Fed. Cir.
1985) (evidence of licensing is a secondary consideration
which must be carefully appraised as to its evidentiary
value because licensing programs may succeed for reasons
unrelated to the unobviousness of the product or process,
e.g., license is mutually beneficial or less expensive than
defending  infringement  suits);  Hybritech  Inc.  v.
Monoclonal Antibodies, Inc. , 231 USPQ 81 (Fed. Cir. 1986)
(Evidence of commercial success supported a conclusion of
nonobviousness of claims to an immunometric "sandwich" assay
with  monoclonal  antibodies.  Patentee's  assays  became  a
market leader with 25% of the market within a few years.
Evidence of advertising did not show absence of a nexus
between commercial success and the merits of the claimed
invention because spending 25 - 35% of sales on marketing
was not inordinate (mature companies spent 17 - 32% of sales
in this market), and advertising served primarily to make
industry aware of the product because this is not kind of
merchandise that can be sold by advertising hyperbole.).

  COMMERCIAL SUCCESS MUST FLOW FROM THE FUNCTIONS AND
  ADVANTAGES DISCLOSED OR INHERENT IN THE SPECIFICATION
  DESCRIPTION

  To be pertinent to the issue of nonobviousness, the
commercial success of devices falling within the claims of
the patent must flow from the functions and advantages
disclosed  or  inherent  in  the  description  in  the
specification. Furthermore, the success of an embodiment
within the claims may not be attributable to improvements or
modifications made by others. In re Vamco Machine & Tool,
Inc.224 USPQ 617 (Fed. Cir. 1985).

  IN DESIGN CASES, ESTABLISHMENT OF NEXUS IS ESPECIALLY
  DIFFICULT

  Establishing a nexus between commercial success and the
claimed invention is especially difficult in design cases.
Evidence of commercial success must be clearly attributable
to the design to be of probative value, and not to brand
name  recognition,  improved  performance,  or  some  other
factor. Litton System, Inc. v.  Whirlpool Corp. , 221 USPQ
97 (Fed. Cir. 1984) (showing of commercial success was not
accompanied by evidence attributing commercial success of
Litton microwave oven to the design thereof).

  SALES FIGURES MUST BE ADEQUATELY DEFINED

  Gross sales figures do not show commercial success
absent evidence as to market share, Cable Electric Products,
Inc. v.  Genmark, Inc.226 USPQ 881 (Fed. Cir. 1985), or as
to the time period during which the product was sold, or as
to what sales would normally be expected in the market,  Ex
parte Standish , 10 USPQ2d 1454 (Bd. Pat. App. & Inter.
1988).

716.04  Long - Felt Need and Failure of Others [R - 1]

  >THE CLAIMED INVENTION MUST SATISFY A LONG - FELT NEED
 WHICH WAS RECOGNIZED, PERSISTENT, AND NOT SOLVED BY OTHERS

  Establishing  long  -  felt  need  requires  objective
evidence that an art recognized problem existed in the art
for a long period of time without solution. The relevance of
long - felt need and the failure of others to the issue of

obviousness depends on several factors. First, the need must
have been a persistent one that was recognized by those of
ordinary skill in the art. In re Gershon , 152 USPQ 602, 605
(CCPA 1967) ("Since the alleged problem in this case was
first recognized by appellants, and others apparently have
not yet become aware of its existence, it goes without
saying that there could not possibly be any evidence of
either a long felt need in the . . art for a solution to a
problem of dubious existence or failure of others skilled in
the art who unsuccessfully attempted to solve a problem of
which they were not aware.");  Orthopedic Equipment Co.,
Inc. v.  All Orthopedic Appliances, Inc. , 217 USPQ 1281
(Fed. Cir. 1983) (Although the claimed invention achieved
the desirable result of reducing inventories, there was no
evidence of any prior unsuccessful attempts to do so.).

  Second, the long - felt need must not have been
satisfied by another before the invention by applicant.
Newell Companies v.  Kenney Mfg. Co. , 9 USPQ2d 1417, 1426
(Fed. Cir. 1988) (Although at one time there was a long -
felt need for a "do - it - yourself" window shade material
which was adjustable without the use of tools, a prior art
product  fulfilled  the  need  by  using  a  scored  plastic
material which could be torn. "[O]nce another supplied the
key element, there was no long - felt need or, indeed, a
problem to be solved".)

  Third, the invention must in fact satisfy the long -
felt need. In re Cavanagh , 168 USPQ 466 (CCPA 1971).

  LONG - FELT NEED IS MEASURED FROM THE DATE A PROBLEM IS
  IDENTIFIED AND EFFORTS ARE MADE TO SOLVE IT

  Long felt need is analyzed as of date the problem is
identified and articulated, and there is evidence of efforts
to solve that problem, not as of the date of the most
pertinent prior art references. Texas Instruments Inc . v.
Int'l Trade Comm'n , 26 USPQ2d 1018, 1029 (Fed. Cir. 1993).

 OTHER FACTORS CONTRIBUTING TO THE PRESENCE OF A LONG - FELT
  NEED MUST BE CONSIDERED

  The failure to solve a long - felt need may be due to
factors such as lack of interest or lack of appreciation of
an invention's potential or marketability rather than want
of technical know - how. Scully Signal Co. v.  Electronics
Corp. of America , 196 USPQ 657 (1st. Cir. 1977).

  See also Environmental Designs, Ltd. v.  Union Oil Co.
of Cal. , 218 USPQ 865, 869 (Fed. Cir. 1983) (presence of
legislative  regulations  for  controlling  sulfur  dioxide
emissions did not militate against existence of long - felt
need to reduce the sulfur content in the air);  In re Tiffin
, 170 USPQ 88 (CCPA 1971) (fact that affidavit supporting
contention of fulfillment of a long - felt need was sworn by
a licensee adds to the weight to be accorded the affidavit,
as long as there is a bona fide licensing agreement entered
into at arm's length). <

716.05  Skepticism of Experts [R - 1]

  >"Expressions of disbelief by experts constitute strong
evidence of nonobviousness." Environmental Designs, Ltd. v.
Union Oil Co. of Cal. , 218 USPQ 865, 869 (Fed. Cir. 1983)
(citing  United States v.  Adams , 383 U.S. 39, 52, 148 USPQ

479, 483 - 484 (1966)) (The patented process converted all
the sulfur compounds in a certain effluent gas stream to
hydrogen  sulfide,  and  thereafter  treated  the  resulting
effluent for removal of hydrogen sulfide. Before learning of
the patented process, chemical experts, aware of earlier
failed efforts to reduce the sulfur content of effluent gas
streams, were of the opinion that reducing sulfur compounds
to  hydrogen  sulfide  would  not  adequately  solve  the
problem.).

  "The skepticism of an expert, expressed before these
inventors proved him wrong, is entitled to fair evidentiary
weight, . . as are the five to six years of research that
preceded the claimed invention." In re Dow Chemical Co. , 5
USPQ2d 1529 (Fed. Cir. 1988);  Burlington Industries Inc. v.
Quigg3 USPQ2d 1436 (Fed. Cir. 1987) (testimony that the
invention met with initial incredulity and skepticism of
experts was sufficient to rebut the  prima facie case of
obviousness based on the prior art).<

716.06  Copying [R - 1]

  >Another  form  of  secondary  evidence  which  may  be
presented  by  applicants  during  prosecution  of  an
application,  but  which  is  more  often  presented  during
litigation, is evidence that competitors in the marketplace
are copying the invention instead of using the prior art.
However, more than the mere fact of copying is necessary to
make  that  action  significant  because  copying  may  be
attributable to other factors such as a lack of concern for
patent property or contempt for the patentee's ability to
enforce  the  patent.  Cable  Electric  Products,  Inc.  v.
Genmark, Inc. , 226 USPQ 881 (Fed. Cir. 1985). Evidence of
copying was persuasive of nonobviousness when an alleged
infringer tried for a substantial length of time to design a
product or process similar to the claimed invention, but
failed and then copied the claimed invention instead.  Dow
Chemical Co. v.  American Cyanamid Co. , 2 USPQ2d 1350 (Fed.
Cir.  1987).  Alleged  copying  is  not  persuasive  of
nonobviousness when the copy is not identical to the claimed
product, and the other manufacturer had not expended great
effort to develop its own solution.  Pentec, Inc. v.
Graphic Controls Corp. , 227 USPQ 766 (Fed. Cir. 1985). See
also  Vandenberg v.  Dairy Equipment Co. , 224 USPQ 195, 199
(Fed. Cir. 1984) (evidence of copying not found persuasive
of  nonobviousness)  and  Panduit  Corp.  v.  Dennison
Manufacturing Co. , 227 USPQ 337, 348, 349 (Fed. Cir. 1985),
vacated on other grounds, 475 U.S. 809, 229 USPQ 478 (1986),
on remand, 1 USPQ2d 1593 (Fed. Cir. 1987) (evidence of
copying found persuasive of nonobviousness where admitted
infringer failed to satisfactorily produce a solution after
10 years of effort and expense).<

716.07  Inoperability of References [R - 1]

  >Since every patent is presumed valid (35 U.S.C. 282),
and since that presumption includes the presumption of
operability,  Metropolitan Eng. Co. v.  Coe , 1935 C.D. 54,
78 F.2d 199, examiners should not express any opinion on the
operability  of  a  patent.  Affidavits  or  declarations
attacking the operability of a patent cited as a reference
must rebut the presumption of operability by a preponderance
of the evidence.  In re Sasse , 629 F.2d 675, 207 USPQ 107
(CCPA 1980).

  Further, since in a patent it is presumed that a process
if used by one skilled in the art will produce the product
or  result  described  therein,  such  presumption  is  not
overcome by a mere showing that it is possible to operate
within the disclosure without obtaining the alleged product.
In re Weber , 405 F.2d 1403, 160 USPQ 549 (CCPA 1969). It is
to be presumed also that skilled workers would as a matter
of  course,  if  they  do  not  immediately  obtain  desired
results, make certain experiments and adaptations, within
the  skill  of  the  competent  worker.  The  failures  of
experimenters who have no interest in succeeding should not
be accorded great weight.  In re Michalek , 162 F.2d 229, 74
USPQ 107 (CCPA 1947);  In re Reid , 179 F.2d 998, 84 USPQ
478 (CCPA 1950).

  Where the affidavit or declaration presented asserts
inoperability in features of the reference which are not
relied upon, the reference is still effective as to other
features which are operative. In re Shepherd , 172 F.2d 560,
80 USPQ 495 (CCPA 1949).

  Where the affidavit or declaration presented asserts
that the reference relied upon is inoperative, the claims
represented by applicant must distinguish from the alleged
inoperative reference disclosure. In re Crosby , 157 F.2d
198, 71 USPQ 73 (CCPA 1946). See also  In re Epstein , 32
F.3d  1559,  31  USPQ2d  1817  (Fed.  Cir.  1994)  (lack  of
diagrams, flow charts, and other details in the prior art
references did not render them nonenabling in view of the
fact that applicant's own specification failed to provide
such detailed information, and that one skilled in the art
would have known how to implement the features of the
references.

  If a patent teaches or suggests the claimed invention,
an affidavit or declaration by patentee that he or she did
not intend the disclosed invention to be used as claimed by
applicant is immaterial. In re Pio , 217 F.2d 956, 104 USPQ
177 (CCPA 1954). Compare  In re Yale , 434 F.2d 66, 168 USPQ
46 (CCPA 1970) (Correspondence from a co - author of a
literature article confirming that the article misidentified
a compound through a typographical error that would have
been obvious to one of ordinary skill in the art was
persuasive evidence that the erroneously typed compound was
not put in the possession of the public.).<

716.08  Utility and Operability of Applicant's Disclosure
[R - 1]

  >See MPEP § 2107.01, paragraphs (d), (e), and (f) for
guidance on when it is proper to require evidence of utility
or operativeness, and how to evaluate any evidence which is
submitted to overcome a rejection under 35 U.S.C. 101 for
lack of utility. See MPEP § 2107 - § 2107.02 generally for
an overview of legal precedent relevant to the utility
requirement of 35 U.S.C. 101.<

716.09  Sufficiency of Disclosure [R - 1]

  >See MPEP § 2164 - § 2164.04(b) for guidance in
determining whether the specification provides an enabling
disclosure  in  compliance  with  35  U.S.C.  112,  first
paragraph.

  Once the examiner has established a prima facie case of

lack of enablement, the burden falls on the applicant to
present persuasive arguments, supported by suitable proofs
where necessary, that one skilled in the art would have been
able to make and use the claimed invention using the
disclosure as a guide.  In re Brandstadter , 484 F.2d 1395,
179  USPQ  286  (CCPA  1973).  Evidence  to  supplement  a
specification which on its face appears deficient under 35
U.S.C. 112 must establish that the information which must be
read into the specification to make it complete would have
been known to those of ordinary skill in the art.  In re
Howarth , 654 F.2d 103, 210 USPQ 689 (CCPA 1981) (copies of
patent specifications which had been opened for inspection
in Rhodesia, Panama, and Luxembourg prior to the U.S. filing
date of the applicant were not sufficient to overcome a
rejection for lack of enablement under 35 U.S.C. 112, first
paragraph).

  Affidavits or declarations presented to show that the
disclosure of an application is sufficient to one skilled in
the art are not acceptable to establish facts which the
specification itself should recite. In re Buchner , 929 F.2d
660, 18 USPQ2d 1331 (Fed. Cir. 1991) (Expert described how
he  would  construct  elements  necessary  to  the  claimed
invention  whose  construction  was  not  described  in  the
application or the prior art; this was not sufficient to
demonstrate that such construction was well - known to those
of ordinary skill in the art.);  In re Smyth , 189 F.2d 982,
90 USPQ 106 (CCPA 1951).

  Affidavits or declarations purporting to explain the
disclosure or to interpret the disclosure of a pending
application are usually not considered. In re Oppenauer ,
143 F.2d 974, 62 USPQ 297 (CCPA 1944). But see  Glaser v.
Strickland , 220 USPQ 446 (Bd. Pat. Int. 1983) which
reexamines the rationale on which  In re Oppenauer was based
in light of the Federal Rules of Evidence. The Board stated
as a general proposition "Opinion testimony which merely
purports to state that a claim or count, is `disclosed' in
an application involved in an interference . . should not
be given any weight. Opinion testimony which purports to
state that a particular feature or limitation of a claim or
count  is  disclosed  in  an  application  involved  in  an
interference and which explains the underlying factual basis
for the opinion may be helpful and can be admitted. The
weight to which the latter testimony may be entitled must be
evaluated strictly on a case - by - case basis."<

716.10  Attribution [R - 1]

  >Under certain circumstances an affidavit or declaration
may be submitted which attempts to attribute a reference or
part of a reference to the applicant. If successful, the
reference is no longer applicable. When subject matter,
disclosed but not claimed in a patent application issued
jointly to S and another, is claimed in a later application
filed by S, the joint patent is a valid reference available
as prior art under 35 U.S.C. 102(a), (e), or (f) unless
overcome by affidavit or declaration under 37 CFR 1.131
showing prior invention (see MPEP § 715) or an unequivocal
declaration by S under 37 CFR 1.132 that he or she conceived
or invented the subject matter disclosed in the patent.
Disclaimer by the other patentee should not be required but,
if submitted, may be accepted by the examiner.

  Where there is a published article identifying the

authorship (MPEP § 715.01(c)) or a patent identifying the
inventorship  (MPEP  §  715.01(a))  that  discloses  subject
matter  being  claimed  in  an  application  undergoing
examination, the designation of authorship or inventorship
does not raise a presumption of inventorship with respect to
the subject matter disclosed in the article or with respect
to the subject matter disclosed but not claimed in the
patent so as to justify a rejection under subsection (f).

  However, it is incumbent upon the inventors named in the
application,  in  response  to  an  inquiry  regarding  the
appropriate inventorship under subsection (f) or to rebut a
rejection under 35 U.S.C. 102(a) or (e), to provide a
satisfactory showing by way of affidavit under 37 CFR 1.132
that the inventorship of the application is correct in that
the reference discloses subject matter derived from the
applicant rather than invented by the author or patentee
notwithstanding  the  authorship  of  the  article  or  the
inventorship of the patent. In re Katz , 687 F.2d 450, 215
USPQ 14,18 (CCPA 1982) (inquiry is appropriate to clarify
any ambiguity created by an article regarding inventorship
and it is then incumbent upon the applicant to provide "a
satisfactory  showing  that  would  lead  to  a  reasonable
conclusion that [applicant] is the ... inventor" of the
subject matter disclosed in the article and claimed in the
application).

  An  uncontradicted  "unequivocal  statement"  from  the
applicant regarding the subject matter disclosed in an
article  or  patent  will  be  accepted  as  establishing
inventorship. In re DeBaun , 214 USPQ 933, 936 (CCPA 1982).
However, a statement by the applicants regarding their
inventorship in view of an article or a patent may not be
sufficient where there is evidence to the contrary.  Ex
parte Kroger , 218 USPQ 370 (Bd. App. 1982) (a rejection
under  35  U.S.C.  102(f)  was  affirmed  notwithstanding
declarations by the alleged actual inventors as to their
inventorship in view of a nonapplicant author submitting a
letter declaring the author's inventorship);  In re Carriera
, 189 USPQ 461 (CCPA 1976) (disclaiming declarations from
patentees were directed at the generic invention and not at
the claimed species, hence no need to consider derivation of
the subject matter).

  A successful 37 CFR 1.132 affidavit or declaration
establishing derivation by the author or patentee of a first
reference does not enable an applicant to step into the
shoes of that author or patentee in regard to its date of
publication so as to defeat a later second reference. In re
Costello , 717 F.2d 1346, 219 USPQ 389, 392 (Fed. Cir.
1983).

  EXAMPLES

  The following examples demonstrate the application of an
attribution affidavit or declaration.

 Example 1

 During the search the examiner finds a reference fully
describing the claimed invention. The applicant is the
author or patentee and it was published or patented less
than one year prior to the filing date of the application.
The reference cannot be used against applicant since it does
not satisfy the 1 - year time requirement of 35 U.S.C.

102(b).

 Example 2

 Same facts as above, but the author or patentee is an
entity different from applicant. Since the entities are
different, the reference is prior art under 35 U.S.C. 102(a)
or (e).

  In the situation described in Example 2, an affidavit
under 37 CFR 1.132 may be submitted to show that the
relevant portions of the reference originated with or were
obtained from applicant. Thus the affidavit attempts to
convert the fact situation from that described in Example 2
to the situation described in Example 1.<

>718  Affidavit or Declaration to Disqualify Commonly
Owned Patent as Prior Art, 37 CFR 1.130 [R - 3]

 37 CFR 1.130. Affidavit or declaration to disqualify
commonly owned patent as prior art.

 (a) When any claim of an application or a patent under
reexamination is rejected under 35 U.S.C. 103 in view of a
U.S. patent which is not prior art under 35 U.S.C. 102(b),
and the inventions defined by the claims in the application
or patent under reexamination and by the claims in the
patent are not identical but are not patentably distinct,
and  the  inventions  are  owned  by  the  same  party,  the
applicant or owner of the patent under reexamination may
disqualify the patent as prior art. The patent can be
disqualified as prior art by submission of:

 (1) A terminal disclaimer in accordance with § 1.321(c),
and

 (2) An oath or declaration stating that the application or
patent under reexamination and the patent are currently
owned by the same party, and that the inventor named in the
application or patent under reexamination is the prior
inventor under 35 U.S.C. 104.

 (b) When an application or a patent under reexamination
claims an invention which is not patentably distinct from an
invention claimed in a commonly owned patent with the same
or  a  different  inventive  entity,  a  double  patenting
rejection will be made in the application or a patent under
reexamination.  A  judicially  created  double  patenting
rejection may be obviated by filing a terminal disclaimer in
accordance with § 1.321(c).

  37 CFR 1.130(a) has been added to provide for those
situations in which: (1) the rejection in an application or
patent under reexamination to be overcome is a rejection
under 35 U.S.C. 103 in view of a U.S. patent which is not
prior art under 35 U.S.C. 102(b); (2) the inventions defined
by  the  claims  in  the  application  or  patent  under
reexamination and by the claims in the U.S. patent are not
identical but are not patentably distinct; and (3) the
inventions are owned by the same party. An applicant or
owner of a patent under reexamination in this situation is
prevented from using 37 CFR 1.131 to antedate a commonly
owned U.S. patent due to the requirement in 37 CFR 1.131
that any U.S. patent to be antedated not claim the same
patentable invention (as defined in 37 CFR 1.601(n)) as the

application or patent under reexamination, and is prevented
from proceeding in an interference due to the provision in
37 CFR 1.602(a) that an interference will not be declared or
continued between an application and an unexpired patent
owned by a single party.

  As 37 CFR 1.130(a) was added for those situations in
which  the  inventions  defined  by  the  claims  in  the
application or patent under reexamination and by the claims
in the U.S. patent are not patentably distinct, 37 CFR
1.130(a)(1) requires a terminal disclaimer in accordance
with 37 CFR 1.321(c) and 37 CFR 1.130(a)(2) requires an oath
or declaration stating, inter alia , that the inventor named
in the application or patent under reexamination is the
prior inventor under 35 U.S.C. 104. The inventor named in
the application or patent under reexamination must have
invented the claimed subject matter before the actual date
of invention of the subject matter of the reference U.S.
patent claims. The oath or declaration may be signed by the
inventor(s), the attorney of record, or assignee(s) of the
entire interest.

  The phrase "prior inventor under 35 U.S.C. 104" requires
that the inventor named in the application or patent be the
prior inventor within the meaning of 35 U.S.C. 104, in that
an applicant or patent owner may not: (1) establish a date
of invention in a foreign country other than a NAFTA or WTO
member country; (2) establish a date of invention in a WTO
member country other than a NAFTA country earlier than
January 1, 1996; or (3) establish a date of invention in a
NAFTA country other than the U.S. earlier than December 8,
1993.

  As the conflict between two pending applications can be
avoided by filing a continuation - in - part application
merging  the  conflicting  inventions  into  a  single
application,  37  CFR  1.130  is  limited  to  overcoming
rejections under 35 U.S.C. 103 based on commonly owned U.S.
patents.

  37 CFR 1.130(b) provides that when an application or a
patent under reexamination claims an invention which is not
patentably distinct from an invention claimed in a commonly
owned patent with the same or a different inventive entity,
a double patenting rejection will be made in the application
or a patent under reexamination. A judicially created double
patenting rejection may be obviated by filing a terminal
disclaimer in accordance with 37 CFR 1.321(c). See MPEP §
804.02.<

*>719  < File Wrapper [R - 3]

  The folder in which the Patent and Trademark Office
maintains the application papers is referred to as a file
wrapper.

*>719.01  < Papers in File Wrapper [R - 3]

  Papers that do not become a permanent part of the record
  should not be entered on the "Contents" of the file wrapper. All
  papers legally entered on the "contents" of the file wrapper are
  given a paper number. No paper legally entered on the "Contents"
  should ever be withdrawn or returned to applicant without special
  authority of the Commissioner. Certain oaths executed abroad may
  be returned but a copy is retained in the file. See MPEP §

  604.04(a).

*>719.01(a)  < Arrangement of Papers in File Wrapper [R -
3]

  Until  revision  for  allowance,  the  specification,
amendments and all other communications from applicant are
fastened to the left side (center fold) of the file wrapper.
They are in inverse chronological order; that is, the
communication with the latest "Mail Room" date is on top. A
similar arrangement is followed on the right side, where
Office actions and other communications from the Office are
fastened, except that the print is always kept on top for
the convenience of the examiner.

  Where amendments are submitted in duplicate, the carbon
copy is destroyed except where the duplicate is received
within the time period for response and the original is
late. In this latter situation both copies are placed in the
file. The "original" (ribbon copy) is entered with reference
made to the carbon copy.

  At allowance, only those papers required by the printer
are placed in the left side (center section) of the file
wrapper.

  The use of return self - addressed postcards as a
receipt is covered in MPEP § 503.

*>719.01(b)  < Prints [R - 3]

  The prints of the drawing are fastened inside the file
wrapper by the Customer Services Division.

  The white paper prints shall always be kept on top of
the papers on the right of the file wrapper.

  All prints and inked sketches subsequently filed to be
part of the record should be endorsed with the date of their
receipt in the office and given their appropriate paper
number. Note MPEP § 608.02(m).

*>719.02  < Data Entered on File Wrapper [R - 3]

  See also MPEP § 707.10, §*>719.01<.

  It is sometimes necessary to return applications to the
Application Branch for correction of the file wrapper label.
If the examiner notices an error in any of the data
originally entered on the file wrapper, he or she should
return  the  application  to  the  Application  Branch  for
correction.

  Instances where such a return is necessary include:

 (1) Correction of Inventorship such as changes in
the order of the names or a change in the name of an
inventor, granted by petition, and additions or deletions of
inventors under 37 CFR 1.48. See MPEP § 605.04(g).

 (2) Correction of the Filing Date.

 (3) Correction concerning prior U.S. applications
which have serial number errors. See MPEP § 202.02.

 (4) Correction of application type, for example,
where an application is filed under 37 CFR 1.60 but is not
shown as such on the file wrapper.

  The application must be sent to the Application Branch
for correction of the file wrapper label and should be
accompanied by an Application Branch Data Base Routing Slip
with an explanation of the correction to be made.

  All other corrections are performed in the examining
group. For example, changes to claims to priority under 35
U.S.C. 120, 121, or 365(c), changes to the title, power of
attorney, and correspondence address may be made with red
ink.

  If an error is noticed in the name or address of the
assignee, it should be corrected by the Assignment Division.

  All of the above entries are either typed or made in
black ink. Such changes by amendment as change of address or
of attorney are entered in red ink by the clerk of the
group, the original entry being canceled but not erased.

*>719.02(b)  < Name or Residence of Inventor or Title
Changed [R - 3]

  The distinction between "residence" and Post Office
address should not be lost sight of.

  MPEP § 605.04(c) explains the procedure to be followed
concerning  sending  the  application  to  the  Application
Division when applicant changes name.

  Unless  specifically  requested  by  applicant,  the
residence will not be changed on the file. For example, if a
new oath gives a different residence from the original, the
file will not be changed.

*>719.03  < Classification During Examination [R - 3]

  When a new case is received in an examining group, the
classification of the case and the initials or name of the
examiner who will examine it or other assigned docket
designation are noted in pencil in the upper left hand
corner of the first sheet of the "heavy paper" print and in
the designated spaces on the file wrapper. These notations
should be kept current.

*>719.04  < Index of Claims [R - 3]

  Constant reference is made to the "Index of Claims"
found in the inside of the file wrapper of all applications.
It should be kept up to date so as to be a reliable index of
all claims standing in a case, and of the amendment in which
the claims are to be found.

  The preprinted series of claim numbers appearing on the
file wrapper refer to the claim numbers as originally filed
while the adjacent column should be used for the entry of
the final numbering of the allowed claims.

  Independent claims should be designated in the Index of
Claims by encircling the claim number in red ink.

  A line in red ink should be drawn below the number

corresponding to the number of claims originally presented.

  Thereafter, a line in red ink should be drawn below the
number corresponding to the highest numbered claim added by
each amendment. Just outside the Index of Claims form
opposite the number corresponding to the first claim of each
amendment there should be placed the letter designating the
amendment.

  If the claims are amended in rewritten form under 37 CFR
1.121(b), the original claim number should not be stricken
from the Index of Claims but a notation should be made in
red ink in the margin to the left of the original claim
number, i.e. "Amend. 1"; if the claim is rewritten a second
time, "Amend. 1" should be changed by striking out "1" and
inserting "2" above it.

  As any claim is canceled, a line in red ink should be
drawn through its number.

  A space is provided for completion by the examiner to
indicate the date and type of each Office action together
with the resulting status of each claim. A list of codes for
identifying each type of Office action appears below the
Index. At the time of allowance, the examiner places the
final patent claim numbers in the column marked "Final."

*>719.05  < Field of Search [R - 3]

  In each action involving a search, the examiner shall
endorse, on the flap of the file wrapper, the U.S. classes
and subclasses, International Patent Classification(s) and
publications searched, the date when the search was made or
was brought up to date and the examiner's initials, all
entries being in BLACK INK. Great care should be taken so as
to clearly indicate the places searched and the date(s) on
which the search was conducted.

  In order to provide a complete, accurate, and uniform
record of what has been searched and considered by the
examiner for each application, the Patent and Trademark
Office has established procedures for recording search data
in the application file. Such a record is of importance to
anyone evaluating the strength and validity of a patent,
particularly if the patent is involved in litigation. These
procedures will also facilitate the printing of certain
search data on patents.

  Under the procedures, searches are separated into two
categories  and  listed,  as  appropriate,  in  either  the
"SEARCHED" box or "SEARCHED NOTES" box on the file wrapper.

  If additional space is required, entries should be
continued on the outside right flap of the file wrapper.

  A. "SEARCHED" Box Entries

  Search entries made here, except those for search
updates (see item A.3 below), will be printed under "Field
of  Search"  on  the  patent  front  page.  Therefore,  the
following searches will be recorded in the "SEARCHED" box by
the  examiner  along  with  the  date  and  the  examiner's
initials, according to the following guidelines:

 (1)  A complete search of a subclass , including all

United States and foreign patent documents, whether filed by
U.S. or IPC classification, and other publications placed
therein.

  The complete classification (class and subclass) should
be recorded.

 Examples:

 424 / 270 , 272, 273

 224 / 42.1 F

 414/DIG. 4

 D3/32 R

 A61K 9/22

 A61K 31 / 56 - A61K 31 / 585

 (2) A limited search of a subclass , for example, a
search that is restricted to an identifiable portion of the
patent documents placed therein. If, however, only the
publications in a subclass are searched, such an entry is to
be made under "SEARCH NOTES" rather than under "SEARCHED."
(See item B(4) below.)

  The class and subclass, followed by the information
defining  the  portion  of  the  subclass  searched  -  in
parenthesis, should be recorded.

 Examples:

 414/1 (U.S. only)

 238/6 (1954 to date)

 (3)  An update of a search previously made . This
search entry will be recorded in a manner to indicate
clearly which of the previously recorded searches have been
updated, followed by the expression "(updated)." Search
update entries, although recorded in the "SEARCHED" box,
will not be printed.

 Examples:

 424 / 270 (updated)

 414/DIG, 4 (updated)

 Above (updated)

  When a search made in a parent application is
updated during the examination of a continuing application,
those searches updated, followed by "(updated from parent
S.N.  ............)"  will  be  recorded.  If  the  parent
application has been patented, the patent number "Pat. N.
............" instead of serial number in the above phrase
will be recorded. The examiner should recopy the entire
search updated from the parent on the file wrapper of the
continuing  application  to  the  extent  pertinent  to  the
continuing application.

 Examples:

 273 / 29 BC  (updated from

 343 / 114.5  parent S.N. 495,123)

 116/DIG.47 (updated from

 D7/73, 74  parent Pat. N. 4,998,999)

  B. "SEARCH NOTES" Box Entries

  Entries made in the "SEARCH NOTES" box are of equal
importance to those placed in the "SEARCHED" box; however,
these entries are not to be printed on any resulting patent.
They are intended to complete the application file record of
areas and/or documents considered by the examiner in his or
her  search.  The  examiner  should  record  the  following
searches in this box and in the manner indicated, with each
search dated and initialled:

 (1) A cursory search , or scanning, of a U.S.
subclass or IPC subclass/group/subgroup, i.e., a search
usually made to determine if the documents classified there
are  relevant.  Record  the  classification,  followed  by
"(cursory)."

 Examples:

 250 / 13 (cursory)

 A61K 9/44 (cursory)

 (2) A consultation with other examiners to determine
if relevant search fields exist in their areas of expertise.

  If the subclass is not searched, record the class and
subclass discussed, followed by "(consulted)." This entry
may also include the name of the examiner consulted and the
art unit.

 Examples:

 24/ fasteners (consulted)

 24/ fasteners (consulted J. Doe A.U. 3501)

 24 / 201 R - 230 AV (consulted)

 (3) A search of a publication  not located within
the classified patent file, e.g., a library search, a text
book  search,  a  Chemical  Abstracts  search,  etc.  Record
according to the following for each type of literature
search:

 (a) Abstracting publications , such as Chemical
Abstracts record name of publications, list terms consulted
in index, and indicate period covered.

 Examples:

 Chem. Abs , Palladium hydride Jan - June 1975

 Eng. Index , Data Conversion Analog to Digital 1975

 (b) Periodicals - list by title and period or

volumes covered, as appropriate.

 Example:

 Popular Mechanics , June - Dec. 1974

 Lubrication Engineering , vols. 20 - 24

 (c) Books  - list by title and author, edition or
date, as appropriate.

 Example:

 Introduction to Hydraulic Fluids , Roger E. Hatton, 1962

 (d)  Other  types  of  literature  not  specifically
mentioned herein (i.e., catalogs, manufacturer's literature,
private collections, etc.).

  Record  data  as  necessary  to  provide  unique
identification of material searched.

 Example:

 Sears Roebuck catalog, Spring - Summer, 1973.

  Where a book or specific issue of a periodical is cited
by the examiner, it is not necessary to list the specific
book or periodical in the "SEARCH NOTES" box.

  A cursory or browsing search through a number of
materials that are not found to be of significant relevance
may be indicated in a collective manner, e.g., "Browsed STIC
shelves under QA 76.5" or "Browsed text books in STIC
relating to ......................" More detailed reviews or
searches through books and periodicals or any search of
terms in abstracting publications should be specifically
recorded, however.

  (e)  Computer  Search  in  Scientific  and  Technical
Information  Center  (STIC)  -  An  online  computerized
literature searching service which uses key terms and index
terms  to  locate  relevant  publications  in  many  large
bibliographic data bases is available in the STIC. Members
of the STIC staff are assigned to assist examiners in
selecting key terms and to conduct a search. To record a
computer search conducted by STIC, see instructions in B6
below

 (4) A search of only the publications in a subclass
.

  Record class and subclass followed by "(publications
only)."

 Examples:

 43 / 56 (publications only)

 99/DIG. 15 (publications only)

 (5) A review of art cited in a parent application or
an original patent, as required for all continuing and
reissue applications and reexamination proceedings, or a
review of art cited in related applications or patents

mentioned within the specification, such as those included
to provide background of the invention.

  Record the serial number of a parent application that is
still pending or abandoned, followed by "refs. checked" or
"refs. ck'ed." If for any reason not all of the references
have been checked because they are not available or clearly
not relevant, such exceptions should be noted.

 S. N. 495,123 refs. checked

 S. N. 490,000 refs. checked

 S. N. 480,111 refs. checked except for Greek patent to Kam

 S. N.410,113 refs. not checked since the file was not
available

  Record  the  patent  number  of  a  parent  or  related
application that is now patented or of an original patent
now being reissued with "refs. checked" or "refs. ck'ed."

 Examples:

 Pat. 3,900,000 refs. checked

 Pat. 3,911,111 refs. ck'ed

  (6) In each action involving a search of a computer
accessed text or chemical structure or sequence database ,
the examiner shall endorse, in the SEARCH NOTES box on the
file wrapper flap, the name of the database service, the
date when the search was made or was brought up to date and
the examiner's initials. All entries shall be made in BLACK
INK. If additional space is required, entries shall be
continued on the outside right flap of the file wrapper.
Computer  database  searches  including  text,  chemical
structure, or sequences shall be documented in the SEARCH
NOTES box on the file wrapper by providing the following
minimum information:

 (a)  The  search  logic  or  chemical  structure  or
sequence used as a query;

 (b) The name of the file or files searched and the
data base service;

 (c) Date of the search; and

 (d) The examiner's initials.

  Three ways in which this minimum documentation can be
provided are:

 (1) supplying, and as necessary annotating, the
computer search printout resulting from a computer assisted
search (see examples 1 and 2 and "Printouts" below), or

 (2) recording the required information on Form PTO -
1604 (Form PTO - 1605 for Sequence Searches), or

 (3) recording the required information in the SEARCH
NOTES box.

  For methods (1) and (2), the name of the database

service and the expressions "(see form)" or "(see printout)"
should be recorded in the SEARCH NOTES box as appropriate
with the date and the examiner's initials.

  Printouts

  Most of the database services accessed in application
searches provide a command to display or print the search
history which includes most, if not all, of the minimum
required  information  for  documenting  database  searches.
Table 1 below lists the history command for each database
service and which of the required minimum documentation
elements are missing when the history command is entered.
The missing elements may be documented by writing them on
the printout of the search history or by supplying further
portions of the missing when the history command is entered.
The missing elements may be documented by writing them on
the printout of the search history or by supplying further
portions of the search transcript which do include the
missing  elements.  In  some  instances,  depending  on  the
database service, the log off command will supply the
missing data element. A printout of the history command and
log out response containing the required data elements is
acceptable as full documentation of a search. This is the
case with STN and Questel's log off command.

  In each case, the name of the database service is not
provided  by  entering  the  history  command  and  must  be
supplied in another manner. If there are several search
statements in the history, the statement or statements of
which the results were reviewed should be indicated by
circling them in BLACK INK. The form or printout page(s)
with the required data elements should be hole punched and
placed in the application file on the right hand flap of the
file wrapper.

 TABLE 1

  History Commands and Missing Elements by Database Service

 **  Double Click here to see the image  **

 Explanation of Table Terminology

  History Command - Generally, a display of what the user
has asked the search software to do. Will display the search
logic entered by the user. Some histories are limited to
display of the searches done only in the current file while
others deliver a complete record of what file or files were
accessed and all searches done since sign on. Dialog,
Questel, Orbit, and Mead are services limited to display of
the searches done only in the current file.

  Name of Database Service - Most services do not display
this information as part of the search transcript. None of
the services in the table list that information as part of
the history command. However, Orbit, Questel, and STN supply
the name of the database service during log off.

  Search Logic - Generally, a display of the search
commands executed by the search software. For a structure or
sequence search, this can be a printout of the structure or
sequence used to query the system.

  Name of File Searched - This is the name of the
collection of data accessed. In some services, the file name
is only displayed when the file is selected and not in
response to the history display command. Dialog and Orbit
are two such services. The file in some cases is identified
only by a number. For example, Dialog only supplies the file
number with the log off command. The file number alone is
not adequate documentation of a search. The name of the file
is required.

  Date of Search - Dialog, Orbit, and Questel do not
display the date of search as part of the history command.
They do supply the date of search during log off.

  Nucleotide and peptide sequence searches will be fully
documented by a printout of the search query sequence and
the beginning of the search result file. Each query sequence
should be clearly related to the appropriate search result,
if necessary, by appropriate annotation.

  Other Databases

  For other types of publicly accessible computer accessed
databases (e.g., CD ROM databases, specialized databases,
etc.),  record  data  as  necessary  to  provide  unique
identification  of  material  searched  and  sufficient
information as to the search query or request so that the
search can be up dated. The record should also document the
location of the database and its form (CD ROM, etc.)

 Example;  Citing a biotech CD ROM database

  Entrez:  Sequences,  National  Center  for  Biotechnology
Information, Version 7.19.91b (CD ROM, Group 1800) Searched
HIV and vaccine; neighbored Galloway article dated 6/5/91 on
April 1, 1990.

 Example:  Citing a nonbiotech CD ROM database

  Computer  Select,  (November,  1991),  Ziff  Davis
Communications  Co.,  (CD  ROM,  STIC),  Searched  Unix  and
emulation on December 1, 1991.

 C. Information Not Recorded On The Flap of The File Wrapper

  For an indication of consideration or nonconsideration
of prior art citations submitted by applicant in Information
Disclosure Statements (37 CFR 1.97 and 1.98), see MPEP 609.

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

*>719.06  < Foreign Filing Dates [R - 3]

  See MPEP § 201.14(c), § 202.03 and § 201.14(d).

*>719.07  < Related Applications [R - 3]

  The file wrapper should identify earlier filed related
applications.

  See MPEP § 202.02 and § 202.03.

720  Public Use Proceedings [R - 3]

 37 CFR 1.292  .  Public use proceedings.

 **>(a)  When a petition for the institution of public
use proceedings, supported by affidavits or declarations is
found, on reference to the examiner, to make a prima facie
showing  that  the  invention  claimed  in  an  application
believed to be on file had been in public use or on sale
more than one year before the filing of the application, a
hearing may be had before the Commissioner to determine
whether a public use proceeding should be instituted. If
instituted, the Commissioner may designate an appropriate
official to conduct the public use proceeding, including the
setting of times for taking testimony, which shall be taken
as provided by § 1.671 through 1.685. The petitioner will be
heard in the proceedings but after decision therein will not
be heard further in the prosecution of the application for
patent.

 (b)  The petition and accompanying papers, or a notice
that such a petition has been filed, shall be entered in the
application file if:

 (1)  The petition is accompanied by the fee set forth in
§ 1.17(j);

 (2)  The  petition  is  served  on  the  applicant  in
accordance with § 1.248, or filed with the Office in
duplicate in the event service is not possible; and

 (3)  The petition is submitted prior to the mailing of a
notice of allowance under § 1.311.<

 (c)  A  petition  for  institution  of  public  use
proceedings shall not be filed by a party to an interference
as to an application involved in the interference. Public
use and on sale issues in an interference shall be raised by
a preliminary motion under § 1.633(a).

  Public use proceedings are provided for in 37 CFR 1.292.
The institution of public use proceedings is discretionary
with the Commissioner. This section is intended to provide
guidance when a question concerning public use proceedings
arises.

  >Any member of the public other than the applicant,
including  private  persons,  corporate  entities,  and
government agencies, may file a petition under 37 CFR 1.292.
A  petition  may  be  filed  by  an  attorney  or  other
representative on behalf of an unnamed principal since 37
CFR  1.292  does  not  require  that  the  principal  be
identified.<A petition and fee (37 CFR 1.17(j)) *>are<
required to initiate consideration of whether to institute a
public  use  proceeding.  The  petitioner  ordinarily  has
information concerning a pending application which claims,
in whole or in part, subject matter that the petitioner
alleges was in "public use" or "on sale" in this country

more than one year prior to the effective United States
filing date of the pending application (see 35 U.S.C. 119**
and 120). He or she thus asserts that a statutory bar (35
U.S.C. 102(b) alone or in combination with 35 U.S.C. 103)
exists which prohibits the patenting of the subject matter
of the application.

  When public use petitions and accompanying papers are
submitted they, or a notice in lieu thereof, will be entered
in the application file >if: (1) the petition is accompanied
by the fee set forth in 37 CFR 1.17(j); (2) the petition is
served on the applicant in accordance with 37 CFR 1.248, or
filed with the Office in duplicate in the event service is
not possible; and (3) the petition is submitted prior to the
mailing of a notice of allowance under 37 CFR 1.311.<
Duplicate  copies  should  be  submitted  only  when,  after
diligent effort, it has not been possible for petitioner to
serve a copy of the petition on the applicant, his or her
attorney or agent >in accordance with 37 CFR 1.248< in which
case the Special Program Law Office of the Office of the
Deputy  Assistant  Commissioner  for  Patents  Policy  and
Projects will attempt to get the duplicate copy to the
applicant, his or her attorney or agent.

  Notice of a petition for a public use proceeding will be
entered in the file in lieu of the petition itself when the
petition and the accompanying papers are too bulky to
accompany the file. Any public use papers not physically
entered in the file will be publicly available whenever the
application file wrapper is available.

  There are two types of public use proceedings: ex parte
and  inter partes . It is important to understand the
difference. In the  ex parte situation, the petitioner is
not entitled, as a matter of right, to inspect the pending
application. Thus, he or she stands in no better position
than any other member of the public regarding access to the
pending application. In the  inter partes situation, the
pending application is a reissue application. In the  inter
partes situation, the petitioner is privy to the contents of
the pending application (37 CFR 1.612). Thus, as pointed out
below,  the  petitioner  in  the  inter  partes  situation
participates in the public use proceedings to a greater
degree than in the  ex parte  situation. A petitioner who
was once involved in a terminated interference with a
pending application is no longer privy to the application
contents and will accordingly be treated as an  ex parte
petitioner. It should be noted that petitions filed on and
after February 11, 1985 will not be allowed in accordance
with 37 CFR 1.292(c) unless the petition arises out of an
interference declared prior to February 11, 1985 or the
interference was declared after February 11, 1985 but arose
from an interference declared prior to that date.

  Since, February 11, 1985, a petition for institution of
public use proceedings cannot be filed by a party to an
interference  as  to  an  application  involved  in  the
interference. Public use issues can only be raised by a
preliminary motion under 37 CFR 1.633(a). However, if the
issue of public use arises out of an interference declared
prior to February 11, 1985, the petition may be filed by a
party to the interference as to an application involved in
the interference.

  There may be cases where a public use petition has been

filed in an application which has been restricted or is
subject to a proper restriction requirement. If the petition
alleges that subject matter covering both elected claims and
nonelected claims is a statutory bar, only that part of the
petition drawn to subject matter of the elected claims will
be considered. However, if a public use proceeding is
ultimately instituted, it will not necessarily be limited to
the subject matter of the elected claims but may include the
nonelected subject matter. Any evidence adduced on the
nonelected subject matter may be used in any subsequent -
filed  application  claiming  subject  matter  without  the
requirement of a new fee (37 CFR 1.17(j)). The petitioner
will not be heard regarding the appropriateness of any
restriction requirement.

 >A petition under 37 CFR 1.292 must be submitted in
writing, must be specifically identify the application to
which the petition is directed by application number or
serial number and filing date, and should include a listing
of all affidavits or declarations and exhibits relied on.
The petition must contain a sufficient description of the
subject matter that the petitioner alleges was in "public
use" or "on sale," including any necessary photographs,
drawings, diagrams, exits, or flowcharts, to enable the
examiner to compare the claimed subject matter to the
subject matter alleged to have been in "public use" or "on
sale." In addition, the petition and any accompanying papers
must either (1) reflect that a copy of the same has been
served upon the applicant or upon the applicant's attorney
or agent of record; or (2) be filed with the Office in
duplicate in the event service is not possible.

  It  is  important  that  any  petition  in  a  pending
application specifically identify the application to which
the petition is directed with the identification being as
complete as possible. The following information, if known,
should be placed on the petition:

 (1) Name of Applicant(s).

 (2) Application number of application.

 (3) Filing date of application.

 (4) Title of invention.

 (5) Group art unit number.

 (6) Name of examiner to whom the application is
assigned.

 (7) Current status and location of application.

 (8) The word "ATTENTION:" followed by the area of
the Office to which the petition is directed as set forth
below.

  In addition, to the above information, the petition
itself should be clearly identified as a "PETITION UNDER 37
CFR 1.292." If the petition is accompanied by exhibits or
other attachments, these should also contain identifying
information thereon in order to prevent them from becoming
inadvertently separated and lost.

  Any petition under 37 CFR 1.292 can be submitted by mail

to the Assistant Commissioner for Patents, Washington, D.C.
20231, and should be directed to the attention of the
director of the particular examining group in which the
application is pending. If the petitioner is unable to
specifically identify the application to which the petition
is directed, but, nevertheless, believes such an application
to be pending, the petition should be directed to the
attention of the Special Program Law Office of the Office of
the Deputy Assistant Commissioner for Patent Policy and
Projects or to "Box DAC," along with as much identifying
data for the application as possible.

  Where a petition is directed to a reissue application
for a patent which is involved in litigation, the outside
envelope and the top right - hand portion of the petition
should be marked with the words "REISSUE LITIGATION.' The
notations preferably should be written in a bright color
with a felt point marker. Any "REISSUE LITIGATION" petition
mailed to the Office should be so marked and mailed to "Box
7." However, in view of the urgent nature of most "REISSUE
LITIGATION" petitions, petitioners may wish to hand - carry
the petition to the appropriate area in order to ensure
prompt receipt and to avoid any unnecessary delays. In
litigation - type cases, all responses should be hand -
carried to the appropriate area in the Office.

  Every effort should be made by a petitioner to effect
service of the petition upon the attorney or agent of record
or upon the applicant if no attorney or agent is of record.
Of  course,  the  copy  served  upon  applicant  or  upon
applicant's attorney or agent should be a complete copy
including a copy of each photograph, drawing, diagram,
exhibit,  flowchart,  or  other  document  relied  on.  The
petition  filed  in  the  Office  should  reflect,  by  an
appropriate "Certificate of Service," that service has been
made as provided in 37 CFR 1.248. Only in those instances
where service is not possible should the petition be filed
in duplicate in order that the Office can attempt service.
In addition, all other papers filed by the petitioner
relating to the petition or subsequent public use proceeding
must be served in accordance with 37 CFR 1.248.<

720.01  Preliminary Handling [R - 3]

  A petition filed under 37 CFR 1.292 should be forwarded
to the Special Program Law Office of the Office of the
Deputy  Assistant  Commissioner  for  Patent  Policy  and
Projects**. A member of the Special Program Law Office's
staff will ascertain whether the formal requirements of 37
CFR 1.292 have been fulfilled. In particular, the petition
will be reviewed to see >whether the petition has been filed
prior to the mailing of a notice of allowance under 37 CFR
1.311,< if the alleged use or sale occurred >in this
country< more than one year before the effective filing date
of the application, whether the petition contains affidavits
>or  declarations<  and  exhibits  to  establish  the  facts
alleged, whether the papers have been filed in duplicate, or
one copy has been served on applicant and whether the
required fee has been tendered. The application file is
ordered and its status ascertained so that appropriate
action may be taken.

  >A petition under 37 CFR 1.292 must be "submitted prior
to the mailing of a notice of allowance under 37 CFR 1.311."
As a practical matter, any petition should be submitted as

soon as possible after the petitioner becomes aware of the
existence of the application to which the petition is to be
directed. By submitting a petition early in the examination
process, i.e., before the Office acts on the application if
possible, the petitioner ensures that the petition will
receive maximum consideration and will be of the most
benefit to the Office in its examination of the application.

  Since a petition under 37 CFR 1.292 cannot be considered
subsequent to issuance of the application as a patent or
abandonment of the application, the petition will not be
considered if the application is not pending when the
petition and application are provided to the member of the
Special  Program  Law  Office's  staff  (i.e.,  that  the
application was pending at the time the petition was filed
would  be  immaterial  to  its  ultimate  consideration).  A
petition submitted prior to the mailing of a notice of
allowance under 37 CFR 1.311, but not provided to the member
of  the  Special  Program  Law  Office's  staff  with  the
application file prior to issuance or abandonment of the
application, will be entered in the application file, but
will be dismissed as moot. A petition filed after final
rejection will be considered if the application is still
pending when the petition and application are provided to
the member of the Special Program Law Office's staff.
However, prosecution will not ordinarily be reopened after
final  rejection  if  the  subject  matter  alleged  in  the
petition to have been in "public use" or "on sale" is merely
cumulative of the prior art cited in the final rejection. If
a petition is filed after the mailing of a notice of
allowance under 37 CFR 1.311, it will be dismissed as
untimely.

  A petition with regard to a reissue application should
be filed within the 2 - month period following announcement
of the filing of the reissue application in the Official
Gazette. If, for some reason, the petition cannot be filed
within the 2 - month period provided by 37 CFR 1.176, the
petition can be submitted at a later time, but petitioner
must be aware that reissue applications are "special" and a
later filed petition may be received after action by the
examiner.  Any  request  by  a  petitioner  in  a  reissue
application for an extension of the 2 - month period
following the announcement in the Official Gazette will be
considered only if filed in the form of a petition under 37
CFR 1.182 and accompanied by the petition fee set forth in
37 CFR 1.17(h). The petition must explain why the additional
time is necessary and the nature of the allegations to be
made in the petition. A copy of such petition must be served
upon applicant in accordance with 37 CFR 1.248. The petition
should be directed to the appropriate examining group. Any
such petition will be critically reviewed as to demonstrated
need before being granted since the delay of examination of
a reissue application of another party is being requested.
Accordingly,  the  requests  should  be  made  only  where
necessary, for the minimum period required, and with a
justification establishing the necessity for the extension.

  If the petition is a "REISSUE LITIGATION" petition, it
is  particularly  important  that  it  be  filed  early  if
petitioner wishes it considered prior to the first Office
action on the application. Petitioners should be aware that
the Office will entertain petitions under 37 CFR 1.183, when
accompanied by the petition fee set forth in 37 CFR 1.17(h),
to waive the 2 - month delay period of 37 CFR 1.176 in

appropriate  circumstances.  Accordingly,  petitioners  in
reissue applications cannot automatically assume that the
full 2 - month delay period of 37 CFR 1.176 will always be
available.<

  In those ex parte situations where a petitioner cannot
identify the pending application by serial number, the
petition papers will be forwarded to the appropriate group
director for an identification search. Once the application
file(s) is located, it should be forwarded to the Special
Program Law Office.

  >If the petition filed in the Office does not indicate
service on applicant or applicant's attorney or agent, and
is not filed in duplicate, then the Office will undertake to
determine whether or not service has been made by contacting
applicant or applicant's attorney or agent by telephone or
in writing to ascertain if service has been made. If service
has not been made and no duplicate has been filed, then the
Office may request petitioner to file such a duplicate
before  the  petition  is  referred  to  the  examiner.
Alternatively, if the petition involves only a few pages,
the Office may, in its sole discretion, elect to reproduce
the petition rather than delay referring it to the examiner.
If duplicate petition papers are mailed to applicant or
applicant's attorney or agent by the Office, the application
file  should  reflect  that  fact,  either  by  a  letter
transmitting the petition or, if no transmittal letter is
used, simply by an appropriate notation in the "Contents"
section of the application file wrapper.

  If the petition is not submitted prior to the mailing of
a notice of allowance under 37 CFR 1.311, it should not be
entered in the application file. The applicant should be
notified that the petition is untimely and that it is not
being entered in the application file. The handling of the
petition will vary depending on the particular following
situation.

 A.  Service of Copy Included

  Where the petition includes an indication of service of
copy on the applicant, the original petition should be
discarded.

 B.  Service of Copy Not Included

  Where the petition does not include an indication of
service and a duplicate copy of the petition is or is not
present, the duplicate copy (if present) should be discarded
and the original petition should be sent to the applicant
along with the notification of nonentry.<

720.02  Examiner Determination of  Prima Facie Showing [R
- 3]

  Once the Special Program Law Office staff member has
determined that the petition meets the formal requirements
of 37 CFR 1.292, and the application's status warrants
consideration of the petition, he or she will prepare a
letter for the Patent Legal Administrator, forwarding the
petition and the application file to the examiner for
determination of whether a prima facie case of public use or
sale >in this country< of the claimed subject matter is
established by the petition. Any other papers that have been

filed by the parties involved, such as a reply by the
applicant or additional submissions by the petitioner, will
also be forwarded to the examiner. Whether additional papers
are accepted is within the discretion of the Special Program
Law Office's staff member. However, protracted paper filing
is discouraged since the parties should endeavor to present
their best case as to the prima facie showing at the
earliest possible time. No oral hearings or interviews will
be granted at this stage, and the examiner is cautioned not
to answer any inquiries by the petitioner or applicant.

  A prima facie case is established by the petition if the
examiner finds that the facts asserted in the affidavit(s)
>or declaration(s)<, as supported by the exhibits, if later
proved true by testimony taken in the public use proceeding,
would result in a statutory bar to the claims under 35
U.S.C. 102(b) alone or in combination with 35 U.S.C. 103.
See MPEP §*>2133.03<  et seq .

  To make this determination, the examiner must identify
exactly what was in public use or on sale, whether it was in
use or on sale >in this country< more than one year before
the effective filing date, and whether the pending claims
"read" on or are obvious over what has been shown to be in
public use or on sale. On this last point, the examiner
should compare all pending claims with the matter alleged to
have been in use or on sale, not just the claims identified
by petitioner.

  In situations where the petition alleges only that the
claims are obvious over subject matter asserted to be in
public use or on sale, the petition should include prior art
or other information on which it relies and explain how the
prior art or other information in combination with the
subject matter asserted to be in public use or on sale
renders the claims obvious. The examiner is not expected to
make a search of the prior art in evaluating the petition.
If, however, the examiner determines that a prima facie case
of  anticipation  under  35  U.S.C.  102(b)  has  not  been
established but, at the time of evaluating the petition, the
examiner is aware of prior art or other information which,
in his or her opinion, renders the claims obvious over the
subject matter asserted to be in public use or on sale the
examiner may determine that a  prima facie case is made out,
even if the petition alleged only that the claims were
anticipated under 35 U.S.C. 102(b).

  After having made his/her determination, the examiner
will forward a memorandum to the Patent Legal Administrator,
stating his or her findings and his or her decision as to
whether a prima facie  case has been established. The
findings should include a summary of the alleged facts, a
comparison of at least one claim with the device alleged to
be in public use or >on< sale, and any other pertinent facts
which will aid the Patent Legal Administrator in conducting
the preliminary hearing. The report should be prepared in
triplicate and addressed to the Patent Legal Administrator.

720.03  Preliminary Hearing [R - 1]

  >Where  the  examiner  concludes  that  a  prima  facie
showing has not been established, both the petitioner and
the applicant are so notified by the Office of the Deputy
Assistant Commissioner for Patent Policy and Projects and
the application proceedings are resumed without giving the

parties an opportunity to be heard on the correctness of the
examiner's decision. Where the examiner concludes that a
prima facie  case has been established, the Commissioner may
hold a preliminary hearing. In such case, the parties will
be notified by letter of the examiner's conclusion and of
the time and date of the hearing. In  ex parte cases,
whether or not the examiner has concluded that a  prima
facie  showing  has  been  established,  no  copy  of  the
examiner's memorandum to the Patent Legal Administrator will
be forwarded to the petitioner. However, in such cases where
the petition covers restrictable subject matter and it is
evident that petitioner is not aware of a restriction
requirement which has been or may be made, petitioner will
be informed that the examiner's conclusion is limited to
elected subject matter. While not so specifically captioned,
the notification of this hearing amounts to an order to show
cause why a public use proceeding should not be held. No new
evidence is to be introduced or discussed at this hearing.
The format of the hearing is established by the member of
the Special Program Law Office staff, and the Patent Legal
Administrator  presides.  The  examiner  may  attend  as  an
observer only.

  Where the hearing is held in the ex parte situation,
great care will be taken to avoid discussion of any matters
of the application file which are not already of knowledge
to petitioner. Of course, applicant may of his or her own
action or consent notify the petitioner of the nature of his
or her claims or other related matters.

  After  the  hearing  is  concluded,  the  Patent  Legal
Administrator will decide whether public use proceedings are
to be initiated, and he/she will send appropriate notice to
the parties.

720.04  Public Use Proceeding Testimony[R - 3]

  When the Patent Legal Administrator decides to institute
public use proceedings, the case is referred to the examiner
who will conduct all further proceedings. The fact that the
affidavits >or declarations< and exhibits presented with the
petition for institution of the public use proceedings have
been held to make out a prima facie case does not mean that
the statutory bar has been conclusively established. The
statutory bar can only be established by testimony taken in
accordance with normal rules of evidence, including the
right  of  cross  -  examination.  The  affidavits  >or
declarations< are not to be considered part of the testimony
and in no case can they be used as evidence on behalf of the
party submitting them >unless the affidavits or declarations
are submitted as a part of the petitioner's testimony<.

  The procedure for taking testimony in a public use
proceeding is similar to that for taking testimony in an
interference.  Normally,  no  representative  of  the
Commissioner need be present at the taking of the testimony.
>Note  that  37  CFR  1.672(a)  limits  noncompelled  direct
testimony to affidavits. See 37 CFR 1.601(b) for the meaning
of affidavit.<

  The examiner will set a schedule of times for taking
testimony and for filing the record and briefs on the basis
of the following:

  **>SCHEDULE FOR TESTIMONY

 (1) Testimony for petitioner to close . .
.  [specify  a  date,  e.g.,  January  10,  1997,  which  is
approximately 60 days after the letter]

 (2) Time for the applicant to file objections to
admissibility of petitioner's evidence to close . .
. [specify a date which is approximately 20 days after date
#1]

 (3) Time for the petitioner to file supplemental
evidence to overcome objections to close 20 days from above
date, i.e., . .
. . . [specify a date which is exactly 20 days after date
#2, unless the date is a Saturday, Sunday or federal
holiday, in which case use the next business day]

 (4) Time for the applicant to request cross -
examination of the petitioner's affiants to close . .
. . . [specify a date which is approximately 20 days after
date #3]

 (5) Time for cross - examination of the petitioner's
affiants to close . .
[specify a date which is approximately 30 days after date
#4]

 (6) Rebuttal testimony by applicant to close . .
. [specify a date which is approximately 20 days after date
#5]

 SCHEDULE FOR FILING AND SERVING COPIES OF RECORD AND BRIEFS

  One copy of each of the petitioner's and the
applicant's record and exhibits (see 37 CFR 1.653) is due .
. . . [specify a date which is approximately 30 days after
date #6]

  Petitioner's brief is due . .
. . . [specify a date which is approximately 30 days after
previous date]

  Applicant's brief is due . .
. . . [specify a date which is approximately 20 days after
previous date]

  Applicant and petitioner may agree on a different
schedule for testimony, records, and briefs, provided the
last brief is due no later than the date set forth above and
provided a copy of the new schedule is filed by either
applicant  or  petitioner.<No  extension  of  time  will  be
permitted under 37 CFR 1.136(a). Any **>petition to extend
the time for filing the last brief< must be filed under 37
CFR 1.136(b).

  >A certified transcript of a deposition must be filed in
the Patent and Trademark Office within one month after the
date of deposition. 37 CFR 1.678.

  All papers in the public use proceeding shall be served
in accordance with 37 CFR 1.248.<

  It is understood from the above scheduling of times that
a given time period begins with the close of the previous
period, and that the completion of testimony or the filing

of  the  Record  or  a  brief  before  the  close  of  the
corresponding period does not change its closing date. To
avoid confusion, the examiner should indicate specific dates
for the close of each period.

  In ex parte cases and in  inter partes cases where the
pending  application  is  a  reissue,  an  oral  hearing  is
ordinarily not held.

  In all public use proceedings, whether the ultimate
issue is anticipation under 35 U.S.C. 102(b) or obviousness
over 35 U.S.C. 103, testimony will be limited to the issues
of public use or on sale. No testimony will be received on
whether the claimed subject matter would have been obvious
over subject matter asserted to be in public use or on sale.

720.05  Final Decision [R - 3]

  The final decision of the examiner should be "analogous
to that rendered by the [Board of Patent Appeals and
Interferences] in an interference proceeding, analyzing the
testimony>"< and stating conclusions, In re Townsend , 1913
C.D. 55 >,188 O.G. 513 (Comm'r Pat. 1913)<. In reaching his
or her decision, the examiner is not bound by the prior
finding that a  prima facie case has been established.

  If the examiner concludes that a public use or sale bar
exists, he or she will enter a rejection to that effect in
the application file, predicating that rejection on the
evidence considered and the findings and decision reached in
the public use proceeding. Even if a rejection is not made,
the  examiner's  written  action  should  reflect  that  the
evidence of 35 U.S.C. 102(b) activity has in fact been
considered. Likewise, if the examiner concludes that a prima
facie  case (1) has not been established, or (2) has been
established and rebutted (MPEP §*>2133.03(e)  et seq. <)
then the examiner's written action should so indicate.
Strict adherence to this format should cause the rationale
employed by the examiner in the written action to be self -
evident. In this regard, the use of reasons for allowance
pursuant to 37 CFR 1.109 may also be appropriate, MPEP §
1302.14. In  ex parte  cases where the petitioner does not
have access to the file, no copy of the examiner's action is
mailed to the petitioner by the Office.

  There is no review from the final decision of the
examiner in the public use proceedings. A petition under 37
CFR 1.181, requesting that the Commissioner exercise his or
her  supervisory  authority  and  vacate  the  examiner's
decision, will not be entertained except where there is a
showing of clear error. See Ex parte Hartley1908 C.D. 224 >,
136 O.G. 1767 (Comm'r Pat. 1908)<. Once the application
returns to its  ex parte status, appellate review under 35
U.S.C. 134 and 141 - 145 may be had of any adverse decision
rejecting claim(s), as a result of the examiner's decisions
as to public use or sale.

724  Trade Secret, Proprietary, and Protective Order
Materials [R - 1]

  >Situations arise in which it becomes necessary, or
desirable, for parties to proceedings in the Patent and
Trademark Office relating to pending patent applications or
reexamination proceedings to submit to the Office trade
secret, proprietary, and/or protective order materials. Such

materials  may  include  those  which  are  subject  to  a
protective or secrecy order issued by a court or by the
International Trade Commission (ITC). While one submitting
materials to the Office in relation to a pending patent
application  or  reexamination  proceeding  must  generally
assume that such materials will be made of record in the
file and be made public, the Office is not unmindful of the
difficulties this sometimes imposes. The Office is also
cognizant of the sentiment expressed by the court in In re
Sarkar , 197 USPQ 788 at 791 (CCPA 1978), which stated:

  "that wherever possible, trade secret law and patent laws
should be administered in such manner that the former will
not deter an inventor from seeking the benefit of the
latter, because, the public is  most  benefited by the early
disclosure of the invention in consideration of the patent
grant. If a patent applicant is unwilling to pursue his
right to a patent at the risk of certain loss of trade
secret protection, the two systems will conflict, the public
will be deprived of knowledge of the invention in many
cases, and inventors will be reluctant to bring unsettled
legal questions of significant current interest . . for
resolution."

  Parties bringing information to the attention of the
Office for use in the examination of applications and
reexaminations are frequently faced with the prospect of
having legitimate trade secret, proprietary, or protective
order material disclosed to the public.

  Inventors and others covered by 37 CFR 1.56(c) and 1.555
have a duty to disclose to the Office information they are
aware of which is material to patentability. 37 CFR 1.56(b)
states that "information is material to patentability when
it is not cumulative to information already of record or
being  made  of  record  in  the  application,  and  (1)  it
establishes,  by  itself  or  in  combination  with  other
information, a prima facie case of unpatentability of a
claim; or (2) it refutes, or is inconsistent with, a
position the applicant takes in:

 (i) opposing an argument of unpatentability relied
on by the Office, or

 (ii) asserting an argument of patentability.

  A prima facie case of unpatentability is established
when the information compels a conclusion that a claim is
unpatentable under the preponderance of evidence, burden -
of - proof standard, giving each term in the claim its
broadest  reasonable  construction  consistent  with  the
specification, and before any consideration is given to
evidence which may be submitted in an attempt to establish a
contrary conclusion of patentability."

  It is incumbent upon patent applicants, therefore, to
bring "material" information to the attention of the Office.
It matters not whether the "material" information can be
classified as a trade secret, or as proprietary material, or
whether it is subject to a protective order. The obligation
is  the  same;  it  must  be  disclosed  if  "material  to
patentability "as defined in 37 CFR 1.56(b). The same duty
rests upon a patent owner under 37 CFR 1.555 whose patent is
undergoing reexamination.

  Somewhat the same problem faces a protestor under 37 CFR
1.291(a) who believes that trade secret, proprietary, or
protective order material should be considered by the Office
during the examination of an application.

  In some circumstances, it may be possible to submit the
information in such a manner that legitimate trade secrets,
etc., will not be disclosed, e.g., by appropriate deletions
of nonmaterial portions of the information. This should be
done only where there will be no loss of information
material to patentability under 37 CFR 1.56 or 1.555.

  The provisions of this section do not relate to material
appearing in the description of the patent application.<

724.01  Completeness of the Patent File Wrapper [R - 1]

  >It is the intent of the Office that the patent file
wrapper be as complete as possible insofar as "material"
information is concerned. The Office attempts to minimize
the potential conflict between full disclosure of "material"
information as required by 37 CFR 1.56 and protection of
trade secret, proprietary, and protective order material to
the extent possible.

  The procedures set forth in the following sections are
designed to enable the Office to ensure as complete a patent
file wrapper as possible while preventing unnecessary public
disclosure  of  trade  secrets,  proprietary  material,  and
protective order material.<

724.02  Method of Submitting Trade Secret, Proprietary,
and/or Protective Order Materials [R - 1]

  >Information which is considered by the party submitting
the same to be either trade secret material or proprietary
material, and any material subject to a protective order,
must be clearly labeled as such and be filed in a sealed,
clearly labeled, envelope or container. Each document or
item must be clearly labeled as a "Trade Secret" document or
item, a "Proprietary" document or item, or as an item or
document "Subject To Protective Order." It is essential that
the terms "Confidential," "Secret," and "Restricted" or
"Restricted Data" not be used when marking these documents
or items in order to avoid confusion with national security
information documents which are marked with these terms
(note also MPEP § 121). If the item or document is "Subject
to Protective Order" the proceeding, including the tribunal,
must be set forth on each document or item. Of course, the
envelope or container, as well as each of the documents or
items, must be labeled with complete identifying information
for the file to which it is directed, including the Office
or area to which the envelope or container is directed.

  Examples of appropriate labels for such an envelope or
container  addressed  to  an  application  are  as  follows:
(Appropriate changes would be made for papers filed in a
reexamination file.)

  A. "TRADE SECRET MATERIAL NOT OPEN TO PUBLIC. TO BE
OPENED ONLY BY EXAMINER OR OTHER AUTHORIZED PATENT AND
TRADEMARK OFFICE EMPLOYEE.

  In re Application of

  Serial No.

  Filed:

  For: (Title of Invention)

  Group Art Unit:

  Examiner:

  ATTENTION: (Current Location of Application)"

  B. "PROPRIETARY MATERIAL NOT OPEN TO PUBLIC. TO BE
OPENED ONLY BY EXAMINER OR OTHER AUTHORIZED PATENT AND
TRADEMARK OFFICE EMPLOYEE.

  In re Application of

  Serial No.

  Filed:

  For: (Title of Invention)

  Examiner:

  ATTENTION: (Current Location of Application)"

  C. "MATERIAL SUBJECT TO PROTECTIVE ORDER - NOT OPEN TO
PUBLIC. TO BE OPENED ONLY BY EXAMINER OR OTHER AUTHORIZED
PATENT AND TRADEMARK OFFICE EMPLOYEE.

  Tribunal Issuing Protective Order:

  Civil Action or Other Identification No.:

  Date of Order:

  Current Status of Proceeding: (Pending, Stayed, etc.)

  In re application of:

  Serial No.

  Filed:

  For: (Title of Invention)

  Group Art Unit:

  Examiner:

  ATTENTION: (Current Location of Application)"

  The envelope or container must be accompanied by a
transmittal letter which also contains the same identifying
information as the envelope or container. The transmittal
letter must also state that the materials in the envelope or
container are considered trade secrets or proprietary, or
are subject to a protective order, and are being submitted
for consideration under MPEP § 724. A petition under 37 CFR
1.182 and fee therefor (37 CFR 1.17(h)) to expunge the
information, if found not to be important to a reasonable
examiner in deciding whether to allow the application to
issue as a patent, may also accompany the envelope or

container.

  In order to ensure that such an envelope or container is
not mishandled, either prior to reaching the Office, or in
the Office, the envelope or container should preferably be
hand - carried to the particular area to which it is
directed and in which the application or reexamination is
pending at that time. If the proceeding is then pending in
an examining group, the envelope or container should be hand
- carried to the office of the director of the examining
group.  The  Office  personnel  receiving  the  envelope  or
container should be informed that it contains such material.
If the envelope or container cannot be hand - carried to the
office, it can be mailed to the Patent and Trademark Office
in the normal manner, but that method of submission is not
as desirable as hand - carrying the envelope or container to
the Office or area involved.<

724.03  Types of Trade Secret, Proprietary, and/or
Protective Order Materials Submitted Under MPEP § 724.02 [R
- 1]

  >The types of materials or information contemplated for
submission under MPEP § 724.02 include information "material
to patentability" but does not include information favorable
to patentability. Thus, any trade secret, proprietary, and/
or protective order materials which are required to be
submitted on behalf of a patent applicant under 37 CFR 1.56
or patent owner under 37 CFR 1.555 can be submitted in
accordance with MPEP § 724.02. Neither 37 CFR 1.56 nor 1.555
require  the  disclosure  of  information  favorable  to
patentability, e.g., evidence of commercial success of the
invention (see 42 Fed. Reg. 5590). Such information should
not be submitted in accordance with MPEP § 724.02. If any
trade secret, proprietary, and/or protective order materials
are  submitted  in  amendments,  arguments  in  favor  of
patentability, or affidavits under 37 CFR 1.131 or 1.132,
they will be made of record in the file and will not be
given any special status.

  Insofar  as  protestors  under  37  CFR  1.291(a)  are
concerned, submissions can be made in accordance with MPEP §
724.02  if  protestor  or  petitioner  has  access  to  the
application  involved.  In  such  cases,  of  course,  the
requirements for service must be followed. The Office cannot
ensure that the party or parties served will maintain the
information secret. If the party or parties served find it
necessary or desirable to comment on material submitted
under MPEP § 724 before it is, or without its being, found
"material to patentability," such comments should either (1)
not disclose the details of the material or (2) be submitted
in a separate paper under MPEP § 724.02.<

724.04  Office Treatment and Handling of Materials
Submitted Under MPEP § 724.02 [R - 1]

  >The exact methods of treating and handling materials
submitted under MPEP § 724.02 will differ slightly depending
upon whether the materials are submitted in an original
application subject to the requirements of 35 U.S.C. 122 or
whether the submission is made in a reissue application or
reexamination file open to the public under 37 CFR 1.11(b)
or (d). In any event, Office personnel must not disclose
such materials to the public without authorization. Upon
receipt of the submission, the transmittal letter and the

envelope or container will be date stamped and brought to
the attention of the examiner or other Office employee
responsible for evaluating the submission. The receipt of
the transmittal letter and envelope or container will be
noted on the "Contents" of the application or reexamination
file.  In  addition,  the  face  of  the  application  or
reexamination file will have the notation placed thereon to
indicate that trade secret, proprietary, or protective order
material has been filed. The location of the material will
also be specified. The words "TRADE SECRET MATERIALS FILED
WHICH ARE NOT OPEN TO PUBLIC" on the face of the file are
sufficient  to  indicate  the  presence  of  trade  secret
material.  Similar  notations  will  be  made  for  either
proprietary or protective order materials.<

724.04(a)  Materials Submitted in an Application Covered
by 35 U.S.C. 122 [R - 1]

  >Any materials submitted under MPEP § 724.02 in an
application covered by 35 U.S.C. 122 will be treated in the
following manner:

 (1)  The  examiner,  or  other  appropriate  Office
official who is responsible for considering the information,
will make a determination as to whether or not any portion
or all of the information submitted is important to a
reasonable  examiner  in  deciding  whether  to  allow  the
application to issue as a patent.

 (2)  If  any  portion  or  all  of  the  submitted
information is found important to a reasonable examiner in
deciding whether to allow the application to issue as a
patent, it will be cited in the next Office action, or other
appropriate Office communication and will become a part of
the file history, which upon issuance of the application as
a patent would become available to the public.

 (3)  If  any  portion  or  all  of  the  submitted
information is found not to be important to a reasonable
examiner in deciding whether to allow the application to
issue  as  a  patent,  the  next  Office  action  or  other
appropriate Office communication will so indicate without
including the details of the submitted information.

 (4)  If  any  portion  or  all  of  the  submitted
information is found not to be important to a reasonable
examiner in deciding whether to allow the application to
issue as a patent, that information will be resealed in its
envelope or container and retained pending the possible
filing of a petition to expunge the information.

 (5)  Any  petition  to  expunge  the  submitted
information or any portion thereof will be treated in
accordance with MPEP § 724.05.<

724.04(b)  Materials Submitted in Reissue Applications
Open to the Public Under 37 CFR 1.11(b) [R - 1]

  >Any materials submitted under MPEP § 724.02 in a
reissue application open to the public under 37 CFR 1.11(b)
will be treated in the following manner:

 (1) The submitted information will be maintained
separate from the reissue application file and will not be
publicly available until a determination has been made as to

whether or not the information is important to a reasonable
examiner in deciding whether to allow the application to
issue as a patent.

 (2)  The  examiner,  or  other  appropriate  Office
official who is responsible for considering the information,
will make a determination as to whether or not any portion
or all of the information submitted is important to a
reasonable  examiner  in  deciding  whether  to  allow  the
application to issue as a patent.

 (3)  If  any  portion  or  all  of  the  submitted
information is found important to a reasonable examiner in
deciding whether to allow the application to issue as a
patent, it will be cited in the next Office action or other
appropriate Office communication and will thereafter become
a permanent part of the reissue application file and open to
the public.

 (4)  If  any  portion  or  all  of  the  submitted
information is found not to be important to a reasonable
examiner in deciding whether to allow the application to
issue  as  a  patent,  the  next  Office  action  or  other
appropriate Office communication will so indicate without
including in the communication the details of the submitted
information.

 (5)  If  any  portion  or  all  of  the  submitted
information is found not to be important to a reasonable
examiner in deciding whether to allow the application to
issue as a patent, that information will be resealed in its
envelope  or  container  and  retained  separate  from  the
application file, and unavailable to the public, pending the
possible filing of a petition to expunge the information.

 (6) Pending the filing of the petition to expunge
the sealed envelope or container should be clearly marked
"Not Open To The Public" and Office personnel will not make
such envelope or container available to any member of the
public inspecting the reissue application file.

 (7) Any petition to expunge a portion or all of the
submitted information will be treated in accordance with
MPEP § 724.05.<

724.04(c)  Materials Submitted in Reexamination File
Open to the Public Under 37 CFR 1.11(d) [R - 1]

  >Any materials submitted under MPEP § 724.02 in a
reexamination file open to the public under 37 CFR 1.11(d)
will be treated in the following manner:

 (1) The submitted information will be maintained
separate  from  the  reexamination  file  and  will  not  be
publicly available until a determination has been made as to
whether or not the information is important to a reasonable
examiner in deciding whether or not a claim is patentable.

 (2)  The  examiner,  or  other  appropriate  Office
official who is responsible for considering the information,
will make a determination as to whether or not any portion
or all of the information submitted is important to a
reasonable examiner in deciding whether or not a claim is
patentable.

 (3)  If  any  portion  or  all  of  the  submitted
information is found important to a reasonable examiner in
deciding whether or not a claim is patentable, it will be
cited in the next Office action or other appropriate Office
communication and will thereafter become a permanent part of
the reexamination file and open to the public.

 (4)  If  any  portion  or  all  of  the  submitted
information is found not to be important to a reasonable
examiner in deciding whether or not a claim is patentable,
the  next  Office  action  or  other  appropriate  Office
communication will so indicate without including in the
communication the details of the submitted information.

 (5)  If  any  portion  or  all  of  the  submitted
information is found not to be important to a reasonable
examiner in deciding whether or not a claim is patentable,
that  information  will  be  resealed  in  its  envelope  or
container and retained separate from the reexamination file,
and unavailable to the public, pending the possible filing
of a petition to expunge the information.

 (6) Pending the filing of the petition to expunge
the sealed envelope or container should be clearly marked
"Not Open To The Public" and Office personnel will not make
such envelope or container available to any member of the
public inspecting the reexamination file.

 (7) Any petition to expunge a portion or all of the
submitted information will be treated in accordance with
MPEP § 724.05.<

724.05  Petition To Expunge Materials Submitted Under MPEP
§  724.02 [R - 1]

  >A petition to expunge information submitted under MPEP
§ 724.02 will be entertained only if the petition fee (37
CFR 1.17(h)) is filed and the information has been found not
to be important to a reasonable examiner in deciding on
patentability. If the information is found to be important
to a reasonable examiner in deciding on patentability, any
petition to expunge the information will be denied. Any such
petition to expunge information submitted under MPEP §
724.02 should be directed to the Office of the Assistant
Commissioner for Patents, Crystal Park 2, Suite 923. Such
petition must contain:

 (1) A clear identification of the information to be
expunged without disclosure of the details thereof.

 (2) A clear statement that the information to be
expunged is trade secret material, proprietary material,
and/or  subject  to  a  protective  order,  and  that  the
information has not been otherwise made public.

 (3)  A  clear  identification  of  the  application
paper(s) which held that such information was not important
to deciding patentability.

 (4) A commitment on the part of the petitioner to
retain such information for the period of any patent with
regard to which such information is submitted.

 (5) A statement that the petition to expunge is
being submitted by, or on behalf of, the party in interest

who originally submitted the information.

 (6) The fee (37 CFR 1.17(h)) for a petition under 37
CFR 1.182.

  Any  such  petition  to  expunge  may  accompany  the
submission of the information and, in any event, must be
submitted in sufficient time that it can be acted on prior
to the date on which the patent or reexamination certificate
issues. Timely submission of the petition is, accordingly,
extremely important. If the petition does not accompany the
information when it is initially submitted, the petition
should be submitted while the application or reexamination
is  pending  in  the  examining  group  and  before  it  is
transmitted to the Publishing Division. If, for any reason,
a decision to expunge cannot be, or is not, made prior to
the date on which the patent or reexamination certificate
issues any material then in the file will remain therein and
be open to the public. Accordingly, it is important that
both the submission of any material under MPEP § 724.02 and
the submission of any petition to expunge occur as early as
possible during the examination process.

  It should be noted that petitions to expunge information
not submitted under MPEP § 724.02; i.e., information which
is  a  part  of  the  original  disclosure  such  as  the
specification and drawings, will ordinarily not be favorably
entertained.<

  - -- - -- END - -- - --

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

  801  Introduction
  802  Basis for Practice in Statute and Rules
  802.01 Meaning of "Independent" and "Distinct"
  802.02 Definition of Restriction
  803  Restriction - - When Prope r
  803.01 Review by Primary Examiner
  803.02 Restriction - Markush Claims
  803.03 Restriction - Transitional Applications
  803.03(a)  Transitional Application - Linking Claim
  Allowable
  803.03(b)  Transitional Application - Generic Claim
  Allowable >803.04  Restriction - Nucleotide
  Sequences<
  804  Definition of Double Patenting
  804.01 Prohibition of Double Patenting Rejections
  Under 35 U.S.C. 121
  804.02 Avoiding a Double Patenting Rejection
  804.03 Treatment of Commonly Owned Cases of Different
  Inventive Entities
  804.04 Submission to Group Director
  805  Effect of Improper Joinder in Patent
  806  Determination of Distinctness or Independence of
  Claimed Inventions
  806.01 Compare Claimed Subject Matter
  806.02 Patentability Over the Prior Art Not
  Considered
  806.03 Single Embodiment, Claims Defining Same
  Essential Features
  806.04 Independent Inventions
  806.04(a)  Species - Genus

  806.04(b)  Species May Be Related Inventions
  806.04(c)  Subcombination Not Generic to Combination
  806.04(d)  Definition of a Generic Claim
  806.04(e)  Claims Restricted to Species
  806.04(f)  Claims Restricted to Species, by Mutually
  Exclusive Characteristics
  806.04(h)  Species Must Be Patentably Distinct From Each
  Other and From Genus
  806.04(i)  Generic Claims Presented for First Time After
  Issue of Species
  806.05 Related Inventions
  806.05(a)  Combination and Subcombination or Element
  806.05(b)  Old Combination - Novel Subcombination
  806.05(c)  Criteria of Distinctness for Combination,
  Subcombination, or Element of a Combination
  806.05(d)  Subcombinations Usable Together
  806.05(e)  Process and Apparatus for Its Practice -
  Distinctness
  806.05(f)  Process of Making and Product Made -
  Distinctness
  806.05(g)  Apparatus and Product Made - Distinctness
  806.05(h)  Product and Process of Using
  806.05(i)  Product, Process of Making, and Process of
  Using - - Product Claim Not Allowable
  807  Patentability Report Practice Has No Effect on
  Restriction Practice
  808  Reasons for Insisting Upon Restriction
  808.01 Independent Inventions
  808.01(a)  Species
  808.02 Related Inventions
  809  Claims Linking Distinct Invention s
  809.02 Generic Claim Linking Species
  809.02(a)  Election Required
  809.02(b)  Election Required - Generic Claim Allowable
  809.02(c)  Action Following Election
  809.02(d)  No Species Claims
  809.02(e)  Generic Claim Allowable in Substance
  809.03 Linking Claims
  809.04 Retention of Claims to Nonelected Invention
  810  Action on the Merits
  810.01 Not Objectionable When Coupled With
  Requirement
  810.02 Usually Deferred
  810.03 Given on Elected Invention When Requirement Is
  Made Final
  811  Time for Making Requirement
  811.02 Even After Compliance With Preceding
  Requirement
  811.03 Repeating After Withdrawal Proper
  811.04 Proper Even Though Grouped Together in Parent
  Case
  812  Who Should Make the Requirement
  812.01 Telephone Restriction Practice
  814  Indicate Exactly How Application Is To Be
  Restricted
  815  Make Requirement Complete
  816  Give Reasons for Holding of Independence or
  Distinctness
  817  Outline of Letter for Restriction Requirement
  Between Distinct Inventions
  818  Election and Response
  818.01 Election Fixed by Action on Claims
  818.02 Election Other Than Express
  818.02(a)  By Originally Presented Claims
  818.02(b)  Generic Claims Only - No Election of Species

  818.02(c)  By Optional Cancellation of Claims
  818.03 Express Election and Traverse
  818.03(a)  Response Must Be Complete
  818.03(b)  Must Elect, Even When Requirement Is Traversed
  818.03(c)  Must Traverse To Preserve Right of Petition
  818.03(d)  Traverse of Nonallowance of Linking Claims
  818.03(e)  Applicant Must Make Own Election
  819  Office Generally Does Not Permit Shift
  819.01 Office May Waive Election and Permit Shift
  820  Not an Election; Permissible Shift
  820.01 Old Combination Claimed - Not an Election
  820.02 Interference Issues - Not an Election
  821  Treatment of Claims Held to be Drawn to Nonelected
  Inventions
  821.01 After Election With Traverse
  821.02 After Election Without Traverse
  821.03 Claims for Different Invention Added After a
  Office Action
  821.04 Rejoinder
  822  Claims to Inventions That Are Not Distinct in
  Plural Applications of Same Inventive Entity
  822.01 Copending Before the Examiner
  823  Unity of Invention Under the Patent  Cooperation
  Treaty

801  Introduction

  This chapter is limited to a discussion of the subject
of restriction and double patenting under U.S.C. Title 35
and  the  Rules  of  Practice  as  it  relates  to  national
applications filed under 35 U.S.C. 111. The discussion of
unity of invention under the Patent Cooperation Treaty
Articles and Rules as it is applied as an International
Searching  Authority,  International  Preliminary  Examining
Authority, and in applications entering the National Stage
under 35 U.S.C. 371 as a Designated or Elected Office in the
Patent and Trademark Office is covered in Chapter 1800.

802  Basis for Practice in Statute and Rules

  The basis for restriction and double patenting practices
is found in the following statute and rules:

 35 U.S.C. 121.  Divisional applications.

  If two or more independent and distinct inventions are
claimed in one application, the Commissioner may require the
application to be restricted to one of the inventions. If
the other invention is made the subject of a divisional
application which complies with the requirements of section
120 of this title it shall be entitled to the benefit of the
filing date of the original application. A patent issuing on
an application with respect to which a requirement for
restriction under this section has been made, or on an
application filed as a result of such a requirement shall
not be used as a reference either in the Patent and
Trademark Office or in the courts against a divisional
application or against the original application or any
patent  issued  on  either  of  them,  if  the  divisional
application is filed before the issuance of the patent on
the  other  application.  If  a  divisional  application  is
directed solely to subject matter described and claimed in
the original application as filed, the Commissioner may
dispense with signing and execution by the inventor. The

validity of a patent shall not be questioned for failure of
the Commissioner to require the application to be restricted
to one invention.

 37 CFR 1.141.  Different inventions in one application.

  (a) Two or more independent and distinct inventions may
not be claimed in one national application, except that more
than one species of an invention, not to exceed a reasonable
number, may be specifically claimed in different claims in
one national application, provided that application also
includes an allowable claim generic to all the claimed
species and all the claims to species in excess of one are
written in dependent form ( § 1.75) or otherwise include all
the limitations of the generic claim.

  (b)  Where  claims  to  all  three  categories,  product,
process of making and process of use, are included in a
national  application,  a  three  way  requirement  for
restriction can only be made where the process of making is
distinct from the product. If the process of making and the
product are not distinct, the process of using may be joined
with the claims directed to the product and the process of
making the product even though a showing of distinctness
between the product and process of using the product can be
made.

 37 CFR 1.142.  Requirement for restriction.

  (a) If two or more independent and distinct inventions
are claimed in a single application, the examiner in his
action shall require the applicant in his response to that
action to elect that invention to which his claim shall be
restricted, this official action being called a requirement
for restriction (also known as a requirement for division).
If the distinctness and independence of the inventions be
clear, such requirement will be made before any action on
the merits; however, it may be made at any time before final
action in the case, at the discretion of the examiner.

  (b) Claims to the invention or inventions not elected, if
not  cancelled,  are  nevertheless  withdrawn  from  further
consideration by the examiner by the election, subject
however to reinstatement in the event the requirement for
restriction is withdrawn or overruled.

  The pertinent Patent Cooperation Treaty (PCT) articles
and rules are cited and discussed in Chapter 1800. Sections
1868, 1898.02(b) and 1898.07(c) should be consulted for
discussions  on  unity  of  invention:  (1)  before  the
International Searching Authority, (2) the International
Preliminary Examining Authority, and (3) the National Stage
under 35 U.S.C. 371.

802.01  Meaning of "Independent" and "Distinct"

  35 U.S.C. 121 quoted in the preceding section states that
the Commissioner may require restriction if two or more
"independent and distinct" inventions are claimed in one
application. In 37 CFR 1.141, the statement is made that two
or more "independent and distinct inventions" may not be
claimed in one application.

  This raises the question of the subjects as between
which the Commissioner may require restriction. This, in

turn,  depends  on  the  construction  of  the  expression
"independent and distinct" inventions.

  "Independent",  of  course,  means  not  dependent.  If
"distinct" means the same thing, then its use in the statute
and in the rule is redundant. If "distinct" means something
different,  then  the  question  arises  as  to  what  the
difference in meaning between these two words may be. The
hearings before the committees of Congress considering the
codification of the patent laws indicate that 35 U.S.C. 121:
"enacts as law existing practice with respect to division,
at the same time introducing a number of changes."

  The report on the hearings does not mention as a change
that  is  introduced,  the  subjects  between  which  the
Commissioner may properly require division.

  The term "independent" as already pointed out, means not
dependent. A large number of subjects between which, prior
to the 1952 Act, division had been proper, are dependent
subjects,  such,  for  example,  as  combination  and  a
subcombination thereof; as process and apparatus used in the
practice of the process; as composition and the process in
which the composition is used; as process and the product
made by such process, etc. If section 121 of the 1952 Act
were intended to direct the Commissioner never to approve
division  between  dependent  inventions,  the  word
"independent" would clearly have been used alone. If the
Commissioner  has  authority  or  discretion  to  restrict
independent  inventions  only,  then  restriction  would  be
improper as between dependent inventions; e.g., such as the
ones used for purpose of illustration above. Such was
clearly, however, not the intent of Congress. Nothing in the
language of the statute and nothing in the hearings of the
committees indicate any intent to change the substantive law
on this subject. On the contrary, joinder of the term
"distinct" with the term "independent", indicates lack of
such  intent.  The  law  has  long  been  established  that
dependent inventions (frequently termed related inventions)
such as used for illustration above may be properly divided
if they are, in fact,"distinct" inventions, even though
dependent.

  INDEPENDENT

  The term "independent" (i.e., not dependent) means that
there is no disclosed relationship between the two or more
subjects disclosed, that is, they are unconnected in design,
operation, or effect, for example: (1) species under a genus
which species are not usable together as disclosed or (2)
process and apparatus incapable of being used in practicing
the process.

  DISTINCT

  The term "distinct" means that two or more subjects as
disclosed are related, for example, as combination and part
(subcombination) thereof, process and apparatus for its
practice, process and product made, etc., but are capable of
separate manufacture, use, or sale as claimed, AND ARE
PATENTABLE (novel and unobvious) OVER EACH OTHER (though
they may each be unpatentable because of the prior art). It
will be noted that in this definition the term related is
used  as  an  alternative  for  dependent  in  referring  to
subjects other than independent subjects.

  It is further noted that the terms "independent" and
"distinct" are used in decisions with varying meanings. All
decisions should be read carefully to determine the meaning
intended.

802.02  Definition of Restriction

  Restriction, a generic term, includes that practice of
requiring  an  election  between  distinct  inventions,  for
example, election between combination and subcombination
inventions, and the practice relating to an election between
independent  inventions,  for  example,  and  election  of
species.

803  Restriction - When Proper [R - 2]

  Under  the  statute  an  application  may  properly  be
required to be restricted to one of two or more claimed
inventions only if they are able to support sep- arate
patents and they are either independent (MPEP § 806.04 - §
806.04(j)) or distinct>(< MPEP § 806.05 - § 806.05(i)).

  **

  If the search and examination of an entire application
can be made without serious burden, the examiner must
examine it on the merits, even though it includes claims to
distinct or independent inventions.

  CRITERIA FOR RESTRICTION BETWEEN PATENTABLY DISTINCT
  INVENTIONS

  There are two criteria for a proper requirement for
restriction between patentably distinct inventions:

  (1)  The inventions must be independent (see MPEP §
802.01, § 806.04, § 808.01) or distinct as claimed (see MPEP
§ 806.05 - § 806.05(i)); and

  (2)  There must be a serious burden on the examiner
if  restriction  is  not  required  (see  MPEP  §  803.02  §
806.04(a) - (j), § 808.01(a) and § 808.02).

  GUIDELINES

  Examiners  must  provide  reasons  and/or  examples  to
support conclusions, but need not cite documents to support
the requirement in most cases.

  Where plural inventions are capable of being viewed as
related  in  two  ways,  both  applicable  criteria  for
distinctness must be demonstrated to support a restriction
requirement.

  If there is an express admission that the claimed
inventions are obvious over each other within the meaning of
35 U.S.C. 103, restriction should not be required, In re
Lee,199 USPQ 108 (Deputy Asst. Comm'r. for Pats 1978).

  For purposes of the initial requirement, a serious
burden on the examiner may be prima facie shown if the
examiner shows by appropriate explanation either separate
classification, separate status in the art, or a different
field of search as defined in MPEP § 808.02. That  prima

facie showing may be rebutted by appropriate showings or
evidence by the applicant. Insofar as the criteria for
restriction practice relating to Markush - type claims is
concerned, the criteria is set forth in MPEP § 803.02.
Insofar as the criteria for restriction or election practice
relating to claims to genus - species, see MPEP § 806.04(a)
- (j) and MPEP § 808.01(a).

803.01  Review by Primary Examiner

  Since requirements for restriction under Title 35 U.S.C.
121 are discretionary with the Commissioner, it becomes very
important that the practice under this section be carefully
administered. Notwithstanding the fact that this section of
the statute apparently protects the applicant against the
dangers that previously might have resulted from compliance
with an improper requirement for restriction, IT STILL
REMAINS IMPORTANT FROM THE STANDPOINT OF THE PUBLIC INTEREST
THAT NO REQUIREMENTS BE MADE WHICH MIGHT RESULT IN THE
ISSUANCE OF TWO PATENTS FOR THE SAME INVENTION. Therefore,
to guard against this possibility, the primary examiner must
personally  review  and  sign  all  final  requirements  for
restriction.

803.02  Restriction - Markush Claims [R - 2]

  PRACTICE RE MARKUSH - TYPE CLAIMS

  >If the members of the Markush group are sufficiently
few in number or so closely related that a search and
examination of the entire claim can be made without serious
burden, the examiner must examine all claims on the merits,
even though they are directed to independent and distinct
inventions. In such a case, the examiner will not follow the
procedure described below and will not require restriction.<

  Since the decisions in In re Weber **,198 USPQ 328 (CCPA
1978); and  In re Haas, 198 USPQ 334 (CCPA 1978), it is
improper for the Office to refuse to examine that which
applicants regard as their invention, unless the subject
matter in a claim lacks unity of invention,  In re Harnish ,
631 F.2d 716, 206 USPQ 300 (CCPA 1980);  Ex Parte Hozumi , 3
USPQ2d 1059 (Bd. Pat. App. & Int. 1984). Broadly, unity of
invention exists where compounds included within a Markush
group (1) share a common utility and (2) share a substantial
structural feature disclosed as being essential to that
utility.

  This subsection deals with Markush - type generic claims
which include a plurality of alternatively usable substances
or members. In most cases, a recitation by enumeration is
used  because  there  is  no  appropriate  or  true  generic
language.  **>A<  Markush  -  type  *>claim  can<  include
independent and distinct inventions. This is true where two
or more of the members are so unrelated and diverse that a
prior art reference anticipating the claim with respect to
one of the members would not render the claim obvious under
35 U.S.C. 103 with respect to the other member(s). In
applications containing claims of that nature, the examiner
may require a provisional election of a single species prior
to examination on the merits. The provisional election will
be given effect in the event that the Markush - type claim
should be found not allowable. Following election, the
Markush - type claim will be examined fully with respect to
the elected species and further to the extent necessary to

determine patentability. *>If< Markush - type claim **>is<
not allowable>over the prior art<, examination will be
limited to the Markush - type claim and claims to the
elected species, with claims drawn to species patentably
distinct  from  the  elected  species  held  withdrawn  from
further consideration.

  As an example, in the case of an application with a
Markush - type claim drawn to the compound C - R, wherein R
is a radical selected from the group consisting of A, B, C,
D, and E, the examiner may require a provisional election of
a single species, CA, CB, CC, CD, or CE. The Markush - type
claim would then be examined fully with respect to the
elected species and any species considered to be clearly
unpatentable over the elected species. If on examination the
elected species is found to be anticipated or rendered
obvious by prior art, the Markush - type claim and claims to
the elected species shall be rejected, and claims to the non
- elected species would be held withdrawn from further
consideration. As in the prevailing practice, a second
action on the rejected claims would be made final.

  On the other hand, should no prior art be found that
anticipates or renders obvious the elected species, the
search of the Markush - type claim will be extended. If
prior art is then found that anticipates or renders obvious
the Markush - type claim with respect to a non - elected
species, the Markush - type claim shall be rejected and
claims to the non - elected species held withdrawn from
further consideration. The prior art search, however, will
not be extended unnecessarily to cover all non - elected
species. Should applicant, in response to this rejection of
the Markush - type claim, overcome the rejection, as by
amending the Markush - type claim to exclude the species
anticipated or rendered obvious by the prior art, the
amended Markush - type claim will be reexamined. The prior
art search will be extended to the extent necessary to
determine patentability of the Markush - type claim. In the
event prior art is found during the reexamination that
anticipates or renders obvious the amended Markush - type
claim, the claim will be rejected and the action made final.
Amendments  submitted  after  the  final  rejection  further
restricting the scope of the claim may be denied entry.

 **

803.03  Restriction - Transitional Applications [R - 2]

  PRACTICE RE TRANSITIONAL APPLICATION

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

  *****

  (b)(1) In an application, other than for reissue or a
design patent, that has been pending for at least three
years as of June 8, 1995, taking into account any reference
made in the application to any earlier filed application
under 35 U.S.C. 120, 121 and 365(c), no requirement for
restriction or for the filing of divisional applications
shall be made or maintained in the application after June 8,
1995, except where:

 (i)  the requirement was first made in the application

or any earlier filed application under 35 U.S.C. 120, 121
and 365(c) prior to April 8, 1995:

 (ii)  the  examiner  has  not  made  a  requirement  for
restriction in the present or parent application prior to
April 8, 1995, due to actions by the applicant; or

 (iii)  the required fee for examination of each additional
invention was not paid.

 (2)  If  the  application  contains  more  than  one
independent and distinct invention and a requirement for
restriction or for the filing of divisional applications
cannot be made or maintained pursuant to this paragraph,
applicant will be so notified and given a time period to:

 (i)  elect the invention or inventions to be searched
and examined, if no election has been made prior to the
notice, and pay the fee set forth in 1.17(s) for each
independent  and  distinct  invention  claimed  in  the
application in excess of one which applicant elects;

 (ii)  confirm an election made prior to the notice and
pay the fee set forth in § 1.17(s) for each independent and
distinct invention claimed in the application in addition to
the one invention which applicant previously elected; or

 (iii)  file a petition under this section traversing the
requirement. If the required petition is filed in a timely
manner, the original time period for electing and paying the
fee set forth in § 1.17(s) will be deferred and any decision
on the petition affirming or modifying the requirement will
set a new time period to elect the invention or inventions
to be searched and examined and to pay the fee set forth in
§  1.17(s)  for  each  independent  and  distinct  invention
claimed in the application in excess of one which applicant
elects.

 (3)  The additional inventions for which the required
fee has not been paid will be withdrawn from consideration
under § 1.142(b). An applicant who desires examination of an
invention  so  withdrawn  from  consideration  can  file  a
divisional application under 35 U.S.C. 121.

  (c)  The  provisions  of  this  section  shall  not  be
applicable to any application filed after June 8, 1995.

  "Restriction" under 37 CFR 1.129(b) applies to both
restriction requirements under 37 CFR 1.142 and election of
species requirements under 37 CFR 1.146.

  Section 1.129(b)(1) provides for examination of more
than one independent and distinct invention in certain
applications pending for 3 years or longer as of June 8,
1995, taking into account any reference to any earlier
application under 35 U.S.C. 120, 121, or 365(c). Applicant
will not be permitted to have such additional invention(s)
examined in an application if:

  (1)  The requirement was made in the application or
in an earlier application relied on under 35 U.S.C. 120,
121, or 365(c) prior to April 8, 1995;

  (2) no  restriction  requirement  was  made  with
respect to the invention(s) in the application or earlier

application prior to April 8, 1995, due to actions by the
applicant; or

  (3)  the required fee for examination of each
additional invention was not paid.

  Only if one of these exceptions applies is a normal
restriction  requirement  appropriate  and  telephone
restriction practice may be used.

  Examples of what constitute "actions by the applicant"
in 37 CFR 1.129(b)(1) are:

  (1) applicant  abandoned  the  application  and
continued to refile the application such that no Office
action could be issued in the application,

  (2)  applicant requested suspension of prosecution
under 37 CFR 1.103(a) such that no Office action could be
issued in the application,

  (3)  applicant disclosed a plurality of independent
and  distinct  inventions  in  the  present  or  parent
application, but delayed presenting claims to more than one
of the disclosed independent and distinct inventions in the
present or parent application such that no restriction
requirement could be made prior to April 8, 1995, and

  (4)  applicant combined several applications, each
of  which  claimed  a  different  independent  and  distinct
invention, into one large "continuing" application, but
delayed filing the continuing application first claiming
more than one independent and distinct invention such that
no restriction requirement could be made prior to April 8,
1995.

  In examples (1) and (2), the fact that the present or
parent  application  claiming  independent  and  distinct
inventions was on an examiner's docket for at least three
months prior to abandonment or suspension, or in examples
(3)  and  (4),  the  fact  that  the  amendment  claiming
independent and distinct inventions was first filed, or the
continuing  application  first  claiming  the  additional
independent and distinct inventions was on an examiner's
docket, at least three months prior to April 8, 1995, is
prima facie evidence that applicant's actions did not pre
vent the Office from making a requirement for restriction
with respect to those independent and distinct inventions
prior to April 8, 1995. Furthermore, an extension of time
under 37 CFR 1.136(a) does not constitute such "actions by
the applicant" under 37 CFR 1.129(b)(1).

  NOTE: If an examiner believes an application falls under
the exception that no restriction could be made prior to
April 8, 1995 due to applicant's action, the application
must be brought to the attention of the Group Expert for
review.

  Under 37 CFR 1.129(b)(2), if the application contains
claims to more than one independent and distinct invention,
and no requirement for restriction or for the filing of
divisional applications can be made or maintained, applicant
will be notified and given a time period to:

  (i) elect  the  invention  or  inventions  to  be

searched and examined, if no election has been made prior to
the notice, and pay the fee set forth in 37 CFR 1.17(s) for
each independent and distinct invention claimed in the
application in excess of one which applicant elects,

  (ii)  in situations where an election was made in
response to a requirement for restriction that cannot be
maintained, confirm the election made prior to the notice
and pay the fee set forth in 37 CFR 1.17(s) for each
independent  and  distinct  invention  claimed  in  the
application in addition to the one invention which applicant
previously elected, or

  (iii)  file a petition under 37 CFR 1.129(b)(2)
traversing the requirement without regard to whether the
requirement  has  been  made  final.  No  petition  fee  is
required. 37 CFR 1.129(b)(2) also provides that if the
petition is filed in a timely manner, the original time
period for electing and paying the fee set forth in 37 CFR
1.17(s) will be deferred and any decision on the petition
affirming or modifying the requirement will set a new time
period to elect the invention or inventions to be searched
and examined and to pay the fee set forth in 37 CFR 1.17(s)
for each independent and distinct invention claimed in the
application in excess of one which applicant elects.

  Under 37 CFR 1.129(b)(3), each additional invention for
which the required fee set forth in 37 CFR 1.17(s) has not
been paid will be withdrawn from consideration under 37 CFR
1.142(b).  An  applicant  who  desires  examination  of  an
invention  so  withdrawn  from  consideration  can  file  a
divisional application under 35 U.S.C. 121.

  Section 1.129(c) clarifies that the provisions of 37 CFR
1.129(a) and (b) are not applicable to any application filed
after June 8, 1995. However, any application filed on June
8, 1995, would be subject to a 20 - year patent term.

  Form paragraph 8.41 may be used to notify applicant that
application is a transitional application and is entitled to
consideration of additional inventions upon payment of the
required fee.

¶ 8.41  Transitional Restriction or Election of Species
Requirement to be Mailed After June 8, 1995

  This  application  is  subject  to  the  transitional
restriction provisions of Public Law 103 - 465, which became
effective on June 8, 1995, because:

 1. the application was filed on or before June 8, 1995, and
has an effective U.S. filing date of June 8, 1992, or
earlier;

 2. a requirement for restriction was not made in the
present or a parent application prior to April 8, 1995; and

 3. the examiner was not prevented from making a requirement
for restriction in the present or parent application prior
to April 8, 1995, due to actions by the applicant.

  The transitional restriction provisions permit applicant
to have more than one independent and distinct invention
examined in the same application by paying a fee for each
invention in excess of one.

  Final  rules  concerning  the  transition  restriction
provisions were published in the Federal Register at 60 FR
20195 (April 25, 1995) and in the  Official Gazette at 1174
OG 15 (May 2, 1995). The final rules at 37 CFR 1.17(s)
include  the  fee  amount  required  to  be  paid  for  each
additional  invention  as  set  forth  in  the  following
requirement for restriction. >See the current fee schedule
for the proper amount of the fee.<

  Applicant must either: (1) elect the invention or
inventions to be searched and examined and pay the fee set
forth in 37 CFR 1.17(s) for each independent and distinct
invention in excess of one which applicant elects; or (2)
file  a  petition  under  37  CFR  1.129(b)  traversing  the
requirement.

 Examiner Note:

  1.  This paragraph should be used in all restriction or
election  of  species  requirements  made  in  applications
subject to the transition restriction provisions set forth
in 37 CFR 1.129(b) where the requirement is being mailed
after June 8, 1995. The procedure is NOT applicable to any
design or reissue application.

  2.  This  paragraph  should  be  followed  by  form
paragraph(s) 8.01, 8.02 or 8.08 - 8.22, as appropriate.

803.03(a)  Transitional Application - Linking Claim
Allowable [R - 1]

  Whenever  divided  inventions  in  a  transitional
application are rejoined because a linking claim is allowed
(MPEP § 809) and applicant paid the fee set forth in 37 CFR
1.17(s) for the additional invention, applicant should be
notified that he or she may request a refund of the fee paid
for that additional invention.<

>803.03(b)  Transitional Application - Generic Claim
Allowable [R - 1]

  Whenever claims drawn to an additional species in a
transitional application for which applicant paid the fee
set forth in 37 CFR 1.17(s) are no longer withdrawn because
they  are  fully  embraced  by  an  allowed  generic  claim,
applicant should be notified that he or she may request a
refund of the fee paid for that additional species.

  The determination of when claims to a non - elected
species would no longer be withdrawn should be made as
indicated in MPEP § 809.02(b), § 809.02(c), or § 809.02(d).<

 **  Double Click here to see the image  **

>803.04  Restriction - Nucleotide Sequences [R - 3]

  By statute, "[i]f two or more independent and distinct
inventions are claimed in one application, the Commissioner
may require the application to be restricted to one of the
inventions." 35 U.S.C. 121. Pursuant to this statute, the
Rules of Practice in Patent Cases provide that "[i]f two or
more independent and distinct inventions are claimed in a
single application, the examiner in his action shall require

the applicant . . to elect that invention to which his
claim shall be restricted." 37 CFR 1.l42(a). See also 37 CFR
1.141(a).

  Nucleotide sequences encoding different proteins are
structurally distinct chemical compounds and are unrelated
to one another. These sequences are thus deemed to normally
constitute independent and distinct inventions within the
meaning of 35 U.S.C. 121. Absent evidence to the contrary,
each such nucleotide sequence is presumed to represent an
independent and distinct invention, subject to a restriction
requirement pursuant to 35 U.S.C. 121 and 37 CFR 1.141 et
seq. Nevertheless, to further aid the biotechnology industry
in protecting its intellectual property without creating an
undue burden on the Office, the Commissioner has decided sua
sponte to partially waive the requirements of 37 CFR 1.141
et seq. and permit a reasonable number of such nucleotide
sequences to be claimed in a single application.

  It has been determined that normally ten sequences
constitute a reasonable number for examination purposes.
Accordingly, in most cases, up to ten (10) independent and
distinct nucleotide sequences will be examined in a single
application  without  restriction.  In  addition  to  the
specifically selected sequences, those sequences which are
patentably indistinct from the selected sequences will also
be examined. Furthermore, nucleotide sequences encoding the
same protein are not considered to be independent and
distinct  inventions  and  will  continue  to  be  examined
together.

  In some exceptional cases, the complex nature of the
claimed material, for example a protein amino acid sequence
reciting three dimensional folds, may necessitate that the
reasonable number of sequences to be selected be less than
ten (10). In other cases, applicants may petition pursuant
to 37 CFR 1.181 for examination of additional nucleotide
sequences  by  providing  evidence  that  the  different
nucleotide sequences do not cover independent and distinct
inventions.

  See MPEP § 1850 for treatment of claims containing
independent  and  distinct  nucleotide  sequences  in
international  applications  filed  under  the  Patent
Cooperation Treaty (PCT) and national stage applications
filed under 35 U.S.C. 371.

  EXAMPLES OF NUCLEOTIDE SEQUENCE CLAIMS

  Examples of typical nucleotide sequence claims impacted
by the partial waiver of 37 CFR 1.141 et seq. (and the
partial waiver of 37 CFR 1.475 and 1.499 et seq., see MPEP §
1850) include:

  (1) an isolated and purified DNA fragment comprising DNA
having at least 95% identity to a DNA sequence selected from
SEQ ID Nos. 1 - 1,000;

  (2) a combination of DNA fragments comprising SEQ ID Nos.
1 - 1,000; and

  (3) a combination of DNA fragments, said combination
containing at least thirty different DNA fragments selected
from SEQ ID Nos. 1 - 1,000.

  Applications claiming more than ten (10) individual
independent and distinct nucleotide sequences in alternative
form, such as set forth in example 1, will be subject to a
restriction  requirement.  Only  the  ten  (10)  nucleotide
sequences  selected  in  response  to  the  restriction
requirement  and  any  other  claimed  sequences  which  are
patentably indistinct therefrom will be examined.

  Applications claiming only a combination of nucleotide
sequences, such as set forth in example 2, will generally
not be subject to a restriction requirement. The presence of
one novel and nonobvious sequence within the combination
will  render  the  entire  combination  allowable.  The
combination will be searched until one nucleotide sequence
is found to be allowable. The order of searching will be
chosen by the examiner to maximize the identification of an
allowable sequence. If no individual nucleotide sequence is
found to be allowable, the examiner will consider whether
the combination of sequences taken as a whole renders the
claim allowable.

  Applications containing only composition claims reciting
different combinations of individual nucleotide sequences,
such as set forth in example 3, will be subject to a
restriction requirement. Applicants will be required to
select one combination for examination. If the selected
combination contains ten or fewer sequences, all of the
sequences of the combination will be searched. If the
selected combination contains more than ten sequences, the
combination will be examined following the procedures set
forth  above  for  example  2.  More  specifically,  the
combination will be searched until one nucleotide sequence
is found to be allowable with the examiner choosing the
order  of  search  to  maximize  the  identification  of  an
allowable sequence. The identification of any allowable
sequence(s)  will  cause  all  combinations  containing  the
allowed sequence(s) to be allowed.

  In applications containing all three claims set forth in
examples 1 - 3, the PTO will require restriction of the
application  to  ten  sequences  for  initial  examination
purposes. Based upon the finding of allowable sequences,
claims limited to the allowable sequences as in example 1,
all combinations, such as in examples 2 and 3, containing
the  allowable  sequences  and  any  patentably  indistinct
sequences will be rejoined and allowed.

  Rejoinder will be permitted for claims requiring any
allowable sequence(s). Any claims which have been restricted
and non - selected and which are limited to the allowable
sequence(s) will be rejoined and examined.<

804  Definition of Double Patenting [R - 3]

 35 U.S.C. 101.  Inventions Patentable

  Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter or any new
and  useful  improvement  thereof,  may  obtain  a  patent
therefore, subject to the conditions and requirements of
this title.

 35 U.S.C. 121  Divisional Applications

  If two or more independent and distinct inventions are

claimed in one application, the Commissioner may require the
application to be restricted to one of the inventions. If
the other invention is made the subject of a divisional
application which complies with the requirements of section
120 of this title it shall be entitled to the benefit of the
filing date of the original application. A patent issuing on
an application with respect to which a requirement for
restriction under this section has been made, or on an
application filed as a result of such a requirement, shall
not be used as a reference either in the Patent and
Trademark Office or in the courts against a divisional
application or against the original application or any
patent  issued  on  either  of  them,  if  the  divisional
application is filed before the issuance of the patent on
the other application. If a divisional is directed solely to
subject  matter  described  and  claimed  in  the  original
application as filed, the Commissioner may dispense with
signing and execution by the inventor. The validity of a
patent  shall  not  be  questioned  for  failure  of  the
Commissioner to require the application to be restricted to
one invention.

  The doctrine of double patenting seeks to prevent the
unjustified extension of patent exclusivity beyond the term
of a patent. The public policy behind this doctrine is that:

 The public should . . be able to act on the assumption
that upon the expiration of the patent it will be free to
use not only the invention claimed in the patent but also
modifications or variants which would have been obvious to
those of ordinary skill in the art at the time the invention
was made, taking into account the skill in the art and prior
art other than the invention claimed in the issued patent.

  In re Zickendraht,319 F.2d 225, 232, 138 USPQ 22, 27
(CCPA 1963) (Rich, J., concurring). Double patenting results
when the right to exclude granted by a first patent is
unjustly extended by the grant of a later issued patent or
patents.  In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA
1982).

  Before consideration can be given to the issue of double
patenting,  there  must  be  some  common  relationship  of
inventorship and/or ownership of two or more patents or
applications. Since the doctrine of double patenting seeks
to avoid unjustly extending patent rights at the expense of
the public, the focus of any double patenting analysis
necessarily is on the claims in the multiple patents or
patent applications involved in the analysis.

  There are >generally< two types of double patenting
rejections.  One  is  the  "same  invention"  type  double
patenting rejection based on 35 U.S.C. 101 which states in
the singular that an inventor "may obtain a patent". The
second  is  the  "nonstatutory  -  type"  double  patenting
rejection based on a judicially created doctrine grounded in
public policy and which is primarily intended to prevent
prolongation of the patent term by prohibiting claims in a
second patent not patentably distinguishing from claims in a
first  patent.  Nonstatutory  double  patenting  includes
>rejections  based  on<  one  -  way  >determination  of<
obviousness, >and< two - way >determination of< obviousness
**. >Nonstatutory double patenting could include a rejection
which is not the usual "obviousness - type" double patenting
rejection. This type of double patenting rejection is based

on the fundamental reason to prevent unjustified timewise
extension of the right to exclude granted by a patent no
matter how the extension is sought. In re Schneller , 397
F.2d 350, 158 USPQ 210 (CCPA 1968).<

  Refer to Charts I - A, I - B, II - A, and II - B for an
overview of the treatment of applications having conflicting
claims.

 **  Double Click here to see the image  **

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 I.  INSTANCES WHERE DOUBLE PATENTING ISSUE CAN BE
RAISED

  A double patenting issue may arise between two or more
pending  applications,  between  one  or  more  pending
applications and a patent, or in a reexamination proceeding.
Double  patenting  does  not  relate  to  international
applications which have not yet entered the national stage
in the United States.

 A.  BETWEEN ISSUED PATENT AND ONE OR MORE APPLICATIONS

  Double patenting may exist between an issued patent and
an application filed by the same inventive entity, or by an
inventive entity having a common inventor with the patent,
and/or by the owner of the patent. Since the inventor/patent
owner has already secured the issuance of a first patent,
the examiner must determine whether the grant of a second
patent would give rise to an unjustified extension of the
rights granted in the first patent.

 B.  Between  Copending  APPLICATIONS  -  Provisional
Rejections

  Occasionally,  the  examiner  becomes  aware  of  two
copending applications filed by the same inventive entity,
or by different inventive entities having a common inventor,
and/or that are filed by a common assignee that would raise
an issue of double patenting if one of the applications
became a patent. Where this issue can be addressed without
violating the confidential status of applications (35 U.S.C.
122), the courts have sanctioned the practice of making
applicant aware of the potential double patenting problem if
one of the applications became a patent by permitting the
examiner to make a "provisional" rejection on the ground of
double patenting. In re Mott,539 F.2d 1291, 190 USPQ 536
(CCPA 1976);  In re Wetterau,>356 F.2d 556,< 148 USPQ 499
(CCPA 1966). The merits of such a provisional rejection can
be addressed by both the applicant and the examiner without
waiting for the first patent to issue.

  The "provisional" double patenting rejection should
continue to be made by the examiner in each application as
long as there are conflicting claims in more than one

application  unless  that  "provisional"  double  patenting
rejection is the only rejection remaining in one of the
applications.  If  the  "provisional"  double  patenting
rejection in one application is the only rejection remaining
in that application, the examiner should then withdraw that
rejection and permit the application to issue as a patent,
thereby  converting  the  "provisional"  double  patenting
rejection  in  the  other  application(s)  into  a  double
patenting rejection at the time the one application issues
as a patent.

  If the "provisional" double patenting rejections in both
applications are the only rejections remaining in those
applications,  the  examiner  should  then  withdraw  that
rejection in one of the applications (e.g., the application
with the earlier filing date) and permit the application to
issue as a patent. The examiner should maintain the double
patenting  rejection  in  the  other  application  as  a
"provisional"  double  patenting  rejection  which  will  be
converted into a double patenting rejection when the one
application issues as a patent.

C .  Reexamination Proceedings

  Under limited circumstances, e.g., where new or amended
claims are presented, double patenting may be raised in a
reexamination proceeding. Accordingly, a double patenting
issue may be addressed in a reexamination proceeding. See
MPEP 2258.

 II.  REQUIREMENTS  OF  A  DOUBLE  PATENTING  REJECTION
(INCLUDING PROVISIONAL REJECTIONS)

  When a double patenting rejection is appropriate, it
must be based either on statutory grounds or nonstatutory
grounds. The ground of rejection employed depends upon the
relationship of the inventions being claimed. Generally, a
double  patenting  rejection  is  not  permitted  where  the
claimed  subject  matter  is  presented  in  a  divisional
application as a result of a restriction requirement made in
a parent application under 35 U.S.C. 121.

  Where the claims of an application are substantively the
same as those of a first patent, they are barred under 35
U.S.C. 101 - the statutory basis for a double patenting
rejection. A rejection based on double patenting of the
"same invention" type finds its support in the language of
35  U.S.C.  101  which  states  that  "whoever  invents  or
discovers any new and useful process ... may obtain a patent
therefor  ..."  (Emphasis  added).  Thus,  the  term  "same
invention", in this context, means an invention drawn to
identical subject matter. Miller  v.  Eagle Mfg. Co. , 151
U.S. 186 (1894); In re Vogel , 422 F.2d 438, 164 USPQ 619
(CCPA 1970); and  In re Ockert , 245 F.2d 467, 114 USPQ 330
(CCPA 1957). Where the claims of an application are not the
"same" as those of a first patent, but the grant of a patent
with the claims in the application would unjustly extend the
rights granted by the first patent, a double patenting
rejection under nonstatutory grounds is proper.

  In determining whether a proper basis exists to enter a
double patenting rejection, the examiner must determine -

  (a) Whether  a  double  patenting  rejection  is
prohibited by the third sentence of 35 U.S.C. 121? See MPEP

804.01. If such a prohibition applies, a double patenting
rejection cannot be made.

  (b)  Whether a statutory basis exists?

  (c)  Whether a nonstatutory basis exists?

  Each determination must be made on the basis of all the
facts in the case before the examiner. Charts I - A, I - B,
II - A, and II - B illustrate the methodology of making such
a determination.

  Domination and double patenting should not be confused.
They are two separate issues. One patent or application
"dominates" a second patent or application when the first
patent or application has a broad or generic claim which
fully encompasses or reads on an invention defined in a
narrower  or  more  specific  claim  in  another  patent  or
application. Domination by itself; i.e., in the absence of
statutory or nonstatutory double patenting grounds, cannot
support a double patenting rejection. **> In re Kaplan, 789
F.2d 1574, 1577 - 78, 229 USPQ 678, 681 (Fed. Cir. 1986); In
re Sarrett , 327 F.2d 1005, 1014 - 15, 140 USPQ 474, 482
(CCPA 1964).< However, the presence of domination does not
preclude double patenting. See, e.g., In re Schneller ,>397
F.2d 350,< 158 USPQ 210 (CCPA 1968).

 A.  STATUTORY DOUBLE PATENTING - 35 U.S.C. 101

  In determining whether a statutory basis for a double
patenting rejection exists, the question to be asked is: Is
the same invention being claimed twice? 35 U.S.C. 101
prevents two patents from issuing on the same invention.
"Same invention" means identical subject matter. Miller  v.
Eagle Mfg. Co. , 151 U.S. 186 (1984); **>In re Vogel, 422
F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert , 245 F.2d
467, 114 USPQ 330 (CCPA 1957).<

  A reliable test for double patenting under 35 U.S.C. 101
is whether a claim in the application could be literally
infringed without literally infringing a corresponding claim
in the patent. In re Vogel , 422 F.2d 438, 164 USPQ 619
(CCPA 1970). Is there an embodiment of the invention that
falls within the scope of one claim, but not the other? If
there is such an embodiment, then identical subject matter
is not defined by both claims and statutory double patenting
would not exist. For example, the invention defined by a
claim reciting a compound having a "halogen" substituent is
not identical to or substantively the same as a claim
reciting  the  same  compound  except  having  a  "chlorine"
substituent in place of the halogen because "halogen" is
broader than "chlorine." On the other hand, claims may be
differently worded and still define the same invention.
Thus, a claim reciting a widget having a length of "36
inches" defines the same invention as a claim reciting the
same widget having a length of "3 feet."

  If it is determined that the same invention is being
claimed twice, 35 U.S.C. 101 precludes the grant of the
second patent regardless of the presence or absence of a
terminal disclaimer. Vogel ,  supra .

  Form paragraphs 8.30 and 8.31 (between an issued patent
and  one  or  more  applications)  or  8.32  (provisional
rejections) may be used to make statutory double patenting

rejections.

¶ 8.30  35 U.S.C. 101, Statutory Basis for Double Patenting
"Heading" Only

  A rejection based on double patenting of the "same
invention" type finds its support in the language of 35
U.S.C. 101 which states that "whoever invents or discovers
any new and useful process ... may obtain a patent therefor
..." (Emphasis added). Thus, the term "same invention," in
this context, means an invention drawn to identical subject
matter. Miller v.  Eagle Mfg. Co. , 151 U.S. 186 (1894); **
In re Vogel,422 F.2d 438, 164 USPQ 619 (CCPA 1970) >; and
In re Ockert,245 F.2d 467, 114 USPQ 330 (CCPA 1957).<

  A statutory - type (35 U.S.C. 101) double patenting
rejection can be overcome by canceling or amending the
conflicting claims so they are no longer coextensive in
scope. The filing of a terminal disclaimer cannot overcome a
double patenting rejection based upon 35 U.S.C. 101.

 Examiner Note:

  This form paragraph must be used as a heading for all
subsequent double patenting rejections of the statutory
(same invention) type using either of form paragraphs 8.31
or 8.32.

¶ 8.31  Rejection, 35 U.S.C. 101, Double Patenting

  Claim[1] rejected under 35 U.S.C. 101 as claiming the
same invention as that of claim[ 2] of prior U.S. Patent No.
[3]. This is a double patenting rejection.

 Examiner Note

  1.  This paragraph must be preceded by form paragraph
8.30 and is used only for double patenting rejections of the
same invention claimed in an earlier patent; that is, the
"scope" of the inventions claimed is identical.

  2.  If the conflicting claims are in another copending
application, do not use this paragraph. A provisional double
patenting rejection should be made using paragraph 8.32.

  3.  Do not use this paragraph for non - statutory -
type double patenting rejections. If non - statutory type,
use appropriate form paragraphs 8.33 to 8.39.

  4.  This paragraph may be used where the conflicting
patent and the pending application are:

 (a)  by the same inventive entity, or

 (b)  by a different inventive entity and are commonly
assigned even though there is no common inventor, or

 (c)  not commonly assigned but have at least one common
inventor.

  5.  In bracket 3, insert the number of the conflicting
patent.

  6.  If the patent is to a different inventive entity
and is commonly assigned with the application, paragraph

8.27 should additionally be used to require the assignee to
name the first inventor.

  7.  If evidence is of record to indicate that the
patent is prior art under either 35 U.S.C. 102(f) or (g), a
rejection should also be made using paragraphs 7.15 and/or
7.19 in addition to this double patenting rejection.

  8.  If the patent is to a different inventive entity
from the application and the effective U.S. filing date of
the patent antedates the effective filing date of the
application, a rejection under 35 U.S.C. 102(e) should
additionally be made using paragraph 7.15.02.

¶ 8.32  Provisional  Rejection,  35  U.S.C.  101,  Double
Patenting

  Claim[1] provisionally rejected under 35 U.S.C. 101 as
claiming the same invention as that of claim[2] of copending
Application No. [3]. This is a provisional double patenting
rejection since the conflicting claims have not in fact been
patented.

 Examiner Note:

  1.  This paragraph must be preceded by form paragraph
8.30 and is used only for double patenting rejections of the
same invention claimed in another copending application ;
that is, the scope of the claimed inventions is identical.

  2.  If the conflicting claims are from an issued patent
, do not use this paragraph. See paragraph 8.31.

  3.  Do not use this paragraph for non - statutory -
type double patenting rejections. See paragraphs 8.33 to
8.39.

  4.  This paragraph may be used where the conflicting
claims are in a copending application that is:

 (a) by the same inventive entity, or

 (b)  by a different inventive entity and is commonly
assigned even though there is no common inventor, or

 (c) not commonly assigned but has at least one common
inventor.

  5.  Paragraph 8.28 may be used in place of or along
with this paragraph to resolve any remaining issues relating
to priority under 35 U.S.C. 102(f) or (g).

  6.  In bracket 3, insert the number of the conflicting
application.

  7.  A double patenting rejection should also be made in
the conflicting application.

  8.  If the copending application is by a different
inventive entity and is commonly assigned, paragraph 8.27
should additionally be used to require the assignee to name
the first inventor.

  9.  If evidence is also of record to show that either
application is prior art unto the other under 35 U.S.C.

102(f) or (g), a rejection should also be made in the other
application using paragraphs 7.15 and/or 7.19 in addition to
this provisional double patenting rejection.

  10.  If the applications do not have the same inventive
entity and effective U.S. filing date, a provisional 102(e)
rejection should additionally be made in the later - filed
application using paragraph 7.15.01.

  If the "same invention" is not being claimed twice, an
analysis must be made to determine whether a nonstatutory
basis for double patenting exists.

 B.  NONSTATUTORY DOUBLE PATENTING

  A rejection based on nonstatutory double patenting ** is
based on a judicially created doctrine grounded in public
policy so as to prevent the unjustified or improper timewise
extension of the right to exclude granted by a patent. In re
Goodman,>11 F.3d 1046,< 29 USPQ2d 2010 (Fed. Cir. 1993); In
re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re
Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re
Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re
Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969); In re
White, 405 F.2d 904, 160 USPQ 417 (CCPA 1969); In re
Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); In re
Sarett, 327 F.2d 1005, 140 USPQ 474 (CCPA 1964).

 1.  Obvious Type

  In determining whether a nonstatutory basis exists for a
double patenting rejection, the first question to be asked
is - Does any claim in the application define an invention
that is merely an obvious variation of an invention claimed
in the patent? If the answer is yes, then an "obvious type"
nonstatutory double patenting rejection may be appropriate.

  A double patenting rejection of the obvious type is
"analogous  to  [a  failure  to  meet]  the  nonobviousness
requirement  of  35  U.S.C.  103"  except  that  the  patent
principally underlying the double patenting rejection is not
considered prior art. In re Braithwaite , 379 F.2d 594, 154
USPQ 29 (CCPA 1967). Therefore, any analysis employed in an
obvious - type double patenting rejection parallels the
guidelines for analysis of a 35 U.S.C. 103 obviousness
determination. In re Braat , 937 F.2d 589, 19 USPQ2d 1289
(Fed. Cir. 1991); In re Longi , 759 F.2d 887, 225 USPQ 645
(Fed. Cir. 1985).

  Since the analysis employed in an obvious - type double
patenting determination parallels the guidelines for a 35
U.S.C. 103 rejection, the factual inquiries set forth in
Graham  v.  John Deere Co.,383 U.S. 1, 148 USPQ 459 (1966),
that  are  applied  for  establishing  a  background  for
determining obviousness under 35 U.S.C. 103 are employed
when making an obvious - type double patenting analysis.
These factual inquiries are summarized as follows:

  (1)  Determine the scope and content of a patent
claim  and  the  prior  art  relative  to  a  claim  in  the
application at issue;

  (2)  Determine the differences between the scope
and content of the patent claim and the prior art as
determined in (1) and the claim in the application at issue;

  (3)  Determine the level of ordinary skill in the
pertinent art; and

  (4)  Evaluate  any  objective  indicia  of
nonobviousness.

  The conclusion of obvious - type double patenting is
made in light of these factual determinations.

  Any obvious - type double patenting rejection should
make clear:

  (1)  The differences between the inventions defined
by the conflicting claims - a claim in the patent compared
to a claim in the application; and

  (2)  The reasons why a person of ordinary skill in
the art would conclude that the invention defined in the
claim in issue is an obvious variation of the invention
defined in a claim in the patent.

  When considering whether the invention defined in a
claim of an application is an obvious variation of the
invention defined in the claim of a patent, the disclosure
of the patent may not be used as prior art. This does not
mean that one is precluded from all use of the patent
disclosure.

  The specification can always be used as a dictionary to
learn the meaning of a term in the patent claim. In re
Boylan,392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further,
those portions of the specification which provide support
for the patent claims may also be examined and considered
when  addressing  the  issue  of  whether  a  claim  in  the
application defines an obvious variation of an invention
claimed in the patent. In re Vogel , 422 F.2d 438, 164 USPQ
619, 622 (CCPA 1970). The court in  Vogel recognized "that
it is most difficult, if not meaningless, to try to say what
is or is not an obvious variation of a claim," but that one
can judge whether or not the invention claimed in an
application  is  an  obvious  variation  of  an  embodiment
disclosed in the patent which provides support for the
patent  claim.  According  to  the  court,  one  must  first
"determine how much of the patent disclosure pertains to the
invention  claimed  in  the  patent"  because  only  "[t]his
portion of the specification supports the patent claims and
may be considered." The court pointed out that "this use of
the  disclosure  is  not  in  contravention  of  the  cases
forbidding its use as prior art, nor is it applying the
patent as a reference under 35 U.S.C. 103, since only the
disclosure of the invention claimed in the patent may be
examined."

  a.  One - Way Obviousness

  If the application is the later filed case or both are
filed on the same day, only a one - way determination of
obviousness is needed in resolving the issue of double
patenting - i.e., whether the invention defined in a claim
in the application is an obvious variation of the invention
defined in a claim in the patent. If a claimed invention in
the application is obvious over a claimed invention in the
patent, there would be an unjustified timewise extension of
the patent and an obvious - type double patenting rejection

is proper. Unless a claimed invention in the application is
obvious over a claimed invention in the patent, no double
patenting rejection of the obvious - type is made, but this
does  not  necessarily  preclude  a  rejection  based  on
nonstatutory, nonobvious double patenting.

  Similarly, even if the application at issue is the
earlier filed case, only a one - way determination of
obviousness  is  needed  to  support  a  double  patenting
rejection, in the absence of a finding of administrative
delay on the part of the Office causing delay in prosecution
of  the  application  at  issue,  the  earlier  filed  case.
However, if administrative delay in prosecution of the
application at issue, i.e., the earlier filed case, on the
part of the Office results in earlier issuance of a patent
on  the  later  filed  application  containing  conflicting
claims, a two - way determination of obviousness may be
required to support a double patenting rejection.

  Form paragraph 8.33 and the appropriate one of form
paragraphs 8.34 - 8.37 may be used to make nonstatutory
rejections of the obvious - type.

  b.  Two - Way Obviousness

  If the patent is the later filed case, the question of
whether the timewise extension of the right to exclude
granted by a patent is justified or unjustified must be
addressed. A two - way test need only be applied when there
is administrative delay. In the absence of administrative
delay, a one - way test is appropriate. In re Goodman ,>11
F.3d 1046,< 29 USPQ2d 2010 (Fed. Cir. 1993). (Applicant's
voluntary  decision  to  obtain  early  issuance  of  claims
directed  to  a  species  and  to  pursue  prosecution  of
previously rejected genus claims in a continuation is a
considered election to postpone by the applicant, and not
administrative  delay).  Unless  the  record  clearly  shows
administrative delay by the Office, the examiner may use the
one - way obviousness determination and shift the burden to
applicant to show why a two - way obviousness determination
is required.

  When making a two - way obviousness determination where
appropriate, it is necessary to apply the Graham obviousness
analysis twice, once with the application claims as the
claims in issue, and once with the patent claims as the
claims in issue. Where a two - way obviousness determination
is required, an obvious - type double patenting rejection is
appropriate only where each analysis compels a conclusion
that the invention defined in the claims in issue is an
obvious variation of the invention defined in a claim in the
other application/patent. If either analysis does not compel
a conclusion of obviousness, no double patenting rejection
of the obvious - type is made, but this does not necessarily
preclude a >nonstatutory double patenting< rejection based
on **>the fundamental reason to prevent unjustified timewise
extension of the right to exclude granted by a patent.  In
re Schneller , 397 F.2d 350, 158 USPQ 210 (CCPA 1968)<.

  Although a delay in the processing of applications
before the Office that would cause patents to issue in an
order different from the order in which the applications
were filed is a factor to be considered in determining
whether a one - way or two - way obviousness determination
is necessary to support a double patenting rejection, it may

be very difficult to assess whether an applicant or the
administrative process is primarily responsible for a delay
in the issuance of a patent. On the one hand, it is
applicant who presents claims for examination and pays the
issue fee. On the other hand, the resolution of legitimate
differences of opinion that must be resolved in an appeal
process or the time spent in an interference proceeding can
significantly delay the issuance of a patent. Nevertheless,
the reasons for the delay in issuing a patent have been
considered in assessing the propriety of a double patenting
rejection.  Thus,  in  Pierce  v.  Allen  B.  DuMont
Laboratories, Inc ., 297 F.2d 323, 131 USPQ 340 (3rd. Cir.
1961), the Court found that administrative delay may justify
the extension of patent rights beyond 17 years but "a
considered election to postpone acquisition of the broader
[patent after the issuance of the latter filed application]
should not be tolerated." In Pierce , the patentee elected
to participate in an interference proceeding [after all
claims  in  the  application  had  been  determined  to  be
patentable] whereby the issuance of the broader patent was
delayed by more than seven years after the issuance of the
narrower patent. The court determined that the second issued
patent was invalid on the ground of double patenting. On the
other hand, in General Foods Corp.  v.  Studiengesellschaft
Kohle mbH, 972 F.2d 1272, 23 USPQ2d 1839 (Fed. Cir. 1992),
the court elected not to hold the patentee accountable for a
delay in issuing the first filed application until after the
second filed application issued as a patent, even where the
patentee  had  intentionally  refiled  the  first  filed
application as a continuation - in - part after receiving a
Notice of Allowance indicating that all claims presented
were patentable. Similarly, where, through no fault of the
applicant, the claims in a later filed application issue
first, an obvious - type double patenting rejection is
improper,  in  the  absence  of  a  two  -  way  obviousness
determination, because the applicant does not have complete
control over the rate of progress of a patent application
through the Office. In re Braat , 937 F.2d 589, 19 USPQ2d
1289 (Fed. Cir. 1991). While acknowledging that allowance of
the claims in the earlier filed application would result in
the timewise extension of an invention claimed in the
patent, the court was of the view that the extension was
justified under the circumstances in this case, indicating
that a double patenting rejection would be proper only if
the claimed inventions were obvious over each other - a two
- way obviousness determination.

  Form Paragraph 8.33 and the appropriate one of Form
Paragraphs 8.34 - 8.37 may be used to make nonstatutory
rejections of the obvious type.

¶ 8.33  Basis For Non - statutory Double Patenting **
"Heading" Only

  The non - statutory double patenting rejection ** is
based on a judicially created doctrine grounded in public
policy (a policy reflected in the statute) so as to prevent
the unjustified or improper timewise extension of the "right
to exclude" granted by a patent >and the possible harassment
by multiple assignees<. In re Goodman, >11 F.3d 1046,< 29
USPQ2d 2010 (Fed. Cir. 1993);  In re Longi , 759 F.2d 887,
225 USPQ 645 (Fed. Cir. 1985)  ; In re Van Ornum , 686 F.2d
937, 214 USPQ 761 (CCPA 1982);  In re Vogel,422 F.2d 438,
164 USPQ 619 (CCPA 1970); and  In re Thorington,418 F.2d
528, 163 USPQ 644 (CCPA 1969).

  A timely filed terminal disclaimer in compliance with 37
CFR 1.321 ** (c) may be used to overcome an actual or
provisional rejection based on a non - statutory double
patenting ground provided the conflicting application or
patent is shown to be commonly owned with this application.
See 37 CFR 1.78(d).

  Effective January 1, 1994, a registered attorney or
agent of record may sign a terminal disclaimer. A terminal
disclaimer signed by the assignee must fully comply with 37
CFR 3.73(b)

 Examiner Note:

  This form paragraph is to be used as a heading before a
non - statutory double patenting rejection using any of form
paragraphs 8.34 - 8.39.

¶ 8.34  Rejection, Obviousness Type Double Patenting - No
Secondary Reference(s)

  Claim[1] rejected under the judicially created doctrine
of obviousness - type double patenting as being unpatentable
over  claim[2]  of  U.S.  Patent  No.  [3].  Although  the
conflicting  claims  are  not  identical,  they  are  not
patentably distinct from each other because [4].

 Examiner Note:

  1.  This paragraph is used for obviousness - type
double patenting rejections based upon a patent .

  2.  If  the  obviousness  -  type  double  patenting
rejection is based upon another application , do not use
this paragraph. A provisional double patenting rejection
should be made using form paragraphs 8.33 and 8.35 or 8.37.

  3.  This paragraph may be used where the conflicting
invention is claimed in a patent which is:

 (a)  by the same inventive entity, or

 (b)  by a different inventive entity and is commonly
assigned even though there is no common inventor, or

 (c)  not commonly assigned but has at least one inventor
in common.

  4.  Form  paragraph  8.33  must  precede  any  one  of
paragraphs 8.34 to 8.39 and must be used only ONCE in an
Office action.

  5.  In bracket 3, insert the number of the patent.

  6.  If evidence indicates that the conflicting patent
is prior art under 35 U.S.C. 102(f) or (g), a rejection
should additionally be made under 102(f) / 103(a) or 102(g)
/ 103(a) using paragraph 7.21.

  7.  If the patent is to another inventive entity and
has an earlier U.S. filing date, a rejection under 35 U.S.C.
102(e) or 102(e) / 103(a) may be made using paragraphs
7.15.02 or 7.21.02.

  8.  In bracket 4, provide appropriate rationale of
obviousness for any claims being rejected over the claims of
the cited patent.

¶ 8.35  Provisional  Rejection,  Obviousness  Type  Double
Patenting - No Secondary Reference(s)

  Claim[1] provisionally rejected under the judicially
created doctrine of obviousness - type double patenting as
being unpatentable over claim[2] of copending Application
No. [3]. Although the conflicting claims are not identical,
they are not patentably distinct from each other because
[4].

  This  is  a  provisional  obviousness  -  type  double
patenting rejection because the conflicting claims have not
in fact been patented.

 Examiner Note:

  1.  This paragraph should be used when the conflicting
claims are in another copending application .

  2.  If the conflicting claims are in a patent , do not
use this paragraph. Use form paragraphs 8.33 and 8.34.

  3.  This paragraph may be used where the conflicting
claims are in a copending application that is:

 (a)  by the same inventive entity, or

 (b)  is commonly assigned even though there is no common
inventor, or

 (c)  not commonly assigned but has at least one common
inventor.

  4.  Form  paragraph  8.33  must  precede  any  one  of
paragraphs 8.34 to 8.39 and must be used only ONCE in an
office action.

  5.  If  the  conflicting  application  is  currently
commonly assigned but the file does not establish that the
conflicting inventions were commonly owned at the time the
later invention was made, form paragraph 8.28 may be used in
place of or in addition to this form paragraph to also
resolve any issues relating to priority under 102(f) and/or
(g).

  6.  In bracket 3, insert the number of the conflicting
application.

  7.  A provisional double patenting rejection should
also be made in the conflicting application.

  8.  If evidence shows that either application is prior
art unto the other under 35 U.S.C. 102(f) or (g) and the
copending application has not been disqualified as prior art
in a>35 U.S.C. < 103 rejection based on common ownership, a
rejection  should  additionally  be  made  in  the  other
application under 35 U.S.C. 102(f) / 103(a) or 102(g) /
103(a) using paragraph 7.21.

  9.  If the disclosure of one application may be used to
support a rejection of the other and the applications have

different  inventive  entities  and  different  U.S.  filing
dates,  use  paragraph  7.21.01  to  additionally  make  a
>rejection under 35 U.S.C. < 102(e) / 103(a) * in the other
application.

  10.  In bracket 4, provide appropriate rationale for
obviousness of claims being rejected over the claims of the
cited patent.

¶ 8.36  Rejection, Obviousness Type Double Patenting - With
Secondary Reference(s)

  Claim[1] rejected under the judicially created doctrine
of obviousness - type double patenting as being unpatentable
over claim[2] of U.S. Patent No. [3] in view of [4]. [5].

 Examiner Note:

  1.  This paragraph is used for obviousness - type
double patenting rejections where the primary reference is a
conflicting patent.

  2.  If the obviousness double patenting rejection is
based on another application , do not use this paragraph. A
provisional obviousness - type double patenting rejection
should be made using form paragraphs 8.33 and 8.35 or 8.37.

  3.  This  paragraph  may  be  used  where  the  prior
invention is claimed in a patent which is:

 (a) by the same inventive entity, or

 (b) by a different inventive entity and is commonly
assigned even though there is no common inventor, or

 (c) not commonly assigned but has at least one common
inventor.

  4.  Form  paragraph  8.33  must  precede  any  one  of
paragraphs 8.34 to 8.39 and must be used only ONCE in an
office action.

  5.  In bracket 3, insert the number of the conflicting
patent.

  6.  In bracket 4, insert the secondary reference.

  7.  In  bracket  5,  insert  an  explanation  of  the
obviousness - type rejection.

  8.  If evidence shows that the conflicting patent is
prior art under>35 U.S.C. < 102(f) or (g), a rejection
should additionally be made under>35 U.S.C. < 102(f) /
103(a) or 102(g) / 103(a) using paragraph 7.21.

  9.  If the patent issued to a different inventive
entity and has an earlier U.S. filing date, a rejection
under 35 U.S.C. 102(e) or 102(e) / 103(a) may be made using
paragraphs 7.15.02 or 7.21.02.

¶ 8.37  Provisional  Rejection,  Obviousness  Type  Double
Patenting - With Secondary Reference(s)

  Claim[1] provisionally rejected under the judicially
created doctrine of obviousness - type double patenting as

being unpatentable over claim[2] of copending Application
No. [3] in view of [4]. [5].

  This  is  a  provisional  obviousness  -  type  double
patenting rejection.

 Examiner Note:

  1.  This paragraph is used for obviousness - type
double patenting rejections where the primary reference is a
conflicting application .

  2.  If the conflicting claims are in a patent , do not
use this paragraph. Use form paragraph 8.34.

  3.  This paragraph may be used where the conflicting
claims are in a copending application that is:

 (a)  by the same inventive entity, or

 (b)  is commonly assigned even though there is no common
inventor, or

 (c)  commonly assigned but has at least one common
inventor.

  4.  Form  paragraph  8.33  must  precede  any  one  of
paragraphs 8.34 to 8.39 and must be used only ONCE in an
office action.

  5.  If the conflicting cases are currently commonly
assigned  but  the  file  does  not  establish  that  the
conflicting inventions were commonly owned at the time the
later invention was made, form paragraph 8.28 may be used in
place of or in addition to this form paragraph to also
resolve any issues relating to priority under 102(f) and/or
(g).

  6.  In bracket 3, insert the number of the conflicting
application.

  7.  In  bracket  5,  insert  an  explanation  of  the
obviousness - type rejection.

  8.  A provisional double patenting rejection should
also be made in the conflicting application.

  9.  If evidence shows that either application is prior
art unto the other under 35 U.S.C. 102(f) or (g) and the
copending application has not been disqualified as prior art
in a>35 U.S.C. < 103(a) rejection based on common ownership,
a rejection should additionally be made under 35 U.S.C.
102(f) / 103(a) or 102(g) / 103(a) using paragraph 7.21.

  10.  If the disclosure of one application may be used to
support a rejection of the other and the applications have
different  inventive  entities  and  different  U.S.  filing
dates,  use  paragraph  7.21.01  to  additionally  make  a
>rejection under 35 U.S.C. < 102(e) / 103(a) *.

 **

  >There are some unique circumstances where it has been
recognized  that  another  type  of  nonstatutory  double
patenting rejection is applicable even where the inventions

claimed in two or more applications/patents are considered
nonobvious  over  each  other.  These  circumstances  are
illustrated by the facts before the court in In re Schneller
, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). In affirming the
double  patenting  rejection,  the  court  summed  up  the
situation

 in appellant's own terms: The combination ABC was old. He
made two improvements on it, (1) adding X and (2) adding Y,
the result still being a unitary clip of enhanced utility.
While his invention can be practiced in the forms ABCX or
ABCY, the greatest advantage and best mode of practicing the
invention as disclosed is obtained by using both inventions
in the combination ABCXY. His first application disclosed
ABCXY and other matters. He obtained a patent claiming [a
clip comprising] BCX and ABCX, . . so claiming these
combinations as to cover them  no matter what other feature
is incorporated in them , thus  covering effectively ABCXY .
He now, many years later, seeks more claims directed to ABCY
and ABCXY . Thus, protection he already had would be
extended, albeit in somewhat different form, for several
years beyond the expiration of his patent, were we to
reverse. 397 F.2d at 355 - 56, 158 USPQ at 216 (emphasis in
original).

  The court recognized that "there is no double patenting
in the sense of claiming the same invention because ABCX and
ABCY are, in the technical patent law sense, different
inventions. The rule against `double patenting,' however, is
not so circumscribed. The fundamental reason for the rule is
to prevent unjustified timewise extension of the right to
exclude granted by a patent no matter how the extension is
brought about. To . . prevail here, appellant has the
burden of establishing that the invention claimed in his
patent is `independent and distinct' from the invention of
the appealed claims." 397 F.2d at 354, 158 USPQ at 214
(emphasis in original).

  The court observed "[t]he controlling fact is that
patent protection for the clips, fully disclosed in and
covered by the claims of the patent, would be extended by
allowance of the appealed claims. Under the circumstance of
the instant case, wherein we find no valid excuse or
mitigating circumstances making it either reasonable or
equitable to make an exception, and wherein there is no
terminal disclaimer, the rule against `double patenting'
must be applied." 397 F.2d at 355, 158 USPQ at 215.

  In determining whether to make this type of nonstatutory
double patenting rejection, the examiner should do a side by
side comparison of the reference and application claims,
keeping in mind that "only the claims of the patent can be
considered as support for the rejection, its disclosure
being looked to only to determine the meaning of the claims,
which are to be read in the light of the specification." 397
F.2d at 352, 158 USPQ at 213. A rejection is appropriate
where  (1)  patent  protection  for  the  invention,  fully
disclosed in and covered by the claims of the reference,
would be extended by the allowance of the claims in the
later filed application, (2) there was no valid excuse or
mitigating circumstances making it either reasonable or
equitable to make an exception (e.g., the Office required
restriction, or the claimed inventions were invented by
different  inventive  entities),  and  (3)  no  terminal
disclaimer has been filed. See 397 F.2d at 355, 158 USPQ at

215. However, if the applicant has met "the burden of
establishing that the invention claimed in [the reference]
is `independent and distinct' from the invention of the . .
.claims" at issue, a nonstatutory double patenting rejection
of this type should not be made or, if already made, should
be withdrawn. 397 F.2d at 354, 158 USPQ at 214.<

  A fact situation similar to that in Schneller was
presented to a Federal Circuit panel in In re Kaplan , 789
F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986). Kaplan had been
issued a patent on a process of making chemicals in the
presence of an organic solvent. Among the organic solvents
disclosed and claimed as being useful were tetraglyme and
sulfolane.  One  unclaimed  example  in  the  patent  was
specifically directed to a mixture of these two solvents.
The claims in the application to Kaplan and Walker, the
application before the Office, were directed to essentially
the same chemical process, but requiring the use of the
solvent mixture of tetraglyme and sulfolane. In reversing
the double patenting rejection, the court stated that the
mere fact that the broad process claim of the patent
requiring an organic solvent reads on or "dominates" the
narrower claim directed to basically the same process using
a specific solvent mixture does not, per se, justify a
double patenting rejection. The court also pointed out that
the  double  patenting  rejection  improperly  used  the
disclosure of the joint invention (solvent mixture) in the
Kaplan patent specification as though it were prior art.

  A significant factor in the Kaplan case was that the
broad invention was invented by Kaplan, and the narrow
invention (i.e., using a specific combination of solvents)
was invented by Kaplan and Walker. Since these applications
(as the applications in Braat ) were filed before the Patent
Law Amendments Act of 1984 (Pub. Law 98 - 622, November 8,
1984) amending 35 U.S.C. 116 to expressly authorize filing a
patent application in the names of joint inventors who did
not necessarily make a contribution to the invention defined
in each claim in the patent, it was necessary to file
multiple applications to claim both the broad and narrow
inventions. Accordingly, there was a valid reason, driven by
statute, why the claims to the specific solvent mixture were
not  presented  for  examination  in  the  Kaplan  patent
application.

  Each double patenting situation must be decided on its
own facts. **

  Form paragraph 8.33 and the appropriate one of 8.38
(between an issued patent and one or more applications) and
8.39 (provision rejections) may be used to make nonstatutory
double patenting rejections of the nonobvious type.

¶ 8.38  Double Patenting - Non - statutory, *>Based On
Improper Timewise Extension of Patent Rights,< With a Patent

  Claim[1] rejected under the judicially created doctrine
of double patenting over claim[2] of U. S. Patent No. [3]
since the claims, if allowed, would improperly extend the
"right to exclude" already granted in the patent.

  The subject matter claimed in the instant application is
fully disclosed in the patent and is covered by the patent
since the patent and the application are claiming common
subject matter, as follows: [4].

  Furthermore, there is no apparent reason why applicant
was prevented from presenting claims corresponding to those
of  the  instant  application  during  prosecution  of  the
application which matured into a patent. In re Schneller,397
F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.

 Examiner Note:

  1.  This form paragraph must be preceded by form
paragraph 8.33.

  2.  Use this form paragraph only when the subject
matter of the claim(s) is fully disclosed in, and covered by
* at least one claim of>,< an issued U.S. Patent which is
commonly owned or where there is common inventorship (one or
more inventors in common).

  3.  In bracket 3, insert the number of the patent.

  4.  Form  paragraph  8.33  must  precede  any  one  of
paragraphs 8.34 to 8.39 and must be used only ONCE in an
Office action.

  5.  If evidence indicates that the conflicting patent
is prior art under 35 U.S.C. 102(f) or (g), a rejection
should additionally be made under 102(f) / 103(a) or 102(g)
/ 103(a) using paragraph 7.21.

  6.  If the patent is to another inventive entity and
has an earlier U.S. filing date, a rejection under 35 U.S.C.
102(e) or 102(e) / 103(a) may be made using paragraphs
7.15.02 or 7.21.02.

¶ 8.39  Double Patenting - Non - statutory, *>Based On
Improper Timewise Extension of Patent Rights,< With Another
Application

  Claim[1] rejected under the judicially created doctrine
of double patenting over claim[2] of copending Application
No. [3].

  The subject matter claimed in the instant application is
fully disclosed in the referenced copending application and
would be covered by any patent granted on that copending
application since the referenced copending application and
the instant application are claiming common subject matter,
as follows: [4].

  Furthermore, there is no apparent reason why applicant
would be prevented from presenting claims corresponding to
those of the instant application in the other copending
application. In re Schneller,397 F.2d 350, 158 USPQ 210
(CCPA 1968). See also MPEP § 804.

 Examiner Note:

  1.  This form paragraph must be preceded by form
paragraph 8.33.

  2.  Use this form paragraph only when the subject
matter of the claim(s) is fully disclosed in, and covered by
* at least one claim of>,< another copending application
which  is  commonly  owned  or  where  there  is  common
inventorship (one or more inventors in common).

  3.  In bracket 3, insert the number of the conflicting
application.

  4.  In bracket 4, insert a description of the subject
matter being claimed which is covered in the copending
application.

  5.  Paragraph 8.33 must precede any one of paragraphs
8.34 to 8.39 and must be used only ONCE in an office action.

  6.  If  the  conflicting  application  is  currently
commonly assigned but the file does not establish that the
conflicting inventions were commonly owned at the time the
later invention was made, form paragraph 8.28 may be used in
place of or in addition to this form paragraph to also
resolve any issues relating to priority under>35 U.S.C. <
102(f) and/or (g).

  7.  A provisional double patenting rejection should
also be made in the conflicting application.

  8.  If evidence shows that either application is prior
art unto the other under 35 U.S.C. 102(f) or (g) and the
copending application has not been disqualified (as prior
art in a 103 rejection based on common ownership), a
rejection  should  additionally  be  made  in  the  other
application under 35 U.S.C. 102(f) / 103(a) or 102(g) /
103(a) using paragraph 7.21.

  9.  If the disclosure of one application may be used to
support a rejection of the other and the applications have
different  inventive  entities  and  different  U.S.  filing
dates,  use  paragraph  7.21.01  to  additionally  make  a
>rejection under 35 U.S.C. < 102(e) / 103(a) *.

 3. Design/Plant - Utility situations

  Double patenting issues may be raised where an applicant
has filed both a utility patent application (35 U.S.C. 111)
and either an application for a plant patent (35 U.S.C. 161)
or an application for a design patent (35 U.S.C. 171). In
general, the same double patenting principles and criteria
that are applied in utility - utility situations are applied
to utility - plant or utility - design situations. Double
patenting rejections in utility - plant situations may be
made in appropriate circumstances.

  Although double patenting is rare in the context of
utility versus design patents, a double patenting rejection
of a pending design or utility application can be made on
the basis of a previously issued utility or design patent,
respectively. Carman Industries Inc.  v.  Wahl , 724 F.2d
932, 220 USPQ 481 (Fed. Cir. 1983). The rejection is based
on the public policy preventing the extension of the term of
a patent. Double patenting may be found in a design -
utility situation irrespective of whether the claims in the
patent relied on in the rejection and the claims in issue
involve  the  same  invention,  or  whether  they  involve
inventions which are obvious variations of one another. In
re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969).

  In Carman , the court held that no double patenting
existed between a design and utility patent since the claims
in the utility patent, drawn to the interior construction of

a flow promoter, were not directed to the same invention or
an obvious variation of the invention claimed in a design
patent  directed  to  the  visible  external  surface
configuration of a storage bin flow promoter. The majority
opinion in this decision appears to indicate that a two -
way obviousness determination is necessary in design -
utility cases. 724 F.2d at 940 - 41, 220 USPQ at 487 - 88.
But see Carman(J. Nies, concurring).

  In Thorington , the court affirmed a double patenting
rejection of claims for a fluorescent light bulb in a
utility patent application in view of a previously issued
design patent for the same bulb. In another case, a double
patenting rejection of utility claims for a finger ring was
affirmed in view of an earlier issued design patent, where
the drawing in both the design patent and the utility
application illustrated the same article. In re Phelan , 205
F.2d 183, 98 USPQ 156 (CCPA 1953). A double patenting
rejection of a design claim for a flashlight cap and hanger
ring was affirmed over an earlier issued utility patent. In
re Barber , 81 F.2d 231, 28 USPQ 187 (CCPA 1936). A double
patenting  rejection  of  claims  in  a  utility  patent
application directed to a balloon tire construction was
affirmed  over  an  earlier  issued  design  patent.  In  re
Hargraves , 53 F.2d 900, 11 USPQ 240 (CCPA 1931).

 III.  CONTRAST BETWEEN DOUBLE PATENTING REJECTION AND
REJECTIONS BASED ON PRIOR ART

  Rejections  over  a  patent  or  another  copending
application based on double patenting or 35 U.S.C. 103 are
similar in the sense that both require comparison of the
claimed subject matter with at least part of the content of
another patent or application, and both may require that an
obviousness analysis be made. However, there are significant
differences between a rejection based on double patenting
and one based on 35 U.S.C. 102(e) prior art under 35 U.S.C.
103. In re Bartfeld , 925 F.2d 1450, 17 USPQ2d 1885 (Fed.
Cir. 1991).

  One significant difference is that a double patenting
rejection must rely on a comparison with the claims in an
issued or to be issued patent, whereas an obviousness
rejection based on the same patent under 35 U.S.C. 102(e) /
103 relies on a comparison with what is disclosed (whether
or not claimed) in the same issued or to be issued patent.
In a 35 U.S.C. 102(e) / 103 rejection over a prior art
patent, the reference patent is available for all that it
fairly discloses to one of ordinary skill in the art,
regardless of what is claimed. In re Bowers , 359 F.2d 886,
149 USPQ 570 (CCPA 1966).

  A second significant difference is that a terminal
disclaimer cannot be used to obviate a rejection based on 35
U.S.C. 102(e) / 103 prior art. In re Fong , 378 F.2d 977,
154  USPQ  25  (CCPA  1967).  The  purpose  of  a  terminal
disclaimer is to obviate a double patenting rejection by
removing the potential harm to the public by issuing a
second patent, and not to remove a patent as prior art.

  Where the inventions are made by inventors that have
assigned their rights to a common assignee, the assignee can
take some preemptive measures to avoid having a copending
application become prior art under 35 U.S.C. 102(e). The
applications can be filed on the same day, or copending

applications can be merged into a single continuation - in -
part application and the parent applications abandoned. If
these steps are undesirable or the first patent has issued,
the prior art effect of the first patent may be avoided by a
showing under 37 CFR 1.132 that any unclaimed invention
disclosed in the first patent was derived from the inventor
of the application before the examiner in which the 35
U.S.C. 102(e) / 103 rejection was made. In re Katz , 687
F.2d 450, 215 USPQ 14 (CCPA 1982). See also MPEP § 716.10.
Finally, it may be possible for applicant to respond to a 35
U.S.C. 102(e) / 103 rejection by showing, under 37 CFR
1.131, that the date of invention of the claimed subject
matter was prior to the effective filing date of the
reference  patent  which  has  been  relied  upon  for  its
unclaimed disclosure. See MPEP § 715.

  Because there are significant differences between a
rejection based on double patenting and one based on prior
art under 35 U.S.C. 102(e) / 103 over the same issued
patent,  it  is  both  appropriate  and  necessary  that  an
examiner make both rejections when the facts support both
rejections. A prior art reference that renders claimed
subject matter obvious under 35 U.S.C. 102(e) / 103 does not
create a double patenting situation where that subject
matter is not claimed in the reference patent. Where the
subject matter that renders a claim obvious is both claimed
and disclosed in a U.S. patent which satisfies the criteria
of 35 U.S.C. 102(e), the examiner should make rejections
based both on double patenting and 35 U.S.C. 103.

804.01  Prohibition of Double Patenting Rejections Under
35 U.S.C. 121 [R - 3]

  35 U.S.C. 121 authorizes the Commissioner to restrict the
claims in a patent application to a single invention when
independent  and  distinct  inventions  are  presented  for
examination. The third sentence of 35 U.S.C. 121 prohibits
the use of a patent issuing on an application with respect
to which a requirement for restriction has been made, or on
an application filed as a result of such a requirement, as a
reference  against  any  divisional  application,  if  the
divisional application is filed before the issuance of the
patent. The 35 U.S.C. 121 prohibition applies only where the
Office  has  made  a  requirement  for  restriction.  The
prohibition does not apply where the divisional application
was voluntarily filed by the applicant and not in response
to an Office requirement for restriction. This apparent
nullification of double patenting as a ground of rejection
or invalidity in such cases imposes a heavy burden on the
Office  to  guard  against  erroneous  requirements  for
restrictions where the claims define essentially the same
invention in different language and which, if acquiesced in,
might result in the issuance of several patents for the same
invention.

  The prohibition against holdings of double patenting
applies to requirements for restriction between the related
subjects treated in MPEP 806.04 through 806.05(i), namely,
between  combination  and  subcombination  thereof,  between
subcombinations  disclosed  as  usable  together,  between
process and apparatus for its practice, between process and
product made by such process and between apparatus and
product made by such apparatus, etc., so long as the claims
in each case are filed as a result of such requirement.

  The following are situations where the prohibition of
double patenting rejections under 35 U.S.C. 121 does not
apply:

  (a)  The applicant voluntarily files two or more
cases without a restriction requirement by the examiner. In
re Schneller , 397 F.2d 350, 158 USPQ 210 (CCPA 1968)

  (b)  The claims of the different applications or
patents are not consonant with the restriction requirement
made by the examiner, since the claims have been changed in
material  respects  from  the  claims  at  the  time  the
requirement  was  made.  For  example,  the  divisional
application filed includes additional claims not consonant
in scope to the original claims subject to restriction in
the parent. Symbol Technologies, Inc.  v.  Opticon, Inc. ,
935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991);  Gerber
Garment Technology, Inc.  v  . Lectra Systems Inc. , 916
F.2d 683, 16 USPQ2d 1436 (Fed. Cir. 1990). In order for
consonance to exist, the line of demarcation between the
independent  and  distinct  inventions  identified  by  the
examiner  in  the  requirement  for  restriction  must  be
maintained.  Gerber ,  supra.

  (c)  The restriction requirement was written in a
manner which made it clear to applicant that the requirement
was made subject to the nonallowance of generic or other
linking claims and such >generic or< linking claims are
subsequently allowed. Therefore, if a generic or linking
claim is subsequently allowed, the restriction requirement
*>must< be *>withdrawn<.

  (d)  The requirement for restriction (holding of
lack  of  unity  of  invention)  was  only  made  in  an
international application by the International Searching
Authority  or  the  International  Preliminary  Examining
Authority.

  (e)  The requirement for restriction was withdrawn
by the examiner before the patent issues. In re Ziegler ,
443 F.2d 1211, 170 USPQ 129 (CCPA 1971).

  (f)  The claims of the second application are drawn
to the "same invention" as the first application or patent.
Studiengesellschaft Kohle mbH v. Northern Petrochemical Co.,
784 F.2d 351, 228 USPQ 837 (Fed. Cir. 1986).

  While the situation should not arise where appropriate
care is exercised in defining the independent and distinct
inventions in a restriction requirement, the issue might
arise as to whether 35 U.S.C. 121 prevents the use of a
double patenting rejection when the identical invention is
claimed in both the patent and the pending application.
Under these circumstances, the Office will make the double
patenting rejection because the patentee is entitled only to
a  single  patent  for  an  invention.  As  expressed  in
Studiengesellschaft  Kohle  ,  supra  ,  (J.  Newman,
concurring), "35 U.S.C. 121 of course does not pro vide that
multiple patents may be granted on the identical invention."

804.02  Avoiding a Double Patenting Rejection [R - 3]

 I.  STATUTORY

  A rejection based on the statutory type of double

patenting can be avoided by canceling the conflicting claims
in all but one of the pending application(s) or patent, or
by amending the conflicting claims so that they are not
coextensive in scope. A terminal disclaimer is not effective
in overcoming a statutory double patenting rejection.

  The use of a 37 CFR 1.131 affidavit in overcoming a
statutory double patenting rejection is inappropriate. In re
Dunn , 349 F.2d 433, 146 USPQ 479 (CCPA 1965). Knell v.
Muller , 174 USPQ 460 (Com. Pat. 1971), citing the CCPA
decisions in In re Ward , 236 F.2d 428, 111 USPQ 101 (CCPA
1956); In re Teague , 254 F.2d 145, 117 USPQ 284 (CCPA
1958); and In re Hidy , 303 F.2d 954, 133 USPQ 65 (CCPA
1962).

 II.  NONSTATUTORY

 **>37 CFR 1.130. Affidavit or declaration to disqualify
commonly owned patent as prior art.

 ****

  (b) When an application or a patent under reexamination
claims an invention which is not patentably distinct from an
invention claimed in a commonly owned patent with the same
or  a  different  inventive  entity,  a  double  patenting
rejection will be made in the application or a patent under
reexamination.  A  judicially  created  double  patenting
rejection may be obviated by filing a terminal disclaimer in
accordance with § 1.321(c).<

  A rejection based on a nonstatutory type of double
patenting can be avoided by filing a terminal disclaimer in
the application or proceeding in which the rejection is
made. > In re Vogel,422 F.2d 438, 164 USPQ 619 (CCPA 1970);<
In re Knohl , 155 USPQ 586 (CCPA 1967);  In re Griswold ,
150  USPQ  804  (CCPA  1966)  **.  The  use  of  a  terminal
disclaimer in overcoming a nonstatutory double patenting
rejection is in the public interest because it encourages
the  disclosure  of  additional  developments,  the  earlier
filing  of  applications,  and  the  earlier  expiration  of
patents  whereby  the  inventions  covered  become  freely
available to the public.  In re Jentoft , 157 USPQ 363 (CCPA
1968);  In re Eckel , 393 F.2d 848, 157 USPQ 415 (CCPA
1968);  In re Braithwaite , 379 F.2d 594, 154 USPQ 29 (CCPA
1967).

  The use of a 37 CFR 1.131 affidavit in overcoming a
double patenting rejection is inappropriate because the
claim or claims in the application are being rejected over a
patent which claims the rejected invention. In re Dunn , 349
F2.d 433, 146 USPQ 479 (CCPA 1965). Rule 131 is inapplicable
if  the  claims  of  the  application  and  the  patent  are
"directed to substantially the same invention". It is also
inapplicable if there is a lack of "patentable distinctness"
between the claimed subject matter. Knell  v.  Muller , 174
USPQ 460 (Com. Pat. 1971), citing the CCPA decisions in In
re Ward , 236 F.2d 428, 111 USPQ 101 (CCPA 1956); In re
Teague , 254 F.2d 145, 117 USPQ 284 (1958); and In re Hidy ,
303 F.2d 954, 133 USPQ 65 (CCPA 1962).

  The Patent and Trademark Office cannot ensure that two
or more cases will have a common issue date. Applicants are
cautioned that reliance upon a common issue date cannot
effectively  substitute  for  the  filing  of  one  or  more

terminal disclaimers in order to overcome a proper double
patenting rejection, particularly since a common issue date
alone does not avoid the potential problem of dual ownership
of patents to patentably indistinct inventions.

  A patentee or applicant may disclaim or dedicate to the
public the entire term, or any terminal part of the term of
a patent. 35 U.S.C. 253. The statute does not provide for a
terminal disclaimer of only a specified claim or claims. The
terminal disclaimer must operate with respect to all claims
in the patent.

  The filing of a terminal disclaimer to obviate a
rejection based on nonstatutory double patenting is not an
admission  of  the  propriety  of  the  rejection.  Quad
Environmental  Technologies  Corp.  v.  Union  Sanitary
District , 946 F.2d 870, 20 USPQ 2d 1392 (Fed. Cir. 1991).
The  court  indicated  that  the  "filing  of  a  terminal
disclaimer simply serves the statutory function of removing
the rejection of double patenting, and raises neither a
presumption nor estoppel on the merits of the rejection."

  A  terminal  disclaimer  filed  to  obviate  a  double
patenting rejection is effective only with respect to the
application identified in the disclaimer, unless by its
terms  it  extends  to  continuing  applications.  If  an
appropriate double patenting rejection of the nonstatutory
type is made in two or more pending applications, an
appropriate  terminal  disclaimer  must  be  filed  in  each
application.

  Claims that differ from each other (aside from minor
differences in language, punctuation, etc.), whether or not
the difference is obvious, are not considered to be drawn to
the same invention for double patenting purposes under 35
U.S.C. 101. In cases where the difference in claims is
obvious, terminal disclaimers are effective to overcome
double  patenting  rejections.  However,  such  terminal
disclaimers must include a provision that the patent shall
be unenforceable if it ceases to be commonly owned with the
other application or patent. Note 37 CFR 1.321(c). It should
be emphasized that a terminal disclaimer cannot be used to
overcome a rejection under 35 U.S.C. 102(e) / 103.

  REQUIREMENTS OF A TERMINAL DISCLAIMER

  A terminal disclaimer is a statement filed by an owner
(in whole or in part) of a patent or a patent to be granted
that is used to disclaim or dedicate a portion of the entire
term of all the claims of a patent. The requirements for a
terminal disclaimer are set forth in 37 CFR 1.321. Sample
forms of a terminal disclaimer are provided in MPEP 1490.

804.03  Treatment of Commonly Owned Cases of Different 
  Inventive Entities [R - 3]

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

  *****

  >(c) Where an application or a patent under reexamination
and  at  least  one  other  application  naming  different
inventors  are  owned  by  the  same  party  and  contain
conflicting claims, and there is no statement of record

indicating that the claimed inventions were commonly owned
or subject to an obligation of assignment to the same person
at the time the later invention was made, the assignee may
be called upon to state whether the claimed inventions were
commonly owned or subject to an obligation of assignment to
the same person at the time the later invention was made,
and if not, indicate which named inventor is the prior
inventor. <

 **>37 CFR 1.130 Affidavit or declaration to disqualify
commonly owned patent as prior art.

  (b) When an application or a patent under reexamination
claims an invention which is not patentably distinct from an
invention claimed in a commonly owned patent with the same
or  a  different  inventive  entity,  a  double  patenting
rejection will be made in the application or a patent under
reexamination.  A  judicially  created  double  patenting
rejection may be obviated by filing a terminal disclaimer in
accordance with § 1.321(c).<

 I.  DOUBLE PATENTING

  The Patent and Trademark Office has withdrawn the
Commissioners Notice of January 9, 1967, Double Patenting,
834 O.G. 1615 (Jan. 31, 1967), to the extent that it does
not authorize a double patenting rejection where different
inventive entities are present. The examiner may reject
claims in commonly owned applications of different inventive
entities on the ground of double patenting. This is in
accordance  with  existing  case  law  and  prevents  an
organization  from  obtaining  two  or  more  patents  with
different expiration dates covering nearly identical subject
matter. See In re Zickendraht , 319 F.2d 225, 138 USPQ 22
(CCPA 1963) (the doctrine is well established that claims in
different applications need be more than merely different in
form or content and that patentable distinction must exist
to entitle applicants to a second patent); In re Christensen
, 330 F.2d 652, 141 USPQ 295 (CCPA 1964).

  Double patenting rejections can be overcome in certain
circumstances by disclaiming, pursuant to the provisions of
37 CFR 1.321, the terminal portion of the term of the later
patent and including in the disclaimer a provision that the
patent shall be enforceable only for and during the period
the patent is commonly owned with the application or patent
which  formed  the  basis  for  the  rejection,  thereby
eliminating  the  problem  of  extending  patent  life.  37
CFR*>1.130(b)<.

 II.  DETERMINING PRIORITY; REJECTIONS UNDER 35 U.S.C.
102 AND 103

  A determination of priority is not required when two
inventions come within the provisions of 35 U.S.C. 103(c).
Two inventions of different inventive entities come within
the provisions of 35 U.S.C. 103(c) when (1) the later
invention is not anticipated by the earlier invention under
35 U.S.C. 102; (2) the earlier invention qualifies as prior
art against the later invention only under subsection (f) or
(g) of 35 U.S.C. 102; and (3) the inventions were, at the
time the later invention was made, owned by the same person
or subject to an obligation of assignment to the same
person. If the two inventions come within the provisions of
35 U.S.C. 103(c), it is not necessary to determine priority

of invention since the earlier invention is disqualified as
prior art against the later invention and since double
patenting rejections can be used to ensure that the patent
terms expire together. In circumstances where the inventions
of different inventive entities come within the provisions
of 35 U.S.C. 103(c), no inquiry under 37 CFR 1.78(c) should
be made since it is unnecessary to determine the prior
inventor. However, if there is no evidence that claims of
applications of different inventive entities come within the
provisions of 35 U.S.C. 103(c) and if the applications are
owned by the same party and contain conflicting claims, it
is necessary to determine the prior inventor unless the
conflicting claims by all but one inventive entity are
eliminated.

  Form paragraphs 8.27 and 8.28 may be used to require the
applicant to name the prior inventor under 37 CFR 1.78(c).

  Before  making  the  requirement  to  state  the  prior
inventor under 37 CFR 1.78(c), with its threat to hold the
case abandoned if the statement is not made by the assignee,
the examiner must make sure that claims are present in each
case which are conflicting as defined in MPEP 804. See In re
Rekers , 203 USPQ 1034 (Comm'r. Pats. 1979).

  In some situations the application file wrappers may
reflect which invention is the prior invention, e.g., by
reciting that one invention is an improvement of the other
invention. See Margolis et al.  v.  Banner ,>599 F.2d 435,<
202 USPQ 365 (CCPA 1979) (Court refused to uphold a holding
of abandonment for failure to name the prior inventor since
the  record  showed  what  was  invented  by  the  different
inventive entities and who was the prior inventor).

  An application in which a requirement to name the prior
inventor has been made will not be held abandoned where a
timely response indicates that the other application is
abandoned or will be permitted to become abandoned and will
not be filed as a continuing application. Such a response
will  be  considered  sufficient  since  it  renders  the
requirement to identify the prior inventor moot because the
existence of conflicting claims is eliminated.

  If, after taking out a patent, a common assignee
presents  claims  for  the  first  time  in  a  copending
application by different inventive entities not patentably
distinct from the claims in the patent, the claims of the
application should be rejected on the ground that the
assignee, by taking out the patent at a time when the
application was not claiming the patented invention, is
estopped to contend that the patentee is not the prior
inventor.  This  rejection  could  be  overcome  if  the
requirements of 35 U.S.C. 103(c) are met.

¶ 8.27  Different  Inventors,  Common  Assignee,  Same
Invention

  Claim [1] directed to the same invention as that of
claim [2] of commonly assigned [3]. The issue of priority
under 35 U.S.C. 102(g) and possibly 35 U.S.C. 102(f) of this
single invention must be resolved.

  Since the Patent and Trademark Office normally will not
institute an interference between applications or a patent
and an application of common ownership (see MPEP § 2302),

the assignee is required to state which entity is the prior
inventor of the conflicting subject matter. A terminal
disclaimer has no effect in this situation since the basis
for refusing more than one patent is priority of invention
under 35 U.S.C. 102(f) or (g) and not an extension of
monopoly.

  Failure to comply with this requirement will result in a
holding of abandonment of the application.

 Examiner Note:

  1.  In bracket 3, insert the U.S. patent number or the
copending application serial number.

  2.  The claims listed in brackets 1 and 2 must be for
the same invention. If one invention is obvious in view of
the other, do not use this paragraph; see form paragraph
8.28.

  3.  A provisional or actual statutory double patenting
rejection may also be made using >form< paragraphs 8.31 or
8.32.

  4.  If the commonly assigned application or patent has
an earlier U.S. filing date, a rejection under 35 U.S.C.
102(e) may also be made using form paragraph 7.15.01 or
7.15.02.

¶ 8.28  Different  Inventors,  Common  Assignee,  Obvious
Inventions, No Evidence of Common Ownership at time of
invention

  Claim [1] directed to an invention not patentably
distinct  from  claim  [2]  of  commonly  assigned  [3].
Specifically, [4]

 Examiner Note:

  1.  This paragraph should be used when the application
being examined is commonly assigned with a conflicting
application or patent but there is no indication that they
were  commonly  assigned  at  the  time  the  invention  was
actually made.

  2.  If the conflicting claims are in a patent with an
earlier U.S. filing date, make a rejection under 35 U.S.C.
102(e) / 103(a) using paragraph 7.21 in addition to this
paragraph.

  3.  If  the  conflicting  claims  are  in  a  commonly
assigned, copending application with an earlier filing date,
make a provisional 102(e) / 103(a) rejection of the claims
using  paragraph  7.20  and  7.21.01  in  addition  to  this
paragraph.

  4.  In bracket 3, insert the number of the conflicting
patent or application.

  5.  An obviousness double patenting rejection may also
be included in the action using paragraphs 8.34 to 8.36.

  6.  In bracket 4, explain why the claims in the
conflicting cases are not considered to be distinct.

  7.  Form paragraph 8.28.01 MUST follow this paragraph.

¶ 8.28.01  Advisory Information Relating to Paragraph
8.28

  Commonly assigned [1], discussed above, would form the
basis for a rejection of the noted claims under 35 U.S.C.
103(a) if the commonly owned case qualifies as prior art
under 35 U.S.C. 102(f) or (g) and the conflicting inventions
were not commonly owned at the time the invention in this
application was made. In order for the examiner to resolve
this issue, the assignee is required under 37 CFR 1.78(c)
and 35 U.S.C. 132 to either show that the conflicting
inventions were commonly owned at the time the invention in
this application was made or to name the prior inventor of
the conflicting subject matter. Failure to comply with this
requirement will result in a holding of abandonment of the
application.

  A showing the the inventions were commonly owned at the
time  the  invention  in  this  application  was  made  will
preclude a rejection under 35 U.S.C. 103(a) based upon the
commonly assigned case as a reference under 35 U.S.C. 102(f)
or (g).

 Examiner Note:

  This form paragraph should follow paragraph 8.28 and
should only be used ONCE in an Office action.

  If evidence is of record to indicate that one patent or
application is prior art under 35 U.S.C. 102(f) or (g) or
102(f) / 103 or 102(g) / 103 to another application, and the
inventions do not fall within 35 U.S.C. 103(c), the examiner
should also reject the claims of the other application under
35 U.S.C. 102(f), 102(g), 102(f) / 103 or 102(g) / 103 using
the appropriate one(s) of form paragraphs 7.19, 7.15, 7.21
and 7.21.01. Rejections under 35 U.S.C. 102 or 103 cannot be
obviated >solely< by filing a terminal disclaimer.

¶ 7.15  Rejection,  35  U.S.C.  102(a),  (b)  Patent  or
Publication, and (g)

  Claim[1] rejected under 35 U.S.C. 102([2]) as being [3]
by [4].

 Examiner Note

  1. In bracket 2, insert the appropriate paragraph letter
or letters of 35 U.S.C. 102 in parentheses. If paragraph (e)
of 35 U.S.C. 102 is applicable, use form paragraph 7.15.02.

  2. In bracket 3, insert either "anticipated" or "clearly
anticipated"  with  an  explanation  at  the  end  of  the
paragraph.

  3. In bracket 4, insert the prior art relied upon.

  4. This rejection must be preceded either by paragraph
7.07 and paragraphs 7.08, 7.09, and 7.14 as appropriate, or
by paragraph 7.103.

  5. If 35 U.S.C. 102(e) is also being applied, this
paragraph must be followed by either form paragraph 7.15.02
or 7.15.03.

¶ 7.19  Rejection, 35 U.S.C. 102(f), Applicant not the
Inventor

  Claim [1] rejected under 35 U.S.C. 102(f) because the
applicant did not invent the claimed subject matter. [2].

 Examiner Note:

  1.  This  paragraph  must  be  preceded  either  by
paragraphs 7.07 and 7.13 or by paragraph 7.103.

  2.  In  bracket  2,  insert  an  explanation  of  the
supporting evidence establishing that applicant was not the
inventor.

¶ 7.21  Rejection, 35 U.S.C. 103(a)

  Claim[1] rejected under 35 U.S.C. 103(a) as being
unpatentable over [2]. [3].

 Examiner Note:

  1.  This paragraph must be preceded either by paragraph
7.20 or paragraph 7.103.

  2.  In bracket 3, an explanation of the rejection
applying the Graham et al. v. Deere test must be provided.

  3.  If  this  rejection  relies  upon  art  that  is
disqualified under 35 U.S.C. 102(f) or(g) based upon the
common ownership of the inventions, paragraph 7.20.01 must
follow this paragraph.

  4.  If this rejection is a provisional 35 U.S.C. 103(a)
rejection based upon a copending application that would
comprise prior art under>35 U.S.C. < 102(e) if patented, use
paragraph 7.21.01 instead of this paragraph.

¶ 7.21.01  Provisional  Rejection,  35  U.S.C.  103(a),
Common Assignee or At Least One Common Inventor Only

  Claim[1] provisionally rejected under 35 U.S.C. 103(a)
as being obvious over copending Application No. [2] which
has a common [3] with the instant application. Based upon
the earlier effective U.S. filing date of the copending
application, it would constitute prior art under 35 U.S.C.
102(e) if patented. This provisional rejection under 35
U.S.C. 103 is based upon a presumption of future patenting
of the conflicting application. [4].

  This provisional rejection might be overcome either by a
showing under 37 CFR 1.132 that any invention disclosed but
not claimed in the copending application was derived from
the inventor of this application and is thus not the
invention "by another", or by a showing of a date of
invention for the instant application prior to the effective
U.S. filing date of the copending application under 37 CFR
1.131.

 Examiner Note:

  1. This paragraph is used to provisionally reject claims
not patentably distinct from the disclosure in a copending
application having an earlier U.S. filing date and also

having either a common assignee or at least one common
inventor.

  2. If the claimed invention is fully disclosed in the
copending application, use paragraph 7.15.01.

  3. In bracket 3, insert either "assignee" or "inventor".

  4. In bracket 4, insert explanation of obviousness.

  5. If the claimed invention is also claimed in the
copending  application,  a  provisional  obviousness  double
patenting  rejection  should  additionally  be  made  using
paragraph 8.33 and 8.37.

  6. If evidence indicates that the copending application
is also prior art under 35 U.S.C. 102(f) or (g) and the
copending application has not been disqualified as prior art
in a 35 U.S.C. 103(a) rejection based upon common ownership,
a rejection should additionally be made under 35 U.S.C.
103(a) using paragraph 7.21 (e.g., applicant has named the
prior inventor in response to a requirement made using
paragraph 8.28).

  Further, if the conflicting applications have different
effective U.S. filing dates, the examiner should consider
making  a  provisional  rejection  in  the  later  filed
application, based on the earlier filed application, under
35 U.S.C. 102(e) or 102(e) / 103 , using form paragraph
7.15.01 or 7.21.01. Similarly, if an application has a later
effective U.S. filing date than a conflicting issued patent,
the examiner should consider making a rejection in the
application, based on the patent, under 35 U.S.C. 102(e) or
102(e) / 103 , using form paragraph 7.15.02 or 7.21.02.
Rejections under 35 U.S.C. 102 or 103 cannot be obviated
>solely< by the filing of a terminal disclaimer.

¶ 7.15.01  Provisional Rejection, 35 U.S.C. 102(e) -
Common Assignee or At Least One Common Inventor

  Claim[1] provisionally rejected under 35 U.S.C. 102(e)
as being anticipated by copending Application No. [2] which
has a common [3] with the instant application.

  Based upon the earlier effective U.S. filing date of the
copending application, it would constitute prior art under
35 U.S.C. 102(e) if patented. This provisional rejection
under 35 U.S.C. 102(e) is based upon a presumption of future
patenting of the copending application. [4].

  This provisional rejection under 35 U.S.C. 102(e) might
be overcome either by a showing under 37 CFR 1.132 that any
invention  disclosed  but  not  claimed  in  the  copending
application  was  derived  from  the  inventor  of  this
application and is thus not the invention "by another," or
by an appropriate showing under 37 CFR 1.131.

  This rejection may not be overcome by the filing of a
terminal disclaimer. See  In re Bartfeld , 17 USPQ 2d 1685
(Fed. Cir. 1991).

 Examiner Note:

  1. This paragraph is used to provisionally reject over a
copending application with an earlier filing date that

discloses the claimed invention. The copending application
must have either a common assignee or at least one common
inventor.

  2. If the claims are obvious over the invention disclosed
in the other copending application, use paragraph 7.21.01.

  3. In bracket 3, insert either "assignee" or "inventor."

  4. In bracket 4, an appropriate explanation may be
provided  in  support  of  the  Examiner's  position  on
anticipation, if necessary.

  5. If the claims of the copending application conflict
with the claims of the instant application, a provisional
double  patenting  rejection  should  also  be  given  using
paragraphs 8.30 and 8.32.

  6. If evidence is additionally of record to show that
either invention is prior art unto the other under 35 U.S.C.
102(f) or (g), a rejection using paragraphs 7.13 and/or 7.14
should also be made.

¶ 7.15.02  Rejection, 35 U.S.C. 102(e), Common Assignee
or Inventor(s)

  Claim[1] rejected under 35 U.S.C. 102(e) as being
anticipated by [2].

  The applied reference has a common [3] with the instant
application. Based upon the earlier effective U.S. filing
date of the reference, it constitutes prior art under 35
U.S.C. 102(e). This rejection under 35 U.S.C. 102(e) might
be overcome either by a showing under 37 CFR 1.132 that any
invention disclosed but not claimed in the reference was
derived from the inventor of this application and is thus
not the invention "by another", or by an appropriate showing
under 37 CFR 1.131.

 Examiner Note:

  1. This paragraph is used to reject over a patent with an
earlier filing date that discloses, but does not claim the
same  invention.  The  patent  must  have  either  a  common
assignee or a common inventor.

  2. In bracket 3, insert either "assignee" or "inventor."

¶ 7.21.02  Rejection, 35 U.S.C. 103(a), Common Assignee
or At Least One Common Inventor

  **>Claim[1] rejected under 35 U.S.C. 103(a) as being
obvious over [2].

  The applied reference has a common [3] with the instant
application. Based upon the earlier effective U.S. filing
date of the reference, it constitutes prior art under 35
U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might
be overcome by: (1) a showing under 37 CFR 1.132 that any
invention disclosed but not claimed in the reference was
derived from the inventor of this application and is thus
not an invention "by another"; (2) a showing of a date of
invention for the claimed subject matter of the application,
which  corresponds  to  subject  matter  disclosed  but  not
claimed in the reference, prior to the effective U.S. filing

date of the reference under 37 CFR 1.131; or (3) an oath or
declaration under 37 CFR 1.130 stating that the application
and reference are currently owned by the same party and that
the inventor named in the application is the prior inventor
under 35 U.S.C. 104, together with a terminal disclaimer in
accordance with 37 CFR 1.321(c). [4]<

 Examiner Note:

  1.  This paragraph is used to reject over a patent with
an earlier filing date that discloses the claimed invention.
The patent must have either a common assignee or at least
one common inventor.

  2.  In  bracket  3,  insert  either  "assignee"  or
"inventor."

  3.  In bracket 4, insert explanation of obviousness.

804.04  Submission to Group Director

  In order to promote uniform practice, every action
containing a rejection on the ground of double patenting of
a divisional (or parent) application (where the divisional
application was filed because of a requirement to restrict
by the examiner under 35 U.S.C. 121, including a requirement
to elect species, made by the Office) must be submitted to
the Group Director for approval prior to mailing. If the
rejection on the ground of double patenting is disapproved,
it shall not be mailed but other appropriate action shall be
taken. Note MPEP 1003, item 4.

805  Effect of Improper Joinder in Patent

  35 U.S.C. 121, last sentence provides "The validity of a
patent  shall  not  be  questioned  for  failure  of  the
Commissioner to require the application to be restricted to
one invention. In other words under this statute, no patent
can be held void for improper joinder of inventions claimed
therein."

806  Determination of Distinctness or Independence of
Claimed  Inventions [R - 2]

  The general principles relating to distinctness or
independence may be summarized as follows:

  1.  Where  inventions  are  independent  (i.e.,  no
disclosed relation therebetween), restriction to one thereof
is ordinarily proper, MPEP § 806.04 - § 806.04(j), though a
reasonable number of species may be claimed when there is an
allowed (novel and unobvious) claim generic thereto, 37 CFR
1.141, MPEP § 809.02 - § 809.02(e).

  2.  Where inventions are related as disclosed but are
distinct as claimed, restriction may be proper.

  3.  Where inventions are related as disclosed but are
not  distinct  as  claimed,  restriction  is  never  proper.
*>Where<  restriction  is  required  by  the  Office  double
patenting cannot be held, >and thus,< it is imperative the
requirement should never be made where related inventions as
claimed are not distinct. For (2) and (3) see MPEP § 806.05
- § 806.05(i) and> § < 809.03. See MPEP § 802.01 for
criteria for patentably distinct inventions.

806.01  Compare Claimed Subject Matter

  In passing upon questions of double patenting and
restriction, it is the claimed subject matter that is
considered and such claimed subject matter must be compared
in order to determine the question of distinctness or
independence.

806.02  Patentability Over the Prior Art Not Considered

  For the purpose of a decision on the question of
restriction, and for this purpose only, the claims are
ordinarily assumed to be in proper form and patentable
(novel and unobvious) over the prior art.

  This assumption, of course, is not continued after the
question of restriction is settled and the question of
patentability of the several claims in view of prior art is
taken up.

806.03  Single Embodiment, Claims Defining Same Essential 
 Features

  Where the claims of an application define the same
essential characteristics of a single disclosed embodiment
of an invention, restriction therebetween should never be
required. This is because the claims are but different
definitions of the same disclosed subject matter, varying in
breadth or scope of definition.

  Where such claims appear in different applications
optionally filed by the same inventor, disclosing the same
embodiments, see MPEP § 804 - § 804.02.

806.04  Independent Inventions

  If it can be shown that the two or more inventions are
in  fact  independent,  applicant  should  be  required  to
restrict the claims presented to but one of such independent
inventions. For example:

  1.  Two  different  combinations,  not  disclosed  as
capable  of  use  together,  having  different  modes  of
operation, different functions or different effects are
independent. An article of apparel such as a shoe, and a
locomotive  bearing  would  be  an  example.  A  process  of
painting a house and a process of boring a well would be a
second example.

  2.  Where the two inventions are process and apparatus,
and the apparatus cannot be used to practice the process or
any part thereof, they are independent. A specific process
of molding is independent from a molding apparatus which
cannot be used to practice the specific process.

  3.  Where species under a genus are independent, for
example, a genus of paper clips having species differing in
the manner in which a section of the wire is formed in order
to achieve a greater increase in its holding power.

  SPECIES ARE TREATED EXTENSIVELY IN THE FOLLOWING SECTIONS

806.04(a)  Species - Genus

  The statute (35 U.S.C. 121) lays down the general rule
that restriction may be required to one of two or more
independent inventions. 37 CFR 1.141 makes an exception to
this, providing that a reasonable number of species may be
claimed in one application if the other conditions of the
rule are met.

806.04(b)  Species May Be Related Inventions [R - 3]

  Species, while usually independent, may be related under
the particular disclosure. Where inventions as disclosed and
claimed are both (a) species under a claimed genus and (b)
related, then the question of restriction must be determined
by both the practice applicable to election of species and
the practice applicable to other types of restrictions such
as those covered in MPEP § 806.05 - § 806.05(i). If
restriction is improper under either practice, it should not
be required.

  For example, two different subcombinations usable with
each other may each be a species of some common generic
invention. In Ex parte Healy,1898 C.D. 157, 84 O.G. 1281, a
clamp for a handle bar stem and a specifically different
clamp for a seat post both usable together on a bicycle were
claimed. In his decision, the Commissioner considered both
the restriction practice under election of species and the
practice applicable to restriction between combination and
subcombinations.

  As a further example, species of carbon compounds may be
related to each other as intermediate and final product.
Thus, these species are not independent and in order to
sustain a restriction requirement, distinctness must be
shown. Distinctness is proven if it can be shown that the
intermediate product is useful other than to make the final
product.  Otherwise,  the  disclosed  relationship  would
preclude their being issued in separate patents.

  Form Paragraph 8.14 may be used in intermediate final
product restriction requirements.

¶ 8.14  Intermediate - Final Product

  Inventions [1] and [2] are related as mutually exclusive
species  in  intermediate  -  final  product  relationship.
Distinctness is proven for claims in this relationship if
the intermediate product is useful to make other than the
final product (MPEP § 806.04(b), 3rd paragraph), and the
species are patentably distinct (MPEP § 806.04(h)).

  In this instant case, the intermediate product is deemed
to be useful as [3] and the inventions are deemed patentably
distinct since there is nothing on this record to show them
to be obvious variants. Should applicant traverse on the
ground  that  the  species  are  not  patentably  distinct,
applicant should submit evidence or identify such evidence
now of record showing the species to be obvious variants or
clearly admit on the record that this is the case. In either
instance, if the examiner finds one of the inventions
anticipated by the prior art, the evidence or admission may
be used in a rejection under 35 U.S.C. 103(a) of the other
invention.

  Examiner Note:

  1.  This form paragraph is to be used when claims are
presented to both an intermediate and final product (MPEP §
806.04(b)).

  2.  Conclude restriction requirement with **>one of
form paragraphs 8.21.01 through 8.21.03<.

  The intermediate and final product must have a mutually
exclusive species relationship and as with all species
restrictions, must be patentably distinct.

  Typically, the intermediate loses its identity in the
final product.

  Additionally, the intermediate must be shown to be
useful to make other than the final product. The examiner
must give an example of an alternative use but need not
provide documentation. Applicant then has the burden to
prove or provide a convincing argument that the intermediate
does not have the suggested use.

806.04(c)  Subcombination Not Generic to Combination [R
- 3]

  The  situation  is  frequently  presented  where  two
different  combinations  are  disclosed,  having  a
subcombination common to each. It is frequently puzzling to
determine  whether  a  claim  readable  on  two  different
combinations is generic thereto.

  This was early recognized in Ex parte Smith, 1888 C.D.
131, 44 O.G.1183, where it was held that a subcombination
was not generic to the different combinations in which it
was used.

  To  exemplify,  a  claim  that  defines  only  the
subcombination; e.g., the mechanical structure of a joint,
is  not  a  generic  or  genus  claim  to  two  **>different
combinations<; e.g., ** a doughnut cooker >and an automobile
transmission,< each of which utilizes the same form of
joint.

806.04(d)  Definition of a Generic Claim

  In an application presenting three species illustrated,
for example, in Figures 1, 2, and 3, respectively, a generic
claim should read on each of these views; but the fact that
a claim does so read is not conclusive that it is generic.
It may define only an element or subcombination common to
the several species.

  It is not possible to define a generic claim with that
precision existing in the case of a geometrical term. In
general, a generic claim should include no material element
additional to those recited in the species claims, and must
comprehend within its confines the organization covered in
each of the species.

  For the purpose of obtaining claims to more than one
species in the same case, the generic claim cannot include
limitations not present in each of the added species claims.
Otherwise stated, the claims to the species which can be
included in a case in addition to a single species must
contain all the limitations of the generic claim.

  Once a claim that is determined to be generic is
allowed, all of the claims drawn to species in addition to
the elected species which include all the limitations of the
generic claim will ordinarily be obviously allowable in view
of the allowance of the generic claim, since the additional
species will depend thereon or otherwise include all of the
limitations thereof. When all or some of the claims directed
to one of the species in addition to the elected species do
not include all the limitations of the generic claim, then
that species cannot be claimed in the same case with the
other species; see MPEP § 809.02(c)(2).

806.04(e)  Claims Restricted to Species

  Claims are definitions of inventions. Claims are never
species . Claims may be restricted to a single disclosed
embodiment (i.e. a single species, and thus be designated a
specific species claim ), or a claim may include two or more
of the disclosed embodiments within the breadth and scope of
definition (and thus be designated  a generic or genus
claim).

  Species  are  always  the  specifically  different
embodiments.

  Species are usually but not always independent as
disclosed (see MPEP § 806.04(b)) since there is usually no
disclosure of relationship therebetween. The fact that a
genus for two different embodiments is capable of being
conceived and defined, does not affect the independence of
the embodiments, where the case under consideration contains
no disclosure of any commonality of operation, function or
effect.

806.04(f)  Claims Restricted to Species, by Mutually
Exclusive  Characteristics

  Claims to be restricted to different species must be
mutually exclusive. The general test as to when claims are
restricted, respectively, to different species is the fact
that  one  claim  recites  limitations  which  under  the
disclosure are found in a first species but not in a second,
while a second claim recites limitations disclosed only for
the second species and not the first. This is frequently
expressed  by  saying  that  claims  to  be  restricted  to
different  species,  must  recite  the  mutually  exclusive
characteristics of such species.

806.04(h)  Species Must Be Patentably Distinct From Each
Other and  From Genus

  Where  an  applicant  files  a  divisional  application
claiming a species previously claimed but nonelected in the
parent case, pursuant to and consonant with a requirement to
restrict, there should be no determination of whether or not
the  species  claimed  in  the  divisional  application  is
patentable over the species retained in the parent case
since such a determination was made before the requirement
to restrict was made.

  In a national application containing claims directed to
more than a reasonable number of species, the examiner
should not require restriction to a reasonable number of
species unless he or she is satisfied that he or she would
be prepared to allow claims to each of the claimed species

over  the  parent  case,  if  presented  in  a  divisional
application filed according to the requirement. Restriction
should not be required if the species claimed are considered
clearly unpatentable over each other.

  In  making  a  requirement  for  restriction  in  an
application claiming plural species, the examiner should
group together species considered clearly unpatentable over
each other, with the statement that restriction as between
those species is not required.

  Where  generic  claims  are  allowed  in  a  national
application, applicant may claim in the same application
additional species as provided by 37 CFR 1.141. As to these,
the patentable distinction between the species or between
the species and genus is not rigorously investigated since
they will issue in the same patent. However, the practice
stated in MPEP § 706.03(k) may be followed if the claims
differ from the allowed genus only by subject matter that
can be shown by citation of prior art.

  Where, however, an applicant optionally files another
national application with claims to a different species, or
for a species disclosed but not claimed in a parent case as
filed and first acted upon by the examiner, there should be
close investigation to determine the presence or absence of
patentable difference. See MPEP § 804.01 and § 804.02.

806.04(i)  Generic Claims Presented for First Time After
Issue of  Species

  The Patent and Trademark Office no longer follows the
practice of prohibiting the allowance of generic claims that
are presented for the first time after the issuance of a
copending application claiming plural species. Instead, the
Office may reject the generic claims on the grounds of
obviousness - type double patenting. Applicant may overcome
such a rejection by filing a terminal disclaimer. See In re
Braithwaite, 154 USPQ 38 (CCPA 1967).

806.05  Related Inventions

  Where two or more related inventions are being claimed,
the principal question to be determined in connection with a
requirement to restrict or a rejection on the ground of
double patenting is whether or not the inventions as claimed
are distinct. If they are distinct, restriction may be
proper. If they are not distinct, restriction is never
proper. If nondistinct inventions are claimed in separate
applications or patents, double patenting must be held,
except  where  the  additional  applications  were  filed
consonant with a requirement to restrict in a national
application.

  The various pairs of related inventions are noted in the
following sections.

806.05(a)  Combination and Subcombination or Element

  A  combination  is  an  organization  of  which  a
subcombination or element is a part.

  Relative to questions of restriction where a combination
is  alleged,  the  claim  thereto  must  be  assumed  to  be
allowable (novel and unobvious) as pointed out in MPEP §

806.02, in the absence of a holding by the examiner to the
contrary. When a claim is found in a patent, it has already
been found by the Office to be allowable and must be treated
on that basis.

806.05(b)  Old Combination - Novel Subcombination

  Restriction  is  ordinarily  not  proper  between  a
combination (AB) that the examiner holds to be old and
unpatentable  and  the  subcombination  (B)  in  which  the
examiner holds the novelty, if any, to reside, Ex parte
Donnell, 1923 C.D. 54, 315 O.G. 398 (Comm'r Pats.1923). (See
MPEP § 820.01.)

806.05(c)  Criteria of Distinctness for Combination,
Subcombination, or Element of a Combination
[R - 3]

  In  order  to  establish  that  combination  and
subcombination  inventions  are  distinct,  two  -  way
distinctness must be demonstrated.

  To support a requirement for restriction, both two - way
distinctness and reasons for insisting on restriction are
necessary, i.e. separate classification, status, or field of
search. See MPEP § 808.02.

  If it can be shown that a combination, as claimed

  (1) does  not  require  the  particulars  of  the
subcombination as claimed for patentability (to show novelty
and unobviousness), and

  (2) the  subcombination  can  be  shown  to  have
utility  either  by  itself  or  in  other  and  different
relations, the inventions are distinct. When these factors
cannot be shown, such inventions are not distinct.

  The  following  examples  are  included  for  general
guidance.

 1.  SUBCOMBINATION NOT ESSENTIAL TO COMBINATION

  AB<SB:0.039>br  / B<SB:0.039>sp  Restriction proper

  Where a combination as claimed does not set forth the
details of the subcombination as separately claimed and the
subcombination has separate utility, the inventions are
distinct and restriction is proper if reasons exist for
insisting  upon  the  restriction;  i.e.  separate
classification, status, or field of search.

  This  situation  can  be  diagramed  as  combination  A
B  ("br" is an abbreviation for "broad"), and subcombination
 br
B  ("sp" is an abbreviation for "specific"). B  indicates
 sp  br
that  in  the  combination  the  subcombination  is  broadly
recited and that the specific characteristics set forth in
the subcombination claim B  are not set forth in the
  sp
combination claim.

  Since claims to both the subcombination and combination
are presented and assumed to be patentable, the omission of
details  of  the  claimed  subcombination  B  in  the
  sp 

combination claim A B  is evidence that the patentability
  br 
of the combination does not rely on the details of the
specific subcombination.

 2.  SUBCOMBINATION ESSENTIAL TO COMBINATION

  A B<SB:0.039>sp  / B<SB:0.039>sp  No restriction

  If there is no evidence that combination A B  is
  sp
patentable without the details of B  , restriction should
 sp
not be required. Where the relationship between the claims
is such that the separately claimed subcombination B
  sp
constitutes the essential distinguishing feature of the
combination  A  B  as  claimed,  the  inventions  are  not
  sp
distinct and a requirement for restriction must not be made,
even though the subcombination has separate utility.

 3.  SOME COMBINATION CLAIMS RECITE SPECIFIC FEATURES OF
THE  SUBCOMBINATION  BUT  OTHER  COMBINATION  CLAIMS  GIVE
EVIDENCE THAT THE SUBCOMBINATION IS NOT ESSENTIAL TO THE
COMBINATION.

  A B<SB:0.039>sp  / A B<SB:0.039>br (Evidence claim) /
  B<SB:0.039>sp  Restriction proper

  Claim A B  is an evidence claim which indicates that
  br
the combination does not rely upon the specific details of
the subcombination for its patentability. If claim A B  is
  br

 subsequently found to be unallowable, the question of
rejoinder of the inventions restricted must be considered
and the letter to the applicant should so state. Therefore,
where the combination evidence claim A B  does not set
  br 
forth the details of the subcombination B  and the
  sp 
subcombination B  has separate utility, the inventions are
  sp 
distinct and restriction is proper if reasons exist for
insisting upon the restriction.

  In applications claiming plural inventions capable of
being viewed as related in two ways, for example, as both
combination - subcombination and also as different statutory
categories, both applicable criteria for distinctness must
be demonstrated to support a restriction requirement. See
also MPEP § 806.04(b).

  Form Paragraph 8.15 may be used in combination -
subcombination restriction requirements.

¶ 8.15  Combination - Subcombination

  Inventions [1] and [2] are related as combination and
subcombination. Inventions in this relationship are distinct
if it can be shown that (1) the combination as claimed does
not require the particulars of the subcombination as claimed
for  patentability  and  (2)  that  the  subcombination  has
utility  by  itself  or  in  other  combinations.  (MPEP  §
806.05(c)). In the instant case, the combination as claimed
does not require the particulars of the subcombination as
claimed because [3]. The subcombination has separate utility
such as [4].

  Examiner Note:

  1 . This form paragraph is to be used when claims are
presented to both combination(s) and subcombination(s) (MPEP
§ 806.05(c)).

  2.  In situations involving evidence claims, see MPEP §
806.05(c), example 3, and explain in bracket 3.

  3.  In bracket 4, suggest utility other than used in
combination.

  4.  Conclude restriction requirement with **>one of
form paragraphs 8.21.01 through 8.21.03.<

  The burden is on the examiner to suggest an example of
separate utility.

  If applicant proves or provides an argument supported by
facts, that the other utility, suggested by the examiner,
cannot be accomplished, the burden shifts to the examiner to
document  a  viable  separate  utility  or  withdraw  the
requirement.

806.05(d)  Subcombinations Usable Together [R - 3]

  Two or more claimed subcombinations, disclosed as usable
together in a single combination, and which can be shown to
be separately usable, are usually distinct from each other.

  Care should always be exercised in this situation to
determine if the several subcombinations are generically
claimed. (See MPEP § 806.04(b).)

  Form  Paragraph  8.16  may  be  used  in  restriction
requirements between subcombinations.

¶ 8.16  Subcombinations, Usable Together

  Inventions [1] and [2] are related as subcombinations
disclosed as usable together in a single combination. The
subcombinations are distinct from each other if they are
shown to be separately usable. In the instant case invention
[3] has separate utility such as [4]. See MPEP § 806.05(d).

  Examiner Note:

  1.  This form paragraph is to be used when claims are
presented  to  subcombinations  usable  together  (MPEP  §
806.05(d)).

  2.  In bracket 3, insert the appropriate group number
or identify the invention.

  3. In bracket 4, suggest utility other than with the
other invention .

  4.  Conclude restriction requirement with **>one of
form paragraphs 8.21.01 through 8.21.03<.

  Only one way Distinctness is Required.

  The examiner must show, by way of example, that one of
the subcombinations has utility other than in the disclosed
combination.

  Care must be taken to determine if the subcombinations
are generically claimed.

  Where subcombinations as disclosed and claimed are both
(a) species under a claimed genus and (b) related, then the
question of restriction must be determined by both the
practice applicable to election of species and the practice
applicable to related inventions. If restriction is improper
under either practice, it should not be required (MPEP §
806.04(b)).

  The burden is on the examiner to provide an example.

  If applicant proves or provides an argument, supported
by facts, that the other use, suggested by the examiner,
cannot be accomplished or is not reasonable, the burden is
on the examiner to document a viable alternative use or
withdraw the requirement.

806.05(e)  Process and Apparatus for Its Practice -
Distinctness [R -3]

  In  applications  claiming  inventions  in  different
statutory  categories,  only  one  -  way  distinctness  is
generally  needed  to  support  a  restriction  requirement.
However, see MPEP § 806.05(c).

  Process and apparatus for its practice can be shown to
be distinct inventions, if either or both of the following
can be shown: (1) that the process as claimed can be
practiced by another materially different apparatus or by
hand, or (2) that the apparatus  as claimed can be used to
practice another and materially different process.

  If the apparatus claims include a claim to "means" for
practicing the process, the claim is a linking claim and
must be examined with the elected invention. If it is
ultimately allowed rejoinder is required.

  Form Paragraph 8.17 may be used to make restriction
requirements between process and apparatus.

¶ 8.17  Process and Apparatus

  Inventions [1] and [2] are related as process and
apparatus for its practice. The inventions are distinct if
it can be shown that either: (1) the

 process as claimed can be practiced by another materially
different apparatus or by hand, or (2) the apparatus as
claimed can be used to practice another and materially
different process. MPEP § 806.05(e). In this case [3].

 Examiner Note :

  1.  This form paragraph is to be used when claims are
presented to both a process and apparatus for its practice
(MPEP § 806.05(e)).

  2.  In bracket 3, use one or more of the following
reasons:

 a. the process as claimed can be practiced by another and
materially different apparatus such as ... ,

 b. the process as claimed can be practiced by hand,

 c. the apparatus as claimed can be used to practice another
and materially different process such as 0  .

  3.  Conclude restriction requirement with **> one of
form paragraphs 8.21.01 through 8.21.03.<

  The burden is on the examiner to provide reasonable
examples that recite material differences.

  If the apparatus claims include a claim to "means" for
practicing the process, this claim is a linking claim
(except for the presence of this claim restriction between
apparatus and process claims would be proper). The linking
claim must be examined with the elected invention, but only
to the extent necessary to determine if the linking claim is
unpatentable.  If  the  linking  claim  is  unpatentable,
restriction is proper.

  It should be noted that a claim such as, "An apparatus
for the practice of the process of claim 1, comprising ...."
and  then  the  claim  continues  with  purely  apparatus
limitations, is not a linking claim. This is merely a
preamble similar to a statement of intended use and should
be treated as any preamble.

  If applicant proves or provides convincing argument that
there is no material difference or in the case of that
process that cannot be performed by hand (if examiner so
argued), the burden is on the examiner to document another
materially different process or apparatus or withdraw the
requirement.

806.05(f)  Process of Making and Product Made -
Distinctness [R - 3]

  A process of making and a product made by the process
can be shown to be distinct inventions if either or both of
the following can be shown: (1) that the process as claimed
is not an obvious process of making the product and the
process as  claimed can be used to make other and different
products, or (2) that the product  as claimed can be made by
another and materially different process.

  Allegations of different processes or products need not
be documented.

  A product defined by the process by which it can be made
is still a product claim ( In re Bridgeford , 149 USPQ 55
(CCPA 1966)) and can be restricted from the process if the
examiner can demonstrate that the product as claimed can be
made by another materially different process; defining the
product in terms of a process by which it is made is nothing
more than a permissible technique that applicant may use to
define the invention.

  If applicant convincingly traverses the requirement, the
burden  shifts  to  the  examiner  to  document  a  viable
alternative process or product, or withdraw the requirement.

  Form  Paragraph  8.18  may  be  used  in  restriction
requirements between product and process of making.

¶ 8.18  Product and Process of Making

  Inventions [1] and [2] are related as process of making
and product made. The inventions are distinct if either or
both of the following can be shown: (1) that the process as
claimed can be used to make another and materially different
product or (2) that the product as claimed can be made by
another and materially different process (MPEP § 806.05(f)).
In the instant case [3].

 Examiner Note :

  1.  This form paragraph is to be used when claims are
presented to both a product and the process of making the
product (MPEP § 806.05(f)).

  2.  In bracket 3, use one or more of the following
reasons:

 a. the process as claimed can be used to make a materially
different product such as ... ,

 b. the product as claimed can be made by a materially
different process such as 0  .

  3.  Conclude restriction requirement with **> one of
form paragraphs 8.21.01 through 8.21.03<.

806.05(g)  Apparatus and Product Made - Distinctness [R
- 3]

  An apparatus and a product made by the apparatus can be
shown to be distinct inventions if either or both of the
following can be shown: (1) that the apparatus as claimed is
not an obvious apparatus for making the product and the
apparatus as claimed can be used to make other and different
products, or (2) that the product as claimed can be made by
another and materially different apparatus.

  Form  Paragraph  8.19  may  be  used  for  restriction
requirements between apparatus and product made.

¶ 8.19  Apparatus and Product Made

  Inventions [1] and [2] are related as apparatus and
product  made.  The  inventions  in  this  relationship  are
distinct if either or both of the following can be shown:
(1)  that  the  apparatus  as  claimed  is  not  an  obvious
apparatus for making the product and the apparatus can be
used for making a different product or (2) that the product
as claimed can be made by another and materially different
apparatus (MPEP § 806.05(g)). In this case [3].

 Examiner Note :

  1.  This form paragraph is to be used when claims are
presented to both the apparatus and product made (MPEP §
806.05(g)).

  2.  In bracket 3, use one or more of the following
reasons:

 a. the apparatus as claimed is not an obvious apparatus for
making the product and the apparatus as claimed can be used
to make a different product such as ... ,

 b. the product can be made by a materially different
apparatus such as ... .

  3.  Conclude restriction requirement with **>one of
form paragraphs 8.21.01 through 8.21.03<.

  Only One Way Distinctness is Required

  The examiner must show by way of example either (1) that
the apparatus as claimed is not an obvious apparatus for
making the product and the apparatus  as claimed can be used
to make other and different products or (2) that the product
as claimed can be made by another and materially different
apparatus.

  See Form Paragraph 8.19 above.

  The burden is on the examiner to provide an example
which need not be documented.

  If  applicant  either  proves  or  provides  convincing
argument that the alternative example suggested by the
examiner is not workable, the burden is on the examiner to
suggest another viable example or withdraw the restriction
requirement.

806.05(h)  Product and Process of Using [R - 3]

  A product and a process of using the product can be
shown to be distinct inventions if either or both of the
following can be shown: (1) the process for using as claimed
can be practiced with another materially different product,
or (2) the product as claimed can be used in a materially
different process.

  The burden is on the examiner to provide an example, but
the example need not be documented.

  If the applicant either proves or provides a convincing
argument that the alternative use suggested by the examiner
cannot be accomplished, the burden is on the examiner to
support  a  viable  alternative  use  or  withdraw  the
requirement.

  Form  Paragraph  8.20  may  be  used  in  restriction
requirements between the product and method of using.

¶ 8.20  Product and Process of Using

  Inventions [1] and [2] are related as product and
process of use. The inventions can be shown to be distinct
if either or both of the following can be shown: (1) the
process for using the product as claimed can be practiced
with another materially different product or (2) the product
as claimed can be used in a materially different process of
using that product (MPEP § 806.05(h)). In the instant case
[3].

 Examiner Note :

  1.  This form paragraph is to be used when claims are
presented to both the product and process of using the
product (MPEP § 806.05(h)).

  2.  In bracket 3, use one or more of the following

reasons:

 a. the process as claimed can be practiced with another
materially different product such as ... ,

 b. the product as claimed can be used in a materially
different process such as ... .

  3.  Conclude restriction requirement with **> one of
form paragraphs 8.21.01 through 8.21.03<.

806.05(i)  Product, Process of Making, and Process of
Using - Product Claim Not Allowable [R - 1]

 37 CFR 1.141.  Different inventions in one national
application.

  *****

  (b)  Where  claims  to  all  three  categories,  product,
process of making, and process of use, are included in a
national  application,  a  three  way  requirement  for
restriction can only be made where the process of making is
distinct from the product. If the process of making and the
product are not distinct, the process of using may be joined
with the claims directed to the product and the process of
making the product even though a showing of distinctness
between the product and process of using the product can be
made.

  Where an application contains claims to a product,
claims  to  a  process  specially  adapted  for  (i.e.,  not
patentably distinct from, as defined in MPEP § 806.05(f))
the product, and claims to a process of using the product,
and the product claims are not allowable (i.e., not novel
and nonobvious), restriction is proper between the process
of making and the process of using. In this instance,
applicant may be required to elect either (1) the product
and process of making it, or (2) the process of using.
Unless the examiner can make a showing of distinctness
between the process of using and the product (MPEP §
806.05(h)), the product must also be joined with the process
of using in grouping (2).

  Where the product claims are allowable (i.e., novel and
nonobvious), restriction may be required only where the
process of making and the product made are distinct (MPEP §
806.05(f)); otherwise, the process of using must be joined
with the process of making and product made, even if a
showing of distinctness can be made between the product and
process of using (MPEP § 806.05(h)).

  Determination of patentability of the product need not
be made prior to making a requirement for restriction unless
the requirement is based on a determination that the product
claims are not allowable.

  Form paragraph 8.20.>0<1 may be used in product, process
of making and process of using situations where the product
is not allowable.

¶ 8.20.01  Product, Process of Making and Process of
Using - Product Is Not Allowable

  Inventions [1] and [2] are related as a process of

making and process of using the product. The use as claimed
cannot be practiced with a materially different product.
Since the product is not allowable, restriction is proper
between said method of making and method of using. The
product claim will be examined along with the elected
invention (MPEP § 806.05(i)).

 >Examiner Note:

  1.  This paragraph is to be used when claims are
presented to the product, process of making, and process of
using where the product claims are not allowable (MPEP §
806.05(i)).<

807  Patentability Report Practice Has No Effect on
Restriction Practice

  Patentability report practice (MPEP § 705), has no
effect upon, and does not modify in any way, the practice of
restriction,  being  designed  merely  to  facilitate  the
handling of cases in which restriction cannot properly be
required.

808  Reasons for Insisting Upon Restriction

  Every requirement to restrict has two aspects, (1) the
reasons  (as  distinguished  from  the  mere  statement  of
conclusion)  why  the  inventions  as  claimed  are  either
independent or distinct, and (2) the reasons for insisting
upon restriction therebetween as set forth in the following
sections.

808.01  Independent Inventions [R - 3]

  Where the inventions claimed are independent; i.e.,
where they are not connected in design, operation, or effect
under the disclosure of the particular application under
consideration (MPEP § 806.04), the facts relied on for this
conclusion are in essence the reasons for insisting upon
restriction.  This situation, except for species, is but
rarely  presented,  since  persons  will  seldom  file  an
application containing disclosures of independent things.

  Form Paragraph 8.20.02 may be used when claims are
directed to independent, unrelated inventions.

¶ 8.20.02  Independent Unrelated Inventions

  >Inventions [1] and  [2 ] are unrelated. Inventions are
unrelated if it can be shown that they are not disclosed as
capable of use together, or they have different modes of
operation, or they have different functions, or they have
different effects. (MPEP § 806.04, MPEP § 808.01). In the
instant case the different inventions  [3] .<

 Examiner Note:

  This form paragraph is to be used only when claims are
presented  to  totally  unrelated  independent  inventive
concepts, e.g., a washing machine and an airplane.

808.01(a)  Species

  Where there is no disclosure of relationship between
species  (see  MPEP  §  806.04(b)),  they  are  independent

inventions  and  election  of  one  invention  following  a
requirement  for  restriction  is  mandatory  even  though
applicant disagrees with the examiner. There must be a
patentable difference between the species as claimed, see
MPEP § 806.04(h). Thus the reasons for insisting upon
election of one species, are the facts relied on for the
conclusion that there are claims restricted, respectively,
to  two  or  more  patentably  different  species  that  are
disclosed in the application, and it is not necessary to
show  a  separate  status  in  the  art  or  separate
classification.

  A  single  disclosed  species  must  be  elected  as  a
prerequisite to applying the provisions of 37 CFR 1.141 to
additional species if a generic claim is allowed.

  Even though the examiner rejects the generic claims, and
even though the applicant cancels the same and thus admits
that  the  genus  is  unpatentable,  where  there  is  a
relationship  disclosed  between  species,  such  disclosed
relation must be discussed and reasons advanced leading to
the conclusion that the disclosed relation does not prevent
restriction,  in  order  to  establish  the  propriety  of
restriction.

  Election of species should not be required if the
species  claimed  are  considered  clearly  unpatentable
(obvious) over each other. In making a requirement for
restriction in an application claiming plural species, the
examiner should group together species considered clearly
unpatentable  over  each  other,  with  the  statement  that
restriction as between those species is not required.

  Election of species should be required prior to a search
on the merits (1) in all applications containing claims to a
plurality of species with no generic claims, and (2) in all
applications containing both species claims and generic or
Markush claims.

  In all applications in which no species claims are
present and a generic claim recites such a multiplicity of
species that an unduly extensive and burdensome search is
required, a requirement for an election of species should be
made prior to a search of the generic claim.

  In all applications where a generic claim is found
allowable, the application should be treated as indicated in
MPEP § 809.02(b), (c), or (e). If an election is made
pursuant to a telephone requirement, the next action should
include a full and complete action on the elected species as
well as on any generic claim that may be present.

808.02  Related Inventions

  Where, as disclosed in the application, the several
inventions claimed are related, and such related inventions
are not patentably distinct as claimed, restriction under 35
U.S.C. 121 is never proper ( MPEP § 806.05). If applicant
optionally restricts, double patenting may be held.

  Where the related inventions as claimed are shown to be
distinct under the criteria of MPEP § 806.05(c - i), the
examiner, in order to establish reasons for insisting upon
restriction, must show by appropriate explanation one of the
following:

  (1)  Separate classification thereof:

  This shows that each distinct subject has attained
recognition in the art as a separate subject for inventive
effort, and also a separate field of search. Patents need
not be cited to show separate classification.

  (2)  A separate status in the art when they are
classifiable together:

  Even though they are classified together, each subject
can be shown to have formed a separate subject for inventive
effort  when  an  explanation  indicates  a  recognition  of
separate inventive effort by inventors. Separate status in
the art may be shown by citing patents which are evidence of
such separate status, and also of a separate field of
search.

  (3)  A different field of search:

  Where it is necessary to search for one of the distinct
subjects in places where no pertinent art to the other
subject exists, a different field of search is shown, even
though  the  two  are  classified  together.  The  indicated
different field of search must in fact be pertinent to the
type of subject matter covered by the claims. Patents need
not be cited to show different fields of search.

  Where, however, the classification is the same and the
field of search is the same and there is no clear indication
of separate future classification and field of search, no
reasons exist for dividing among related inventions.

809  Claims Linking Distinct Inventions [R - 3]

  Where, upon examination of an application containing
claims to distinct inventions, linking claims are found,
restriction can nevertheless be required. See MPEP § 809.03
for definition of linking claims.

  A letter including only a restriction requirement or a
telephoned  requirement  to  restrict  (the  latter  being
encouraged) will be effected, specifying which claims are
considered linking. See MPEP § 812.01 for telephone practice
in restriction requirements.

  No art will be indicated for this type of linking claim
and no rejection of these claims made.

  A 1 - month>(not less than thirty days)< shortened
statutory period will be set for response to a written
requirement. Such action will not be an "action on the
merits" for the purpose of the second action final program.

  To be complete, a response to a requirement made
according  to  this  section  need  only  include  a  proper
election.

  The linking claims must be examined with the invention
elected, and should any linking claim be allowed, **>the
restriction requirement must be withdrawn. Any claim(s)
directed  to  the  nonelected  invention(s),  previously
withdrawn from consideration, which depends from or includes
all the limitations of the allowable linking claim must be

rejoined and will be fully examined for patentability. Where
such  withdrawn  claims  have  been  canceled  by  applicant
pursuant to the restriction requirement, upon the allowance
of the linking claim(s), the examiner must notify applicant
that any canceled, nonelected claim(s) which depends from or
includes all the limitations of the allowable linking claim
may  be  reinstated  by  submitting  the  claim(s)  in  an
amendment. Upon entry of the amendment, the amended claim(s)
will be fully examined for patentability.<

809.02  Generic Claim Linking Species

  Under 37 CFR 1.141, an allowed generic claim may link a
reasonable number of species embraced thereby.

  The practice is stated in 37 CFR 1.146.

 37 CFR 1.146.  Election of species.

  In the first action on an application containing a
generic claim and claims restricted separately to each of
more than one species embraced thereby, the examiner may
require the applicant in his response to that action to
elect that species of his or her invention to which his or
her claim shall be restricted if no generic claim is held
allowable. However, if such application contains claims
directed to more than a reasonable number of species, the
examiner may require restriction of the claims to not more
than a reasonable number of species before taking further
action in the case.

809.02(a)  Election Required [R - 2]

  Where generic claims are present, the examiner should
send a letter including only a restriction requirement or
place a telephone requirement to restrict (the latter being
encouraged). See MPEP § 812.01 for telephone practice in
restriction requirements.

  Action as follows should be taken:

  (1)  Identify generic claims or indicate that no
generic  claims  are  present.  See  MPEP  §  806.04(d)  for
definition of a generic claim.

  (2)  Clearly identify each (or in aggravated cases
at least exemplary ones) of the disclosed species, to which
claims  are  restricted  .  The  species  are  preferably
identified as the species of figures 1, 2, and 3 or the
species of examples I, II, and III, respectively. In the
absence of distinct figures or examples to identify the
several  species,  the  mechanical  means,  the  particular
material, or other distinguishing characteristic of the
species should be stated for each species identified. If the
species  cannot be conveniently identified, the claims may
be grouped in accordance with the species to which they are
restricted.

  (3)  Applicant should then be required to elect a
single disclosed species under 35 U.S.C. 121, and advised as
to the requisites of a complete response and his rights
under 37 CFR 1.141.

  For generic claims, a search should not be made and art
should not be cited.

  A 1 - month (not less than 30 days) shortened statutory
period will be set for response when a written requirement
is made without an action on the merits. This period may be
extended under the provisions of 37 CFR 1.136(a). Such
action will not be an "action on the merits" for purposes of
the second action final program.

  To be complete, a response to a requirement made
according to this section should include a proper election
along  with  a  listing  of  all  claims  readable  thereon,
including any claims subsequently added.

  In  those  applications  wherein  a  requirement  for
restriction is accompanied by an action on all claims, such
action will be considered to be an action on the merits and
the next action should be made final.

  Examiners should use Form Paragraphs 8.01 or 8.02 to
make election of species requirements.

¶ 8.01  Election of Species

  This  application  contains  claims  directed  to  the
following  patentably  distinct  species  of  the  claimed
invention: [1].

  Applicant is required under 35 U.S.C. 121 to elect a
single disclosed species for prosecution on the merits to
which the claims shall be restricted if no generic claim is
finally held to be allowable. Currently, [2] generic.

  Applicant is advised that a response to this requirement
must include an identification of the species that is
elected consonant with this requirement, and a listing of
all  claims  readable  thereon,  including  any  claims
subsequently added. An argument that a generic claim is
allowable or that all claims are generic is considered
nonresponsive unless accompanied by an election.

  Upon the allowance of a generic claim, applicant will be
entitled to consideration of claims to additional species
which are written in dependent form or otherwise include all
the limitations of an allowed generic claim as provided by
37 CFR 1.141. If claims are added after the election,
applicant must indicate which are readable upon the elected
species. MPEP 809.02(a).

  Should applicant traverse on the ground that the species
are  not  patentably  distinct,  applicant  should  submit
evidence or identify such evidence now of record showing the
species to be obvious variants or clearly admit on the
record that this is the case. In either instance, if the
examiner finds one of the inventions unpatentable over the
prior art, the evidence or admission may be used in a
rejection under 35 U.S.C. 103>(a)< of the other invention.

  Examiner Note:

  In bracket 2, insert the appropriate generic claim
information.

¶ 8.02  Election When Claims Are Not Restricted to Species

  Claim [1] generic to a plurality of disclosed patentably

distinct species comprising [2]. Applicant is required under
35 U.S.C. 121 to elect a single disclosed species, even
though this requirement is traversed.

  Should applicant traverse on the ground that the species
are  not  patentably  distinct,  applicant  should  submit
evidence or identify such evidence now of record showing the
species to be obvious variants or clearly admit on the
record that this is the case. In either instance, if the
examiner finds one of the inventions unpatentable over the
prior art, the evidence or admission may be used in a
rejection under 35 U.S.C. 103>(a)< of the other invention.

  Examiner Note:

  1. This paragraph should be used for the election of
species requirement described in MPEP § 803.02 (Markush
group) and 809.02(d) (burdensome search necessary).

  2. In bracket 2, clearly identify the species from which
election is to be made.

  If claims are added after the election, applicant must
indicate which are readable on the elected species.

  It is necessary to (1) identify generic claims or state
that none are present, and (2) to clearly identify each
species involved.

809.02(b)  Election Required - Generic Claim Allowable

  When a claim generic to two or more claimed species is
found to be allowable on the first or any subsequent action
on the merits and election of a single species has not been
made , applicant should be informed that the claim is
allowable and generic, and a requirement should be made that
applicant elect a single species embraced by the allowed
genus unless the species claims are all in the form required
by 37 CFR 1.141 and no more than a reasonable number of
species are claimed. Substantially the following should be
stated:

  "Applicant is advised that his or her response to
complete must include an identification of the single,
disclosed species within the allowed genus that he or she
elects and a listing of all claims readable thereupon.
Applicant is entitled to consideration of claims to a
reasonable number of disclosed species in addition to the
elected species, which species he or she must identify and
list all claims restricted to each, provided all the claims
to each additional species are written in dependent form or
otherwise include all the limitations of an allowed generic
claim as provided by 37 CFR 1.141."

809.02(c)  Action Following Election [R - 3]

  An examiner's action subsequent to an election of
species should include a complete action on the merits of
all claims readable on the elected species.

  (1)  When the generic claims are rejected, or there
is no generic claim, all claims not readable on the elected
species should be treated substantially as follows:

  "Claims_________ are held to be withdrawn from further

consideration under 37 CFR 1.142(b) as not readable on the
elected species ,there being no (allowable) generic claim."

  (2)  When a generic claim is subsequently found to
be allowable, and not more than a reasonable number of
additional species are claimed, treatment * >shall< be as
follows:

  (i)  When all claims to each of the additional
species are embraced by an allowable generic claim as
provided by 37 CFR 1.141, applicant *>must< be advised of
the allowable generic claim and that claims drawn to the
nonelected species are no longer withdrawn since they are
fully embraced by the allowed generic claim.

  (ii)  When  any  claim  directed  to  one  of  said
additional species embraced by an allowed generic claim is
not in the required form, all claims to that species should
be held to be withdrawn from further consideration by the
examiner. The holding should be worded somewhat as follows:

  "Claims_____________ directed to ________ species are
withdrawn from further consideration in this case, since all
of the claims to this species do not depend upon or
otherwise include all of the limitations of an allowed
generic claim as required by 37 CFR 1.141."

  Note that each additional species is handled separately.
When all of the claims to one nonelected species are
embraced by an allowable generic claim but each of the
claims to another nonelected species *>is< not embraced by
an allowable generic claim, applicant *>must< be advised
that the claims to the one nonelected species are no longer
withdrawn from further consideration but that the claims to
the other nonelected species remain withdrawn from further
consideration since all of the claims to this other species
do not depend upon or fully include all of the limitations
of an allowed generic claim as required by 37 CFR 1.141.
This holding should be worded as follows:

  "Allowed  claims  ______  are  generic.  Claims  ______
directed to species _______ are no longer withdrawn from
further consideration in this case since all of the claims
to this species depend from or otherwise include all of the
limitations  of  an  allowed  generic  claim.  Claims
______directed to species________ are withdrawn from further
consideration in this case since all of the claims to this
species do not depend upon or otherwise include all of the
limitations of an allowed generic claim as required by 37
CFR 1.141."

  When the case is otherwise ready for issue and there is
an  allowed  generic  claim,  and  applicant  has  not  been
previously notified as to the allowance of a generic claim,
applicant *>must< be advised of the allowance of a generic
claim and given a time limit of 1 month>(not less than
thirty days)< to conform all of the claims to the nonelected
species to fully embrace an allowed generic claim or the
examiner  will  cancel  the  claims  to  each  nonconforming
species by examiner's amendment and pass the case to issue.
If the election is traversed, an additional paragraph worded
as Form Paragraph 8.03 should be added to the holding.

¶ 8.03  In Condition for Allowance, Nonelected Claims

  This application is in condition for allowance except
for the presence of claim [1] to an invention non - elected
with traverse in Paper no. [2]. Applicant is given >ONE
MONTH or <THIRTY DAYS from the date of this letter >,
whichever is longer,< to cancel the noted claims or take
other appropriate action (37 CFR 1.144). Failure to take
action during this period will be treated as authorization
to cancel the noted claims by Examiner s Amendment and pass
the case to issue. Extensions of time under 37 CFR 1.136(a)
will not be permitted since this application will be passed
to issue.

  The prosecution of this case is closed except for
consideration of the above matter.

  Claims directed to species not embraced by an allowed
generic claim should be treated as follows:

 "Claims ______ are for species not embraced by an allowed
generic claim as required by 37 CFR 1.141 and are withdrawn
from further consideration in this case, 37 CFR 1.142(b)."

809.02(d)  No Species Claims

  Where only generic claims are presented, no restriction
can be required except in those cases where the generic
claims recite such a multiplicity of species that an unduly
extensive and burdensome search is necessary. See MPEP §
808.01(a). If after an action on only generic claims with no
restriction requirement, applicant presents species claims
to more than one species of the invention, he or she must at
that time indicate an election of a single species.

809.02(e)  Generic Claim Allowable in Substance [R - 1]

  Whenever a generic claim is found to be allowable in
substance, even though it is objected to or rejected on
merely formal grounds, action on the species claims shall
thereupon be given as if the generic claim were allowed.

  The  treatment  of  the  *>application<  should  be  as
indicated in MPEP § 809.02(b), (c), or (d).

809.03  Linking Claims [R - 3]

  There are a number of situations which arise in which an
application has claims to two or more properly divisible
inventions,  so  that  a  requirement  to  restrict  the
application to one would be proper, but presented in the
same case are one or more claims (generally called "linking"
claims) inseparable therefrom and thus linking together the
inventions otherwise divisible.

  The most common types of linking claims which, if
allowed, act to prevent restriction between inventions that
can otherwise be shown to be divisible, are:

  Genus claims linking species claims.

  A claim to the necessary process of making a product
linking proper process and product claims.

  A claim to "means" for practicing a process linking
proper apparatus and process claims.

  A claim to the product linking a process of making and a
use (process of using).

  Where  linking  claims  exist,  a  letter  including  a
restriction requirement only or a telephoned requirement to
restrict (the latter being encouraged) will be effected,
specifying which claims are considered to be linking. Note
Form Paragraph 8.12.

¶ 8.12  Restriction, Linking Claims

  Claim  [1]  link(s)  inventions  [2]  and  [3].  >The
restriction  requirement  [4]  the  linked  inventions  is
subject to the nonallowance of the linking claim(s), claim
[5] . Upon the allowance of the linking claim(s), the
restriction requirement as to the linked inventions  shall
be withdrawn and any claim(s) depending from or otherwise
including all the limitations of the allowable linking
claim(s) will be entitled to examination in the instant
application. Applicant(s) are advised that if any such
claim(s) depending from or including all the limitations of
the  allowable  linking  claim(s)  is/are  presented  in  a
continuation or divisional application, the claims of the
continuation or divisional application may be subject to
provisional statutory and/or nonstatutory double patenting
rejections over the claims of the instant application. Where
a restriction requirement is withdrawn, the provisions of 35
U.S.C. 121 are no longer applicable.  In re Ziegler , 44
F.2d 1211, 1215, 170 USPQ 129, 131 - 32 (CCPA 1971). See
also MPEP § 804.01.

 Examiner Note  :

  1.  This  form  paragraph  must  be  included  in  any
restriction requirement with at least one linking claim
present.

  2. In bracket 4, insert either - -between - - or - -among
- -.

  3. In bracket 5, insert the claim number(s) of the
linking claims.<

  For  traverse  of  rejection  of  linking  claim  in
applications see MPEP § 818.03(d).

809.04  Retention of Claims to Nonelected Invention [R -
3]

  Where the requirement for restriction in an application
is predicated upon the nonallowability of generic or other
type of linking claims, applicant is entitled to retain in
the case claims to the nonelected invention or inventions.

  If a linking claim is allowed, the examiner must
thereafter examine species if the linking claim is generic
thereto, or he or she must examine the claims to the
nonelected  inventions  that  are  linked  to  the  elected
invention by such allowed linking claim.

 >  Form  paragraph  8.45  must  be  used  to  notify
applicant of the allowance of a linking claim and that the
nonelected claim(s) depending from or including all the
limitations  of  the  allowable  linking  claim,  previously
withdrawn from consideration, is/are rejoined and fully

examined for patentability under 37 CFR 1.104.

  Linking  claim  [1]  allowed.  Since  the  restriction
requirement  [2] inventions  [3] , as set forth in Paper No.
[4] mailed on  [5] , was conditioned on the nonallowance of
the linking claim(s),  the restriction requirement as to the
linked inventions is hereby withdrawn . Claim  [6] ,
previously withdrawn from consideration as a result of the
restriction requirement,  [7] hereby rejoined and fully
examined for patentability under 37 CFR 1.104. In view of
the withdrawal of the restriction requirement as to the
linked inventions, applicant(s) are advised that if any
claim(s) depending from or including all the limitations of
the  allowable  linking  claim(s)  be  presented  in  a
continuation or divisional application, such claim(s) may be
subject to provisional statutory and/or nonstatutory double
patenting  rejections  over  the  claims  of  the  instant
application. Once the restriction requirement is withdrawn,
the provisions of 35 U.S.C. 121 are no longer applicable.
In re Ziegler , 44 F.2d 1211, 1215, 170 USPQ 129, 131 - 32
(CCPA 1971). See also MPEP § 804.01.

 Examiner Note:

  1. This form paragraph must be used upon the allowance of
a linking claim following a restriction requirement with at
least one linking claim present.

  2. In bracket 2, insert either - -between - - or - -among
- -.

  3. In bracket 7, insert either - -is - - or - -are - -.

  Form  paragraph  8.46  (or  form  paragraph  8.47  if
appropriate)  must  be  used  to  notify  applicant  of  the
allowance  of  a  linking  claim  and  that  the  nonelected
claim(s) which depended from or included all the limitations
of the allowable linking claim, canceled by applicant may be
reinstated by submitting the claim(s) in an amendment.

  Linking  claim  [1]  allowed.  Since  the  restriction
requirement  [2] inventions  [3] , as set forth in Paper No.
[4] mailed on  [5] , was conditioned on the nonallowance of
the linking claim(s),  the restriction requirement as to the
linked inventions is hereby withdrawn . Claim  [6] , which
depended  from  or  included  all  the  limitations  of  the
allowable  linking  claim(s),  previously  withdrawn  from
consideration as a result of the restriction requirement,
[7] canceled by applicant in Paper No.  [8] . The canceled,
nonelected  claim(s)  may  be  reinstated  by  applicant  if
submitted in a timely filed amendment in response to this
action. Upon entry of the amendment, such amended claim(s)
will be examined for patentability under 37 CFR 1.104.

  In view of the withdrawal of the restriction requirement
as to the linked inventions, applicant(s) are advised that
if  any  claim(s)  depending  from  or  including  all  the
limitations of the allowable linking claim(s) be presented
in a continuation or divisional application, such claims may
be subject to provisional statutory and/or nonstatutory
double patenting rejections over the claims of the instant

application. Once the restriction requirement is withdrawn,
the provisions of 35 U.S.C. 121 are no longer applicable. In
re Ziegler , 44 F.2d 1211, 1215, 170 USPQ 129, 131 - 32
(CCPA 1971). See also MPEP § 804.01.

 Examiner Note:

  1. This form paragraph (or form paragraph 8.47) must be
used upon the allowance of a linking claim following a
restriction requirement with at least one linking claim
present  and  wherein  the  nonelected  claims  HAVE  BEEN
canceled. Use form paragraph 8.45 where the nonelected
claims have NOT been canceled.

  2. If no issues remain outstanding and application is
otherwise ready for allowance, use form paragraph 8.47
instead of this form paragraph.

  3. In bracket 2, insert either - -between - - or - -among
- -.

  4. In bracket 7, insert either - -was - - or - -were - -.

  Linking  claim  [1]  allowed.  Since  the  restriction
requirement  [2] inventions  [3] , as set forth in Paper No.
[4] mailed on  [5] , was conditioned on the nonallowance of
the linking claim(s),  the restriction requirement as to the
linked inventions is hereby withdrawn . Claim  [6] , which
depended  from  or  included  all  the  limitations  of  the
allowable  linking  claim(s),  previously  withdrawn  from
consideration as a result of the restriction requirement,
[7] canceled by applicant in Paper No.  [8] . The canceled,
nonelected  claim(s)  may  be  reinstated  by  applicant  if
submitted in an amendment, limited to the addition of such
claim(s), filed within a time period of ONE MONTH, or THIRTY
DAYS, whichever is longer, from the mailing date of this
letter. Upon entry of the amendment, such amended claim(s)
will be examined for patentability under 37 CFR 1.104. If NO
such amendment is submitted within the set time period, the
application will be passed to issue. PROSECUTION ON THE
MERITS IS OTHERWISE CLOSED.

  In view of the withdrawal of the restriction requirement
as to the linked inventions, applicant(s) are advised that
if  any  claim(s)  depending  from  or  including  all  the
limitations of the allowable linking claim(s) be presented
in a continuation or divisional application, such claims may
be subject to provisional statutory and/or nonstatutory
double patenting rejections over the claims of the instant
application. Once the restriction requirement is withdrawn,
the provisions of 35 U.S.C. 121 are no longer applicable. In
re Ziegler , 44 F.2d 1211, 1215, 170 USPQ 129, 131 - 32
(CCPA 1971). See also MPEP § 804.01.

 Examiner Note  :

  1. This form paragraph (or form paragraph 8.46) must be
used upon the allowance of a linking claim following a
restriction requirement with at least one linking claim
present  and  wherein  the  nonelected  claims  HAVE  BEEN
canceled. Use form paragraph 8.45 where the nonelected
claims have NOT been canceled.

  2. This form paragraph should be used only when there are
no outstanding issues remaining and is to be used with only
a PTO - 90C cover sheet.

  3. In bracket 2, insert either - -between - - or - -among
- -.

  4. In bracket 7, insert either - -was - - or - -were - -.
<

  When  a  final  requirement  is  contingent  on  the
nonallowability  of  the  linking  claims,  applicant  may
petition from the requirement under 37 CFR 1.144 without
waiting for a final action on the merits of the linking
claims; or applicant may defer his or her petition until the
linking claims have been finally rejected, but not later
than appeal, 37 CFR 1.144, MPEP § 818.03(c).

810  Action on the Merits

  In general, in an application when a requirement to
restrict is made, no action on the merits is given.

810.01  Not Objectionable When Coupled With Requirement

  A basic policy of the present examining program is that
the second action on the merits should be made final
whenever proper, MPEP § 706.07(a). In those applications
wherein  a  requirement  for  restriction  or  election  is
accompanied by a complete action on the merits of all the
claims, such action will be considered to be an action on
the merits and the next action by the examiner should be
made final. When preparing a final action in an application
where applicant has traversed the restriction requirement,
see MPEP § 821.01.

  Although an action on the merits is not necessary to a
requirement, it is not objectionable, Ex parte Lantzke ,
1910 C.D. 100, 156 O.G. 257. However, note that a question
may arise as to whether there is a serious burden on the
examiner.

  However, except as noted in MPEP § 809 and § 812.01, if
an action is given on the merits, it must be given on all
claims .

810.02  Usually Deferred

  The Office policy is to usually defer action on the
merits  until  after  the  requirement  for  restriction  is
complied with, or withdrawn.

  Ex parte Pickles , 1904 C.D. 126, 109 O.G. 1888.

  Ex parte Snyder , 1904 C.D. 242, 110 O.G. 2636.

  Ex parte Weston , 1911 C.D. 218, 173 O.G. 285.

810.03  Given on Elected Invention When Requirement Is
Made Final [R - 1]

  37 CFR 1.143 last sentence states: "If the requirement is
repeated and made final, the examiner will at the same time
act on the claims to the invention elected." Thus, action is
ordinarily given on the elected invention in the action

making the requirement final.

¶ 8.25.>0<1  Election Without Traverse

 Applicant's election without traverse of [1] in Paper No
[2] is acknowledged.

811  Time for Making Requirement

  37 CFR 1.142(a), 2nd sentence: "If the distinctness and
independence of the invention be clear, such requirement
will be made before any action upon the merits; however, it
may be made at any time before final action in the case at
the discretion of the examiner."

  This  means,  the  examiner  should,  make  a  proper
requirement as early as possible in the prosecution, in the
first action if possible, otherwise, as soon as a proper
requirement develops.

  Before making a restriction requirement after the first
action on the merits, the examiner will consider whether
there will be a serious burden if restriction is not
required.

811.02  Even After Compliance With Preceding Requirement

  Since the rule provides that restriction is proper at
any stage of prosecution up to final action, a second
requirement may be made when it becomes proper, even though
there was a prior requirement with which applicant complied,
Ex parte Benke , 1904 C.D. 63, 108 O.G. 1588 (Comm'r Pats.
1904).

811.03  Repeating After Withdrawal Proper

  Where a requirement to restrict is made and withdrawn,
because it was improper, when it becomes proper at a later
stage in the prosecution, restriction may again be required.

811.04  Proper Even Though Grouped Together in Parent Case

  Even  though  inventions  are  grouped  together  in  a
requirement in a parent case, restriction there among may be
required in the divisional case if proper.

812  Who Should Make the Requirement

  The requirement should be made by an examiner who would
examine at least one of the inventions.

  An  examiner  should  not  require  restriction  in  an
application  if  none  of  the  claimed  subject  matter  is
classifiable in his or her group. Such an application should
be transferred to a group to which at least some of the
subject matter belongs.

812.01  Telephone Restriction Practice [R - 2]

  If  an  examiner  determines  that  a  requirement  for
restriction should be made in an application, the examiner
should formulate a draft of such restriction requirement

 including an indication of those claims considered to be
linking or generic. No search or rejection of the linking

claims  should  be  made.  Thereupon,  the  examiner  should
telephone the attorney >or agent< of record and request an
oral election, with or without traverse if desired, after
the attorney >or agent< has had time to consider the
restriction  requirement.  >However,  no  telephone
communication  need  be  made  where  the  requirement  for
restriction is complex, the application is being prosecuted
by the applicant pro se, or the examiner knows from past
experience that an election will not be made by telephone.<
The examiner should arrange for a second telephone call
within a reasonable time, generally within 3 working days.
If the attorney >or agent< objects to making an oral
election, or fails to respond, the usual restriction letter
will be mailed, and this letter should contain reference to
the unsuccessful telephone call. See MPEP § 809 and §
809.02(a). When an oral election is made, the examiner will
then proceed to incorporate into the Office action a formal
restriction requirement including the date of the election,
the attorney's >or agent's< name, and a complete record of
the telephone interview, followed by a complete action on
the elected claims including linking or generic claims if
present.

  Form Paragraphs 8.23 or 8.23.>0<1 should be used to make
a telephone election of record.

¶ 8.23  Requirement, When Elected by Telephone

  During a telephone conversation with [1] on [2] a
provisional election was made [3] traverse to prosecute the
invention of [4], claim [5]. Affirmation of this election
must be made by applicant in responding to this Office
action. Claim [6] withdrawn from further consideration by
the examiner, 37 CFR 1.142(b), as being drawn to a non -
elected invention.

  Examiner Note:

  1.  In bracket 3, insert "with" or "without", whichever
is applicable.

  2.  In bracket 4, insert either the elected group or
species.

  3.  An action on the merits of the claims should
follow.

¶ 8.23.01  Requirement, No Election by Telephone

  A telephone call was made to [1] on [2] to request an
oral election to the above restriction requirement, but did
not result in an election being made.

  Examiner Note:

  1. In bracket 1, insert the name of the applicant or
attorney or agent contacted.

  2. In bracket 2, insert the date(s) of the telephone
contact(s).

  3. This paragraph should be used in all instances where a
telephone  election  was  attempted  and  applicant's
representative did not or would not make an election.

  4. This paragraph should not be used if no contact was
made with applicant's representative or applicant.

  If on examination the examiner finds the elected claims
to be allowable and no traverse was made, the letter should
be **>attached to< PTOL - 37 **>Notice of Allowability< and
should include cancellation of the nonelected claims, a
statement that the prosecution is closed, and that a notice
of allowance will be sent in due course. Correction of
formal matters in the above - noted situation which cannot
be handled by a telephone call and thus requires action by
the applicant should be handled under the Ex parte Quayle
practice, using PTOL - 326.

  Should the elected claims be found allowable in the
first action, and an oral traverse was noted, the examiner
should include in his or her action a statement under MPEP §
821.01, making the restriction final and giving applicant 1
- month to either cancel the nonelected claims or take other
appropriate action (37 CFR 1.144). Failure to take action
will be treated as an authorization to cancel the nonelected
claims by an examiner's amendment and pass the case to
issue. Prosecution of the application is otherwise closed.

  In either situation (traverse or no traverse), caution
should be exercised to determine if any of the allowed
claims are linking or generic claims before canceling the
nonelected claims.

  Where the respective inventions are located in different
groups, the requirement for restriction should be made only
after consultation with and approval by all groups involved.
If an oral election would cause the application to be
examined in another group, the initiating group should
transfer the application with a signed memorandum of the
restriction requirement and a record of the interview. The
receiving group will incorporate the substance of this
memorandum  in  its  official  letter  as  indicated  above.
Differences as to restriction should be settled by the
existing chain of command; e.g. supervisory primary examiner
or group director.

  This practice is limited to use by examiners who have at
least negotiation authority. Other examiners must have the
prior approval of their supervisory primary examiner.

814  Indicate Exactly How Application Is To Be
Restricted

  A. Species.  The mode of indicating how to require
restriction  between  species  is  set  forth  in  MPEP  §
809.02(a).

  As pointed out in Ex parte Ljungstrom , 1905 C.D. 541,
119 O.G. 2335, the particular limitations in the claims and
the reasons why such limitations are considered to restrict
the claims to a particular disclosed species should be
mentioned if necessary to make the requirement clear.

  B. Inventions other than species  . It is necessary to
read all of the claims in order to determine what the claims
cover. When doing this, the claims directed to each separate
subject should be noted along with a statement of the
subject matter to which they are drawn.

  This is the best way to most clearly and precisely
indicate  to  applicant  how  the  application  should  be
restricted. It consists in identifying each separate subject
amongst which restriction is required, and grouping each
claim with its subject.

  The separate inventions should be identified by a
grouping of the claims with a short description of the total
extent of the invention claimed in each group, specifying
the type or relationship of each group as by stating the
group is drawn to a process, or to a subcombination, or to a
product, etc., and should indicate the classification or
separate status of each group, as for example, by class and
subclass.

  While every claim should be accounted for, the omission
to group a claim, or placing a claim in the wrong group will
not affect the propriety of a final requirement where the
requirement is otherwise proper and the correct disposition
of the omitted or erroneously grouped claim is clear.

  C. Linking claims. The generic or other linking claims
should  not  be  associated  with  any  one  of  the  linked
inventions since such claims must be examined with any one
of the linked inventions that may be elected. This fact
should be clearly stated.

815  Make Requirement Complete

  When making a requirement every effort should be made to
have the requirement complete. If some of the claimed
inventions are classifiable in another art unit and the
examiner has any doubt as to the proper line among the same,
the application should be referred to the examiner of the
other art unit for information on that point and such
examiner should render the necessary assistance.

816  Give Reasons for Holding of Independence or
Distinctness [R - 1]

  The particular reasons relied on by the examiner for
holding  that  the  inventions  as  claimed  are  either
independent or distinct, should be concisely stated. A mere
statement of conclusion is inadequate. The reasons upon
which the conclusion is based should be given.

  For  example,  relative  to  combination  and  a
subcombination thereof, the examiner should point out the
reasons why he or she considers the subcombination to have
utility by itself or in other combinations, and why he or
she considers that the combination as claimed does not rely
on the subcombination as its essential distinguishing part.

  Each other relationship of claimed invention should be
similarly treated and the reasons for the conclusions of
distinctness of invention as claimed set forth.

  The separate inventions should be identified by a
grouping of the claims with a short description of the total
extent of the invention claimed in each group, specifying
the type or relationship of each group as by stating the
group is drawn to a process, or to subcombination, or to
product, etc., and should indicate the classification or
separate status of each group, as for example, by class and
subclass. See MPEP § 809.

  Note Form Paragraph 8.13.

¶ 8.13  Distinctness (Heading)

  The  inventions  are  distinct,  each  from  the  other
because:

 *>Examiner Note< :

  **>This  paragraph  should  be  followed  by  one<  of
paragraphs 8.14 to**>8.20.02< to *>show< distinctness.

817  Outline of Letter for Restriction Requirement
Between  Distinct Inventions [R - 3]

  The statement in MPEP § 809.02 through § 809.02(d) is
adequate indication of the form of letter when election of
species is required.

  No outline of a letter is given for other types of
independent inventions since they rarely occur.

  The following outline of a letter for a requirement to
restrict  is  intended  to  cover  every  type  of  original
restriction requirement between related inventions including
those having linking claims.

 OUTLINE OF LETTER

 A.  Statement of the requirement to restrict and that
it is being made under 35 U.S.C. 121

  - Identify each group by Roman numeral

  - List claims in each group

  - Check accuracy of numbering

  Look for same claims in two groups

  Look for omitted claims

  - Give short description of total extent of the subject
matter claimed in each group.

  - Point out critical claims of different scope

  - Identify whether combination, subcombination, process,
apparatus, or product

  - Classify each group

  - Form Paragraphs 8.08 - 8.11 should be used to group
inventions.

¶ 8.08  Restriction, 2 Groupings

  Restriction to one of the following inventions is
required under 35 U.S.C. 121:

  I. Claim [1], drawn to [2], classified in class [3],
subclass [4].

  II. Claim [5], drawn to [6], classified in class [7],

subclass [8].

¶ 8.09  Restriction, 3rd Grouping

  III. Claim [1], drawn to [2], classified in class [3],
subclass [4].

¶ 8.10  Restriction, 4th Grouping

  IV. Claim [1], drawn to [2], classified in class [3],
subclass [4].

¶ 8.11  Restriction, Additional Groupings

  [1]. Claim [2], drawn to [3], classified in class [4],
subclass [5].

 Examiner Note:

  In bracket 1, insert the appropriate roman numeral,
e.g., - -V - -, - -VI - -, etc.

 B.  Take into account claims not grouped, indicating
their disposition.

 - Linking claims

  - Indicate - (make no action)

  - Statement of groups to which linking claims may be as
signed for examination

  - Other ungrouped claims.

  - Indicate disposition e.g., previously nonelected,
nonstatutory, canceled, etc.

 C.  Allegation of distinctness

  - Point out facts which show distinctness

  - Treat the inventions as claimed, don't merely state
your conclusion that inventions in fact are distinct

  - (1) Subcombination - (Subcombination (disclosed) as
usable together)

  Each usable alone or in other identified combination

  Demonstrate by examiner's suggestion

  - (2) Combination - Subcombination

  Combination as claimed does not require subcombination

  AND

  Subcombination usable alone or in other combination

  Demonstrate by examiner's suggestion

  - (3) Process - Apparatus

  Process can be carried out by hand or by other apparatus

  Demonstrate by examiner's suggestion

  OR

  Demonstrate apparatus can be used in other process
(rare).

  - (4) Process of making and/or Apparatus - Product

  Demonstrate claimed product can be made by other process
(or apparatus)

  By examiner's suggestion

  OR

  Process of making (or apparatus) can produce other
product (rare)

 D. Allegation of reasons for insisting upon restriction

  - Separate status in the art

  - Different classification

  - Same classification but recognition of divergent
subject matter

  - Divergent fields of search

  - Search required for one group not required for the
other

 E. Summary statement

  - Summarize (1) distinctness and (2) reasons for

 insisting upon restriction, if applicable.

  - Include paragraph advising as to response required.

  - Indicate effect of allowances of linking claims, if
any present.

  - Indicate effect of cancellation or nonallowance of
evidence claims (see MPEP § 806.05(c)).

  **>One of form paragraphs 8.21.01 through 8.21.03< must
be used at the conclusion of each restriction requirement.

>¶  8.21.01  Conclusion  to  All  Restriction
Requirements: Different Classification

  Because these inventions are distinct for the reasons
given above and have acquired a separate status in the art
as shown by their different classification, restriction for
examination purposes as indicated is proper.

 Examiner Note :

  This form paragraph (or one of form paragraphs 8.21.02
or 8.21.03) must be added as a conclusion to all restriction
requirements  employing  any  of  form  paragraphs  8.14  to
8.20.02.

¶ 8.21.02  Conclusion to All Restriction Requirements:
Recognized Divergent Subject Matter

  Because these inventions are distinct for the reasons
given above and have acquired a separate status in the art
because  of  their  recognized  divergent  subject  matter,
restriction for examination purposes as indicated is proper.

 Examiner Note :

  This form paragraph (or one of form paragraphs 8.21.01
or 8.21.03) must be added as a conclusion to all restriction
requirements  employing  any  of  form  paragraphs  8.14  to
8.20.02.

¶ 8.21.03  Conclusion to All Restriction Requirements:
Different Search

  Because these inventions are distinct for the reasons
given above and the search required for Group [1] is not
required for Group  [2] , restriction for examination
purposes as indicated is proper.

 Examiner Note :

  This form paragraph (or one of form paragraphs 8.21.01
or 8.21.02) must be added as a conclusion to all restriction
requirements  employing  any  of  form  paragraphs  8.14  to
8.20.02.<

  Form  Paragraph  8.23.02  must  be  included  in  all
restriction  requirements  for  applications  having  joint
inventors.

¶  8.23.02  Joint Inventors, Correction of Inventorship

  Applicant is reminded that upon the cancellation of
claims to a non - elected invention, the inventorship must
be amended in compliance with 37 CFR 1.48(b) if one or more
of the currently named inventors is no longer an inventor of
at  least  one  claim  remaining  in  the  application.  Any
amendment  of  inventorship  must  be  accompanied  by  a
diligently - filed petition under 37 CFR 1.48(b) and by the
fee required under 37 CFR 1.17(h).

 Examiner Note :

  This paragraph must be included in all restriction
requirements for applications having joint inventors.

818  Election and Response

  Election is the designation of the particular one of two
or more disclosed inventions that will be prosecuted in the
application.

  A response is the reply to each point raised by the
examiner's action, and may include a traverse or compliance.

  A traverse of a requirement to restrict is a statement
of the reasons upon which the applicant relies for his
conclusion that the requirement is in error.

  To be complete, a response to a requirement which merely
specifies the linking claims need only include a proper

election.

  Where a rejection or objection is included with a
restriction requirement, applicant, besides making a proper
election must also distinctly and specifically point out the
supposed errors in the examiner's rejection or objection.
See 37 CFR 1.111.

818.01  Election Fixed by Action on Claims

  Election becomes fixed when the claims in an application
have received an action on their merits by the Office.

818.02  Election Other Than Express

  Election may be made in other ways than expressly in
response to a requirement as set forth in MPEP § 818.02(a)
and § 818.02(c).

818.02(a)  By Originally Presented Claims

  Where claims to another invention are properly added and
entered in the case before an action is given, they are
treated as original claims for purposes of restriction only.

  The claims originally presented and acted upon by the
Office on their merits determine the invention elected by an
applicant, and subsequently presented claims to an invention
other than that acted upon should be treated as provided in
MPEP § 821.03.

818.02(b)  Generic Claims Only - No Election of Species

  Where only generic claims are first presented and
prosecuted in an application in which no election of a
single invention has been made, and applicant later presents
species claims to more than one species of the invention, he
or she must at that time indicate an election of a single
species. The practice of requiring election of species in
cases with only generic claims of the unduly extensive and
burdensome search type is set forth in MPEP § 808.01(a).

818.02(c)  By Optional Cancellation of Claims

  Where applicant is claiming two or more inventions
(which  may  be  species  or  various  types  of  related
inventions) and as a result of action on the claims, he or
she cancels the claims to one or more of such inventions,
leaving claims to one invention, and such claims are acted
upon by the examiner, the claimed invention thus acted upon
is elected.

818.03  Express Election and Traverse

 37 CFR 1.143. Reconsideration of requirement.

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

examiner will at the same time act on the claims to the
invention elected.

  Election in response to a requirement may be made either
with or without an accompanying traverse of the requirement.

818.03(a)  Response Must Be Complete

  As shown by the first sentence of 37 CFR 1.143 the
traverse to a requirement must be complete as required by 37
CFR 1.111(b) which reads in part: "In order to be entitled
to reconsideration or further examination, the applicant or
patent owner must make request therefor in writing. The
reply by the applicant or patent owner must distinctly and
specifically point out the supposed errors in the examiner's
action and must respond to every ground of objection and
rejection in the prior Office action . . The applicant's
or patent owner's reply must appear throughout to be a bona
fide attempt to advance the case to final action . ."

  Under  this  rule,  the  applicant  is  required  to
specifically point out the reasons on which he or she bases
his or her conclusions that a requirement to restrict is in
error. A mere broad allegation that the requirement is in
error does not comply with the requirement of 37 CFR §
1.111. Thus the required provisional election (see MPEP §
818.03(b)) becomes an election without traverse.

818.03(b)  Must Elect, Even When Requirement Is
Traversed

  As noted in the second sentence of 37 CFR 1.143, a
provisional  election  must  be  made  even  though  the
requirement is traversed.

  All requirements for restriction should include Form
Paragraph 8.22.

¶ 8.22  Requirement, Election, Mailed

  Applicant  is  advised  that  the  response  to  this
requirement to be complete must include an election of the
invention to be examined even though the requirement be
traversed (37 CFR 1.143).

  Examiner Note:

  This paragraph can be used in Office actions with or
without an action on the merits.

818.03(c)  Must Traverse To Preserve Right of Petition
[R - 1]

 37 CFR 1.144.  Petition from requirement for
restriction.

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

  If applicant does not distinctly and specifically point
out supposed errors in the restriction requirement, the
election should be treated as an election without traverse
and be so indicated to the applicant by use of form
paragraph 8.25.2.

¶ 8.25.>0<2  Election Without Traverse Based on Incomplete
Response

  Applicant's  election  of  [1]  in  paper  no.  [2]  is
acknowledged.  Because  applicant  did  not  distinctly  and
specifically  point  out  the  supposed  errors  in  the
restriction requirement, the election has been treated as an
election without traverse (MPEP > § < 818.03(a)).

818.03(d)  Traverse of Nonallowance of Linking Claims

  A traverse of the nonallowance of the linking claims is
not a traverse of the requirement to restrict; it is a
traverse of a holding of nonallowance.

  Election combined with a traverse of the nonallowance of
the linking claims only is an agreement with the position
taken by the Office that restriction is proper if the
linking - type claim is not allowable and improper if they
are allowable. If the Office allows such a claim, it is
bound to withdraw the requirement and to act on all linked
inventions. But once all linking claims are canceled 37 CFR
1.144 would not apply, since the record would be one of
agreement as to the propriety of restriction.

  Where, however, there is a traverse on the ground that
there is some relationship (other than and in addition to
the linking - type claim) that also prevents restriction,
the  merits  of  the  requirement  are  contested  and  not
admitted. Assume a particular situation of process and
product made where the claim held linking is a claim to
product limited by the process of making it. The traverse
may set forth particular reasons justifying the conclusion
that restriction is improper since the process necessarily
makes the product and that there is no other present known
process by which the product can be made. If restriction is
made final in spite of such traverse, the right to petition
is preserved even though all linking claims are canceled.

818.03(e)  Applicant Must Make Own Election

  Applicant must make his or her own election. The
examiner will not make the election for the applicant, 37
CFR 1.142, 37 CFR 1.143, second sentence.

819  Office Generally Does Not Permit Shift [R - 2]

  The general policy of the Office is not to permit the
applicant to shift to claiming another invention after an
election is once made and action given on the elected
subject matter. When claims are presented which the examiner
holds are drawn to an invention other than the one elected,
he or she should treat the claims as outlined in MPEP §
821.03.

  Where the inventions are distinct and of such a nature
that the Office compels restriction, an election is not
waived even though the examiner gives action upon the
patentability of the claims to the nonelected invention, Ex

parte Loewenbach, 1904 C.D. 170, 110 O.G. 857 (Comm'r Pats
1904); and  In re Waugh, 1943 C.D. 411, 553 O.G. 3 (CCPA
1943).

  >Where an application filed under 37 CFR 1.62, File
Wrapper Continuation (FWC), is a continuation and not a
division or C - I-P, the election made in the parent
application carries over to the FWC application unless
otherwise  indicated  by  applicant.  Where  there  is  no
indication in the filing of the FWC application that a
change in election is desired, the examiner's first action
should include a repetition of the restriction requirement
made in the parent application to the extent it is still
applicable in the FWC application and an indication that
prosecution is being continued on the invention elected and
prosecuted by applicant in the parent application.<

819.01  Office May Waive Election and Permit Shift

  While applicant, as a matter of right, may not shift
from claiming one invention to claiming another, the Office
is not precluded from permitting a shift. It may do so where
the shift results in no additional work or expense, and
particularly where the shift reduces work as by simplifying
the issues: Ex parte Heritage Pat. No. 2,375,414 decided
January 26, 1944. If the examiner has accepted a shift from
claiming one invention to claiming another, the case is not
abandoned:  Meden v.  Curtis,1905 C.D.272, 117 O.G. 1795
(Comm'r Pats 1905).

820  Not an Election; Permissible Shift

  Where the Office rejects on the ground that the process
is obvious, the only invention being in the product made,
presenting claims to the product is not a shift: Ex parte
Trevette,1901 C.D. 170, 97 O.G. 1173.

  Product  elected  -  no  shift  where  examiner  holds
invention to be in process: Ex parte Grier,1923 C.D. 27, 309
O.G. 223.

  Genus allowed, applicant may prosecute a reasonable
number of additional species thereunder, in accordance with
37 CFR 1.141, this not constituting a shift: Ex parte Sharp
et al., Patent No. 2,232,739.

820.01  Old Combination Claimed - Not an Election [R - 2]

  Where an application originally presents claims to a
combination (AB), the examiner holding the novelty, if any,
to reside in the subcombination (B), per se, only (see MPEP
§ 806.05(b)), and these claims are rejected, subsequently
presented claims to subcombination (B) of the originally
claimed combination should not be rejected on the ground of
previous  election  of  the  combination,  nor  should  this
rejection be applied to such combination claims if they are
reasserted, Ex parte Donnell, 1923 C.D. 54. Final rejection
of the reasserted old combination claims is the action that
should be taken. The combination and subcombination as
defined by the claims under this special situation are not
for distinct inventions. (See MPEP § 806.05(c).) **

820.02  Interference Issues - Not an Election

  Where  an  interference  is  instituted  prior  to  an

applicant's election, the subject matter of the interference
issues  is  not  elected.  An  applicant  may,  after  the
termination of the interference, elect any one of the
inventions claimed.

821  Treatment of Claims Held to be Drawn to Nonelected
Inventions

  Claims held to be drawn to nonelected inventions,
including claims to nonelected species, are treated as
indicated in MPEP § 821.01 through § 821.03.

  The  propriety  of  a  requirement  to  restrict,  if
traversed, is reviewable by petition under 37 CFR 1.144, In
re Hengehold , 169 USPQ 473 (CCPA 1971).

  All claims that the examiner holds as not being directed
to the elected subject matter should be withdrawn from
further consideration by the examiner as set forth in MPEP §
809.02(c) and § 821.01 through § 821.03. As to one or more
of such claims the applicant may traverse the examiner's
holding that they are not directed to the elected subject
matter. The propriety of this holding, if traversed, is
appealable. Thus, if the examiner adheres to his or her
position after such traverse, he or she should reject the
claims to which the traverse applies on the ground that they
are not directed to the elected subject matter. Because
applicant believes the claims are readable on the elected
invention and the examiner disagrees, the metes and bounds
of the claim(s) cannot be readily ascertained, rendering the
claim(s) vague and indefinite within the meaning of 35
U.S.C. 112, second paragraph.

821.01  After Election With Traverse [R - 2]

  Where the initial requirement is traversed, it should be
reconsidered. If, upon reconsideration, the examiner is
still of the opinion that restriction is proper, it should
be repeated and made final in the next Office action. (See
MPEP § 803.01.) In doing so, the examiner should reply to
the reasons or arguments advanced by applicant in the
traverse. Form Paragraph 8.25 should be used to make a
restriction requirement final.

¶ 8.25  Answer to Arguments With Traverse

  Applicant's election with traverse of [1] in Paper No.
[2] is acknowledged. The traversal is on the ground(s) that
[3]. This is not found persuasive because [*>4<].

  The requirement is still deemed to be proper and is
therefore made FINAL.

  Examiner Note:

  1. In bracket 1, insert the invention elected.

  2. In bracket 3, insert in summary form, the ground(s) on
which traversal is based.

  3. In bracket 4, insert the reasons why the traversal was
not found to be persuasive.

  If the examiner, upon reconsideration, is of the opinion
that the requirement for restriction is improper, he or she

should state in the next Office action that the requirement
for restriction is withdrawn and give an action on all the
claims.

  If the requirement is repeated and made final, in that
and in each subsequent action, the claims to the nonelected
invention should be treated by using Form Paragraph 8.05.

¶ 8.05  Claims Stand Withdrawn With Traverse

  Claim [1] withdrawn from further consideration by the
examiner, 37 CFR 1.142(b), as being drawn to a non - elected
[2], the requirement having been traversed in paper no. [3].

  Examiner Note:

  In bracket 2, insert "invention" or "species".

  This will show that applicant has retained the right to
petition from the requirement under 37 CFR 1.144 (see MPEP §
818.03(c).)

  When the case is otherwise ready for issue, and has not
received a final action, the examiner should treat the case
by using Form Paragraph 8.03. See MPEP § 809.02(c).

  When preparing a final action in an application where
there has been a traversal of a requirement for restriction,
the examiner should indicate in the Office action that a
complete response must include cancellation of the claims
drawn to the nonelected invention, or other appropriate
action (37 CFR 1.144). See Form Paragraph 8.24.

¶ 8.24  Response to * Final Must Include Cancellation

  This  application  contains  claim  [1]  drawn  to  an
invention non - elected with traverse in Paper No. [2]. A
complete  response  to  the  final  rejection  must  include
cancellation of non - elected claims or other appropriate
action (37 CFR 1.144) MPEP § 821.01.

 Examiner Note :

  For use in FINAL rejections of applications containing
claim(s) non - elected with traverse.

  Where a response to a final action has otherwise placed
the application in condition for allowance, the failure to
cancel claims drawn to the nonelected invention or to take
appropriate action will be construed as authorization to
cancel these claims by examiner's amendment and pass the
case to issue after the expiration of the period for
response.

  Note that the petition under 37 CFR 1.144 must be filed
not later than appeal. This is construed to mean appeal to
the Board of Patent Appeals and Interferences. If the case
is ready for allowance after appeal and no petition has been
filed, the examiner should simply cancel the nonelected
claims by examiner's amendment, calling attention to the
provisions of 37 CFR 1.144.

821.02  After Election Without Traverse [R - 1]

  Where the initial requirement is not traversed, if

adhered to, appropriate action should be given on the
elected claims and the claims to the nonelected invention
should be treated by using Form Paragraph 8.06.

¶ 8.06  Claims Stand Withdrawn Without Traverse

  Claim [1] withdrawn from further consideration by the
examiner, 37 CFR 1.142(b) as being drawn to a nonelected
[2]. Election was made without traverse in paper no. [3].

  Examiner Note:

  In bracket 2, insert "invention" or "species".

  This will show that applicant has not retained the right
to petition from the requirement under 37 CFR 1.144.

  Under these circumstances, when the case is otherwise
ready for issue, the claims to the nonelected invention,
including  nonelected  species,  may  be  canceled  by  an
examiner's amendment, and the case passed for issue. The
examiner's amendment should include Form Paragraph 8.07.

¶ 8.07  Ready for Allowance Without Traverse

  This application is in condition for allowance except
for the presence of claim [1] to [2] nonelected without
traverse. Accordingly, claim [3] been cancelled.

  Examiner Note:

 a< species".

821.03  Claims for Different Invention Added After an
Office Action [R - 1]

  Claims added by amendment following action by the
examiner, MPEP § 818.01, § 818.02(a), to an invention other
than previously claimed, should be treated as indicated by
37 CFR 1.145.

 37 CFR 1.145.  Subsequent presentation of claims for
different invention.

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

  The action should include Form Paragraph 8.04.

¶ 8.04  Election by Original Presentation

  Newly submitted claim [1] directed to an invention that
is independent or distinct from the invention originally
claimed for the following reasons: [2].

  Since applicant has received an action on the merits for
the originally presented invention, this invention has been
constructively  elected  by  original  presentation  for
prosecution on the merits. Accordingly, claim [3] withdrawn
from consideration as being directed to a non - elected

invention. See 37 CFR 1.142(b) and MPEP > § < 821.03.

  Of course, a complete action on all claims to the
elected invention should be given.

  Note that the above practice is intended to have no
effect on the practice stated in MPEP § 2303.

  An amendment canceling all claims drawn to the elected
invention and presenting only claims drawn to the nonelected
invention should not be entered. Such an amendment is
nonresponsive. Applicant should be notified by using Form
Paragraph 8.26.

¶ 8.26  Cancelled Elected Claims, Non - Responsive

  The amendment filed on [1] cancelling all claims drawn
to the elected invention and presenting only claims drawn to
a non - elected invention is non - responsive, (MPEP > § <
821.03). The remaining claims are not readable on the
elected invention because [2]. Applicant is given a ONE
MONTH TIME LIMIT or until the expiration of the response
period set in the the last Office action, whichever is
longer, to complete the response. NO EXTENSION OF THIS TIME
LIMIT WILL BE GRANTED UNDER EITHER 37 CFR 1.136(a) or (b),
but the period for response set in the last Office action
may be extended up to a maximum of *>SIX< MONTHS.

821.04  Rejoinder [R - 3]

  Where product and process claims drawn to independent
and  distinct  inventions  are  presented  in  the  same
application, applicant may be called upon under 35 U.S.C.
121 to elect claims to either the product or process. See
MPEP  §  806.05(f)  and  §  806.05(h).  The  claims  to  the
nonelected  invention  will  be  withdrawn  from  further
consideration under 37 CFR 1.142. See MPEP § 809.02(c) and §
821 through § 821.03. However, if applicant elects claims
directed to the product, and a product claim is subsequently
found allowable, withdrawn process claims which depend from
or otherwise include all the limitations of the allowable
product claim will be rejoined.

  Where the application as originally filed discloses the
product and the process for making and/or using the product,
and only claims directed to the product are presented for
examination,  when  a  product  claim  is  found  allowable,
applicant may present claims directed to the process of
making  and/or  using  the  patentable  product  by  way  of
amendment pursuant to 37CFR 1.115. In view of the rejoinder
procedure, and in order to expedite prosecution, applicants
are encouraged to present such process claims, preferably as
dependent claims, in the application at an early stage of
prosecution. Process claims which depend from or otherwise
include all the limitations of the patentable product will
be entered as a matter of right if the amendment is
presented prior to final rejection or allowance. Amendments
submitted after final rejection are governed by 37 CFR
1.116. Process claims which do not depend from or otherwise
include the limitations of the patentable product will be
withdrawn from consideration, via an election by original
presentation (see MPEP § 821.03). Amendments submitted after
allowance are governed by 37 CFR 1.312. Process claims which
depend from or otherwise include all the limitations of an
allowed product claim and which meet the requirements of 35

U.S.C. 101, 102, 103, and 112 may be entered.

  Where applicant voluntarily presents claims to the
product and process in separate applications (i.e., no
restriction requirement was made by the Office), and one of
the  applications  issues  as  a  patent,  the  remaining
application  may  be  rejected  under  the  doctrine  of
obviousness - type double patenting, where appropriate (see
MPEP § 804 - § 804.03), and applicant may overcome the
rejection by the filing of a terminal disclaimer under 37
CFR  1.321(c).  Similarly,  if  copending  applications
separately  present  product  and  *>process<  claims,
provisional obviousness - type double patenting rejections
should  be  made  where  appropriate.  However,  once  a
determination as to the patentability of the product has
been reached any process claim which contains limitations
identical to the allowed/allowable product should not be
rejected over prior art without consultation with a Patent
Examining Group Director.

  Where product and process claims are presented in a
single application and that application qualifies under the
transitional  restriction  practice  pursuant  to  37  CFR
1.129(b), applicant may either (1) elect the invention to be
searched and examined and pay the fee set  forth in 37 CFR
1.17(s) and have the additional inventions searched and
examined  under  37  CFR  1.129(b)(2),  or  (2)  elect  the
invention to be searched and examined and not pay the
additional fee (37 CFR 1.129(b)(3)). Where no additional fee
is paid, if the elected invention is directed to the product
and the claims directed to the product are subsequently
found patentable, process claims which either depend from or
include all the limitations of the allowable product will be
rejoined . If applicant chooses to pay the fees to have the
additional inventions searched and examined pursuant to 37
CFR 1.129(b)(2), even if the product is found allowable,
applicant would not be entitled to a refund of the fees paid
under 37 CFR 1.129(b) by arguing that the process claims
could have been rejoined. 37 CFR 1.26 states that "[m]oney
paid by actual mistake or in excess will be refunded, but a
mere change of purpose after the payment of money...will not
entitle a party to demand such a return..." The fees paid
under 37 CFR 1.129(b) were not paid by actual mistake nor
paid in excess, therefore, applicant would not be entitled
to a refund.

  In the event of rejoinder, the rejoined process claims
will be fully examined for patentability in accordance with
37 CFR 1.104 - 1.106. Thus, to be allowable, the rejoined
claims must meet all criteria for patentability including
the requirements of 35 U.S.C. 101, 102, 103, and 112. If the
application  containing  the  rejoined  claims  is  not  in
condition for allowance, the subsequent Office action may be
made final, or, if the application was already under final
rejection, the next Office action may be an advisory action.

  >Form paragraphs 8.42 through 8.44 should be used to
notify applicant of the rejoinder of process claims which
depend from or otherwise include all the limitations of an
allowable product claim.

¶ 8.42  Rejoinder of Less Than All Process Claims

  Claim [1] directed to an allowable product. Pursuant to
the procedures set forth in the Official Gazette notice

dated March 26, 1996 (1184 O.G. 86), claim  [2] , directed
to the process of making or using the patentable product,
previously withdrawn from consideration as a result of a
restriction requirement,  [3] now subject to being rejoined.
Process claim  [4] hereby rejoined and fully examined for
patentability under 37 CFR 1.104 to 1.106. In accordance
with the Official Gazette notice, supra, process claim  [5]
, which  [6] not depend from or otherwise include all the
limitations  of  the  allowable  product,  [7]  NOT  been
rejoined.

 Examiner Note:

  1. If ALL previously withdrawn claims are being rejoined,
then form paragraph 8.43 should be used instead of this form
paragraph.

  2. If other non - process claims are present and are NOT
being rejoined, use form paragraph 8.44 instead of this form
paragraph.

  3. In bracket 1, insert the claim number(s) of the
allowable product claims followed by either - - is - - or -
- are - -.

  4. In bracket 2, insert the claim number(s) of ALL
process claims previously withdrawn from consideration.

  5. In bracket 3, insert either - -is - - or - -are - -.

  6. In bracket 4 , insert the number(s) of the rejoined
process claims.

  7. In bracket 5, insert the number(s) of the process
claims NOT being rejoined followed by either - - is - - or -
- are - -.

  8. In bracket 6, insert - -do - - or - -does - -.

  9. In bracket 7, insert - -has - - or - -have - -.

  10. If rejoinder occurs after the first Office action on
the  merits  and  if  any  of  the  rejoined  claims  are
unpatentable, e.g., if a rejection under 35 U.S.C. 112,
first paragraph is made, then the next Office action may be
made  final  since  the  new  ground  of  rejection  was
necessitated by applicant's response.

¶ 8.43  Rejoinder of All Previously Withdrawn Claims

  Claim [1] directed to an allowable product. Pursuant to
the procedures set forth in the Official Gazette notice
dated March 26, 1996 (1184 O.G. 86), claim  [2] , directed
to the process of making or using the patentable product,
previously withdrawn from consideration as a result of a
restriction requirement,  [3] now subject to being rejoined.
Claim  [4]  hereby  rejoined  and  fully  examined  for
patentability under 37 CFR 1.104 to 1.106.

  Since all claims previously withdrawn from consideration
under 37 CFR 1.142 have been rejoined, the restriction
requirement made in Paper No. [5] is hereby withdrawn.

  1. If LESS THAN ALL previously withdrawn process claims
are being rejoined, then form paragraph 8.42 should be used
instead of this form paragraph. If LESS THAN ALL previously
withdrawn claims are being rejoined, then form paragraph
8.44 should be used instead of this form paragraph.

  2. In bracket 1, insert the claim number(s) of the
allowable product claim(s) followed by either - - is - - or
- - are - -.

  3. In bracket 2, insert the claim number(s) of the
process claim(s) previously withdrawn from consideration.

  4. In bracket 3, insert either - -is - - or - -are - -.

  5. In bracket 4, insert the number(s) of the process
claims  being  rejoined  (should  correspond  to  bracket  2
insert).

  6. If rejoinder occurs after the first Office action on
the  merits  and  if  any  of  the  rejoined  claims  are
unpatentable, e.g., if a rejection under 35 U.S.C. 112,
first paragraph is made, then the next Office action may be
made  final  since  the  new  ground  of  rejection  was
necessitated by applicant's response.

¶ 8.44  Rejoinder of Process Claims, Other Claims Present
and Not Rejoined

  Claim [1] directed to an allowable product. Pursuant to
the procedures set forth in the Official Gazette notice
dated March 26, 1996 (1184 O.G. 86), claim  [2] , directed
to the process of making or using the patentable product,
previously withdrawn from consideration as a result of a
restriction requirement,  [3] now subject to being rejoined.
Process claim  [4] hereby rejoined and fully examined for
patentability under 37 CFR 1.104 to 1.106. Claim  [5] , not
directed to the process of making or using the patentable
product, will not be rejoined.

  1. If LESS THAN ALL previously withdrawn process claims
are being rejoined, then form paragraph 8.42 should be used
instead of this form paragraph. If ALL previously withdrawn
claims are being rejoined then form paragraph 8.43 should be
used instead of this form paragraph.

  2. In bracket 1, insert the claim number(s) of the
allowable product claim(s) followed by either - - is - - or
- - are - -.

  3. In bracket 2, insert the claim number(s) of the
process claim(s) previously withdrawn from consideration.

  4. In bracket 3, insert either - -is - - or - -are - -.

  5. In bracket 4, insert the number(s) of the process
claims  being  rejoined  (should  correspond  to  bracket  2
insert).

  6. In bracket 5, insert the number(s) of all previously
withdrawn claims which are not being rejoined.

  7. If rejoinder occurs after the first Office action on

the  merits  and  if  any  of  the  rejoined  claims  are
unpatentable, e.g., if a rejection under 35 U.S.C. 112,
first paragraph is made, then the next Office action may be
made  final  since  the  new  ground  of  rejection  was
necessitated by applicant's response.<

  See MPEP § 706.02(n) for the applicability of 35 U.S.C.
103(b) to biotechnological processes and compositions of
matter.

  See MPEP § 2116.01 for guidance on the treatment of
process claims which make or use a novel, unobvious product.

  See  MPEP  §  806.05(c)  for  rejoinder  of  restricted
combination/subcombination inventions when an evidence claim
is found to be unallowable, and see MPEP § 806.05(e) and §
809 for rejoinder of restricted inventions when a linking
claim is found allowable.

822  Claims to Inventions That Are Not Distinct in
Plural Applications of Same Inventive Entity [R - 2]

  The  treatment  of  plural  applications  of  the  same
inventive entity, none of which has become a patent, is
treated in 37 CFR 1.78(b) as follows:

  (b) Where two or more applications filed by the same
applicant contain conflicting claims, elimination of such
claims from all but one application may be required in the
absence of good and sufficient reason for their retention
during pendency in more than one application.

  **

  See MPEP ** § 804.03 for conflicting subject matter,
different inventors, common ownership.

  See MPEP § 706.03(k) for rejection of one claim on
another in the same application.

  See MPEP § 706.03(w) and § 706.07(b) for  res judicata.

  See MPEP § 709.01 for one application in interference.

  See MPEP § 806.04(h) to § 806.04(j) for species and
genus in separate applications.

  Wherever  appropriate,  such  conflicting  applications
should be joined. This is particularly true, where the two
or more applications are due to, and consonant with, a
requirement to restrict which the examiner now considers to
be improper.

  Form Paragraph 8.29 should be used when the conflicting
claims are identical or conceded by applicant to be not
patentably distinct.

¶ 8.29  Conflicting Claims, Copending Applications

  Claim [1] of this application conflict with claim [2] of
application no. [3]. 37 CFR 1.78(b) provides that when two
or more applications filed by the same applicant contain
conflicting claims, elimination of such claims from all but
one application may be required in the absence of good and
sufficient reason for their retention during pendency in

more than one application. Applicant is required to either
cancel the conflicting claims from all but one application
or  maintain  a  clear  line  of  demarcation  between  the
applications. See MPEP § 822.

  Examiner Note:

  This paragraph is appropriate when the conflicting
claims are identical or conceded by applicant to be not
patentably distinct.

822.01  Copending Before the Examiner

  Under  37  CFR  1.78(b),  the  practice  relative  to
overlapping claims in applications copending before the
examiner (and not the result of and consonant with a
requirement to restrict, for which see MPEP § 804.01), is as
follows:

  Where claims in one application are unpatentable over
claims of another application of the same inventive entity
because  they  recite  the  same  invention,  a  complete
examination should be made of the claims of each application
and all appropriate rejections should be entered in each
application, including rejections based upon prior art. The
claims of each application may also be rejected on the
grounds of provisional double patenting on the claims of the
other application whether or not any claims avoid the prior
art. Where appropriate, the same prior art may be relied
upon in each of the applications.

  ONLY PROVISIONAL DOUBLE PATENTING REJECTION IN ONE
  APPLICATION

  The "provisional" double patenting rejection should
continue to be made by the examiner in each application as
long as there are conflicting claims in more than one
application  unless  that  "provisional"  double  patenting
rejection is the only rejection remaining in one of the
applications.  If  the  "provisional"  double  patenting
rejection in one application is the only rejection remaining
in that application, the examiner should then withdraw that
rejection and permit the application to issue as a patent,
thereby  converting  the  "provisional"  double  patenting
rejection  in  the  other  application(s)  into  a  double
patenting rejection at the time the one application issues
as a patent.

  ONLY PROVISIONAL DOUBLE PATENTING REJECTION IN TWO
  APPLICATIONS

  If the "provisional" double patenting rejections in both
application are the only rejections remaining in those
applications,  the  examiner  should  then  withdraw  that
rejection  in  one  of  the  applications  and  permit  the
application to issue as a patent. The examiner should
maintain  the  double  patenting  rejection  in  the  other
application as a "provisional" double patenting rejection
which will be converted into a double patenting rejection
when the one application issues as a patent.

823  Unity of Invention Under the Patent Cooperation
Treaty

  See Chapter 1800 for a detailed discussion of unity of

invention under the Patent Cooperation Treaty (PCT).

  - -- - --

 Chapter 900 Prior Art, Classification, Search

  901  Prior Art
  901.01 Canceled Matter in U.S. Patent Files
  901.02 Abandoned Applications
  901.03 Pending Applications
  901.04 U.S. Patents
  901.05 Foreign Patent Documents
  901.05(a)  Citation Data
  901.05(b)  Other Significant Data
  901.05(c)  Obtaining Copies
  901.05(d)  Translation
  901.06 Non - Patent Publications
  901.06(a)  Scientific and Technical Information Center
  (STIC)
  901.06(b)  Borrowed Publications
  901.06(c)  Alien Property Custodian Publications
  901.06(d)  Abstracts, Abbreviatures, and Defensive
  Publications
  901.07 Arrangement of Art in Examining Groups
  901.08 Borrowing References
  901.09 Missing Copies - Replacement
  902  Search Tools and Classification Information
  902.01 Manual of Classification
  902.01(a)  Index to the U.S. Patent Classification System
  902.02 Class and Subclass Definitions
  902.02(a)  Definition Notes
  902.02(b)  Search Cards
  902.03 Classification Information
  902.03(a)  Master Classification File (MCF) on Microfilm
  902.03(b)  Patent Index
  902.03(c)  Subclass Listings
  902.03(d)  **>Patent Information and Search Tools: the
  Cassis CD - Rom Series<
  902.03(e)  Automated Patent System (APS)
  902.04 Classification Orders
  902.04(a)  Reclassification Alert Report
  903  Classification
  903.01 Statutory Authority
  903.02 Basis and Principles of Classification
  903.02(a)  New and Revised Classes
  903.02(b)  Scope of a Class
  903.02(c)  Establishing Subclasses and Cross - Reference
  Art Collections
  903.03 *>Availability< of Foreign Patents
  903.05 Transfer of U.S. Patents
  903.06 Practice To Be Followed in Ordering Official
  Cross - References
  903.07 Classifying and Cross - Referencing at
  Allowance
  903.07(a)  Cross - Referencing - Keep Systematic Notes
  During Prosecution
  903.07(b)  Issuing in Another Examining Group Without
  Transfer
  903.08 Applications: Assignment and Transfer
  903.08(a)  New Applications
  903.08(b)  Classification and Assignment to Examiner
  903.08(c)  Immediate Inspection of Amendments
  903.08(d)  Transfer Procedure
  903.08(e)  General Regulations Governing the Assignment

  of Nonprovisional Applications for Examination
  903.08(f)  Post Classifier's Decision
  903.08(g)  Transfer to Another Examining Group After
  Decision
  903.09 International Classification of Patents for
  Inventions. >903.09(a) Locarno Classification
  Designations<
  903.10 Duties of the Post Classifier
  904  How to Search
  904.01 Analysis of Claims
  904.01(a)  Variant Embodiments Within Scope of Claim
  904.01(b)  Equivalents
  904.01(c)  Analogous Arts
  904.01(d)  Outlining Field of Search
  904.02 Conducting the Search
  905  Miscellaneous
  905.01 Photocopy Orders
  905.02 Soft Copy Orders
  905.03 Ordering of Patented and Abandoned Provisional
  and Nonprovisional Application Files
  905.04 Marking Examiners' Copies of Patents
  905.05 Application File Location
  905.06 Family of Patent Information

901  Prior Art [R - 1]

  Note 37 CFR 1.104(a) in MPEP § 707. >See also MPEP §
2121 - 2129.<

901.01  Canceled Matter in U.S. Patent Files [R - 3]

  Canceled matter in the application file of a U.S. patent
is not a proper reference as of the filing date under 35
U.S.C. 102(e), see Ex parte Stalego , 154 USPQ 52 >, 53 (Bd.
App. 1966)<. However, matter canceled from the application
file wrapper of a U.S. patent may be used as prior art as of
the patent date in that it then constitutes prior public
knowledge under 35 U.S.C. 102(a), In re Lund **,>376 F.2d
982,<153 USPQ 625 (CCPA 1967). >See also MPEP § 2127 and §
2136.02.<

901.02  Abandoned Applications [R - 3]

 37 CFR 1.108.  Abandoned applications not cited.

  Abandoned applications as such will not be cited as
references except those which have been opened to inspection
by the public following a defensive publication.

  Where an abandoned application is referred to in an
issued U.S. patent, the disclosure of the application is
incorporated by reference into the disclosure of the patent
and  is  available  to  the  public.  See*>37  CFR
1.14(a)(3)(iv)(A)<.

  In re Heritage,**>182 F.2d 639 , 86 USPQ 160 (CCPA
1950), holds that where a patent refers to and relies on the
disclosure  of  a  copending  abandoned  application,  such
disclosure is available as a reference. See also  In re Lund
**>376 F.2d 982,< 153 USPQ 625, (CCPA 1967).

  It has also been held that where the reference patent
refers  to  a  copending  but  abandoned  application  which
discloses subject matter in common with the patent, the

effective date of the reference as to the common subject
matter is the filing date of the abandoned application; In
re Switzer **,77 USPQ 1, 612 O.G. 11 (CCPA 1948); Ex parte
Peterson,63  USPQ  99  (Bd.  *>App.<  1944);  and  Ex  parte
Clifford,49 USPQ 152 (Bd. App. 1940 ).  See MPEP § 2127(a).

  Published  abstracts,  abbreviatures,  and  defensive
publications are references (MPEP § 901.06(d)).

901.03  Pending Applications [R - 3]

  Except as provided in 37 CFR 1.11(b), pending U.S.
applications are preserved in *>confidence< (37 CFR 1.14(a))
and are not available as references. However, claims in one
nonprovisional application may be rejected on the claimed
subject matter of a copending nonprovisional application of
the same inventive entity. See MPEP § 804. For applications
having a common assignee and different inventive entities
claiming a single inventive concept, see MPEP § 804.03. See
MPEP § 2127(d).

  Applications abandoned as Defensive Publications were
treated as pending applications for limited time periods
regarding interferences and the filing of a continuing
application. (See MPEP § 711.06.)

901.04  U.S. Patents [R - 1]

  The following different series of U.S. patents are being
or in the past have been issued. The date of patenting given
on the face of each copy is the publication date and is the
one usually cited. The filing date, in most instances also
given on the face of the patent, is ordinarily the effective
date as a reference (35 U.S.C. 102(e)). >See MPEP § 2127(b).
The 35 U.S.C. 102(e) date for a nonprovisional application
claiming the benefit of a prior provisional application (35
U.S.C.  111(b))  is  the  filing  date  of  the  provisional
application.<

  X - Series. These are the approximately 10,000 patents
issued  between  1790  and  July  4,  1836.  They  were  not
originally numbered, but have been arbitrarily assigned
numbers in the sequence in which they were issued. The
number should not be cited. When copies are ordered, the
patentee's  name  and  date  of  issue  suffice  for
identification.

  1836 Series . The mechanical, electrical, and chemical
patents issued since 1836 and frequently designated as
"utility" patents are included in this series. A citation by
number only is understood to refer to this series. This
series comprises the bulk of all U.S. patents issued. Some
U.S. patents issued in 1861 bear two numbers but only the
larger number should be cited.

  Reissue series. Reissue patents (MPEP § 1401) have been
given a separate series of numbers preceded by "Re." In
citing, the letters and the number must be given; e.g., Re.
1776. The date that it is effective as a reference is the
effective date of the original patent application, not the
filing date of the reissue application.

  Design reissue patents are numbered with the same number
series as "utility" reissue patents. The letter prefix does,
however, indicate them to be design reissues.

  A.I. Series. From 1838 to 1861, patents covering an
inventor's improvement on his own patented device were given
a separate series of numbers preceded by "A.I." to indicate
Additional Improvement. In citing, the letters and the
number must be given; e.g., A.I. 113. About 300 such patents
were issued.

  Plant Patent Series. When the statutes were amended to
provide for patenting certain types of plants (MPEP Chapter
1600) these patents were given a separate series of numbers.
In citing, the letters "P.P." and the number must be given;
e.g., P.P. 13.

  Design Patents. Patents for designs (MPEP Chapter 1500)
are issued under a separate series of numbers. In citing,
the letter "D" and the number must be given; e.g., "D."
140,000.

  Numbers for Identification of Bibliographic Data on the
First Page of Patent and Like Documents (INID Numbers)

  The purpose of INID Codes ("INID" is an acronym for
"Internationally Agreed Numbers for the Identification of
Data") is to provide a means whereby the various data
appearing on the first page of patent and like documents can
be identified without knowledge of the language used and the
laws applied. They are now used by most patent offices and
have been applied to U.S. patents since Aug. 4, 1970. Some
of the codes are not pertinent to the documents of a
particular country and some which are may, in fact, not be
used. See list in MPEP 901.05(b).

901.05  Foreign Patent Documents [R - 3]

  All foreign patents, published applications, or any
other published derivative material containing portions or
summaries  of  the  contents  of  published  or  unpublished
patents (e.g., abstracts) which have been disseminated to
the public are available to U.S. Examiners. See MPEP §
901.06(a)(3). In general, a foreign patent, the contents of
its application, or segments of its content should not be
cited  as  a  reference  until  its  date  of  patenting  or
publication can be confirmed by an Examiner's review of a
copy of the document. Examiners should remember that in some
countries, there is a delay between the date of the patent
grant and the date of publication.

 Information pertaining to those countries from which the
most patent publications are received are given in the
following sections and in MPEP § 901.05(a). Additional
information  can  be  obtained  from  the  Scientific  and
Technical Information Center.

  See MPEP § 707.05(e) for data used in citing foreign
references.

 A.  PLACEMENT OF FOREIGN PATENT EQUIVALENTS IN THE
SEARCH FILES

  There are approximately 25 countries in which the
specifications of patents are published in printed form
either before or after a patent is granted.

  >UNTIL OCTOBER 1, 1995, THE FOLLOWING PRACTICE WAS USED

IN PLACING FOREIGN PATENT EQUIVALENTS IN THE SEARCH FILES:<

  When the same invention is disclosed by >a< common
inventor(s) and patented in more than one country, it is
called a * family >of patents<. Whenever a family of patents
or  published  patent  disclosures  *>exists<,  the  Office
*>selected< from a prioritized list of countries a single
family member for placement in the Examiners' search file
>and selected the patent of the country with the earliest
patent date<. If the U.S. *>was< one of the countries
granting a patent in the "family" of patents, none of the
foreign "equivalents" is placed in its search file. >See
MPEP § 901.05, subsection C.< However, foreign patents or
published patent disclosures within a common family which
issued prior to the final highest priority patent (e.g.,
U.S.) may have been placed in our paper search file and
these copies *>were< generally not removed when the higher
priority patent *>was< added to our search files at a later
date.

  >Beginning in October 1995 paper copies of foreign
patents  were  no  longer  classified  into  the
U.S.Classification System by the U.S. Patent and Trademark
Office. See MPEP § 901.05(c) for search of recently issued
foreign patents.<

 B.  OVERVIEW OF FOREIGN PATENT LAWS

  This  section  includes  some  general  information  on
foreign patent laws and summarizes particular features and
their terminology. Some additional details on the most
commonly cited foreign patent publications may be found
under the individual country in Part E. Examiners should
recall, by way of contrast, that in the United States our
patent law requires that a number of different events all
occur on the issue date of a U.S. patent. These events
include the following: (1) a patent document, the "letters
patent" which grants and thereby creates the legal rights
conferred  by  a  patent,  is  executed  and  sent  to  the
applicant; (2) the patent rights come into existence; (3)
the patent rights can be exercised; (4) the specification of
the patent becomes available to the public; (5) the patented
file becomes available to the public; (6) the specification
is published in printed form; (7) an issue of an official
journal, the Official Gazette , containing an announcement
of the patent and a claim, is published. In most foreign
countries, various ones of these events occur on different
days and some of them may never occur at all.

  The following list catalogs some of the most significant
variations from U.S. practices:

  1. Applicant

  In most countries, the owner of the prospective rights,
derived from the inventor, may also apply for a patent in
the owner's name as applicant; in a few, other persons may
apply as well or be joined as coapplicants. Hence applicant
is not synonymous with inventor, and the applicant may be a
company. Some countries require the inventors' names to be
given and regularly print them on the published copies.
Other countries may sometime print the inventors' names only
when available or when requested to do so.

  2. Application

  The word "application" is commonly used in the U.S. to
refer to the entire set of papers filed when seeking a
patent. However, in many countries and in PCT cases, the
word application refers only to the paper, usually a printed
form, which is to be "accompanied by" or have "attached" to
it certain other papers, namely a specification, drawings
when necessary, claims, and perhaps other papers. Unless it
is  otherwise  noted  in  the  following  portions  of  this
section, the term "application" refers to the entire set of
papers filed.

  3. Publication of contents of pending applications.

  In general, pending applications are confidential until
a certain stage in the proceedings (e.g., upon patent
grant), or until a certain date (e.g., 18 months after
filing), as may be specified in a particular law.

  Many countries have adopted the practice of publishing
the  specification,  drawing,  or  claims  of  pending
applications.  In  these  countries,  the  contents  of  the
application are published at a certain time, usually 18
months  after  filing.  The  applicant  is  given  certain
provisional rights upon publication even though examination
has not been completed or in some cases has not even begun
at the time of publication.

  This publication may take either of two forms. In the
first form, some countries publish a notice giving certain
particulars in their official journal and thereafter any one
may see the papers at the patent office or order copies.
This procedure is referred to as "laying open for public
inspection".  There  is  no  printed  publication  of  the
specification, although an abstract may be published in
printed form. If anyone can inspect or obtain copies of the
laid open application, then it is sufficiently accessible to
the public to constitute a "publication" within the meaning
of 35 U.S.C. 102(a) and (b). The full application is thus
available as prior art as of either the date of publication
of its notice or its laying open to public inspection if
this is a later date; In re Wyer , 210 USPQ 790 (CCPA 1981).
See MPEP § 2127>paragraph< (c).

  In the second form, several other countries publish the
specifications of pending applications in printed form at a
specified  time,  usually  18  months  after  filing.  These
documents,  of  course,  constitute  references  as  printed
publications.

 4. Administrative systems

  Patent  law  administration  varies  from  country  to
country. In some countries, all that is undertaken is an
inspection of the papers to determine if they are in proper
form. Other countries perform an examination of the merits
on the basis of an extensive search of the prior art, as is
done in the U.S. The former are referred to as nonexamining
or registration countries, although some systems allow for a
rejection on matters apparent on the face of the papers,
such as matters of form or statutory subject matter.

  Of the examining countries, the extent of the material
searched prior to issue varies greatly. Only a few countries
include both their own patents and a substantial amount of

foreign patent material and nonpatent publications in their
search files. Some countries specifically limit the search
by rule, or lack or facilities, to their own patents with
very little or no additional material. An increasing number
of countries are requiring applicants to give information
concerning references cited in corresponding applications
filed in other countries.

 5. Opposition

  Some examining countries consider participation by the
public as an inherent feature of their examining system.
When  an  application  is  found  to  be  allowable  by  the
examiner, it is "published" for opposition. Then there is a
period, usually 3 or 4 months, within which members of the
public  can  oppose  the  grant  of  the  patent.  In  some
countries, the opposing party can be any person or company.
In other countries, only those parties who are affected by
the  outcome  can  participate  in  the  opposition.  The
opposition is an inter partes proceeding and the opposing
party can ordinarily raise any ground on the basis of which
a patent would be refused or held invalid, including any
applicable references.

  The publication for opposition may take the form of a
laying open of the application by the publication of a
notice in the official journal with the application being
then open to public inspection and the obtaining of copies.
Otherwise  publication  occurs  by  the  issue  of  the
applications in printed form. Either way, these published
documents  constitute  printed  publications  which  are
available as references under 35 U.S.C. 102(a) and (b).

 6. The Patent

  Practices  and  terminology  vary  worldwide  regarding
patents. In some countries, there is no "letters patent"
document which creates and grants the rights. In other
countries, the examiner grants the patent by signing the
required paper. In a few countries, the patent is granted by
operation of law after certain events have occurred. The
term "granting the patent" is used here for convenience, but
it should be noted that 35 U.S.C. 102(a) and 102(b) do not
use this terminology.

  A list of granted patents is ordinarily published in
each country's official journal and some of these countries
also print an abstract or claims at or after the granting
date. Not all countries publish the granted patent. Where
the specifications of granted patents are issued in printed
form, publication seldom occurs simultaneously with the day
of  grant;  instead,  publication  occurs  a  short  time
thereafter.  There  also  are  a  few  countries  in  which
publication does not take place until several years after
the grant.

  The length of time for which the patent is enforceable
(the patent term) varies from country to country. The term
of the patent may start as of the grant of the patent, or as
of the filing date of the application

  Most countries require the payment of periodic fees to
maintain a patent in force. These fees often start a few
years after filing and increase progressively during the
term of the patent. If these fees are not paid within the

time allowed, the patent lapses and is no longer in force.
This lapsing does not affect the use of the patent as a
reference.

 7. Patents of addition

  Some countries issue patents of addition which should be
identified as such and, when separately numbered as in
France, the number of the addition patent should be cited.
"Patents of addition" generally cover improvements of a
patented parent invention and can be obtained by the owner
of the parent invention. Inventiveness in relation to the
parent invention need not be demonstrated and the term is
governed by the term of the parent patent.

 C.  CORRESPONDING SPECIFICATIONS IN A FAMILY OF PATENTS

  Since a separate patent must be obtained in each country
in which patent rights are desired (except for EP, the
European Patent Convention, and AP, the African Regional
Industrial Property Organization, whose members issue a
common patent), there may be a large number of patents
issued in different countries for the same invention. This
group of patents is referred to as a family of patents.

  All of the countries listed in Part E are parties to the
Paris Convention for the Protection of Industrial Property
and provide for the right of priority. If an application is
filed in one of these countries, an application for the same
invention thereafter filed in another country, within 1 year
of the filing of the first application, will be entitled to
the benefit of the filing date of the first application on
fulfilling various conditions. See MPEP § 201.13. The later
patents or published specifications countries are required
to specify that priority has been claimed and to give the
country, date, and number of the priority application. This
data serves the purpose, among others, of enabling any
patent based on the priority application to be easily
located.

  In general, the specification of the second application
is identical in substance to the specification of the first.
In many instances, the second, if in another language, is
simply  a  translation  of  the  first  with  perhaps  some
variation in purely formal parts. But in a minority of
cases, the two may not be identical. For instance, sometimes
two applications filed in one country are combined into one
second  application  which  is  filed  in  another  country.
Alternatively, a second application could be filed for only
part of the disclosure of the * priority application. The
second application may have the relationship to the first
which we refer to as a continuation - in - part (e.g., the
second  application  includes  additional  subject  matter
discovered after the first was filed). In some instances,
the second application could have its disclosure diminished
or increased, to meet the requirements or practices of the
second country.

  Duplicate or substantially duplicate versions of a
foreign language specification, in English or some other
language known to the Examiner, can sometimes be found. It
is possible to cite a foreign language specification as a
reference, while at the same time citing an English language
version of the specifications with a later date as a
convenient  translation  if  the  latter  is  in  fact  a

translation. Questions as to content in such cases must be
settled based on the specification which was used as the
reference.

  If a U.S. patent being considered as a reference claims
the priority of a previously filed foreign application, it
may be desirable to determine if the foreign application has
issued or has been published, to see if there is an earlier
date. For example, it has occurred that an examiner rejected
claims on the basis of a U.S. patent and the applicant filed
affidavits to overcome the filing date of the reference; the
affidavits were controversial and the case went to appeal,
with extensive brief and examiner's answer having been
filed. After all this work, somebody noticed that the U.S.
patent  reference  claimed  the  priority  of  a  foreign
application filed in a country in which patents were issued
fairly soon, checked the foreign application, and discovered
that the foreign patent had not only been issued, but also
published in printed form, more than 1 year prior to the
filing date of the application on appeal.

  If a foreign patent or specification claims the priority
of a U.S. application, it can be determined whether the
latter is abandoned, still pending, or patented. Even if the
U.S. case is or becomes patented, however, the foreign
documents may still be useful as supplying an earlier
printed publication date.

  If a foreign patent or specification claims the priority
of  an  application  in  another  foreign  country,  it  may
sometimes be desirable to check the latter to determine if
the subject matter was patented or published at an earlier
date. As an example, if a British specification being
considered  as  a  reference  claims  the  priority  of  an
application filed in Belgium, it is known at once that a
considerably earlier effective date can be established, if
needed, because Belgian patents issue soon after filing. In
addition, if the application referred to was filed in one of
the countries which publish applications in printed form 18
months after filing, the subject matter of the application
will be available as a printed publication as of the 18
month publishing date. These remarks obviously also apply to
a U.S. patent claiming a foreign priority.

  The determination of whether a foreign patent has been
issued or the application published is a comparatively
simple matter for some countries, but for some it is quite
laborious and time - consuming and may not even be possible
from Scientific and Technical Information Center maintained
sources.  Other  sources  for  this  data  which  are  not
maintained by the Office do exist and can be utilized for
locating  corresponding  patents.  One  source  is  Chemical
Abstracts which publishes abstracts of patents from a large
number  of  countries.  Only  one  patent  or  published
specification from a family is abstracted in full and any
related family members issued or published are cross -
referenced. Its annual indexes include lists of patent
numbers, and also include patentees' and inventors' names in
the  alphabetical  author  index.  A  concordance  of
corresponding patents appearing during five year periods has
also been published. Other sources for this family data are
the INPODOC and DERWENT data files.

  When an application is filed outside the convention year
from an earlier application, the later application may not

refer to the first application. It is hence possible that
there will be duplicate specifications published without any
indication revealing the fact. These may be detected when
the two copies come together in the same subclass. Because
the later application is filed outside the convention year,
the earlier application may be prior art to the latter if it
has been published or issued.

 D.  VALIDITY OF DATES DISPLAYED ON FACE OF FOREIGN
PATENT DOCUMENTS

  The examiner is not required to prove either the date or
the occurrence of events specified on specifications of
patents or applications, or in official journals, of foreign
patent offices which the Office has in its possession. In a
court action, certified copies of the Office copies of these
documents constitute prima facie evidence, in view of 28
U.S.C. 1745. An applicant is entitled to show the contrary
by competent evidence, but this question seldom arises.

  The date of receipt of copies by the Office, as shown by
office records or stamped on the copies, need only to be
stated by the examiner, when necessary.

 E.  NOTES ON INDIVIDUAL COUNTRIES

  The following table gives some data concerning the
published patent material of a number of countries to assist
in their use and citation as references. The countries
listed were selected based on the current level of material
provided  for  the  examiner  search  files.  Together,  the
countries and organizations account for over 98% of the
patent material being added to the examiner files each year.
This table reflects only the most current patent office
practice for each foreign county specified and is not
applicable for many older foreign patent documents. The
Scientific and Technical Information Library staff can help
examiners obtain data related to any documents not covered
by this table. Note that the citation dates listed in the
following table are not necessarily the oldest possible
dates. Sometimes an earlier effective date, which is not
readily  apparent  from  the  face  of  the  document,  is
available. If an earlier date is important to a rejection,
the examiner should consult STIC staff who will attempt to
obtain further information regarding the earliest possible
effective date.

  HOW TO USE TABLE

  Each horizontal row of boxes contains information on one
or more distinct patent document from a specified country
available as a reference under 35 U.S.C. 102(a) and (b). If
several distinct patent documents are included within a
common box of a row, these documents are related to each
other  and  are  merely  separate  documents  published  at
different stages of the same invention's patenting process.
Usually,  this  related  group  of  documents  includes  a
published application which ripens into an issued patent.
Within each box of the second column of each row, the top
listed document of a related group is the one that is
"published"  first  (e.g.,  made  available  for  public
inspection  by  laying  open  application,  or  application
printed and disseminated to the public). Once an examiner
determines  the  country  or  organization  publishing  the
documents, the name of the document can be located in the

second column of the table and the examiner can determine if
a document from the related group containing the same or
similar disclosure having an earlier date is available as a
reference. Usually, the documents within a related group
have identical disclosures, sometimes, however, there are
differences in the claims or minor differences in the
specification. Therefore, examiners should always verify
that the earlier related document also includes the subject
matter necessary for the rejection. Some countries issue
more than one type of patent and for clarity, in these
situations, separate rows are provided for each type.

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901.05(a)  Citation Data

  Foreign patent publications that use Arabic and Roman
numerals in lieu of names to indicate the date, show in
order the day, month, and year. Roman numerals always refer
to the month.

  Japanese patent application publications show the date
in Arabic numerals by indicating in order the year of the
reign of the Emperor, the month, and the day. To convert the
Japanese year of the Emperor to the Western calendar year,
for years prior to 1989, add 1925 to the 1965. For years
after 1988, add 1988 to the JAPANESE YEAR.

  Alphabetical lists of the foreign language names of the
months and of the names and abbreviations for the United
States of America follow. The lists set forth only selected
commonly encountered foreign language names and do not
include those which are similar to the English language
names and thus easily translatable.

  In using the lists, identification of the foreign
language  (except  for  Russian),  is  not  necessary.  The
translation into English is ascertained by alphabetically
locating the foreign language name on the list.

  The list of the foreign language names and abbreviations
for the United States is useful in determining whether a
foreign language patent publication indicates the filing of
a similar application in the United States.

  Alphabetical List of Selected Foreign Language Names of
  Months

  augusti August

  avril April

  brezen March

  cervna June

  cervenca July

  czerwca June

  decembre December

  dicembre December

  dubna April

  elokuu August

  febbraio February

  Feber February

  februari February

  fevrier February

  gennaio January

  giugno June

  grudnia December

  heinakuu July

  helmikuu February

  huhtikuu April

  Janner January

  janvier January

  joulukuu December

  juillet July

  juin June

  kesakuu June

  kvetna May

  kwietnia April

  leden January

  lipca July

  listopad November

  listopada November

  lokakuu October

  luglio July

  lutego February

  maaliskuu March

  maart March

  maggio May

  Mai May

  Maj May

  maja May

  maraskuu November

  marca March

  mars March

  Marts March

  Marz March

  marzo March

  mei May

  ottobre October

  pazdziernika October

  prosinca December

  rijna October

  settembre September

  sierpnia August

  srpna August

  stycznia January

  syyskuu September

  tammikuu January

  toukokuu May

  unora February

  wrzesnia September

  zari September

  List  of  Selected  Foreign  Language  Names  and
Abbreviations for the United States of America

  Amerikas Forenta Stater Stati Uniti d'America

  De Forenete Stater av Amerika S.U.

  EE.UU. S.U.A.

  E.U. S.Z.A.

  E.U.A. V.St.A.

  E.U. d Am. V.St.v.A.

  Etats - Unis d'Amerique Ver.St.V. Am(erika)

  Sp.St.A. Vereenigde StatenVan Amerika

  Spoj. St. Am. Vereenigde StatenVan Noord - Amerika

  Spojene Staty Americke Vereinigten StaatenVon Amerika

  Stany Zjednoczone Ameryke Vorenede Stater i Amerika

901.05(b)  Other Significant Data

  Numbers for Identification of Bibliographic Data on the
First Page of Patent and Like Documents (INID Numbers)

  The purpose of INID Codes ("INID" is an acronym for
"Internationally Agreed Numbers for the Identification of
Data") is to provide a means whereby the various data
appearing on the first page of patent and like documents can
be identified without knowledge of the language used and the
laws applied. They are now used by most patent offices and
have been applied to U.S. patents since Aug. 4, 1970. Some
of the codes are not pertinent to the documents of a
particular country and some which are may, in fact, not be
used.

  INID Codes and Minimum Required for the Identification
of Bibliographic Data

  (10)Document identification

  _(11) Number of the document

  _(12) Plain language designation of the kind of document

  _(13) Kind of document code according to WIPO Standard
ST.16

  __(19) WIPO Standard ST.3 code, or other identification,
of the office publishing the document

  Note : (i)  __ Minimum data element for patent documents
only.

  (ii) with the proviso that when data coded (11) and (13),
or (19), (11) and (13), are used together and on a single
line, category (10) can be used, if so desired.

  (20) Domestic filing data

  _(21) Number(s) assigned to the application(s), e.g.,
"Numero d'enre gistrement national  " ,  " Aktenzeichen  "

  _(22) Date(s) of filing application(s)

  _(23) Other date(s), including date of filing complete
specification following provisional specification and date
of exhibition

  (24) Date from which industrial property rights may have
effect

  (25) Language in which the published application was
originally filed

  (26) Language in which the application is published

 (30) Priority Data

  _(31) Number(s) assigned to priority application(s)

  _(32) Date(s) of filing of priority application(s)

  _(33) WIPO Standard ST.3 Code identifying the national
patent office allotting the priority application number or
the organization allotting the regional priority application
number; for international applications filed under the PCT,
the code "WO" is to be used

  (34) For priority filings under regional or international
arrangements, the WIPO Standard ST.3 Code identifying at
least one country party to the Paris Union for which the
regional or international application was made

  Notes:(i) With the proviso that when data coded (31),
(32), and (33) are used together and on a single line,
category (30) can be used, if so desired. If an

 ST.3 Code identifying a country for which a regional or
international application was made is published, it should
be identified as such using INID

 Code (34) and should be on a line separate from that of
elements coded (31), (32) and (33) or (30).

  (ii) The presentation of priority application numbers
should be as recommended in WIPO Standards ST.10/C and in
ST.34.

  (40) Date(s) of making available to the public

  __(41) Date of making available to the public by
viewing, or copying on request, an unexamined  document, on
which no grant has taken place on or before the said date.

  __(42) Date of making available to the public by
viewing, or copying on request, an examined document, on
which no grant has taken place on or before the said date

  __(43) Date of publication by printing or similar
process of an unexamined document, on which no grant has
taken place on or before the said date

  __(44) Date of publication by printing or similar
process of an examined document on which no grant has taken
place on or before the said date

  __(45) Date of publication by printing or similar
process of a document on which grant has taken place on or
before the said date

  (46) Date of publication by printing or similar process
of the claim(s) only of a document

  __(47) Date of making available to the public by
viewing, or copying on request, a document on which grant

has taken place on or before the said date

  Note :  __ Minimum data element for patent documents
only, the minimum data requirement being met by indicating
the date of making available to the public the document
concerned

  (50) Technical information

  _(51) International Patent Classification

  (52) Domestic or national classification

  (53) Universal Decimal Classification

  _(54) Title of the invention

  (55) Keywords

  (56) List of prior art documents, if separate from
descriptive text

  Note: Attention is drawn to WIPO Standard ST.14 in
connection with the citation of references on the front page
of patent documents and in search reports attached to patent
documents.

  (57) Abstract or claim

  (58) Field of search

  (60) References to other legally related domestic patent
documents including unpublished applications therefor

  _(61) Number and, if possible, filing date of the
earlier application, or number of the earlier publication,
or number of earlier granted patent, inventor's certificate,
utility model, or the like to which the present document is
an addition

  _(62) Number and, if possible, filing date of the
earlier application from which the present document has been
divided out

  _(63) Number and filing date of the earlier application
of which the present document is a continuation

  _(64)  Number  of  the  earlier  publication  which  is
"reissued"

  (65) Number of a previously published patent document
concerning the same application

  Note : (i) Priority data should be coded in category
(30)

  (ii) Code (65) is intended primarily for use by countries
in which the national laws require that re - publication
occurs  at  various  procedural  stages  under  different
publication numbers and these numbers differ from the basic
application numbers.

  (70)  Identification  of  parties  concerned  with  the
document

  __(71) Name(s) of applicant(s)

  (72) Name(s) of inventor(s) if known to be such

  __(73) Name(s) of grantee(s)

  (74) Name(s) of attorney(s) or agent(s)

  __(75)  Name(s)  of  inventor(s)  who  is  (are)  also
applicant(s)

  __(76)  Names(s)  of  inventor(s)  who  is  (are)  also
applicant(s) and grantee(s)

  Notes : (i)  __ For documents on which grant has taken
place on or before the date of making available to the
public, and gazette entries relating thereto, the minimum
data requirement is met by indicating the grantee, and for
other documents by indicating the applicant).

  (ii) (75) and (76) are intended primarily for use by
countries in which the national laws require that the
inventor and applicant are normally the same. In other cases
(71) and (72) or (71), (72) and (73) should generally be
used.

  (80) Identification of date related to International
Conventions other than the Paris Convention

  (81) Designated State(s) according to the PCT

  (83)  Information  concerning  the  deposit  of
microorganisms; e.g., under the Budapest Treaty

  (84) Designated contracting states under regional patent
conventions

  (85) Date of fulfillment of the requirements of article
22 and/or 39 of the PCT for introducing the national
procedure according to PCT

  (86) Filing data of the regional or PCT application; i.e.
application filing date, application number, and optionally,
the  language  in  which  the  published  application  was
originally filed

  (87) Publication data of the regional or PCT application;
i.e. publication date, publication number, and optionally,
the language in which the application is published

  (88) Date of deferred publication of the search report

  (89) Document number, date of filing, and country of
origin of the original document according to the CMEA
Agreement on Mutual Recognition of Inventors Certificates
and other Documents of Protection for Inventions.

  Notes : (i) The codes (86) and (87) are intended to be
used:

  - on national documents when identifying one or more of
the relevant filing data or publication data of a regional
or PCT application, or

  - on regional documents when identifying one or more of

the relevant filing data or publication data of another
regional or PCT application.

  (ii) all data in code (86) should be presented together
and preferably on a single line.

  (iii) all data in code (87) should also be presented
together and preferably on a single line.

901.05(c)  Obtaining Copies [R - 3]

  >Until October 1, 1995,< the Patent and Trademark Office
*>received<  copies  of  the  published  specifications  of
patents  and  patent  applications  from  nearly  all  the
countries which issue them in printed form **. >The Patent
and Trademark Office now receives all foreign patents from
these countries in the form of CD - Rom disks. The foreign
patents so obtained are available to examiners from the
foreign patents branch of the Scientific and Technical
Information Center (STIC) through the Foreign Patent Access
System (FPAS).< The U.S. has agreements with these countries
to exchange patent documentation.

  **>Until October 1995 it was the< practice in the Patent
and Trademark Office to classify and place only a single
patent family member for each invention in the Examiner
search files. In addition, all non - English language patent
documents placed in the Examiner files **>were< accompanied
>, to the extent possible,< by an English language abstract.
For countries where the specification is printed twice, once
during the application stage and again after the patent has
been granted, only the first printing *>was< in general
placed in the search files, since the second printing
ordinarily does not vary from the first as to disclosure.

  Copies of various specifications not included in the
search files, whether non - English - language patent
documents  or  documents  not  printed  or  available  for
exchange, may come to the examiner's attention. For example,
they may be cited in a motion to dissolve an interference,
be cited by applicants, or turn up in an online search. Upon
request, the Scientific and Technical Information Center
will obtain a copy from its extensive collection, or if
necessary, from the patent office of the particular country.
In the case of unprinted patent documents, the Scientific
and Technical Information Center will request that the date
of  granting  and  the  date  the  specification  was  made
available to the public be indicated on the copies provided
by the country of origin.

  Examiners  can  order  copies  of  any  foreign  patent
documents from the Foreign Patent Branch. If examiners so
choose, they can make copies themselves. The most current
patent documents are accessible through the Foreign Patent
Access System (FPAS), a CD - ROM - based local area network
that allows public and PTO users to look up, view, and print
foreign documents. Older documents can be found on microfilm
in the Microfilm Room or in the paper collection in the
stacks. Examiners may place a photocopy or translation in
the shoes of the class which he or she examines if the
patents are particularly relevant. (MPEP § 905.01 and §
903.03).

901.05(d)  Translation

  Examiners may consult the translators in the Translation
Branch of the Scientific and Technical Information Center
(STIC) for oral assistance in translating foreign patents or
literature that are possible references for an application
being  examined.  Examiners  may  also  request  written
translations  of  pertinent  portions  of  references  being
considered for citation or already cited in applications.
(See MPEP § 901.06(a), Translations, and MPEP § 903.03,
Classification of Foreign Patents.)

  Examiners can request written translations at any point
in  the  examination  process,  at  the  discretion  of  the
individual  examiner,  but  are  encouraged  to  use  oral
assistance and/or language reference resources as much as
possible in the early phases of examination.

  Equivalent versions of foreign specifications, that is,
members of the same patent family, are often available in
English  or  other  languages  known  to  the  examiner.  In
addition, copies of previously translated documents are
stored in the Translation Branch. Before any translation
request is processed, the staff of the Translation Branch
checks for equivalents or previous translations. The staff
of STIC's Foreign Patents Branch or the Translation Branch
can assist examiners in locating equivalents or abstracts.
(See MPEP § 901.06(a), STIC Services - Foreign Patent
Services.)

901.06  Nonpatent Publications [R - 1]

  All printed publications may be used as references, the
date to be cited being the publication date. Recognized
abbreviations of names of periodicals may be used in their
citation (MPEP § 707.05(e)). >See MPEP § 2128 - § 2128.02.<

  There are some publications kept or circulated in every
group and each assistant examiner should ascertain which are
available in his or her group and whether or not any of them
is likely to bear on any assigned class.

  Where a nonpatent literature reference with a document
identification number is cited, the identification number
and the class and subclass should be included on form PTO -
892.

  The citation should be as follows: (S)0840001) Winslow,
C.E.A. Fresh Air and Ventilation N.Y., E.P. Dutton, 1926, p.
97 - 112, TH 7653. W5, 315 / 22.

901.06(a)  Scientific and Technical Information Center
(STIC) [R - 3]

  The  Scientific  and  Technical  Information  Center,
formerly known as the Scientific Library , is located at
CP3/4,  Room  2C01.  The  STIC  maintains  three  additional
satellite information centers: the Biotechnology/Chemical
Library in CM1, Room 1C19, the Electronic Information Center
in CPK2, Room 4B40, and the >Lutrelle F. Parker, Sr.
Memorial< Law Library in CPK1, Room 568.

 35 U.S.C. 8.  Library.

  The Commissioner shall maintain a library of scientific
and other works and periodicals, both foreign and domestic,
in the Patent and Trademark Office to aid the officers in

the discharge of their duties.

  Technical literature, foreign patent documents, and
reference  and  online  search  services  available  in  the
Scientific and Technical Information Center (STIC) are all
important resources for the patent examiner to utilize.
These resources provide material which must be known or
searched to determine whether claims of applications are
directly anticipated and therefore unpatentable under the
provisions of 35 U.S.C. 102. STIC handbooks, textbooks,
periodicals, reports, and other materials assist examiners
in deciding the question of patentable invention in cases in
which the primary search indicates that there is some
novelty as compared to any single reference in the art (35
U.S.C.  103).  These  resources  enable  the  examiner  to
determine whether the features novel in the particular
combination searched would be obvious to a person skilled in
the art from the general state of knowledge as reflected in
the technical literature.

  STIC COLLECTIONS

 1. Books

  The  Scientific  and  Technical  Information  Center
carefully selects and purchases primarily English - language
publications in all fields of applied technology. There is a
modest collection in French and German, mostly in the field
of chemistry. Collections of books and trade catalogs are
also purchased by STIC for permanent location in specific
examining groups. For instance, the Design Patent Group has
a great many manufacturer's catalogs. Books may be ordered
by examiners for location in the groups by addressing a
memorandum to the Manager of STIC via the group director.
The STIC is also developing a collection of materials in
electronic formats (i.e., CD - ROM) in order to provide more
timely delivery of requested references. The locations of
all acquired publications are recorded in STIC so that users
will know where to look for a particular publication, be it
in the Information Center or in an examining group. All
publications,  regardless  of  location,  are  processed  in
STIC's Technical Services Branch.

  Reference works including encyclopedias, dictionaries,
handbooks, and abstracting and indexing services are also
available in the Information Center to assist examiners in
finding information pertinent to the subject matter of a
patent  application.  STIC  does  not  circulate  reference
materials. Books in the reference collection are so labeled.

  The staff of the Scientific and Technical Information
Center  makes  every  effort  to  obtain  current,  useful
publications.  However,  all  suggestions  for  additional
purchases  that  come  in  from  the  Examining  Corps  are
welcomed.

 2. Periodicals

  Approximately 1,300 technical periodical titles are
received in STIC, including publications of many important
scientific and technical societies. Incorporated into the
collection  are  a  number  of  titles  pertinent  to  the
examination of design patent applications and titles of
interest to nonexamining areas of the PTO. Many of the
periodical holdings in STIC are in microfilm or CD - ROM

formats.

  Requests for the purchase of new subscription titles are
accepted at any time throughout the year, with subsequent
purchase dependent on demonstrated need and availability of
funds. STIC staff is alert to new periodical titles and
often acquires sample copies which are sent to appropriate
examining groups for review and recommendation.

  Current  issues  of  periodicals  are  arranged
alphabetically and located on shelves near the reference
collection. Bound periodicals are interfiled with the book
collection  by  their  library  classification  numbers.
Periodicals  on  microfilm  and  CD  -  ROM  are  housed  in
cabinets. A list of periodicals is available in STIC.

 3. Foreign Patent Documents

  The United States Patent and Trademark Office receives
foreign patent documents through exchange agreements with
almost all countries that print their patent documents. This
makes STIC's collection of foreign patent documents the most
comprehensive in the United States.

  The collection is located in the Foreign Documents
Division. The most current part of the collection is made
available to examiners and the public through the Foreign
Patent Access System (FPAS), a CD - ROM - based local area
network in STIC that allows users to look up, view and print
documents. The documents from the major industrial countries
for the period 1969 to 1990 are found on 16 mm microfilm in
the Microfilm Room. The earliest patent documents, back as
far as 1617, and documents from smaller countries are found
in the paper collection in the stacks or at remote sites.

  Most  foreign  countries  issue  official  patent  and
trademark journals corresponding to the Official Gazette of
the United States Patent and Trademark Office . These
journals are shelved under country name. Most countries
issue name indexes; some also issue classified indexes.
Indexes are shelved with the journals. Much of the index
information is also available on FPAS.

  The  official  journals  of  a  few  countries  include
abstracts of the disclosures of the patents announced or
applications published.

  In addition, the Foreign Patents Branch acquires English
language abstracts of foreign patent documents for selected
countries published by Derwent. Holdings are in 16mm format
from 1972 to date. Earlier holdings are in paper. The Branch
also has unexamined Japanese patent applications abstracted
by the Japanese Patent Office, the Patent Abstracts of
Japan, from 1977 to date in paper.

  Many countries; e.g., China, are providing abstracts of
their patent documents on CD - ROM. These abstracts will
also be accessible through FPAS.

  Many technical abstracting publications include patent
literature; the most notable of these is Chemical Abstracts.
The  annual  indexes  of  Chemical  Abstracts  include,  in
addition to the subject matter index, an author index in
which the patentee's and inventor's names appear, and patent
number lists; corresponding patents of different countries

are identified. Specifications of unprinted, or as yet
unprinted,  patents  may  be  included  in  some  of  these
abstracting services.

 4. Special Collection

  Biotechnology/Chemical

  With the formulation of a new biotechnology examining
group in 1988 came a mandate to improve STIC resources in
this area. The former Chemical Library, located with the
biotechnology and chemical examining groups, was replaced by
the Biotech/Chemical Library. The library staff has been
developing *>a< collection to reflect the needs of the
examiners in the biotechnology and chemical arts. Besides
the usual journals and books in print, the library has been
collecting backfiles of journals in microfilm and in CD -
ROM format.

  Government Publications

  In 1986, the Scientific and Technical Information Center
was designated a Federal Depository Library which means that
it now receives a selected number of documents published by
various U.S. government agencies. Many of these publications
are on microfiche or CD - ROM. The primary search aids are
the Monthly Catalog of U.S. Government Publications  and the
List of Classes . All the documents received in the STIC
have been cataloged into the STIC's online catalog system
and interfiled with the main collection.

  Project XL Materials

  This  collection  of  books,  games,  puzzles,  and
manipulatives relate to the teaching of thinking skills
whether they are classified as creative thinking, critical
thinking, decision making, innovation and invention, or
problem - solving skills. The collection is primarily aimed
at, but not limited to, elementary education and is a result
of a PTO initiative in the mid - 1980's to emphasize the
importance of encouraging creativity in America's youth.
Access to the collection is through STIC's online catalog.
All Project XL materials are available for loan.

 HOW TO LOCATE MATERIALS IN STIC

The STIC Online Catalog

  The  primary  vehicle  for  locating  books  and  other
materials is the STIC online catalog. The online catalog
contains  a  record  of  all  materials  held  by  the  STIC
collections,  including  location,  call  number,  and
availability. Workstations for accessing the online catalog
are located in the STIC branches.

  Materials acquired by the STIC are classified according
to the Library of Congress classification system, which
employs a combination of letters and numbers. Books and
bound periodicals are intershelved in the stacks according
to this classification system. New unbound periodical issues
are  shelved  in  a  separate  area  of  each  branch,  in
alphabetical order by title.

  LOAN POLICY

  All STIC materials except noncirculating items may be
charged  out  at  the  Circulation  Desk.  (Noncirculating
material includes reference publications, foreign patent
documents, and microfilm.) Books circulate for a period of 4
weeks and can be renewed on request. Extended loan periods
are available on request. Examiners may use the Department
of Commerce Libraries as well as other Federal Government
libraries in the area. STIC's staff can answer questions
regarding the accessibility and lending practices of other
libraries. If books are needed from another library for
official use, the request should go through the Scientific
and Technical Information Center by means of an interlibrary
loan request. (See "Interlibrary Loan" under STIC SERVICES.)

  STIC SERVICES

  1. Reference Services

  The staff of the Scientific Reference Branch, the
Electronic Information Center, the Patent Law Library, and
the  Biotechnology/Chemical  Information  Branch  assist
examiners in the use of the STIC. Upon request, they provide
guidance on finding information in the collection. If any
problems are encountered in locating materials, using the
catalogs  or  indexing  services,  or  finding  answers  to
informational needs, please check with the staff. They are
ready and willing to assist. Queries may be made in person
or by telephone.

  2. Online Searching

  Online computer data base searching is provided by the
Scientific  Reference  Branch,  the  Electronic  Information
Center,  the  Patent  Law  Library,  and  the
Biotechnology/Chemical Information Branch. All branches have
access via modems or the in - house system to a number of
vendors' commercial data base search systems. These vendors'
databases extensively cover the field of knowledge and make
it possible for online searchers to retrieve bibliographic
information  with  abstracts,  chemical  structures,  DNA
sequences, and sometimes the full text of the articles,
depending  on  the  database.  This  online  search  service
provides a valuable screen of the nonpatent literature for
the examiner intending to make a search of the secondary
sources of his/her area of interest.

  Vendors accessed by STIC staff include DIALOG, ORBIT,
DOE/RECON,  Chemical  Abstracts  Services  (STN),  INPADOC,
DataTimes, DATASTAR, DTIC/DROLS, IntelliGenetics, and Mead
Data Central. When they are identified as meeting the needs
and requirements of the Office, new data base vendors are
added. A list of the data bases offered by each vendor is
available in the vendors' manuals located in each STIC
branch.  Examiners  may  request  a  computer  search  by
submitting  a  request  form  to  the  appropriate  branch.
Searches are usually completed and ready for pickup within 1
- 2 days.

  Examiners are allowed to conduct searches of online
commercial databases independently of STIC staff. Training
is  provided  through  the  Patent  Academy  and  individual
assistance is available from the STIC staff, especially for
searching chemical structures and DNA sequences.

  Online searching of nucleic and amino acid sequences is

conducted  by  the  staff  of  the  Biotechnology/Chemical
Information Branch through the use of an in - house computer
network developed for this purpose. Examiners who wish to
access the Automated Biotechnology Sequence Search (ABSS)
system located in Group 1800 must apply through their SPE to
the Biotechnology/Chemical System Branch for an ID and
password. On an as needed basis, introductory classes are
conducted by STIC staff to assist examiners in understanding
the sequence search results.

  3. Foreign Patent Services

  The staff of the Foreign Patents Branch of the Foreign
Document Division is available to assist with any problem or
informational need regarding foreign patent searching or
foreign patent documents.

  Online search services on Orbit/Questel and Dialog (on
the basis of Derwent databases) or INPADOC are performed for
patent examiners by the Foreign Patents Branch. The services
provided include: identification of English - language or
preferred - language equivalents; determination of priority
dates and publication dates; searches by inventor name or
abstract  number;  other  patent  family  and  bibliographic
searches; and foreign classification information.

  Examiners  who  choose  to  perform  their  own  patent
searches after receiving appropriate training through the
Patent  Academy  can  consult  foreign  patent  experts  for
difficult searches. In using the Derwent versus the INPADOC
databases,  examiners  should  be  aware  that  the  systems
overlap in coverage and have other similarities, but also
differ in format, kinds of searches that can be performed,
and patent document and country coverage. Derwent maintains
superior  coverage  of  chemical  patent  documents,  while
INPADOC includes earlier documents and more countries and
has more extensive coverage of mechanical and electrical
patent documents than Derwent databases.

  The staff of the Foreign Patents Branch can supplement
the online searching effort with manual searches of foreign
patent journals, including Official Gazette(s) , patent
concordances,  and/or  indexes.  The  staff  also  provides
training in the use of the Foreign Patents Access System
(FPAS)  and  information  of  use  of  the  foreign  patent
collections.

  SPECIAL NOTE: Members of the public can order copies of
foreign patent documents. Procedures are outlined in a
brochure entitled, "Foreign Patent Document Copy Orders"
available in STIC.

  4. Translations

  Examiners  may  consult  the  translators  in  the
Translations Branch of STIC's Foreign Document Division for
oral assistance in translating foreign language patents and
other literature sources that are possible references for
applications being examined. Oral translations are performed
for the major European languages and for Japanese. Examiners
may also request written translations of pertinent portions
of references being considered for citation or already cited
in  applications.  Full  translations  are  also  made  upon
request. Written translations can be made from virtually all
foreign languages into English.

  There  is  a  computerized  database  located  in  the
Translations Branch listing all translations which have been
made  by  the  Branch,  and  a  few  others  gathered  from
miscellaneous  sources.  This  database  lists  over  30,000
translations of foreign patents and articles, all of which
are located in the Translations Branch. Patent translations
are indexed by country and patent number; articles are
indexed by language and author or title. Any copies of
translations coming to examiners from outside the Office
should be furnished to the Translations Branch so that it
may make copies for its files.

  5. Interlibrary Loans

  When needed for official business purposes, STIC will
borrow  materials  not  available  in  -  house  from  other
libraries. Requests are initially submitted to the Reference
Fulfillment Branch. Those that can be filled by libraries in
the metropolitan area are handled by staff who go out on a
daily basis to retrieve requested materials. Those that must
be  filled  by  libraries  elsewhere  in  the  country  are
requested  electronically  via  numerous  networks  and
commercial vendors. Law books cannot be borrowed by STIC for
use by examiners in connection with law courses.

  When a book or periodical is borrowed from another
library, and cited in an Office action, a photocopy of the
portion cited should be placed in an appropriate class and
subclass. This class and subclass should be cited in the
Office action.

  STIC also loans its materials to other libraries around
the country so that occasionally an examiner may find that
the item he/she desires is unavailable. Materials which are
out on interlibrary loan may be recalled for the examiner if
required for immediate use.

  6. On - Site Photocopying

  For the convenience of the Examining Corps, photocopy
machines are available for employee use in STIC. These are
to be used for photocopying STIC materials which do not
circulate, or for materials which examiners do not wish to
checkout.

  7. Obtaining Publication Dates

  Requests pertaining to the earliest date of publication
or first distribution to the public of publications should
be  made  to  the  Scientific  Reference  Branch  or  the
Biotechnology/Chemical  Information  Branch.  For  U.S.
publications, the staff can obtain the day and month of
publication  claimed  by  the  copyright  owner.  The  same
information can be obtained for foreign publications through
correspondence although it will take a little longer.

  8. Tours

  Special tours of the STIC can be arranged for examiners
or for outside groups. Contact the Scientific Reference
Branch.

  9. STIC Brochure

  A  brochure  detailing  location,  hours,  holdings,
telephone  numbers,  and  services  of  the  Scientific  and
Technical Information Center is available from STIC.

901.06(b)  Borrowed Publications

  See MPEP § 901.06(a), Interlibrary Loans.

901.06(c)  Alien Property Custodian Publications

  Applications vested in the Alien Property Custodian
during World War II were published in 1943 even though they
had not become patents.

  Care must be taken not to refer to these publications as
patents; they should be designated as A.P.C. published
applications.

  An A.P.C. published application may be used by the
examiner  as  a  basis  for  rejection  only  as  a  printed
publication effective from the date of publication, which is
printed on each copy.

  The manner of citing one of these publications is as
follows:  A.P.C.  Application  of  ............,  Ser.  No.
............, Published ............

  The Public Search Room contains a complete set of A.P.C.
published  applications  arranged  numerically  in  bound
volumes.

901.06(d)  Abstracts, Abbreviatures, and Defensive
Publications

  Abstracts and Abbreviatures are Patent and Trademark
Office publications of abandoned applications. Defensive
Publications (the O.G. defensive publication and search
copy) are Patent and Trademark Office publications of a
provisionally abandoned application wherein the applicant
retains his rights to an interference for a limited time
period of 5 years from the earliest effective U.S. filing
date. On May 8, 1985, the Patent and Trademark Office
stopped accepting Defensive Publication requests and began
accepting applications for Statutory Invention Registrations
(SIRs), although there was an overlap period where both
Defensive Publications and Statutory Invention Registrations
were processed; see MPEP § 711.06 and § 711.06(a). Statutory
Invention Registrations have now replaced the Defensive
Publication program. Statutory Invention Registrations are
numbered with document category "H," beginning with "H1."
Defensive Publications and Statutory Invention Registrations
are included in subclass lists and subscription orders.

  Distinct  numbers  are  assigned  to  all  Defensive
Publications published December 16, 1969 through October
1980, for example.

  For  Defensive  Publications  published  on  and  after
November 4, 1980, a different numbering system is used.

  A conversion table from the application serial number to
the distinct number for all Defensive Publications published
before December 16, 1969 appears at 869 O.G. 687. The
distinct numbers are used for all official reference and
document copy requirements.

901.07  Arrangement of Art in Examining Groups [R - 3]

  In the examining groups, the U.S. patents are arranged
in shoes bearing appropriate labels, each showing the class,
subclass,  and  usually  the  lowest  and  highest  numbered
patents put in the respective shoe. The patents **>are<
arranged in numerical order. >White labels denote U.S.
patents, pink labels denote foreign patents filed according
to U.S. classifications, blue labels denote non - patent
literature, and yellow labels denote foreign patents filed
according to IPC classifications.

  One copy of a U.S. patent is designated as "original"
and is classified in a specific subclass, based on the
controlling claim. Other copies may be placed in other
subclasses  as  cross  -  references,  based  on  additional
claimed inventions and/or pertinent unclaimed disclosure.<**
Cross - reference copies **>are< filed in **>numerical
order<  along  with  the  copies  of  *original  patents  to
simplify the tasks of searching and filing.

  Copies of foreign patents are usually kept in shoes
separate from and immediately following the U.S. patents.

  All foreign patent documents (patents and published
applications) involved in a reclassification project issued
*>between< January 1, 1974 >and October 1, 1995< are filed
by a computer - generated sequence number within each
subclass. Each such foreign patent document has the year of
publication indicated in the upper right - hand corner of
the front page.**

  Nonpatent publications or photocopies thereof containing
disclosures for particular subclasses, if numerous, should
be filed in shoes following the foreign patents; otherwise,
they should be filed at the bottom of the last shoe of
foreign patents.

  >In most reclassification projects undertaken after
October  1,  1995,  foreign  patents  associated  with  the
reclassified art have not been reclassified into the new
classification schedule created for the U.S. patents.

  Foreign patents in this category are available for
searching  in  a  "foreign  patent  art  collection",  which
appears at the end of the class which includes the newly
created classification schedule. The "foreign patent art
collection" is identified by reference to the subclass
portion of the main schedule to which it pertains. Its
subclasses are characterized by the prefix "for" followed
immediately by a three digit number.

  The  "foreign  patent  art  collection"  maintains  the
foreign patents classified in the former classification
schedule, i.e., the schedule which was the subject of the
reclassification project. At the end of each subclass in the
"foreign  patent  art  collection",  there  appears  in
parentheses the subclass number under which the foreign
patents had been classified prior to the reclassification
project.

  Subclass  definitions  for  the  "foreign  patent  art
collection", exactly corresponding to those of said former
classification schedule, are maintained.<

901.08  Borrowing References

  The search files in each examining group should at all
times be complete. Where they are incomplete, the examiners
using such files and relying on their completeness may miss
valuable  references.  References  removed  from  the  files
whether for use in the group or otherwise should, of course,
be promptly returned.

901.09  Missing Copies - Replacement

  To expedite the handling of requests for replacement
copies  and  thereby  ensure  the  quickest  response,  the
following routing procedures should be adhered to:

  (1) Use designated collection drops within each group for
copy orders.

  (2) Clerical personnel from the Office of Classification
Support (OCS) will visit designated collection drops at
least  twice  each  week  to  pick  up  PTO  -  14C  orders.
Alternatively,  the  orders  may  be  mailed  or  otherwise
delivered to the Search File Improvement Division, OCS,
currently located in Crystal Mall, Building 2, Room 967.

  The attorneys' drop slot at the Public Service Window
should not be used nor should the forms be mailed to Copy
Fulfillment Services as consequent rerouting to Office of
Classification  Support  for  processing  will  result  in
unnecessary delay.

  All replacement copies ordered through the PTO - 14C
program  are  returned  to  the  requesting  examiner  as
notification of order fulfillment. The examiner should then
place the copies in the designated file drop location for
filing by the contractor in the search file.

 **  Double Click here to see the image  **

902  Search Tools and Classification *>Information<[R -
3]

902.01  Manual of Classification [R - 3]

  The Manual of Classification is the key to the U.S.
Patent Classification System. It is published in full as the
Basic Manual every 2 years. Basic Manuals reflect current
classifications as of December of even - numbered years.
Revisions to the Basic Manual occur at 6 - month intervals.
Pages of the Manual revisions are inserted as replacements
to update the previous versions.

  There  are  over  400  classes  in  the  U.S.  Patent
Classification System, each having a title descriptive of
its subject matter and each being identified by a class
number.  Each  class  is  subdivided  into  a  number  of
subclasses. Each subclass bears a descriptive title and is
identified by a subclass number. The subclass number may be
an integral number or may contain a decimal portion and/or
alpha characters. A complete identification of a subclass
requires both the class and subclass number and any alpha or
decimal designations; e.g., 417 / 161.1 A identifies Class
417, Subclass 161.1A.

  The  Manual  of  Classification  contains  ordered
arrangements of the class and subclass titles, referred to
as class schedules. These titles are necessarily brief,
although they are intended to be as suggestive as possible
of subject matter included. Therefore, it is best not to
depend exclusively upon titles to delineate the subject
matter *>encompassed< by a class or subclass. Reference to
respective definitions and notes is essential. If a search
is to be expeditious, accurate, and complete, the Manual of
Classification should be used only as a key to the class or
subclass definition and appended notes.

  The Manual of Classification has the following parts:

 **>(1) A list of classes revised in the most recent
revision to the Manual and the reason for the revision to
each class.

 (2) A list of the contents of the Manual showing the
current page date for each class and the year in which the
class was originally established.

 (3) Overview of the classification system.

 (4)  A  hierarchical  arrangement  of  class  titles
organized into three main groups by related subject matter.
It should be noted that this hierarchy is to be used to
determine document placement only as a last resort, (i.e.,
when none of the other classification criteria, such as
comprehensiveness, etc., allow placement. This part also
includes an exact hierarchical listing of the synthetic
resin and chemical compound classes.

 (5) A list, in numerical order, of each Examining
Group and Art Unit indicating Examining Group personnel,
their location, and phone numbers.

 (6)  A  list,  in  numerical  order,  by  art  unit
indicating the classification(s) assigned to each.

 (7) A list of classifications in numerical order by
class number giving the class title, the art unit to which
the art is assigned, and the examiner search room in which
the art can be found.

 (8) A list of classes in alphabetical order by class
title with associated class numbers.

 (9) The class schedule for PLANTS.

 (10) Class schedules for utility patent classes
arranged in numerical sequence by class number.

 (11)The class schedules for the Design classes.

  The  Manual  of  Classification  is  available  to  PTO
personnel on - line in the "Examination ToolKit" window.<

902.01(a)  Index to the U.S. Patent Classification
System [R - 3]

  The Index to the U.S. Patent Classification System is an
alphabetic listing of technical and common terms referring
to specific classes and subclasses of the U.S. Patent

Classification System. It is intended as an initial entry
into the system and should not be considered exhaustive.
*>All appropriate< class *>schedules< should be scanned for
specifically related subclasses and the *>definitions< and
associated notes of the *>pertinent< classifications must
also be reviewed, even when the citation found in the Index
appears to be restricted to a specific subject matter area.

  The  Index  is  published  every  year  reflecting
classification as of December of the year. Suggestions or
changes to the Index are encouraged and should be directed
to the Classification Groups.

  >The Index is available to PTO personnel on - line in
the "Examination ToolKit" window.<

902.02  Class and Subclass Definitions [R - 3]

  All of the utility classes (i.e., classes devoted to
technology) and the plant class have definitions. The design
classes do not have definitions.

  Definitions state the subject matter of the classes and
subclasses much more explicitly than it is possible to state
in  short  class  and  subclass  titles.  A  study  of  the
definitions  is  essential  to  determine  the  proper
classification of subject matter within the U.S. Patent
Classification System.

  >A complete set of definitions of all classes and
subclasses in the U.S. Classification System is available to
PTO personnel on - line in the "Examination ToolKit" window.
These  definitions  are  revised  every  June  and  every
December.<

  Definitions are available as full sets on microfiche.
The microfiche is revised every 6 months, with full (basic)
sets being issued in December of each even numbered year.
Each examining group has at least one set of definitions on
microfiche and a microfiche reader. There are several sets
of microfiche and a paper set of definitions in the Public
Search Room.

  Definitions of individual classes in paper form or on
floppy disc are available from the Office of Classification
Support. It is noted that classification orders frequently
affect existing definitions. Personal sets of definitions
used by examiners should be periodically revised to reflect
these changes.

902.02(a)  Definition Notes

  Many of the definitions have accompanying notes. These
notes are of two types: notes that supplement definitions by
explaining terms or giving examples, and notes referring to
related disclosures located in other classes or subclasses.

  These latter notes are termed search notes and are
helpful in explaining the limits of a class or subclass.
They generally state the relationship to, and difference
from, other identified subject matter collections. It is
intended that each note should guide a user to the extent
necessary to reach a decision either to include or exclude
an area containing relevant subject matter.

  Search notes are not exhaustive and should be regarded
as suggestive of additional fields of search, but not as
limiting the search. Additionally, since a search note which
applies to a particular subclass is rarely repeated for
subclasses indented thereunder, it is advisable to review
the search notes of all parent subclasses.

902.02(b)  Search Cards

  Many older subclasses have "search cards" containing the
subclass definition in the first shoe of each defined
subclass in both the examining group and the Public Search
Room.

902.03  Classification Information

  Current classification information for U.S. patents is
available from the sources indicated below.

902.03(a)  Master Classification File (MCF) on Microfilm

  A patent number index of domestic patents giving their
current original and cross - reference classification is
available on microfilm in the Public Search Room. Patent
numbers are arranged in both numeric and classified array.
The microfilm is updated semiannually, in June and December.

902.03(b)  Patent Index

  Original  and  cross  -  reference  classification
information for individual patents can be obtained by use of
computer terminals located in the Public Search Room or by
calling the Patent Index telephone service, 305 - 5227. This
data  is  updated  bimonthly  with  new  issues  and
reclassifications.

902.03(c)  Subclass Listings

  Computer printout listings of patents contained in
subclasses may be obtained by request from the Office of
Classification Support. Listings can be inclusive or limited
by use of a cutoff date or patent number. This data is
updated bimonthly with new issues and reclassifications.

902.03(d)  **>Patent Information and Search Tools: the
Cassis CD - Rom Series< [R - 3]

  **>Access to a great deal of patent information as well
as various search tools is available in the Cassis CD - ROM
series. These include:

 Patents CLASS: Provides a list of all classifications of a
patent number and a list of all patent numbers in a
classification, showing ORs and XRs.

 Patents BIB: Bibliographic information for utility patents
issued since 1969 (other patents, since 1977), including
issue date, title, current classifications, assignee at time
of issue, status (withdrawn, reexamined, extended term,
certificate  of  correction  issued  or  expired  due  to
nonpayment of maintenance fee), and abstracts for the most
recent 2 1/2 - 3 years depending on disc space.

 Patents ASSIGN: Shows assignment of patent rights recorded
at the USPTO from August 1980 to present.

 Patents ASSIST: This disc provides a variety of files:
Manual  of  Classification;  Manual  of  Patent  Examining
Procedure; Index to the U.S. Patent Classification System;
Attorneys and Agents Registered to Practice before the
USPTO;  Classification  Orders  Index  showing
Classes/subclasses abolished or established since 1976; IPC
-  USPC  Concordance;  Classification,  Art  Unit,  SPE  and
Telephone Number (CAST) showing which Art Units examine
which art according to classification; Class Definitions;
and Patentee - Assignee File showing assignment of patent
rights at time of issue since 1969 for utility patents
(other patents, since 1977), and inventor names since 1975.

  The above CD - ROMs are text - searchable. Search
results can be viewed on - screen, printed, or down - loaded
to diskette. Patents CLASS and Patents BIB are updated with
new information every two months; Patents ASSIGN and Patents
ASSIST are updated every three months.

  In addition to the text - searchable discs, USA Pat
offers full facsimile images on CD - ROM of U.S. patents
issued weekly. The backfile includes patents issued since
January 1994. Intended as a document delivery system, USAPat
allows  retrieval  of  patents  by  document  number  only.
Excellent printed copies can be obtained using a laser
printer.<

902.03(e)  Automated Patent System (APS)

  APS is the PTO online system which allows access to the
full text of U.S. patents granted since 1970. In addition,
APS provides access to current classification information
for all U.S. patents.

902.04  Classification Orders

  Classification Orders issue once a month, each Order
detailing  the  changes  resulting  from  a  classification
project effected that month.

  Since classification projects issue monthly throughout
the year, orders are used to bridge the gap between the time
a project issues and the time the other search tools
(Manual, Index, Definitions) are updated.

  The order includes the following:

  1. Either the new class schedules or changes to existing
class schedules necessitated by the project.

  2. The changes to the definitions necessary to support
the changes in 1, above.

  3. Source and disposition lists showing how the old art
has been distributed into the newly established subclasses.

  4. A revised concordance showing the relationship between
the newly established subclasses and their International
Patent Classification (IPC) counterparts.

  Classification Orders are distributed to classifiers and
examiners associated with the reclassification project of
the order, to Patent Depository Libraries, and to the Public
Search Room. Copies can be obtained through the Group Post

Classifier or from the Office of Classification Support.

902.04(a)  Reclassification Alert Report

  The Reclassification Alert Report is distributed to
examiners, classifiers, and technicians each quarter. It
lists numerically the classes and subclasses affected by
classification  orders  which  issued  during  the  quarter,
indicating  if  the  classifications  were  established,
abolished, or had definition changes.

  Copies of definitions of newly established subclasses,
definition  changes  to  existing  subclasses,  or  entire
classification orders are available from the Office of
Classification Support.

903  Classification

903.01  Statutory Authority [R - 3]

  The statutory authority for establishing and maintaining
a classification >system< is given in the following statute,
which states:

 35 U.S.C. 9.  Classification of patents.

  The  Commissioner  may  revise  and  maintain  the
classification by subject matter of United States letters
patent, and such other patents and printed publications as
may  be  necessary  or  practicable,  for  the  purpose  of
determining with readiness and accuracy the novelty of
inventions for which applications for patent are filed.

903.02  Basis and Principles of Classification [R - 3]

  The basis of classification used in the U.S. Patent and
Trademark Office, the principles followed, and the reasons
why such principles were adopted are set forth in the
booklet  Development  and  Use  of  Patent  Classification
Systems, which is available in each art unit. >The booklet
is also available from the Editorial Division of the Office
of Classification Support.< Since classification is the
basic tool of every examiner, this booklet, particularly as
it relates to the present classification system, should be
carefully studied.

903.02(a)  New and Revised Classes

  The establishment of new classes or subclasses and the
revision of old classes are done under the supervision of a
patent classifier.

  The  classifier  performing  the  reclassification  is
provided  with  a  set  of  patent  copies  of  the  present
classification. With these copies, by study and successive
groupings, he or she develops an arrangement of the patents
which is satisfactory for searching. Usually expert examiner
opinion is sought.

  The definition of the new class or revised class is
written or modified, the lines between the class and other
classes are drawn up, and the subclass definitions are
established.

  The Index to the U.S. Classification System and the

Classification Data System files are also updated.

  Notification of the new class or subclass is published
in  a  Classification  Order,  and  Supplementary  sheets
necessary to correct the looseleaf Manual of Classification
are published.

  Definitions of all revised classes and subclasses are
included in Classification Orders.

903.02(b)  Scope of a Class [R - 3]

  In using any classification system, it is necessary to
analyze the organization of the class or classes to be
included in the search.

  The initial analysis should determine which one or ones
of the several types of subject matter (manufacture, art,
apparatus, or stock material) are contained in the class
being considered.

  Further, relative to each type of subject matter, it is
necessary to consider each of the various combinations and
subcombinations set out below:

  **Basic Subject Matter >Combined with Feature< for Some
*>Additional< Purpose. The added purpose is in excess of the
scope of the subject matter for the class, as defined in the
class definition; e.g., adding a sifter to a stone crusher
which gives the added function of separating the crushed
stone.

  **Basic  Subject  Matter  >Combined  with  Perfecting
Feature< . Features may be added to the basic subject matter
which do not change the character thereof, but do perfect it
for its intended purpose; e.g., an overload release means
tends to perfect a stonecrusher by providing means to stop
it  on  overload  and  thus  prevent  ruining  the  machine.
However, this perfecting combined feature adds nothing to
the basic character of the machine.

  Basic Subject Matter . The combination of features
necessary and essential to the fundamental character of the
subject matter treated; e.g., a stonecrusher requires a
minimum number of features as essential before it can
function as such.

  Subcombinations Specialized to Basic Subject Matter.
Each type of basic subject matter may have subcombinations
specialized to use therewith; e.g., the crushing element of
a stonecrusher.

  Subcombinations of General Utility. Each type of basic
subject matter may have subcombinations which have utility
with other and different types of subject matter; e.g., the
machine elements of a stonecrusher. Subcombinations of this
character usually are provided for in some general class so
that the examiner should determine in each instance where
they are classified.

903.02(c)  Establishing Subclasses and Cross - Reference
Art Collections

  When an examiner finds it desirable to create a new
subclass  or  cross  -  reference  art  collection,  the

appropriate post classifier must be consulted before work is
begun. The post classifier will assist the examiner in
establishing any new subclass or cross - reference art
collection by providing appropriate instructions on how to
mark patents to be transferred from an existing subclass to
a new subclass, obtaining any additional cross - reference
copies that might be needed, determining the title of the
newly  established  subclass  or  cross  -  reference  art
collection, and assigning the numeric designation to be
placed  on  the  new  subclass  or  cross  -  reference  art
collection.

  All newly created subclasses will be made official so as
to be a part of the defined classification system and will
thus appear in both the examiners' and Public Search Room
files. The intent is to accomplish this with a minimum
amount of disruption to the examiners. Any examiner having
the group director's approval to create new subclasses
should contact the group post classifier for his or her
group. As workload permits, the classifier will be assigned
to cooperate with the examiner on the arrangement of the
subclasses he or she wishes to establish and the definitions
thereof. Then, the examiner will physically establish the
subclasses or provide a marked - up computer printout of the
patents in the subclass or subclasses being affected. On a
time available basis, the examiner may be aided in this task
by classification personnel.

  At this point, the Office of Classification Support will
withdraw the corresponding Search Room copies, and using
data gathered from the examiners' newly created subclasses
or computer printout, conduct the final processing of the
Search Room patents. After this is complete (i.e., the
Search Room copies are arranged by the new classification),
the examiners' copies will be withdrawn for a short period
to go through final clerical processing into new subclasses
and then returned to the examiners.

  The above procedures will not only be beneficial to the
Search Room file but will also provide the examiners with
defined subclasses.

903.03  *>Availability< of Foreign Patents [R - 3]

  **>All foreign patent documents received in the Office
before October 1, 1995 were placed in the shoes in the
examining groups, according to either the United States
Patent  Classification  System  or,  in  relatively  few
instances, an IPC classification. Foreign patents received
by the Office after October 1, 1995 are available on CD -
Rom from the Foreign Patents Division of the Scientific and
Technical Information Center (STIC) through the Foreign
Patent Access System (FPAS).<

  If the examiner desires to update the classification of
a foreign patent by changing, canceling, or adding copies,
he or she should forward the patent to his or her post
classifier  with  a  request  for  the  desired  transaction
attached.

  The Scientific and Technical Information Center retains
copies of foreign patents (See MPEP § 901.06(a)) so that
foreign patents, known by country, number, and publication
date, can be inspected in the Scientific and Technical
Information Center or photocopies ordered.

  Examiners  confronted  with  language  problems  in
classifying foreign - language patents may call upon the
Translation  Branch  of  the  Scientific  and  Technical
Information Center for assistance, see MPEP § 901.06(a).

 **

903.05  Transfer of U.S. Patents

  The transfer of official copies of U.S. patents, either
original or cross - reference, from one class or subclass to
another requires the approval of a classifier.

  Examiners must submit to the appropriate classification
group all questions of transfer of patents.

  When an examiner desires to transfer official copies of
domestic patents to a different class or subclass, he or she
should have a memorandum list prepared for signature of the
primary examiner of the numbers of all patents which are to
be transferred indicating only the class and subclass into
which each is to be placed. Both originals and properly
identified official cross - references may be included in
the same list and these may involve transfers to or from any
number of different classes or subclasses. Additional cross
-  reference  copies  of  any  listed  patent  may  also  be
requested by merely indicating where the cross reference
copies should be placed. This list with the examiner's
copies of the patents is routed through any other group
involved for its prompt approval or comment and is forwarded
to the appropriate classification group.

  In those instances where a transfer is approved by a
patent classifier, the class and subclass designations on
both the examiner and Public Search Room copies of the
patents are changed and the classification data files are
altered to agree with the new classification. When the
transfer is not approved, the copies of the patents will be
returned with a notification thereof.

  Unauthorized transfers render the subclasses in the
Public Search Room no longer duplicates of those in the
examiners'  rooms,  and  also  render  incorrect  the
classification data files.

  The procedure for transferring an entire class or
subclass from one group to another is given in the Manual of
Clerical Operations.

903.06  Practice To Be Followed in Ordering Official Cross
- References

  Patents which are useful as references may be found
either in the course of a search or from inspection of the
Official Gazette each week. All patent copies in official
subclasses, cross - reference art collections, and digests
are now recorded on the Master Classification File (MCF). In
order that the search file be complete as to patent copies
and to ensure the accuracy of the MCF, it is necessary that
each patent copy subsequently added to the search file be
recorded.

  The  informal  placement  of  cross  -  references  as
"Unofficial Patents" into the examiner's search file is

prohibited. All patent copies now placed in the examiner's
search file are official cross - references. Requests for
additional cross - references will be utilized by the Office
of Classification Support to ensure the placement of labeled
copies in the examiner's search file and the Public Search
Room.

  To order new or additional cross - references, the
examiner should submit a pink - colored form, PTO - 14B,
completed as follows:

 (1) Enter the "PATENT NUMBER," "GR. ART UNIT," "DATE
OF ORDER," and "EXAMINER'S NAME" in the appropriate boxes.

 (2)  Enter  the  "CLASS"  and  "SUBCLASS/DIGEST"
information for each location where a copy of the requested
patent should be placed.

 (3) Enter the number of "TOTAL COPIES" requested.
This number is determined by multiplying the total number of
unique classifications listed times two. This ensures a
sufficient number of copies will be obtained to place a
labeled copy in both the Examiner Search File and the Public
Search Room.

  When cross - references for more than three different
patent numbers are desired, the examiner can prepare a list
of the patent numbers and their associated classifications.
One copy of Form PTO - 14B should be completed to reflect
the Art Unit, Date of Order, and Examiner's Name and should
be attached to the list.

  To expedite the handling of requests for additional
cross - references and thereby ensure the quickest response,
the following routing procedures should be adhered to:

 (1) Designated collection drops within each group
for copy orders should be used.

 (2)  Clerical  personnel  from  the  Office  of
Classification  Support  (OCS)  will  visit  designated
collection drops at least twice each week to pick up PTO -
14 orders. Alternatively, the orders may be mailed or
otherwise delivered to the Search File Improvement Division,
OCS, currently located in Crystal Mall, Building 2, Room
967.

  The attorneys' drop slot at the Public Service Window
should not be used, nor should the forms be mailed to Copy
Fulfillment Services as consequent rerouting to the Office
of Classification Support for processing will result in
unnecessary delay.

 **  Double Click here to see the image  **

903.07  Classifying and Cross - Referencing at Allowance
[R - 3]

  It is the duty of each primary examiner to personally
review the original classification and cross - referencing
made by his or her assistants of every application passed
for issue and to print his or her full name on the blue
issue classification slip to show that this review has been
made.

  Both the blue issue classification slip (PTO - 270) and
the file wrapper provide spaces for the full names of the
"Assistant Examiner" and "Primary Examiner."

  An examiner with full signatory authority who acts
personally on an application and sends it to issue should
print his or her full name on the blue issue slip and stamp
and sign the file wrapper ONLY in the "Primary Examiner"
space. A line should be drawn through the Assistant Examiner
spaces on both the blue issue slip and the file wrapper to
make it clear that the absence of information in the box was
not an oversight.

  The initial classification of pending applications and
the drawings thereof will have been indicated in pencil by
the supervisory primary examiner. See MPEP § 903.08(b).

  However, an application, properly classified at the
start of examination, may be * classified >differently< when
it is ready for allowance. The allowed claims should be
reviewed in order to determine the subject matter covered
thereby. It is the disclosed subject matter covered by the
allowed claims that determines the original >and mandatory
cross - reference< classification of U.S. patents.

  The procedure for determining the classification of an
issuing application is as follows: every claim, whether
independent or dependent, must be considered separately for
classification.  A  separate  mandatory  classification  is
required for each claim which is classifiable in a different
class or subclass >; some claims, particularly in chemical
areas,  may  require  plural  classifications<.  After  all
mandatory  classifications  have  been  determined,  the
classification to be designated as the original (OR) is
determined.  If  *>all<  mandatory  classifications  are  in
**>the same class, the mandatory classification that appears
first (highest) in the class schedule is the original
classification; in certain circumstances (e.g., the genus -
species array), however, modifications of this rule may
apply. See the "Examiner Handbook on the use of the U.S.
Patent Classification System" for an explanation of genus -
species classification.

  If  the  mandatory  classifications  are  in  different
classes,  the  original  classification  is  determined  by
considering, in turn, the following criteria:

 (1) selection based on the most comprehensive claim,

 (2)  selection  based  on  priority  of  statutory
category of invention,

 (3) selection based on superiority of types of
subject matter,

 (4) genus - species rule between generic classes and
species classes, and

 (5) selection among classes in the "related subject"
listing at the front of the manual of classification.

  It should be noted that the criteria, supra, may be
superseded  by  (1)  special  circumstances,  e.g.,
superconductor technology and biotechnology are superior to

all other subject matter, (2) prior placement of patents for
a particular body of art, or (3) particular class lines and
class notes. Once the controlling class is determined,
classification  within  said  class  is  determined  by  the
hierarchy of the class.

  For a more complete discussion of this subject, see the
"overview of the classification system" on page I - 1 et
seq. of the Manual of Classification or the "Examiner
Handbook on the Use of the U.S. Patent Classification
System".

  Once the original classification is determined, all
remaining mandatory classifications are designated as cross
-  references,  as  are  any  additional  discretionary
classifications that the examiner wishes to apply to the
patent.<

  Only the correct original classification should be left
on the file and drawing of each application when passed for
issue.

  The  examiner  must  legibly  fill  out  a  blue  issue
classification slip (PTO - 270) or a salmon slip (PTO - 328)
in the case of designs to indicate the class and subclass in
which the patent should be classified as an original and
also the classifications in which it should appear as a
cross - reference. The examiner should be certain that all
subclasses into which cross - references are placed are
still  valid.  The  examiner  attaches  the  blue  issue
classification slip to the inside of the left fold of the
file wrapper to be forwarded to the Patent Issue Division.

  The  examiner  also  enters  the  final  original
classification appearing on the issue classification slip in
the space provided on the front of the file and in the space
provided in the stamping at the top margin of the drawing.
Care should be exercised to see that all three entries of
the  classification  are  correct  and  in  agreement,
particularly  after  any  alteration  of  one  entry,  for
otherwise the patent will be printed with an erroneous
classification or improperly positioned in the Official
Gazette .

  All examiners are requested to fill in the original
class and subclass on the drawings in large numerals using
as much of the space provided as feasible. In this way, the
filing of drawings and subsequent retrieval by the Patent
Issue Division will be greatly aided. See also MPEP §
1302.10.

  All examiners must include alpha subclass designators on
the blue issue slips (PTO - 270) at the time of issue when
appropriate.  This  applies  to  both  the  original
classification and the cross - reference classification. Any
time that a patent is being issued in or cross - referenced
to  a  subclass  containing  alpha  subclasses,  the  alpha
designation for the proper alpha subclass must be included
on the blue issue slip. No other designation is permissible.
Inclusion of only the numeric designation of a subclass
which  includes  an  alpha  subclass  designation  is  an
incomplete and improper entry on a blue issue slip. A
numeric subclass from which alpha subclasses have been
created is designated with an "R" (denoting residual) and if
the patent does not fit an indented alpha subclass, the blue

slip should include the "R" designation. It is permissible
to place multiple copies of a patent into a single set of
alpha subclasses.

  When the original patent is classified in an alpha
subclass (including the "R" subclass), the front of the file
wrapper and the drawing should also include the alpha
designation.

  Digests and cross - reference art collections should
also be included on the blue issue slip, but the original
classification must never be a digest or cross - reference
art collection. The indication for a copy of a patent in a
digest or cross - reference art collection must be in the
cross - reference area of the blue issue slip. A digest must
be identified by class number, alpha characters DIG, and
appropriate digest number.

  APPLICATIONS IN ISSUE

  Where  an  official  Classification  Order  affects  an
application already passed to issue, the classification
group makes the necessary changes on the file wrapper, blue
slip, and drawing, if any.

  *>Patents issuing from applications< which already have
been sent to the printer will be *>reclassified< by the
classification group at the time the patent issues.

903.07(a)  Cross - Referencing-Keep Systematic Notes
During Prosecution

  Throughout the examination of the case, systematic notes
should be kept as to cross - references needed either due to
claimed or unclaimed disclosure. Examiners handling related
subject  matter  should  be  consulted  during  prosecution
(whether  they  handle  larger  unclaimed  combinations  or
claimed or unclaimed, but disclosed, subcombinations), and
asked if cross - references are needed.

  Each consultation involving a question of the propriety
of the classification of subject matter and/or the need for
a cross - reference must be recorded in the SEARCH NOTES box
on the file wrapper and must include: the name of each
examiner consulted, the date that the consultation took
place, and the results of the consultation including the
consulted  examiners'  or  examiner's  indication  of  where
claimed subject matter is properly classified and where
subject  matter  disclosed  but  unclaimed  is  properly
classified and whether or not a cross - reference is needed.

  A cross - reference MUST be provided for all CLAIMED
disclosure where possible and inserted on the blue issue
classification slip at time of issue.

903.07(b)  Issuing in Another Examining Group Without
Transfer

  When an examiner issues a prospective patent in another
examining group, he or she notes in the space provided on
the blue issue classification slip, in red ink, the class
and subclass of the other group, and in parentheses the
number of said other group. (The initials of said other
primary examiner must appear in the block to the right of
the original classification.) In the lower left corner, the

examiner writes his or her own group number in black ink.
(When the patent issues, the classification group will, as a
matter of routine, send the necessary notices to the group
involved.)

  The sending of cases to issue from one group and
assigning them to classes in another group is restricted to
those situations where both examiners concur in the proposed
classification of the patent, which must be shown by the
concurring  examiner  initialing  the  issue  classification
slip,  or  where  there  has  been  a  ruling  by  a  patent
classifier, who must initial the slip.

  When primary examiners disagree on the proper original
classification of the allowed claims, the application should
be submitted for resolution to the post classifier having
jurisdiction over the art area to which the application is
presently assigned. The post classifier shall give the
application a high priority.

903.08  Applications: Assignment and Transfer [R - 1]

  The titles "supervisory patent examiner," "supervisory
primary examiner," and "primary examiner," as used in this
Chapter  900,  include  in  their  definition  any  person
designated by them to act on their behalf. It is recognized
that authority to accept or refuse the transfer of an
application  may  be  delegated  when  such  authority  is
deserved.

  The examining group to which an application is assigned
is responsible for its examination until such time as the
application is officially transferred to another group by
the classification group.

  The primary examiners have full authority to accept any
application submitted to them that they believe is properly
classifiable in a class in their art unit.

  Applicants  may  be  advised  of  expected  application
transfers by using Form Paragraph 5.03.

  ¶  5.03  **  >Reassignment  Affecting<  Application  **
>Location<

  **  >The  group  and/or  art  unit  location  of  your
application in the PTO has changed. To aid in correlating
any papers for this application, all further correspondence
regarding this application should be directed to Group Art
Unit [1].

 Examiner Note:

 This paragraph should be used in all Office actions when
the  location  of  an  application  is  changed  due  to  a
reassignment of the art, transfer of the application to a
different group or art unit, or transfer of an examiner and
the examiner's docket.<

903.08(a)  New Applications [R - 3]

  New nonprovisional applications are assigned to the
various examining groups in the first instance by the
**>Office of Initial Patent Examination<. Upon receiving an
application from the Application Division, the clerk in

charge  of  processing  new  applications  should  wand  the
application on the PALM to the art unit to which it has been
assigned and date stamp the file wrapper on the day the file
is to be delivered to the supervisory primary examiner. The
complete application (file and drawing) are then given to
the appropriate supervisory primary examiner. The clerks
should not permit these cases to remain overnight before
distributing.

  If the supervisory primary examiner decides that the
application properly belongs in his or her art unit, it is
processed as a new receipt. See MPEP § 903.08(b).

  When a new application is received which, in the opinion
of the primary examiner, does not belong to his or her
group, he or she may request, transfer of it to another
group. See MPEP § 903.08(d).

  Form PTO - 447>A<, "Transfer Request" consists of two
copies and is used as a transmittal and notification form.

  If the search in connection with the first action
develops art showing proper classification elsewhere, the
transfer is usually initiated before the first action is
prepared and mailed.

903.08(b)  Classification and Assignment to Examiner [R -
1]

  Every >nonprovisional< application, new or amended, and
including the drawings, if any, when first assigned to a
group must be classified and assigned to an examiner for
examination.  The  supervisory  primary  examiner  normally
assigns them, noting in lead pencil in the space provided in
the face of the file, and in the upper left hand corner of
the first sheet of the colored paper prints the class and
subclass to which the case pertains, and also the name or
initials of the examiner or the assigned docket designation.
The application file is then turned over to the clerk for
processing. >Provisional applications are not classified or
assigned since they are not examined.<

  If an examiner other than the supervisory primary
examiner  is  given  the  responsibility  of  assigning
applications, time so spent may, at the group director's
discretion, be charged to "Assisting SPE."

903.08(c)  Immediate Inspection of Amendments

  Upon the receipt of an amendment which makes a transfer
proper, steps should be taken promptly in accordance with
the transfer procedure outlined in MPEP § 903.08(d).

903.08(d)  Transfer Procedure [R - 3]

  TRANSFER BETWEEN ART UNITS WITHIN THE SAME GROUP

  All within the group transfers must be called to the
attention of the group clerk so that the PALM file may be
updated  to  correctly  indicate  the  assignment  of  the
nonprovisional application.

  Where there is a difference of opinion among the
supervisory primary examiners as to assignment within the
same group, the matter is submitted to the post classifier

assigned to that group for resolution >by use of form PTO -
447A<. Note MPEP § 903.10.

  TRANSFERS BETWEEN DIFFERENT GROUPS

  Where  a  supervisory  primary  examiner  believes  an
application, either new or amended, does not belong in his
or her art unit, he or she may request transfer from his or
her art unit (the "originating" art unit) to another art
unit (the "receiving" art unit) using form PTO - 447>A<. The
supervisory primary examiner of the originating art unit
dates and completes Section I of the PTO - 447>A< giving a
full explanation of the reasons for classification in the
other art unit.

  In the space provided on the form, at least one of the
following must be included:

 (l)  Identification  of  the  controlling  claim
examinable in another group.

 (2) Identification of any existing informal transfer
agreement.

 (3) Other reasons - with full explanation.

  In all cases when transfer is initiated the application
must be sent to another art unit. It cannot be sent directly
to a classification group. Even if the application is
informal, confusing, or contains unfamiliar subject matter,
the examiner must make his or her best judgment as to where
the application should be classified and attempt to transfer
it there.

  Where an application's claims include a combination of
limitations for plural disciplines (chemical, electrical, or
mechanical), a primary examiner may request transfer to
another  discipline,  notwithstanding  the  fact  that  the
controlling claims are properly classified in his or her art
unit,  on  the  ground  that  the  application  is  "best
examinable" in the other discipline. In this instance, the
examiner requesting transfer should cite art showing the
limitations classifiable in his or her discipline. For
discussion of the situations in which assignment of an
application on a "best examinable" basis may be proper, see
MPEP § 903.08(e).

  PROCESS FOR TRANSFER

  When  the  supervisory  primary  examiner  or  primary
examiner determines that transfer is proper, he or she
staples the form PTO - 447>A< to the front of the file and
gives it to the docket clerk for forwarding.

  If  the  receiving  examiner  agrees  to  accept  the
application,  he  or  she  classifies  and  assigns  the
application and initials the form PTO - 447>A< and the face
of the file wrapper. The transfer is effected by the clerk
in the group which accepts the application for transfer.

  If  the  receiving  art  unit  refuses  to  accept  the
application, the reasons for refusal, the date, and the
examiner's name are placed on the form PTO - 447>A< in
Section II "DISPOSITION BY RECEIVING ART UNIT." Where an
application is refused by the receiving art unit based upon

the classification of any claim, it may be submitted to the
classification group associated with the originating art
unit for decision. Where an application is refused by the
receiving art unit solely for reasons within the purview of
the  examining  corps;  e.g.,  propriety  of  a  restriction
requirement, timeliness of transfer, etc., and there is no
dispute  as  to  the  classification  of  any  claim,  the
application should be returned directly to the originating
art unit using the appropriate line in Section II of the PTO
- 447>A<.

  If an application contains both classification issues
and examining corps issues; e.g., a dispute both as to the
classification of claims and the propriety of restriction,
etc., **>the examining issues should be resolved first. If
thereafter classification issues still need to be addressed,
use of form PTO - 447A, as above, is appropriate.< For the
procedure in the classification groups for applications
which  contain  examining  corps  issues,  see  MPEP  §
903.08(e)13.

  The time limits for requesting or refusing transfer are
as follows. In a new application, transfer must be requested
within 2 calendar weeks of the group receipt date of the
application. In an amended application transfer must be
requested within 2 calendar weeks of the group receipt date
of the amendment upon which the request for transfer is
based. The time limit for refusal of a transfer request is 2
calendar weeks from the receipt of the transfer request in
the receiving art unit.

  Exceptions to these time limits are:

 1.  All new applications (docketed and undocketed)
transferred to Group*>2200< purely for security reasons.

 2.  New reissue application should be retained in
the group indicated by the notice of filing in the Official
Gazette for 2 months following the notice before transfer.

 3.  PCT  applications  and  other  special
applications for which a different time limit is set by
competent authority.

  Failure to fill in the date on the form by either the
originating examiner or the receiving examiner may result in
the assignment of the application to his or her art unit.

  If a request for transfer is not made or refused within
the 2 - week time limit, the art unit having physical
possession of the application must keep it for purposes of
examination.  However,  if  the  group  directors  having
authority over the art units involved agree that strict
adherence to the 2 - week time limit would not provide the
best examination for the application, they may waive the
requirement.

  The question of need for a restriction requirement does
not *>influence< the determination of transfer.

  The regular messenger service may be used to effect the
transfer  of  applications,  with  the  exception  that
applications filed under the Patent Cooperation Treaty and
such other special applications designated by competent
authority must be hand - carried throughout the transfer

process. If an application is hand - carried at any stage of
the transfer process, care must be taken that it is wanded
in or out on the PALM system as appropriate so that the PALM
system will always have an accurate record of the location
of the application.

  CLASSIFICATION AND ASSIGNMENT OF APPLICATIONS FILED UNDER
  THE PATENT COOPERATION TREATY (PCT)

  Applications filed under the PCT are treated as any
other application submitted to a classification group for
classification except for the following:

 (1) they are to be hand - carried throughout the
transfer and classification process;

 (2) **>they are normally classified on the basis of
the  first  claimed  invention.  The  following  special
situations, however, apply:

 (a) if a U.S. national application has been, or will
be,  acted  upon  by  an  Examiner  to  whom  the  national
application was assigned on the basis of the controlling
claim, a subsequent PCT application claiming priority of the
national application will normally be assigned to the same
Examiner, or to the Examiner's art unit in his/her absence;

 (b) if a PCT application has been assigned to an
Examiner for search or examination based on the first
claimed invention, a subsequent U.S. national application
claiming priority of the PCT application will normally be
assigned to the same Examiner, or to the Examiner's art unit
in his/her absence;

 (c) if a PCT application has been searched and
examined  outside  the  U.S.,  a  subsequent  U.S.  national
application claiming priority of the PCT application will be
assigned like any other U.S. application, i.e., on the basis
of the controlling claim.

  The object of having the U.S. national and PCT
international applications assigned to the same Examiner is
to ensure consistent search and examination results<; and

 (3) >they are to be< classified and returned within
3 working days of receipt in a classification group.

  PROCEDURE IN THE CLASSIFICATION GROUP

  The post classifier will consider the statements and
evidence of both the originating and forwarding art units
and will assign the application to the art unit which has
jurisdiction over the art in which the controlling claims of
the application are properly classified. This may be the
originating forwarding, or another art unit as appropriate.
The post classifier writes the assigned class and art unit
number and his or her initials on the face of the file
wrapper and on form PTO - 447>A<, briefly giving reasons for
assignment of the application in the space on the form.

  Where the change results in assignment of an application
to an art area under the jurisdiction of another post
classifier, the post classifier having jurisdiction of the
originating group art unit obtains the concurrence and
signature on form PTO - 447>A< of the other post classifier

who also states on form PTO - 447>A< his or her reasons for
accepting the application.

  Where there is an issue raised within the purview of the
examining  corps  as  well  as  a  dispute  as  to  the
classification of any claim, the application is treated as
set forth in MPEP § 903.08(e), paragraph 13.

  Under certain circumstances, a post classifier may,
contrary to controlling classification rules, assign an
application to a class or group which in his or her judgment
is better equipped to examine the application. This is fully
described in paragraphs 6 and 9 of MPEP § 903.08(e)**.
Assignment by the post classifier becomes final, and no
transfer should be accepted without the post classifier's
initials on the face of the file wrapper.

  RECONSIDERATIONS

  The supervisory (or designated) primary examiner of the
group art unit to which an application is assigned by the
classification group may request reconsideration if he or
she believes the post classifier's assignment is in error,
by stating the reason on a new form PTO - 447>A<, checking
the "Request for Reconsideration" box, and sending it with
the application to his or her classification group. All
previous  PTO  -  447>A<  forms  must  remain  with  the
application. In each application, only one such request for
reconsideration will be entertained from any art unit.
Reconsideration should not be requested as a matter of
routine but should be requested only in those unusual cases
when it is believed that further evidence will cause a
reassignment of the application. The post classifier having
jurisdiction  of  the  area  to  which  the  application  is
assigned considers the matter and writes his or her decision
on the PTO - 447>A< form with the advice and consent of his
or her supervisory patent classifier. Reconsideration must
be requested within 2 calendar weeks of the receipt in an
art unit of a decision by a classification group. On those
rare occasions when an examining group director becomes
involved in or shows an interest in the outcome of a
reconsideration,  the  appropriate  classification  group
director(s)  in  collaboration  with  appropriate  examining
group  director(s)  will  come  to  a  final  classification
decision within 1 calendar week.

  In the assignment of applications, it must be realized
that every application, no matter how peculiar or confusing,
must  be  assigned  somewhere  for  examination.  Thus,  in
contesting the assignment of an application, it may be more
successful to point out another class that is thought to be
a better place to classify the application at hand than
**>simply to argue that< the application does not fit the
examiner's class.

903.08(e)  General Regulations Governing the Assignment
of Nonprovisional Applications for Examination [R - 3]

  This  section  applies  only  to  nonprovisional
applications. It does not apply to provisional applications
since such applications are not examined.

  The fact should be borne in mind that the following
regulations  are  only  general  guides,  and  exceptions
frequently arise because of some unusual condition. The fact

should also be kept in view that the post classifiers as
well as the patent examiners are confronted with an already
existing classification made up of newly revised classes,
those revised years ago and which have somewhat outgrown
their definitions and limits, and still others made a
generation ago and never changed. Also, these classes are
based on different theories and plans, some on art, some on
structure, some on functions, some on the material worked
upon, and some apparently on no theory or plan at all. The
post classifiers cannot change this existing condition as
each application comes up for assignment, but must seek to
dovetail the cases into the patchwork and try to get the
applications where they will be best handled. To do this may
violate the post classifier's views as to what constitutes a
really proper classification.

  1. The assignment of nonprovisional applications follows,
as far as possible, the rules or principles governing the
classification of patents. >Applications are assigned, as
far as possible, on the basis of the original classification
of the application.<

  2. **>The criteria by which the original classification
is determined are set forth in MPEP § 903.07.<

  3. The claims and statement of invention are generally
taken as they read; however, claims must be read in light of
the disclosure (claimed disclosure). Any attempt of a post
classifier to go behind the record and decide the case upon
what is deemed the "real invention" would, it is believed,
introduce more errors than such action would cure. The post
classifiers cannot possess the specific knowledge of the
state of the art in all the classes that the patent
examiners collectively possess. Further, such questions are
matters of merit for the examiners to determine and are
often open to argument and are subject for appeal.

  4. Within a class, the first coordinate subclass that
will take any claim controls classification.

  5. >As stated in MPEP § 903.07,< the location of the
United  States  patents  constituting  the  prior  art  is
generally controlling over all else. (Note: Where time
permits, obvious misplacements of the patents constituting
the prior art are corrected, but to straighten all lines as
the cases come up for assignment would require the time of
several people and would often involve a reclassification of
an entire class.)

  6. Ordinarily, an application cannot be assigned to a
class which includes one element or part only of several
claimed  in  combination.  The  claim  is  treated  in  its
entirety. The question of aggregation is not reviewed by the
post classifiers.

  7. The post classifiers are authorized in all cases,
where they evaluate the facts as warranting it, to assign
applications for examination to the group best able to
examine the same. Since assignment for examination on this
basis will at times be contrary to classification of patents
containing  the  same  character  of  claims,  the  post
classifiers will indicate the proper classification of the
patent, if such claims are allowed.

  Thus, in cases where there is a claim drawn to hybrid or

mixed subject matter and the supervisory primary examiner in
one  discipline  feels  that  the  application  requires
consideration by, or may be best examined by, a group in one
of the other technical disciplines, chemical, electrical, or
mechanical, he or she may submit the application to his or
her post classifier who may assign the application on a
"best examinable" basis, in accordance with this subsection.

  Some  examples  of  applications  which  may  be  thus
submitted include the following:

  (1) An application containing a hybrid claim wherein, for
instance, a product is defined merely in terms of the
process for producing it. See MPEP § 705.01(e)(1).

  (2)  Where  an  application  properly  assigned  to  a
mechanical or electrical class contains at least one claim
to mixed subject matter, a part of which is chemical, the
application may be assigned to the appropriate chemical art
unit for examination; or where the application is properly
assigned to a mechanical class and a claim therein contains
electrical subject matter, the application may be assigned
to the appropriate electrical art unit for examination.

  As indicated earlier, when an application which had been
assigned for examination in accordance with this subsection
ultimately is allowed, it will be classified according to
the controlling claim. In effect, assignment for examination
may be on a "best examinable" basis, but the patent will
issue  and  be  classified  according  to  the  rules  of
superiority in classification; thus, the search file will
have a constant set of rules governing placement of patents
therein.

  Where an application is being reassigned from one
examining discipline to another, under the provisions of
**>the "best examinable" practice<, the post classifiers are
authorized to require the first >or transferring< examiner
to cite references pertinent to the claimed features falling
under the jurisdiction of the art within his >or her<
discipline. In those cases wherein the application of the
reference(s) is not evident or clear, the *>transferring<
examiner should include a brief statement explaining the
relation and possible application of the reference(s) to the
claim(s); in case of dispute as to the necessity of this
procedure, the post classifier has power to require the
statement.

  8. **>See MPEP 903.08(d) for a discussion of how to
properly assign PCT international applications and U.S.
national applications associated therewith.<

  9. When an application has been taken up by an examiner
for action and a requirement to restrict is found necessary,
a part of the claims being directed to matter classifiable
in the group where the case is being examined, an action
requiring restriction should be made without seeking a
transfer of the case to another group. The action of the
applicant in response to the requirement for restriction may
result in making a transfer of the application unnecessary.

  10. Ordinarily, where all the claims of an application
are for an article made of a specific composition or alloy
with  no  other  structure  of  the  article  recited,  the
application will be assigned to the composition or alloy

class.

  11. A class of cases exists in which either no art or a
divided art is found and in which no rule or principle is
involved. (Such cases are placed where, in the judgment of
the  post  classifiers  they  will  be  best  searched  and
adjudicated.)  It  is  often  impossible  to  so  explain  a
decision in this class of cases as to satisfy, or in any way
aid, the examiners interested. Indeed, the reasons for or
against sending such cases one place or another may be so
evenly balanced that no reason of any value can be given.

  12. An examiner seeking the transfer of a case may make a
search, both of his or her own class and the class to which
he or she thinks the case should be transferred, and the
examiner in charge of the art unit should exhibit the result
of such search to the appropriate classification group. This
is the way the expert knowledge of the examiners involved is
utilized.

  13. When an application is received in a classification
group in which there is a matter under dispute which is not
related to the classification of a claim but which is in the
purview  of  the  examining  corps;  e.g.,  propriety  of  a
restriction  requirement,  timeliness  of  submission  for
transfer, etc., as well as a dispute over the classification
of claims, the application will be treated as follows.

  The classifier will check the appropriate box on the PTO
- 447>A< indicating that the application is being returned
(not assigned) to the originating group to resolve the
nonclassifying issues involved. The classifier will indicate
on the PTO - 447>A< the proper classification of any claims
under dispute. If any claims under dispute are outside the
jurisdiction  of  the  classifier  associated  with  the
originating group, that classifier will obtain concurrence
of the classifier having jurisdiction of the claims in
question who will sign the PTO - 447>A< as the concurring
classifier.  Multiple  concurrences  may  be  required  for
application with claims classifiable in different art areas.

  It is important that newly received applications be
immediately  screened  for  these  situations  so  that  the
applications may be promptly returned to the originating
group.

  If after resolution of the nonclassifying issues there
is still a dispute as to which group should examine the
application,  the  originating  group  may  return  the
application to classification for assignment.

903.08(f)  Post Classifier's Decision

  A post classifier in a classification group decides the
question of the proper classification of the application,
and either (1) returns the application to the group which
submitted it if he or she denied the transfer request, or
(2) forwards the application to the group to which it is
transferred. See also MPEP  § 903.10.

903.08(g)  Transfer to Another Examining Group After
Decision

  If the application is to remain in the group which
submitted it for classification, no further procedure is

necessary. If assigned to another group, the classification
group processes the case as described in the Manual of
Clerical Procedures.

  If the case is one which has been taken up for action by
an examiner according to its effective filing date, it
should be treated as special by any examiner, art unit, or
group to which it is transferred. See MPEP § 708.01.

903.09  International Classification of Patents for
Inventions [R - 3]

  In accordance with the Strasbourg Agreement Concerning
the International Patent Classification, the United States
is  required  to  indicate  on  its  issuing  documents  the
classification  symbols  of  the  International  Patent
Classification 1994 (Sixth Edition), hereinafter referred to
  6
as "Int. Cl.  ."

  The complete Int. Cl. 6 symbols must be placed in the
indicated space on the Issue Classification Slip (form PTO -
270) when an application is issued.

  The layout of the Int. Cl. 6 is explained below with
reference to the sample page.

  Section

  The  Classification  represents  the  whole  body  of
knowledge which may be regarded as proper to the field of
patents for invention, divided into eight sections.

  (a) Section Symbol - Each section is designated by one of
the capital letters A through H.

  (b) Section Title - The section title is to be considered
as a very broad indication of the contents of the section.
The eight sections are entitled as follows:

  A. Human Necessities

  B. Performing Operations; Transporting

  C. Chemistry; Metallurgy

  D. Textiles; Paper

  E. Fixed Constructions

  F.  Mechanical  Engineering;  Lighting;  Heating;
Weapons; Blasting

  G. Physics

  H. Electricity

  (c) Contents of Section - Each section title is followed
by a summary of the titles of its main subdivisions.

  (d) Subsection -  Within sections, informative headings
form subsections, which are titles without classification
symbols.

  Example: Agriculture

  Class

  Each section is subdivided into classes.

  (a) Class Symbol - Each class symbol consists of the
section symbol followed by a two digit number.

  Example: A 01

  (b) Class Title - The class title gives an indication of
the content of the class.

  Example:

  A  01  Agriculture;  Forestry;  Animal  Husbandry;
Hunting; Trapping; Fishing

  Subclass

  Each class comprises one or more subclasses.

  (a) Subclass Symbol - Each subclass symbol consists of
the class symbol followed by a capital letter.

  Example: A 01 B

  (b) Subclass Title - The subclass title indicates as
precisely as possible the content of the subclass.

  Example:

  A 01 B Soil Working in Agriculture or Forestry;
Parts, Details, or Accessories of Agricultural Machines or
Implements, in General

  (c) Subclass Index - Some subclasses have an index which
is merely an informative summary giving a broad survey of
the content of the subclass.

  Group

  Each subclass is broken down into subdivisions referred
to as "groups," which are either main groups or subgroups.

  (a) Group Symbol - Each group symbol consists of the
subclass symbol followed by two numbers separated by an
oblique stroke.

  (b) Main Group Symbol - Each main group symbol consists
of the subclass symbol followed by a one to three digit
number, the oblique stroke, and the number 00.

  Example: A 01 B 1/00

  (c) Main Group Title - The main group title defines a
field of subject matter considered to be useful in searching
for inventions.

  Example: A 01 B 1/00 Handtools

  (d) Subgroup Symbol - Subgroups form subdivisions under
the main groups. Each subgroup symbol consists of the
subclass symbol followed by the one to three digit number of
its main group, the oblique stroke, and a number of at least

two digits other than 00.

  Example: A 01 B 1/02

  Any third or fourth digit after the oblique stroke is to
be read as a decimal subdivision of the second or third
digit, respectively; e.g. 3/426 is to be read as "three
slash forty - two point six", not three slash four hundred
and twenty six and is to be found after 3/42 and before
3/43, and 5/1185 is to be read as "five slash eleven point
eight five," and is to be found after 5/118 and before
5/119.

  (e) Subgroup Title - The subgroup title defines a field
of subject matter within the scope of its main group
considered to be useful in searching for inventions. The
title is preceded by one or more dots indicating the
hierarchical position of the subgroup; i.e. indicating that
each subgroup forms a subdivision of the nearest group above
it having one dot less. The subgroup title is often a
complete expression, in which case it begins with a capital
letter. A subgroup title begins with a lower case letter if
it reads as a continuation of the title of the next higher,
less - indented group; i.e. having one dot less.  In all
cases, the subgroup title must be read as being dependent
upon, and restricted by, the title of the group under which
it is indented .

 Examples

  A 01 B 1/00 Handtools

  1/24 for treating meadows or lawns (The title of 1/24 is
to be read as: Handtools for treating meadows or lawns.)

  A 01 B 1/00 Handtools

  1/16 Tools for uprooting weeds (The title of 1/16 is a
complete expression, but owing to its hierarchical position,
the tools for uprooting weeds are restricted to handtools.)

  Complete Classification Symbol

  A complete classification symbol comprises the combined
symbols representing the section, class, subclass, and main
group or subgroup.

 **  Double Click here to see the image  **

  Guide Headings

  The main groups in each subclass are arranged in a
sequence intended to assist the user. It has not however,
been found practicable to standardize the sequence. Where
several successive main groups relate to common subject
matter, it is usual to provide before the first of such main
groups a "guide heading" which is underlined, indicating
this subject matter (see, for example, the guide heading "
Ploughs " before group A 01 B 3/00). The series of groups
covered by such a heading extends to the next guide heading
or to a line in heavy type extending across the column,
which is used when the following group or groups relate to
different subject matter for which no guide heading is
provided. (See, for example, the line after A 01 B 75/00.)

  CLASSIFYING IN THE INT. CL.*> 6< SYSTEM

  A. Selecting subclasses(Corresponding to U.S.C. lasses)

  The effective scope of a subclass is defined by the
following, taken together:

  (a) The subclass title which describes, as precisely as
is  possible  in  a  small  number  of  words,  the  main
characteristic of a portion of the whole body of knowledge
covered by the Classification, this portion being the field
of the subclass to which all its groups relate;

  (b) Any references which follows the subclass title or
the hierarchically higher class title. These references
often indicate certain parts of the field described by the
title  which  are  covered  by  other  subclasses  and  are
therefore excluded. These parts may constitute a substantial
part of the field described by the title and, thus, the
references are in some respects as important as the title
itself.  For  example,  in  subclass  A  47  D  -  FURNITURE
SPECIALLY ADAPTED FOR CHILDREN - a considerable part, namely
school benches or desks, of the subject matter covered by
the title is excluded in view of a reference to particular
groups of subclass A 47 B, thus considerably altering the
scope of subclass A 47 D;

  (c) Any references which appear in groups or guide
headings of a subclass and which refer subject matter to
another class or subclass may also affect the scope of the
subclass  in  question.  For  example,  in  subclass  B  43
K-INSTRUMENTS FOR WRITING; DRAWING - PENS-writing points for
indicating or recording apparatus are referred out of group
1/00 to group 15 / 16 of subclass G 01 D, thereby reducing
the scope of the subject matter covered by the title of
subclass B 43 K;

  (d) Any notes or definitions appearing under the subclass
title or its class, subsection or section title. Such notes
or definitions may define terms or expressions used in the
title, or elsewhere, or clarify the relation between the
subclass  and  other  places.  Examples  are  (i)  Note  (1)
appearing under the title of the subsection "ENGINES OR
PUMPS," embracing classes F01 to F04, which notes define the
terms  used  throughout  the  subsection,  (ii)  the  notes
appearing under the title of subclass F01 B, which define
its scope in relation to subclasses F01 C to F01 P, and
(iii) the note following the title of section C which define
groups of elements.

  B.  Selecting  Main  -  groups(Corresponding  to  U.S.
Mainline Subclasses)

  The scope of a main group is to be interpreted only
within the effective scope of its subclass (as indicated
above). Subject to this, the effective scope of a main group
is determined by its title as modified by any relevant
references or notes associated with the main group or with
any guide heading covering it. For example, a group for
"bearings" in a subclass whose title is limited to a
particular apparatus must be read as covering only features
of bearings peculiar to that apparatus; e.g. the arrangement
of bearings in the apparatus. Attention is drawn to the fact
that guide headings are intended to be only informative and,

as a rule, do not modify the scope of the groups covered by
them, except where it is otherwise clear from the context.
By contrast, references in the guide headings modify the
scope of the associated groups.

  C. Selecting Subgroups(Corresponding to U.S. Indented
Subclasses)

  The scope of a subgroup is likewise to be interpreted
only within the effective scope of its main group and of any
subgroup under which it is indented. Subject to this, the
scope of a subgroup is determined by its title as modified
by any relevant references or notes associated therewith.

  Attention is invited to volume 9 of the International
Patent Classification, entitled "Guide, Survey of Classes
and Summary of Main Groups" for detailed procedures for
classifying into and searching Int. Cl. 6 .

 **  Double Click here to see the image  **

  U.S. INT. CL.*> 6< CONCORDANCE,*>1995<

  The Office of International Patent Classification has
prepared a revised Concordance between the U.S. classes and
subclasses and the Int. Cl.*> 6 <. In many areas, the two
systems are conceptually different. With this in mind, it
will be seen that a complete one - to - one correspondence
between the two systems cannot be attained. An indication in
the Concordance may refer to only one relevant group and not
necessarily the only group in which the patent can or should
be classified. For some inventions, the Concordance may not
indicate  any  truly  relevant  group.  Accordingly,  the
Concordance must be recognized as a guide to be used in
conjunction  with  the  Int.  Cl.*>  6  <,  and  not  as  a
translation list.

  The*>1995< Concordance includes all changes in the
**>International Classification corresponding to changes in
the United States Classification through October, 1994.<

  The Concordance may be incomplete in some areas and
contain errors in other areas. Therefore, if corrections
need to be made in the Concordance, members of the examining
corps are requested to report any suggested changes to the
appropriate group post classifier.

  ISSUE CLASSIFICATION SLIP

  The blue Issue Classification Slip (form PTO - 270)
permits a maximum of four discrete international notations.

  An example of the blue Issue Slip (PTO - 270) is
reproduced below with the following exemplary notations:
A01B  1/02;  B07B  7/083;  C08F  110/04;  and  C08F  267/00.
Examiners should ensure that the IPC notations used are from
the current edition.

 **  Double Click here to see the image  **

>903.09(a)  Locarno Classification Designations< [R - 3]

  >U.S. design patents prepared for issue after June 30,

1996,  include  a  Locarno  International  Classification
designation as part of the bibliographic data. The purpose
of the international design classification designation is to
enhance accessibility of design patents in foreign design
search files as well as commercial databases.

  The Locarno International Classification system was
developed  by  members  of  the  Paris  Convention  for  the
Protection of Industrial Property and is administered by the
International Bureau of the World Intellectual Property
Office (WIPO).

  A  Locarno  International  Classification  designation
consists of two pairs of numbers separated by a hyphen. The
first pair of numbers designates a design class; the second
pair of numbers indicates a particular subclass within the
design class. The Locarno Classification manual, available
from WIPO, delineates the individual classes and subclasses
and includes: (1) a general list of classes of industrial
designs  divided  into  broad  subclasses;  and  (2)  an
alphabetical list of specific industrial designs with an
indication of the classes and subclasses into which they
should be classified.

  The Locarno designation included with design patent
bibliographic data indicates the original classification of
the patented design only. There is no provision for cross -
reference designations within the Locarno system.

  Locarno International Classifications are periodically
revised  by  the  Committee  of  Experts  of  the  World
Intellectual  Property  Organization.  The  present  (sixth)
edition of the system incorporates all the revisions in and
before March, 1993, which became effective on January 1,
1994.

  The design patent issue slip (PTO - 328) includes an
area with the heading "International Classification". A
Locarno International Classification designation must be
included on the issue slip when a design application is
prepared for issue. The Locarno designation is printed on
the design patent preceded by INID code [51] in compliance
with ST.9 of the International Bureau. The abbreviation "LOC
(6) CL." follows INID code [51] and complies with the
recommended abbreviation by the International Bureau.

  An example Locarno designation as it appears on a U.S.
Design Patent is as follows:

  [51] LOC (6) CL. 02 - 02

  The Office of International Patent Classification has
prepared  a  Concordance  between  the  U.S.  Design
Classification classes and subclasses and the sixth edition
of the Locarno International Classification. In many areas
of design subject matter, the U.S. Design Classification and
Locarno Classification systems are parallel. For others, the
two systems are conceptionally different. For example, there
is no specific provision within the Locarno system for
designs  which  are  simulative  of  other  objects.  The
International  Classification  is  generally  based  on  the
nature of the design rather than ornamental appearance.
Accordingly, a one - to - one relationship between the two
classification systems is not always possible.

  Each suggested designation in the Concordance refers to
a single Locarno International class and subclass. This
designation, however, is not necessarily the only pertinent
class and subclass in which the design could be properly
classified  since  for  some  U.S.  Design  Classification
designations, there is no direct parallel within the Locarno
system. Accordingly, the Concordance may not indicate the
most specific relevant class and subclass, and should not be
considered a translation list.<

903.10  Duties of the Post Classifier

  Post classifiers were established to improve liaison
between the classification groups and the examining groups.
Examiners  should  contact  their  post  classifier  on  all
classification problems.

  Each post classifier is normally assigned one examining
group as his or her responsibility. Each post classifier is
charged with all classification duties relative to this one
examining group, except for major reclassification projects.

  A post classifier is responsible for:

  (1) The technical accuracy, adequacy, and completeness of
all search systems in his or her group including the
monitoring of any need for major and minor reclassification
projects including mechanized systems.

  (2)  The  full  range  of  classification  administration
functions  including  the  resolution  of  classification
disputes on pending applications, guidance on classification
matters to both examiners and the public, which includes
outlining fields of search and answering examiner's requests
for advice as to the proper classification of allowed
applications.

  (3) The inspection of issuing applications to determine
the accuracy and adequacy of original and cross - reference
classification  by  working  closely  with  the  supervisory
primary examiners and group directors to ensure feedback to
correct problem areas.

  (4) Determination of the training needs of the personnel
in his or her assigned group relative to principles of
classification and supplying this training through formal
and informal channels.

  Generally, the post classifiers are to aid the examiners
in  the  use,  maintenance,  and  perfection  of  the
classification system.

904  How to Search [R - 1]

  The  examiner,  after  having  obtained  a  thorough
understanding of the invention disclosed and claimed in the
>nonprovisional< application, then searches the prior art as
disclosed in patents and other printed documents. Any such
document used in the rejection of a claim is called a
reference.

  In all continuing applications, the parent applications
should be reviewed by the examiner for pertinent prior art.
Where the cited prior art of a parent application has been
reviewed, this fact should be made of record in accordance

with the procedure set forth at B.5. of MPEP § 717.05.

  The first search should be such that the examiner need
not ordinarily make a second search of the prior art, unless
necessitated by amendments to the claims by the applicant in
the first response, except to check to determine whether any
reference  which  would  appear  to  be  substantially  more
pertinent than the prior art cited in the first Office
action has become available subsequent to the initial prior
art search. It should cover the invention as described and
claimed, including the inventive concepts toward which the
claims appear to be directed. It should not be extended
merely to add immaterial variants.

904.01  Analysis of Claims [R - 3]

 The breadth of the claims in the application should always
be carefully noted; that is, the examiner should be fully
aware of what the claims do no t call for, as well as what
they do require. There is always danger of reading into the
claim  limitations  imported  from  the  specification  or
drawing. >See MPEP § 2111 - § 2116.01 for case law pertinent
to claim analysis.<

904.01(a)  Variant Embodiments Within Scope of Claim [R
- 3]

  Substantially, every claim includes within its breadth
or scope of definition one or more variant embodiments not
disclosed by applicant which would anticipate the terms of
the definition. The claim must be so analyzed and understood
that any such variant encountered during the search will be
recognized and selected.

  In each type of subject matter capable of such treatment
(e.g., a machine or other apparatus), the subject matter as
defined by the claim may be sketched in order to clearly
delineate  the  limitations  of  the  claim.  Two  or  more
sketches, each of which is as divergent from the particular
disclosure as is permitted by claim recitation, will assist
the examiner in determining the claim's actual breadth or
scope. However, an applicant will not be required to submit
such sketches of claim structure ( In re Application filed
November 16, 1945,>89 USPQ 280,< 1951 C.D. 1, 646 O.G.
5>(Comm'r Pat. 1951)<).

904.01(b)  Equivalents [R - 3]

  All subject matter that is the patentable equivalent of
the subject matter as defined in the claim, even though
specifically different from the definition in the claim,
must be considered. >See MPEP § 2181 - § 2184 for a
discussion of equivalents when a claim employs means or step
plus function terminology.<

904.01(c)  Analogous Arts [R - 3]

  Not only must the art be searched with which the
invention claimed is classifiable, but also all analogous
arts regardless of where classified.

  The determination of when arts are analogous is at times
difficult. It depends upon the necessary essential function
or utility of the subject matter covered by the claims, and
not upon what it is called.

  For example, a tea mixer and a concrete mixer are for
the  same  art,  namely  the  mixing  art,  this  being  the
necessary function of each. Similarly a brick - cutting
machine  and  a  biscuit  cutting  machine  have  the  same
necessary function. >See MPEP § 2141.01(a) for a discussion
of  analogous  and  nonanalogous  art  in  the  context  of
establishing a prima facie  case of obviousness under 35
U.S.C. 103.<

904.01(d)  Outlining Field of Search [R - 3]

  A proper field of search includes the subclass in which
the claimed subject matter of an application would be
properly classified. The proper field of search shall not
include those areas in which it could reasonably have been
determined that there was a low probability of finding the
best reference(s).

  In outlining a field of search, the examiner should note
every  class  and  subclass  under  the  U.S.  Patent
Classification  system  and  other  organized  systems  of
literature that may have material pertinent to the subject
matter as claimed. Every subclass, digest, and cross -
reference art collection pertinent to each type of invention
claimed should be listed, from the largest combination
through the various subcombinations to the most elementary
part.  The  search  should  extend  to  all  probable  areas
relevant to the claimed subject matter and should cover the
disclosed features which might reasonably be expected to be
claimed.

  Strategies should be developed by the examiner for
locating prior art utilizing both manual and machine search
tools.

  The areas to be searched should be prioritized so that
the most likely areas are searched first.

  The examiner should plan a search that not only covers
the claimed subject matter, but one that also covers the
disclosed features that might reasonably be expected to be
claimed. The examiner should consult with other examiners
and/or supervisory primary examiners, especially with regard
to applications covering subject matter unfamiliar to the
examiner.

  The following should be kept in mind: **>to establish a
prima facie case of obviousness, three basic criteria must
be met. First, there must be some suggestion or motivation,
either in the references themselves or in the knowledge
generally available to one of ordinary skill in the art, to
modify the reference or to combine reference teachings.
Second, there must be a reasonable expectation of success.
Finally,  the  prior  art  reference  (or  references  when
combined) must teach or suggest all the claim limitations.
The teaching or suggestion to make the claimed combination
and the reasonable expectation of success must both be found
in the prior art, and not based on applicant's disclosure.
In re Vaeck , 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991).
See MPEP § 2143 - § 2143.03 for decisions pertinent to each
of these criteria. See MPEP § 2144 - § 2144.09 for examples
of reasoning supporting obviousness rejections.<

  An examiner, in each first action upon an application,

makes an initial endorsement in ink in the space provided on
the left - hand page of the open file wrapper stating the
classes and subclasses of domestic and foreign patents,
abstract collections and the publications in which search
for references was made, and also the date of the search.
Note MPEP § 717.05.

  In subsequent actions, if further search is made,
notation of the additional field covered is also endorsed
and initialed on the file wrapper.

904.02  Conducting the Search

  It is a prerequisite to a speedy and just determination
of the issues involved in the examination of an application
that a careful and comprehensive search, commensurate with
the limitations appearing in the most detailed claims in the
case, be made in preparing the first action on the merits so
that the second action on the merits can be made final or
the application allowed with no further searching other than
to update the original search. It is normally not enough
that references be selected to meet only the terms of the
claims alone, especially if only broad claims are presented;
but the search should, insofar as possible, also cover all
subject matter which the examiner reasonably anticipates
might be incorporated into applicant's amendment. A complete
search should result if applicants included, at the time of
filing, claims varying from the broadest to which they
believe they are entitled to the most detailed that they
would be willing to accept.

  It thus results that the examiner finds references that,
while not needed for treating the claims, would be useful
for forestalling the possible presentation of claims to
other subject matter regarded by applicant as his or her
invention, and claimable with the subject matter being
currently claimed, but shown to be old by these references.

  In selecting the references to be cited, the examiner
should carefully compare the references with one another and
with the applicant's disclosure to avoid the citation of an
unnecessary number. The examiner is not called upon to cite
all references that may be available, but only the "best."
(37 CFR 1.106.) Multiplying references, any one of which is
as good as, but no better than, the others, adds to the
burden and cost of prosecution and should therefore be
avoided. However, if doubt exists as to the inclusion of a
reference, it is better to err in citing too much art rather
than too little.

  The best reference should always be the one used.
Sometimes the best reference will have a publication date
less than a year prior to the application filing date, hence
it will be open to being overcome under 37 CFR 1.131. In
these cases, if a second reference exists which cannot be so
overcome and which, though inferior, is an adequate basis
for rejection, the claims should be additionally rejected
thereon.

  In  all  references  considered,  including  nonpatent,
foreign patents, and domestic patents, the examiner should
study  the  specification  or  description  sufficiently  to
determine  the  full  value  of  the  reference  disclosure
relative to the claimed or claimable subject matter.

905  Miscellaneous

905.01  Photocopy Orders

  Patents  and/or  applications  received  from  Germany,
Federal Republic of, since October 1, 1968 and from Japan,
France, and the U.S.S.R. since July 1, 1969 are not in
numerical sequence. Inasmuch as the Patent and Trademark
Office supplies orders for copies of these foreign documents
from master microfilm reels made up on weekly or other
periodic publishing sequences, all orders must include the
country, patent or application number, and the publication
date (if known) of the ordered document. Reference should be
made to MPEP § 901.05(a) to assist in determining the
publication date of the commonly encountered foreign patents
and applications .

  All orders for photocopies on PTO - 250 originating in
the examining groups must be authorized by an examiner
having full or partial signatory authority in the box headed
"PRIMARY EXAMINER (Signature)". The stamped name of the
authorizing examiner will be indication of authority for
Reproduction Section. Handwritten signatures should not be
used.

905.02  Soft Copy Orders [R - 3]

  Soft copies of U.S. patents for the examiner's personal
use may be ordered by the examiner on blue - colored order
form PTO - 14A. These copies are not to be placed in the
official search file. To complete the form PTO - 14A, the
examiner should indicate the number of copies desired in the
box marked "NO. OF COPIES" and should also complete the
"PATENT NUMBER," "EXAMINER'S NAME," "ART UNIT," and "DATE OF
ORDER" boxes.

  When soft copies for more than three different patent
numbers are desired, the examiner can prepare a list of the
patent numbers and attach it to one copy of Form PTO -
14*>A< which has been completed to reflect the Art Unit,
Date of Order, and Examiner's Name.

  To expedite the handling of requests for personal copies
and thereby ensure the quickest response, the following
routing procedures should be adhered to:

  (1) Designated collection drops within each group for
copy orders should be used.

  (2) Clerical personnel from the Office of Classification
Support (OCS) will visit designated collection drops at
least  twice  each  week  to  pick  up  PTO  -  14*  orders.
Alternatively,  the  orders  may  be  mailed  or  otherwise
delivered to the Search File Improvement Division, OCS,
currently located in Crystal Mall, Building 2, Room 967.

  The attorneys' drop slot at the *>Customer< Service
Window should not be used nor should the forms be mailed to
Copy Fulfillment Services as consequent rerouting to the
Office of Classification Support for processing will result
in unnecessary delay.

  Copies provided for personal use will be stamped "DO NOT
PLACE IN SEARCH FILE;" any such copy found in the search
file will be removed by refiling personnel. Because of the

cost of printing copies of patents, economy should be
exercised in their use. Personal use soft copies no longer
desired by examiners should be destroyed.

  In view of the high cost of printing patents with color
drawings, orders by examiners for plant patents and other
patents with color drawings for personal use will normally
not be filled.

 **  Double Click here to see the image  **

905.03  Ordering of Patented and Abandoned >Provisional
and Nonprovisional Application< Files [R - 1]

  In the examination of an application it is sometimes
necessary  to  inspect  the  application  papers  of  some
previously  abandoned  application>(provisional  or
nonprovisional)< or granted patent. This is always true in
the  case  of  a  reissue  application  and  reexamination
proceeding.

  Patented and abandoned files are stored at the Files
Repository located near the other PTO buildings in Crystal
City. Older files are housed in a warehouse located in
Suitland, Maryland.

  Patented and abandoned files are ordered by means of a
PALM video display transaction. To place such an order, the
examiner is required to input his/her PALM location code,
employee number, and patent number(s) and/or *>application<
number(s) of the file(s) that are needed. After transmission
of the request transaction by the examiner, a "response"
screen appears on the video display terminal which informs
him/her of the status of the request for each file. The
examiner is informed that the request (1) is accepted; (2)
is accepted, but for which the file is located at the
Suitland  warehouse  (in  which  case  delivery  time  is
increased); or that the request is not accepted since (3)
the file is not located at the repository or warehouse; (4)
a previous request for the file has not yet been filled; or
(5) the patent or *>application< number inputted is not
valid.

  Periodically each day, personnel at the Files Repository
perform a PALM print transaction which produces a list of
all accepted requests in patent number order and, for
requests  for  abandoned  files,  in  *>application<  number
order. The printed record of each request is detached from
the list when its associated file is found. It is then
stapled to it. Throughout the day, periodic deliveries of
files are made directly to the offices of their requesters
by Files Repository personnel. Upon delivery of files at the
various locations, files that are ready to be returned to
the repository are picked up.

  With the exception of certain older files, the drawings
of patented and abandoned files, if any, are now stored
within their respective application file jackets. Since it
is desired not to separate one from the other, both the file
and its drawings are delivered when a file is ordered.

905.04  Marking Examiners' Copies of Patents

  When the examiners' copies of patents are sent to their

respective art units to be filed, they should be routed
across the appropriate examiners' desks prior to placement
in the shoes. The assistant examiners who examined the
application should mark in ink on the face of the drawings,
or the specifications where there are no drawings, such
features  as  may  be  deemed  advantageous  in  aiding
understanding of the patents in future searches.

905.05  Application File Location

  All files should be returned promptly to their proper
location.

  Whenever an application file is moved from one PALM
location to another; e.g., removed from a group's central
files or moved from one examiner to another, the PALM record
should be updated with its current location. The appropriate
bar code transaction should be performed. For example, if
the examiner to whom the application is docketed obtains it,
he/she should perform PALM transaction 1023 by pressing the
"TO EXR" key on the bar code reader and scanning the bar
code label of the file with the light pen of the BCR. If an
examiner other than the one to whom the application is
docketed obtains the file, he/she should perform transaction
1036 which requires the input of his/her group number and
his/her employee number before the label is scanned. All
files should be returned promptly to their proper location.

905.06  Family of Patent Information

  Patent family information is available at the United
States  Patent  and  Trademark  Office  primarily  through
commercial  databases.  Examiners  have  access  to  this
information either directly or through the search services
of the Scientific and Technical Information Center (STIC).

  Available Databases

  Derwent's World Patents Index in (WPI) and International
Patent Documentation Center(INPADOC) are the two databases
used for retrieving foreign patent information.

  INPADOC is the first choice for quick searches for
publication dates or patent families because of its ease of
use and low cost. The Office enjoys cost effective rates for
INPADOC due to an agreement between the Office and the
International Patent Documentation Center (now part of the
European Patent Office) negotiated several years ago. The
agreement applies only to INPADOC as accessed directly on
the INPADOC computer in Austria, not to INPADOC as available
on other commercial database systems such as ORBIT, DIALOG,
or STN.

  WPI is used whenever abstracts are needed or when
searches in addition to publication date or Patent family
are required, such as searches on inventor name or IPC
(International Patent Classification).

  Access to Foreign Patent Information

  Patent examiners who have received training and access
codes may directly search INPADOC or WPI or both. Examiners
who have been trained on searching the ORBIT, DIALOG, or
Questel  systems  may  also  search  WPI,  with  or  without
specific training on WPI, since WPI is one of the databases

available on these systems.

  Examiners may also request foreign patent searches
through the Scientific and Technical Information Center
(STIC). Trained searchers in both the Reference and Foreign
Patents sections of STIC perform patent family searches on
demand, with a short turnaround time. The Foreign Patents
section can also help examiners get copies of foreign
patents found through online searching.

  - -- - -- END - -- - --

Chapter 1000 Matters Decided by Various Patent and Trademark
 Office Officials

  1001  Statutory Authority of Commissioner
  1001.01  Modes of Exercising Authority
  1002  Petitions to the Commissioner
  1002.01  Procedure
  1002.02  Delegation of Authority To Decide Petitions
  1002.02(b)  Petitions and Requests Decided in the Office
  of Petitions
  1002.02(c)  Petitions and Requests Decided by the Group
  Directors
  1002.02(c)(1)  Petitions Decided by the Group Director of
  Group 2200
  1002.02(c)(2)  Petitions Decided by the Group Director of
  Group 1800
  1002.02(c)(3)  Petitions Decided by the Group Director of
  Group 2900
  1002.02(d)  Petitions and Matters Decided by Supervisory
  Examiners
  1002.02(e)  Petitions Decided by Primary Examiners
  1002.02(f)  Petitions and Matters Decided by the Chief
  Administrative Patent Judge of the Board of Patent
  Appeals and Interferences
  1002.02(g)  Petitions Decided by the Administrative Patent
  Judges
  1002.02(i)  Petitions Decided by the Assistant
  Commissioner for Trademarks
  1002.02(j)  Petitions Decided by the Board of Patent
  Appeals and Interferences
  1002.02(k)  Petitions Decided by the Solicitor
  1002.02(l)  Request Decided by the Certificates of
  Correction Branch
  1002.02(m)  Petitions Decided by the Director of
  Enrollment and Discipline
  1002.02(o)  Petitions and Other Matters Decided by the
  Deputy Commissioner of Patents and Trademarks
  1002.02(p)  Petitions and Matters Decided by the PCT Legal
  Administrator
  1002.02(q)  Petitions Decided by the Director of Office of
  **>Initial Patent Examination<>1002.02(r) Petitions
  Decided by the Director of Office of Patent
  Publication<
  1003  Matters Submitted to Group Directors
  1004  Actions Which Require the Attention of a Primary
  Examiner
  1005  Exceptions to Partial Signatory Authority

1001  Statutory Authority of Commissioner [R - 2]

 35 U.S.C. 3.  Officers and employees.

 (a)  There shall be in the Patent and Trademark Office a
Commissioner  of  Patents  and  Trademarks,  a  Deputy
Commissioner, two Assistant Commissioners and examiners - in
- chief appointed under section 7 of this title. The Deputy
Commissioner, or, in the event of a vacancy in that office,
the Assistant Commissioner senior in date of appointment,
shall fill the office of Commissioner during a vacancy in
that office until the Commissioner is appointed and takes
office. The Commissioner of Patents and Trademarks, the
Deputy Commissioner, and the Assistant Commissioners shall
be appointed by the President, by and with the advice and
consent of the Senate. The Secretary of Commerce, upon the
nomination of the Commissioner, in accordance with law,
shall appoint all other officers and employees.

 (b)  The Secretary of Commerce may vest in himself the
functions  of  the  Patent  and  Trademark  Office  and  its
officers and employees specified in this title and may from
time to time authorize their performance by any other
officer or employee.

 (c)  The Secretary of Commerce is authorized to fix the
per annum rate of basic compensation of each examiner - in -
chief in the Patent and Trademark Office at not in excess of
the maximum scheduled rate provided for positions in grade
17 of the General Schedule of the Classification Act of
1949, as amended.

 (d) The Commissioner of Patents and Trademarks shall be an
Assistant  Secretary  of  Commerce  and  shall  receive
compensation at the rate prescribed by law for Assistant
Secretaries of Commerce.

 (e) The members of the Trademark Trial and Appeal Board of
the Patent and Trademark Office shall each be paid at a rate
not to exceed the maximum rate of basic pay payable for GS -
16 of the General Schedule under section 5332 of title 5.

 35 U.S.C. 6.  Duties of Commissioner.

 (a)  The  Commissioner,  under  the  direction  of  the
Secretary of Commerce, shall superintend or perform all
duties required by law respecting the granting and issuing
of patents and the registration of trademarks; shall have
the authority to carry on studies, programs or exchanges of
items  or  services  regarding  domestic  and  international
patent and trademark law or the administration of the Patent
and Trademark Office>, including programs to recognize,
identify, assess and forecast the technology of patented
inventions and their utility to industry<; and shall have
charge of property belonging to the Patent and Trademark
Office. He may, subject to the approval of the Secretary of
Commerce, establish regulations, not inconsistent with law,
for the conduct of proceedings in the Patent and Trademark
Office.

 (b)  The  Commissioner,  under  the  direction  of  the
Secretary  of  Commerce,  may,  in  coordination  with  the
Department  of  State,  carry  on  programs  and  studies
cooperatively with foreign patent offices and international
intergovernmental  organizations,  or  may  authorize  such
programs and studies to be carried on, in connection with
the performance of duties stated in subsection (a) of this
section.

 (c)  The  Commissioner,  under  the  direction  of  the
Secretary of Commerce, may, with the concurrence of the
Secretary of State, transfer funds appropriated to the
Patent and Trademark Office, not to exceed $100,000 in any
year, to the Department of State for the purpose of making
special  payments  to  international  intergovernmental
organizations  for  studies  and  programs  for  advancing
international cooperation concerning patents, trademarks,
and related matters. These special payments may be in
addition to any other payments or contributions to the
international organization and shall not be subject to any
limitations imposed by law on the amounts of such other
payments or contributions by the Government of the United
States.

 37 CFR 1.351 Amendments to rules will be published.

 All amendments to the regulations in this part will be
published  in  the  Official  Gazette  and  in  the  FEDERAL
REGISTER.

 37 CFR 1.352 Publication of notice of proposed amendments.

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

 (b)  Oral hearings may be held at the discretion of the
Commissioner.

1001.01  Modes of Exercising Authority

 The Commissioner's authority to review and supervise the
work of the Office is exercised by the promulgation of the
Rules of Practice; issuance of orders, notices and memoranda
stating Office policies and modes for effectuating these
policies; decisions on petitions by applicants, and by the
designation of particular cases which must be submitted to
the  Commissioner  or  other  officials  authorized  by  the
Commissioner. The present chapter deals with the latter two
items.

 37 CFR 1.181(g) states, "The Commissioner may delegate to
appropriate  Patent  and  Trademark  Office  officials  the
determination of petitions."

 The various delegations to various Office officials are set
forth in this Chapter.

1002  Petitions to the Commissioner

 37 CFR 1.181.  Petition to the Commissioner.

 (a)  Petition may be taken to the Commissioner (1) from
any action or requirement of any examiner in the ex parte
prosecution of an application which is not subject to appeal
to the Board of Patent Appeals and Interferences or to the
court; (2) in cases in which a statute or the rules specify

that the matter is to be determined directly by or reviewed
by the Commissioner; and (3) to invoke the supervisory
authority of the Commissioner in appropriate circumstances.
For petitions in interferences, see § 1.644.

 (b)  Any such petition must contain a statement of the
facts involved and the point or points to be reviewed and
the action requested. Briefs or memoranda, if any, in
support thereof should accompany or be embodied in the
petition; and where facts are to be proven, the proof in the
form of affidavits or declarations (and exhibits, if any)
must accompany the petition.

 (c)  When  a  petition  is  taken  from  an  action  or
requirement of an examiner in the ex parte prosecution of an
application, it may be required that there have been a
proper request for reconsideration ( § 1.111) and a repeated
action by the examiner. The examiner may be directed by the
Commissioner  to  furnish  a  written  statement,  within  a
specified time, setting forth the reasons for his decision
upon the matters averred in the petition, supplying a copy
thereof to the petitioner.

 (d)  Where a fee is required for a petition to the
Commissioner the appropriate section of this part will so
indicate.  If  any  required  fee  does  not  accompany  the
petition, the petition will be dismissed.

 (e)  Oral hearings will not be granted except when
considered necessary by the Commissioner.

 (f)  Except as otherwise provided in these rules, any
such petition not filed within 2 months from the action
complained of, may be dismissed as untimely. The mere filing
of a petition will not stay the period for reply to an
Examiner's  action  which  may  be  running  against  an
application, nor act as a stay of other proceedings.

 (g)  The Commissioner may delegate to appropriate Patent
and  Trademark  Office  officials  the  determination  of
petitions.

 37 CFR 1.182.  Questions not specifically provided for.

 All cases not specifically provided for in the regulations
of this part will be decided in accordance with the merits
of each case by or under the authority of the Commissioner,
and such decision will be communicated to the interested
parties in writing. Any petition seeking a decision under
this section must be accompanied by the petition fee set
forth in § 1.17(h).

 37 CFR 1.183.  Suspension of rules.

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

 37 CFR 1.184.  Reconsideration of cases decided by
former Commissioners.

 Cases which have been decided by one Commissioner will not
be reconsidered by his successor except in accordance with
the principles which govern the granting of new trials.

  Petitions  on  appealable  matters  ordinarily  are  not
entertained. See MPEP § 1201.

 The mere filing of a petition will not stay the period for
replying to an examiner's action which may be running
against  an  application,  nor  act  as  a  stay  of  other
proceedings (37 CFR 1.181(f)). For example, if a petition to
vacate a final rejection as premature is filed within 2
months from the date of the final rejection, the period for
response to the final rejection is not extended even if the
petition is not reached for decision within that period.
However, if the petition is granted and the applicant has
filed an otherwise full response to the rejection within the
period for response , the case is not abandoned.

 37 CFR 1.181(f) provides that any petition under that rule
which  is  not  filed  "within  2  months  from  the  action
complained of may be dismissed as untimely." Often, the
"action complained of", for example, a requirement for a new
drawing, is included in the same letter as an action on the
merits of the claims, the latter having a 3 - month period
for  response.  Under  such  circumstances,  if  applicant
requests reconsideration, under 37 CFR 1.111(b), of the
requirement for a new drawing, the examiner's action on this
request, if adverse, establishes the beginning of the 2 -
month period for filing the petition. The petition must be
filed within this period even though the period for response
to the rejection of the claims may extend beyond the 2 -
month period. The 2 - month period is not extendible under
37 CFR 1.136(a) since the time is within the discretion of
the Commissioner.

 Form Paragraph 7.99 may be used where an insufficient fee
was filed with a petition.

¶ 7.99  Petition Dismissed, Proper Fee Not Submitted

  Applicant's  petition  under  37  CFR  [1]  filed  [2]  is
DISMISSED because the proper petition fee of [3] required
under 37 CFR 1.17 has not been submitted.

 Examiner Note:

 (1)  Petitions  under  37  CFR  1.48  for  correcting
inventorship require a fee as set forth in 37 CFR 1.17(h).

 (2)  Petitions to suspend action under 37 CFR 1.103, to
withdraw an application from issue under 37 CFR 1.313, and
for consideration of an amendment under 37 CFR 1.312 after
payment of the issue fee, require a fee as set forth in 37
CFR 1.17(i)(1).

 (3)  Petitions for an extension of time under 37 CFR
1.136(a) require varying fees. See 37 CFR 1.17(a) - (d).

1002.01  Procedure

 Petitions, together with the respective application files,
are sent to the official having the delegated authority to
decide the petition. The petition may be referred to the

examiner for a formal statement under 37 CFR 1.181(c) or for
an informal memorandum, MPEP § 711.03(d).

 Where a formal statement under 37 CFR 1.181(c) is made, a
copy thereof is mailed to the petitioner by the examiner
unless the examiner is otherwise directed, and the file and
petition, accompanied by the original copy of his statement,
are returned to the official handling the petition. If an
informal memorandum is requested, no copy thereof is mailed
to the petitioner by the examiner.

 After the decision has been rendered, the decision is
entered on the "Contents" of the file wrapper which is then
returned to the primary examiner, who will act in accordance
with the decision.

1002.02  Delegation of Authority To Decide Petitions [R -
3]

 Petitions to the Commissioner are decided in accordance
with the following delegation of authority.

 In any case in which the authority to decide the petition
has been delegated as indicated in MPEP § 1002.02(b), (f),
(g), (j) and (o), a denial of a petition may be viewed as a
final agency decision **. A dismissal of a petition, a
denial  of  a  petition  without  prejudice,  and  other
interlocutory orders are not final agency decisions.

 In accordance with 37 CFR 1.181(g), the authority to decide
petitions to the Commissioner, not otherwise delegated, has
been delegated to various Office officials. Generally, these
officials  will  decide  petitions  as  specified  in  the
following  sections  for  the  effective  operation  of  the
Office. Also listed are certain petitions which are not,
strictly  speaking,  to  the  Commissioner  but  have  been
committed by statute or rule to the designated officials.

 Authority not herein delegated has been reserved to the
Commissioner and may be delegated to appropriate officials
on an ad hoc basis.

1002.02(b)  Petitions and Requests Decided in the Office
of Petitions [R - 3]

 All petitions decided by the Special Program Law Office and
the Office of Petitions, and inquiries relating thereto,
should be directed to "Petitions Information, Crystal Park
One, Suite 520."

 1.  Petitions  to  revive  an  abandoned  national,
nonprovisional or provisional patent application, 37 CFR
1.137,  1.139  (both  unavoidable  delay  and  unintentional
delay), MPEP § 711.03(c).

 2.  Petitions  under  37  CFR  1.183  for  waiver  or
suspension of rules not otherwise provided for.

 3.  Petitions to invoke the supervisory authority of
the Commissioner under 37 CFR 1.181 in matters not otherwise
provided for.

 **

 *>4<. Petitions for acceptance of late priority papers in

patent applications, 37 CFR 1.55, MPEP § 201.14(a) and (c).

 *>5<. Petitions for deferment of issuance of patents, 37
CFR 1.314, MPEP § 1306.01.

  *>6<.  Petitions  for  express  abandonment  of  patent
applications after payment of the issue fee, MPEP § 711.01.

 *>7<. Petitions to accept late payment of issue fees, 37
CFR 1.155 and 1.316, MPEP § 712.

 *>8<. Petitions to accept late payment of balance of issue
fee due, 37 CFR 1.317, MPEP § 712.

 **

 *>9<. Petitions relating to assignments and issuance of
patents, MPEP § 1308.

 *>10<. Petitions relating to public use proceedings, 37 CFR
1.292.

 **

 *>11<. Petitions for the withdrawal of attorney under 37
CFR 1.36 in patent applications involved in proceedings
before the Office of the Deputy Assistant Commissioner for
Patent Policy and Projects.

  *>12<.  Petitions  under  37  CFR  1.182  in  matters  not
otherwise provided for.

 *>13<. Petitions to expunge papers from patent application
files or patent files, 37 CFR 1.182.

 *>14. Requests by the examiner to the Board of Patent
Appeals and Interferences for reconsideration of a decision,
MPEP § 1214.04.

 *>15<. Petitions to review refusal to accept and record
maintenance fee payment filed prior to the expiration of a
patent, 37 CFR 1.377, MPEP § 2580.

 *>16<. Petitions to accept delayed payment of maintenance
fee in an expired patent, 37 CFR 1.378, MPEP § 2590.

 *>17<. Petitions to issue patent in name of the assignee
recorded after payment of the issue fee, 37 CFR 3.81(b).

 *>18<. Petitions to review decision of Group Director, 37
CFR 1.181.

 *>19<. Petitions to withdraw a holding of abandonment not
otherwise delegated, 37 CFR 1.181.

  *>20<.  Requests  to  order  a  Commissioner  initiated
reexamination proceeding, 37 CFR 1.520.

 **

  *>21<.  Petitions  to  *>accept  late  papers  in<  a
reexamination proceeding because of unavoidable delay, 35
U.S.C. 133.

 *>22<. Petitions for access to patent applications under 37

CFR 1.14 with the exception of applications involved in or
related to a proceeding before the Board of Patent Appeals
and Interferences, MPEP § 103, § 104, and § 1901.05.

 *>23<. Petitions relating to reexamination proceedings,
under 37 CFR 1.182 and 1.183.

 *>24<. Petitions for acceptance of national applications
without participation of one or more inventors under 37 CFR
1.47, MPEP § 409.03.

 **

 *>25<. Petitions relating to patent term extension, 37 CFR
1.710 - 1.785.

 *>26<. Petitions relating to the filing date of patent
applications under 37 CFR 1.53, 1.60 and 1.62, MPEP § 506.

 *>27<. Petitions relating to filing and/or issuance of
divisional reissue applications, 37 CFR 1.177, MPEP § 1451.

 **

  *>28<.  Petitions  under  37  CFR  1.181  to  review  a
determination of the length of the patent term extension
under 37 CFR 1.701.

 *>29<. Petitions to convert a nonprovisional application
filed under 37 CFR 1.53(b)(1) to a provisional application
under 37 CFR 1.53(b)(2) where the nonprovisional application
is before the Office of Petitions or the Special Program Law
Office.

1002.02(c)  Petitions and Requests Decided by the Group
Directors [R - 3]

 1.  Petitions to make patent applications special under
37 CFR 1.102, MPEP § 708.02:

 (a)  on the ground of applicant's age or state of
health, MPEP § 708.02, items III & IV;

 (b)  a  continuation  -  in  -  part  of  an  earlier
application;

 (c)  under the Environmental Quality Program, MPEP §
708.02 , item V;

 (d)  under the Energy Program, MPEP § 708.02, item VI.

 (e)  because the application involves safety of research
in the field of Recombinant DNA, MPEP § 708.02, item VII.

 (f)  under the Special Examining Procedure for certain
new applications-accelerated examination, MPEP § 708.02,
item VIII.

 (g)  superconductivity, MPEP § 708.02, item IX.

 (h)  inventions relating to HIV/AIDS and cancer, MPEP §
708.02, item X.

>(i)  relating to inventions for countering terrorism, MPEP
§ 708.02, item XI.

 (j)  on the ground of prospective manufacture, MPEP §
708.02, item I.

 (k)  on the ground of infringement, MPEP § 708.02, item
II.<

 (*>l<) for reasons not otherwise provided for.

 2.  Petitions or requests to reopen prosecution of
patent applications after decision by the Board of Patent
Appeals and Interferences under 37 CFR 1.198, where no court
action has been filed, MPEP § 1214.04, third paragraph and §
1214.07.

 3.  Petitions  from  a  final  decision  of  examiner
requiring restriction in patent applications. 37 CFR 1.144,
MPEP § 818.03(c) or holding lack of unity of invention in an
international application.

 4.  Petitions invoking the supervisory authority of the
Commissioner under 37 CFR 1.181 involving any ex parte
action  or  requirement  in  a  patent  application  by  the
examiner which is not subject to appeal (**>37 CFR 1.191<)
and not otherwise provided for, as for example:

 (a)  prematureness of final rejection, MPEP § 706.07(c);

 (b)  refusal to enter an amendment, 37 CFR 1.127, MPEP §
714.19;

 (c)  holding of abandonment, MPEP § 711.03(c);

 (d)  requirement  to  cancel  "new  matter"  from
specification, MPEP § 608.04(c);

 (e)  relative to formal sufficiency and propriety of
affidavits under 37 CFR 1.131 (MPEP § 715.08) 1.132 (MPEP §
716) and 1.608, MPEP § 2308 - § 2308.03;

 (f)  refusal to initiate an interference under 37 CFR
1.601(i), MPEP § 2306;

 (g)  refusal to enter an amendment under 37 CFR 1.312,
MPEP § 714.16(d);

 (h)  resetting period of response, MPEP § 710.06.

 5.  Petitions under 37 CFR 1.113 relating to objections
or requirements made by the examiners.

 6.  Petitions for return of original oaths of patent
applications, MPEP § 604.04(a).

 7.  Requests  for  extensions  of  a  set  shortened
statutory period under 37 CFR 1.136(b) >in applications
pending in the examining group,< MPEP § 710.02(e).

 8.  Petitions under 37 CFR 1.193(a) relating to the
form of the appeal.

 9.  Petitions concerning appealed patent applications
before transfer of jurisdiction to the Board of Patent
Appeals and Interferences (e.g., extension of time under 37
CFR 1.136(b) for filing an appeal brief). MPEP § 1206.

 10.  Request by applicant for a second or subsequent
suspension of action in patent applications under 37 CFR
1.103. MPEP § 709.

 11.  Petitions from refusal to issue a Certificate of
Correction for a patent not involved in an interference (37
CFR 1.181, MPEP § 1480 - § 1485).

 12.  Petitions to reinstate appeals dismissed in the
group.

 13.  Petitions  from  the  denial  of  a  request  for
reexamination, 37 CFR 1.515, MPEP § 2248.

 14.  Petitions for consideration of an amendment under
37 CFR 1.312(b) filed after payment of issue fee, MPEP §
714.16.

 15.  Petitions  for  withdrawal  of  attorney  from
application pending in examining groups, 37 CFR 1.36.

 16.  Requests for extension of time in reexamination
proceedings, 37 CFR 1.550(c) >in proceedings pending in the
examining group<.

 17.  Petition  for  second  or  subsequent  change  of
inventorship in an application under 37 CFR 1.48. See MPEP §
201.03.

 18.  Petitions under 37 CFR 1.84 to accept photographs
or color drawings in patent applications.

  19.  Petitions  under  37  CFR  1.129(b)(2)  traversing  a
restriction requirement made in an application which is
subject to the transitional restriction provisions.

 20.  Petitions to convert a nonprovisional application
filed under 37 CFR 1.53(b)(1) to a provisional application
under 37 CFR 1.53(b)(2) where the nonprovisional application
is before the Examining Group.

 >21. Requests for interviews with examiner after a patent
application has been sent to issue (Notice of Allowability
mailed), MPEP § 713.10, or after transfer of jurisdiction to
the Board of Patent Appeals and Interferences.<

 *>22<. Petitions to withdraw patent applications from issue
before payment of the issue fee, 37 CFR 1.313(a).

 The examining groups should use Form Paragraph 10.01 to
notify applicant that the application is withdrawn from
issue where the issue fee has not been paid and should use
Form Paragraph 10.02 when preparing a paper to request
withdrawal of an application from issue after payment of the
issue fee.

¶ 10.01  Withdrawal From Issue, Fee Not Paid

 In re Application of [1]  : Appl. No.: [2] : WITHDRAWAL
FROM ISSUE

 Filed: [3]  : 37 CFR 1.313

 For: [4]  :

 The purpose of this communication is to inform you that the
above identified application is being withdrawn from issue
pursuant to 37 CFR 1.313.

 The application is being withdrawn to permit reopening of
prosecution. The reasons therefor will be communicated to
you by the examiner.

 Patent and Trademark Office records reveal that the issue
fee has not been paid. If the issue fee has been submitted,
the applicant may request a refund, or may request that the
fee be credited to a deposit account. However, applicant may
wait until the application is either again found allowable
or held abandoned. If the application is allowed, upon
receipt of a new Notice of Allowance and Issue Fee Due,
applicant may request that the previously submitted issue
fee be applied toward payment of the issue fee in the amount
identified on the new Notice of Allowance and Issue Fee Due.
If the application is abandoned, applicant may request
either a refund or a credit to a deposit account.

 The application is being forwarded to the examiner for
action.

 ________________________

 [5]

 Director, Patent Examining Group [6]

 [7]

 EXAMINER NOTE: 1. This letter should be printed on PTO
letterhead and signed by the Group Director. 2. Do NOT use
this form letter if the issue fee has been paid. Use form
paragraph 10.02 if the issue fee has been paid. 3. In
bracket 7, insert the correspondence address of record.

¶ 10.02  Withdrawal From Issue, Fee Has Been Paid

 Date: [1]

 From: Director, Group [2]

 To: **>Director, Office of Patent Publication<

 Applicant: [3]

 Issue Fee Paid Date: [4]

 Application No.: [5]

 Filed: [6]

 Date sent to issue: [7]

 Title: [8]

 It is requested that the above - identified application be
withdrawn from issue for the following purpose: [9].

 The issue fee has been paid. It is directed that this
application be withdrawn from issue under 37 CFR 1.313 and
returned to the jurisdiction of examining Group [10].

 The examiner is authorized and directed to take prompt
appropriate  action  on  this  case  including  notifying
applicant of the new status of this application. Return this
application promptly to the Office of the Director of Group
[11].

 **

 The following procedure must be followed when the Group
Director decides to withdraw an application from issue
before payment of the issue fee:

 i.  The CRT Screen on PALM is used to determine if the
issue fee has been paid.

 ii.  If the issue fee has been paid, a memo to the
Office of *>Patent Publication< is required. (See Form
Paragraph 10.02, MPEP § 1002.02(b).)

 iii.  If the issue fee has not been paid, and the
deadline for payment has not expired, the Group Director
must mail a "Withdrawal from Issue" letter to the applicant
to effectuate the withdrawal from issue. A copy of the
"Withdrawal  from  Issue"  letter  should  be  sent  to  the
**>Office of Patent Publication<. After a "Withdrawal from
Issue"  letter  is  mailed  by  the  examining  group,  the
examining group must:

 a.  Cross out the batch number on the face of the file;

 b.  Cross out the date mailed for the "Notice of
Allowance" on the face of the file wrapper and write or
stamp "WITHDRAWN";

 c.  Change the status of the application to status code
066 (Previous Action Withdrawn - Awaiting Further Action);
and

 d.  Forward the file to the examiner for prompt action.

 The processing will be done in the Examining Group without
the need to send the application to Publishing Division.

1002.02(c)(1)  Petitions Decided by the Group Director of
Group 2200

 In addition to the items delegated to all Group Directors
under MPEP § 1002.02(c), authority to decide the following
is delegated to the Group Director of Group 2200:

 1.  All petitions filed under 35 U.S.C. 267, to extend
the  time  for  taking  action  in  United  States  -  owned
applications wherein the invention is important to the
armament or defense of the United States.

 2.  All petitions under 37 CFR 1.103(c), to suspend
action in United States - owned applications wherein the
publication of the invention might be detrimental to the
public safety or defense.

 Any petitions filed under 35 U.S.C. 267 and/or 37 CFR
1.103(c) in any area of the Office must be forwarded to the
Director of Group 2200 for decision thereon.

 3.  Petitions under 37 CFR 5.12(a) for foreign license
to file patent applications in foreign countries, MPEP §
140.

 4.  Petitions for rescission of secrecy order, 37 CFR
5.4, MPEP § 120.

 5.  Petition to permit disclosure of subject matter
under a secrecy order, 37 CFR 5.5(b), MPEP § 120.

 6.  Petition for modification of secrecy order, 37 CFR
5.5(c), MPEP § 120.

 7.  Petition for retroactive foreign filing license, 37
CFR 5.25, MPEP § 140.

 8.  Petitions  relating  to  refusal  of  request  for
publication of a Statutory Invention Registration, 37 CFR
1.295.

 9.  Petitions relating to request for withdrawal of
request  for  publication  of  a  Statutory  Invention
Registration, 37 CFR 1.296.

 10.  Petitions  relating  to  DOE  property  rights
statements under 42 U.S.C. 2182.

 11.  Petitions  relating  to  NASA  property  rights
statements under 42 U.S.C. 2457.

 12.  Petitions relating to foreign filing licenses under
35 U.S.C. 184.

 13.  Petitions  concerning  review  of  security  or
government interest matters not otherwise provided for.

 14.  Petitions relating to any application under a
secrecy order pursuant to 35 U.S.C. 181, including petitions
to expunge subject matter from the application to overcome
the secrecy order.

1002.02(c)(2)  Petitions Decided by the Group Director
of Group 1800 [R - 3]

 In addition to the items delegated to all Group Directors
under MPEP § 1002.02(c), authority to decide the following
is delegated to the Group Director of Group 1800:

 1.  Petition regarding sequence rules, 37 CFR 1.821 -
1.825.

 >2. Petitions to make biotechnology applications special
where applicant is a small entity, MPEP § 708.02, item XII.<

1002.02(c)(3)  Petitions Decided by the Group Director
of Group 2900 [R - 3]

 In addition to the items delegated to all Group Directors
under MPEP § 1002.02(c), authority to decide the following
petitions and requests filed in design applications is
delegated to the Group Director of Group 2900:

 1.  Petitions  to  revive  an  abandoned  national
application,  37  CFR  1.137  (both  unavoidable  delay  and
unintentional delay), MPEP § 711.03(c).

 2.  Petitions to accept late payment of issue fees, 37
CFR 1.155, MPEP § 712.

 **

 *>3<. Petitions for access to patent applications under 37
CFR 1.14 with the exception of applications involved in or
related to a proceeding before the Board of Patent Appeals
and Interferences, MPEP § 103, § 104, and § 1901.05.

 *>4<. Petitions for acceptance of national applications
without participation of one or more inventors under 37 CFR
1.47, MPEP § 409.03.

 **

 *>5<. Petitions relating to the filing date of patent
applications under 37 CFR 1.53, 1.60 and 1.62, MPEP § 506.

1002.02(d)  Petitions and Matters Decided by Supervisory
Examiners [R - 3]

 1.  Entry of amendments under 37 CFR 1.312 which embody
more than merely the correction of formal matters without
changing the scope of any claim, MPEP § 714.16, § 714.16(d).

 2.  Approval of any new ground of rejection made after
the filing of an appeal brief. This requirement extends to
new grounds of rejection made either in an examiner's answer
or in an Office action reopening prosecution. Evidence of
the approval should appear on applicant's copy of the Office
action or answer as well as the record copy, MPEP § 1208.01.

 3.  Requests for a Certificate of Correction submitted
under 37 CFR 1.322 or 1.323 unless the error is clearly
minor, clerical or typographical, in which case it is
handled by the Certificate of Correction Branch.

 4.  Requests for a Certificate of Correction to correct
a claim even if the request is submitted under 37 CFR 1.322.

 5.  Petitions under 37 CFR 1.324 to correct errors in
joining inventors in a patent that is not involved in an
interference, MPEP § 1481.

 **

  *>6<.  Petitions  to  consider  Information  Disclosure
Statement after final action or notice of allowance but
before payment of the issue fee, 37 CFR 1.97(d).

  *>7<.  Letters  to  an  applicant  suggesting  claims  for
purposes of interference, or the submission of Form PTO -
850, where one or more claims of one application would
differ from corresponding claims of another application. See
37 CFR 1.603 and MPEP § 2303.

 *>8<. Amendments presented after decision in an appeal by
the Board of Patent Appeals and Interferences as to which
the  primary  examiner  recommends  entry  as  placing  the
application in condition for allowance. See MPEP § 1214.07.

1002.02(e)  Petitions Decided by Primary Examiners [R -
3]

 Petitions under 37 CFR 1.48 for correction of inventorship
in applications **.

1002.02(f)  Petitions and Matters Decided by the Chief
Administrative Patent Judge of the Board of Patent Appeals
and Interferences [R - 2]

 The Chief Administrative Patent Judge is authorized to
redelegate authority to decide any of these petitions or
matters to the Vice Chief Administrative Patent Judge of the
Board of Patent Appeals and Interferences.

 1. Designation of members of the Board of Patent Appeals
and Interferences to hear appeals and decide interferences,
both initially and on request for reconsideration. 35 U.S.C.
7.

 2.  Designation of members of the Board of Patent
Appeals and Interferences to conduct proceedings in an
interference. 37 CFR 1.610(a).

 3.  Designation of members of the Board of Patent
Appeals  and  Interferences  to  decide  requests  for
reconsiderations. 37 CFR 1.640(c).

 4.  Requests related to superintending the functions of
the Board of Patent Appeals and Interferences, including:

 a.  Petitions under 37 CFR 1.644 in interferences
declared on or after February 11, 1985 (commonly known as
"new rule" interferences which are governed by 37 CFR 1.601
through 1.689).

 b.  Petitions  under  37  CFR  1.244  (1984)  in
interferences declared prior to February 11, 1985 (commonly
known as "old rule" interferences which are governed by 37
CFR 1.201 through 1.288 (1984)).

 c.  Petitions under 37 CFR 1.181, 1.182, and 1.183 from
actions of the Board of Patent Appeals and Interferences or
of  personnel  at  the  Board  or  Patent  Appeals  and
Interferences.

 d.  Petitions  under  35  U.S.C.  135(c)  and  37  CFR
1.666(c)  to  permit  the  filing  of  an  agreement  or
understanding during the six - month period subsequent to
termination of an interference.

 e.  Petitions under 37 CFR 1.666(b) for access to
copies of an interference agreement or understanding filed
under 35 U.S.C. 135(c), MPEP § 2366.

 f.  Petitions under 37 CFR 1.324 to correct errors in
joining inventors in a patent involved in an "old rule"
interference.

 g.  Petitions from a decision under 37 CFR 1.612(a)
granting or denying access by a party to an interference to
pending and abandoned patent applications, MPEP § 103.

 h.  Petitions for an extension of time to file a
request for reconsideration of a decision of the Board of
Patent Appeals and Interferences in an ex parte case.

 i.  Petitions from a decision under 37 CFR 1.615(b)
authorizing or declining to authorize continued concurrent
prosecution of an application involved in an interference
proceeding.

 j.  Petitions from a decision under 37 CFR 1.613(d)
declining to authorize a withdrawal of an attorney or agent
from representing a party involved in an interference.

 k.  Petitions from a refusal to issue a certificate of
correction for a patent that is involved in an "old rule"
interference.

 l.  Petitions from a decision granting or denying a
request for a certificate of correction under 37 CFR 1.322
and  1.323  *>for<  a  patent  involved  in  a  "new  rule"
interference.

 m.  Petitions seeking disqualification of an attorney
or agent under 37 CFR 10.130(b) in an inter partes case
pending  before  the  Board  of  Patent  Appeals  and
Interferences.

1002.02(g)  Petitions Decided by the Administrative
Patent Judges [R - 2]

 1.  Petitions  for  access  to  unopened  preliminary
statements under 37 CFR 1.631.

 2.  Petitions under 37 CFR 1.615 for concurrent ex
parte and  inter partes prosecution of patent applications,
MPEP § 2315.

 3.  Petitions for the withdrawal of attorney under 37
CFR 1.36 in patent applications involved in interference
proceedings under 37 CFR 1.601 - 1.688 before the Board of
Patent Appeals and Interferences, 37 CFR 1.613(d).

 4.  A request for a Certificate of Correction for a
patent that is involved in an interference conducted under
37 CFR 1.601 - 1.688 * presented via a motion under 37 CFR
1.635.

 5.  Motions to correct errors in joining inventors in
proceedings under 37 CFR 1.601 - 1.688, 37 CFR 1.634.

 See also MPEP § 1002.02(j).

1002.02(i)  Petitions Decided by the Assistant
Commissioner for Trademarks

 Petitions relating to Trademarks are covered in Chapter
1700 of the Trademark Manual of Examining Procedure.

1002.02(j)  Petitions Decided by the Board of Patent
Appeals and Interferences

 Requests under 37 CFR 1.197(b) for a reconsideration or
modification of a decision of the Board of Patent Appeals
and Interferences. MPEP § 1214.03.

1002.02(k)  Petitions Decided by the Solicitor

 1.  Petitions for extension of time in court matters 35
U.S.C. 142, 145, 146.

 2.  Petitions relating to ex parte questions in cases
before the Court of Appeals for the Federal Circuit.

 3.  Requests filed under the Freedom of Information
Act.

 The Office of the Solicitor is available to render legal
advice to any deciding official in connection with any
petition.

1002.02(l)  Requests Decided by the Certificates of
Correction Branch [R - 3]

 1.  Requests for Certificates of Correction under 37
CFR 1.322 or 1.323 except for denials on grounds requiring
consideration by the Chief Administrative Patent Judge or
the supervisory primary examiners otherwise provided for,
MPEP § 1480 - § 1485.

 2.  Petitions  to  issue  corrected  patent,  37  CFR
1.322(b).

 >3. Request to change inventorship pursuant to court order,
37 CFR 1.324, MPEP § 1481.<

1002.02(m)  Petitions Decided by the Director of
Enrollment and Discipline

 1.  Petitions relating to registration.

 2.  Requests for limited recognition under 37 CFR 10.9.

 3.  Petitions for exceptions to undertakings under 37
CFR 10.10(b)(2), MPEP § 1702.

 4.  Petitions  for  regrading  of  registration
examinations under 37 CFR 10.7(c).

 5.  Petitions for reinstatement under 37 CFR 10.160.

 6.  Petitions to suspend the rules under 37 CFR 10.170.

1002.02(o)  Petitions and Other Matters Decided by the
Deputy Commissioner of Patents and Trademarks

 The authority to take the following actions has been
delegated  to  the  Deputy  Commissioner  of  Patents  and
Trademarks.

 1.  Decide petitions to the Commissioner in patent
interference proceedings under 37 CFR 1.644.

 2.  Decide petitions to the Commissioner from actions
taken by the Board of Patent Appeals and Interferences.

 3.  Decide petitions (under 37 CFR 1.304 or 37 CFR
2.145(d)) seeking to extend the time for filing a notice of
appeal to the U.S. Court of Appeals for the Federal Circuit
or for commencing a civil action seeking judicial review of
a decision of the Board of Patent Appeals and Interferences
or the Trademark Trial and Appeal Board.

 4.  Decide petitions under 37 CFR 10.2(c) from a final
decision of the Director of Enrollment and Discipline.

 5.  Render final decisions in proceedings under 35
U.S.C. 32 in which the Director of Enrollment and Discipline
seeks to exclude or suspend a practitioner from practice
before the Patent and Trademark Office.

 6.  Render final decisions in proceedings under 35
U.S.C. 32 seeking to disqualify a practitioner and/or the
practitioner's firm in all cases in the Patent and Trademark
Office.

 If a vacancy in the position of Deputy Commissioner for
Patents and Trademarks, decisions on petitions in patent
interference cases will be signed by the Commissioner of
Patents and Trademarks.

 Upon receipt of a petition and without waiting for any
opposition, the entire interference file is to be forwarded
to the Office of the Solicitor. The Solicitor is directed to
promptly cause a review to be made of the petition and to
prepare a draft decision for the Deputy Commissioner or
Commissioner  as  may  be  appropriate.  The  Solicitor  is
authorized to take any interlocutory action, i.e., extending
times for filing oppositions and seeking judicial review,
obtaining agreement on facts from the parties, etc., as may
be necessary to promptly dispose of the petition.

1002.02(p)  Petitions and Matters Decided by the PCT
Legal Administrator [R - 3]

 1.  Petitions to withdraw the Notice of Acceptance
and/or filing receipt and indication of the steps necessary
for  completion  of  the  national  stage  in  a  national
application requesting treatment under 35 U.S.C. 371.

 2.  Petitions for withdrawal of attorney or agent of
record in proceedings before PCT Operations and/or the
Office of the PCT Legal Administrator, 37 CFR 1.36, MPEP §
402.06.

 3.  Petitions  for  access  to  an  international
application or a national application (i.e., a national
stage  application  or  a  national  application  which  is
continuing from an international application) pending in PCT
Operations and/or the Office of the PCT Legal Administrator.

 4.  Requests under 37 CFR 1.26 or 1.446 for refund of
fees paid in an international application or in a national
application  (i.e.,  a  national  stage  application  or  a
national  application  which  is  continuing  from  an
international application) before PCT Operations and/or the
Office of the PCT Legal Administrator.

 5.  Petitions under 37 CFR 1.182 to convert a national
application which was filed under 35 U.S.C. 371 to an
application filed under 35 U.S.C. 111(a) or to convert a
national application which was filed under 35 U.S.C. 111(a)
to an application filed under 35 U.S.C. 371.

 6.  Petitions under 37 CFR 1.181 to withdraw the
holding of abandonment where the holding was made in PCT
Operations or in the PCT Legal Office.

 7.  Petitions  under  37  CFR  1.181  to  invoke  the
Supervisory authority of the Commissioner in circumstances

arising in PCT Operations and/or the Office of the PCT Legal
Administrator other than the circumstances set forth in
paragraph 6, above.

 8.  Petitions under 37 CFR 1.137*>(both unavoidable
delay and unintentional delay)< to revive an application
filed under the Patent Cooperation Treaty (PCT).

 9.  Petitions  under  37  CFR  1.425  to  accept  the
signature in an international application on behalf of an
applicant.

 10.  Petitions under 37 CFR 1.47 or a submission under
37 CFR 1.42 or 1.44 to accept the signature in a national
stage application on behalf of an applicant.

 11.  Petitions under 37 CFR 1.48 or a submission under
37 CFR 1.28 (change of inventorship and small entity status,
respectively) in a national stage application prior to entry
into the national stage.

 12.  Petitions under 37 CFR 1.182 or 1.183 filed in an
international application relating to filing date matters,
drawing  problems,  priority  claim  issues,  Express  Mail
problems, Chapter II Demand problems, issues relating to
obvious error and issues relating to withdrawal.

 13.  Petitions under 37 CFR 1.182 or 1.183 dealing with
circumstances other than those set forth in paragraph 12,
but relating to issues under the PCT.

 14.  Decisions withdrawing an examiner's office action
in an application where the application is not in compliance
with the PCT provisions of the Treaty, U.S. Law or the
Regulations.

 15.  Petitions dealing with PCT related issues in an
application  filed  under  35  U.S.C.  111(a)  (such  as
applications where there is a potential claim for benefit
under 35 U.S.C. 365).

 16.  Petitions to convert a nonprovisional application
filed under 37 CFR 1.53(b)(1) to a provisional application
under 37 CFR 1.53(b)(2) where the nonprovisional application
is before PCT Operations and/or the Office of the PCT Legal
Administrator.

  >17. Petitions relating to international applications
filed under the Patent Cooperation Treaty not otherwise
provided for.<

1002.02(q)  Petitions Decided by the Director of Office
of **>Initial Patent Examination< [R - 3]

 1.  Petitions under 37 CFR 1.48(d) to add the name of
an inventor in a provisional application.

 >2. Petitions under 37 CFR 1.48(e) to delete the name of
the person erroneously named as an inventor in a provisional
application.<

 *>3<. Petitions to convert a nonprovisional application
filed under 37 CFR 1.53(b)(1) to a provisional application
under 37 CFR 1.53(b)(2) where the nonprovisional application
is before the Office of **>Initial Patent Examination< or

where the nonprovisional application is before the Office of
Publications.

 >4. Petitions under 37 CFR 1.182 to accept omitted page(s)
or drawing(s) and be accorded a filing date as of the date
of such submission.

 5.  Petitions to withdraw holding of abandonment where
notices of abandonment were mailed by the Office of Initial
Patent Examination.

 6.  Petitions for extension of time under 37 CFR
1.136(b) in applications before the Office of Initial Patent
Examination.<

  >1002.02(r)  Petitions Decided by the Director of
Office of Patent Publication [R - 3]

 1.  Petitions to withdraw holding of abandonment where
notices of abandonment were mailed by the Office of Patent
Publication.

 2.  Petitions to withdraw patent applications from
issue after payment of issue fee, 37 CFR 1.313(b), MPEP §
1308.<

1003  Matters Submitted to Group Directors

 The following is a list of matters which are submitted to
the appropriate Group Director, together with a reference to
any section of this manual where such matters are more fully
treated.

 1.  Requests for a Certificate of Correction in which
the:

 i.  request raises a novel issue or about which there
is some question.

 ii.  request is for a patent known to be in litigation.

 iii.  request deals with a legal matter (e.g., the
insertion of foreign priority data or cross referencing to
prior U.S. patent applications) unless the file reflects
that the examiner has already ruled on the matter and that
failure to print the material was clearly an Office error in
which  case  it  will  be  handled  by  the  Certificate  of
Corrections Branch.

 2.  Return of papers entered on the "Contents" of the
file wrapper. See MPEP § 201.14(c), § 604.04(a) and §
717.01.

 3.  Return of papers containing discourteous remarks.
See MPEP § 714.19, item 11 and MPEP § 714.25.

 4.  Certain  rejections  on  double  patenting  of
divisional (or parent) case when restriction or election of
species has previously been required, MPEP § 804.04.

 5.  Request for patentability report, MPEP § 705.01(e).

 6.  Actions which hold unpatentable claims copied from
a patent for interference purposes where the grounds relied
upon are equally applicable to the patentee, MPEP § 2307.02.

 7.  Interferences between applications neither of which
is in condition for allowance, MPEP § 2303.

 8.  Letters  requesting  jurisdiction  from  Board  of
Patent Appeals and Interferences of applications involved in
appeal or interference.

 9.  Letters to an applicant suggesting claims for
purposes of interference, the adoption of which by the
applicant would result in the withdrawal of an application
from issue, MPEP § 2305.04.

 10.  Examiner's answers containing a new interpretation
of law. See MPEP § 1208.

 11.  Proposed interferences between applications whose
effective filing dates differ by more than 6 months. See
MPEP § 2303.

 12.  Withdrawal from appeal of an application remanded
by the Board of Patent Appeals and Interferences. See MPEP §
1211.

 13.  Protests filed against issuance of a patent. See
MPEP § 1901.06.

 14.  Letters suggesting claims to an application in
issue for purposes of interference with a patent. See MPEP §
2305.04.

 15.  Requests  by  the  examiner  to  the  Board  for
reconsideration of a decision before forwarding to the
Office of Petitions, MPEP § 1214.04.

 16.  Second or subsequent suspension of action in patent
application under 37 CFR 1.103 on examiner's initiative.
MPEP § 709.

 17.  Request by the examiner to withdraw an application
from issue.

 All unusual questions of practice may be referred to the
Group Directors.

1004  Actions Which Require the Attention of a Primary
Examiner

 There are some questions which existing practice requires
the primary examiner to be personally responsible for. The
following actions fall in this category:

 Final rejection (MPEP § 706.07).

 Initiating an interference (MPEP § 2309).

 Disposition of an amendment in a case in interference
looking to the formation of another interference involving
that application (MPEP § 2364.01).

  Calling  Administrative  Patent  Judge's  attention  to  a
discovered reference which makes a claim corresponding to a
count unpatentable (37 CFR 1.641, MPEP § 2341).

 Rejection of a previously allowed claim (MPEP § 706.04).

 Classification of allowed cases (MPEP § 903.07).

 Holding of abandonment for insufficient response (MPEP §
711.03(a)).

 Suspension of examiner's action (MPEP § 709).

 Treatment of newly filed application which obviously fails
to comply with 35 U.S.C. 112 (MPEP § 702.01).

 Consideration of the advisability of a patentability report
(MPEP § 705.01(a)).

 Final requirements for restriction (MPEP § 803.01).

  Withdrawal  of  final  rejection  (MPEP  §  706.07(d)  and
706.07(e)).

 All examiner's answers on appeal (MPEP § 1208). Note also
MPEP § 1208.01 where a new ground of rejection or objection
is raised, or a new reference is cited, in the answer.

 Decision on reissue oath or declaration (MPEP § 1414 - §
1414.05).

 Decision on affidavits or declarations under 37 CFR 1.131
(MPEP § 715.08) and under 37 CFR 1.132 (MPEP § 716).

 Decision as to acceptance of amendments, statements, and
oaths or declarations filed under 37 CFR 1.48 (MPEP §
201.03).

 For a list of actions that are to be submitted to the group
directors, see MPEP § 1002.02(c) and § 1003.

1005  Exceptions to Partial Signatory Authority

 Examiners who are delegated partial signatory authority are
expected to sign their own actions with the exception of the
following actions which require the signature of the primary
examiner:

 Allowances (MPEP § 1302.13).

 Quayle actions (MPEP § 714.14).

 Final rejections (MPEP § 706.07).

 Actions on amendments submitted after final rejection (MPEP
§ 714.12).

 Examiners' answers on appeal (MPEP § 1208).

 Interference declarations or modifications (MPEP § 2309).

 Actions suggesting claims for interference purposes (MPEP §
2305).

 Actions involving copied patent claims (MPEP § 2307).

 Actions reopening prosecution (MPEP § 1214.07).

 Requests for withdrawal from issue (MPEP § 1308). 37 CFR
1.312 amendments (MPEP § 714.16).

 Rejection of previously allowed claim (MPEP § 706.04).

 Final holding of abandonment for insufficient response
(MPEP § 711.03(a)).

 Actions based on affidavit or declaration evidence (37 CFR
1.131 and 1.132 (MPEP § 715.08 and § 716)).

 Suspension of examiner's action (MPEP § 709).

 Reissue cases (decisions on reissue oath or declaration)
(MPEP § 1444).

 Requests for an extension of time under 37 CFR 1.136(b)
(MPEP § 710.02(e)).

 Examiner's amendments (MPEP § 1302.04).

 Final restriction requirements (MPEP § 803.01).

 Reexamination proceedings (MPEP § 2236).

  - -- - -- END - -- - --

  Chapter 1100 Statutory Invention Registration (SIR)

  1101  Request for Statutory Invention Registration (SIR)
  1103  Examination of a SIR
  1105  Review of Final Refusal to Publish a SIR
  1107  Preparing a SIR for Publication
  1109  Withdrawal of SIR Request
  1111  SIR Publication and Effect

1101  Request for Statutory Invention Registration (SIR)
[R - 1]

 35 U.S.C. 157.  Statutory invention registration.

 (a)  Notwithstanding any other provision of this title,
the Com missioner is authorized to publish a statutory
invention  registration  containing  the  specification  and
drawings of a regularly filed application for a patent
without examination if the applicant -

 (1)  meets the requirements of section 112 of this
title;

 (2)  has complied with the requirements for printing; as
set forth in regulations of the Commissioner;

 (3)  waives the right to receive a patent on the
invention within such period as may be prescribed by the
Commissioner; and

 (4)  pays application, publication, and other processing
fees established by the Commissioner.

 If an interference is declared with respect to such an
application, a statutory invention registration may not be
published unless the issue of priority of invention is
finally determined in favor of the applicant.

 (b)  The waiver under subsection (a)(3) of this section
by an applicant shall take effect upon publication of the
statutory invention registration.

 (c)  A  statutory  invention  registration  published
pursuant to this section shall have all of the attributes
specified for patents in this title except those specified
in section 183 and sections 271 through 289 of this title. A
statutory invention registration shall not have any of the
attributes specified for patents in any other provision of
law  other  than  this  title.  A  statutory  invention
registration published pursuant to this section shall give
appropriate notice to the public, pursuant to regulations
which  the  Commissioner  shall  issue,  of  the  preceding
provisions of this subsection. The invention with respect to
which a statutory invention certificate is published is not
a patented invention for purposes of section 292 of this
title.

 (d)  The Secretary of Commerce shall report to the
Congress  annually  on  the  use  of  statutory  invention
registrations. Such report shall include an assessment of
the degree to which agencies of the federal government are
making use of the statutory invention registration system,
the degree to which it aids the management of federally
developed technology, and an assessment of the cost savings
to the Federal Government of the uses of such procedures.

 37 CFR 1.293.  Statutory invention registration.

 (a)  An applicant for an original patent may request, at
any time during the pendency of applicant's pending complete
application,  that  the  specification  and  drawings  be
published as a statutory invention registration. Any such
request must be signed by (1) the applicant and any assignee
of record or (2) an attorney or agent of record in the
application.

 (b)  Any  request  for  publication  of  a  statutory
invention registration must include the following parts:

 (1)  A waiver of the applicant's right to receive a
patent on the invention claimed effective upon the date of
publication of the statutory invention registration;

 (2)  The  required  fee  for  filing  a  request  for
publication  of  a  statutory  invention  registration  as
provided for in § 1.17(n) or (o);

 (3)  A statement that in the opinion of the requester,
the application to which the request is directed meets the
requirements of 35 U.S.C. 112; and

 (4)  A statement that, in the opinion of the requester,
the application to which the request is directed complies
with the formal requirements of this part for printing as a
patent.

 (c)  A waiver filed with a request for a statutory
invention registration will be effective, upon publication
of  the  statutory  invention  registration,  to  waive  the
inventor's right to receive a patent on the invention
claimed in the statutory invention registration, in any
application for an original patent which is pending on, or
filed after, the date of publication of the statutory

invention registration. A waiver filed with a request for a
statutory invention registration will not affect the rights
of any other inventor even if the subject matter of the
statutory  invention  registration  and  an  application  of
another inventor are commonly owned. A waiver filed with a
request for a statutory invention registration will not
affect any rights in a patent to the inventor which issued
prior to the date of publication of the statutory invention
registration unless a reissue application is filed seeking
to enlarge the scope of the claims of the patent. See also §
1.106(e).

 A request for a statutory invention registration (SIR) may
be  filed  at  the  time  of  filing  *  >a  nonprovisional<
application  for  patent,  or  may  be  filed  later  during
pendency  of  *  >a  nonprovisional<  application.  The  fee
required (37 CFR 1.17(n) or (o)) depends on when the request
is filed. The application to be published as a SIR must be
complete as set forth in 37 CFR 1.51(a)>(1)< including a
specification  with  a  claim  or  claims,  an  oath  or
declaration, and drawings when necessary. Applicants should
use the format set forth in form PTO/SB/94, Request for
Statutory Registration. >A provisional application cannot
include a request for a SIR.<

 Requests for statutory invention registrations, including
those submitted in utility, plant, and design applications,
are handled in Examining Group 2200. Accordingly, incoming
new applications which include a request for a SIR will be
processed like other new applications in the Application
Processing Division and then forwarded to Group 2200. Group
2200 may be assisted by other examining groups when the
subject matter of the application makes it necessary or
desirable. For example, Group 1800 may handle issues under
35 U.S.C. 112 in applications involving biotechnology.

 Applications which are already assigned to examining groups
other than Group 2200 and which receive a request for a SIR
(or any other indication that they are to be published as a
SIR) should be forwarded with a brief explanation to Group
2200 via the clerical staff of the examining group to which
the application is assigned. The forwarding group should
first determine whether an Office action has been mailed in
the application and issue proper SIR disposal credit to the
examiner who prepared any such action where appropriate.
Group 2200 R examiners will determine whether the request
for a SIR is proper. Non - Group 2200 examiners should make
no comment to the applicant regarding what effect the filing
of a request for a SIR may have had on any outstanding
rejection.

 **  Double Click here to see the image  **

1103  Examination of a SIR [R - 1]

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

 (a)  Any request for a statutory invention registration
will be examined to determine if the requirements of § 1.293
have been met. The application to which the request is
directed will be examined to determine (1) if the subject
matter of the application is appropriate for publication,

(2) if the requirements for publication are met, and (3) if
the requirements of 35 U.S.C. 112 and § 1.293 of this part
are met.

 (b)  Applicant will be notified of the results of the
examination set forth in paragraph (a) of this section. If
the requirements of § 1.293 and this section are not met by
the request filed, the notification to applicant will set a
period of time within which to comply with the requirements
in order to avoid abandonment of the application. If the
application does not meet the requirements of 35 U.S.C. 112,
the notification to applicant will include a rejection under
the appropriate provisions of 35 U.S.C. 112. The periods for
response established pursuant to this section are subject to
the extension of time provisions of § 1.136. After response
by the applicant, the application will again be considered
for publication of a statutory invention registration. If
the requirements of § 1.293 and this section are not timely
met, the refusal to publish will be made final. If the
requirements of 35 U.S.C. 112 are not met, the rejection
pursuant to 35 U.S.C. 112 will be made final.

 (c)  If the examination pursuant to this section results
in  approval  of  the  request  for  a  statutory  invention
registration the applicant will be notified of the intent to
publish a statutory invention registration.

  A  Group  2200  examiner  will  determine  whether  the
application in which a request for a statutory invention
registration has been filed is a pending >nonprovisional<
application. If the application was abandoned at the time
the request was filed, has been patented, or has been
allowed and the issue fee paid, the examiner should return
the SIR request to the requester accompanied by a Return of
Statutory Invention Registration Request to Requester notice
(form PTOL - 442).

  If  the  application  is  pending,  the  examiner  should
ascertain whether an Office action with a rejection under 35
U.S.C. 112 has been issued and not responded to. If so, and
if there remains any time to respond to the rejection, the
examiner  should  send  the  applicant  a  courtesy  notice
requiring  a  timely  response.  If  no  time  for  response
remains, the application is abandoned and the examiner
should inform the applicant of this fact.

 After the Group 2200 examiner has ascertained that all
outstanding  rejections  under  35  U.S.C.  112  have  been
responded to, the examiner should verify that the request
for a SIR meets the requirements of 37 CFR 1.293. First,
applicant should be notified of any defects in the signature
on the SIR request or of any inadequacy of the SIR fee. A 1
- month time period should be set for applicant to correct
the signature or fee before any further consideration of the
SIR request is given. Form PTOL - 444 may be used for this
purpose. Next, applicant should be given 1 month to correct
any other informalities in the SIR request under 37 CFR
1.293 and any informalities in the application under 37 CFR
1.294  using  a  Notice  of  Informal  Statutory  Invention
Registration (SIR) Request, form PTOL - 445. The examiner
should also determine whether the application complies with
35 U.S.C. 112. If not, a rejection with a 3 - month
shortened statutory period for response should be made using
a Notice of Noncompliance with 35 U.S.C. 112 of application
having SIR Request, form PTOL - 448. Both form PTOL - 445

and form PTOL - 448 can be mailed at the same time. If they
are, applicant should be given a 3 - month shortened
statutory period to respond to both forms.

 If applicant's response to form PTOL - 445 does not correct
the defects, the SIR request should be finally refused using
a Notice of Final Refusal of Informal Statutory Invention
Registration (SIR) Request, form PTOL - 446. If applicant's
response to the rejection set forth on form PTOL - 448 does
not bring the application into compliance with 35 U.S.C.
112, the rejection should be made final.

 After the application complies with 37 CFR 1.293, 37 CFR
1.294, and 35 U.S.C. 112, the examiner should determine
whether  the  application  is  involved  in  a  pending
interference. If so, applicant should be notified, using
form PTOL - 449, that no decision will be made on the SIR
request until the interference proceedings are concluded.

 If the applicant has lost priority of any claims due to a
concluded interference, applicant should be given 1 month,
using form PTOL - 449, to cancel the lost claims (if a
statutory  invention  registration  is  still  desired  with
claims on which priority was not lost) or to request
withdrawal  of  the  request  for  statutory  invention
registration (if further prosecution as to patentability is
desired). See MPEP § 1109. If none of the claims in the
application was lost in interference, and if the application
complies with 37 CFR 1.293, 37 CFR 1.294, and 35 U.S.C. 112,
then the application is in condition to be prepared for
publication. See MPEP § 1107.

 An application under secrecy order will be withheld from
publication during such period as the national interest
requires, and the applicant should be informed of this fact
by using a Notice of Statutory Invention Registration (SIR)
Acceptance (Form D - 11), form PTOL - 452.

1105  Review of Final Refusal to Publish SIR

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

 (a)  Any requester who is dissatisfied with the final
refusal to publish a statutory invention registration for
reasons other than compliance with 35 U.S.C. 112 may obtain
review of the refusal to publish the statutory invention
registration  by  filing  a  petition  to  the  commissioner
accompanied by the fee set forth in § 1.17(h) within one
month or such other time as is set in the decision refusing
publication.  Any  such  petition  should  comply  with  the
requirements of § 1.181(b). The petition may include a
request that the petition fee be refunded if the final
refusal to publish a statutory invention registration for
reasons  other  than  compliance  with  35  U.S.C.  112  is
determined to result from an error by the Patent and
Trademark Office.

 (b)  Any requester who is dissatisfied with a decision
finally rejecting claims pursuant to 35 U.S.C. 112 may
obtain review of the decision by filing an appeal to the
Board of Patent Appeals and Interferences pursuant to §
1.191. If the decision rejecting claims pursuant to 35
U.S.C.  112  is  reversed,  the  request  for  a  statutory
invention registration will be approved and the registration

published if all of the other provisions of § 1.293 and this
section are met.

 An applicant who is dissatisfied with a final refusal to
publish a SIR for reasons other than compliance with 35
U.S.C. 112 may obtain review by filing a petition as set
forth in 37 CFR 1.295(a). The petition should be directed to
the Group Director of Examining Group 2200.

 An applicant who is dissatisfied with a decision finally
rejecting claims under 35 U.S.C. 112 may obtain review by
filing an appeal with the Board of Patent Appeals and
Interferences as set forth in 37 CFR 1.295(b).

1107  Preparing a SIR for Publication [R - 1]

 In preparing * >a nonprovisional< application with a SIR
request for publication, the examiner should fill out the
face of the application file jacket in the same manner as in
a non - SIR application. Additionally, the examiner should
add the notation "OK for SIR" in the space provided for the
primary examiner's signature. A form PTO - 1547 is attached
to the label area of the file jacket to indicate that the
application is for a statutory invention registration. An
issue classification slip (form PTO - 270 or PTO - 328) is
filled out and attached inside the file jacket in the normal
manner with the additional notation of "SIR" added to the
left side of the space allocated for the patent number. The
index of claims inside the file jacket is filled out, with
the notation " * " indicating the claims to be published in
the SIR. If the application contains formal drawings, the
final official classification of the application and the
figure  to  be  published  in  the  Official  Gazette  are
indicated as in non - SIR applications in the spaces
provided by the Draftsman's stamp. Otherwise, a yellow tag
(form PTO - 1364) is attached to the file.

  A  Notice  of  Intent  to  Publish  Statutory  Invention
Registration, form PTOL - 451, is prepared and sent to the
applicant. Requirements for formal drawings (allowing a 3 -
month  shortened  statutory  period  for  response)  and
examiner's amendments may be attached to the Notice of
Intent  to  Publish  Statutory  Invention  Registration  as
needed. The application is then forwarded to Publication
Division.

1109  Withdrawal of SIR Request [R - 1]

 37 CFR 1.296.  Withdrawal of request for publication of
statutory invention registration.

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

  If  a  request  to  withdraw  a  SIR  is  filed  in  *  >a
nonprovisional< application which contains a SIR request
before a Notice of Intent to Publish Statutory Invention
Registration has been mailed, the Group 2200 examiner should
ascertain whether any outstanding rejection under 35 U.S.C.
112 is present in the application. If so, the examiner
should require a timely response to the rejection using a
Response to Request to Withdraw Request for a Statutory
Invention Registration, form PTOL - 450. After a timely
reply to the rejection is received, the request to withdraw
the  SIR  request  will  ordinarily  be  granted  and  the
application forwarded for further examination to whichever
examining group would ordinarily examine the art area in
which the application is classifiable.

 Any request to withdraw a SIR filed after the mailing date
of the Notice of Intent to Publish Statutory Invention
Registration must be in the form of a petition pursuant to
37 CFR 1.183 accompanied by the fee set forth in 37 CFR
1.17(h).  The  Director  of  Group  2200  will  inform  the
applicant of the decision on the petition via a form PTOL -
450 or Response to Petition under 37 CFR 1.295(a), form PTOL
- 447.

 Note that an original SIR application can be abandoned in
favor of a continuing application for a patent, claiming the
filing date of the earlier filed application, by filing an
express abandonment of the original application and a timely
request or petition to withdraw the request for a SIR prior
to publication of the SIR.

1111  SIR Publication and Effect [R - 1]

 37 CFR 1.297.  Publication of statutory invention
registration.

 (a)  If  the  request  for  a  statutory  invention
registration  is  approved,  the  statutory  invention
registration will be published. The statutory invention
registration  will  be  mailed  to  the  requester  at  the
correspondence address as provided for in § 1.33(a). A
notice  of  the  publication  of  each  statutory  invention
registration will be published in the  Official Gazette.

 (b)  Each statutory invention registration published
will include a statement relating to the attributes of a
statutory invention registration. The statement will read as
follows:

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

 Published SIR's are sequentially numbered in a separate "H"
series, starting with number "H1".

 In accordance with 35 U.S.C. 157(c), a published SIR will
be treated the same as a U.S. patent for all defensive
purposes, usable as a reference as of its filing date in the

same manner as a patent. A SIR is a "constructive reduction
to practice" under 35 U.S.C. 102(g) and "prior art" under
all applicable sections of 35 U.S.C. 102 including section
102(e). SIR's are classified cross - referenced, and placed
in the search files, disseminated to foreign patent offices,
stored in Patent and Trademark Office computer tapes, made
available in commercial data bases, and announced in the
Official Gazette.

 The waiver of patent rights to the subject matter claimed
in  a  statutory  invention  registration  takes  effect  on
publication  (37  CFR  1.293(c))  and  may  affect  the
patentability of claims in related applications without SIR
requests,  such  as  divisional  or  other  continuing
applications, since the waiver of patent rights is effective
for all inventions claimed in the SIR and would effectively
waive the right of the inventor to obtain a patent on the
invention claimed in the same application or in any other
application not issued before the publication date of the
SIR.  If  an  application  containing  generic  claims  is
published as a SIR, the waiver in that application applies
to any other related applications to the extent that the
same invention claimed in the SIR is claimed in the other
application. Examiners should apply standards similar to
those applied in making "same invention" double patenting
determinations to determine whether a waiver by an inventor
to claims in a SIR precludes patenting by the same inventor
to subject matter in any related application. If the same
subject matter is claimed in an application and in a
published statutory invention registration naming a common
inventor, the claims in the application should be rejected
as being precluded by the waiver in the statutory invention
registration. See 37 CFR 1.106(e). A rejection as being
precluded by a waiver in a SIR cannot be overcome by a
terminal disclaimer.

 Examiners should note that the holder of a SIR will not be
able to file a reissue application to recapture the rights,
including the right to exclude others from making, using, *
selling>, offering to sell, or importing< the invention,
that were waived by the initial publication of the SIR.

  - -- - --

  Chapter 1200 Appeal

  1201  Introduction
  1203  Composition of Board
  1204  Administrative Handling
  1205  Notice of Appeal
  1206  Appeal Brief
  1207  Amendment Filed With or After Appeal
  1208  Examiner's Answer
  1208.01  New Reference, New Objection, or New Ground of
  Rejection in Examiner's Answer
  1208.02  Withdrawal of Final Rejection
  1208.03  Reply Brief
  1208.04  Supplemental Examiner's Answer
  1209  Oral Hearing
  1210  Actions Subsequent to Examiner's Answer but Before
  Board's Decision
  1211  Remand by Board
  1211.01  Remand by Board To Consider Amendment
  1212  Remand by Board To Consider Affidavits or

  Declarations
  1213  Decision by Board
  1213.01  Recommendations of Board
  1213.02  Statement as to Rejection of an Allowed Claim
  1213.03  Publication of Board Decision
  1214  Procedure Following Decision by Board
  1214.01  Procedure Following New Ground of Rejection by
  Board
  1214.03  Reconsideration
  1214.04  Examiner Reversed
  1214.05  Cancellation of Withdrawn Claims
  1214.06  Examiner Sustained in Whole or in Part
  1214.07  Reopening of Prosecution
  1215  Withdrawal or Dismissal of Appeal
  1215.01  Withdrawal of Appeal
  1215.02  Claims Standing Allowed
  1215.03  Partial Withdrawal
  1215.04  Dismissal of Appeal
  1216  Judicial Review
  1216.01  Appeals to the Federal Circuit
  1216.02  Civil Suits Under 35 U.S.C. 145

1201  Introduction [R - 2]

  The Patent and Trademark Office in administering the
Patent Laws makes many decisions of a discretionary nature
which the applicant may feel deny him or her the patent
protection to which he or she is entitled. The differences
of opinion on such matters can be justly resolved only by
prescribing and following judicial procedures. Where the
differences of opinion concern the denial of patent claims
because  of  prior  art  or  material  deficiencies  in  the
disclosure set forth in the application, the questions
thereby raised are said to relate to the merits, and appeal
procedure within the Patent and Trademark Office and to the
courts has long been provided by statute.

  The line of demarcation between appealable matters for
the Board of Patent Appeals and Interferences (Board) and
petitionable matters for the Commissioner of Patents and
Trademarks should be carefully observed. The Board will not
ordinarily hear a question which it believes should be
decided by the Commissioner, and the Commissioner will not
ordinarily entertain a petition where the question presented
is an appealable matter. However, since 37 CFR 1.181(f)
states that any petition not filed within 2 months from the
action complained of may be dismissed as untimely and since
37  CFR  1.144  states  that  petitions  from  restriction
requirements  must  be  filed  no  later  than  appeal,
petitionable matters will rarely be present in a case by the
time it is before the Board for a decision. **> In re
Watkinson , 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990).<

1203  Composition of Board

  35 U.S.C. 7 provides for a Board of Patent Appeals and
Interferences as follows:

 35 U.S.C. 7.  Board of Patent Appeals and Interferences

  (a) The examiners - in - chief shall be persons of
competent legal knowledge and scientific ability, who shall
be appointed to the competitive service. The Commissioner,
the Deputy Commissioner, the Assistant Commissioners, and

the examiners - in - chief shall constitute the Board of
Patent Appeals and Interferences.

  (b) The Board of Patent Appeals and Interferences shall,
on written appeal of an applicant, review adverse decisions
of  examiners  upon  applications  for  patents  and  shall
determine  priority  and  patentability  of  invention  in
interference declared under section 135(a) of this title.
Each appeal and interference shall be heard by at least
three  members  of  the  Board  of  Patent  Appeals  and
Interferences, who shall be designated by the Commissioner.
Only the Board of Patent Appeals and Interferences has the
authority to grant rehearings.

  (c) Whenever the Commissioner considers it necessary, in
order to keep current the work of the Board of Patent
Appeals and Interferences, the Commissioner may designate
any patent examiner of the primary examiner grade or higher,
having the requisite ability, to serve as examiner - in -
chief for periods not exceeding six months each. An examiner
so designated shall be qualified to act as a member of the
Board of Patent Appeals and Interferences. Not more than one
of  the  members  of  the  Board  of  Patent  Appeals  and
Interferences  hearing  an  appeal  or  determining  an
interference may be an examiner so designated. The Secretary
of Commerce is authorized to fix the pay of each designated
examiner - in - chief in the Patent and Trademark Office at
not to exceed the maximum rate of basic pay payable for
grade GS - 16 of the General Schedule under section 5332 of
title 5. The rate of basic pay of each individual designated
examiner - in - chief shall be adjusted, at the close of the
period for which that individual was designated to act
examiner - in - chief, to the rate of basic pay that
individual would have been receiving at the close of such
period if such designation had not been made.

  If subsequent to the hearing, but prior to the decision,
a Board member who heard the appeal becomes unable to
participate in the decision for some reason, the Chairman of
the Board, at his discretion, may without a rehearing
substitute a different Board member for the one who is
incapacitated, or he may offer the applicant the opportunity
for a rehearing. See In re Bose Corporation , 772 F.2d 866,
227 USPQ 1 (Fed. Cir. 1985).

  Should a member die or otherwise become unavailable (for
example, retirement) to reconsider a decision, normally
another member will be designated by the Chairman of the
Board as a substitute for the absent member.

1204  Administrative Handling

  Ex parte appeals to the Board, and all papers relating
thereto, are forwarded to the examining group for docketing.
All appeal papers, such as the notice of appeal, appeal
brief, and request for extension of time to file the brief,
are processed by the appropriate examining group.

  The clerk in charge of handling appeals in the examining
group is solely responsible for completion of all phases of
appeal clerical procedure. All communications from the Board
and all signed Office communications relating to appeals
from the examiners should be given to the group appeals
clerk.

  To ensure that all records are current, memorandum form
PTO - 262 is attached to the file wrapper when it is
remanded by the Board. It is important that this memorandum
be promptly completed and forwarded by the group if the
application is allowed, the prosecution is reopened, a
continuation application is filed, or if the appeal is
discontinued for any other reason.

  If the brief is not filed within the time designated by
37 CFR 1.192, the clerk will notify the applicant that the
appeal stands dismissed.

  "SPECIAL CASE"

  Subject alone to diligent prosecution by the applicant,
an application for patent that once has been made special
and advanced out of turn by the office for examination will
continue to be special throughout its entire course of
prosecution in the Patent and Trademark Office, including
appeal, if any, to the Board. See MPEP § 708.02.

  A petition to make a case special after the appeal has
been forwarded to the Board may be addressed to the Board.
However, no such petition will be granted unless the brief
has been filed and applicant has made the same type of
showing required by the Commissioner under 37 CFR 1.102.
Therefore, diligent prosecution is essential to a favorable
decision on a petition to make special.

1205  Notice of Appeal [R - 3]

 35 U.S.C. 134. Appeal to the Board of Patent Appeals and
Interferences.

  An applicant for a patent, any of whose claims has been
twice rejected, may appeal from the decision of the primary
examiner to the Board of Patent Appeals and Interferences,
having once paid the fee for such appeal.

 35 U.S.C. 41.  Patent fees

  (a) The Commissioner shall charge the following fees:

  * * * * *

  (6)(A) On filing an appeal from the examiner to the Board
of Patent Appeals and Interferences, $190.

  (B) In addition, on filing a brief in support of the
appeal, $190, and on requesting an oral hearing in the
appeal before the Board of Patent Appeals and Interferences,
$160.

 **  Double Click here to see the image  **

 37 CFR 1.191.  Appeal to Board of Patent Appeals and
Interferences.

  (a) Every applicant for a patent or for reissue of a
patent, or every owner of a patent under reexamination, any
of the claims of which have been twice rejected, or who has
been given a final rejection ( § 1.113), may, upon the
payment of the fee set forth in § 1.17(e), appeal from the
decision of the examiner to the Board of Patent Appeals and

Interferences within the time allowed for response.

  (b)  The  appeal  in  an  application  or  reexamination
proceeding  must  identify  the  rejected  claim  or  claims
appealed, and must be signed by the applicant, patent owner
or duly authorized attorney or agent.

  (c) An appeal when taken must be taken from the rejection
of all claims under rejection which applicant or patent
owner proposes to contest. Questions relating to matters not
affecting the merits of the invention may be required to be
settled before an appeal can be considered.

  (d) The time periods set forth in § 1.191 and 1.192 are
subject to the provisions of § 1.136 for patent applications
and § 1.550(c) for reexamination proceedings. The time
periods set forth in § 1.193, 1.194, 1.196, and 1.197 are
subject  to  the  provisions  of  §  1.136(b)  for  patent
applications or § 1.550(c) for reexamination proceedings.
See § 1.304(a) for extensions of time for filing a notice of
appeal to the U.S. Court of Appeals for the Federal Circuit
or for commencing a civil action.

  (e) Jurisdiction over the application or patent under
reexamination passes to the Board of Patent Appeals and
Interferences upon transmittal of the file, including all
briefs and examiner's answers, to the Board. Prior to the
entry of a decision on the appeal, the Commissioner may sua
sponte order the application remanded to the examiner.

  An  applicant  or  patent  owner  in  a  reexamination
proceeding dissatisfied with the primary examiner's decision
in the second or final rejection of his or her claims may
appeal to the Board for review of the examiner's rejection
by filing a notice of appeal, signed by the applicant,
patent owner, or his or her attorney, and the required fee
set forth in 37 CFR 1.17(e).

  The notice of appeal must be filed within the period for
response set in the last Office action, which is normally 3
months for applications. See MPEP § 714.13. Failure to
remove all grounds of rejection and otherwise place an
application in condition for allowance in the absence of new
rejections or to file an appeal after final rejection will
result in the application becoming abandoned, even if one or
more claims have been allowed except where claims suggested
for interference have been copied. The Notice of Appeal and
appropriate fee may be filed up to 6 months from the date of
the final rejection, so long as an appropriate petition and
fee for an extension of time is filed either prior to or
with the Notice of Appeal. Failure to file an appeal in a
reexamination proceeding will result in issuance of the
certificate under 37 CFR 1.570.

  37 CFR 1.191 provides for appeal to the Board by the
patent owner from any decision in a reexamination proceeding
adverse to patentability, in accordance with 35 U.S.C. 306.
See also MPEP § 2273.

  The use of a separate letter containing the notice of
appeal is strongly recommended. **>Form PTO/SB/31 may be
used for filing a notice of appeal.<

 **  Double Click here to see the image  **

  MATTERS HANDLED CONCURRENTLY WITH APPEAL

  The Patent and Trademark Office does not acknowledge
receipt of a Notice of Appeal by separate letter. However,
if a self - addressed postcard is included with the Notice
of Appeal, it will be date stamped and mailed.

  Form Paragraphs 12.01 - 12.07 may be used to indicate
defects in a Notice of Appeal.

¶ 12.01  Notice of Appeal Unacceptable __ Fee Unpaid

  The notice of appeal filed on [1] is not acceptable
because the appeal fee required under 37 CFR 1.17(e) was not
filed, or was not timely filed.

  Applicant may obtain an extension of time under 37 CFR
1.136(a) to file the notice of appeal and the appropriate
fee. The date on which the notice of appeal, the appeal fee,
the petition under 37 CFR 1.136(a), and the petition fee are
filed will be the date of the response and also the date for
determining the period of extension and the corresponding
amount of the fee. In no case may an applicant respond later
than the maximum six month statutory period or obtain an
extension pursuant to 37 CFR 1.136(a) for more than four
months beyond the date of response set in an Office action.

¶ 12.02  Notice  of  Appeal  Unacceptable  __  No  2nd
Rejection

  The notice of appeal filed on [1] is not acceptable
because there has been no second or final rejection in this
application, as required under 37 CFR 1.191.

¶ 12.03  Notice of Appeal Unacceptable __ Not Timely
Filed

  The notice of appeal filed on [1] is not acceptable
because it was filed after the expiration of the period set
in the prior Office action. This application will become
abandoned unless applicant obtains an extension of time
under 37 CFR 1.136(a). The date on which the notice of
appeal, the appeal fee, the petition under 37 CFR 1.136(a),
and the petition fee are filed will be the date of the
response and also the date for determining the period of
extension and the corresponding amount of the fee. In no
case may an applicant respond later than the maximum six
months statutory period or obtain an extension pursuant to
37 CFR 1.136(a) for more thanfour months beyond the date of
response set in an Office action.

¶ 12.04  Notice  of  Appeal  Unacceptable  __  Claims
Allowed

  The notice of appeal filed on [1] is not acceptable
because a letter of allowability was mailed by the Office on
[2].

¶ 12.05  Notice of Appeal Defective __ Unsigned

  The notice of appeal filed on [1] is defective because
it  is  unsigned.  A  ratification,  properly  signed,  is
required.

 Applicant is given a TIME LIMIT of ONE MONTH from the date
of this letter or until the expiration of the period for
response set in the last office action, whichever is longer,
within which to make the necessary correction to avoid
dismissal of the appeal. NO EXTENSION OF THE ONE MONTH TIME
LIMIT MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b),
but the period for response set in the last office action
may be extended to a maximum of SIX MONTH provided the
requisite fees are paid.

¶ 12.06  Notice  of  Appeal  Defective  __  Claims
Unidentified.

  The notice of appeal filed on [1] is defective because
it fails to identify the appealed claims(s) as required
under 37 CFR 1.191(b).

 Applicant is given a TIME LIMIT of ONE MONTH from the date
of this letter or until the expiration of the period for
response set in the last office action, whichever is longer,
within which to make the necessary correction to avoid
dismissal of the appeal. NO EXTENSION OF THE ONE MONTH TIME
LIMIT MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b),
but the period for response set in the last office action
may be extended to a maximum of SIX MONTHS provided the
requisite fees are paid.

¶ 12.07  Notice of Appeal Defective __ Other Reasons

  The notice of appeal filed on [1] is defective because
[2].

 Applicant is given a TIME LIMIT of ONE MONTH from the date
of this letter or until the expiration of the period for
response set in the last office action, whichever is longer,
within which to make the necessary correction to avoid
dismissal of the appeal. NO EXTENSION OF THE ONE MONTH TIME
LIMIT MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b),
but the period for response set in the last office action
may be extended to a maximum of SIX MONTHS provided the
requisite fees are paid.

1206  Appeal Brief [R - 3]

 37 CFR 1.192  .  Appellant's brief.

  (a) Appellant shall, within 2 months from the date of the
notice of appeal under § 1.191 or within the time allowed
for response to the action appealed from, if such time is
later, file a brief in triplicate. The brief must be
accompanied by the requisite fee set forth in § 1.17(f) and
must set forth the authorities and arguments on which
appellant will rely to maintain the appeal. Any arguments or
authorities not included in the brief will be refused
consideration  by  the  Board  of  Patent  Appeals  and
Interferences, unless good cause is shown.

  (b) On failure to file the brief, accompanied by the
requisite fee, within the time allowed, the appeal shall
stand dismissed.

  (c) The brief shall contain the following items under
appropriate headings and in the order indicated below unless
the brief is filed by an applicant who is not represented by
a registered practitioner:

  (1) Real party in interest. A statement identifying the
real party in interest, if the party named in the caption of
the brief is not the real party in interest.

  (2)  Related  appeals  and  interferences.  A  statement
identifying by number and filing date all other appeals or
interferences known to appellant, the appellant's legal
representative, or assignee which will directly affect or be
directly affected by or have a bearing on the Board's
decision in the pending appeal.

  (3) Status of claims . A statement of the status of all
the claims, pending or canceled, and identifying the claims
appealed.

  (4) Status of amendments . A statement of the status of
any amendment filed subsequent to final rejection.

  (5) Summary of invention. A concise explanation of the
invention defined in the claims involved in the appeal,
which shall refer to the specification by page and line
number, and to the drawing, if any, by reference characters.

  (6) Issues. A concise statement of the issues presented
for review.

  (7) Grouping of claims. For each ground of rejection
which appellant contests and which applies to a group of two
or more claims, the Board shall select a single claim from
the group and shall decide the appeal as to the ground of
rejection  on  the  basis  of  that  claim  alone  unless  a
statement is included that the claims of the group do not
stand or fall together and, in the argument under paragraph
(c)(8) of this section, appellant explains why the claims of
the group are believed to be separately patentable. Merely
pointing out differences in what the claims cover is not an
argument as to why the claims are separately patentable.

  (8) Argument. The contentions of appellant with respect
to each of the issues presented for review in paragraph
(c)(6)  of  this  section,  and  the  basis  therefor,  with
citations of the authorities, statutes, and parts of the
record relied on. Each issue should be treated under a
separate heading.

 (i)  For each rejection under 35 U.S.C. 112, first
paragraph, the argument shall specify the errors in the
rejection and how the first paragraph of 35 U.S.C. 112 is
complied  with,  including,  as  appropriate,  how  the
specification and drawings, if any,

  (A) describe the subject matter defined by each of the
rejected claims,

  (B) enable any person skilled in the art to make and use
the subject matter defined by each of the rejected claims,
and

  (C) set forth the best mode contemplated by the inventor
of carrying out his or her invention.

 (ii)  For each rejection under 35 U.S.C. 112, second
paragraph, the argument shall specify the errors in the
rejection and how the claims particularly point out and

distinctly claim the subject matter which applicant regards
as the invention.

 (iii)  For  each  rejection  under  35  U.S.C.  102,  the
argument shall specify the errors in the rejection and why
the rejected claims are patentable under 35 U.S.C. 102,
including any specific limitations in the rejected claims
which are not described in the prior art relied upon in the
rejection.

 (iv)  For  each  rejection  under  35  U.S.C.  103,  the
argument shall specify the errors in the rejection and, if
appropriate, the specific limitations in the rejected claims
which are not described in the prior art relied on in the
rejection, and shall explain how such limitations render the
claimed subject matter unobvious over the prior art. If the
rejection is based upon a combination of references, the
argument shall explain why the references, taken as a whole,
do  not  suggest  the  claimed  subject  matter,  and  shall
include, as may be appropriate, an explanation of why
features disclosed in one reference may not properly be
combined with features disclosed in another reference. A
general argument that all the limitations are not described
in a single reference does not satisfy the requirements of
this paragraph.

 (v)  For any rejection other than those referred to in
paragraphs (c)(8)(i) to (iv) of this section, the argument
shall specify the errors in the rejection and the specific
limitations in the rejected claims, if appropriate, or other
reasons, which cause the rejection to be in error.

  (9) Appendix. An appendix containing a copy of the claims
involved in the appeal.

  (d) If a brief is filed which does not comply with all
the requirements of paragraph (c) of this section, appellant
will be notified of the reasons for non - compliance and
provided with a period of one month within which to file an
amended brief. If appellant does not file an amended brief
during the one - month period, or files an amended brief
which does not overcome all the reasons for non - compliance
stated in the notification, the appeal will stand dismissed.

  Where the brief is not filed, but within the period
allowed for filing the brief an amendment is presented which
places the case in condition for allowance, the amendment
may be entered since the application retains its pending
status during said period. Amendments should not be included
in the appeal briefs. Amendments should be filed as separate
papers. See MPEP § 1207, § 1215.01, and § 1215.02.

  TIME FOR FILING APPEAL BRIEF

  37 CFR 1.192(a) provides 2 months from the date of the
Notice of Appeal for the patent owner to file an appeal
brief in a reexamination proceeding. In a reexamination
proceeding, the time period can be extended only under the
provisions of 37 CFR 1.550(c). See also MPEP § 2274.

  The usual period of time in which appellant must file
his or her brief is 2 months from the date of appeal; i.e.,
the Mail Room date of receipt of the Notice of Appeal. See
MPEP § 512. However, 37 CFR 1.192(a) alterna- tively permits
the brief to be filed "within the time allowed for response

to the action appealed from, if such time is later." These
time periods may be extended under 37 CFR 1.136(a), and if
37 CFR 1.136(a) has been exhausted, 37 CFR 1.136(b).

  In the event that the appellant finds that he or she is
unable to file a brief within the time allotted by the
rules, he or she may file a petition, with fee, to the
examining group, requesting additional time under 37 CFR
1.136(a). Additional time in excess of 4 months will not be
granted  unless  extraordinary  circumstances  are  involved
under 37 CFR 1.136(b). The time extended is added to the
calendar day of the original period, as opposed to being
added to the day it would have been due when said last day
is a Saturday, Sunday, or Federal holiday.

  If after an appeal has been filed, but prior to the date
for  submitting  a  brief,  an  interference  is  declared,
appellant's brief need not be filed while the interference
is pending, unless the examiner - in - chief has consented
to prosecution of the application concurrently with the
interference.  See  MPEP  §  2315.  Absent  such  concurrent
prosecution, the examiner may, after the interference has
terminated and the files have been returned to him or her,
(1) set a 2 - month period for filing the brief, or (2)
withdraw the final rejection of the appealed claims in order
to enter an additional rejection on a ground arising out of
the interference. See for example MPEP ** § 2363.03. Also,
if the appellant was the losing party in the interference,
claims which were designated as corresponding to the lost
count or counts will stand finally disposed of under 37 CFR
1.663.

  When an application is revived after abandonment for
failure on the part of the appellant to take appropriate
action after final rejection, and the petition to revive was
accompanied by a Notice of Appeal, appellant has 2 months,
from the mailing date of the Commissioner's affirmative
decision on the petition, in which to file the appeal brief.

  With the exception of the institution of an interference
or  suggestion  and  timely  copying  of  claims  for  an
interference, the appeal ordinarily will be dismissed if the
brief is not filed within the period provided by 37 CFR
1.192(a) or within such additional time as may be properly
extended.

  Attention is directed to the fact that a brief must be
filed to preserve appellant's right to the appealed claims,
notwithstanding circumstances such as:

 (1) the possibility or imminence of an interference
involving the subject application, but not resulting in
withdrawal of the final rejection prior to the brief's due
date;

 (2) the filing of a petition for supervisory action
under 37 CFR 1.181;

 (3) the filing of an amendment, even if it is one
which the examiner previously has indicated may place one or
more claims in condition for allowance, unless the examiner,
in acting on the amendment, disposes of all issues on
appeal;

 (4) the receipt of a letter from the examiner

stating that prosecution is suspended, without the examiner
withdrawing the final rejection from which appeal has been
taken,  instituting  an  interference  with  the  subject
application, or suggesting claims for an interference.

  Although  failure  to  file  the  brief  within  the
permissible time will result in dismissal of the appeal, if
any claims stand allowed, the application does not become
abandoned by the dismissal, but is returned to the examiner
for action on the allowed claims. See MPEP § 1215.04. If
there are no allowed claims, the case is abandoned as of the
date the brief was due. Claims which have been objected to
as dependent from a rejected claim do not stand allowed. In
a reexamination proceeding failure to file the brief will
result in the issuance of the certificate under 37 CFR
1.570.

  If the time for filing a brief has passed and the
application has consequently become abandoned, the applicant
may petition to revive the application, as in other cases of
abandonment, and to reinstate the appeal; if the appeal is
dismissed,  but  the  application  is  not  abandoned,  the
petition would be to reinstate the claims and the appeal,
but a showing equivalent to that in a petition to revive
under 37 CFR 1.137 is required.

  See MPEP § 1215.04. In either event, a proper brief must
be filed before the petition will be considered on its
merits.

  Where the dismissal of the appeal is believed to be a
mistake resulting from inadvertence, filing a petition,
pointing out the error, may be sufficient.

  A fee under 37 CFR 1.17(f) is required when the brief is
filed. 37 CFR 1.192(a) requires the submission of three
copies of the appeal brief.

  APPEAL BRIEF CONTENT

  The brief, as well as every other paper relating to an
appeal, should indicate the number of the examining group to
which the application or patent under reexamination is
assigned and the serial number. When the brief is received,
it is forwarded to the group where it is entered in the
file, and referred to the examiner.

  Appellants are reminded that their briefs in appealed
cases must be responsive to every ground of rejection stated
by the examiner, including new grounds stated in his or her
answer.

  Where an appellant fails to respond by way of brief or
reply brief to any ground of rejection, appellant shall be
notified by the examiner that he or she is allowed 1 month
to correct the defect by filing a supplemental brief. Oral
argument at a hearing will not remedy such deficiency of a
brief. The fact that appellant may consider a ground to be
clearly improper does not justify a failure to point out to
the Board the reasons for that belief.

  The mere filing of any paper whatever entitled as a
brief cannot necessarily be considered to be in compliance
with 37 CFR 1.192. The rule requires that the brief must set
forth the authorities and arguments relied upon. Since it is

essential that the Board should be provided with a brief
fully stating the position of the appellant with respect to
each issue involved in the appeal so that no search of the
record is required in order to determine that position, 37
CFR 1.192(c) now requires that the brief contain specific
items, as discussed below.

  An exception to the requirement that all the items
specified in 37 CFR 1.192(c) be included in the brief is
made if the application or reexamination proceeding is being
prosecuted by the appellant pro se ; i.e., there is no
attorney or agent of record, and the brief was neither
prepared nor signed by a registered attorney or agent. The
brief of a pro se appellant which does not contain all of
the items, (1) to (9), specified in 37 CFR 1.192(c) will be
accepted as long as it substantially complies with the
requirements of items (1) - (4), (8), and (9). If the brief
of a pro se  appellant is accepted, it will be presumed that
all the claims of a rejected group of claims stand or fall
together unless an argument is included in the brief that
presents reasons as to why the appellant considers one or
more of the claims in the rejected group to be separately
patentable from the other claims in the group.

  A distinction must be made between the lack of any
argument and the presentation of arguments which carry no
conviction. In the former case dismissal is in order, while
in the latter case a decision on the merits is made,
although it may well be merely an affirmance based on the
grounds relied on by the examiner.

  Appellant must traverse every ground of rejection set
forth in the final rejection. Oral argument at the hearing
will not remedy such a deficiency in the brief. Ignoring or
acquiescing in any rejection, even one based upon formal
matters which could be cured by subsequent amendment, will
invite a dismissal of the appeal as to the claims affected.
If this involves all of the claims, the proceedings in the
case are considered terminated as of the date of the
dismissal. Accordingly, any application filed thereafter
will not be copending with the application on appeal. If in
his or her brief, appellant relies on some reference, he or
she is expected to provide the Board with at least one copy
of it.

  The specific items required by 37 CFR 1.192(c) are:

 (1) Real party in interest . A statement identifying
the real party in interest, if the party named in the
caption of the brief is not the real party in interest. If
appellant does not name a real party in interest, the
examiner will assume that the party named in the caption of
the brief is the real party in interest, i.e., the owner at
the time the brief is being filed.

  The identification of the real party in interest will
allow members of the Board to comply with ethics regulations
associated with working in matters in which the member has a
financial  interest  to  avoid  any  potential  conflict  of
interest. While the examiner will assume that the real party
in interest is the individual or individuals identified in
the  caption  when  the  real  party  in  interest  is  not
explicitly set out in the brief, nevertheless, the Board may
require the appellant to explicitly name the real party in
interest. When the Board elects to require an explicit

statement, ordinarily an order will be entered setting a 1 -
month period for response to the Board's requirement (37 CFR
1.192(d)). An entire new brief need not be filed. Rather, a
simple paper identifying the real party in interest or
explicitly stating that the appellant is the real party in
interest will suffice. Failure to timely respond to the
Board's requirement may result in dismissal of the appeal.

 (2)Related appeals and interferences . A statement
identifying by application number and filing date all other
appeals or interferences known to appellant, the appellant's
legal representative, or assignee which will directly affect
or be directly affected by or have a bearing on the Board's
decision in the pending appeal. The appeal or interference
number should also be listed. The statement is not intended
to be limited to copending applications. If appellant does
not  identify  any  other  appeals  or  interferences,  the
examiner  will  presume  that  there  are  none.  While  the
examiner will assume that there are no related cases when no
related  case  is  explicitly  set  out  in  the  brief,
nevertheless,  the  Board  may  require  the  appellant  to
explicitly identify any related case. When the Board elects
to require an explicit statement, ordinarily an order will
be entered setting a 1 - month period for response to the
Board's requirement (37 CFR 1.192(d)). An entire new brief
need not be filed. Rather, a simple paper identifying all
related cases, or explicitly stating that there are no
related cases will suffice. Failure to timely respond to the
Board's requirement may result in dismissal of the appeal.

 (3)Status of Claims. A statement of the status of
all  the  claims  in  the  application,  or  patent  under
reexamination; i.e., for each claim in the case, appellant
must state whether it is cancelled, allowed, rejected, etc.
Each claim on appeal must be identified.

 (4) Status of Amendments . A statement of the status
of any amendment filed subsequent to final rejection; i.e.,
whether or not the amendment has been acted upon by the
examiner, and if so, whether it was entered, denied entry,
or entered in part. This statement should be of the status
of the amendment as understood by the appellant.

  Items (3) and (4) are included in 37 CFR 1.192(c) to
avoid confusion as to which claims are on appeal, and the
precise wording of those claims, particularly where the
appellant has sought to amend claims after final rejection.
The inclusion of items (3) and (4) in the brief will advise
the examiner of what the appellant considers the status of
the claims and post - final rejection amendments to be,
allowing any disagreement on these questions to be resolved
before the appeal is taken up for decision by the Board.

 (5)Summary of Invention. A concise explanation of
the invention defined in the claims involved in the appeal.
This explanation is required to refer to the specification
by page and line number, and, if there is a drawing, to the
drawing by reference characters. Where applicable, it is
preferable to read the appealed claims on the specification
and any drawing. While reference to page and line of the
specification may require somewhat more detail than simply
summarizing the invention, it is considered important to
enable the Board to more quickly determine where the claimed
subject matter is described in the application. Since the
claims are read in light of the disclosure, compliance with

this requirement does not limit the claims.

 (6)  Issues.  A  concise  statement  of  the  issues
presented for review. Each stated issue should correspond to
a separate ground of rejection which appellant wishes the
Board of Patent Appeals and Interferences to review. While
the statement of the issues must be concise, it should not
be so concise as to omit the basis of each issue. For
example, the statement of an issue as "Whether claims 1 and
2  are  unpatentable"  would  not  comply  with  37  CFR
1.192(c)(6).  Rather,  the  basis  of  the  alleged
unpatentability would have to be stated; e.g., "Whether
claims 1 and 2 are unpatentable under 35 U.S.C. 103 over
Smith in view of Jones," or "Whether claims 1 and 2 are
unpatentable under 35 U.S.C. 112, first paragraph, as being
based on a nonenabling disclosure." The statement would be
limited to the issues presented, and should not include any
argument concerning the merits of those issues.

 (7) Grouping of Claims. For each ground of rejection
which appellant contests and which applies to a group of two
or more claims, the Board shall select a single claim from
the group and shall decide the appeal as to the ground of
rejection on the basis of that claim alone, unless a
statement is included that the claims of the group do not
stand or fall together and, in the argument section of the
brief (37 CFR 1.192(c)(8)), appellant explains why the
claims  of  the  group  are  believed  to  be  separately
patentable. Merely pointing out differences in what the
claims cover is not an argument as to why the claims are
separately patentable. If an appealed ground of rejection
applies to more than one claim and appellant considers the
rejected  claims  to  be  separately  patentable,  37  CFR
1.192(c)(7) requires appellant to state that the claims do
not  stand  or  fall  together,  and  to  present  in  the
appropriate part or parts of the argument under 37 CFR
1.192(c)(8) the reasons why they are considered separately
patentable.

  The absence of such a statement and argument is a
concession by the applicant that, if the ground of rejection
were sustained as to any one of the rejected claims, it will
be equally applicable to all of them. 37 CFR 1.192(c)(7) is
consistent with the practice of the Court of Appeals for the
Federal Circuit indicated in such cases as In re Sernaker ,
702 F.2d 989, 217 USPQ 1 (Fed. Cir. 1983), and In re King ,
801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). 37 CFR
1.192(c)(7) requires the inclusion of reasons in order to
avoid unsupported assertions of separate patentability. The
reasons may be included in the appropriate portion of the
"Argument" section of the brief. For example, if claims 1 to
4 are rejected under 35 U.S.C. 102 and appellant considers
claim 4 to be separately patentable from claims 1 to 3, he
or she should so state in the "Grouping of claims" section
of the brief, and then give the reasons for separate
patentability in the 35 U.S.C. 102 portion of the "Argument"
section (i.e., under 37 CFR 1.192(c)(8) (iii)).

  The Board panel assigned to the case will normally
select the broadest claim in a group and will consider only
that claim, even though the group may contain two broad
claims, such as "ABCDE" and "ABCDF.". The same would be true
in a case where there are both broad method and apparatus
claims on appeal in the same group. The rationale behind the
rule, as amended, is to make the appeal process as efficient

as possible. Thus, while the Board will consider each
separately argued claim, the work of the Board can be done
in a more efficient manner by selecting a single claim from
a group of claims when the appellant does not meet the
requirements of 37 CFR 1.192(c)(7).

 (8) Argument . The appellant's contentions with
respect to each of the issues presented for review in 37 CFR
1.192(c)(6), and the basis for those contentions, including
citations of authorities, statutes, and parts of the record
relied on, should be presented in this section.

  Included in this paragraph are five subparagraphs, (i)
to (v). Subparagraphs (i) to (iv) concern the grounds of
rejection  most  commonly  involved  in  ex  parte  appeals,
namely, 35 U.S.C. 112, first and second paragraphs, 35
U.S.C. 102, and 35 U.S.C. 103. Subparagraph (v) is a general
provision concerning grounds of rejection not covered by
subparagraphs (i) to (iv).

  The purpose of subparagraphs (i) to (iv) is to ensure
that  the  appellant's  argument  concerning  each  appealed
ground  of  rejection  will  include  a  discussion  of  the
questions relevant to that ground. It is believed that
compliance  with  the  requirements  of  the  particular
subparagraphs  which  are  pertinent  to  the  grounds  of
rejection involved in an appeal will be beneficial both to
the Patent and Trademark Office and appellants. It will not
only facilitate a decision by the Board of Patent Appeals
and Interferences by enabling the Board to determine more
quickly  and  precisely  the  appellant's  position  on  the
relevant issues, but also will help appellants to focus
their arguments on those issues.

  For each rejection not falling under subparagraphs (i)
to (iv), subparagraph (v) provides that the argument should
specify the specific limitations in the rejected claims, if
appropriate, or other reasons, which cause the rejection to
be in error. This language recognizes that for some grounds
of rejection, it may not be necessary to specify particular
claim limitations; for example, a rejection under 35 U.S.C.
101, as in Ex parte Hibberd , 227 USPQ 443 (BPAI 1985).

 (9)Appendix. An appendix containing a copy of the
claims involved in the appeal.

  The copy of the claims required in the brief Appendix by
37 CFR 1.192(c)(9) should be a clean copy and should not
include any brackets or underlining as required by 37 CFR
1.121(b).

  For sake of convenience, the copy of the claims involved
should be double spaced and the appendix should start on a
new page.

  37 CFR 1.192(c) merely specifies the minimum requirements
for a brief, and does not prohibit the inclusion of any
other material which an appellant may consider necessary or
desirable. For example, a list of references, table of
contents, table of cases, etc. A brief is in compliance with
37 CFR 1.192(c) as long as it includes items (1) to (9) in
the order set forth (with the appendix, item (9), at the
end). The question of whether a brief complies with the rule
is a matter within the jurisdiction of the examiner.

  REVIEW OF BRIEF BY EXAMINER

  37 CFR 1.192(d) provides that if a brief is filed which
does not comply with all the requirements of paragraph (c),
the  appellant  will  be  notified  of  the  reasons  for
noncompliance and given a 1 - month time limit within which
to file an amended brief. The appeal will be dismissed if
the appellant does not timely file an amended brief, or
files an amended brief which does not overcome all the
reasons  for  noncompliance  of  which  the  appellant  was
notified. An amended brief is timely if filed within the 1 -
month time limit or within any extension of the original
period to file the brief.

  It should be noted that 37 CFR 1.192(c)(7) requires the
appellant to perform two affirmative acts in his brief in
order to have the separate patentability of a plurality of
claims  subject  to  the  same  rejection  considered.  The
appellant must (1) state that the claims do not stand or
fall  together  and(2)  present  arguments  why  the  claims
subject to the same rejection are separately patentable.
Where the appellant does neither, the claims will be treated
as  standing  or  falling  together.  Where,  however,  the
appellant  (i)  omits  the  statement  required  by  37  CFR
1.192(c)(7) yet presents arguments in the argument section
of the brief or (ii) includes the statement required by 37
CFR 1.192(c)(7) to the effect that one or more claims do not
stand or fall together (i.e., that they are separately
patentable) yet does not offer argument in support thereof
in the argument section of the brief, the appellant should
be notified of the noncompliance as per 37 CFR 1.192(d). Ex
parte Schier , 21 USPQ 2d 1016 (Bd. Pat. App. & Int. 1991);
Ex parte Ohsumi, 21 USPQ 2d 1020 (Bd. Pat. App. & Int.
1991).

  The question of whether a brief complies with a rule is
a matter within the jurisdiction of the examiner. Under 37
CFR 1.192(d), the appellant may file an amended brief to
correct any deficiencies in the original brief. Moreover, if
appellant  disagrees  with  the  examiner's  holding  of
noncompliance, a petition under 37 CFR 1.181 may be filed.

  37 CFR 1.192(a) also contains the following sentence:

  "Any argument or authorities not included in the brief
will be refused consideration by the Board of Patent Appeals
and Interferences unless good cause is shown."

  This  sentence  emphasizes  that  all  arguments  and
authorities which an appellant wishes the Board to consider
should be included in the brief. It should be noted that
arguments not presented in the brief and made for the first
time at the oral hearing are not normally entitled to
consideration. In re Chiddix , 209 USPQ 78 (Comm'r Pat.
1980); Rosenblum  v . Hiroshima , 220 USPQ 383 (Comm'r Pat.
1983).

  37 CFR 1.192(a) is not intended to preclude the filing
of a supplemental paper if a new argument or authority
should become available or relevant after the brief was
filed. Examples of such circumstances would be where a
pertinent decision of a court or other tribunal was not
published until after the brief was filed, or where a
particular argument or authority was not applicable to any
of the grounds of rejection in the final rejection, but was

relevant to a new point of argument raised in the examiner's
answer.

  Once the brief has been filed, a petition to suspend
proceedings may be considered on its merits, but will be
granted only in exceptional cases, such as where the writing
of  the  examiner's  answer  would  be  fruitless  or  the
proceedings would work a hardship on the appellant.

  For reply brief see MPEP § 1208.03.

  Form Paragraphs 12.08 - 12.17 should be used in letters
concerning the appeal brief.

¶ 12.08  Appeal Dismissed __ Fee Unpaid, No Allowed
Claims

  The appeal under 37 CFR 1.191 is dismissed because the
fee for filing the Brief, as required under 37 CFR 1.17(f),
was not submitted or timely submitted and the period for
obtaining an extension of time to file the brief under 37
CFR 1.136(a) has expired.

  As a result of this dismissal, the application is
ABANDONED since there are no allowed claims.

 Examiner Note:

  Claims which have been indicated as containing allowable
subject matter but are objected to as being dependent upon a
rejected  claim  are  to  be  considered  as  if  they  were
rejected. See MPEP § 1215.04.

¶ 12.09  Appeal Dismissed __ Fee Unpaid, Allowed Claims

  The appeal under 37 CFR 1.191 is dismissed because the
fee for filing the appeal brief, as required under 37 CFR
1.17(f), was not submitted or timely submitted and the
period for obtaining an extension of time to file the brief
under 37 CFR 1.136(a) has expired.

  As a result of this dismissal, the application will be
further processed by the examiner since it contains allowed
claims. Prosecution on the merits remains CLOSED.

 Examiner Note :

  Claims which have been indicated as containing allowable
subject matter but are objected to as being dependent upon a
rejected  claim  are  to  be  considered  as  if  they  were
rejected. See MPEP § 1215.04.

¶  12.09.01  Appeal Dismissed - Allowed Claims, Formal
Matters Remaining

  In view of applicant's failure to file a brief within
the time prescribed by 37 CFR 1.192, the appeal stands
dismissed and the proceedings as to the rejected claims are
considered terminated. See 37 CFR 1.197(c).

  This application will be passed to issue on allowed
claim(s) [1] provided the following formal matters are
corrected. Prosecution is otherwise closed.

  [2].

  Applicant is required to make the necessary corrections
within a shortened statutory period set to expire ONE MONTH
from the mailing date of this letter.

 Examiner Note:

  1. This paragraph should only be used if the formal
matters cannot be handled by examiner's amendment. See MPEP
§ 1215.04.

  2.  Claims  which  have  been  indicated  as  containing
allowable subject matter but are objected to as being
dependent upon a rejected claim are to be considered as if
they were rejected. See MPEP § 1215.04.

¶ 12.10  Extension To File Brief __ Granted

  The request for an extension of time under 37 CFR
1.136(b) for filing the appeal brief under 37 CFR 1.192
filed on [1] has been approved for [2].

 Examiner Note :

  This paragraph should only be used when 37 CFR 1.136(a)
is  not  available  or  has  been  exhausted,  such  as  in
litigation reissues.

¶ 12.11  Extension To File Brief __ Denied

  The request for an extension of time under 37 CFR
1.136(b) for filing the appeal brief under 37 CFR 1.192
filed on [1] has been disapproved because no sufficient
cause for the extension has been shown.

 Examiner Note:

  This paragraph should only be used when 37 CFR 1.136(a)
is  not  available  or  has  been  exhausted,  such  as  in
litigation reissues.

¶ 12.12  Brief Defective - Unsigned

  The appeal brief filed on [1] is defective because it is
unsigned. A ratification properly signed is required.

 Applicant is required to make the proper ratification
within a TIME LIMIT of ONE MONTH from the date of this
letter or within TWO MONTHS from the date of the notice of
appeal or within the time allowed for response to the action
appealed from, whichever is longer, to avoid dismissal of
the appeal. NO EXTENSION OF THIS ONE MONTH TIME LIMIT MAY BE
GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b), but the TWO
MONTH period for filing the brief may be extended to a
maximum of SIX MONTHS.

¶ 12.13  Brief Defective - Three Copies Lacking

  The appeal brief filed on [1] is defective because the
three copies of the brief required under 37 CFR 1.192(a)
have not been submitted.

 Applicant is required to supply the necessary copies within
a TIME LIMIT of ONE MONTH from the date of this let ter or
within TWO MONTHS from the date of the notice of appeal or

within the time allowed for response to the action appealed
from, whichever is longer, to avoid dismissal of the appeal.
NO EXTENSION OF THIS ONE MONTH TIME LIMIT MAY BE GRANTED
UNDER EITHER 37 CFR 1.136(a) OR (b), but the TWO MONTH
period for filing the brief may be extended to a maximum of
SIX MONTHS.

¶ 12.16  Brief Unacceptable __ Fee Unpaid

  The appeal brief filed on [1] is unacceptable because
the fee required under 37 CFR 1.17(f) was not timely filed.

  This application will become abandoned unless applicant
obtains an extension of time under 37 CFR 1.136(a) to file
the appeal brief. The date on which the brief, the fee for
filing the brief, the petition under 37 CFR 1.136(a), and
the petition fee are filed will be the date of the response
and also the date for determining the period of extension
and the corresponding amount of the fee. In no case may an
applicant obtain an extension for more than FOUR MONTHS
under 37 CFR 1.136(a), beyond the TWO MONTH period for
filing the appeal brief.

¶ 12.17  Brief Unacceptable __ Not Timely Filed

  The appeal brief filed on [1] is unacceptable because it
was filed after the expiration of the required period for
response.

  This application will become abandoned unless applicant
obtains an extension of time under 37 CFR 1.136(a). The date
on which the brief,

 the fee for filing the brief, the petition under 37 CFR
1.136(a), and the petition fee are filed will be the date of
the response and also the date for determining the period of
extension and the corresponding amount of the fee. In no
case may an applicant obtain an extension for more than FOUR
MONTHS under 37 CFR 1.136(a) beyond the TWO MONTH period for
filing the appeal brief.

  A form suitable for noting noncompliance with 37 CFR
1.192(c)

¶ 12.69  Heading for Notice Under 37 CFR 1.192(c)

  NOTIFICATION OF NONCOMPLIANCE WITH THE REQUIREMENTS OF 37
  CFR 1.192(c)

 Examiner Note:

  Use form PTOL - 90 and follow with one or more of form
paragraphs 12.69.01 - 12.77 and conclude with paragraph
12.78.

¶ 12.69.01  Statement in Brief That Claims Do Not Stand or
Fall Together - Supporting Reasons Lacking

  The brief includes a statement that claims [1] do not
stand or fall together but fail to present reasons in
support thereof as required under 37 CFR 1.192(c)(7). MPEP §
1206.

 Examiner Note:

  1.  This form paragraph should be used only when no
supporting reasons are presented in the brief. If reasons
are presented, even if they are not agreed with, use form
paragraph 12.55.02 instead of this form paragraph. Reasons
for disagreement are discussed in either the "Grounds of
Rejection" or in the "Response to Argument" portion of the
examiner's answer.

  2.  If the brief contains neither a statement that
claims do not stand or fall together nor reasons in support
thereof, use paragraph 12.55.10 in examiner's answer.

¶ 12.70  Missing Section Headings

  The brief does not contain the items of the brief
required by 37 CFR 1.192(c) under the appropriate headings
and/or in the order indicated. [1].

 Examiner Note:

  In bracket 1 insert an indication of the missing
headings or errors in the order of items.

¶ 12.70.01  Defect in Statement of Real Party in Interest

  The brief does not contain a heading identifying the
real party in interest as required by 37 CFR 1.192(c)(1).

¶ 12.70.02  Defect in Statement of Related Appeals and
Interferences

  The brief does not contain a heading identifying the
related appeals and interferences directly affected by or
having a bearing on the decision in the pending appeal as
required by 37 CFR 1.192(c)(2).

¶ 12.71  Defect in Statement of Status of Claims

  The brief does not contain a statement of the status of
all the claims, pending or cancelled, and identify the
claims appealed as required by 37 CFR 1.192(c)(3). [1].

 Examiner Note:

  In bracket 1 insert an indication of the missing claim
status information.

¶ 12.72  Defect in Statement of Status of Amendment
Filed After Final Rejection

  The brief does not contain a statement of the status of
an amendment filed subsequent to the final rejection as
required by 37 CFR 1.192(c)(4). [1].

 Examiner Note:

  In bracket 1 insert an indication of the amendment of
which the status is missing.

¶ 12.73  Defect in Explanation of the Invention

  The brief does not contain a concise explanation of the
invention defined in the claims involved in the appeal,
which refers to the specification by page and line number,
and to the drawing, if any, by reference characters as

required by 37 CFR 1.192(c)(5). [1].

 Examiner Note:

  In bracket 1 insert an indication of the missing
explanation.

¶ 12.74  Defect in Statement of the Issues

  The brief does not contain a concise statement of the
issues  presented  for  review  as  required  by  37  CFR
1.192(c)(6). [1]

 Examiner Note:

  In bracket 1, insert an indication of the missing
concise statement of the issues presented for review.

¶ 12.76  Defects in the Arguments of the Appellant

  The brief does not contain arguments of the appellant
with respect to each of the issues presented for review in
37 CFR 1.192(c)(6), and the basis therefor, with citations
of the authorities, statutes, and parts of the record relied
on as required by 37 CFR 1.192(c)(8).

 Examiner Note:

  Include one or more of form paragraphs 12.76.01 -
12.76.06 which apply.

¶ 12.76.01  Separate Heading for Each Issue

  Each issue should be treated under a separate heading.

¶ 12.76.02  Defect  in  112,  First  Paragraph  Rejection
Argument

  The brief does not contain for each rejection under 35
U.S.C. 112, first paragraph, an argument which specifies the
errors in the rejection and how the first paragraph of 35
U.S.C. 112 is complied with, including how the specification
and drawings, if any, [1].

 Examiner Note:

  In bracket 1 insert the following wording which is
appropriate:

  a. "describe the subject matter defined by each of the
rejected claims"

  b. "enable any person skilled in the art to make and use
the subject matter defined by each of the rejected claims"

  c. "set forth the best mode contemplated by the inventor
of carrying out his or her invention"

¶ 12.76.03  Defect in 112, Second Paragraph, Rejection
Argument

  The brief does not contain for each rejection under 35
U.S.C. 112, second paragraph, an argument which specifies
the errors in the rejection and how the claims particularly
point out and distinctly claim the subject matter which

applicant regards as the invention.

¶ 12.76.04  Defect in 102 Rejection Argument

  The brief does not contain for each rejection under 35
U.S.C. 102, an argument which specifies the errors in the
rejection and why the rejected claims are patentable under
35 U.S.C. 102, including any specific limitations in the
rejected claims which are not described in the prior art
relied upon in the rejection.

 Examiner Note:

  Specify claim(s) for which no argument of error was
specified.

¶ 12.76.05  Defect in 103 Rejection Argument

  The brief does not contain for each rejection under 35
U.S.C. 103, an argument which specifies the errors in the
rejection and, if appropriate, the specific limitations in
the rejected claims which are not described in the prior art
relied on in the rejection, and an explanation how such
limitations render the claimed subject matter unobvious over
the prior art. If the rejection is based upon a combination
of references, the argument must explain why the references,
taken as a whole, do not suggest the claimed subject matter,
and shall include, as may be appropriate, an explanation of
why features disclosed in one reference may not properly be
combined with features disclosed in another reference. A
general argument that all the limitations are not described
in a single reference does not satisfy the requirements of
37 CFR 1.192(c)(8) (iv).

 Examiner Note:

  Specify claim(s) for which no argument of error was
specified.

¶ 12.760.6  For Any Rejection Other Than Those Referred to
in Paragraphs (c)(8) (i) to (iv) of 37 CFR 1.192 for Which
No Argument or Error Was Specified.

  The brief does not contain an argument which specifies
the errors in the rejection and the specific limitations in
the rejected claims, if appropriate, or other reasons, which
cause the rejection to be in error.

 Examiner Note:

  Specify claim(s) for which no argument of error was
specified.

¶  12.77  No Copy of Appealed Claims in Appendix

  The brief does not contain a copy of the claims involved
in the appeal in the appendix.

¶ 12.78  Period for Response Under 37 CFR 1.192(d)

  Appellant is required to comply with the provisions of
37 CFR 1.192(c). Appellant is given a TIME LIMIT of ONE
MONTH from the date of this letter or any time remaining in
the period under 37 CFR 1.192(a) for filing a new complete
brief. If a new brief that fully complies with 37 CFR

1.192(c)  is  not  timely  submitted,  the  appeal  will  be
dismissed as of the date of expiration of the period
provided by 37 CFR 1.192(a). NO EXTENSION OF THIS ONE MONTH
TIME LIMIT MAY BE OBTAINED UNDER EITHER 37 CFR 1.136(a) OR
(b), but the original TWO - MONTH period under 37 CFR
1.192(a) for filing the brief may be extended under 37 CFR
1.136(a) up to SIX MONTHS from the date of the notice of
appeal.

 Examiner Note:

  This  paragraph  has  limited  application.  To  notify
appellant of noncompliance with 37 CFR 1.192(c) examiner
must use form PTOL 462.

1207  Amendment Filed With or After Appeal [R - 3]

  To  expedite  the  resolution  of  cases  under  final
rejection, an amendment filed at any time after final
rejection but before an appeal brief is filed, may be
entered upon or after filing of an appeal >brief< provided
the total effect of the amendment is to (1) remove issues
from appeal, and/or (2) adopt examiner suggestions. Of
course, if the amendment necessitates a new search, raises
the issue of new matter, presents additional claims without
cancelling  a  corresponding  number  of  finally  rejected
claims, or otherwise introduces new issues, it will not be
entered. Examiners must respond to all nonentered amendments
after final rejection, and indicate the status of each claim
of record or proposed, including the designation of claims
that would be entered on the filing of an appeal if filed in
a separate paper. It should be noted that an amendment
placing a case in condition for allowance will be enterable
by the examiner at any stage prior to forwarding the answer
on appeal. Except where an amendment merely cancels claims
and/or adopts examiner suggestions, removes issues from
appeal, or in some other way requires only a cursory review
by the examiner, compliance with the requirement of a
showing under 37 CFR 1.116(b) will be expected of all
amendments after final rejection.

  If after appeal has been taken, a paper is presented
which  on  its  face  clearly  places  the  application  in
condition for allowance, such paper should be entered and a
notice  of  allowability  (PTOL  -  37)  or  an  examiner's
amendment promptly sent to applicant.

  In accordance with the above, the brief must be directed
to the claims and to the record of the case as they appeared
at the time of the appeal, but it may, of course, withdraw
from consideration on appeal any claims or issues as desired
by applicant.

  A timely filed brief will be referred to the examiner
for consideration of its propriety as to the appeal issues
and for preparation of an examiner's answer if the brief is
proper and the application is not allowable. The examiner's
answer may withdraw the rejection of claims or any objection
or requirement as desired by the examiner. Note MPEP §
1208.02. No new ground of rejection or objection should be
incorporated  in  the  examiner's  answer  without  express
approval in each case by the supervisory primary examiner.
See MPEP § 1002.02(d)(*>2<) and MPEP § 1208.01. See MPEP §
714.13 for procedure on handling amendments filed after
final action and before appeal.

  Note that 37 CFR 1.192(c)(4) requires a statement as to
the status of any amendment filed subsequent to the final
rejection, MPEP § 1206.

1208  Examiner's Answer [R - 2]

 37 CFR 1.193.  Examiner's answer.

  (a) The primary examiner may, within such time as may be
directed by the Commissioner, furnish a written statement in
answer to the appellant's brief including such explanation
of the invention claimed and of the references and grounds
of rejection as may be necessary, supplying a copy to the
appellant. If the primary examiner shall find that the
appeal is not regular in form or does not relate to an
appealable action, he shall so state and a petition from
such decision may be taken to the Commissioner as provided
in § 1.181.

  (b) The appellant may file a reply brief directed only to
such new points of argument as may be raised in the
examiner's answer, within two months from the date of such
answer. The new points of argument shall be specifically
identified in the reply brief. If the examiner determines
that the reply brief is not directed only to new points of
argument raised in the examiner's answer, the examiner may
refuse entry of the reply brief and will so notify the
appellant. If the examiner's answer expressly states that it
includes a new ground of rejection, appellant must file a
reply thereto within two months from the date of such answer
to avoid dismissal of the appeal as to the claims subject to
the new ground of rejection; such reply may be accompanied
by any amendment or material appropriate to the new ground.
See § 1.136(b) for extensions of time for filing a reply
brief in a patent application and § 1.550(c) for extensions
of time in a reexamination proceeding.

 APPEAL CONFERENCE

  Appealed cases in which the brief has been filed may be
reviewed by conference in the group, those participating
being (1) a primary examiner, (2) the examiner charged with
preparation  of  the  examiner's  answer,  and  (3)  another
examiner,  known  as  the  conferee,  having  sufficient
experience to be of assistance in the consideration of the
merits of the issues on appeal.

  Nonexamining  time  is  allowed  for  all  examiners
participating in an appeal conference. This includes the
examiner whose application or reexamination proceeding is
being reviewed during the conference.

  The group director has the discretion as to whether or
not appeal conferences are necessary in the examining group
and, if so, in which instances they are to be held. If an
appeal conference is held, the SPE should be informed
thereof.

  If  a  conference  is  held,  the  primary  examiner
responsible for signing the examiner's answer should weigh
the arguments of the other examiners, but it is his or her
responsibility  to  make  the  final  decision.  During  the
conference, consideration should be given to the possibility
of  dropping  cumulative  art  rejections  and  eliminating

technical rejections of doubtful value.

  On the examiner's answer, the third person (conferee)
should place his or her initials below those of the examiner
who prepared the answer, thus: ABC (conf.). This does not
indicate, necessarily, concurrence with the position taken
in the answer.

  If the examiner charged with the responsibility of
preparing the answer reaches the conclusion that the appeal
should not be forwarded and the primary examiner approves,
no conference is held.

  Before preparing the answer, the examiner should make
certain that all amendments approved for entry have in fact
been physically entered. The Clerk of the Board will return
to the group any application in which approved amendments
have not been entered.

  ANSWER

  The examiner should furnish the appellant with a written
statement in answer to the appellant's brief within 2 months
after the receipt of the brief by the examiner.

  The answer should contain a response to the allegations
or arguments in the brief and should call attention to any
errors  in  appellant's  copy  of  the  claims.  Grounds  of
rejection not argued in the examiner's answer are usually
treated as having been dropped, but may be considered by the
Board if it desires to do so. The examiner should treat
affidavits, declarations, or exhibits in accordance with 37
CFR 1.195, reporting his or her conclusions only on those
admitted.  Any  affidavits  or  declarations  in  the  file
swearing behind a patent should be clearly identified by the
examiner as being considered under either 37 CFR 1.131 or 37
CFR 1.608(b). The distinction is important since the Board
will usually consider holdings on 37 CFR 1.131 affidavits or
declarations but not holdings on 37 CFR 1.608(b) affidavits
or declarations in appeal cases.

  If the brief fails to respond to any or all grounds of
rejection advanced by the examiner, or comply with 37 CFR
1.192(c), the indicated procedure for handling such briefs
set forth in MPEP § 1206 under "Appeal Brief Content" should
be followed.

  Because of the practice of the Patent and Trademark
Office in entering amendments after final action under
justifiable circumstances for purposes of appeal, many cases
coming before the Board for consideration contain claims
which are not the claims treated in the examiner's final
rejection. They are either entirely new claims or amended
versions of the finally rejected claims or both. The new
claims or finally rejected claims, as amended, frequently
contain limitations not in the claims treated in the final
rejection and the arguments in the appellant's brief are
directed to the new claims. Under such circumstances, the
mere  reference  in  the  examiner's  answer  to  the  final
rejection for a statement of his or her position would leave
the Board, insofar as the new claims are concerned, with an
uncrystallized  issue  and  without  the  benefit  of  the
examiner's view, which complicates the task of rendering a
decision.

  It also frequently happens that an examiner will state a
position in the answer in a manner that represents a shift
from the position stated in the final rejection without
indicating that the last stated position supersedes the
former. Such a situation confuses the issue and likewise
poses difficulties for the Board since it is not clear
exactly what the examiner's ultimate position is.

  If there is a complete and thorough development of the
issues at the time of final rejection, it is possible to
save time in preparing the examiner's answer required by 37
CFR 1.193 by taking any of the following steps:

 (A)  Examiners may incorporate in the answer their
statement of the grounds of rejection merely by reference to
the final rejection (or a single other action on which it is
based, MPEP § 706.07). Only those statements of grounds of
rejection  as  appear  in  a  single  prior  action  may  be
incorporated by reference. An examiner's answer should not
refer, either directly or indirectly, to more than one prior
Office action. Statements of grounds of rejection appearing
in actions other than the aforementioned single prior action
should be quoted in the answer. The page and paragraph of
the final action or other single prior action which it is
desired to incorporate by reference should be explicitly
identified. Of course, if the examiner feels that some
further explanation of the rejection is necessary, he or she
should include it in the answer but ordinarily he or she may
avoid another recital of the issues and another elaboration
of the grounds of rejection. The answer should also include
any  necessary  rebuttal  of  arguments  presented  in  the
appellant's brief if the final action does not adequately
meet the arguments.

 (B)  If the appellant fails to describe the invention,
as required by 37 CFR 1.192, the examiner is no longer
required to provide these omissions under 37 CFR 1.192(d).
The examiner should, however, clarify the description and
explanation in the answer if he or she feels it necessary to
present properly and effectively his or her case to the
Board.

  The examiner should reevaluate his or her position in
the light of the arguments presented in the brief, and
should expressly withdraw any rejections not adhered to,
especially if the rejection was made in an action which is
incorporated by reference. This should be done even though
any rejection not repeated and discussed in the answer may
be taken by the Board as having been withdrawn.

  >If a new ground of rejection is to be made, MPEP §
1208.01 should be consulted before writing the examiner's
answer.<

  All correspondence with the Board, whether by the
examiner or the appellant, must be on the record. No
unpublished decisions which are unavailable to the general
public by reason of 35 U.S.C. 122 can be cited by the
examiner or the appellant except that either the examiner or
the appellant has the right to cite an unpublished decision
in  an  application  having  common  ownership  with  the
application on appeal.

  When files are forwarded, soft copies and prints of
references therein should remain in the file wrapper.

  If an examiner's answer is believed to contain a new
interpretation or application of the existing patent law,
the examiner's answer, application file, and an explanatory
memorandum should be forwarded to the group director for
consideration; see MPEP § 1003. If approved by the group
director, the examiner's answer should be forwarded to the
Office of the Assistant Commissioner for Patents for final
approval.

  Briefs filed on or after April 21, 1995, must comply
with amended 37 CFR 1.192, and all examiner's answers filed
in response to such briefs must comply with the guidelines
set forth below.

  Requirements for Examiner's Answer

  The examiner's answer is required to include, >under
appropriate headings,< in the order indicated, the following
items:

 (1)Real Party in Interest. A statement acknowledging
the identification of the real party in financial interest
or indicating that the party named in the caption of the
brief is the real party in interest, or if the brief
contains a proper heading but no real party in interest is
identified, a statement that it is presumed that the party
named in the caption of the brief is the real party in
interest. While the examiner will make this presumption,
appellant should note that the Board has discretion to
require an explicit statement on this item from appellant.

 (2) Related Appeals and Interferences . A statement
acknowledging appellants identification of related cases
which will directly affect or be directly affected by or
have a bearing on the decision in the pending appeal, or if
the appellant sets forth the required heading but does not
identify any related appeals or interferences, a statement
that it is presumed that there are none. While the examiner
will make this presumption, appellant should note that the
Board has discretion to require an explicit statement on
this item from appellant.

 (3)Status of Claims . A statement of whether the
examiner agrees or disagrees with the statement of the
status of claims contained in the brief and a correct
statement of the status of all the claims pending or
cancelled, if necessary. If the examiner considers that some
or all of the finally rejected claims are allowable, see
MPEP § 1208.02.

 (4)Status of Amendments . A statement of whether the
examiner disagrees with the statement of the status of
amendments contained in the brief, and an explanation of any
disagreement.

 (5)Summary of Invention . A statement of whether the
examiner disagrees with the summary of invention contained
in the brief, an explanation of why the examiner disagrees,
and a correct summary of invention, if necessary.

 (6)Issues . A statement of whether the examiner
disagrees with the statement of the issues in the brief and
an explanation of why the examiner disagrees, including:

 (i)  Identification  of  any  issues  which  are
petitionable rather than appealable, and

 (ii) Identification of any issues or grounds of
rejection on appeal which the examiner no longer considers
applicable.

 (7)Grouping of Claims . A statement of whether the
examiner disagrees with any statement in the brief that
certain claims do not stand or fall together, and, if the
examiner disagrees, an explanation as to why those claims
are not separately patentable.

 (8)Claims Appealed . A statement of whether the copy
of the appealed claims contained in the appendix to the
brief is correct and if not, a correct copy of any incorrect
claim.

 (9)References  of  Record  .  A  listing  of  the
references of record relied on, and in the case of nonpatent
references, the relevant page or pages.

 (10)New Prior Art . A statement of whether or not
any new prior art is being applied and a listing of each
such prior art reference being cited for a new ground of
rejection in the examiner's answer, and in the case of
nonpatent prior art, the relevant page or pages.

 (11)Grounds  of  Rejection  .  For  each  ground  of
rejection applicable to the appealed claims, an explanation
of  the  ground  of  rejection,  or  reference  to  a  final
rejection  or  other  single  prior  action  for  a  clear
exposition of the rejection.

 (i) For each rejection under 35 U.S.C. 112, first
paragraph,  the  examiner's  answer,  or  the  single  prior
action, shall explain how the first paragraph of 35 U.S.C.
112 is not complied with, including, as appropriate, how the
specification and drawings, if any, (a) do not describe the
subject matter defined by each of the rejected claims, (b)
would not enable any person skilled in the art to make and
use the subject matter defined by each of the rejected
claims without undue experimentation, and (c) do not set
forth  the  best  mode  contemplated  by  the  appellant  of
carrying out his or her invention.

 (ii) For each rejection under 35 U.S.C. 112, second
paragraph, the examiner's answer, or single prior action,
shall explain how the claims do not particularly point out
and distinctly claim the subject matter which applicant
regards as the invention.

 (iii) For each rejection under 35 U.S.C. 102, the
examiner's answer, or single prior action, shall explain why
the rejected claims are anticipated or not patentable under
35 U.S.C. 102, pointing out where all of the specific
limitations recited in the rejected claims are found in the
prior art relied upon in the rejection.

 (iv) For each rejection under 35 U.S.C. 103, the
examiner's answer, or single prior action,

  shall state the ground of rejection and point out
where each of the specific limitations recited in the
rejected claims is found in the prior art relied on in the

rejection,

  shall identify any difference between the rejected
claims and the prior art relied on and

  shall explain how and why the claimed subject
matter is rendered unpatentable over the prior art. If the
rejection is based upon a combination of references, the
examiner's answer, or single prior action, shall explain the
rationale for making the combination.

 (v) For each rejection under 35 U.S.C. 102 or 103
where there are questions as to how limitations in the
claims correspond to features in the prior art even after
the examiner complies with the requirements of (9)(iii) and
(iv) above, the examiner shall compare at least one of the
rejected claims feature by feature with the prior art relied
on in the rejection. The comparison shall align the language
of the claim side - by - side with a reference to the
specific page, line number, drawing reference number, and
quotation from the prior art, as appropriate.

 (vi) For each rejection, other than those referred
to in paragraphs (i) to (v) of this section, the examiner's
answer, or single prior action, shall specifically explain
the basis for the particular rejection.

 (12)New Ground of Rejection . A statement of whether
or not any new ground of rejection is being made in the
examiner's answer and a complete statement and explanation
of any such new ground. The requirements of section (11)
shall be complied with for any new ground of rejection.

 (13)Response to Argument . A statement of whether
the examiner disagrees with each of the contentions of
appellant in the brief with respect to the issues presented
and an explanation of the reasons for disagreement with any
such contention. If any ground of rejection is not argued
and responded to by appellant, the response shall point out
each claim affected.

 (14)Period of Response to New Ground of Rejection .
A statement setting the period for appellant to file a reply
to any new ground of rejection, if necessary.

  A form suitable for the examiner's answer is as follows:

¶ 12.50  Heading for Examiner's Answer

 EXAMINER'S ANSWER

 This is in response to appellant's brief on appeal filed
[1].

¶ 12.50.01  Real Party in Interest

  (1)Real Party in Interest .

 Examiner Note:

  Follow  this  paragraph  with  paragraph  12.50.02  or
12.50.03..

¶ 12.50.02.  Acknowledgement of Appellant's Identification
of a Real Party in Interest in the Brief.

  A statement identifying the real party in interest is
contained in the brief.

¶ 12.50.03.  No Identification of a Real Party in Interest
in the Brief.

  The brief does not contain a statement identifying the
Real Party in Interest. Therefore, it is presumed that the
party named in the caption of the brief is the Real Party in
Interest, i.e., the owner at the time the brief was filed.
The Board, however, may exercise its discretion to require
an explicit statement as to the Real party in interest.

¶ 12.50.04  Related Appeals and Interferences

  (2) Related appeals and interferences .

 Examiner Note:

  Follow  this  paragraph  with  paragraph  12.50.05  or
paragraph 12.50.06.

¶ 12.50.05  Acknowledgement of the Appellant's Statement
Identifying the Related Appeals and Interferences.

  A  statement  identifying  the  related  appeals  and
interferences which will directly affect or be directly
affected by or have a bearing on the decision in the pending
appeal is contained in the brief.

¶ 12.50.06.  No  Related  Appeals  and  Interferences
Identified.

  The brief does not contain a statement identifying any
related appeals and interferences which will directly affect
or be directly affected by or have a bearing on the decision
in the pending appeal. Therefore, it is presumed that there
are none. The Board, however, may exercise its discretion to
require an explicit statement as to the existence of any
related appeals and interference.

¶ 12.51  Status of Claims

 (3)Status of claims .

 Examiner Note:

  Follow this paragraph with one or more of paragraphs
12.51.01 - 12.51.10.

¶ 12.51.01  Agreement With Statement of Status of Claims

  The statement of the status of claims contained in the
brief is correct.

¶ 12.51.02  Disagreement  With  Statement  of  Status  of
Claims

  The statement of the status of claims contained in the
brief is incorrect. A correct statement of the status of the
claims is as follows:

 Examiner Note:

  1.  Indicate the area of disagreement and the reasons
for the disagreement.

  2.  One or more of paragraphs 12.51.03 - 12.51.10 must
follow this paragraph.

¶ 12.51.03  Claims on Appeal

  This appeal involves claim [1].

 Examiner Note:

  1.  In bracket 1, all the claims still on appeal should
be specified. Do not list claims which are no longer
rejected.

  2.  Also use form paragraphs 12.51.04 - 12.51.06 when
appropriate to clarify the status of the claims on appeal
that were incorrectly listed in the brief.

¶ 12.51.04  Status of Claims on Appeal - Substituted

  Claim [1] substituted for finally rejected claims.

 Examiner Note:

  All substituted claims on appeal must be identified if
the brief incorrectly lists any substituted claims.

¶ 12.51.05  Status of Claims on Appeal - Amended

  Claim [1] amended subsequent to the final rejection.

 Examiner Note:

  All  claims  amended  after  final  rejection  must  be
identified if the brief incorrectly lists any claims amended
after final rejection.

¶ 12.51.06  Status of Claims on Appeal - Substituted and
Amended

  Claim [1] substituted for finally rejected claims and
claim [2] amended subsequent to the final rejection.

 Examiner Note:

  All claims substituted or amended after final rejection
must be identified if the brief incorrectly lists any claims
substituted or amended after final rejection.

¶ 12.51.07  Claims Allowed

  Claim [1] allowed.

 Examiner Note:

  All allowed claims must be identified if the brief
incorrectly lists any allowed claims.

¶ 12.51.08  Claims Objected To

  Claim [1] objected to as being dependent upon a rejected
base  claim,  but  would  be  allowable  if  rewritten  in
independent form including all of the limitations of the

base claim and any intervening claims.

 Examiner Note:

  All objected to claims must be identified if the brief
incorrectly lists any claims objected to.

¶ 12.51.09  Claims Withdrawn From Consideration

  Claim [1] withdrawn from consideration as not directed
to the elected [2].

 Examiner Note:

  All withdrawn claims must be identified if the brief
incorrectly lists any withdrawn claims.

¶ 12.51.10  Claims Cancelled

  Claim [1] been cancelled.

 Examiner Note:

  All cancelled claims must be identified if the brief
incorrectly lists any cancelled claims.

¶ 12.52  Status of Amendments.

 (4) Status of Amendments After Final .

 Examiner Note:

  Identify status of all amendments submitted after final
rejection.  Use  one  or  more  of  paragraphs  12.52.01  -
12.52.04, if appropriate.

¶ 12.52.01  Agreement With Appellant's Statement of the
Status of Amendments After Final

  The appellant's statement of the status of amendments
after final rejection contained in the brief is correct.

¶  12.52.02  Disagreement With Appellant's Statement of the
Status of Amendments After Final

  The appellant's statement of the status of amendments
after final rejection contained in the brief is incorrect.

 Examiner Note:

  Form paragraphs 12.52.03 and/or 12.52.04 must follow
this paragraph to explain the reasons for disagreeing with
appellant's statement of the status of the amendments.

¶  12.52.03  Amendment After Final Entered

  The amendment after final rejection filed on [1] has
been entered.

 Examiner's Note:

  >1.<In bracket 1, insert the date of any entered >after
final< amendment.

  >2.  Use  this  form  paragraph  for  each  after  final

amendment which has been entered.<

¶ 12.52.04  Amendment After Final Not Entered

  The amendment after final rejection filed on [1] has not
been entered.

 Examiner's Note:

  >1.<In bracket 1, insert the date of any >after final<
amendment denied entry.

  >2.  Use this form paragraph for each after final
amendment which has been denied entry.<

¶  12.52.05  No Amendments After Final

  No amendment after final has been filed.

¶ 12.53  Summary of Invention

 (5) Summary of invention .

 Examiner Note:

  Follow this paragraph with either paragraph 12.53.01 or
12.53.02.

¶ 12.53.01  Agreement With the Summary of Invention

  The summary of invention contained in the brief is
correct.

¶ 12.53.02  Disagreement With the Summary of Invention

  The summary of invention contained in the brief is
deficient because [1].

 Examiner Note:

  In bracket 1, explain the deficiency of the appellant's
summary of the invention. Include a correct summary of the
invention if necessary for a clear understanding of the
claimed invention.

¶ 12.54  Issues

 (6)Issues .

 Examiner Note:

  Follow this paragraph with paragraph 12.54.01, 12.54.02,
or 12.54.03.

¶ 12.54.01  Agreement With Appellant's Statement of the
Issues

  The appellant's statement of the issues in the brief is
correct.

¶ 12.54.02  Disagreement With Appellant's Statement of the
Issues

  The appellant's statement of the issues in the brief is
substantially correct. The changes are as follows: [1].

 Examiner Note:

  In bracket 1 explain the changes with the appellant's
statement of the issues in the brief including:

  (i)  an  identification  of  any  issues  which  are
petitionable rather than appealable, and/or

  (ii) an identification of any issues or grounds of
rejection on appeal which the examiner no longer considers
applicable.

  (iii) any change not covered in (i) and (ii).

¶ 12.54.03  Nonappealable Issue in Brief

  Appellant's brief presents arguments relating to [1].
This issue relates to petitionable subject matter under 37
CFR 1.181 and not to appealable subject matter. See MPEP § §
1002 and 1201.

¶ 12.55  Grouping of Claims

 (7)Grouping of Claims .

 Examiner Note:

  Follow this paragraph with paragraph 12.55.01, 12.55.02
or 12.55.04 for each grouping of claims (i.e.,each ground of
rejection which appellant contests).

¶ 12.55.01  No Statement and Reasons in Brief That Claims
Do Not Stand or Fall Together

  The rejection of claims [1] stand or fall together
because appellant's brief does not include a statement that
this grouping of claims does not stand or fall together and
reasons in support thereof. See 37 CFR 1.192(c)(7).

 Examiner Note:

  1. Use this paragraph for each grouping of claims (i.e.,
ground of rejection which appellant contests) wherein the
brief includes neither a statement that a grouping of claims
does not stand or fall together nor arguments in support
thereof.

  2. If the brief includes a statement that a grouping of
claims does not stand or fall together but does not provide
reasons,  as  set  forth  in  37  CFR  1.192(c)(7),  notify
appellant  of  the  noncompliance  using  paragraphs  12.69,
12.69.01 and 12.78.

¶ 12.55.02  No Agreement with Brief Why Claims Do Not
Stand or Fall Together

  The appellant's statement in the brief that certain
claims do not stand or fall together is not agreed with
because [1].

 Examiner Note:

  In bracket 1 explain why the claim grouping listed in
the brief is not agreed with by the examiner and why, if

appropriate, e.g., the claims as listed by the appellant are
not separately patentable.

¶ 12.55.04  Brief Gives Reasons Why Claims Do Not Stand or
Fall Together

  Appellant's brief includes a statement that claims [1]
do not stand or fall together and provides reasons as set
forth in 37 CFR 1.192(c)(7) and (c)(8).

¶ 12.56  Claims Appealed

 (8) Claims appealed .

 Examiner Note:

  Follow this paragraph with paragraph 12.56.01, 12.56.02,
or 12.56.03.

¶ 12.56.01  Copy of the Appealed Claims in the Appendix Is
Correct.

  The copy of the appealed claims contained in the
appendix to the brief is correct.

¶ 12.56.02  Copy of the Appealed Claims in the Appendix is
Substantially Correct.

  A substantially correct copy of appealed claim [1]
appears on page [2] of the appendix to the appellant's
brief. The minor errors are as follows: [3].

 Examiner Note:

  1. In bracket 1, indicate the claim or claims with small
errors.

  2. In bracket 3, indicate the nature of the errors.

¶ 12.56.03  Copy of the Appealed Claims in the Appendix
Contain Substantial Errors.

  Claim [1] contain(s) substantial errors as presented in
the appendix to the brief. Accordingly, claim [2] correctly
written in the appendix to the examiner's answer.

 Examiner Note:

  1.  Appellant  should  include  a  correct  copy  of  all
appealed claims in the Appendix to the brief. See 37 CFR
1.192(c)(9).

  2. Attach a correct copy of any incorrect claims as an
Appendix to the examiner's answer and draw a diagonal line
in pencil through the incorrect claim in the Appendix of the
appellant's appeal brief.

  3. Rather than using this form paragraph, if the errors
in  the  claim(s)  are  significant,  appellant  should  be
required to submit a corrected brief using form paragraphs
12.69, 12.77, and 12.78, as well as any other paragraphs
12.70 to 12.76 as may be appropriate. Where the brief
includes arguments directed toward the errors, a corrected
brief should always be required.

¶ 12.57  Prior Art of Record

 (9) Prior Art of record .

 Examiner Note:

  Follow  this  paragraph  12.57  with  either  paragraph
12.57.01 or 12.57.02>.<

¶ 12.57.01  No Prior Art Relied Upon

  No prior art is relied upon by the examiner in the
rejection of claims under appeal.

¶ 12.57.02  Listing of the Prior Art of Record Relied Upon

  The following is a listing of the prior art of record
relied upon in the rejection of claims under appeal.

 Examiner Note:

  1. Use the following format for providing information on
each reference cited:

  Number Name Date

  2.  The  following  are  example  formats  for  listing
reference citations:

  2,717,847 VERAIN 9 - 1955

  1,345,890 MUTHER (Fed. Rep. of Germany) 7 - 1963

  (Figure 2 labeled as prior art in this document)

  3. See MPEP § 707.05(e) for additional examples>.<

¶ 12.58  New Prior Art

 (10)New prior art .

 Examiner Note:

  Follow this paragraph with either paragraph 12.58.01 or
12.58.02.

¶ 12.58.01  No New Prior Art

  No new prior art has been applied in this examiner's
answer.

¶ 12.58.02  New Reference Applied

  [1] been applied in a new ground of rejection in this
examiner's answer and listed below:

  [2]

 Examiner Note:

  1.  SPE approval for the citation of new art is
required. See also paragraph *>12.60.02<.

  2.  In bracket 1 insert either "A new reference has" or
"New references have."

  3.  In bracket 2 list the new reference(s) applied in a
new rejection in the examiner's answer.

  4.  List all patent document references of record by
number, name, and date. For example: 1,736,481 Smith 6 -
1987>.<

  5.  In the case of nonpatent references, list the
relevant page or pages.

  6.  Copies of newly cited references should be supplied
with the examiner's answer.

  7.  A PTO - 892 must be completed for the file for use
by the printer in case of issuance of the application as a
patent.

¶ 12.59  Grounds of Rejection

 (11)  Grounds of rejection .

  The following ground(s) of rejection are applicable to
the appealed claims.

 Examiner Note:

  Explain each ground of rejection or refer to the single
prior Office action which clearly sets forth the rejection
and complies with appropriate paragraphs i - vi below:

  (i)  For  each  rejection  under  35  U.S.C.  112,  first
paragraph,  the  examiner's  answer,  or  the  single  prior
action, shall explain how the first paragraph of 35 U.S.C.
112 is not complied with, including, as appropriate, how the
specification and drawings, if any, (a) do not describe the
subject matter defined by each of the rejected claims, (b)
would not enable any person skilled in the art to make and
use the subject matter defined by each of the rejected
claims, and (c) do not set forth the best mode contemplated
by the appellant of carrying out his or her invention.

  (ii) For each rejection under 35 U.S.C. 112, second
paragraph, the examiner s answer, or single prior action,
shall explain how the claims do not particularly point out
and distinctly claim the subject matter which applicant
regards as the invention.

  (iii)  For  each  rejection  under  35  U.S.C.  102,  the
examiner's answer, or single prior action, shall explain why
the rejected claims are anticipated or not patentable under
35 U.S.C. 102, pointing out where all of the specific
limitations recited in the rejected claims are found in the
prior art relied upon in the rejection.

  (iv) For each rejection under 35 U.S.C. 103, the examiner
's answer, or single prior action, shall state the ground of
rejection  and  point  out  where  each  of  the  specific
limitations recited in the rejected claims is found in the
prior art relied on in the rejection, shall identify any
difference between the rejected claims and the prior art
relied on and shall explain how the claimed subject matter
is  rendered  unpatentable  over  the  prior  art.  If  the
rejection is based upon a combination of references, the
examiner's answer, or single prior action, shall explain the

rationale for making the combination.

  (v) For each rejection under 35 U.S.C. 102 or 103 where
there may be questions as to how limitations in the claims
correspond to features in the prior art, the examiner, in
addition to the requirements of (11)(iii) and (iv) above,
should compare at least one of the rejected claims feature
by feature with the prior art relied on in the rejection.
The comparison shall align the language of the claim side by
side with a reference to the specific page, line number,
drawing reference number and quotation from the prior art,
as appropriate.

  (vi) For each rejection, other than those referred to in
paragraphs (i) to (v) of this section, the examiner's
answer, or single prior action, shall specifically explain
the basis for the particular rejection.

¶ 12.60  New Ground of Rejection

 (12)New ground of rejection .

 Examiner Note:

  Follow this paragraph with either paragraph 12.60.01 or
12.60.02>.<

¶ 12.60.01  No New Ground of Rejection

  This examiner's answer does not contain any new ground
of rejection.

¶ 12.60.02  New Ground of Rejection

  This examiner's answer contains the following NEW GROUND
OF REJECTION.

 Examiner Note:

  1.  Include a complete statement and explanation of the
new ground. The requirements as set forth in paragraph 12.59
relating to "grounds of rejection" must also be complied
with for any new ground of rejection.

  2.  This heading should precede each new ground of
rejection made in an examiner's answer >which must conclude
with form paragraph 12.62<.

  3.  Approval by the SPE isrequired .

¶ 12.61  Response to Argument

 (13)Response to argument .

 Examiner Note:

  1.  If an issue raised by appellant was fully responded
to under the "Grounds of Rejection," no additional response
is required here.

  2.  If an issue has been raised by appellant that was
not fully responded to under the "Grounds of Rejection," a
full response must be provided after this paragraph.

¶ 12.62  Period of Response To New Ground of Rejection

 (14)Period of response to new ground of rejection .

  In view of the new ground of rejection, appellant is
given a period of TWO MONTHS from the mailing date of this
examiner's answer within which to file a reply to any new
ground of rejection. Such reply may include any amendment or
material  appropriate  to  the  new  ground  of  rejection.
Prosecution otherwise remains closed. Failure to respond to
the new ground of rejection will result in dismissal of the
appeal of the claims so rejected.

¶ 12.63  Request to Present Oral Arguments

  The  examiner  requests  the  opportunity  to  present
arguments at the oral hearing.

 Examiner Note:

  1.  Use this form paragraph only if:

  a. an oral hearing has been requested by appellant, and

  b. the primary examiner intends to present an oral
argument.

  2. If appellant's request for an oral hearing has been
made before or with the brief, this form paragraph may be
included at the end of the examiner's answer.

  3. If appellant's request for an oral hearing has been
made after the examiner's answer, this form paragraph may be
included  in  a  supplemental  examiner's  answer,  an
acknowledgment of reply brief (see form paragraph 12.47), or
in a separate letter on a form PTOL - 90.

¶ 12.79  Examiner's Answer, Conclusion

  For  the  above  reasons,  it  is  believed  that  the
rejections should be sustained.

 Respectfully submitted,

  **

  For a case having a patentability report, see MPEP §
705.01(a).

  If the examiner requests an oral hearing, see >the
PARTICIPATION BY EXAMINER section in< MPEP § 1209, the
request  should  appear  in  the  last  paragraph  of  the
examiner's answer.

  ** >Up to two examiners are permitted to attend any one
hearing as observers, where the case is related to the
examiners' field of technology. Such attendance by examiners
is  considered  to  be  desirable  for  the  experience  and
educational benefits to the examiners.

  If the appellant has requested an oral hearing, and the
examiner wishes to attend as an observer, the examiner
should include a statement that he/she will attend the
hearing as the last paragraph of the examiner's answer of
supplemental  answer.  Also,  the  examiner  should  make  a
notation "Examiner will attend (but not participate in)

hearing" on the face of the file wrapper below the box for
the examiner's name.<

1208.01  New Reference, New Objection, or New Ground of
Rejection in Examiner's Answer

  At the time of preparing the answer to an appeal brief,
the examiner may decide that he or she should cite a new
reference, raise a new objection, or apply a new ground of
rejection (new reference, double patenting, statutory bar,
or other reason for rejection) against some or all of the
appealed  claims.  All  answers  citing  new  references  or
containing new grounds of rejection or objection must be
routed over the supervisory primary examiner's desk for
review and signature. If there is the citation of new
references, the answer will be mailed by the group and will
include copies of the new references. Also, a PTO - 892
listing any new references must be completed for the file
for use by the printer in case of issuance as a patent. The
Board will return to the group director's office any answer
containing (1) a newly cited reference or (2) a new ground
of  rejection,  where  such  answer  does  not  bear  the
supervisory primary examiner's signature.

  In order to introduce a new ground of rejection, it is
necessary either to reopen the ex parte prosecution before
the  examiner  or  to  include  the  new  rejection  in  the
examiner's answer, depending on existing circumstances. The
choice of action to be followed will depend on such factors
as (1) the history of the prosecution, (2) the number of
claims affected, (3) the importance of the new ground of
rejection, (4) the significance of the new reference, and
(5) the nature of the response to be expected. For example,
if the reference is basic and materially better in meeting
all of the claims, reopening of the prosecution and making
the  action  final  would  ordinarily  be  approved  if  the
requirements  for  making  an  action  final  under  MPEP  §
706.07(a) are met. Should appellant desire later to have the
Board review the examiner's new final action, the appellant
must file a new Notice of Appeal and a new brief. On the
other hand, if the new reference anticipates some but not
all of the claims or supplies a minor lack in art already
relied on, inclusion of the new ground in the examiner's
answer would normally be the approved procedure. Of course,
if the new ground of rejection applies to any claim standing
allowed the prosecution should be reopened.

  It is important that the new ground with regard to which
the supervisory primary examiner has been consulted be
clearly indicated as such so that the Board can readily
identify those cases where appellant is entitled to a period
of 2 months for reply. Any new reference should be cited
under the caption "New Reference(s)."

  Likewise when a ground of rejection not involving a new
reference is raised for the first time in the answer after
consultation with the supervisory primary examiner, the fact
that it is a new ground should be clearly indicated. In this
connection, it is noted that even if the same references are
relied on in the answer as were relied on in the final
rejection, but the thrust of the rejection is changed, the
examiner should identify the rejection as a new ground of
rejection.  See  MPEP  §  1208  under  "Requirements  for
Examiner's Answer."

  The examiner's answer which includes a new ground of
rejection should include Form Paragraph 12.60.2 and conclude
with Form Paragraph 12.62.

1208.02  Withdrawal of Final Rejection

  The examiner may withdraw the final rejection at any
time prior to the mailing of the examiner's answer. It is
possible that after reading the brief, the examiner may be
convinced that some or all of the finally rejected claims
are allowable. Where the examiner is of the opinion that
some of the claims are allowable, he or she should so
specify in the examiner's answer and confine the arguments
to the remaining rejected claims. If the examiner finds,
upon reconsideration, that all the rejected claims are
allowable, or where the appellant in the brief withdraws the
appeal as to some of the rejected claims and the examiner
finds the remaining claims to be allowable, the examiner
should pass the case to issue.

  In applications where an interference has resulted from
the applicant copying claims from the patent which provided
the basis for final rejection, the rejection based on that
patent should be withdrawn and the appeal dismissed as to
the involved claims.

1208.03  Reply Brief [R - 3]

 37 CFR 1.193.  Examiner's answer

  *****

  (b) The appellant may file a reply brief directed only to
such new points of argument as may be raised in the
examiner's answer, within two months from the date of such
answer. The new points of argument shall be specifically
identified in the reply brief. If the examiner determines
that the reply brief is not directed only to new points of
argument raised in the examiner's answer, the examiner may
refuse entry of the reply brief and will so notify the
appellant. If the examiner's answer expressly states that it
includes a new ground of rejection, appellant must file a
reply thereto within two months from the date of such answer
to avoid dismissal of the appeal as to the claims subject to
the new ground of rejection; such reply may be accompanied
by any amendment or material appropriate to the new ground.
See § 1.136(b) for extensions of time for filing a reply
brief in a patent application and § 1.550(c) for extensions
of time in a reexamination proceeding.

  *****

  Under 37 CFR 1.193(b), the appellant may file a reply
brief if the examiner's answer contains new points of
argument, but the appellant must file a reply brief if the
examiner's  answer  expressly  states  a  new  ground  of
rejection.

  In those situations where a reply brief is clearly
unwarranted (e.g., no new grounds of rejection or new points
of argument in the examiner's answer), the examiner should
refuse entry of the reply brief, and notify the appellant in
writing in order to begin the 2 - month period for petition
under  37  CFR  1.181.  If  an  amendment,  affidavit,  or
declaration was filed with the Reply Brief, the examiner

must also notify the appellant in writing of whether it has
been entered, and if it is entered, the examiner must issue
a supplement answer in response.

¶ 12.46  Notification of Non - entry of Reply Brief

  The reply brief filed [1] has not been entered because
it is not limited to new points of argument or to new
grounds of rejection raised in

 the examiner's answer. See MPEP § 1208.03. Appellant has
TWO MONTHS from the date of this communication to petition
under 37 CFR 1.181 to request entry of the reply brief.

 Examiner Note:

  1.  Type on PTOL - 90

  2.  The examiner should initial and date the reply
brief with an indication that the reply brief should not be
entered.

  3.  For entry of the reply brief, see form paragraph
12.47.

  (1) NEW POINTS OF ARGUMENT IN EXAMINER'S ANSWER

  Where new points of argument have been raised in the
examiner's answer, appellant may file a reply brief within 2
months from the date of such answer. Appellants must clearly
and specifically indicate in their reply briefs the new
points of argument "raised in the examiner's answer" to
which said reply briefs are directed. 37 CFR 1.193(b) does
not permit general rebuttal of each statement made in the
examiner's answer. If the examiner determines that the reply
brief is not directed only to new points of argument raised
in the examiner's answer, the examiner may refuse entry of
the reply brief and will so notify the appellant.

  Since the reply brief must be limited to any new points
of argument raised in the examiner's answer, compliance with
the requirement of the second sentence of 37 CFR 1.193(b)
should facilitate both preparation of the reply brief by
appellant and consideration of the reply brief by the Patent
and Trademark Office. The reply brief is appropriately
limited to new points of argument raised in the examiner's
answer because appellants have an obligation to present
arguments  supporting  their  positions  in  their  opening
briefs. Considering an argument advanced for the first time
in a reply brief would not only delay the proceeding, but
also would entail the risk of an improvident or ill -
advised opinion on the legal issues tendered. Von Brimer  v.
Whirlpool Corp. , 536 F.2d 838, 846, 190 USPQ 528, 534 (9th
Cir. 1976).

  (2) NEW GROUND OF REJECTION IN EXAMINER'S ANSWER

  Where a new ground of rejection is raised in the
examiner's answer, the appellant, under 37 CFR 1.193(b) has
two  months  within  which  to  file  a  reply  brief.  The
appellant's reply, insofar as the new ground of rejection is
concerned, may include any amendment or material appropriate
to  the  new  ground.  Consideration  will  be  limited  to
amendments  and  facts  pertinent  to  the  new  ground  of
rejection.

  An amendment limited to the new ground of rejection is
entitled to entry: Ex parte Absecket al ., 133 USPQ 411
(Supervisory Examiner, 1960).

  Appellants are reminded that their briefs in appealed
cases must be responsive to every ground of rejection stated
by  the  examiner,  including  new  grounds  stated  in  the
examiner's answer.

  If the appellant does not file a timely reply brief in
response to a new ground of rejection expressly stated in
the examiner's answer, the appeal will be dismissed as to
the claims which were made subject to the new ground of
rejection. If the dismissal of the appeal applies to all the
claims in the application, the application will be held
abandoned.

  Where an appellant files a reply brief but fails to
respond in the reply brief to the new ground of rejection,
appellant shall be notified by the examiner that he or she
is allowed one month to correct the defect by filing a
supplemental reply brief. Where this procedure has not been
followed, the Board should remand the application to the
examiner for compliance. >Form paragraph 12.48 may be used
to notify appellant.

¶ 12.48  Defective  Reply  Brief  -  Time  Limit  for
Correction

  Appellant's reply brief is incomplete and / or non -
responsive since it fails to include a response to the new
ground of rejection contained in the examiner's answer.

  Applicant is given a TIME LIMIT OF ONE MONTH from the
date of this letter or any time remaining in the period
originally set in the examiner's answer for filing a proper
reply  brief.  If  a  proper  reply  brief  is  not  timely
submitted, the appeal will be dismissed as to the claims
subject to the new ground of rejection. NO EXTENSION OF THIS
ONE MONTH TIME LIMIT MAY BE OBTAINED UNDER EITHER 37 CFR
1.136(a) or (b) but the original TWO - MONTH period under 37
CFR 1.193(b) for filing the reply brief may be extended
under 37 CFR 1.136(b) upon a showing of sufficient cause.<

  The penultimate sentence of 37 CFR 1.193(b) provides
that the reply brief may be accompanied by any amendment or
material appropriate to the new ground of rejection. This
makes  it  clear  that  any  amendment  or  other  material
appropriate to the new ground of rejection must be presented
in a separate paper, rather than in the reply itself. 37 CFR
1.193(b) requires that the appellant be notified if the
reply brief is not entered because of noncompliance with the
rule, and an appellant who disagrees with that ruling may
seek review by way of a petition under 37 CFR 1.181.

1208.04  Supplemental Examiner's Answer [R - 1]

  Normally, when a reply brief has been filed by the
appellant in response to a new point of argument in the
examiner's answer, the case should be forwarded to the Board
without any need for the preparation of a supplemental
answer by the examiner. The examiner must notify appellant
of consideration of the reply brief, e.g., by using form
paragraph 12.47. However, where good reason to respond is

apparent, the examiner may issue a supplemental answer in
response to the reply brief before forwarding the case to
the Board. If an amendment, affidavit, or declaration was
filed with the reply brief, the examiner must notify the
appellant in writing whether it
has been entered, and if it is entered, the examiner must
issue a supplemental answer in response.

¶ 12.47  Acknowledgment of Reply Brief

  The  reply  brief  filed  [1]  has  been  entered  and
considered but no further response by the examiner is deemed
necessary. The application has been forwarded to the Board
of Patent Appeals and Interferences for decision on the
appeal.

 Examiner Note:

  1.  Type on PTOL - 90

  2. Do not use this form paragraph if a supplemental
examiner's answer is prepared.

  3.  Where good reason to respond is apparent, the
examiner may issue a supplemental answer in response to the
reply brief before forwarding the case to the Board. If an
amendment, affidavit, or declaration was filed with the
reply brief, the examiner must notify the appellant in
writing whether it has been entered, and if it is entered,
the examiner must issue a supplemental >examiner's< answer
in response.

  If the reply brief was filed in response to a new ground
of rejection in the examiner's answer, the examiner must
issue a supplemental answer indicating whether the new
ground of rejection has been overcome, and, if it has not,
explaining why not.

1209  Oral Hearing [R - 2]

 37 CFR 1.194.  Oral hearing.

  (a) An oral hearing should be requested only in those
circumstances  in  which  the  appellant  considers  such  a
hearing necessary or desirable for a proper presentation of
his appeal. An appeal decided without an oral hearing will
receive the same consideration by the Board of Patent
Appeals and Interferences as appeals decided after oral
hearing.

  (b) If appellant desires an oral hearing, appellant must
file a written request for such hearing accompanied by the
fee set forth in § 1.17(g) within two months after the date
of the examiner's answer. If appellant requests an oral
hearing and submits therewith the fee set forth in §
1.17(g), an oral argument may be presented by, or on behalf
of, the primary examiner if considered desirable by either
the primary examiner or the Board. See § 1.136(b) for
extensions of time for requesting an oral hearing in a
patent application and § 1.550(c) for extensions of time in
a reexamination proceeding.

  (c) If no request and fee for oral hearing have been
timely filed by the appellant, the appeal will be assigned
for  consideration  and  decision.  If  the  appellant  has

requested an oral hearing and has submitted the fee set
forth in § 1.17(g), a day of hearing will be set, and due
notice thereof given to the appellant and to the primary
examiner. A hearing will be held as stated in the notice,
and oral argument will be limited to twenty minutes for the
appellant and fifteen minutes for the primary examiner
unless otherwise ordered before the hearing begins.

  37 CFR 1.194(b) provides that an appellant who desires an
oral hearing before the Board must request the hearing by
filing  a  written  request  therefor,  accompanied  by  the
appropriate fee, within 2 months after the date of the
examiner's answer. This time period applies regardless of
whether or not the examiner's answer contains a new ground
of rejection, and may only be extended by filing a request
under either 37 CFR 1.136(b) or, if the appeal involves a
reexamination proceeding, under 37 CFR 1.550(c).

  The request for oral hearing should be filed as a
separate paper to facilitate its consideration. A notice of
hearing, stating the date, the time, and the docket, is
forwarded to the appellant in due course. If appellant fails
to confirm within the time required in the notice of
hearing, the appeal will be removed from the hearing docket
and assigned on brief in due course. No refund of the fee
for requesting an oral hearing will be made. Similarly,
after  confirmation,  if  no  appearance  is  made  at  the
scheduled hearing, the appeal will be decided on brief.
Since failure to notify the Board of waiver of hearing in
advance of the assigned date results in a waste of the
Board's resources, appellant should inform the Board of a
change in plans at the earliest possible opportunity.

  If appellant has any special request, such as for a
particular date or day of the week, this will be taken into
consideration in setting the hearing, if made known to the
Board in advance, as long as such request does not unduly
delay a decision in the case and does not place an undue
administrative burden on the Board.

  The appellant may also file a request, in a paper
addressed to the Chief Clerk of the Board, to present
his/her arguments via telephone. The appellant making the
request will be required to bear the cost of the telephone
call.

  If the time set in the notice of hearing conflicts with
prior commitments or if subsequent events make appearance
impossible,  the  hearing  may  be  rescheduled  on  written
request. However, in view of the administrative burden
involved in rescheduling hearings and the potential delay
which may result in the issuance of any patent based on the
application on appeal, postponements are discouraged and
will not be granted in the absence of convincing reasons in
support of the requested change.

  Normally, 20 minutes are allowed for appellant to
explain his or her position. If appellant believes that
additional time will be necessary, a request for such time
should be made well in advance and will be taken into
consideration in assigning the hearing date. The final
decision on whether additional time is to be granted rests
within the discretion of the senior member of the panel
hearing the case.

  **

  PARTICIPATION BY EXAMINER

  >If the appellant has requested an oral hearing and the
primary examiner wishes to appear and present an oral
argument  before  the  Board,  a  request  to  present  oral
argument must be included as the last paragraph of the
examiners' answer, using form paragraph 12.63. See MPEP  §
1208. If the appellant's request for a hearing is filed
after the examiner's answer, then the examiner's request
must be in the last paragraph of the supplemental answer. In
either case, the examiner should also make a notation
"Examiner Requests an Oral Hearing" on the face of the file
wrapper below the box for the examiner's name. <

  In those appeals in which an oral hearing has been
confirmed and either the primary examiner or the Board has
indicated a desire for the examiner to participate in the
oral  argument,  oral  argument  may  be  presented  by  the
examiner whether or not appellant appears.

  After the oral hearing has been confirmed and the date
set as provided in 37 CFR 1.194(c), the application file
will be delivered to the examiner via the appropriate Group
Director at least 2 weeks prior to the date of the hearing
and the examiner will be notified of the date of the
hearing.  In  those  cases  where  the  Board  requests  the
presentation of an oral argument by or on behalf of the
primary  examiner,  the  Board's  request  may,  where
appropriate, indicate specific points or questions to which
the  argument  should  be  particularly  directed.  The
application file must be returned to the Board at least 2
working days before the hearing.

  In any appeal where oral argument is to be presented by,
or on behalf of, the primary examiner, the appellant will be
given due notice of that fact.

  At the hearing, after the appellant has made his or her
presentation, the examiner will be allowed 15 minutes to
reply as well as to present a statement which clearly sets
forth his or her position with respect to the issues and
rejections of record. Appellant may utilize any allotted
time not used in the initial presentation for rebuttal.

  ** >If the examiner wishes to attend the oral hearing as
an observer but not to present oral argument, see the last
two paragraphs of MPEP § 1208.<

1210  Actions Subsequent to Examiner's Answer but Before
Board's Decision [R - 1]

  JURISDICTION OF BOARD

  The application file and jurisdiction of the application
are normally transferred from the examining groups to the
Board at one of the following times:

  **  >(1) After 2 months from the examiner's answer,
plus mail room time, if no Reply Brief has been timely
filed.

 (2) After a supplemental examiner's answer has been
mailed in reply to a timely Reply Brief.

 (3) After the examiner has notified the appellant by
written communication that the Reply Brief will be entered
and that no supplemental examiner's answer will be prepared
in response to the timely filed Reply Brief (for example by
mailing a PTOL - 90 with form paragraph 12.47, as described
in MPEP § 1208.04).

 (4) After two months, plus mailing room time, from
the denial of entry of a Reply Brief. This time period is
necessary  to  allow  receipt  of  any  petition  filed  by
appellant under 37 CFR 1.181 for reconsideration of the
denial (for example by mailing a PTOL - 90 with form
paragraph 12.46, as described in MPEP § 1208.03).<

  Any amendment, affidavit, or other paper relating to the
appeal, filed thereafter but prior to the decision of the
Board, may be considered by the examiner only in the event
the case is remanded by the Board for that purpose.

  DIVIDED JURISDICTION

  Where appeal is taken from the final rejection only of
one or more claims presented for the purpose of provoking an
interference, jurisdiction of the rest of the case remains
with the examiner, and prosecution of the remaining claims
may proceed as though the entire case was under his or her
jurisdiction. Also, where the examiner certifies in writing
that there is no conflict of subject matter and the examiner
- in - chief in charge of the interference approves, an
appeal  to  the  Board  may  proceed  concurrently  with  an
interference. See MPEP § 2315.

  ABANDONMENT OF APPEAL

  To avoid the rendering of decisions by the Board in
applications  which  have  already  been  refiled  as
continuations, appellants should promptly inform the clerk
of the Board in writing as soon as they have positively
decided to refile or to abandon an application containing an
appeal awaiting a decision. Failure to exercise appropriate
diligence in this matter may result in the Board's refusing
an otherwise proper request to vacate its decision.

  See MPEP § 1215.01 - § 1215.03 concerning the withdrawal
of appeals.

1211  Remand by Board

  The Board has authority to remand a case to the examiner
for a fuller description of the claimed invention and, in
the case of a machine, a statement of its mode of operation.
In certain cases where the pertinence of the references is
not clear, the Board may call upon the examiner for a
further explanation. In the case of multiple rejections of a
cumulative nature, the Board may also remand for selection
of the preferred or best ground. The Board may also remand a
case to the examiner for further search where it feels that
the most pertinent art has not been cited, or to consider an
amendment, affidavits, or declarations.

  The group director should approve and the Board should
be notified whenever a remanded application is withdrawn
from appeal under any circumstance. See MPEP § 706.07(c) - §
706.07(e).

1211.01  Remand by Board To Consider Amendment

  While there is no obligation resting on the Board to
consider new or amended claims submitted while it has
jurisdiction of the appeal. In re Sweet , 58 USPQ 327 (CCPA
1943), a proposed amendment, affidavit, declaration, or
other paper may be remanded for such consideration as the
examiner may see fit to give. Such an amendment, unless
filed under 37 CFR 1.193(b), will be treated as an amendment
filed after appeal. See MPEP § 1207.

  If the proposed amendment is in effect an abandonment of
the appeal; e.g., by canceling the appealed claims, the
amendment should be entered and the clerk of the Board
notified in order that the case may be removed from the
Board's docket.

1212  Remand by Board To Consider Affidavits or
Declarations

 37 CFR 1.195.  Affidavits or declarations after appeal.

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

  Affidavits or declarations filed with or after appeal
but before the mailing of the examiner's answer will be
considered  for  entry  only  if  the  appellant  makes  the
necessary showing under 37 CFR 1.195 as to why they were not
earlier presented. Authority from the Board is not necessary
to consider such affidavits or declarations. Affidavits or
declarations filed after a final rejection and prior to a
notice of appeal are handled as provided in a MPEP § 715.09
and § 716.

  In the case of affidavits or declarations filed after
the application has been forwarded to the Board, but before
a decision thereon by the Board, the examiner is without
authority to consider the same in the absence of a remand by
the Board. When a case is remanded to the examiner for the
consideration  of  such  affidavits  or  declarations,  the
examiner, after having given such consideration as the facts
in the case require, will return the case to the Board with
his or her answer on remand, a copy of which should be
forwarded  to  the  appellant.  If  such  an  affidavit  or
declaration is not accompanied by the showing required under
37 CFR 1.195, the examiner will not consider its merits. If
the  delay  in  filing  such  affidavit  or  declaration  is
satisfactorily explained, the examiner will admit the same
and consider its merits.

  It is not the custom of the Board to remand affidavits
or declarations offered in connection with a request for
reconsideration of its decision where no rejection has been
made under 37 CFR 1.196(b). Affidavits or declarations
submitted for this purpose, not remanded to the examiner,
are considered only as arguments. In re Martin , 69 USPQ 75
(CCPA 1946).

  For remand to the examiner to consider appellant's
remarks relating to a 37 CFR 1.196(b) rejection, see MPEP §
1214.01.

1213  Decision by Board

 37 CFR 1.196.  Decision by the Board of Patent Appeals
and Interferences.

  (a) The Board of Patent Appeals and Interferences, in its
decision, may affirm or reverse the decision of the examiner
in whole or in part on the grounds and on the claims
specified by the examiner or remand the application to the
examiner for further consideration. The affirmance of the
rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the
examiner on that claim, except as to any ground specifically
reversed.

  *****

  After consideration of the record including appellant's
brief and the examiner's answer, the Board writes its
decision, affirming the examiner in whole or in part, or
reversing the examiner's decision, sometimes also setting
forth a new ground of rejection.

  On occasion, the Board has refused to consider an appeal
until after the conclusion of a pending civil action or
appeal to the C.A.F.C. involving issues identical with
and/or similar to those presented in the later appeal. Such
suspension of action, postponing consideration of the appeal
until the Board has the benefit of a court decision which
may be determinative of the issues involved, has been
recognized as sound practice. An appellant is not entitled,
after obtaining a final decision by the Patent and Trademark
Office on an issue in a case, to utilize the prolonged
pendency of a court proceeding as a means for avoiding res
judicata while relitigating the same, or substantially the
same issue in another application.

  An applicant may request that the decision be withheld
to permit the refiling of the application at any time prior
to the mailing of the decision. Up to 30 days may be
granted, although the time is usually limited as much as
possible. The Board will be more prone to entertain the
applicant's  request  where  the  request  is  filed  early,
obviating the necessity for an oral hearing or even forth
setting of the oral hearing date. If the case has already
been set for oral hearing, the petition should include a
request to vacate the hearing date, not to postpone it.

  In a situation where a withdrawal of the appeal is filed
on the same day that the decision is mailed, a petition to
vacate the decision will be denied.

  Since review of the decisions of the Board is committed
by  statute  to  the  courts,  its  decisions  are  properly
reviewable on petition only to the extent of determining
whether they involve obvious error or abuse of discretion.
Reasonable rulings made by the Board on matters resting in
its discretion will not be disturbed upon petition. Thus,
for example, the Board's opinion as to whether it has
employed a new ground of rejection will not be set aside on
petition  unless  said  opinion  is  found  to  be  clearly
unwarranted.

  See MPEP § 1214.01 concerning a new ground of rejection

by the Board under 37 CFR 1.196(b).

1213.01  Recommendations of Board

 37 CFR 1.196.  Decision by the Board of Patent Appeals
and Interferences.

  *****

  (c) Should the decision of the Board of Patent Appeals
and Interferences include an explicit statement that a claim
may be allowed in amended form, appellant shall have the
right to amend in conformity with such statement, which
shall be binding on the examiner in the absence of new
references or grounds of rejection.

  *****

  If the examiner knows of references or reasons which
were not before the Board, such a favorable recommendation
is  not  binding.  Likewise,  any  change  in  a  favorably
recommended claim other than the amendments recommended
would tend to destroy the force of such recommendation. Ex
parte Young, 18 Gour. 24, 31.

  In the absence of an express recommendation, a remark by
the Board that a certain feature does not appear in a claim
is not to be taken as a recommendation that the claim be
allowed if the feature is supplied by amendment. Ex parte
Norlund, 1913 C.D. 161, 192 O.G. 989 (Comm'r Pat. 1913).

  Appellant's right to amend in conformity with the
recommendation may only be exercised within the period
allowed for seeking court review under 37 CFR 1.304. See
MPEP § 1216.

1213.02  Statement as to Rejection of an Allowed Claim

 37 CFR 1.196.  Decision by the Board of Patent Appeals
and Interferences.

  *****

  (d)  Although  the  Board  of  Patent  Appeals  and
Interferences normally will confine its decision to a review
of rejections made by the examiner, should it have knowledge
of any grounds for rejecting any allowed claim it may
include in its decision a recommended rejection of the claim
and remand the case to the examiner. In such event, the
Board shall set a period, not less than one month, within
which  the  appellant  may  submit  to  the  examiner  an
appropriate amendment, a showing of facts or reasons, or
both, in order to avoid the grounds set forth in the
recommendation  of  the  Board  of  Patent  Appeals  and
Interferences.  The  examiner  shall  be  bound  by  the
recommendation and shall enter and maintain the recommended
rejection unless an amendment or showing of facts not
previously of record is filed which in the opinion of the
examiner, overcomes the recommended rejection. Should the
examiner make the recommended rejection final the applicant
may  again  appeal  to  the  Board  of  Patent  Appeals  and
Interferences.

  (e) Whenever a decision of the Board of Patent Appeals
and Interferences includes a remand, that decision shall not

be considered as a final decision. When appropriate, upon
conclusion of the proceedings before the examiner, the Board
of Patent Appeals and Interferences may enter an order
otherwise making its decision final .

  37 CFR 1.196(d) provides express authority for the Board
to include, in its decision, a recommendation for rejecting
any allowed claim that it believes should be considered by
the examiner. 37 CFR 1.196(d) also provides that the Board
may remand the case to the examiner for such consideration,
and that the appellant shall have an opportunity to respond
to the grounds set forth by the Board prior to consideration
by the examiner. If the previously allowed claims are
rejected by the examiner, the rejection may be appealed to
the Board.

  37 CFR 1.196(e) provides that a decision of the Board
which includes a remand will not be considered as a final
decision in the case. The Board, following conclusion of the
proceedings before the examiner, will either adopt its
earlier decision as final or will render a new decision
based on all appealed claims, as it considers appropriate.
In either case, final action by the Board will give rise to
the alternatives available to an appellant following a
decision by the Board.

  In  situations  where  the  examiner  concludes  after
consideration of all the evidence and argument that the
remanded claims should be allowed, the rule dealing with
reasons for allowance (37 CFR 1.109) provides an appropriate
mechanism for him or her to explain, on the record, his or
her reasoning for coming to this conclusion, notwithstanding
the grounds set forth by the Board in its statement.

  37 CFR 1.196(d) does not affect the Board's authority to
remand a case to the examiner without rendering a decision
in  appropriate  circumstances.  37  CFR  1.196(d)  is  not
intended as an instruction to the Board to reexamine every
allowed claim in every appealed application. It is, rather,
intended to give the Board express authority to act when it
becomes  apparent,  during  the  consideration  of  rejected
claims, that one or more allowed claims may be subject to
rejection on either the same or on different grounds from
those applied against the rejected claims.

  The period set by the Board for the submission of an
amendment or showing to the examiner may not be extended by
the filing of a petition and fee under 37 CFR 1.136(a), but
only under the provisions of 37 CFR 1.136(b). See 37 CFR
1.196(f).

1213.03  Publication of Board Decision

  Decisions  of  the  Board  may  be  published  at  the
discretion of the Commissioner. Requests by members of the
public or applicants to publish a decision of the Board
should be referred to the Office of the Solicitor. A
decision in a pending or abandoned application will be
published in accordance with 37 CFR 1.14(d).

1214  Procedure Following Decision by Board

 37 CFR 1.197.  Action following decision.

  (a) After decision by the Board of Patent Appeals and

Interferences, the case shall be returned to the examiner,
subject to the appellant's right of appeal or other review,
for such further action by the appellant or by the examiner,
as the condition of the case may require, to carry into
effect the decision.

 ****

  After an appeal to the Board has been decided, a copy of
the decision is mailed to the appellant and the original
placed in the file. The clerk of the Board notes the
decision on the file wrapper and in the record of appeals,
and then forwards the file to the examiner through the
office of the group director immediately if the examiner is
reversed, and after about 6 weeks if the examiner is
affirmed  or  after  a  decision  on  a  request  for
reconsideration is rendered.

1214.01  Procedure Following New Ground of Rejection by
Board [R - 1]

 37 CFR 1.196.  Decisions by the Board of Patent Appeals
and Interferences

  *****

  (b) Should the Board of Patent Appeals and Interferences
have knowledge of any grounds not involved in the appeal for
rejecting any

 appealed claim, it may include in the decision a statement
to that effect with its reasons for so holding, which
statement shall constitute a new rejection of the claims. A
new rejection shall not be considered final for purposes of
judicial review. When the Board of Patent Appeals and
Interferences makes a new rejection of an appealed claim,
the appellant may exercise any one of the following two
options with respect to the new ground:

  (1) The appellant may submit an appropriate amendment of
the claims so rejected or a showing of facts, or both, and
have the matter reconsidered by the examiner in which event
the application will be remanded to the examiner. The
statement shall be binding upon the examiner unless an
amendment or showing of facts not previously of record be
made which, in the opinion of the examiner, overcomes the
new ground for rejection stated in the decision. Should the
examiner again reject the application the applicant may
again  appeal  to  the  Board  of  Patent  Appeals  and
Interferences.

  (2) The appellant may have the case reconsidered under §
1.197(b) by the Board of Patent Appeals and Interferences
upon the same record. The request for * >reconsideration<
shall address the new ground for rejection and state with
particularity  the  points  believed  to  have  been
misapprehended or overlooked in rendering the decision and
also state all other grounds upon which reconsideration is
sought. Where request for such reconsideration is made the
Board of Patent Appeals and Interferences shall reconsider
the new ground for rejection and, if necessary, render a new
decision which shall include all grounds upon which a patent
is refused. The decision on reconsideration is deemed to
incorporate the earlier decision, except for those portions
specifically withdrawn on reconsideration, and is final for

the purpose of judicial review.

  *****

  (f) See § 1.136(b) for extensions of time to take action
under this section in a patent application and § 1.550(c)
for extensions of time in a reexamination proceeding.

  Under 37 CFR 1.196(b), the Board may, in its decision on
an ex parte appeal, make a new rejection of one or more
appealed claims, in which case the appellant has the option
of

 (1) requesting reconsideration, or

 (2)  submitting  an  appropriate  amendment  of  the
rejected claims, and/or a showing of facts.

  (The appellant no longer has the option of treating the
rejection as final and immediately appealable.)

 (1) REQUEST FOR RECONSIDERATION

  A request for reconsideration by the Board >of the
rejection under 37 CFR 1.196(b)< must be filed within 1
month from the date of the decision, the period set by 37
CFR 1.197(b). By proceeding in this manner, the appellant
waives his or her right to further prosecution before the
examiner. In re Greenfield , 5 USPQ 474 (CCPA 1930). >If the
Board's  decision  also  includes  an  affirmance  of  the
examiner's rejection, a request for reconsideration of the
affirmance (see MPEP § 1214.03 and MPEP § 1214.06 D.) should
be filed in a separate paper to facilitate consideration.<

  However, an appellant's request for reconsideration
accompanied by an affidavit containing a showing of facts to
be added to the record does not afford reconsideration by
the Board as a matter of right under 37 CFR 1.196(b). The
Board  has  authority  to  remand  the  application  to  the
examiner and the examiner has authority to consider a new
showing of facts following a new rejection by the Board and
withdraw the Board's rejection based on the appellant's
affidavit and accompanying remarks. In such an instance, the
examiner also has authority to make any appropriate new
rejection under 37 CFR 1.198 with the group director's
approval.

  (2) SUBMISSION OF AMENDMENT OR SHOWING OF FACTS

  If the appellant elects to proceed before the examiner,
he or she must take such action within the period for
response set in the Board's decision, which may not exceed 6
months from the Board's decision. See In re application
filed July 13, 1950 at 105 USPQ 154, 693 O.G. 136, 1955 C.D.
3 (Comm'r Pat. 1955). A shortened period for response of 2
months ordinarily is set in the Board's decision. Fee
extension under 37 CFR 1.136(a) is not available to extend
the period, 37 CFR 1.196(f). A rejection under 37 CFR
1.196(b) in effect nullifies the final rejection and reopens
the prosecution of the subject matter of the claims so
rejected by the Board.

  The  appellant  may  amend  the  claims  involved,  or
substitute new claims to avoid the art or reasons adduced by
the Board. Ex parte Burrowes , 110 O.G. 599,1904 C.D. 155

(Comm'r Pat. 1904). Such amended or new claims must be
directed to the same subject matter as the appealed claims,
Ex parte Comstock,317 O.G. 4,1923 C.D. 82 (Comm'r Pat.
1923). The appellant may also submit a showing of facts
under 37 CFR 1.131 or 1.132, as may be appropriate.

  Argument without either amendment of the claims so
rejected or the submission of a showing of facts can result
only in a final rejection of the claims, since the examiner
is without authority to allow the claims unless amended or
unless the rejection is overcome by a showing of facts not
before the Board. The new ground of rejection raised by the
Board does not reopen the prosecution except as to that
subject matter to which the new rejection was applied. >If
the Board's decision in which the rejection under 37 CFR
1.196(b) was made includes an affirmance of the examiner's
rejection, the basis of the affirmed rejection is not open
to further prosecution. If the appellant elects to proceed
before the examiner with regard to the new rejection, the
Board's affirmance will be treated as nonfinal for purposes
of  seeking  judicial  review,  and  no  request  for
reconsideration of the affirmance need be filed at that
time. Prosecution before the examiner of the 37 CFR 1.196(b)
rejection can incidentally result in overcoming the affirmed
rejection even though the affirmed rejection is not open to
further prosecution. Therefore, it is possible for the
application to be allowed as a result of the limited
prosecution before the examiner of the 37 CFR 1.196(b)
rejection. If the application becomes allowed, the case
should not be returned to the Board. Likewise, if the
application is abandoned for any reason, the case should not
be returned to the Board. If the rejection under 37 CFR
1.196(b) is not overcome, the applicant can file a second
appeal (as discussed below). Such appeal must be limited to
the 37 CFR 1.196(b) rejection and may not include the
affirmed rejection. If the application does not become
allowed or abandoned as discussed above, once prosecution of
the claims which were rejected under 37 CFR 1.196(b) is
terminated before the examiner, the application file must be
returned to the Board so that a decision making the original
affirmance final can be entered. The time for filing a
request for reconsideration on the affirmance or seeking
court review runs from the date of the decision by the Board
making the original affirmance final. See MPEP § 1214.03 and
§ 1216.<

  If the examiner does not consider that the amendment
and/or showing of facts overcome the rejection, he or she
will again reject the claims; if appropriate, the rejection
will be made final.

  37  CFR  1.196(b)(1),  as  amended,  adds  the  following
sentence as the penultimate sentence of the section:

  Should the examiner repeat the rejection the applicant
may  again  appeal  to  the  Board  of  Patent  Appeals  and
Interferences.

  An applicant in whose application such a final rejection
has been made by the examiner may mistakenly believe that he
or she is entitled to review by the Board of the rejection
by virtue of the fact that the application was previously on
appeal. 37 CFR 1.196(b) now makes it clear that after such a
final rejection, an applicant who desires further review of
the matter must file a new appeal to the Board. The language

of 37 CFR 1.196(b) is similar to the fourth sentence of 37
CFR 1.196(d). Such an appeal from the subsequent rejection
by the examiner will be an entirely new appeal involving a
different ground and will require a new notice of appeal and
the payment of another fee.

  In accordance with 37 CFR 1.196(f), the time periods for
requesting reconsideration of the Board's new rejection
under 37 CFR 1.196(b), or for submitting an amendment or
showing of facts, may not be extended by the filing of a
petition and fee under 37 CFR 1.136(a), but only under the
provisions of 37 CFR 1.136(b) or under 37 CFR 1.550(c) if
the appeal involves a reexamination proceeding.

1214.03  Reconsideration

 37 CFR 1.197.  Action following decision.

  *****

  (b) A single request for reconsideration or modification
of the decision, may be made if filed within one month from
the date of the original decision, unless the original
decision is so modified by the decision on reconsideration
as to become, in effect, a new decision, and the Board of
Patent Appeals and Interferences so states. The request for
reconsideration shall state with particularity the points
believed  to  have  been  misapprehended  or  overlooked  in
rendering the decision and also state all grounds upon which
reconsideration  is  sought.  See  37  CFR  1.136(b)  for
extensions of time for seeking reconsideration in a patent
application and § 1.550(c) for extensions of time in a
reexamination proceeding.

  *****

  37  CFR  1.197(b)  provides  that  any  request  for
reconsideration must specifically state the points believed
to have been misapprehended or overlooked in the Board's
decision.  Experience  has  shown  that  many  requests  for
reconsideration  are  nothing  more  than  reargument  of
appellant's position on appeal. The rule now limits requests
to the points of law or fact which appellant feels were
overlooked or misapprehended by the Board.

  The 1 - month period provided by 37 CFR 1.197(b) for
filing a request for reconsideration can only be extended
under the provisions of 37 CFR 1.136(b) or under 37 CFR
1.550(c) if the appeal involves a reexamination proceeding.

  All copies of references in the file wrapper should be
retained therein.

  For extension of time to appeal to the Court of Appeals
for the Federal Circuit or commence a civil action under 37
CFR 1.304(a); see MPEP § 1002.02(n).

  For requests for reconsideration by the examiner, see
MPEP § 1214.04.

1214.04  Examiner Reversed

  A complete reversal of the examiner's rejection brings
the case up for immediate action by the examiner.

  The examiner should never regard such a reversal as a
challenge to make a new search to uncover other and better
references This is particularly so where the application has
meanwhile been transferred or assigned to an examiner other
than the one who finally rejected the claims. The second
examiner should give full faith and credit to the prior
examiner's search.

  If the examiner has specific knowledge of the existence
of a particular reference or references which indicate
nonpatentability of any of the appealed claims as to which
the examiner was reversed, he or she should submit the
matter to the group director for authorization to reopen
prosecution under 37 CFR 1.198 for the purpose of entering
the new rejection. Note MPEP § 1002.02(c), item 2, and MPEP
§ 1214.07. The group director's approval is placed on the
action reopening prosecution.

  The examiner may request reconsideration of the Board
decision. Such a request should normally be made within 1
month of the receipt of the Board decision in the group. The
group director's secretary should therefore date stamp all
Board decisions upon receipt in the group.

  All  requests  by  the  examiner  to  the  Board  for
reconsideration of a decision, must be approved by the group
director and must also be forwarded to the Office of the
Assistant  Commissioner  for  Patents  for  approval  before
mailing.

  The request should set a period of 1 month for the
appellant to file a reply.

  If approved, the Office of the Assistant Commissioner
for  Patents  will  mail  a  copy  of  the  request  for
reconsideration to the appellant. After the period set for
appellant to file a reply (plus mailing time) has expired,
the application file will be forwarded to the Board.

1214.05  Cancellation of Withdrawn Claims

  Where an appellant withdraws some of the appealed
claims, and the Board reverses the examiner on the remaining
appealed  claims,  the  withdrawal  is  treated  as  an
authorization to cancel the withdrawn claims. It is not
necessary to notify the appellant of the cancellation of the
withdrawn claims.

1214.06  Examiner Sustained in Whole or in Part [R - 1]

 37 CFR 1.197.  Action following decision

  *****

  (c) Termination of proceedings .

  Proceedings are considered terminated by the dismissal
of an appeal or the failure to timely file an appeal to the
court or a civil action ( § 1.304) except: (1) where claims
stand allowed in an application or (2) where the nature of
the decision requires further action by the examiner. The
date of termination of proceedings is the date on which the
appeal is dismissed or the date on which the time for appeal
to the court or review by civil action ( § 1.304) expires.
If an appeal to the court or a civil action has been filed,

proceedings are considered terminated when the appeal or
civil action is terminated. An appeal to the U.S. Court of
Appeals for the Federal Circuit is terminated when the
mandate is received by the Office. A civil action is
terminated when the time to appeal the judgment expires.

  The time for seeking review of a decision of the Board
by the Court of Appeals for the Federal Circuit or the
District Court is the same for both tribunals, that is, 2
months, or 2 months with the extension provided by 37 CFR
1.304 in the event a request for reconsideration is *
>timely< filed before the Board, or as extended by the
Commissioner. See MPEP § 1216. When the time for seeking
court review (plus 2 weeks to allow for information as to
the filing of an appeal or civil action, if any, to reach
the examiner) has passed without such review being sought,
the examiner must take up the case for consideration. The
situations which can arise will involve one or more of the
following six circumstances:

 (A)  No claims stand allowed. The proceedings in the
application are terminated as of the date of the expiration
of the time for filing court action. The application is no
longer considered as pending. It is to be stamped abandoned
and sent to abandoned files .

 Claims indicated as allowable prior to appeal except for
their dependency from rejected claims will be treated as if
they were rejected. The following examples illustrate the
appropriate approach to be taken by the examiner in various
situations:

 (1) If the Board affirms a rejection of claim 1 and
claim 2 was objected to prior to appeal as being allowable
except for its dependency from claim 1, the examiner should
hold the application abandoned.

 (2) If the Board or court affirms a rejection
against an  independent claim and reverses all rejections
against a claim dependent thereon, the examiner, after
expiration of the period for further appeal, should proceed
in one of two ways:

  (a) Convert the dependent claim into independent form by
examiner's  amendment,  cancel  all  claims  in  which  the
rejection was affirmed, and issue the application; or

  (b) Set a 1 - month time period in which appellant may
rewrite  the  dependent  claim(s)  in  independent  form.
Extensions of time under 37 CFR 1.136(a) will not be
permitted. If no timely response is received, the examiner
will cancel all rejected and objected to claims and issue
the case with the allowed claims only.

  The following language may be used where appropriate:

 Claim(s) ______ is/are incomplete because the claim(s) on
which it/they depend(s) from has/have been cancelled by the
examiner in accordance with MPEP > § <1214.06. Applicant is
given a ONE MONTH TIME LIMIT from the date of this letter in
which to present claim(s) ________ in independent form. NO
EXTENSIONS OF TIME UNDER 37 CFR 1.136(a) WILL BE GRANTED.
Failure  to  comply  with  this  deadline  will  result  in
cancellation of claim(s) ________ and this application will
be:

 i.  allowed with claim(s) ______ (if other claims are
allowed), or

 ii.  abandoned (if there are no allowed claims).

 (B) Claims stand allowed . The appellant is not
required to file a response. The examiner takes the case up
and passes it to issue on the claims which stand allowed. A
red - ink line  should be drawn through the refused claims
and the notion "Board Decision" written in the margin in red
ink.

  If the Board affirms a rejection of claim 1, claim 2 was
objected to prior to appeal as being allowable except for
its dependency from claim 1 and independent claim 3 is
allowed, the examiner should cancel claims 1 and 2 and issue
the application with claim 3 only.

  If uncorrected matters of form which cannot be handled
without written correspondence remain in the case, the
examiner should take appropriate action but prosecution is
otherwise closed. Note subsection A of this section for
handling of claims dependent on rejected claims. A letter
such as set forth in Form Paragraph 12.20 is suggested:

¶ 12.20  Period for Seeking Court Review Has Lapsed

  The period for seeking court review of the decision by
the Board of Patent Appeals and Interferences rendered [1]
has  expired  and  no  further  action  has  been  taken  by
applicant. The proceedings as to the rejected claims are
considered terminated; see 37 CFR 1.197(c).

  The application will be passed to issue on allowed claim
[2] provided the following formal matters are promptly
corrected: [3]>.< Prosecution is otherwise closed.

 Examiner Note:

  >1.<In bracket 1, enter the date of the decision.

  >2.<In bracket 2, identify the allowed claims.

  (Set a 30 - day shortened statutory period for response.)

 (C)  Claims require action . If the decision of the
Board is an affirmance in part and includes a reversal of a
rejection that brings certain claims up for action on the
merits, such as a decision reversing the rejection of
generic claims in a case containing claims to nonelected
species not previously acted upon, the examiner will take
the case up for appropriate action on the matters thus
brought up, but the case is not considered open to further
prosecution except as to such matters.

 (D).  37 CFR 1.196(b) rejection . Where the Board makes a
new rejection under 37 CFR 1.196(b) and no action is taken
with reference thereto by appellant within 6 months,  or
such shortened time period as may be set in the Board's
decision  ,  the  examiner  should  proceed  in  the  manner
indicated for situations A, B, or C, depending on which is
appropriate to the case. See MPEP § 1214.01.

  If the Board affirms the examiner's rejection, but also

enters a new ground of rejection under 37 CFR 1.196(b), the
subsequent procedure depends upon the action taken by the
appellant with respect to the 37 CFR 1.196(b) rejection.

 (1)  If  the  appellant  elects  to  request
reconsideration of the new rejection, see MPEP § 1214.01,
part  (1),  the  request  for  reconsideration  of  the  new
rejection and of the affirmance must be filed within 1 month
from the date of the Board's decision.

 (2) If the appellant elects to proceed before the
examiner with regard to the new rejection, see MPEP §
1214.01, part (2), the Board's affirmance will be treated as
nonfinal,  and  no  request  for  reconsideration  of  the
affirmance need be filed at that time. >Prosecution before
the  examiner  of  the  37  CFR  1.196(b)  rejection  can
incidentally result in overcoming the affirmed rejection
even though the affirmed rejections is not open to further
prosecution. Therefore, it is possible for the application
to be allowed as a result of the limited prosecution before
the examiner of the 37 CFR 1.196(b) rejection. If the
application becomes allowed, the case should not be returned
to the Board. Likewise, if the application is abandoned for
any reason, the case should not be returned to the Board. If
the rejection under 37 CFR1.196(b) is not overcome, the
applicant can file a second appeal (as discussed below).
Such appeal must be limited to the 37 CFR1.196(b) rejection
and  may  not  include  the  affirmed  rejection.  If  the
application  does  not  become  allowed  or  abandoned  as
discussed above, once prosecution of the claims which were
rejected under 37 CFR 1.196(b) is terminated before the
examiner, the application file must be returned to the Board
so that a decision making the original affirmance final can
be  entered.<  The  time  for  filing  a  request  for
reconsideration >on the affirmance< or seeking court review
runs from the date of the decision by the Board making the
original affirmance final. See MPEP § 1214.03 and 1216.

 (E)  37 CFR 1.196(d) recommendation . Where the Board
makes a recommendation under 37 CFR 1.196(d) and no action
is taken with reference thereto by the appellant within the
time permitted for court review, ordinarily 2 months from
the date of the decision, the examiner should proceed in the
manner indicated for situations A, B, or C, depending on
which is appropriate to the case. See MPEP § 1213.01.

 (F)  Appeal dismissed . Where the appeal has been
dismissed  for  failure  to  argue  a  ground  of  rejection
involving all the appealed claims see MPEP § 1215.04.

  The practice under situations A, B, and C is similar to
the practice after a decision of the court outlined in MPEP
§ 1216.01.

  In view of the above practice, examiners must be very
careful that applications which come back from the Board are
not overlooked because every case, except those in which all
claims stand rejected after the Board's decision, is up for
action by the examiner in the event no court review has been
sought. Consequently, when a file is received after decision
by  the  Board,  it  must  be  examined  and  appropriate
precautions  taken  to  indicate  the  presence  of  allowed
claims, if any. This may be done by writing the notation
"Allowed Claims" or "Rejection Reversed" on the "Contents"
page of file wrapper immediately below endorsement "Decision

by Board."

  See MPEP § 1216.01 and § 1216.02 for procedure where
court review is sought.

1214.07  Reopening of Prosecution [R - 1]

 37 CFR 1.198.  Reopening after decision.

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

  Sometimes an amendment is filed after the Board's
decision which does not carry into effect any recommendation
made by the Board and which presents a new or amended claim
or claims. In view of the fact that the prosecution of the
case is definitely closed, the appellant clearly is not
entitled to have such amendment entered as a matter of
right. However, if the amendment obviously places the case
in condition for allowance, the primary examiner should
endorse on the amendatory paper a recommendation that the
amendment be admitted, and with the concurrence of the
Supervisory Primary Examiner, the amendment will be entered.
Note MPEP § 1003, item 14.

  Where the amendment cannot be entered, the examiner
should write to the appellant indicating that the amendment
cannot be entered and stating the reason why. The refusal
should never be made to appear arbitrary or capricious.

  Form Paragraph 12.19 should be used:

¶ 12.19  Amendment After Board Decision

  The amendment filed [1] after a decision *>by< the Board
of Patent Appeals and Interferences is refused entry under
37 CFR 1.116(c) because prosecution is closed and the
proposed claim(s) raise new issues which require further
consideration or search.

 Examiner Note:

  >1.<Identify the new issues.

  >2.<This paragraph is not to be used in a response to a
37 CFR 1.196(b) rejection.

  In the event that claims stand allowed in the case under
the conditions set forth in MPEP § 1214.06 (paragraph B),
the case should be passed to issue.

  Petitions under 37 CFR 1.198 to reopen or reconsider
prosecution of a patent application after decision by the
Board, where no court action has been filed, are decided by
the group director, MPEP § 1002.02(c), item 2.

  The Commissioner also entertains petitions under 37 CFR
1.198 to reopen certain cases in which an appellant has
sought review under 35 U.S.C. 141 or 145. This procedure is
restricted to cases which have been decided by the Board and
which are amenable to settlement without the need for going

forward with the court proceeding. Such petitions will
ordinarily be granted only in the following categories of
cases:

 (1) When the decision of the Board asserts that the
rejection of the claims is proper because the claims do not
include a disclosed limitation or because they suffer from
some other curable defect, and the decision reasonably is
suggestive that claims including the limitation or devoid of
the defect will be allowable;

 (2) When the decision of the Board asserts that the
rejection of the claims is proper because the record does
not include evidence of a specified character, and is
reasonably suggestive that if such evidence were presented,
the  appealed  claims  would  be  allowable,  and  it  is
demonstrated that such evidence presently exists and can be
offered; or

 (3) When the decision of the Board is based on a
practice, rule, law, or judicial precedent which, since the
Board's  decision,  has  been  rescinded,  repealed,  or
overruled.

  Any such petition must be accompanied by the proposed
amendment, evidence, or argument said to justify allowance
of the claims. The petition further must point out how the
case falls within one of the preceding categories. Failure
to do so or failure of the case to qualify as coming within
one of the categories will usually constitute basis for
denying the petition. In any event, no case will be reopened
unless it is for the consideration of matters not already
adjudicated, and sufficient cause has been shown.

  Such petitions will not be ordinarily entertained after
the filing of the Commissioner's brief in cases in which
review has been sought under 35 U.S.C. 141, or after trial
in a 35 U.S.C. 145 case.

  In the case of an appeal under 35 U.S.C. 141, if the
petition is granted, steps will be taken to request the
court to remand the case to the Patent and Trademark Office
and if so remanded the proposed amendments, evidence, and
arguments will be entered of record in the application file
for consideration, and further action will be taken by the
Board in the first instance or by the examiner as may be
appropriate. In the case of civil action under 35 U.S.C.
145, steps will be taken for obtaining dismissal of the
action without prejudice to consideration of the proposals.

1215  Withdrawal or Dismissal of Appeal

1215.01  Withdrawal of Appeal

  Except in those instances where a withdrawal of an
appeal would result in abandonment of the application, an
attorney not of record in an application may file a paper
under  37  CFR  1.34(a)  withdrawing  an  appeal.  In  such
instances  where  no  allowable  claims  appear  in  the
application, the withdrawal of an appeal is in fact an
express abandonment and does not comply with 37 CFR 1.138
except where a continuing application is being filed on the
same date.

  Where, after appeal has been filed and before decision

by the Board, an applicant withdraws the appeal after the
period for response to the final rejection has expired, the
application is to be considered abandoned as of the date on
which the appeal was withdrawn unless there are allowed
claims in the case.

  Where a letter abandoning the application is filed in
accordance  with  37  CFR  1.138,  the  effective  date  of
abandonment is the date of filing of such letter.

  If a brief has been filed within the time permitted by
37 CFR 1.192 (or any extension thereof) and an answer mailed
and appellant withdraws the appeal, the case is returned to
the examiner.

  To avoid the rendering of decisions by the Board in
applications  which  have  already  been  refiled  as
continuations, applicants should promptly inform the clerk
of the Board in writing as soon as they have positively
decided to refile or to abandon an application containing an
appeal awaiting a decision. Failure to exercise appropriate
diligence in this matter may result in the Board's refusing
an otherwise proper request to vacate its decision.

  Applications having no allowed claims will be abandoned.
Claims which are allowable except for their dependency from
rejected claims will be treated as if they were rejected.
The following examples illustrate the appropriate approach
to be taken by the examiner in various situations:

 (1) Claim 1 is allowed; claims 2 and 3 are rejected.
The examiner should cancel claims 2 and 3 and issue the
application with claim 1 only.

 (2) Claims 1 - 3 are rejected. The examiner should
hold the application abandoned.

 (3) Claim 1 is rejected and claim 2 is objected to
as being allowable except for its dependency from claim 1.
The examiner should hold the application abandoned.

 (4) Claim 1 is rejected and claim 2 is objected to
as being allowable except for its dependency from claim 1;
independent claim 3 is allowed. The examiner should cancel
claims 1 and 2 and issue the application with claim 3 only.

1215.02  Claims Standing Allowed

  If the application contains allowed claims, as well as
claims on appeal, the withdrawal of the appeal does not
operate  as  an  abandonment  of  the  application,  but  is
considered a withdrawal of the appeal as to those claims and
authority to the examiner to cancel the same. An amendment
canceling the appealed claims is equivalent to a withdrawal
of the appeal.

1215.03  Partial Withdrawal

  A withdrawal of the appeal as to some of the claims on
appeal operates as a cancellation of those claims from the
case and the appeal continues as to the remaining claims.
The withdrawn claims will be canceled from an application by
direction of the examiner when necessary without further
action by the applicant.

1215.04  Dismissal of Appeal [R - 3]

  If no brief is filed within the time prescribed by 37
CFR 1.192, the appeal stands dismissed by operation of the
rule. The letter (form PTOL -*>461<) notifying the appellant
that the appeal stands dismissed is not an action in the
case and does not start any period for reply. If no claims
stand allowed the application is considered as abandoned on
the date the brief was due. If claims stand allowed in the
application, the failure to file a brief and consequent
dismissal of the appeal is to be treated as a withdrawal of
the appeal and of any claim not standing allowed. The
application should be passed to issue forthwith Unless
appellant specifically withdraws the appeal as to rejected
claims,  the  appeal  should  not  be  dismissed  until  the
extended period (4 months under 37 CFR 1.136(a)) to file the
brief has expired.

  Applications having no allowed claims will be abandoned.
Claims which are allowable except for their dependency from
rejected claims will be treated as if they were rejected.
The following examples illustrate the appropriate approach
to be taken by the examiner in various situations:

 (1) Claim 1 is allowed; claims 2 and 3 are rejected.
The examiner should cancel claims 2 and 3 and issue the
application with claim 1 only.

 (2) Claims 1 - 3 are rejected. The examiner should
hold the application abandoned.

 (3) Claim 1 is rejected and claim 2 is objected to
as being allowable except for its dependency from claim 1.
The examiner should hold the application abandoned.

 (4) Claim 1 is rejected and claim 2 is objected to
as being allowable except for its dependency from claim 1;
independent claim 3 is allowed. The examiner should cancel
claims 1 and 2 and issue the application with claim 3 only.

  However, if formal matters remain to be attended to, the
examiner should take appropriate action on such matters,
setting a shortened period for reply, but the application is
to be considered closed to further prosecution except as to
such matters. A letter such as the following is suggested:

  "In view of applicant's failure to file a brief within
the time prescribed by 37 CFR 1.192, the appeal stands
dismissed and the proceedings as to the rejected claims are
considered terminated; see 37 CFR 1.197(c)."

  "This application will be passed to issue on claims (
identify ) which stand allowed provided the following formal
matter(s)  is  (are)  corrected.  Prosecution  is  otherwise
closed."

  (Set out formal matter(s) requiring correction.)

  (Set a 30 - day shortened statutory period for response.)

1216  Judicial Review

 35 U.S.C. 141.  Appeal to Court of Appeals for the
Federal Circuit.

  An applicant dissatisfied with the decision in an appeal
to the Board of Patent Appeals and Interferences under
section 134 of this title may appeal the decision to the
United States Court of Appeals for the Federal Circuit. By
filing such an appeal the applicant waives his or her right
to proceed under section 145 of this title. A party to an
interference dissatisfied with the decision of the Board of
Patent Appeals and Interferences on the interference may
appeal the decision to the United States Court of Appeals
for the Federal Circuit, but such appeal shall be dismissed
if any adverse party to such interference, within twenty
days after the appellant has filed notice of appeal in
accordance with section 142 of this title, files notice with
the Commissioner that the party elects to have all further
proceedings conducted as provided in section 146 of this
title. If the appellant does not, within thirty days after
filing of such notice by the adverse party, file a civil
action under section 146, the decision appealed from shall
govern the further proceedings in the case.

 35 U.S.C. 145.  Civil action to obtain patent.

  An applicant dissatisfied with the decision of the Board
of Patent Appeals and Interferences in an appeal under
section 134 of this title, may, unless appeal has been taken
to the United States Court of Appeals for the Federal
Circuit,  have  remedy  by  civil  action  against  the
Commissioner in the United States District Court for the
District of Columbia if commenced within such time after
such decision, not less than sixty days, as the Commissioner
appoints. The court may adjudge that such applicant is
entitled to receive a patent for his invention, as specified
in any of his claims involved in the decision of the Board
of Patent Appeals and Interferences, as the facts in the
case may appear and such adjudication shall authorize the
Commissioner to issue such patent on compliance with the
requirements of law. All the expenses of the proceedings
shall be paid by the applicant.

 35 U.S.C. 146.  Civil action in case of interference.

  Any party to an interference dissatisfied with the
decision of the Board of Patent Appeals and Interferences,
may have remedy by civil action, if commenced within such
time after such decision, not less than sixty days, as the
Commissioner appoints or as provided in section 141 of this
title, unless he has appealed to the United States Court of
Appeals for the Federal Circuit, and such appeal is pending
or has been decided. In such suits the record in the Patent
and Trademark Office shall be admitted on motion of either
party upon the terms and conditions as to costs, expenses,
and the further cross - examination of the witnesses as the
court imposes, without prejudice to the right of the parties
to take further testimony. The testimony and exhibits of the
record in the Patent and Trademark Office when admitted
shall have the same effect as if originally taken and
produced in the suit.

  Such suit may be instituted against the party in
interest as shown by the records of the Patent and Trademark
Office at the time of the decision complained of, but any
party in interest may become a party to the action. If there
be adverse parties residing in a plurality of districts not
embraced within the same state, or an adverse party residing
in a foreign country, the United States District Court for

the District of Columbia shall have jurisdiction and may
issue summons against the adverse parties directed to the
marshal of any district in which any adverse party resides.
Summons  against  adverse  parties  residing  in  foreign
countries may be served by publication or otherwise as the
court directs. The Commissioner shall not be a necessary
party but he shall be notified of the filing of the suit by
the clerk of the court in which it is filed and shall have
the right to intervene. Judgment of the court in favor of
the right of an applicant to a patent shall authorize the
Commissioner to issue such patent on the filing in the
Patent and Trademark Office of a certified copy of the
judgment and on compliance with the requirements of law.

 35 U.S.C. 306.  Appeal.

  The patent owner involved in a reexamination proceeding
under this chapter may appeal under the provisions of
section 134 of this title, and may seek court review under
the provisions of sections 141 to 145 of this title, with
respect to any decision adverse to the patentability of any
original or proposed amended or new claim of the patent.

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

  Any applicant or any owner of a patent involved in a
reexamination proceeding dissatisfied with the decision of
the Board of Patent Appeals and Interferences, and any party
to an interference dissatisfied with the decision of the
Board of Patent Appeals and Interferences, may appeal to the
U.S. Court of Appeals for the Federal Circuit. The appellant
must take the following steps in such an appeal: (a) In the
Patent and Trademark Office file a written notice of appeal
directed to the Commissioner (see § § 1.302 and 1.304); and
(b) in the Court, file a copy of the notice of appeal and
pay the fee for appeal, as provided by the rules of the
Court.

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

  (a) Any applicant or any owner of a patent involved in a
reexamination proceeding dissatisfied with the decision of
the Board of Patent Appeals and Interferences, and any party
dissatisfied with the decision of the Board of Patent
Appeals and Interferences, may, instead of appealing to the
U.S. Court of Appeals for the Federal Circuit ( § 1.301),
have remedy by civil action under 35 U.S.C. 145 or 146, as
appropriate. Such civil action must be commenced within the
time specified in § 1.304.

  (b) If an applicant in an ex parte case or an owner of a
patent involved in a reexamination proceeding has taken an
appeal to the U.S. Court of Appeals for the Federal Circuit,
he or she thereby waives his or her right to proceed under
35 U.S.C. 145.

  (c) If any adverse party to an appeal taken to the U.S.
Court of Appeals for the Federal Circuit by a defeated party
in  an  interference  proceeding  files  notice  with  the
Commissioner within twenty days after the filing of the
defeated party's notice of appeal to the court ( § 1.302),
that he or she elects to have all further proceedings
conducted as provided in 35 U.S.C. 146, the notice of

election must be served as provided in § 1.646.

 37 CFR 1.304. Time for appeal or civil action.

  (a)(1) The time for filing the notice of appeal to the
U.S. Court of Appeals for the Federal Circuit ( § 1.302) or
for commencing a civil action( § 1.303) is two months from
the date of the decision of the Board of Patent Appeals and
Interferences.  If  a  request  for  consideration  or
modification of the decision is filed within the time period
provided under § 1.197(b) or § 1.658(b), the time for filing
an appeal or commencing a civil action shall expire two
months after action on the request. In interferences, the
time for filing a cross - appeal or cross - action expires:

 (i)  14 days after service of the notice of appeal or the
summons and complaint, or

 (ii)  Two months after the date of decision of the Board
of Patent Appeals and Interferences, whichever is later.

  (2) The time periods set forth in this section are not
subject to the provisions of § 1.136, § 1.550(c) or §
1.645(a) or(b).

  (3) The Commissioner may extend the time for filing an
appeal or commencing a civil action:

 (i)  For good cause shown if requested in writing before
the expiration of the period for filing an appeal or
commencing a civil action, or

 (ii)  Upon written request after the expiration of the
period for filing an appeal or commencing a civil action
upon a showing that the failure to act was the result of
excusable neglect.

  (b) The times specified in this section in days are
calendar days. The time specified herein in months are
calendar months except that one day shall be added to any
two - month period which includes February 28.

 If the last day of the time specified for appeal or
commencing a civil action falls on a Saturday, Sunday, or
Federal holiday in the District of Columbia, the time is
extended to the next day which is neither a Saturday,
Sunday, nor a Federal holiday.

  (c) If a defeated party to an interference has taken an
appeal to the U.S. Court of Appeals for the Federal Circuit
and an adverse party has filed notice under 35 U.S.C. 141
electing to have all further proceedings conducted under 35
U.S.C. 146 ( § 1.303(c)), the time for filing a civil action
thereafter is specified in 35 U.S.C. 141. The time for
filing a cross - action expires 14 days after service of the
summons and complaint.

  EX PARTE AND REEXAMINATION PROCEEDINGS

  The applicant in an ex parte proceeding or the owner of
a patent involved in a reexamination proceeding who is
dissatisfied with a decision of the Board may seek judicial
review either by an appeal to the U.S. Court of Appeals for
the Federal Circuit (35 U.S.C. 141, 306; 37 CFR 1.301) or by
a civil action in the U.S. District Court for the District

of Columbia (35 U.S.C. 145, 306; 37 CFR 1.303(a)). By filing
an appeal to the Federal Circuit, the applicant in an ex
parte  case  or  the  owner  of  a  patent  involved  in  a
reexamination proceeding waives the right to seek judicial
review by a civil action under 35 U.S.C. 145, 37 CFR
1.303(b).

  INTERFERENCE PROCEEDINGS

  Any party to an interference who is dissatisfied with a
decision of the Board may seek judicial review either by an
appeal to the Federal Circuit (35 U.S.C. 141; 37 CFR 1.301)
or, if no 35 U.S.C. 141 appeal is pending or has been
decided, by a civil action in an appropriate district court
(35 U.S.C. 146; 37 CFR 1.303(a)). Furthermore, a 35 U.S.C.
141 appeal to the Federal Circuit by a dissatisfied party in
an interference will be dismissed if any adverse party in
the  interference,  within  twenty  (20)  days  after  the
appellant has filed a notice of appeal according to 35
U.S.C. 142, files notice with the Commissioner that such
adverse  party  elects  to  have  all  further  proceedings
conducted in accordance with 35 U.S.C. 146. 35 U.S.C. 141;
37 CFR 1.303(c). If, within 30 days after filing of such
notice of election by an adverse party, the appellant does
not file a civil action under 35 U.S.C. 146, the decision
appealed from shall govern the further proceedings in the
case. 35 U.S.C. 141. Copies of such notice of election,
which must be served as provided in 37 CFR 1.646, will be
transmitted by the Solicitor to the Federal Circuit for such
action as may be necessary (37 CFR 1.303(c)).

 TIME FOR FILING NOTICE OF APPEAL OR COMMENCING CIVIL ACTION

  The time for filing a notice of a 35 U.S.C. 141 appeal
to the Federal Circuit or for commencing a civil action
under 35 U.S.C. 145 or 146 is within 2 months of the Board's
decision.  37  CFR  1.304(a).  However,  if  a  request  for
reconsideration or modification of the Board's decision is
filed within the time provided under 37 CFR 1.197(b) ( ex
parte appeals) or 37 CFR 1.658(b) (inter partes appeals),
the time for filing a notice of appeal to the Federal
Circuit or for commencing a civil action expires 2 months
after  a  decision  on  a  request  for  reconsideration  or
modification (37 CFR 1.304(a)).

  These 2 - month periods meet the 60 - day requirement of
35 U.S.C. 142, 145, and 146 except for time periods which
include February 28. In order to comply with the 60 - day
requirement; 37 CFR 1.304(b) provides that an additional day
shall be added to any 2 - month period for initiating review
which includes February 28. Appeals will always be timely if
the judicial review is initiated within 2 months of the
final decision.

  The times specified in 37 CFR 1.304 are calendar days.
If the last day of the time specified for appeal or
commencing a civil action falls on a Saturday, Sunday, or a
Federal holiday in the District of Columbia, the time is
extended to the next day which is neither a Saturday,
Sunday, nor a Federal holiday (37 CFR 1.304(b)).

  TIME FOR FILING CROSS - APPEAL OR CROSS - ACTION

  37 CFR 1.304(a) specifies that the time for filing a
cross - appeal or commencing a cross - action expires (1) 14

days after service of the notice of appeal or the summons
and complaint or (2) 2 months after the decision to be
reviewed, whichever is later.

  37 CFR 1.304(a) also provides that the time for filing a
cross - action expires 14 days after service of the summons
and complaint. The district court will determine whether any
cross - action was timely filed since neither the complaint
nor cross - action is filed in the Patent and Trademark
Office.

  EXTENSION OF TIME TO SEEK JUDICIAL REVIEW

  In 37 CFR 1.304(a), the Office has adopted a standard
which is similar to the standard used in the Federal courts
for granting extensions. Under the rule, the Commissioner
may extend the time (1) for good cause if requested before
the expiration of the time provided for initiating judicial
review or (2) upon a showing of excusable neglect in failing
to  initiate  judicial  review  if  requested  after  the
expiration of the time period. This standard is applicable
once the "last" decision; i.e., either the decision (in
circumstances where no timely reconsideration is sought) or
the decision on reconsideration, of the Board in an ex parte
appeal or interference has been entered. Extensions of time
under 37 CFR 1.136(b) and 1.550(c) and fee extensions under
37 CFR 1.136(a) are not available to extend the time for the
purpose of judicial review once a decision or a decision on
reconsideration has been entered. 37 CFR 1.304(a) states
that the provisions of 37 CFR 1.136 and 1.550(c) are not
available to extend the time to initiate judicial review.

  Requests for extension of time to seek judicial review
under 37 CFR 1.304 should be addressed as follows:

  Box 8, Attention The Solicitor

  Commissioner of Patents and Trademarks

  Washington, D.C. 20231

  Requests may also be hand - carried to the Office of the
Solicitor.

  APPLICATION UNDER JUDICIAL REVIEW

  The administrative file of an application under judicial
review, even though carried to a court, will not be opened
to the public by the Patent and Trademark Office, unless it
is otherwise available to the public under 37 CFR 1.11.

  During judicial review, the involved application or
reexamination is not under the jurisdiction of the examiner
or the Board, unless remanded to the Patent and Trademark
Office by the court. Any amendment, such as one copying
claims from a patent for interference purposes, can be
admitted only under the provisions of 37 CFR 1.198. See MPEP
§ 1214.07.

  SERVICE OF COURT PAPERS ON THE COMMISSIONER

  Rule 5(b) of the Federal Rules of Civil Procedure
provides in pertinent part:

 Whenever under these rules service is required or permitted

to be made upon a party represented by an attorney the
service shall be made upon the attorney unless service upon
the party himself is ordered by the court. Service upon the
attorney . . shall be made by delivering a copy to him or
by mailing it to him at his last known address . .

  Similarly, Rule 25(b) of the Federal Rules of Appellate
Procedure provides that "[s]ervice on a party represented by
counsel shall be made on counsel."

  Accordingly, all service copies of papers filed in court
proceedings  in  which  the  Commissioner  of  Patents  and
Trademarks is a party must be served on the Solicitor of the
Patent and Trademark Office. Service on the Solicitor may be
effected in either of the following ways:

 (1)  By hand between 8:30 A.M. and 5:00 P.M. at the
Office of the Solicitor.

 (2)  By mail in an envelope addressed as follows:

 Office of the Solicitor

 P.O. Box 15667

 Arlington, VA 22215

  While the above mail service address may be supplemented
to include the name of the particular attorney assigned to
the court case, it must not be supplemented to refer to
either the Commissioner of Patents and Trademarks or the
U.S. Patent and Trademark Office .

  Any court papers mailed to an address other than the
above mail service address or delivered by hand to the
Patent and Trademark Office are deemed to have been served
on the Commissioner when actually received in the Office of
the Solicitor.

  The above mail service address should not be used for
filing a notice of appeal to the Federal Circuit. See MPEP §
1216.01 .

  Nor should the above mail service address be used for
noncourt papers; i.e., papers which are intended to be filed
in the Patent and Trademark Office in connection with an
application or other proceeding pending in the Patent and
Trademark Office. ANY NONCOURT PAPERS WHICH ARE MAILED TO
THE ABOVE MAIL SERVICE ADDRESS WILL BE RETURNED TO THE
SENDER. NO EXCEPTIONS WILL BE MADE TO THIS POLICY.

1216.01  Appeals to the Federal Circuit [R - 3]

 35 U.S.C. 142  .  Notice of appeal.

  When an appeal is taken to the United States Court of
Appeals for the Federal Circuit, the appellant shall file in
the Patent and Trademark Office a written notice of appeal
directed to the Commissioner, within such time after the
date of the decision from which the appeal is taken as the
Commissioner prescribes, but in no case less than sixty
days, after that date.

 35 U.S.C. 143.  Proceedings on appeal.

  With respect to an appeal described in section 142 of
this title, the Commissioner shall transmit to the United
States Court of Appeals for the Federal Circuit a certified
list of documents comprising the record in the Patent and
Trademark  Office.  The  court  may  request  that  the
Commissioner forward the original or certified copies of
such documents during pendency of the appeal. In an ex parte
case, the Commissioner shall submit to the court in writing
the grounds for the decision of the Patent and Trademark
Office, addressing all the issues involved in the appeal.
The court shall, before hearing an appeal, give notice of
the time and place of the hearing to the Commissioner and
the parties in the appeal.

 35 U.S.C. 144.  Decision on appeal.

  The United States Court of Appeals for the Federal
Circuit shall review the decision from which an appeal is
taken on the record before the Patent and Trademark Office.
Upon its determination the court shall issue its mandate and
opinion, which shall be entered of record in the Patent and
Trademark Office and shall govern the further proceedings in
the case.

 37 CFR 1.302  .  Notice of appeal.

  (a) When an appeal is taken to the U.S. Court of Appeals
for the Federal Circuit, the appellant shall give notice
thereof to the Commissioner within the time specified in §
1.304.

  (b) In interferences, the notice must be served as
provided in § 1.646.

  (c) A notice of appeal, if mailed to the Office, shall be
addressed as follows: Box 8, Commissioner of Patents and
Trademarks, Washington, DC 20231.

  Filing an appeal to the Federal Circuit requires that
the  applicant,  the  owner  of  a  patent  involved  in  a
reexamination proceeding, or a party to an interference
proceeding, (1) file in the Patent and Trademark Office a
written notice of appeal (35 U.S.C. 142) directed to the
Commissioner and (2) file with the Clerk of the Federal
Circuit a copy of the notice of appeal and pay the docket
fee for the appeal, as provided by Federal Circuit Rule 52.
37 CFR 1.301.

  For a notice of appeal to be considered timely filed in
the Patent and Trademark Office, it must (1) actually reach
the Patent and Trademark Office within the time specified in
37 CFR 1.304 (including any extensions) or (2) be mailed
within the time specified in 37 CFR 1.304 (including any
extensions) by "Express Mail" in accordance with 37 CFR
1.10.

  A Notice of Appeal to the Federal Circuit should not be
mailed to the Commissioner, the Board or the examiner. Nor
should it be mailed to the Solicitor's mail service address
for court papers, given in MPEP § 1216. Instead, it should
be filed in the Patent and Trademark Office in any one of
the following ways:

 (1). By mail addressed as follows, in which case the
notice  of  appeal  must  actually  reach  the  Patent  and

Trademark Office by the due date:

  Box 8

  Commissioner of Patents and Trademarks

  Washington, D.C. 20231

  Attention: Office of the Solicitor

 (2) By "Express Mail" (U.S. Postal Service only)
under 37 CFR 1.10 addressed as follows, in which case the
notice of appeal is deemed filed on the ** >"date - in" on<
the >"< Express Mail >"< *>mailing label< :

  Box 8

  Commissioner of Patents and Trademarks

  Washington, D.C. 20231

  Attention: Office of the Solicitor

 (3) By hand to the Office of the Solicitor.

  A copy of the notice of appeal and the docket fee should
be filed with the Clerk of the Federal Circuit, whose
mailing and actual address is:

  U.S. Court of Appeals for the Federal Circuit

 717 Madison Place, N.W.

  Washington, D.C. 20439

  The Solicitor, prior to a decision by the Federal
Circuit, may request that the case be remanded to the Patent
and Trademark Office and prosecution reopened. See MPEP §
1214.07.

  OFFICE PROCEDURE FOLLOWING DECISION BY THE FEDERAL CIRCUIT

  After the Federal Circuit has heard and decided the
appeal, an uncertified copy of the decision is sent to the
Patent  and  Trademark  Office  and  to  the  appellant  and
appellee (if any).

  In due course, the Clerk of the Federal Circuit forwards
to the Patent and Trademark Office a certified copy of the
court's decision. This certified copy is known as the
"mandate." The mandate is entered in the file of the
application, reexamination or interference which was the
subject of the appeal. The date of receipt of the mandate by
the Patent and Trademark Office marks the conclusion of the
appeal, i.e., the termination of proceedings as that term is
used in 35 U.S.C. 120; see 37 CFR 1.197(c), or "termination
of the interference" as that term is used in 35 U.S.C.
135(c).

  The  Federal  Circuit's  opinion  may  or  may  not  be
precedential. Whether or not the opinion is precedential,
the Patent and Trademark Office will not give the public
access  to  the  administrative  record  of  an  involved
application, or to the file of an interference, unless it is
otherwise  available  to  the  public  under  37  CFR  1.11.

However, since the court record in a 35 U.S.C. 141 appeal
generally  includes  a  copy  of  at  least  part  of  the
application, such may be inspected at the Federal Circuit.
In re Mosher , 248 F.2d 956, 115 USPQ 140 (CCPA 1957).

  In an ex parte appeal, after the mandate is entered in
the application or reexamination file, the file is then
returned to the appropriate Patent and Trademark Office
official  for  further  proceedings  consistent  with  the
mandate. See MPEP § 1214.06 for handling of claims dependent
on rejected claims.

 (1) All claims rejected.

  If  all  claims  in  the  case  stand  rejected,
proceedings in the case are considered terminated on the
date of receipt of the Federal Circuit's mandate. Because
the case is no longer considered pending, it is ordinarily
not open to subsequent amendment and prosecution by the
applicant. Continental Can Company  v.  Schuyler , 326 F.
Supp. 283, 168 USPQ 625 (D.D.C. 1970). However, exceptions
may occur where the mandate clearly indicates that further
action in the Patent and Trademark Office is to be taken in
accordance with the Federal Circuit's opinion.

 (2) Some claims allowed.

  Where the case includes one or more allowed claims,
including claims allowed by the examiner prior to appeal and
claims whose rejections were reversed by either the Board or
the court, the proceedings are considered terminated only as
to  any  claims  which  still  stand  rejected.  It  is  not
necessary for the applicant or patent owner to cancel the
rejected claims, since they may be canceled by the examiner
in an examiner's amendment or by an appropriate notation in
the margin of the claims, to avoid confusion of the printer.
Thus, if no formal matters remain to be attended to, the
examiner will pass the application to issue forthwith on the
allowed claims or, in the case of a reexamination, will
issue  a  "Notice  of  Intent  to  Issue  a  Reexamination
Certificate and/or Examiner's Amendment." See MPEP § 2287.
>The examiner should set forth the reasons for allowance,
referring to and incorporating a copy of the appellate brief
and the court decision . See MPEP § 1302.14<.

  If formal matters remain to be attended to, the
examiner promptly should take appropriate action on such
matters, such as by an examiner's amendment or by an Office
action setting a 30 - day shortened period for reply.
However, the application or reexamination proceeding is
considered closed to further prosecution except as to such
matters.

 (3)Remand.

  Where the decision of the court brings up for
action on the merits claims which were not previously
considered on the merits, such as a decision reversing a
rejection of generic claims in a case containing claims to
nonelected species, the examiner will take the case up for
appropriate action on the matters thus brought up, but the
case is not considered open to further prosecution except as
to such matters.

 (4)Reopening of prosecution.

  In rare situations it may be necessary to reopen
prosecution of an application after a decision by the
Federal Circuit. Any Office action proposing to reopen
prosecution after a decision by the Federal Circuit must be
forwarded to the Office of the Assistant Commissioner for
Patents for written approval, which will be indicated on the
Office action.

  DISMISSAL OF APPEAL

  After an appeal is docketed in the Federal Circuit,
failure to prosecute the appeal, such as by appellant's
failure to file a brief, may result in dismissal of the
appeal by the court. Under particular circumstances the
appeal also may be dismissed by the court on motion of the
appellant and/or the Commissioner.

  The court proceedings are considered terminated as of
the date of dismissal. After dismissal, the action taken by
the examiner will be the same as set forth above under the
heading "Office Procedure Following Decision by the Federal
Circuit."

  In the event of a dismissal for a reason other than
failure  to  prosecute  the  appeal,  the  status  of  the
application, reexamination proceeding or interference must
be determined according to the circumstances leading to the
dismissal.

1216.02  Civil Suits Under 35 U.S.C. 145

  A 35 U.S.C. 145 civil action is commenced by filing a
complaint in the U.S. District Court for the District of
Columbia within the time specified in 37 CFR 1.304 (see MPEP
§ 1216). Furthermore, copies of the complaint and summons
must be served in a timely manner on the Solicitor, the U.S.
Attorney for the District of Columbia, and the Attorney
General in the manner set forth in Rules 4(d)(4) and
4(d)((5) of the Federal Rules of Civil Procedure. Regarding
timely service, see Walsdorf  v.  Commissioner , 229 USPQ
559 (D.D.C. 1986) and Hodge v. Rostker , 501 F. Supp. 332
(D.D.C. 1980). When a 35 U.S.C. 145 civil action is filed, a
notice thereof is placed in the application or reexamination
file, which ordinarily will be kept in the Solicitor's
Office pending termination of the civil action.

  In an action under 35 U.S.C. 145, the plaintiff may
introduce evidence not previously presented to the Patent
and Trademark Office. But plaintiff will be precluded from
presenting new issues, at least in the absence of some
reason of justice put forward for failure to present the
issue to the Patent and Trademark Office. DeSeversky v.
Brenner , 424 F.2d 857, 858, 164 USPQ 495, 496 (D.C. Cir.
1970); MacKay v. Quigg , 641 F. Supp. 567, 570, 231 USPQ
907, 908 (D.D.C. 1986). Furthermore, new evidence is not
admissible in district court where it was available to the
parties but was withheld from the Patent and Trademark
Office as a result of fraud, bad faith, or gross negligence.
DeSeversky , 424 F.2d at 858 n.5, 164 USPQ at 496 n.5;
California Research Corp. v. Ladd , 356 F.2d 813, 821 n.18,
148 USPQ 404, 473 n.18 (D.C. Cir. 1966); MacKay , 641 F.
Supp. at 570, 231 USPQ at 908; Monsanto Company v. Kamp ,
269 F. Supp. 818, 822, 154 USPQ 259, 260 (D.D.C. 1967);
Killian  v.  Watson , 121 USPQ 507, 507 (D.D.C. 1958).

  Upon termination of the civil action, a statement of the
court's final disposition of the case is placed in the
application or reexamination file, which is then returned to
the  examiner  for  action  in  accordance  with  the  same
procedures as follow termination of a 35 U.S.C. 141 appeal.
See MPEP § 1216.01. 37 CFR 1.197(c) provides that a civil
action is terminated when the time to appeal the judgment
expires. Where the exact date when the civil action was
terminated is material, the date may be ascertained from the
Solicitor's Office.

  The  procedures  to  be  followed  in  the  Patent  and
Trademark Office after a decision, remand, or dismissal of
the  case  by  the  district  court  are  the  same  as  the
procedures followed with respect to 35 U.S.C. 141 appeals.
See MPEP § 1216.01.

  Where a civil action involving an application has been
dismissed before coming to trial, the application will not
be opened to the public unless it is otherwise available to
the public under 37 CFR 1.11. However, the complaint and any
other court papers not under a protective order are open to
the public and may be inspected at the Office of the Clerk
for the U.S. District Court for the District of Columbia,
located  in  the  U.S.  Courthouse,  Constitution  and  John
Marshall Place, Washington, D.C. 20001. The court papers in
the Office of the Solicitor are not generally made available
for public inspection.

  Any subpoena by the district court for an application or
reexamination file should be hand - carried to the Office of
the Solicitor.

  - -- - -- END - -- - --

  Chapter 1300 Allowance and Issue

  1301  Substantially Allowable Case, Special
  1302  Final Review and Preparation for Issue
  1302.01  General Review of Disclosure
  1302.02  Requirement for a Rewritten Specification
  1302.03  Status Letter of Allowability
  1302.04  Examiner's Amendments and Changes
  1302.04(a)  Title of Invention
  1302.04(b)  Cancelation of Nonstatutory Claim
  1302.04(c)  Cancelation of Claims to Nonelected Invention
  1302.04(d)  Cancelation of Claim Lost in Interference
  1302.04(e)  Cancelation of Rejected Claims Following
  Appeal
  1302.04(f)  Data of Copending Application Referred to
  Should Be Brought Up to Date
  1302.04(g)  Identification of Claims
  1302.05  Correction of Drawing
  1302.05(a)  Original Drawings Cannot Be Located
  1302.06  Prior Foreign Application
  1302.07  Use of Retention Labels To Preserve Abandoned
  Companion Applications
  1302.08  Interference Search
  1302.09  Notations on File Wrapper
  1302.10  Notations on Drawings and on Classification
  (Issue) Slip
  1302.11  Reference to Assignment Division
  1302.12  Listing of References

  1302.13  Signing
  1302.14  Reasons for Allowance
  1303  Notice of Allowance
  1303.01  Amendment Received After Allowance
  1303.02  Undelivered
  1303.03  Not Withheld Due to Death of Inventor
  1304  Amendments After D - 10 Notice
  1304.01  Withholding From Issue of "Secrecy Order"
  Cases
  1305  Jurisdiction
  1306  Issue Fee
  1306.01  Deferring Issuance of a Patent
  1306.02  Simultaneous Issuance of Patents
  1306.03  Practice After Payment of Issue Fee
  1307  Change in Classification of Cases Which Are in
  Issue
  1308  Withdrawal From Issue
  1308.01  Rejection After Allowance
  1308.02  For Interference Purposes
  1308.03  Quality Review Program for Examined Patent
  Applications
  1309  Issue of Patent
  1309.01  Patent Terms and Extensions
  1309.02  "Printer Waiting" Cases

1301  Substantially Allowable Case, Special

 When an application is in condition for allowance, except
as to matters of form, the case will be considered special
and prompt action taken to require correction of formal
matters. See MPEP § 710.02(b).

1302  Final Review and Preparation for Issue

1302.01  General Review of Disclosure [R - 2]

 When an application is apparently ready for allowance, it
should be reviewed by the examiner to make certain that the
whole case meets all formal requirements and particularly
that the brief summary of the invention and the descriptive
matter are confined to the invention to which the allowed
claims are directed and that the language of the claims
finds  clear  support  or  antecedent  basis  in  the
specification.  Neglect  to  give  due  attention  to  these
matters may lead to confusion as to the scope of the patent.

 Frequently, the invention as originally described and
claimed was of much greater scope than that defined in the
claims as allowed. Some of much of the subject matter
disclosed may be entirely outside the bounds of the claims
accepted by the applicant. In such case, the examiner should
require the applicant to modify the brief summary of the
invention and restrict the descriptive matter so as to be in
harmony with the claims. However, valuable for reference
purposes the examiner may consider the matter which is
extraneous to the claimed invention, patents should be
confined in their disclosures to the respective inventions
patented (>see< 37 CFR 1.71 and 1.73). Of course, enough
background should be included to make the invention clearly
understandable. See MPEP § 608.01(d) and § 608.01(e). >Form
Paragraphs 13.07 and 13.08 may be used.

¶ 13.07  Disclosure to be Limited to Claimed Invention

 Applicant is required to modify the brief summary of the
invention and to restrict the descriptive matter so that
they are confined to and in harmony with the invention to
which the allowed claims are directed. See MPEP § 1302.01.
For example, [1].

 Examiner Note:

 An example should be given as to the specific sheets or
drawing figures and portions of the specification which
should be cancelled. If drawing figures are to be cancelled,
applicant should be reminded that subsequent figures must be
renumbered.

¶ 13.08  Disclosed Subject Matter Outside the Bounds of
the Claims

 The application contains disclosure entirely outside the
bounds of the allowed claims. Applicant is required to
modify the brief summary of the invention and restrict the
descriptive matter so as to be in harmony with the claims
(MPEP § 1302.01).<

 There should be clear support or antecedent basis in the
specification  for  the  terminology  used  in  the  claims.
Usually, the original claims follow the nomenclature of the
specification; but sometimes in amending the claims or in
adding new claims, applicant employs terms that do not
appear in the specification. This may result in uncertainty
as to the interpretation to be given such terms. See MPEP §
608.01(o).

 Where a copending application is referred to in the
specification, the examiner should ascertain whether it has
matured into a patent or become abandoned and that fact or
the patent number should be added to the specification.

 The claims should be renumbered as required by 37 CFR
1.126, and particular attention should be given to claims
dependent on previous claims to see that the numbering is
consistent. An examiner's amendment should be prepared if
the order of the claims is changed. See MPEP § 608.01(j), §
608.01(n), and § 1302.04(g).

 The abstract should be checked for an adequate and clear
statement of the disclosure. See MPEP § 608.01(b). The
length of the abstract should be limited to 250 words.

 The title should also be checked. It should be as short and
specific  as  possible.  However,  the  title  should  be
descriptive of the invention claimed, even though a longer
title may result. If a satisfactory title is not supplied by
the applicant, the examiner may change the title on or after
allowance. See MPEP § 606 and § 606.01.

 No pencil notes should be made in the application file by
the examiner. Any notes in the file must be erased when the
case is passed to issue.

 The Mail Room receipt date of all amendments should be
reviewed to assure that they were timely filed.

1302.02  Requirement for a Rewritten Specification [R - 2]

 Whenever interlineations or cancellations have been made in

the  specification  or  amendments  which  would  lead  to
confusion and mistake, the examiner should require the
entire portion of specification affected to be rewritten
before passing the case to issue. See 37 CFR 1.125 and MPEP
§ 608.01(q).

 Form Paragraph 13.01 should be used when making such a
requirement.

¶ 13.01  Requirement for Rewritten Specification

  The  interlineations  or  cancellations  made  in  the
specification or amendments to the claims would lead to
confusion and mistake during the issue and printing process.
Accordingly, the portion of the specification or claims as
identified below is required to be rewritten before passing
the case to issue. See 37 CFR 1.125 and MPEP  § 608.01(q).

 Examiner Note:

 1. Specific discussion of the sections of the specification
or claims required to be rewritten must be set forth.

 **

 *>2.< See paragraph 6.28.01 for a substitute specification.

1302.03  Status Letter of Allowability

 Form PTO - 37 is used whenever an application has been
placed  in  condition  for  allowance  as  a  result  of  a
communication from or an interview with applicant, except
where an examiner's amendment will be mailed promptly.

 The date of the communication or interview which resulted
in the allowance and the name of the person with whom the
interview, if any, was held should be included in the
letter.

 Immediately after determining that a PTO - 37 letter or
examiner's amendment is necessary, it should be prepared and
mailed before preparing the application for allowance. See
MPEP § 714.13.

1302.04  Examiner's Amendments and Changes [R - 3]

 Except by formal amendment duly signed or as hereinafter
provided, no corrections, erasures, or interlineations may
be made in the body of written portions of the specification
or any other paper filed in the application for patent. (See
37 CFR 1.121.)

 Correction of the following obvious errors and omissions
only may be made with pen by the examiner of the case who
will  then  initial  the  sheet  margin  and  assume  full
responsibility for the change. When correcting originally
filed papers, clean red ink  must be used (not blue or black
ink).

  (1)  Misspelled words.

  (2)  Disagreement of a noun with its verb.

  (3)  Inconsistent "case" of a pronoun.

  (4)  Disagreement between a reference character as
used in the description and on the drawing. The character
may be corrected in the description but only when the
examiner is certain of the propriety of the change.

  (5)  Entry of "Patent No. ........" to identify a
patent which has been granted on a U.S. application referred
to by application number in the specification.

  (6) Entry  of  "abandoned"  if  a  U.S.  patent
application  referred  to  by  application  number  in  the
specification has become abandoned.

  (7)  Correction of reversed figure numbers, Garrett
v.  Cox,233 F.2d 343, 345, 110 USPQ 52, 54 (CCPA 1956).

  (8)  Other obvious minor grammatical errors such as
misplaced or omitted commas, improper parentheses, quotation
marks, etc.

  (9) Obvious  informalities  in  the  application,
other than the ones noted above, or of purely grammatical
nature.

 The fact that applicant is entitled to an earlier U.S.
effective filing date under 35 U.S.C. 120 or 35 U.S.C.
119(e)  is  sometimes  overlooked.  To  minimize  this
possibility,  the  statement  that,  "This  is  a  division
(continuation, continuation - in - part) of Application
Number ........, filed ........." should appear as the first
sentence  of  the  description  of  applications  claiming
priority under 35 U.S.C. 120, except in the case of design
applications where it should appear as set forth in MPEP §
1503.01. In applications claiming priority under 35 U.S.C.
119(e), a statement such as "This application claims the
benefit of U.S. Provisional Application No. 60/ - --, filed
-  --"  should  appear  as  the  first  sentence  of  the
description.  In  addition,  for  an  application  which  is
claiming  the  benefit  under  35  U.S.C.  120  of  a  prior
application  which  in  turn  claims  the  benefit  of  a
provisional application under 35 U.S.C. 119(e), a suitable
reference would read, "This application is a continuation of
U.S. Application No. 08/ - --, filed - --, now abandoned,
which claims the benefit of U.S. Provisional Application No.
60/ - --, filed - --". The status (whether patented or
abandoned) of the nonprovisional application(s) for which
priority is claimed should also be included. Any such
statements appearing elsewhere in the specification should
be relocated. The clerk indicates the change for the printer
in the appropriate margin when checking new applications for
matters of form.

 Other obvious informalities in the application may be
corrected by the examiner, but such corrections must be by a
formal examiner's amendment, signed by the primary examiner,
placed in the file, and a copy sent to the applicant. The
changes specified in the amendment are entered by the clerk
in the regular way. An examiner's amendment should include
Form Paragraph 13.02 and Form Paragraph 13.02.01. Form
Paragraph 13.02.02 should be used if an extension of time is
required.

¶ 13.02.  Examiner's Amendment

 An examiner's amendment to the record appears below. Should

the changes and/or additions be unacceptable to applicant,
an amendment may be filed as provided by 37 CFR 1.312. To
ensure consideration of such an amendment, it MUST be
submitted no later than the payment of the issue fee.

¶ 13.02.01  Examiner's Amendment Authorized

 Authorization for this examiner's amendment was given in a
telephone interview with [1] on [2].

¶ 13.02.02  Extension of Time and Examiner's Amendment
Authorized by Telephone

 An extension of time under 37 CFR 1.136(a) is required in
order to make an examiner's amendment which places this
application in condition for allowance. During a telephone
conversation conducted on [1], [2] requested an extension of
time for [3] MONTH(S) and authorized the Commissioner to
charge Deposit Account No. [4] the required fee of $[5] for
this  extension  and  authorized  the  following  examiner's
amendment.  Should  the  changes  and/or  additions  be
unacceptable to applicant, an amendment may be filed as
provided by 37 CFR 1.312. To ensure consideration of such an
amendment, it MUST be submitted no later than the payment of
the issue fee.

 Examiner Note:

 1.  **

 See MPEP § 706.07(f), item 10 which explains when an
extension of time is needed in order to make amendments to
place the application in condition for allowance.

 The amendment or cancelation of claims by formal examiner's
amendment is permitted when passing an application to issue
where these changes have been authorized by applicant (or
his attorney or agent) in a telephone or personal interview.
The examiner's amendment should indicate that the changes
were authorized, the date and type (personal or telephone)
of interview, and with whom it was held.

 The examiner's amendment practice may be used to make
charges against deposit accounts under special conditions.

 An examiner's amendment can be used to make a charge
against  a  deposit  account,  provided  prior  approval  is
obtained from the applicant, attorney or agent, in order to
expedite  the  issuance  of  a  patent  on  an  application
otherwise ready for allowance. When such an examiner's
amendment is prepared, the prior approval is indicated by
identification of the name of the authorizing party, the
date and type (personal or telephone) of authorization, the
purpose for which the charge is made (additional claims,
etc.), and the deposit account number.

 Further identifying data, if deemed necessary and requested
by the attorney, should also be included in the examiner's
amendment.

 For example, Form Paragraph 13.06 may be used to charge an
extension of time fee in an examiner's amendment.

¶ 13.06  Extension of time by Examiner's Amendment

 An extension of time under 37 CFR 1.136(a) is required to
place this application in condition for allowance. During a
telephone conversation conducted on [1], [2] requested an
extension of time for [3] MONTH(S) and authorized the
Commissioner to charge deposit account no. [4] the required
fee of $ [5] for this extension.

 Examiner Note:

 1.

 ** See MPEP § 706.07(f), item 10 which explains when an
extension of time is needed in order to make amendments to
place the application in condition for allowance.

 *>2.<.  When  an  examiner's  amendment  is  also
authorized use form 13.02.02 instead.

 A change in the abstract may be made by examiner's
amendment.

 Where a reference to the parent application in an otherwise
allowable 37 CFR 1.60 or 37 CFR 1.62 case has inadvertently
been omitted by the applicant, the examiner should insert
the required reference by examiner's amendment (see MPEP §
201.11).

 References cited as being of interest by examiners when
passing an application to issue will not be supplied to
applicant. The references will be cited as usual on form PTO
- 892, a copy of which will be attached to examiner's
amendment form PTO - 37.

 See also MPEP § 608.02(w).

 No other changes may be made by any person in any record of
the Patent and Trademark office without the written approval
of the Commissioner of Patents and Trademarks.

  In  reviewing  the  application,  all  errors  should  be
carefully noted. It is not necessary that the language be
the best; it is, however, essential that it be clear in
meaning, and free from errors in syntax. Any necessary
examiner's amendment is usually made at the time a case is
being prepared for issue by the examiner. However, the need
for such may not be noted until after the proof of the
patent is read and the case is sent up to the examiner with
a "printer waiting" slip (Form PTO - 97). A copy of any
formal examiner's amendment is sent to applicant even if the
application is already in the printer's hands. See MPEP §
1309.01.

 Examiners will not cancel claims on the basis of an
amendment  which  argues  for  certain  claims  and,
alternatively, purports to authorize their cancelation by
the examiner if other claims are allowed, In re Willingham,
282 F.2d 353, 127 USPQ 211 (CCPA 1960).

 In all instances, both before and after final rejection, in
which an application is placed in condition for allowance as
by an interview or amendment, applicant should be notified
promptly of this fact by means of form letter PTO - 37 or an
examiner's amendment.

 If after reviewing, screening, or surveying an allowed

application in the Office of Quality Review, an error or
omission of the type noted in items 1 through 9 under the
second paragraph above is noted, the error or omission may
be corrected by the Patentability Review Examiner in the
same manner as set forth in the second paragraph. Since all
other obvious informalities may only be corrected by a
formal examiner's amendment, if the Office of Quality Review
discovers any such informality, the Patentability Review
Examiner will return the application to the Group examining
personnel via the Group Director suggesting, as appropriate,
specific changes for approval and correction by the examiner
through the use of an examiner's amendment.

1302.04(a)  Title of Invention

 Where the title of the invention is not specific to the
invention as claimed, see MPEP § 606.01.

1302.04(b)  Cancelation of Nonstatutory Claim

 When a case is otherwise in condition for allowance the
examiner may cancel an obviously nonstatutory claim such as
one to "A device substantially as shown and described."
Applicant should be notified of the cancelation of the claim
by an examiner's amendment.

1302.04(c)  Cancelation of Claims to Nonelected Invention

 See MPEP § 821.01 and § 821.02.

1302.04(d)  Cancelation of Claim Lost in Interference [R
- 3]

 See MPEP ** § 2363.03.

1302.04(e)  Cancelation of Rejected Claims Following
Appeal

 See MPEP § 1214.06, § 1215.03, and § 1215.04.

1302.04(f)  Data of Copending Application Referred to
Should Be Brought Up to Date

 Where a patent application which is ready for issue refers
by application number to a U.S. nonprovisional application
which has matured into a patent, the examiner is authorized
to enter the patent number without a formal examiner's
amendment. This entry should be in the following form: ",
Patent No. .........". The entry is to be initialed and
dated in the margin by the examiner to fix responsibility
for the same. The entry and the initials should be in red
ink.

 If the nonprovisional application referred to has become
abandoned, the entry "abandoned" should be made in red ink,
and initialed and dated by the examiner in the margin. A
formal examiner's amendment is not required.

1302.04(g)  Identification of Claims

 To identify a claim, a formal examiner's amendment should
refer to it by the original number and, if renumbered in the
allowed application, also by the new number.

1302.05  Correction of Drawing

 Where an application otherwise ready for issue requires
correction of the drawing, the examiner should send revised
application  to  the  Publishing  Division  after  requiring
corrected drawings.

1302.05(a)  Original Drawings Cannot Be Located

 When the original drawings cannot be located and the
application is otherwise in condition for allowance, no
"Official Search" need be undertaken. The examining group
should check its own area and attempt to obtain the drawing
from abandoned files. If the drawing cannot be located, a
yellow tag should be placed on the application to flag it as
having a drawing problem. A memorandum as outlined below
should be stapled to the outside of the file when forwarding
it to the Publishing Division.

 Memorandum

 Application No. ..............................

 Date forwarded ..............................

 ATTENTION PUBLISHING DIVISION, DRAWING MISSING

 I have attempted to locate the drawing in this application
without success. The drawing cannot be located in the
examining  group.  (The  drawing  cannot  be  obtained  from
Abandoned Files.)

 Issue Revision Clerk

  Print O.G. Fig. Class ............................

  Subclass

1302.06  Prior Foreign Application

 See MPEP § 201.14(c) and § 202.03.

1302.07  Use of Retention Labels To Preserve Abandoned
Companion Applications

 Related applications referred to in patent specifications
are preserved from destruction by a retention label (form
PTO - 150) which is attached to the outside of the file
wrapper. The final review clerk of the group prepares such a
label for use as indicated below on each application (which
has not become a patent) which is referred to in the
specification or oath or declaration of the application
ready for allowance (or in any Office letter therein).

 If the case referred to is:

 Still pending:

 Fill in and paste label on the face of the pending file
wrapper  in  the  space  provided.  Make  no  change  in
specification of the allowable application.

Abandoned for failure to pay issue fee:

 If file has been forwarded to Files Repository, fill in
label and send it to Files Repository for attachment to the

wrapper. If not forwarded, treat the same as pending case.

Abandoned:

 If file has been forwarded to the Files Repository, fill in
label and send it to Files Repository for attachment to the
wrapper. If not forwarded, treat the same as pending case.
Add "abandoned" in red ink and initials to the allowable
application.

Already patented:

 No label is required. Insert patent number in specification
if not already present. Formal examiner's amendment not
necessary if this is only change.

In issue:

 Fill in label. Make no change in the specification of the
allowable application.

 Examiners are reminded that only one retention label is
necessary. Thus, if a retention label is already present, it
is sufficient to merely add "et al." to the serial number
cited thereon.

>1302.08  Interference Search [R - 2]<

 Assuming that the case is found ready for issue, the
examiner makes an interference search and notes the date and
class and subclasses searched in the file wrapper. To do
this, the examiner inspects all the pending prints and
drawings (or all the digests if the invention is not
susceptible of illustration) in the relevant subclasses of
the class in which the application is classified, and all
other pertinent classes, whether in his or her group or
elsewhere, in order to ascertain whether any other applicant
is claiming substantially the same subject matter as is
being allowed in the case in hand. When any of the drawings
or  digests  shows  such  a  condition  to  be  likely,  the
corresponding file is reviewed.

 Note also MPEP § 2301.01(b).

  If  the  search  does  not  disclose  any  interfering
application, the examiner should prepare the case for issue.

 An interference search may be required in Group*>2200<.
Inspection of pertinent prints, drawings, brief cards, and
applications in Group*>2200< will be done on request by an
examiner in Group*>2200<.

1302.09  Notations on File Wrapper [R - 3]

 The examiner preparing the application for issue fills out,
in black ink, the appropriate spaces on the face of the file
wrapper.

 To aid the Publishing Division and the printers, examiners
should write the class and subclass on the outside of the
file wrapper as carefully and legibly as possible. Each
numeral should be distinct and any decimal point should be
shown clearly and in its proper position.

 Spaces are provided on the file wrapper for identifying

data of a prior abandoned application for which the instant
application  is  a  substitute,  and  for  the  parent
application(s) and prior foreign application(s). Examiners
must review the data regarding prior U.S. applications to
make sure that the information is correct when preparing the
application for issue. If any claim to priority under 35
U.S.C.  120,  121,  or  365(c)  is  added,  deleted,  and/or
modified during prosecution of the application and such
addition, deletion, and/or modification have been approved,
the examiner must make sure that the information on the file
wrapper and in the PALM data base are current and up to
date.  If  the  PALM  system  has  not  been  updated,  the
application  must  be  forwarded  to  Application  Division
Customer Corrections, accompanied by a completed Application
Branch Data Base Routing Slip, with an explanation of the
correction to be made.

 The class and subclass and the name of the examiner which
are written in pencil on the file wrapper should correspond
to the class and subclass in which the patent will issue and
to the name of the examiner preparing the application for
issue.

 See MPEP § 202.02 for notation as to parent or prior U.S.
application, including provisional application, to be placed
on file wrapper.

 See MPEP § 202.03 for notation as to foreign patent
application to be placed on file wrapper.

 See MPEP § 1302.13 for name of examiner.

 Examiners, when preparing an application for issue, are to
record the number of the claim selected for printing in the
Official Gazette in the box labeled "PRINT CLAIM(S):" on the
inside left flap of the file wrapper above the "Index of
Claims".

 The claim or claims should be selected in accordance with
the following instructions:

  (1)  The broadest claim should be selected.

  (2)  **Examiners should ordinarily designate but
one claim on each invention, although when a plurality of
inventions are claimed in an application, additional claims
up to a maximum of five may be designated for publication.

  *>(3)< A dependent claim should not be selected unless
the independent claim on which it depends is also printed.
In the case where a multiple dependent claim is selected,
the entire chain of claims for one embodiment should be
listed.

  *>(4)< In reissue applications, the broadest claim with
changes or the broadest additional reissue claim should be
selected for printing.

 When recording this information in the box provided, the
following items should be kept in mind:

  (1)  Write the claim number clearly in black ink.

  (2)  If multiple claims are selected, the claim
numbers should be separated by commas.

  (3)  The claim designated must be referred to by
using the renumbered patent claim number rather than the
original application claim number.

1302.10  Notations on Drawings and on Classification
(Issue) Slip

 On the margin of the first sheet of drawing, the examiner
indicates in black ink in the spaces provided by the
Draftsman's stamp the figure to be printed in the Official
Gazette and also the final official classification of the
case. Ordinarily a single figure is selected for printing.
This figure should be consistent with the claim to be
printed in the  Official Gazette . The numerals should fill
as much of the space provided as feasible. The figure to be
printed in the  Official Gazette must not be one that is
labeled "prior art".

 If the selected figure is not on the first sheet, the
examiner should indicate it also on the sheet where it does
appear. If there is no figure illustrative of or helpful in
understanding the claimed invention, no figure need be
selected. "None" may be written after "O.G. Fig." If,
through inadvertence, the stamped legend for O.G. Fig. and
class and subclass appears within the margin of the drawing,
the examiner should make the notations outside of the
margin.

 Under current practice, the clerk of the examining group
does NOT enter any date when the case is "sent to issue".
See MPEP § 903.07, § 903.07(b) and § 903.09 for notation to
be applied to the Issue Classification Slip (Form PTO -
270).

 In all reissue applications, the number of the original
patent which is being reissued should be placed in the box
provided therefor below the box for the applicant's name.

 To ensure that both copies of the slip do not become
separated from the file, examiners should affix the entire
unit set to the inside left flap of the file wrapper by
stapling it in the area above the perforation. It is not
necessary to remove the carbon paper.

 The Allowed Files Unit of the Publishing Division removes
the original for use by Machine Operations Branch and leaves
the carbon copy in the file for use by the printer.

1302.11  Reference to Assignment Division

 The practice of referring certain applications to the
Assignment Division when passing them to issue is no longer
followed. See MPEP § 303.

1302.12  Listing of References

 All references which have been cited by the examiner during
the prosecution, including those appearing in Board of
Patent Appeals and Interferences decisions or listed in the
reissue oath, must be listed on either a form PTO - 892 or
PTO - 1449. All such reference citations will be printed in
the patent.

 At time of allowance, the examiner may cite pertinent art

in an examiner's amendment. Such pertinent art should be
listed as usual on form PTO - 892, a copy of which is
attached to the examiner's amendment form PTOL - 37. Such
pertinent art, other than foreign patent documents and non -
patent literature, is not sent to the applicant. Such
citation of art is important in the case of continuing
applications where significant prior art is often of record
in the parent case. In the rare instance where no art is
cited in a continuation application, all the references
cited during the prosecution of the parent application will
be listed at allowance for printing in the patent. See MPEP
§ 707.05 and 707.05(a).

 When preparing an application for allowance, the "final
review" clerk will verify that there is at least one list of
references (PTO - 892 or PTO - 1449) in the application. All
lists of references are maintained in the center section of
the file wrapper.

 In the first action after termination of an interference,
the examiner should make of record in each application all
references not already of record which were pertinent to any
motions to dissolve and which were discussed in the decision
on motion.

 In any case, otherwise ready for issue, in which the
erroneous citation has not been formally corrected in an
official paper, the examiner is directed to correct the
citation by an examiner's amendment. See MPEP § 707.05(g).

 Any new reference cited when the case is in issue, under
the practice of MPEP § 1308.01, should be added by way of a
PTO - 892 or PTO - 1449.

 All copies of references placed in the file wrapper during
prosecution should be retained therein, when the allowed
application is forwarded to the Publishing Division.

1302.13  Signing

 The primary examiner and the assistant examiner involved in
the allowance of an application will print or stamp their
names on the file wrapper in the appropriate boxes. The
assistant examiner shall place his or her initials after his
or her printed or stamped name. The primary examiner will
place his or her signature in the appropriate box on the
file wrapper so that the stamped or printed name can still
be  easily  read.  A  primary  examiner  who  prepares  an
application for issue prints or stamp his or her name and
signs the file wrapper only in the "Primary Examiner" box. A
line should be drawn through the "Assistant Examiner" box to
make it clear that the absence of a name in the box was not
an oversight.

 Only the names of the primary examiner and the assistant
examiner appearing on the face of the application file
wrapper will be listed in the printed patent.

1302.14  Reasons for Allowance [R - 3]

 37 CFR 1.109.  Reasons for allowance.

 If the examiner believes that the record of the prosecution
as a whole does not make clear his or her reasons for
allowing a claim or claims, the examiner may set forth such

reasoning. The reasons shall be incorporated into an Office
action rejecting other claims of the application or patent
under  reexamination  or  be  the  subject  of  a  separate
communication  to  the  applicant  or  patent  owner.  The
applicant or patent owner may file a statement commenting on
the reasons for allowance within such time as may be
specified by the examiner. Failure to file such a statement
shall not give rise to any implication that the applicant or
patent owner agrees with or acquiesces in the reasoning of
the examiner.

  REASONS FOR ALLOWANCE

 One of the primary purposes of 37 CFR 1.109 is to improve
the quality and reliability of issued patents by providing a
complete file history which should clearly reflect, as much
as is reasonably possible, the reasons why the application
was allowed. Such information facilitates evaluation of the
scope and strength of a patent by the patentee and the
public and may help avoid or simplify litigation of a
patent.

 The practice of stating the reasons for allowance is not
new, and the rule merely formalizes the examiner's existing
authority to do so and provides applicants or patent owners
an opportunity to comment upon any such statement of the
examiner.

 It should be noted that the setting forth reasons for
allowance is not mandatory on the examiner's part. However,
in meeting the need for the application file history to
speak for itself, it is incumbent upon the examiner in
exercising his or her responsibility to the public, to see
that the file history is as complete as is reasonably
possible.

 When an application is finally acted upon and allowed, the
examiner is expected to determine, at the same time, whether
the reasons why the application is being allowed are evident
from the record.

 In determining whether reasons for allowance should be
recorded,  the  primary  consideration  lies  in  the  first
sentence of 37 CFR 1.109 which states:

  "If  the  examiner  believes  that  the  record  of  the
prosecution as a whole does not make clear his or her
reasons for allowing a claim or claims, the examiner may set
forth such reasoning." (Emphasis added).

 In most cases, the examiner's actions and the applicant's
responses make evident the reasons for allowance, satisfying
the "record as a whole" proviso of the rule. This is
particularly true when applicant fully complies with 37 CFR
1.111(b) and (c), 37 CFR 1.119 and 37 CFR1.133(b). Thus,
where the examiner's actions clearly point out the reasons
for  rejection  and  the  applicant's  response  explicitly
represents  reasons  why  claims  are  patentable  over  the
reference, the reasons for allowance are in all probability
evident  from  the  record  and  no  statement  should  be
necessary. Conversely, where the record is not explicit as
to reasons, but allowance is in order, then a logical
extension of 37 CFR 1.111, 1.119, and 1.133 would dictate
that the examiner should make reasons of record and such
reasons should be specific.

 Examiners should give particular attention to whether an
application  file  reasonably  indicates  the  reasons  for
allowance when the application is being allowed in the first
Office action, especially if prior art made of record in the
file is very close to the claims; when an examiner withdraws
a rejection for reasons not suggested by the applicant; when
an applicant submits several arguments for allowing a claim
and the examiner finds not all of them persuasive; and when
the examiner allows a claim after remand from the Board of
Patent Appeals and Interferences.

 Where specific reasons are recorded by the examiner, care
must be taken to ensure that such reasons are accurate,
precise,  and  do  not  place  unwarranted  interpretations,
whether broad or narrow, upon the claims. The examiner
should keep in mind the possible misinterpretations of his
or her statement that may be made and its possible estoppel
effects. Each statement should include at least: (1) the
major difference in the claims not found in the prior art of
record,  and  (2)  the  reasons  why  that  difference  is
considered to define patentably over the prior art if either
of these reasons for allowance is not clear in the record.
The statement is not intended to necessarily state all the
reasons for allowance or all the details why claims are
allowed  and  should  not  be  written  to  specifically  or
impliedly state that all the reasons for allowance are set
forth.

 Under the rule, the examiner must make a judgment of the
individual record to determine whether or not reasons for
allowance  should  be  set  out  in  that  record.  These
guidelines, then, are intended to aid the examiner in making
that judgment. They comprise illustrative examples as to
applicability and appropriate content. They are not intended
to be exhaustive.

  EXAMPLES OF WHEN IT IS LIKELY THAT A STATEMENT SHOULD BE
  ADDED TO THE RECORD

  (1)  Claims are allowed on the basis of one (or
some) of a number of arguments and/or affidavits presented,
and a statement is necessary to identify which of these were
persuasive, for example:

  (a)  When the arguments are presented in an appeal
brief.

  (b) When  the  arguments  are  presented  in  an
ordinary response, with or without amendment of claims.

  (c)  When both an affidavit under 37 CFR 1.131 and
arguments concerning rejections under 35 U.S.C. 102 and 103
are presented.

  (2)  First action issue:

  (a)  Of a noncontinuing application, wherein the
claims are very close to the cited prior art and the
differences have not been discussed elsewhere.

  (b)  Of continuing applications, wherein reasons
for allowance are not apparent from the record in the parent
case or clear from preliminary filed matters.

  (3)  Withdrawal of a rejection for reasons not
suggested by applicant, for example:

  (a)  As a result of an appeal conference.

  (b)  When  applicant's  arguments  have  been
misdirected or are not persuasive alone and the examiner
comes to realize that a more cogent argument is available.

  (c)  When claims are amended to avoid a rejection
under 35 U.S.C. 102, but arguments (if any) fail to address
the question of obviousness.

  (4)  Allowance after remand from the Board of
Patent Appeals and Interferences.

  (5)  Allowance coincident with the citation of
newly found references that are very close to the claims,
but claims are considered patentable thereover:

  (a)  When reference is found and cited (but not
argued) by applicant.

  (b)  When reference is found and cited by examiner.

  (6)  Where the reasons for allowance are of record
but, in the examiner's judgment, are unclear (e.g., spread
throughout the file history) so that an unreasonable effort
would be required to collect them.

  (7)  Allowance based on claim interpretation which
might not be readily apparent, for example:

  (a)  Article claims in which method limitations
impart patentability.

  (b)  Method claims in which article limitations
impart patentability.

  (c)  Claim is so drafted that "nonanalogous" art is
not applicable.

  (d) Preamble  or  functional  language  "breathes
life" into claim.

  >(8) Allowance following decision by the United States
Court of Appeals for the Federal Circuit or District Court
of the District of Columbia.

 The reasons for allowance should refer to and incorporate a
copy of the briefs and the court decision.<

  EXAMPLES OF STATEMENTS OF SUITABLE CONTENT

  (1)  The primary reason for allowance of the claims
is the inclusion of .03 to .05 percent nickel in all of the
claims. Applicant's second affidavit, in example 5 shows
unexpected results from this restricted range.

  (2) During  two  telephonic  interviews  with
applicant's attorney, Mr. ............ on 5/6 and 5/ 10 / 77
, the examiner stated that applicant's remarks about the
placement  of  the  primary  teaching's  grid  member  were
persuasive, but he pointed out that applicant did not claim
the member as being within the reactor. Thus, an amendment

doing such was agreed to.

  (3) The  instant  application  is  deemed  to  be
directed to an unobvious improvement over the invention
patented in Pat. No. 3,953,224. The improvement comprises
baffle means 12 whose effective length in the extraction
tower may be varied so as to optimize and to control the
extraction process.

  (4)  Upon reconsideration, this application has
been  awarded  the  effective  filing  date  of  application
number. ............. Thus the rejection under 35 U.S.C.
102(d) and 103 over Belgium Patent No. 757,246 is withdrawn.

  (5)  The specific limitation as to the pressure
used during compression was agreed to during the telephone
interview with applicant's attorney. During said interview,
it was noted that applicants contended in their amendment
that a process of the combined applied teachings could not
result in a successful article within the amended pressure
range. The examiner agreed to rely on this statement (see
page 3, bottom, of applicant's amendment), and the case was
allowed.

  (6)  In the examiner's opinion, it would not be
obvious to a person of ordinary skill in the art first to
eliminate one of top members 4, second to eliminate plate 3,
third to attach remaining member 4 directly to tube 2 and
finally to substitute this modified handle for the handle 20
of Nania (see Fig. 1) especially in view of applicant's use
of term "consisting."

 >(7) The application is allowable for the reasons set forth
on page - - of the decision of the Court of Appeals for the
Federal Circuit, which is hereby incorporated by reference.
As noted therein, and as argued on page - - of Appellant's
brief, the claimed invention requires a one piece tubular
member whereas the closest prior art requires a multiple
piece assembly which does not teach or suggest the claimed
invention.<

  EXAMPLES OF STATEMENTS THAT ARE NOT SUITABLE AS TO CONTENT

  (1)  The 3 roll press couple has an upper roll 36
which  is  swingably  adjustable  to  vary  the  pressure
selectively against either of the two lower rolls. (NOTE:
The significance of this statement may not be clear if no
further explanation is given.)

  (2)  The main reasons for allowance of these claims
are applicant's remarks in the appeal brief and an agreement
reached in the appeals conference.

  (3)  The instant composition is a precursor in the
manufacture of melamine resins. A thorough search of the
prior  art  did  not  bring  forth  any  composition  which
corresponds to the instant composition. The examiner in the
art also did not know of any art which could be used against
the instant composition.

  (4)  Claims 1 - 6 have been allowed because they
are believed to be both novel and unobvious.

  The examiner should not include in his statement any
matter which does not relate directly to the reasons for

allowance. For example:

  (5)  Claims 1 and 2 are allowed because they are
patentable over the prior art. If applicants are aware of
better art than that which has been cited, they are required
to call such to the attention of the examiner.

  (6)  The reference Jones discloses and claims an
invention similar to applicant's. However, a comparison of
the claims, as set forth below, demonstrates the conclusion
that the inventions are noninterfering.

 Most instances when the examiner finds a need to place in
the file a statement of the reasons for allowing a claim or
claims will come at the time of allowance. In such cases,
the ** examiner should (a) check >the appropriate< box * on
the form PTOL - 37 ** and (b) attach thereto a **>paper<
containing  the  examiner's  statement  of  reasons  for
allowance. ** Such a statement should be typewritten. The
*>paper< should identify the application number and be
clearly labeled "Statement of Reasons for Allowance". It
should also specify that comments may be filed by the
applicant  on  the  statement  and  should  preferably  be
submitted with the payment of the issue fee so as not to
delay processing of the application and in any event no
later than payment of the issue fee.

 Form Paragraph 13.03 may be used for this purpose.

¶ 13.03  Reasons for Allowance

 The following is an examiner's statement of reasons for
allowance: [1].

 Any comments considered necessary by applicant must be
submitted no later than the payment of the issue fee and, to
avoid processing delays, should preferably accompany the
issue  fee.  Such  submissions  should  be  clearly  labeled
"Comments on Statement of Reasons for Allowance".

 Examiner Note:

 Do not use this paragraph in reexamination applications.

 Such comments will be entered in the application file by
the Allowed Files Branch with an appropriate notation on the
"Contents" list on the file wrapper.

  A  statement  may  be  sent  to  applicant  with  other
communications, where appropriate, but should be clearly
labeled as a "Statement of Reasons for Allowance" and
contain  the  other  data  indicated  above.  Examiners  are
expected to prepare any statement of their reasons for
allowance accurately and precisely so as not to place
unwarranted interpretations, whether broad or narrow, on the
claims. Where the examiner has a large number of reasons for
allowing a claim, it may suffice to state only the major or
important reasons, being careful to so couch the statement.
For example, a statement might start: "The primary reason
for the allowance of the claims is the inclusion of the
limitation .................... in all the claims which is
not  found  in  the  prior  art  references,"  with  further
amplification as necessary.

  Stock  paragraphs  with  meaningless  or  uninformative

statements of the reasons for the allowance should not be
used. The statement of reasons for allowance by the examiner
is  intended  to  provide  information  equivalent  to  that
contained in a file in which the examiner's Office actions
and the applicant's responses make evident the examiner's
reasons for allowing claims.

  Examiners  are  urged  to  carefully  carry  out  their
responsibilities to see that the application file contains a
complete and accurate picture of the Office's consideration
of the patentability of the application.

 Finally, comments made by applicants on the examiner's
statement of reasons for allowance will not be returned to
the examiner after their entry in the file and will not be
commented upon by the examiner.

1303  Notice of Allowance

 37 CFR 1.311.  Notice of Allowance.

 (a)  If, on examination, it shall appear that the
applicant is entitled to a patent under the law, a notice of
allowance will be sent to applicant at the correspondence
address indicated in § 1.33, calling for the payment of a
specified sum constituting the issue fee ( § 1.18), which
shall be paid within three months from the date of the
mailing of the notice of allowance.

 (b)  An authorization to charge the issue fee ( § 1.18)
to  a  deposit  account  may  be  filed  in  an  individual
application, either before or after mailing of the notice of
allowance. Where an authorization to charge the issue fee to
a deposit account has been filed before the mailing of the
notice of allowance, the issue fee will be automatically
charged to the deposit account at the time of mailing the
notice of allowance.

 The appropriate form of notice of allowance is prepared and
mailed, and the mailing date appearing thereon is stamped on
the file wrapper.

1303.01  Amendment Received After Allowance [R - 3]

 If the amendment is filed under 37 CFR 1.312, see MPEP §
714.15 to § 714.16(e). If the amendment contains claims
copied from a patent, see MPEP §*>2307.03<.

 ISSUE BATCH NUMBER

 All papers filed by applicant in the Office after receiving
the Notice of Allowance and before the time the Issue Fee
Receipt is received should include the Issue Batch Number.
The Issue Batch Number is printed on the Notice of Allowance
form. The Issue Batch Number consists of a capital letter
followed by two digits, for example; "A03", "D18", "F42",
"J79". Use of the Issue Batch Numbers is important since the
allowed applications are filed by these numbers.

 Any paper filed after receiving the Issue Fee Receipt
should include the indicated patent number rather than the
Issue Batch Number. At this time in the processing, the
Issue Batch Number is no longer useful since the application
has been removed from the batch at the time the patent
number was assigned.

1303.02  Undelivered

 In case a notice of allowance is returned, and a new notice
is sent (see MPEP § 707.13), the date of sending the notice
must be changed in the file to agree with the date of such
remailing.

1303.03  Not Withheld Due to Death of Inventor

 The notice of allowance will not be withheld due to death
of the inventor if the executor or administrator has not
intervened. See MPEP § 409.01(f).

1304  Amendments After D - 10 Notice

 For amendments received after D - 10 Notice, see MPEP §
130.

1304.01  Withholding From Issue of "Secrecy Order" Cases

 ``Secrecy Order" cases are not sent to issue even when all
of the claims have been allowed. Instead of mailing an
ordinary notice of allowance a D - 10 Notice is sent. See
MPEP § 130.

 If the "Secrecy Order" in a case is withdrawn after the D -
10 notice is mailed, the case should then be treated like an
ordinary application in condition for allowance.

1305  Jurisdiction

 Jurisdiction of the application remains with the primary
examiner until the notice of allowance is mailed. However,
the  examiner  may  make  examiner's  amendments  correcting
obvious errors, as when brought to the attention of the
examiner by the printer, and also may admit amendments under
37 CFR 1.312 which are confined to matters of form in
specification or claims, or to the cancelation of a claim or
claims. The examiner's action on other amendments under 37
CFR 1.312 consists of a recommendation to the Commissioner.

 To regain jurisdiction over the case, the examiner must
write a letter to the Commissioner requesting it. See MPEP §
1308, and § 1308.02.

 Once the patent has been granted, the Patent and Trademark
Office can take no action concerning it, except as provided
in 35 U.S.C. 135 and 35 U.S.C. 251 through 256 and 35 U.S.C.
302 through 307.

1306  Issue Fee

 The Issue Fee is due 3 months from the date of the Notice
of Allowance. The amount of the Issue Fee is shown on the
Notice of Allowance. The amounts due under 35 U.S.C. 41(a)
are reduced by 50 per centum for small entities; note the
issue fees are set forth in 37 CFR 1.18.

 Applicants and their attorneys or agents are urged to use
the special fee transmittal forms provided with the Notice
of Allowance when submitting their payments.

 The payment of the issue fee due may be simplified by using
a Patent and Trademark Office Deposit Account for such a

fee.  However,  any  such  payment  must  be  specifically
authorized by reference to the "issue fee" or "fees due
under 37 CFR 1.18".

  The  issue  fee  will  be  accepted  from  the  applicant,
assignee, or a registered attorney or agent, either of
record or under 37 CFR 1.34(a).

 The Commissioner has no authority to extend the time for
paying the issue fee. Intentional failure to pay the issue
fee within the 3 months permitted by 35 U.S.C. 151 does not
amount to unavoidable or unintentional delay in making
payment.

1306.01  Deferring Issuance of a Patent

 37 CFR 1.314.  Issuance of patent.

 If payment of the issue fee is timely made, the patent will
issue in regular course unless-

 (a)  The application is withdrawn from issue ( § 1.313)
or

 (b)  Issuance of the patent is deferred.

 Any petition by the applicant requesting deferral of the
issuance of a patent must be accompanied by the fee set
forth in § 1.17(i)(1) and must include a showing of good and
sufficient reasons why it is necessary to defer issuance of
the patent.

 There is a public policy that the patent will issue in
regular course once the issue fee is timely paid. 37 CFR
1.314. It has been the policy of the Patent and Trademark
Office to defer issuance of a patent, upon request, for a
period  of  up  to  1  month  only,  in  the  absence  of
extraordinary  circumstances  or  requirement  of  the
regulations (e.g., 37 CFR 1.177) which would dictate a
longer period. Situations like negotiation of licenses, time
for filing in foreign countries, collection of data for
filing a continuation - in - part application, or a desire
for simultaneous issuance of related applications are not
considered to amount to extraordinary circumstances.

 A petition to defer issuance of a patent is not appropriate
until the issue fee is paid. Issuance of a patent cannot be
deferred after an allowed application receives a patent
number and issue date unless the application is withdrawn
from issue under 37 CFR 1.313(b). The petition to defer is
considered at the time the petition is co related with the
application file before the appropriate deciding official
(MPEP § 1002.02(b)(6)). In order to facilitate consideration
of a petition for deferment of issue, the petition should be
firmly attached to the Issue Fee Transmittal form (PTOL -
85B) and clearly labeled as a Petition to Defer Issue;
Attention: Office of the Assistant Commissioner for Patents.

1306.02  Simultaneous Issuance of Patents

 Where applications have been allowed and a Notice of
Allowance and Issue Fee Due (PTOL - 85) has been mailed in
each application, a request for simultaneous issuance will
be granted. Unless all the applications have reached this
stage of processing, or a specific requirement of the

regulations is involved (e.g., 37 CFR 1.177), a request for
simultaneous issuance generally will not be granted.

 Applicants and their attorneys who desire the simultaneous
issue of allowed applications must submit the request to:
Commissioner of Patents and Trademarks, Washington, D.C.
20231, Attention: Office of Publications.

 The request must contain the following information about
each allowed application for which simultaneous issue is
requested:

  (1)  Application number

  (2)  Filing date

  (3)  Name(s) of inventor(s)

  (4)  Title of invention

  (5)  Date of allowance

 Separate copies of the request must accompany each Issue
Fee Transmittal (PTOL - 85B).

1306.03  Practice After Payment of Issue Fee

 Since a patent number and issue date are assigned to an
application approximately within two (2) weeks after the
issue fee is received in the Patent and Trademark Office,
and this event starts a printing routine that takes about
eight (8) weeks, the availability of an application file
being processed into a patent is restricted. Relief may not
be  available  under  some  circumstances  because  of  the
requirements of processing the application into a patent
grant, even though relief would have been appropriate.
Accordingly, it is most important that application files be
reviewed thoroughly upon receiving the Notice of Allowance
and Issue Fee Due to ensure that the application is complete
in all respects and ready for printing.

1307  Change in Classification of Cases Which Are in
Issue

 See MPEP § 903.07.

1308  Withdrawal From Issue

 37 CFR 1.313.  Withdrawal from issue.

 (a)  Applications  may  be  withdrawn  from  issue  for
further action at the initiative of the Office or upon
petition  by  the  applicant.  Any  such  petition  by  the
applicant must include a showing of good and sufficient
reasons why withdrawal of the application is necessary and,
if the reason for the withdrawal is not the fault of the
Office, must be accompanied by the fee set forth in §
1.17(i). If the application is withdrawn from issue, a new
notice of allowance will be sent if the application is again
allowed. Any amendment accompanying a petition to withdraw
an application from issue must comply with the requirements
of § 1.312.

 (b)  When the issue fee has been paid, the application
will not be withdrawn from issue for any reason except;

 (1)  A mistake on the part of the Office;

 (2)  A  violation  of  §  1.56  or  illegality  in  the
application;

 (3)  Unpatentability of one or more claims;

 (4)  For interference; or

 (5)  For abandonment to permit consideration of an
information  disclosure  statement  under  §  1.97  in  a
continuing application.

 If the applicant wishes to have the case withdrawn from
issue, he or she must petition the Commissioner (MPEP
1002.02(b)(4)). Once the issue fee is paid withdrawal is
permitted only for the reasons stated in 37 CFR 1.313(b).
The status of the application, at the time the petition is
filed is determinative of whether the petition is considered
under 37 CFR 1.313(a) or 37 CFR 1.313(b).

 In addition to the specific reasons identified in 37 CFR
1.313(b)(1) - (4), applicant should be able to identify some
specific and significant defect in the allowed application
before the application will be withdrawn from issue. It is
the policy of the Patent and Trademark Office to permit an
application to be withdrawn from issue under 37 CFR 1.313(a)
to file a continuing application, unless the application to
be withdrawn is itself a continuing application. This policy
does not affect applicant's right and ability to file a
continuing application on or before the last day the issue
fee is due and permit the parent application to become
abandoned for failure to pay the issue fee (35 U.S.C. 151).

 For withdrawal from issue pursuant to 37 CFR 1.313(b)(5),
see the discussion in MPEP § 609 at B(4).

 Unless applicant receives a written communication from the
Office that the application has been withdrawn from issue,
the issue fee must be timely submitted to avoid abandonment.

1308.01  Rejection After Allowance

 A claim noted as allowable shall thereafter be rejected
only with the approval of the primary examiner. Great care
should be exercised in authorizing such rejection. See MPEP
§ 706.04.

 When a new reference is discovered, which obviously is
applicable to one or more of the allowed claims in an
application in issue, a letter is addressed to the group
director, requesting that the application be withdrawn from
issue for the purpose of applying the new reference. This
letter should cite the reference, and, if need be, briefly
state its application. The letter should be submitted with
the reference and the file wrapper. Upon approval of this
request, the letter is taken to the Publishing Division and
the application is stamped "Withdrawn" over the name stamp
and initials of the primary examiner. It is then returned to
the group from which it came; the withdrawal from issue is
entered  on  the  register,  and  the  application  is  thus
restored to its former status as a pending application
awaiting action by the examiner. The examiner at once writes
a letter in the case stating that the application has been

withdrawn  from  issue,  citing  the  new  reference,  and
rejecting the claims met thereby.

 The letter is given a paper number and placed in the file.

 If the examiner's proposed action is not approved, the
letter requesting withdrawal from issue should not be placed
in the file.

 If the issue fee has already been paid and prosecution is
reopened, the applicant may request a refund or request that
the fee be credited to a Deposit Account. However, applicant
may wait until the application is either found allowable or
held abandoned. If allowed, upon receipt of a new Notice of
Allowance,  applicant  may  request  that  the  previously
submitted issue fee be applied. If abandoned, applicant may
request refund or credit to a Deposit Account.

 If the issue fee has been paid, the examiner should forward
the request to withdraw the application from issue to the
Office of the Assistant Commissioner for Patents after the
request is approved by the Group Director. The actual
withdrawal will be handled by the Assistant Commissioner's
Office and then the application will be returned to the
examiner for prompt action as noted above.

1308.02  For Interference Purposes

 It may be necessary to withdraw a case from issue for
reasons connected with an interference. For the procedure to
be followed, see MPEP § 2305.04 and § 2307.03.

1308.03  Quality Review Program for Examined Patent
Applications [R - 2]

 The Office of Quality Review administers a program for
reviewing  the  quality  of  the  examination  of  patent
applications. The general purpose of the program is to
improve  patent  quality  and  increase  the  likelihood  of
patents being found to be valid.

 The quality review is conducted by Patentability Review
Examiners  on  a  randomly  selected  sample  of  allowed
applications from each Art Unit. The sample is computer
generated under the office - wide computer system (PALM
III),  which  selects  a  predetermined  number  of  allowed
applications from each Art Unit per year for review only,
and which selects from each Art Unit's sample a sub - sample
of allowed applications for both review and full research.
The only applications excluded from the sample are those in
which there has been a decision by the Board of Patent
Appeals and Interferences, or by a Court.

 The Patentability Review Examiner independently reviews
each sampled application assigned to his or her docket to
determine  whether  any  claims  may  be  unpatentable.  The
Patentability Review Examiner may consult with, discuss or
review  an  application  with  any  other  reviewer  or
professional in the examining corps, except the professional
who acted on the application. The review will, with or
without  additional  search,  provide  the  examining  corps
personnel with information which will assist in improving
the quality of issued applications. The program shall be
used as an educational tool to aid in identifying problem
areas in the examining Groups.

 Reviewed applications may be returned to the Examining
Groups for consideration of the Reviewer's question(s) as to
adequacy of the search and/or patentability of a claim(s).

 If, during the quality review process, it is determined
that one or more claims of a reviewed application are
unpatentable, the prosecution of the application will be
reopened. The Office action should contain, as an opening,
Form Paragraph 13.04.

¶ 13.04  Reopen Prosecution - After Notice of Allowance

 Prosecution on the merits of this application is reopened
on  claim  [1]  considered  unpatentable  for  the  reasons
indicated below: [2]

 Examiner Note:

 1. This paragraph should be used when a rejection is made
on any previously allowed claim(s) which for one reason or
another is considered unpatentable after the "Notice of
Allowance">(PTOL - 85)< has been mailed.

 2. Make appropriate rejection(s) as in any other action.

 3. In bracket 1 identify claim(s) that are considered
unpatentable.

 4. In bracket 2 state all appropriate rejections for each
claim considered unpatentable.

 If the issue fee has already been paid in the application,
the application must be withdrawn from issue by the Office
of Petitions, and the action should contain not only the
above quoted paragraph, but also Form Paragraph 13.05.

¶ 13.05  Reopen  Prosecution  -  Vacate  Notice  of
Allowance

 Applicant is advised that the "Notice of Allowance" dated
[1] is vacated. If the issue fee has already been paid
applicant may request a refund or request that the fee be
credited to a deposit account. However, applicant may wait
until the application is either found allowable or held
abandoned. If allowed, upon receipt of a new "Notice of
Allowance",  applicant  may  request  that  the  previously
submitted issue fee be applied. If abandoned, applicant may
request refund or credit to a deposit account.

 Examiner Note:

 1. This paragraph must be used when the prosecution is
reopened after the mailing of a "Notice of Allowance".

 2. In bracket 1 insert date of "Notice of Allowance".

 Quality Review forms and papers are not to be included with
Office actions, nor should such forms or papers be retained
in the file of any reviewed application whether or not
prosecution is to be reopened. The application record should
not indicate that a review has been conducted by Quality
Review.

 Whenever an application has been returned to the Group

under the Quality Review Program, the Group should promptly
decide what action is to be taken in the application and
inform the Office of Quality Review of the nature of that
action by use of the appropriate form. If prosecution is to
be reopened or other corrective action taken, only the forms
should  be  returned  to  the  Office  of  Quality  Review
initially, with the application being returned to the Office
of Quality Review when action is completed. In all other
instances, both the application and the forms should be
returned to the Office of Quality Review.

1309  Issue of Patent [R - 3]

 The files of allowed cases (not patented files) are kept in
the Publishing Division, arranged in batch number order.
When the Issue fee is paid within the time allowed by law,
the file is given a patent number and date, after which it
is sent for printing of the specification. A bond paper copy
of the drawing and specification is ribboned and sealed in
the Publishing Division and finally signed.

 See MPEP § 1303.01 for explanation of "Issue Batch Number."

  Patent Printing Priority

 The applications placed in the weekly formulation of an
issue set aside for printing will be selected according to
the following priorities:

  (1)  Allowed cases which were made special by the
Commissioner (including those under the Special Examining
Procedure).

  (2)  Allowed cases that have a U.S. effective
filing date more than 5 years old.

  (3)  Allowed reissue applications.

  (4) Allowed  applications  having  an  effective
filing date earlier than that required for declaring an
interference with a copending application claiming the same
subject matter.

  (5)  Allowed application of a party involved in a
terminated interference.

  (6)  Allowed applications in which the applicant
has filed a request in the nature of a petition setting
forth reasons for advancing the printing date.

  (7)  Allowed applications ready for printing and
not covered by any of the six preceding categories. The
selection of cases in the involved category will be by
chronological sequence based on the date the issue fee was
paid.

 To ensure that any application falling within the scope of
the categories outlined above and identified by numbers 1 to
5 receives special treatment, the examiners should staple on
the file wrapper a tag entitled "Special in Publishing
Division." The special tag, PTO - 1101, may be obtained from
the group clerk. The examiner shall print directly on the
tag  the  recitation  "In  Publishing  Division"  and  the
appropriate  printing  category  outlined  above.  The
application is then forwarded to Publishing Division.

 The personnel in the Publishing Division will then set the
tagged  cases  aside  and  make  a  notation  that  further
processing of this application will be "special."

 In cases falling in category No. 6, the request must be
filed after the Notice of Allowance has been received and no
later than the date the issue fee is paid. The request must
be directed to the Head of the Publishing Division.

 35 U.S.C. 2.  Seal

 The Patent and Trademark Office shall have a seal with
which  letters  patent,  certificates  of  trademark
registrations, and papers issued from the Office shall be
authenticated.

 35 U.S.C. 153.  How issued

 Patents shall be issued in the name of the United States of
America, under the seal of the Patent and Trademark Office,
and  shall  be  signed  by  the  Commissioner  or  have  his
signature placed thereon and attested by an officer of the
Patent and Trademark Office designated by the Commissioner,
and shall be recorded in the Patent and Trademark Office.

  PRINTING NAMES OF PRACTITIONERS AND FIRM ON PATENTS

 The Issue Fee Transmittal form provides a space (item*>2<)
for the person submitting the base issue fee to indicate,
for printing, (1) the names of up to three registered patent
attorneys or agents or, alternatively, (2) the name of a
single firm, which has as a member at least one registered
patent attorney or agent, and the names of up to two
registered  patent  attorneys  or  agents.  If  the  person
submitting  the  issue  fee  desires  that  no  name  of
practitioner or firm be printed on the patent, the space on
the Issue Fee Transmittal form should be left blank. If no
name is listed on the form, no name will be printed on the
patent.

  ASSIGNMENT PRINTED ON PATENT

 The Issue Fee Transmittal Form portion (PTOL - 85B) of the
Notice  of  Allowance  provides  a  space  (item*>3<)  for
assignment data which should be completed in order to comply
with 37 CFR 3.81. Unless an assignee's name and address are
identified in item*>3< of the Issue Fee Transmittal Form
PTOL  -  85B,  the  patent  will  issue  to  the  applicant.
Assignment data printed on the patent will be based solely
on the information so supplied. See MPEP § 307.

  ASSIGNEE NAMES

 Only the first appearing name of an assignee will be
printed on the patent where multiple names for the same
party are identified on the Issue Fee Transmittal form, PTOL
- 85B. Such multiple names may occur when both a legal name
and an "also known as" or "doing business as" name is also
included. This printing practice will not, however, affect
the practice of recording assignments with the Office in the
Assignment Division. The assignee entry on form PTOL - 85B
should still be completed to indicate the assignment data as
recorded in the Office. For example, the assignment filed in
the Office and therefore the PTOL - 85B assignee entry might

read  "Smith  Company  doing  business  as  (d.b.a.)  Jones
Company." The assignee entry on the printed patent will read
"Smith Company."

 Various officials including the head of the Publishing
Division have been designated as attesting officers to
attest to the name of the Commissioner. The assistant head
of the Publishing Division acts as attesting officer in the
absence or unavailability of the head of the Division.

>1309.01  Patent Terms and Extensions [R - 1]

 35 U.S.C. 154.  Contents and term of patent

 (a) IN GENERAL.-

 (1)  CONTENTS.-Every patent shall contain a short title
of the invention and a grant to the patentee, his heirs or
assigns, of the right to exclude others from making, using,
offering for sale, or selling the invention throughout the
United States or importing the invention into the United
States, and, if the invention is a process, of the right to
exclude others from using, offering for sale or selling
throughout the United States, or importing into the United
States, products made by that process, referring to the
specification for the particulars thereof.

 (2)  TERM.-Subject to the payment of fees under this
title, such grant shall be for a term beginning on the date
on which the patent issues and ending 20 years from the date
on which the application for the patent was filed in the
United States or, if the application contains a specific
reference to an earlier filed application or applications
under section 120, 121, or 365(c) of this title, from the
date on which the earliest such application was filed.

 (3)  PRIORITY.-Priority under section 119, 365(a), or
365(b) of this title shall not be taken into account in
determining the term of a patent.

 (4)  SPECIFICATION  AND  DRAWING.-A  copy  of  the
specification and drawing shall be annexed to the patent and
be a part of such patent.

 (b)  TERM EXTENSION.-

 (1)  INTERFERENCE DELAY OR SECRECY ORDERS.-If the issue
of an original patent is delayed due to a proceeding under
section 135(a) of this title, or because the application for
patent is placed under an order pursuant to section 181 of
this title, the term of the patent shall be extended for the
period of delay, but in no case more than 5 years.

 (2)  EXTENSION FOR APPELLATE REVIEW.-If the issue of a
patent is delayed due to appellate review by the Board of
Patent Appeals and Interferences or by a Federal court and
the patent is issued pursuant to a decision in the review
reversing an adverse determination of patentability, the
term of the patent shall be extended for a period of time
but in no case more than 5 years. A patent shall not be
eligible for extension under this paragraph if it is subject
to a terminal disclaimer due to the issue of another patent
claiming subject matter that is not patentably distinct from
that under appellate review.

 (3)  LIMITATIONS.-The period of extension referred to in
paragraph (2)-

 (A)  shall include any period beginning on the date on
which an appeal is filed under section 134 or 141 of this
title, or on which an action is commenced under section 145
of this title, and ending on the date of a final decision in
favor of the applicant;

 (B)  shall be reduced by any time attributable to
appellate review before the expiration of 3 years from the
filing date of the application for patent; and

 (C)  shall be reduced for the period of time during
which  the  applicant  for  patent  did  not  act  with  due
diligence, as determined by the Commissioner.

 (4)  LENGTH OF EXTENSION.-The total duration of all
extensions of a patent under this subsection shall not
exceed 5 years.

 (c)  CONTINUATION.-

 (1)  DETERMINATION.-The term of a patent that is in
force on or that results from an application filed before
the date that is 6 months after the date of the enactment of
the Uruguay Round Agreements Act shall be the greater of the
20 - year term as provided in subsection (a), or 17 years
from grant subject to any terminal disclaimers.

 (2)  REMEDIES.-The remedies of sections 283, 284, and
285 of this title shall not apply to Acts which -

 (A)  were commenced or for which substantial investment
was made before the date that is 6 months after the date of
the enactment of the Uruguay Round Agreements Act; and

 (B)  became infringing by reason of paragraph (1).

 (3)  REMUNERATION.-The acts referred to in paragraph (2)
may be continued only upon the payment of an equitable
remuneration to the patentee that is determined in an action
brought under chapter 28 and chapter 29 (other than those
provisions excluded by paragraph (2)) of this title.

 For applications filed on or after June 8, 1995, utility
and plant patents (other than those granted on reissue
applications) will be granted for a term which begins on the
date the patent issues and ends twenty years from the date
on which the application for the patent was filed in the
United States or, if the application contains a specific
reference to an earlier filed application or applications
under 35 U.S.C. 120, 121, or 365(c), twenty years from the
earliest effective U.S. filing date. Patents on design
applications will be granted for a term of 14 years which
begins on the date the patent issues.

 A patent granted on an application which resulted from an
international application after compliance with 35 U.S.C.
371 will have a term which ends twenty years from the filing
date of the international application.

 A continuation or a continuation - in - part application of
an international application filed under 35 U.S.C. 363
designating the United States will have a term which ends

twenty  years  from  the  filing  date  of  the  parent
international application.

 Foreign priority under 35 U.S.C. 119(a) - (d), 365(a), or
365(b) is not considered in determining the term of a
patent. Likewise, priority under 35 U.S.C. 119(e) to one or
more U.S. provisional applications is not considered in the
calculation of the twenty year term.

 TRANSITIONAL RULES

  All patents that are in force on June 8, 1995, or that
will issue on an application that is filed before June 8,
1995, will automatically have a term that is the greater of
the twenty year term discussed above or seventeen years from
the patent grant. This provision affects all patents that
are in force on June 8, 1995, and all patents issued
thereafter on applications filed prior to June 8, 1995. The
terms of these patents are, of course, subject to reduction
by any applicable terminal disclaimers.

 Applications filed on or after June 8, 1995 will be subject
only to the twenty year term discussed above.

  TERM EXTENSIONS

 The twenty year patent term may be extended for a maximum
of five years for delays in the issuance of the patent due
to interferences, secrecy orders and/or successful appeals
to the Board of Patent Appeals and Interferences or the
Federal courts in accordance with 37 CFR 1.701. Extensions
for successful appeals are limited in that the patent must
not be subject to a terminal disclaimer. Further, the period
of extension will be reduced by any time attributable to
appellate review within three years of the filing date of
the application and the period of extension for appellate
review  will  be  reduced  by  any  time  during  which  the
applicant did not act with due diligence. The patent term
extension that may be available under 35 U.S.C. 156 for
premarket regulatory review is separate from and will be
added to any extension that may be available under 35 U.S.C.
154.

  At the time of issue, examiners will make no decisions
regarding patent term extensions. Extensions under 35 U.S.C.
156 will be handled by the Office of the Deputy Assistant
Commissioner for Patent Policy and Projects. Extensions
related to interferences and successful appellate review
will be calculated by PALM. Any patent term extension
granted as a result of administrative delay pursuant to 37
CFR 1.701 will be printed on the face of the patent. The
term of a patent will be readily discernible from the face
of the patent (i. e., from the filing date, continuing data,
issue date and any patent term extensions printed on the
patent).<

*>1309.02  <*"Printer Waiting" Cases [R - 1]

 When the printer finds an apparent error in an application,
the file is returned to the Office with an attached "Printer
Waiting" slip noting the supposed error.

 The Patent Issue Division forwards such "printer waiting"
applications  to  the  group  director's  secretary.  The
secretary acts as a control center in each examining group

and  forwards  the  applications  to  the  examiner  by  the
appropriate route. The application should be taken up and
acted on immediately and returned to the group director's
secretary within 24 hours (excluding weekends and holidays).
Either necessary corrective action should be taken or an
indication should be made that the application is considered
to be correct as it stands.

 If the examiner concurs in the criticisms, the errors
should, if possible, be corrected in clean red ink and
initialed or be corrected by examiners' amendment. See MPEP
§ 1302.04.

 If the required correction cannot be cured by examiner's
amendment, the application may have to be withdrawn from
issue. This may sometimes be avoided if the applicant or his
or her representative is telephoned immediately, and the
error is corrected by amendment under 37 CFR 1.312.

 The applications are picked up from the secretary's office
by the messenger and returned to the Patent Issue Division
for forwarding to the printer.

 THESE APPLICATIONS SHOULD NOT BE MAILED TO THE PUBLISHING
DIVISION.

  - -- - --

  Chapter 1400 Correction of Patents

  1401  Reissue
  1402  Grounds for Filing
  1403  Diligence in Filing
  1404  Submission of Papers Where Reissue Patent Is in
  Litigation
  1410  Content of Reissue Application
  1410.01  Reissue Applicant, Oath or Declaration, and
  Assent of All Assignees
  1411  Form of Specification
  1411.01  Certificate of Correction or Disclaimer in
  Original Patent
  1411.02  New Matter
  1412  Content of Claims
  1412.01  Reissue Claims Must Be for Same General
  Invention
  1412.02  Recapture of Canceled Subject Matter
  1412.03  Broadening Reissue Claims
  1413  Drawings
  1414  Content of Reissue Oath or Declaration
  1414.01  Reissue Oath or Declaration Under 37 CFR
  1.175(a)(1), (a)(2), and (a)(3)
  **
  1414.03  Requirements of 37 CFR 1.175(a)(5)
  1414.04  Requirements of 37 CFR 1.175(a)(6)
  1414.05  Requirements of 37 CFR 1.175(a)(7)
  1415  Reissue Filing and Issue Fees
  1416  Offer to Surrender and Return Original Patent
  1417  Claim for Benefit Under 35 U.S.C. 119>(a) - (d)<
  1418  Information Disclosure Statement and Other
  Information
  1430  Reissue Files Open to the Public and Notice of
  Filing Reissue Announced in  Official Gazette
  1431  Notice in Patent File
  1440  Examination of Reissue Application

  1441  Two - Month Delay Period
  1442  Special Status
  1442.01  Litigation Related Reissues
  1442.02  Litigation Not Stayed
  1442.03  Litigation Stayed
  1442.04  Litigation Involving Patent
  1442.05  Cases in Which Stays Were Considered
  1442.05(a)  Stays Granted
  1442.05(b)  Stays Denied
  1443  Initial Examiner Review
  1444  Review of Reissue Oath or Declaration
  **
  1445  Reissue Application Examined in Same Manner as
  Original Application
  **
  1447  Additional Information, Affidavits, or Declarations
  Required
  1448  Fraud, Inequitable Conduct, or Duty of Disclosure
  Issues
  1449  Protest Filed in Reissue Where Patent Is in
  Interference
  1449.01  Concurrent Office Proceedings
  1450  Restriction and Election of Species
  1451  Divisional Reissue Applications
  1453  Amendments to Reissue Applications
  1455  Allowance and Issue
  1456  Reissue Review
  1460  Effect of Reissue
  1480  Certificates of Correction - Office Mistake
  1481  Applicant's Mistake
  1485  Handling of Request for Certificates of Correction
  1490  Disclaimers
  Errors in a patent may be corrected in four ways, namely
(1) by reissue, (2) by the issuance of a certificate of
correction which becomes a part of the patent, (3) by
disclaimer, and (4) by reexamination.

1401  Reissue

 35 U.S.C. 251. Reissue of defective patents.

  Whenever any patent is, through error without any
deceptive intention, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or drawing,
or by reason of the patentee claiming more or less than he
had a right to claim in the patent, the Commissioner shall,
on the surrender of such patent and the payment of the fee
required by law, reissue the patent for the invention
disclosed in the original patent, and in accordance with a
new and amended application, for the unexpired part of the
term  of  the  original  patent.  No  new  matter  shall  be
introduced into the application for reissue.

  The Commissioner may issue several reissued patents for
distinct and separate parts of the thing patented, upon
demand of the applicant, and upon payment of the required
fee for a reissue for each of such reissued patents.

  The provisions of this title relating to applications
for patent shall be applicable to applications for reissue
of a patent, except that application for reissue may be made
and sworn to by the assignee of the entire interest if the
application does not seek to enlarge the scope of the claims

of the original patent.

  No reissued patent shall be granted enlarging the scope
of the claims of the original patent unless applied for
within two years from the grant of the original patent.

1402  Grounds for Filing [R - 2]

  The most common bases for filing a reissue application
are (1) the claims are too narrow or too broad; (2) the
disclosure contains inaccuracies; (3) applicant failed to or
incorrectly claimed foreign priority; (4) applicant failed
to make reference to or incorrectly made reference to prior
copending applications.

  An attorney's failure to appreciate the full scope of
the invention was held to be an error correctable through
reissue in In re Wilder ,>736 F.2d 1516,< 222 USPQ 369 (Fed.
Cir. 1984). The Patent and Trademark Board of Appeals held
in Ex parte Scudder , 169 USPQ 814, 815 (Bd. App. 1971) that
35 U.S.C. 251 authorizes reissue application to correct
misjoinder of inventors where 35 U.S.C. 256 is inadequate.
Reissue may no longer be necessary under the facts in Ex
parte Scudder  in view of 35 U.S.C. 116 ** which provides,
inter alia ,

  "Inventors may apply for a patent jointly even though .
. . .(3) each did not make a contribution to the subject
matter of every claim in the patent."

  * >See also< 37 CFR 1.45**>(b)(3).<

  The correction of misjoinder of inventors in divisional
reissues has been held to be a ground for reissue: Ex parte
Scudder , 169 USPQ 814 (Bd. App. 1971). The filing of a
reissue application may not be necessary if the only change
is  to  correct  the  inventorship  since  this  can  be
accomplished under the provisions of 35 U.S.C. 256 and 37
CFR 1.324.

  A reissue was granted in Brenner  v.  State of Israel
,>400 F.2d 789<, 158 USPQ 584 (D.C. Cir. 1968), where the
only ground urged was failure to file a certified copy of
the original foreign application to obtain the right of
foreign priority under 35 U.S.C. 119 before the patent was
granted.

  Correction of failure to adequately claim priority in an
earlier filed copending U.S. Patent application was held a
proper ground for reissue * >.< Sampson  v.  Commr. of Pats.
, 195 USPQ 136, 137 (D.D.C. 1976). Reissue applicant's
failure to timely file a divisional application is not
considered to be error causing a patent granted on elected
claims to be partially inoperative by reason of claiming
less  than  they  had  a  right  to  claim;  and  thus  such
applicant's error is not correctable by reissue of the
original patent under 35 U.S.C. 251* >.< In re Orita, **
>550 F.2d 1277, 193 USPQ 145, 148 (CCPA 1977); see also In
re Mead , 581 F.2d 257, 198 USPQ 412 (CCPA 1978)* >;< In re
Watkinson ,>900 F.2d 230,< 14 USPQ2d 1407 (Fed. Cir. 1990).

1403  Diligence in Filing [R - 2]

  When a reissue application is filed within 2 years from
the date of the original patent, a rejection on the grounds

of lack of diligence or delay in filing the reissue should
not normally be made, in the absence of evidence to the
contrary* >.< Ex parte Lafferty , 190 USPQ 202 (Bd. App.
1975); but see Rohm & Haas Co.  v. Roberts Chemical Inc. ,
142 F. Supp. 499, 110 USPQ 93 (S.W. Va. 1956) * >rev'd< on
other grounds 245 F.2d 693, 113 USPQ 423 (4th Cir. 1957).

  However, as stated in the fourth paragraph of 35 U.S.C.
251,

  >"<No reissued patent shall be granted enlarging the
scope of the claims of the original patent unless applied
for  within  two  years  from  the  grant  of  the  original
patent.>"<  See  MPEP  §  1412.03  for  broadening  reissue
practice.

  *>See< In re Bennett , 226 USPQ 413, 416 (Fed. Cir* >.<
1985); In re Fotland , 128 USPQ 193 (Fed. Cir. 1985).

  A reissue filed on the 2 - year anniversary date is
considered filed within 2 years ** >. See< Switzer & Ward
v.  Sockman & Brady ,>333 F.2d 935,< 142 USPQ 226 (CCPA
1964)*>(< a similar rule in interferences>)<.

  A reissue application can be granted a filing date
without an oath or declaration, or the filing fee being
present in accordance with 37 CFR 1.53(d)(1). Applicant will
be given a period of time to provide the missing parts and
to pay the surcharge under 37 CFR 1.16(e). See MPEP §
1410.01.

1404  Submission of Papers Where Reissue Patent Is in
Litigation [R - 3]

  Applicants  and  protestors  (see  MPEP  §  1901.03)
submitting papers for entry in reissue applications of
patents involved in litigation are requested to mark the
outside envelope and the top right - hand portion of the
papers with the words "REISSUE LITIGATION" and with the
Office or group art unit of the Patent and Trademark Office
in which the reissue application is located; e.g., Assistant
Commissioner  for  Patents,  Board  of  Patent  Appeals  and
Interferences, Examining Group, Office of Publications, etc.
Protestor's  participation,  including  the  submission  of
papers, is limited in accordance with 37 CFR 1.291(c). Any
"Reissue Litigation" papers mailed to the Office should be
so marked and mailed to Box 7, >Assistant< Commissioner
*>for<  Patents**,  Washington,  D.C.  20231.  The  markings
preferably should be written in a bright color with a felt
point marker. Papers marked "REISSUE LITIGATION" will be
given special attention and expedited handling. See MPEP §
1442.01 through § 1442.04 for examination of litigation
related applications.

1410  Content of Reissue Application [R - 1]

 37 CFR 1.171.  Application for reissue.

  An application for reissue must contain the same parts
required  for  an  application  for  an  original  patent,
complying with all the rules relating thereto except as
otherwise provided, and in addition, must comply with the
requirements of the rules relating to reissue applications.
The application must be accompanied by a certified copy of
an abstract of title or an order for a title report

accompanied by the fee set forth in § 1.19(b)(4), to be
placed in the file, and by an offer to surrender the
original patent ( § 1.178).

  Applicants for reissue are required to file a reissue
oath or declaration which, in addition to complying with 37
CFR 1.63, must comply with 37 CFR 1.175. The oath or
declaration or filing fee may be submitted after the filing
date under 37 CFR 1.53>(d)(1)<.

1410.01  Reissue Applicant, Oath or Declaration, and Assent
of All Assignees [R - 1]

 37 CFR 1.172.  Applicants, assignees.

  (a) A reissue oath must be signed and sworn to or
declaration made by the inventor or inventors except as
otherwise provided (see § § 1.42, 1.43, 1.47), and must be
accompanied by the written assent of all assignees, if any,
owning an undivided interest in the patent, but a reissue
oath may be made and sworn to or declaration made by the
assignee of the entire interest if the application does not
seek to enlarge the scope of the claims of the original
patent.

  (b) A reissue will be granted to the original patentee,
his legal representative or assigns as the interest may
appear.

  The reissue oath must be signed and sworn to or
declaration made by all the inventors except as otherwise
provided in 37 CFR 1.42, 1.43, and 1.47 (see MPEP § 409).
Where the reissue application does not seek to enlarge the
scope of any of the claims of the original patent, the
reissue oath may be made and sworn to or declaration made by
the assignee of the entire interest.

  The reissue oath or declaration must be accompanied by
the written assent of all assignees. 35 U.S.C. 111>(a)< and
37 CFR 1.53>(b)(1)< provide, however, for according an
application a filing date if filed with a specification,
including claim(s), and any required drawings. Thus, where
an application is filed without an oath or declaration, or
without the assent of all assignees, if the application
otherwise complies with 37 CFR 1.53(b)>(1)< and the reissue
rules, the Application Branch will send out a notice of
missing parts setting a period of time for filing the
missing part and for payment of any surcharge required under
37 CFR 1.53(d)>(1)< and 1.16(e). The surcharge is required
because, until the assent is filed, the reissue oath or
declaration is defective, since it is not apparent that the
signatures thereon are proper absent an indication the
assignees have assented to the filing. See MPEP § 324 for
additional requirements of 37 CFR 3.73(b) for assignee
seeking to take action.

  Where no assignee exists, applicant should affirmatively
state that fact. If the file record is silent as to the
existence of an assignee, it will be presumed that no
assignee exists. Such presumption should be set forth by the
examiner in the first Office action alerting applicant to
the requirement. It should be noted that the mere filing of
a small entity statement in no way relieves applicant of
this requirement.

  Where the written assent of all the assignees to the
filing  of  the  reissue  application  cannot  be  obtained,
applicant may under appropriate circumstances petition to
the Office of **>Petitions< (MPEP § 1002.02(b)) for a waiver
under 37 CFR 1.183 with fee (37 CFR 1.17(*>h<)) of the
requirement of 37 CFR 1.172, to permit the acceptance of the
filing of the reissue application.

  The reissue application can then be examined, but will
not be allowed or issued without the assent of all the
assignees as required by 37 CFR 1.172; N. B. Fassett , O.G.
420, 1877 C.D. 32; James D. Wright , 10 O.G. 587, 1876 C.D.
217, 218.

  Form Paragraph 14.15 may be used to indicate that the
consent of the assignee is lacking.

¶ 14.15  Consent of Assignee to Reissue Lacking

  This application is objected to under 35 U.S.C. 251 as
lacking the written consent of all assignees owning an
undivided  interest  in  the  patent.  The  consent  of  the
assignee must be in compliance with 37 CFR 3.73(b). See MPEP
§ 324.

  The examiner must inspect the abstract of the title to
determine whether 37 CFR 1.172 has been complied with (note
MPEP § 201.01).

  The reissue will be granted to the original patentee,
his or her legal representatives or assigns as the interest
may appear.

1411  Form of Specification [R - 2]

 37 CFR 1.173. Specification.

  The  specification  of  the  reissue  application  must
include the entire specification and claims of the patent,
with the matter to be omitted by reissue enclosed in square
brackets; and any additions made by the reissue must be
underlined, so that the old and the new specifications and
claims  may  be  readily  compared.  Claims  should  not  be
renumbered and the numbering of claims added by reissue
should follow the number of the highest numbered patent
claim.  No  new  matter  shall  be  introduced  into  the
specification.

  The file wrappers of all reissue applications are
stamped "REISSUE" above the Serial Number on the front of
the file. "Reissue" also appears below the Serial Number on
the printed label on the file wrapper.

  Cut - up soft copies of the original patent, with only a
single column of the printed patent securely mounted on a
separate sheet of paper, may be used in preparing the
reissue specification and claims to be filed. It should be
noted, however, that amendments to the reissue application
should not be prepared in this way. After filing, the
specification and claims in the reissue application must be
amended by either (1) submitting a copy of a portion of the
description or an entire claim with all matter to be deleted
from the patent being placed between brackets and all matter
to  be  added  to  the  patent  being  underlined,  or  (2)
indicating the exact word or words to be stricken out or

inserted  and  the  precise  point  where  the  deletion  or
insertion is to be made must be specified in the amendment
as provided in 37 CFR 1.121(e) and (a). However, insertions
or deletions to the patent specification or claims made
prior  to  filing  should  be  underlined  or  bracketed,
respectively, as indicated in 37 CFR 1.173.

  Examples of the form for a twice - reissued patent
*>are< found in Re. 23,558 and Re. 28,488.

  Entire words or chemical formulas must be shown as being
changed. Change in only a part of a word or formula is not
permitted. Deletion of chemical formula should be shown by
brackets which are substantially larger and darker than any
in the formula.

1411.01  Certificate of Correction or Disclaimer in
Original Patent

  The applicant should include any changes, additions, or
deletions that were made by a Certificate of Correction to
the original patent grant in the reissue application without
underlining or bracketing. The examiner should also make
certain that all Certificate of Correction changes have been
properly incorporated into the reissue application.

  Certificate of Correction changes and disclaimer of
claim(s) under 37 CFR 1.321(a) should be made before reissue
changes without using underlining or brackets. Since these
are part of the original patent and were made before the
reissue was filed, they should show up in the printed
reissue document as part of the original patent; i.e., not
in italics or bracketed. If the changes are extensive and/or
applicant has submitted them improperly with underlining and
brackets, a clean copy of the specification with Certificate
of  Correction  changes  in  it  may  be  requested  by  the
examiner.

1411.02  New Matter [R - 2]

  New matter, that is, matter not present in the patent
sought  to  be  reissued,  is  excluded  from  a  reissue
application in accordance with 35 U.S.C. 251.

  The claims in the reissue application must also be for
matter which the applicant had the right to claim in the
original patent. New matter may exist by virtue of the
omission of a feature or of a step in a method. See United
States Industrial Chemicals, Inc.  v.  Carbide & Carbon
Chemicals Corp. , 315 U.S. 668, 53 USPQ 6 (1942).

  >Form Paragraph 14.22.01 may be used where new matter
has been added.

¶ 14.22.01  Rejection, 35 U.S.C. 251, New Matter

  Claim[1] rejected under 35 U.S.C. 251 as being based
upon new matter added to the patent for which reissue is
sought. The added material which is not supported by the
prior patent is as follows: [2]

 Examiner Note:

  1.  In bracket 2, fill in the applicable page and line
numbers and provide an explanation of your position, as

appropriate.

  2.  A rejection under 35 U.S.C. 112, first paragraph,
should also be made if the new matter is added to the claims
or is added to the specification and affects the claims. If
new matter is added to the specification and does not affect
the claims, an objection should be made based upon 35 U.S.C.
132 using form paragraph 7.28.<

1412  Content of Claims

  The content of claims in a reissue application is
somewhat limited as indicated in MPEP § 1412.01 through MPEP
§ 1412.03.

1412.01  Reissue Claims Must Be for Same General Invention
[R - 2]

  The reissue claims must be for the same invention as
that disclosed as being the invention in the original
patent, as required by 35 U.S.C. 251. This does not mean
that the invention claimed in the reissue must have been
claimed in the original patent, although this is evidence
that applicants considered it their invention. The entire
disclosure, not just the claim, is considered in determining
what the patentee objectively intended as his invention. The
proper test is ** "an essentially factual inquiry confined
to the objective intent manifested by the original patent."
>In re Amos , 953 F.2d 613, 618, 21 USPQ2d 1271, 1274 (Fed.
Cir. 1991) (quoting  In re Rowand526 F.2d 558, 560, 187 USPQ
487, 489 (CCPA 1975).< See also In re Mead , 581 F.2d 257,
198 187 USPQ 412 (CCPA 1978). ** >Some disclosure< in the
original patent *>should evidence< that applicant intended
to claim or that applicant considered the material now
claimed to be his or her invention.

  >A patentee may file a reissue application to permit
consideration of process claims which qualify for 35 U.S.C.
103(b) treatment if a patent is granted on an application
entitled to the benefit of 35 U.S.C. 103(b) without an
election having been made as a result of error without
deceptive intent. See MPEP § 706.02(n).<

1412.02  Recapture of Canceled Subject Matter [R - 2]

  A reissue will not normally be granted to "recapture"
claimed  subject  matter  deliberately  canceled  in  an
application to obtain a patent*> Ball Corp  v. United States
, 729 F.2d 1429, 221 USPQ 289, 295 (Fed. Cir. 1989);< In re
Willingham , 282 F.2d 353, 127 USPQ 211 (CCPA 1960). **>;<
In re Richman , 161 USPQ 359, 363, 364 (CCPA 1969); * In re
Wadlinger, **181 USPQ 826 (CCPA 1974). As *>stated< by the *
>Federal Circuit< in Ball **> : <

  The recapture rule bars the patentee from acquiring,
through reissue claims that are of the same  or broader
scope than those claims that were canceled from the original
application. On the other hand, the patentee is free to
acquire, through reissue, claims that are  narrower in scope
than the canceled claims. If the reissue claims are narrower
than the canceled claims, yet broader than the original
patent claims, reissue must be sought within 2 years after
the grant of the original patent.

  See MPEP § 1412.03.

  >A patentee may file a reissue application to permit
consideration of process claims which qualify for 35 U.S.C.
103(b) treatment if a patent is granted on an application
entitled to the benefit of 35 U.S.C. 103(b) without an
election having been made as a result of error without
deceptive intent. See MPEP § 706.02(n).<

1412.03  Broadening Reissue Claims [R - 3]

  35 U.S.C. 251 prescribes a 2 - year limit for filing
applications for broadening reissues:

  No reissue patent shall be granted enlarging the scope
of the original patent unless applied for within two years
from the grant of the original patent.

  A claim of a reissue enlarges the scope of the claims of
the patent if it is broader than such claims in any respect,
even though it may be narrower in other respects. For
example, if any amended or newly added claim contains within
its scope any conceivable apparatus or process which would
not have infringed the original patents, then that reissue
claim would be broader than the original patent claims.
Tillotson, Ltd.  v.  Walbro Corp., 831 F.2d 1033, 1037 n.2,
4 USPQ2d 1450, 1453 n. 2 (Fed. Cir. 1987);  In  re  Ruth ,
278 F.2d 729,126 USPQ 155, 156; (CCPA 1960);  In re Rogoff ,
261 F.2d 601 , 120 USPQ 185, 186, (CCPA 1958).

  If the reissue application is timely filed within two
years  of  the  original  patent  grant  and  the  applicant
indicates in the oath or declaration that the claims will be
broadened, then applicant may subsequently further broaden
the claims in the pending reissue prosecution, even if the
additional broadening occurs beyond the two year limit. In
re Doll,419 F.2d 925, 928, 164 USPQ 218, 220 (CCPA 1970).
See also  In re Bennett, 766 F.2d 524, 528, 226 USPQ 413,
416 (Fed. Cir. 1985) (in banc) (allowing correction, more
than two years after patent grant, of improperly executed
declaration to reissue application, filed within two years
after patent grant). However, failure by an applicant to
include an oath or declaration indicating a desire to seek
broadened claims within two years of the patent grant will
bar a subsequent attempt to broaden the claims after the two
year limit. > In re Graff, 42 USPQ2d 1471 (Fed. Cir. 1997)
(affirming rejection where reissue application was filed
within two years after the original patent grant, but
broadened claims were not filed until after the two year
limit);< In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. Cir.
1985) (under former version of 37 CFR 1.175, applicant
timely sought "no defect" reissue, but Court did not allow
attempt made beyond the two year limit to convert the
reissue into a broadening reissue) cert. denied 476 U.S.
1183 (1986).

  A reissue application is considered filed within 2 years
of the patent grant if filed on the 2 - year anniversary
date of the patent grant: see Switzer & Ward  v.  Sockman &
Brady , 142 USPQ 226 (CCPA 1964) for a similar rule in
interferences.

  Form  Paragraphs  14.12  and  14.13  may  be  used  in
rejections based on improper broadened reissue claims.

¶ 14.12  Rejection, 35 U.S.C. 251, Broadened Claims
After Two Years

  Claim  [1]  rejected  under  35  U.S.C.  251  as  being
broadened in a reissue application filed outside the two
year statutory period.  [2].

 Examiner Note:

  The claim limitations that broaden the scope should be
identified and explained in bracket 2. See MPEP § 706.03(x)
and § 1412.03.

¶ 14.13  Rejection, 35 U.S.C. 251, Broadened Claims
Filed by Assignee

  Claim  [1]  rejected  under  35  U.S.C.  251  as  being
improperly broadened in a reissue application made and sworn
to by the assignee and not the patentee.

1413  Drawings [R - 1]

 37 CFR 1.174. Drawings.

  (a) The drawings upon which the original patent was
issued may be used in reissue applications if no changes
whatsoever are to be made in the drawings. In such cases,
when the reissue application is filed, the applicant must
submit a temporary drawing which may consist of a copy of
the printed drawings of the patent or a photoprint of the
original drawings of the size required for original drawing.

  (b) Amendments which can be made in a reissue drawing,
that is, changes from the drawing of the patent, are
restricted.

  If transfer of the patent drawings to the reissue
application is desired, a letter requesting transfer of the
drawings from the patent file should be filed along with the
reissue application.

  If transfer of the original drawing is contemplated,
applicant must submit a copy of the original drawing.

  The drawings of the original patent may be used in lieu
of new drawings, provided that no alteration whatsoever is
to be made in the drawings, including canceling an entire
sheet.

  When the reissue case is ready for allowance, the
examining group makes the formal transfer of the original
drawing to the reissue case ** >, notation thereof being
entered  on  the  file  wrapper  of  the  patented  file.<
Additional sheets of drawings may be added, but no changes
can be made in the original patent drawings.

1414  Content of Reissue Oath or Declaration [R - 2]

 37 CFR 1.175. Reissue oath or declaration.

  (a) Applicants for reissue, in addition to complying with
the requirements of § 1.63, must also file with their

applications  a  statement  under  oath  or  declaration  as
follows:

  (1) When the applicant verily believes the original
patent to be wholly or partly inoperative or invalid,
stating such belief and the reasons why.

  (2) When it is claimed that such patent is so inoperative
or invalid "by reason of a defective specification or
drawing," particularly specifying such defects.

  (3) When it is claimed that such patent is inoperative or
invalid "by reason of the patentee claiming more or less
than he had a right to claim in the patent," distinctly
specifying the excess or insufficiency in the claims.

  (4) [Reserved]

  (5) Particularly specifying the errors relied upon, and
how they arose or occurred.

  (6) Stating that said errors arose "without any deceptive
intention" on the part of the applicant.

  (7) Acknowledging the duty to disclose to the Office all
information  known  to  applicants  to  be  material  to
patentability as defined in § 1.56.

  (b) Corroborating affidavits or declarations of others
may be filed and the examiner may, in any case, require
additional  information  or  affidavits  or  declarations
concerning the application for reissue and its object.

  The reissue oath or declaration is an essential part of
a reissue application and must be filed with the application
or within the time set under 37 CFR 1.53*>(d)<(1). The
question  of  the  sufficiency  of  the  reissue  oath  or
declaration filed under 37 CFR 1.175 must in each case be
reviewed and decided personally by the primary examiner (see
MPEP § 1414.03).

  Reissue oaths or declarations must point out very
specifically what the defects are and how and when the
errors arose, and how and when errors were discovered. If
additional defects or errors are discovered after filing and
during the examination of the application, a supplemental
reissue oath or declaration must be filed pointing out such
defects or errors and how and when they arose and how and
when they were discovered. Any change or departure from the
original specification or claims represents an "error" in
the  original  patent  under  35  U.S.C.  251  and  must  be
addressed in the original, or a supplemental, reissue oath
or declaration under 37 CFR 1.175. The statements in the
oath or declaration must be of facts and not conclusions.
All reissue oaths, in addition to complying with sections
(a)(1) and (a)(2) and/or (a)(3), mus  t  also comply with
sections (a)(5), (a)(6), and (a)(7).

  The reissue oath or declaration must, as stated in 37
CFR 1.175, also comply with 37 CFR 1.63, including making
averments required by 37 CFR 1.63(b) that applicants for
reissue (1) have reviewed and understand the contents of the
specification, including the claims, as amended by any
amendment  specifically  referred  to  in  the  oath  or
declaration; (2) believe the named inventor or inventors to

be the original and the first inventor or inventors of the
subject matter which is claimed and for which a patent is
sought; and (3) acknowledge the duty to disclose to the
Office all information known to the person to be material to
patentability as defined in 37 CFR 1.56 and 1.175(a)(7). See
also MPEP § 602.

  **

1414.01  Reissue Oath or Declaration Under 37 CFR
1.175(a)(1), (a)(2), and (a)(3) [R - 2]

  Reissue oaths or declarations, ** must comply with
section (a)(1) and the appropriate sections (a)(2) and/or
(a)(3). All reissue oaths or declarations must, in addition,
comply with sections (a)(5), (a)(6) and, ** (a)(7).

  Subsection (a)(1) requires a statement that "applicant
verily believes the original patent to be wholly or partly
inoperative or invalid," and in addition, "the reasons why."
Applicant must acknowledge the existence of a defect in the
specification, drawings, or claims which causes the original
patent to be defective. In re Wilder**,>736 F.2d 1516,< 222
USPQ 369 (Fed. Cir. 1984). Subsection (a)(2) applies when it
is claimed that such patent is so inoperative or invalid "by
reason  of  a  defective  specification  or  drawing";  and
requires applicant to particularly specify such defects.
Subsection (a)(3) applies when it is claimed that such
patent is inoperative or invalid "by reason of patentee
claiming more or less than he had a right to claim in the
patent"; and requires applicant, in addition, to distinctly
specify the excess or insufficiency in the claims. Any
change or departure from the original specification or
claims represents an "error" in the original patent under 35
U.S.C.  251  and  must  be  addressed  in  the  original  or
supplemental reissue oath or declaration. The reissue oath
or declaration should specify how the reissue overcomes the
defect in the original patent; e.g., describe how the newly
presented  or  amended  claims  differ  from  those  of  the
original patent.

  Form Paragraphs 14.01 and 14.14 (see MPEP § 1444) may be
used where the reissue oath or declaration does not state
why  the  patent  is  wholly  or  partially  inoperative  or
invalid.

¶ 14.01  Defective Reissue Oath/Declaration, 37 CFR
1.175(a)(1)

  The  reissue  oath  or  declaration  filed  with  this
application is defective because it fails to contain a
statement that the applicant believes the original patent to
be wholly or partly inoperative or invalid, as required
under 37 CFR 1.175(a)(1).

 Examiner Note:

  1.  Use this paragraph when applicant fails to allege a
defect.

  2.  Paragraph 14.14 must follow.

  Form Paragraph 14.02 may be used where the reissue oath
or declaration fails to specify the nature of the errors in
the  patent,  including  defects  in  the  specification  or

drawings and the excesses or insufficiencies in the claims.

¶  14.02  Oath Fails To Specify Excess/Insufficiencies
and/or  Defects,  i.e.,  Errors  in  the  Patent,  37  CFR
1.175(a)(2) or (a)(3)

  The  reissue  oath  or  declaration  filed  with  this
application is defective because it fails to describe the
actual  error(s)  in  the  patent,  i.e.,  it  fails  to
particularly specify the "defects" in the specification or
drawings, 37 CFR 1.175(a)(2); and /or it fails to distinctly
specify the "excess or insufficiency" in the claims, 37 CFR
1.175(a)(3). [1]

 Examiner Note:

  1.  Use this paragraph when applicant fails to point
out the excess or insufficiency in the claims and/or the
defect in the specification or drawings. Applicant must
point out every actual error in the patent (every "defect"
and "excess or insufficiency"). The examiner should identify
the deficiencies in bracket 1.

  2.  Paragraph 14.14 must follow.

  Failure to assert a difference in scope between the
original  and  reissue  claims  in  the  reissue  oath  or
declaration has been held to be a fatal defect. The patent
statutes afford no authority for the reissue of a patent
merely to add claims of the same scope as those already
granted: In re Wittry ,>489 F.2d 1299,< 180 USPQ 320, 323
(CCPA 1974).

  **

1414.03  Requirements of 37 CFR 1.175(a)(5)

  All reissue oaths or declarations must comply with 37
CFR  1.175(a)(5)  by  "particularly  specifying  the  errors
relied  on,  and  how  they  arose  or  occurred".  37  CFR
1.175(a)(5) has two specific requirements, both of which
must be complied with in the reissue oath or declaration.
This section requires applicant to particularly specify (1)
"the  errors  relied  upon"  and  (2)  "how  they  arose  or
occurred."

  If applicant is seeking to amend claims in view of
particular prior art or other information, the reissue oath
or declaration must point out such prior art or other
information and "the errors relied on" in view of such prior
art or other information. More specifically, the oath or
declaration, in appropriate circumstances, might state that
some or all claims are deemed to be too broad and invalid in
view of references X and Y. Where appropriate, such as where
the pertinence of the new references X and Y are not
evident, more specificity about "the errors relied on"
should be provided.

  It is particularly important that the reissue oath or
declaration specify in detail how the errors arose or
occurred. Included are inadvertent errors in conduct; i.e.,
actions taken by the applicant, the attorney, or others
before the original patent issued, which actions are alleged
to have caused the defect in the patent. "How" includes when
and under what circumstances the errors arose or occurred.

This means that the reissue oath or declaration must specify
the manner in which "the errors" "arose or occurred" Hewlett
- Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 11
USPQ2d 1750 (Fed. Cir. 1989); In re Weiler et al., 229 USPQ
673 (Fed. Cir. 1986). For example, the reissue oath or
declaration must indicate when and the manner in which the
reissue applicant became aware of the prior art or other
information and of the error in the patent; such as, for
example, through discovery of prior art or other information
subsequent to issuance of patent, knowledge of prior art or
other  information  before  issuance  of  patent  with
significance being brought out after issuance by third party
through allegations made in litigation involving the patent
, etc. It is particularly important that the reissue oath or
declaration adequately specify how the errors arose or
occurred. If the reissue oath or declaration does not
particularly specify "how," i.e., the manner in which the
errors arose or occurred, the Office will be unable to
adequately  evaluate  reissue  applicant's  statement  in
compliance with 37 CFR 1.175(a)(6) that the "errors arose
`without  any  deceptive  intention'  on  the  part  of  the
applicant"; see MPEP § 1414.04.

  Form Paragraph 14.03 may be used where the reissue oath
or declaration fails to comply with 37 CFR 1.175(a)(5).

¶ 14.03  Oath Fails To Specify How Errors Arose, 37 CFR
1.175(a)(5)

  The  reissue  oath  or  declaration  filed  with  this
application is defective because it fails to particularly
specify the errors and/or how the errors relied upon arose
or occurred as required under 37 CFR 1.175(a)(5). Included
are inadvertent errors in conduct, i.e., actions taken by
the applicant, the attorney or others, before the original
patent issued, which are alleged to be the cause of the
actual errors in the patent. This includes how and when the
errors in conduct arose or occurred, as well as how and when
these  errors  were  discovered.  Applicant's  attention  is
directed to Hewlett - Packard v. Bausch & Lomb,11 USPQ2d
1750, 1758 (Fed. Cir. 1989).  [1].

 Examiner Note:

  1. Use this paragraph if applicant fails to specify the
error(s) in conduct and/or fails to specify the manner and
details of how the errors in conduct occurred and when, and
the manner in which they were discovered by applicant. The
examiner  should  identify  the  specific  deficiencies  in
bracket 1.

  2. Paragraph 14.14 must follow.

1414.04  Requirements of 37 CFR 1.175(a)(6)

  37 CFR 1.175(a)(6) specifically requires that all reissue
oaths or declarations contain the averment "that said errors
arose `without any deceptive intention' on the part of the
applicant." This requirement for an absence of "deceptive
intention" should not be overlooked, since it is a necessary
part of any reissue application. The examiner will determine
whether  the  reissue  oath  or  declaration  contains  the
required  averment  that  the  "errors  arose  `without  any
deceptive  intention',"  although  the  examiner  will  not
comment as to whether it appears there was in fact deceptive

intention or not (see MPEP § 2022.05).

  Form Paragraph 14.04 may be used where the reissue oath
or declaration does not comply with 37 CFR 1.175(a)(6).

¶ 14.04  Oath Lacks Statement of No Deceptive Intent,
37 CFR 1.175(a)(6)

  The  reissue  oath  or  declaration  filed  with  this
application fails to state that the errors arose "without
any deceptive intention" on the part of the applicant, as
required under 37 CFR 1.175(a)(6).

 Examiner Note:

  Paragraph 14.14 must follow.

1414.05  Requirements of 37 CFR 1.175(a)(7) [R - 2]

  37 CFR 1.175(a)(7) **>parallels< the provisions requiring
the same acknowledgment of the duty of disclosure in the
oath or declaration in reissue applications as in nonreissue
applications.  Reissue  oaths  or  declarations,  whether
original or supplemental, ** should be checked by the
examiner for compliance with 37 CFR 1.175(a)(7).

1415  Reissue Filing and Issue Fees [R - 2]

  The applicant is permitted to present every claim that
was issued in the original patent for the basic filing fee.
In addition to the basic filing fee, filing or later
presentation of each independent claim which is in excess of

 the number of independent claims in the original patent
requires a fee and in addition filing or later presentation
of each claim (whether independent or dependent) in excess
of 20 and also in excess of the number of claims in the
original patent requires a fee. The Office has prepared a
form which is designed to assist in the correct calculation
of reissue filing fees.

 **  Double Click here to see the image  **

1416  Offer to Surrender and Return Original Patent [R -
2]

 37 CFR 1.178. Original patent.

  The application for a reissue must be accompanied by an
offer to surrender the original patent. The application
should also be accompanied by the original patent, or if the
original  is  lost  or  inaccessible,  by  an  affidavit  or
declaration to that effect. The application may be accepted
for examination in the absence of the original patent or the
affidavit or declaration, but one or the other must be
supplied before the case is allowed. If a reissue be
refused, the original patent will be returned to applicant
upon his request.

  The examination of the reissue application on the merits
is made even though the offer to surrender the original
patent, or an affidavit or declaration to the effect that
the original is lost or inaccessible, has not been received.
However, in such case the examiner should require one of the

above in the first action. Either the original patent, or an
affidavit or declaration as to loss or inaccessibility of
the original patent, must be received before the examiner
can allow the reissue application.

  Form Paragraph 14.05 may be used to require an offer to
surrender the original patent.

 ¶ 14.05 No Offer To Surrender Original Patent

  This reissue application was filed without the required
offer to surrender the original patent or, if the original
is lost or inaccessible, an affidavit or declaration to that
effect. The original patent, or an affidavit or declaration
as to loss or inaccessibility of the original patent, must
be received before the reissue application can be allowed.
See 37 CFR 1.178.

 Examiner Note:

  The examination of the reissue application on the merits
is made even though these requirements have not been met.
This requirement should be made in the first Office action.

  >Form Paragraph 14.05.01 may be used to notify applicant
that the original patent or an affidavit as to loss is
required before allowance.

¶ 14.05.01  Original Patent Required Prior to Allowance

  The original patent, or an affidavit or declaration as
to loss or inaccessibility of the original patent, must be
received before this reissue application can be allowed. See
37 CFR 1.178.

 Examiner Note:

  1.  This form paragraph may be used in an Office action
to remind applicant of the requirement for submission of the
original patent before allowance.

  2.  It may also be used in an Ex parte Quayle  action
to require such submission.

  3.  Do not use this form paragraph in an examiner's
amendment. The original patent or declaration of loss  must
be filed prior to mailing of the "Notice of Allowability".<

  If applicant requests the return of the patent on
abandonment of the reissue application, it will be sent to
the applicant by the ** examining group.

  An applicant may request that a surrendered original
patent be transferred from an abandoned reissue application
to a continuation or divisional reissue application. The
clerk making the transfer should note the transfer on the
"Contents" of the abandoned application. The application
number and filing date of the reissue application to which
it is transferred must be included in the notation. Where
the original patent grant is not submitted with the reissue
application as filed, patentee should include a copy of the
printed original patent. Presence of a copy of the original
patent is useful for the calculation of the reissue filing
fee and for the verification of other identifying data.

1417  Claim for Benefit Under 35 U.S.C. 119>(a) - (d)<
[R - 1]

  A "claim" for the benefit of an earlier filing date in a
foreign country under 35 U.S.C. 119>(a) - (d)< must be made
in a reissue application even though such a claim was made
in the application on which the original patent was granted.
However,  no  additional  certified  copy  of  the  foreign
application is necessary. The procedure is similar to that
for "Continuing Applications" in MPEP § 201.14(b).

  The heading on printed copies will not be carried
forward to the reissue from the original patent. Therefore,
it is important that the file wrapper be endorsed under
"Claims Foreign Priority."

1418  Information Disclosure Statement and Other
Information [R - 3]

  37 CFR 1.175(a)(7), parallels the requirements of 37 CFR
1.56 and requires acknowledgment in the reissue oath or
declaration of the "duty to disclose to the Office all
information known to the applicants to be material to
patentability  as  defined  in  §  1.56."  >Form  Paragraph
14.11.01 may be used to remind applicant of the duty to
disclose any litigation information which is material to
patentability.

¶ 14.11.01  Duty Of Disclosure Reminder

  Applicant is reminded of the continuing obligation under
37 CFR 1.56, to timely apprise the Office of any litigation
information,  or  other  prior  or  concurrent  proceeding,
involving  Patent  No.  [1]  ,  which  is  material  to
patentability of the claims under consideration in this
reissue  application.  This  obligation  rests  with  each
individual associated with the filing and prosecution of
this application for reissue. See MPEP § § 1404, 1442.01 and
1442.04.

 Examiner Note:

  This form paragraph is to be used in the first action in
a reissue application.<

  Reissue applicants may utilize 37 CFR 1.97 and 1.98 to
comply with the duty of disclosure required by 37 CFR 1.56.
This does not, however, relieve applicant of the duties
under 37 CFR 1.175 of, for example, "particularly specifying
the errors relied upon, and how they arose or occurred" in
the reissue oath or declaration, or particularly specifying
how and when applicant became aware of and/or came to
appreciate  the  relevancy  of  such  prior  art  or  other
information.

  While 37 CFR 1.97(b) provides for filing an information
disclosure statement within 3 months of the filing of an
application or before the mailing date of a first Office
action,  reissue  applicants  are  encouraged  to  file
information disclosure statements at the time of filing in
order that such statements will be available to the public
during the 2 - month period provided by 37 CFR 1.176.

  37 CFR 1.175(b) provides that,

  "(b) Corroborating affidavits or declarations of others
may be filed and the examiner may, in any case, require
additional  information  or  affidavits  or  declarations
concerning the application for reissue and its object."

  Thus,  applicant  may  under  37  CFR  1.175(b)  file
"corroborating affidavits or declarations of others . .
concerning the application for reissue and its objects." It
also provides that "the examiner may, in any case, require
additional  information  or  affidavits  or  declarations
concerning the application for reissue or its object."

1430  Reissue Files Open to the Public and Notice of
Filing Reissue Announced in  Official Gazette

  37 CFR 1.11(b) provides that all reissue applications
filed after March 1, 1977 "are open to inspection by the
general public, and copies may be furnished upon paying the
fee therefor. The filing of reissue applications will be
announced in the Official Gazette ." The announcement gives
interested members of the public an opportunity to submit to
the examiner information pertinent to the patentability of
the  reissue  application.  The  announcement  includes  the
filing  date,  reissue  application  and  original  patent
numbers, title, class and subclass, name of the inventor,
name of the owner of record, name of the attorney or agent
of record, and the examining group to which the reissue
application is initially assigned. A group director or other
appropriate  Office  official  may,  under  appropriate
circumstances, postpone access to or the making of copies of
a reissue application; such as, for example, to avoid
interruption of the examination or other review of the
application  by  an  examiner.  Those  reissue  applications
already on file prior to March 1, 1977 are not automatically
open to inspection, but a liberal policy is followed by the
Office of the Assistant Commissioner for Patents in granting
petitions for access to such applications.

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

 (1)  The filing of all reissue applications, including
those filed under 37 CFR 1.60 and 1.62, will be announced in
the Official Gazette and will include certain identifying
data as specified in 37 CFR 1.11(b). Any member of the
general public may request access to a particular reissue
application filed after March 1, 1977. Since no record of
such request is intended to be kept, an oral request will
suffice.

 (2)  The reissue application files will be maintained in
the  examining  groups  and  inspection  thereof  will  be
supervised by group personnel. Although no general limit is
placed on the amount of time spent reviewing the files, the
Office may impose limitations, if necessary; e.g., where the
application is actively being processed.

 (3)  Where  the  reissue  application  has  left  the
examining group for administrative processing, requests for
access should be directed to the appropriate supervisory
personnel in the Division or Branch where the application is
currently located.

 (4)  Requests for copies of papers in the reissue
application file must be in writing and addressed to the

Commissioner of Patents and Trademarks, Washington, D.C.
20231 and may be either mailed or delivered to the Office
mailroom. The price for copies made by the Office is set
forth in 37 CFR 1.19.

1431  Notice in Patent File

 37 CFR 1.179. Notice of reissue application.

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

  Whenever a reissue application is filed, a Form PTO -
445 notice is placed in the patented file identifying the
reissue application by application number and its filing
date. The pertinent data is filled in by the Application
Branch. When divisional or continuation reissue applications
are filed, a separate form for each reissue application is
placed in the original patented file. When the reissue is
issued or abandoned, it is important that the Record Room be
informed by the examining group clerical staff of that fact
by written memo. Record Room personnel will update the Form
PTO - 445 in the patented file.

1440  Examination of Reissue Application

 37 CFR 1.176. Examination of reissue.

  An original claim, if re - presented in the reissue
application, is subject to reexamination, and the entire
application will be examined in the same manner as original
applications,  subject  to  the  rules  relating  thereto,
excepting that division will not be required. Applications
for reissue will be acted on by the examiner in advance of
other applications, but not sooner than two months after
announcement of the filing of the reissue application has
appeared in the  Official Gazette.

  37 CFR 1.176 provides that an original claim, if re -
presented in a reissue application, will be subject to
reexamination and, along with the entire application, will
be fully examined in the same manner subject to the same
rules relating thereto, as if being presented for the first
time in an original application; except that division will
not be required. See MPEP § 1450 and § 1451. Reissue
applications are normally examined by the same examiner who
issued the parent patent. In addition, the application will
be examined with respect to compliance with 37 CFR 1.171 -
1.179 relating specifically to reissue applications; for
example, the reissue oath or declaration will be carefully
reviewed for compliance with 37 CFR 1.175. See MPEP § 1444
for handling applications in which the oath or declaration
lacks compliance with 37 CFR 1.175. Reissue applications
with related litigation will be acted on by the examiner
before any other special applications, and will be acted on
immediately by the examiner, subject only to the 2 - month
delay after publication for examining reissue applications.

  The original patent file wrapper should always be
ordered and reviewed when examining a reissue application
thereof.

1441  Two - Month Delay Period

  37 CFR 1.176 provides that reissue applications will be
acted on by the examiner in advance of other applications;
i.e.,  "special",  but  not  sooner  than  2  months  after
announcement of the filing of the reissue has appeared in
the Official Gazette . The 2 - month delay is provided in
order that members of the public may have time to review the
reissue application and submit pertinent information to the
Office before the examiner's action. However, as set forth
in MPEP § 1901.04, the public should be aware that such
submissions should be made as early as possible since under
certain circumstances the 2 - month delay period of 37 CFR
1.176 may be waived. The Office will entertain petitions
under 37 CFR 1.183 which are accompanied by the fee (37 CFR
1.17(h))  to  waive  the  delay  period  of  37  CFR  1.176.
Appropriate reasons for requesting such a waiver might be,
for example, that litigation has been stayed to permit the
filing  of  the  reissue  application.  Such  petitions  are
decided by the Assistant Commissioner for Patents.

  Since  the  examining  group  to  which  the  reissue
application is assigned is listed in the Official Gazette
notice of filing of the reissue application, the indicated
examining group should retain the application file for 2
months after the date of the Official Gazette notice before
transferring the reissue application under the procedure set
forth in MPEP § 903.08(d).

1442  Special Status

  All reissue applications are taken up "special", and
remain "special" even though applicant does not respond
promptly.

  All reissue applications, except those under suspension
because of litigation, will be taken up for action ahead of
other "special" applications; this means that all issues not
deferred will be treated and responded to immediately.
Furthermore, reissue applications involved in "litigation"
will be taken up for action in advance of other reissue
applications.

1442.01  Litigation Related Reissues

  During initial review, the examiner should determine
whether the patent for which the reissue has been filed is
involved  in  litigation  and  if  so  the  status  of  that
litigation. If the examiner becomes aware of litigation
involving  the  patent  sought  to  be  reissued  during
examination of the reissue application, and applicant has
not made the details regarding that litigation of record in
the reissue application, the examiner, in the next Office
action, will inquire regarding the specific details of the
litigation.

  Form Paragraph 14.06 may be used for such an inquiry.

¶ 14.06  Litigation Related Reissue

  The patent sought to be reissued by this application [1]
involved in litigation. Any documents and/or materials which
would  be  material  to  patentability  of  this  reissue
application are required to be made of record in response to

this action.

  Due  to  the  related  litigation  status  of  this
application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37
CFR 1.136(a) WILL NOT BE PERMITTED DURING THE PROSECUTION OF
THIS APPLICATION.

 Examiner Note:

  In bracket 1, insert either -is- or -has been-.

  If the additional details of the litigation appear to be
material to examination of the reissue application, the
examiner may make such additional inquiries as necessary and
appropriate under 37 CFR 1.175(b).

  Where there is litigation, and it has not already been
done, the examiner should place a prominent notation on the
application file to indicate the litigation, (1) at the
bottom of the face of the file in the box just to the right
of the box for the retention label, and (2) on the pink
Reissue Notice Card form.

  Applicants will normally be given 1 month to respond to
Office actions in all reissue applications which are being
examined during litigation, or after litigation had been
stayed, dismissed, etc., to allow for consideration of the
reissue by the Office. This 1 - month period may be extended
only upon a showing of clear justification pursuant to 37
CFR 1.136(b). The Office action will inform applicant that
the provisions of 37 CFR 1.136(a) are not available. Of
course, up to 3 months may be set for response if the
examiner determines such a period is clearly justified.

1442.02  Litigation Not Stayed

  In order to avoid duplication of effort, action in
reissue applications in which there is an indication of
concurrent litigation will be suspended automatically unless
and until it is evident to the examiner, or the applicant
indicates, that: (1) a stay of the litigation is in effect;
(2) the litigation has been terminated; (3) there are no
significant overlapping issues between the application and
the litigation; or (4) it is applicant's desire that the
application be examined at that time.

  Form Paragraphs 14.08 - 14.10 may be used to deny stays.

¶ 14.08  Action  Not  Stayed  -  Related  Litigation
Terminated

  Since the litigation related to this reissue application
is terminated and final, action in this reissue application
will NOT be stayed. Due to the related litigation status of
this reissue application, EXTENSIONS OF TIME UNDER THE
PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.

¶ 14.09  Action Not Stayed - Related Litigation Not
Overlapping

  While there is concurrent litigation related to this
reissue application, action in this reissue application will
NOT be stayed because there are no significant overlapping
issues between the application and that litigation. Due to
the related litigation status of this reissue application,

EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a)
WILL NOT BE PERMITTED.

¶ 14.10  Action Not Stayed - Applicant's Request

  While there is concurrent litigation related to this
reissue application, action in this reissue application will
NOT be stayed because of applicant's request that the
application be examined at this time. Due to the related
litigation status of this reissue application, EXTENSIONS OF
TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE
PERMITTED.

  Form Paragraph 14.11 may be used to stay action in a
reissue application with concurrent litigation.

¶ 14.11  Action Stayed - Related Litigation

  In view of concurrent litigation, and in order to avoid
duplication of effort between the two proceedings, action in
this reissue application is STAYED until such time as it is
evident to the examiner that (1) a stay of the litigation is
in effect, (2) the litigation has been terminated, (3) there
are  no  significant  overlapping  issues  between  the
application and the litigation, or (4) applicant requests
that the application be examined.

1442.03  Litigation Stayed

  All reissue applications, except those under suspension
because of litigation, will be taken up for action ahead of
other "special" applications; this means that all issues not
deferred will be treated and responded to immediately .
Furthermore,  reissue  applications  involved  in  "stayed
litigation" will be taken up for action in advance of other
reissue  applications.  Great  emphasis  is  placed  on  the
expedited  processing  of  such  reissue  applications.  The
courts are especially interested in expedited processing in
the Office where litigation is stayed.

  In reissue applications with "stayed litigation," the
Office will entertain petitions under 37 CFR 1.183, which
are accompanied by the fee under 37 CFR 1.17(h) to waive the
2 - month delay period under 37 CFR 1.176.

  Time - monitoring systems have been put into effect
which will closely monitor the time used by applicants,
protestors, and examiners in processing reissue applications
of patents involved in litigation in which the court has
stayed further action. Monthly reports on the status of
reissue applications with related litigation are required
from each examining group. Delays in reissue processing are
to be followed up.

  The purpose of these procedures and those deferring
consideration of certain issues, until all other issues are
resolved  or  the  application  is  otherwise  ready  for
consideration  by  the  Board  of  Patent  Appeals  and
Interferences (note MPEP § 1448), is to reduce the time
between filing of the reissue application and final action
thereon, while still giving all parties sufficient time to
be heard.

  Requests for stays in reissues where litigation has been
stayed may be answered with Form Paragraph 14.07.

¶ 14.07  Action Not Stayed - Related Litigation Stayed

  While there is concurrent litigation related to this
reissue application, action in this reissue application will
NOT be stayed because a stay of that litigation is in effect
for the purpose of awaiting the outcome of these reissue
proceedings. Due to the related litigation status of this
reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS
OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.

1442.04  Litigation Involving Patent

  Where the patent for which reissue is being sought is,
or has been, involved in litigation which raised a question
material to patentability of the reissue application, such
as the validity of the patent, or any allegation of fraud or
inequitable conduct, the existence of such litigation must
be brought to the attention of the Office by the applicant
at the time of, or shortly after, filing the application,
either in the reissue oath or declaration, or in a separate
paper, preferably accompanying the application as filed.
Litigation begun after filing of the reissue application
also should be promptly brought to the attention of the
Office. The details and documents from the litigation,
insofar as they are "material to patentability" of the
reissue application as defined in 37 CFR 1.56(b), should
accompany the application as filed, or be submitted as
promptly thereafter as possible (note MPEP § 1414.05). For
example, the defenses raised against validity of the patent,
or  charges  of  fraud  or  inequitable  conduct  in  the
litigation, would normally be "material to patentability" of
the reissue application. It would, in most situations, be
appropriate to bring such defenses to the attention of the
Office by filing in the reissue application a copy of the
Court papers raising such defenses. As a minimum, the
applicant should call the attention of the Office to the
litigation, the existence and nature of any allegations
relating to validity and/or "fraud" or "inequitable conduct"
relating  to  the  original  patent,  and  the  nature  of
litigation  materials  relating  to  these  issues.  Enough
information should be submitted to clearly inform the Office
of the nature of these issues so that the Office can
intelligently evaluate the need for asking for further
materials  in  the  litigation.  Thus,  the  existence  of
supporting materials which may substantiate allegations of
invalidity or "fraud" or "inequitable conduct" should, at
least, be fully described, or submitted. The Office is not
interested  in  receiving  voluminous  litigation  materials
which are not relevant to the Office's consideration of the
reissue application. The status of the litigation should be
updated in the reissue application as soon as significant
events happen in the litigation.

  When a reissue application is filed, the examiner should
determine whether the original patent has been adjudicated
by a court. The decision of the court and also other papers
in  the  suit  may  give  information  essential  to  the
examination of the reissue. The patented file will contain
notices of the filing and termination of infringement suits
on the patent. Such notices are required by law to be filed
by the clerks of the District Courts. These notices do not
indicate if there was an opinion by the court, nor whether a
decision was published. Shepard's Federal Citations and the
cumulative digests of the United States Patents Quarterly ,

both of which are in the Office Law Library, contain tables
of patent numbers giving the citation of published decisions
concerning  the  patent.  Where  papers  are  not  otherwise
conveniently obtainable, the applicant may be requested to
supply copies of papers and records in suits, or the Office
of the Solicitor may be requested to obtain them from the
court. The information thus obtained should be carefully
considered for its bearing on the proposed claims of the
reissue, particularly when the reissue application was filed
in view of the holding of a court.

  If the examiner becomes aware of litigation involving
the patent sought to be reissued during examination of the
reissue application, and applicant has not made the details
regarding  that  litigation  of  record  in  the  reissue
application, the examiner, in the next Office action, should
inquire regarding the same. The following paragraph may be
used for such an inquiry:

  "It has come to the attention of the examiner that
the patent sought to be reissued by this application (is)
(has been) involved in litigation. Any documents and/or
materials, including the defenses raised against validity,
or against enforceability because of fraud or inequitable
conduct, which would be material to patentability of this
reissue application are required to be made of record in
response hereto. See 37 CFR 1.175(b)."

  If the additional details of the litigation appear to be
material to patentability of the reissue application, the
examiner may make such additional inquiries as necessary and
appropriate under 37 CFR 1.175(b). See MPEP § 1447.

1442.05  Cases in Which Stays Were Considered

  District Courts are staying litigation in significant
numbers of cases to allow for consideration of a reissue
application by the Office. These cases are listed here for
the convenience of the courts and the public.

  In most instances, the reissue - reexamination procedure
is instituted by a patent owner who voluntarily files a
reissue application as a consequence of related patent
litigation. However, some District Courts have required a
patentee - litigant to file a reissue application, for
example:

  Alpine Engineering Inc. v. Automated Building Components
Inc. , BNA/PTCJ 367: A - 12 (S.D. Fla. 1978);

  Lee - Boy Manufacturing Co. v. Puckett , 202 USPQ 573
(D. Ga. 1978);

  Choat v. Rome Industries Inc. et al. , 203 USPQ 549
(N.D. Ga. 1979).

  Other courts have declined to so order, for example:

  Bielomatik  Leuze  &  Co.,  v.  Southwest  Tablet
Manufacturing Co. , 204 USPQ 226 (N.D. Texas 1979);

  RCA Corp. v. Applied Digital Data Systems Inc. , 201
USPQ 451 (D. Del. 1979);

  Antonious v. Kamata - Ri & Co. Ltd. , 204 USPQ 294 (D.

Md. 1979).

  Despite the voluntariness of a reissue filing, under
present practice, only a patentee or his assignee may file a
reissue patent application.

1442.05(a)  Stays Granted

  "Stays" were ordered in the following sampling of
published "decisions".

  PIC Inc. v. Prescon Corp. , 195 USPQ 525 (D. Del. 1977).

  Fisher Controls Co. Inc. v. Control Components, Inc. ,
196 USPQ 817 (S.D. Iowa 1977). (Note also 203 USPQ 1059
denying discovery during the stay).

  Alpine Engineering Inc. v. Automated Building Components
Inc. , BNA/PTCJ 367: A - 12 (S.D. Fla. 1978).

  (Dismissed a Declaratory Judgment suit with order for
patentee  to  seek  reissue  in  the  Patent  and  Trademark
Office).

  AMI Industries, Inc. v. E. A. Industries, Inc. , 204
USPQ 568 (W.D. N.C.1978). (With dicta that if suit had not
been dismissed proceedings would have been stayed for Office
consideration).

  Reynolds Metal Co. v. Aluminum Co. of America , 198 USPQ
529 (N.D. Ind. 1978).

  Sauder Industries, Inc. v.  Carborundum Co. , 201 USPQ
240 (N.D. Ohio, 1978).

  Rohm and Haas Co. v. Mobil Oil Corp. , 201 USPQ 80 (D.
Del.  1978).  (With  provision  for  limited  discovery  on
allegations of fraud for Office's benefit).

  Lee - Boy Manufacturing Co. v. Puckett , 202 USPQ 573
(D. Ga. 1978). (Reissue ordered after discovery and during
wait for trial).

  Fas - Line Sales & Rentals, Inc. v. E - Z Lay Pipe Corp.
, 203 USPQ 497 (W.D. Okla. 1979).

  Choat  v. Rome Industries Inc. , 203 USPQ 549 (N.D. Ga.
1979) directed patentee to file reissue application.

  In re Certain High - Voltage Circuit Interrupters and
Components Thereof , 204 USPQ 50 (Int'l Trade Comm. 1979).

1442.05(b)  Stays Denied

  "Stays"  were  denied  in  the  following  sampling  of
published "decisions".

  General  Tire  and  Rubber  Co.  v.  Watson  -  Bowman
Associates, Inc. , 193 USPQ 479 (D. Del. 1977).

  Perkin - Elmer Corp. v. Westinghouse Electric Corp. ,
BNA/PTCJ 376: A - 11 (E.D. N.Y. 1978).

  In re Certain Ceramic Tile Setters , No. 337 - TA - 41,
BNA/PTCJ 385: A - 21 (Int'l Trade Comm. 1978).

  E.C.H. Will v.  Freundlich - Gomez Machinery Corp. , 201
USPQ 476 (S.D. N.Y. 1978).

  RCA Corp. v. Applied Digital Data Systems Inc. , 201
USPQ 451 (D. Del. 1979) denied stay where a patentee had not
filed a reissue.

  Bielomatik  Leuze  &  Co.,  v.  Southwest  Tablet
Manufacturing Co. , 204 USPQ 226 (N.D. Texas 1979) refused
to order reissue.

  Antonious v. Kamata - Ri & Co. Ltd. , 204 USPQ 294 (D.
Md. 1979) refused to order reissue.

1443  Initial Examiner Review

  On  initial  receipt  of  a  reissue  application,  the
examiner should inspect the abstract of title to determine
whether 37 CFR 1.172 has been complied with.

  The examiner should determine if the filing of the
reissue has been announced in the Official Gazette as
provided in 37 CFR 1.11(b), especially where the reissue is
a file wrapper continuation under 37 CFR 1.62. If the filing
has not been announced, the reissue application should be
returned to Application Branch to handle the announcement.
The examiner should not further act on the reissue until 2
months after announcement of the filing of the reissue has
appeared in the Official Gazette: see MPEP § 1440 and 37 CFR
1.176.

  The examiner should determine if there is concurrent
litigation and if so the status thereof (MPEP § 1442.01,
supra), and whether the reissue file has been appropriately
marked. Note MPEP § 1404.

  The examiner should determine if a protest has been
filed and if so it should be handled as set forth in MPEP §
1901.06.

  The examiner should determine whether the patent is
involved in an interference, and if so should refer to MPEP
§  1449.01  before  taking  any  action  on  the  reissue
application.

  The examiner should check that an offer to surrender the
original patent, or an affidavit or declaration to the
effect that the original is lost or inaccessible, has been
received. An examination on the merits is made even though
the above has not been complied with, but the examiner
should require compliance in the first office action.

  The examiner should verify that all Certificate of
Correction changes have been properly incorporated into the
reissue application.

  The examiner should verify that the patent on which the
reissue application is based has not expired, either because
its term has run or because required maintenance fees have
not been paid.

1444  Review of Reissue Oath or Declaration [R - 2]

  When examining the reissue application, the examiner

will consider at each stage or point in the examination
whether or not the reissue oath or declaration complies with
each of the requirements of 37 CFR 1.175; see MPEP § 1414 to
§ 1414.05. For example, in all reissue applications, the
reissue  oath  or  declaration  must  comply  with  the
requirements of 37 CFR 1.63; see MPEP § 1414, and MPEP §
602, 37 CFR 1.63(b)(1) and (2), especially. Similarly, for
example,  all  reissue  declarations  must  comply  with  *
sections (a)(5) *>,<(a)(6)>, and (a)(7)< of 37 CFR 1.175;
see MPEP § 1414.03 *>,< § 1414.04 ** >and< § 1414.05.

  The examiner must check that each and every change in
the specification or claims is supported in either the
original  or  a  supplemental  oath  or  declaration.  Every
departure from the original patent represents an "error" in
said original patent under 35 U.S.C. 251 and must be
particularly and distinctly specified and supported in the
original, or a supplemental, reissue oath or declaration
under 37 CFR 1.175. Any changes in the specification or
claims require an updated supplemental oath or declaration
specifically directed and supporting said changes under 37
CFR 1.175. See In re Constant , 827 F.2d 728, 729, 3 USPQ2d
1479, 1480 (Fed. Cir.), cert. denied , 484 U.S. 894 (1987).
Any such supplemental oath or declaration should be filed
promptly, preferably at the time of or as soon as possible
after the changes in the specification and claims are filed.
If the examination reveals a lack of compliance with any of
the appropriate requirements of 37 CFR 1.175, a rejection of
all the claims should be made on the basis that the reissue
oath or declaration is insufficient.

  >A lack of signature on a reissue oath or declaration
would be considered a lack of compliance with 37 CFR
1.175(a)  and  result  in  a  rejection,  including  final
rejection, of all claims on the basis that the reissue oath
or declaration is insufficient. If an unsigned reissue oath
or declaration is submitted as a part of a reply which is
otherwise properly signed and responsive to any outstanding
Office action, the reply should be accepted by the examiner
as proper and responsive, and the oath or declaration
considered fully on the merits in the next Office action.
The reply should not be treated as non responsive as in MPEP
§ 714.01(a), nor do the provisions of Ex parte Quayle apply
in this situation. The lack of signature, along with any
other oath or declaration deficiencies, should be noted in
the next Office action rejecting the claims as being based
upon an insufficient reissue oath or declaration.<

  Use Form Paragraphs 14.01 - 14.04 and Form Paragraph
14.14 to reject under 35 U.S.C. 251.

¶ 14.14  Rejection, Defective Reissue Oath/Declaration

  Claim [1] rejected as being based upon a defective
reissue [2] under 35 U.S.C. 251. See 37 CFR 1.175.

 Examiner Note:

  1.  In  bracket  1,  list  all  claims  in  the  reissue
application. See MPEP 706.03(x).

  2. This paragraph should be preceded by at least one of
paragraphs 14.01 - 14.04.

  3. In bracket 2, insert either -oath- or -declaration-

  >Form  Paragraph  14.04.01  should  be  used  where  a
supplemental reissue oath or declaration is required.

¶ 14.04.01  Reissue Application Amended - New/Supplemental
Oath Required

  In view of the fact that additional errors in the
original patent have been corrected through amendments to
the [1], a new/supplemental oath or declaration complying
with 37 CFR 1.175(a)(1), (a)(2) and/or (a)(3), (a)(5),
(a)(6), and (a)(7) is required. See In re Constant , 3
USPQ2d 1479.

 Examiner Note:

  1.  In bracket 1, insert -specification-, -drawings-,
or -claims-.

  2.  This paragraph should be used when amendments have
been made to the reissue application including the addition
of new claims. Sections 1444 and 1444.01 of the MPEP should
be reviewed before use of this paragraph.<

  Under no circumstances will any reissue application be
passed to issue without full compliance with 37 CFR 1.175.
No reissue application can be passed for issue with only 37
CFR 1.175(a)(4) type oath or declaration.

  **

1445  Reissue Application Examined in Same Manner as
Original Application [R - 2]

  As stated in 37 CFR 1.176, a reissue application,
including all the claims therein, is subject to "be examined
in the same manner as original applications". This means the
claims, whether identical to or changed from those in the
patent, are subject to any and all rejections which the
examiner deems appropriate. The fact that a rejection was
not made, or could have been made, or was made and dropped
during prosecution of the patent does not prevent that
rejection from being made in the reissue application. Claims
in  a  reissue  application  enjoy  no  >"<  presumption  of
*validity"*>.< In re Doyle ,>482 F.2d 1385, 1392,< 179 USPQ
227, 232 - 233 (CCPA 1973); In re Sneed ** >, 710 F.2d 1544,
1550 n.4,< 218 USPQ 385, 389 >n.4< (Fed, Cir. 1983).
Likewise, the fact that during prosecution of the patent the
examiner considered, may have considered, or should have
considered information such as, for example, a specific
prior art document, does not have any bearing on or prevent
its use as prior art during prosecution of the reissue
application.

  **

1447  Additional Information, Affidavits, or
Declarations Required

 37 CFR 1.175. Reissue oath or declaration

  *****

  (b) Corroborating affidavits or declarations of others
may be filed and the examiner may, in any case, require

additional  information  or  affidavits  or  declarations
concerning the application for reissue and its object.

  37 CFR 1.175(b) recognizes the need, when appropriate,
for additional information or affidavits or declarations,
during examination of reissue applications. 37 CFR 1.175(b)
provides  that  the  examiner  may  require  additional
information or affidavits or declarations concerning the
reissue application and its object.

1448  Fraud, Inequitable Conduct, or Duty of Disclosure
Issues [R - 1]

  The Office no longer investigates and rejects reissue
applications under 37 CFR 1.56. The Office will not comment
upon duty of disclosure issues which are brought to the
attention of the Office in reissue applications except to
note in the application, in appropriate circumstances, that
such issues are no longer considered by the Office during
its examination of patent applications. Examination of lack
of deceptive intent in reissue applications will continue
but without any investigation of fraud, inequitable conduct,
or duty of disclosure issues. Applicant's statement of lack
of deceptive intent normally will be accepted as dispositive
except in special circumstances such as an admission or
judicial determination of fraud or inequitable conduct. Form
paragraph 14.22 may be used if a rejection is appropriate.

¶ 14.22  Rejection, 35 U.S.C. 251, No Error Without
Deceptive Intention

  Claims [1] rejected under 35 U.S.C. 251 since ** error
was  "without  deceptive  intention"  >has  not  been
established<. Paper no. [2], * >filed< [3] does not support
a  conclusion  that  any  error  was  "without  deceptive
intention" because [4].

 Examiner Note:

  1.  In  bracket  1,  list  all  claims  in  the  reissue
application.

  2. In bracket 2, insert paper number.

  3. In bracket 3, insert the >filing< date of the paper.

  4. In bracket 4, insert a statement that there has been
an  admission  or  a  judicial  determination  of  fraud  or
inequitable  conduct  or  insert  an  explanation  of  other
special circumstances why applicant's statement in the oath
or declaration of lack of deceptive intent should not be
taken as dispositive.

1449  Protest Filed in Reissue Where Patent Is in
Interference [R - 3]

  If a protest is filed in a reissue application related
to a patent involved in a pending interference proceeding,
the reissue application should be referred to the **>Special
Program Law Office< before considering the protest and
acting on the application.

1449.01  Concurrent Office Proceedings

  37 CFR 1.565(d) provides that if "a reissue application

and a reexamination proceeding on which an order pursuant to
37 CFR 1.525 has been mailed are pending concurrently on a
patent, a decision will normally be made to merge the two
proceedings or to stay one of the two proceedings." See MPEP
§ 2285.

  If the original patent is involved in an interference,
the examiner must consult the examiner - in - chief in
charge of the interference before taking any action on the
reissue application. It is particularly important that the
reissue application not be granted without the examiner - in
- chief's approval. See MPEP § 2360.

1450  Restriction and Election of Species [R - 2]

  The examiner may not require restriction in a reissue
application (37 CFR 1.176 * >and< MPEP § 1440). If the
original patent contains claims to different inventions
which the examiner may nevertheless consider independent and
distinct, and the reissue application also claims the same
inventions, the examiner should not require restriction
between them or take any other action with respect to the
question of plural inventions. Restriction is entirely at
the option in the first instance of the applicant (37 CFR
1.177 and MPEP § 1451). If the reissue application contains
claims to an independent and distinct invention which was
not claimed in the original patent, these claims may be
treated by a suitable rejection, such as not being "for the
invention disclosed in the original patent," as evidenced by
the claims in the original patent*>(< In re Rowand,>526 F.2d
558,<187 USPQ 487 (CCPA 1975)>)<; lack of inoperativeness
of, or defect in, the original patent; lack of error; or not
being for matter which might have been claimed in the
original patent.

  Reissue applicant's failure to timely file a divisional
application is not considered to be error causing a patent
granted on elected claims to be partially inoperative by
reason of claiming less than they had a right to claim; and
thus such applicant's error is not correctable by reissue of
the original patent under 35 U.S.C. 251*> In re Watkinson ,
900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990);< In re Orita,
**>550 F.2d 1277,< 193 USPQ 145, 148 (CCPA 1977); see also
In re Mead , 581 F. 2d*>251,< 198 USPQ 412 (CCPA 1978).

  When the original patent contains claims to a plurality
of species and the reissue application contains claims to
the same species, election of species should not be required
even though there is no allowable generic claim. If the
reissue application presents claims to species not claimed
in the original patent, election of species should not be
required, but the added claims may be rejected on an
appropriate ground which may be lack of defect in the
original patent and lack of error in obtaining the original
patent. Most situations require special treatment.

1451  Divisional Reissue Applications [R - 1]

  As is pointed out in the preceding section, the examiner
cannot require restriction in reissue applications, but if
the original patent claims contain several independent and
distinct inventions they can only be granted in separate
reissues if the applicant demands it. The following rule
sets  forth  the  only  possibility  of  divisional  reissue
applications.

 37 CFR 1.177.  Reissue in divisions.

  **>The Commissioner may, in his or her discretion, cause
several patents to be issued for distinct and separate parts
of the thing patented, upon demand of the applicant, and
upon payment of the required fee for each division. Each
division of a reissue constitutes the subject of a separate
specification descriptive of the part or parts of the
invention claimed in such division; and the drawing may
represent only such part or parts, subject to the provisions
of  §  §  1.83  and  1.84.  On  filing  divisional  reissue
applications, they shall be referred to the Commissioner.
Unless otherwise ordered by the Commissioner upon petition
and payment of the fee set forth in § 1.17(i), all the
divisions of a reissue will issue simultaneously; if there
is any controversy as to one division, the others will be
withheld from issue until the controversy is ended, unless
the Commissioner orders otherwise.<

  Divisional reissue applications are required on filing
to be referred to the Office of the Assistant Commissioner
for Patents. Where such applications are forwarded to the
examining group or examiner without having been so referred,
they must be referred immediately to the Office of the
Assistant Commissioner for Patents.

  It is important that divisional reissue applications be
appropriately  marked  so  that  they  "will  issue
simultaneously" on the same date as required by 37 CFR
1.177.

  Divisional reissue cases which arrive together from the
examining corps with appropriate identification on their
file jackets (in the Continuing Data box) should be kept and
processed together by the Publishing Division and throughout
all stages of preparation for issue. Situations yielding
divisional reissues occur infrequently and usually involve
only two such files. It should be noted, however, that in
rare instances in the past, there have been more than two
(and as many as five) divisional reissues of a patent.

  Some special handling of divisional reissue applications
is required in various parts of the Office.

  Appropriate amendments to the continuing data entries
are to be made to the file jackets and specification
paragraphs for all such applications so that all "sibling"
divisional reissue applications are specifically identified.

1453  Amendments to Reissue Applications [R - 2]

  37 CFR 1.121. Manner of making amendments.

  *****

  (e) In reissue applications, both the descriptive portion
and the claims are to be amended by either (1) submitting a
copy of a portion of the description or an entire claim with
all matter to be deleted from the patent being placed
between brackets and all matter to be added to the patent
being underlined, or (2) indicating the exact word or words
to be stricken out or inserted and the precise point where
the deletion or insertion is to be made. Any word or words
to be inserted must be underlined. See § 1.173.

  *****

  >Form Paragraph 14.20 may be used to advise applicant as
to the proper manner of making amendments.

¶ 14.20  Amendments to Reissue

  Applicant is notified that any subsequent amendment to
the specification and/or claims must comply with 37 CFR
1.121(e).

 Examiner Note:

  This paragraph may be used in the first Office action to
advise applicant of the proper manner of making amendments.

  Form Paragraph 14.21 may be used to notify applicant
that the proposed amendment does not comply with 37 CFR
1.21(e).

¶ 14.21  Improper Amendment to Reissue

  The amendment filed [1] is informal/non - responsive
because the proposed amendments to claim [2] do not comply
with 37 CFR 1.121(e), which sets forth the manner of
amending claims in reissue applications. A supplemental
paper correctly amending the claims is required within a
time limit of ONE MONTH from the date of this letter or
within the time remaining in the response period of the last
Office action, whichever is longer. NO EXTENSION OF THIS
TIME LIMIT MAY BE GRANTED UNDER 37 CFR 1.136(a) OR (b), but
the period for the response set in the last office action
may be extended up to a maximum of SIX MONTHS.

 Examiner Note:

  Do  not  use  this  paragraph  for  litigated  reissue
applications as 37 CFR 1.136(a) would not apply.<

  When a reissue patent is printed, all underlined matter
is printed in italics and all brackets are printed as
inserted in the application to show exactly which additions
and  deletions  have  been  made  to  the  original  patent.
Therefore, all underlining and bracketing should be made
relative to the text of the original patent.

  A substantial number of problems arise in the Office
because of improper submission of amendments in reissue
applications. The following examples are provided to assist
in preparation of proper amendments to reissue applications.

  ORIGINAL DESCRIPTION OR CLAIM AMENDED

  (1) Submit a copy of the entire paragraph being amended
with underlining and bracketing.

  Scanning [is] are controlled by clocks which are, in
turn, controlled from the display tube line synchronization.
The  signals  resulting  from  scanning  the  scope  of  the
character are delivered in parallel, then converted into
serial mode through a shift register wherein the shift
signal frequency is controlled by a clock that is, in turn ,
controlled from the display tube line synchronization.

  Claim 6. The apparatus of claim [5]1 wherein the first
piezoelectric  element  is  parallel  to  the  second
piezoelectric element.

 or (2) Submit an amendment indicating the exact word or
words to be deleted or inserted and the precise point where
the deletion or insertion is to be made.

  Column 6, line 1, change [is] to - - are - -.

  Column 6, line 2, after "are", insert - - , in turn, -
-.

  Column 6, line 7, after "is", insert - - , in turn, - -.

  Claim 6, line 2, change [5] to - - 1 - -.

  ORIGINAL CLAIM CANCELED

  (1) Present entire claim within brackets.

  [Claim 6. The apparatus of claim 5 wherein the first
piezoelectric  element  is  parallel  to  the  second
piezoelectric element.]

 or (2) direct cancelation of entire claim.

  Cancel claim 6.

  ADDING ADDITIONAL CLAIMS

  New  claim  should  be  presented  with  underlining
throughout the claim.

  Claim 7. The apparatus of claim 5 further comprising
electrodes attaching to said opposite faces of the first and
second piezoelectric elements.

  Even though original claims may have been canceled, the
numbering of the original claims does not change. Any added
claims are numbered beginning with the number next higher
than the number of claims in the original  patent. If the
dependency of any original dependent claims changes, it is
proper to change the dependency to the later filed higher
numbered claim. If new claims have been added to the reissue
application which are later canceled prior to issuance of
the reissue patent, the examiner will renumber any remaining
new claims in numerical order to follow the number of claims
in the original patent.

 AMENDMENT OR CANCELATION OF ADDITIONAL CLAIMS

  Any amendments to additional claims presented in the
reissue application should be amended only by specifying the
words to be deleted or added and the precise point of such
deletion  or  insertion.  Likewise,  any  cancelation  of
additional claims should be made by specifying the number of
the claim or claims to be canceled. Such amendments will be
entered  by  the  clerical  staff  within  the  Patent  and
Trademark Office.

  ORIGINAL CLAIM FURTHER AMENDED

  Examples  of  proper  claim  amendment  in  reissue
applications.

  A.  Patent claim.

  Claim 1. A cutting means having a handle portion and a
blade portion.

  B.  Proper first amendment format.

  Claim 1. A [cutting means] knife having a bone handle
portion and a notched blade portion.

  C.  Proper second amendment format.

  Claim 1. A [cutting means] knife having a handle portion
and a serrated blade portion.

  Note that the second amendment includes the changes
presented in the first amendment; i.e. [cutting means] knife
, as well as the changes presented in the second amendment;
i.e.  serrated  .  However,  the  term  notched  which  was
presented in the first amendment and replaced by the term
serrated in the second amendment and the term bone which was
presented in the first amendment and deleted in the second
amendment are NOT shown in brackets; i.e. [notched] and
[bone] in the second amendment. This is because the terms
[notched] and [bone] would not be changes from the patent
claim text and therefore are not shown. In both the first
and the second amendments, the entire claim is presented
with all the changes from the patent text.

1455  Allowance and Issue

  In all reissue applications prepared for issue, the
number of the original patent being reissued should be
placed in the box provided therefor below the box for the
applicant's name on the Issue Classification Slip (form PTO
- 270).

  The specifications of reissue patents will be printed in
such a manner as to show the changes over the original
patent by printing material omitted by reissue enclosed in
heavy brackets [ ] and material added by reissue in italics.
37 CFR 1.173 (see MPEP § 1411) requires the specification of
a reissue application to be presented in a specified form,
specifically designed to facilitate this different manner of
printing, as well as for other reasons.

  The  printed  reissue  specification  will  carry  the
following heading which will be added by the Patent Issue
Division:

  "Matter enclosed in heavy brackets [ ] appears in the
original  patent  but  forms  no  part  of  this  reissue
specification;  matter  printed  in  italics  indicates  the
additions made by reissue."

  The examiners should see that the specification is in
proper form for printing. Matter appearing in the original
patent which is omitted by reissue should be enclosed in
heavy brackets, while matter added by reissue should be
underlined.

  Any  material  added  by  amendment  in  the  reissue
application  which  is  later  canceled  should  be  crossed
through. However, cancelation of material in the original

patent should be indicated by brackets.

  All the claims of the patent should appear in the
specification, with omitted claims enclosed in brackets. No
renumbering of the original patent claims is necessary, even
if the dependency of a dependent claim is changed by reissue
so that it is dependent on a subsequent higher numbered
claim.  However,  when  a  dependent  claim  in  a  reissue
application depends upon a claim which has been canceled and
no change in dependency to a remaining claim has been made,
such a dependent claim must be rewritten in independent
form. New claims should follow the number of the highest
numbered  patent  claims  and  be  underlined  to  indicate
italics. The provisions of 37 CFR 1.173 that claims should
not be renumbered applies to the reissue application as
filed. When the reissue is allowed, any claims remaining
which are additional to the patent claims are renumbered in
sequence starting with the number next higher than the
number of claims in the original patent. Therefore, the
number of claims allowed will not necessarily correspond to
the number of the last claim in the reissue application, as
allowed.

  At least one claim of an allowable reissue application
must be designated for printing in the Official Gazette .
Whenever possible, that claim should be one which has been
changed or added by the reissue. A canceled claim must not
be designated as the claim for the Official Gazette .

  In the case of reissue applications which have not been
prepared in the indicated manner, the examiner may request
from the applicant a clean copy of the reissue specification
prepared in the indicated form. However, if the deletions
from the original patent are small, the reissue application
can be prepared for issue by putting the bracketed inserts
at the appropriate places and suitably numbering the claims.

  All parent application data on the original patent file
wrapper should be placed on the reissue file wrapper, if it
is still proper.

  The list of references to be printed at the end of the
reissue specification should include both the references
cited  during  the  original  prosecution  as  well  as  the
references cited during the prosecution of the reissue
application. A patent cannot be reissued solely for the
purpose of adding citations of additional prior art.

  NOTE. - Transfer of drawing, MPEP § 1413.

1456  Reissue Review [R - 3]

  **>All reissue applications are monitored and reviewed
in the Examining Groups by the Office of the Special Program
Examiner  (includes  SPRE,  paralegal  or  other  technical
support who might be assigned as backup) at several stages
during the prosecution. In order to ensure that SPREs are
aware of the reissue applications in their groups, a pair of
terminal - specific PALM flags have been created which must
be set by the SPRE before certain PALM transactions can be
completed. First, when a new reissue application enters the
Examining Group, a PALM flag must be set at a SPRE PALM
terminal before a docketing transaction will be accepted. By
having to set this first flag, the SPRE is made aware of the
assignment of the reissue application to the group and can

take steps, as may be appropriate, to instruct the examiner
on reissue - specific procedures before the examination
process begins, as well as throughout the period that the
examiner is handling the reissue application. Further, a
second PALM flag must be set at a SPRE PALM terminal before
a  Notice  of  Allowance  can  be  generated  or  the  PALM
transaction for an issue revision can be entered, thereby
ensuring that the SPRE is made aware of when the reissue
application is being allowed so that the SPRE may be able to
conduct a final review of the reissue application, if
appropriate.

  After  leaving  the  Examining  Groups,  all  reissue
applications  go  through  a  screening  process  currently
performed in the Special Program Law Office which includes
review of the reissue applications' oath or declaration for
compliance with 37 CFR 1.175 as well as adherence to current
reissue practices. A patentability review is made in a
sample of reissue applications by the Office of Quality
Review. The screening process and the patentability review
are appropriate vehicles for correcting errors, identifying
problem areas and recognizing trends, providing information
on the uniformity of practice, and providing feedback to the
Examining Groups.<

1460  Effect of Reissue [R - 1]

 35 U.S.C. 252.  Effect of reissue.

  **>The surrender of the original patent shall take
effect upon the issue of the reissued patent, and every
reissued patent shall have the same effect and operation in
law, on the trial of actions for causes thereafter arising,
as if the same had been originally granted in such amended
form, but in so far as the claims of the original and
reissued patents are identical, such surrender shall not
affect any action then pending nor abate any cause of action
then existing, and the reissued patent, to the extent that
its claims are identical with the original patent, shall
constitute  a  continuation  thereof  and  have  effect
continuously from the date of the original patent.

  A reissued patent shall not abridge or affect the right
of any person or that person`s successors in business who,
prior to the grant of a reissue, made, purchased, offered to
sell, or used within the United States, or imported into the
United States, anything patented by the reissued patent, to
continue the use of, to offer to sell, or to sell to others
to be used, offered for sale, or sold, the specific thing so
made, purchased, offered for sale, used, or imported unless
the making, using, offering for sale, or selling of such
thing infringes a valid claim of the reissued patent which
was in the original patent. The court before which such
matter  is  in  question  may  provide  for  the  continued
manufacture, use, offer for sale, or sale of the thing made,
purchased, offered for sale, used, or imported as specified,
or for the manufacture, use, offer for sale, or sale in the
United States of which substantial preparation was made
before the grant of the reissue, and the court may also
provide for the continued practice of any process patented
by the reissue that is practiced, or for the practice of
which substantial preparation was made, before the grant of
the reissue, to the extent and under such terms as the court
deems equitable for the protection of investments made or
business commenced before the grant of the reissue.

  (Amended Dec. 8, 1994, Public Law 103 - 465, sec. 533,
108 Stat. 4809, effective Jan. 1, 1996.)<

1480  Certificates of Correction - Office Mistake

 35 U.S.C. 254.  Certificate of correction of Patent and
Trademark Office mistake.

  Whenever a mistake in a patent, incurred through the
fault  of  the  Patent  and  Trademark  Office,  is  clearly
disclosed by the records of the Office, the Commissioner may
issue a certificate of correction stating the fact and
nature of such mistake, under seal, without charge, to be
recorded in the records of patents. A printed copy thereof
shall be attached to each printed copy of the patent, and
such certificate shall be considered as part of the original
patent. Every such patent, together with such certificate,
shall have the same effect and operation in law on the trial
of actions for causes thereafter arising as if the same had
been  originally  issued  in  such  corrected  form.  The
Commissioner may issue a corrected patent without charge in
lieu of and with like effect as a certificate of correction.

 37 CFR 1.322. Certificate of correction of Office mistake.

  (a) A certificate of correction under 35 U.S.C. 254 may
be issued at the request of the patentee or the patentee's
assignee. Such certificate will not be issued at the request
or suggestion of anyone not owning an interest in the
patent, nor on motion of the Office, without first notifying
the  patentee  (including  any  assignee  of  record)  and
affording the patentee an opportunity to be heard. When the
request relates to a patent involved in an interference, the
request shall comply with the requirements of this section
and shall be accompanied by a motion under § 1.635.

  (b) If the nature of the mistake on the part of the
Office is such that a certificate of correction is deemed
inappropriate  in  form,  the  Commissioner  may  issue  a
corrected patent in lieu thereof as a more appropriate form
for  certificate  of  correction,  without  expense  to  the
patentee.

  Mistakes incurred through the fault of the Office are
the subject of Certificates of Correction under 37 CFR
1.322. If such mistakes are of such a nature that the
meaning intended is obvious from the context, the Office may
decline  to  issue  a  certificate  and  merely  place  the
correspondence in the patented file, where it serves to call
attention to the matter in case any question as to it
arises.

  Letters  which  merely  call  attention  to  errors  in
patents, with a request that the letter be made of record in
the patented file, will not be acknowledged.

  In order to expedite all proper requests, a Certificate
of  Correction  should  be  requested  only  for  errors  of
consequence. Letters making errors of record should be
utilized whenever possible.

  Each issue of the Official Gazette(patents section)
numerically  lists  all  United  States  patents  having
Certificates of Correction. The list appears under the

heading "Certificates of Correction for the week of (date)."

1481  Applicant's Mistake [R - 3]

 35 U.S.C. 255. Certificate of correction of applicant's
mistake.

  Whenever a mistake of a clerical or typographical
nature, or of minor character, which was not the fault of
the Patent and Trademark Office, appears in a patent and a
showing has been made that such mistake occurred in good
faith, the Commissioner may, upon payment of the required
fee, issue a certificate of correction, if the correction
does not involve such changes in the patent as would
constitute new matter or would require re - examination.
Such patent, together with the certificate, shall have the
same effect and operation in law on the trial of actions for
causes thereafter arising as if the same had been originally
issued in such corrected form.

 37 CFR 1.323. Certificate of correction of applicant's
mistake.

  Whenever a mistake of a clerical or typographical nature
or of minor character which was not the fault of the Office,
appears in a patent and a showing is made that such mistake
occurred in good faith, the Commissioner may, upon payment
of the fee set forth in § 1.20(a), issue a certificate, if
the correction does not involve such changes in the patent
as  would  constitute  new  matter  or  would  require
reexamination. A request for a certificate of correction of
a patent involved in an interference shall comply with the
requirements of this section and shall be accompanied by a
motion under § 1.635.

  37 CFR 1.323 relates to the issuance of Certificates of
Correction for the correction of errors which were not the
fault of the Office. A mistake is not of a minor character
if the requested change would materially affect the scope or
meaning of the patent. The fee for providing a correction of
applicant's mistake, other than inventorship is set forth in
37 CFR1.20(a).

  The Issue Fee Transmittal Form portion (PTOL - 85B) of
the Notice of Allowance provides a space (item*>3<) for
assignment data which should be completed in order to comply
with 37 CFR 3.81. Unless an assignee's name and address are
identified in item*>3< of the Issue Fee Transmittal Form
PTOL  -  85B,  the  patent  will  issue  to  the  applicant.
Assignment data printed on the patent will be based solely
on the information so supplied.

  A request for a certificate of correction under 37 CFR
1.323 arising from incomplete or erroneous assignee's name
furnished in item*>3< of PTOL - 85B will not be granted
unless a petition under 37 CFR 1.183 has been granted. Any
such petition under 37 CFR 1.183 should be directed to the
Office of Petitions and should include: (1) the petition fee
required by 37 CFR 1.17(h); (2) a request that 37 CFR
3.81(a) be waived to permit the correct name of the assignee
to be provided after issuance of the patent; (3) a statement
(verified if made by other than a registered attorney or
agent) that the failure to include the correct assignee name
on the PTOL - 85B was inadvertent; and (4) a copy of the
Notice or Recordation of Assignment Document.

 35 U.S.C. 256. Correction of named inventor.

  Whenever through error a person is named in an issued
patent as the inventor, or through error an inventor is not
named in an issued patent and such error arose without any
deceptive intention on his part, the Commissioner may, on
application of all the parties and assignees, with proof of
the facts and such other requirements as may be imposed,
issue a certificate correcting such error.

  The error of omitting inventors or naming persons who
are not inventors shall not invalidate the patent in which
such error occurred if it can be corrected as provided in
this section. The court before which such matter is called
in question may order correction of the patent on notice and
hearing of all parties concerned and the Commissioner shall
issue a certificate accordingly.

  In requesting the Office to effectuate a court order
correcting inventorship in a patent pursuant to 35 U.S.C.
256, a copy of the court order and a certificate of
correction under 37 CFR 1.323 should be submitted to the
Certificates of Corrections Branch.

 37 CFR 1.324. Correction of inventorship in patent.

  Whenever a patent is issued and it appears that the
correct inventor or inventors were not named through error
without deceptive intention on the part of the actual
inventor or inventors, the Commissioner may, on petition of
all the parties and the assignees and satisfactory proof of
the facts and payment of the fee set forth in § 1.20(b), or
on order of a court

 before which such matter is called in question, issue a
certificate naming only the actual inventor or inventors. A
request to correct inventorship of a patent involved in an
interference shall comply with the requirements of this
section and shall be accompanied by a motion under § 1.634.

  The "satisfactory proof of facts" required by 37 CFR
1.324 must be of the same type and character as the proof
required  under  37  CFR  1.48  to  justify  correcting
inventorship in a nonprovisional application, as described
in MPEP § 201.03. Unlike correction of inventorship in a
nonprovisional application under 37 CFR 1.48(a), where the
requirement for a verified statement of facts by each
originally named inventor may be waived pursuant to 37 CFR
1.183, any correction of inventorship in a patent under 37
CFR 1.324 requires petition of all the parties; i.e.,
originally named inventors and assignees, in accordance with
statute (35 U.S.C. 256) and thus the requirement cannot be
waived. Correction of inventorship request under 37 CFR
1.324 should be directed to the Supervisory Primary Examiner
whose unit handles the subject matter of the patent. Form
Paragraphs 10.13 **>through 10.18< may be used.

¶ 10.13  Petition Under 37 CFR 1.324, Granted

 In re Patent No. [ 1 ]  :

 Issue Date: [ 2 ]  :  DECISION ON PETITION

 Appl. No.: [ 3 ]  : 37 CFR 1.324

 Filed: [ 4 ]  :

 For: [ 5 ]  :

  This is a decision on the petition, filed [ 6 ], to
correct inventorship under 37 CFR 1.324.

  The petition is granted.

  The patented file is being forwarded to Certificate of
Corrections Branch for issuance of a certificate naming only
the actual inventor or inventors.

 ________________________

 [ 7 ]

 Supervisory Patent Examiner,

 Art Unit [ 8 ],

 Patent Examining Group [ 9 ]

 [ 10  ]

 Examiner Note:

  1.  Petitions to correct inventorship of an issued
patent are decided by the Supervisory Patent Examiner , as
set forth in the Commissioner's memorandum dated June 2,
1989.

  2.  In bracket 10, insert the correspondence address of
record.

  3.  Print this form paragraph on PTO letterhead.

¶ 10.14  Treatment of 37 CFR 1.48 Petition Under 37 CFR
1.324, Granted

 In re Patent No. [ 1 ]  :

 Issue Date: [ 2 ]  :  DECISION ON PETITION

 Appl. No.: [ 3 ]  : 37 CFR 1.324

 Filed: [ 4 ]  :

 For: [ 5 ]  :

  This is a decision on the petition under 37 CFR under
1.48, filed [ 6 ]. In view of the fact that the patent has
already issued, the petition has been treated as a petition
to correct inventorship under 37 CFR 1.324.

  The petition is granted.

  The patented file is being forwarded to Certificate of
Corrections Branch for issuance of a certificate naming only
the actual inventor or inventors.

 ________________________

 [ 7 ]

 Supervisory Patent Examiner,

 Art Unit [ 8 ],

 Patent Examining Group [ 9 ]

 [ 10  ]

 Examiner Note:

  1.  Petitions to correct inventorship of an issued
patent are decided by the Supervisory Patent Examiner , as
set forth in the Commissioner's memorandum dated June 2,
1989.

  2.  Print this form paragraph on PTO letterhead..

  3.  Prepare Certificate using form paragraph 10.15.

> ¶  10.15  Memorandum - Certificate of Correction

 DATE: [1]

 TO: Certificate of Corrections Branch

 FROM: [2] , SPE, Art Unit  [3]

 SUBJECT: Request for Certificate of Correction

  Please Issue a Certificate of Correction in U. S.
Letters  Patent  No.  [4]  as  specified  on  the  attached
Certificate.

 ______________________

 [5], SPE

 Art Unit [6]

  UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATE

 Patent No. [7]

 Patented: [8]

  On petition requesting issuance of a certificate for
correction of inventorship pursuant to 35 U.S.C. 256, it has
been found that the above identified patent, through error
and without deceptive intent, improperly sets forth the
inventorship. Accordingly, it is hereby certified that the
correct inventorship of this patent is:

  [9]

  _________________________

  [10], SPE

  Art Unit [11]

 Examiner Note:

  1. In bracket 9, insert the full name and residence
(City, State) of each actual inventor.

  2. This is an internal memo, not to be mailed to
applicant,  which  accompanies  the  patented  file  to
Certificates  of  Corrections  Branch  as  noted  in  form
paragraphs 10.13 and 10.14.

  3. In brackets 5 and 10, insert name of SPE; in brackets
6 and 11 the Art Unit and sign above each line.

  4. Two separate pages of PTO letterhead will be printed
when using this form paragraph.

¶ 10.16  Petition Under 37 CFR 1.324, Dismissed

  Paper No. [1]

 In re Patent No. [2]  :

 Issue Date: [3]  : DECISION ON PETITION

 Appl. No.: [4]  : 37 CFR 1.324

 Filed: [5]  :

 For: [6]  :

  This is a decision on the petition filed [7] to correct
inventorship under 37 CFR 1.324.

  The petition is dismissed.

  A petition to correct inventorship as provided by 37 CFR
1.324 requires (1) a petition including a statement of facts
verified  by  all  parties,  including  the  original  named
inventor or inventors and any inventor(s) being added,
establishing when the error without deceptive intention was
discovered and how it occurred, (2) an oath or declaration
by each actual inventor or inventors as required by 37 CFR
1.63, (3) the fee set forth in 37 CFR 1.20(b), and (4) the
written consent of all assignees in compliance with 37 CFR
3.73. This petition lacks item [8] .

 ________________________

 [9]

 Supervisory Patent Examiner,

 Art Unit [10] ,

 Patent Examining Group [11]

 [12]

 Examiner Note:

  1. If each of the four specified items has been submitted
but one or more is insufficient, the petition should be
denied . See paragraph 10.17. However, if the above noted
deficiency can be cured by the submission of a renewed
petition, a dismissal would be appropriate.

  2. If the petition includes a request for suspension of
the rules (37 CFR 1.183) of one or more provisions of 37 CFR
1.324 that are required by the statute (35 U.S.C. 256), form

paragraph 10.18 should follow this paragraph.

  3. In bracket 8, pluralize as necessary and insert the
item number(s) which are missing.

  3.  In  bracket  12,  insert  correspondence  address  of
record.

  4.  This  form  paragraph  is  printed  with  the  PTO
letterhead.

¶ 10.17  Petition Under 37 CFR 1.324, Denied

  Paper No. [1]

 In re Patent No. [2]  :

 Issue Date: [3]  :  DECISION ON PETITION

 Appl. No.: [4]  : 37 CFR 1.324

 Filed: [5]  :

 For: [6]  :

  This is a decision on the petition filed [7] to correct
inventorship under 37 CFR 1.324.

 The petition is denied.

 [8]

 _______________________

 [9]

 Supervisory Patent Examiner,

 Art Unit [10] ,

 Patent Examining Group [11]

 [12]

 Examiner Note:

  1. In bracket 8, a full explanation of the deficiency
must be provided.

  2. If the petition lacks one or more of the required
parts set forth in 37 CFR 1.324, it should be dismissed
using paragraph 10.14 or 7.99, rather than be denied.

  3.  In  bracket  12,  insert  correspondence  address  of
record.

  4.  This  form  paragraph  is  printed  with  the  PTO
letterhead.

¶ 10.18  Waiver of Requirements of 37 CFR 1.324 Under
37 CFR 1.183, Dismissed

  Suspension of the rules under 37 CFR 1.183 may be
granted for any requirement of the regulations which is not
a requirement of the statutes. In this instance, 35 U.S.C.

256 requires [1] . Accordingly, the petition under 37 CFR
1.183 is dismissed as moot.

 Examiner Note:

  1. This paragraph should follow paragraph 10.16 whenever
the  petition  requests  waiver  of  one  or  more  of  the
provisions of 37 CFR 1.324 that are also requirements of 35
U.S.C. 256.

  2. If the petition requests waiver of requirements of 37
CFR 1.324 that are not specific requirements of the statute
(i.e., the fee or the oath or declaration by all inventors),
the application must be forwarded to a Petitions Examiner in
the Office of the Deputy Assistant Commissioner for Patent
Policy and Projects for decision.<

1485  Handling of Request for Certificates of Correction
[R - 3]

  Requests for certificates of correction >should be
addressed to the attention of the Certificate of Correction
Branch, Assistant Commissioner for Patents, Washington, DC
20231. Requests for Certificates of Correction< will be
forwarded by the Correspondence and Mail Division, to the
Certificate of Correction Branch of the Publishing Division,
where they will be listed in a permanent record book.

  If  the  patent  is  involved  in  an  interference,  a
certificate of correction under 37 CFR 1.324 will not be
issued unless a corresponding motion under 37 CFR 1.634 has
been granted by the examiner - in - chief. See MPEP § 2334.
Otherwise, determination as to whether an error has been
made, the responsibility for the error, if any, and whether
the error is of such a nature as to justify the issuance of
a certificate of correction will be made by the Certificate
of Correction Branch. If a report is necessary in making
such determination, the case will be forwarded to the
appropriate  group  with  a  request  that  the  report  be
furnished. If no certificate is to issue, the party making
the request is so notified and the request, report, if any,
and copy of the communication to the person making the
request are placed in the file and entered thereon under
"Contents" by the Certificate of Correction Branch. The case
is then returned to the patented files. If a certificate is
to issue, it will be prepared and forwarded to the person
making the request by the Publishing Division. In that case,
the request, the report, if any, and a copy of the letter
transmitting the certificate of correction to the person
making the request will be placed in the file and entered
thereon under "Contents".

  Applicants, or their attorneys or agents, are urged to
submit the text of the correction on a special Certificate
of Correction form, PTO - 1050, which can serve as the
camera copy for use in direct offset printing of the
certificate of correction. Both parts of form PTO - 1050
must accompany the request since the second part will be
placed in the application file for internal use.

  A perforated space at the bottom of form PTO - 1050 has
been provided for the patentee's current mailing address,
and for ordering any desired additional copies of the
printed  certificate.  The  fee  for  each  additional  copy
ordered is set forth in 37 CFR 1.19(a)(1). The fee should

accompany the request.

  To facilitate the use of the Form PTO - 1050, the public
may obtain as many copies as needed from the Correspondence
and Mail Division.

  Where only a part of a request can be approved, or where
the Office discovers and includes additional corrections,
the appropriate alterations are made on the form PTO - 1050
by the Office. The patentee is notified of the changes on
the Notification of Approval - in - part form PTOL - 404.
The certificate is issued approximately 6 weeks thereafter.

  Form PTO - 1050 should be used exclusively regardless of
the length or complexity of the subject matter. Intricate
chemical formulas or page of specification or drawings may
be reproduced and mounted on a blank copy of PTO - 1050.
Failure to use the form has frequently delayed issuance
since the text must be retyped by the Office onto a PTO -
1050.

  The exact page and line number where the errors occur in
the application file should be identified on the request.
However, on form PTO - 1050, only the column and line number
in the printed patent should be used.

  The patent grant should be retained by the patentee. The
Office does not attach the Certificate of Correction to
patentee's copy of the patent. The patent grant will be
returned to the patentee if submitted.

  Below is a sample form illustrating a variety of
corrections and the suggested manner of setting out the
format. Particular attention is directed to:

  a. Identification of the exact point of error by
reference to column and line number of the printed patent or
to claim number and line where a claim is involved.

  b. Conservation of space on the form by typing single
space, beginning two lines down from the printed message.

  c. Starting the correction to each separate column as a
sentence,  and  using  semicolons  to  separate  corrections
within said column, where possible.

  d. Two - inch space left blank at bottom of the last
sheet for signature of attesting officer.

  e. Use of quotation marks to enclose the exact subject
matter to be deleted or corrected; use of double hyphens ( -
- - -) to enclose subject matter to be added, except for
formulas.

  f. Where a formula is involved, setting out only that
portion thereof which is to be corrected or, if necessary,
pasting a photocopy onto form PTO - 1050.

  The examiner's comments are requested on form PTO - 306
revised, where, under 37 CFR 1.323, there is a question
involving change in subject matter.

  UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATE OF
  CORRECTION

 Patent No. - - - - - Dated April 1, 1969

  James W. Worth

  It is certified that error appears in the above -
identified patent and that said Letters Patent is hereby
corrected as shown below:

  In the drawings, Sheet 3, Fig. 3, the reference numeral
225 should be applied to the plate element attached to the
support member 207. Column 7, lines 45 to 49, the left -
hand formula should appear as follows:

 Rg

 CX"Z

 CFz:

 Column 10, formula XXXV, that portion of the formula
reading

 Formula XXXVII, that portion of the formula reading " -
CH2CH - " should read - CHCH - -. Column 2, line 68 and
column 3, lines 3, 8 and 13, for the claim reference numeral
"2", each occurrence, should read -1-. Column 10, line 16,
cancel beginning with "12. A sensor device" to and including
"tive  strips."  in  column  11,  line  8,  and  insert  the
following claim:

  12. A control circuit of the character set forth in claim
1 and for an automobile having a convertible top, and
including; means for moving said top between raised and
lowered retracted position; and control means responsive to
said sensor relay for energizing the top moving means for
moving said top from retracted position to raised position.

1490  Disclaimers [R - 3]

 35 U.S.C. 253.  Disclaimer.

  Whenever, without any deceptive intention, a claim of a
patent is invalid the remaining claims shall not thereby be
rendered invalid. A patentee, whether of the whole or any
sectional interest therein, may, on payment of the fee
required by law, make disclaimer of any complete claim,
stating therein the extent of his interest in such patent.
Such disclaimer shall be in writing, and recorded in the
Patent and Trademark Office; and it shall thereafter be
considered as part of the original patent to the extent of
the interest possessed by the disclaimant and by those
claiming under him.

  In like manner any patentee or applicant may disclaim or
dedicate to the public the entire term, or any terminal part
of the term, of the patent granted or to be granted.

 37 CFR 1.321.  Statutory disclaimers, including terminal
disclaimers.

  (a) A patentee owning the whole or any sectional interest
in a patent may disclaim any complete claim or claims in a
patent. In like manner any patentee may disclaim or dedicate
to the public the entire term, or any terminal part of the
term, of the patent granted. Such disclaimer is binding upon

the grantee and its successors or assigns. A notice of the
disclaimer is published in the Official Gazette and attached
to the printed copies of the specification. The disclaimer,
to be recorded in the Patent and Trademark Office, must:

  (1) be signed by the patentee, or an attorney or agent of
record;

  (2) identify the patent and complete claim or claims, or
term  being  disclaimed.  A  disclaimer  which  is  not  a
disclaimer of a complete claim or claims, or term, will be
refused recordation;

  (3) state the present extent of patentee's ownership
interest in the patent; and

  (4) be accompanied by the fee set forth in § 1.20(d).

  (b) An applicant or assignee may disclaim or dedicate to
the public the entire term, or any terminal part of the
term, of a patent to be granted. Such terminal disclaimer is
binding upon the grantee and its successors or assigns. The
terminal disclaimer, to be recorded in the Patent and
Trademark Office, must:

  (1) be signed:

  (i) by the applicant, or

  (ii) if there is an assignee of record of an undivided
part interest, by the applicant and such assignee, or

  (iii) if there is an assignee of record of the entire
interest, by such assignee, or

  (iv) by an attorney or agent of record;

  (2) specify the portion of the term of the patent being
disclaimed;

  (3) state the present extent of applicant's or assignee's
ownership interest in the patent to be granted; and

  (4) be accompanied by the fee set forth in § 1.20(d).

  (c) A terminal disclaimer, when filed to obviate a
>judicially created< double patenting rejection in a patent
application or in a reexamination proceeding, must:

  (1) Comply with the provisions of paragraphs (b)(2)
through (b)(4) of this section;

  (2) Be signed in accordance with paragraph (b)(1) of this
section if filed in a patent application or in accordance
with  paragraph  (a)(1)  of  this  section  if  filed  in  a
reexamination proceeding; and

  (3) Include a provision that any patent granted on that
application or any patent subject to the reexamination
proceeding shall be enforceable only for and during such
period  that  said  patent  is  commonly  owned  with  the
application  or  patent  which  formed  the  basis  for  the
rejection.

  A disclaimer is a statement filed by an owner (in part

or in entirety) of a patent or of a patent to be granted, in
which said owner relinquishes certain legal rights to the
patent. There are two types of disclaimers: statutory and
terminal. For a disclaimer to be accepted, it must be signed
by the proper party as follows:

 (1)  A disclaimer filed in a patent or a reexamination
proceeding must be signed by either (a) the patentee, or (b)
an attorney or agent of record.

 (2)  A disclaimer filed in an application must be signed
by either (a) the applicant where the application has not
been assigned, the applicant and the assignee where each
owns a part interest in the application, the assignee where
assignee owns the entire interest in the application, or (b)
an attorney or agent of record.

 (3)  Where the assignee signs the disclaimer, there is a
requirement to comply with 37 CFR 3.73(b) in order to
satisfy 37 CFR 1.321. See MPEP § 324 as to compliance with
37 CFR 3.73(b). A copy of the "Certificate Under 37 CFR
3.73(b)" reproduced in MPEP § 324 may be sent by the
examiner to applicant to provide an acceptable way to comply
with the requirements of 37 CFR 3.73(b).

  Where  the  attorney  or  agent  of  record  signs  the
disclaimer, there is no need to comply with 37 CFR 3.73(b).

  STATUTORY DISCLAIMERS

  Under 37 CFR 1.321(a) the owner of a patent may disclaim
a complete claim or claims of his patent. This may result
from a lawsuit or because he has reason to believe that the
claim or claims are too broad or otherwise invalid. If the
patent is involved in an interference, see MPEP § 2362.

  TERMINAL DISCLAIMERS

  37 CFR 1.321(a), also provides for the filing by an
applicant  or  patentee  of  a  terminal  disclaimer  which
disclaims or dedicates to the public the entire term or any
portion of the term of a patent or patent to be granted.

  37 CFR 1.321** (c) specifically *>provides< for the
filing of a terminal disclaimer in an application or a
reexamination proceeding for the purpose of overcoming a
**>judicially created double patenting rejection<. See MPEP
§ 804.02.

  PROCESSING

  The Certificates of Corrections Branch is responsible
for the handling of all statutory disclaimers filed under
the first paragraph of 35 U.S.C. 253, whether the case is
pending or patented, and all terminal disclaimers (filed
under the second paragraph of 35 U.S.C. 253) except for
those filed in an application pending in an Examining Group.
This involves:

 (1)  Determining compliance with 35 U.S.C. 253 and 37
CFR 1.321 and 3.73;

 (2)  Notifying applicant or patentee when the disclaimer
is informal and thus not acceptable;

 (3)  Recording the disclaimers; and

 (4)  Providing the disclaimer data for printing.

  TERMINAL DISCLAIMER IN PENDING APPLICATION PRACTICE

  Where a terminal disclaimer is filed in an application
pending in an Examining Group, it will be processed by the
paralegal of the Office of the Special Program Examiner of
the  Examining  Group  having  responsibility  for  the
application. The paralegal will:

 (1)  Determine compliance with 35 U.S.C. 253 and 37 CFR
1.321 and 3.73;

 (2)  Notify  the  examiner  having  charge  of  the
application whether the terminal disclaimer is acceptable or
not;

 (3)  Where the terminal disclaimer is not acceptable,
indicate  the  nature  of  the  informalities  so  that  the
examiner can inform applicant in the next Office action;

 (4)  Record the terminal disclaimer; and

 (5)  Provide the appropriate terminal disclaimer data
for printing.

  The paralegal will identify a terminal disclaimer as
being present in an application by:

 (a)  Attaching a green label to the file wrapper;

 (b)  Stamping a notice on the file of the term which has
been disclaimed;

 (c)  Endorsing  the  paper  containing  the  terminal
disclaimer  submission  on  the  "Contents"  flap  of  the
application file; and

 (d)  Entering the terminal disclaimer into the PALM
system records, for the application.

  As to points 2 and 3 above, the Group's paralegal
completes a Terminal Disclaimer Informal Memo to notify the
examiner of the nature of the informalities in the terminal
disclaimer. The examiner should notify the applicant of the
informalities in the next Office action, or by interview
with applicant if such will expedite prosecution of the
application. Further, the examiner should initial and date
the Terminal Disclaimer Informal Memo and return it to the
paralegal to indicate that the examiner has appropriately
notified applicant about the terminal disclaimer, and so
that the Terminal Disclaimer Informal Memo may be discarded.

 **  Double Click here to see the image  **

  Since the claims of pending applications are subject to
cancellation,  amendment,  or  renumbering,  a  terminal
disclaimer directed to a particular claim or claims will not
be accepted; the disclaimer must be of a terminal portion of
the term of the entire patent to be granted. The statute
does  not  provide  for  conditional  disclaimers  and
accordingly, a proposed disclaimer which is made contingent

on the allowance of certain claims cannot be accepted. The
disclaimer should identify the disclaimant and his or her
interest in the application and should specify the date when
the disclaimer is to become effective.

  A  terminal  disclaimer  filed  to  obviate  a  double
patenting rejection is effective only with respect to the
application identified in the disclaimer unless by its terms
it  extends  to  continuing  applications.  For  example,  a
terminal disclaimer filed in a parent application normally
has no effect on a continuing application claiming filing
date benefits of the parent application under 35 U.S.C. 120.
If two (or more) pending applications are filed, in each of
which a rejection of one claimed invention over the other on
the ground of obviousness - type double patenting is proper,
the  rejection  will  be  made  in  each  application.  An
appropriate  terminal  disclaimer  must  be  filed  in  each
application. This is because a terminal disclaimer filed to
obviate a double patenting rejection is effective only with
respect to the application identified in the disclaimer.
Moreover, the filing of an appropriate terminal disclaimer
in each application will prevent a potential extension of
monopoly in the last application to be issued.

  >The following Form Paragraphs may be used to inform the
applicant of the status of a terminal disclaimer.<

> ¶  14.23  Terminal Disclaimer Proper

  The terminal disclaimer filed on [1]  disclaiming the
terminal portion of any patent granted on this application
which would extend beyond the expiration date of  [2] has
been reviewed and is accepted. The terminal disclaimer has
been recorded.

 Examiner Note:

  1. In bracket 1, insert the date the terminal disclaimer
was filed.

  2.  In  bracket  2,  list  the  patent  number  and/or
application number (including series code and serial no.)
preceded by the phrase - -any patent granted on application
number - -.

  3. If an assignment is submitted to support the terminal
disclaimer, also use 14.34 to suggest that the assignment be
separately submitted for recording in the Office.

  4. See MPEP § 1490 for discussion of requirements for a
proper terminal disclaimer.

  5.  Use  form  paragraph  14.23.01  for  reexamination
proceedings.

  6.  For  improper  terminal  disclaimers,  see  the  form
paragraphs which follow.

¶ 14.23.01  Terminal Disclaimer Proper (Reexam Only)

  The terminal disclaimer filed on [1]  disclaiming the
terminal portion of the patent being reexamined which would
extend beyond the expiration date of  [2] has been reviewed
and is accepted. The terminal disclaimer has been recorded.

 Examiner Note:

  1. In bracket 1, insert the date the terminal disclaimer
was filed.

  2.  In  bracket  2,  list  the  patent  number  and/or
application number (including series code and serial no.)
preceded by the phrase - -any patent granted on application
number - -.

  3. If an assignment is submitted to support the terminal
disclaimer, also use 14.34 to suggest that the assignment be
separately submitted for recording in the Office.

  4. See MPEP § 1490 for discussion of requirements for a
proper terminal disclaimer.

  5.  For  improper  terminal  disclaimers,  see  the  form
paragraphs which follow.

¶ 14.24  Terminal Disclaimer Not Proper - Introductory
Paragraph

  The terminal disclaimer filed on [1] disclaiming the
terminal portion of any patent granted on this application
which would extend beyond the expiration date of  [2] has
been reviewed and is NOT accepted.

 Examiner Note:

  1. In bracket 1, insert the date the terminal disclaimer
was filed.

  2.  In  bracket  2,  list  the  patent  number  and/or
application number (including series code and serial no.)
preceded by the phrase - -any patent granted on application
number - -.

  3. One or more of the appropriate paragraphs 14.26 to
14.32  MUST  follow  this  paragraph  to  indicate  why  the
terminal disclaimer is not accepted.

  4. Form paragraph 14.33 includes the full text of rule 37
CFR 3.73 and may be included in the Office action when
deemed appropriate.

  5. Form paragraph 14.35 may be used to inform applicant
that an additional disclaimer fee will not be required for
the submission of a replacement or supplemental terminal
disclaimer.

  6. Do not use in reexamination proceedings, use form
paragrah 14.25 instead.

¶ 14.25  Terminal Disclaimer Not Proper - Introductory
Paragraph (Reexam Only)

  The terminal disclaimer filed on [1] disclaiming the
terminal portion of the patent undergoing reexamination
which would extend beyond the expiration date of  [2] has
been reviewed and is NOT accepted.

 Examiner Note:

  1. In bracket 1, insert the date the terminal disclaimer

was filed.

  2. In bracket 2, list the patent number and/or the
application number (including series code and serial no.)
preceded by the phrase - -any patent granted on application
number - -.

  3. One or more of the appropriate paragraphs 14.26 to
14.32  MUST  follow  this  paragraph  to  indicate  why  the
terminal disclaimer is not accepted.

  4. Form paragraph 14.33 includes the full text of rule 37
CFR 3.73 and may be included in the Office action when
deemed appropriate.

  5. Form paragraph 14.35 may be used to inform applicant
that an additional disclaimer fee will not be required for
the submission of a replacement or supplemental terminal
disclaimer.

¶ 14.26  Does Not Comply With 37 CFR 1.321(b) and/or
(c)"Sub - Heading" Only

  The terminal disclaimer does not comply with 37 CFR
1.321(b) and/or (c) because:

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25 and
followed by one or more of the appropriate paragraphs
14.26.01 to 14.27.03.

¶ 14.26.01  Extent of Interest Not Stated

  The person who has signed the disclaimer has not stated
the extent of his/her interest, or the business entity's
interest,  in  the  application/patent  -  see  37  CFR
1.321(b)(3).

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25 AND
14.26.

¶ 14.26.02  Directed To Particular Claim(S)

  It is directed to a particular claim or claims, which is
not acceptable, since "the disclaimer must be of a terminal
portion of the term of the entire [patent or] patent to be
granted." See MPEP § 1490.

 Examiner Note:

 1. This paragraph MUST be preceded by 14.24 or 14.25 AND
14.26.

¶ 14.26.03  Not Signed

  The terminal disclaimer was not signed.

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25 AND
14.26.

¶ 14.26.04  Application/Patent Not Identified

  The  application/patent  being  disclaimed  has  not  been
identified.

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25 AND
14.26.

¶ 14.26.05 Application/PatentImproperly Identified

  The  application/patent  being  disclaimed  has  been
improperly identified since the number used to identify the
[1] being disclaimed is incorrect, the correct number is
[2] .

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25 AND
14.26.

  2. In bracket 1, insert - -application - - or - -patent -
-.

  3. In bracket 2, insert the correct application number
(including series code and serial no.) or the correct patent
number being disclaimed.

  4. A terminal disclaimer is acceptable if it includes the
correct patent number or the correct application number or
the serial number together with the proper filing date or
the proper series code.

¶ 14.26.06 Not Signed by All Owners

  It  was  not  signed  by  all  owners  and,  therefore,
supplemental terminal disclaimers are required from the
remaining owners.

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25 AND
14.26.

¶ 14.26.07 No Disclaimer Fee Submitted

 The disclaimer fee of $ [1] in accordance with 37 CFR
1.20(d)  has  not  been  submitted,  nor  is  there  any
authorization in the application file to charge a specified
Deposit Account.

 Examiner Note:

  1. In bracket 1, insert the fee for a disclaimer.

  2. This paragraph MUST be preceded by 14.24 or 14.25 AND
14.26. If the disclaimer fee was paid for a terminal
disclaimer which was not accepted, applicant does not have
to pay another disclaimer fee when submitting a replacement
or supplemental terminal disclaimer, and this paragraph
should not be used.

¶ 14.27.01  Lacks Clause of Enforceable Only During Period
of Common Ownership

  It does not include a recitation that any patent granted
shall be enforceable only for and during such period that
said patent is commonly owned with the application(s) or
patent(s) which formed the basis for the double patenting
rejection. See 37 CFR 1.321(c)(3).

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25 AND
14.26.

¶ 14.27.02  Fails to Disclaim Terminal Portion of Any
Patent Granted on Subject Application

  It fails to disclaim the terminal portion of any patent
granted on the subject application.

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25 AND
14.26.

  2. Use this paragraph when the period disclaimed is not
the correct period or when no period is specified at all.

  3. When using this form paragraph, give an example of
proper terminal disclaimer language using form paragraph
14.27.04  following  this  or  the  series  of  statements
concerning the defective terminal disclaimer.

¶ 14.27.03  Fails to Disclaim Terminal Portion of Subject
Patent

  It fails to disclaim the terminal portion of the subject
patent.

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25 AND
14.26.

  2.  Use  this  paragraph  in  a  reissue  application  or
reexamination proceeding when the period disclaimed is not
the correct period or when no period is specified at all.

  3. When using this form paragraph, give an example of
proper terminal disclaimer language using form paragraph
14.27.05  (for  reissue)  or  14.27.06  (for  reexamination
proceeding) following this or the series of statements
concerning the defective terminal disclaimer.

¶ 14.27.04  Examples of Acceptable Terminal Disclaimer
Language in Patent To Be Granted

  Examples  of  acceptable  language  for  making  the
disclaimer of the terminal portion of any patent granted on
the subject application follow:

  I. If a Provisional Obviousness - Type Double Patenting
Rejection Over A Pending Application was made, use:

 Petitioner hereby disclaims, except as provided below, the
terminal  part  of  any  patent  granted  on  the  instant
application, which would extend beyond the expiration date

of any patent granted on Application No. ___/______________,
filed  on  ____________,  as  shortened  by  any  terminal
disclaimer. Petitioner hereby agrees that any patent so
granted on the instant application shall be enforceable only
for and during such period that it and any patent granted on
the above - listed application are commonly owned. This
agreement runs with any patent granted on the instant
application and is binding upon the grantee, its successors,
or assigns.

  II. If an Obviousness - Type Double Patenting Rejection
Over A Prior Patent was made, use:

 Petitioner hereby disclaims, except as provided below, the
terminal  part  of  any  patent  granted  on  the  instant
application, which would extend beyond the expiration date
of Patent No. _________________, as presently shortened by
any terminal disclaimer. Petitioner hereby agrees that any
patent so granted on the instant application shall be
enforceable only for and during such period that it and the
above listed patent are commonly owned. This agreement runs
with any patent granted on the instant application and is
binding upon the grantee, its successors, or assigns.

¶ 14.27.05  Examples of Acceptable Terminal Disclaimer
Language in an Existing Patent

  Examples  of  acceptable  language  for  making  the
disclaimer of the terminal portion of the subject patent
follow:

  I. If a Provisional Obviousness - Type Double Patenting
Rejection Over A Pending Application was made, use:

 Petitioner hereby disclaims, except as provided below, the
terminal  part  of  any  patent  granted  on  the  instant
application, which would extend beyond the expiration date
of  any  patent  granted  on  Application  No.
____/______________, filed on _____________, as shortened by
any terminal disclaimer. Petitioner hereby agrees that any
patent so granted on the instant application shall be
enforceable only for and during such period that it and any
patent  granted  on  the  above  -  listed  application  are
commonly owned. This agreement runs with any patent granted
on the instant application and is binding upon the grantee,
its successors, or assigns.

  II. If an Obviousness - Type Double Patenting Rejection
Over A Prior Patent was made, use:

 Petitioner hereby disclaims, except as provided below, the
terminal  part  of  any  patent  granted  on  the  instant
application, which would extend beyond the expiration date
of Patent No. _____________, as presently shortened by any
terminal  disclaimer.  Petitioner  hereby  agrees  that  any
patent so granted on the instant application shall be
enforceable only for and during such period that it and the
above listed patent are commonly owned. This agreement runs
with any patent granted on the instant application and is
binding upon the grantee, its successors, or assigns.

¶ 14.27.06  Examples of Acceptable Terminal Disclaimer
Language in Patent (Reexamination Situation)

  Examples  of  acceptable  language  for  making  the

disclaimer of the terminal portion of the patent being
reexamined follow:

  I. If a Provisional Obviousness - Type Double Patenting
Rejection Over A Pending Application was made, use:

 Petitioner hereby disclaims, except as provided below, the
terminal part of the patent being reexamined, which would
extend beyond the expiration date of any patent granted on
Application No. ___/______________, filed on ____________,
as shortened by any terminal disclaimer. Petitioner hereby
agrees that the patent being reexamined shall be enforceable
only for and during such period that it and any patent
granted on the above - listed application are commonly
owned.  This  agreement  runs  with  any  reexamination
certificate issued on the instant patent and is binding upon
the grantee, its successors, or assigns.

  II. If an Obviousness - Type Double Patenting Rejection
Over A Prior Patent was made, use:

 Petitioner hereby disclaims, except as provided below, the
terminal part of the patent being reexamined, which would
extend  beyond  the  expiration  date  of  Patent  No.
_________________, as presently shortened by any terminal
disclaimer. Petitioner hereby agrees that the patent for
which a reexamination certificate is issued as a result of
this proceeding shall be enforceable only for and during
such period that it and the above listed patent are commonly
owned.  This  agreement  runs  with  any  reexamination
certificate issued on the instant patent and is binding upon
the grantee, its successors, or assigns.

¶ 14.28  Failure To State Capacity To Sign

  The person who signed the terminal disclaimer has failed
to state his/her capacity to sign for the corporation or
other business entity.

 Examiner Note:

 1. This paragraph MUST be preceded by 14.24 OR 14.25 and
14.26.

¶ 14.29  Not Recognized as Officer of Assignee "Sub -
Heading" Only

  The person who signed the terminal disclaimer is not
recognized as an officer of the assignee. See MPEP § 324.

 Examiner Note:

  1. This form paragraph is to be used when the person
signing the terminal disclaimer is not an authorized officer
as defined in MPEP § 324.

  2. This paragraph MUST be preceded by 14.24 or 14.25 and
followed by 14.29.01 and/or 14.29.02 when appropriate. An
attorney or agent of record is always authorized to sign the
terminal disclaimer, even though there is no indication that
he or she is an officer of the assignee.

  4. Use 14.29.02 to explain how an official, other than a
recognized  officer,  may  properly  execute  a  terminal
disclaimer.

¶ 14.29.01  Attorney/Agent Not Of Record

  An attorney or agent, not of record, is not authorized
to sign a terminal disclaimer in the capacity as an attorney
acting in a representative capacity as provided by 37 CFR
1.34(a). See 37 CFR 1.321(b) and/or (c).

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25 AND
14.29.

  2. An attorney or agent, however, may sign a terminal
disclaimer provided he/she is an attorney or agent of record
or  is  established  as  an  appropriate  official  of  the
assignee. To suggest to the attorney or agent, not of
record, how he/she may establish status as an appropriate
official of the assignee to execute a terminal disclaimer,
use form paragraph 14.29.02.

¶ 14.29.02  Criteria To Accept When Signed by a Non -
Recognized Officer

  It should be noted that it would be acceptable for a
person, other than a recognized officer, to execute a
terminal disclaimer, provided the record for the application
includes a statement with both of the following:

  1) a statement that the person is empowered to sign
terminal  disclaimers  and/or  act  on  behalf  of  the
organization,

 and

  2) the standard declaration under 37 CFR 1.68, e.g., -

 I hereby declare that all statements made herein of my own
knowledge  are  true  and  that  all  statements  made  on
information and belief are believed to be true; and further
that these statements were made with the knowledge that
willful false statements and the like so made are punishable
by fine or imprisonment, or both, under Section 1001 of
Title 18 of the United States Code and that such willful
false  statements  may  jeopardize  the  validity  of  the
application or any patent issued thereon.

  Accordingly, a new terminal disclaimer which includes
both enumerated items will be considered to be executed by
an appropriate official of the assignee. If a terminal
disclaimer is executed by a registered practitioner, item 2)
above may be omitted. A separately filed paper referencing
the previously filed terminal disclaimer and containing a
proper empowerment statement would also be acceptable.

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25 AND
14.29.

  2. When paragraph 14.29 is used to indicate that a
terminal disclaimer is denied because it was not signed by a
recognized officer, this paragraph should be used to point
out one way to correct the problem.

  3.  While  an  indication  of  the  person's  title  is
desirable, its inclusion is not mandatory when this option
is employed.

  4. A sample terminal disclaimer should be sent with the
Office action.

¶ 14.30  No Evidence of Chain of Title to Assignee

  There is no documentary evidence of a chain of title
from the original inventor(s) to the assignee, nor is it
specified (by reel and frame number) where such documentary
evidence is recorded in the Office (37 CFR 3.73(b)).

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25.

  2. Where an attorney or agent of record signs a terminal
disclaimer, there is no need to provide a statement under 37
CFR 3.73(b). Thus, this form paragraph should not be used.

  3. It should be noted that the documentary evidence or
the specifying of reel and frame number may be found in the
terminal disclaimer itself or in a separate paper.

¶ 14.31  No  Statement  of  Review  of  Documents  and
Certification of Title Being in the Assignee Seeking Action

  There is no statement by the assignee specifying that
the evidentiary documents have been reviewed and certifying
that, to the best of the assignee's knowledge and belief,
title is in the assignee seeking to take action (37 CFR
3.73(b)).

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25.

  2. Where an attorney or agent of record signs a terminal
disclaimer, there is no need to provide a statement under 37
CFR 3.73(b). Thus, this form paragraph should not be used.

  3. See MPEP § 324.

¶ 14.32  Application/Patent  Which  Forms  Basis  for
Rejection Not Identified

  The application/patent which forms the basis for the
double patenting rejection is not identified in the terminal
disclaimer.

 Examiner Note:

  1. This paragraph MUST be preceded by 14.24 or 14.25.

  2. Use this paragraph when no information is presented.
If  incorrect  information  is  contained  in  the  terminal
disclaimer, use form paragraph 14.26 and 14.26.05.

  3. Also use this paragraph if a terminal disclaimer fails
to  list  all  applications/patents  used  in  the  double
patenting rejection(s).

  4. If appropriate, explain the error by identifying the

application(s)/patent(s) improperly identified or omitted.

¶ 14.33  37 CFR 3.73 Establishing Right of Assignee To
Prosecute

  The following is a statement of 37 CFR 3.73, which
became effective on September 4, 1992:

 37 CFR 3.73 Establishing right of assignee to prosecute.

 (a) The inventor is presumed to be the owner of a patent
application, and any patent that may issue therefrom, unless
there is an assignment. The original applicant is presumed
to be the owner of a trademark application unless there is
an assignment.

 (b) When the assignee of the entire right, title, and
interest seeks to take action in a matter before the Office
with respect to a patent application, trademark application,
patent,  registration,  or  reexamination  proceeding,  the
assignee must establish its ownership of the property to the
satisfaction of the Commissioner. Ownership is established
by submitting to the Office documentary evidence of a chain
of title from the original owner to the assignee or by
specifying (e.g. reel and frame number, etc.) where such
evidence is recorded in the Office. Documents submitted to
establish ownership may be required to be recorded as a
condition to permitting the assignee to take action in a
matter pending before the Office. In addition, the assignee
of a patent application or patent must submit a statement
specifying that the evidentiary documents have been reviewed
and certifying that, to the best of assignee's knowledge and
belief, title is in the assignee seeking to take the action.

¶ 14.34  Suggestion To Record Assignment Submitted With
Terminal Disclaimer

  The assignment document filed on [1]  is acceptable as
the documentary evidence required by 37 CFR 3.73. If the
assignment document is not already recorded with the Patent
and Trademark Office, it is suggested that the assignment
document  be  submitted  for  recording  among  the  Office
assignment records. See 37 CFR 1.331 and MPEP § 302.

 Examiner Note:

  1. In bracket 1, insert the date the assignment document
was filed.

  2. This paragraph should be used when an assignment
document (an original, facsimile, or copy) is submitted for
recording among the assignment records of the Office.

¶ 14.35  Disclaimer Fee Not Required Twice

  It should be noted that applicant is not required to pay
another disclaimer fee as set forth in 37 CFR 1.20(d) when
submitting  a  replacement  or  supplemental  terminal
disclaimer.

 Examiner Note:

  This paragraph can be used to notify an applicant that
another  disclaimer  fee  will  not  be  required  when  a
replacement  or  supplemental  terminal  disclaimer  is

submitted.

¶ 14.36  Suggestion That Applicant Request a Refund

  Since the required fee for the terminal disclaimer was
previously  paid,  applicant's  payment  of  an  additional
terminal disclaimer fee is not required. Applicant may
request a refund of this additional terminal disclaimer fee
by submitting a written request for a refund and a copy of
this  Office  action  to:  Commissioner  of  Patents  and
Trademarks, Office of Finance, Washington, DC 20231.

 Examiner Note:

  1. This paragraph should be used to notify applicant that
a refund can be obtained if another terminal disclaimer fee
was  paid  when  a  replacement  or  supplemental  terminal
disclaimer was submitted.

  2. Note - If applicant has authorized or requested a fee
refund to be credited to a specific deposit account, then an
appropriate credit should be made to that deposit account
and this paragraph should NOT be used.

¶ 14.37  Samples  of  a  Terminal  Disclaimer  Over  a
Pending Application and Assignee Certificate Enclosed

  Enclosed with this Office action is a sample terminal
disclaimer which is effective to overcome a provisional
obviousness - type double patenting rejection over a pending
application (37 CFR 1.321(b) and (c)).

  Also enclosed is a sample Certificate Under 37 CFR
3.73(b) which an assignee may use in order to ensure
compliance with the rule. Part A of the Certificate is used
when there is a single assignment from the inventor(s). Part
B of the Certificate is used when there is a chain of title.
The "Copies of assignments..." box should be checked when
the assignment document(s) (set forth in part A or part B )
is/are not recorded in the Office, and a copy of the
assignment document(s) is/are attached. When the "Copies of
assignments..." box is checked, either the part A box or the
part B box, as appropriate, must be checked, and the
"Reel_____, Frame_____" entries should be left blank. If the
part B box is checked, and copies of assignments are not
included, the "From:________ To:________" blank(s) must be
filled in. This certificate should be used the first time an
assignee seeks to take action in an application under 37 CFR
3.73(b), e.g., when signing a terminal disclaimer or a power
of attorney.

 Examiner Note:

  This paragraph can be used to provide applicant samples
of  a  terminal  disclaimer  which  contains  the  necessary
clauses to overcome aprovisional obviousness - type double
patenting  rejection  over  apending  application  and  a
Certificate to be signed by an assignee to ensure compliance
with 37 CFR 3.73(b).

 (See your Group Paralegal or Special Program Examiner for
copies of the sample terminal disclaimer and Certificate to
enclose  with  the  Office  action.  Alternatively,  it  is
permissible to copy the sample terminal disclaimer found in
MPEP § 1490.)

¶ 14.38  Samples of a Terminal Disclaimer Over a Prior
Patent and Assignee Certificate Enclosed

  Enclosed with this Office action is a sample terminal
disclaimer which is effective to overcome an obviousness -
type double patenting rejection over a prior patent (37 CFR
1.321(b) and (c)).

  Also enclosed is a sample Certificate Under 37 CFR
3.73(b) which an assignee may use in order to ensure
compliance with the rule. Part A of the Certificate is used
when there is a single assignment from the inventor(s). Part
B of the Certificate is used when there is a chain of title.
The "Copies of assignments..." box should be checked when
the assignment document(s) (set forth in part A or part B )
is/are not recorded in the Office, and a copy of the
assignment document(s) is/are attached. When the "Copies of
assignments..." box is checked, either the part A box or the
part B box, as appropriate, must be checked, and the
"Reel_____, Frame_____" entries should be left blank. If the
part B box is checked, and copies of assignments are not
included, the "From:________ To:________" blank(s) must be
filled in. This certificate should be used the first time an
assignee seeks to take action in an application under 37 CFR
3.73(b), e.g., when signing a terminal disclaimer or a power
of attorney.

 Examiner Note:

 This paragraph can be used to provide applicant samples of
a terminal disclaimer which contains the necessary clauses
to overcome an obviousness - type double patenting rejection
over a prior patent and a Certificate to be signed by an
assignee to ensure compliance with 37 CFR 3.73(b).

 (See your Group Paralegal or Special Program Examiner for
copies of the sample terminal disclaimer and Certificate to
enclose  with  the  Office  action.  Alternatively,  it  is
permissible to copy the sample terminal disclaimer found in
MPEP § 1490.)

¶ 14.39  Sample  Assignee  Certificate  Under  37  CFR
3.73(b) Enclosed

  Enclosed with this Office action is a sample Certificate
under 37 CFR 3.73(b) which an assignee may use in order to
ensure compliance with the Rule. Part A of the Certificate
is  used  when  there  is  a  single  assignment  from  the
inventor(s). Part B of the Certificate is used when there is
a chain of title. The "Copies of assignments..." box should
be checked when the assignment document(s) (set forth in
part A or part B ) is/are not recorded in the Office, and a
copy of the assignment document(s) is/are attached. When the
"Copies of assignments..." box is checked, either the part A
box or the part B box, as appropriate, must be checked, and
the "Reel_____, Frame_____" entries should be left blank. If
the part B box is checked, and copies of assignments are not
included, the "From:________ To:________" blank(s) must be
filled in. This certificate should be used the first time an
assignee seeks to take action in an application under 37 CFR
3.73(b).

 Examiner Note:

  This paragraph can be used to provide applicant a sample
of a Certificate to be signed by an assignee to ensure
compliance with 37 CFR 3.73(b).

 (See your Group Paralegal or Special Program Examiner for
copies of the sample terminal disclaimer and Certificate to
enclose  with  the  Office  action.  Alternatively,  it  is
permissible to copy the sample certificate found in MPEP §
324.)<

  WITHDRAWING A RECORDED TERMINAL DISCLAIMER

  If timely requested, a recorded terminal disclaimer may
be withdrawn before the application in which it is filed
issues as a patent, or in a reexamination proceeding before
the reexamination certificate issues. After a patent or
reexamination certificate issues, it is unlikely that a
recorded terminal disclaimer will be nullified.

  1. Before Issuance of Paten t

  While the filing and recordation of an unnecessary
terminal disclaimer has been characterized as an "unhappy
circumstance" in In re Jentoft , 392 F.2d 633, 157 USPQ 363
(CCPA 1968), there is no statutory prohibition against
nullifying or otherwise canceling the effect of a recorded
terminal disclaimer which was erroneously filed before the
patent issues. Since the terminal disclaimer would not take
effect until the patent is granted, and the public has not
had the opportunity to rely on the terminal disclaimer,
relief from this unhappy circumstance may be available by
way of petition or by refiling the application.

  Under appropriate circumstances, consistent with the
orderly  administration  of  the  examination  process,  the
nullification of a recorded terminal disclaimer may be
addressed by filing a petition under 37 CFR 1.182 requesting
withdrawal of the recorded terminal disclaimer. Petitions
seeking to reopen the question of the propriety of the
double patenting rejection that prompted the filing of the
terminal disclaimer have not been favorably considered. The
filing of a continuing application, while abandoning the
application in which the terminal disclaimer has been filed,
will typically nullify the effect of a terminal disclaimer.

  2. After Issuance of Patent

  The mechanisms to correct a patent - certificate of
correction (35 U.S.C. 255), reissue (35 U.S.C. 251), and
reexamination  (35  U.S.C.  305)  -  are  not  available  to
withdraw or otherwise nullify the effect of a recorded
terminal disclaimer. As a general principle, public policy
does not favor the restoration to the patent owner of
something that has been freely dedicated to the public,
particularly where the public interest is not protected in
some manner - e.g., intervening rights in the case of a
reissue patent. See, e.g., Altoona Publix Theatres  v.
American Tri - Ergon Corp ., 294 U.S. 477, 24 USPQ 308
(1935).

  Certificates of correction (35 U.S.C. 255) are available
for the correction of an applicant's mistake. The scope of
this remedial provision is limited in two ways - by the
nature of the mistake for which correction is sought and the
nature of the proposed correction. In re Arnott , 19 USPQ2d

1049 (Comm'r. Pat. 1991). The nature of the mistake for
which correction is sought is limited to those mistakes that
are:

  (1)  of a clerical nature,

  (2)  of a typographical nature, or

  (3)  of a minor character.

  The nature of the proposed correction is limited to
those situations where the correction does not involve
changes which would:

  (1)  constitute new matter, or

  (2)  require reexamination.

  A mistake in filing a terminal disclaimer does not fall
within  any  of  the  categories  of  mistake  for  which  a
certificate  of  correction  of  applicant's  mistake  is
permissible, and any attempt to remove or nullify the effect
of  the  terminal  disclaimer  would  typically  require
reexamination of the circumstances under which it was filed.

  Although the remedial nature of reissue (35 U.S.C. 251)
is well recognized, reissue is not available to correct all
errors. It has been the Office position that reissue is not
available to withdraw or otherwise nullify the effect of a
terminal disclaimer recorded in an issued patent. First, the
reissue statute only authorizes the Commissioner to reissue
a patent "for the unexpired part of the term of the original
patent". Since the granting of a reissue patent without the
effect of a recorded terminal disclaimer would result in
extending the term of the original patent, reissue under
these  circumstances  would  be  contrary  to  the  statute.
Second, the principle against recapturing something that has
been intentionally dedicated to the public dates back to
Leggett  v.  Avery , 101 U.S. 256 (1879). The attempt to
restore that portion of the patent term that was dedicated
to the public to secure the grant of the original patent
would be contrary to this recapture principle. Finally,
applicants have the opportunity to challenge the need for a
terminal  disclaimer  during  the  prosecution  of  the
application that issues as a patent. "Reissue is not a
substitute for Patent Office appeal procedures."  Ball Corp.
v.  United States , 729 F.2d 1429, 1435, 221 USPQ 289, 293
(Fed. Cir. 1984). Where applicants did not challenge the
propriety of the examiner's obvious - type double patenting
rejection, but filed a terminal disclaimer to avoid the
rejection, the filing of the terminal disclaimer did not
constitute error within the meaning of 35 U.S.C. 251.  Ex
parte Anthony , 230 USPQ 467 (Bd. App. 1982),  aff'd . No.
84 - 1357 (Fed. Cir. June 14, 1985).

  Finally,  the  nullification  of  a  recorded  terminal
disclaimer would not be appropriate in a reexamination
proceeding. There is a prohibition (35 U.S.C. 305) against
enlarging the scope of a claim during a reexamination
proceeding. As noted by the Board in Anthony , supra , if a
terminal disclaimer was nullified, "claims would be able to
be sued upon for a longer period than would the claims of
the original patent. Therefore, the vertical scope, as
opposed to the horizontal scope (where the subject matter is
enlarged), would be enlarged."

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  Chapter 1500 Design Patents

  1501  Statutes and Rules Applicable
  1502  Definition of a Design
  1502.01  Distinction Between Design and Utility Patents
  1503  Elements of a Design Patent Application
  1503.01  Specification and Claim
  1503.02  Drawing
  1503.03  Design Claim
  1504  Examination
  1504.01  Statutory Subject Matter for Designs
  1504.02  Novelty
  1504.03  Nonobviousness
  1504.04  Considerations Under 35 U.S.C. 112
  1504.05  Restriction
  1504.06  Double Patenting
  1504.10  Priority Under 35 U.S.C. 119(a) - (d)
  1504.20  Benefit Under 35 U.S.C. 120
  1505  Allowance and Term of Design Patent
  1509  Reissue of a Design Patent
  1510  Reexamination
  1511  Protest
  1512  Relationship Between Design Patent, Copyright, and
  Trademark
  1513  Miscellaneous

1501  Statutes and Rules Applicable

  The right to a patent for a design stems from:

 35 U.S.C. 171.  Patents for designs .

 Whoever invents any new, original and ornamental design for
an article of manufacture may obtain a patent therefor,
subject to the conditions and requirements of this title.

 The provisions of this title relating to patents for
inventions shall apply to patents for designs, except as
otherwise provided.

 37 CFR 1.151.  Rules applicable .

 The rules relating to applications for patents for other
inventions  or  discoveries  are  also  applicable  to
applications for patents for designs except as otherwise
provided. (35 U.S.C. 171)

  37 CFR 1.152 - 1.155, which relate only to design
patents, are reproduced in the sections of this chapter.

  It is noted that design patent applications are not
included in the Patent Cooperation Treaty (PCT), and the
procedures followed for PCT international applications are

not to be followed for design patent applications.

  The practices set forth in other chapters of this Manual
of Patent Examining Procedure(MPEP) are to be followed in
examining  applications  for  design  patents,  except  as
particularly pointed out in the chapter.

1502  Definition of a Design [R - 2]

  The  design  of  an  object  consists  of  the  visual
characteristics or aspects displayed by the object. It is
the appearance presented by the object which creates a
visual impact upon the mind of the observer.

  Since a design is manifested in appearance, the subject
matter of a design patent application may relate to the
configuration  or  shape  of  an  object,  to  the  surface
ornamentation on an object, or both.

  Design is inseparable from the object to which it is
applied and cannot exist alone merely as a scheme of surface
ornamentation. It must be a definite, preconceived thing,
capable of reproduction and not merely the chance result of
a method.

 **

¶ 15.43  Subject Matter of Design Patent

  Since a design is manifested in appearance, the subject
matter of a Design Patent may relate to the configuration or
shape of an object, to the surface ornamentation on the
object or both.

1502.01 Distinction Between Design and Utility Patents [R -
1]

  In general terms, a "utility patent" protects the way an
article is used and works (35 U.S.C. 101), while a "design
patent" protects the way an article looks (35 U.S.C. 171).
The  ornamental  appearance  of  an  article  includes  its
shape/configuration  or  surface  ornamentation  upon  the
article, or both. Both design and utility patents may be
obtained on an article if invention resides both in its
utility and ornamental appearance.

  While utility and design patents afford legally separate
protection, the utility and ornamentality of an article is
not easily separable. Invention is a blend of function and
ornamental design. Articles of manufacture typically possess
both functional and ornamental characteristics.

  Some of the more common differences between design and
utility patents are summarized below:

 1.  The  term  of  a  utility  patent  >on  an
application filed on or after June 8, 1995< is*>20< years
>measured from the U.S. filing date; or if the application
contains a specific reference to an earlier application
under 35 U.S.C. 120, 121, or 365(c), 20 years from the
earliest effective U.S. filing date<, while the term of a
design patent is 14 years >measured from the date of grant<
(see 35 U.S.C. 173).

 2.  Maintenance fees are required for utility

patents (see 37 CFR 1.20), while no maintenance fees are
required for design patents.

 3.  Design patent applications may include only a
single claim, while utility patent applications can have
multiple claims.

 4.  Restriction  between  plural,  distinct
inventions is discretionary on the part of the examiner in
utility patent applications (see MPEP § 803), while it is
mandatory  in  design  patent  applications  (see  MPEP  §
1510.01).

 5.  An international application naming various
countries may be filed for utility patents under the Patent
Cooperation Treaty (PCT), while no such provision exists for
design patents.

 6.  Foreign priority under 35 U.S.C. 119>(a) -
(d)< can be obtained for the filing of utility patent
applications up to 1 year after the first filing in any
country subscribing to the Paris Convention, while this
period is only 6 months for design patent applications.

  Other distinctions between design and utility patent
practice are detailed in this chapter. Unless otherwise
provided, the rules for applications for utility patents are
equally applicable to applications for patents for designs
(35 U.S.C. 171 and 37 CFR 1.151).

1503  Elements of a Design Patent Application

  A design patent application has essentially the elements
required of an application for a utility patent filed under
35 U.S.C. 101 (see Chapter 600). However, unlike the latter,
a preamble still remains a requirement in a design patent
application, and the arrangement of the specification is as
specified in 37 CFR 1.154.

  A claim in a specific form is a necessary element of a
design patent application. See MPEP § 1503.01.

  A drawing is an essential element of a design patent
application.  See  MPEP  §  1503.02  for  requirements  for
drawing.

1503.01 Specification and Claim [R - 2]

 37 CFR 1.153.  Title, description and claim, oath or
declaration.

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

 (b)  The oath or declaration required of the applicant
must comply with § 1.63.

 37 CFR 1.154.  Arrangement of specification.

 The following order of arrangement should be observed in
framing design specifications:

 (a)  Preamble, stating name of the applicant and title
of the design.

 (b)  Description  of  the  figure  or  figures  of  the
drawing.

 (c)  Description, if any.

 (d)  Claim.

 (e)  Signed oath or declaration (See § 1.153(b)).

¶ 15.05  Design Patent Application Arrangement

 The following order of arrangement should be observed in
framing design patent applications:

 (a)  Preamble, stating the name of the applicant and the
title of the design.

 (b)  Description  of  the  figure  or  figures  of  the
drawings.

 (c)  Description, if any.

 (d)  Claim.

 (e)  Signed oath or declaration (See 37 CFR 1.153(b)).

  PREAMBLE

  The preamble must state the name of the applicant and
the title of the design (37 CFR 1.153 - 1.154).

  The title of the design identifies the article in which
the design is embodied by the name generally known and used
by the public. A title descriptive of the actual article
aids the examiner in developing a complete field of search
of the prior art and aids in the proper assignment of new
applications to the appropriate class, subclass, and patent
examiner, and the proper classification of the patent upon
allowance of the application. It also aids the public in
understanding the nature and use of the article embodying
the design after the patent has been published. For example,
a broad title such as "Adapter Ring" provides little clue as
to the nature and intended use of the article embodying the
design.  Thus,  applicants  are  encouraged  to  provide  a
specific and descriptive title.

  Following are examples of preferred and non - preferred
titles:

  Preferred Title:Rather than :

  Stove Heating Device

  Vacuum Bottle Bottle

  Microwave Oven Cooking

  Appliance

  Alarm for an Automobile Electronic

  Device

  Since  37  CFR  1.153  requires  that  the  title  must
designate the particular article, and since the particular
article is defined by the claim, it follows that the
language of the title and claim must correspond. When the
language of the title and claim do not correspond, the title
should  be  objected  to  under  37  CFR  1.153  as  not
corresponding to the language of the claim.

  However,  it  is  emphasized  that,  under  the  second
paragraph of 35 U.S.C. 112, the claim defines "the subject
matter  which  the  applicant  regards  as  his  invention"
(emphasis added). Thus, the examiner should afford the

 applicant substantial latitude in the language of the
title/claim. The examiner should only require amendment of
the title/claim if the language is clearly misdescriptive,
inaccurate, or unclear (i.e., the language would result in a
rejection  of  the  claim  under  35  U.S.C.  112,  second
paragraph; see MPEP §*>1503.03<).

  Any amendment to the language of the title must also be
made in both the title and the claim. It is preferable (but
not required) that the amended language also be incorporated
into the figure description. However, it is not necessary to
submit  a  new  oath  or  declaration  merely  to  obtain
correspondence in terminology between the title, claim, and
the oath or declaration.

¶ 15.05.1  Title of Design Invention

 The title of an article being claimed in a design patent
must correspond to the name of the article shown in solid
lines in the drawings.

¶ 15.59  Amend Title

  For  [1**],  the  title  [2]  amended  throughout  the
application, original oath or declaration excepted, to read:
[3].

 Examiner Note:

 >1. In bracket 1, insert reason.

 2.<In bracket 2, insert "must be" or "has been."

  DESCRIPTION

  Any description of the design in the specification,
other than a brief description of the drawing, is generally
not necessary since as a general rule the illustration in
the drawing views is its own best description. However,
while not required, such a description is not prohibited and
may  be  incorporated,  at  applicant's  option,  into  the
specification or may be provided in a separate paper.

  In addition to the figure descriptions, the following
types of statements are permissible in the specification:

  1.  Description of the appearance of portions of the
claimed design which are not illustrated in the drawing
disclosure.

  2.  Statement  indicating  that  any  broken  line
illustration in the drawing disclosure is not part of the
design sought to be patented.

  3.  Description denoting the nature and environmental
use of the claimed design.

  It is the policy of the Office to attempt to resolve
questions about the nature and intended use of the claimed
design prior to examination by making a Requirement for
Information (see Form Paragraph 15.56) at the time of
initial docketing of the application. This will enable the
application to be properly classified and docketed to the
appropriate examiner and to be searched when the application
comes up for examination in its normal course without the
need for a rejection under 35 U.S.C. 112 prior to a search
of the prior art. Explanation of the nature and intended use
of the article may be added to the specification provided it
does not constitute new matter. See MPEP § 1506. It may
alternately,  at  applicant's  option,  be  submitted  in  a
separate paper without amendment of the specification.

  4.  A "characteristic features" statement describing a
particular feature of the design that is considered a
feature of novelty or nonobviousness over the prior art (37
CFR 1.71(c)).

¶ 15.47  Characteristic Feature Statement

  A  "characteristic  features"  statement  describing  a
particular  feature  of  novelty  or  unobviousness  in  the
claimed design may be permissible in the specification. Such
a statement should be in terms as "The characteristic
feature of the design resides in **>[1]"< or, if combined
with one of the figure descriptions, in terms such as > " .
. . < the characteristic feature of which resides in
**>[2]"<. While consideration of the claim goes to the total
or overall appearance, the use of a "characteristic feature"
statement may serve later to limit the claim. ( McGrady v.
Aspenglas Corp., **208 USPQ 242>(S.D.N.Y. 1980)<).

 Examiner Note:

  In  brackets  1  and  2,  insert  a  brief  but  accurate
description of the design.<

  The following types of statements are not permissible in
the specification:

 a.  A disclaimer statement directed to any portion of
the claimed design that is shown in solid lines in the
drawings. See Ex parte Remington , 114 O.G. 761, 1905 C.D.
28 (Comm'r Pat. 1904); In re Blum, 153 USPQ 177 (CCPA 1967).

 b.  Statements which describe or suggest modifications
of the claimed design which are not illustrated in the
drawing disclosure.

 c.  Statements  describing  matters  which  are
constructions unrelated to the design.

¶ 15.60  Amend All Figure Descriptions

 For [1**] the figure descriptions [2] amended to read: [3].

 Examiner Note:

 >1.  In bracket 1, insert reason.

 2.< In bracket 2, insert "must be" or "have been".

 >3.  In bracket 3, insert amended text.<

¶ 15.61  Amend Selected Figure Descriptions

  For [1**] the description(s) of Fig(s). [2] [3] amended
to read: [4]

 Examiner Note:

 >1.  In bracket 1, insert reason.

 2.  In bracket 2, insert selected Figure descriptions.

 3.<  In bracket 3, insert "must be" or "have been."

 >4.  In bracket 4, insert amended text.<

1503.02 Drawing [R - 2]

 37 CFR 1.152.  Design drawing.

 The design must be represented by a drawing that complies
with  the  requirements  of  §  1.84,  and  must  contain  a
sufficient  number  of  views  to  constitute  a  complete
disclosure of the appearance of the article. Appropriate
surface shading must be used to show the character or
contour of the surfaces represented. Solid black surface
shading is not permitted except when used to represent color
contrast.  Broken  lines  may  be  used  to  show  visible
environmental structure, but may not be used to show hidden
planes and surfaces which cannot be seen through opaque
materials.  Alternate  positions  of  a  design  component,
illustrated by full and broken lines in the same view are
not permitted in a design drawing. Photographs and ink
drawings  must  not  be  combined  in  one  application.
Photographs submitted in lieu of ink drawings in design
patent applications must comply with § 1.84(b) and must not
disclose environmental structure but must be limited to the
design for the article claimed. Color drawings and color
photographs are not permitted in design patent applications.

  Every design patent application must include a drawing.
It is of utmost importance that the drawing clearly show the
complete ornamental appearance of the entire article such
that nothing is left to conjecture.

  In addition to the criteria for utility applications set
forth in 37 CFR 1.81 - 1.88, design drawings must also
comply with 37 CFR 1.152 as follows:

 A.  Views

  Normally, drawing figures should be provided showing the
article, at a minimum, from each of its six normal views.
Additional perspective views should also be provided if
helpful in disclosing the design.

  Views that are merely duplicative of other views of the
article  or  that  are  merely  plain  and  include  no

ornamentality  may  be  omitted  from  the  drawing  if  the
specification  makes  this  explicitly  clear.  See  MPEP  §
1503.01. For example, if the left and right sides of an
article are identical or symmetrical, a view should be
provided of one side and a statement made in the drawing
description that the other side is identical/symmetrical; if
the bottom of an article has a plain bottom, a view of the
bottom may be omitted if the specification includes a
statement that the bottom is plain and unornamented.

  While a sectional view which more clearly brings out
elements of the design is permissible (see Ex parte Lohman ,
1912 CD 336, 184 OG 287 (Comm'r Pat. 1912)), a sectional
view presented to show functional features or for exhibiting
mechanical features or interior structure not part of the
design should be rejected under 35 U.S.C. 112, paragraph 2.

 B.  Surface Shading

  The drawing should be appropriately surface shaded to
show clearly the character and contour of all surfaces of
any 3 - dimensional aspects of the design Surface shading is
also necessary to distinguish between any open and solid
areas of the article.

  Lack of appropriate surface shading in the drawing as
filed may render the design indefinite under 35 U.S.C. 112.
Additionally, if the surface shape is not evident from the
disclosure as filed, the addition of surface shading after
filing may comprise new matter and may prevent the applicant
from  obtaining  priority  under  35  U.S.C.  120  of  any
continuation - in - part filed to correct the defect in the
original application.

 C.  Broken Lines

  Structure that is not part of the claimed design but is
considered necessary to show the environment in which the
article is used may be represented in the drawing in broken
lines. Additionally, a portion of an article that is not
considered part of the design may be shown in broken lines,
In re Zahn204 USPQ 988 (CCPA 1980). A broken line showing is
for illustrative purposes only and forms no part of the
claimed design.

  However, broken lines are not permitted for the purpose
of indicating that a portion of an article is of lesser
importance in the design, In re Blum , ** 153 USPQ 177 (CCPA
1967).  The  use  of  broken  lines  indicates  that  the
environmental  structure  or  the  portion  of  the  article
depicted in broken lines forms no part of the design, and is
not to indicate the relative importance of parts of a
design.

  In general, when broken lines are used, they should not
intrude upon or cross the showing of the claimed design and
should not be of heavier weight than the lines used in
depicting the claimed design. Where a broken line showing of
environmental structure must necessarily cross or intrude
upon the representation of the claimed design, such an
illustration should be included as a separate figure in
addition to the other figures which fully disclose the
subject matter of the design.

 D.  Surface Indicia

  The ornamental appearance of an article includes its
shape and configuration as well as any indicia, lettering,
or other ornamentation embodied in the article ("surface
indicia"). Surface indicia must be embodied in an article of
manufacture. Surface indicia, per se(i.e., not embodied in a
specific article of manufacture) is not proper subject
matter for a design patent under 35 U.S.C. 171. See MPEP §
1507.

  Surface indicia shown in a design drawing will normally
be considered as prima facie evidence that the inventor
considered the surface indicia shown in the drawing to be an
integral part of the claimed design.

  However, if the original disclosure of an application,
taken as a whole, indicates that the inventor intended
surface indicia to be merely exemplary or nonlimitative, the
examiner may afford applicant the opportunity to remove the
surface indicia from the design or to show the indicia in
broken lines. For example, lettering on an article that is
described in the specification as merely exemplary of any
lettering that could be applied to the article may be
amended to be shown in broken lines without raising the
issue of new matter.

  If the original drawing shows surface indicia, and the
disclosure, taken as a whole, does not indicate that the
inventor considered the indicia to be merely optional or
exemplary, an amendment canceling the indicia (or showing
the indicia in broken lines) would comprise new matter.

  If the examiner is uncertain from the application, as
filed, whether the inventor considered any surface indicia
to be part of the design or merely exemplary of other
indicia, the examiner may require the actual inventor to
provide an oath or declaration attesting to whether the
indicia was considered a part of the claimed design. It is
appropriate to request such information directly from the
inventor since only the actual named inventor is directly
aware of his or her actual inventive intent.

 E.  Photographs

  Drawings are normally required to be submitted in black
ink on white paper, 37 CFR 1.84(a). Photographs are normally
not permitted in design patent applications.

  However,  the  Office  will  accept  black  and  white
photographs  in  design  patent  applications  only  after
granting a petition filed under 37 CFR 1.84(b)(1) requesting
that  photographs  be  accepted.  Petitions  to  accept
photographs  as  drawings  will  be  considered  by  the
Supervisory Patent Examiner and will be granted if the
appropriate fee set forth in 37 CFR 1.17(h) has been
included and the three sets of photographs required under 37
CFR 1.84(b)(1)(ii) have been included. If other provisions
of 37 CFR 1.84(b) for photographs have not been complied
with  (e.g.,  the  photographs  are  not  on  double  weight
photographic paper, are not properly mounted, or details are
not adequately reproducible), such lack of compliance will
not bar the grant of a petition to accept the photographs
but rather will form the basis of subsequent objection to
the content of the drawing.

  Photographs submitted on double weight photographic
paper must have the drawing figure number entered on the
face of the photograph. Photographs mounted on Bristol board
may have the figure number shown in black ink on the Bristol
board proximate the corresponding photograph.

  Photographs and ink drawings must not be combined in one
application. The introduction of both photographs and ink
drawings in a design application would result in a high
probability  of  inconsistencies  between  corresponding
elements  on  the  ink  drawings  as  compared  with  the
photographs.

  Color  drawings  and  color  photographs  will  not  be
accepted under any conditions in design patent applications.
See 37 CFR 1.152.

1503.03 Design Claim [R - 2]

  The requirements for utility claims specified in 37 CFR
1.75 do not apply to design claims. Instead, the form and
content of a design claim is set forth in 37 CFR 1.153:

 37 CFR 1.153 ... claim ...

  (a) ... The claim shall be in formal terms to the
ornamental design for the article (specifying name) as shown
or as shown and described. More than one claim is neither
required nor permitted.

  *****

  A design patent application may only include a single
claim. The single claim should normally be in formal terms
to "The ornamental design for (the article as specified in
the Title of the Invention ) as shown." The description of
the article in the claim should be consistent in terminology
with the title of the invention. See MPEP § 1503.01.

  When there is a properly included special description of
the design in the specification (see MPEP § 1503.01), or a
proper showing of modified forms of the design or other
descriptive matter has been included in the specification,
the words "and described" should be added to the claim
following the term "shown"; i.e., the claim should read "The
ornamental design for ( the article as specified in the
Title of the Invention ) as shown and described".

  The claimed design is shown by solid lines in the
drawing. It is not permissible to show any portion of the
claimed design in dotted lines. There are no portions of the
claimed design which are immaterial or unimportant, and
elements shown in dotted lines in the drawing are not part
of the claim. See MPEP § 1502.03(c) and In re Blum , ** 153
USPQ 177 (CCPA 1967).

¶ 15.45  Photographs as Informal Drawings

  For  filing  date  purposes,  in  those  design  patent
applications  **>containing<  photographs  for  drawings
contrary  to  the  requirement  for  ink  drawings,  the
Application Division has been authorized to construe the
photographs as informal drawings rather than to hold the
*>applications< incomplete as filed. By so doing, the Patent
and  Trademark  Office  can  accept  applications  without

requiring  applicants  to  file  petitions  to  obtain  the
original deposit date as the filing date. However, 37 CFR
1.84(b)(1) requires that if black and white photographs are
filed as formal drawings, a petition for acceptance *>of<
such, the fee under 37 CFR 1.17(h), and three sets of the
photographs must be filed. Before the photographs in this
application can be treated as formal drawings, applicant
must submit [1].

 Examiner Note:

 1. In bracket 1, insert "a petition", "the fee", and/or
"three full sets of photographs".

¶ 15.57  Not - Entered Drawings Returned

 The non - entered drawings filed [1] will be returned to
applicant(s) upon proper request. The request must be filed
within a reasonable time. Otherwise the drawing may be
disposed of at the discretion of the Commissioner (MPEP > §
< 608.02(y)).

1504  Examination

  In design patent applications, as in utility patent
applications,  novelty  and  unobviousness  are  necessary
prerequisites to the grant of a patent. In the case of a
design, the inventive novelty or unobviousness resides in
the shape or configuration and/or surface ornamentation of
the  subject  matter  which  is  claimed.  This  is  in
contradistinction  to  the  evaluation  of  novelty  and
nonobviousness  in  utility  patent  applications,  which
involves  evaluation  of  such  factors  as  the  operation,
function, advantages, and properties of the article.

  Novelty  and  unobviousness  of  a  design  claim  must
generally be determined by a search in the pertinent design
classes. It is also mandatory that the search be extended to
the mechanical classes encompassing inventions of the same
general type. Catalogs and trade journals are also to be
consulted.

1504.01 Statutory Subject Matter for Designs [R - 2]

 A.  Icons and Surface Indicia

  The language "new, original and ornamental design for an
article of manufacture" set forth in 35 U.S.C. 171 has been
interpreted by the case law to include at least three kinds
of designs: (1) a design for an ornament, impression, print,
or picture applied to an article of manufacture (surface
indicia); (2) a design for the shape or configuration of an
article of manufacture; and (3) a combination of the first
two categories. See In re Schnell , 46 F.2d 203, 8 USPQ 19
(CCPA 1931);  Ex parte Donaldson , 26 USPQ2d 1250 (Bd. Pat.
App. & Int. 1992).

  A picture standing alone is not patentable under 35
U.S.C. 171. The factor which distinguishes statutory design
subject matter from mere picture or ornamentation, per
se(i.e., abstract design) is the embodiment of the design in
an article of manufacture. Consistent with 35 U.S.C. 171,
case law and PTO practice (37 CFR 1.152), the design must be
shown applied to an article of manufacture.

  A claim to a picture, * print, impression, etc. per se ,
that is not embodied in an article of manufacture should be
rejected under 35 U.S.C. 171 as directed to nonstatutory
subject matter.

  >I.  Guidelines  for  Examination  of  Design  Patent
Applications for Computer - Generated Icons

  The following guidelines have been developed to assist
PTO  personnel  in  determining  whether  design  patent
applications for computer - generated icons comply with the
"article of manufacture" requirement of 35 U.S.C. 171.

  (a).  General  Principle  Governing  Compliance  with  the
"Article of Manufacture" Requirement

  Computer - generated icons, such as full screen displays
and individual icons, are 2 - dimensional images which alone
are surface ornamentation. See, e.g., Ex  parte Strijland ,
26 USPQ2d 1259 (Bd. Pat. App. & Int. 1992) (computer -
generated icon alone is merely surface ornamentation). The
PTO  considers  designs  for  computer  -  generated  icons
embodied in articles of manufacture to be statutory subject
matter eligible for design patent protection under 35 U.S.C.
171. Thus, if an application claims a computer - generated
icon shown on a computer screen, monitor, other display
panel, or a portion thereof, the claim complies with the
"article of manufacture" requirement of 35 U.S.C. 171. Since
a patentable design is inseparable from the object to which
it is applied and cannot exist alone merely as a scheme of
surface ornamentation, a computer - generated icon must be
embodied in a computer screen, monitor, other display panel,
or portion thereof, to satisfy 35 U.S.C. 171. See MPEP §
1502.

  "We do not see that the dependence of the existence of a
design on something outside itself is a reason for holding
it is not a design `for an article of manufacture.' " In re
Hruby , 153 USPQ 61 (CCPA 1967) (design of water fountain
patentable  design  for  an  article  of  manufacture).  The
dependence of a computer - generated icon on a central
processing unit and computer program for its existence
itself is not a reason for holding that the design is not
for an article of manufacture.

  (b).  Procedures  for  Evaluating  Whether  Design  Patent
Applications Drawn to Computer - Generated Icons Comply with
the "Article of Manufacture" Requirement

  PTO personnel shall adhere to the following procedures
when reviewing design patent applications drawn to computer
- generated icons for compliance with the "article of
manufacture" requirement of 35 U.S.C. 171.

  (1) Read the entire disclosure to determine what the
applicant claims as the design and to determine whether the
design is embodied in an article of manufacture. 37 CFR 1.71
and 1.152 - 1.154.

  Since the claim must be in formal terms to the design
"as shown, or as shown and described," the drawing provides
the best description of the claim. 37 CFR 1.153.

  (i) Review the drawing to determine whether a computer
screen, monitor, other display panel, or portion thereof, is

shown. 37 CFR 1.152.

  Although a computer - generated icon may be embodied in
only a portion of a computer screen, monitor, or other
display panel, the drawing "must contain a sufficient number
of  views  to  constitute  a  complete  disclosure  of  the
appearance of the article." 37 CFR 1.152. In addition, the
drawing must comply with 37 CFR 1.84.

  (ii) Review the title to determine whether it clearly
describes the claimed subject matter. 37 CFR 1.153.

  The following titles do not adequately describe a design
for an article of manufacture under 35 U.S.C. 171: "computer
icon"; or "icon." On the other hand, the following titles do
adequately describe a design for an article of manufacture
under  35  U.S.C.  171:  "computer  screen  with  an  icon";
"display panel with a computer icon"; "portion of a computer
screen with an icon image"; "portion of a display panel with
a computer icon image"; or "portion of a monitor displayed
with a computer icon image."

  (iii) Review the specification to determine whether a
characteristic feature statement is present. 37 CFR 1.71. If
a characteristic feature statement is present, determine
whether  it  describes  the  claimed  subject  matter  as  a
computer - generated icon embodied in a computer screen,
monitor,  other  display  panel,  or  portion  thereof.  See
McGrady  v  . Aspenglas Corp. , 208 USPQ 242 (S.D.N.Y. 1980)
(descriptive statement in design patent application narrows
claim scope).

  (2) If the drawing does not depict a computer - generated
icon embodied in a computer screen, monitor, other display
panel, or a portion thereof, in either solid or broken
lines, reject the claimed design under 35 U.S.C. 171 for
failing  to  comply  with  the  article  of  manufacture
requirement.

  (i) If the disclosure as a whole does not suggest or
describe  the  claimed  subject  matter  as  a  computer  -
generated icon embodied in a computer screen, monitor, other
display panel, or portion thereof, indicate that:

 - the claim is fatally defective under 35 U.S.C. 171; and

 - amendments to the written description, drawings and/or
claim attempting to overcome the rejection will not be
entered because they would lack a written descriptive basis
under 35 U.S.C. 112, first paragraph, and would constitute
new matter under 35 U.S.C. 132.

  (ii) If the disclosure as a whole suggests or describes
the claimed subject matter as a computer - generated icon
embodied in a computer screen, monitor, other display panel,
or portion thereof, indicate that the drawing may be amended
to overcome the rejection under 35 U.S.C. 171. Suggest
amendments which would bring the claim into compliance with
35 U.S.C. 171.

  (3) Indicate all objections to the disclosure for failure
to comply with the formal requirements of the Rules of
Practice in Patent Cases. 37 CFR 1.71, 1.81 - 1.85, and
1.152 - 1.154. Suggest amendments which would bring the
disclosure into compliance with the formal requirements of

the Rules of Practice in Patent Cases.

  (4) Upon response by applicant:

  (i) Approve entry of any amendments which have support in
the original disclosure; and

  (ii)  Review  all  arguments  and  the  entire  record,
including any amendments, to determine whether the drawing,
title, and specification clearly disclose a computer -
generated icon embodied in a computer screen, monitor, other
display panel, or portion thereof.

  (5) If, by a preponderance of the evidence (see In re
Oetiker , 24 USPQ2d 1443 (Fed. Cir. 1992) ("After evidence
or argument is submitted by the applicant in response,
patentability is determined on the totality of the record,
by a preponderance of evidence with due consideration to
persuasiveness  of  argument.")),  the  applicant  has
established that the computer - generated icon is embodied
in a computer screen, monitor, other display panel, or
portion thereof, withdraw the rejection under 35 U.S.C. 171.

 II. Effect of the Guidelines on Pending Design Applications
Drawn to Computer - Generated Icons

  PTO personnel shall follow the procedures set forth
above when examining design patent applications for computer
- generated icons pending in the PTO as of April 19, 1996.

 III. Treatment of Type Fonts

  Traditionally, type fonts have been generated by solid
blocks from which each letter or symbol was produced.
Consequently,  the  PTO  has  historically  granted  design
patents drawn to type fonts. PTO personnel should not reject
claims for type fonts under 35 U.S.C. 171 for failure to
comply with the "article of manufacture" requirement on the
basis that more modern methods of typesetting, including
computer  -  generation,  do  not  require  solid  printing
blocks.<

 B. Functionality vs. Ornamentality

  A design for an article of manufacture that is dictated
purely by the function of the article lacks ornamentality
and should be rejected under 35 U.S.C. 171. See In re
Carletti, 328 F.2d 10, 140 USPQ 653 (CCPA 1964);  Power
Control Corp . v.  Hybrinetics, Inc ., 806 F.2d 234, 231
USPQ 774 (Fed. Cir. 1986).

  The examiner shall, upon making a prima facie showing
that the design of an article is dictated by its function,
make a rejection under 35 U.S.C. 171 that the design lacks
ornamentality.  Such  a  rejection  is  rebuttable  through
presentation  of  evidence  of  ornamentality,  such  as  an
affidavit by the actual inventor attesting to the ornamental
concerns in making the invention and a showing of how the
function of the article can be accomplished by substantively
different designs. Mere arguments by the attorney of record
are of little value in establishing ornamental intent on the
part of the inventor. Upon submission of any evidence of
ornamentality, the examiner must reevaluate all the evidence
anew and make a new determination whether the evidence of
ornamentality is sufficient to overcome the  prima facie

showing of lack of ornamentality.

 C. Hidden in Use

  A design for an article of manufacture that is hidden in
its ultimate end use, where there is no evidence that its
ornamental appearance was of commercial concern prior to
reaching its ultimate end use, lacks ornamentality and
should be rejected under 35 U.S.C. 171. See In re Stevens ,
173 F.2d 1015, 81 USPQ 362 (CCPA 1949).

  However, a design directed to an article of manufacture
that is hidden in its ultimate end use may be proper subject
matter for a design patent if there is some period in the
commercial life of the design when its ornamentality has
been shown to be a matter of concern. See In re Webb , 916
F.2d 1553, 16 USPQ2d 1433 (Fed. Cir. 1990).

  The examiner shall, upon making a prima facie showing
that an article is hidden in its ultimate end use and absent
any evidence that the ornamentality was of actual concern to
prospective purchaser of the article, make a rejection under
35 U.S.C. 171 that the design lacks ornamentality. Such a
rejection is rebuttable through presentation of objective
evidence  of  ornamentality,  such  as  a  showing  that
ornamentality of the article was of commercial concern
during the period of commercial life between its manufacture
and ultimate hidden end use. A showing that the actual
appearance  of  the  article  (or  a  similar  article)  is
advertised  or  displayed  to  prospective  customers  may
comprise evidence that its ornamentality might be of actual
concern. Affidavits or declarations from actual customers
attesting that ornamentality of the article was of actual
concern to them during the commercial life of the article
would comprise stronger evidence. Upon submission of any
objective  evidence  of  ornamentality,  the  examiner  must
reevaluate  all  the  evidence  anew  and  make  a  new
determination  whether  the  objective  evidence  of
ornamentality is sufficient to overcome the  prima facie
showing of lack of ornamentality.

¶ 15.08  35 U.S.C. 171 Rejection as Purely Functional

 The claim is rejected under 35 U.S.C. 171 as not meeting
the requirements of ornamentality, the subject matter being
obviously the result of purely functional considerations.

¶ 15.09  35 U.S.C. 171 Rejection

  The claim is rejected under 35 U.S.C. 171 for the reason
that [1]>, because [2]<.

 Examiner Note:

 A rejection on the *>grounds< of lack of ornamentality
includes  the  more  specific  grounds  of  functionality,
frivolity, fraud, contrary to public policy. The statutory
basis for this rejection is 35 U.S.C. 171. (See MPEP Chapter
1500). Also, identify the specific ground(s) not complied
with >in bracket 1< and give reasons why >in bracket 2<.

¶ 15.41  Functional, Structural Features Not Considered

 Attention is directed to the fact that design patent
applications  are  concerned  solely  with  the  ornamental

appearance of an article of manufacture. The functional
and/or structural features stressed by applicant in the
papers are of no concern in design cases and are neither
permitted nor required. Function and structure fall under
the realm of utility patent applications.

¶ 15.44  Design  Inseparable  From  Object  to  Which
Applied

 Design is inseparable from the object to which it is
applied and cannot exist alone merely as a scheme of
ornamentation. It must be a definite preconceived thing,
capable of reproduction, and not merely the chance result of
a method. (35 U.S.C. 171; 35 U.S.C. 112, first and second
paragraphs.)

 D.  Offensive Subject Matter

  Design applications which disclose subject matter which
could be deemed offensive to any race, religion, sex, ethnic
group,  or  nationality,  such  as  those  which  include
caricatures or depictions, should be rejected as not meeting
the requirements of ornamentality under 35 U.S.C. 171. Form
Paragraph 15.10 should be used.

¶ 15.10  Frivolous, Offensive Subject Matter

  The  disclosure,  and  therefore  the  claim  in  this
application, is rejected as being frivolous ** and therefore
improper subject matter for design patent protection under
35 U.S.C. 171. Such subject matter *>does< not ** meet the
requirements of ornamentality under 35 U.S.C. 171. Moreover,
since 37 CFR 1.3 proscribes the presentation of papers which
are lacking in decorum and courtesy, and this includes
depictions or caricatures in the disclosure, *>drawings,<
and/or *>claim(s)< which might reasonably be considered
offensive, such subject matter as presented herein is deemed
to be clearly contrary to 37 CFR 1.3. (See *>MPEP § <
608**).

1504.02 Novelty [R - 2]

  If the prior art discloses any article of substantially
the same appearance as that of the claimed design, it is
immaterial in the evaluation of novelty what the use of such
an article is. Stated differently, it is not necessary that
the claimed design and prior art article be from "analogous
arts" when evaluating novelty.

  In determining novelty with respect to design patents,
the standard recognized by the courts is whether the prior
art shows an article of "substantially the same appearance"
to an ordinary observer. Absolute identity of design is not
required to support a rejection for lack of novelty under 35
U.S.C. 102. See In re Glavas , 109 USPQ 50, 52 (CCPA 1956).

  In evaluating a statutory bar based on 35 U.S.C. 102(b),
the case law indicates that the experimental use exception
to a statutory bar for public use or sale (see MPEP § 2
128.01) does not apply for designs patents. See In re Mann ,
861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988).

  Registration of a design abroad is considered to be
equivalent to patenting under 35 U.S.C. 119 and 102(d),
whether or not the foreign grant is published. (See Ex parte

Lancaster et al . 833 O.G. 8, 1966 C.D. 20 (Bd. App. 1965);
Ex parte  Marinissen,842 O.G. 528, 155 USPQ 528 (Bd. App.
1966);  Appeal No. 239 - 48, Decided April 30, 1965 , 833
O.G. 10, 1966 C.D. 22 (Bd. App. 1965);  Ex parte Appeal
decided September 3 , 1968  , 866 O.G. 16 (Bd. App. 1966).
The basis of this practice is that if the foreign applicant
has received the protection offered in the foreign country,
no matter what the protection is called ("patent," "Design
Registration," etc.), if the United States application is
timely filed, a claim for priority will vest. If, on the
other hand, the U.S. application is not timely filed, a
statutory bar arises under 35 U.S.C. 102(d) as modified by
35 U.S.C. 172. In order for the filing to be timely for
priority purposes and to avoid possible statutory bars, the
U.S. design patent application must be made within 6 months
of the foreign filing. See also MPEP § 1504.10.

  The laws of each foreign country vary in one or more
respects. **

 >  The following table sets forth the dates on which
design rights can be enforced in a foreign country (INID
Code (24)) and thus, are also useable in a 35 U.S.C. 102(d)
rejection as modified by 35 U.S.C. 172. It should be noted
that in many countries the date of registration or grant is
the filing date.

 **  Double Click here to see the image  **

 1
  Based on information taken from the "Survey of Filing
Procedures  and  Filing  Requirements,  as  well  as  of
Examination Methods and Publication Procedures, Relating to
Industrial  Designs"  as  adopted  by  the  PCIPI  Executive
Coordination Committee of the World Intellectual Property
Organization (WIPO) at its fifteenth session on November 25,
1994.

 **  Double Click here to see the image  **

 1
  Based on information taken from the "Survey of Filing
Procedures  and  Filing  Requirements,  as  well  as  of
Examination Methods and Publication Procedures, Relating to
Industrial  Designs"  as  adopted  by  the  PCIPI  Executive
Coordination Committee of the World Intellectual Property
Organization (WIPO) at its fifteenth session on November 25,
1994.

 **  Double Click here to see the image  **

 1 Based on information taken from the "Survey of Filing
Procedures  and  Filing  Requirements,  as  well  as  of
Examination Methods and Publication Procedures, Relating to
Industrial  Designs"  as  adopted  by  the  PCIPI  Executive
Coordination Committee of the World Intellectual Property
Organization (WIPO) at its fifteenth session on November 25,
1994.<

¶ 15.11  35 U.S.C. 102(a) Rejection

 The claim is rejected under 35 U.S.C. 102(a) as clearly
anticipated by [1] because the invention was known or used

by others in this country, or patented or described in a
printed publication in this or a foreign country before the
invention thereof by the applicant >for patent<.

¶ 15.12  35 U.S.C. 102(b) Rejection

 The claim is rejected under 35 U.S.C. 102(b) as clearly
anticipated by [1] because the invention was patented or
described in a printed publication in this or a foreign
country or in public use or >on< sale in this country, more
than one>(1)< year prior to the application for patent in
the United States.

¶ 15.13  35 U.S.C. 102(c) Rejection

 The claim is rejected under 35 U.S.C. 102(c) because the
invention has been abandoned.

¶ 15.14  35 U.S.C. 102(d) Rejection

 The claim is rejected under 35 U.S.C. 102(d), as modified
by 35 U.S.C. 172, as clearly anticipated by [1] because the
invention was first patented or caused to be patented, or
was  the  subject  of  an  inventor's  certificate  by  the
applicant or his legal representatives or assigns in a
foreign country prior to the date of the application for
patent in this country, or on an application for patent or
inventor's  certificate  filed  more  than  six>(6)<  months
before the filing of the application in the United States.

¶ 15.15  35 U.S.C. 102(e) Rejection

 The claim is rejected under 35 U.S.C. 102(e) as clearly
anticipated by [1] because the invention was described in a
patent granted on an application for patent by another filed
in the United States before the invention thereof by the
applicant for patent.

¶ 15.16  35 U.S.C. 102(f) Rejection

 The claim is rejected under 35 U.S.C. 102(f) because
applicant did not himself invent the subject matter sought
to be patented.

¶ 15.17  35 U.S.C. 102(g) Rejection

 The claim is rejected under 35 U.S.C. 102(g) because,
before the applicant's invention thereof, the invention was
made in this country by another who had not abandoned,
suppressed or concealed it.

1504.03 Nonobviousness [R - 2]

  A claimed design that meets the test of novelty must
additionally be evaluated for nonobviousness under 35 U.S.C.
103.

 A.  Gathering the Facts

  The basic factual inquiries guiding the evaluation of
obviousness, as outlined by the Supreme Court in Graham  v
. John Deere Co ., 148 USPQ 459 (1966), are equally
applicable  to  the  evaluation  of  design  and  utility
patentability:

 1.  Determining the scope and content of the prior
art;

 2.  Ascertaining  the  differences  between  the
claimed invention and the prior art;

 3.  Resolving the level of ordinary skill in the
art; and

 4.  Evaluating  any  objective  evidence  of
nonobviousness  (i.e.,  so  -  called  "secondary
considerations").

 1. Scope of the Prior Art

  The scope of the relevant prior art for purposes of
evaluating obviousness under 35 U.S.C. 103 extends to all
"analogous arts."

  While the determination of whether arts are analogous is
basically the same for both design and utility inventions,
the case law ( In re Glavas, 109 USPQ 50, 52 (CCPA 1956))
provides specific guidance for evaluating analogous arts in
the design context, which should be used to supplement the
general requirements for analogous art as follows:

 The question in design cases as distinguished from utility
cases is "not whether the references sought to be combined
are in analogous arts in the mechanical sense, but whether
they  are  so  related  that  the  appearance  of  certain
ornamental features in one would suggest the application of
those features to the other.

 Thus, if the problem is merely one of giving an attractive
appearance to a surface, it is immaterial whether the
surface in question is that of wall paper, an oven door, or
a piece of crockery . .

 On the other hand, when the proposed combination of
references involves material modifications of the basic form
of one article in view of another, the nature of the
articles  involved  is  a  definite  factor  in  determining
whether  the  proposed  change  involves  [patentable]
invention."

  Therefore, where the differences between the claimed
design and the prior art are limited to the application of
ornamentation to the surface of an article, any prior art
reference which discloses substantially the same surface
ornamentation would be considered analogous art. Where the
differences are in the shape or form of the article, the
nature of the articles involved must also be considered.

 2.  Differences Between the Prior Art and the Claimed
Design

  Differences between the claimed design and the prior art
may comprise those of surface indicia or of shape or form of
the article of manufacture embodying the design. Note that
whether any particular ornamentation is embossed on or
impressed  in  the  surface  to  which  it  is  applied  is
considered a matter of choice well within the skill of the
ordinary designer. See In re Cornwall109 USPQ57 (CCPA 1956).
All differences between the claimed design and the closest
prior art reference should be identified in any rejection of

the design claim under 35 U.S.C. 103. If any differences are
considered  de minimis or inconsequential from a design
viewpoint, the rejection should so state.

 3.  Level of Ordinary Skill in the Art

  In order to be unpatentable, 35 U.S.C. 103 requires that
an invention must have been obvious to a person having
"ordinary skill in the art" to which the subject matter
sought to be patented pertains. The "level of ordinary skill
in the art" from which obviousness of a design claim must be
evaluated under 35 U.S.C. 103 has been held by the courts to
be the perspective of the "designer of . . articles of the
types presented." In re Nalbandian , 661 F.2d 1216, 211 USPQ
782, 784 (CCPA 1981);  In re Carter , 213 USPQ 625 (CCPA
1982).

 4.  Secondary Considerations

  Secondary considerations, such as commercial success and
copying of the design by others, are relevant to the
evaluation of obviousness of a design claim just as in a
utility claim. Evidence of nonobviousness may be present at
the time a prima facie case of obviousness is evaluated or
it may be presented in rebuttal of a prior obviousness
rejection.

 B.  Prima Facie Obviousness

  Once the factual inquiries mandated under Graham  v.
Deere have been made, the examiner must determine whether
they support a conclusion of  prima facie obviousness.

  In determining prima facie obviousness, the proper
standard is whether the design would have been obvious to a
designer of ordinary skill with the claimed type of article,
In re Nalbandian,661 F.2d 1214, 211 USPQ 782 (CCPA 1981).

  The procedure for evaluating prima facie obviousness of
a design is set forth in  In re Rosen , 673 F.2d 388, 213
USPQ 347 (CCPA 1982).  Rosen states, essentially, that it is
the overall appearance, the visual effect as a whole of the
design,  which  must  be  taken  into  consideration.  Rosen
additionally  states,  on  a  procedural  level,  that  the
examiner must first provide "a reference, a something in
existence, the design characteristics of which are basically
the same as the claimed design." (213 USPQ at 350).

  Such a basic reference (commonly called a " Rosen
reference") is not required to be identical in all minutiae
to the claimed design. The design of the article in the "
Rosen reference" need only possess design characteristics
which are "basically the same as the claimed design."  Rosen
, supra. Once a reference meets the test as a "  Rosen
reference,"  ornamental  features  may  reasonably  be
interchanged with or added from those of other references so
long as the references "are so related that the appearance
of certain ornamental features in one would suggest the
application of those features to the other."  In re Rosen ,
213 USPQ at 350, quoting  In re Glavas , 109 USPQ 50, 52
(CCPA 1956).

 C. Rebuttal of the Prima Facie Case

  In design cases as in utility cases, once a prima facie

case of obviousness has been established, the examiner must
consider any additional objective evidence of nonobviousness
and/or rebuttal evidence offered by applicant.

¶ 15.18 35  U.S.C.  103>(a)<  Rejection  (Single
Reference)

 The claim is rejected under 35 U.S.C. 103>(a)< as >being<
unpatentable  over  [1].  Although  the  invention  is  not
identically disclosed or described as set forth in 35 U.S.C.
102, if the differences between the subject matter sought to
be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the
art to which said subject matter pertains, the invention is
not patentable.

¶ 15.19  35  U.S.C.  103>(a)<  Rejection  (Multiple
References)

 The claim is rejected under 35 U.S.C. 103>(a)< as >being<
unpatentable over [1] in view of [2].

 Although the invention is *>not< identically disclosed or
described as set forth in *>section< 102 of the statute, if
the differences between the subject matter sought to be
patented, and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to
which said subject matter pertains, the invention is not
patentable.

¶ 15.19.>0<1  Summary Statement of Rejections

 The claim stands rejected under [1].

 Examiner Note:

 1.  Use as summary statement of rejection(s) in Office
action.

 2.  In  bracket  1,  insert  appropriate  basis  for
rejection, i.e., statutory provisions, etc.

¶ 15.58  Claimed Design Is Patentable>(Ex parte Quayle
Actions)<

 The claimed design is patentable over the references cited.

1504.04 Considerations Under 35 U.S.C. 112 [R - 2]

  The drawing in a design application is incorporated into
the claim by use of the claim language "as shown".

  Additionally, the drawing disclosure can be supplemented
by narrative description in the specification (see MPEP §
1503.01). This description is incorporated into the claim by
use of the language "as shown and described." See MPEP §
1503.03.

  A defect in the drawing or the narrative description in
the  specification  that  renders  the  design  unclear,
confusing, or incomplete supports a rejection of the claim
under 35 U.S.C. 112, first paragraph, as being based on an
inadequate disclosure and/or a rejection of the claim under

35 U.S.C. 112, second paragraph, as failing to particularly
point out and distinctly claim the design.

  Defects in claim language give rise to a rejection of
the claim under the second paragraph of 35 U.S.C. 112
Typical examples include:

 1.  Use  of  phrases  in  the  claim  such  as
"substantially as shown," "or similar article," "or the
like,"or equivalent terminology.

 2.  The designation of the design as collectively
shown in the drawing, referenced in the title and described
in the specification is such that it can not be determined
what article of manufacture is being claimed. For example, a
design claimed as an "Adapter Ring" in which there are no
distinguishing features in the drawing to identify the field
of endeavor of the article.

¶ 15.21  Rejection, 35 U.S.C. 112, First and Second
Paragraphs

 The claim is rejected under 35 U.S.C. 112, first and second
paragraphs, as the claimed invention is not described in
such full, clear, concise and exact terms as to enable any
person skilled in the art to make and use the same, and/or
for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.

 Examiner Note:

 1. This paragraph should not be used when it is appropriate
to make one or more separate rejections under the first
and/or the second paragraph of 35 U.S.C. 112. In other
words, separate rejections under either the first paragraph
or the second paragraph of 35 U.S.C. 112 are preferred. This
paragraph should only be used when either the first or
second paragraph of 35 U.S.C. 112 could be applicable, but
due to some question of interpretation, uncertainty exists
as  to  whether  the  claimed  invention  is  sufficiently
described in the enabling teachings of the specification or
the claim language is indefinite.

  2.  A  full  explanation  should  be  provided  with  this
rejection.

¶ 15.22  Rejection, 35 U.S.C. 112, 2nd Paragraph

  The  claim  is  rejected  under  35  U.S.C.  112,  second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
applicant regards as the invention.

 Examiner Note:

 1.  Use  this  paragraph  when  claims  are  vague,
indefinite, confusing, incorrect or cannot be understood.

 2.  Add a full explanation of the rejection.

 3.  See also form paragraph 17.07

¶  15.21.>0<  1 >Rejection< 35 U.S.C. 112 (>Second<
Paragraph *)*>(Information Requested)<

 The claim is rejected as failing to particularly point out
and distinctly claim the invention as required in 35 U.S.C.
112, second paragraph. The designation of the design is too
broad for the examiner to make a proper examination of the
claim *>under< 37 CFR 1.104 .

 Applicant is therefore required to provide a sufficient
explanation of the design regarding its nature and intended
use, so that a proper classification and reliable search can
be made. Additional information, if available, regarding
>analogous<  fields  of  search,  pertinent  prior  art,
advertising brochures and the filing of copending utility
applications would also *>prove< helpful. If a utility
application  has  been  filed,  please  furnish  its
*>application< number.

 This information should be submitted in the form of a
separate  paper  and  should  not  be  inserted  in  the
specification (37 CFR 1.56). See also 37 CFR 1.97, 1.98 and
1.99.

 Examiner Note:5

 1.  This rejection may be used when the applicant fails
to respond to a request for information and as otherwise
deemed appropriate.

¶ 15.56  *>Requirement< for Information

 A preliminary review of this application indicates that the
designation of the article claimed is so broad that it will
be difficult for the examiner to make a proper examination
of the claim as required by 37 CFR*>1.104<.

 Please provide sufficient explanation to the claimed design
invention regarding its nature and intended use so that the
most appropriate docket assignment and pertinent search can
be made. This information should be submitted in the form of
remarks  only,  and  should  not  be  inserted  in  the
specification.

  Additional  information  regarding  analogous  fields  of
search, pertinent prior art, advertising brochures, and the
filing of copending utility applications would also prove
helpful and should be included in the response. Attention is
also directed to 37 CFR 1.56 and the procedure in *>MPEP § <
609 ** as authorized by 37 CFR 1.97, 1.98 and 1.99.

 Failure to respond prior to a first Office action on the
merits may result in a rejection under 35 U.S.C. 112 *>in<
such first Office action if the examiner is unable to make a
proper examination.

 The new case status of this application for the purpose of
issuance of a first Office action on the merits in filing
date order, will continue under the provisions of 37 CFR
1.101, MPEP > § < 708.

¶ 15.66  Employ Services of Patent Attorney or Agent
(Design >Application Only<)

 As the value of a design patent is largely dependent upon
the skillful preparation of the drawings and specification,
applicant might consider it desirable to employ the services
of a registered patent attorney or agent. The Patent and

Trademark Office cannot aid in the selection of an attorney
or agent.

  New Matter

  In design patent applications, as in applications filed
under 35 U.S.C. 101, additional or amended illustrations
involving new matter is in violation of 35 U.S.C. 132; 37
CFR 1.118.

  In a design patent application, deletion of portions of
the  original  design  may  constitute  new  matter  if  the
original application as filed did not contain a disclosure
that the deleted information was not part of the design. See
MPEP § 1503.02(d).

  If new matter is added to the disclosure, the claim
should be rejected under 35 U.S.C. § 112, paragraph one, as
lacking  support  in  the  original  disclosure.  See  Form
Paragraph 15.51. If new matter is added to the description
or drawing, the specification should be objected to under 35
U.S.C. 132. See Form Paragraph 7.28.

  While amendments involving new matter are ordinarily
entered, such matter is required by the examiner to be
canceled from the specification, and the claim is rejected
under 35 U.S.C. 112, first paragraph. While amended drawings
containing new matter are not ordinarily entered in utility
applications (see MPEP § 608.04), since the drawing in a
design application is part of the claim, amended drawings in
design cases involving new matter are entered; the drawing
should be objected to under 35 U.S.C. 132, the new matter
should be required to be canceled, and the claim should be
rejected under 35 U.S.C. 112, first paragraph. (See In re
Rasmussen , 211 USPQ 323 (CCPA 1981.)

¶ 15.20  Rejection, 35 U.S.C. 112, First Paragraph (New
Matter)

 The claim is rejected under 35 U.S.C. 112, first paragraph,
as [1]

 Examiner Note:

  Supply further explanation as appropriate. New matter
rejections should be made under this section of the statute
when the claims depend upon the new matter. See also Form
Paragraph 15.51.

1504.05 Restriction [R - 2]

  General principles of utility restriction are set forth
in chapter 800 of the MPEP. These principles are also
applicable to design restriction practice with the exception
of those differences set forth in this section.

  Unlike a utility patent application, which can contain
plural claims directed to plural inventions, a design patent
application may only have a single claim and thus must be
limited to a single invention to avoid introduction of a
lack of clarity as to what is being claimed. Therefore, the
design patent examiner will require restriction in each
application which contains more than one invention.

  Restriction may be required under 35 U.S.C. 121 if

subject matter in a design patent application as disclosed
in the drawing is either independent or distinct and is able
to support separate design patents.

 A.  Independent Inventions

  Design  inventions  are  independent  if  there  is  no
apparent relationship between two or more subjects disclosed
in the drawings; that is, they are unconnected in overall
appearance; for example, a pair of eyeglasses and a door
handle; a bicycle and a camera; an automobile and a bathtub.
Also note examples in MPEP § 806.04. Restriction in such
cases is clearly proper. This situation may be rarely
presented since design patent applications are seldom filed
containing disclosures of independent subjects.

 B.  Distinct Inventions

  Design inventions are distinct if the overall appearance
of two or more embodiments as disclosed in the drawings are
related, for example, two embodiments of a vase, and are
patentable (novel or unobvious) over each other. Restriction
in such cases is also clearly proper. Distinct designs may
constitute either multiple embodiments of the same article
or they may be related as a combination and subcombination
of the overall design. On the other hand, if nondistinct
inventions  are  claimed  in  separate  design  patent
applications, the issue of double patenting must be raised.
Note MPEP § 806.05 and 1504.06. In determining the question
of distinctness under 35 U.S.C. 121 in a design patent
application, a search of the prior art may be necessary.

 1. Multiple Embodiments

  It is permissible, in a proper case, to illustrate more
than one embodiment of a design invention in a single
application. However, such embodiments may be presented only
if they involve a single inventive concept and are not
patentably  distinct  from  one  another.  See  In  re
*>Rubinfield< , 123 USPQ 210 ** (CCPA 1959). Embodiments
that  are  patentably  distinct  over  one  another  do  not
constitute a single inventive concept and thus may not be
included in the same design application,  In re Platner ,
155, USPQ 222 (Comm'r Pat. 1967). The disclosure of plural
embodiments does not require or justify more than a single
claim, which claim must be in the formal terms stated in
MPEP § 1503.01. The specification should make clear that
multiple embodiments are disclosed and may particularize the
differences between the embodiments.

¶ 15.27  Restriction under 35 U.S.C. 121

  This  application  contains  the  following  separate
embodiments of the disclosed design:

 Embodiment 1: Figs. [1]

 Embodiment 2: Figs. [2]

  Multiple embodiments of a single inventive concept may
be included in the same design application only if they
involve a single inventive concept. In re Rubinfield , 123
USPQ  210  (CCPA  1959).  Embodiments  that  are  patentably
distinct  from  one  another  do  not  constitute  a  single
inventive concept and thus may not be included in the same

design application.  In re Platner,155 USPQ 222>(Comm'r Pat.
1967)<.

  The above disclosed embodiments define the following
distinct groups of >the disclosed< inventions:

 Group I: Embodiment [3]

 Group II: Embodiment [4]

  Restriction is required under 35 U.S.C. 121 to one of
the above identified patentably distinct groups of the
disclosed inventions.

  A response to this requirement must include an election
of a single group for prosecution on the merits, even if
this requirement is traversed. Any response that does not
include election of a single group will be held non -
responsive.  Applicant  is  also  requested  to  direct
cancellation of all drawing figures directed to non -
elected groups.

  Should  applicant  traverse  this  requirement  on  the
grounds that the embodiments comprise a single inventive
concept or are not patentably distinct, applicant should
present evidence or identify such evidence now of record
showing the embodiments to be obvious variations of one
another. If embodiments are determined not to be patentably
distinct  and  are  accordingly  retained  in  the  same
application, any rejection of one embodiment over prior art
will apply equally to all other embodiments. No argument
asserting  patentability  based  on  features  of  other
embodiments will be considered once those embodiments have
been determined to comprise a single inventive concept.

  A shortened statutory period of >ONE MONTH or< THIRTY
DAYS from the date of this letter>, whichever is longer,< is
set  for  applicant  to  elect  a  single  embodiment  for
prosecution on the merits.

¶ 15.28  Telephone Restriction under 35 U.S.C. 121

  This  application  contains  the  following  separate
embodiments of the disclosed design:

 Embodiment 1: Figs. [1]

 Embodiment 2: Figs. [2]

 Multiple embodiments of a single inventive concept may be
included in the same design application only if they involve
a single inventive concept. In re Rubinfield,123 USPQ 210
(CCPA 1959). Embodiments that are patentably distinct from
one another do not constitute a single inventive concept and
thus may not be included in the same design application.  In
re Platner , 155 USPQ 222>(Comm'r Pat. 1967)<.

  The  above  disclosed  embodiments  define  the  following
distinct groups of inventions:

 Group I:  Embodiment [3]

 Group II:  Embodiment [4]

 Restriction is required under 35 U.S.C. 121 to one of the

above identified patentably distinct groups of the disclosed
inventions.

 During telephone discussion with [5] on [6], a provisional
election was made [7] traverse to prosecute the invention of
Group [8]. Affirmation of this election should be made by
applicant in responding to this Office action.

 Group [9] is withdrawn from further consideration by the
examiner, 37 CFR 1.42(b), as being for a non - elected
invention.

 Examiner Note:

 1. In bracket 7, insert "with" or "without".

¶ 15.31  Provisional Election Required (37 CFR 1.143)

 Applicant is advised that the response to be complete must
include a provisional election of one of the enumerated
designs, even though the requirement may be traversed. 37
CFR 1.143.

 2.  Segregable Parts - Combination/Subcombination

  A design patent covers the entire design as a whole. It
is not limited to any part or portion of the design. Under
the so - called doctrine of segregable parts, the design in
its entirety (i.e., the combination) is distinct from parts
thereof (i.e., any subcombination). See Ex parte Sanford ,
1914 CD 69; 204 O.G. 1346 (Comm'r Pat. 1914), and  Blumcraft
of Pittsburgh  v.  Ladd, Comr. Pats , 144 USPQ 562 (D.D.C.
1965). Since separate inventions directed to a combination
and  subcombination  thereof  require  separate  claims,
restriction to one or the other is necessary in a design
patent application. See  Ex parte Heckman , 135 USPQ 229 (PO
Super. Exam. 1960);  In re Kelly , 200 USPQ 560 ( Comm'r
Pat. 1978).

¶ 15.29  Restriction Under 35 U.S.C. 121 (Segregable
Parts)

 Restriction to one of the following inventions is required
under 35 U.S.C. 121:

 Group I - *>Figs.< [1] drawn to a [2].

 Group II - *>Figs.< [3] drawn to a [4].

 Examiner Note:

 Add groups as necessary.

 The inventions as grouped are distinct from each other
since  under  the  law  a  design  patent  covers  only  the
invention disclosed in an entirety, and does not extend to
segregable parts; the only way to protect such segregable
parts is to apply for separate patents ( Ex parte Sanford ,
1914  C.D.  69;  204  O.G.  1346>(Comm'r  Pat.  1914);<  and
Blumcraft of *>Pittsburg< v. Ladd, *>Comm'r<, 144 USPQ
562>(D.D.C.  1965)<).  It  is  further  noted  that
combination/subcombination subject matter must be supported
by  separate  claims,  whereas  only  a  single  claim  is
permissible in a design patent application. (  In re
*>Rubinfield<,123 USPQ 210>(CCPA 1959)<).

 Examiner Note:

 Add comments if necessary.

 Because the inventions are distinct for the reason(s) given
above,  and  have  acquired  separate  status  in  the  art,
restriction for examination purposes as indicated is proper
(35 U.S.C. 121).

 Applicant is reminded that the response to be complete must
include a provisional election of one of the enumerated
inventions, even though the requirement may be traversed. 37
CFR 1.143.

 In view of the above requirement, action on the merits is
deferred  pending  compliance  with  the  requirement  in
accordance with Ex parte Heckman , 135 USPQ 229.

 Applicant is given **>ONE MONTH or THIRTY DAYS< from the
date of this letter>, whichever is longer,< to make an
election to avoid a question of abandonment.

¶ 15.30  Restriction Under 35 U.S.C. 121 (Segregable
Parts) (Telephonic)

 Restriction to one of the following inventions is required
under 35 U.S.C. 121:

 Group I - *>Figs.< [1] drawn to a [2].

 Group II - *>Figs.< [3] drawn to a [4].

 Examiner Note:

 Add groups as necessary.

 The inventions as grouped are distinct from each other
since  under  the  law  a  design  patent  covers  only  the
invention disclosed as an entirety, and does not extend to
segregable parts; the only way to protect such segregable
parts  is  to  apply  for  separate  patents  (Ex  parte
*>Sanford<,1914 C.D. 69;*>204< O.G. 1346>(Comm'r Pat. 1914)<
and  Blumcraft of *>Pittsburg< v. Ladd, *>Comm'r<, 144 USPQ
562>(D.D.C. 1965)<. It is further noted that combination/
subcombination subject matter must be supported by separate
claims, whereas only a single claim is permissible in a
design patent application. (  In re *>Rubinfield< , 123 USPQ
210>(CCPA 1959<).

 Examiner Note:

  *>Insert  additional<  comments  if  necessary  >,  and
continue<.

  During  a  telephone  discussion  with  [5]  on  [6],  a
provisional election was made **>[7]< to prosecute the
invention of Group [8]. Affirmation of this election should
be made by applicant in responding to this Office action.

 Group [9] withdrawn from further consideration by the
examiner, 37 CFR 1.142(b), as being for a non - elected
invention.

¶ 15.34  Groups  Withdrawn  From  Consideration  After

Traverse

 Group [1] withdrawn from further consideration by the
examiner, 37 CFR 1.142(b), as being for a non - elected
invention, the requirement having been traversed in Paper
No. [2].

¶ 15.36  Groups Withdrawn From Consideration Without
Traverse

  Group [1] withdrawn from further consideration by the
examiner, 37 CFR 1.142(b), as being for the non - elected
invention. Election was made without traverse in Paper No.
[2].

¶  15.37  Cancellation of Non - elected Groups, No
Traverse

  In view of the fact that this application is in
condition for allowance except for the presence of Group [1]
directed to an invention or inventions non - elected without
traverse and without right to petition in Paper No. [2],
said *>Group(s)< have been cancelled.

1504.06 Double Patenting [R - 2]

  There are two types of double patenting rejections which
apply in the examination of design patent applications as in
the  examination  of  "Utility"  applications  -  the  "same
invention" - type and the "obviousness" - type. See MPEP §
804. Double patenting may exist (1) between two or more
design patent applications and/or patents and (2) between a
design patent application and a "utility" application and/or
patent.

 A. Design - Design Double Patenting

  The "same invention" - type double patenting rejection
in design - design situation is based on 35 U.S.C. 171 which
states in the singular that an inventor "may obtain a
patent." This has been interpreted as meaning only one
patent thus prohibiting twice claiming the same invention,
see In re Thorington et al . 163 USPQ 644 (CCPA 1969),  In
re Geiger et al . 165 USPQ 572 (CCPA 1970). This type of
double patenting rejection cannot be overcome by terminal
disclaimer (see MPEP § 804.02).

  The "obviousness - type" double patenting rejection in
design - design situations procedurally the same as where
two utility cases are involved.

 B.  Design-Utility Double Patenting

  A utility patent and a design patent may be based on the
same  >subject<  matter;  however,  there  must  be  clear
patentable distinction between them.

  Where the design invention as defined by the claim as
shown in the drawing views and the utility invention as
defined by the claim language cross read, double patenting
exists. This involves the same invention - type double
patenting: See Adidas Fabrique v.  Andsmore Sportswear Corp.
, 223 USPQ 1109 (D.C. S.D. N.Y. 1984);  Wahl et al. v.
Rexnord, Inc.,206 USPQ 865 (3d Cir.1980);  Transmatic, Inc .
v.  Gulton Industries Inc. , 202 USPQ 559 (6th Cir. 1979)).

  The Court of Appeals for the Federal Circuit in Carmen
Industries Inc . v.  Wahl et al . 220 USPQ 481 (Fed. Cir.
1983) also supports the broader test of double patenting
between  design  and  utility  claims  based  on  obvious
variations. This type of double patenting rejection may be
overcome by a terminal disclaimer where same inventive
entities or common ownership exist (See MPEP § 804.02.)

¶ 15.23  35 U.S.C. 171 Double Patenting Rejection

 The claim is rejected under 35 U.S.C. 171 on the ground of
double patenting of the claim in applicant's prior **>United
States Patent No.< [1].

¶ 15.24  Obviousness>  -  Type<  Double  Patenting
Rejection (Sole Reference)

 The claim is rejected under the judicially created doctrine
of the obviousness - type double patenting of the claim in
applicant's  >prior  U.S.  Patent  No.<  [1].  Although  the
designs are not identical, they are not patentably distinct
from each other because [2]. **

 Examiner Note:

 >1.< In bracket 1, insert **prior U.S. Patent No.

 >2.< In bracket 2, *>an< explanation *>is< necessary.

 >3. This form paragraph must be followed by form paragraph
15.24.06.<

¶ 15.25  Obviousness>  -  Type<  Double  Patenting
Rejection (Multiple References)

 The claim is rejected under the judicially created doctrine
of the obviousness - type double patenting of the claim(s)
in applicant's prior U.S. Patent No. [1] in view of [2]. At
the time * applicant made the invention, it would have been
obvious to [3**] as demonstrated by [4].

 **

 Examiner Note:

 >1. In brackets 3 and 4, insert explanation of basis for
rejection.

 2. This form paragraph must be followed by form paragraph
15.24.06.<

1504.10 Priority Under 35 U.S.C. 119(a) - (d) [R - 2]

 35 U.S.C. 172.  Right of priority.

 The right of priority provided for by subsections (a)
through (d) of section 119 of this title and the time
specified in section 102(d) shall be six months in the case
of designs. The right of priority provided for by section
119(e) of this title shall not apply to designs.

  The provisions of 35 U.S.C. 119(a) - (d) apply also to
design patent applications. However, in order to obtain the
benefit of an earlier foreign filing date, the United States

application must be filed within 6 months of the earliest
date on which any foreign application for the same design
was filed. Design applications may not make a claim for
priority  of  a  provisional  application  under  37  CFR
1.78(a)(3).

¶ 15.01  Conditions Under 35 U.S.C. 119(a) - (d)

 Applicant is advised of conditions as specified in 35
U.S.C. 119(a) - (d). An application for a design patent for
an invention filed in this country by any person who has, or
whose  legal  representatives  have  previously  filed  an
application for a design patent, or equivalent protection
for the same design in a foreign country which offers
similar privileges in the case of applications filed in the
United States, or to citizens of the United States, shall
have the >same< effect as the same application would have if
filed in this country on the date on which the application
for patent for the same invention was first filed in such
>foreign< country, if the application in this country is
filed within six>(6)< months from the earliest date on which
such foreign application was filed.

¶ 15.03  **Untimely Priority Papers >Returned<

  Receipt is acknowledged of the filing on [1] of a
certified copy of the [2] application referred to in the
oath or declaration. A claim for priority cannot be based on
said application, since the United States application was
filed more than six>(6)< months thereafter. (35 U.S.C. 172).
The papers are accordingly being returned.

  The United States will recognize claims for the right of
priority under 35 U.S.C. 119(a) - (d) based on applications
filed under such bilateral or multilateral treaties as the
"Hague Agreement Concerning the International Deposit of
Industrial Designs" and the "Uniform Benelux Act on Designs
and Models." In filing a claim for priority of a foreign
application previously filed under such a treaty, certain
information must be supplied to the United States Patent and
Trademark Office. In addition to the application number and
the date of filing of the foreign application, the following
information is required: (1) the name of the treaty under
which the application was filed, (2) the name of at least
one country other than the United States in which the
application has the effect of, or is equivalent to, a
regular national filing and (3) the name and location of the
national or inter - governmental authority which received
the application.

¶ 15.02  Right of Priority Under 35 U.S.C. 119(b)

  No application for design patent shall be entitled to
the right of priority under 35 U.S.C. 119(b) unless a claim
therefor and a certified copy of the original foreign
application, specification and drawings upon which it is
based are filed in the U.S. Patent and Trademark Office
before the issue fee is paid, or at such time during the
pendency of the application as required by the Commissioner,
not  earlier  than  six  months  after  the  filing  of  the
application in this country. Such certification shall be
made by the patent office, or other proper authority of the
foreign country in which filed, and show the date of the
application and>of the filing< of the specification and
other papers. The Commissioner may require a translation of

the papers filed if not in the English language, and such
other information as **>deemed< necessary.

  The notation requirement on design patent application
file wrappers when foreign priority is claimed is set forth
in MPEP § 202.03.

¶ 15.04  Priority  Under  Bilateral  or  Multilateral
Treaties

 The United States will recognize claims for the right of
priority under 35 U.S.C. 119(a) - (d) based on applications
filed under such bilateral or multilateral treaties as The
Hague Agreement Concerning the International Deposit of
Industrial Designs, and the Benelux Designs Convention. In
filing  a  claim  for  priority  of  a  foreign  application
previously filed under such a treaty, certain information
must be supplied to the U.S. Patent and Trademark Office. In
addition to the application number and the date of filing of
the application, the following information is requested: (1)
the name of the treaty under which the application was
filed; (2) the name of at least one country other than the
United States in which the application has the effect of, or
is equivalent to, a regular national filing; and (3) the
name  and  location  of  the  national  or  international
governmental authority which received *>such< application.

¶ 15.52  Examination of Priority Papers

 While the U.S. Patent and Trademark Office does *>not<
normally examine the priority papers to determine whether
the applicant is in fact entitled to the right of priority,
in cases of a design patent application, the priority papers
will normally be inspected to determine that the foreign
application is in fact for the same invention as the
application in the United States (35 U.S.C. 119). Inspection
of the papers herein indicates that the prior >foreign<
application was not for the same invention as claimed in
this  application.  Accordingly,  the  priority  claim  is
improper, and the papers are being returned.

  Attention is also directed to the paragraphs dealing
with the requirements where an actual model was originally
filed in Germany (MPEP § 201.14(b)).

  See MPEP Chapter 200 and 37 CFR 1.78 for further
discussion of the practice and procedure under 35 U.S.C.
119(a) - (d).

1504.20 Benefit Under 35 U.S.C. 120 [R - 2]

  If applicant is entitled under 35 U.S.C. 120 to the
benefit of an earlier U.S. filing date, the statement that,
"This is a division [continuation] of design Application
No.-  -  -  -,  filed  -  -  -."  should  appear  in  the
specification, either before or after the description of the
drawing figures.

  Attention  is  directed  to  the  requirements  for
"continuing" applications set forth in MPEP § 201.07, §
201.08, and § 201.11. Note further that where the first
application is found to be fatally defective under 35 U.S.C.
112  because  of  insufficient  disclosure  to  support  an
allowable claim, a second design patent application filed as
an  alleged  "continuation  -  in  -  part"  of  the  first

application to supply the deficiency is not entitled to the
benefit of the earlier filing date. (See Hunt Co. v.
Mallinckrodt Chemical Works, 83 USPQ 277 at 281 (2d Cir.
1949) and cases cited therein). See also In re Salmon et al.
217 USPQ 981 (Fed. Cir. 1983).

  Unless the filing date of an earlier application is
actually needed, for example, in the case of an interference
or to avoid intervening reference, there is no need for the
examiner  to  make  a  determination  as  to  whether  the
requirement of 35 U.S.C. 120 is met. Note the holdings in In
re Corba, 212 USPQ 825 (Comm'r Pat. 1981).

  In both utility and design applications, applicants are
entitled to claim the benefit of the filing date of earlier
applications for later claimed inventions under 35 U.S.C.
120  only  when  the  earlier  application  discloses  that
invention in the manner required by 35 U.S.C. 112, first
paragraph. Thus, a claim including limitations directed to
the  new  matter  added  in  a  continuation  -  in  -  part
application is not entitled to the benefit of the filing
date of the parent application.

  Where the conditions of 35 U.S.C. 120 are met, a design
application may be considered a continuing application of an
earlier utility application. Conversely, this also applies
to a utility application relying on the benefit of the
filing date of an earlier filed design application.

  In light of the KangaROOS USA, Inc . v.  Caldor Inc .,
228 USPQ 32 (Fed. Cir. 1985) and  In re Berkman , 209 USPQ
45 (CCPA 1981), the holdings in  In re Campbell, 101 USPQ
406 (CCPA 1954) are no longer controlling.

  Note also In re Berkman , 209 USPQ 45 (CCPA 1981) where
the benefit of a design patent application filing date
requested under 35 U.S.C. 120 was denied in the later filed
utility application of the same inventor. The Court of
Customs and Patent Appeals took the position that the design
application did not satisfy 35 U.S.C. 112, first paragraph,
as required under 35 U.S.C. 120.

¶ 15.26  Rule 60 (37 CFR 1.60) Requirement

 Applicant is reminded of the following requirement:

  In  37  CFR  1.60  cases,  applicant,  in  the  amendment
cancelling the non - elected inventions, should include
directions to enter "This is a [1 **] of Application No.
[2], filed [3]" as the first sentence of the specification
following the preamble.

 >Examiner Note:

 In bracket 1, insert "division" or "continuation".<

1505  Allowance and Term of Design Patent [R - 1]

 35 U.S.C. 173.  Term of design patent.

 **>Patents for designs shall be granted for the term of
fourteen years from the date of grant.<

 37 CFR 1.155.  Issue and term of design patents.

 (a)  If, on examination, it shall appear that the
applicant is entitled to a design patent under the law, a
notice of allowance will be sent to the applicant, or
applicant's attorney or agent, calling for the payment of
the issue fee ( § 1.18(b)). If this issue fee is not paid
within 3 months of the date of the notice of allowance, the
application shall be regarded as abandoned.

 (b)  The Commissioner may accept the payment of the
issue fee later than three months after the mailing of the
notice of allowance as though no abandonment had ever
occurred if upon petition the delay in payment is shown to
have been unavoidable. The petition to accept the delayed
payment must be promptly filed after the applicant is
notified of, or otherwise becomes aware of, the abandonment,
and must be accompanied by (1) the issue fee, unless it has
been previously submitted, (2) the fee for delayed payment (
§  1.17(l)),  and  (3)  a  showing  that  the  delay  was
unavoidable. Such showing must be a verified showing if made
by a person not registered to practice before the Patent and
Trademark Office.

 (c)  The Commissioner may, upon petition, accept the
payment of the issue fee later than three months after the
mailing of the notice of allowance as though no abandonment
had ever occurred if the delay in payment was unintentional.
The petition to accept the delayed payment must be filed
within one year of the date on which the application became
abandoned or be filed within three months of the date of the
first decision on a petition under paragraph (b) of this
section which was filed within one year of the date of
abandonment of the application. The petition to accept the
delayed payment must be accompanied by (1) the issue fee,
unless it has been previously submitted, (2) the fee for
unintentionally delayed payment ( § 1.17(m)), and (3) a
statement that the delay was unintentional. Such statement
must be a verified statement if made by a person not
registered to practice before the Patent and Trademark
Office. The Commissioner may require additional information
where there is a question whether the abandonment was
unintentional. The three - month period from the date of the
first decision referred to in this paragraph may be extended
under  the  provisions  of  §  1.136(a),  but  no  further
extensions under § 1.136(b) will be granted. Petitions to
the Commissioner under § 1.183 to waive any time periods for
requesting  revival  of  an  unintentionally  abandoned
application will not be considered, but will be returned to
the applicant.

 (d)  Any petition pursuant to paragraph (b) of this
section  not  filed  within  six  months  of  the  date  of
abandonment must be accompanied by a terminal disclaimer
with fee under § 1.321 dedicating to the public a terminal
part of the term of any patent granted thereon equivalent to
the period of abandonment of the application. The filing and
issue fees for design applications are set forth in 37 CFR
1.16(f) and 1.18(f).

1509  Reissue of a Design Patent [R - 2]

  See MPEP Chapter 1400 for practice and procedure in
reissue applications.

  Design Reissue **>fee, see 37 CFR 1.16(h). Issue fee for
issuing a reissue design patent, see 37 CFR 1.18(b).<

  The term of a design patent may not be extended by
reissue, Ex parte Lawrence , ** 70 USPQ 326 (Comm'r Pats.
1946).

1510  Reexamination

  See MPEP Chapter 2200 for practice and procedure for
reexamination applications.

1511  Protest

  See MPEP Chapter 1900 for practice and procedure in
protest.

1512  Relationship Between Design Patent, Copyright, and
Trademark

 A.  Design Patent/Copyright Overlap

  There is an area of overlap between copyright and design
patent statutes where the author/inventor can secure both a
copyright and a design patent. Thus an ornamental design may
be copyrighted as a work of art and may also be subject
matter of a design patent. The author/inventor may not be
required to elect between securing a copyright or a design
patent, (see In re Yardley , 181 USPQ 331). In  Mazer v.
Stein , 100 USPQ 325, the Supreme Court noted the election
of protection doctrine but did not express any view on it
since a design patent had been secured in the case and the
issue was not before the Court.

 B.  Inclusion of Copyright Notice

  It is the policy of the Patent and Trademark Office to
permit the inclusion of a copyright notice in a design
patent  application,  and  thereby  any  patent  issuing
therefrom, under the following conditions.

 (1) A copyright notice must be placed adjacent to
the copyright material and, therefore, may appear at any
appropriate portion of the patent application disclosure
including the drawing. However, if appearing on the drawing,
the notice must be limited in print size from 1/8 inch to
1/4 inch and must be placed within the "sight" of the
drawing  immediately  below  the  figure  representing  the
copyright material. If placed on a drawing in conformance
with these provisions, the notice will not be objected to as
extraneous matter under 37 CFR 1.84.

 (2) The content of the copyright notice must be
limited to only those elements required by law. For example,
" E1983 John Doe" would be legally sufficient under 17
U.S.C. 401 and properly limited.

 (3)  Inclusion  of  a  copyright  notice  will  be
permitted only if the following waiver is included at the
beginning  (preferably  as  the  first  paragraph)  of  the
specification to be printed for the patent:

 A portion of the disclosure of this patent document
contains material to which a claim for copyright is made.
The copyright owner has no objection to the facsimile
reproduction by anyone of the patent document or the patent
disclosure, as it appears in the Patent and Trademark Office

patent file or records, but reserves all other copyright
rights whatsoever.

  (4) Inclusion of a copyright notice after a Notice of
Allowance has been mailed will be permitted only if the
criteria of 37 CFR 1.312 have been satisfied.

  Any departure from these conditions may result in a
refusal to permit the desired inclusion. If the waiver
required under condition (3) above does not include the
specific language "(t)he copyright owner has no objection to
the facsimile reproduction by anyone of the patent document
or the patent disclosure, as it appears in the Patent and
Trademark Office patent file or records, . ." the
copyright notice will be objected to as improper.

  The files of design patents D - 243,821, D - 243,824,
and  D  -  243,920  show  examples  of  an  earlier  similar
procedure.

 C.  Design Patent/Trademark Overlap

  A design patent and a trademark may be obtained on the
same subject matter. The CCPA, in In re Mogen David Wine
Corp. , 140 USPQ 575 (CCPA 1964), later reaffirmed by the
same court at 152 USPQ 593 (CCPA 1967), has held that the
underlying purpose and essence

 of patent rights are separate and distinct from those
pertaining to trademarks, and that no right accruing from
one is dependent or conditioned by the right concomitant to
the other.

 D.  Inclusion  of  Trademarks  in  Design  Patent
Applications

 1.  Specification

  The use of trademarks in design patent application
specifications is permitted under limited circumstances. See
MPEP § 608.01(v). This section assumes that the proposed use
of a trademark is a legal use under Federal trademarks law.

 2.  Drawings

  Where trademarks are used in the drawing disclosure and
there is no evidence of record that the trademark is owned
by the applicant or assignee, applicant should be required
to establish the legal right to use the registered trademark
in the design application drawing disclosure. See Dallas
Cowboys Cheerleaders, Inc.  v.  Pussycat Cinema, Ltd. , 203
USPQ 161 (2d Cir. 1979) and  Coca - Cola Co. v. Gemini
Rising Inc ., 175 USPQ 56 (E.D.N.Y. 1972).

1513  Miscellaneous

  With  respect  to  copies  of  references  supplied  to
applicant  in  a  design  patent  application,  see  MPEP  §
707.05(a).

  Effective  May  8,  1985,  the  Statutory  Invention
Registration (SIR), new 35 U.S.C. 157, and 37 CFR 1.293 -
1.297 replaced the former Defensive Publication Program (37
CFR  1.139).  The  Statutory  Invention  Registration  (SIR)
Program applies to utility, plant, and design applications.

See MPEP Chapter 1100.

  - -- - --

  Chapter 1600 Plant Patents

  1601  Introduction: The Act, Scope, Type of Plants
  Covered
  1602  Rules Applicable
  1603  Elements of a Plant Application
  1604  Applicant, Oath
  1605  Specification and Claim
  1606  Drawings
  1607  Specimens
  1608  Examination
  1609  Report of Agricultural Research Service
  1610  The Action
  1611  Issue
  1612  UPOV Convention

1601  Introduction: The Act, Scope, Type of Plants
Covered

  The right to a plant patent stems from:

 35 U.S.C. 161  Patents for plants.

  Whoever invents or discovers and asexually reproduces
any distinct and new variety of plant, including cultivated
sports, mutants, hybrids, and newly found seedlings, other
than a tuber propagated plant or a plant found in an
uncultivated state, may obtain a patent therefor, subject to
the conditions and requirements of this title.

  The provisions of this title relating to patents for
inventions shall apply to patents for plants, except as
otherwise provided.

 Asexually propagated plants are those that are reproduced
by means other than from seeds, such as by the rooting of
cuttings, by layering, budding, grafting, inarching, etc.
Plants capable of stable reproduction are not excluded from
consideration if they have also been asexually reproduced.

  With reference to tuber propagated plants, for which a
plant patent cannot be obtained, the term "tuber" is used in
its narrow horticultural sense as meaning a short, thickened
portion of an underground branch. Such plants covered by the
term  "tuber  propagated"  are  the  Irish  potato  and  the
Jerusalem artichoke. This exception is made because this
group  alone,  among  asexually  reproduced  plants,  is
propagated by the same part of the plant that is sold as
food.

  The term "plant" has been interpreted to mean "plant" in
the ordinary and accepted sense and not in the strict
scientific sense and thus excludes bacteria: In re Arzberger
, 1940 C.D. 653, 46 USPQ 32, 27 CCPA 1315 (CCPA 1940). The
term "plant" thus does not include asexual propagating
material, per se, Ex parte Hibberd , 227 USPQ 443,447 (Bd.
Pat. App. & Int. 1985).

  An asexually reproduced plant may also be protected

under 35 U.S.C. 101, as the Plant Patent Act (35 U.S.C. 161)
is not an exclusive form of protection which conflicts with
the granting of utility patents to plants, Ex parte Hibberd
, 227 USPQ 443 (Bd. Pat. App. & Int. 1985). Inventions
claimed under 35 U.S.C. 101 may include the same asexually
reproduced plant which is claimed under 35 U.S.C. 161, as
well  as  plant  materials  and  processes  involving  plant
materials. The filing of a terminal disclaimer may be used
in appropriate situations to overcome an obviousness - type
double patenting rejection based on claims to the asexually
reproduced  plant  and/or  fruit  and  propagating  material
thereof in an application under 35 U.S.C. 101 and the claim
to the same asexually reproduced plant in an application
under 35 U.S.C. 161.

 35 U.S.C. 163.  Grant.

  In the case of a plant patent the grant shall be of the
right to exclude others from asexually reproducing the plant
or selling or using the plant so reproduced.

1602  Rules Applicable

 37 CFR 1.161.  Rules applicable.

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

1603  Elements of a Plant Application

  An application for a plant patent consists of the same
parts as other applications and must be filed in duplicate
(37 CFR 1.163(b)), but only one need be signed and executed;
the second copy may be a legible carbon copy of the
original. Two copies of color drawings must be submitted, 37
CFR 1.165(b). The reason for thus providing an original and
duplicate file is that the duplicate file is utilized for
submission to the Department of Agriculture for a report on
the plant variety, the original file being retained in the
Patent and Trademark Office at all times.

  Applications for a plant patent which fail to include
two copies of the specification and two copies of the
drawing when in color will be accepted for filing only. The
Application Division will notify the applicant immediately
of this deficiency and require the same to be rectified
within one month. Failure to do so will result in loss of
the filing date.

1604  Applicant, Oath

 37 CFR 1.162.  Applicant, oath or declaration.

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

 asexually reproduced the plant. Where the plant is a newly
found plant, the oath or declaration must also state that it
was found in a cultivated area.

 In an application for a plant patent, there can be joint
inventors. See Ex parte Kluis , 70 USPQ 165 (Bd. App. 1945).

1605  Specification and Claim [R - 3]

 35 U.S.C. 162.  Description, claim.

  No  plant  patent  shall  be  declared  invalid  for
noncompliance  with  section  112  of  this  title  if  the
description is as complete as is reasonably possible.

  The claim in the specification shall be in formal terms
to the plant shown and described.

 37 CFR 1.163.  Specification.

  (a) The specification must contain as full and complete a
disclosure as possible of the plant and the characteristics
thereof  that  distinguish  the  same  over  related  known
varieties, and its antecedents, and must particularly point
out where and in what manner the variety of plant has been
asexually reproduced. In the case of a newly found plant,
the specification must particularly point out the location
and character of the area where the plant was discovered.

  (b) Two copies of the specification (including the claim)
must be submitted, but only one signed oath or declaration
is required. The second copy of the specification may be a
legible carbon copy of the original.

  >(c)  The  elements  of  the  plant  application,  if
applicable, should appear in the following order:

  (1) Plant Application Transmittal Form.

  (2) Fee Transmittal Form.

  (3) Title of the invention.

  (4) Cross - reference to related applications.

  (5) Statement regarding federally sponsored research or
development.

  (6) Background of the invention.

  (7) Brief summary of the invention.

  (8) Brief description of the drawing.

  (9) Detailed Botanical Description.

  (10) A single claim.

  (11) Abstract of the Disclosure.

  (12) Drawings (in duplicate).

  (13) Executed oath or declaration.

  (14) Plant color coding sheet.

  (d) A plant color coding sheet as used in this section
means a sheet that specifies a color coding system as

designated in a color dictionary, and lists every plant
structure to which color is a distinguishing feature and the
corresponding color code which best represents that plant
structure.<

 37 CFR 1.164.  Claim.

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

  The  specification  should  include  a  complete  detailed
description of the plant and the characteristics thereof
that distinguish the same over related known varieties, and
its antecedents, expressed in botanical terms in the general
form  followed  in  standard  botanical  textbooks  or
publications dealing with the varieties of the kind of plant
involved (evergreen tree, dahlia plant, rose plant, apple
tree,  etc.),  rather  than  a  mere  broad  nonbotanical
characterization such as commonly found in nursery or seed
catalogs. The specification should also include the origin
or parentage of the plant variety sought to be patented and
must particularly point out where; e.g., location or place
of business, and in what manner the variety of plant has
been asexually reproduced.

  Where color is a distinctive feature of the plant, the
color should be positively identified in the specification
by reference to a designated color as given by a recognized
color dictionary or color chart >, and the application
should contain a plant color coding sheet. A plant color
coding sheet is a sheet that specifies a color coding system
as designated in a color dictionary, and lists every plant
structure to which color is a distinguishing feature and the
corresponding color code which best represents the color of
that plant structure. The plant color coding sheet provides
a means for applicants to uniformly convey detailed color
characteristics of the plant. Providing this information in
a  systematic  manner  facilitates  examination  of  the
application. Applicants should use the format set forth in
Form PTO/SB/20, Plant Color Coding Sheet.<

 **  Double Click here to see the image  **

  If the written description of a plant is deficient in
certain respects, a clarification or additional description
of the plant, or even a wholesale substitution of the
original description so long as not totally inconsistent and
unrelated to the original description and photograph of the
plant, will not constitute new matter under 35 U.S.C. 132.
(Jessell v. Newland, 195 USPQ678, 684 (Dep. Comm'r Pat.
1977).

  The rules on Deposit of Biological Materials, 37 CFR
1.801 - 1.809, do not apply to plant patent applications in
view of the reduced disclosure requirements of 35 U.S.C.
162, even where a deposit of a plant has been made in
conjunction with a utility application (35 U.S.C. 101).

  A plant patent is granted only on the entire plant. It,
therefore, follows that only one claim is necessary and only
one  is  permitted.  A  method  claim  in  a  plant  patent

application is improper.

1606  Drawings

 37 CFR 1.165.  Plant drawings.

  (a) Plant patent drawings should be artistically and
competently executed and must comply with the requirements
of § 1.84. View numbers and reference characters need not be
employed unless required by the examiner. The drawing must
disclose all the distinctive characteristics of the plant
capable of visual representation.

  (b) The drawing may be in color and when color is a
distinguishing  characteristic  of  the  new  variety,  the
drawing must be in color. Two copies of color drawings or
color photographs must be submitted.

 All color drawings should be so mounted as to provide a 2 -
inch margin at the top for office markings when the patent
is printed.

1607  Specimens

 37 CFR 1.166  .  Specimens.

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

 Specimens of the plant variety, its flower or fruit, should
not be submitted unless specifically called for by the
examiner.

1608  Examination

 37 CFR 1.167.  Examination.

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

  (b)  Affidavits  or  declarations  from  qualified
agricultural or horticultural experts regarding the novelty
and distinctiveness of the variety of plant may be received
when  the  need  of  such  affidavits  or  declarations  is
indicated.

 The authority for submitting plant applications to the
Department of Agriculture for report is given in:

  Executive Order No. 5464, October 17, 1930. Facilitating
the consideration of applications for plant patents.

  I, Herbert Hoover, President of the United States of
America, under the authority conferred upon me by act of May
23, 1930 (Public No. 245) [now 35 U.S.C. 164], entitled "An
act to provide for plant patents," and by virtue of all
other powers vested in me relating thereto, do hereby direct
the  Secretary  of  Agriculture:  (1)  to  furnish  the

Commissioner of Patents such available information of the
Department of Agriculture, or (2) to conduct through the
appropriate  bureau  or  division  of  the  department  such
research upon special problems, or (3) to detail to the
Commissioner of Patents such officers and employees of the
department, as the Commissioner may request for the purpose
of carrying said act into effect.

 35 U.S.C. 164  .  Assistance of Department of
Agriculture.

  The  President  may  by  Executive  order  direct  the
Secretary of Agriculture, in accordance with the request of
the Commissioner, for the purpose of carrying into effect
the provisions of this title with respect to plants (1) to
furnish  available  information  of  the  Department  of
Agriculture, (2) to conduct through the appropriate bureau
or  division  of  the  Department  research  upon  special
problems, or (3) to detail to the Commissioner officers and
employees of the Department.

 Plant applications are subject to the same examination
process as any other national application. As such, the
statutory  provisions  with  regard  to  patentable  subject
matter, utility, novelty, obviousness, disclosure, and claim
specificity requirements apply (35 U.S.C. 101, 102, 103, and
112). The sole exception in terms of applicability of these
statutory provisions is set forth in 35 U.S.C. 162.

  The prior art considered by the examiner is developed by
a search of appropriate subclasses of the United States
patent classification system as well as patent and nonpatent
literature data bases. Where appropriate, a report may be
obtained  from  the  Agricultural  Research  Service,
Horticultural Research Branch, Department of Agriculture.

1609  Report of Agricultural Research Service

  Where  the  examiner  considers  it  necessary  to  the
examination of the plant patent application, a duplicate
file and drawing of the application are forwarded to the
National  Program  Leader  for  Horticultural  Crops,
Agricultural Research Service (ARS), U.S. Department of
Agriculture, along with a request for a report as to whether
the plant variety disclosed is new and distinct over known
plant varieties.

  The report of the ARS is usually accompanied by the
duplicate file and drawing. The report is in duplicate, the
original being signed by the Chief of the Branch. The
original copy of the report is retained in the duplicate
file. As the report is merely advisory to the Office, it is
not a part of the official record of the application and is,
therefore, not given a paper number and is not placed in the
original file. The carbon copy of the report is customarily
utilized by the examiner in the preparation of his action on
the case and is also retained in the duplicate file.

  The report may embody criticisms and objections to the
disclosure, may offer suggestions for correction of such,
may  require  specimens  of  the  plant,  flower,  or  fruit
thereof, may require affidavits of recognized authorities to
corroborate the allegations of the applicant as to certain
or all of the distinguishing features of the variety of
plant sought to be patented, may state that the plant will

be inspected by a field representative of the Department of
Agriculture, etc., or the report may merely state that:

  "Examination of the specification submitted indicates
that the variety described is not identical with others with
which our specialists are familiar."

1610  The Action

  The action on the application by the examiner will
include all matters as provided for in other types of patent
applications. See 37 CFR 1.161.

  The action may include so much of the report of the ARS
as the examiner deems necessary, or may embody no part of
it. In the event of an interview, the examiner, in his
discretion, may show the entire report to the inventor or
attorney.

  With reference to the examination of the claim, the
language must be such that it is directed to the "new and
distinct variety of plant." This is important as under no
circumstance should the claim be directed to a new variety
of flower or fruit in contradistinction to the plant bearing
the flower or the tree bearing the fruit. This is in spite
of the fact that it is accepted and general botanical
parlance to say  __ A variety of apple or a variety of
blackberry  __ to mean a variety of apple tree or a variety
of blackberry plant.

  Where the application may be allowed a claim which
recites,  for  example  __  A  new  variety  of  apple
characterized by - may be amended by the insertion of  __
tree  __ after "apple" by an examiner's amendment.

  By the same token, the title of the invention must
relate to the entire plant and not to its flower or fruit,
thus: Apple Tree, Rose Plant.

  Care should also be exercised that the specification
does not contain unwarranted advertising, for example, "the
disclosed plant being grown in the XYZ Nurseries of Topeka,
Kansas." It follows, also, that in the drawings any showing
in the background of a plant, as a sign carrying the name of
an individual, nursery, etc., is objectionable and deletion
thereof is required. Nor should the specification include
laudatory expressions, such as, "The rose is prettier than
any other rose." Such expressions are wholly irrelevant.
Where  the  fruit  is  described,  statements  in  the
specification as to the character and quality of products
made from the fruit are not necessary and should be deleted.

  The Office action is typed with an additional copy which
is placed in the duplicate file. The papers in the duplicate
file are not noted on the index at the back of the duplicate
file wrapper.

  When it appears that the application must be resubmitted
to the A.R.S., as when the report indicates that the
duplicate  file  and  drawing  are  retained,  applicant  is
notified that response papers must be in duplicate.

  Frequently, the ARS in its report states that in view of
its lack of sufficient information, data, specimens, etc.,
its specialists are unable to determine whether the variety

of  plant  under  consideration  is  new  and  distinct  and
suggests that the Patent and Trademark Office require the
applicant  to  submit  affidavits  or  declarations  from
recognized experts as to the newness of the variety. See 37
CFR 1.167(b).

  The report of the ARS is not in the nature of a
publication and matters raised therein within the personal
knowledge of the specialists of the ARS are not sufficient
basis for a rejection unless it is first ascertained by the
examiner that the same can be supported by affidavits by
said specialists (37 CFR 1.107(b)). See Ex parte Rosenberg ,
46 USPQ 393 (Bd. App. 1939).

1611  Issue

  The preparation of a plant patent application for issue
involves the same procedure as for other applications (37
CFR 1.161), with the exception that where there are colored
drawings, the better one of the two judged, for example, by
its sharpness or cleanliness is selected, and to this one
the issue slip is affixed. The duplicate file is retained in
the examining group until after the application has been
patented. At certain periods thereafter, such duplicate
files are collected and sent to the abandoned files for
storage.

  The International Patent Classification symbols, most
recent edition, should be placed on the Issue Classification
slip of all plant patent applications being sent to issue.

  All plant patent applications should contain an abstract
when forwarded to the Patent Issue Division.

1612  UPOV Convention

  On November 8, 1981, the 1978 text of the "International
Convention for the Protection of New Varieties of Plants"
(generally  known  by  its  French  acronym  as  the  UPOV
Convention) took effect in the United States and two other
states, Ireland and New Zealand. As of March 1, 1990, 19
states  were  party  to  the  UPOV  Convention:  They  are
Australia, Belgium, Denmark, Federal Republic of Germany,
France, Hungary, Israel, Italy, Japan, Netherlands, New
Zealand, Poland, South Africa, Spain, Sweden, Switzerland,
United Kingdom, and United States of America. Over time,
most states are expected to adhere to the 1978 text.

  Both the 1961 and 1978 texts guarantee to plant breeders
in each member state both national treatment and the right
of priority in all other member states. In many states, new
plant varieties are protected by breeders' rights laws
rather than patent laws. Accordingly, the Paris (Industrial
Property) Convention cannot always be relied on to provide
these and other rights.

  Insofar as the patenting of asexually reproduced plants
in the United States is concerned, both national treatment
and the right of priority have been accorded to foreign
plant breeders since enactment of the plant patent law in
1930 (now 35 U.S.C. 161 - 164). The UPOV Convention does not
yet apply to the protection of sexually reproduced plants
under the Plant Variety Protection Act, 7 U.S.C. 232 et
seq., administered by the Department of Agriculture.

  Application of the UPOV Convention in the United States
does  not  affect  the  examination  of  plant  patent
applications, except in one instance. It is now necessary as
a condition for receiving a plant patent to register a
variety name for that plant.

  The registration process in general terms consists of
inclusion of a proposed variety name in the plant patent
application. The examiner must evaluate the proposed name in
light  of  UPOV  Convention,  Article  13.  Basically,  this
Article requires that the proposed variety name not be
identical  with  or  confusingly  similar  to  other  names
utilized in the United States or other UPOV member countries
for the same or a closely related species. In addition, the
proposed name must not mislead the average consumer as to
the characteristics, value, or identity of the patented
plant. Ordinarily, the name proposed for registration in the
United States must be the same as the name registered in
another member state of UPOV. Inclusion of the variety name
in the patent comprises its registration. Rules of Practice
are now being developed for administering this variety
naming requirement.

  - -- - --

  Chapter 1700 Miscellaneous

  1701  Office Personnel Not To Express Opinion on Validity
  or Patentability of Patent
  1701.01  Office Personnel Not To Testify
  1702  Restrictions on Former Examiners
  1703  The Official Gazette
  1704  Application Records and Reports
  1705  Examiner Docket, Time, and Activity Recordation
  1706  Disclosure Documents
  1711  U.S. - Philippines Search Exchange >1720
  Dissemination of Court and Board Decisions<
  1721  Treatment of Court and Board Decisions Affecting
  Patent and Trademark Office Policy and Practice

1701  Office Personnel Not To Express Opinion on
Validity or Patentability of Patent

  Every patent is presumed to be valid, 35 U.S.C. 282,
first sentence. Public policy demands that every employee of
the Patent and Trademark Office refuse to express to any
person any opinion as to the validity or invalidity of, or
the patentability or unpatentability of any claim in any
U.S. patent, except to the extent necessary to carry out (a)
examination of an application seeking to reissue the patent,
(b) a reexamination proceeding to reexamine the patent, or
(c) an interference involving the patent.

  The question of validity or invalidity is otherwise
exclusively a matter to be determined by a court. Members of
the patent examining corps are cautioned to be especially
wary of any inquiry from any person outside the Patent and
Trademark  Office,  including  an  employee  of  another
Government agency, the answer to which might indicate that a
particular patent should not have issued.

  When a field of search for an invention is requested,
examiners should routinely inquire whether the invention has

been patented in the United States. If the invention has
been patented, no field of search should be suggested.

  Employees  of  the  Patent  and  Trademark  Office,
particularly patent examiners who examined an application
which matured into a patent or a reissued patent or who
conducted a reexamination proceeding, should not discuss or
answer inquiries from any person outside the Patent and
Trademark Office as to whether or not a certain reference or
other  particular  evidence  was  considered  during  the
examination or proceeding and whether or not a claim would
have been allowed over that reference or other evidence had
it been considered during the examination or proceeding.
Likewise, employees are cautioned against answering any
inquiry concerning any entry in the patent or reexamination
file, including the extent of the field of search and any
entry relating thereto. The record of the file of a patent
or reexamination proceeding must speak for itself.

  Practitioners can be of material assistance in this
regard by refraining from making improper inquiries of
members  of  the  patent  examining  corps.  Inquiries  from
members of the public relating to the matters discussed
above must of necessity be refused and such refusal should
not be considered discourteous or an expression of opinion
as to validity or patentability.

1701.01  Office Personnel Not To Testify [R - 3]

 **

  It is the policy of the Patent and Trademark Office that
its employees, including patent examiners, will not appear
as witnesses or give testimony in legal proceedings, except
under the conditions specified in*>15< CFR Part 15a. Any
employee who testifies contrary to this policy will be
dismissed or removed . The reasons for this policy are set
out in*>15< CFR 15a.3.

  Whenever an employee of the Patent and Trademark Office,
including a patent examiner, is asked to testify or receives
a subpoena, the employee shall immediately notify the Office
of the Solicitor. Inquiries requesting testimony shall be
also referred immediately to the Office of the Solicitor.

  Patent examiners and other Patent and Trademark Office
employees performing or assisting in the performance of
quasi - judicial functions, are forbidden to testify as
experts or to express opinions as to the validity of any
patent.

  Any individual desiring the testimony of an employee of
the Patent and Trademark Office, including the testimony of
a patent examiner or other quasi - judicial employee, must
comply with the provisions of*>15< CFR Part 15a.

  A request for testimony of an employee of the Patent and
Trademark Office should be made to the Office of the
Solicitor at least 10 working days prior to the date of the
expected testimony.

  If an employee is authorized to testify, the employee
will  be  limited  to  testifying  about  facts  within  the
employee's personal knowledge. Employees are prohibited from
giving expert or opinion testimony. Fischer & Porter Co.  v.

Corning Glass Works, 61 F.R.D. 321, 181 USPQ 329 (E.D. Pa.
1974). Likewise, employees are prohibited from answering
hypothetical or speculative questions,  In re Mayewsky , 162
USPQ 86, 89 (E.D. Va. 1969) (deposition of an examiner must
be restricted to relevant matters of fact and must avoid any
hypothetical or speculative questions or conclusions based
thereon);  ShafferTool Works  v.  Joy Mfg. Co. , 167 USPQ
170 (S.D. Tex. 1970) (deposition of examiner should be
limited to matters of fact and must not go into hypothetical
or  speculative  areas  or  the  bases,  reasons,  mental
processes, analyses, or conclusions of the examiner in
acting upon a patent application). Employees will not be
permitted to give testimony with respect to subject matter
which is privileged. Several court decisions limit testimony
with respect to quasi - judicial functions performed by
employees. Those decisions include  United States  v.
Morgan , 313 U.S. 409, 422 (1941) (improper to inquire into
mental processes of quasi - judicial officer or to examine
the manner and extent to which the officer considered an
administrative record);  Western Electric Co.  v.  Piezo
Technology, Inc. , 860 F.2d 428, 8 USPQ 2d 1853 (Fed. Cir.
1988) (patent examiner may not be compelled to answer
questions which probe the examiner's technical knowledge of
the subject matter of a patent);  McCulloch Gas Processing
Co.  v.  Department of Energy,650 F.2d 1216, 1229 (Temp.
Emer. Ct. App. 1981) (discovery of degree of expertise of
individuals  performing  governmental  functions  not
permitted);  In re Nilssen , 851 F.2d 1401, 7 USPQ 2d 1500
(Fed. Cir. 1988) (technical or scientific qualifications of
examiners - in - chief are not legally relevant in appeal
under 35 U.S.C. 134 since board members need not be skilled
in the art to render obviousness decision);  Lange  v.
Commissioner , 352 F. Supp. 166, 176 USPQ 162 (D.D.C. 1972)
(technical qualifications of examiners - in - chief not
relevant in 35 U.S.C. 145 action).

  In view of the discussion above, if an employee is
authorized to testify in connection with the employee's
involvement or assistance in a quasi - judicial proceeding
which took place before the Patent and Trademark Office, the
employee will not be permitted to give testimony in response
to questions which seek:

 (1) Information about that employee's:

  (A) Background.

  (B) Expertise.

  (C) Qualifications to examine or otherwise consider a
particular patent or trademark application.

  (D) Usual practice or whether the employee followed a
procedure  set  out  in  any  Office  manual  of  practice
(including the MPEP or TMEP) in a particular case.

  (E) Consultation with another Office employee.

  (F) Understanding of:

 (i) A patented invention, an invention sought to be
patented, or patent application, patent, reexamination or
interference file.

 (ii) Prior art.

 (iii)  Registered  subject  matter,  subject  matter
sought  to  be  registered,  or  a  trademark  application,
registration,  opposition,  cancellation,  interference,  or
concurrent use file.

 (iv) Any Office manual of practice.

 (v) Office regulations.

 (vi) Patent, trademark, or other law.

 (vii)  The  responsibilities  of  another  Office
employee.

  (G) Reliance on particular facts or arguments.

 (2) To inquire into the manner in and extent to
which  the  employee  considered  or  studied  material  in
performing a quasi - judicial function.

 (3) To inquire into the bases, reasons, mental
processes, analyses, or conclusions of that Office employee
in performing the quasi - judicial function.

  Any request for testimony addressed or delivered to the
Office of the Solicitor shall comply with*>15< CFR 15a.4(c).
All requests must be in writing . The need for a subpoena
may be obviated where the request complies with*>15< CFR
15a.4(c) if the party requesting the testimony further meets
the following conditions:

 (1) The party requesting the testimony identifies
the civil action or other legal proceeding for which the
testimony is being taken. The identification shall include:

  (a) the style of the case,

  (b) the civil action number,

  (c) the district in which the civil action is pending,

  (d) the judge assigned to the case, and

  (e) the name, address, and telephone number of counsel
for all parties in the civil action.

 (2) The party agrees not to ask questions seeking
information which is precluded by*>15< CFR 15a.6(b).

 (3)  The  party  shall  comply  with  applicable
provisions  of  the  Federal  Rules  of  Civil  Procedure,
including Rule 30, and give 10 working days notice to the
Office of the Solicitor prior to the date a deposition is
desired. Fifteen working days notice is required for any
deposition which is desired to be taken between November 15
and January 15.

 (4) The party agrees to notice the deposition at a
place convenient to the Patent and Trademark Office. The
Conference Room in the Office of the Solicitor is deemed to
be a place convenient to the Office.

 (5) The party agrees to supply a copy of the
transcript of the deposition to the Patent and Trademark

Office for its records.

  Absent  a  written  agreement  meeting  the  conditions
specified in paragraphs (1) through (5), a party must comply
with the precise terms of*>15< CFR 15a.4(c) and the Patent
and Trademark Office will not permit a deposition without
issuance of a subpoena.

1702  Restrictions on Former Examiners

 37 CFR 10.10  .  Restrictions on practice in
patent cases.

  (a) Only practitioners who are registered under § 10.6 or
individuals given limited recognition under § 10.9 will be
permitted to prosecute patent applications of others before
the Office.

  (b) No individual who has served in the patent examining
corps of the Office may practice before the Office after
termination of his or her service, unless he or she signs a
written undertaking.

 (1)  Not to prosecute or aid in any manner in the
prosecution of any patent application pending in any patent
examining group during his or her period of service therein,
and

 (2)  Not to prepare or prosecute or to assist in any
manner in the preparation or prosecution of any patent
application of another (i) assigned to such group for
examination and (ii) filed within two years after the date
he or she left such group, without written authorization of
the Director. Associated and related classes in other patent
examining groups may be required to be included in the
undertaking or designated classes may be excluded from the
undertaking.

  When an application for registration is made after
resignation from the Office, the applicant will not be
registered if he or she has prepared or prosecuted or
assisted in the preparation or prosecution of any patent
application  as  indicated  in  the  paragraph.  Knowingly
preparing or prosecuting or providing assistance in the
preparation  or  prosecution  of  any  patent  application
contrary  to  the  provisions  of  this  paragraph  shall
constitute misconduct under § 10.23(c)(13) of this part.

  (c) A practitioner who is an employee of the Office
cannot prosecute or aid in any manner in the prosecution of
any patent application before the Office.

  (d) Practice before the Office by Government employees is
subject  to  any  applicable  conflict  of  interest  laws,
regulations, or codes of professional responsibility.

  See also MPEP § 309.

1703  The  Official Gazette

  The Patent Official Gazette reports every Tuesday the
patents and design patents issued and defensive publications
published on that day. As to each patent, the following
information is given:

 (1) the name and (2) the city and state of residence
of the applicant with the Post Office address in the case of
unassigned patents, (3) the same data for the assignee, if
any, (4) the filing date, (5) the serial number of the
application, (6) the patent number, (7) the title of the
invention,  (8)  the  number  of  claims,  (9)  the  U.S.
classification by class and subclass, (10) a selected figure
of the drawing, if any, except in the case of a plant
patent,  (11)  a  claim  or  claims,  (12)  international
classification, (13) U.S. patent application data, if any,
and (14) foreign priority application data, if any. In the
case of a reissue patent, there are published the additional
data of the number and date of the original patent and
original application.

  The Patent Official Gazette also includes notices of
patent and trademark suits, indexes of patents, disclaimers
filed, Certificates of Correction issued, list of patents
available for license or sale, and general information such
as  orders,  notices,  changes  in  rules,  changes  in
classification, certain adverse decisions in interferences,
the  condition  of  work  in  the  Office,  disbarment,  and
registration  of  attorneys,  and  notices  to  parties  not
reached by mail.

  Trademark Official Gazette . The official journal of the
Patent  and  Trademark  Office  relating  to  trademarks  is
published every Tuesday. It contains an illustration of each
trademark published for opposition, a list of trademarks
registered, classified list of registered trademarks, and
Patent and Trademark Office notices.

  Orders should be addressed and remittances made payable
to Superintendent of Documents, U.S. Government Printing
Office, Washington, D.C. 20402.

1704  Application Records and Reports

  The PALM (Patent Application Locating and Monitoring)
System is the automated data management system used by the
Patent and Trademark Office for the retrieval and/or on -
line  updating  of  the  computer  record  of  each  patent
application. The PALM System also maintains examiner time,
activity, docket, and clerical backlog records.

  Information retrieval from PALM is by means of video
display terminals. Information update is by means of video
display  transactions  and,  predominantly,  by  means  of
transactions entered via bar code readers (BCR). Among other
items, classification, examiner docket, attorney, inventor,
and prosecution history data as well as the location of each
application can be retrieved and updated online with PALM.

  DOCKET REPORTS

  The  recording  of  changes  to  examiner  dockets  is
accomplished by PALM simultaneously with the recording of
incoming  and  outgoing  communications,  transfers  of
applications  to  and  from  dockets,  and  other  types  of
updating of the application record. The status of each
examiner's docket can be determined by means of online video
display transactions and is supplemented by periodic printed
reports. Docket reports that are generated by PALM include
the individual examiner; new, special, and amended docket
which lists applications in priority order; the individual

examiner  rejected  application  docket;  the  individual
examiner new application profile, which lists the totals of
new applications in each docket, sorted by month of filing;
and various summaries of the above reports at the group art
unit, group, and corps levels.

  TIME AND ACTIVITY REPORTS

  All reporting of examiner time and activity is on a
biweekly  basis.  Each  examiner's  examining  and  non  -
examining time, as listed on the examiners' Biweekly Time
Worksheet, PTO - 690E, is entered into PALM for use in the
computation  of  productivity  data.  The  biweekly  reports
produced include the individual examiner Time and Activity
Report which lists, by serial number, all applications for
which actions have been counted during the biweekly period.
The type of action counted for each application is also
indicated on the report. This report also includes examiner
time data, an action summary, and cumulative summaries to
date for the current quarter and fiscal year. Various
summary reports at the group art unit, group, and corps
levels are also produced.

1705  Examiner Docket, Time, and Activity Recordation

  COUNTING OF ACTIONS

  Actions prepared by examiners are submitted to their
respective  docket  clerks  for  counting.  (See  "Types  of
Action" and "Actions Not Counted" below which distinguishes
between outgoing communications that are considered to be
"actions" from those that are not). With each action, the
examiner submits an Examiner's Case Action Worksheet, PTO -
1472, upon which he/she indicates the type of action being
taken. The docket clerk, thereafter, updates the PALM record
of the application and the examiner's production record by
entry of the appropriate online bar code reader transaction.

 PROCEDURES FOR REPORTING AN EXAMINER'S ACTION

 (1) The Examiner Case Action Worksheet, PTO - 1472,
is filled out by the Examiner and attached to the case for
processing by the docket clerk.

 (2) The docket clerk checks the worksheet to verify
that  the  Examiner  provided  all  necessary  information
relating to that action.

 (3) The docket clerk places the count date of the
action on the Contents flap of the file wrapper.

 (4) The docket clerk will enter the examiner's
action for the case directly into PALM by using a Bar Code
Reader (BCR).

 (5) Each examiner's action reported to the PALM
system will be listed by serial number on the biweekly
Examiner's Time and Activity Report.

 (6)  The  Examiner  should  check  his/her  Biweekly
Examiner Time and Activity Report to verify that all cases
worked on for the biweekly report period are properly
listed.

  TYPES OF ACTION TO BE INDICATED ON EXAMINER'S CASE ACTION

  WORKSHEET, PTO - 1472

 (1) Nonfinal

 (2) Restriction/Election Only

 (a)  __ This is not an action on the merit. Other time
credit is given for time spent.

 (3) Final Rejection

 (4)  Ex parte Quayle

 (5) Allowance

 (6) Miscellaneous Action

 (a)  __ This type of action is used when a response period
is set and the other types of actions listed on the
worksheet are not appropriate.

 (7) Advisory Action After Final Rejection

 (8) Interference

 (a)  __ For Interference Memo (PTO - 850) and Decision on
Motion Mark Interference.

 (b)  __ When an examiner issues an action; e.g., nonfinal
and concurrently an initial interference memo (PTO - 850)
the examiner will complete a worksheet indicating; e.g.,
nonfinal and another worksheet indicating an interference
action.

  __
 (c)  A worksheet should be filled out for patented cases
placed into interference.

 (9) Examiner's Answer

  __
 (a)  If a supplemental or second Examiner's Answer is
written, the action will be counted, but no disposal credit
will be received.

 (b)  __ If prosecution is continued, after a Board of
Appeals  or  a  Court  Decision,  the  examiner  marks  the
worksheet, e.g., NONFINAL with the next consecutive action
number.

 (10) Suspension

 (a)  __This will give a miscellaneous action credit on the
Biweekly Report. It will also be recorded in PALM as a
miscellaneous Office action and a letter of suspension.

 (11) Allowance After Examiner's Answer, Board of
Patent Appeals and Interferences or Court Decision

 (a)  __ This is not a disposal credit and is indicated as a
"noncounter" on the biweekly Examiners' Time and Activity
Report.

 (b)  __ Statutory Invention Registration disposal credit
only after a first action on the merits.

 (12)  Abandonment  (Failure  to  Respond  to  Office
Action)

 (a)  __ The actual date of abandonment is the date the
Office action response period expired. See MPEP § 711.04(a).

 (b)  __ The action number reported should be the action
number of the last Office action to which the applicant has
failed to respond.

 (13) Express Abandonment

 (a)  __ The examiner will automatically be credited with a
nonmerit  Office  action  for  acknowledging  the  Express
Abandonment and an abandonment (disposal) credit.

 (b)  __ The actual date of abandonment will be the date of
recognition of the letter. See MPEP § 711.01.

 (14) Abandonment After Examiner's Answer, Board of
Patent Appeals and Interferences, or Court Decision

  __
  (a)  The  date  of  abandonment,  is  the  date
applicant/appellant response period expired. See MPEP §
711.04(a).

 (b)  __ This is not a disposal credit and is indicated as a
noncounter on the Biweekly Examiners' Time and Activity
Report.

 (15)  Supplemental  Office  Action  __  When  the
Examiner issues a supplemental Office action (which is the
same type of action previously issued), a note should be
attached to the application. This will assist the docket
clerk in properly reporting this supplemental Office action
to the PALM system. A supplemental action may be necessary
when an applicant's response and an examiner's Office action
cross in the mail. Also, a supplemental action may be
necessary when the examiner becomes aware of an additional
ground of rejection after the mailing of an Office action.

 COUNTING OF FIRST ACTION ON THE MERITS (FAOM)

  Office actions on the merits are:

 (1) Nonfinal

 (2) Final Rejection

 (3)  Ex parte Quayle

 (4) Allowance

  The first time an examiner performs one of the above
four merit actions, he/she receives credit for a First
Action on the Merits (FAOM) on the production reports.

  A second/subsequent but First Action on the Merits
(FAOM) action usually occurs when the first action is a
restriction/election. The examiner indicates the type of
action (nonfinal, final rejection, Ex parte Quayle and
allowance) on the worksheet, and the PALM system will
automatically determine if it is an FAOM. The action will be
listed and credited on the Biweekly Examiners' Time and

Activity Report as a Second/Subsequent FAOM.

  COUNTING OF DISPOSALS

  An examiner's "disposal" count consists of four items:

  (1) allowances, (2) abandonments, (3) Examiner's answers,
and (4) International Preliminary Examination Reports.

  An  examiner  receives  credit  for  a  disposal  upon
submission of a first Examiner's Answer prepared in an
appealed  application.  These  same  items  constitute  the
"disposals" for performance evaluation of examining art
units and groups. However, disposals at the Office level
consist only of allowances and abandonments.

  ACTIONS NOT COUNTED

  The following are not to be counted as actions but are
reported to PALM by the docket clerk:

 (1) Examiner's Amendments.

 (2)  Supplemental  actions  citing  additional
references or correcting the data of references of record.

 (3) Letters acknowledging receipt of communications
from applicants, such as new or supplemental oaths, orders
for corrections of drawings, etc., which do not bring the
application up for action.

 (4) Letters stating that the Notice of Allowance
will be sent in due course.

 (5) Answers to petitions to revive or to make cases
special,  amendments  under  37  CFR  1.312  and  to  status
letters.

 (6) Actions in Reexamination applications.

 (7) Transfers of individual cases and patentability
reports are not counted as actions, but credit is given for
the time spent.

  CORRECTION INFORMATION

 (1) If any information is either missing from or
incorrect on the biweekly Examiner Time and Activity Report,
the examiner should promptly notify the docket clerk by
providing all the pertinent information necessary to make
the changes to the PALM system (e.g., examining hours,
application serial number, type of action, etc.).

 (2) The docket clerk will report the necessary
changes and corrections directly into PALM. These changes
will be listed on the next biweekly Examiner Time and
Activity Report.

 (3) If any information is missing from the last
biweekly Examiner Time and Activity Report of a quarter
(except at the end of a fiscal year) or is incorrect, the
examiner should promptly notify the docket clerk and his/her
Supervisory Patent Examiner (SPE). The docket clerk will
make the appropriate changes directly into the PALM system.
The changes will be listed on the next biweekly Examiner

Time and Activity Report. However, these changes will not be
reflected in the last Quarter's Report; the Examiner's SPE
may manually make an adjustment to the records to show these
changes.

 (4) In order to ensure that all PALM reports are
correct at the end of the fiscal year (rating period), a
special correction cycle is provided on the PALM system. If
any information is missing from or is incorrect on the last
biweekly Examiner Time and Activity Report, the examiner
should immediately notify the docket clerk and his/her SPE.
These changes will be reflected in the examiner's final
biweekly report for the entire fiscal year.

1706  Disclosure Documents [R - 1]

  The Patent and Trademark Office**>(PTO) maintains for 2
years< "Disclosure Documents" as evidence of the dates of
conception of inventions.

  THE PROGRAM

  A paper disclosing an invention and signed by the
inventor or inventors may be forwarded to the ** >PTO< by
the  inventor  (or  **  inventors),  by  the  owner  of  the
invention, or by the attorney or agent of the inventor(s) or
owner. * >The Disclosure Document< will be retained for 2
years and then be destroyed unless it is referred to in a
separate letter in a related application >filed< within
>those< 2 years.

  >Disclosure Documents may also be filed at selected
Patent and Trademark Office Depository Libraries, presently
including the Sunnyvale Center for Innovation, Inventions,
and Ideas and the Detroit Public Library. (A current listing
will always be available from the PTO's Patent and Trademark
Depository Library Program office.) The documents are date -
stamped and numbered at these PTDLs. One copy of the
document is is retained at the PTDL for its records.
Original documents are sent to the PTO for fee collection,
processing, and retention.<

  The Disclosure Document is not a patent application, and
the date of its receipt in the ** >PTO< will not become the
effective filing date of any patent application subsequently
filed. However, like patent applications, these documents
will be kept in confidence by the ** >PTO<.

  This  program  does  not  diminish  the  value  of  the
conventional witnessed and notarized records as evidence of
conception of an invention ** >. It< should provide a more
credible form of evidence than that provided by the popular
practice of mailing a disclosure to oneself or another
person  by  registered  mail.  A  Disclosure  Document  is
available to the public when * >a patent< application which
refers to it issues as a patent.

  CONTENT OF DISCLOSURE DOCUMENT

  **>The< benefits *>provided< by the Disclosure Document
will depend * upon the adequacy of the disclosure. ** >It is
recommended< that the document *>be< a clear and complete
explanation of the manner and process of making and using
the invention >. This description must be< in sufficient
detail to enable a person having ordinary knowledge in the

field of the invention to make and use the invention. When
the nature of the invention permits, a drawing or sketch
should be included. **

  PREPARATION OF THE DOCUMENT

  **>To facilitate the PTO's electronic data capture and
storage of the Disclosure Document, it must be on white
paper having dimensions not to exceed 8 ½ by 11 inches (21.6
by 28.0 cm) with each page numbered. Text and drawings must
be sufficiently dark to permit reproduction with commonly
used office copying machines. Oversized papers, even if
foldable to the above dimensions, will not be accepted.
Attachments such as videotapes and working models will not
be accepted and will be returned.<

  OTHER ENCLOSURES

  **>The< Disclosure Document must be accompanied by a **
>separate signed cover letter stating that it is submitted
by, or on behalf of, the inventor< and requesting that the
material be received ** >into< the Disclosure Document
Program. ** The inventor's request may take the following
form:

  "The  undersigned,  being  the  inventor  of  the
disclosed invention, requests that the enclosed papers be
accepted under the Disclosure Document Program, and that
they be preserved for a period of two years."

  >The original submission will not be returned. A notice
with an identifying number and date of receipt in the PTO
will  be  mailed  to  the  customer,  indicating  that  the
Disclosure Document may be relied on only as evidence and
that a patent application should be diligently filed if
patent protection is desired.<

  DISPOSITION

  The Disclosure Document ** >is retained by< the ** >PTO<
for 2 years ** >. After that time, it< will be destroyed
unless ** referred to in a separate letter in a related
patent application filed within the 2 - year period. ** >A
letter must be filed in the related patent application,
identifying not only the patent application but also the
Disclosure< Document by its title, number, and date of
receipt. Acknowledgment ** of such letters * >will be< made
in the next official communication or in a separate letter
from the ** >PTO<. Unless it is desired to have the ** >PTO<
retain the Disclosure Document beyond the 2 - year period,
it is not required that it be referred to in a patent
application.

  ACKNOWLEDGMENT

  When a paper referring to a Disclosure Document is filed
in a patent application within 2 - years after the filing of
a Disclosure Document, the ** >Examining Group Technical
Support Staff member< either prepares (1) a memorandum
indicating that a reference to Disclosure Document No. - -
has been made in ** >Patent Application< No. - - , or (2) a
copy of the paper filed in the application referring to the
Disclosure Document. The memorandum or copy is forwarded to
the * >Customer Contact Team< of the Correspondence and Mail
Division.

  Upon  receipt,  the  >Customer  Contact  Team  of  the<
Correspondence and Mail Division prepares a retention label
(PTO - 150) and attaches it to the Disclosure Document, >so<
indicates on the forwarded memo or copy, ** and returns the
memo or copy to the group. The returned memo or copy is
stapled to the inside left flap of the file wrapper so that
the examiner's attention is directed to it when the next
Office  action  is  prepared.  If  prosecution  before  the
examiner has been concluded, a separate letter indicating
that the Disclosure Document will be retained should be sent
to the applicant by the **>Examining Group Technical Support
Staff member<.

  After the acknowledging letter is mailed, the paper
>number of the acknowledgement is noted< in the application
file **. The returned memo or copy is stapled to and
retained  with  the  original  paper  >referring  to  the
Disclosure Document< in the file wrapper **.

 FEE

  The fee >as< set forth in 37 CFR 1.21(c) is ** >$10.< *
>Full payment< must accompany the Disclosure Document when
it is submitted to the *>PTO<.

  * >NOTICE< TO INVENTORS

  The 2 - year retention period should not be considered
to be a "grace period" during which the inventor can wait to
file his >or her< patent application without possible loss
of benefits. It must be recognized that in establishing
priority of invention an affidavit or testimony referring to
a Disclosure Document must usually also establish diligence
in  completing  the  invention  or  in  filing  the  patent
application since the filing of the Disclosure Document.

  >Inventors  not  familiar  with  the  requirement  of
"diligence in completing the invention" or "reduction to
practice" under the U.S. patent law are advised to consult
an attorney or agent registered to practice before the PTO.
A publication, Attorneys and Agents Registered to Practice
Before the U.S. Patent and Trademark Office is available
from  the  Superintendent  of  Documents,  U.S.  Government
Printing Office, Washington, D.C. 20402. Patent attorneys
and agents may be found in the telephone directories of most
major cities. Also, many large cities have associations of
patent attorneys that may be consulted.<

  Inventors are also reminded that any public use or sale
in the United States or publication of the invention ** more
than 1 year prior to the filing of a patent application on
that invention * >may< prohibit the granting of a patent on
it.

  **

  >There is a nationwide network of Patent and Trademark
Depository Libraries (PTDLs), which have collections of
patents and patent - related reference materials available
to the public, including automated access to PTO data bases.
Publications such as General Information Concerning Patents
are available at the PTDLs. To find out the location of the
PTDL closest to you, please consult the complete listing of
all PTDLs that appears in every issue of the  Official

Gazette or call the PTO Public Service Branch at (703) 308 -
HELP/4357. To ensure assistance from a PTDL staff member,
you may wish to contact a PTDL prior to visiting to learn
about its collections, services, and hours.<

1711  U.S. - Philippines Search Exchange

  The United States - Philippines search exchange program
involves patent applications filed in the United States
which  are  subsequently  followed  by  corresponding
applications filed in the Republic of the Philippines and
patent applications filed in the Philippines subsequently
followed by corresponding applications filed in the United
States.

  The program operates as follows:

  The applicant files his application in the U.S. Patent
and Trademark Office which will process the application in
the normal manner and examine the application in the usual
time sequence.

  If the applicant should later file a corresponding
application in the Philippines Patent Office, he may elect
to use the special filing procedure. Under this special
filing procedure, applicant files his application in the
Philippines  accompanied  by  a  notice  of  election  to
participate  in  the  special  procedure;  which  notice  of
election  contains  a  certification  that  the  description
(excluding references to related applications), claims, and
drawings  are  identical  to  those  of  the  corresponding
application originally filed in the United States. The
earlier filed application must be fully identified; and, in
applications without a claim of priority, a certified copy
of the earlier filed U.S. application must be submitted to
the Philippines Patent Office. In addition, applicant must
also agree that all amendments to his U.S. application will
also be made with respect to his application filed in the
Philippines.

  In the U.S. Patent and Trademark Office, applicant will
regularly file two copies of each amendment, one copy must
be  marked  Copy  for  Philippines  Patent  Office.  Upon
termination of prosecution, the U.S. Patent and Trademark
Office shall remove all copies so marked from the U.S. file
and promptly forward the same to the Philippines Patent
Office.

  Election forms for participation in this special program
must be signed in duplicate and simultaneously accompany the
application to be filed in the Philippines.

  Upon receipt of properly filed notice of election, the
Philippines Patent Office will notify the U.S. Patent and
Trademark Office of the election by forwarding one copy of
the election forms to the U.S. Patent and Trademark Office.
The Philippines Patent Office will defer action on the
Philippines application pending receipt of information as to
the disposition of the application by the U.S. Patent and
Trademark Office. If no such information is received by the
Philippines Office within a reasonable amount of time from
the date of filing in the Philippines, the Philippines
Office may, either on its own initiative, or at applicant's
request, inquire as to the status of the U.S. application
and,  if  desired,  proceed  with  its  own  independent

examination.

  Upon disposal of the application by the U.S. Patent and
Trademark Office, appropriate information will be sent to
the  Philippines  Patent  Office  which  will  include  all
necessary identifying data, whether allowed or abandoned,
notice  of  allowance,  copies  of  documents  cited  during
examination, a copy of the last office action and, when
necessary, any earlier actions which may be included by
reference in the last action. The Philippines Office will
then make their own complete office action based upon the
claims as amended with U.S. Patent and Trademark Office,
performing whatever checks desired and search for copending
interfering applications. Alternatively, the Philippines may
request applicant to show cause why the results of the U.S.
examination should not be accepted in the Philippines. All
avenues of appeal will remain open to the applicant.

  Where copending applications are cited and applied
during examination in the U.S. Patent and Trademark Office,
full examination will not be forwarded to the Philippines
Patent  Office,  and  the  fact  that  a  U.S.  copending
application  was  cited  would  be  noted  as  a  matter  of
information, since such references are inapplicable in the
Philippines.

  Where the application originates in the Philippines
Patent Office and is subsequently filed in the U.S. Patent
and Trademark Office, a similar procedure as outlined above,
consonant with U.S. Law, will be followed.

  It is believed that this program will facilitate the
handling of U.S. origin applications filed in the Republic
of the Philippines resulting in a savings in time and
expense of prosecution to U.S. applicants.

>1720  Dissemination of Court and Board Decisions [R - 1]

  COURT DECISIONS

  The Office of the Solicitor forwards to the Office of
the Assistant Commissioner for Patents copies of all recent
court decisions in patent cases where a precedential opinion
is issued. The Office of the Assistant Commissioner for
Patents will routinely provide copies of these opinions to
Group Directors, the Patent Academy, and the Director of the
Office of Quality Review.

  Directors are to, in turn, make copies available to
managers and other individuals as the Director determines to
be appropriate. Directors are encouraged to discuss the
contents  of  the  opinions  in  their  staff  meetings,
particularly where such meetings are being held to reinforce
examination quality.

  BOARD DECISIONS

  A decision rendered by the Board is returned to the
examiner through the Group Director and the examiner's
supervisor. The examiner takes action consistent with the
decision rendered by the Board unless reconsideration of the
Board decision will be requested (MPEP § 1214.04). The
Director may circulate and discuss the decision among some
or all of the supervisors in the Group, and the supervisors,
in turn, may circulate the decision among the examiners in

their art units, depending on the subject matter or issues
in the decisions.<

1721  Treatment of Court and Board Decisions Affecting
Patent and Trademark Office Policy and Practice [R - 3]

  In the event a Board or court decision is one that
significantly adds to the body of law by, for example,
addressing a new legal or procedural issue, or providing a
new interpretation of a prior decision, such a decision may
result in an internal PTO memorandum pointing out the
significance of the decision to the examination process.

  When any examiner or supervisor in the Patent Examining
Corps concludes that a recent decision of the Board or a
court affects existing PTO policy or practice, he or she
should bring the matter to the attention of his/her Group
Director through normal chain - of - command procedures.

  When the Group Director believes that guidance to the
Corps is warranted as a result of a decision, the Director
should consult with the Deputy Assistant Commissioner for
Patent Policy and Projects and provide a draft of the
guidance  that  is  recommended  as  appropriate  under  the
circumstances. The Deputy Assistant Commissioner for Patent
Policy and Projects will then *>consult< appropriate Office
officials, as necessary, to formulate a recommendation to
the  Assistant  Commissioner  for  Patents  on  the  policy
implications of the opinion.

  It may be necessary for the Commissioner, Solicitor,
Chairman of the Board, A/C for Patents, Deputy A/C for
Patent Policy and Projects, Deputy A/C for Patents and
Director making the recommendation to meet to review and
discuss the policy ramifications of the case enabling the
Commissioner to decide how the PTO will proceed.

  Communication of the decision on the policy implications
of the court or Board decision will normally take place by
either notice in the Official Gazette and/or via memorandum
to PTO personnel. Ultimately, the policy

  implications  of  the  decision  will  be  officially
incorporated into the Manual of Patent Examining Procedure
and Patent Academy curriculum materials during the next
update cycle for these reference materials.

  - -- - -- END - -- - --

  Chapter 1800 Patent Cooperation Treaty

  Introduction
  1801  Basic Patent Cooperation Treaty (PCT) Principles
  1802  PCT Definitions
  1803  Reservations Under the PCT Taken by the United
  States of America
  1805  Where To File an International Application
  1807  Agent or Common Representative and General Power of
  Attorney
  1808  Change in or Revocation of the Appointment of an
  Agent or a Common Representative
  1810  Filing Date Requirements
  1812  Elements of the International Application
  1817  PCT Member States
  1817.01  Designation of States and Precautionary

  Designations
  1817.02  Continuation or Continuation - In - Part
  Indication in the Request
  1819  Earlier International or International - Type
  Search
  1820  Signature of Applicant
  1821  The Request
  1823  The Description
  1823.01  Reference to Deposited Microorganism
  1823.02  Nucleotide and/or Amino Acid Sequence Listings
  1824  The Claims
  1825  The Drawings
  1826  The Abstract
  1827  Fees
  1828  Priority Claim and Document
  1830  International Application Transmittal Letter
  1832  License Request for Foreign Filing Under the PCT
  1834  Correspondence
  1834.01  Use of Telegraph, Teleprinter, Facsimile
  Machine
  1834.02  Irregularities in the Mail Service
  1836  Rectification of Obvious Errors
  1840  The International Searching Authority
  1840.01  The European Patent Office as an International
  Searching Authority
  1842  Chapter I Basic Flow
  1843  The International Search
  1844  The International Search Report
  1844.01  Time for the International Search Report
  1846  Sections of the Articles, Regulations, and
  Administrative Instructions Under the PCT Relevant to
  the International Search
  1847  Refund of International Search Fee
  1848  Sequence Listings
  1849  Subject Matter Excluded from International Search
  1850  Unity of Invention Before the International
  Searching Authority
  1851  Identification of Patent Documents
  1852  International - Type Search
  1853  Amendment Under PCT Article 19
  1857  International Publication
  1859  Withdrawal of International Application or
  Designations
  1860  International Preliminary Examination
  1861  Chapter II Basic Flow
  1862  Agreement with the International Bureau To Serve as
  an International Preliminary Examination Authority
  1864  The Demand and Preparation for Filing of Demand
  1864.01  Amendments Filed with Demand
  1864.02  Applicant's Right to File a Demand
  1864.03  States Which May Be Elected
  1864.04  Agent's Right to Act
  1865  Filing of Demand
  1866  Filling in of Headings on Chapter II Forms
  1867  Preliminary Examination Fees
  1868  Correction of Defects in the Demand
  1869  Notification to International Bureau of Demand
  1870  Priority Document and Translation Thereof
  1871  Processing Amendments Filed Under Article 19 and
  Article 34 Prior to or at the Start of International
  Preliminary Examination
  1872  Transmittal of Demand to the Examining Corps
  1873  Later Election of States
  1874  Determination if International Preliminary
  Examination is Required and Possible

  1875  Unity of Invention Before the International
  Preliminary  Examining Authority
  1875.01  Preparation of Invitation Concerning Unity
  1875.02  Response to Invitation Concerning Lack of
  Unity of Invention
  1876  Notation of Errors and Informalities by the
  Examiner
  1876.01  Request for Rectification and Notification of
  Action Thereon
  1877  Nucleotide and/or Amino Acid Sequence Listings
  During the International Preliminary Examination
  1878  Preparation of the Written Opinion
  1878.01(a)  Prior Art Under Chapter II
  1878.01(a)(1)  Novelty Under Chapter II
  1878.01(a)(2)  Inventive Step Under Chapter II
  1878.01(a)(3)  Industrial Applicability Under Chapter II
  1878.02  Response to the Written Opinion
  1879  Preparation of the International Preliminary
  Examination Report
  1879.01  Time Limit for Preparing Report
  1879.02  Transmittal of the International Preliminary
  Examination Report
  1879.03  Translations
  1879.04  Confidential Nature of the Report
  1880  Withdrawal of Demand or Election
  1881  Receipt of Notice of Election by the Patent and
  Trademark Office
  1890  Receipt of Notice of Designation
  1891  Receipt of Notice of Election and Preliminary
  Examination Report
  1893  The National Stage (U.S. National Application File
  Under 35 U.S.C. 371)
  1893.01  Commencement and Entry
  1893.01(a)  Entry via the U.S. Designated Office
  1893.01(a)(1)  Submissions Required by 20 Months From the
  Priority Date
  1893.01(b)  Entry via the U.S. Elected Office
  1893.01(b)(1)  Submissions Required by 30 Months From the
  Priority Date
  1893.01(c)  Fees
  1893.01(d)  Translation
  1893.01(e)  Oath/Declaration
  1893.02  Abandonment
  1893.03  Prosecution of U.S. National Stage
  Applications Before the Examiner
  1893.03(a)  How To Identify That an Application Is a U.S.
  National Stage Application
  1893.03(b)  The Filing Date of a U.S. National Stage
  Application
  1893.03(c)  The Priority Date, Priority Claim, and
  Priority Papers for a U.S. National Stage Application
  1893.03(d)  Unity of Invention
  1893.03(e)  Papers Received From the International Bureau
  and Placed in a U.S. National Stage Application File
  1893.03(f)  Drawings and PCT Rule 11
  1893.03(g)  Information Disclosure Statement in a National
  Stage Application
  1895  A Continuation or Continuation - In - Part
  Application of a PCT Application Designating the
  United States
  1895.01  Handling of and Considerations In the Handling
  of National Applications Under 35 U.S.C. 371 and 35
  U.S.C. 111 Continuations or Continuations - In - Part
  of a PCT Application
  1896  The Differences Between (1) a National Application

  Filed Under 35 U.S.C. 111 Application and (2) a
  National Stage Application Under 35 U.S.C. 371
  INTRODUCTION

 This chapter is designed to be a guide for patent examiners
in searching and examining applications filed under the
Patent  Cooperation  Treaty  (PCT).  Applicants  desiring
additional information for filing international applications
should obtain a copy of the PCT Applicant's Guide from the
World Intellectual Property Organization (WIPO) in Geneva,
Switzerland.

 The Articles and Regulations under the PCT are reproduced
in  Annex  T  of  this  Manual  and  the  Administrative
Instructions are reproduced in Annex AI.

  PCT  applications  are  processed  by  the  International
Division within the Patent and Trademark Office.

1801  Basic Patent Cooperation Treaty (PCT) Principles

  MAJOR CONCEPTS OF THE PCT

 The Patent Cooperation Treaty (PCT) enables the U.S.
applicant  to  file  one  application,  "an  international
application", in a standardized format in English in the
U.S.  Receiving  Office  (the  U.S.  Patent  and  Trademark
Office), and have that application acknowledged as a regular
national filing in as many member countries to the PCT as
the applicant "designates" or "elects," that is, names, as
countries in which patent protection is desired. In the same
manner, the PCT enables foreign applicants to file a PCT
international application, designating the United States of
America, in their home language in their home patent office
and have the application acknowledged as a regular U.S.
national filing. The PCT also provides for a search and
publication after 18 months from the priority date. Upon
payment of national fees and the furnishing of any required
translation, usually 20 months after the filing of any
priority application for the invention, or the international
filing date if no priority is claimed, the application will
be subjected to national procedures for granting of patents
in each of the designated countries. If a demand for an
international preliminary examination is filed within 19
months from the priority date, the period for entering the
national stage is extended to 30 months from the priority
date.

 The PCT offers an alternative route to filing patent
applications  directly  in  the  patent  offices  of  those
countries which are members of the PCT. It does not preclude
taking advantage of the priority rights and other advantages
provided under the Paris Convention. The PCT provides an
additional and optional foreign filing route to patent
applicants.

 The filing, search and publication procedures are provided
for in Chapter I of the PCT. Additional procedures for a
preliminary examination of PCT international applications
are provided for in optional PCT Chapter II.

 In most instances a national U.S. application (NA) is filed
first. An international application for the same subject

matter will then be filed subsequently within the priority
year provided by the Paris Convention and the priority
benefit of the U.S. national application filing date will be
claimed.

  RECEIVING OFFICE (RO)

 The international application (IA) must be filed in a
receiving Office (RO)(PCT Article 10). The United States
Patent and Trademark Office will act as a receiving Office
for  United  States  residents  and  nationals  (35  U.S.C.
361(a)). Under PCT Rule 19.1(a)(iii), the International
Bureau of the World Intellectual Property Organization will
also act as a Receiving Office for U.S. residents and
nationals. The receiving Office functions as the filing and
formalities  review  organization  for  international
applications. International applications must contain upon
filing the designation of at least one country in which
patent protection is desired and must meet certain standards
for completeness and formality (PCT Articles 11(1) and
14(1)).

 Where a priority claim is made, the date of the earlier
filed  national  application  is  used  as  the  date  for
determining  the  timing  of  international  processing,
including the various transmittals, the payment of certain
international and national fees, and publication of the
application.  Where  no  priority  claim  is  made,  the
international filing date will be considered to be the
"priority date" for timing purposes (PCT Article 2(xi)).

 The international application is subject to the payment of
certain fees upon filing, or within 1 month thereafter, and
at the expiration of 12 months from the priority date or
within 1 month thereafter. The receiving Office will grant
an international filing date to the application, collect
fees, handle informalities by direct communication with the
applicant, and monitor all corrections (35 U.S.C. 361(d)).
By 13 months from the priority date, the receiving Office
should prepare and transmit a copy of the international
application,  called  the  search  copy  (SC),  to  the
International Searching Authority (ISA); and forward the
original, called the record copy (RC), to the International
Bureau (IB) (PCT Rules 22.1 and 23). A second copy of the
international application, the home copy (HC), remains in
the receiving Office (PCT Article 12(1)). Once the receiving
Office  has  transmitted  copies  of  the  application,  the
International  Searching  Authority  becomes  the  focus  of
international processing.

  INTERNATIONAL SEARCHING AUTHORITY (ISA)

 The basic function of the International Searching Authority
(ISA) is to conduct a prior art search of inventions claimed
in international applications; it does this by searching in
at least the minimum documentation defined by the Treaty
(PCT Articles 15 and 16 and PCT Rule 34). At the option of
the applicant, either the U.S. Patent and Trademark Office
or the European Patent Office will act as an International
Searching Authority for international applications filed in
the  United  States  Receiving  Office.  The  International
Searching Authority is also responsible for checking the
content of the title and abstract (PCT Rules 37.2 and 38.2).
An international search report (SR) will normally be issued
by the International Searching Authority within 3 months

from the receipt of the search copy (usually about 16 months
after  the  priority  date)(PCT  Rule  42).  Copies  of  the
International Search Report and prior art cited will be sent
to the applicant by the ISA/US (PCT Rules 43 and 44.1). The
search report will contain a listing of documents found to
be relevant and will identify the claims in the application
to which they are pertinent; however, no judgments or
statements as to patentability will be made (PCT Rule 43.9).
Once the international search report has been completed and
transmitted, international processing continues before the
International Bureau.

  INTERNATIONAL BUREAU (IB)

 The basic functions of the International Bureau (IB) are to
maintain the master file of all international applications
and to act as the publisher and central coordinating body
under  the  Treaty.  The  World  Intellectual  Property
Organization (WIPO) in Geneva, Switzerland performs the
duties of the International Bureau.

 If the applicant has not filed a certified copy of the
priority  document  in  the  receiving  Office  with  the
international application, or requested upon filing that the
receiving Office prepare and transmit to the International
Bureau a copy of the prior U.S. national application, the
priority of which is claimed, the applicant must submit such
a document directly to the International Bureau or the
receiving Office not later than 16 months after the priority
date (PCT Rule 17). The Request form contains a box which
can be checked requesting that the receiving Office prepare
the certified copy. This is only possible, of course, if the
receiving Office is a part of the same national Office where
the priority application was filed.

 The applicant has normally 2 months from the date of
transmittal of the International Search Report to amend the
claims  by  filing  an  amendment  directly  with  the
International Bureau (PCT Article 19 and PCT Rule 46). The
International  Bureau  will  then  normally  publish  the
international application along with the search report and
any amended claims (Amdt) at the expiration of 18 months
from the priority date (PCT Article 21).The international
publication is in pamphlet form with a front page containing
bibliographical data, the abstract, and a figure of the
drawing (PCT Rule 48). The pamphlet also contains the search
report and any amendments to the claims submitted by the
applicant. If the application is published in a language
other than English, the search report and abstract are also
published in English. The International Bureau publishes a
PCT Gazette in the French and English languages which
contains information similar to that on the front pages of
published international applications, as well as various
indexes, and announcements (PCT Rule 86). The International
Bureau  also  transmits  copies  of  the  international
application to all the designated Offices (PCT Article 20
and PCT Rule 47).

 DESIGNATED OFFICE (DO) and ELECTED OFFICE (EO)

 The designated Office is the national Office (for example,
the USPTO) acting for the state or region designated under
Chapter I. Similarly, the elected Office is the national
Office acting for the state or region elected under Chapter
II.

 If no "Demand" for international preliminary examination
has been filed within 19 months of the priority date, the
applicant must complete the requirements for entering the
national stage within 20 months from the priority date of
the  international  application,  unless  the  individual
designated Office grants additional time. The applicant also
has the right to amend the application within 1 month from
the fulfillment of the requirements under PCT Article 22.
After this month has expired (PCT Article 28 and PCT Rule
52), each designated Office will make its own determination
as to the patentability of the application based upon its
own specific national or regional laws (PCT Article 27(5)).

 If the applicant desires to obtain the benefit of delaying
the entry into the national stage until 30 months from the
priority  date,  a  Demand  for  international  preliminary
examination must be filed with an appropriate International
Preliminary Examining Authority within 19 months of the
priority  date.  Those  states  in  which  the  Chapter  II
procedure is desired must be "elected" in the Demand.

 The original Demand is forwarded to the International
Bureau by the International Preliminary Examining Authority.
The International Bureau then notifies the various elected
Offices that the applicant has entered Chapter II and that
the application should not be considered withdrawn for
failure to enter the national stage within 20 months from
the priority date.

 The examiner of the International Preliminary Examining
Authority may comment on lack of unity of invention, note
errors, and issue a written "opinion" as to whether each
claim  is  "novel",  involves  "inventive  step",  and  is
"industrially applicable." If a written "opinion" is issued
by the examiner, the applicant may respond to the opinion by
arguments and amendments within the time period set for
response. The examiner will then issue the international
preliminary examination report which presents the examiner's
final position as to whether each claim is "novel", involves
"inventive step", and is "industrially applicable" by 28
months from the priority date. A copy of the international
preliminary examination report is sent to the applicant and
to the International Bureau. The International Bureau then
communicates  a  copy  of  the  international  preliminary
examination report to each elected Office.

 The applicant must complete the requirements for entering
the national stage by the expiration of 30 months from the
priority date to avoid any question of withdrawal of the
application as to that elected Office.

1802  PCT Definitions

 The PCT contains definitions in PCT Article 2 and in PCT
Rule  2,  which  are  found  in  MPEP  Annex  T.  Additional
definitions are found in 35 U.S.C. 351, MPEP Annex L, 37 CFR
1.401, MPEP Annex R, Section 101 of the PCT Administrative
Instructions and MPEP Annex AI.

1803  Reservations Under the PCT Taken by the United
States of America

 The United States of America had originally declared that
it was not bound by Chapter II (PCT Article 64(1)), but

withdrew that reservation on July 1, 1987.

 It has also declared that, as far as the United States of
America  is  concerned,  international  publication  is  not
required (PCT Article 64(3)). The United States of America
also made a reservation under PCT Article 64(4) which
relates to the prior art effective date of a U.S. patent
issuing from an international application. See 35 U.S.C.
102(e) and 363. These reservations are still in effect.

1805  Where to File An International Application [R - 3]

 35 U.S.C.  361 Receiving Office.

 (a)  The Patent and Trademark Office shall act as a
Receiving Office for international applications filed by
nationals or residents of the United States. In accordance
with any agreement made between the United States and
another country, the Patent and Trademark Office may also
act as a Receiving Office for international applications
filed by residents or nationals of such country who are
entitled to file international applications.

  See  37  CFR  1.421  -  1.425  as  to  who  can  file  an
international application.

 Only if at least one of the applicants is a resident or
national  of  the  United  States  of  America  may  an
international application be filed in the United States
Receiving Office (PCT Article 9(1) and (3), PCT Rules 19.1
and 19.2, 35 U.S.C. 361(a) and 37 CFR 1.412(a), 1.421). The
concepts of residence and nationality are defined in PCT
Rules  18.1  and  18.2.  For  the  purpose  of  filing  an
international application, the applicant may be either the
inventor or the successor in title of the inventor (assignee
or owner). However, the laws of the various designated
States regarding the requirements for applicants must also
be considered when filing an international application. For
example, the patent law of the United States of America
requires that, for the purposes of designating the United
States of America, the applicant(s) must be the inventor(s)
(35 U.S.C. 373, PCT Article 27(3)).

 The United States Receiving Office is located in Crystal
Plaza, Building 2, 8th floor, 2011 Jefferson Davis Highway,
Arlington, Virginia. International applications and related
papers may be deposited directly with the United States
Receiving Office or be mailed to: >Assistant< Commissioner
*>for< Patents **, Box PCT, Washington, D.C. 20231. It
should be noted that the "Express Mail" ** provisions of 37
CFR 1.10 apply to the filing of all applications and papers
filed in the U.S. Patent and Trademark Office, including PCT
international applications and related papers and fees. It
should be further noted, however, that PCT international
applications  and  papers  relating  to  international
applications are specifically excluded from the Certificate
of Mailing or Transmission procedures under 37 CFR 1.8. This
means,  for  example,  that  a  Demand  for  international
preliminary  examination  cannot  be  filed  using  the
Certificate of Mailing or Transmission practice under 37 CFR
1.8 if the date of mailing is the date needed for official
purposes. If 37 CFR 1.8 is improperly used, the date to be
accorded the paper will be the date of actual receipt in the
Office >unless the receipt date falls on a Saturday, Sunday,
or Federal holiday in which case the date of receipt will be

the next succeeding day which is not a Saturday, Sunday, or
Federal holiday (37 CFR 1.6(a)(3))<.

 Irrespective of the Certification practice under 37 CFR
1.8>(a)<, facsimile transmission>(without the benefit of the
certificate under 37 CFR 1.8(a))< may be used to submit
certain  papers  in  international  applications.  However,
facsimile transmission may not be used for the filing of an
international application, the filing of drawings under 37
CFR 1.437, or the filing of a copy of the international
application, and the basic national fee to enter the U.S.
national stage under 35 U.S.C. 371. See 37 CFR 1.6(d)(3) and
(4),  1.8(a)(2)(i)D,  and  1.8(a)(2)(i)F.  The  Demand  for
international  preliminary  examination  may  be  filed  by
facsimile transmission. >See MPEP § 1834.01.<

 The United States Receiving Office staff is available to
offer  guidance  on  PCT  requirements  and  procedures.  In
person,  telephone  or  written  inquiries  are  welcome.
Telephone inquiries should be directed to (703) 305 - 3257.
Written  inquiries  should  be  addressed  to:  >Assistant<
Commissioner *>for< Patents **, Box PCT, Washington, D.C.
20231.

 Warning - although the United States patent law at 35
U.S.C. 21(a) authorizes the Commissioner to prescribe by
rule that any paper or fee required to be filed in the
Patent and Trademark Office will be considered filed in the
Office on the date on which it was deposited with the United
States Postal Service, PCT Rule 20.1(a) provides for marking
the "date of actual receipt on the request." Although the
"Express Mail" provisions under 37 CFR 1.10 have not been
contested to date regarding PCT applications, applicants
should be aware of a possible different interpretation by
foreign authorities.

 PCT Rule 19.4 provides for transmittal of an international
application to the International Bureau as Receiving Office
in certain instances. For example, applications filed in the
United States Receiving Office by applicants who are not
residents or nationals of the United States, but who are
residents or nationals of a PCT Contracting state, will,
upon  timely  payment  of  the  proper  fee,  have  their
application  forwarded  to  the  International  Bureau  for
processing in its capacity as a Receiving Office. The fee is
an amount equal to the transmittal fee. The Receiving Office
of the International Bureau will consider the international
application to be received as of the date accorded by the
United States Receiving Office. This practice will avoid the
loss of a filing date in those instances where the United
States Receiving Office is not competent to act, but where
the international application indicates an applicant to be a
national or resident of a PCT Contracting state. Of course,
where questions arise regarding residence or nationality;
i.e., the U.S. is not clearly competent, the application
will be forwarded to the International Bureau as Receiving
Office.  Note,  where  no  residence  or  nationality  is
indicated, the U.S. is not competent, and the application
will be forwarded to the International Bureau as Receiving
Office so long as the necessary fee is paid.

 If all of the applicants are indicated to be residents or
nationals of non - PCT Contracting States, PCT Rule 19.4
does  not  apply,  and  the  application  is  denied  an
international filing date.

1807  Agent or Common Representative and General Power
of Attorney

 37 CFR 1.455.  Representation in international
applications.

 (a)  Applicants of international applications may be
represented by attorneys or agents registered to practice
before the Patent and Trademark Office or by an applicant
appointed as a common representative (PCT Art. 49, Rules 4.8
and 90 and § 10.10). If applicants have not appointed an
attorney or agent or one of the applicants to represent
them, and there is more than one applicant, the applicant
first named in the request and who is entitled to file in
the U.S. Receiving Office shall be considered to be the
common representative of all the applicants. An attorney or
agent having the right to practice before a national office
with which an international application is filed and for
which  the  United  States  is  an  International  Searching
Authority or International Preliminary Examining Authority
may  be  appointed  to  represent  the  applicants  in  the
international application before that authority. An attorney
or agent may appoint an associate attorney or agent who
shall also then be of record (PCT Rule 90.1(d)). The
appointment  of  an  attorney  or  agent,  or  of  a  common
representative,  revokes  any  earlier  appointment  unless
otherwise indicated (PCT Rule 90.6(b) and (c)).

 (b)  Appointment  of  an  agent,  attorney  or  common
representative (PCT Rule 4.8) must be effected either in the
Request form, signed by all applicants, or in a separate
power of attorney submitted either to the United States
Receiving Office or to the International Bureau.

 (c)  Powers of attorney and revocations thereof should
be submitted to the United States Receiving Office until the
issuance of the international search report.

 (d)  The  addressee  for  correspondence  will  be  as
indicated in section 108 of the Administrative Instructions.

 Where an appointment of an agent or common representative
is effected by a separate power of attorney, that power of
attorney must be submitted to either the receiving Office or
the International Bureau. However, a power of attorney
appointing an agent or subagent to represent the applicant
specifically before the International Searching Authority or
the International Preliminary Examining Authority must be
submitted directly to that Authority.

  "General" Power of Attorney

 "General" powers of attorney are recognized for the purpose
of  filing  and  prosecuting  an  international  application
before the international authorities. The original general
power of attorney should be deposited with the International
Division  which  is  the  central  focus  for  PCT  matters
throughout the Office. Any applications relying thereon must
include a copy thereof. A general power of attorney form is
provided in the annex to the PCT Applicant's Guide.

 Any general power of attorney must be filed with the
receiving Office if the appointment was for the purposes of
the international phase generally, or with the International

Searching Authority or International Preliminary Examining
Authority if the appointment was specifically to represent
the applicant before that Authority. The appointment will
then be effective in relation to any particular application
filed by that applicant provided that the general power of
attorney is referred to in the request, the Demand or a
separate notice, and that a copy of the general power of
attorney is attached to that request, Demand or separate
notice. That copy of the signed original need not, itself,
be separately signed. See Annex Z of the PCT Applicant's
Guide for a suitable model form for a general power of
attorney. The PCT Applicant's Guide is available from the
International Bureau in Geneva, Switzerland.

1808  Change in or Revocation of the Appointment of an
Agent or a Common Representative

 PCT Rule 90 Agents and Common Representatives

 ***

 90.6.  Revocation and Renunciation

 (a)  Any  appointment  of  an  agent  or  common
representative may be revoked by the persons who made the
appointment or by their successors in title, in which case
any appointment of a sub - agent under Rule 90.1(d) by that
agent shall also be considered as revoked. Any appointment
of a sub - agent under Rule 90.1(d) may also be revoked by
the applicant concerned.

 (b)  The appointment of an agent under Rule 90.1(a)
shall,  unless  otherwise  indicated,  have  the  effect  of
revoking any earlier appointment of an agent made under that
Rule.

 (c)  The appointment of a common representative shall,
unless otherwise indicated, have the effect of revoking any
earlier appointment of a common representative.

 (d)  An agent or a common representative may renounce
his appointment by a notification signed by him.

 (e)  Rule 90.4(b) and (c) shall apply, mutatis mutandis,
to a document containing a revocation or renunciation under
this Rule.

 37 CFR 1.455.  Representation in international
applications.

 (a)  Applicants of international applications may be
represented by attorneys or agents registered to practice
before the Patent and Trademark Office or by an applicant
appointed as a common representative (PCT Art. 49, Rules 4.8
and 90 and § 10.10). If applicants have not appointed an
attorney or agent or one of the applicants to represent
them, and there is more than one applicant, the applicant
first named in the request and who is entitled to file in
the U.S. Receiving Office shall be considered to be the
common representative of all the applicants. An attorney or
agent having the right to practice before a national office
with which an international application is filed and for
which  the  United  States  is  an  International  Searching
Authority or International Preliminary Examining Authority
may  be  appointed  to  represent  the  applicants  in  the

international application before that authority. An attorney
or agent may appoint an associate attorney or agent who
shall also then be of record (PCT Rule 90.1(d)). The
appointment  of  an  attorney  or  agent,  or  of  a  common
representative,  revokes  any  earlier  appointment  unless
otherwise indicated (PCT Rule 90.6(b) and (c)).

 (b)  Appointment  of  an  agent,  attorney  or  common
representative (PCT Rule 4.8) must be effected either in the
Request form, signed by all applicants, or in a separate
power of attorney submitted either to the United States
Receiving Office or to the International Bureau.

 (c)  Powers of attorney and revocations thereof should
be submitted to the United States Receiving Office until the
issuance of the international search report.

 (d)  The  addressee  for  correspondence  will  be  as
indicated in section 108 of the Administrative Instructions.

 The appointment of an agent or a common representative can
be revoked. The document containing the revocation must be
signed by the persons who made the appointment or by their
successors in title. The appointment of a sub - agent may
also  be  revoked  by  the  applicant  concerned.  If  the
appointment of an agent is revoked, any appointment of a
subagent by that agent is also considered revoked.

 The appointment of an agent for the international phase in
general  automatically  has  the  effect,  unless  otherwise
indicated, of revoking any earlier appointment of an agent.
The appointment of a common representative similarly has the
effect, unless otherwise indicated, of revoking any earlier
appointment of a common representative.

 The rules for signing and submission of a power of attorney
also apply to a revocation of an appointment.

 Renunciation of an appointment may be made by means of a
notification signed by the agent or common representative.
The rules for signing and submission of a power of attorney
apply also to a renunciation. The applicant is informed of
the renunciation by the International Bureau.

  U.S.  attorneys  or  agents  wishing  to  withdraw  from
representation in international applications may request to
do so. To expedite the handling of requests for permission
to withdraw as attorney, the request should be submitted in
triplicate (original and two copies) to Box PCT and should
indicate the present mailing addresses of the attorney who
is withdrawing and of the applicant. Because the Patent and
Trademark Office (PTO) does not recognize law firms, each
attorney of record must sign the notice of withdrawal, or
the notice of withdrawal must contain a clear indication of
one attorney signing on behalf of another.

 The PTO usually requires that there be at least 30 days
between approval of withdrawal and the expiration date of a
time  response  period  so  that  the  applicant  will  have
sufficient time to obtain other representation or take other
action. If less than 30 days remains in a running response
period, a request to withdraw is normally disapproved.

 For withdrawal of attorney or agent in the national stage,
see MPEP § 402.06.

1810  Filing Date Requirements

 PCT Article 11 Filing Date and Effects of the International
  Application

 (1)  The  receiving  Office  shall  accord  as  the
international  filing  date  the  date  of  receipt  of  the
international application, provided that that Office has
found that, at the time of receipt:

 (i)  the applicant does not obviously lack, for reasons
of  residence  or  nationality,  the  right  to  file  an
international application with the receiving Office,

 (ii)  the international application is in the prescribed
language,

 (iii) the international application contains at least the
following elements:

 (a)  an  indication  that  it  is  intended  as  an
international application,

 (b)  the designation of at least one Contracting State,

 (c)  the name of the applicant, as prescribed,

 (d)  a part which on the face of it appears to be a
description,

 (e)  a part which on the face of it appears to be a
claim or claims.

 35 U.S.C. 363.  International application designating the
United States: Effect.

 An international application designating the United States
shall have the effect, from its international filing date
under article 11 of the treaty, of a national application
for patent regularly filed in the Patent and Trademark
Office except as otherwise provided in section 102(e) of
this title.

 35 U.S.C. 373.  Improper Applicant.

 An international application designating the United States,
shall not be accepted by the Patent and Trademark Office for
the national stage if it was filed by anyone not qualified
under chapter 11 of this title to be an applicant for the
purpose of filing a national application in the United
States. Such international applications shall not serve as
the basis for the benefit of an earlier filing date under
section  120  of  this  title  in  a  subsequently  filed
application, but may serve as the basis for a claim of the
right of priority under section 119 of this title, if the
United States was not the sole country designated in such
international application.

 37 CFR 1.431.  International application requirements.

 (a)  An international application shall contain, as
specified in the Treaty and the Regulations, a Request, a
description, one or more claims, an abstract, and one or
more drawings (where required). (PCT Art. 3(2) and Section

207 of the Administrative Instructions .)

 (b)  An international filing date will be accorded by
the United States Receiving Office, at the time of receipt
of the international application, provided that:

 (1)  At least one applicant ( § 1.421) is a United
States resident or national and the papers filed at the time
of receipt of the international application so indicate (35
U.S.C. 361(a), PCT Art. 11(1)(i)).

 (2)  The international application is in the English
language (35 U.S.C. 361(c), PCT Art. 11(1)(ii)).

 (3)  The international application contains at least the
following elements (PCT Art. 11(1)(iii)):

 (i)  An  indication  that  it  is  intended  as  an
international application (PCT Rule 4.2);

 (ii)  The designation of at least one Contracting State
of the International Patent Cooperation Union ( § 1.432);

 (iii)  The name of the applicant, as prescribed (note §
1.421 - 1.424);

 (iv)  A part which on the face of it appears to be a
description; and

 (v)  A part which on the face of it appears to be a
claim.

 (c)  Payment of the basic portion of the international
fee (PCT Rule 15.2) and the transmittal and search fees ( §
1.445) may be made in full at the time the international
application papers required by paragraph (b) of this section
are deposited or within one month thereafter. If the basic,
transmittal and search fees are not paid within one month
from the date of receipt of the international application,
applicant will be notified and given one month within which
to pay the deficient fees plus a late payment fee equal to
the greater of:

 (1)  50% of the amount of the deficient fees up to a
maximum amount equal to the basic fee, or

 (2)  an amount equal to the transmittal fee (PCT Rule
16bis).

 The one - month time limit set in the notice to pay
deficient fees may not be extended.

 (d)  If the payment needed to cover the transmittal fee,
the basic fee, the search fee, one designation fee and the
late payment fee pursuant to paragraph (c) of this section
is not timely made, the Receiving Office will declare the
international  application  withdrawn  under  PCT  Article
14(3)(a).

 THE "INTERNATIONAL FILING DATE"

 An international filing date is accorded on the date on
which the international application was received by the
receiving Office or pursuant to the correction of defects on
a later date (PCT Articles 11(1) and 11(2)(b) and PCT Rules

20.1, 20.3, 20.4(a), 20.5, and 20.6): in the former case,
the international filing date will be the date on which the
international application was received by the receiving
Office; in the latter case, the international filing date
will be the date on which the correction was received by
the  receiving Office. Any correction must be submitted by
  6
the applicant within certain time limits. Where all the
sheets pertaining to the same international application are
not received on the same day by the receiving Office, in
most instances, the date of receipt of the application will
be amended to reflect the date on which the last missing
sheets were received. As an amended date of receipt may
cause the priority claim to be forfeited, applicants should
assure that all sheets of the application are deposited with
the receiving Office on the same day. For particulars see
PCT Rule 20.2.

 An all too common occurrence is that applicants will file
an international application in the U.S. Receiving Office
and no applicant has a U.S. residence or nationality.
Applicants are cautioned to be sure that at least one
applicant is a resident or national of the U.S. before
filing in the U.S. Receiving Office. Where no applicant
indicated on the request papers is a resident or national of
the United States, the application is not entitled to a
filing date since the applicant(s) obviously lacks the right
to file in the U.S. receiving Office. Such applicant is
notified pursuant to PCT Article 11(2)(a) that, at the time
of receipt, the applicant obviously lacked under Article
11(1)(i)  the  right  to  file  based  upon  residence  or
nationality. A timely response to such notice results in
applicant  being  accorded  a  filing  date  under  Article
11(2)(b) as of the date of the response if applicant
establishes residence or nationality in the United States.
See 35 U.S.C. 373.

1812  Elements of the International Application

  PCT Article 3 The International Application

 (1)  Applications for the protection of inventions in
any of the Contracting States may be filed as international
applications under this Treaty.

 (2)  An international application shall contain, as
specified in this Treaty and the Regulations, a request, a
description, one or more claims, one or more drawings (where
required), and an abstract.

 (3)  The abstract merely serves the purpose of technical
information and cannot be taken into account for any other
purpose, particularly not for the purpose of interpreting
the scope of the protection sought.

 (4)  The international application shall:

 (i)  be in a prescribed language;

 (ii)  comply with the prescribed physical requirements;

 (iii)  comply with the prescribed requirement of unity of
invention;

 (iv)  be subject to the payment of the prescribed fees.

 Any international application must contain the following
elements: request, description, claim or claims, abstract
and one or more drawings (where drawings are necessary for
the understanding of the invention (PCT Article 3(2) and PCT
Article 7(2)). The elements of the international application
are to be arranged in the following order: the request, the
description, the claims, the abstract, and the drawings (PCT
Administrative Instructions, Section 207(a)). All the sheets
contained in the international application must be numbered
in consecutive Arabic numerals by using three separate
series of numbers; the first applying to the request, the
second to the description, claims and abstract, and the
third to the drawings (PCT Rule 11.7 and PCT Administrative
Instructions  Section  207(b)).  Only  one  copy  of  the
international application need be filed in the United States
Receiving Office (37 CFR 1.433(a)). The request is made on a
standardized form (Form PCT/RO/101), copies of which can be
obtained from the PTO. Letters requesting forms should be
addressed "Box PCT." The "Request" form can now be presented
as a computer print - out. The details of a computer
generated  Request  form  are  provided  in  Administrative
Instruction Section 102.

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

 ° Members of Africa Intellectual Property Organization
(OAPI)  regional  patent  system.  Only  regional  patent
protection  is  available  for  OAPI  member  states.  A
designation of any state is an indication that all OAPI
states have been designated. Note: only one designation fee
is due regardless of the number of OAPI member states
designated.

 ° ° Members of European Patent Convention (EPC) regional
patent system. Either national patents or European patents
for member States are available through PCT, except for
Belgium,  France,  Greece,  Ireland,  Italy,  Monaco,  and
Netherlands, for which only European patents are available
if the PCT is used. Note: only one PCT designation fee is
due  if  European  patent  protection  is  sought  for  one,
several, or all EPC member countries.

  # Not bound by Chapter II. It should be noted that if **
Spain is designated for a European Patent together with at
least  one  other  State  party  to  the  European  Patent
Convention which is bound by Chapter II of the PCT, the 30
month time limit for entry into the regional phase before
the European Patent Office under PCT Article 39(1) applies
also with respect to ** Spain, if the other State has been
elected prior to 19 months from the priority date.

 The following states are members of African Regional
Industrial Property Organization (ARIPO) regional patent
system: (4) Malawi, (34) Sudan, (68) Kenya, (73) Swaziland,
(75)  Uganda,  *  (81)  Lesotho  >,  (89)  Ghana  and  (90)
Zimbabwe<.

 The following states are members of the Eurasian (EA)
regional  patent  system:  (15)  Russian  Federation,  (57)
Kazakstan, (58) Belarus, (65) Kyrgyzstan, (66) Republic of
Moldova,  (67)  Tajikistan,  (78)  Turkmenistan,  and  (82)
Azerbaijan.

1817.01  Designation of States and Precautionary
Designations

 37 CFR 1.432.  Designation of States and payment of
designation fees.

 (a)  The designation of States including an indication
that applicant wishes to obtain a regional patent, where
applicable, shall appear in the Request upon filing and must
be indicated as set forth in PCT Rule 4.9 and section 115 of
the Administrative Instructions. Applicant must specify at
least one national or regional designation on filing of the
international application for a filing date to be granted.

 (b)  If the fees necessary to cover all the national and
regional designations specified in the Request are not paid
by the applicant within one year from the priority date or
within  one  month  from  the  date  of  receipt  of  the
international application if that month expires after the
expiration of one year from the priority date, applicant
will be notified and given one month within which to pay the
deficient designation fees plus a late payment fee equal to
the greater of 50% of the amount of the deficient fees up to
a maximum amount equal to the basic fee, or an amount equal
to the transmittal fee (PCT Rule 16bis). The one - month
time limit set in the notification of deficient designation
fees may not be extended. Failure to timely pay at least one
designation  fee  will  result  in  the  withdrawal  of  the
international application. The one designation fee may be
paid:

 (1)  within one year from the priority date,

 (2)  within one month from the date of receipt of the
international application if that month expires after the
expiration of one year from the priority date, or

 (3)  with the late payment fee defined in this paragraph
within the time set in the notification of the deficient
designation fees. If after a notification of deficient
designation fees the applicant makes timely payment, but the
amount paid is not sufficient to cover the late payment fee
and all designation fees, the Receiving Office will, after
allocating payment for the basic, search, transmittal and
late payment fees, allocate the amount paid in accordance
with  PCT  Rule  16bis.1(c)  and  withdraw  the  unpaid
designations. The notification of deficient designation fees
pursuant to this paragraph may be made simultaneously with
any notification pursuant to § 1.431(c).

 (c) On filing the international application, in addition to
specifying at least one national or regional designation
under PCT Rule 4.9(a), applicant may also indicate under PCT
Rule 4.9(b) that all other designations permitted under the
Treaty are made. The latter indication under PCT Rule 4.9(b)
must be made in a statement on the Request that any
designation  made  under  this  paragraph  is  subject  to
confirmation (PCT Rule 4.9(c)) not later than the expiration
of 15 months from the priority date by:

 (1)  Filing a written notice with the United States
Receiving Office specifying the national and/or regional
designations being confirmed;

 (2)  Paying the designation fee for each designation
being confirmed; and

 (3)  Paying  the  confirmation  fee  specified  in  §
1.445(a)(4).

 Unconfirmed designations will be considered withdrawn. If
the  amount  submitted  is  not  sufficient  to  cover  the
designation  fee  and  the  confirmation  fee  for  each
designation  being  confirmed,  the  Receiving  Office  will
allocate the amount paid in accordance with any priority of
designations specified by applicant. If applicant does not
specify any priority of designations, the allocation of the
amount paid will be made in accordance with PCT Rule
16bis.1(c).

 The designation of States is the indication, in Box No. V
of the request (except in the last sub - box of that Box),
of specific Contracting States in or for which the applicant
is seeking protection for his invention. Such a designation
is called a "specific" designation, as distinct from the
"precautionary" designations. Designations for the purpose
of obtaining national patents are effected by indicating
each Contracting State concerned. On the printed form, this
is accomplished by marking the appropriate check - boxes
next to the names of the States. Where the applicant is
seeking a European patent (for the States party to the
European Patent Convention) or an OAPI patent, the checkbox
"European Patent" or the checkbox "OAPI Patent" must be
marked. Switzerland and Liechtenstein cannot be designated
independently of each other.

 Belgium, France, Greece, Italy, Monaco, and Ireland can be
designated only for a European Patent since only a European
patent (and not a national patent) can be obtained via the
PCT route for those countries. Where any of the other States
for  which  both  a  national  and  a  European  patent  are
available is designated twice in the same application,
namely for national protection and for a European patent,
the application is treated in the international phase as an
application for a national patent in that State and also as
an application for a European patent with effect for that
State.

  All  designations  must  be  made  in  the  international
application on filing; none may be added later. However,
there is a safety net designed to protect applicants who
make mistakes or omissions among the specific designations,
by way of making a precautionary designation of all other
States which have not been specifically designated in the
Request whose designation would be permitted under the
Treaty.

 In addition to specific designations described above, the
applicant may, under PCT Rule 4.9(b), indicate in the
request that all designations which would be permitted under
the PCT are also made, provided that at least one specific
designation is made and that the request also contains a
statement relating to the confirmation of any precautionary
designations so made. That statement must declare that any

such designation is subject to confirmation (as provided in
Rule4.9(c)), and that any such designation which is not so
confirmed before the expiration of 15 months from the
priority  date  is  to  be  regarded  as  withdrawn  by  the
applicant at the expiration of that time limit.

 Precautionary designations are effected in practice by
including the necessary statement in the last sub - box of
Box No. V of the request (the statement is set out in the
printed request form). Since the precautionary designations
are designed particularly to enable applicants to correct
omissions and mistakes in the original list of specific
designations, it is strongly recommended that applicants
make the precautionary designations indication (by leaving
the pre - printed statement in the printed form, if that
form is used) unless there is a particular reason for doing
otherwise.  The  request  form  makes  provision  for  the
applicant to omit designations if that is desired. It should
be  noted  that  no  fees  are  payable  in  respect  of
precautionary designations except where the applicant later
decides to confirm them.

 Precautionary designations will be regarded as withdrawn by
the applicant unless they are confirmed, but the applicant
is  not  obliged  to  confirm  them.  The  precautionary
designation procedure enables the applicant to make, in the
request, all designations permitted by the PCT in addition
to those made specifically. For this purpose, the request
must  also  contain  a  statement  that  any  precautionary
designations so made are subject to confirmation as provided
in Rule 4.9(c) and that any designation which is not so
confirmed before the expiration of 15 months from the
priority  date  is  to  be  regarded  as  withdrawn  by  the
applicant at the expiration of that time limit. Noting that
the  confirmation  of  designations  is  entirely  at  the
applicant's discretion, no notification is sent to the
applicant reminding him or her that the time limit for
confirming precautionary designations is about to expire.
Applicants are cautioned that in order for the confirmation
of a designation of the U.S. to be valid, the inventor must
have been named in the application papers as filed, 37 CFR
1.421(b).

  APPLICANT FOR PURPOSES OF EACH DESIGNATION

 Where there is but a single applicant, the right to file an
international  application  and  to  designate  contracting
states or regions (EP or OAPI) exists if the applicant is a
resident or national of a contracting state. The applicant
can be an individual, corporate entity or other concern. If
the United States is to be designated, it is particularly
important to note that the applicant must also be the
inventor.

 In the case where there are several applicants who are
different for different designated states, the right to file
an international application and to designate contracting
states or regions (EP or OAPI) exists if at least one of
them is a resident or national of a contracting state. If
the United States is to be designated, it is important to
note that the applicant must also be the inventor. If the
inventor is not also the applicant, the designation of the
United States is invalid.

1817.02  Continuation or Continuation - In - Part

Indication in the Request

  PCT Rule 4 The Request (Contents)

 ***

 4 .14.  Continuation or Continuation - in - Part

 If the applicant wishes his international application to be
treated, in any designated State, as an application for a
continuation or a continuation - in - part of an earlier
application, he shall so indicate in the request and shall
identify the parent application involved.

  *****

 Box No. V and the Supplemental Box of the Request form
should  be  used  where  the  applicant  has  an  earlier
application in a country designated in the international
application and where special title or treatment of the
international application is desired. For example, if the
applicant has a pending United States application, the
international application could contain additional subject
matter and be treated as a continuation - in - part in the
United States, if the United States is designated in the
international application (PCT Rule 4.14). In this example,
the entries to be placed in Box No. V would be as follows:
"United States of America; continuation - in - part; and in
the Supplemental Box, an entry such as "Continuation of Box
No. V, Parent application for U.S. designation: United
States of America, 20 May 1981, 222,222" identifying the
earlier pending application should be inserted.

1819  Earlier International or International - Type
Search

  PCT Rule 4 Request (Contents)

 ***

 4.11.  Reference to Earlier Search

 If an international or international - type search has been
requested on an application under Article 15(5) or if the
applicant wishes the International Searching Authority to
base the international search report wholly or in part on
the results of a search, other than an international or
international - type search, made by the national Office or
intergovernmental organization which is the International
Searching  Authority  competent  for  the  international
application, the request shall contain a reference to that
fact. Such reference shall either identify the application
(or its translation, as the case may be) in respect of which
the earlier search was made by indicating country, date and
number, or the said search by indicating, where applicable,
date and number of the request for such search.

  *****

 Certain International Searching Authorities refund part or
all of the international search fee or reduce the amount of
the international search fee where the international search
can be based wholly or partly on an earlier search (whether
an international, international - type, or other search)
made by them. The United States provides for a reduced

search  fee  where  there  is  a  corresponding  prior  U.S.
national application.

 Where the earlier search by the International Searching
Authority was made in relation to a national, regional (for
instance,  European)  or  international  application,  that
application must be identified in Box No. VII of the request
by an indication of the country of filing (or the European
Patent Office), and the number and filing date of that
application. Note that, if the earlier search was made on
the basis of a translation of that application into a
language other than that in which the application was filed,
that translation must also be identified in Box No. VII.
Where the earlier search was made independently of a patent
granting procedure (for instance, a standard search by the
European Patent Office), a reference must be made to the
date of the request for that search and the number given to
the request by the International Searching Authority.

 The United States Patent and Trademark Office performs an
international  -  type  search  on  all  U.S.  national
applications filed on and after 01 June 1978. No specific
request  by  the  applicant  is  required  and  no  number
identifying the international - type search is assigned by
the Office. All earlier U.S. applications referred to in Box
No. VI and Box No. VII as well as all U.S. applications
referred  to  in  separate  transmittal  letters  will  be
considered by the Office. See 37 CFR 1.104(c) and (d). The
forms to be used for recording an international - type
search can be obtained from the International Division.

  Box  No.  VII  should  be  used  to  identify  related
international applications whether or not priority of that
application is claimed.

1820  Signature of Applicant [R - 3]

  PCT Rule 4 Request (Contents)

 ***

 4.15.  Signature

 (a)  Subject to paragraph (b), the request shall be
signed by the applicant or, if there is more than one
applicant, by all of them.

 (b)  Where two or more applicants file an international
application which designates a State whose national law
requires that national applications be filed by the inventor
and where an applicant for that designated State who is an
inventor refused to sign the request or could not be found
or reached after diligent effort, the request need not be
signed by that applicant if it is signed by at least one
applicant and a statement is furnished explaining, to the
satisfaction of the receiving Office, the lack of the
signature concerned.

  *****

 SIGNATURE OF APPLICANT OR AGENT

 The international application must be signed in Box No. IX
of the request by the applicant, or, where there are two or
more  applicants,  by  all  of  them.  Subject  to  certain

conditions, the request may be signed by the agent instead
of the applicant(s). Pursuant to 37 CFR 1.4(d), the request
filed may be either an original, or a copy thereof. Certain
papers may be filed by facsimile transmission. See 37 CFR
1.6(d) and the discussion in MPEP § 1805.

 The international application may be signed by an agent,
but in that case the agent must be appointed as such by the
applicant in a separate power of attorney signed by the
applicant. If there are two or more applicants, the request
may be signed by an agent on behalf of all or only some of
them; in that case the agent must be appointed as such in
one or more powers of attorney signed by the applicants on
whose behalf the agent signs the application. Where a power
of attorney appointing an agent who signs an international
application is missing, the signature is treated as missing
until the power of attorney is submitted.

 The signature should be executed in black indelible ink.
The  name  of  each  person  signing  the  international
application should be indicated (preferably typewritten)
next to the signature. **>Where a person signs on behalf of
a legal entity (an organization such as a corporation,
university, nonprofit organization, or governmental agency),
his or her name and the capacity in which he or she signs
should be indicated. Proof of the person's authority to sign
on behalf of the legal entity will be required if that
person does not possess apparent authority to sign on behalf
of  the  legal  entity.  An  officer  (President,  Vice  -
President,  Secretary,  Treasurer)  of  an  organization  is
presumed to have authority to sign on behalf of that
organization. The signature of the chairman of the board is
also acceptable, but not the signature of an individual
director.  Variations  of  these  titles  (such  as  vice  -
president for sales, executive vice - president, assistant
treasurer, vice - chairman of the board of directors) are
acceptable. A person having a title (manger, director,
administrator, general counsel) that does not clearly set
forth that person as an officer of the organization is not
presumed to be an officer or to have the authority to sign
on  behalf  of  the  organization.  An  attorney  does  not
generally have apparent authority to sign on behalf of an
organization.

 Proof that a person has the authority to sign on behalf of
a legal entity may take the form of a copy of a resolution
of the board of directors, a provision of the bylaws, or a
copy of a paper properly delegating authority to that person
to sign the international application on behalf of the legal
entity.

  It  is  also  acceptable  to  have  a  person  sign  the
international application on behalf of a legal entity if
that person submits a statement which includes an averment,
in oath or declaration form, that the person has the
authority to sign the international application on behalf of
the legal entity. This statement should be on a separate
paper and must not appear on the Request (or Demand) form
itself. The statement must include a clause such as "The
undersigned (whose title is supplied below) is empowered to
sign the Request on behalf of the applicant." Such a
statement must either be notarized or include the following
statement:

  I hereby declare that all statements made herein of my

own knowledge are true, and that all statements made on
information and belief are believed to be true; and further,
that these statements are made with the knowledge that
willful  false  statements,  and  the  like  so  made,  are
punishable by fine or imprisonment, or both, under Section
1001, Title 18 of the United States Code, and that such
willful false statements may jeopardize the validity of the
application or any patent issuing thereon.

  Date:

  Name:

  Title:

  Signature:

 A power of attorney or authorization of agent from a person
signing on behalf of a legal entity to a registered patent
attorney or agent will be required if the attorney or agent
signs the international application. Additional proof of
authority may be required by the USPTO in any international
application.<

  Where  an  applicant  is  temporarily  unavailable,  the
international application can be filed without his or her
signature. The lack of an applicant's signature or of a
signed power of attorney is a correctable defect under
Article 14(1)(a)(i) and (b), and can be remedied by filing a
copy of the request (or, where the request has been signed
by an agent, of a power of attorney) duly signed by the
applicant within the time limit fixed by the receiving
Office for the correction of this defect.

  APPLICANT INVENTOR UNAVAILABLE OR UNWILLING TO SIGN THE
 INTERNATIONAL APPLICATION OR OTHER DOCUMENTS

 The PCT provides a special procedure, where two or more
applicants file an international application designating the
United States of America, which enables the international
application to proceed if an applicant inventor for the
United States of America refuses to sign or cannot be found
or reached after diligent effort. This procedure makes an
exception to the general rule that all applicants must sign
the request (or a separate power of attorney appointing an
agent who then signs the request). Its operation is limited
to signature of the request by applicants for the purposes
of the designation of a State whose national law requires
that national applications be filed by the inventor (the
United States of America is the only Contracting State to
have such a requirement in its national law).

 It is provided by Rule 4.15(b) that, where an applicant
inventor for the designation of the United States of America
refused to sign the request or could not be found or reached
after diligent effort, the request need not be signed by
that applicant inventor if it is signed by at least one
applicant and a statement is furnished explaining, to the
satisfaction of the receiving Office, the lack of the
signature concerned. If such a statement is furnished to the
satisfaction of the receiving Office, the international
application  complies  with  the  requirements  of  Article
14(1)(a)(i)  for  the  purposes  of  all  designated  States
(including the United States of America) without adverse
consequences in the international phase. However, additional

proofs may be required by the United States Patent and
Trademark Office after entry into the national phase if the
required oath or declaration by the inventor is not signed
by all the applicant inventors.

 The lack of a signature constitutes a defect under Article
14(1)(a)(i), and the statement must thus be filed within the
time limit set by the receiving Office for correction of
such defects in accordance with Article 14(1)(b) and Rule
26.2. That time limit is fixed, in each case, in the
invitation by the receiving Office to correct any defects
under Article 14(1)(a); the time limit must be reasonable
under the circumstances, must be not less than 1 month from
the date of the invitation, and may be extended by the
receiving Office at any time before a decision is taken
under Rule 26.

 If the request lacks the signature of an applicant inventor
for  the  United  States  of  America  and  a  satisfactory
statement cannot be furnished for the purposes of Rule
4.15(b), the international application will be considered
withdrawn. The Receiving Office will issue a declaration of
withdrawal.

 Provisions similar to Rule 4.15(b) apply to excuse a lack
of signature by an applicant inventor for the United States
of America of certain other documents connected with the
international application, provided that a similar statement
is furnished explaining the lack of signature to the Office
or Authority concerned. These documents are the Demand, any
notice of a later election, and a notice of withdrawal of
the international application, a designation, a priority
claim, or an election. Note, however, that the signatures of
all the applicants are not required for all of those
documents for example, the Demand may be signed by the
common  representative  (including  an  applicant  who  is
considered to be the common representative.

 PCT Rule 4.15(b) is implemented in the United States
through 37 CFR 1.425, which provides:

 37 CFR 1.425.  Filing by other than inventor.

 (a)  If  a  joint  inventor  refuses  to  join  in  an
international application which designates the United States
of America or cannot be found or reached after diligent
effort, the international application which designates the
United States of America may be filed by the other inventor
on behalf of himself or herself and the omitted inventor.
Such  an  international  application  which  designates  the
United States of America must be accompanied by proof of the
pertinent facts and must state the last known address of the
omitted inventor. The Patent and Trademark Office shall
forward  notice  of  the  filing  of  the  international
application to the omitted inventor at said address.

 (b)  Whenever  an  inventor  refuses  to  execute  an
international application which designates the United States
of America, or cannot be found or reached after diligent
effort, a person to whom the inventor has assigned or agreed
in writing to assign the invention or who otherwise shows
sufficient proprietary interest in the matter justifying
such action may file the international application on behalf
of and as agent for the inventor. Such an international
application which designates the United States of America,

must be accompanied by proof of the pertinent facts and a
showing that such action is necessary to preserve the rights
of the parties or to prevent irreparable damage, and must
state  the  last  known  address  of  the  inventor.  The
assignment, written agreement to assign or other evidence of
proprietary interest, or a verified copy thereof, must be
filed in the Patent and Trademark Office. The Office shall
forward notice of the filing of the application to the
inventor at the address stated in the application.

 Where there are joint inventors other than the non -
signing inventor - applicant, the available joint inventors
should sign the request form on behalf of themselves and the
non - signing inventor. Where a sole inventor or all of the
joint inventors refuse to sign the request or cannot be
located, a person who demonstrates a sufficient proprietary
interest in the subject matter may make the application on
behalf of the non - signing inventor(s). In both instances,
the application must be accompanied by sufficient proof that
the non - signing inventor(s) either refuse to sign or
cannot be located after diligent effort. Such proof should
take the form of verified statements by persons with first
hand knowledge of the pertinent facts. The last known
address of the nonsigning inventor must be given. Under 37
CFR 1.425(b), proof of the requisite proprietary interest
must be filed and a showing must be made that such action is
necessary to preserve the rights of the parties.

  APPLICANT - INVENTOR DECEASED

 37 CFR 1.422.  When the inventor is dead.

  In  case  of  the  death  of  the  inventor,  the  legal
representative  (executor,  administrator,  etc.)  of  the
deceased inventor may file an international application
which designates the United States of America.

 Proof of the authority of the legal representative must be
filed. Such proof normally takes the form of a certificate
of the clerk of a competent court or the register of wills
that the legal representative's appointment is still in full
force and effect. Such certificate should be signed by an
officer and authenticated by the seal of the court by which
the same was issued. If the certificate is not in the
English language, an English translation is also required.
In the case of foreign executors or administrators, a
consular officer of the United States or a notary public
from a member country to the Hague Convention Abolishing the
Requirement of Legalization for Foreign Public Documents
must authenticate the signature of the foreign officer
attesting to the papers submitted as proof of authority. See
MPEP § 409.01(b) and § 602.04.

1821  The Request

 A general overview of certain aspects of the request
follows.

 37 CFR 1.434.  The request.

 (a)  The request shall be made on a standardized form
(PCT Rules 3 and 4). Copies of printed Request forms are
available from the Patent and Trademark Office. Letters
requesting printed forms should be marked "Box PCT."

 (b)  The Check List portion of the Request form should
indicate  each  document  accompanying  the  international
application on filing.

 (c)  All information, for example, addresses, names of
States and dates, shall be indicated in the Request as
required by PCT Rule 4 and Administrative Instructions 110
and 201.

 (d)  International  applications  which  designate  the
United States of America shall include:

 (1)  The name, address and signature of the inventor,
except as provided by § 1.421(d), 1.422, 1.423 and 1.425;

 (2)  A reference to any copending national application
or international application designating the United States
of America, if the benefit of the filing date for the prior
copending application is to be claimed.

 The request must either be made on a printed form to be
filled in with the required indications or be presented as a
computer print - out complying with the Administrative
Instructions. Any prospective applicant may obtain copies of
the printed request form, free of charge, from the receiving
Office with which he/she plans to file his/her international
application, or from the International Bureau. Details of
the requirements for the request if presented as a computer
print - out are set out in Administrative Instructions
Section 102(h).

 The request contains a petition for the international
application to be processed according to the PCT and must
also contain certain indications. It must contain the title
of the invention. It must identify the applicant, (normally)
the inventor, and the agent (if any), and must contain the
designation of at least one Contracting State. The request
must contain an indication of any wish of the applicant's to
obtain a European patent rather than, or in addition to, a
national patent in respect of a designated State.

  DATES

 Each date appearing in the international application or in
any correspondence must be indicated by the Arabic number of
the day, the name of the month and the Arabic number of the
year, in that order. In the request, after, below or above
that indication, the date should be repeated in parentheses
with a two - digit Arabic numeral each for the number of the
day, the number of the month and the last two figures of the
year, in that order and separated by periods, slashes or
hyphens for example 10 June 1986 (10.06.86); (10/06/86) or
(10 - 06 - 86).

 Any prospective applicant may obtain English language
Request forms free of charge from the United States Patent
and Trademark Office, Box PCT, Washington, D.C. 20231. The
Request may not contain any matter that is not specified in
PCT Rule 4. Any additional material will be deleted ex
officio (Administrative Instruction Section 303).

  SUPPLEMENTAL BOX

 This box is used for any material which cannot be placed in
one of the previous boxes because of space limitations. The

supplemental  information  placed  in  this  box  should  be
clearly entitled with the Box number from which it is
continued, e.g., "Continuation of Box No. IV."

  FILE REFERENCE

  The  applicant  or  his/her  agent  may  indicate  a  file
reference in the box provided for the purpose on the first
sheet of the request form, on each page of the other
elements of the international application, on the first
sheet of the demand form, and in any other correspondence
relating  to  the  international  application.  The  file
reference may be composed either of letters of the Latin
alphabet or Arabic numerals, or both. It may not exceed 12
characters. The receiving Office, the International Bureau,
the International Searching Authority and the International
Preliminary Examining Authority will use the file reference
in correspondence with the applicant.

  TITLE OF THE INVENTION

 The Request must contain the title of the invention; the
title must be short (preferably 2 to 7 words) and precise
(PCT Rule 4.3). The title in Box No. I of the Request is
considered to be the title of the application. The title
appearing on the first page of the description (PCT Rule
5.1(a)) and on the page containing the abstract should be
consistent with the title indicated in Box No. I of the
Request form.

 A title should not be changed by the examiner merely
because  it  contains  words  which  are  not  considered
descriptive of the invention. Words, for example, such as
"improved" or "improvement of" are acceptable. If the title
is otherwise not descriptive of the invention, a change to a
more descriptive title should be made and the applicant
informed thereof in the Search report.

 Where the title is missing or is inconsistent with the
title in the description, the Receiving Office invites the
applicant to correct the missing or inconsistent title.

  APPLICANT

 Any resident or national of a Contracting State may file an
international application. Where there are two or more
applicants, at least one of them must be a national or a
resident of a PCT Contracting State.

 The question whether an applicant is a resident or national
of a Contracting State depends on the national law of that
State  and  is  decided  by  the  receiving  Office.  Also,
possession of a real and effective industrial or commercial
establishment in a Contracting State may be considered
residence in that State, and a legal entity constituted
according to the national law of a Contracting State is
considered a national of that State.

 The applicant must be identified by the indication of
his/her name and address and by marking next to that
indication, the check - box "This person is also inventor"
in Box No. II, or "applicant and inventor" in Box No. III,
where the applicant is also the inventor or one of the
inventors, or the check - box "applicant only" where the
applicant is not the inventor or one of the inventors. Where

the applicant is a corporation or other legal entity (that
is, not a natural person), the check - box "applicant only"
must be marked. The applicant's nationality and residence
must also be indicated.

  NAMES

 The names of a natural person must be indicated by the
family name followed by the given name(s). Academic degrees
or titles or other indications which are not part of the
person's name must be omitted. The family name should
preferably be written in capital letters.

 The name of a legal entity must be indicated by its full
official designation (preferably in capital letters).

  ADDRESSES

 Addresses must be indicated in such a way as to satisfy the
requirements for prompt postal delivery at the address
indicated  and  must  consist  of  all  the  relevant
administrative units up to and including the house number
(if any). The address must also include the country.

1823  The Description

  PCT Article 5 The Description

 The description shall disclose the invention in a manner
sufficiently clear and complete for the invention to be
carried out by a person skilled in the art.

  PCT Rule 5 The Description

 5.1.  Manner of the Description

 (a)  The description shall first state the title of the
invention as appearing in the request and shall:

 (i)  specify the technical field to which the invention
relates;

 (ii)  indicate the background art which, as far as known
to  the  applicant,  can  be  regarded  as  useful  for  the
understanding, searching and examination of the invention,
and, preferably, cite the documents reflecting such art;

 (iii)  disclose the invention, as claimed, in such terms
that the technical problem (even if not expressly stated as
such) and its solution can be understood, and state the
advantageous  effects,  if  any,  of  the  invention  with
reference to the background art;

 (iv)  briefly describe the figures in the drawings, if
any;

 (v)  set forth at least the best mode contemplated by
the applicant for carrying out the invention claimed; this
shall be done in terms of examples, where appropriate, and
with reference to the drawings, if any; where the national
law of the designated State does not require the description
of the best mode but is satisfied with the description of
any mode (whether it is the best contemplated or not),
failure to describe the best mode contemplated shall have no
effect in that State;

 (vi)  indicate explicitly, when it is not obvious from
the description or nature of the invention, the way in which
the invention is capable of exploitation in industry and the
way in which it can be made and used, or, if it can only be
used, the way in which it can be used; the term industry is
to be understood in its broadest sense as in the Paris
Convention for the Protection of Industrial Property.

 (b)  The manner and order specified in paragraph (a)
shall be followed except when, because of the nature of the
invention, a different manner or a different order would
result  in  a  better  understanding  and  a  more  economic
presentation.

 (c)  Subject to the provisions of paragraph (b), each of
the parts referred to in paragraph (a) shall preferably be
preceded by an appropriate heading as suggested in the
Administrative Instructions.

  *****

  PCT Administrative Instruction Section 204 Headings of the
  Parts of the Description

 The headings referred to in Rule 5.1(c) should be as
follows:

 (i)  for  matter  referred  to  in  Rule  5.1(a)(i),
"Technical Field";

 (ii)  for  matter  referred  to  in  Rule  5.1(a)(ii),
"Background Art";

 (iii)  for  matter  referred  to  in  Rule  5.1(a)(iii),
"Disclosure of Invention"

 (iv)  for matter referred to in Rule 5.1(a)(iv), "Brief
Description of Drawings";

 (v)  for matter referred to in Rule 5.1(a)(v), "Best
Mode for Carrying Out the Invention," or, where appropriate,
"Mode(s) for Carrying Out the Invention";

 (vi)  for  matter  referred  to  in  Rule  5.1(a)(vi),
"Industrial Applicability."

  PCT Administrative Instruction Section 209 Indications as
  to Deposited Microorganisms on a Separate Sheet

 (a)  To the extent that any indication with respect to a
deposited microorganism is not contained in the description,
it may be given on a separate sheet. Where any such
indication is so given, it shall preferably be on Form
PCT/RO/134 and, if furnished at the time of filing, the said
Form shall, subject to paragraph (b), preferably be attached
to the request and referred to in the check list referred to
in Rule 3.3(a)(ii).

 (b)  For the purposes of the Japanese Patent Office when
Japan is designated, paragraph (a) applies only to the
extent that the said Form or sheet is included as one of the
sheets of the description of the international application
at the time of filing.

 37 CFR 1.435 The description.

 (a)  Requirements as to the content and form of the
description are set forth in PCT Rules 5, 9, 10 and 11 and
Administrative Instruction 204, and shall be adhered to.

 (b)  In  international  applications  designating  the
United States the description must contain upon filing an
indication of the best mode contemplated by the inventor for
carrying out the claimed invention.

 The description must disclose the invention in a manner
sufficiently clear and complete for it to be carried out by
a person skilled in the art. It must start with the title of
the invention as appearing in Box No. I of the request. Rule
5 contains detailed requirements as to the manner and order
of the description, which, generally, should be in six
parts. Those parts should have the following headings:
"Technical  Field,"  "Background  Art,"  "Disclosure  of
Invention," "Brief Description of Drawings," "Best Mode for
Carrying Out the Invention" or, where appropriate, "Mode(s)
for  Carrying  Out  the  Invention,"  and  "Industrial
Applicability."

 The details required for the disclosure of the invention so
that it can be carried out by a person skilled in the art
depend on the practice of the national Offices. It is
therefore recommended that due account be taken of national
practice  in  the  United  States  of  America  when  the
description is drafted.

 The need to amend the description during the national phase
may thus be avoided.

 This applies likewise to the need to indicate the "best
mode for carrying out the invention." If at least one of the
designated Offices requires the indication of the best mode
(for  instance,  the  United  States  Patent  and  Trademark
Office),  that  best  mode  must  be  indicated  in  the
description.

 A description drafted with due regard to what is said in
these provisions will be accepted by all the designated
Offices. It might require more care than the drafting of a
national patent application, but certainly much less effort
than  the  drafting  of  multiple  applications,  which  is
necessary where the PCT route is not used for filing in
several countries.

1823.01  Reference to Deposited Microorganism

  bis
  PCT Rule 13  Microbiological inventions

  bis
 13  .1  Definition

 For the purposes of this Rule, "reference to a deposited
microorganism" means particulars given in an international
application with respect to the deposit of a microorganism
with a depositary institution or to the microorganism so
deposited.

  bis
  13  .2.  References (General)

 Any reference to a deposited microorganism shall be made in

accordance  with  this  Rule  and,  if  so  made,  shall  be
considered as satisfying the requirements of the national
law of each designated State.

 bis
  13  .3.  References: Contents; Failure to Include
  Reference or Indication

 (a)  A reference to a deposited microorganism shall
indicate,

 (i)  the name and address of the depositary institution
with which the deposit was made;

 (ii)  the date of deposit of the microorganism with that
institution;

 (iii)  the accession number given to the deposit by that
institution; and

 (iv)  any additional matter of which the International
  bis
Bureau has been notified pursuant to Rule 13  .7(a)(i) ,
provided that the requirement to indicate that matter was
  bis
published in the Gazette in accordance with Rule 13  .7(c)
at least two months before the filing of the international
application.

 (b)  Failure to include a reference to a deposited
microorganism or failure to include, in a reference to a
deposited microorganism, an indication in accordance with
paragraph (a), shall have no consequence in any designated
State whose national law does not require such reference or
such indication in a national application.

  bis
  13  .4.  References: Time of Furnishing Indications

  bis
 If any of the indications referred to in Rule l3  .3(a) is
not included in a reference to a deposited microorganism in
the international application as filed but is furnished by
the applicant to the International Bureau within 16 months
after the priority date, the indication shall be considered
by any designated Office to have been furnished in time
unless its national law requires the indication to be
furnished at an earlier time in the case of a national
application and the International Bureau has been notified
  bis
of  such  requirement  pursuant  to  Rule  13  .7(a)(ii)  ,
provided that the International Bureau has published such
requirement  in  the  Gazette  in  accordance  with  Rule
  bis
13  .7(c) at least two months before the filing of the
international application. In the event that the applicant
makes  a  request  for  early  publication  under  Article
21(2)(b), however, any designated Office may consider any
indication not furnished by the time such request is made as
not having been furnished in time. Irrespective of whether
the applicable time limit under the preceding sentences has
been observed, the International Bureau shall notify the
applicant and the designated Offices of the date on which it
has  received  any  indication  not  included  in  the
international application as filed. The International Bureau
shall indicate that date in the international publication of
the international application if the indication has been
furnished  to  it  before  the  completion  of  technical
preparations international publication.

  bis
  13  .5.  References and Indications for the Purposes of
  One or More Designated States; Different Deposits for
  Different Designated States; Deposits with Depositary
  Institutions Other Than Those Notified

 (a)  A reference to a deposited microorganism shall be
considered to be made for the purposes of all designated
States, unless it is expressly made for the purposes of
certain of the designated States only; the same applies to
the indications included in the reference.

 (b)  References  to  different  deposits  of  the
microorganism may be made for different designated States.

 (c)  Any  designated  Office  shall  be  entitled  to
disregard a deposit made with a depositary institution other
  bis
than one notified by it under Rule 13  .7(b).

  bis
 13  .6.  Furnishing of Samples

 (a)  Where the international application contains a
reference to a deposited microorganism, the applicant shall,
upon the request of the International Searching Authority or
the International Preliminary Examining Authority, authorize
and assure the furnishing of a sample of that microorganism
by  the  depositary  institution  to  the  said  Authority,
provided  that  the  said  Authority  has  notified  the
International Bureau that it may require the furnishing of
samples and that such samples will be used solely for the
purposes  of  international  search  or  international
preliminary examination, as the case may be, and such
notification has been published in the Gazette.

 (b)  Pursuant to Articles 23 and 40, no furnishing of
samples of the deposited microorganism to which a reference
is made in an international application shall, except with
the authorization of the applicant, take place before the
expiration  of  the  applicable  time  limits  after  which
national processing may start under the said Articles.
However, where the applicant performs the acts referred to
in Articles 22 or 39 after international publication but
before  the  expiration  of  the  said  time  limits,  the
furnishing of samples of the deposited microorganism may
take  place,  once  the  said  acts  have  been  performed.
Notwithstanding the previous provision, the furnishing of
samples of the deposited microorganism may take place under
the national law applicable for any designated Office as
soon as, under that law, the international publication has
the effects of the compulsory national publication of an
unexamined national application.

 bis
  13  .7.  National Requirements: Notification and
  Publication

 (a)  Any national Office may notify the International
Bureau of any requirement of the national law,

 (i)  that any matter specified in the notification, in
  bis
addition to those referred to in Rule 13  .3(a)(i) , (ii)
and (iii), is required to be included in a reference to a
deposited microorganism in a national application;

 (ii)  that one or more of the indications referred to in

  bis
Rule 13  .3(a) are required to be included in a national
application as filed or are required to be furnished at a
time specified in the notification which is earlier than 16
months after the priority date.

 (b)  Each national Office shall notify the International
Bureau  of  the  depositary  institutions  with  which  the
national law permits deposits of microorganisms to be made
for the purposes of patent procedure before that Office or,
if the national law does not provide for or permit such
deposits, of that fact.

 (c)  The International Bureau shall promptly publish in
the Gazette requirements notified to it under paragraph (a)
and information notified to it under paragraph (b).

  PCT Administrative Instruction Section 209 Indications as
  to Deposited Microorganisms on a Separate Sheet

 (a)  To the extent that any indication with respect to a
deposited microorganism is not contained in the description,
it may be given on a separate sheet. Where any such
indication is so given, it shall preferably be on Form
PCT/RO/134 and, if furnished at the time of filing, the said
Form shall, subject to paragraph (b), preferably be attached
to the request and referred to in the check list referred to
in Rule 3.3(a)(ii).

 (b)  For the purposes of the Japanese Patent Office when
Japan is designated, paragraph (a) applies only to the
extent that the said Form or sheet is included as one of the
sheets of the description of the international application
at the time of filing.

  REFERENCES TO DEPOSITED MICROORGANISMS IN THE CASE OF
  MICROBIOLOGICAL INVENTIONS

 The PCT does not require the inclusion of a reference to a
microorganism  and/or  to  its  deposit  with  a  depositary
institution  in  an  international  application;  it  merely
prescribes the contents of any "reference to a deposited
microorganism"  (defined  as  "particulars  given  ...  with
respect to the deposit of a microorganism ... or to the
microorganism  so  deposited")  which  is  included  in  an
international application, and when such a reference must be
furnished. It follows that the applicant may see a need to
make such a reference only when it is required for the
purpose  of  disclosing  the  invention  claimed  in  the
international application in a manner sufficient for the
invention to be carried out by a person skilled in the art
that is, when the law of at least one of the designated
States provides for the making, for this purpose, of a
reference to a deposited microorganism if the invention
involves the use of a microorganism that is not available to
the public. Any reference to a deposited microorganism
furnished separately from the description will be included
in  the  pamphlet  containing  the  published  international
application.

 A reference to a deposited microorganism made in accordance
with the requirements of the PCT must be regarded by each of
the designated Offices as satisfying the requirements of the
national law applicable in that Office with regard to the
contents of such references and the time for furnishing

them.

 A reference may be made for the purposes of all designated
States or for one or only some of the designated States. A
reference is considered to be made for the purpose of all
designated States unless it is expressly made for certain
designated States only. References to different deposits may
be made for the purposes of different designated States.

 There are two kinds of indication which may have to be
given with regard to the deposit of the microorganism,
namely:

  (a)  indications specified in the PCT Regulations
themselves; and

  (b)  additional indications by the national (or
regional) Office of (or acting for) a State designated in
the international application and which have been published
in the PCT Gazette; these additional indications may relate
not only to the deposit of the microorganism but also to the
microorganism itself.

 The indications in the first category are:

  (i) the  name  and  address  of  the  depositary
institution with which the deposit was made;

  (ii) the date of the deposit with that institution; and

  (iii) the accession number given to the deposit by that
institution.

 U.S. requirements include the name and address of the
depository institution at the time of filing, the date of
the deposit or a statement that the deposit was made on or
before the priority date of the international application
and, to the extent possible, a taxonomic description of the
microorganism. See Annex L of the PCT Applicants Guide.

 The national laws of some of the national (or regional)
Offices require that, besides indications concerning the
deposit  of  a  microorganism,  an  indication  be  given
concerning the microorganism itself, such as, for example, a
short description of its characteristics, at least to the
extent that this information is available to the applicant.
These requirements must be met in the case of international
applications for which any such Office is a designated
Office, provided that the requirements have been published
in the PCT Gazette. Annex L of the PCT Applicant's Guide
indicates, for each of the national (or regional) Offices,
the requirements (if any) of this kind which have been
published.

 If any indication is not included in a reference to a
deposited  microorganism  contained  in  the  international
application  as  filed,  it  may  be  furnished  to  the
International Bureau within 16 months after the priority
date unless the International Bureau has been notified (and,
at least 2 months prior to the filing of the international
application, it has published in the PCT Gazette) that the
national  law  requires  the  indication  to  be  furnished
earlier. However, if the applicant makes a request for early
publication, all indications should be furnished by the time
the request is made, since any designated Office may regard

any indication not furnished when the request is made as not
having been furnished in time.

 No check is made in the international phase to determine
whether a reference has been furnished within the prescribed
time limit. However, the International Bureau notifies the
designated Offices of the date(s) on which indications, not
included in the international application as filed were
furnished to it. Those dates are also mentioned in the
pamphlet containing the published international application.
Failure to include a reference to a deposited microorganism
(or any indication required in such a reference) in the
international application as filed, or failure to furnish it
(or the indication) within the prescribed time limit, has no
consequence  if  the  national  law  does  not  require  the
reference (or indication) to be furnished in a national
application. Where there is a consequence, it is the same as
that which applies under the national law.

 To the extent that indications relating to the deposit of a
microorganism are not given in the description, because they
are furnished later, they may be given in the "optional
sheet" provided for that purpose. If the sheet is submitted
when the international application is filed, a reference to
it should be made in the check list contained on the last
sheet of the request form. Should Japan be designated, such
a sheet must, if used, be included as one of the sheets of
the  description  at  the  time  of  filing;  otherwise  the
indications given in it will not be taken into account by
the Japanese Patent Office in the national phase. If the
sheet is furnished to the International Bureau later, it
must be enclosed with a letter.

 Each national (or regional) Office whose national law
provides for deposits of microorganisms for the purposes of
patent procedure notifies the International Bureau of the
depositary institutions with which the national law permits
such deposits to be made. Information on the institutions
notified by each of those Offices is published by the
International Bureau in the PCT Gazette.

 A reference to a deposit cannot be disregarded by a
designated Office for reasons pertaining to the institution
with which the microorganism was deposited if the deposit
referred to is one made with a depositary institution
notified by that Office. Thus, by consulting the PCT Gazette
or Annex L of the PCT Applicant's Guide, the applicant can
be sure that he has deposited the microorganism with an
institution which will be accepted by the designated Office.

  International  Searching  Authorities  and  International
Preliminary  Examining  Authorities  are  not  expected  to
request access to deposited microorganisms. However, in
order to retain the possibility of access to a deposited
microorganism referred to in an international application
which is being searched or examined by such an Authority,
the PCT provides that the Authorities may, if they fulfill
certain conditions, ask for samples. Thus, an Authority may
only ask for samples if it has notified the International
Bureau (in a general notification) that it may require
samples and the International Bureau has published the
notification in the PCT Gazette. The only Authority which
has made such a notification (and thus the only Authority
which may request samples) is the Japanese Patent Office. If
a sample is asked for, the request is directed to the

applicant, who then becomes responsible for making the
necessary arrangements for the sample to be provided.

 The furnishing of samples of a deposit of a microorganism
to third persons is governed by the national laws applicable
in  the  designated  Offices.  Rule  13bis.6(b),  however,
provides for the delaying of any furnishing of samples under
the national law applicable in each of the designated (or
elected) Offices until the start of the national phase,
subject to the ending of this "delaying effect" brought
about by the occurrence of either of the following two
events:

  (i) the  applicant  has,  after  international
publication of the international application, taken the
steps necessary to enter the national phase before the
designated Office.

  (ii) international publication of the international
application has been effected, and that publication has the
same effects, under the national law applicable in the
designated Office, as the compulsory national publication of
an unexamined national application (in other words, the
international application has qualified for the grant of
"provisional protection").

1823.02  Nucleotide and/or Amino Acid Sequence Listings [R
- 1]

  Rule 5 The Description

 ***

 PCT 5.2.  Nucleotide and/or Amino Acid Sequence
Disclosure

 Where the international application contains disclosure of
a nucleotide and/or amino acid sequence, the description
shall contain a listing of the sequence complying with the
standard prescribed by the Administrative Instructions.

  ter
  PCT Rule 13  Nucleotide and/or Amino Acid Sequence
  Listings

  ter
  13  .1.  Sequence Listing for International Authorities

 (a)  If the International Searching Authority finds that
a nucleotide and/or amino acid sequence listing does not
comply with the standard prescribed in the Administrative
Instructions under Rule 5.2, and/or is not in a machine
readable form provided for in those Instructions, it may
invite the applicant, within a time limit fixed in the
invitation, as the case may be:

 (i)  to  furnish  to  it  a  listing  of  the  sequence
complying with the prescribed standard, and/or

 (ii)  to furnish to it a listing of the sequence in a
machine readable form provided for in the Administrative
Instructions or, if that Authority is prepared to transcribe
the sequence listing into such a form, to pay for the cost
of such transcription.

 (b)  Any sequence listing furnished under paragraph (a)

shall be accompanied by a statement to the effect that the
listing does not include matter which goes beyond the
disclosure in the international application as filed.

 (c)  If  the  applicant  does  not  comply  with  the
invitation within the time limit fixed in the invitation,
the International Searching Authority shall not be required
to search the international application to the extent that
such non - compliance has the result that a meaningful
search cannot be carried out.

 (d)  If the International Searching Authority chooses,
under paragraph (a)(ii), to transcribe the sequence listing
into a machine readable form, it shall send a copy of such
transcription in machine readable form to the applicant.

 (e)  The International Searching Authority shall, upon
request, make available to the International Preliminary
Examining Authority a copy of any sequence listing furnished
to it, or as transcribed by it, under paragraph (a).

 (f)  A sequence listing furnished to the International
Searching  Authority,  or  as  transcribed  by  it,  under
paragraph (a) shall not form part of the international
application.

  ter
  13  .2  Sequence Listing for Designated Office

 (a)  Once  the  processing  of  the  international
application has started before a designated Office, that
Office may require the applicant to furnish to it a copy of
any  sequence  listing  furnished  to  the  International
Searching Authority, or as transcribed by that Authority,
under Rule 13ter.1(a).

 (b)  If a designated Office finds that a nucleotide
and/or amino acid sequence listing does not comply with the
standard prescribed in the Administrative Instructions under
Rule 5.2, and/or is not in a machine readable form provided
for in those Instructions, and/or no listing of the sequence
was furnished to the International Searching Authority, or
transcribed by that Authority, under Rule 13ter.1(a), that
Office may require the applicant:

 (i)  to  furnish  to  it  a  listing  of  the  sequence
complying with the prescribed standard, and/or

 (ii)  to furnish to it a listing of the sequence in a
machine readable form provided for in the Administrative
Instructions or, if that Office is prepared to transcribe
the sequence listing into such a form, to pay for the cost
of such transcription.

  PCT Administrative Instruction Section 208 **>Sequence
  Listings

  (a) Any nucleotide and/or amino acid sequence listing
("sequence  listing")  shall  be  presented  in  a  format
complying with WIPO Standard ST.23 (Recommendation for the
Presentation of Nucleotide and Amino Acid Sequence Listings
in Patent Applications and in Published Patent Documents).

  (b) Any machine readable form of a sequence listing shall
comply with the required format in accordance with Annex C.

  (c)  Any  sequence  listing  not  forming  part  of  the
international  application  shall,  when  furnished,  be
accompanied by a statement to the effect that the listing
does not include matter which goes beyond the disclosure in
the international application as filed.

  (d) Sheets of a sequence listing in printed form not
forming part of the international application shall be
sequentially numbered in a series separate from that used in
numbering the sheets of the international application; the
number of each sheet shall preferably consist of two Arabic
numerals separated by a slant, the first being the sheet
number and the second being the total number of such sheets
(for example, 1/3, 2/3, 3/3).<

 ANNEX C to the PCT Administrative Instructions

  FORMAT FOR NUCLEOTIDE AND/OR AMINO ACID SEQUENCE LISTINGS
  IN MACHINE READABLE FORM

 ***

  United States Patent and Trademark Office (USPTO)

 A sequence listing is required for all disclosures of
sequence information in which the sequence has four or more
amino acids or ten or more nucleotides. Branched sequences
and those including D - amino acids are excluded from the
rules.

 The USPTO has not adopted the use of an OCR format and it
is not expected that such a format will be adopted by the
USPTO.

 Sections 1.821 to 1.825 of title 37, Code of Federal
Regulations (37 CFR) relate to sequence listings submitted
to the USPTO. Sections 1.824 and 1.825 set forth the
requirements for sequence listings in machine (computer)
readable form.

 ***

  REQUIREMENTS FOR SEQUENCE LISTINGS

 Where an international application discloses a nucleotide
and/or amino acid sequence, the description must contain a
listing of the sequence complying with a standard specified
in  the  Administrative  Instructions.  The  International
Searching  Authority  and  the  International  Preliminary
Examining Authority may, in some cases, invite the applicant
to furnish a listing complying with that standard. The
applicant may also be invited to furnish a listing in a
machine readable form provided for in the PCT Administrative
Instructions or to pay for the Authority to transcribe the
listing into such a form.

 Where the international application contains disclosure of
a nucleotide and/or amino acid sequence, the description
must contain a listing of the sequence complying with WIPO
Standard  ST.23  (Recommendation  for  the  Presentation  of
Nucleotide and Amino Acid Sequences in Patent Applications
and in Published Patent Documents), which is published in
the WIPO Handbook on Industrial Property Information and
Documentation. Copies of the Handbook, or of the Standard

may be obtained from the International Bureau, and the
Standard has also been reproduced in the PCT Gazette. It is
advisable for the applicant to submit a listing of the
sequence in machine readable form, if such a listing is
required by the competent International Searching Authority,
together with the international application rather than to
wait  for  an  invitation  by  the  International  Searching
Authority.

 The machine readable form is not mandatory in international
applications filed in the U.S. Receiving Office. However, if
a machine readable form of a sequence listing is not
provided, a search or examination will be performed only to
the extent possible in the absence of the machine readable
form. The U.S. sequence rules (37 CFR 1.821 - 1.825) and the
PCT sequence requirements are substantively consistent. In
this regard, full compliance with the requirements of the
U.S. rules will ensure compliance with the applicable PCT
requirements. The European Patent Office (EPO), since 01
January 1993, requires nucleotide and amino acid sequences
to be in machine readable form (computer readable form).
Applicants should be cognizant of this requirement and
ensure compliance with EPO requirements if the EPO is to be
the  search  or  examination  authority.  For  specific
information, a review of Annex C of the Administrative
Instructions or consultation with the EPO is suggested.

1824  The Claims

  PCT Article 6 The Claims

 The claim or claims shall define the matter for which
protection is sought. Claims shall be clear and concise.
They shall be fully supported by the description.

  PCT Rule 6 The Claims

  6.1.  Number and Numbering of Claims

 (a)  The number of the claims shall be reasonable in
consideration of the nature of the invention claimed.

 (b)  If there are several claims, they shall be numbered
consecutively in Arabic numerals.

 (c)  The  method  of  numbering  in  the  case  of  the
amendment of claims shall be governed by the Administrative
Instructions.

  6.2.  References to Other Parts of the International
  Application

 (a)  Claims  shall  not,  except  where  absolutely
necessary, rely, in respect of the technical features of the
invention, on references to the description or drawings. In
particular, they shall not rely on such references as: "as
described  in  part  ...  of  the  description,"  or  "as
illustrated in figure ... of the drawings."

 (b)  Where  the  international  application  contains
drawings, the technical features mentioned in the claims
shall preferably be followed by the reference signs relating
to such features. When used, the reference signs shall
preferably be placed between parentheses. If inclusion of
reference signs does not particularly facilitate quicker

understanding of a claim, it should not be made. Reference
signs may be removed by a designated Office for the purposes
of publication by such Office.

  6.3.  Manner of Claiming

 (a)  The definition of the matter for which protection
is sought shall be in terms of the technical features of the
invention.

 (b)  Whenever appropriate, claims shall contain:

 (i)  a statement indicating those technical features of
the invention which are necessary for the definition of the
claimed subject matter but which, in combination, are part
of the prior art,

 (ii)  a characterizing portion - preceded by the words
"characterized in that," "characterized by," "wherein the
improvement comprises," or any other words to the same
effect - stating concisely the technical features which, in
combination with the features stated under (i), it is
desired to protect.

 (c)  Where the national law of the designated State does
not require the manner of claiming provided for in paragraph
(b), failure to use that manner of claiming shall have no
effect  in  that  State  provided  the  manner  of  claiming
actually used satisfies the national law of that State.

  6.4.  Dependent Claims

 (a)  Any claim which includes all the features of one or
more other claims (claim in dependent form, hereinafter
referred  to  as  "dependent  claim")  shall  do  so  by  a
reference, if possible at the beginning, to the other claim
or claims and shall then state the additional features
claimed. Any dependent claim which refers to more than one
other claim ("multiple dependent claim") shall refer to such
claims in the alternative only. Multiple dependent claims
shall not serve as a basis for any other multiple dependent
claim. Where the national law of the national Office acting
as International Searching Authority does not allow multiple
dependent claims to be drafted in a manner different from
that provided

 for in the preceding two sentences, failure to use that
manner of claiming may result in an indication under Article
17(2)(b) in the international search report. Failure to use
the said manner of claiming shall have no effect in a
designated State if the manner of claiming actually used
satisfies the national law of that State.

 (b)  Any dependent claim shall be construed as including
all the limitations contained in the claim to which it
refers or, if the dependent claim is a multiple dependent
claim, all the limitations contained in the particular claim
in relation to which it is considered.

 (c)  All dependent claims referring back to a single
previous claim, and all dependent claims referring back to
several previous claims, shall be grouped together to the
extent and in the most practical way possible.

  6.5.  Utility Models

 Any designated State in which the grant of a utility model
is sought on the basis of an international application may,
instead of Rules 6.1 to 6.4, apply in respect of the matters
regulated in those Rules the provisions of its national law
concerning  utility  models  once  the  processing  of  the
international  application  has  started  in  that  State,
provided that the applicant shall be allowed at least two
months from the expiration of the time limit applicable
under  Article  22  to  adapt  his  application  to  the
requirements of the said provisions of the national law.

  PCT Administrative Instructions Section 205 Numbering and
  Identification of Claims Upon Amendment

 (a)  Amendments to the claims under Article 19 or
Article 34(2)(b) may be made either by cancelling one or
more entire claims, by adding one or more new claims or by
amending the text of one or more of the claims as filed. All
the  claims  appearing  on  a  replacement  sheet  shall  be
numbered in Arabic numerals. Where a claim is cancelled, no
renumbering of the other claims shall be required. In all
cases where claims are renumbered, they shall be renumbered
consecutively.

 (b)  The applicant shall, in the letter referred to in
the second and third sentences of Rule 46.5(a) or in the
second and fourth sentences of Rule 66.8(a), indicate the
differences between the claims as filed and the claims as
amended. He shall, in particular, indicate in the said
letter, in connection with each claim appearing in the
international  application  (it  being  understood  that
identical  indications  concerning  several  claims  may  be
grouped), whether:

 (i)  the claim is unchanged;

 (ii)  the claim is cancelled;

 (iii)  the claim is new;

 (iv)  the claim replaces one or more claims as filed;

 (v)  the claim is the result of the division of a claim
as filed.

  37 CFR 1.436.  The claims.

 The requirements as to the content and format of claims are
set forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and
shall be adhered to. The number of the claims shall be
reasonable, considering the nature of the invention claimed.

 The claim or claims must "define the matter for which
protection is sought." Claims must be clear and concise.
They must be fully supported by the description. PCT Rule 6
contains  detailed  requirements  as  to  the  number  and
numbering of claims, the extent to which any claim may refer
to other parts of the international application, the manner
of claiming, and dependent claims. As to the manner of
claiming, the claims must, whenever appropriate, be in two
distinct parts; namely, the statement of the prior art and
the statement of the features for which protection is sought
("the characterizing portion").

 The physical requirements for the claims are the same as
those  for  the  description.  Note  that  the  claims  must
commence on a new sheet.

 The procedure for rectification of obvious errors is
explained in MPEP § 1836. The omission of an entire sheet of
the  claims  cannot  be  rectified  without  affecting  the
international filing date. It is recommended that a request
for rectification of obvious errors in the claims be made
only if the error is liable to affect the international
search; otherwise, the rectification should be made by
amending the claims.

 The claims can be amended during the international phase
under PCT Article 19 on receipt of the international search
report, during international preliminary examination if the
applicant has filed a Demand, and during the national phase.

 Multiple dependent claims are permitted in international
applications before the United States Patent and Trademark
Office  as  an  International  Searching  and  International
Preliminary  Examining  Authority  or  as  a  Designated  or
Elected Office, if they are in the alternative only and do
not serve as a basis for any other multiple dependent claim
(PCT Rule 6.4(a), 35 U.S.C. 112). The claims, being an
element of the application, should start on a new page (PCT
Rule 11.4). Page numbers and line numbers must not be placed
in the margins (PCT Rule 11.6(e)).

 The number of claims shall be reasonable, considering the
nature of the invention claimed (37 CFR 1.436 ).

1825  The Drawings

  PCT Article 7 The Drawings

 (1)  Subject to the provisions of paragraph (2)(ii),
drawings shall be required when they are necessary for the
understanding of the invention.

 (2)  Where,  without  being  necessary  for  the
understanding of the invention, the nature of the invention
admits of illustration by drawings:

 (i)  the applicant may include such drawings in the
international application when filed.

 (ii)  any  designated  Office  may  require  that  the
applicant file such drawings with it within the prescribed
time limit.

  PCT Rule 7 The Drawings

  7.1.  Flow Sheets and Diagrams

 Flow sheets and diagrams are considered drawings.

  7.2.  Time Limit

 The time limit referred to in Article 7(2)(ii) shall be
reasonable under the circumstances of the case and shall, in
no case, be shorter than two months from the date of the
written invitation requiring the filing of drawings or
additional drawings under the said provision.

  PCT Rule 11 Physical Requirements of the International
  Application

 ***

  11.5.  Size of Sheets

 The size of the sheets shall be A4 (29.7 cm x 21 cm).
However,  any  receiving  Office  may  accept  international
applications on sheets of other sizes provided that the
record copy, as transmitted to the International Bureau,
and, if the competent International Searching Authority so
desires, the search copy, shall be of A4 size.

 ***

  11.6(c)

 On sheets containing drawings, the surface usable shall not
exceed 26.2 cm x 17.0 cm. The sheets shall not contain
frames around the usable or used surface. The minimum
margins shall be as follows:

 - top: 2.5 cm

 - left side: 2.5 cm

 - right side: 1.5 cm

 - bottom: 1.0 cm

 ***

  11.11.  Words in Drawings

 (a)  The drawings shall not contain text matter, except
a single word or words, when absolutely indispensable, such
as "water," " steam," "open," "closed," "section on AB,"
and, in the case of electric circuits and block schematic or
flow sheet diagrams, a few short catchwords indispensable
for understanding.

 (b)  Any  words  used  shall  be  so  placed  that,  if
translated, they may be pasted over without interfering with
any lines of the drawings.

 ***

  11.13.  Special Requirements for Drawings

 (a)  Drawings shall be executed in durable, black,
sufficiently dense and dark, uniformly thick and well -
defined, lines and strokes without colorings.

 (b)  Cross - sections shall be indicated by oblique
hatching which should not impede the clear reading of the
reference signs and leading lines.

 (c)  The scale of the drawings and the distinctness of
their graphical execution shall be such that a photographic
reproduction with a linear reduction in size to two - thirds
would  enable  all  details  to  be  distinguished  without
difficulty.

 (d)  When, in exceptional cases, the scale is given on a

drawing, it shall be represented graphically.

 (e)  All numbers, letters and reference lines, appearing
on the drawings, shall be simple and clear. Brackets,
circles or inverted commas shall not be used in association
with numbers and letters.

 (f)  All lines in the drawings shall, ordinarily, be
drawn with the aid of drafting instruments.

 (g)  Each element of each figure shall be in proper
proportion to each of the other elements in the figure,
except  where  the  use  of  a  different  proportion  is
indispensable for the clarity of the figure.

 (h)  The height of the numbers and letters shall not be
less than 0.32 cm. For the lettering of drawings, the Latin
and, where customary, the Greek alphabets shall be used.

 (i)  The same sheet of drawings may contain several
figures. Where figures on two or more sheets form in effect
a single complete figure, the figures on the several sheets
shall be so arranged that the complete figure can be
assembled without concealing any part of any of the figures
appearing on the various sheets.

 (j)  The different figures shall be arranged on a sheet
or sheets without wasting space, preferably in an upright
position, clearly separated from one another. Where the
figures are not arranged in an upright position, they shall
be presented sideways with the top of the figures at the
left side of the sheet.

 (k)  The different figures shall be numbered in Arabic
numerals consecutively and independently of the numbering of
the sheets.

 (l)  Reference signs not mentioned in the description
shall not appear in the drawings, and vice versa.

 (m)  The same features, when denoted by reference signs,
shall, throughout the international application, be denoted
by the same signs.

 (n)  If the drawings contain a large number of reference
signs, it is strongly recommended to attach a separate sheet
listing all reference signs and the features denoted by
them.

  *****

 37 CFR 1.437.  The drawings.

 (a)  Subject to paragraph (b) of this section, when
drawings  are  necessary  for  the  understanding  of  the
invention, or are mentioned in the description, they must be
part of an international application as originally filed in
the United States Receiving Office in order to maintain the
international filing date during the national stage (PCT
Art. 7).

 (b)  Drawings missing from the application upon filing
will be accepted if such drawings are received within 30
days of the date of first receipt of the incomplete papers.
If the missing drawings are received within the 30 - day

period, the international filing date shall be the date on
which such drawings are received. If such drawings are not
timely  received,  all  references  to  drawings  in  the
international application shall be considered non - existent
(PCT Art. 14(2), Administrative Instruction 310).

 (c)  The physical requirements for drawings are set
forth in PCT Rule 11 and shall be adhered to.

 The international application must contain drawings when
they are necessary for the understanding of the invention.
Moreover where, without drawings being actually necessary
for the understanding of the invention, its nature admits of
illustration by drawings, the applicant may include such
drawings and any designated Office may require the applicant
to file such drawings during the national phase. Flow sheets
and  diagrams  are  considered  drawings.  "Guidelines  for
Drawings Under the Patent Cooperation Treaty," published in
the PCT Gazette(No. 7/1978), may be obtained, in English and
French, from the International Bureau.

 Drawings must be presented on one or more separate sheets.
They may not be included in the description, the claims or
the abstract. They may not contain text matter, except a
single word or words when absolutely indispensable. All
lines in the drawings must, ordinarily, be drawn with the
aid of a drafting instrument and must be executed in black,
uniformly thick and well - defined lines. Rules 11.10 to
11.13 contain detailed requirements as to further physical
requirements of drawings. Drawings newly executed according
to  national  standards  may  not  be  required  during  the
national phase if the drawings filed with the international
application comply with Rule 11. The examiner may require
new drawings where the drawings which were accepted during
the international phase did not comply with PCT Rule 11. A
file reference may be indicated in the upper left corner on
each sheet of the drawings as for the description.

 All the figures constituting the drawings must be grouped
together on a sheet or sheets without waste of space,
preferably in an upright position and clearly separated from
each other. Where the drawings or tables cannot be presented
satisfactorily in an upright position, they may be placed
sideways, with the tops of the drawings or tables on the
left - hand side of the sheet.

 The usable surface of sheets (which must be of A4 size)
must not exceed 26.2 cm x 17.0 cm. The sheets must not
contain  frames  around  the  usable  surface.  The  minimum
margins which must be observed are: top and left side: 2.5
cm; right side: 1.5 cm; bottom: 1.0 cm.

 All sheets of drawings must be numbered in the center of
either the top or the bottom of each sheet but not in the
margin in numbers larger than those used as reference signs
in order to avoid confusion with the latter. For drawings, a
separate series of page numbers is to be used. The number of
each sheet of the drawings must consist of two Arabic
numerals separated by an oblique stroke, the first being the
sheet number and the second being the total number of sheets
of drawings. For example, "2/5" would be used for the second
sheet of drawings where there are five in all.

 Different figures on the sheets of drawings must be
numbered in Arabic numerals consecutively and independently

of the numbering of the sheets and, if possible, in the
order  in  which  they  appear.  This  numbering  should  be
preceded by the expression "Fig."

 The PCT makes no provision for photographs. Nevertheless,
they are allowed by the International Bureau where it is
impossible to present in a drawing what is to be shown (for
instance,  crystalline  structures).  Where,  exceptionally,
photographs are submitted, they must be on sheets of A4
size, they must be black and white, and they must respect
the minimum margins and admit of direct reproduction. Color
photographs are not accepted.

 The procedure for rectification of obvious errors in the
drawings is explained in MPEP § 1836. The omission of an
entire  sheet  of  drawings  cannot  be  rectified  without
affecting the international filing date. Changes other than
the  rectification  of  obvious  errors  are  considered
amendments.

 The drawings can be amended during the international phase
only if the applicant files a Demand for international
preliminary examination. The drawings can also be amended
during the national phase.

 If drawings are referred to in an international application
and are not found in the search copy file, the examiner
should refer the case to the Group Special Program Examiner.
See PCT Administrative Instruction Section 310.

1826  The Abstract

  PCT Rule 8 The Abstract

  8.1.  Contents and Form of the Abstract

 (a)  The abstract shall consist of the following:

 (i)  a summary of the disclosure as contained in the
description, the claims, and any drawings; the summary shall
indicate the technical field to which the invention pertains
and shall be drafted in a way which allows the clear
understanding of the technical problem, the gist of the
solution of that problem through the invention, and the
principal use or uses of the invention;

 (ii)  where applicable, the chemical formula which, among
all the formulae contained in the international application,
best characterizes the invention.

 (b)  The abstract shall be as concise as the disclosure
permits (preferably 50 to 150 words if it is in English or
when translated into English).

 (c)  The abstract shall not contain statements on the
alleged merits or value of the claimed invention or on its
speculative application.

 (d)  Each  main  technical  feature  mentioned  in  the
abstract and illustrated by a drawing in the international
application shall be followed by a reference sign, placed
between parentheses.

  8.2.  Figure

 (a)  If the applicant fails to make the indication
referred to in Rule 3.3(a)(iii), or if the International
Searching Authority finds that a figure or figures other
than that figure or those figures suggested by the applicant
would, among all the figures of all the drawings, better
characterize the invention, it shall, subject to paragraph
(b), indicate the figure or figures which should accompany
the  abstract  when  the  latter  is  published  by  the
International Bureau. In such case, the abstract shall be
accompanied by the figure or figures so indicated by the
International Searching Authority. Otherwise, the abstract
shall, subject to paragraph (b), be accompanied by the
figure or figures suggested by the applicant.

 (b)  If the International Searching Authority finds that
none of the figures of the drawings is useful for the
understanding  of  the  abstract,  it  shall  notify  the
International  Bureau  accordingly.  In  such  case,  the
abstract, when published by the International Bureau, shall
not be accompanied by any figure of the drawings even where
the applicant has made a suggestion under Rule 3.3(a)(iii).

  8.3.  Guiding Principles in Drafting

 The abstract shall be so drafted that it can efficiently
serve as a scanning tool for purposes of searching in the
particular  art,  especially  by  assisting  the  scientist,
engineer or researcher in formulating an opinion on whether
there is a need for consulting the international application
itself.

  37 CFR 1.438.  The abstract.

 (a)  Requirements as to the content and form of the
abstract are set forth in PCT Rule 8, and shall be adhered
to.

 (b)  Lack of an abstract upon filing of an international
application will not affect the granting of a filing date.
However, failure to furnish an abstract within one month
from the date of the notification by the Receiving Office
will result in the international application being declared
withdrawn.

 The abstract must consist of a summary of the disclosure as
contained in the description, the claims and any drawings.
Where  applicable,  it  must  also  contain  the  most
characteristic chemical formula. The abstract must be as
concise as the disclosure permits (preferably 50 to 150
words if it is in English or when translated into English).
National practice (see MPEP § 608.01(b)) provides a range of
50 - 250 words for the abstract. The PCT range of 50 - 150
is not absolute but publication problems could result when
the PCT limit is increased beyond the 150 word limit.
Maintaining the PCT upper limit is encouraged. As a rule of
thumb, it can be said that the volume of the text of the
abstract, including one of the figures from the drawings (if
any), should not exceed what can be accommodated on an A4
sheet of typewritten matter, 1 1/2 spaced. The abstract must
begin  on  a  new  sheet  following  the  claims  (PCT
Administrative Instruction Section 207). The other physical
requirements must correspond to those for the description.
The abstract must be so drafted that it can efficiently
serve as a  scanning tool for the purposes of searching in
the particular art. These and other requirements concerning

the abstract are spelled out in detail in Rule 8. Useful
guidance can be obtained from the "Guidelines for the
Preparation  of  Abstracts  Under  the  Patent  Cooperation
Treaty," published in the PCT Gazette (No. 5/1978). Those
Guidelines may be obtained, in English and French, from the
International Bureau.

 The abstract should be primarily related to what is new in
the art to which the invention pertains. Phrases should not
be used which are implicit, (for instance, "the invention
relates to ..."), and statements on the alleged merits or
value of the invention are not allowed.

 Where the receiving Office finds that the abstract is
missing, it invites the applicant to furnish it within a
time  limit  fixed  in  the  invitation.  The  international
application  is  considered  withdrawn  if  no  abstract  is
furnished to the receiving Office within the time limit
fixed. Where the receiving Office has not invited the
applicant  to  furnish  an  abstract,  the  International
Searching Authority establishes one. The same applies where
the abstract does not comply with the requirements outlined
in  the  preceding  paragraphs.  Where  the  abstract  is
established by the International Searching Authority, the
applicant may submit comments on it within 1 month from the
date of mailing of the international search report, (PCT
Rule 38.2(b)).

 SUMMARY OF ABSTRACT REQUIREMENTS

 Preferably 50 - 150 words. Should contain

  1.  Indication of field of invention.

  2.  Clear indication of the technical problem.

  3.  Gist of invention's solution of the problem.

  4.  Principal use or uses of the invention.

  5.  Reference numbers of the main technical features
placed between parentheses.

  6.  Where  applicable,  chemical  formula  which  best
characterizes the invention.

 Should not contain

  1.  Superfluous language.

  2.  Legal phraseology such as "said" and "means."

  3.  Statements  of  alleged  merit  or  speculative
application.

  4.  Prohibited items as defined in PCT Rule 9.

1827  Fees

 A complete list of Patent Cooperation Treaty fee amounts
which are to be paid to the United States Patent and
Trademark Office, for both the national and international
stages, can be found at the beginning of each weekly issue
of the Official Gazette of the United States Patent and
Trademark Office. Applicants are urged to refer to this list

before submitting any fees to the PTO.

1828  Priority Claim and Document

 An applicant who claims the priority of one or more earlier
national  or  international  applications  for  the  same
invention must indicate on the Request, at the time of
filing, the country in or for which it was filed, the date
of filing, and the application number. See PCT Article 8 and
Rule 4.10 for priority claim particulars and Rule 90 bis.3
for withdrawal of priority claims.

 Under the PCT procedure, the applicant may file the
certified copy of the earlier filed national application
together with the international application in the receiving
Office  for  transmittal  with  the  record  copy,  or
alternatively the certified copy may be submitted by the
applicant to the International Bureau or the receiving
Office not later than 16 months from the priority date or,
if the applicant has requested early processing in any
designated Office, not later than the time such processing
or examination is requested. The International Bureau will
normally furnish copies of the certified copy to the various
designated Offices so that the applicant will not normally
be required to submit certified copies to each designated
Office.

  For  use  of  the  priority  document  in  national  stage
applications  filed  under  35  U.S.C.  371,  see  MPEP  §
1893.03(c).

1830  International Application Transmittal Letter

 A PCT international application transmittal letter, Form
PTO - 1382, is available free of charge for applicants to
use when filing PCT international applications with the
United States Receiving Office. The form is intended to
simplify the filing of PCT international applications by
providing a one - page letter which covers the most common
requests and concerns of applicants. Specifically covered
are:

  (1)  Requests under 37 CFR 1.451 for preparation
and transmittal to the International Bureau of certified
copies of the U.S. national applications, the priority of
which is claimed in international application;

  (2)  Choice of Searching Authority to conduct the
international search. Applicants may choose either the U.S.
Patent and Trademark Office or the European Patent Office as
the International Searching Authority.

  (3)  Authorizations for any required additional
search fees requested by the United States International
Searching Authority to be charged to a Deposit Account
subject to oral confirmation of the authorization. It should
be noted that if the European Patent Office is chosen as the
Searching Authority, any supplemental search fees requested
by that Office are payable directly to the European Patent
Office.

  (4)  Indications  of  information  concerning
differences in disclosure, if any, between the international
application  and  related  applications  to  assist  in
determining any foreign transmittal licensing requirements

as well as for other purposes; and

  (5)  Requests for foreign transmittal license.

1832  License Request for Foreign Filing Under the PCT

 A license for foreign filing is not required to file an
international application in the United States Receiving
Office but may be required before the applicant or the U.S.
Receiving Office can forward a copy of the international
application to a foreign patent office, the International
Bureau or other foreign authority (35 U.S.C. 368, 37 CFR 5.1
and 5.11). A foreign filing license to permit transmittal to
a foreign office or international authority is not required
if the international application does not disclose subject
matter in addition to that disclosed in a prior U.S.
national application filed more than 6 months prior to the
filing of the international application (37 CFR 5.11(a)). In
all other instances (direct foreign filings outside the PCT
or filings in a foreign receiving Office), the applicant
should  petition  for  a  license  for  foreign  filing
(transmittal) (37 CFR 5.12) and if appropriate, identify any
additional subject matter in the international application
which was not in the earlier U.S. national application (37
CFR5.14(c)). This request and disclosure information may be
supplied on the PCT into national application transmittal
letter, Form PTO - 1382.

 If no petition or request for a foreign filing license is
included in the international application, and it is clear
that a license is required because of the designation of
foreign countries and the time at which the Record Copy must
be transmitted, it is current Office practice to construe
the filing of such an international application to include a
request for a foreign filing license. If the license can be
granted, it will be issued without further correspondence.
If no license can be issued, or further information is
required, applicant will be contacted. The automatic request
for a foreign filing license does not apply to the filing of
a foreign application outside the PCT.

  EFFECT OF SECRECY ORDER

  If  a  secrecy  order  is  applied  to  an  international
application, the application will not be forwarded to the
International Bureau as long as the secrecy order remains in
effect (PCT Article 27(8) and 35 U.S.C. 368). If the secrecy
order remains in effect, the international application will
be declared withdrawn (abandoned) because the Record Copy of
the international application was not received in time by
the International Bureau (37 CFR 5.3(d), PCT Article 12(3),
and PCT Rule 22.3). It is, however, possible to prevent
abandonment as to the United States of America if it has
been designated, by fulfilling the requirements of 35 U.S.C.
371(c).

1834  Correspondence [R - 3]

  PCT Rule 92 Correspondence

  92.1.  Need for Letter and for Signature

 (a)  Any paper submitted by the applicant in the course
of the international procedure provided for in the Treaty
and  these  Regulations,  other  than  the  international

application itself, shall, if not itself in the form of a
letter,  be  accompanied  by  a  letter  identifying  the
international application to which it relates. The letter
shall be signed by the applicant.

 (b)  If the requirements provided for in paragraph (a)
are not complied with, the applicant shall be informed as to
the non - compliance and invited to remedy the omission
within a time limit fixed in the invitation. The time limit
so fixed shall be reasonable in the circumstances; even
where the time limit so fixed expires later than the time
limit applying to the furnishing of the paper (or even if
the latter time limit has already expired), it shall not be
less than 10 days and not more than one month from the
mailing of the invitation. If the omission is remedied
within the time limit fixed in the invitation, the omission
shall be disregarded; otherwise, the applicant shall be
informed that the paper has been disregarded.

 (c)  Where  non  -  compliance  with  the  requirements
provided for in paragraph (a) has been overlooked and the
paper taken into account in the international procedure, the
non - compliance shall be disregarded.

  92.2.  Languages

 (a)  Subject to Rules 55.1 and 66.9 and to paragraph (b)
of this Rule, any letter or document submitted by the
applicant to the International Searching Authority or the
International Preliminary Examining Authority shall be in
the same language as the international application to which
it  relates.  However,  where  a  translation  of  the
international application has been transmitted under Rule
12.1(c) or furnished under Rule 55.2(a) or (c), the language
of such translation shall be used.

 (b)  Any letter from the applicant to the International
Searching  Authority  or  the  International  Preliminary
Examining Authority may be in a language other than that of
the international application, provided the said Authority
authorizes the use of such language.

 (c)  [Deleted]

 (d)  Any letter from the applicant to the International
Bureau shall be in English or French.

 (e)  Any letter or notification from the International
Bureau to the applicant or to any national Office shall be
in English or French.

  *****

  PCT Administrative Instruction Section 105 Identification
  of International Application With Two or More Applicants

 Where any international application indicates two or more
applicants, it shall be sufficient, for the purpose of
identifying that application, to indicate, in any Form or
correspondence relating to such application, the name of the
applicant first named in the request. The provisions of the
first sentence of this Section do not apply to the demand or
to a notice effecting later elections.

 NOTIFICATION UNDER PCT RULE 92.1(b)  OF DEFECTS WITH REGARD

 TO CORRESPONDENCE

  If  the  Office  finds  that  papers,  other  than  the
international application itself, are not accompanied by a
letter identifying the international application to which
they relate, or are accompanied by an unsigned letter, or
are furnished in the form of an unsigned letter, it notifies
the applicant and invites him to remedy the omission. The
Office disregards the said papers or letter if the omission
is  not  remedied  within  the  time  limit  fixed  in  the
invitation (PCT Rule 92.1(b)). If the omission has been
overlooked and the paper taken into account, the omission is
disregarded.

  CORRESPONDENCE ADDRESS

 Where there is a sole applicant without an agent in an
international application, correspondence will be sent to
the applicant at his indicated address; or, if he has
appointed one or more agents, to that agent or the first -
mentioned of those agents; or, if he has not appointed an
agent but has indicated a special address for notifications,
at that special address.

 Where there are two or more applicants who have appointed
one or more common agents, correspondence will be addressed
to that agent or the first - mentioned of those agents.
Where no common agent has been appointed, correspondence
will be addressed to the common representative (either the
appointed common representative or the applicant who is
considered to be the common representative (PCT Rule 90.2)
at the indicated address; or, if the common representative
has appointed one or more agents, to that agent or the first
-  mentioned  of  those  agents;  or,  if  the  common
representative has not appointed an agent but has indicated
a special address for notifications, at that address.

  **>FILING OF CORRESPONDENCE BY< MAIL

 The ** >"<Express Mail>"< procedure set forth at 37 CFR
1.10 applies to **>[a]ny correspondence received by< the
Patent and Trademark Office." Accordingly, papers filed with
the PTO in international applications will be accorded >by
the Patent and Trademark Office< the date of deposit with
the United States Postal Service >as shown on the "date -
in" on the "Express Mail" mailing label< as the date of
filing in the PTO if the provisions of 37 CFR 1.10 are
complied with. See MPEP § 513.

 **>In event there is a question regarding the date of
deposit, the Express Mail provisions of 37 CFR 1.10(c) - (e)
require, in addition to using the "Express Mail Post Office
to Addressee" service, an indication of the "Express Mail"
mailing label number on each paper or fee. In situations
wherein the correspondence includes several papers directed
to the same application (for example, Request, description,
claims,  abstract,  drawings,  and  other  papers)  the
correspondence may be submitted with a cover or transmittal
letter, which should itemize that papers. The cover or
transmittal letter must have the "Express Mail" mailing
label number thereon.<

 The certificate of mailing by first class mail procedure
set forth at 37 CFR 1.8 differs from the 37 CFR 1.10 Express
Mail procedure. See 37 CFR 1.8(a)(2)(i)(D) and (E). It is

important to understand that the 37 CFR 1.8 *>certificate of
mailing procedure< CANNOT be used for filing any papers
during the international stage if the date of deposit is
desired. If >the 37 CFR 1.8 certificate of mailing procedure
is< used, the paper and/or fee will be accorded the date of
receipt in the USPTO >unless the receipt date falls on a
Saturday, Sunday, or Federal holiday in which case the date
of receipt will be the next succeeding day which is not a
Saturday, Sunday, or Federal holiday (37 CFR 1.6(a)(3))<.
Accordingly, the certificate of mailing procedures of 37 CFR
1.8 are not available to have a submission during the
international  stage  considered  as  timely  filed  if  the
submission is not physically received at the PTO on or
before the due date.

1834.01  Use of Telegraph, Teleprinter, Facsimile Machine
[R - 3]

 PCT Rule 92.4 provides that a national Office may receive
documents by telegraph, teleprinter, or facsimile machine.
However, the United States Patent and Trademark Office has
not informed the International Bureau that it accepts such
submissions other than facsimile transmissions. Accordingly,
applicants may not currently file papers in international
applications with the United States Patent and Trademark
Office via telegraph or teleprinter.

 Generally, any paper may be filed by facsimile transmission
with certain exceptions which are identified in 37 CFR
1.6(d). It should be noted that a ** facsimile transmission
>of a document is not permitted and, if submitted,< will not
be accorded a date of receipt if *>the document< is:

  (1)  required by statute to be certified;

  (2)  a drawing submitted under 37 CFR 1.437;

  (3)  an international application for patent; or

  (4)  a copy of the international application and
the basic national fee necessary to enter the national
stage, as specified in 37 CFR 1.494(b) or 37 CFR 1.495(b).

 >Facsimile transmission may be used to submit substitute
sheets (other than drawings), extensions of time, power of
attorney, fee authorizations (other than the basic national
fee), confirmation of precautionary designations, Demands,
response  to  written  opinions,  oaths  or  declarations,
petitions, and translations in international applications.<

 A Certificate of Transmission may be used as provided in 37
CFR 1.8(a)(1) except in the instances specifically excluded
in 37 CFR 1.8(a)(2). Note particularly that the Certificate
of  Transmission  cannot  be  used  for  the  filing  of  an
international application for patent or correspondence in an
international application before the U.S. Receiving Office,
the U.S. International Searching Authority, or the U.S.
International Preliminary Examining Authority. Guidelines
for facsimile transmission are clearly set forth in 37 CFR
1.6(d) and should be read before transmitting by facsimile
machine.

 A signature on a document received via facsimile in a
permitted situation is acceptable as a proper signature. See
PCT Rule 92.4(b) and 37 CFR 1.4(d).

 The receipt date of a document transmitted via facsimile is
the date in the USPTO on which the transmission is completed
>, unless the receipt date is a Saturday, Sunday, or Federal
holiday in which case the date of receipt will be the next
succeeding day which is not a Saturday, Sunday, or Federal
holiday (37 CFR 1.6(a)(3))<. See 37 CFR 1.6(d). Where a
document is illegible or part of the document is not
received, the document will be treated as not received to
the extent that it is illegible or the transmission failed.
See PCT Rule 92.4(c).

1834.02  Irregularities in the Mail Service

 PCT Rule 82 Irregularities in the Mail Service

  82.1.  Delay or Loss in Mail

 (a)  Any interested party may offer evidence that he has
mailed the document or letter five days prior to the
expiration of the time limit. Except in cases where surface
mail normally arrives at its destination within two days of
mailing, or where no airmail service is available, such
evidence may be offered only if the mailing was by airmail.
In any case, evidence may be offered only if the mailing was
by mail registered by the postal authorities.

 (b)  If the mailing, in accordance with paragraph (a),
of a document or letter is proven to the satisfaction of the
national Office or intergovernmental organization which is
the addressee, delay in arrival shall be excused, or, if the
document or letter is lost in the mail, substitution for it
of  a  new  copy  shall  be  permitted,  provided  that  the
interested party proves to the satisfaction of the said
Office or organization that the document or letter offered
in substitution is identical with the document or letter
lost.

 (c)  In  the  cases  provided  for  in  paragraph  (b),
evidence of mailing within the prescribed time limit, and,
where the document or letter was lost, the substitute
document or letter as well as the evidence concerning its
identity with the document or letter lost shall be submitted
within one month after the date on which the interested
party noticed or with due diligence should have noticed the
delay or the loss, and in no case later than six months
after the expiration of the time limit applicable in the
given case.

 (d)  Any  national  Office  or  intergovernmental
organization which has notified the International Bureau
that it will do so shall, where a delivery service other
than the postal authorities is used to mail a document or
letter, apply the provisions of paragraphs (a) to (c) as if
the delivery service was a postal authority. In such a case,
the last sentence of paragraph (a) shall not apply but
evidence may be offered only if details of the mailing were
recorded by the delivery service at the time of mailing. The
notification may contain an indication that it applies only
to mailings using specified delivery services or delivery
services which satisfy specified criteria. The International
Bureau shall publish the information so notified in the
Gazette.

 (e)  Any  national  Office  or  intergovernmental

organization may proceed under paragraph (d):

 (i)  even if, where applicable, the delivery service
used was not one of those specified, or did not satisfy the
criteria  specified,  in  the  relevant  notification  under
paragraph (d), or

 (ii)  even if that Office or organization has not sent to
the International Bureau a notification under paragraph (d).

  82.2.  Interruption in the Mail Service

 (a)  Any interested party may offer evidence that on any
of the 10 days preceding the day of expiration of the time
limit the postal service was interrupted on account of war,
revolution, civil disorder, strike, natural calamity, or
other like reason, in the locality where the interested
party resides or has his place of business or is staying.

 (b)  If  such  circumstances  are  proven  to  the
satisfaction of the national Office or intergovernmental
organization which is the addressee, delay in arrival shall
be excused, provided that the interested party proves to the
satisfaction of the said Office or organization that he
effected the mailing within five days after the mail service
was resumed. The provisions of Rule 82.1(c) shall apply
mutatis mutandis.

 Delay or Loss in Mail . Delay or loss in the mail shall be
excused when it is proven to the satisfaction of the
receiving Office that the concerned letter or document was
mailed at least five days before the expiration of the time
limit. The mailing must have been by registered air mail or,
where surface mail would normally arrive at the destination
concerned within two days of mailing, by registered surface
mail (PCT Rule 82.1(a) to (c)). PCT Rule 82 contains
detailed provisions governing the situation where a letter
arrives late or gets lost due to irregularities in the mail
service,  for  example,  because  the  mail  service  was
interrupted due to a strike. The provisions operate to
excuse failure to meet a time limit for filing a document
for up to six months after the expiration of the time limit
concerned, provided that the document was mailed at least
five days before the expiration of the time limit. In order
to take advantage of these provisions, the mailing must have
been by registered airmail or, where surface mail would
normally arrive at the destination concerned within two days
of mailing, by registered surface mail. Evidence is required
to satisfy the Office, and a substitute document must be
filed promptly-see PCT Rule 82.1(b) and (c) for details.

 Interruption in the Mail Service. The provisions of PCT
Rule 82.1(c) apply mutatis mutandis for interruptions in the
mail service caused by war, revolution, civil disorder,
strike, natural calamity or other like reasons (PCT Rule
82.2).

 Special provisions also apply to mail interruptions caused
by war, revolution, civil disorder, strike, natural calamity
or other like reasons-see PCT Rule 82.2 for details.

 See PCT Rule 80.5 for guidance on periods which expire on a
non - working day.

1836  Rectification of Obvious Errors

  PCT Rule 91 Obvious Errors in Documents

  91.1.  Rectification

  quater
 (a)  Subject to paragraphs (b) to (g  ) , obvious
errors in the international application or other papers
submitted by the applicant may be rectified.

 (b)  Errors which are due to the fact that something
other than what was obviously intended was written in the
international application or other paper shall be regarded
as obvious errors. The rectification itself shall be obvious
in the sense that anyone would immediately realize that
nothing else could have been intended than what is offered
as rectification.

 (c)  Omissions of entire elements or sheets of the
international application, even if clearly resulting from
inattention, at the stage, for example, of copying or
assembling sheets, shall not be rectifiable.

 (d)  Rectification may be made on the request of the
applicant. The authority having discovered what appears to
be an obvious error may invite the applicant to present a
request for rectification as provided in paragraphs (e) to
  quater
(g  ). Rule 26.4(a) shall apply mutatis mutandis to the
manner in which rectifications shall be requested.

 (e)  No rectification shall be made except with the
express authorization:

 (i)  of the receiving Office if the error is in the
request,

 (ii)  of the International Searching Authority if the
error is in any part of the international application other
than  the  request  or  in  any  paper  submitted  to  that
Authority,

 (iii)  of  the  International  Preliminary  Examining
Authority if the error is in any part of the international
application other than the request or in any paper submitted
to that Authority, and

 (iv)  of the International Bureau if the error is in any
paper,  other  than  the  international  application  or
amendments or corrections to that application, submitted to
the International Bureau.

 (f)  Any authority which authorizes or refuses any
rectification shall promptly notify the applicant of the
authorization or refusal and, in the case of refusal, of the
reasons  therefor.  The  authority  which  authorizes  a
rectification shall promptly notify the International Bureau
accordingly. Where the authorization of the rectification
was refused, the International Bureau shall, upon request
made by the applicant prior to the time relevant under
  bis  ter  quater
paragraph (g  ) , (g  ) or (g  ) and subject to the
payment of a special fee whose amount shall be fixed in the
Administrative  Instructions,  publish  the  request  for
rectification together with the international application. A
copy of the request for rectification shall be included in
the communication under Article 20 where a copy of the

pamphlet is not used for that communication or where the
international application is not published by virtue of
Article 64(3).

 (g)  The authorization for rectification referred to in
  bis  ter
paragraph (e) shall, subject to paragraphs (g  ) , (g  )
  quater
and (g  ) , be effective:

 (i)  where it is given by the receiving Office or by the
International Searching Authority, if its notification to
the International Bureau reaches that Bureau before the
expiration of 17 months from the priority date;

 (ii)  where it is given by the International Preliminary
Examining Authority, if it is given before the establishment
of the international preliminary examination report;

 (iii)  where it is given by the International Bureau, if
it is given before the expiration of 17 months from the
priority date.

  bis
 (g  )  If  the  notification  made  under  paragraph
(g)(i)  reaches  the  International  Bureau,  or  if  the
rectification made under paragraph (g)(iii) is authorized by
the International Bureau, after the expiration of 17 months
from the priority date but before the technical preparations
for  international  publication  have  been  completed,  the
authorization shall be effective and the rectification shall
be incorporated in the said publication.

  ter
 (g  )  Where  the  applicant  has  asked  the
International  Bureau  to  publish  his  international
application before the expiration of 18 months from the
priority date, any notification made under paragraph (g)(i)
must reach, and any rectification made under paragraph
(g)(iii) must be authorized by, the International Bureau, in
order for the authorization to be effective, not later than
at the time of the completion of the technical preparations
for international publication.

  quater
  (g  )  Where  the  international  application  is  not
published by virtue of Article 64(3), any notification made
under paragraph (g)(i) must reach, and any rectification
made under paragraph (g)(iii) must be authorized by, the
International Bureau, in order for the authorization to be
effective, not later than at the time of the communication
of the international application under Article 20.

 Obvious errors in the international application or other
papers submitted by the applicant may generally be rectified
under PCT Rule 91, if the rectification is authorized, as
required,  within  the  applicable  time  limit.  Any  such
rectification is free of charge. The omission of entire
sheets of the description cannot be rectified, even if
resulting from inattention at the stage of copying or
assembling sheets.

  Applicants  often  attempt  to  rely  upon  the  priority
application to establish a basis for obvious error. The
priority document (application) cannot be used to support
obvious error corrections. The rectification is obvious only
in the sense that anyone would immediately realize that
nothing else could have been intended than what is offered

as rectification. For example, a misspelled word could be
considered an obvious error subject to rectification. A
missing chemical formula or missing line of text would not
be considered obvious error subject to rectification.

 Rectifications must be authorized:

  (i) if  the  error  is  in  the  request  by  the
Receiving Office;

  (ii)  if the error is in the description, the
claims, the drawings or the abstract by the International
Searching Authority, or by the International Preliminary
Examining Authority where the international application is
pending before the latter Authority;

  (iii)  if the error is in any paper other than the
international application or amendments or corrections to it
by the International Bureau.

 The request for rectification must be addressed to the
authority competent to authorize the rectification. It must
be filed in time for the rectification to be authorized and
for  notification  of  the  authorization  to  reach  the
International Bureau before the expiration of the applicable
time limit, namely:

  (i) where  the  authorization  is  given  by  the
Receiving Office or the International Searching Authority
its notification must reach the International Bureau before
the expiration of 17 months from the priority date (or
later, before the technical preparations for international
publication have been completed);

  (ii)  where  the  authorization  is  given  by  the
International Preliminary Examining Authority it must be
given  before  the  establishment  of  the  international
preliminary examination report;

  (iii)  where  the  authorization  is  given  by  the
International Bureau it must be given before the expiration
of 17 months from the priority date (or later, before the
technical preparations for international publication have
been completed).

 The patent examiner, in his capacity as an officer of
either  the  International  Searching  Authority  or
International Preliminary Examining Authority, informs the
applicant of the authorization or refusal to authorize the
rectification of obvious errors. The International Searching
Authority informs the applicant of the decision by use of
Form  PCT/ISA/217,  while  the  International  Preliminary
Examining Authority informs the applicant of the decision by
use of Form PCT/IPEA/412.

 Where the examiner discovers what might be considered an
obvious error, an invitation to request rectification (Form
PCT/ISA/216 or PCT/IPEA/411) should be mailed to applicant.

1840  The International Searching Authority [R - 3]

 35 U.S.C. 362.  International Searching Authority and
International Preliminary Examining Authority.

 (a)  The Patent and Trademark Office may act as an

International  Searching  Authority  and  International
Preliminary  Examining  Authority  with  respect  to
international applications in accordance with the terms and
conditions of an agreement which may be concluded with the
International Bureau, and may discharge all duties required
of such Authorities, including the collection of handling
fees and their transmittal to the International Bureau.

 (b)  The handling fee, preliminary examination fee, and
any  additional  fees  due  for  international  preliminary
examination shall be paid within such time as may be fixed
by the Commissioner.

 37 CFR 1.413.  The United States International Searching
Authority.

 (a)  Pursuant to appointment by the Assembly, the United
States  Patent  and  Trademark  Office  will  act  as  an
International  Searching  Authority  for  international
applications filed in the United States Receiving Office and
in other Receiving Offices as may be agreed upon by the
Commissioner,  in  accordance  with  agreement  between  the
Patent and Trademark Office and the International Bureau
(PCT Art. 16(3)(b)).

 (b)  The Patent and Trademark Office, when acting as an
International Searching Authority, will be identified by the
full title "United States International Searching Authority"
or by the abbreviation "ISA/US."

 (c)  The major functions of the International Searching
Authority include:

 (1)  Approving or establishing the title and abstract;

 (2)  Considering the matter of unity of invention;

 (3)  Conducting international and international - type
searches and preparing international and international -
type search reports (PCT Art. 15, 17 and 18, and PCT Rules
25, 33 to 45 and 47); and

 (4)  Transmitting the international search report to the
applicant and the International Bureau.

 The United States Patent and Trademark Office agreed to and
was  appointed  by  the  PCT  Assembly,  to  act  as  an
International Searching Authority. As such an authority, a
primary function is to establish documentary search reports
on prior art with respect to inventions which are the
subject of applications. See PCT Article 16.

 Pursuant to an agreement concluded with the International
Bureau, the USPTO, as an International Searching Authority,
agreed  to  conduct  international  searches  and  prepare
international search reports, for, in addition to the United
States of America, Mexico, Trinidad and Tobago, Brazil*>,<
Barbados  >,Israel,  and  New  Zealand<.  The  agreement
stipulated the English language and specified that the
subject matter to be searched is that which is searched or
examined in United States national applications.

  TRANSMITTAL OF THE SEARCH COPY TO THE INTERNATIONAL
  SEARCHING AUTHORITY

 The "search copy" is transmitted by the Receiving Office to
the International Searching Authority (PCT Article 12(1)),
the details of the transmittal are provided in PCT Rule 23.

  THE MAIN PROCEDURAL STEPS IN THE INTERNATIONAL SEARCHING
  AUTHORITY

  The  main  procedural  steps  that  any  international
application goes through in the International Searching
Authority are the following:

  (i)  the making of the international search (PCT
Article 15), and

  (ii)  the preparing of the international search
report (PCT Article 18 and PCT Rule 43).

  COMPETENT INTERNATIONAL SEARCHING AUTHORITY

 In respect of international applications filed with the
U.S.  Receiving  Office,  the  United  States  International
Searching Authority, which is the Examining Corps of the
United States Patent and Trademark Office, and the European
Patent Office are competent to carry out the international
search (PCT Article 16, PCT Rules 35 and 36, 35 U.S.C. 362
and 37 CFR 1.413).

 The United States Patent and Trademark Office has informed
the International Bureau that in addition to the United
States Patent and Trademark Office, the European Patent
Office is competent as an International Searching Authority
for searching all kinds of international applications filed
in the United States Receiving Office on and after October.
1, 1982. (PCT Article 16(2) and PCT Rule 35.2(a)(i).

  MATTERS TO BE CONSIDERED WHEN CHOOSING AN INTERNATIONAL
  SEARCHING AUTHORITY

  Choosing  The  European  Patent  Office  (EPO)  as  an
International Searching Authority could be advantageous to
United  States  applicants  who  designate  countries  for
European Regional patent protection in PCT International
applications for the following reasons:

  (1)  Claims may be amended according to EPO search
results before entering the European Office as a designated
Office.

  (2)  The EPO search fee need not be paid upon
entering the European Office as a designated Office.

  (3)  The EPO search results may be available for
use in a U.S. priority application.

  (4)  The EPO international search may be obtained
without the need for a European professional representative.

  (5) The  European  Patent  Office  search  could
provide the U.S. applicant with the benefit of a European
art search (which may be different from applicant's own or
the USPTO's search) before it is necessary to enter the
European Patent Office or other designated Offices.

 Some of the disadvantages that may occur due to the
European Patent Office making the international search are

the following:

  (1)  Additional mailing time to and from the EPO
Searching Authority may shorten the time for applicants to
respond to various invitations from the EPO such as for
comments on abstracts and payments of additional search fees
as well as for PCT Article 19 amendments to the claims after
issuance of the International Search Report.

  (2)  There may be more difficulty in solving any
procedural problems between the applicant and the EPO than
with  the  USPTO  due  to  physical  distance  and  time
differences.

 The PCT Applicant's Guide provides helpful information for
communications with the European Patent Office.

1840.01  The European Patent Office as an International
Searching Authority

 Since October 1, 1982, the European Patent Office (EPO) has
been available as a Searching Authority for PCT applications
filed in the United States Receiving Office. The choice of
Searching Authority, either the EPO or the United States
Patent and Trademark Office, must be made by the applicant
on filing the international application. The choice of
Searching Authority may also be indicated on Form PTO - 1382
Transmittal Letter.

 It should be noted that the European Patent Office will not
search,  by  virtue  of  PCT  Article  17(2)(a)(i),  any
international application to the extent that it considers
that the international application relates to subject matter
set forth in PCT Rule 39.1. Furthermore, the European Patent
Office is not equipped to search computer programs.

 The international search fee for the European Patent Office
must be paid to the United States Patent and Trademark
Office (USPTO) as a Receiving Office at the time of filing
the  international  application.  The  search  fee  for  the
European Patent Office is announced weekly in the Official
Gazette in United States dollars. The search fee will change
as costs and exchange rates require. If exchange rates
fluctuate significantly, the fee may change frequently.
Notice of changes will be published in the Official Gazette
shortly before the effective date of any change.

  If  the  European  Patent  Office  as  the  International
Searching  Authority  considers  that  the  international
application does not comply with the requirement of unity of
invention as set forth in PCT Rule 13, the European Patent
Office will invite applicants to timely pay directly to it
an  additional  search  fee  in  Deutsche  Marks  for  each
additional invention.

 A revised fee calculation sheet (Form PCT/RO/101, Annex)
having  appropriate  spaces  to  indicate  the  choice  of
International Searching Authority has been developed so that
applicants  may  indicate  which  International  Searching
Authority is to make the search.

1842  Chapter I Basic Flow

 **  Double Click here to see the image  **

1843  The International Search

 PCT Article 17 Procedure before the International Searching
  Authority

 (1)  Procedure  before  the  International  Searching
Authority shall be governed by the provisions of this
Treaty,  the  Regulations,  and  the  agreement  which  the
International Bureau shall conclude, subject to this Treaty
and the Regulations, with the said Authority.

 (2)(a)  If  the  International  Searching  Authority
considers:

 (i)  that the international application relates to a
subject matter which the International Searching Authority
is not required, under the Regulations, to search, and in
the particular case decides not to search, or

 (ii)  that the description, the claims, or the drawings,
fail to comply with the prescribed requirements to such an
extent that a meaningful search could not be carried out,
the said Authority shall so declare and shall notify the
applicant and the International Bureau that no international
search report will be established.

 (b)  If  any  of  the  situations  referred  to  in
subparagraph (a) is found to exist in connection with
certain claims only, the international search report shall
so indicate in respect of such claims, whereas, for the
other claims, the said report shall be established as
provided in Article 18.

 (3)(a) If the International Searching Authority considers
that the international application does not comply with the
requirement of unity of invention as set forth in the
Regulations, it shall invite the applicant to pay additional
fees. The International Searching Authority shall establish
the international search report on those parts of the
international application which relate to the invention
first mentioned in the claims (main invention) and, provided
the required additional fees have been paid within the
prescribed time limit, on those parts of the international
application which relate to inventions in respect of which
the said fees were paid.

 (b)  The national law of any designated State may
provide that, where the national Office of the State finds
the invitation, referred to in subparagraph (a), of the
International Searching Authority justified and where the
applicant has not paid all additional fees, those parts of
the international application which consequently have not
been searched shall, as far as effects in the State are
concerned, be considered withdrawn unless a special fee is
paid by the applicant to the national Office of that State.

  PCT Rule 33 Relevant Prior Art for the International
  Search

  33.1.  Relevant Prior Art for the International Search

 (a)  For the purposes of Article 15(2), relevant prior
art  shall  consist  of  everything  which  has  been  made
available to the public anywhere in the world by means of

written  disclosure  (including  drawings  and  other
illustrations) and which is capable of being of assistance
in determining that the claimed invention is or is not new
and that it does or does not involve an inventive step
(i.e., that it is or is not obvious), provided that the
making  available  to  the  public  occurred  prior  to  the
international filing date.

 (b)  When any written disclosure refers to an oral
disclosure, use, exhibition, or other means whereby the
contents of the written disclosure were made available to
the public, and such making available to the public occurred
on a date prior to the international filing date, the
international search report shall separately mention that
fact and the date on which it occurred if the making
available to the public of the written disclosure occurred
on a date which is the same as, or later than, the
international filing date.

 (c)  Any published application or any patent whose
publication date is the same as, or later than, but whose
filing date, or, where applicable, claimed priority date, is
earlier  than  the  international  filing  date  of  the
international  application  searched,  and  which  would
constitute relevant prior art for the purposes of Article
15(2) had it been published prior to the international
filing  date,  shall  be  specially  mentioned  in  the
international search report.

  33.2.  Fields to Be Covered by the International Search

 (a)  The international search shall cover all those
technical fields, and shall be carried out on the basis of
all those search files, which may contain material pertinent
to the invention.

 (b)  Consequently, not only shall the art in which the
invention is classifiable be searched but also analogous
arts regardless of where classified.

 (c)  The question what arts are, in any given case, to
be regarded as analogous shall be considered in the light of
what appears to be the necessary essential function or use
of  the  invention  and  not  only  the  specific  functions
expressly indicated in the international application.

 (d)  The international search shall embrace all subject
matter that is generally recognized as equivalent to the
subject matter of the claimed invention for all or certain
of  its  features,  even  though,  in  its  specifics,  the
invention as described in the international application is
different.

 33.3. Orientation of the International Search

 (a)  International search shall be made on the basis of
the claims, with due regard to the description and the
drawings (if any) and with particular emphasis on the
inventive concept towards which the claims are directed.

 (b)  In  so  far  as  possible  and  reasonable,  the
international search shall cover the entire subject matter
to which the claims are directed or to which they might
reasonably be expected to be directed after they have been
amended.

  PCT Rule 39 Subject Matter under Article 17(2)(a)(i)

 39.1.  Definition

 No International Searching Authority shall be required to
search an international application if, and to the extent to
which, its subject matter is any of the following:

 (i)  scientific and mathematical theories,

 (ii)  plant or animal varieties or essentially biological
processes for the production of plants and animals, other
than microbiological processes and the products of such
processes,

 (iii)  schemes,  rules  or  methods  of  doing  business,
performing purely mental acts or playing games,

 (iv)  methods for treatment of the human or animal body
by surgery or therapy, as well as diagnostic methods,

 (v)  mere presentations of information,

 (vi)  computer  programs  to  the  extent  that  the
International Searching Authority is not equipped to search
prior art concerning such programs.

 PCT Article 15 describes the objective of the international
search, i.e., to uncover relevant prior art, and also
describes the international - type search. It should be
noted generally that an international - type search is
performed on all U.S. national applications filed after June
1, 1978.

 There are several benefits to applicants who use the PCT.
One of the three most commonly mentioned benefits is the
international search (and consequently the international
search report). The others are the time delay gained before
having to enter the national phase and the monetary savings
since filing and translation fees are also deferred or
indeed, may not be necessary depending upon the search
results.  The  international  search  gives  applicants  the
benefit of knowing the status of the prior art with respect
to their invention before time for entry into the national
stage. This affords applicants the time to make economic
decisions whether to perfect their national stage filings.

 The objective of the international search is to discover
relevant prior art (PCT Article 15(2)). "Prior art" consists
of everything which has been made available to the public
anywhere  in  the  world  by  means  of  written  disclosure
(including drawings and other illustrations); it is relevant
in respect of the international application if it is capable
of being of assistance in determining that the claimed
invention is or is not new and that the claimed invention
does or does not involve an inventive step (i .e., that it
is or is not obvious), and if the making available to the
public occurred prior to the international filing date. For
further details, see PCT Rule 33. The international search
is made on the basis of the claims, with due regard to the
description and the drawings (if any) contained in the
international application (PCT Article 15(3)). Categories of
relevant prior art as described in PCT Rule 33.1 are
indicated in the search report under the section "Documents

Considered To Be Relevant." The various letter designations
are defined on the search report form (see PCT/ISA/210).

 It is pointed out, for example, that:

  (1)  a category X reference defeats novelty or
defeats inventive step when the reference is considered
alone;

  (2)  a category Y reference is said to defeat or
refute inventive step when combined with one or more other
such references - the combination being obvious to a person
skilled in the art;

  (3)  a category A reference is one showing the
general state of the art but would not be considered to be
of particular relevance;

  (4)  a category E reference is an earlier document
which is published on or after the international filing
date;

  (5)  a category P reference is a document published
prior to the international filing date but later than the
claimed  priority  date  (commonly  called  an  intervening
reference).

 These are the most commonly used categories of references.

 The examiner should not view these categories strictly in
the sense that they have a direct comparison to U.S.
application of prior art references, for example, a category
X reference defeats novelty and in that sense, it is closely
analogous to U.S. consideration of 35 U.S.C. 102 prior art.
However, a category X reference can also defeat inventive
step which is analogous to U.S. consideration of 35 U.S.C.
103 prior art.

 DOCUMENTS SEARCHED BY THE INTERNATIONAL SEARCHING AUTHORITY

 The International Searching Authority must endeavor to
discover as much of the relevant prior art as its facilities
permit (PCT Article 15(4)), and, in any case, must consult
the so - called "minimum documentation" (PCT Rule 34).

  CERTAIN SUBJECT MATTER NEED NOT BE SEARCHED

 No International Searching Authority is required to perform
an international search where the international application
relates to any of the following subject matters:

  (i)  scientific and mathematical theories,

  (ii)  plant  or  animal  varieties  or  essentially
biological  processes  for  the  production  of  plants  and
animals,  other  than  microbiological  processes  and  the
products of such processes,

  (iii)  schemes, rules or methods of doing business,
performing purely mental acts or playing games,

  (iv)  methods for treatment of the human or animal
body by surgery or therapy, as well as diagnostic methods,

  (v)  mere presentation of information, and

  (vi)  computer programs to the extent that it, the
said Authority is not equipped to search prior art (PCT
Article 17(2)(a)(i) and PCT Rule 39).

 The applicant considering the filing of an international
application may be well advised not to file one if the
subject matter of the application falls into one of the
above mentioned areas. If he or she still does file, the
International Searching Authority may declare that it will
not establish an international search report. It is to be
noted, nevertheless, that the lack of the international
search report in such case will not have, in itself, any
influence on the validity of the international application
and the latter's processing will continue, including its
communication to the designated Offices.

 The USPTO has declared that it will search and examine, in
international applications, all subject matter searched and
examined in U.S. national applications.

  NO SEARCH REQUIRED IF CLAIMS ARE UNCLEAR

 If the International Searching Authority considers that the
description, the claims, or the drawings fail to comply with
the  prescribed  requirements  to  such  an  extent  that  a
meaningful search could not be carried out, it may declare
that it will not establish a search report (PCT Article
17(2)(a) (ii) and (b)). Such declaration may also be made in
respect of some of the claims only. The lack of the
international search report will not, in itself, have any
influence on the validity of the international application
and the latter's processing will continue, including its
communication to the designated Offices. Where only some of
the claims are found to be unsearchable, the International
Searching Authority will not search them, but will search
the rest of the international application. Any unsearched
claims will be indicated in the Search Report.

1844  The International Search Report [R - 1]

 PCT Article 18 The International Search Report

 (1)  The  international  search  report  shall  be
established within the prescribed time limit and in the
prescribed form.

 (2)  The international search report shall, as soon as
it has been established, be transmitted by the International
Searching Authority to the applicant and the International
Bureau.

 (3)  The international search report or the declaration
referred to in Article 17(2)(a) shall be translated as
provided in the Regulations. The translations shall be
prepared by or under the responsibility of the International
Bureau.

 The results of the international search will be recorded in
the international search report (Form PCT/ISA/210), which is
transmitted with Form PCT/ISA/220 to the applicant and with
Form PCT/ISA/219 to the International Bureau. The search
report will be published by the International Bureau and
will serve as a basis for examination of the international
application by the designated Offices and the International

Preliminary Examination Authority.

 The time limit for establishing the international search
report or the declaration under Article 17(2)(a) that no
search report will be established is 3 months from receipt
of the search copy by the searching authority or 9 months
from the priority date, whichever time limit expires later.
To ensure timeliness, Office policy is to set a shorter
period  for  the  search  by  the  examiner  so  that  any
corrections to the report can be made timely and also to
allow for review and mailing to the International Bureau.
The  Office  strives  to  get  all  search  reports  to  the
International Bureau by 16 months from the priority date or,
where  there  is  no  priority  date,  9  months  from  the
international filing date. See PCT Rule 42.1.

 The search report should not contain any expressions of
opinion, reasoning, argument or explanation as to any cited
prior art. Any such comments would be inappropriate and
should be used only if preliminary examination is or becomes
a part of the international proceeding. The search report is
only for the purpose of identifying prior art and not for
commenting thereupon.

  The  printed  international  search  report  form  (Form
PCT/ISA/210) to be transmitted to the applicant and to the
International Bureau contains two main sheets ("first sheet"
and "second sheet") to be used for all searches. These two
main  sheets  are  intended  for  recording  the  important
features of the search such as the fields searched and for
citing  documents  revealed  by  the  search.  The  printed
international search report form also contains four optional
continuation sheets for use where necessary. There are two
continuation sheets for each of the "first sheet" and the
"second  sheet":  "continuation  of  first  sheet  (1)"  and
"continuation of first sheet (2)", and "continuation of
second sheet" and "patent family annex", respectively. The
patent family annex sheet is not currently used since patent
family information is not readily available to the examiner.
The "continuation of first sheet (1)" is to be used only
where an indication is made on the first sheet that claims
were found unsearchable (item 1) and/or unity of invention
is lacking (item 2). The relevant indications must then be
made on that continuation sheet. The "continuation of first
sheet (2)" is to contain the text of the abstract where an
abstract or an amended abstract has been established by the
International Searching Authority (item 5) and an indication
to that effect is made on the first sheet. The "continuation
of second sheet" is to be used where the space on the second
sheet is insufficient for the citation of documents. Lastly,
the "extra sheet" may be used whenever additional space is
required to complete information from the other sheets.

 It is to be noted that only the "second sheet", the
"continuation  of  second  sheet"  (if  any)  and  the
"continuation of first sheet (1)" (if any), will be the
subject of international publication, as the "first sheet"
and the "continuation of first sheet (2)" (if any) contain
only information which will already appear on the front page
of the pamphlet.

  The  international  search  report  must  list  the
classification identification of the fields searched using
the IPC.

 Where the international search report is entirely or partly
based on a previous search made for an application relating
to a similar subject, the relevant search files consulted
for this previous search must also be identified in the
report  as  having  been  consulted  for  the  international
application in question.

  Restriction of the Subject of the International Search

 The report must indicate whether the search was restricted
or not for any of the reasons indicated below.

 If any such restrictions were applied, the claims in
respect of which a search has not been carried out must be
identified and the reasons of this should be indicated.

 The three categories where such restrictions may arise are:

  (a)  lack of unity of invention;

  (b)  claims drawn to subject matter excluded from
the search;

  (c)  claims in respect of which a meaningful search
cannot be carried out.

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  Authentication and Dates

 The identification of the International Searching Authority
which established the international search report and the
date on which the report was drawn up should be indicated in
the search report. This date should be that of the drafting
of the report by the search examiner who carried out the
search. In addition to the date of actual completion of the
international search, the international search report shall
also indicate the date on which it was mailed to the
applicant, which is important for the computation of the
time limit for filing amendments to the claims under Article
19. See PCT Rules 43.1 and 43.2.

 The international search report shall indicate the name of
an  authorized  officer  of  the  International  Searching
Authority which means the person who actually performed the
search work and prepared the search report. See PCT Rule
43.8. Note that the name is required but not the signature.

  CONTENTS OF THE INTERNATIONAL SEARCH REPORT

 The international search report (PCT Rule 43) contains,
among  other  things,  the  citations  of  the  documents
considered to be relevant (PCT Rule 43.5 and Administrative
Instruction Section 503), the classification of the subject
matter of the invention (PCT Rule 43.3 and Administrative

Instruction Section 504) and an indication of the fields
searched (PCT Rule 43.6). Citations of particular relevance
must  be  specially  indicated  (Administrative  Instruction
Section 505); citations of certain specific categories of
documents are also indicated (Administrative Instruction
Section 507); citations which are not relevant to all the
claims must be cited in relation to the claim or claims to
which they are relevant (Administrative Instruction Section
508); if only certain passages of the cited document are
particularly relevant, they must be identified, for example,
by indicating the page, the column or the lines, where the
passage appears.

1844.01  Time for the International Search Report

 Publication of the international application occurs at 18
months from the earliest priority date or, where there is no
priority date, 18 months from the international application
filing date. The Office goal is to have the search report
mailed in sufficient time to reach the International Bureau
by the end of 16 months from the priority date or 9 months
from the filing date if no priority claim is made. This is
necessary since the technical preparations for publication
are completed by 17.5 months from the earliest priority
date. In view of the treaty mandated publication and the
time needed for technical preparation, the Office sets time
periods for completion of the search report which will
ensure sufficient time to complete internal processing and
review  and  achieve  receipt  of  search  report  at  the
International Bureau by the 16th month from the priority
date. See PCT Rule 42.1 for time limit for the search.

 Thus, as a matter of practice, each examining Group tends
to set its internal time period for completion of the search
report to meet the time limits set by the International
Division. The International Division sets its time for
completion to ensure adequate time for review, corrections
(where necessary) and mailing.

 The date of transmittal of the search report becomes
critical for applicants since it starts the 2 month period
for submission of amendments to the claims under Article 19.
See PCT Rule 46.1.

 The Patent Cooperation Treaty is extremely date sensitive
and for that reason, examiners are encouraged to complete
the international search and prepare the search report
promptly after receipt. Monitoring and tracking procedures
have been devised to minimize the risk of late search
reports and/or date transmission thereof.

1846  Sections of the Articles, Regulations, and
Administrative Instructions Under the PCT Relevant to the
International Search

 Articles of the Treaty, Articles 15 - 20 (Annex T).

 Regulations under the Treaty, Rules 33 - 47 (Annex T).

 Administrative Instruction Sections 501 - 515

 (Annex AI).

1847  Refund of International Search Fee

 37 CFR 1.446.  Refund of international application
filing and processing fees.

 (a)  Money paid for international application fees,
where paid by actual mistake or in excess, such as a payment
not required by law or Treaty and its Regulations, will be
refunded.

 (b)  [Reserved]

 (c)  Refund of the supplemental search fees will be made
if  such  refund  is  determined  to  be  warranted  by  the
Commissioner or the Commissioner's designee acting under PCT
Rule 40.2(c).

 (d)  The international and search fees will be refunded
if no inter national filing date is accorded or if the
application is withdrawn before transmittal of the record
copy to the International Bureau (PCT Rules 15.6 and 16.2).
The search fee will be refunded if the application is
withdrawn before transmittal of the search copy to the
International Searching Authority. The transmittal fee will
not be refunded.

 (e)  The handling fee ( § 1.482(b)) will be refunded
(PCT Rule 57.6) only if:

 (1)  The Demand is withdrawn before the Demand has been
sent by the International Preliminary Examining Authority to
the International Bureau, or

 (2)  The Demand is considered not to have been submitted
(PCT Rule 54.4(a)).

 Refund of the supplemental search fee will be made if the
applicant is successful in a protest (filed pursuant to 37
CFR 1.477) to a holding of lack of unity of invention. The
supplemental search fee must be paid and be accompanied by
(1)  a  protest  and  (2)  a  request  for  refund  of  the
supplemental search fee.

 The search fee will be refunded if no international filing
date is accorded or if the application is withdrawn before
the  search  copy  is  transmitted  to  the  International
Searching  Authority.  The  transmittal  fee  will  not  be
refunded.

 Any request for refund of the search fee made after the
search  copy  has  been  transmitted  to  the  International
Searching Authority must be directed to the International
Searching Authority and not to the Receiving Office. This is
clearly necessary where applicant has chosen the European
Patent Office as the search authority.

1848  Sequence Listings [R - 1]

  PCT Administrative Instructions Section 513 Sequence
  Listings

 (a)  Where the International Searching Authority finds
that an international application contains a disclosure of a
nucleotide and/or amino acid sequence but the international
application does not contain a listing of that sequence,
that Authority may invite the applicant to furnish it with a
sequence listing which is in compliance with Section 208.

 (b)  Where  a  sequence  listing  has  been  furnished
separately  from  the  international  application  to  the
International Searching Authority or transcribed by that
Authority,  the  international  search  report  shall  so
indicate.

 **

 >  (c) Where a meaningful international search cannot
be carried out because a sequence listing is not available
to the International Searching Authority in the required
form, that Authority shall so state in the international
search report.

  (d) The International Searching Authority shall indelibly
mark, in the upper right - hand corner of the first sheet,
and preferably of all sheets, of any sequence listing in
printed  form  not  forming  part  of  the  international
application,  the  words  "SEPARATELY  FURNISHED  SEQUENCE
LISTING."<

 Where an international application contains disclosure of a
nucleotide and/or amino acid sequence, the description must
contain a listing of the sequence complying with WIPO
Standard ST. 23 (Recommendation for the Presentation of
Nucleotide and Amino Acid Sequences in Patent Applications
and in Published Patent Documents). If the International
Searching Authority finds that an international application
contains such a disclosure but that the description does not
include such a listing or that the listing included does not
comply  with  that  Standard,  the  International  Searching
Authority may invite the applicant to furnish a listing
complying with that Standard.

 If the International Searching Authority finds that a
sequence listing is not in a machine readable form provided
for in the Administrative Instructions, it may invite the
applicant to furnish a listing to it in such a form. Again,
the  International  Searching  Authority  would  invite  the
applicant to supply the machine readable diskette.

 Different requirements apply, as set out in Annex C to the
Administrative Instructions, for the various International
Searching Authorities. Certain Authorities require listings
in  a  specified  format  on  a  computer  diskette.  The
requirements,  if  any,  of  each  International  Searching
Authority as to machine readable form are set out or
summarized in Annex C to the Administrative Instructions. In
some cases, that Annex indicated that a machine readable
form  for  sequence  listings  is  not  required  but  is
acceptable.

 An invitation from the International Searching Authority to
furnish a sequence listing complying with WIPO Standard ST.
23 or Annex C to the Administrative Instructions, will
specify a time limit for response to the invitation. Any
sequence  listing  furnished  by  the  applicant  must  be
accompanied by a statement to the effect that the listing
does not include matter which goes beyond the disclosure in
the international application as filed. If the applicant
does  not  comply  within  that  time  limit,  the  search
undertaken by the International Searching Authority may be
restricted.

 If the applicant wishes to include such a listing in the
text of the decription itself, appropriate amendments may be
made later under Article 34, provided that the applicant
files a Demand for international preliminary examination.

1849  Subject Matter Excluded From International  Search

 The examiner is not required to perform an international
search on claims which relate to any of the following
subject matter: (i) scientific and mathematical theories,
(ii) plant or animal varieties or essentially biological
processes for the production of plants and animals, other
than microbiological processes and the products of such
processes,  (iii)  schemes,  rules  or  methods  of  doing
business, performing purely mental acts or playing games,
(iv) methods for treatment of the human or animal body by
surgery or therapy, as well as diagnostic methods, (v) mere
presentation of information, and (vi) computer programs to
the extent that the Authority is not equipped to search
prior art concerning such programs. See PCT Rule 39. In
addition,  the  examiner  is  not  required  to  search  the
international application, to the extent that a meaningful
search cannot be carried out, in certain cases where a
nucleotide  and/or  amino  acid  sequence  listing  is  not
furnished in accordance with the prescribed standard or in a
machine  readable  form.  See  Administrative  Instruction
513(c). However, the U.S. Patent & Trademark Office has
declared that it will search and examine all subject matter
searched and examined in U.S. national applications. If none
of the claims are required to be searched, the examiner will
declare that no search report will be established using form
PCT/ISA/203. It should, nevertheless, be noted that the lack
of an international search report in such a case does not,
in itself, have any influence on the validity of the
international  application,  the  processing  of  which,
including  its  communication  to  the  designated  Offices,
continues.

1850  Unity of Invention Before the International
Searching Authority [R - 3]

  PCT Rule 40 Lack of Unity of Invention (International
  Search)

  40.1.  Invitation to Pay

 The invitation to pay additional fees provided for in
Article 17(3)(a) shall specify the reasons for which the
international application is not considered as complying
with  the  requirement  of  unity  of  invention  and  shall
indicate the amount to be paid.

  40.2.  Additional Fees

 (a)  The amount of the additional fee due for searching
under Article 17(3)(a) shall be determined by the competent
International Searching Authority.

 (b)  The additional fee due for searching under Article
17(3)(a)  shall  be  payable  direct  to  the  International
Searching Authority.

 (c)  Any applicant may pay the additional fee under
protest, that is, accompanied by a reasoned statement to the
effect that the international application complies with the

requirement of unity of invention or that the amount of the
required additional fee is excessive. Such protest shall be
examined by a three - member board or other special instance
of the International Searching Authority or any competent
higher authority, which, to the extent that it finds the
protest  justified,  shall  order  the  total  or  partial
reimbursement to the applicant of the additional fee. On the
request of the applicant, the text of both the protest and
the decision thereon shall be notified to the designated
Offices together with the international search report. The
applicant shall submit any translation thereof with the
furnishing  of  the  translation  of  the  international
application required under Article 22.

 (d)  The three - member board, special instance or
competent higher authority, referred to in paragraph (c),
shall not comprise any person who made the decision which is
the subject of the protest.

  *****

 40.3.  Time Limit

 The time limit provided for in Article 17(3)(a) shall be
fixed, in each case, according to the circumstances of the
case, by the International Searching Authority; it shall not
be shorter than 15 or 30 days, respectively, depending on
whether the applicant's address is in the same country as or
in a different country from that in which the International
Searching Authority is located, and it shall not be longer
than 45 days, from the date of the invitation.

  PCT Administrative Instructions Section 502 Transmittal of
  Protest Against Payment of Additional Fee and Decision
  Thereon Where International Application Is Considered to
  Lack Unity of Invention

 The International Searching Authority shall transmit to the
applicant,  preferably  at  the  latest  together  with  the
international search report, any decision which it has taken
under Rule 40.2(c) on the protest of the applicant against
payment  of  an  additional  fee  where  the  international
application is considered to lack unity of invention. At the
same time, it shall transmit to the International Bureau a
copy of both the protest and the decision thereon, as well
as any request by the applicant to forward the texts of both
the protest and the decision thereon to the designated
Offices.

 37 CFR 1.475.  Unity of invention before the
International Searching Authority, the International
Preliminary Examining Authority and during the national
stage.

 (a)  An international and a national stage application
shall relate to one invention only or to a group of
inventions so linked as to form a single general inventive
concept ("requirement of unity of invention"). Where a group
of inventions is claimed in an application, the requirement
of unity of invention shall be fulfilled only when there is
a technical relationship among those inventions involving
one or more of the same or corresponding special technical
features. The expression "special technical features" shall
mean those technical features that define a contribution
which each of the claimed inventions, considered as a whole,

makes over the prior art.

 (b)  An international or a national stage application
containing claims to different categories of invention will
be considered to have unity of invention if the claims are
drawn  only  to  one  of  the  following  combinations  of
categories:

 (1)  A product and a process specially adapted for the
manufacture of said product; or

 (2)  A product and a process of use of said product; or

  (3)  A  product,  a  process  specially  adapted  for  the
manufacture of the said product, and a use of the said
product; or

 (4)  A process and an apparatus or means specifically
designed for carrying out the said process; or

 (5)  A product, a process specially adapted for the
manufacture of the said product, and an apparatus or means
specifically designed for carrying out the said process.

 (c)  If an application contains claims to more or less
than one of the combinations of categories of invention set
forth in paragraph (b) of this section, unity of invention
might not be present.

 (d)  If multiple products, processes of manufacture or
uses are claimed, the first invention of the category first
mentioned in the claims of the application and the first
recited invention of each of the other categories related
thereto will be considered as the main invention in the
claims, see PCT Article 17(3)(a) and § 1.476(c).

 (e)  The determination whether a group of inventions is
so linked as to form a single general inventive concept
shall be made without regard to whether the inventions are
claimed in separate claims or as alternatives within a
single claim.

 37 CFR 1.477.  Protest to lack of unity of invention
before the International Searching Authority.

 (a)  If the applicant disagrees with the holding of lack
of  unity  of  invention  by  the  International  Searching
Authority,  additional  fees  may  be  paid  under  protest,
accompanied by a request for refund and a statement setting
forth  reasons  for  disagreement  or  why  the  required
additional fees are considered excessive, or both (PCT Rule
40.2(c)).

 (b)  Protest under paragraph (a) of this section will be
examined by the Commissioner or the Commissioner's designee.
In the event that the applicant's protest is determined to
be justified, the additional fees or a portion thereof will
be refunded.

 (c)  An applicant who desires that a copy of the protest
and the decision thereon accompany the international search
report when forwarded to the Designated Offices, may notify
the International Searching Authority to that effect any
time prior to the issuance of the international search
report. Thereafter, such notification should be directed to

the International Bureau (PCT Rule 40.2(c)).

  THE REQUIREMENT FOR "UNITY OF INVENTION"

 Any international application must relate to one invention
only or to a group of inventions so linked as to form a
single general inventive concept (PCT Article 3(4)(iii) and
17(3)(a), PCT Rule 3.1, and 37 CFR 1.475). Observance of
this requirement is checked by the International Searching
Authority and may be relevant in the national (or regional)
phase.

  The  decision  in  Caterpillar  Tractor  Company  v.
Commissioner of Patents and Trademarks , 231 USPQ 590 (E.D.
Va.  1986)  held  that  the  Patent  and  Trademark  Office
interpretation of 37 CFR 1.141(b)(2) as applied to unity of
invention determinations in international applications was
not in accordance with the Patent Cooperation Treaty and its
implementing regulations. In the Caterpillar international
application, the USPTO acting as an International Searching
Authority, had held lack of unity of invention between a set
of claims directed to a process for forming a sprocket and a
set of claims drawn to an apparatus (die) for forging a
sprocket. The court stated that it was an unreasonable
interpretation to say that the expression "specifically
designed" as found in former PCT Rule 13.2(ii) means that
the process and apparatus have unity of invention if they
can only be used with each other, as set forth in MPEP §
806.05(e).

  Therefore,  when  the  Office  considers  international
applications as an International Searching Authority, as an
International Preliminary Examining Authority, and during
the national stage as a Designated or Elected Office under
35 U.S.C. 371, PCT Rule 13.1 and 13.2 will be followed when
considering  unity  of  invention  of  claims  of  different
categories  without  regard  to  the  practice  in  national
applications filed under 35 U.S.C. 111. No change was made
in  restriction  practice  in  United  States  national
applications filed under 35 U.S.C. 111 outside the PCT.

 In applying PCT Rule 13.2 to international applications as
an  International  Searching  Authority,  an  International
Preliminary  Examining  Authority  and  to  national  stage
applications under 35 U.S.C. 371, examiners should consider
for  unity  of  invention  all  the  claims  to  different
categories  of  invention  in  the  application  and  permit
retention in the same application for searching and/or
preliminary examination, claims to the categories which meet
the requirements of PCT Rule 13.2.

 PCT Rule 13.2, as it was modified effective 01 July 1992,
no  longer  specifies  the  combinations  of  categories  of
invention which are considered to have unity of invention.
Those categories, which now appear as a part of Annex B to
the Administrative Instructions, has been substituted with a
statement describing the method for determining whether the
requirement of unity of invention is satisfied. Unity of
invention exists only when there is a technical relationship
among the claimed inventions involving one or more special
technical features. The term "special technical features" is
defined as meaning those technical features that define a
contribution which each of the inventions considered as a
whole, makes over the prior art. The determination is made
based on the contents of the claims as interpreted in light

of the description and drawings. Annex B also contains
examples concerning unity of invention.

 Independent and Dependent Claims

 Unity of invention has to be considered in the first place
only  in  relation  to  the  independent  claims  in  an
international application and not the dependent claims. By
"dependent" claim is meant a claim which contains all the
features of another claim and is in the same category of
claim as that other claim (the expression "category of
claim" referring to the classification of claims according
to the subject matter of the invention claimed for example,
product, process, use or apparatus or means, etc.).

 If the independent claims avoid the prior art and satisfy
the requirement of unity of invention, no problem of lack of
unity arises in respect of any claims that depend on the
independent claims. In particular, it does not matter if a
dependent  claim  itself  contains  a  further  invention.
Equally, no problem arises in the case of a genus/species
situation where the genus claim avoids the prior art.
Moreover,  no  problem  arises  in  the  case  of  a
combination/subcombination  situation  where  the
subcombination  claim  avoids  the  prior  art  and  the
combination  claim  includes  all  the  features  of  the
subcombination.

 If, however, an independent claim does not avoid the prior
art, then the question whether there is still an inventive
link between all the claims dependent on that claim needs to
be carefully considered. If there is no link remaining, an
objection of lack of unity (that is, arising only after
assessment  of  the  prior  art)  may  be  raised.  Similar
considerations apply in the case of a genus/species or
combination/subcombination situation.

 This method for determining whether unity of invention
exists  is  intended  to  be  applied  even  before  the
commencement of the international search. Where a search of
the prior art is made, an initial determination of unity of
invention, based on the assumption that the claims avoid the
prior art, may be reconsidered on the basis of the results
of the search of the prior art.

  Illustrations of Particular Situations

 There are three particular situations for which the method
for determining unity of invention contained in PCT Rule
13.2 is explained in greater detail:

  (i) combinations  of  different  categories  of
claims;

  (ii)  so - called "Markush practice"; and

  (iii)  intermediate and final products.

 Principles for the interpretation of the method contained
in PCT Rule 13.2, in the context of each of those situations
are set out below. It is understood that the principles set
out below are, in all instances, interpretations of and not
exceptions to the requirements of PCT Rule 13.2.

 Examples to assist in understanding the interpretation on

the three areas of special concern referred to in the
preceding paragraph are set out below.

 Combinations of Different Categories of Claims

 The method for determining unity of invention under Rule 13
shall  be  construed  as  permitting,  in  particular,  the
inclusion of any one of the following combinations of claims
of  different  categories  in  the  same  international
application:

  (i)  in addition to an independent claim for a
given product, an independent claim for a process specially
adapted for the manufacture of the said product, and an
independent claim for a use of the said product, or

  (ii) in addition to an independent claim for a given
process, an independent claim for an apparatus or means
specifically designed for carrying out the said process, or

  (iii)  in addition to an independent claim for a
given product, an independent claim for a process specially
adapted for the manufacture of the said product and an
independent claim for an apparatus or means specifically
designed  for  carrying  out  the  said  process,  it  being
understood that a process is specially adapted for the
manufacture of a product if it inherently results in the
product and that an apparatus or means is specifically
designed for carrying out a process if the contribution over
the prior art of the apparatus or means corresponds to the
contribution the process makes over the prior art.

 Thus, a process shall be considered to be specially adapted
for the manufacture of a product if the claimed process
inherently results in the claimed product with the technical
relationship being present between the claimed product and
claimed process. The words "specially adapted" are not
intended to imply that the product could not also be
manufactured by a different process.

 Also an apparatus or means shall be considered to be
specifically designed for carrying out a claimed process if
the contribution over the prior art of the apparatus or
means corresponds to the contribution the process makes over
the prior art. Consequently, it would not be sufficient that
the apparatus or means is merely capable of being used in
carrying out the claimed process. However, the expression
specifically designed does not imply that the apparatus or
means could not be used for carrying out another process,
nor that the process could not be carried out using an
alternative apparatus or means.

 "Markush Practice"

 The situation involving the so - called Markush practice
wherein a single claim defines alternatives (chemical or non
- chemical) is also governed by Rule 13.2. In this special
situation, the requirement of a technical interrelationship
and the same or corresponding special technical features as
defined in Rule 13.2, shall be considered to be met when the
alternatives are of a similar nature.

 When the Markush grouping is for alternatives of chemical
compounds, they shall be regarded as being of a similar
nature where the following criteria are fulfilled:

  (A)  all alternatives have a common property or
activity, and

  (B)(1)  a  common  structure  is  present,  i.e.,  a
significant structural element is shared by all of the
alternatives, or

  (B)(2)  in cases where the common structure cannot be
the  unifying  criteria,  all  alternatives  belong  to  a
recognized class of chemical compounds in the art to which
the invention pertains.

  In  paragraph  (B)(1),  above,  the  words  significant
structural element is shared by all of the alternatives
refer to cases where the compounds share a common chemical
structure  which  occupies  a  large  portion  of  their
structures, or in case the compounds have in common only a
small portion of their structures, the commonly shared
structure constitutes a structurally distinctive portion in
view of existing prior art. The structural element may be a
single component or a combination of individual components
linked together.

 In paragraph (B)(2), above, the words recognized class of
chemical compounds mean that there is an expectation from
the knowledge in the art that members of the class will
behave in the same way in the context of the claimed
invention. In other words, each member could be substituted
one for the other, with the expectation that the same
intended result would be achieved.

 The fact that the alternatives of a Markush grouping can be
differently classified shall not, taken alone, be considered
to be justification for a finding of a lack of unity of
invention.

 When dealing with alternatives, if it can be shown that at
least one Markush alternative is not novel over the prior
art,  the  question  of  unity  of  invention  shall  be
reconsidered  by  the  examiner.  Reconsideration  does  not
necessarily imply that an objection of lack of unity shall
be raised.

 Intermediate and Final Products

 The situation involving intermediate and final products is
also governed by Rule 13.2.

 The term intermediate is intended to mean intermediate or
starting products. Such products have the ability to be used
to produce final products through a physical or chemical
change in which the intermediate loses its identity.

 Unity of invention shall be considered to be present in the
context  of  intermediate  and  final  products  where  the
following two conditions are fulfilled:

  (A)  the intermediate and final products have the
same essential structural element, in that:

  (1) the  basic  chemical  structures  of  the
intermediate and the final products are the same, or

  (2)  the chemical structures of the two products

are  technically  closely  interrelated,  the  intermediate
incorporating an essential structural element into the final
product, and

  (B) the intermediate and final products are technically
interrelated,  this  meaning  that  the  final  product  is
manufactured directly from the intermediate or is separated
from it by a small number of intermediates all containing
the same essential structural element.

 Unity of invention may also be considered to be present
between  intermediate  and  final  products  of  which  the
structures  are  not  known,  for  example,  as  between  an
intermediate having a known structure and a final product
the structure of which is not known, or as between an
intermediate of unknown structure and a final product of
unknown structure. In order to satisfy unity in such cases,
there shall be sufficient evidence to lead one to conclude
that the intermediate and final products are technically
closely interrelated as, for example, when the intermediate
contains the same essential element as the final product or
incorporates an essential element into the final product.

  It  is  possible  to  accept  in  a  single  international
application  different  intermediate  products  used  in
different  processes  for  the  preparation  of  the  final
product,  provided  that  they  have  the  same  essential
structural element.

 The intermediate and final products shall not be separated,
in the process leading from one to the other, by an
intermediate which is not new.

 If the same international application claims different
intermediates for different structural parts of the final
product, unity shall not be regarded as being present
between the intermediates.

 If the intermediate and final products are families of
compounds, each intermediate compound shall correspond to a
compound claimed in the family of the final products.
However,  some  of  the  final  products  may  have  no
corresponding compound in the family of the intermediate
products so that the two families need not be absolutely
congruent.

 As long as unity of invention can be recognized applying
the  above  interpretations,  the  fact  that,  besides  the
ability  to  be  used  to  produce  final  products,  the
intermediates  also  exhibit  other  possible  effects  or
activities  shall  not  affect  the  decision  on  unity  of
invention.

 Rule 13.3 requires that the determination of the existence
of unity of invention be made without regard to whether the
inventions are claimed in separate claims or as alternatives
within a single claim.

 Rule 13.3 is not intended to constitute an encouragement to
the use of alternatives within a single claim, but is
intended to clarify that the criterion for the determination
of unity of invention (namely, the method contained in Rule
13.2) remains the same regardless of the form of claim used.

 Rule 13.3 does not prevent an International Searching or

Preliminary Examining Authority or an Office from objecting
to alternatives being contained within a single claim on the
basis of considerations such as clarity, the conciseness of
claims or the claims fee system applicable in that Authority
or Office.

  LACK OF UNITY OF INVENTION

 See Annex B of the Administrative Instructions for examples
of unity of invention.

 The search fee which the applicant is required to pay is
intended to compensate the International Searching Authority
for  carrying  out  an  international  search  on  the
international application, but only where the international
application meets the "requirement of unity of invention".
That means that the international application must relate to
only one invention or must relate to a group of inventions
which are so linked as to form a single general inventive
concept (PCT Articles 3(4)(iii) and 17(3)(a)).

 If the International Searching Authority finds that the
international  application  does  not  comply  with  the
requirement of unity of invention, the applicant will be
invited to pay additional search fees. The International
Searching  Authority  will  specify  the  reasons  for  its
findings and indicate the number of additional fees to be
paid (PCT Rules 40.1, 40.2(a) and (b)). Such additional fees
are  payable  directly  to  the  International  Searching
Authority which is conducting the search, either the United
States  Patent  and  Trademark  Office  or  European  Patent
Office, within the time limit fixed, which must not be
shorter than 15 days, if the applicant's address is in the
same country as the International Searching Authority; or 30
days, if applicant's address is in a country different than
the country of the International Searching Authority; and
not longer than 45 days from the date of the invitation (PCT
Rule 40.3)). The search fee amounts for the U.S. and the
European Patent Office are found in each weekly edition of
the Official Gazette.

 The International Searching Authority will establish the
international search report on those parts of international
application which relate to the "main invention," that is,
the invention or the group of inventions so linked as to
form a single general inventive concept first mentioned in
the  claims  (PCT  Article  17(3)(a)).  Moreover,  the
international search report will be established also on
those parts of the international application which relate to
any invention (or any group of inventions so linked as to
form a single general inventive concept) in respect of which
the  applicant  has  paid  any  additional  fee  within  the
prescribed time limits.

 Any applicant may pay the additional fee under protest,
that is, accompanied by a reasoned statement to the effect
that  the  international  application  complies  with  the
requirement of unity of invention or that the amount of the
required additional fee is excessive (PCT Rule 40.2(c)). Any
such protest filed with the U.S. International Searching
Authority will be examined and decided by the Group Director
(37 CFR 1.477). To the extent that the applicant's protest
is found to be justified, total or partial reimbursement of
the additional fee will be made. On the request of the
applicant, the text of both the protest and the decision

thereon is sent to the designated Offices together with the
international search report (37 CFR 1.477).

 Where, within the prescribed time limit, the applicant does
not pay any additional fees or only pays some of the
additional  fees  indicated,  certain  parts  of  the
international application will consequently not be searched.
The lack of an international search report in respect of
such parts of the international application will, in itself,
have no influence on the validity of the international
application and processing of the international application
will continue, both in the international and in the national
(regional) phases. The unsearched claims, upon entry into
the national stage, will be considered by the examiner and
may be the subject of a holding of lack of unity of
invention.

 See MPEP § 1875.01 for telephone unity practice. It applies
in the same manner under Chapter I.

  >UNITY OF INVENTION - NUCLEOTIDE SEQUENCES

 Under 37 CFR 1.475 and 1.499 et seq ., when claims do not
comply with the requirement of unity of invention, i.e.,
when the claimed subject matter does not involve "one or
more  of  the  same  or  corresponding  special  technical
features," 37 CFR 1.475(a), an additional fee is required to
maintain  the  claims  in  the  same  application.  37  CFR
1.476(b).

 The Comissioner has decided sua sponte to partially waive
37 CFR 1.475 and 1.499  et seq. to permit applicants to
claims up to ten (10) nucleotide sequnces which do not have
the same or corresponding special technical feature, without
the payment of an additional fee. The PCT permits inventions
which lack unity of invention to be maintained in the same
international application for payment of additional fees.
Thus, in international applications, for each group for
which applicant has paid additional international search
and/or preliminary examination fees, the PTO has determined
that up to four (4) such additional sequences per group is a
reasonable number for examination. Further, claims directed
to the selected sequences will be examined with claims drawn
to any sequence combinations which have a common technical
feature with the selected sequences. Nucleotide sequence
encoding the same protein are considered to satisfy the
unity of invention standard and will continue to be examined
together.

 See MPEP § 803.04 for examples of nucleotide sequence
claims impacted by this partial waiver of 37 CFR 1.475 and
1.499 et seq. <

1851  Identification of Patent Documents [R - 2]

 The examiner, in completing the international search report
as well as the Chapter II written opinion and final report,
is required to cite the references in accordance with the
provisions of Administrative Instructions 503 and 611. These
sections  of  the  Administrative  Instructions  require
reference  citations  to  include,  in  addition  to  other
information which is apparent from the forms which the
examiner  fills  out,  sections  503  and  611  require  an
indication of the two - letter country code of the country
or entity issuing or publishing the document, and the

standard code for identifying the kind of patent document.
The  discussion  which  follows  is  limited  to  the
identification  of  patent  documents  (and  non  -  patent
publications) and a listing of the two - letter country
codes for countries or other entities which issue or publish
industrial property information.

 The standard codes for identifying different kinds of
patent documents are found in the "Handbook On Industrial
Property Information And Documentation" - Standard 16 which
is  published  by  the  World  Intellectual  Property
Organization. The listing is extensive. The Special Program
*>Examiner< in each examining Group has a complete copy of
Standard 16. Provided herein is an abbreviated version
representing the countries and codes commonly used by the
examiner in drawing up search reports.

 U.S. patent documents, for example, are Code A documents
generally. Reexamination certificates are Code B documents.
All non - patent literature documents are Code N. Numerical
designations  which  are  sometimes  found  on  published
documents along with the letter code designation should be
used by the examiner only if such numerical designation is
on the document. Numerical codes along with letter codes can
be found, for example, on certain published patent documents
such  as  the  German  Offenlegungsschrift  and  published
international applications. If numerical designations are
not provided, the examiner should use only the letter code
designation.

 The most commonly cited documents are patents. A guideline
for the citation of such documents is listed below. The
listing is indicated in the order in which the elements
should be listed.

 In the case of a patent document:

  (1)  the Office that issued the document, by the
two letter code (WIPO Standard ST.3);

  (2)  the kind of document, by the appropriate
symbols as indicated on the original document or as given in
Appendix II to WIPO Standard ST.16;

  (3)  the number of the document as given to it by
the Office that issued it (for Japanese patent documents the
indication of the year of the reign of the Emperor must
precede the serial number of the patent document);

  (4)  the name of the patentee or applicant (in
capital letters, where appropriate, abbreviated);

  (5)  the date of publication of the cited patent
document indicated thereon;

  (6)  where applicable, the pages, columns or lines
where the relevant passages appear, or the relevant figures
of the drawings.

 (The following example illustrates the citation of a patent
document as indicated above:

 JP, B, 50 - 14535, NCR CORPORATION, 28 May 1975 (28.05.75),
see Column 4, lines 3 to 27.)

  STANDARD CODE FOR IDENTIFICATION OF DIFFERENT KINDS OF
 PATENT DOCUMENTS

 The Code is subdivided into exclusive groups of letters.
The  groups  characterize  patent  documents  and  nonpatent
literature  documents  (N)  and  restricted  documents  (X).
Groups 1 - 5 comprise one or several letters enabling
identification  of  documents  pertaining  to  different
publication levels.

Group 1  Use for primary or major series of patent
documents

 A  First publication level

 B  Second publication level

 C  Third publication level

 Group 2  Use for secondary series of patent documents

 E  First publication level

 F  Second publication level

 G  Third publication level

 Group 3  Use for further series of patent documents, as
the special requirements of each Office may be

 H

 I

 >L  Documents containing bibliographic information and
only the text of an abstract and/or claim(s) and, where
appropriate, a drawing

 R  Separately published search reports<

 T  Publication, for information or other purposes,

  of the translation of the whole or part of a patent

  document already published by another office or

  organization

 Group 4  Use  for  major  special  types  of  patent
documents

 M  Medicament patent documents

 P  Plant patent documents

 S  Design patent documents

 Group 5  Use for utility model documents having a
numbering series other than the documents of Group 1

 U  First publications level

 Y  Second publication level

 Z  Third publication level

 Group 6  Other

 N  Nonpatent literature documents

 X  Documents restricted to the internal use of offices

 LIST OF PATENT DOCUMENTS, PAST AND CURRENTLY PUBLISHED, AND
  INTENDED TO BE PUBLISHED IN THE FUTURE

 CODE:  A  Patent  Documents  Numbered  in  Primary  or
Major-Series First Publication Level

 EXAMPLES:

 Australia  Standard of petty patent application

 Austria  Patent Application

 Belgium  Brevet d'invention/Uitvindingsoctrooi

 Belgium  Brevet  de  perfectionnement/Verbeteringsoc
trooi

 Brazil  Pedido de privilegio (Unexamined patent

  application for invention)

 Bulgaria  Opisanie na izobretenie po patent

 Canada  Patent

 Cuba  Patent application

 Czechoslovakia  Patent application

 Czechoslovakia  Inventor's certificate application

 Denmark  Almindelig tilgoengelig patentansogning

 Egypt  Patent specification

 European

  Patent Office Patent application published with search
report

 European

  Patent  Office  Patent  application  published  without
search *>report<

 European

  Patent Office Separate publication of the search report

 Finland  Patent Application

 France  Brevet d'invention, premiere et unique

  publication

 France  Certificat d'addition a un brevet d'invention,

  premiere et unique publication

 France  Certificat d'utilite, premiere et unique

  publication

 France  Certificat  d'addition  a  un  certificat
d'utilite,

  premiere et unique publication

 France  Demande de brevet d'invention, premiere

  publication

 France  Demande de certificat d'addition a un brevet

  d'invention, premiere publication

 France  Demande de certificat d'utilite, premiere

  publication

 France  Demande  de  certificat  d'addition  a  un
certificat

  d'utilite, premiere publication

 Germany  Offenlegungsschrift

 Germany  Patentschrift (Ausschliessungspatent), patent

  (document pub - granted in accordance with paragraph 17.1

  lished by the of the Patent Law of the former German

  Patent Office Democratic Republic of 27 / 10 /1983

  of the former GDR)

 Germany  Patentschrift (Wirtschaftspatent), patent

  (document pub - granted in accordance with paragraph 17.1
of

  lished by the the Patent Law of the former German

  Patent Office Democratic Republic of 27 / 10 /1983

  of the former GDR)

 Hungary  Patent application

 India  Patent specification

 Ireland  Patent specification

 Italy  Domanda di brevetto publicata

 Japan  Kokai tokkyo koho

 Japan  Kohyo tokkyo koho

 Luxembourg  Brevet d'invention

 Luxembourg  Certificat d'addition a un breet d`invention

 Netherlands  Terinzagegelegging

 Norway  Alment tilgjengelige patentsoknader

 Pakistan  Patent specification

 PCT  International application published with or without
the international search report

 Poland  Zgloszenie wynalazku do opatentowania

 Poland  Zgloszenie wynalazku w celu uzyskania patentu

  tymczasowego

 Republic of Korea  Konggae t'ukho kongbo

 Romania  Descrierea inventiei

 Soviet Union  Opisanie izobreteniya k patentu

 Soviet Union  Opisanie  izobreteniya  k  avtorskomy
svidetelstvu

 Spain  Patente de invencion

 Sweden  Allmant tillganglig patentansokan

 Switzerland  Auslegeschrift/Fascicule  de  la
demande/Fasci colo della domanda (Patent Application

  published and pertaining to the technical fields for
which search and examination as to novelty are made)

 Switzerland  Patentschrift/Fascicule du
brevet/Fascicolo del

  brevetto  (Patent  published  and  pertaining  to  the
technical fields for which neither search nor

  examination as to novelty are made)

 United Kingdom  Patent  specification  (old  Law;  not
printed on

  documents)

 United Kingdom  Patent application (new Law)

 United States  Patent

 Yugoslavia  Patenta prijava koja se moze razgledati

 CODE:  B Patent Documents Numbered in Primary or Major
Series -Second Publication Level

 EXAMPLES:

 Australia  Accepted standard or petty patent

 Austria  Patentschrift

 Brazil  Patente (granted patent of invention

 Canada  Reissue patent

 Cuba  Patente de invencion

 Czechoslovakia  Popis vynalezu k patentu

 Czechoslovakia  Popis vynalezu k autorskemu osvedceni

 Denmark  Fremlaeggelsesskrift

 Finland  Kuulutusjulkaisu - Utlaggningsskrift

 France  Brevet d'invention, deuxieme publication

  de l'invention

 France  Certificat  d'addition  a  un  brevet  d'
invention,

  deuxieme publication de l'invention

 France  Certificat d'utilite, deuxieme publication

  del'invention

 France  Certificat  d'addition  a  un  certificat
d'utilite,

  deuxieme publication de l'invention

 Germany  Auslegeschrift

 Germany  Patentschrift (Ausschliessungspatent), patent

  (document pub - granted in accordance with paragraph 18.1
of

  lished by the the Patent Law of the former German Demo
Patent Office of cratic Republic of 27 / 10 /1983

  the former GDR)

 Germany  Patentschrift  (Wirtschaftspatent),  patent
(document pub - granted in accordance with paragraph 18.1 of
lished by the the Patent Law of the former German Demo

  Patent Office of cratic Republic of 27 / 10 /1983

  the former GDR)

 Hungary  Szabadalmi leiras

 Japan  Tokkyo koho

 Netherlands  Openbaar gemaakte octrooiaanvrage

 Norway  Utlegningsskrift

 Poland  Opis patentowy

 Republic of Korea  T'ukho kongbo

 Sweden  Utlaggningsskrift

 Switzerland  Patentschrift/Fascicule du

brevet/Fascicolo del

  brevetto  (Patent  published  and  pertaining  to  the
technical fields for which search and examination as to
novelty are made)

 United Kingdom  Amended patent specification (old Law)

 United Kingdom  Patent specification (new Law)

 United States  Reexamination certificate

 CODE:  C Patent Documents Numbered in Primary or Major
Series - Third Publication Level

 EXAMPLES:

 Argentina  Patente de invencion (Patent)

 Australia  Standard or petty patent, amended after

  acceptance

 Denmark  Patentskrift

 Finland  Patentmeddelat

 Germany  Patentschrift

 Germany  Patentschrift (Ausschliessungspatent), patent

  (document pub - granted in accordance with paragraph 19
of the

  lished by the Patent Law of the former German Democratic

  Patent Office of Republic of 27.10.1983

  the former GDR)

 Netherlands  Octrooi

 Norway  Patent

 Sweden  Patentskrift

 United Kingdom  Amended patent specification (new Law)

 CODE:  E  Patent  Documents  Numbered  in  Secondary
Series-First Publication Level

 EXAMPLES:

 France  d'addition a brevet d'invention (old Law)

 United States  Reissue patent

 CODE:  H Patent Documents Numbered in Further Series

 EXAMPLE:

 United States  Defensive publication

 CODE:  M Medicament Patent Documents

 EXAMPLES:

 France  Brevet special de medicament

 France  Addition a un brevet special de medicament

 CODE:  P Plant Patent Documents

 EXAMPLE:

 United States  Plant patent

 CODE:  S Design Patent Documents

 EXAMPLES:

 Brazil  Pedido  de  privilegio  (unexamined  patent
application for industrial model)

 United States  Design patent

 CODE:  U Utility Model Documents Numbered in Series other
than the Documents of Group I First

  Publication Level

 EXAMPLES:

 Brazil  Pedido de privilegio (unexamined patent

  application for industrial model)

 Germany  Gebrauchsmuster

 Japan  Kokai jitsuyo shinan koho

 Republic of Korea  Konggae shilyong shin - an kongbo

 Spain  Solicitud de modelo de utilidad

 CODE:  Y Utility Model Documents Numbered in Series other
than the Documents of Group I Second Publication Level

 EXAMPLES:

 Brazil  Patente (granted patent of utility model)

 Japan  Jitsuyo shinan koho

 Spain  Model o de utilidad

  COUNTRY CODES

 The two - letter country codes listed below are taken from
the  "Handbook  On  Industrial  Property  Information  and
Documentation". Standard ST. 3 of that Handbook provides, in
Annex A, sections 1 and 3, a listing of the two - letter
country codes and/or organizational codes and names for the
countries and organizations issuing or publishing industrial
property documents. The listing has been modified for use by
the examiner and includes countries no longer in existence
and new countries or republics.

 Annex A, Section 1 List of Countries, and of Other Entities
  Issuing or Registering Industrial Property Titles (in the

  order corresponding to the current UN and WIPO practice)

 Afghanistan  AF

 Albania  AL

 Algeria  DZ

 Angola  AO

 Anguilla  AI

 Antigua and Barbuda  AG

 Argentina  AR

 Armenia  AM

 Australia  AU

 Austria  AT

 Azerbaijan  AZ

 Bahamas  BS

 Bahrain  BH

 Bangladesh  BD

 Barbados  BB

 Belarus  BY

 Belgium  BE

 Belize  BZ

 Benin  BJ

 Bermuda  BM

 Bhutan  BT

 Bolivia  BO

 Botswana  BW

 Brazil  BR

 British Virgin Islands  VG

 Brunei Darussalam  BN

 Bulgaria  BG

 Burkina Faso  BF

 Burma (see Myanmar)

 Burundi  BI

 Cambodia  KH

 Cameroon  CM

 Canada  CA

 Cape Verde  CV

 Cayman Islands  KY

 Central African Republic  CF

 Chad  TD

 Chile  CL

 China  CN

 Colombia  CO

 Comoros  KM

 Congo  CG

 Costa Rica  CR

 Cote d'Ivoire  CI

 Cuba  CU

 Cyprus  CY

 Czechoslovakia  CS

 Czech Republic  CZ

 Democratic Kampuchea (see Cambodia)

 Democratic People's Republic of Korea  KP

 Denmark  DK

 Djibouti  DJ

 Dominica  DM

 Dominican Republic  DO

 Ecuador  EC

 Egypt  EG

 El Salvador  SV

 Equatorial Guinea  GQ

 Estonia  EE

 Ethiopia  ET

 Falkland Islands (Malvinas)  FK

 Fiji  FJ

 Finland  FI

 France  FR

 Gabon  GA

 Gambia  GM

 Georgia  GE

 Germany  DE

 Ghana  GH

 Gibraltar  GI

 Greece  GR

 Grenada  GD

 Guatemala  GT

 Guinea  GN

 Guinea - Bissau  GW

 Guyana  GY

 Haiti  HT

 Holy See  VA

 Honduras  HN

 Hong Kong  HK

 Hungary  HU

 Iceland  IS

 India  IN

 Indonesia  ID

 Iran (Islamic Republic of)  IR

 Iraq  IQ

 Ireland  IE

 Israel  IL

 Italy  IT

 Jamaica  JM

 Japan  JP

 Jordan  JO

 Kazahstan  KZ

 Kenya  KE

 Kiribati  KI

 Kuwait  KW

 Kyrgyzstan  KG

 Laos  LA

 Latvia  LV

 Lebanon  LB

 Lesotho  LS

 Liberia  LR

 Libya  LY

 Liechtenstein  LI

 Luxembourg  LU

 Madagascar  MG

 Malawi  MW

 Malaysia  MY

 Maldives  MV

 Mali  ML

 Malta  MT

 Mauritania  MR

 Mauritius  MU

 Mexico  MX

 Moldova, Republic of  MD

 Monaco  MC

 Mongolia  MN

 Montserrat  MS

 Morocco  MA

 Mozambique  MZ

 Myanmar  MM

 Nauru  NR

 Nepal  NP

 Netherlands  NL

 Netherlands Antilles  AN

 New Zealand  NZ

 Nicaragua  NI

 Niger  NE

 Nigeria  NG

 Norway  NO

 Oman  OM

 Pakistan  PK

 Panama  PA

 Papua New Guinea  PG

 Paraguay  PY

 Peru  PE

 Philippines  PH

 Poland  PL

 Portugal  PT

 Qatar  QA

 Republic of Korea  KR

 Romania  RO

 Russian Federation  RU

 Rwanda  RW

 Saint Helena  SH

 Saint Kitts and Nevis  KN

 Saint Lucia  LC

 Saint Vincent and the Grenadines  VC

 Samoa  WS

 San Marino  SM

 Sao Tome and Principe  ST

 Saudi Arabia  SA

 Senegal  SN

 Seychelles  SC

 Sierra Leone  SL

 Singapore  SG

 Slovak Republic  SK

 Solomon Islands  SB

 Somalia  SO

 South Africa  ZA

 Soviet Union  SU

 Spain  ES

 Sri Lanka  LK

 Sudan  SD

 Suriname  SR

 Swaziland  SZ

 Sweden  SE

 Switzerland  CH

 Syria  SY

 Taiwan, Province of China  TW

 Tajikistan  TJ

 Thailand  TH

 Togo  TG

 Tonga  TO

 Trinidad and Tobago  TT

 Tunisia  TN

 Turkey  TR

 Turkmenistan  TM

 Tuvalu  TV

 Uganda  UG

 Ukraine  UA

 United Arab Emirates  AE

 United Kingdom  GB

 United Republic of Tanzania  TZ

 United States of America  US

 Uruguay  UY

 Uzbekistan  UZ

 Vanuatu  VU

 Venezuela  VE

 Viet Nam  VN

 Yemen  YE

 Yugoslavia  YU

 Zaire  ZR

 Zambia  ZM

 Zimbabwe  ZW

  Annex A, Section 3 International Organizations Issuing or
  Registering Industrial Property Titles

 African Intellectual Property Organization (OAPI)  OA

 African Regional Industrial Property Organization (ARIPO) 
AP

 Benelux Trademark Office and Benelux Designs Office 
BX

 European Patent Organization (EPO)  EP

 World Intellectual Property Organization (WIPO)  WO

1852  International - Type Search

  PCT Rule 41 Earlier Search Other Than International Search

  41.1.  Obligation to Use Results; Refund of Fee

 If reference has been made in the request, in the form
provided for in Rule 4.11, to an international - type search
carried out under the conditions set out in Article 15(5) or
to a search other than an international or international -
type search, the International Searching Authority shall, to
the extent possible, use the results of the said search in
establishing  the  international  search  report  on  the
international  application.  The  International  Searching
Authority shall refund the search fee, to the extent and
under the conditions provided for in the agreement under
Article 16(3)(b) or in a communication addressed to and
published in the Gazette by the International Bureau, if the
international search report could wholly or partly be based
on the results of the said search.

 37 CFR 1.104.  Nature of examination; examiner's action.

  ******

 (c)  An international - type search will be made in all
national applications filed on and after June 1, 1978.

 (d)  Any  national  application  may  also  have  an
international - type search report prepared thereon at the
time  of  the  national  examination  on  the  merits,  upon
specific  written  request  therefor  and  payment  of  the
international - type search report fee. See § 1.21(e) for
amount of fee for preparation of international - type search
report.

 NOTE: The Patent and Trademark Office does not require that
a formal report of an international - type search be
prepared in order to obtain a search fee refund in a later
filed international application.

  *****

 PCT Rule 41 provides that the applicant may request in a
later filed international application that the report of the
results of the international - type search, i.e., a search
similar to an international search, but carried out on a
NATIONAL application (37 CFR 1.104(c) and (d)), be used in

establishing  an  international  search  report  on  such
international application. An international - type search is
conducted on all U.S. national applications filed after June
1,  1978.  Upon  specific  request,  at  the  time  of  the
examination of a U.S. national application and provided that
the payment of the appropriate international - type search
report fee has been made (37 CFR 1.21(e)) an international -
type search report Form (PCT/ISA/201) will also be prepared.

1853  Amendment Under PCT Article 19

  PCT Article 19 Amendment of the Claims before the
  International Bureau

 (1)  The applicant shall, after having received the
international search report, be entitled to one opportunity
to amend the claims of the international application by
filing amendments with the International Bureau within the
prescribed time limit. He may, at the same time, file a
brief statement, as provided in the Regulations, explaining
the  amendments  and  indicating  any  impact  that  such
amendments might have on the description and the drawings.

 (2)  The amendments shall not go beyond the disclosure
in the international application as filed.

 (3)  If the national law of any designated State permits
amendments to go beyond the said disclosure, failure to
comply with paragraph (2) shall have no consequence in that
State.

  PCT Rule 46 Amendment of Claims before the International
  Bureau

 46.1.  Time Limit

 The time limit referred to in Article 19 shall be two
months from the date of transmittal of the international
search  report  to  the  International  Bureau  and  to  the
applicant by the International Searching Authority or 16
months from the priority date, whichever time expires later,
provided that any amendment made under Article 19 which is
received by the International Bureau after the expiration of
the applicable time limit shall be considered to have been
received by that Bureau on the last day of that time limit
if it reaches it before the technical preparations for
international publication have been completed.

  46.2.  Where to file

 Amendments made under Article 19 shall be filed directly
with the International Bureau.

  46.3.  Language of Amendments

 If the international application has been filed in a
language other than the language in which it is published,
any amendment made under Article 19 shall be in the language
of publication.

  46.4.  Statement

 (a)  The statement referred to in Article 19(1) shall be
in the language in which the international application is
published and shall not exceed 500 words if in the English

language or if translated into that language. The statement
shall be identified as such by a heading, preferably by
using the words Statement under Article 19(1) or their
equivalent in the language of the statement.

 (b)  The statement shall contain no disparaging comments
on the international search report or the relevance of
citations contained in that report. Reference to citations,
relevant to a given claim, contained in the international
search report may be made only in connection with an
amendment of that claim.

  46.5.  Form of Amendments

 (a)  The  applicant  shall  be  required  to  submit  a
replacement sheet for every sheet of the claims which, on
account of an amendment or amendments under Article 19,
differs  from  the  sheet  originally  filed.  The  letter
accompanying the replacement sheets shall draw attention to
the  differences  between  the  replaced  sheets  and  the
replacement sheets. To the extent that any amendment results
in the cancellation of an entire sheet, that amendment shall
be communicated in a letter.

 (b)  and (c)  [Deleted]

 37 CFR 1.415.  The International Bureau.

 (a)  The International Bureau is the World Intellectual
Property Organization located at Geneva, Switzerland. It is
the international intergovernmental organization which acts
as  the  coordinating  body  under  the  Treaty  and  the
Regulations (PCT Art. 2 (xix) and 35 U.S.C. 351(h)).

 (b)  The major functions of the International Bureau
include:

 (1)  Publishing of international applications and the
International Gazette;

 (2)  Transmitting copies of international applications
to Designated Offices;

 (3)  Storing and maintaining record copies; and

 (4)  Transmitting information to authorities pertinent
to the processing of specific international applications.

  PCT Administrative Instructions Section 205 Numbering and
  Identification of Claims Upon Amendment

 (a)  Amendments to the claims under Article 19 or
Article 34(2)(b) may be made either by cancelling one or
more entire claims, by adding one or more new claims or by
amending the text of one or more of the claims as filed. All
the  claims  appearing  on  a  replacement  sheet  shall  be
numbered in Arabic numerals. Where a claim is cancelled, no
renumbering of the other claims shall be required. In all
cases where claims are renumbered, they shall be renumbered
consecutively.

 (b)  The applicant shall, in the letter referred to in
the second and third sentences of Rule 46.5(a) or in the
second and fourth sentences of Rule 66.8(a), indicate the
differences between the claims as filed and the claims as

amended. He shall, in particular, indicate in the said
letter, in connection with each claim appearing in the
international  application  (it  being  understood  that
identical  indications  concerning  several  claims  may  be
grouped), whether:

 (i)  the claim is unchanged;

 (ii)  the claim is cancelled;

 (iii)  the claim is new;

 (iv)  the claim replaces one or more claims as filed;

 (v)  the claim is the result of the division of a claim
as filed.

 The applicant has one opportunity to amend the claims only
of the international application after issuance of the
Search Report. The amendments to the claims must be filed
directly with the International Bureau, usually within 2
months of the date of mailing of the Search Report. If the
amendments  to  the  claims  are  timely  received  by  the
International Bureau, such amendments will be published as
part of the pamphlet directly following the claims as filed.
Article 19 offers applicants the opportunity to generally
amend the claims before entering the designated Offices. The
national  laws  of  some  designated  Offices  may  grant
provisional protection on the invention from the date of
publication of the claims. Therefore, some applicants take
advantage of the opportunity under Article 19 to polish the
claims anticipating provisional protection. See PCT Rule
46.5.

1857  International Publication

  PCT Article 21 International Publication

 (1)  The  International  Bureau  shall  publish
international applications.

  (2)(a)  Subject  to  the  exceptions  provided  for  in
subparagraph (b) and in Article 64(3), the international
publication  of  the  international  application  shall  be
effected promptly after the expiration of 18 months from the
priority date of that application.

 (b)  The applicant may ask the International Bureau to
publish his international application any time before the
expiration of the time limit referred to in subparagraph
(a). The International Bureau shall proceed accordingly, as
provided in the Regulations.

 (3)  The international search report or the declaration
referred to in Article 17(2)(a) shall be published as
prescribed in the Regulations.

 (4)  The  language  and  form  of  the  international
publication  and  other  details  are  governed  by  the
Regulations.

 (5)  There shall be no international publication if the
international application is withdrawn or is considered
withdrawn before the technical preparations for publication
have been completed.

 (6)  If  the  international  application  contains
expressions  or  drawings  which,  in  the  opinion  of  the
International Bureau, are contrary to morality or public
order, or if, in its opinion, the international application
contains  disparaging  statements  as  defined  in  the
Regulations, it may omit such expressions, drawings, and
statements, from its publications, indicating the place and
number of words or drawings omitted, and furnishing, upon
request, individual copies of the passages omitted.

  PCT Article 29 Effects of the International Publication

 (1)  As far as the protection of any rights of the
applicant in a designated State is concerned, the effects,
in that State, of the international publication of an
international application shall, subject to the provisions
of paragraphs (2) to (4), be the same as those which the
national law of the designated State provides for the
compulsory  national  publication  of  unexamined  national
applications as such.

 (2)  If  the  language  in  which  the  international
publication has been effected is different from the language
in which publications under the national law are effected in
the designated State, the said national law may provide that
the  effects  provided  for  in  paragraph  (1)  shall  be
applicable only from such time as:

 (i)  a translation into the latter language has been
published as provided by the national law, or

 (ii)  a translation into the latter language has been
made available to the public, by laying open for public
inspection as provided by the national law, or

 (iii)  a translation into the latter language has been
transmitted by the applicant to the actual or prospective
unauthorized  user  of  the  invention  claimed  in  the
international application, or

 (iv)  both the acts described in (i) and (iii), or both
the acts described in (ii) and (iii), have taken place.

 (3)  The national law of any designated State may
provide that, where the international publication has been
effected, on the request of the applicant, before the
expiration of 18 months from the priority date, the effects
provided for in paragraph (1) shall be applicable only from
the expiration of 18 months from the priority date.

 (4)  The national law of any designated State may
provide that the effects provided for in paragraph (1) shall
be applicable only from the date on which a copy of the
international application as published under Article 21 has
been received in the national Office of or acting for such
State. The said Office shall publish the date of receipt in
its gazette as soon as possible.

  PCT Administrative Instructions Section 404 International
  Publication Number of International Application

 The International Bureau shall assign to each published
international  application  an  international  publication
number which shall be different from the international

application number. The international publication number
shall be used on the pamphlet and in the Gazette entry. It
shall consist of the two - letter code WO followed by a two
- digit designation of the last two numbers of the year of
publication, a slant, and a serial number consisting of five
digits (e.g., WO78/1 2345).

 35 U.S.C. 374.  Publication of international application:
Effect.

 The publication under the treaty of an international
application shall confer no rights and shall have no effect
under this title other than that of a printed publication.

 37 CFR 1.318.  Notification of national publication of a
patent based on an international application.

 The Office will notify the International Bureau when a
patent is issued on an application filed under 35 U.S.C.
371,  and  there  has  been  no  previous  international
publication.

 The publication of international applications currently
occurs  every  other  Thursday.  Under  Article  20  the
International Bureau sends copies of published applications
to each of the designated Offices on the day of publication.
As a PCT member country, the U.S. Patent and Trademark
Office also receives copies of all published International
applications for inclusion in the examiner search files.
Also a complete set of published international applications
in numeric order by publication number is available on
microfilm in the Scientific and Technical Information Center
(STIC).

1859  Withdrawal of International Application or
Designations

  PCT Administrative Instructions Section 326 Withdrawal by
 bis  bis bis
  Applicant under Rule 90  .1 , 90  .2 or 90  .3

 (a)  The receiving Office shall promptly transmit to the
International Bureau any notice from the applicant effecting
withdrawal  of  the  international  application  under  Rule
  bis  bis
90  .1 , of a designation under Rule 90  .2 or of a
  bis
priority claim under Rule 90  .3 which has been filed with
it together with an indication of the date of receipt of the
notice. If the record copy has not yet been sent to the
International Bureau, the receiving Office shall transmit
the said notice together with the record copy.

 (b)  If the search copy has already been sent to the
International  Searching  Authority  and  the  international
  bis
application is withdrawn under Rule 90  .1 or a priority
  bis
claim is withdrawn under Rule 90  .3 , the receiving Office
shall promptly transmit a copy of the notice effecting
withdrawal to the International Searching Authority.

 (c)  If the search copy has not yet been sent to the
International  Searching  Authority  and  the  international
  bis
application is withdrawn under Rule 90  .1 , the receiving
Office shall not send the search copy to the International
Searching Authority and shall, subject to Section 322,
refund the search fee to the applicant unless it has already

been transferred to the International Searching Authority.
If the search fee has already been transferred to the
International  Searching  Authority,  the  receiving  Office
shall send a copy of the request and of the notice effecting
withdrawal to that Authority.

 (d)  If the search copy has not yet been sent to the
International Searching Authority and a priority claim is
  bis
withdrawn under Rule 90  .3 , the receiving Office shall
transmit a copy of the notice effecting withdrawal to the
International Searching Authority together with the search
copy.

  PCT Administrative Instructions Section 414 Notification
 to the International Preliminary Examining Authority Where
  the International Application or the Designations of All
  Elected States Are Considered Withdrawn

 If a demand has been submitted and the international
application or the designations of all designated States
which have been elected are considered withdrawn under
Article 14(1), (3) or (4), the International Bureau shall
promptly  notify  the  International  Preliminary  Examining
Authority, unless the international preliminary examination
report has already issued.

 The applicant may withdraw the international application by
a notice addressed to the International Bureau or to the
receiving Office and received before the expiration of 20
months  from  the  priority  date.  Where  a  Demand  for
international preliminary examination has been filed before
the expiration of 19 months from the priority date, the
international application may be withdrawn by a notice
addressed  to  the  International  Bureau  or  to  the
International Preliminary Examining Authority and received
before the expiration of 30 months from the priority date.
Any  such  withdrawal  is  free  of  charge.  A  notice  of
withdrawal  must  be  signed  by  all  the  applicants.  An
appointed agent or appointed common representative may sign
such a notice on behalf of the applicant or applicants who
appointed him, but an applicant who is considered to be the
common representative may not sign such a notice on behalf
of the other applicants. As to the case where an applicant
inventor for the United States of America refuses to sign or
cannot be found or reached see PCT Rule 90bis.5(b).

 The applicant may prevent international publication by
withdrawing the international application, provided that the
notice of withdrawal reaches the International Bureau before
the  completion  of  technical  preparations  for  that
publication. The notice of withdrawal may state that the
withdrawal is to be effective only on the condition that
international publication can still be prevented. In such a
case the withdrawal is not effective if the condition on
which it was made cannot be met that is, if the technical
preparations for international publication have already been
completed. International publication may be postponed by
withdrawing the priority claim.

 The applicant may withdraw the designation of any State by
a notice addressed to the International Bureau or to the
receiving Office and received before the expiration of 20
months  from  the  priority  date.  Where  a  Demand  for
international preliminary examination has been filed before

the expiration of 19 months from the priority date, the
designation of any elected State may be withdrawn by a
notice addressed to the International Preliminary Examining
Authority and received before the expiration of 30 months
from the priority date. Any such withdrawal is free of
charge. A notice of withdrawal must be signed by all the
applicants.  An  appointed  agent  or  appointed  common
representative may sign such a notice on behalf of the
applicant or applicants who appointed him, but an applicant
who is considered to be the common representative may not
sign such a notice on behalf of the other applicants. If all
designations are withdrawn, the international application
will be treated as withdrawn.

 The applicant may withdraw a priority claim made in the
international application by a notice addressed to the
International Bureau or to the receiving Office and received
before the expiration of 20 months from the priority date.
Where a Demand for international preliminary examination has
been filed before the expiration of 19 months from the
priority date, the notice must be received before the
expiration of 30 months from the priority date. In the
latter case, the notice may also be addressed to the
International Preliminary Examining Authority. Any or all of
the priority claims may be so withdrawn. Any such withdrawal
is free of charge. A notice of withdrawal must be signed by
all the applicants. An appointed agent or appointed common
representative may sign such a notice on behalf of the
applicant or applicants who appointed him, but an applicant
who is considered to be the common representative may not
sign such a notice on behalf of the other applicants.

 Where the withdrawal of a priority claim causes a change in
the priority date of the international application, any time
limit which is computed from the original priority date and
which has not yet expired-for example, the time limit before
which processing in the national phase cannot start-is
computed from the priority date resulting from the change.
(It is not possible to extend the time limit concerned if it
has already expired when the priority claim is withdrawn.)
However,  if  the  notice  of  withdrawal  reaches  the
International Bureau after the completion of the technical
preparations  for  international  publication,  the
International Bureau may proceed with the international
publication on the basis of the time limit for international
publication as computed from the original priority date.

1860  International Preliminary Examination

  EXAMINATION PROCEDURE

 The International Preliminary Examination is to be carried
out in accordance with PCT Article 34 and PCT Rule 66. After
the Demand is checked for compliance with PCT Rules 53 - 55,
57 and 58, the first step of the examiner is to study the
description; the drawings (if any), and the claims of the
international application and the documents describing the
prior art as cited in the International Search Report.

  A  Written Opinion must be prepared if the examiner:

  1.  considers that the international application has
any of the defects described in PCT Article 34(4) concerning
subject matter which is not required to be examined or which
is unclear or inadequately supported,

  2.  considers that the report should be negative with
respect to any of the claims because of a lack of novelty,
inventive  step  (non  -  obviousness)  or  industrial
applicability as described in PCT Article 33(2) - (4),

  3.  notices any defects in the form or contents of the
international application.,

  4.  considers  that  any  amendment  goes  beyond  the
disclosure in the international application as originally
filed;

  5.  wishes to make an observation on the clarity of the
claims, the description, the drawings or to the question
whether the claims are fully supported by the description
(PCT Rule 66.2);

  6.  decides  not  to  carry  out  the  international
preliminary  examination  on  a  claim  for  which  no
International Search Report was issued; or

  7.  considers that no acceptable amino acid sequence
listing is available in a form that would allow a meaningful
international preliminary examination to be carried out.

 The Written Opinion is prepared on form PCT/IPEA/408 to
notify applicant of the defects found in the international
application. The examiner is further required to fully state
the reasons for his/her opinion (PCT Rule 66.2(b)) and
invite a written reply, with amendments where appropriate
(PCT Rule 66.2(c)) normally setting a 2 month time limit for
the reply.

 The applicant may respond to the invitation by making
amendments or, if applicant disagrees with the opinion of
the examiner, by submitting arguments, as the case may  be,
or both.

 The U.S. Rules of Practice pertaining to international
preliminary examination of international applications permit
a second Written Opinion in those cases where sufficient
time is available. Normally only one Written Opinion will be
issued. Any response received after the expiration of the
set time limit will not normally be considered in preparing
the  International  Preliminary  Examination  Report.  In
situations, however, where the examiner has requested an
amendment or where a later amendment places the application
in better condition for examination, the amendment may be
considered by the examiner.

 If the applicant does not respond to the Written Opinion
within the set time period, the International Preliminary
Examination Report will be prepared after expiration of the
time limit plus sufficient time to have any response clear
the Mail Room .

  If  after  initial  examination  of  the  international
application, there is no negative statement or comment to be
made, then only the International Preliminary Examination
Report will issue without a Written Opinion having been
issued.

1861  Chapter II Basic Flow

 **  Double Click here to see the image  **

1862  Agreement with the International Bureau To Serve
as an International Preliminary Examination Authority

  PCT Article 32 The International Preliminary Examining
  Authority

 (1)  International  preliminary  examination  shall  be
carried  out  by  the  International  Preliminary  Examining
Authority.

 (2)  In the case of demands referred to in Article
31(2)(a), the receiving Office, and, in the case of demands
referred to in Article 31(2)(b), the Assembly, shall, in
accordance  with  the  applicable  agreement  between  the
interested International Preliminary Examining Authority or
Authorities  and  the  International  Bureau,  specify  the
International Preliminary Examining Authority or Authorities
competent for the preliminary examination.

 (3)  The  provisions  of  Article  16(3)  shall  apply,
mutatis  mutandis,  in  respect  of  the  International
Preliminary Examining Authorities.

  PCT Article 34 Procedure before the International
 Preliminary Examining Authority

 (1)  Procedure  before  the  International  Preliminary
Examining Authority shall be governed by the provisions of
this Treaty, the Regulations, and the agreement which the
International Bureau shall conclude, subject to this Treaty
and the Regulations, with the said Authority.

  *****

  37 CFR 1.416.  The United States International Preliminary
  Examining Authority

 (a)  Pursuant to appointment by the Assembly, the United
States  Patent  and  Trademark  Office  will  act  as  an
International  Preliminary  Examining  Authority  for
international  applications  filed  in  the  United  States
Receiving Office and in other Receiving Offices as may be
agreed  upon  by  the  Commissioner,  in  accordance  with
agreement between the Patent and Trademark Office and the
International Bureau.

 (b)  The United States Patent and Trademark Office, when
acting as an International Preliminary Examining Authority,
will  be  identified  by  the  full  title  United  States
International Preliminary Examining Authority or by the
abbreviation IPEA/US.

 (c)  The  major  functions  of  the  International
Preliminary Examining Authority include:

 (1)  Receiving and checking for defects in the Demand;

 (2)  Collecting the handling fee for the International
Bureau and the preliminary examination fee for the United
States International Preliminary Examining Authority;

 (3)  Informing applicant of receipt of the Demand;

 (4)  Considering the matter of unity of invention;

 (5)  Providing an international preliminary examination
report which is a nonbinding opinion on the questions
whether the claimed invention appears to be novel, to
involve inventive step (to be non - obvious), and to be
industrially applicable; and

 (6)  Transmitting  the  international  preliminary
examination  report  to  applicant  and  the  International
Bureau.

 An agreement was concluded between the United States Patent
and Trademark Office (USPTO) and the International Bureau
under which the USPTO agreed to serve as an International
Preliminary Examining Authority for those applications filed
in  the  USPTO  as  a  Receiving  Office  and  for  those
international applications filed in other receiving Offices
for which the USPTO has served as an International Searching
Authority.

 The agreement is provided for in PCT Articles 32(2) & (3)
and 34(1), and in PCT Rules 59.1, 63.1, 72.1, and 77.1(a).
Authority is given in 35 U.S.C. 361(c), 362(a) & (b) and in
364(a). 37 CFR 1.416(a) and PCT Administrative Instruction
Section 103(c) are also relevant.

1864  The Demand and Preparation for Filing of Demand

  37 CFR 1.480.  Demand for international preliminary
  examination.

 (a)  On the filing of a Demand and payment of the fees
for international preliminary examination ( § 1.482), the
international  application  shall  be  the  subject  of  an
international  preliminary  examination.  The  preliminary
examination fee ( § 1.482(a)(1)) and the handling fee ( §
1.482(b)) shall be due at the time of filing of the Demand.

 (b)  The Demand shall be made on a standardized form.
Copies of printed Demand forms are available from the Patent
and Trademark Office. Letters requesting printed Demand
forms should be marked Box PCT .

 (c)  If the Demand is made prior to the expiration of
the 19th month from the priority date and the United States
of America is elected, the provisions of § 1.495 shall apply
rather than § 1.494.

 (d)  Withdrawal of a proper Demand prior to the start of
the  international  preliminary  examination  will  entitle
applicant to a refund of the preliminary examination fee
minus the amount of the transmittal fee set forth in §
1.445(a)(1).

 Once applicant has requested the filing of an international
application under Chapter I which affords applicants the
benefit of an international search, applicant has the right
to file a Demand for preliminary examination. The use of the
term "Demand" distinguishes Chapter II from the "Request"
under Chapter I. Applicants who timely and properly file a
Demand for preliminary examination are able to defer or
delay the time for entry into the national stage from 20
months (under Chapter I) to 30 months from the earliest

priority date. It is not possible to file a Demand unless a
proper Chapter I "Request" for an international application
has been filed.

 The Demand should be filed on PCT Form PCT/IPEA/401 along
with the fee transmittal sheet. These forms may be obtained
free of charge by requesting them by writing to the United
States Patent and Trademark Office, Box PCT, Washington D.C.
20231 or by telephone by calling (703) 305 - 3257.

1864.01  Amendments Filed with Demand

  PCT Rule 66 Procedure before the International Preliminary
  Examining Authority

  *****

  66.8.  Form of Amendments

 (a) The applicant shall be required to submit a replacement
sheet for every sheet of the international application
which, on account of an amendment, differs from the sheet
previously filed. The letter accompanying the replacement
sheets shall draw attention to the differences between the
replaced  sheets  and  the  replacement  sheets.  Where  the
amendment consists in the deletion of passages or in minor
alterations or additions, it may be made on a copy of the
relevant sheet of the international application, provided
that the clarity and direct reproducibility of that sheet
are not adversely affected. To the extent that any amendment
results  in  the  cancellation  of  an  entire  sheet,  that
amendment shall be communicated in a letter.

 (b)  [Deleted]

  *****

 37 CFR 1.485.  Amendments by applicant during international
  preliminary examination.

 (a)  The applicant may make amendments at the time of
filing of the Demand and within the time limit set by the
International Preliminary Examining Authority for response
to any notification under § 1.484(b) or to any written
opinion. Any such amendments must:

 (1)  Be made by submitting a replacement sheet for every
sheet of the application which differs from the sheet it
replaces unless an entire sheet is cancelled, and

 (2)  Include a description of how the replacement sheet
differs from the replaced sheet.

 (b)  If an amendment cancels an entire sheet of the
international  application,  that  amendment  shall  be
communicated in a letter.

 Amendments may be filed with the Demand (PCT Article 34) if
desired to place the application claims in better condition
for international preliminary examination. Such amendments,
however, may not include new matter and must be accompanied
by a description of how the replacement sheet differs from
the replaced sheet.

 Amendments filed after the Demand cannot be assured of

consideration since the examiner will be taking up the
application to draft the written opinion rather promptly
because of the short examination period.

1864.02  Applicant's Right to File a Demand

  PCT Article 31 Demand for International Preliminary
  Examination

  *****

 (2)(a)  Any applicant who is a resident or national,
as defined in the Regulations, of a Contracting State bound
by Chapter II, and whose international application has been
filed with the receiving Office of or acting for such State,
may make a demand for international preliminary examination.

  *****

  PCT Rule 54 The Applicant Entitled to Make a Demand

 54.1.  Residence and Nationality

 The residence or nationality of the applicant shall, for
the purposes of Article 31(2), be determined according to
Rules 18.1 and 18.2.

  54.2.  Two or More Applicants

 If there are two or more applicants, the right to make a
demand under Article 31(2) shall exist if at least one of
the applicants making the demand is

 (i)  a resident or national of a Contracting State bound
by Chapter II and the international application has been
filed with a receiving Office of or acting for a Contracting
State bound by Chapter II, or

 (ii)  a person entitled to make a demand under Article
31(2)(b) and the international application has been filed as
provided in the decision of the Assembly.

  54.3.  [Deleted]

 54.4.  Applicant Not Entitled to Make a Demand

 (a)  If the applicant does not have the right to make a
demand or, in the case of two or more applicants, if none of
them has the right to make a demand under Rule 54.2, the
demand shall be considered not to have been submitted.

 (b)  [Deleted]

 If there is a sole applicant, he must be a resident or
national of a Contracting State bound by Chapter II of the
PCT. If there are two or more applicants, it is sufficient
that one of them be a resident or national of a Contracting
State  bound  by  Chapter  II,  regardless  of  the  elected
State(s)  for  which  each  applicant  is  indicated.  Only
applicants  for  the  elected  States  are  required  to  be
indicated in the Demand. The detailed requirements for the
various  indications  required  in  connection  with  each
applicant (name and address, telephone number, facsimile
machine  number  or  teleprinter  address,  nationality  and
residence) are the same as those required under Rule 4 in

connection with the Request. Note that any inventor who is
not also an applicant is not indicated in the Demand.

 If the recording of a change in the name or person has been
requested under PCT Rule 92bis.1 before the Demand was
filed, it is the applicant(s) of record at the time when the
Demand is filed who must be indicated in the Demand.

1864.03  States Which May Be Elected

  PCT Article 31 Demand for International Preliminary
  Examination

  *****

 (4)(a)  The demand shall indicate the Contracting
State or States in which the applicant intends to use the
results  of  the  international  preliminary  examination  (
elected States ). Additional Contracting States may be
elected later. Election may relate only to Contracting
States already designated under Article 4.

 (b)  Applicants referred to in paragraph (2)(a) may
elect any Contracting State bound by Chapter II. Applicants
referred  to  in  paragraph  (2)(b)  may  elect  only  such
Contracting States bound by Chapter II as have declared that
they are prepared to be elected by such applicants.

  *****

 Only PCT member states which have ratified or acceded to
Chapter II and which were designated in the Request may be
elected under Chapter II. The Assembly has taken no action
to allow persons who are residents or nationals of a State
not party to the PCT or not bound by Chapter II to make a
Demand under Article 31(2)(b).

1864.04  Agent's Right to Act

 Any agent entitled to practice before the receiving Office
where the international application was filed may represent
the applicant before the international authorities (PCT
Article 49).

 If for any reason, the examiner needs to question the right
of an attorney or agent to practice before the International
Preliminary  Examining  Authority,  the  USPTO  roster  of
registered attorneys and agents should be consulted. If the
international application was filed with a receiving Office
other than the United States, Form PCT/IPEA/410 may be used
by the requesting IPEA to ask the receiving Office with
which the international application was filed, whether the
agent named in the international application has the right
to practice before that Office.

 The PCT Article and Regulations governing the right to
practice are Article 49 and Rule 83.

1865  Filing of Demand [R - 3]

  PCT Article 31 Demand for International Preliminary
  Examination

 (1)  On the demand of the applicant, his international
application  shall  be  the  subject  of  an  international

preliminary  examination  as  provided  in  the  following
provisions and the Regulations.

  *****

 (3) The demand for international preliminary examination
shall be made separately from the international application.
The demand shall contain the prescribed particulars and
shall be in the prescribed language and form.

  *****

 (6)(a) The demand shall be submitted to the competent
International Preliminary Examining Authority referred to in
Article 32.

  *****

 Applicants should mail the Demand and appropriate fees
directly  to  the  International  Preliminary  Examining
Authority  they  desire  to  prepare  the  International
Preliminary Examination Report. U.S. applicants who have had
the international search prepared by the European Patent
Office may also request the European Patent Office to act as
the International Preliminary Examining Authority.

 Demands filed in the European Patent Office should be
addressed to:

 European Patent Office

 Erhardstrasse 27

 8000 Munich 2,

 Federal Republic of Germany.

 Demands directed to the United States Patent and Trademark
Office should be addressed to:

 **>Assistant Commissioner for Patents<

 Box PCT

 Washington, D.C. 20231.

 The >"<Express Mail*>"< provisions of 37 CFR 1.10 may be
used to file a Demand under Chapter II in the USPTO.
Applicants are advised that failure to comply with the
provisions of 37 CFR 1.10 will result in the paper or fee
being accorded the date of receipt and not the date of
deposit. >See MPEP § 513.<

 A Demand for international preliminary examination may be
submitted to the USPTO via facsimile. The Certificate of
Mailing or Transmission practice under 37 CFR 1.8 CANNOT be
used to file a Demand if the date of deposit is desired. If
used, the date of the Demand will be the date of receipt in
the USPTO. See MPEP § 513, § 1834, and § 1834.01.

 All Demands filed in the USPTO must be in the English
language.

  CHOICE OF EXAMINING AUTHORITY

 U.S. residents and nationals may choose to have the
International Preliminary Examination done either by the
IPEA/EP or the IPEA/US. The IPEA/EP has agreed that it would
act as International Preliminary Examining Authority for any
Chapter II case in which it served as the ISA. The IPEA/US
will serve as International Preliminary Examining Authority
for U.S. residents and nationals if the U.S. or EPO served
as ISA.

 The IPEA/US will also serve as International Preliminary
Examining Authority for residents or nationals of Mexico,
Trinidad and Tobago, *Barbados>, Israel, and New Zealand< if
the U.S. was the International Searching Authority.

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1866  Filling in of Headings on Chapter II Forms

 The examiner will encounter several different forms for use
in the Chapter II preliminary examination phase and most of
the forms will have the same "header" information to be
provided.

 The notes below list the common identifying information
requested on the top of the first page of most of the forms:

  Applicant's  mailing  address  -  this  is  usually  the
attorney's address taken from the file wrapper.

 Applicant's or Agent's File Reference - this is the
applicant's or agent's application reference (or docket
number) which is composed of either letters or numbers, or
both,  provided  this  reference  does  not  exceed  twelve
characters. This reference may be found in the upper right
hand  box  on  the  first  sheet  of  the  Demand,  Form
PCT/IPEA/401. See Administrative Instruction Section 109.

 International Application Number - this is the 14 digit PCT
application serial number as stamped and typed on the
international application file wrapper and may also be found
on the first page of the Demand, Form PCT/IPEA/401.

 International Filing Date - this is the filing date printed
on the international application file wrapper and may also
be found on the first page of the Demand, Form PCT/IPEA/401.

 Applicant(Name) - the first named applicant as set forth on
the international application file wrapper and may also be
found in box II of the Demand, Form PCT/IPEA/401.

1867  Preliminary Examination Fees

 A preliminary examination fee is due on filing of the
Demand. This fee is for the benefit of the International
Preliminary Examining Authority and the amount for the U.S.

doing the preliminary examination is specified in 37 CFR
1.482. The fee is somewhat higher if the international
search was performed by an authority other than the USPTO.

  The  handling  fee  is  a  fee  for  the  benefit  of  the
International Bureau and is collected by the International
Preliminary Examining Authority. The amount of the handling
fee is set out in the PCT schedule of fees which is annexed
to the PCT Regulations.

 The current amount of both the preliminary examination fee
and the handling fee can be found in each weekly issue of
the Official Gazette . Since supplements to the handling fee
were deleted, no additional Chapter II fees are required
other than any additional preliminary examination fee where
additional inventions are determined to be present. The
amount of this fee is also specified in 37 CFR 1.482 and in
the weekly issues of the  Official Gazette . See also PCT
Rules 57 and 58.

1868  Correction of Defects in the Demand

  PCT Rule 60 Certain Defects in the Demand or Elections

  60.1.  Defects in the Demand

 (a)  If the demand does not comply with the requirements
specified in Rules 53.1, 53.2(a)(i) to (iv), 53.2(b), 53.3
to 53.8 and 55.1, the International Preliminary Examining
Authority shall invite the applicant to correct the defects
within a time limit which shall be reasonable under the
circumstances. That time limit shall not be less than one
month from the date of the invitation. It may be extended by
the International Preliminary Examining Authority at any
time before a decision is taken.

 (b)  If the applicant complies with the invitation
within the time limit under paragraph (a), the demand shall
be considered as if it had been received on the actual
filing date, provided that the demand as submitted contained
at  least  one  election  and  permitted  the  international
application to be identified; otherwise, the demand shall be
considered as if it had been received on the date on which
the International Preliminary Examining Authority receives
the correction.

 (c)  Subject to paragraph (d), if the applicant does not
comply with the invitation within the time limit under
paragraph (a), the demand shall be considered as if it had
not been submitted.

 (d)  Where, after the expiration of the time limit under
paragraph (a), a signature required under Rule 53.8 or a
prescribed indication is lacking in respect of an applicant
for a certain elected State, the election of that State
shall be considered as if it had not been made.

 (e)  If the defect is noticed by the International
Bureau, it shall bring the defect to the attention of the
International Preliminary Examining Authority, which shall
then proceed as provided in paragraphs (a) to (d).

 (f)  If  the  demand  does  not  contain  a  statement
concerning  amendments,  the  International  Preliminary
Examining Authority shall proceed as provided for in Rules

66.1 and 69.1(a) or (b).

 (g)  Where the statement concerning amendments contains
an indication that amendments under Article 34 are submitted
with the demand (Rule 53.9(c)) but no such amendments are,
in fact, submitted, the International Preliminary Examining
Authority  shall  invite  the  applicant  to  submit  the
amendments within a time limit fixed in the invitation and
shall proceed as provided for in Rule 69.1(e).

  60.2.  Defects in Later Elections

 (a)  If the notice effecting a later election does not
comply with the requirements of Rule 56, the International
Bureau shall invite the applicant to correct the defects
within a time limit which shall be reasonable under the
circumstances. That time limit shall not be less than one
month from the date of the invitation. It may be extended by
the International Bureau at any time before a decision is
taken.

 (b)  If the applicant complies with the invitation
within the time limit under paragraph (a), the notice shall
be considered as if it had been received on the actual
filing date, provided that the notice as submitted contained
at  least  one  election  and  permitted  the  international
application to be identified; otherwise, the notice shall be
considered as if it had been received on the date on which
the International Bureau receives the correction.

 (c)  Subject to paragraph (d), if the applicant does not
comply with the invitation within the time limit under
paragraph (a), the notice shall be considered as if it had
not been submitted.

 (d)  Where, in respect of an applicant for a certain
elected State, the signature required under Rule 56.1(b) and
(c) or the name or address is lacking after the expiration
of the time limit under paragraph (a), the later election of
that State shall be considered as if it had not been made.

 Defects in the Demand may be corrected. The type of
correction determines whether the filing date of the Demand
must be changed. The most common defects which result in the
mailing of an invitation to correct are found in PCT Rules
53,  55  and  57.4.  If  the  applicant  complies  with  the
invitation, the Demand is considered as if it had been
received on the actual filing date, i.e., the original date
of receipt. See PCT Rule 60.1(b).

1869  Notification to International Bureau of Demand

  PCT Article 31 Demand for International Preliminary
  Examination

  *****

 (7)  Each elected Office shall be notified of its
election.

 The International Preliminary Examining Authority, pursuant
to PCT Rule 61, promptly notifies the International Bureau
and  the  applicant  of  the  filing  of  any  Demand.  The
International Bureau in turn notifies each elected Office of
their election and also notifies the applicant that such

notification has been made.

1870  Priority Document and Translation Thereof

  PCT Rule 66 Procedure before the International Preliminary
  Examining Authority

  *****

  66.7.  Priority Document

 (a)  If  the  International  Preliminary  Examining
Authority needs a copy of the application whose priority is
claimed in the international application, the International
Bureau shall, on request, promptly furnish such copy. If
that copy is not furnished to the International Preliminary
Examining Authority because the applicant failed to comply
with  the  requirements  of  Rule  17.1,  the  international
preliminary examination report may be established as if the
priority had not been claimed.

 (b)  If the application whose priority is claimed in the
international application is in a language other than the
language or one of the languages of the International
Preliminary Examining Authority, that Authority may invite
the applicant to furnish a translation in the said language
or one of the said languages within two months from the date
of the invitation. If the translation is not furnished
within  that  time  limit,  the  international  preliminary
examination report may be established as if the priority had
not been claimed.

  *****

 A copy of the priority document may be required by the
examiner if necessary because of an intervening reference,
and a translation thereof, if the priority document is not
in English.

1871  Processing Amendments Filed Under Article 19 and
Article 34 Prior to or at the Start of International
Preliminary Examination

  PCT Rule 62 Copy of Amendments under Article 19 for the
 International Preliminary Examining Authority

  62.1.  Amendments Made before the Demand is Filed

 Upon receipt of a demand from the International Preliminary
Examining Authority, the International Bureau shall promptly
transmit a copy of any amendments under Article 19 to that
Authority, unless that Authority has indicated that it has
already received such a copy.

  62.2.  Amendments Made after the Demand is Filed

 (a)  If, at the time of filing any amendments under
Article  19,  a  demand  has  already  been  submitted,  the
applicant shall preferably, at the same time as he files the
amendments with the International Bureau, also file a copy
of  such  amendments  with  the  International  Preliminary
Examining Authority. In any case, the International Bureau
shall promptly transmit a copy of such amendments to that
Authority.

 (b)  [Deleted]

 The documents making up the international application may
include amendments of the claims filed by the applicant
under Article 19. Article 19 amendments are exclusively
amendments to the claims and these amendments can only be
made after the search report has been established. Article
19 amendments will be transmitted to the International
Preliminary Examining Authority by the International Bureau.
If a Demand for international preliminary examination has
already been submitted, the applicant should preferably, at
the time he files the Article 19 amendments, also file a
copy of the amendments with the International Preliminary
Examining Authority. In the event that the time limit for
filing amendments under Article 19, as provided in Rule
46.1, has not expired and the Demand includes a statement
that the start of the international preliminary examination
is to be postponed under Rule 53.9(b), the international
preliminary examination should not start before the examiner
receives a copy of any amendments made under Article 19 or a
notice from the applicant that he does not wish to make
amendments under Article 19, or before the expiration of 20
months from the priority date, whichever occurs first.

 The applicant has the right to amend the claims, the
description, and the drawings, in the prescribed manner and
before the start of international preliminary examination.
The amendment must not go beyond the disclosure in the
international application as filed. These amendments are
referred to as Article 34(2)(b) amendments. It should be
noted that Article 19 amendments are strictly amendments to
the claims made during the Chapter I search phase while
Article 34(2)(b) amendments to the description, claims, and
drawings are made during the Chapter II examination phase.

 When amendments to the description, claims, or drawings are
made  under  Rule  66.8,  they  may  be  accompanied  by  an
explanation. These amendments may have been submitted to
avoid possible objections as to lack of novelty or lack of
inventive step in view of the citations listed in the
international search report; to meet any objections noted by
the  International  Searching  Authority  under  Article
17(2)(a)(ii) (i.e., that all or at least some claims do not
permit a meaningful search) or under Rule 13 (i.e., that
there  is  a  lack  of  unity  of  invention);  or  to  meet
objections that may be raised for some other reason; e.g.,
to remedy some obscurity which the applicant himself/herself
has noted in the original documents.

 The amendments are made by the applicant of his/her own
volition. This means that the applicant is not restricted to
amendments  necessary  to  remedy  a  defect  in  his/her
international application. It does not, however, mean that
the applicant should be regarded as free to amend in any way
he/she chooses. Any amendment must not add subject matter
which  goes  beyond  the  disclosure  of  the  international
application as originally filed. Furthermore, it should not
itself cause the international application as amended to be
objectionable under the PCT, e.g., the amendment should not
introduce obscurity.

 As a matter of policy and to ensure consistency in handling
amendments filed under Articles 19 and 34 of the PCT, the
following guidelines for processing these amendments have
been established:

  (1)  Any amendment which complies with 37 CFR
1.485(a) will be considered;

  (2)  Amendments filed after the Demand

  (a) will  be  considered  if  filed  before  the
application is docketed to the examiner,

  (b)  may be considered if filed after docketing.
The examiner has discretion to consider such amendments if
the  examiner  determines  that  the  amendment  places  the
application in better condition for examination or the
examiner determines that the amendment should otherwise be
entered;

  (3) Amendments  filed  after  expiration  of  the
period for response to the written opinion

  (a) will  be  considered  if  the  amendment  was
requested by the examiner,

  (b)  may be considered if the examiner determines
that  the  amendment  places  the  application  in  better
condition for examination or the examiner determines that
the amendment should otherwise be entered.

 It is expected, due to the relatively short time period for
completion of preliminary examination, that the Chapter II
application will be taken up for preparation of the written
opinion promptly after docketing to the examiner and taken
up for preparation of the final report promptly after the
time expires for response to the written opinion (i.e.,
after allowing for mail processing). The examiner is not
obliged to consider amendments or arguments which are filed
after he/she has taken up the case for preparation of the
written opinion or the final report.

 Amendments timely filed but misdirected or are otherwise
late reaching the examiner will be considered as in the case
of  regular  domestic  applications  and  may  require  a
supplemental written opinion and/or final report.

 Clearly, these guidelines offer the examiner flexibility.
The examiner should be guided by the over - riding principle
that  the  final  report  (the  PCT/IPEA/409)  should  be
established with as few written opinions as possible and
resolution of as many issues as possible consistent with the
goal of a timely and quality report.

 See also Administrative Instruction Section 602 regarding
processing of amendments by the International Preliminary
Examining Authority.

1872  Transmittal of Demand to the Examining Corps

  PCT Administrative Instructions Section 605 File to be
  used for International Preliminary Examination

 Where the International Preliminary Examining Authority is
part  of  the  same  national  Office  or  intergovernmental
organization as the International Searching Authority, the
same file shall serve the purposes of international search
and international preliminary examination.

 When the PCT International Division has finished processing
of the papers and fees filed with a complete Demand, a copy
of  the  Demand  and  other  papers  are  forwarded  to  the
appropriate examining group for examination. The documents
will  be  placed  in  the  Search  Copy  file  wrapper  when
forwarded to the examining corps.

1873  Later Election of States

  PCT Article 31 Demand for International Preliminary
  Examination

  *****

 (6)(b) Any later election shall be submitted to the
International Bureau.

  *****

  PCT Rule 56 Later Elections

  56.1.  Elections Submitted Later Than the Demand

 (a)  The election of States subsequent to the submission
of the demand (later election ) shall be effected by a
notice submitted to the International Bureau. The notice
shall identify the international application and the demand,
and shall include an indication as referred to in Rule
53.7(b)(ii).

 (b)  Subject to paragraph (c), the notice referred to in
paragraph (a) shall be signed by the applicant for the
elected States concerned or, if there is more than one
applicant for those States, by all of them.

 (c)  Where  two  or  more  applicants  file  a  notice
effecting a later election of a State whose national law
requires that national applications be filed by the inventor
and where an applicant for that elected State who is an
inventor refused to sign the notice or could not be found or
reached after diligent effort, the notice need not be signed
by that applicant ( the applicant concerned ) if it is
signed by at least one applicant and

 (i)  a  statement  is  furnished  explaining,  to  the
satisfaction  of  the  International  Bureau,  the  lack  of
signature of the applicant concerned, or

 (ii)  the applicant concerned did not sign the request
but the requirements of Rule 4.15(b) were complied with, or
did not sign the demand but the requirements of Rule 53.8(b)
were complied with.

 (d)  An applicant for a State elected by a later
election need not have been indicated as an applicant in the
demand.

 (e)  If a notice effecting a later election is submitted
after the expiration of 19 months from the priority date,
the International Bureau shall notify the applicant that the
election does not have the effect provided for under Article
39(1)(a) and that the acts referred to in Article 22 must be
performed in respect of the elected Office concerned within
the time limit applicable under Article 22.

 (f) If, notwithstanding paragraph (a), a notice effecting a
later  election  is  submitted  by  the  applicant  to  the
International Preliminary Examining Authority rather than
the International Bureau, that Authority shall mark the date
of receipt on the notice and transmit it promptly to the
International Bureau. The notice shall be considered to have
been submitted to the International Bureau on the date
marked.

  56.2.  Identification of the International Application

  The  international  application  shall  be  identified  as
provided in Rule 53.6.

  56.3.  Identification of the Demand

 The demand shall be identified by the date on which it was
submitted and by the name of the International Preliminary
Examining Authority to which it was submitted.

  56.4.  Form of Later Elections

 The notice effecting the later election shall preferably be
worded  as  follows:  In  relation  to  the  international
application  filed  with  ...  on  ...  under  No.  ...  by
...(applicant) (and the demand for international preliminary
examination submitted on ... to ...), the undersigned elects
the following additional State(s) under Article 31 of the
Patent Cooperation Treaty: ...

  56.5.  Language of Later Elections

 The later election shall be in the language of the demand.

 Applicants may, after filing of the Demand, later, but
still  within  19  months  of  the  priority  date,  elect
additional States which have been previously designated and
obtain the benefit of delaying the national stage until 30
months after the priority date in the additional elected
States. All such later elections must be filed directly with
the  International  Bureau  and  not  the  International
Preliminary Examining Authority. Elections received after 19
months will not delay the time for entry into the national
stage from 20 to 30 months.

1874  Determination if International Preliminary
Examination is Required and Possible [R - 1]

  PCT Article 34 Procedure before the International
 Preliminary Examining Authority

  *****

 (4)(a)  If the International Preliminary Examining
Authority considers

 (i)  that the international application relates to a
subject  matter  on  which  the  International  Preliminary
Examining Authority is not required, under the Regulations,
to carry out an international preliminary examination, and
in the particular case decides not to carry out such
examination, or

 (ii)  that the description, the claims, or the drawings,
are so unclear, or the claims are so inadequately supported

by the description, that no meaningful opinion can be formed
on the novelty, inventive step (non - obviousness), or
industrial applicability, of the claimed invention, the said
authority shall not go into the questions referred to in
Article 33(1) and shall inform the applicant of this opinion
and the reasons therefor.

 (b)  If  any  of  the  situations  referred  to  in
subparagraph (a) is found to exist in, or in connection
with,  certain  claims  only,  the  provisions  of  that
subparagraph shall apply only to the said claims.

  There  are  instances  where  international  preliminary
examination is not required because of the nature of the
subject matter claimed and also because the claims are so
indefinite that no examination is possible. Such instances
should seldom occur, especially since most problems of this
nature would have already been discovered and indicated at
the time of the international search.

 If it is found that certain claims of an international
application  relate  to  subject  matter  for  which  no
international preliminary examination is required, on Form
PCT/IPEA/408, check the appropriate box. It should be noted
that subject matter which is normally examined under U.S.
national  procedure  should  also  be  examined  as  an
International Preliminary Examining Authority.

 The examiner should check the appropriate box if it is
found that the description, claims or drawings are so
unclear, or the claims are so inadequately supported by the
description that no opinion could be formed as to the
novelty,  inventive  step  (nonobviousness)  and  industrial
applicability of the claimed invention.

 Subject matter not searched under Chapter I will not be the
subject of a preliminary examination under Chapter II. This
is so even if claims which were not searched under Chapter I
are modified to be acceptable for examination.

 **

1875  Unity of Invention Before the International
Preliminary Examining Authority [R - 1]

  PCT Article 34 Procedure before the International
 Preliminary Examining Authority

  *****

 (3)(a)  If the International Preliminary Examining
Authority considers that the international application does
not comply with the requirement of unity of invention as set
forth in the Regulations, it may invite the applicant, at
his option, to restrict the claims so as to comply with the
requirement or to pay additional fees.

  *****

 (c)  If  the  applicant  does  not  comply  with  the
invitation  referred  to  in  subparagraph  (a)  within  the
prescribed  time  limit,  the  International  Preliminary
Examining  Authority  shall  establish  an  international
preliminary  examination  report  on  those  parts  of  the
international application which relate to what appears to be

the main invention and shall indicate the relevant facts in
the said report. The national law of any elected State may
provide that, where its national Office finds the invitation
of  the  International  Preliminary  Examining  Authority
justified, those parts of the international application
which do not relate to the main invention shall, as far as
effects in that State are concerned, be considered withdrawn
unless a special fee is paid by the applicant to that
Office.

  *****

 37 CFR 1.488.  Determination of unity of invention
before the International Preliminary Examining Authority.

 (a)  Before establishing any written opinion or the
international  preliminary  examination  report,  the
International Preliminary Examining Authority will determine
whether the international application complies with the
requirement of unity of invention as set forth in § 1.475.

 (b)  If  the  International  Preliminary  Examining
Authority considers that the international application does
not comply with the requirement of unity of invention, it
may:

 (1)  Issue a written opinion and/or an international
preliminary examination report, in respect of the entire
international  application  and  indicate  that  unity  of
invention  is  lacking  and  specify  the  reasons  therefor
without  extending  an  invitation  to  restrict  or  pay
additional fees. No international preliminary examination
will be conducted on inventions not previously searched by
an International Searching Authority.

 (2)  Invite the applicant to restrict the claims or pay
additional  fees,  pointing  out  the  categories  of  the
invention found, within a set time limit which will not be
extended. No international preliminary examination will be
conducted  on  inventions  not  previously  searched  by  an
International **>Searching< Authority, or

 (3)  If applicant fails to restrict the claims or pay
additional fees within the time limit set for response, the
International Preliminary Examining Authority will issue a
written  opinion  and/or  establish  an  international
preliminary examination report on the main invention and
shall indicate the relevant facts in the said report. In
case of any doubt as to which invention is the main
invention, the invention first mentioned in the claims and
previously searched by an International Searching Authority
shall be considered the main invention.

 (c)  Lack of unity of invention may be directly evident
before considering the claims in relation to any prior art,
or after taking the prior art into consideration,, as where
a document discovered during the search shows the invention
claimed in a generic or linking claim lacks novelty or is
clearly obvious, leaving two or more claims joined thereby
without a common inventive concept. In such a case the
International Preliminary Examining Authority may raise the
objection of lack of unity of invention.

 The examiner will usually begin the preliminary examination
by checking the international application for unity of

invention. The international preliminary examination will
only be directed to inventions which have been searched by
the International Searching Authority. All claims directed
to  inventions  which  have  not  been  searched  by  the
International Searching Authority will not be considered by
the International Preliminary Examining Authority. If the
examiner  in  the  International  Preliminary  Examining
Authority finds lack of unity of invention in the claims to
be examined, an invitation is normally prepared and sent to
the applicant requesting the payment of additional fees or
the restriction of the claims on Form PCT/IPEA/405. Such an
invitation will include the identification of what the
examiner considers to be the "main invention" which will be
examined if no additional fees are paid or restriction is
made by the applicant.

  The  procedure  before  the  International  Preliminary
Examining Authority regarding lack of unity of invention is
governed by PCT Article 34(3)(a) through (c), PCT Rule 68
(see also PCT Rule 70.13), and 37 CFR 1.475 and 1.488. It
should be noted that in most instances lack of unity of
invention will have been noted and reported upon by the
International Searching Authority which will have drawn up
an International Search Report based on those parts of the
international application relating to the invention, or
unified linked group of inventions, first mentioned in the
claims ( main invention ). If the applicant has paid
additional search fees, additional inventions would also
have been searched. No international preliminary examination
will be conducted on inventions not previously searched by
an International Searching Authority (37 CFR 1.488(b)(2)).

 Unity of invention must be addressed within 7 days from the
date the PCT application is charged to the examining group
from PCT International Division. This simply means that a
determination  must  be  made  as  to  whether  or  not  the
international application relates to one invention or to a
group of inventions so linked as to form a single general
inventive concept.

 If it is determined that the international application does
meet  the  requirements  for  unity  of  invention  and  no
additional  fees  will  be  requested,  the  international
application must be returned to the Paralegal Specialist in
the examining group so that an indication to that affect may
be made on the PALM System which monitors deadlines such as
the deadline for checking unity of invention.

 If the examiner determines that unity of invention is
lacking, there are two options:

  1.  The  examiner  may  conduct  an  international
preliminary  examination  covering  all  the  claimed  and
previously searched inventions and indicate that unity of
invention  is  lacking  and  specify  the  reasons  therefor
without  extending  an  invitation  to  restrict  or  pay
additional fees (PCT Rule 68.1), or

  2.  The examiner may invite the applicant to restrict
the claims, so as to comply with the requirement, or pay
additional fees, pointing out the categories of invention
found. The invitation to restrict or pay additional fees
shall  state  the  reasons  for  which  the  international
application  is  considered  as  not  complying  with  the
requirement  of  unity  of  invention.  (PCT  Rule  68.2).

Inventions not previously searched will not be considered or
included in the invitation.

  The  Written  Opinion,  if  any,  and  the  International
Preliminary Examination Report must be established on all
inventions for which examination fees have been paid.

 If the applicant fails to respond to the invitation to
restrict the claims or pay additional examination fees due
to lack of unity of invention, the Written Opinion and
Report must be established on the claims directed to what
appears to be the main invention, (PCT Article 34(3)(c)).
The main invention, in case of doubt, is the first claimed
invention for which an International Search Report has been
issued by the International Searching Authority. The main
invention, as viewed by the examiner, must be set forth on
Form PCT/IPEA/405.

 Whether or not the question of unity of invention has been
raised by the International Searching Authority, it may be
considered by the examiner when serving as an authorized
officer  of  the  International  Preliminary  Examining
Authority. In the examiner's consideration, all documents
cited by the International Searching Authority should be
taken into account and any additional relevant documents
considered. However, there are cases of lack of unity of
invention, where, compared with the procedure of inviting
the applicant to restrict the international application or
pay additional fees (PCT Rule 68.2), little or no additional
effort is involved in establishing the Written Opinion and
the International Preliminary Examination Report for the
entire international application. Then reasons of economy
may make it advisable for the examiner to use the option
referred to in PCT Rule 68.1 by choosing not to invite the
applicant to restrict the claims or to pay additional fees.

 Unity of invention is defined by 37 CFR 1.475 which
describes the circumstances in which the requirement of
unity of invention is considered fulfilled.

1875.01  Preparation of Invitation Concerning Unity [R - 3]

 The Invitation to restrict or pay additional fees Form
PCT/IPEA/405, is used to invite the applicant, at his/her
option,  to  restrict  the  claims  to  comply  with  the
requirements of unity of invention or, to pay additional
examination fees. In addition, the examiner must explain the
reasons why the international application is not considered
to comply with the requirement of unity of invention. The
examiner must also specify, on Form PCT/IPEA/405, at least
one group or groups of claims which, if elected, would
comply with the requirement for unity of invention.

  INVITATION

 In the space provided on form PCT/IPEA/405, the examiner
should identify the disclosed inventions by claim numerals
and indicate which disclosed inventions are so linked as to
form a single general inventive concept, thereby complying
with the requirement of unity of invention. For example,
claims to different categories of invention such as a
product, claims to a process specifically adapted for the
manufacture of the product and a claim for a use of the
product would be considered related inventions which comply
with the unity of invention requirement, whereas a claim to

an apparatus for making the product in the same application
would be considered a second invention for which additional
fees would be required. The reasons for holding that unity
of invention is lacking must be specified. See 37 CFR 1.475
and Annex B of the Administrative Instructions.

 Also, the examiner should specify the main invention and
claims directed thereto which will be examined if the
applicant fails to restrict or pay additional fees. The main
invention, in case of doubt, is the first claimed invention
or related invention before the International Preliminary
Examining Authority for which a search fee has been paid and
an International Search Report has been prepared.

 The examiner should indicate the total amount of additional
fees required for examination of all claimed inventions.

 In the box provided at the top of the form, the time limit
for response is set according to PCT Rule 68.2, normally a 1
month time limit. Extensions of time are not permitted.

 Since the space provided on Form PCT/IPEA/405 is limited,
supplemental attachment sheets, supplied by the examiner,
with reference back to the specific section, should be
incorporated whenever necessary.

 AUTHORIZED OFFICER

 Form PCT/IPEA/405 must be signed by an examiner with at
least partial signatory authority.

 TELEPHONIC RESTRICTION PRACTICE

 Telephone practice may be used in certain cases to allow
applicants to elect an invention to be examined or to pay
additional fees. Additional fees may be charged to a deposit
account using the telephone practice only if:

  (1) The  Demand  for  International  Preliminary
Examination included an authorization to charge additional
fees to a deposit account,

  (2)  Applicant or the legal representative or agent
orally agrees to charge the additional fees to the account,
and

  (3)  A  complete  record  of  the  telephone
conversation is included with the Written Opinion including:

  (a)  Examiner's name;

  (b)  Authorizing attorney's name;

  (c)  Date of conversation;

  (d)  Invention elected and/or inventions for which
additional fees paid; and

  (e) Deposit  account  number  and  amount  to  be
charged.

 If applicant or the legal representative or agent refuses
to either restrict the claims to one invention or authorize
payment of additional fees, Form PCT/IPEA/405 should be
prepared and mailed to applicant.

 When the telephone practice is used in making lack of unity
requirements, it is critical that the examiner orally inform
applicant that there is no right to protest the holding of
lack of unity of invention for any group of invention(s) for
which no additional examination fee has been paid.

 The examiner must further orally advise applicant that any
protest to the holding of lack of unity or the amount of
additional fee required must be filed in writing no later
than one month from the mailing date of the Written Opinion
or the International Preliminary Examination Report if the
lack of unity holding is first mailed with the IPER because
there was no Written Opinion. The examiner should fill in
the information on Form 499 "Chapter II PCT Telephone
Memorandum for Lack of Unity" as a record of the telephonic
holding of lack of unity.

 37 CFR 1.475.  Unity of invention before the
International Searching Authority, the International
Preliminary Examining Authority and during the national
stage.

 (a)  An international and a national stage application
shall relate to one invention only or to a group of
inventions so linked as to form a single general inventive
concept ("requirement of unity of invention"). Where a group
of inventions is claimed in an application, the requirement
of unity of invention shall be fulfilled only when there is
a technical relationship among those inventions involving
one or more of the same or corresponding special technical
features. The expression "special technical features" shall
mean those technical features that define a contribution
which each of the claimed inventions, considered as a whole,
makes over the prior art.

 (b)  An international or a national stage application
containing claims to different categories of invention will
be considered to have unity of invention if the claims are
drawn  only  to  one  of  the  following  combinations  of
categories:

 (1)  A product and a process specially adapted for the
manufacture of said product; or

 (2)  A product and a process of use of said product; or

 (3)  A product, a process specially adapted for the
manufacture of the said product, and a use of the said
product; or

 (4)  A process and an apparatus or means specifically
designed for carrying out the said process; or

 (5)  A product, a process specially adapted for the
manufacture of the said product, and an apparatus or means
specifically designed for carrying out the said process.

 (c)  If an application contains claims to more or less
than one of the combinations of categories of invention set
forth in paragraph (b) of this section, unity of invention
might not be present.

 (d)  If multiple products, processes of manufacture or
uses are claimed, the first invention of the category first

mentioned in the claims of the application and the first
recited invention of each of the other categories related
thereto will be considered as the main invention in the
claims, see PCT Article 17(3)(a) and § 1.476(c).

 (e)  The determination whether a group of inventions is
so linked as to form a single general inventive concept
shall be made without regard to whether the inventions are
claimed in separate claims or as alternatives within a
single claim.

¶ 18.05  Heading  for  Lack  of  Unity  Action  (NOT
INVOLVING SPECIES)

 This application contains the following inventions or
groups of inventions which are not so linked as to form a
single inventive concept under PCT Rule 13.1. In order for
all inventions to be examined, the appropriate additional
examination fees must be paid.

 Examiner Note:

 Begin all Lack of Unity Actions with this Heading.

¶ 18.06  Lack of Unity - Three Groups of Claims

 Group [1], claim(s) [2], drawn to [3].

 Group [4], claim(s) [5], drawn to [6].

 Group [7], claim(s) [8], drawn to [9].

 Examiner Note:

 1. In brackets 1, 4 and 7, insert Roman numerals for each
Group.

 2.  In brackets 2, 5 and 8, insert respective claim
numbers.

 3.  In brackets 3, 6 and 9, insert respective names of
grouped inventions.

¶ 18.06.01  Lack of Unity - Two (or Additional) Groups of
Claims

 Group [1], claim(s) [2], drawn to [3].

 Group [4], claim(s) [5], drawn to [6].

 Examiner Note:

 This form paragraph may be used alone or following form
paragraph 18.06.

¶ 18.06.02  Lack of Unity - One Additional Group of Claims

 Group [1], claim(s) [2], drawn to [3].

 Examiner Note:

 This form paragraph may be used following either 18.06. or
18.06.01.

¶ 18.07  Lack of Unity - Reasons Why Inventions Lack

Unity

 The inventions listed as Groups [1] do not relate to a
single inventive concept under PCT Rule 13.1 because, under
PCT Rule 13.2, they lack the same or corresponding special
technical features for the following reasons: [2].

 Examiner Note:

 1. In bracket 1, insert appropriate Roman numerals for
Groups involved.

 2.  In bracket 2, insert reasoning.

¶ 18.16  Lack of Unity - Species - Heading

 This application contains claims directed to more than one
species of the generic invention. The species identified
below are deemed to lack Unity of Invention because they are
not so linked as to form a single inventive concept under
PCT Rule 13.1. In order for more than one species to be
examined, the appropriate additional examination fees must
be paid. The species are as follows: [1]

 Examiner Note:

 1. In brackets 1, list each species, by Figure No. or
embodiment.

¶ 18.17  Lack of Unity - Species - Correspondence of
the Claims to the Species

 The claims are deemed to correspond to the species listed
above in the following manner: [1]

 The following claims are generic: [2]

 Examiner Note:

 1. This form paragraph is to be used immediately following
18.16.

 2.  In bracket 1, for each species, list the claims,
e.g. Fig., 1 - claims 1, 3, and 6.

 3. In bracket 2, identify each generic claim by number or
insert the word "NONE".

¶ 18.18  Lack of Unity - Species - Reasons Why Unity Is
Lacking

 The species listed above do not relate to a single
inventive concept under PCT Rule 13.1 because, under PCT
Rule 13.2, the species lack the same or corresponding
special technical features for the following reasons: [1].

 Examiner Note:

 1. This form paragraph is to be used immediately following
18.17.

 2.  In bracket 1, insert reasoning.

  > ¶  18.19  National Stage Restriction in 35 U.S.C.
371 Applications

 Restriction is required under 35 U.S.C. 121 and 372. This
application contains the following inventions or groups of
inventions which are not so linked as to form a single
general inventive concept under PCT Rule 13.1.

 In accordance with 37 CFR 1.499, applicant is required, in
response to this action, to elect a single invention to
which the claims must be restricted.

 Examiner Note:

 1.  This form paragraph is to be used when making a
restriction requirement in an application filed under the
provisions of 35 U.S.C. 371.

 2.  This form paragraph is to be followed by form
paragraphs 18.06 through 18.06.02, appropriate, and by form
paragraph 18.07.

¶ 18.20  National Stage Election of Species in 35
U.S.C. 371 Applications

 This application contains claims directed to more than one
species of the generic invention. These species are deemed
to lack unity of invention because they are not so linked as
to form a single general inventive concept under PCT Rule
13.1.

 The species are as follows:

  [1]

 Applicant is required, in response to this action, to elect
a single species to which the claims shall be restricted if
no generic claim is finally held to be allowable. The
response must also identify the claims readable on the
elected species, including any claims subsequently added. An
argument that a claim is allowable or that all claims are
generic is considered non - responsive unless accompanied by
an election.

 Upon the allowance of a generic claim, applicant will be
entitled to consideration of claims to additional species
which are written in dependant form or otherwise include all
the limitations of an allowed generic claim as provided by
37 CFR 1.141. If claims are added after the election,
applicant must indicate which are readable upon the elected
species. MPEP § 809.02(a).

 Examiner Note:

 1.  This form paragraph is to be used when making an
election of species requirement in an application filed
under the provisions of 35 U.S.C. 371.

 2.  In bracket 1, list each species by Fig. No. or
embodiment.

 3.  This form paragraph is to be followed by form
paragraphs 18.17 and 18.18.

¶ 18.21 National  Stage  Election  by  Original
Presentation in 35 U.S.C. 371 Applications

 Newly submitted claim [1] directed to an invention that
lacks unity with the invention originally claimed for the
following reasons:  [2]

 Since applicant has received an action on the merits for
the originally presented invention, the invention has been
constructively  elected  by  original  presentation  for
prosecution on the merits. Accordingly, claim [3] withdrawn
from  consideration  as  being  directed  to  a  nonelected
invention. See 37 CFR 1.142(b) and MPEP § 821.03.<

1875.02  Response to Invitation Concerning Lack of Unity of
Invention

  PCT Administrative Instructions Section 603 Transmittal of
  Protest Against Payment of Additional Fee and Decision
  Thereon Where International Application is Considered to
  Lack Unity of Invention

 The International Preliminary Examining Authority shall
transmit to the applicant, at the latest together with the
international preliminary examination report, any decision
which it has taken under Rule 68.3(c) on the protest of the
applicant against payment of the additional fee where the
international application is considered to lack unity of
invention. At the same time, it shall transmit to the
International Bureau a copy of both the protest and the
decision thereon, as well as any request by the applicant to
forward the texts of both the protest and the decision
thereon to the elected Offices.

 37 CFR 1.489.  Protest to lack of unity of invention
before the International Preliminary Examining Authority

 (a)  If the applicant disagrees with the holding of lack
of unity of invention by the International Preliminary
Examining Authority, additional fees may be paid under
protest, accompanied by a request for refund and a statement
setting forth reasons for disagreement or why the required
additional fees are considered excessive, or both.

 (b)  Protest under paragraph (a) of this section will be
examined by the Commissioner or the Commissioner's designee.
In the event that the applicant's protest is determined to
be justified, the additional fees or a portion thereof will
be refunded.

 (c)  An applicant who desires that a copy of the protest
and  the  decision  thereon  accompany  the  international
preliminary examination report when forwarded to the Elected
Offices, may notify the International Preliminary Examining
Authority to that effect any time prior to the issuance of
the  international  preliminary  examination  report.
Thereafter, such notification should be directed to the
International Bureau.

 Applicant may respond by paying some or all additional fees
or by restricting the claims to one invention. If applicant
makes no reply within the set time limit, the international
preliminary examination will proceed on the basis of the
main invention only.

 If applicant has paid an additional fee or fees, a protest
to the holding of lack of unity of invention may be filed
with the International Preliminary Examining Authority.

  NOTIFICATION OF DECISION ON PROTEST

 Form PCT/IPEA/420 is used by the examining group to inform
the applicant of the decision regarding applicant's protest
on the payment of additional fees concerning unity of
invention.

  NOTIFICATION

 The examining group checks the appropriate box; i.e., 1 or
2. If box 2 is checked, a clear and concise explanation as
to why the protest concerning the unity of invention was
found to be unjustified must be given.

  Since  the  space  is  limited,  supplemental  attachment
sheet(s) should be incorporated whenever necessary.

 AUTHORIZED OFFICER

 Form PCT/IPEA/420 must be signed by a Group Director.

1876  Notation of Errors and Informalities by the
Examiner [R - 1]

  PCT Administrative Instructions Section 607 Rectifications
  of Obvious Errors under Rule 91.1

 Where the International Preliminary Examining Authority
authorizes a rectification of an obvious error under Rule
91.1, Rule 70.16 and Section 602(a) and (b) shall apply
mutatis mutandis.

 Although the examiner is not responsible for discovering
errors in the international application, if any errors come
to the attention of the examiner, they should be noted and
called to the applicant's attention. **

 >Errors may be called to Applicant's attention in item VII
of PCT/IPEA/408.<

 AUTHORIZED OFFICER

 Form PCT/IPEA/411 and 423 must be signed by an examiner
having at least partial signatory authority.

 **

1876.01  Request for Rectification and Notification of
Action Thereon

  NOTIFICATION OF DECISION CONCERNING REQUEST FOR
  RECTIFICATION

 The rectification of obvious errors is governed by PCT
Rules 91.1 and 66.5.

  NOTIFICATION

 If the applicant requests correction of any obvious errors
in the international application or in any paper submitted
to the International Preliminary Examining Authority, other
than in the request, any acceptable correction should be
authorized by using Form PCT/IPEA/412.

 The procedure governing the rectification of obvious errors
are PCT Rules 91.1(d) and 26.4(a) which state that:

 The request for rectification which the applicant is
invited  to  make  must  be  submitted  in  a  letter.  The
rectification may be stated in that letter if it is of such
a nature that it can be transferred from the letter to the
international application without adversely affecting the
clarity and direct reproducibility of the sheet on to which
the rectification is to be transferred; otherwise, the
applicant  is  required  to  submit  a  replacement  sheet
embodying the rectification and the letter accompanying the
replacement sheet must draw attention to the differences
between the replaced sheet and the replacement sheet.

 The examiner after fully considering applicant's Request
for Rectification of an obvious error, will notify applicant
of the action taken on Form PCT/IPEA/412. Since the space
provided  is  limited,  supplemental  sheet(s)  should  be
incorporated whenever necessary.

 AUTHORIZED OFFICER

 Form PCT/IPEA/412 must be signed by an examiner having at
least partial signatory authority.

1877  Nucleotide and/or Amino Acid Sequence Listings
During the International Preliminary Examination

 If a listing has been furnished to the International
Searching  Authority,  that  Authority  will  make  a  copy
available  to  the  International  Preliminary  Examining
  ter
Authority upon request (Rule 13  .1(e)). If a copy in a
machine  readable  form  is  not  available  from  the
International  Searching  Authority,  the  International
Preliminary Examining Authority may request the applicant to
furnish such a listing in a computer readable form in
accordance with Annex C of the Administrative Instructions
and Administrative Instruction 610.

1878  Preparation of the Written Opinion [R - 3]

  PCT Article 34 Procedure before the International
 Preliminary Examining Authority

  *****

 (2)(c) The applicant shall receive at least one written
opinion  from  the  International  Preliminary  Examining
Authority unless such Authority considers that all of the
following conditions are fulfilled:

 (i)  the invention satisfies the criteria set forth in
Article 33(1),

 (ii)  the international application complies with the
requirements of this Treaty and the Regulations in so far as
checked by that Authority,

 (iii)  no observations are intended to be made under
Article 35(2), last sentence.

  *****

 37 CFR 1.484.  Conduct of international preliminary
examination

 (a)  An international preliminary examination will be
conducted to formulate a non - binding opinion as to whether
the claimed invention has novelty, involves an inventive
step (is non - obvious) and is industrially applicable.

 (b)  International preliminary examination will begin
promptly upon receipt of a Demand which requests examination
based on the application as filed, or as amended by an
amendment which has been received by the United States
International  Preliminary  Examining  Authority.  Where  a
Demand requests examination based on a PCT Article 19
amendment which has not been received, examination may begin
at 20 months without receipt of a PCT Article 19 amendment.
Where a Demand requests examination based on a PCT Article
34 amendment which has not been received, applicant will be
notified and given a time period within which to submit the
amendment. Examination will begin after the earliest of:

 (1)  Receipt of the amendment;

 (2)  Receipt of applicant's statement that no amendment
will be made; or

 (3)  Expiration  of  the  time  period  set  in  the
notification.

 No international preliminary examination report will be
established prior to issuance of an international search
report.

 (c)  No international preliminary examination * will be
conducted  on  inventions  not  previously  searched  by  an
International Searching Authority.

 (d)  The International Preliminary Examining Authority
will establish a written opinion if any defect exists or if
the claimed invention lacks novelty, inventive step or
industrial applicability and will set a non - extendable
time limit in the written opinion for the applicant to
respond.

 (e)  If no written opinion under paragraph (d) of this
section is necessary, or after any written opinion and the
response thereto or the expiration of the time limit for
response  to  such  written  opinion,  an  international
preliminary examination report will be established by the
International Preliminary Examining Authority. One copy will
be submitted to the International Bureau and one copy will
be submitted to the applicant.

 (f)  An applicant will be permitted a personal or
telephone  interview  with  the  examiner,  which  must  be
conducted  during  the  non  -  extendable  time  limit  for
response by the applicant to a written opinion. Additional
interviews may be conducted where the examiner determines
that such additional interviews may be helpful to advance
the  international  preliminary  examination  procedure.  A
summary of any such personal or telephone interview must be
filed by the applicant as a part of the response to the
written opinion or, if applicant files no response, be made
of record in the file by the examiner.

 A Written Opinion must be prepared if the examiner:

  1.  considers that the international application has
any of the defects described in PCT Article 34(4);

  2.  considers that the report should be negative with
respect to any of the claims because of a lack of novelty,
inventive  step  (non  -  obviousness)  or  industrial
applicability;

  3.  notices any defects in the form or contents of the
international application under the PCT;

  4.  considers  that  any  amendment  goes  beyond  the
disclosure in the international application as originally
filed;

  5.  wishes to make an observation on the clarity of the
claims, the description, the drawings or to question whether
the claims are fully supported by the description;

  6.  decides  not  to  carry  out  the  international
preliminary  examination  on  a  claim  for  which  no
International Search Report was issued; or

  7.  considers that no acceptable amino acid sequence
listing is available in a form that would allow a meaningful
international preliminary examination to be carried out.

 The applicant must be notified on Form PCT/IPEA/408 of the
defects found in the application. The examiner is further
required to fully state the reasons for his/her opinion (PCT
Rule 66.2(b)) and invite a written reply, with amendments
where appropriate (PCT Rule 66.2(c)), setting a time limit
for the reply of normally 2 months.

 The examiner should insert the words "first" or "second",
as the case may be in the space provided on page 1 of the
Written Opinion.

 ITEM I.  BASIS OF OPINION

 Applicant has two opportunities to amend the international
application prior to international preliminary examination.
Under PCT Article 19, the applicant is entitled to one
opportunity  to  amend  the  claims  of  the  international
application by filing amendments with the International
Bureau within 2 months of the mailing of the International
Search  Report.  See  PCT  Rule  46.1.  Applicant  is  also
permitted  to  make  amendments  before  the  International
Preliminary Examining Authority under PCT Article 34(2)(b)
and PCT Rule 66.1. Any amendment, however, that does not
accompany the filing of the Demand but is filed later may
not be considered unless it reaches the examiner before
he/she takes up the application for examination.

 For the purpose of completing Box I, item 1, of Form
PCT/IPEA/408, substitute and/or rectified sheets of the
specification  and  drawings  filed  during  Chapter  I
proceedings  are  considered  to  be  originally  filed
pages/sheets  and  should  be  listed  as  originally  filed
pages/sheets. Only those amendments or rectifications to the
specification and drawings filed on the date of Demand or
after the filing of a Demand should be listed as later filed
pages/sheets. Substitute and/or rectified sheets of claims

filed during the Chapter I proceedings are also considered
to be originally filed pages/sheets and should be listed as
originally filed pages/sheets. However, amended sheets of
claims  filed  under  Article  19  in  response  to  the
international  search  report  are  to  be  indicated  as
pages/sheets  as  amended  under  Article  19.  Only  those
amendments, or rectifications to the claims filed on the
date of Demand or after the filing of a Demand should be
listed as later filed pages/sheets. If a claim is made up of
sheets filed on different dates, the latest date is the date
that should be used for the claim.

 ITEM II.  PRIORITY

 Item II of Form PCT/IPEA/408 is to inform applicant of non
- establishment of a request for priority.

 If applicant fails to furnish a copy or translation of the
earlier application, whose priority has been claimed, within
the time limit set by the examiner pursuant to PCT Rule
66.7, check box No. 1 and then check the first box of the
subsection if applicant failed to furnish a copy of the
earlier application whose priority has been claimed, and
check the second box in the subsection if applicant failed
to furnish a translation of the earlier application whose
priority has been claimed.

 When the claim for priority has been found invalid (e.g.,
the claimed priority date is more than one year prior to the
international filing date and the notification under PCT
Rule 4.10(d) has been provided or all claims are directed to
inventions which were not described and enabled by the
earlier application), check box No. 2 of Item II and
indicate why the claim for priority has been found invalid
following No. 3 "Additional observations". The examiner is
reminded  that  when  some  claims  in  an  international
application are directed to an invention which was disclosed
in the earlier application, the priority claim is valid
provided that a copy and/or translation of the earlier
application have/has been filed and the filing date of the
earlier application is one year or less from the filing date
of the international application.

 ITEM III.  NON - ESTABLISHMENT OF OPINION ON NOVELTY,
INVENTIVE STEP AND INDUSTRIAL APPLICABILITY

  Item  III  of  Form  PCT/IPEA/408  is  intended  to  cover
situations where some or all claims of an application are so
unclear or inadequately supported by the description that
the question of novelty, inventive step (nonobviousness),
and industrial applicability cannot be considered, or where
the international application or claims thereof relate to
subject  matter  which  does  not  require  international
preliminary examination, or where no international search
report has been established for the claims.

 If some or all of claims of an application relate to
subject  matter  which  does  not  require  international
preliminary examination, check the appropriate box, indicate
which claims relate to that subject matter and specify the
reasons.

 If some or all of the claims of an application are so
unclear that no meaningful opinion could be formed, check
the appropriate box, indicate which claims are unclear and

specify the reasons.

 If some or all of the claims are so inadequately supported
by the description that no meaningful opinion could be
formed, check the appropriate box.

 If no international search report has been established for
certain claims, check the appropriate box and indicate the
claim numbers.

 ITEM IV.  LACK OF UNITY OF INVENTION

 Item IV of Form PCT/IPEA/408 should be used by the examiner
to notify applicant that lack of unity of invention has been
found.

 If in response to an invitation to restrict, applicant
restricted the claims to a particular group, check the first
box under subsection 1.

 If applicant paid additional fees for examination of
additional invention, check the second box under subsection
1.

 If the additional fees were paid under protest, check the
third box under subsection 1.

 If applicant neither restricted nor paid additional fees in
response to the objection of lack of unity of invention,
check the fourth box under subsection 1.

 Subsection 2 of Item IV is to be completed if the examiner
determines that unity of invention is lacking but chooses
not to invite the applicant to restrict or pay additional
fees.

 Subsection 3 of Item IV is to be completed to indicate
which claims were the subject of international preliminary
examination.

 If all claims are to be examined, check the first box under
subsection 3.

  If  only  some  of  the  claims  were  the  subject  of
international preliminary examination, check the second box
under subsection 3 and identify the claim numbers.

 ITEM V.  REASONED STATEMENT WITH REGARD TO NOVELTY,
INVENTIVE STEP, AND INDUSTRIAL APPLICABILITY OF CLAIMS

 In Item V, the examiner must list in summary form all
claims with regard to the criteria of novelty (N), inventive
step (IS), and industrial applicability (IA).

 Item V is the main purpose of the Written Opinion. All
claims without fatal defects are treated on the merits in
Item V as to novelty, inventive step (nonobviousness) and
industrial applicability.

 The treatment of claims in Item V is similar in format to
an Office action in a U.S. national patent application
except that the words rejection and patentability are never
used in a Written Opinion. On the international level, all
Written Opinions are nonbinding and a patent does not issue;
what does issue is an International Preliminary Examination

Report (IPER), which is nonbinding on the Elected States.

 Examiner statements in Item V can be positive and/or
negative. If, for example, claims define over the prior art
and  meet  the  test  of  novelty,  inventive  step
(nonobviousness) and industrial applicability, a statement
equivalent  to  detailed  reasons  for  allowance  in  a
corresponding U.S. application, indicating how the claims
meet the tests of novelty, inventive step and industrial
applicability is sufficient. If on the other hand it is the
opinion of the examiner that some or all claims lack
novelty, inventive step, and/or industrial applicability,
specific  reasons  for  the  opinion  employing  PCT  form
paragraphs, if appropriate, must be given similar to those
used in U.S. national applications including a statement of
motivation to combine references cited regarding negative
statements of inventive step.

 Form paragraphs to be used by the examiners appear in the
relevant sections of this Manual. All examiners are expected
to use the PCT form paragraphs in formulating any negative
statements listed in Item V.

 Examiners are encouraged to indicate any amendments which
applicant  could  present  which  would  avoid  a  negative
statement  in  the  International  Preliminary  Examination
Report.

 All international applications where an examination has
been demanded should be searched by the examiner at least to
the point of bringing the previous search up to date. Prior
art discovered in a search and applied in an Item V
statement must be made of record in Item V. Prior art
already cited on the International Search Report need not
again be cited on the Written Opinion or International
Preliminary Examination Report. The subsequently discovered
prior art is to be cited in compliance with PCT Rule 43.5
and Administrative Instruction Section 503 using the same
citation format used on the International Search Report.

¶  18.01  Lacks Novelty

  Claim  [1]  novelty  under  PCT  Article  33(2)  as  being
anticipated by [2].

 Examiner Note:

 1. In bracket 1, pluralize `claim' if needed - Insert claim
no(s). insert the verb "lack" or "lacks", as appropriate.

 2. In bracket 2, insert name of prior art relied upon.

¶ 18.02  Lacks Inventive Step - One Reference

 Claim [1] an inventive step under PCT Article 33(3) as
being obvious over [2]. [3].

 Examiner Note:

 1. In bracket 1, pluralize `claim' if needed - Insert claim
no(s). insert the verb "lack" or "lacks", as appropriate.

 2.  In bracket 2, insert name of prior art relied upon.

 3.  In bracket 3, add reasoning.

¶ 18.02.01  Lacks Inventive Step - Two References

 Claim [1] an inventive step under PCT Article 33(3) as
being obvious over [2] in view of [3]. [4].

 Examiner Note:

 1. In bracket 1, pluralize `claim' if needed - Insert claim
no(s). insert the verb "lack" or "lacks", as appropriate.

 2.  In bracket 2, insert name of PRIMARY prior art
relied upon.

 3.  In bracket 3, insert name of SECONDARY prior art
relied upon.

 4.  In bracket 4, add your REASONING.

¶ 18.02.02  Lacks Inventive Step - Additional Reference

 Claim [1] an inventive step under PCT Article 33(3) as
being  obvious  over  the  prior  art  as  applied  in  the
immediately preceding paragraph and further in view of [2].
[3].

 Examiner Note:

 1. This form paragraph may follow either 18.02 or 18.02.01

 2.  In bracket 1, pluralize `claim' if needed, insert
claim  no(s).,  and  the  verb  "lack"  or  "lacks",  as
appropriate.

 3.  In bracket 2, insert name of additional prior art
relied upon.

 4.  In bracket 3, add reasoning.

¶ 18.03  Lacks Industrial Applicability

 Claim [1] industrial applicability as defined by PCT
Article 33(4). [2].

 Examiner Note:

 1. In bracket 1, pluralize `claim' if needed, insert claim
no(s)., and the verb "lack" or "lacks", as appropriate.

 2.  In bracket 2, add reasoning.

¶ 18.04  Meets Novelty, Inventive Step and Industrial
Applicability

 Claim [1] the criteria set out in PCT Article 33(2) -
33(4), because the prior art does not teach or fairly
suggest [2].

 Examiner Note:

 1. In bracket 1, pluralize `claim' if needed, insert claim
no(s)., and the verb "lack" or "lacks", as appropriate.

 2.  In bracket 2, insert patentable subject matter.

 ITEM VI.  CERTAIN DOCUMENTS CITED

 Item VI provides a convenient manner of listing two
different types of documents:

  (1) published  documents  -  by  the  application
number or patent number as well as the publication date,
filing date and priority date; and

  (2) nonwritten  disclosure  -  by  the  kind  of
disclosure, date of the disclosure and the date of the
written disclosure referring to the nonwritten disclosure.

 ITEM VII.  CERTAIN  DEFECTS  IN  THE  INTERNATIONAL
APPLICATION

 In Item VII, defects in the form and content of the
international application are identified.

 Examples of defects that would be listed in Item VII are:

  1.  Informalities such as misplaced and/or omitted
drawing numerals, misspelled words, grammatical errors, etc.

  2.  An amendment to the drawings, description or claims
which was not timely filed.

  3.  Improper multiple - dependent claims (PCT Rule 6.4)
if not indicated under Item III.

  The following form paragraphs are used in Box VII of
PCT/IPEA/408  or  PCT/IPEA/409  "Certain  defects  in  the
international application" for noting technical defects.

¶ 18.08  Drawing Objections - Defects

  The drawings are objected to under PCT Rule 66.2(a)(iii)
as containing the following defect(s) in the form or content
thereof: [1].

 Examiner Note:

  In bracket 1, insert identification of defects in
drawings.

¶ 18.08.01  Drawing is Required

  The  subject  matter  of  this  application  admits  of
illustration by drawing to facilitate understanding of the
invention. Applicant is required under PCT Article 7(1) to
furnish a drawing.

¶ 18.09  Description Defective

  The  description  is  objected  to  as  containing  the
following defect(s) under PCT Rule 66.2(a)(iii) in the form
or contents thereof: [1].

 Examiner Note:

 In bracket 1, insert the technical problem, e.g. misspelled
word.

¶ 18.10  Claims Defective

  Claim [1] objected to under PCT Rule 66.2(a)(iii) as
containing the following defect(s) in the form or contents
thereof: [2].

 Examiner Note:

 1. In bracket 1, pluralize `claim' if needed - Insert claim
no(s). and the appropriate verb "is" or "are".

 2.  In bracket 2, insert the technical problem, e.g.
misspelled word.

 ITEM VIII.  CERTAIN  OBSERVATIONS  ON  THE  INTERNATIONAL
APPLICATION

 In Item VIII, the examiner notifies the applicant of
observations made as to the clarity of the claims, the
description, the drawings, or on the question whether the
claims are fully supported by the description.

 If the claims, the description, or the drawings are so
unclear, or the claims are so inadequately supported by the
description, that no meaningful opinion can be formed on the
question of novelty, inventive step (nonobviousness) or
industrial applicability, the applicant is so informed in
Item  III  (PCT  Article  34(4)(a)(ii)).  Reasons  for  the
examiner's  opinion  that  the  claims,  description  and
drawings, etc., lack clarity must also be provided.

 If the above situation is found to exist in certain claims
only, the provisions of PCT Article 34(4)(ii) shall apply to
those claims only.

 If the lack of clarity of the claims, the description, or
the drawings is of such a nature that it is possible to form
a meaningful opinion on the claimed subject matter, then it
is required that the examiner consider the claims and render
a Written Opinion on novelty, inventive step, and industrial
applicability in Item V of Form PCT/IPEA/408.

 Since the claims of an international application are not
subject to a rejection on either art or indefiniteness
consistent with U.S. practice, observations by the examiner
with regard to clarity of the claims, the description and
the drawings will be treated in the form of an objection in
the Written Opinion in Item VIII.

 The following form paragraphs are used in Box VIII "Certain
observations  on  the  international  application"  of
PCT/IPEA/408 and PCT/IPEA/409 for noting objections which
are substantive rather than merely technical in nature.

¶ 18.11  Drawing Objections - Lack Clarity

 The drawings are objected to under PCT Rule 66.(2)(a)(v) as
lacking clarity under PCT Article 7 because: [1].

 Examiner Note:

 In bracket 1, insert reasons why the drawings lack clarity,
e.g. inaccurate showing.

¶ 18.12  Description  Defective  -  Lacks  Written
Description

 The description is objected to under PCT Rule 66.2(a)(v) as
lacking clarity under PCT Article 5 because it fails to
contain  an  adequate  written  description  of  [1].  The
description is inadequate because: [2].

 Examiner Note:

 1. In bracket 1, identify the subject matter not described
in the description.

 2. In bracket 2, insert reasons.

¶ 18.12.01  Claims  Objectionable  -  Inadequate  Written
Description

 Claim [1] objected to as lacking clarity under PCT Rule
66.2(a)(v) because practice of the claimed invention is not
adequately described in writing, as required under PCT Rule
5.1(a)(iii), for the reasons set forth in the immediately
preceding paragraph.

 Examiner Note:

 1. This form paragraph is to be used immediately after
18.12.

 2.  In bracket 1, pluralize `claim' if needed, insert
claim no(s). and the appropriate verb "is" or "are".

¶ 18.13  Description Defective - Not Enabling

 The description is objected to under PCT Rule 66.2(a)(v) as
lacking clarity under PCT Article 5 because it fails to
adequately enable practice of the claimed invention because:
[1].

 Examiner Note:

 In bracket 1, insert objection and reasons.

¶ 18.13.01  Claims  Objectionable  -  Non  -  enabling
Disclosure

 Claim [1] objected to as lacking clarity under PCT Rule
66.2(a)(v) because the practice of the claimed invention is
not enabled as required under PCT Rule 5.1(a) for the
reasons set forth in the immediately preceding paragraph.

 Examiner Note:

 1. In bracket 1, pluralize `claim' if needed, insert claim
no(s). and the appropriate verb "is" or "are".

 2.  This form paragraph is to be used immediately after
18.13.

¶ 18.14  Description Defective - No Best Mode

 The description is objected to under PCT Rule 66.2(a)(v) as
lacking clarity for failing to describe the best mode for
practicing the claimed subject matter as required by PCT
Rule 5.1(a)(v). The best mode is not described because: [1].

 Examiner Note:

 In bracket 1, insert objection and reasons.

¶ 18.14.01  Claims Objectionable - Lack of Best Mode

 Claims [1] objected to under PCT Rule 66.2(a)(v) as lacking
clarity because claim [2] based on a description which fails
to describe the best mode for carrying out the invention
under PCT Rule 5.1(a)(v) for the reasons set forth in the
immediately preceding paragraph.

 Examiner Note:

 1. In bracket 1, pluralize `claim' if needed, insert claim
no(s). and the appropriate verb "is" or "are".

 2.  In bracket 2, pluralize `claim' if needed, insert
claim no(s). and the appropriate verb "fail" or "fails".

 3.  This form paragraph is to be used immediately
following 18.14.

¶ 18.15  Claims Objectionable - Indefiniteness

  Claims [1] objected to under PCT Rule 66.2(a)(v) as
lacking clarity under PCT Article 6 because claim [2]
indefinite for the following reason(s): [3].

 Examiner Note:

 1. In brackets 1 and 2, pluralize `claim' if needed, insert
claim no(s). and the appropriate verb "is" or "are".

 2.  In bracket 3, insert reasons.

 TIME TO RESPOND

 An invitation by the International Preliminary Examining
Authority (IPEA) to applicant to reply to the examiner's
Written Opinion will normally set a 2 - month time limit to
respond.

 The time may be as short as 1 month or as long as 3 months
dependent upon the time remaining before the International
Preliminary Examination Report is due.

 AUTHORIZED OFFICER

 Every Written Opinion must be signed by an examiner having
at least partial signatory authority.

 The first document prepared by the examiner in most
international  applications  during  the  international
preliminary examination proceedings will be the Written
Opinion. Normally only in those international applications
where all the formal matters are proper and the claims are
directed to inventions which have novelty, inventive step
and  industrial  applicability  will  an  International
Preliminary Examination Report be established without a
Written Opinion having been issued first.

1878.01(a)  Prior Art Under Chapter II

  PCT Article 33 The International Preliminary Examination

  *****

 (6)  The international preliminary examination shall
take into consideration all the documents cited in the
international search report. It may take into consideration
any additional documents considered to be relevant in the
particular case.

  PCT Rule 64 Prior Art for International Preliminary
  Examination

  64.1.  Prior Art

 (a)  For  the  purposes  of  Article  33(2)  and  (3),
everything made available to the public anywhere in the
world by means of written disclosure (including drawings and
other illustrations) shall be considered prior art provided
that such making available occurred prior to the relevant
date.

 (b)  For the purposes of paragraph (a), the relevant
date will be:

 (i)  subject to item (ii), the international filing date
of  the  international  application  under  international
preliminary examination;

 (ii)  where  the  international  application  under
international preliminary examination validly claims the
priority of an earlier application, the filing date of such
earlier application.

  64.2.  Nonwritten Disclosures

 In cases where the making available to the public occurred
by means of an oral disclosure, use, exhibition or other
nonwritten  means  (  nonwritten  disclosure  )  before  the
relevant date as defined in Rule 64.1(b) and the date of
such  nonwritten  disclosure  is  indicated  in  a  written
disclosure which has been made available to the public on a
date which is the same as, or later than, the relevant date,
the nonwritten disclosure shall not be considered part of
the prior art for the purposes of Article 33(2) and (3).
Nevertheless,  the  international  preliminary  examination
report shall call attention to such nonwritten disclosure in
the manner provided for in Rule 70.9.

  64.3.  Certain Published Documents

 In cases where any application or any patent which would
constitute prior art for the purposes of Article 33(2) and
(3) had it been published prior to the relevant date
referred to in Rule 64.1 was published on a date which is
the same as, or later than, the relevant date but was filed
earlier than the relevant date or claimed the priority of an
earlier application which had been filed prior to the
relevant date, such published application or patent shall
not be considered part of the prior art for the purposes of
Article  33(2)  and  (3).  Nevertheless,  the  international
preliminary examination report shall call attention to such
application or patent in the manner provided for in Rule
70.10.

 (ii)  where  the  international  application  under
international preliminary examination validly claims the
priority of an earlier application, the filing date of such

earlier application.

  64.2.  Nonwritten Disclosures

 In cases where the making available to the public occurred
by means of an oral disclosure, use, exhibition or other
nonwritten  means  (  nonwritten  disclosure  )  before  the
relevant date as defined in Rule 64.1(b) and the date of
such  nonwritten  disclosure  is  indicated  in  a  written
disclosure which has been made available to the public on a
date which is the same as, or later than, the relevant date,
the nonwritten disclosure shall not be considered part of
the prior art for the purposes of Article 33(2) and (3).
Nevertheless,  the  international  preliminary  examination
report shall call attention to such nonwritten disclosure in
the manner provided for in Rule 70.9.

  64.3.  Certain Published Documents

 In cases where any application or any patent which would
constitute prior art for the purposes of Article 33(2) and
(3) had it been published prior to the relevant date
referred to in Rule 64.1 was published on a date which is
the same as, or later than, the relevant date but was filed
earlier than the relevant date or claimed the priority of an
earlier application which had been filed prior to the
relevant date, such published application or patent shall
not be considered part of the prior art for the purposes of
Article  33(2)  and  (3).  Nevertheless,  the  international
preliminary examination report shall call attention to such
application or patent in the manner provided for in Rule
70.10.

 The relevant date for the purpose of considering prior art
is defined in PCT Rule 64.1(b) as the international filing
date or, where the international application contains a
valid claim for priority, that date of priority.

 In cases where any application or any patent which would
constitute  prior  art  for  the  purpose  of  international
preliminary examination as to novelty and inventive step
(nonobviousness) was published on or after the relevant date
of the international application under consideration but was
filed earlier than the relevant date or claimed the priority
of an earlier application which was filed prior to the
relevant date, the published application or patent is not to
be considered part of the prior art for the purpose of
international preliminary examination as to novelty and
inventive step. Nevertheless, these documents are to be
listed on Form PCT/IPEA/409 under the heading "CERTAIN
PUBLISHED DOCUMENTS".

 In determining whether there is inventive step, account
should be taken of what the applicant acknowledges in
his/her description as known. Such acknowledged prior art
should be regarded as correct and used during preliminary
examination where appropriate.

 For oral or nonwritten disclosure, see PCT Rules 64.2 and
70.9.

1878.01(a)(1)  Novelty Under Chapter II [R - 1]

 Novelty is defined in PCT Article 33(2).

  PCT Article 33 The International Preliminary Examination

  *****

 (2)  For the purposes of the international preliminary
examination, a claimed invention shall be considered novel
if it is not anticipated by the prior art as defined in the
Regulations.

  *****

 **

1878.01(a)(2)  Inventive Step Under Chapter II [R - 1]

 Inventive step is defined in PCT Article 33(3)

  PCT Article 33 The International Preliminary Examination

  *****

 (3)  For  purposes  of  the  international  preliminary
examination, a claimed invention shall be considered to
involve an inventive step if, having regard to the prior art
as defined in the Regulations, it is not, at the prescribed
relevant date, obvious to a person skilled in the art.

  *****

  PCT Rule 65 Inventive Step or Non - Obviousness

  65.1.  Approach to Prior Art

 For the purposes of Article 33(3), the international
preliminary examination shall take into consideration the
relation of any particular claim to the prior art as a
whole. It shall take into consideration the claim's relation
not only to individual documents or parts thereof taken
separately but also its relation to combinations of such
documents or parts of documents, where such combinations are
obvious to a person skilled in the art.

  65.2.  Relevant Date

 For the purposes of Article 33(3), the relevant date for
the consideration of inventive step (nonobviousness) is the
date prescribed in Rule 64.1.

 **

1878.01(a)(3)  Industrial Applicability Under Chapter
II [R - 1]

 Industrial applicability is defined in PCT Article 33(4).

  PCT Article 33 The International Preliminary Examination

  *****

 (4)  For the purposes of the international preliminary
examination,  a  claimed  invention  shall  be  considered
industrially applicable if, according to its nature, it can
be made or used (in the technological sense) in any kind of
industry. Industry shall be understood in its broadest
sense, as in the Paris Convention for the Protection of

Industrial Property.

  *****

 **

1878.02  Response to the Written Opinion [R - 1]

  PCT Article 34 Procedure before the International
 Preliminary Examining Authority

  *****

 (2)(a) The applicant shall have a right to communicate
orally and in writing with the International Preliminary
Examining Authority.

 (b)  The applicant shall have a right to amend the
claims, the description, and the drawings, in the prescribed
manner and within the prescribed time limit, before the
international preliminary examination report is established.
The amendment shall not go beyond the disclosure in the
international application as filed.

  *****

 (d)  The applicant may respond to the written opinion.

  *****

  PCT Rule 66 Procedure before the International Preliminary
  Examining Authority

  *****

  66.3.  Formal Response to the International Preliminary
  Examining Authority

 (a)  The  applicant  may  respond  to  the  invitation
referred to in Rule 66.2(c) of the International Preliminary
Examining Authority by making amendments or if he disagrees
with the opinion of that Authority by submitting arguments,
as the case may be, or do both.

 (b)  Any response shall be submitted directly to the
International Preliminary Examining Authority.

  *****

  66.5.  Amendment

 Any change, other than the rectification of obvious errors,
in the claims, the description, or the drawings, including
cancellation  of  claims,  omission  of  passages  in  the
description, or omission of certain drawings, shall be
considered an amendment.

  66.6.  Informal Communications with the Applicant

 The International Preliminary Examining Authority may, at
any time, communicate informally, over the telephone, in
writing, or through personal interviews, with the applicant.
The said Authority shall, at its discretion, decide whether
it wishes to grant more than one personal interview if so
requested by the applicant, or whether it wishes to reply to

any informal written communication from the applicant.

  *****

  66.8.  Form of Amendments

 (a)  The  applicant  shall  be  required  to  submit  a
replacement sheet for every sheet of the international
application which, on account of an amendment, differs from
the sheet previously filed. The letter accompanying the
replacement sheets shall draw attention to the differences
between the replaced sheets and the replacement sheets.
Where the amendment consists in the deletion of passages or
in minor alterations or additions, it may be made on a copy
of the relevant sheet of the international application,
provided that the clarity and direct reproducibility of that
sheet are not adversely affected. To the extent that any
amendment results in the cancellation of an entire sheet,
that amendment shall be communicated in a letter.

 (b)  [Deleted]

  66.9.  Language of Amendments

 (a)  Subject  to  paragraphs  (b)  and  (c),  if  the
international application has been filed in a language other
than the language in which it is published, any amendment,
as well as any letter referred to in Rule 66.8(a), shall be
submitted in the language of publication.

 (b)  If the international preliminary examination is
carried out, pursuant to Rule 55.2, on the basis of a
translation of the international application, any amendment,
as well as any letter referred to in paragraph (a), shall be
submitted in the language of that translation.

 (c)  Subject to Rule 55.3, if an amendment or letter is
not submitted in a language as required under paragraphs (a)
or (b), the International Preliminary Examining Authority
shall, if practicable having regard to the time limit for
establishing  the  international  preliminary  examination
report, invite the applicant to furnish the amendment or
letter in the required language within a time limit which
shall be reasonable under the circumstances.

 (d)  If the applicant fails to comply, within the time
limit under paragraph (c), with the invitation to furnish an
amendment in the required language, the amendment shall not
be taken into account for the purposes of the international
preliminary examination. If the applicant fails to comply,
within  the  time  limit  under  paragraph  (c),  with  the
invitation to furnish a letter referred to in paragraph (a)
in the required language, the amendment concerned need not
be taken into account for the purposes of the international
preliminary examination.

 37 CFR 1.485.  Amendments by Applicant During
International Preliminary Examination.

 (a)  The applicant may make amendments at the time of
filing of the Demand and within the time limit set by the
International Preliminary Examining Authority for response
to any notification under § 1.484(b) or to any written
opinion. Any such amendments must:

 (1)  Be made by submitting a replacement sheet for each
sheet of the application which differs from the sheet it
replaces unless an entire sheet is cancelled, and

 (2)  Include a description of how the replacement sheet
differs from the replaced sheet.

 (b)  If an amendment cancels an entire sheet of the
international  application,  that  amendment  shall  be
communicated in a letter.

 All amendments in response to a Written Opinion must be
received within the time limit set for response in order to
be assured of consideration in the International Preliminary
Examination Report. Amendments filed at or before expiration
of the period for response will be considered. Since the
examiner will begin to draw up the final report rather
promptly after the time period expires, amendments filed
after  expiration  of  the  response  period  may  not  be
considered. In view of the short time period for completion
of  preliminary  examination,  applicants  are  strongly
encouraged to file any amendments promptly. 37 CFR 1.484(d)
does not allow for extensions of time to respond to a
Written Opinion. The policy of not allowing extensions of
time is to ensure that the USPTO can meet its treaty
deadline for transmission of the final report.

 Any change, other than the rectification of obvious errors
in the claims, the description, or the drawings, including
the cancellation of claims, omission of passages in the
description  or  omission  of  certain  drawings  will  be
considered an amendment (PCT Rule 66.5). The Patent and
Trademark  Office  when  acting  as  the  International
Preliminary Examining Authority will not accept any non -
English applications or amendments.

 Any amendments to the claims, the description, and the
drawings in response to a Written Opinion must (1) be made
by submitting a replacement sheet for every sheet of the
application which differs from the sheet it replaces unless
an entire sheet is cancelled and (2) include a description
of how the replacement sheet differs from the replaced sheet
in accordance with PCT Rule 66.8.

 In the particular case where the amendment cancels claims,
passages in the description or certain drawings resulting in
the cancellation of an entire sheet, the amendment must be
submitted in the form of a letter cancelling the sheet (PCT
Rule 66.8(a)).

 Replacement sheets must be in typed form.

 Any paper submitted by the applicant, if not in the form of
a letter, must be accompanied by a letter signed by the
applicant or agent (PCT Rule 92.1). The letter must draw
attention to the differences between the replaced sheet and
the replacement sheet.

 The examiner should make sure that amendments filed in
accordance with the PCT, which are necessary to correct any
deficiencies notified to the applicant, do not go beyond the
disclosure of the international application as filed, thus
violating PCT Article 34(2)(b). In other words, no amendment
should contain matter that cannot be substantiated by the
application as originally filed. In a situation where new

matter is introduced by amendment in response to a Written
Opinion, the International Preliminary Examination Report
will be established as if the amendment had not been made,
and the report should so indicate. It shall also indicate
the reasons why the amendment goes beyond the disclosure
(PCT Rule 70.2(c)).

  INTERVIEWS

 The examiner or applicant may, during the time limit for
response to the Written Opinion, request a telephone or
personal interview. Only one interview is a matter of right,
whether by telephone or in person. Additional interviews may
be authorized by the examiner in a particular international
application where such additional interview may be helpful
to  advance  the  international  preliminary  examination
procedure.

 All interviews of substance must be made of record by using
**>PCT/IPEA/428 Notice on Informal Communication with the
Applicant.<

 When an interview is arranged, whether by telephone or in
writing, and whether by the examiner or by the applicant,
the matters for discussion should be stated.

 The records of interviews or telephone conversations should
indicate, where appropriate, whether a response is due from
the applicant or agent or whether the examiner wishes to
issue  an  additional  written  opinion  or  establish  the
International Preliminary Examination Report.

 If the applicant desires to respond to the Written Opinion,
such response must be filed within the time limit set for
response in order to assure consideration. No extensions to
the time limit will be considered or granted. If no timely
response is received from the applicant, the International
Preliminary Examination Report will be established by the
examiner,  treating  each  claim  substantially  as  it  was
treated in the Written Opinion. Responses to the Written
Opinion which are not filed within the time limit set but
which reach the examiner before the examiner takes up the
application for preparation of the final report may be
considered. Thus, only timely responses can be assured of
consideration.

 The applicant may respond to the invitation referred to in
Rule 66.2(c) by making amendments or, if the applicant
disagrees with the opinion of the authority, by submitting
arguments, as the case may be, or both (PCT Rule 66.3).

  The  United  States  rules  pertaining  to  international
preliminary examination of international applications do not
provide for any extension of time to respond to a first
Written Opinion.

 If applicant does not respond to the Written Opinion, the
International  Preliminary  Examination  Report  will  be
prepared  in  time  for  forwarding  to  the  International
Division in finished form by 27 months from the priority
date.

1879  Preparation of the International Preliminary
Examination Report [R - 2]

  PCT Article 35 The International Preliminary Examination
  Report

 (1)  The international preliminary examination report
shall be established within the prescribed time limit and in
the prescribed form.

 (2)  The international preliminary examination report
shall not contain any statement on the question whether the
claimed  invention  is  or  seems  to  be  patentable  or
unpatentable according to any national law. It shall state,
subject to the provisions of paragraph (3), in relation to
each  claim,  whether  the  claim  appears  to  satisfy  the
criteria of novelty, inventive step (non - obviousness), and
industrial applicability, as defined for the purposes of the
international preliminary examination in Article 33(1) to
(4). The statement shall be accompanied by the citation of
the documents believed to support the stated conclusion with
such explanations as the circumstances of the case may
require. The statement shall also be accompanied by such
other observations as the Regulations provide for.

 (3)(a)  If,  at  the  time  of  establishing  the
international  preliminary  examination  report,  the
International Preliminary Examining Authority considers that
any of the situations referred to in Article 34(4)(a)
exists, that report shall state this opinion and the reasons
therefor. It shall not contain any statement as provided in
paragraph (2).

 (b)  If a situation under Article 34(4)(b) is found to
exist,  the  international  preliminary  examination  report
shall, in relation to the claims in question, contain the
statement as provided in subparagraph (a), whereas, in
relation to the other claims, it shall contain the statement
as provided in paragraph (2).

  Administrative Instructions Section 604 Guidelines for
  Explanations Contained in the International Preliminary
  Examination Report

 (a)  Explanations under Rule 70.8 shall clearly point
out to which of the three criteria of novelty, inventive
step (nonobviousness) and industrial applicability referred
to in Article 35(2), taken separately, any cited document is
applicable and shall clearly describe, with reference to the
cited documents, the reasons supporting the conclusion that
any of the said criteria is or is not satisfied.

 (b)  Explanations under Article 35(2) shall be concise
and preferably in the form of short sentences.

 After examination of the international application, if
there are no negative statements and/or negative comments
for Form PCT/IPEA/408, then the only statement that will
issue from the International Preliminary Examining Authority
will be the International Preliminary Examination Report
(IPER).

  The  International  Preliminary  Examination  Report  is
established on Form PCT/IPEA/409.

 The International Preliminary Examination Report must be
established within 28 months from the priority date if the
Demand was filed prior to the expiration of 19 months from

the priority date; otherwise, the time limit is 9 months
from the start of the international preliminary examination.
To meet this 28 - month date for establishing the report,
Office practice is to complete internal processing by 27
months from the priority date in order to provide adequate
time for reviewing, final processing and mailing. Thus,
under  normal  circumstances,  the  applicant  receives  the
report, at the latest, 2 months before national processing
at the elected Offices may start. This ensures that he/she
has time to consider whether, and in which elected Offices,
he/she wants to enter the national stage and to take the
necessary action.

 The International Preliminary Examination Report contains,
among other things, a statement (in the form of simple "yes"
or "no"), in relation to each claim which has been examined,
on whether the claim appears to satisfy the criteria of
novelty,  inventive  step  (nonobviousness)  and  industrial
applicability.  The  statement  is,  where  appropriate,
accompanied by the citation of relevant documents together
with concise explanations pointing out the criteria to which
the cited documents are applicable and giving reasons for
the  International  Preliminary  Examining  Authority's
conclusions. Where applicable, the report also includes
remarks relating to the question of unity of invention.

 The International Preliminary Examination Report identifies
the basis on which it is established, that is, whether, and
if so, which amendments have been taken into account.
Replacement sheets containing amendments under Article 19
and/or Article 34 which have been taken into account are
attached  as  "annexes"  to  the  International  Preliminary
Examination Report. Amendments under Article 19 which have
been considered as reversed by an amendment under Article 34
or which have been superseded by later replacement sheets
are not annexed to the report; neither are the letters which
accompany replacement sheets.

 The International Preliminary Examination Report may not
express a view on the patentability of the invention.
Article  35(2)  expressly  states  that  "the  international
preliminary  examination  report  shall  not  contain  any
statement on the question whether the claimed invention is
or seems to be patentable or unpatentable according to any
national law."

 CLASSIFICATION OF SUBJECT MATTER

 The classification of the subject matter shall be either
(1) that given by the International Searching Authority
under PCT Rule 43.3, if the examiner agrees with such
classification, or (2) shall be that which the examiner
considers to be correct, if the examiner does not agree with
that  classification.  Both  the  International  Patent
Classification (IPC) and the U.S. classification should be
given. This classification is placed on the first sheet of
the report.

 ITEM 1.  BASIS OF REPORT

 The International Preliminary Examination Report will be
established on the basis of any amendments, rectifications,
priority and/or unity of invention holdings and shall answer
the  questions  concerning  novelty,  inventive  step,  and
industrial  applicability  for  each  of  the  claims  under

examination.

 In completing Form PCT/IPEA/409, the examiner should first
indicate any amendments and/or rectifications of obvious
errors taken into account in establishing the International
Preliminary  Examination  Report.  The  amendments  and/or
rectifications should be indicated by references to the
dates on which the amendments and/or rectifications were
filed.

 For the purpose of completing Box I, item 1, substitute
and/or rectified sheets of the specification and drawings
filed during Chapter I proceedings are considered to be
originally  filed  pages/sheets  and  should  be  listed  as
originally filed pages/sheets. Only those amendments or
rectifications to the specification and drawings filed on
the date of Demand or after the filing of a Demand should be
listed as later filed pages/sheets.

 Substitute and/or rectified sheets of claims filed during
the  Chapter  I  proceedings  are  also  considered  to  be
originally  filed  **>claims<  and  should  be  listed  as
originally filed **>claims<. However, amended sheets of
claims  filed  under  Article  19  in  response  to  the
international  search  report  are  to  be  indicated  as
**>claims<  as  amended  under  Article  19.  Applicant's
submission of a timely amendment to the claims alleged to be
under Article 19 is accepted under Article 34 (not Article
19)  unless  the  International  Bureau  has  indicated  the
amendments  were  accepted  under  Article  19.  Only  those
amendments, or rectifications to the claims filed on the
date of Demand or after the filing of a Demand should be
listed as later filed **>claims<. If a claim is made up of
sheets filed on different dates, the latest date is the date
that should be used for the claim.

 Amendments and/or rectifications filed but not taken into
account  in  the  establishment  of  the  report  (e.g.,  an
amendment not taken into account because the amendment went
beyond the disclosure of the international application as
filed or a rectification that is not considered to be merely
a  correction  of  an  obvious  error)  are  then  indicated
separately. The replacement sheets (but not replacement
sheets superseded by later replacement sheets) or letters
cancelling sheets under PCT Rule 66.8(a) are included as an
annex to the report.

 The final report package when sent to the the International
Division for mailing must include copies of all amendments
and rectifications entered and any cover letters to those
amendments.

 ITEM II.  PRIORITY

 Item II of Form PCT/IPEA/409 is to inform applicant of non
- establishment of a request for priority. If the report is
established as if the priority claim contained in the
Request of the international application had not been made,
it shall so indicate. This will occur in the event that the
applicant has failed to comply with the invitation to
furnish either (1) a copy of the earlier application whose
priority is claimed, or (2) a translation of the earlier
application, or (3) where the priority claim is found
invalid, e.g., the claimed priority date is more than one
year prior to the international filing date (PCT Rule 17) or

all  claims  are  directed  to  inventions  which  were  not
described and enabled by the earlier application (PCT Rule
64.1), or (4) where the priority claim has been withdrawn.

 ITEM III.  NON - ESTABLISHMENT OF OPINION WITH REGARD TO
NOVELTY, INVENTIVE STEP OR INDUSTRIAL APPLICABILITY

 Indications that a report has not been established on the
questions  of  novelty,  inventive  step  or  industrial
applicability, either as to some claims or as to all claims,
are given in item III on the Report. The examiner must
specify that the report has not been established because:

 (a)  the application relates to subject matter which
does not require international preliminary examination;

 (b)  the description, claims or drawings are so unclear
that no meaningful opinion could be formed;

 (c)  the claims are so inadequately supported by the
description that no meaningful opinion could be formed.

 Where the report has not been established in relation to
certain claims only, the claims affected must be specified.

 ITEM IV.  LACK OF UNITY OF INVENTION

 If the applicant has paid additional fees or has restricted
the claims in response to an invitation to do so or if the
applicant has failed to respond to the invitation to pay
additional fees or restrict the claims, the International
Preliminary  Examination  Report  shall  so  indicate.  The
examiner should indicate whether:

  (a)  the claims have been restricted;

  (b) additional  fees  have  been  paid  without
protest;

  (c) additional  fees  have  been  paid  by  the
applicant under protest;

  (d) the  applicant  has  neither  restricted  the
claims nor paid additional fees;

  (e)  the examiner was of the opinion that the
international  application  did  not  comply  with  the
requirement of unity of invention but decided not to issue
an invitation to restrict the claims or pay additional fees.

 In addition, if the examiner is examining less than all the
claims, the examiner must indicate which parts of the
international application were, and which parts were not,
the subject of international preliminary examination.

 In the case where additional fees were paid under protest,
the text of the protest, together with the decision thereon,
must be annexed to the report by International Division IPEA
personnel if the applicant has so requested.

 Where an indication has been given under item (e) above,
the examiner must also specify the reasons for which the
international application was not considered as complying
with the requirement of unity of invention.

 ITEM V.  REASONED STATEMENT UNDER ARTICLE 35(2) WITH
REGARD  TO  NOVELTY,  INVENTIVE  STEP,  AND  INDUSTRIAL
APPLICABILITY; AND CITATIONS AND EXPLANATIONS SUPPORTING
SUCH STATEMENT

 The examiner must indicate whether each claim appears to
satisfy  the  criteria  of  novelty,  inventive  step
(nonobviousness),  and  industrial  applicability.  The
determination or statement should be made on each of the
three criteria taken separately. The determination as to any
criteria should be negative if the criteria as to the
particular claim is not satisfied. The examiner should
always cite documents believed to support any negative
determination as to novelty and inventive step. Any negative
holding as to lack of industrial applicability must be fully
explained. See the discussion under MPEP § 1878, Item V. The
citation  of  documents  should  be  in  accordance  with
Administrative  Instruction  Sections  503  and  611.  The
procedure is the same as the procedure for search report
citations.  Explanations  should  clearly  indicate,  with
reference to the cited documents, the reasons supporting the
conclusions that any of the said criteria is or is not
satisfied, unless the statement is positive and the reason
for  citing  any  document  is  easy  to  understand  when
consulting the document. If only certain passages of the
cited documents are relevant, the examiner should identify
them, for example, by indicating the page, column, or the
lines where such passages appear. Preferably, a reasoned
statement should be provided in all instances.

 ITEM VI.  CERTAIN DOCUMENTS CITED

 If the examiner has discovered or the International Search
Report has cited, a relevant document which refers to a
nonwritten disclosure, and the document was only published
on  or  after  the  relevant  date  of  the  international
application, the examiner must indicate on the International
Preliminary Examination Report:

  (i)  the date on which the document was made
available to the public;

  (ii)  the date on which the non - written public
disclosure occurred.

 The examiner should also identify any published application
or  patent  and  should  provide  for  each  such  published
application or patent the following indications:

  (i)  its date of publication;

  (ii)  its filing date, and its claimed priority date
(if any).

 The Report may also indicate that, in the opinion of the
International Preliminary Examining Authority, the priority
date of the document cited has not been validly claimed (PCT
Rule 70.10).

  Guidelines  explaining  to  the  examiner  the  manner  of
indicating certain special categories of documents as well
as  the  manner  of  indicating  the  claims  to  which  the
documents cited in such report are relevant are set forth in
Administrative Instruction Sections 507(c), (d), and (e) and
508.

 ITEM VII. CERTAIN DEFECTS IN THE INTERNATIONAL APPLICATION

 If, in the opinion of the examiner, defects existing in the
form or contents of the international application have not
been suitably solved at the prescribed time limit for
establishing  the  Preliminary  Examination  Report,  the
examiner may include this opinion in the report, and if
included, must also indicate the reasons therefor. See the
discussion under MPEP § 1878, Item VII.

  ITEM  VIII.  CERTAIN  OBSERVATIONS  ON  THE  INTERNATIONAL
APPLICATION

 If, in the opinion of the examiner, the clarity of claims,
the description, and the drawings, or the question as to
whether the claims are fully supported by the description
have not been suitably solved at the prescribed time limit
for establishing the Preliminary Examination Report, the
examiner may include this opinion in the report, and if
included, must also indicate the reasons therefor. See the
discussion under MPEP § 1878, Item VIII.

  CERTIFICATION

 When completing the certification of the report, the
examiner must indicate the date on which the Demand for
International Preliminary Examination was submitted and the
date on which the examiner completed the report and the name
and  mailing  address  of  the  International  Preliminary
Examining Authority.

 These last mentioned items may either be completed when
including  the  other  data  or  when  completing  the
certification. Every International Preliminary Examination
Report must be signed by a primary examiner.

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1879.01  Time Limit for Preparing Report

  PCT Rule 69 Start of and Time Limit for International
  Preliminary Examination

  69.1.  Start of International Preliminary Examination

 (a)  Subject to paragraphs (b) to (e), the International
Preliminary  Examining  Authority  shall  start  the
international  preliminary  examination  when  it  is  in
possession  both  of  the  demand  and  of  either  the
international search report or a notice of the declaration
by  the  International  Searching  Authority  under  Article
17(2)(a)  that  no  international  search  report  will  be
established.

 (b)  If  the  competent  International  Preliminary
Examining Authority is part of the same national Office or
intergovernmental  organization  as  the  competent
International  Searching  Authority,  the  international
preliminary  examination  may,  if  the  International
Preliminary Examining Authority so wishes and subject to
paragraph (d), start at the same time as the international
search.

 (c)  Where the statement concerning amendments contains
an indication that amendments under Article 19 are to be
taken into account (Rule 53.9(a)(i)), the International
Preliminary  Examining  Authority  shall  not  start  the
international preliminary examination before it has received
a copy of the amendments concerned.

 (d)  Where the statement concerning amendments contains
an  indication  that  the  start  of  the  international
preliminary examination is to be postponed (Rule 53.9(b)),
the International Preliminary Examining Authority shall not
start the international preliminary examination before

 (i)  it has received a copy of any amendments made under
Article 19,

 (ii)  it has received a notice from the applicant that he
does not wish to make amendments under Article 19, or

 (iii)  the expiration of 20 months from the priority date,

 whichever occurs first.

 (e)  Where the statement concerning amendments contains
an indication that amendments under Article 34 are submitted
with the demand (Rule 53.9(c)) but no such amendments are,
in fact, submitted, the International Preliminary Examining
Authority shall not start the international preliminary
examination before it has received the amendments or before
the time limit fixed in the invitation referred to in Rule
60.1(g) has expired, whichever occurs first.

 69.2.  Time Limit for International Preliminary Examination

  The  time  limit  for  establishing  the  international
preliminary examination report shall be:

 (i)  28 months from the priority date if the demand was

filed prior to the expiration of 19 months from the priority
date;

 (ii)  nine months from the start of the international
preliminary examination if the demand was filed after the
expiration of 19 months from the priority date.

 The time limit for preparing the International Preliminary
Examination Report is 28 months from the priority date if
the Demand was timely filed. This time limit is 27 months
internally to ensure sufficient time to process, review and
mail  the  report  in  sufficient  time  to  reach  the
International Bureau by 28 months from the earliest priority
date. Where the Demand is not filed within 19 months from
the priority date, the report is to be established by 9
months  from  the  start  of  international  preliminary
examination.

1879.02  Transmittal of the International Preliminary
Examination Report

 PCT Article 36 Transmittal, Translation, and Communication,
  of the International Preliminary Examination Report

 (1)  The international preliminary examination report,
together with the prescribed annexes, shall be transmitted
to the applicant and to the International Bureau.

  *****

  PCT Rule 71 Transmittal of the International Preliminary
  Examination Report

 71.1.  Recipients

 The International Preliminary Examining Authority shall, on
the  same  day,  transmit  one  copy  of  the  international
preliminary examination report and its annexes, if any, to
the International Bureau, and one copy to the applicant.

 71.2.  Copies of Cited Documents

 (a)  The request under Article 36(4) may be presented
any time during seven years from the international filing
date of the international application to which the report
relates.

 (b)  The International Preliminary Examining Authority
may require that the party (applicant or elected Office)
presenting the request pay to it the cost of preparing and
mailing the copies. The level of the cost of preparing
copies shall be provided for in the agreements referred to
in  Article  32(2)  between  the  International  Preliminary
Examining Authorities and the International Bureau.

 (c)  [Deleted ]

 (d)  Any International Preliminary Examining Authority
may perform the obligations referred to in paragraphs (a)
and (b) through another agency responsible to it.

  The  International  Preliminary  Examination  Report  is
transmitted to the International Bureau using a transmittal
Form PCT/IPEA/416. Every effort is made to ensure that the
transmittal is effected in sufficient time to reach the

International Bureau by 28 months from the earliest priority
date.

 AUTHORIZED OFFICER

 Form PCT/IPEA/416 must be signed by a primary examiner.

1879.03  Translations

  PCT Article 36 Transmittal, Translation, and
 Communication, of the International Preliminary Examination
  Report

  *****

 (2)(a)  The  international  preliminary  examination
report  and  its  annexes  shall  be  translated  into  the
prescribed languages.

 (b)  Any  translation  of  the  said  report  shall  be
prepared by or under the responsibility of the International
Bureau, whereas any translation of the said annexes shall be
prepared by the applicant.

  *****

  PCT Rule 72 Translation of the International Preliminary
  Examination Report

  72.1.  Languages

 (a)  Any  elected  State  may  require  that  the
international preliminary examination report, established in
any language other than the official language, or one of the
official languages, of its national Office, be translated
into English.

 (b)  Any such requirement shall be notified to the
International Bureau, which shall promptly publish it in the
Gazette.

  72.2.  Copy of Translation for the Applicant

 The International Bureau shall transmit a copy of the
translation referred to in Rule 72.1(a) of the international
preliminary examination report to the applicant at the same
time as it communicates such translation to the interested
elected Office or Offices.

  72.3.  Observations on the Translation

 The applicant may make written observations on what, in his
opinion, are errors of translation in the translation of the
international preliminary examination report and shall send
a copy of any such observations to each of the interested
elected Offices and a copy to the International Bureau.

 The International Preliminary Examination Report and any
annexes are established in Chinese, English, French, German,
Japanese,  Russian  or  Spanish,  if  the  international
application was filed in one of those languages, or in
English  if  the  international  application  was  filed  in
another language. Each elected State may require that the
report, if it is not in (one of) the official language(s) of
its national Office, be translated into English. In that

case, the translation of the body of the report is prepared
by International Bureau, which transmits copies to the
applicant and to each interested elected Office. If any
elected Office requires a translation of annexes to the
report, the preparation and furnishing of that translation
is the responsibility of the applicant.

 The U.S. requires the final report and the annexes thereto
to be in English. Translation of the annexes for national
stage purposes is required pursuant to 35 U.S.C. 371(c)(5)
and  37  CFR  1.495(e).  Failure  to  timely  provide  such
translation results in cancellation of the annexes.

1879.04  Confidential Nature of the Report

  PCT Article 38 Confidential Nature of the International
  Preliminary Examination

 (1)  Neither  the  International  Bureau  nor  the
International Preliminary Examining Authority shall, unless
requested or authorized by the applicant, allow access
within the meaning, and with the proviso, of Article 30(4)
to the file of the international preliminary examination by
any person or authority at any time, except by the elected
Offices  once  the  international  preliminary  examination
report has been established.

 (2)  Subject to the provisions of paragraph (1) and
Articles  36(1)  and  (3)  and  37(3)(b),  neither  the
International  Bureau  nor  the  International  Preliminary
Examining Authority shall, unless requested or authorized by
the applicant, give information on the issuance or non -
issuance of an international preliminary examination report
and on the withdrawal or non - withdrawal of the demand or
of any election.

1880  Withdrawal of Demand or Election

 PCT Article 37 Withdrawal of Demand or Election

 (1)  The applicant may withdraw any or all elections.

 (2)  If the election of all elected States is withdrawn,
the demand shall be considered withdrawn.

 (3)(a)  Any  withdrawal  shall  be  notified  to  the
International Bureau.

 (b)  The elected Offices concerned and the International
Preliminary Examining Authority concerned shall be notified
accordingly by the International Bureau.

 (4)(a)  Subject to the provisions of subparagraph (b),
withdrawal of the demand or of the election of a Contracting
State shall, unless the national law of that State provides
otherwise,  be  considered  to  be  withdrawal  of  the
international application as far as that State is concerned.

 (b)  Withdrawal of the demand or of the election shall
not be considered to be withdrawal of the international
application if such withdrawal is effected prior to the
expiration of the applicable time limit under Article 22;
however, any Contracting State may provide in its national
law that the aforesaid shall apply only if its national
Office has received, within the said time limit, a copy of

the international application, together with a translation
(as prescribed), and the national fee.

 bis
  PCT Rule 90  Withdrawals

  *****

  bis
  90  .4.  Withdrawal of the Demand, or of Elections

 (a)  The applicant may withdraw the demand or any or all
elections at any time prior to the expiration of 30 months
from the priority date.

 (b)  Withdrawal shall be effective upon receipt of a
notice addressed by the applicant to the International
Bureau.

 (c)  If the notice of withdrawal is submitted by the
applicant  to  the  International  Preliminary  Examining
Authority, that Authority shall mark the date of receipt on
the notice and transmit it promptly to the International
Bureau.  The  notice  shall  be  considered  to  have  been
submitted to the International Bureau on the date marked.

  *****

  Administrative Instructions Section 606 Cancellation of
  Elections

 The International Preliminary Examining Authority shall, if
the election is in the demand, cancel ex officio the
election of any State which is not a designated State or
which is not bound by Chapter II of the Treaty, shall
enclose that election within square brackets, shall draw a
line between the square brackets while still leaving the
election legible and shall enter, in the margin, the words
"CANCELLED EX OFFICIO BY IPEA" or their equivalent in the
language of the demand, and shall notify the applicant
accordingly.

 Any withdrawal of the Demand or any election must be sent
to the International Bureau. Withdrawal, if timely, is
effective upon receipt by the International Bureau.

1881  Receipt of Notice of Election by the Patent and
Trademark Office

  PCT Rule 61 Notification of the Demand and Elections

  *****

  61.2.  Notification to the Elected Offices

 (a)  The notification provided for in Article 31(7)
shall be effected by the International Bureau.

 (b)  The notification shall indicate the number and
filing date of the international application, the name of
the applicant, the filing date of the application whose
priority is claimed (where priority is claimed), the date of
receipt by the International Preliminary Examining Authority
of the demand, and in the case of a later election the date
of receipt of the notice effecting the later election. The
latter date shall be the actual date of receipt by the

International Bureau or, where applicable, the date referred
to in Rule 56.1(f) or 60.2(b).

 (c)  The notification shall be sent to the elected
Office together with the communication provided for in
Article 20. Elections effected after such communication
shall be notified promptly after they have been made.

 (d)  Where the applicant makes an express request to an
elected Office under Article 40(2) before the communication
provided  for  in  Article  20  has  taken  place,  the
International Bureau shall, upon request of the applicant or
the elected Office, promptly effect that communication to
that Office.

  61.3.  Information for the Applicant

 The International Bureau shall inform the applicant in
writing of the notification referred to in Rule 61.2 and of
the elected Offices notified under Article 31(7).

  *****

  All  notices  of  election  are  received  by  the  PCT
International Division from the International Bureau. The
PCT International Division prepares the appropriate records
of the election and places the paper in storage with the
communicated copy of the international application until the
national stage is entered.

1890  Receipt of Notice of Designation

 After publication of the international application, between
about  18  and  19  months  from  the  priority  date,  the
International Bureau notifies each national Office that it
has been designated and at the same time forwards to each
designated Office a copy of the international application, a
copy of the search report (an English translation is sent to
the U.S. if the search report was not in English), a copy of
any amendment under Article 19, and a copy of any priority
document (PCT Rule 47). Thus, the U.S. as a designated
Office first becomes aware of the fact of its designation at
about 18 to 19 months from the priority date and may begin a
national stage application file from the papers forwarded by
the International Bureau. See PCT Rule 24.2(b). Contracting
States  have  the  option  of  being  notified  of  their
designation earlier. The U.S. did not choose to be notified
earlier.

 The national stage papers sent by the International Bureau
are  received  in  the  Designated/Elected  Office  (DO/EO)
Section of the International Division of the USPTO. The
papers are matched with applicant's submission for entry
into the national stage in the U.S. and together make up the
U.S. national stage application file. The DO/EO checks the
national stage papers to be sure all necessary parts have
been received from applicant and from the International
Bureau. When the application is complete, a notice of
acceptance is mailed to applicant and the application is
forwarded to the Application Processing Division for mailing
of a filing receipt and final processing before forwarding
to the appropriate examining group.

1891  Receipt of Notice of Election and Preliminary
Examination Report

 If the U.S. is elected in a Demand for preliminary
examination prior to 19 months from the priority date,
applicant may postpone the steps needed for entry into the
national stage from 20 to 30 months from the priority date.
The USPTO will hold the national stage papers sent by the
International Bureau awaiting applicant's submissions for
entry into the national stage. The international application
is examined and the results (the International Preliminary
Examination Report) are received by the USPTO for inclusion
into the national stage file. The examination report is
communicated to the elected Offices by the International
Bureau.

 The notice of election is communicated to the elected
Office along with the Article 20 communication or as soon
thereafter as the International Bureau receives notice of
the election. Election of a Contracting State, of course, is
not possible unless that state was designated.

1893  National Stage (U.S. National Application Filed
Under 35 U.S.C. 371) [R - 2]

 37 CFR 1.9(a) states,

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

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

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

 Thus, there are three types of U.S. national applications:
a national stage application under the PCT (filed under 35
U.S.C. 371), a regular domestic national application filed
under 35 U.S.C. 111(a), and a provisional application filed
under 35 U.S.C. 111(b).

 An applicant who uses the Patent Cooperation Treaty gains
the benefit of

  (1)  a delay in the time when **>papers must be
submitted to the national offices<;

  (2)  an international search (to judge the level of
the relevant prior art) before having to expend resources
for filing fees, translations and other costs;

  (3)  a delay in the expenditure of fees;

  (4)  additional time for research;

  (5) additional  time  to  evaluate  financial,
marketing, commercial and other considerations.

  The  time  delay  is,  however,  the  benefit  most  often

recognized as primary. Ultimately, applicant might choose to
*>submit< the national stage application. The national stage
is unique compared to a domestic national application in
that

  - it is *>submitted< later (i.e., normally 20 or 30
months or more from a claimed priority date as compared to
12 months for a domestic application claiming priority).

  - the status of the prior art is generally known before
the national stage begins and this is not necessarily so in
a domestic national application.

  - any patent issuing on the basis of the national stage
application may be used as a reference from its 35 U.S.C.
102(e) date, i.e., it has a prior art effect from its 35
U.S.C. 102(e) date.

 Since the Treaty does not preclude establishing a date for
prior art purposes which is or can be as early as the
international filing date (i.e., by paying the basic fee,
providing  a  copy  of  the  application,  any  translation
thereof, and an oath or declaration at time of filing the
international application), the national stage seems to
offer benefits that make its use desirable.

  IDENTIFICATION OF THE NATIONAL STAGE APPLICATION

 Once the national stage application has been accorded a
serial number (the two digit series code followed by a six
digit  serial  number),  that  number  as  well  as  the
international application * number should be used whenever
papers or other communications are directed to the PTO
regarding the national stage application. The national stage
application is tracked through the PALM locator system by
the  eight  digit  U.S.  application  number.  Therefore,
processing is expedited if the U.S. application number is
indicated. The international application number is helpful
for identification purposes and can be used to cross - check
a possibly erroneous U.S. serial number. Of course, the
international filing date and the national stage entry date
under 35 U.S.C. 371 should also be provided. See 37 CFR
1.5(a).

1893.01  Commencement and Entry [R - 2]

 35 U.S.C. 371  .  National stage: Commencement

 (a)  Receipt from the International Bureau of copies of
international  applications  with  any  amendments  to  the
claims,  international  search  reports,  and  international
preliminary  examination  reports  including  any  annexes
thereto  may  be  required  in  the  case  of  international
applications designating or electing the United States.

 (b)  Subject to subsection (f) of this section, the
national stage shall commence with the expiration of the
applicable time limit under article 22(1) or (2), or under
article 39(1)(a) of the treaty.

 (c)  The  applicant  shall  file  in  the  Patent  and
Trademark Office

 (1)  the national fee provided in section 41(a) of this
title;

 (2)  a copy of the international application, unless not
required under subsection (a) of this section or already
communicated by the International Bureau, and a translation
into the English language of the international application,
if it was filed in another language;

 (3)  amendments,  if  any,  to  the  claims  in  the
international application, made under article 19 of the
treaty, unless such amendments have been communicated to the
Patent and Trademark Office by the International Bureau, and
a translation into the English language if such amendments
were made in another language;

 (4)  an oath or declaration of the inventor (or other
person authorized under chapter 11 of this title) complying
with the requirements of section 115 of this title and with
regulations  prescribed  for  oaths  or  declarations  of
applicants;

 (5)  a translation into the English language of any
annexes to the international preliminary examination report,
if such annexes were made in another language.

 (d)  The requirements with respect to the national fee
referred to in subsection (c)(1), the translation referred
to  in  subsection  (c)(2),  and  the  oath  or  declaration
referred to in subsection (c)(4) of this section shall be
complied with by the date of the commencement of the
national stage or by such later time as may be fixed by the
Commissioner. The copy of the international application
referred to in subsection (c)(2) shall be submitted by the
date of the commencement of the national stage. Failure to
comply  with  these  requirements  shall  be  regarded  as
abandonment of the application by the parties thereof,
unless it be shown to the satisfaction of the Commissioner
that such failure to comply was unavoidable. The payment of
a surcharge may be required as a condition of accepting the
national fee referred to in subsection (c)(1) or the oath or
declaration referred to in subsection (c)(4) of this section
if these requirements are not met by the date of the
commencement of the national stage. The requirements of
subsection (c)(3) of this section shall be complied with by
the date of the commencement of the national stage, and
failure to do so shall be regarded as a cancellation of the
amendments to the claims in the international application
made under article 19 of the treaty. The requirement of
subsection (c)(5) shall be complied with at such time as may
be fixed by the Commissioner and failure to do so shall be
regarded  as  cancellation  of  the  amendments  made  under
article 34(2)(b) of the treaty.

 (e)  After an international application has entered the
national stage, no patent may be granted or refused thereon
before the expiration of the applicable time limit under
article 28 or article 41 of the treaty, except with the
express consent of the applicant. The applicant may present
amendments to the specification, claims and drawings of the
application after the national stage has commenced.

 (f)  At the express request of the applicant, the
national stage of processing may be commenced at any time at
which the application is in order for such purpose and the
applicable requirements of subsection (c) of this section
have been complied with.

 37 CFR 1.491.  Entry into the national stage

 An international application enters the national stage when
the applicant has filed the documents and fees required by
35 U.S.C. 371(c) within the periods set in § 1.494 or §
1.495.

 Commencement of the national stage occurs upon expiration
of the time limit, as stated in 35 U.S.C. 371(b).

 Entry into the national stage occurs upon completion of
certain acts, as stated in 37 CFR 1.491.

 **

1893.01(a)  Entry via the U.S. Designated Office

 37 CFR 1.494  .  Entering the national stage in the
United States of America as a Designated Office.

 (a)  Where the United States of America has not been
elected by the expiration of 19 months from the priority
date  (see  §  1.495),  the  applicant  must  fulfill  the
requirements of PCT Article 22 and 35 U.S.C. 371 within the
time periods set forth in paragraphs (b) and (c) of this
section  in  order  to  prevent  the  abandonment  of  the
international  application  as  to  the  United  States  of
America.  International  applications  for  which  those
requirements are timely fulfilled will enter the national
stage and obtain an examination as to the patentability of
the invention in the United States of America.

 (b)  To  avoid  abandonment  of  the  application,  the
applicant shall furnish to the United States Patent and
Trademark Office not later than the expiration of 20 months
from the priority date:

 (1)  a copy of the international application, unless it
has been previously communicated by the International Bureau
or unless it was originally filed in the United States
Patent and Trademark Office; and

 (2)  the basic national fee (see § 1.492(a)). The 20 -
month time limit may not be extended.

 (c)  If applicant complies with paragraph (b) of this
section before expiration of 20 months from the priority
date but omits (1) a translation of the international
application, as filed, into the English language, if it was
originally filed in another language (35 U.S.C. 371(c)(2))
and/or (2) the oath or declaration of the inventor (35
U.S.C.  371(c)(4);  see  §  1.497),  applicant  will  be  so
notified and given a period of time within which to file the
translation and/or oath or declaration in order to prevent
abandonment  of  the  application.  The  payment  of  the
processing fee set forth in § 1.492(f) is required for
acceptance  of  an  English  translation  later  than  the
expiration of 20 months after the priority date. The payment
of the surcharge set forth in § 1.492(e) is required for
acceptance of the oath or declaration of the inventor later
than the expiration of 20 months after the priority date. A
copy  of  the  notification  mailed  to  applicant  should
accompany any response thereto submitted to the Office.

 (d) A copy of any amendments to the claims made under PCT
Article 19, and a translation of those amendments into
English, if they were made in another language, must be
furnished not later than the expiration of 0 months from the
priority date. Amendments under PCT Article 19 which are not
received by the expiration of 20 months from the priority
date will be considered to be cancelled. The 20 - month time
limit may not be extended.

 (e) Verification of the translation of the international
application  or  any  other  document  pertaining  to  an
international  application  may  be  required  where  it  is
considered necessary, if the international application or
other document was filed in a language other than English.

 (f) The documents and fees submitted under paragraphs (b)
and (c) of this section must be clearly identified as a
submission to enter the national stage under 35 U.S.C. 371,
otherwise the submission will be considered as being made
under 35 U.S.C. 111.

 (g) An international application becomes abandoned as to
the United States 20 months from the priority date if the
requirements of paragraph (b) of this section have not been
complied with within 20 months from the priority date where
the United States has been designated but not elected by the
expiration of 19 months from the priority date. If the
requirements of paragraph (b) of this section are complied
with within 20 months from the priority date but any
required translation of the international application as
filed and/or the oath or declaration are not timely filed,
an international application will become abandoned as to the
United  States  upon  expiration  of  the  time  period  set
pursuant to paragraph (c) of this section.

 An international application designating the U.S. will
enter the national stage via the U.S. Designated Office
unless a Demand electing the U.S. is filed prior to the
expiration of 19 months from the priority date whereupon
entry will be via the U.S. Elected Office. The procedure for
entry via the U.S. Designated Office is as prescribed in 37
CFR 1.494.

1893.01(a)(1)  Submissions Required by 20 Months From
the Priority Date [R - 3]

 To begin entry into the national stage, applicant is
required to comply with 37 CFR 1.494(b) within 20 months
from the priority date unless election of the U.S. under
Chapter II of the PCT has been made prior to 19 months from
the priority date (see MPEP § 1893.01(b)). Thus, applicant
must pay the basic national fee on or before 20 months from
the  priority  date  and  be  sure  that  a  copy  of  the
international application has been received by the U.S.
Designated Office prior to expiration of 20 months from the
priority date. The notice referred to in PCT Rule 47.1(c)
constitutes  conclusive  evidence  of  transmission  of  the
international application. Payment of the basic national fee
will indicate applicant's intention to enter the national
stage and will provide a U.S. correspondence address in most
instances.

 Facsimile transmission is not acceptable for submission of
the basic national fee and/or the copy of the international
application. See 37 CFR 1.6(d). Likewise, the certificate of

mailing procedures of 37 CFR 1.8 do not apply to the filing
of the copy of the international application and payment of
the basic national fee. See 37 CFR 1.8(a)(2)(i)(F).

 Applicants cannot pay the basic national fee with a
surcharge after the 20 month deadline. Failure to pay the
basic national fee within 20 months from the priority date
will result in abandonment of the application. The time for
payment of the *>basic< fee is not extendable.

 Similarly, the copy of the international application is
required to be provided within 20 months from the priority
date. A copy of the international application is provided to
the U.S. Designated Office by the International Bureau (the
copy is ordinarily received shortly after publication at
about 18 months from the priority date). The International
Bureau also mails a confirmation (Form IB/308) to applicant
upon which applicant can rely that the copy has been
provided, see PCT Rule 47.1(c). The copy is placed in a file
to await applicant's submission of the basic national fee
and other national stage requirements.

 If the basic national fee has been paid by expiration of 20
months from the priority date, but the required oath,
declaration or translation has not been filed within 20
months from the priority date, as appropriate, the Office
will send applicant a notice and provide a period of time to
supply the deficiency as set forth in 37 CFR 1.494(c). The
time period usually set is 1 month from the date of
notification by the Office or 21 months from the priority
date, whichever is later. This period may be extended
pursuant to the provisions of 37 CFR 1.136(a). Thus, payment
of the basic national fee on or before 20 months from the
priority date will (1) cause the Office, after a check of
the national stage papers at 20 months, to mail a notice
identifying  any  deficiencies  and  affording  applicant  a
period for correction of those deficiencies, and (2) as in
national practice under 37 CFR 1.53, enable applicants to
extend  the  period  of  time  under  37  CFR  1.136(a)  for
submission of a proper oath, declaration or translation. The
international application enters the national stage under 35
U.S.C. 371 and 37 CFR 1.491 when the last of the items
indicated in 35 U.S.C. 371(c) is timely received by the
office.

 An international application becomes abandoned if the copy
of the international application or the filing fee have not
been  received  by  the  U.S.  Designated  Office  prior  to
expiration  of  20  months  from  the  priority  date.  A
notification  of  any  missing  parts  pursuant  to  37  CFR
1.494(c) will only be mailed in those instances where the
applicant has paid the basic national fee within 20 months
from the priority date.

 The notice of missing requirements lists several items
which 37 CFR>1.497(a), (b) and < 1.63 * >require< and all of
those items will have to be satisfied before the oath or
declaration  is  considered  accepted.  Similarly,  the
translation must be a translation of the international
application.  A  translation  of  less  than  all  of  the
international application (e.g., untranslated words in the
drawings or translations of those untranslated words in a
different part of the document) or a translation that
includes modifications; e.g., the insertion of headings, is
unacceptable.

1893.01(a)(2)  Article 19 Amendment (Filed With the
International Bureau)

 The international application may be amended under Article
19 after issuance of the search report. The amendment is
forwarded  to  the  U.  S.  Designated  Office  by  the
International Bureau for inclusion in the U.S. national
stage application. Article 19 amendments which were made in
English  will  be  entered  by  substituting  each  page  of
amendment for the corresponding English language page of
claims of the international application. If the Article 19
amendments were made in a language other than English,
applicant must provide an English translation for the U.S.
national stage application. The English translation of the
amendment(s)  must  be  submitted  by  20  months  from  the
priority date, unless the U.S. was elected by 19 months from
the priority date in which case the English translation must
be  filed  by  30  months,  or  the  amendment(s)  will  be
considered to be canceled, 35 U.S.C. 371(d). Where applicant
elects to request early processing of the national stage
application under 35 U.S.C. 371(f), subsequently received
amendments made in the international stage (and English
translations thereof) will not become part of the U.S.
national stage application file. If such amendments are
desired, they should be offered under 37 CFR 1.121 as a
preliminary amendment or a responsive amendment under 37 CFR
1.111.

 Applicants entering the national stage in the U.S. are
encouraged to submit an amendment in accordance with 37 CFR
1.121 rather than an English translation of an Article 19
amendment.  Sometimes  when  an  Article  19  amendment  is
translated into English, it cannot be entered. That is, each
page  of  an  Article  19  amendment  must  be  entered  by
substituting a page of amendment for the corresponding page
of  claims  of  the  international  application.  After
translation of a page, the translated page may no longer
correspond to a page of the claims of the international
application such that the amendment is capable of entry by
substituting  the  page  of  English  translation  (of  the
amendment) for the corresponding page of claims of the
international application without leaving an inconsistency.
Where applicant chooses to submit an English translation of
the Article 19 amendment, applicant should check to be sure
that the English translation can be entered by substituting
the pages of translation for corresponding pages of the
claims of the international application without leaving an
inconsistency. If entry of the page of translation causes
inconsistencies  in  the  claims  of  the  international
application  the  translation  will  not  be  entered.  For
example,  if  the  translation  of  the  originally  filed
application has a page which begins with claim 1 and ends
with a first part of claim 2 with the remainder of claim 2
on  the  next  page  then  translation  of  the  Article  19
amendment to only claim 1 must include a substitute page or
pages beginning with the changes to claim 1 and ending with
the last of the exact same first part of claim 2. This
enables the original translated first page of claims to be
replaced  by  the  translation  of  the  amendment  without
changing the subsequent unamended page(s). Alternatively,
applicant may submit a preliminary amendment in accordance
with 37 CFR 1.121.

1893.01(b)  Entry via the U.S. Elected Office

 37 CFR 1.495.  Entering the national stage in the United
States of America as an Elected Office.

 (a)  Where the United States of America has been elected
by the expiration of 19 months from the priority date, the
applicant must fulfill the requirements of 35 U.S.C. 371
within the time periods set forth in paragraphs (b) and (c)
of this section in order to prevent the abandonment of the
international  application  as  to  the  United  States  of
America.  International  applications  for  which  those
requirements are timely fulfilled will enter the national
stage and obtain an examination as to the patentability of
the invention in the United States of America.

 (b)  To  avoid  abandonment  of  the  application  the
applicant shall furnish to the United States Patent and
Trademark Office not later than the expiration of 30 months
from the priority date: (1) a copy of the international
application, unless it has been previously communicated by
the International Bureau or unless it was originally filed
in the United States Patent and Trademark Office; and (2)
the basic national fee (see § 1.492(a)). The 30 - month time
limit may not be extended.

 (c)  If applicant complies with paragraph (b) of this
section before expiration of 30 months from the priority
date but omits (1) a translation of the international
application, as filed, into the English language, if it was
originally filed in another language (35 U.S.C. 371(c)(2))
and/or (2) the oath or declaration of the inventor (35
U.S.C.  371(c)(4);  see  §  1.497),  applicant  will  be  so
notified and given a period of time within which to file the
translation and/or oath or declaration in order to prevent
abandonment  of  the  application.  The  payment  of  the
processing fee set forth in § 1.492(f) is required for
acceptance  of  an  English  translation  later  than  the
expiration of 30 months after the priority date. The payment
of the surcharge set forth in § 1.492(e) is required for
acceptance of the oath or declaration of the inventor later
than the expiration of 30 months after the priority date. A
copy  of  the  notification  mailed  to  applicant  should
accompany any response thereto submitted to the Office.

 (d)  A copy of any amendments to the claims made under
PCT Article 19, and a translation of those amendments into
English, if they were made in another language, must be
furnished not later than the expiration of 30 months from
the priority date. Amendments under PCT Article 19 which are
not received by the expiration of 30 months from the
priority date will be considered to be cancelled. The 30 -
month time limit may not be extended.

 (e)  A translation into English of any annexes to the
international preliminary examination report, if the annexes
were made in another language, must be furnished not later
than the expiration of 30 months from the priority date.
Translations of the annexes which are not received by the
expiration of 30 months from the priority date may be
submitted within any period set pursuant to paragraph (c) of
this section accompanied by the processing fee set forth in
§ 1.492(f). Annexes for which translations are not timely
received will be considered cancelled. The 30 - month time
limit may not be extended.

 (f)  Verification  of  the  translation  of  the
international application or any other document pertaining
to an international application may be required where it is
considered necessary, if the international application or
other document was filed in a language other than English.

 (g)  The documents submitted under paragraphs (b) and
(c)  of  this  section  must  be  clearly  identified  as  a
submission to enter the national stage under 35 U.S.C. 371,
otherwise the submission will be considered as being made
under 35 U.S.C. 111.

 (h)  An international application becomes abandoned as
to the United States 30 months from the priority date if the
requirements of paragraph (b) of this section have not been
complied with within 30 months from the priority date and
the United States has been elected by the expiration of 19
months from the priority date. If the requirements of
paragraph (b) of this section are complied with within 30
months from the priority date but any required translation
of the international application as filed and/or the oath or
declaration  are  not  timely  filed,  an  international
application will become abandoned as to the United States
upon expiration of the time period set pursuant to paragraph
(c) of this section.

 An international application designating the U.S. will
enter the national stage via the U.S. Elected Office if a
Demand electing the U.S. is filed prior to the expiration of
19 months from the priority date. The procedure for entry
via the U.S. Elected Office is as prescribed in 37 CFR
1.495.

1893.01(b)(1)  Submissions Required by 30 Months From
the Priority Date [R - 3]

 To begin entry into the national stage, where election of
the U.S. under Chapter II of the PCT has been made prior to
19 months from the priority date, applicant is required to
comply with 37 CFR 1.495(b) within 30 months from the
priority date. Thus, applicant must pay the basic national
fee on or before 30 months from the priority date and be
sure that a copy of the international application has been
received by the U.S. Designated Office prior to expiration
of 30 months from the penalty date. The notice referred to
in PCT Rule 47.1(c) constitutes conclusive evidence of
transmission of the international application. Payment of
the basic national fee will indicate applicant's intention
to  enter  the  national  stage  and  will  provide  a  U.S.
correspondence address in most instances.

 Facsimile transmission is not acceptable for submission of
the basic national fee and/or the copy of the international
application. See 37 CFR 1.6(d). Likewise, the certificate of
mailing procedures of 37 CFR 1.8 do not apply to the filing
of the copy of the international application and payment of
the basic national fee. See 37 CFR 1.8(a)(2)(i)(F).

 Applicants cannot pay the basic national fee with a
surcharge after the 30 months deadline. Failure to pay the
basic national fee within 30 months from the priority date
will result in abandonment of the application. The time for
payment of the basic fee is not extendable.

 Similarly, the copy of the international application is

required to be provided within 30 months from the priority
date. A copy of the international application is provided to
the U.S. Designated Office by the International Bureau (the
copy is ordinarily received shortly after publication at
about 18 months from the priority date). The International
Bureau also mails a confirmation (Form IB/308) to applicant
upon which applicant can rely that the copy has been
provided; see PCT Rule 47.1(c). The copy is placed in a file
to await applicant's submission of the basic national fee
and other national stage requirements.

 If the basic national fee has been paid by expiration of 30
months  from  the  priority  date  but  the  required  oath,
declaration, or translation has not been filed within 30
months from the priority date, as appropriate, the Office
will send applicant a notice and provide a period of time to
supply the deficiency as set forth in 37 CFR 1.495(c). The
time period usually set is 1 month from the date of the
notification by the Office or 31 months from the priority
date, whichever is later. This period may be extended
pursuant to the provisions of 37 CFR 1.136(a). Thus, payment
of the basic national fee on or before 30 months from the
priority date will (1) cause the Office, after a check of
the national stage papers at 30 months, to mail a notice
identifying  any  deficiencies  and  affording  applicant  a
period for correction of those deficiencies, and (2) as in
national practice under 37 CFR 1.53, enable applicants to
extend  the  period  of  time  under  37  CFR  1.136(a)  for
submission of a proper oath, declaration, or translation.
The international application enters the national stage
under 35 U.S.C. 371 when the last of the items indicated in
35 U.S.C. 371(c) and 37 CFR 1.491 is timely received by the
office.

 An international application becomes abandoned if the copy
of the international application or the basic national fee
has not been received by the U.S. Designated Office prior to
expiration  of  30  months  from  the  priority  date.  A
notification of any missing requirements pursuant to 37 CFR
1.495 will only be mailed in those instances where the
applicant has paid the basic national fee within 30 months
from the priority date.

 The notice of missing requirements lists several items
which 37 CFR>1.497(a), (b) and < 1.63 * >require< and all of
those items will have to be satisfied before the oath or
declaration  is  considered  accepted.  Similarly,  the
translation must be a translation of the international
application.  A  translation  of  less  than  all  of  the
international application (e.g., untranslated words in the
drawings or translations of those untranslated words in a
different part of the document) or a translation that
includes modifications, e.g., the insertion of headings, is
unacceptable.

1893.01(b)(2)  Article 19 and Article 34 Amendments
(Filed With the International Preliminary Examining
Authority) [R - 2]

 Paragraph (d) of 37 CFR 1.495 states that if an Article 19
amendment is not received before expiration of 30 months
from the priority date, it is considered to be canceled.
Nevertheless, applicant may submit a preliminary amendment
in accordance with 37 CFR 1.121 adding the substance of the
Article 19 amendment to the national stage application. In

some instances, entry of the subject matter via an amendment
under 37 CFR 1.121 may be preferable to entry via Article
19. For example, where the Article 19 amendment was not
filed in English the amendment would have to be translated
into English in order that it be submitted for entry into
the national stage. The translation must be submitted before
expiration of 30 months from the priority date and the
substitute pages must be capable of insertion into the text
of the international application. Thus, where an Article 19
amendment was made in the international stage the same
amendment may be entered for the national stage either in
accordance with 35 U.S.C. 371(c)(3) or the amendments may be
added via a preliminary amendment in accordance with 37 CFR
1.121.

 Translation of an Annex **>to the International
 Preliminary Examination Report<

 The translation of an ** Annex >to the international
preliminary examination report< must be submitted so that
the translation of the originally filed application can be
changed  by  replacing  the  originally  filed  application
page(s)  (of  translation)  with  substitute  page(s)  of
translation of the annex. For example, if the translation of
the originally filed application has a page which begins
with claim 1 and ends with a first part of claim 2 with the
remainder of claim 2 on the next page then translation of
the annex to only claim 1 must include a substitute page or
pages beginning with the changes to claim 1 and ending with
the last of the exact same first part of claim 2. This
enables the original translated first page of claims to be
replaced by the translation of the annex without changing
the subsequent unamended page(s). Alternatively applicant
may submit a preliminary amendment in accordance with 37 CFR
1.121.

1893.01(c)  Fees

 Because the national stage fees are subject to change,
applicants and examiners should always consult the Official
Gazette for the current fee listing.

 Applicants are cautioned that national stage fees are
specifically provided for in 37 CFR 1.492 and authorizations
to charge fees under 37 CFR 1.16 do not constitute a
specific authorization to charge national stage fees.

1893.01(d)  Translation

 Applicants entering the national stage in the U.S. are
required  to  file  a  translation  of  the  international
application (if the international application was filed in
another language), 35 U.S.C. 371(c)(2). The translation must
be a translation of the international application as filed
with any changes which have been properly accepted under PCT
Rule 26 or any rectifications which have been properly
accepted  under  PCT  Rule  91.  Amendments,  even  those
considered to be minor or to not include new matter, may not
be incorporated into the translation. If an amendment to the
international  application  as  filed  is  desired  for  the
national stage, it may be submitted in accordance with 37
CFR 1.121. An amendment filed under 37 CFR 1.121 should be
submitted within 1 month after completion of the 35 U.S.C.
371(c) requirements and entry into the national stage; see
37 CFR 1.496(a). If applicant has timely paid the basic

national fee but the translation is missing or is defective,
a notice of Missing Requirements will be sent to applicant
setting  a  period  to  correct  any  missing  or  defective
requirements. The time period is 21 months or 31 months from
the priority date, as appropriate, or 1 month from the date
of the notice, whichever expires later. The time period is
subject to the provisions of 37 CFR 1.136(a).

1893.01(e)  Oath/Declaration [R - 3]

 >37 CFR 1.497. Oath or declaration under 35 U.S.C.
371(c)(4).

 (a) When an applicant of an international application
desires to enter the national stage under 35 U.S.C. 371
pursuant to § § 1.494 or 1.495, he or she must file an oath
or declaration that:

 (1)  Is executed in accordance with either § § 1.66 or
1.68;

 (2)  Identifies  the  specification  to  which  it  is
directed;

 (3)  Identifies  each  inventor  and  the  country  of
citizenship of each inventor; and

 (4)  States  that  the  person  making  the  oath  or
declaration believes the named inventor or inventors to be
the original and first inventor or inventors of the subject
matter which is claimed and for which a patent is sought.

 (b)(1)  The oath or declaration must be made by all of
the actual inventors except as provided for in § § 1.42,
1.43 or 1.47.

 (2)  If the person making the oath or declaration is not
the inventor, the oath or declaration shall state the
relationship of the person to the inventor, the facts
required by § § 1.42, 1.43 or 1.47, and, upon information
and belief, the facts which the inventor would have been
required to state.

 (c)  If the oath or declaration meets the requirements
of paragraphs (a) and (b) of this section, the oath or
declaration will be accepted as complying with 35 U.S.C.
371(c)(4) and § § 1.494(c) or 1.495(c). However, if the oath
or declaration does not also meet the requirements of §
1.63, a supplemental oath or declaration in compliance with
§ 1.63 will be required in accordance with § 1.67.<

 Applicants entering the national stage in the U.S. are
required to file an oath or declaration of the inventor in
accordance with 37 CFR>1.497(a), (b) and< 1.63. If the basic
national fee has been paid by the expiration of 20 or 30
months from the priority date as appropriate, but the
required oath or declaration has not been filed, the Office
will send applicant a notice of Missing Requirements setting
a  time  period  to  correct  any  missing  or  defective
requirements. The time period is 21 months or 31 months from
the priority date, as appropriate, or 1 month from the date
of the notice, whichever expires later. The time period is
subject to the provisions of 37 CFR 1.136(a). The oath or
declaration must comply with the requirements of 35 U.S.C.
115 and with the regulations prescribed for oaths and

declarations, see especially 37 CFR 1.63.

 If an inventor refuses to execute the oath or declaration
or  is  unavailable,  applicant  must  file  an  oath  or
declaration and a petition in accordance with 37 CFR 1.47.
Similarly,  where  an  inventor  is  deceased  or  legally
incapacitated, an oath or declaration in accordance with the
provisions of 37 CFR 1.42 or 1.43 must be provided. To avoid
abandonment the oath or declaration and petition (under 37
CFR 1.42, 1.43 and/or 1.47, as appropriate) must be filed
either before expiration of 20 or 30 months from the
priority date, as appropriate, or, where a notification of
deficiency of the oath/declaration has been mailed, within
the time for response to that notification.

 If applicant has filed an oath or declaration and petition
under 37 CFR 1.42, but has not provided proof of authority
of the legal representative as required by 37 CFR 1.44, the
application papers will be provisionally accepted for entry
into the national stage and forwarded for further processing
and examination on the merits. However, if sufficient proof
of  authority  of  the  person(s)  signing  as  legal
representative of the deceased inventor is not provided
before mailing of the notice of allowance, the application
should be forwarded to the PCT Legal Affairs Division. If
proof of authority is not filed, the application will be
held not to have entered the national stage for failure to
provide an oath or declaration as required by 35 U.S.C.
371(c)(4) and will be held abandoned in accordance with 37
CFR 1.494(g) or 1.495(h). Under such circumstances the date
of abandonment will be the date of expiration of 20 months
from  the  priority  date  or,  where  a  notification  of
deficiency of the oath/declaration has been mailed, the date
of expiration of the time for response to that notification
or as extended by any extension fee timely paid under 37 CFR
1.136(a).

1893.02  Abandonment

 If the requirements of 35 U.S.C. 371(c) are not complied
with by the time period set in 37 CFR 1.494(b) and (c) or 37
CFR 1.495(b) and (c), as appropriate, the application is
considered to be abandoned, see 37 CFR 1.494(g) and 37 CFR
1.495(h).

 Examiners and applicants should be aware that sometimes
papers filed for the national stage are deficient and
abandonment results. For example, if the fee submitted does
not include at least the amount of the basic national fee
that is due, the application becomes abandoned.

 Applicant may file a petition to revive an abandoned
application in accordance with the provisions of 37 CFR
1.137. See MPEP § 711.03(c)

1893.03  Prosecution of U.S. National Stage Applications
Before the Examiner [R - 3]

 An international application which enters the national
stage will be forwarded to the appropriate examining group
for examination in turn based on the 35 U.S.C. *>371(c)<
date of the application. Once the application is forwarded
to the examiner, prosecution proceeds in the same manner as
for a domestic application with the exceptions that (1) the
international filing date is the date to keep in mind when

searching the prior art and (2) unity of invention proceeds
as under 37 CFR 1.475.

1893.03(a)  How To Identify That an Application Is a U.S.
National Stage Application [R - 3]

 Applicant's initially deposited application must indicate
that treatment as a national stage application (filed under
35 U.S.C. 371) is requested (see 37 CFR 1.494(f) and 37 CFR
1.495(g)). Otherwise, the application will be treated as an
application filed under 35 U.S.C. 111(a).

 That is, if applicant wishes the application to be filed
under  35  U.S.C.  111(a),  applicant's  originally  filed
application papers need indicate simply that the papers are
for a new U.S. patent application. If, however, applicant is
filing papers for entry into the national stage of a PCT
application, applicant must so state. 37 CFR 1.494(f) and
1.495(g) require that applicant's application papers must be
clearly identified as a submission to enter the national
stage under 35 U.S.C. 371; otherwise the submission will be
considered  as  being  made  under  35  U.S.C.  111>(a)<.
Examination  of  the  originally  filed  application  papers
occurs in either the Application Processing Division or in
the National Stage Processing Division of the Office of PCT
Operations where it is determined whether applicant has
asked that the papers be treated as a national stage filing
under 35 U.S.C. 371. If the application is accepted for
entry into the national stage, the National Stage Processing
Division  will  fill  out  and  mail  Form  PCT/DO/EO/903
indicating acceptance of the application as a national stage
filing under 35 U.S.C. 371 and will stamp the face of the
file with an indication that the application is filed under
35 U.S.C. 371. Accordingly, the three key indicators which
reflect that an application is filed under 35 U.S.C. 371 are
(1) the file face indication of a filing under 35 U.S.C.
371, (2) the Form PCT/DO/EO/903 indicating acceptance of the
application as a national stage filing under 35 U.S.C. 371,
and (3) applicant's statement (or the equivalent) in the
originally filed application papers that the application is
a national stage filing under 35 U.S.C. 371. Applicants who
use  transmittal  Form  PCT/DO/EO/1390  will  satisfy  this
requirement since the form includes an indication that the
application is a national stage filing under 35 U.S.C. 371.

 Initially, the examiner should inspect the face of the file
jacket for an indication that it is filed under 35 U.S.C.
371 and should also check the application papers for the
presence  of  Form  PCT/DO/EO/903.  If  neither  of  these
indications are present the application may, in the absence
of evidence to the contrary (there is an indication in the
originally filed application papers that processing as a
national stage is desired), be treated as a filing under 35
U.S.C. 111(a). Thus, if both indications are present, the
application should be treated as a filing under 35 U.S.C.
371. If the face of the file jacket does not indicate a
filing under 35 U.S.C. 371, but a properly completed Form
PCT/DO/EO/903 is in the file, the examiner should complete
the face of the file by adding "filed under 35 U.S.C. 371"
in the upper left margin thereof. The examiner should
initial and date this change. If the file wrapper does not
include a properly completed Form PCT/DO/EO/903 but the face
of the file indicates a filing under 35 U.S.C. 371, the
application  should  be  returned  to  the  National  Stage
Processing Division of the Office of PCT Operations for

certification that the application has been accepted for the
national stage.

 In accordance with the notice at 1077 OG 13 (14 April
1987), if the applicant files a U.S. national application
and  clearly  identifies  in  the  accompanying  oath  or
declaration the specification to which it is directed by
referring to a particular international application by PCT
Application Number and International Filing Date and that he
or she is executing the declaration as, and seeking a U.S.
Patent as, the inventor of the invention described in the
identified international application, then the application
will be accepted as filed under 35 U.S.C. 371. Merely
claiming priority of an international (PCT) application in
an oath or declaration will not serve to indicate a filing
under 35 U.S.C. 371. Also, if there are any conflicting
instructions as to whether the filing is under 35 U.S.C.
111(a) or 35 U.S.C. 371, the application will be accepted as
filed under 35 U.S.C. 111(a).

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

1893.03(b)  The Filing Date of a U.S. National Stage
Application [R - 2]

 An international application designating the U.S. has two
stages (international and national) with the filing date
being the same in both stages. Often the date of entry into
the national stage is confused with the filing date. It
should be borne in mind that the filing date of the
international stage application is also the filing date for
the national stage application. Specifically, 35 U.S.C. 363
provides that

 An international application designating the United States
shall have the effect, from its international filing date
under Article 11 of the treaty, of a national application
for patent regularly filed in the Patent and Trademark
Office except as otherwise provided in section 102(e) of
this title.

 Similarly, PCT Article 11(3) provides that

 ...an international filing date shall have the effect of a
regular national application in each designated State as of
the  international  filing  date,  which  date  shall  be
considered to be the actual filing date in each designated
State.

 37 CFR 1.496(a), first sentence, reads "International
applications which have complied with the requirements of 35
U.S.C. 371(c) will be taken up for action based on the date
on which such requirements were met." Thus, when the face of
the file jacket is printed and pasted to the face of the
U.S. national stage application file, the information is
read from the PALM data base and the information printed in
the filing date box is the date of entry into the national
stage rather than the actual international filing date. See
the preceding Sample - National Stage Filing Under 35 U.S.C.
371  wherein  the  face  of  the  file  of  national  stage
application serial number 07/XXX,XXX is shown with the date

of entry into the national stage (11/08/91) shown in the
FILING DATE box and the true U.S. filing date (01/ 10 / 90)
is  indicated  just  to  the  right  of  the  international
application  serial  number  (PCT/EP90/XXXXX)  in  the
FOREIGN/PCT APPLICATIONS block.

 >Applicants are quite often confused as to the true filing
date and will ask for corrected filing receipts thinking
that the information thereon is wrong. This explanation
should offer some clarity. For all legal purposes, the
filing date is the PCT international filing date. The date
of actual entry into the national stage is otherwise the
date provided in the PALM system. Any issued patent will
have all of the relevant dates listed.<

1893.03(c)  The Priority Date, Priority Claim, and
Priority Papers for a U.S. National Stage Application [R -
3]

 A U.S. national stage application (filed under 35 U.S.C.
371) may include a claim under 35 U.S.C. 119>(a) - (d)< or
120 for benefit of the filing date of a prior application or
applications. See also 35 U.S.C. 365.

 Priority Claim Under 35 U.S.C. 119>(a) - (d)<

 A national stage application which includes a priority
claim under 35 U.S.C. 119>(a) - (d)< must refer to a
priority application the priority of which was also claimed
in the international application. If the 35 U.S.C. 119>(a) -
(d)< priority claim is to an application the priority of
which was properly claimed in the international application,
the claim for priority is acknowledged and **> the national
stage application file is checked to see if the file
contains a copy of the certified copy of the priority
document submitted to the International Bureau.<

 If the 35 U.S.C. 119>(a) - (d)< priority claim in the
national stage application is to an application the priority
of which was not claimed in the international application,
the claim for priority must be denied for failing to meet
the  requirements  of  the  Patent  Cooperation  Treaty,
specifically PCT Rule 4.10.

 For a comparison with 35 U.S.C. 119>(a) - (d)< priority
claims in a national application filed under 35 U.S.C.
111(a) see MPEP § 1895.01.

  The ** Certified Copy

 The requirement for a certified copy of the foreign
priority application is normally fulfilled by applicant
providing a certified copy to the Receiving Office or to the
International Bureau within 16 months from the priority date
and subsequently, the International Bureau forwarding a
photocopy  of  the  certified  priority  document  when  it
forwards a copy of the international application (shortly
after publication at 18 months from the priority date) to
each Designated Office. The copy from the International
Bureau is placed in the U.S. national stage file. The
International Bureau stamps the face of the photocopy of the
certified priority document with an indication that the
certified  priority  document  was  received  at  the
International Bureau. The stamped copy of the priority
document sent to the U.S. Office of PCT Operations from the

International Bureau is acceptable to **> establish that
applicant  has  filed  a  certified  copy  of  the  priority
document.< The examiner should acknowledge in the next
Office  action  that  the  certified  copy  of  the  foreign
priority document has been filed. Note the example of an
acceptable priority document with the stamp (box) in the
upper  right  hand  section  indicating  receipt  by  the
International Bureau (WIPO) on 30 November 1992 and the
stamped term "PRIORITY DOCUMENT".

 **  Double Click here to see the image  **

 If applicant has not forwarded a certified copy of the
priority application in time for the International Bureau to
forward it to the U.S. Designated Office with the copy of
the international application, then applicant will have to
provide a certified copy of the priority document during the
national stage to fulfill the requirement of paragraph (b)
of 35 U.S.C. 119.

  Priority Claim Under 35 U.S.C. 120

 A national stage application may include a priority claim
under 35 U.S.C. 120 to a prior U.S. national application or
to a prior international application designating the U.S.
The conditions for according benefit under 35 U.S.C. 120 are
as described in MPEP § 201.07, § 201.08, and § 201.11 and
are  similar  regardless  of  whether  the  U.S.  national
application is a national stage application filed under 35
U.S.C. 371 or a national application filed under 35 U.S.C.
111(a).

  For  a  national  stage  application  (of  international
application "X") to obtain benefit under 35 U.S.C. 120 of a
prior  U.S.  national  application,  the  international
application ("X") must include an appropriate reference to
the prior U.S. national application, be copending with the
prior U.S. national application, and have at least one
inventor in common with the prior U.S. national application,
MPEP § 201.11. The prior U.S. national application is
copending with the national stage application if the prior
U.S. national application was pending on the international
filing date.

 If a national stage application includes a priority claim
under 35 U.S.C. 120 to a prior international application,
the  examiner  must  ascertain  whether  (1)  the  first
international application was copending (not abandoned or
withdrawn)  with  the  second  international  application
claiming benefit under 35 U.S.C. 120, and (2) the prior
international application designated the U.S.

 Note, a national stage application filed under 35 U.S.C.
371 may not claim benefit of the filing date of the
international application (of which it is the national
stage) since its filing date is the date of filing of that
international  application;  see  also  MPEP  §  1893.03(b).
Stated differently, since the international application is
not an earlier application (it has the same filing date as
the national stage), a priority claim in the national stage
to  the  international  application  is  inappropriate.
>Accordingly, it is not necessary for the applicant to amend
the first sentence of the specification to reference the
international application for a national stage application

filed under 35 U.S.C. 371.<

 For a comparison with 35 U.S.C. 120 priority claims in a
national application filed under 35 U.S.C. 111(a), see MPEP
§ 1895.

1893.03(d)  Unity of Invention [R - 1]

 37 CFR 1.499.  Unity of invention during the national stage

 If the examiner find that a national stage application
lacks unity of invention under § 1.475, the examiner may in
an Office action require the applicant in the response to
that action to elect the invention to which the claims shall
be restricted. Such requirement may be made before any
action on the merits but may be made at any time before the
final action at the discretion of the examiner. Review of
any such requirement is provided under § 1.143 and 1.144.

 PCT Rule 13 was amended effective 01 July 1992 37 CFR 1.475
was amended effective 01 May 1993 to correspond to PCT Rule
13.

  Examiners  are  reminded  that  unity  of  invention  (not
restriction)  practice  is  applicable  in  international
applications (both Chapter I and II) and in national stage
(filed  under  35  U.S.C.  371)  applications.  Restriction
practice continues to apply to U.S. national applications
filed under 35 U.S.C. 111>(a)<.

 When making a lack of unity of invention requirement, the
examiner must (1) list the different groups of claims and
(2) explain why each group lacks unity with each other group
(i.e., why there is no single general inventive concept)
specifically describing the unique special technical feature
in each group.

 The principles of unity of invention are used to determine
the types of claimed subject matter and the combinations of
claims  to  different  categories  of  invention  that  are
permitted to be included in a single international or
national stage patent application. The basic principle is
that an application should relate to only one invention or,
if there is more than one invention, that applicant would
have a right to include in a single application only those
inventions which are so linked as to form a single general
inventive concept.

 A group of inventions is considered linked to form a single
general  inventive  concept  where  there  is  a  technical
relationship among the inventions that involves at least one
common  or  corresponding  special  technical  feature.  The
expression special technical features is defined as meaning
those technical features that define the contribution which
each claimed invention, considered as a whole, makes over
the  prior  art.  For  example,  a  corresponding  technical
feature is exemplified by a key defined by certain claimed
structural characteristics which correspond to the claimed
features of a lock to be used with the claimed key. Note
also examples 1 - 17 of Annex B Part 2 of the PCT
Administrative  Instructions  as  amended  01  July  1992
contained in Appendix AI of the MPEP.

 A process is "specially adapted" for the manufacture of a
product if the claimed process inherently produces the

claimed  product  with  the  technical  relationship  being
present between the claimed process and the claimed product.
The expression "specially adapted" does not imply that the
product could not also be manufactured by a different
process.

 An apparatus or means is specifically designed for carrying
out the process when the apparatus or means is suitable for
carrying out the process with the technical relationship
being present between the claimed apparatus or means and the
claimed process. The expression specifically designed does
not imply that the apparatus or means could not be used for
carrying out another process, nor does it imply that the
process could not be carried out using an alternative
apparatus or means.

 Note, the determination regarding unity of invention is
made without regard to whether a group of inventions is
claimed in separate claims or as alternatives within a
single claim. The basic criteria for unity of invention are
the same, regardless of the manner in which applicant
chooses to draft a claim or claims.

1893.03(e)  Papers Received From the International Bureau
and Placed in a U.S. National Stage Application File [R - 2]

 The national stage application includes papers forwarded by
the International Bureau and papers from applicant. Some of
the papers from the International Bureau are identified in
this section with a brief note as to their importance to the
national stage application. The examiner should review each
such paper and the important aspect indicated.

  The Pamphlet

  The  Pamphlet  includes  (1)  a  cover  page  with  the
applicant/inventor  data,  the  application  data  (serial
number,  filing  date,  etc.)  and  the  Abstract  (and,  if
appropriate, a figure of drawing), (2) the description,
claims and drawing parts of the international application,
and (3) the search report (Form PCT/ISA/210). The cover page
is important as a source of the correct application data,
most importantly the filing date and priority date accorded
to the international application. The description, claims
and drawing parts of the international application reflect
the application subject matter on the international filing
date and are important for comparison with any amendments to
check  for  new  matter.  The  search  report  reflects  the
International Searching Authority's opinion regarding the
prior art.

  The International Preliminary Examination Report

 If the international application underwent preliminary
examination,  the  International  Preliminary  Examination
Report  (Form  PCT/IPEA/409)  reflects  the  International
Preliminary Authority's non - binding opinion regarding
novelty, inventive step and industrial applicability. The
examiner may adopt any portion or all of this opinion upon
consideration in the national stage so long as it is
consistent with U.S. practice. The examiner should comment
upon the Report in the first Office action on the merits to
reflect that the Report has been considered. The comment may
be a mere acknowledgement.

  The Priority Document

 See the discussion in MPEP § 1893.03(c).

  Notification of Withdrawal (PCT/IB/307)

  If  the  national  stage  application  papers  include  a
notification of withdrawal, the examiner must check the date
of receipt of the 35 U.S.C. 371 requirements (the 371 date)
on Form PCT/DO/EO/903 to be sure that the 371 date is not
later than the date of withdrawal. If it is later, the
national stage application must be returned to the **>PCT
Legal Office< for a decision regarding the propriety of
entry into the national stage.

1893.03(f)  Drawings and PCT Rule 11

 The drawings for the national stage application must comply
with PCT Rule 11. The copy of the drawings provided by the
International Bureau has already been checked and should be
in  compliance  with  Rule  11.  Accordingly,  the  drawing
provided by the International Bureau should be acceptable.
Sometimes, applicant submits a drawing for use in the
national stage application and a check will be made by the
Official Draftsman. The Official Draftsman may not impose
requirements beyond those imposed by the Patent Cooperation
Treaty (e.g. PCT Rule 11). The examiner does indeed have the
authority to require new or more acceptable drawings if the
drawings were published without meeting all requirements
under the PCT for drawings. Unless the applicant requests
the use of drawings which he or she has submitted, the
drawings to be employed in the national stage are those
which are a part of the Article 20 communication.

1893.03(g)  Information Disclosure Statement in a
National Stage Application

 An extensive discussion of Information Disclosure Statement
practice is to be found in MPEP § 609. Although not
specifically  stated  therein,  the  duty  to  disclose
information material to patentability as defined in 37 CFR
1.56 is placed on individuals associated with the filing and
prosecution of a national stage application in the same
manner  as  for  a  domestic  national  application.  The
declaration requires the same averments with respect to the
duty under 37 CFR 1.56.

 When an international application is filed under the Patent
Cooperation Treaty (PCT), prior art documents may be cited
by the examiner in the international search report and/or
the international preliminary examination report. When a
national stage application is filed under 35 U.S.C. 371, or
a national application is filed under 35 U.S.C. 111 claiming
benefit of the filing date of the international application,
it is often desirable to have the examiner consider the
documents  cited  in  the  international  application  when
examining the national application.

 As a result of an agreement among the European Patent
Office (EPO), Japanese Patent Office (JPO), and the United
States Patent Office (USPTO), copies of documents cited in
the international search report issued by any one of these
International  Searching  Authority  Offices  generally  are
being sent to the other Offices when designated in the
international application. Accordingly, in many national

stage  applications  where  the  international  search  was
conducted by the EPO, JPO, or USPTO, copies of the documents
cited in the international search report are made available
to the examiner in the national stage application.

 When all the requirements for a national stage application
have  been  completed,  applicant  is  notified  (Form
PCT/DO/EO/903) of the acceptance of the application under 35
U.S.C.  371,  including  an  itemized  list  of  the  items
received.  The  itemized  list  includes  an  indication  of
whether a copy of the international search report and copies
of the references cited therein are present in the national
stage file. The examiner will consider the documents cited
in the international search report, without any further
action by applicant under 37 CFR 1.97 and 1.98, when both
the international search report and copies of the documents
are indicated to be present in the national stage file. The
examiner will note the consideration in the first Office
action. Otherwise, applicant must follow the procedure set
forth in 37 CFR 1.97 and 1.98 in order to ensure that the
examiner considers the documents cited in the international
search report.

 This practice applies only to documents cited in the
international search report relative to a national stage
application filed under 35 U.S.C. 371. It does not apply to
documents cited in an international preliminary examination
report that are not cited in the search report. It does not
apply to applications filed under 35 U.S.C. 111 claiming the
benefit of an international application filing date.

1895  A Continuation or Continuation - In - Part
Application of a PCT Application Designating the United
States [R - 2]

 It is possible to file a U.S. national application under 35
U.S.C.  111>(a)<  during  the  pendency  (prior  to  the
abandonment)  of  an  international  application  which
designates  the  United  States  without  completing  the
requirements for entering the national stage under 35 U.S.C.
371(c).  The  ability  to  take  such  action  is  based  on
provisions of the United States patent law. 35 U.S.C. 363
provides that "[a]n international application designating
the  United  States  shall  have  the  effect,  from  its
international filing date under article 11 of the treaty, of
a national application for patent regularly filed in the
Patent and Trademark Office...." 35 U.S.C. 371(d) indicates
that failure to timely comply with the requirements of 35
U.S.C. 371(c) shall be regarded as abandonment...by the
parties  thereof...  .  It  is  therefore  clear  that  an
international application which designates the United States
has the effect of a pending U.S. application from the
international application filing date until its abandonment
as to the United States. The first sentence of 35 U.S.C.
365(c) specifically provides that "[i]n accordance with the
conditions and requirements of section 120 of this title,...
a national application shall be entitled to the benefit of
the filing date of a prior * international application
designating the United States." The condition of 35 U.S.C.
120 relating to the time of filing requires the later
application to be filed before the patenting or abandonment
of  or  termination  of  proceedings  on  the  first
application....  The  filing  of  continuations  and
continuations - in - part of a PCT application designating
the U.S. was used primarily in instances where there was

difficulty in obtaining a signed oath or declaration by the
expiration of the time for entry into the national stage.
Since applicants are now notified of missing or defective
oaths or declarations and/or translations, and are given a
time period to respond which is extendable under 37 CFR
1.136(a), the use of this practice may well diminish.

 A continuing application under 35 U.S.C. 365(c) and 120
must be filed before the abandonment or patenting of the
prior application.

 To obtain benefit under 35 U.S.C. 120, the continuing U.S.
national  application  must  (1)  include  an  appropriate
reference to the prior application, (2) be copending with
the prior application, and (3) have at least one inventor in
common with the prior application, MPEP § 201.11. A U.S.
national application is copending with an international
application  if  the  prior  international  application  was
pending on the filing date of the subsequent U.S. national
application.

 If the prior application is an international application,
the examiner must ascertain (2) and (3) above by either
examining  the  national  stage  application  file  of  the
international application, or by examining the international
application  file,  or  requiring  applicant  to  submit
sufficient proof that the international application was
copending  with  the  U.S.  national  (35  U.S.C.  111(a))
application claiming benefit under 35 U.S.C. 120. If the
parent international application was not copending (i.e.,
abandoned or withdrawn), benefit under 35 U.S.C. 120 is not
possible.

 If priority is claimed under 35 U.S.C. 120 in a third U.S.
national application to a first national or international
application via a second international application, the
examiner must examine the second international application
to see if it contains a proper reference for benefit under
35 U.S.C. 120 of the first filed application. The second
international  application  must  include  an  appropriate
reference  in  the  Request  to  the  prior  U.S.  national
application. The appropriate reference in the Request should
identify the parent application and include an indication
that it is a continuation or continuation - in - part of the
first filed U.S. application, PCT Rule 4.14. In order for
the examiner to determine if the international application
meets the above noted requirements, the examiner should
review the copy of the Request form in the international
application  file  or  the  cover  page  of  the  published
international application. If the copy is not in the file,
the International Division may obtain a copy from the
International Bureau.

1895.01  Handling of and Considerations In the Handling of
National Applications Under 35 U.S.C. 371 and 35 U.S.C.
111(a) Continuations and Continuations - In - Part of a PCT
Application [R - 3]

 A national application can be either a national stage
application submitted under 35 U.S.C. 371 or a national
application filed under 35 U.S.C. 111(a).

  NATIONAL APPLICATIONS SUBMITTED UNDER 35 U.S.C. 371

 These applications are the result of an international

application filed under the PCT entering the national stage
in  the  addition,  a  "Notification  of  Acceptance  of
Application under 35 U.S.C. 371 and 37 CFR 1.494 or 1.495"
(Form PCT/DO/EO/903) is placed in the file.

 A typical time line involving an international and a
national stage application is illustrated as follows

 **  Double Click here to see the image  **

 Although the illustrated time line is typical, there is no
requirement that there be a priority application, nor is
there any requirement that the national stage application be
submitted after the international application is published.

 National stage applications submitted under 35 U.S.C. 371
are treated differently in certain respects than national
applications filed under 35 U.S.C. 111(a). The following
examples involve situations where treatment of 35 U.S.C. 371
applications differs from treatment of 35 U.S.C. 111(a)
applications:

 1.  FILING DATE AS APPLICANT'S DATE OF INVENTION

 By virtue of 35 U.S.C. 363, the U.S. filing date of a
national stage application is the international filing date
(the filing date of the international application) for the
purpose of determining whether information is prior art
(i.e., has an effective date) relative to the invention
claimed in the national stage application. The date which
appears in the filing date box on the front of the file
wrapper of a national stage application, however, is the
date on which the requirements of 35 U.S.C. 371(c) were
complied  with,  and  typically  is  not  the  same  as  the
international  filing  date  of  the  application.  The
international  filing  date  is  the  critical  date  for
determining  whether  or  not  a  particular  reference  is
available  as  prior  art  against  the  application.  The
international  filing  date  will  appear  next  to  the
international application number in the CONTINUING DATA
section on the file wrapper label and in the Notification of
Acceptance of Application under 35 U.S.C. 371 and 37 CFR
1.494 or 1.495 (Form PCT/DO/EO/903).

 2.  35 U.S.C. 119>(a) - (d)<PRIORITY IN NATIONAL STAGE
APPLICATION

 The filing date of a national stage application is the
international filing date. Therefore, a priority claim is
proper  if  (a)  a  claim  for  priority  was  made  in  the
international application, and (b) the application was filed
within 12 months prior to the international filing date
(assuming that the other conditions of 35 U.S.C. 119>(a) -
(d)< are satisfied). The examiner should acknowledge the
priority claim and priority document in the next Office
action and on the file wrapper as in any 35 U.S.C. 119>(a) -
(d)< situation, if appropriate.

 3.  PRIORITY DOCUMENT

 In national stage applications, a photocopy of the foreign
priority document is received from the International Bureau
and placed in the national stage application file. This copy
of  the  foreign  priority  document  is  sufficient  to

**>establish that applicant has filed a certified copy of
the  priority  document.<  The  copy  received  from  the
International Bureau bears a WIPO stamp. If a copy of the
foreign priority document is not in the national stage
application file, the examiner should consult the Group's
Special Program Examiner. A certified copy of a priority
document filed as a U.S. provisional application under 35
U.S.C. 111(b) is not required under 35 U.S.C. 119(e).

 4.  UNITY OF INVENTION

 Restriction practice in both international and national
stage applications is determined under unity of invention
principles  as  set  forth  in  37  CFR  1.475  and  1.499.
Restriction practice under 35 U.S.C. 121, as it applies to
national applications submitted under 35 U.S.C. 111(a), is
not applicable to either international or national stage
applications. However, a continuing application claiming
benefit  under  35  U.S.C.  365(c)  to  an  international
application or to a national stage application is not a
national stage application and, therefore, the restriction
practice under 35 U.S.C. 121 is applicable.

 5.  FILING DATE FOR PRIOR ART PURPOSES UNDER 35 U.S.C.
102(e)

 Once a patent issues from a national stage application, the
filing date for prior art purposes under 35 U.S.C. 102(e) is
not the international filing date, but is the date on which
the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were
met  (copy  of  the  international  application  with  any
necessary translation, national fee and oath or declaration
were filed). The 35 U.S.C. 102(e) date for prior art
purposes is listed on the first page of the patent. An
applicant may establish a filing date for prior art purposes
under 35 U.S.C. 102(e) by satisfying the requirements of 35
U.S.C. 371 long before the expiration of 20 or 30 months
from  the  priority  date.  However,  as  the  international
application is usually published approximately 18 months
from the priority date, this publication generally will have
an earlier date for prior art purposes than the 35 U.S.C.
102(e) date of the U.S. patent. A copy of the published
international  application  can  be  obtained  through  the
Foreign Patents Section of the Scientific and Technical
Information  Center  (STIC).  The  publication  number  and
publication date appear on the first page of the patent.

 6.  INTERNATIONAL  PUBLICATION  NUMBER  AND  THE
PUBLICATION DATE

 The International Publication Number and the Publication
Date MUST be in the national stage application if the
application is allowed. The International Publication Number
and the Publication date can be found in the DO/US Worksheet
WIPO Publication block. If the Publication Number and the
Publication date are not found on the worksheet or if the
work sheet is missing, the information may be taken either
from the Inter national Publication or the PCT Gazette page.
The  Examiner  should  ensure  that  the  International
Publication Number and the Publication date are in one of
these three locations before the application is sent to
Issue Branch.

 CONTINUATION, CIP, OR DIVISION OF INTERNATIONAL APPLICATION

  Rather  than  filing  a  national  stage  application,  a
continuing application (i.e., continuation, C - I-P, or
division)  under  35  U.S.C.  111(a)  of  the  international
application may be filed. Pursuant to 35 U.S.C. 365(c), a
regular national application filed under 35 U.S.C. 111(a)
and 37 CFR 1.53 (not 37 CFR 1.60 or 1.62) may claim benefit
of the filing date of an international application which
designates the United States.

 A typical time line involving a continuing application
filed during the pendency of an international application is
illustrated as follows:

 **  Double Click here to see the image  **

  The  continuing  application  must  be  filed  before  the
international application becomes abandoned as to the U.S.
as set forth in 37 CFR 1.494 and 1.495. An appropriate
sentence (such as "This is a continuation of International
Application PCT/EP90/00000, with an international filing
date of January 4, 1990, now abandoned.") must appear at the
beginning of the specification. In addition, all other
conditions of 35 U.S.C. 120 (such as having at least one
common  inventor)  must  be  satisfied.  A  copy  of  the
international application (and an English translation) may
be required by the examiner to perfect the claim for benefit
under 35 U.S.C. 120 and 365(c) if necessary, for example,
where an intervening reference is found and applied in a
rejection of one or more claims.

 A claim for foreign priority under 35 U.S.C. 119>(a) - (d)<
must be made in the continuing application in the same
manner as in a national stage application. In the same
manner as with a national stage application, a foreign
priority claim is proper if (1) a claim for foreign priority
was made in the international application, and (2) the
foreign application was filed within 12 months prior to the
international filing date. A certified copy of any foreign
priority document must be provided by the applicant if the
parent  international  application  has  not  entered  the
national stage under 35 U.S.C. 371 (the photocopy received
from the International Bureau cannot be used). If the parent
international application has entered the national stage
under 35 U.S.C. 371, the applicant, in the continuing
application,  may  state  that  the  priority  document  is
contained in the national stage application.

  35 U.S.C. 119>(a) - (d)< PRIORITY CLAIM TO INTERNATIONAL
  APPLICATION IN 35 U.S.C. 111(a) NATIONAL APPLICATION

 An application filed under 35 U.S.C. 111(a) may make a
claim for foreign priority under 35 U.S.C. 119>(a) - (d)< to
an international application which designates at least one
country other than the United States (the U.S. may also be
designated) 35 U.S.C. 365(c)). In this situation, applicant
must file a certified copy of the international application
in the application filed under 35 U.S.C. 111(a) and the
applicant must satisfy all other requirements of 35 U.S.C.
119>(a) - (d)<. A typical time line for this situation is
illustrated as follows:

 **  Double Click here to see the image  **

 The examiner should acknowledge the priority claim and
priority document in the next Office action and on the file
wrapper as in any 35 U.S.C. 119>(a) - (d)< situation, if
appropriate.

1896  The Differences Between (1) a National Application
Filed Under 35 U.S.C. 111(a) and (2) a National Stage
Application Under 35 U.S.C. 371 [R - 3]

 The following section describes the differences between a
U.S. national application filed under 35 U.S.C. 111(a),
including those claiming benefit of a PCT application under
35 U.S.C. 120 (a continuation or a  continuation - in - part
of  a  PCT  application),  and  a  U.S.  national  stage
application(filed under 35 U.S.C. 371).

 Chart of Some Common Differences

 **  Double Click here to see the image  **

 The differences between a national application filed under
35 U.S.C. 111(a) and a national stage application filed
under 35 U.S.C. 371 are often subtle, but the differences
are important.

  Filing  Date  The  filing  date  of  a  35  U.S.C.  111(a)
application is the date when PTO receives a specification,
claims, and any drawings filed in the name of the inventors.

 The filing date of a PCT international application is the
date applicant satisfies Article 11 requirements; i.e.,
includes  a  specification,  claims,  U.S.  residency  or
nationality,  prescribed  language,  designation  of  a
contracting state, and names of the applicant.

 In this regard, note that 35 U.S.C. 363 provides that,

 An international application designating the United States
shall have the effect, from its international filing date
under Article 11 of the treaty, of a national application
for patent regularly filed in the Patent and Trademark
Office except as otherwise provided in section 102(e) of
this title.

 Similarly, PCT Article 11(3) provides that

 ...an international filing date shall have the effect of a
regular national application in each designated State as of
the  international  filing  date,  which  date  shall  be
considered to be the actual filing date in each designated
State.

 Effective Date as a reference. When a U.S. national
application filed under 35 U.S.C. 111(a) becomes a U.S.
patent, its effective date as a prior art reference against
a pending application is its effective filing date; see 35
U.S.C. 102(e). Thus if the 35 U.S.C. 111(a) application
claims the benefit of a prior application, e.g., a copending
PCT international application or a copending provisional
application, its effective date as a reference will be the
filing date of the prior application. When a U.S. national
stage application filed under 35 U.S.C. 371 becomes a U.S.
patent, its effective date as a prior art reference against
a pending application is the date applicant fulfilled the

requirements of 35 U.S.C. 371(c)(1) (the basic national
fee), (c)(2) (copy of the international application and a
translation into English if filed in another language), and
(c)(4) (an oath or declaration of the inventor), see 35
U.S.C. 102(e).

  35  U.S.C.  119>(a)  -  (d)<  Priority  Requirements.  The
certified copy of the foreign priority application must be
provided to the Office by applicant in a U.S. national
application filed under 35 U.S.C. 111(a). Where applicant
filed an international application claiming priority to an
earlier filed national application, the certified copy of
the priority application is required to be provided to the
International Bureau by applicant during the international
stage. The International Bureau (WIPO) then sends a copy of
the certified copy of the priority application to each
designated  office  for  inclusion  in  the  national  stage
application. A U.S. national stage application filed under
35 U.S.C. 371 will have a photocopy of the priority document
with the first page stamped by the International Bureau to
indicate that it is a priority document received by WIPO and
the date of such receipt. Such a photocopy is acceptable in
a U.S. national stage application to **>establish that
applicant has filed< a certified copy of the priority
document. If the photocopy is missing from the national
stage  application  file,  either  the  document  has  been
misplaced or it was not provided due to a defect in priority
during the international stage. If the priority claim was
not in accordance with PCT Rule 4.10 or the priority
document was not provided in accordance with PCT Rule 17,
the photocopy of the priority document will not have been
provided by the International Bureau.

 Unity of Invention. U.S. national applications filed under
35 U.S.C. 111(a) are subject to restriction practice in
accordance with 37 CFR 1.141 - 1.146, see MPEP § 803. U.S.
national stage applications filed under 35 U.S.C. 371 are
subject to unity of invention practice in accordance with 37
CFR 1.475 & 1.499 (effective 01 May 1993).

 Filing Fees. U.S. national applications filed under 35
U.S.C. 111(a) are subject to the national application filing
fees  set  forth  at  37  CFR  1.16.  U.S.  national  stage
applications filed under 35 U.S.C. 371 are subject to the
national stage fees prescribed at 37 CFR 1.492.

 Reference to application in declaration . Applicant's oath
or declaration is required to identify the specification to
which it is directed (37 CFR 1.63(a)(2)). The specification
may be identified in a U.S. national application filed under
35 U.S.C. 111(a) by reference to an attached specification
or by reference to the serial number and filing date of a
specification  previously  filed  in  the  Office.  MPEP  §
601.01(a) gives the minimum requirements for identification
of the specification. U.S. national stage applications filed
under 35 U.S.C. 371 may identify the specification (in the
oath or declaration) in the same manner as applications
filed under 35 U.S.C. 111(a) and in addition may identify
the specification by reference to the application number and
filing date of the international application.

  - -- - -- END - -- - --

  Chapter 1900 Protest

  1901  Protest Under 37 CFR 1.291
  1901.01  Who Can Protest
  1901.02  Information Which Can Be Relied on in Protest
  1901.03  How Protest Is Submitted
  1901.04  When Should the Protest be Submitted
  1901.05  Initial Office Handling and Acknowledgment of
  Protest
  1901.06  Examiner Treatment of Protest
  1901.07  Protestor Participation in the Examination
  1901.07(a)  Service of Copies
  1901.07(b)  Protests Limited to Single Submission
  1902  Protestor Participation in Interviews
  1902.01  Guidelines for Inter Partes Interviews
  1902.01(a)  Justifying Circumstances for Inter Partes
  Interviews
  1902.01(b)  Circumstances Where Inter Partes Interviews
  Would Normally Not Be Justified
  1902.01(c)  Notice of Interviews
  1903  Guidelines for Conducting Interviews
  1903.01  Record of Interviews
  1904  Protestor Participation Before the Board of Patent
  Appeals and Interferences
  1906  Supervisory Review of an Examiner's Decision
  Adverse to Protestor
  1907  Unauthorized Participation by Protestor
  1920  Citation of Prior Art Under 37 CFR 1.501(a)

1901  Protest Under 37 CFR 1.291 [R - 3]

 37 CFR 1.291  .  Protests by the public against
pending applications.

  **>(a) Protests by a member of the public against pending
applications will be referred to the examiner having charge
of the subject matter involved. A protest specifically
identifying the application to which the protest is directed
will be entered in the application file if:

  (1) The protest is submitted prior to the mailing of a
notice of allowance under § 1.311; and

  (2) The protest is either served upon the applicant in
accordance with § 1.248, or filed with the Office in
duplicate in the event service is not possible.

  (b) Protests raising fraud or other inequitable conduct
issues will be entered in the application file, generally
without comment on those issues. Protests which do not
adequately identify a pending patent application will be
returned to the protestor and will not be further considered
by the Office. A protest submitted in accordance with the
second sentence of paragraph (a) of this section will be
considered by the Office if the application is still pending
when the protest and application file are brought before the
examiner and it includes:

  (1) A listing of the patents, publications, or other
information relied upon;

  (2) A concise explanation of the relevance of each listed
item;

  (3) A copy of each listed patent or publication or other

item  of  information  in  written  form  or  at  least  the
pertinent portions thereof; and

  (4) An English language translation of all the necessary
and pertinent parts of any non - English language patent,
publication, or other item of information in written form
relied upon.<

  (c) A member of the public filing a protest in an
application under paragraph (a) of this section will not
receive any communications from the Office relating to the
protest, other than the return of a self - addressed
postcard which the member of the public may include with the
protest in order to receive an acknowledgement by the Office
that  the  protest  has  been  received.  The  Office  may
communicate with the applicant regarding any protest and may
require the applicant to respond to specific questions
raised by the protest. In the absence of a request by the
Office, an applicant has no duty to, and need not, respond
to a protest. The limited involvement of the member of the
public filing a protest pursuant to paragraph (a) of this
section ends with the filing of the protest, and no further
submission on behalf of the protestor

 will be considered unless such submission raises new issues
which could not have been earlier presented.

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

  (a) Service of papers must be on the attorney or agent of
the party if there be such or on the party if there is no
attorney or agent, and may be made in any of the following
ways:

  (1) By delivering a copy of the paper to the person
served;

  (2) By leaving a copy at the usual place of business of
the person served with someone in his employment;

  (3)  When  the  person  served  has  no  usual  place  of
business, by leaving a copy at the person's residence, with
some person of suitable age and discretion who resides
there;

  (4) Transmissions by first class mail. When service is by
mail the date of mailing will be regarded as the date of
service.

  (5) Whenever it shall be satisfactorily shown to the
Commissioner that none of the above modes of obtaining or
serving the paper is practicable, service may be by notice
published in the Official Gazette .

  (b) Papers filed in the Patent and Trademark Office which
are required to be served shall contain proof of service.
Proof of service may appear on or be affixed to papers
filed. Proof of service shall include the date and manner of
service. In the case of personal service, proof of service
shall also include the name of any person served, certified
by the person who made service. Proof of service may be made
by: (1) An acknowledgement of service by or on behalf of the
person served or (2) A statement signed by the attorney or

agent containing the information required by this section.

  (c) See § 1.646 for service of papers in interferences.

  See 37 CFR 1.646 for service of papers in interferences.

  37 CFR 1.291(a) gives recognition to the value of written
protests in bringing information to the attention of the
Office and in avoiding the issuance of invalid patents. 37
CFR 1.291(a) provides that public protests against pending
applications will be referred to the examiner having charge
of the subject matter involved and will, if * submitted
>prior to the mailing of a notice of allowance under 37 CFR
1.311< and either served upon the applicant or filed in
duplicate in the event service is not possible, be entered
in the application file. Paragraph (b) of 37 CFR 1.291
assures members of the public that a protest will be fully
considered by the Office if * >the protest< is submitted in
accordance with 37 CFR 1.291(a) >, the application is still
pending when the protest and application file are brought
before the examiner,< and >the protest< includes (1) a
listing of the patents, publications, or other information
relied on; (2) a concise explanation of the relevance of
each  listed  item;  (3)  a  copy  of  each  listed  patent,
publication, or other item of information in written form,
or at least the pertinent portions thereof; and (4) an
English language translation of all necessary and pertinent
parts of any non - English language document relied on. A
party obtaining knowledge of an application pending in the
Office may file a protest against the application and may
therein call attention to any facts within protestor's
knowledge which, in protestor's opinion, would make the
grant of a patent thereon improper.

  A protestor does not, however, by the mere filing of a
protest, obtain the "right" to argue the protest before the
Office. The degree of participation allowed a protestor is,
of course, solely within the discretion of the Commissioner
of Patents and Trademarks, and the Commissioner exercised
his discretion to restrict such participation effective
December 8, 1981: "Interim Reissue, . . Protest, And
Examination Procedures . .", 1013 O.G. 18 - 19; Final
rule:  "Reissue,  Reexamination,  Protest  and  Examination
Procedures in Patent Cases", 47 Fed. Reg. 21746 - 21753, May
19, 1982. As provided effective December 8, 1981 in said
"Interim . . Pro test . . Procedures", and in 37 CFR
1.291(c), active participation by a protestor "ends with the
filing of the protest and no further submission on behalf of
the protestor will be considered unless such submission
raises  new  issues  which  could  not  have  been  earlier
presented, and thereby constitutes a new protest." 37 CFR
1.291(c) provides for the acknowledgment of the receipt of a
protest in an original or a reissue application file only if
a self - addressed postcard is included with the protest
(see MPEP § 1901.05). The question of whether or not a
patent will issue is a matter between the applicant and the
Office acting on behalf of the public.

1901.01  Who Can Protest

  Any member of the public, including private persons,
corporate entities, and government agencies, may file a
protest under 37 CFR 1.291. A protest may be filed by an
attorney or other representative on behalf of an unnamed
principal since 37 CFR 1.291 does not require that the

principal be identified.

 1901.02  Information Which Can Be Relied on in Protest
[R - 3]

  Any information which, in the protestor's opinion, would
make the grant of a patent improper can be relied on in a
protest under 37 CFR 1.291(a). While prior art documents,
such as patents and publications, are most often the subject
of protests, 37 CFR 1.291(a) is not limited to prior art
documents. Protests may be based on any facts or information
adverse to patentability. The content and substance of the
protest are more important than whether prior art documents,
or some other form of evidence adverse to patentability, are
being relied on. The Office recognizes that when evidence
other than prior art documents is relied on, problems may
arise as to authentication and the probative value to assign
to such evidence. However, the fact that such problems may
arise, and have to be resolved, does not preclude the Office
from considering such evidence, nor does it mean that such
evidence cannot be relied on in a protest under 37 CFR
1.291. Information in a protest should be set forth in the
manner required by 37 CFR 1.291(b).

  The following are examples of the kinds of information,
in addition to prior art documents, which can be relied on
in a protest under 37 CFR 1.291(a):

  (1) Information demonstrating that the subject matter to
which the protest is directed was publicly "known or used by
others in this country . . before the invention thereof by
the applicant for patent" and is therefore barred under 35
U.S.C. 102(a) and/or 103.

  (2) Information that the invention was "in public use or
on sale in this country, more than 1 year prior to the date
of the application for patent in the United States" (35
U.S.C. 102(b)).

  (3) Information that the applicant "has abandoned the
invention" (35 U.S.C. 102(c)) or "did not himself invent the
subject matter sought to be patented" (35 U.S.C. 102(f)).

  (4) Information relating to inventorship under 35 U.S.C.
102(g).

  (5) Information relating to sufficiency of disclosure or
failure to disclose best mode, under 35 U.S.C. 112.

  (6)  Any  other  information  demonstrating  that  the
application lacks compliance with the statutory requirements
for patentability.

  (7) Information indicating "fraud" or "violation of the
duty of disclosure" under 37 CFR 1.56 may be the subject of
a protest under 37 CFR 1.291(a). >Protests raising fraud or
other inequitable conduct issues will be entered in the
application file, generally without comment on those issues,
37 CFR 1.291(b).<

  Different  forms  of  evidence  may  accompany,  or  be
submitted as a part of a protest under 37 CFR 1.291(a).
Conventional  prior  art  documents  such  as  patents  and
publications are the most common form of evidence. However,
other forms of evidence can likewise be submitted. Some

representative examples of other forms of evidence are
litigation - related materials such as complaints, answers,
depositions,  answers  to  interrogatories,  exhibits,
transcripts  of  hearings  or  trials,  court  orders  and
opinions, stipulations of the parties, etc. Where only a
portion of the litigation - related materials is relevant to
the protest, protestors are encouraged to submit only the
relevant portion(s).

  In a protest based on an alleged public use or sale by,
or on behalf of, the applicant or applicant's assignee,
evidence of such public use or sale may be submitted along
with affidavits or declarations identifying the source(s) of
the evidence and explaining its relevance and meaning. Such
evidence might include documents containing offers for sale
by applicant or applicant's assignee, orders, invoices,
receipts, delivery schedules, etc. The Office will make a
decision as to whether or not public use or sale has been
established based on the evidence the Office has available.
If applicant denies the authenticity of the documents and/or
evidence, or if the alleged public use and/or sale is by a
party  other  than  applicant  or  applicant's  assignee,
protestor may find it desirable or necessary to proceed via
37 CFR 1.292 (public use proceedings) rather than by a
protest under 37 CFR 1.291.

  While the forms in which evidence and/or information may
be submitted with, or as a part of, a protest under 37 CFR
1.291(a) are not limited, protestors must recognize that
such submissions may encounter problems such as establishing
authenticity and/or the probative value to apply to the
evidence. Obviously, the Office will have to evaluate each
item of evidence and/or information submitted with a view as
to both its authenticity and what weight to give thereto.

  Information which is subject to a court - imposed
protective or secrecy order may be submitted with, or as a
part of, a protest under 37 CFR 1.291(a). Trade secret
information  which  was  obtained  by  a  protestor  through
agreements with others can likewise be submitted. Such
information, if submitted, will be treated in accordance
with the guidelines set forth in MPEP § 724 and will be made
public  if  a  reasonable  examiner  would  consider  the
information important in deciding whether to allow the
application to issue as a patent.

1901.03  How Protest Is Submitted [R - 3]

  A protest under 37 CFR 1.291(a) must be submitted in
writing, must specifically identify the application to which
the protest is directed by application number or serial
number and filing date, and should include a listing of all
patents, publications, or other information relied on; a
concise explanation of the relevance of each listed item; an
English language translation of all relevant parts of any
non - English language document; and be accompanied by a
copy of each patent, publication, or other document relied
on. Protestors are encouraged to use form PTO - 1449
"Information Disclosure Citation" when preparing a protest
under 37 CFR 1.291, especially the listing enumerated under
37 CFR 1.291(b)(1); see MPEP § 609. In addition, the protest
and any accompanying papers should either (1) reflect that a
copy of the same has been served upon the applicant or upon
the applicant's attorney or agent of record; or (2) be filed
with the Office in duplicate in the event service is not

possible.

  It is important that any protest against a pending
application specifically identify the application to which
the protest is directed with the identification being as
complete as possible. If possible, the following information
should be placed on the protest:

  (1)  Name of Applicant(s).

  (3)  Serial number of application (mandatory).

  (3)  3. Filing date of application.

  (4)  Title of invention.

  (5)  Group art unit number. (If known)

  (6)  Name of examiner to whom the application is
assigned. (If known)

  (7)  Current status and location of application.
(If known)

  (8)  The word "ATTENTION:" followed by the area of
the Office to which the protest is directed as set forth
below.

  In addition, to the above information, the protest
itself should be clearly identified as a "PROTEST UNDER 37
CFR 1.291(a)." If the protest is accompanied by exhibits or
other attachments, these should also contain identifying
information thereon in order to prevent them from becoming
inadvertently separated and lost.

  Any protest can be submitted by mail to the Assistant
Commissioner for Patents, Washington, D.C. 20231, and should
be  directed  to  the  attention  of  the  director  of  the
particular examining group in which the application is
pending. If the protestor is unable to specifically identify
the application to which the protest is directed, but,
nevertheless, believes such an application to be pending,
the protest should be directed to the attention of the
Office of Petitions, Crystal Park 1, Room 520, along with as
much identifying data for the application as possible.
>Protests which do not adequately identify a pending patent
application will be returned to the protestor and will not
be further considered by the Office.<

  Where a protest is directed to a reissue application for
a patent which is involved in litigation, the outside
envelope and the top right - hand portion of the protest
should be marked with the words "REISSUE LITIGATION." The
notations preferably should be written in a bright color
with a felt point marker. Any "REISSUE LITIGATION" protest
mailed to the Office should be so marked and mailed to BOX
7. However, in view of the urgent nature of most "REISSUE
LITIGATION" protests, protestor may wish to hand - carry the
protest to the appropriate area in order to ensure prompt
receipt and to avoid any unnecessary delays. In litigation -
type cases, all responses should be hand - carried to the
appropriate area in the Office.

  INITIAL PROTEST SUBMISSION MUST BE COMPLETE

  It is extremely important that a protest be complete and
contain a copy of every document relied on by protestor,
whether  the  document  is  a  prior  art  document,  court
litigation material, affidavit, or declaration, etc., since
under 37 CFR 1.291(c) protestor will not be given an
opportunity to supplement or complete any protest which is
incomplete. Active participation by protestor ends with the
filing of the initial protest, as provided in 37 CFR
1.291(c), and no further submission on behalf of protestor
will be acknowledged or considered unless such submission
clearly raises new issues which could not have been earlier
presented, and thereby constitutes a new protest. Protests
which will not be entered in the application file include
those further submissions in violation of 37 CFR 1.291(c) by
which protestor seeks to participate in the examination
process. For example, mere arguments relating to an Office
action or an applicant's response would not qualify as a new
protest. Likewise, additional comments seeking to bring in
further or even new data or information with respect to an
issue previously raised by protestor would not qualify as a
new protest.

  Even new protests which also argue Office actions or
responses or any matter beyond the new issue should not be
accepted.  Improper  protests  will  be  returned  by  the
Examining Group Director. While improper protests will be
returned, a new protest by an earlier protestor will be
proper and can be entered if it is clearly limited to new
issues which could not have been earlier presented, and
thereby constitutes a new protest.

  As indicated in 37 CFR 1.291(b)(3), a protest must be
accompanied by a copy of each prior art document relied on
in order to ensure consideration by the examiner, although a
protest without copies of prior art documents will not
necessarily be ignored. This requirement is similar to the
requirement of 37 CFR 1.98 that copies of written documents
accompany information disclosure statements. While a protest
without copies of documents will not necessarily be ignored,
the submission of such documents with the protest will
obviously  expedite  and  ensure  consideration  of  the
documents, which consideration might not otherwise occur.
Further, some documents which are available to protestor may
not be otherwise available to the Office.

  Every effort should be made by a protestor to effect
service of the protest upon the attorney or agent of record
or upon the applicant if no attorney or agent is of record.
Of  course,  the  copy  served  upon  applicant  or  upon
applicant's attorney or agent should be a complete copy
including a copy of each prior art or other document relied
on in the same manner as required by 37 CFR 1.291(a) for the
Office copy. The protest filed in the Office should reflect,
by an appropriate "Certificate of Service," that service has
been made as provided in 37 CFR 1.291(a). Only in those
instances where service is not possible should the protest
be filed in duplicate in order that the Office can attempt
service.

1901.04  When Should the Protest Be Submitted [R - 3]

  A protest under 37 CFR 1.291(a) must be ** >submitted
prior to the mailing of a notice of allowance under 37 CFR
1.311 and the application must be pending when the protest
and application file are brought before the examiner< in

order to be ensured of consideration. As a practical matter,
any protest should be submitted as soon as possible after
the  protestor  becomes  aware  of  the  existence  of  the
application to which the protest is to be directed. By
submitting a protest early in the examination process, i.e.,
before the Office acts on the application if possible, the
protestor ensures that the protest will receive maximum
consideration and will be of the most benefit to the Office
in its examination of the application.

  **>As a protest cannot be considered subsequent to
mailing of a notice of allowance, 37 CFR 1.291(b) provides
that the protest will be considered if the application is
still pending when the protest and application are provided
to the examiner (i.e., that the application was pending at
the time the protest was filed would be immaterial to its
ultimate consideration). A protest submitted prior to the
mailing of a notice of allowance under 37 CFR 3.11 will be
entered in the application file, but the protest will not be
considered  unless  the  application  is  pending  when  the
application and protest are provided to the examiner. A
protest filed after final rejection will be considered if
the application is still pending when the protest and
application  are  provided  to  the  examiner.  However,
prosecution will not ordinarily be reopened after final
rejection if the prior art cited in the protest is merely
cumulative of the prior art cited in the final rejection.<
If a protest is not * submitted >prior to the mailing of a
notice  of  allowance  under  37  CFR  1.311<  it  will  be
acknowledged as set forth in MPEP § 1901.05 only if a self -
addressed  postcard  is  included  with  the  protest,  and
referred to the examiner having charge of the subject matter
involved for ** >handling as set forth in MPEP § 1901.06<.

  A protest with regard to a reissue application should be
filed within the 2 - month period following announcement of
the filing of the reissue application in the Official
Gazette . If, for some reason, the protest of the reissue
application cannot be filed within the 2 - month period
provided by 37 CFR 1.176, the protest can be submitted at a
later  time,  but  protestor  must  be  aware  that  reissue
applications are "special" and a later filed protest may be
received after action by the examiner. Any request by a
protestor in a reissue application for an extension of the 2
- month period following the announcement in the  Official
Gazette will be considered only if filed in the form of a
petition under 37 CFR 1.182 and accompanied by the petition
fee set forth in 37 CFR 1.17(h). The petition must explain
why the additional time is necessary and the nature of the
protest intended. A copy of such petition must be served
upon applicant in accordance with 37 CFR 1.248. The petition
should be directed to the appropriate examining group. Any
such petition will be critically reviewed as to demonstrated
need before being granted since the delay of examination of
a reissue application of another party is being requested.
Accordingly,  the  requests  should  be  made  only  where
necessary, for the minimum period required, and with a
justification establishing the necessity for the extension.

  If the protest is a "REISSUE LITIGATION" protest, it is
particularly important that it be filed early if protestor
wishes it considered at the time the Office first acts on
the application. Protestors should be aware that the Office
will  entertain  petitions  under  37  CFR  1.183,  when
accompanied by the petition fee set forth in 37 CFR 1.17(h),

to waive the 2 - month delay period of 37 CFR 1.176 in
appropriate  circumstances.  Accordingly,  protestors  to
reissue applications cannot automatically assume that the
full 2 - month delay period of 37 CFR 1.176 will always be
available.

1901.05  Initial Office Handling and Acknowledgment of
Protest [R - 3]

  Protests Referred to Examiner

  37 CFR 1.291(a) provides that protests filed against
pending applications will be referred to the examiner having
charge of the subject matter involved. 37 CFR 1.291(a)
further provides that a protest specifically identifying the
application to which it is directed will be entered in the
application file, if (1) the protest is * submitted >prior
to the mailing of a notice of allowance under 37 CFR 1.311<
(see MPEP § 1901.04) and (2) a copy has been served on
applicant in accordance with 37 CFR 1.248, or a duplicate
copy is filed with the Office in the event service is not
possible.

  A  protest  where  the  application  is  specifically
identified which is submitted in conformance with 37 CFR
1.291(a) and (b), will be considered by the Office.

 Protest Does Not Indicate Service

  If the protest filed in the Office does not, however,
indicate service on applicant or applicant's attorney or
agent, and is not filed in duplicate, then the Office will
undertake to determine whether or not service has been made
by contacting applicant or applicant's attorney or agent by
telephone or in writing to ascertain if service has been
made. If service has not been made and no duplicate has been
filed, then the Office may request protestor to file such a
duplicate before the protest is referred to the examiner.
Alternatively, if the protest involves only a few pages, the
Office may, in its sole discretion, elect to reproduce the
protest rather than delay referring it to the examiner. If
duplicate  protest  papers  are  mailed  to  applicant  or
applicant's attorney or agent by the Office, the application
file  should  reflect  that  fact,  either  by  a  letter
transmitting the protest or, if no transmittal letter is
used, simply by an appropriate notation in the "Contents"
section of the application file wrapper.

  Acknowledgement of Protest

  37 CFR 1.291(c) provides that a protestor in an original
or reissue application will not receive any communications
from  the  Office  relating  to  the  protest,  or  to  the
application, other than the return of a self - addressed
postcard which protestor may include with the protest in
order to receive an acknowledgment that the protest has been
received by the Office. >The office will acknowledge a
protest by return of the self - addressed postcard prior to
the protest's entry into the application file or return to
the protestor, as appropriate.<

  Applications and Status Thereof Maintained in
  *>Confidence<

  The postcard acknowledging receipt of a protest in other

than a reissue application will not and must not indicate
whether such application in fact exists or the status of any
such application. Office employees must exercise care to
ensure  that  matters  relating  to  applications  are  not
discussed with protestor or communicated in writing to
protestor. Original applications are, of course, required by
35 U.S.C. 122 to be "kept in confidence by the . . Office
and  no  information  concerning  the  same  given  without
authority of the applicant or owner unless necessary to
carry out the provisions of any Act of Congress or in such
special  circumstances  as  may  be  determined  by  the
Commissioner." Thus, unless a protestor has been granted
access to an original application, the protestor is not
entitled  to  obtain  from  the  Office  any  information
concerning the same, including the mere fact that such an
application  exists.  Petitions  for  access  to  patent
applications with the exception of applications involved in
or related to a proceeding before the Board of Patent
Appeals or Interferences are decided by the Office of
**>Petitions< pursuant to delegation contained in MPEP §
1002.02*>(b)<. Reissue applications filed on, or after,
March 1, 1977, are pursuant to 37 CFR 1.11(b) "open to
inspection by the general public."

  The Office will communicate with the applicant regarding
any protest entered in an application file and may require
the applicant to supply information pursuant to 37 CFR
1.291(c), and to 37 CFR 1.175(b) in reissue applications,
including responses to specific questions raised by the
protest, in order for the Office to decide any issues raised
thereby. Under 37 CFR 1.291(c), the examiner can require the
applicant to respond to the protest and answer specific
questions raised by the protest.

1901.06  Examiner Treatment of Protest [R - 3]

  Current Office practice as defined in 37 CFR 1.291(a)
gives recognition to the value of the written protests in
avoiding the issuance of invalid patents. However, the fact
that one or more protests has been filed in an application,
whether the application is an original application or a
reissue application, does not relieve the examiner from
conducting a normal examination on the merits, including the
required search. Evidence submitted in a protest will be
considered on the same basis as other  ex parte evidence:
In re Reuter , 210 USPQ 249, 255 (C.C.P.A. 1981).

  Initial Review

  An  examiner  initially  receiving  a  protest  will
immediately review the same for the following:

  (1) To ensure that either the protest or the application
file wrapper indicates that a copy of the protest has been
served on applicant or applicant's attorney or agent. If a
copy is not indicated as having been served on applicant or
applicant's attorney and is not filed in duplicate, then the
examiner  should  undertake  to  determine  whether  or  not
service has been made by contacting applicant or applicant's
attorney or agent, but not protestor. If it has, this should
be noted on the protest or on the application file. If
service hasn't been made, the protest and application file
should be brought to the attention of the examining group
director for appropriate action; see MPEP § 1901.05.

  (2) A protest raising issues of "fraud," "inequitable
conduct," or "violation of duty of disclosure" will be
entered in the application file, generally without comments
on those issues.

  If a protest is filed in a reissue application and the
reissue application is related to a patent involved in a
pending interference proceeding, such application should be
referred  to  the  **>Special  Program  Law  Office<  before
considering the protest and acting on the applications.

 Period for Comments by Applicant

  If the primary examiner's initial review reveals that
the  protest  is  ready  for  consideration  during  the
examination,  the  examiner  may  nevertheless  consider  it
desirable, or necessary, to obtain applicant's comments on
the protest before further action. In such situations, the
examiner  will  offer  applicant  an  opportunity  to  file
comments within a set period, usually 1 month, unless
circumstances warrant a longer period.

  Form Paragraph 19.01 can be used to offer applicant an
opportunity to file comments on the protest:

 ¶ 19.01  Period for Comments on Protest by Applicant

  A protest against issuance of a patent based upon this
application has been filed under 37 CFR 1.291(a) on [1], and
a copy [2]. Any comments or response applicant desires to
file before consideration of the protest must be filed by
[3].

 Examiner Note:

  1. Applicant is normally given one month to submit any
comments, unless circumstances in the case would warrant a
longer period.

  2. A copy of this Office action is not sent to the
protestor. See 37 CFR 1.291(c).

  3. In bracket 2, insert either  __ has been served on
applicant  __ or is attached hereto - .

  Where necessary or desirable to decide questions raised
by the protest, under 37 CFR 1.291(c) the primary examiner
can require the applicant to respond to the protest and
answer specific questions raised by the protest. The primary
examiner cannot require response to questions relating to
"fraud," "inequitable conduct," or "violation of the duty of
disclosure" since those issues are generally not commented
>on< by the Office. Any questions directed to applicant by
the primary examiner must be limited to seeking answers
reasonably necessary in order for the primary examiner to
decide questions raised by the protest and which are before
the primary examiner for decision. The primary examiner is
not permitted, under 37 CFR 1.291(c), to seek answers to
questions which are not before the primary examiner for
decision. The primary examiner must use care in requiring
information from applicant pursuant to 37 CFR 1.291(c) to
ensure that the required information is necessary to the
decision to be made.

  Form Paragraph 19.02 can be used to require additional

information from applicant regarding issues raised by the
protest.

 ¶  19.02  Requirement for Information

  The protest under 37 CFR 1.291 filed on [1] has been
considered.  In  order  to  reach  a  full  and  proper
consideration of the issues raised therein, it is necessary
to obtain additional information from applicant regarding
these issues. In particular [2]. Applicant's response to
this requirement for information must be filed within ONE
MONTH of the date of this requirement to avoid the issue of
abandonment of the application.

 Examiner Note:

  While the examiner normally should not need further
information from applicant, under circumstances such as
issues relating to prior use or sale it may be necessary to
seek additional information.

 Clarification Sought From Protestor With Access

  If the protestor has access to the application, and the
protestor has participated in the proceedings before the
Office  prior  to  December  8,  1981,  the  examiner  may
communicate with the protestor in writing, with a copy to
applicant,  to  seek  clarification  and/or  additional
information necessary to properly consider the protest. The
following suggested format can be used by the examiner to
seek clarification and/or additional information from the
protestor having access to an application.

  __
  "The protest, as filed on  __ __ __ __  , has been
noted. However, clarification and/or additional information
is  desired.  In  particular  (examiner  explains).  Any
submission of the requested information should be made
within ONE MONTH of the date of this letter and the
submission must indicate service on applicant."

  Protestor Not Permitted To Complete Incomplete Protest

  As amended July 1, 1982 and March 16, 1992, 37 CFR 1.291
does not permit protestor to complete an incomplete protest,
nor to further participate in, or inquire as to the status
of, any Office proceedings relating to the initial protest.
The examiner must not, therefore, communicate with protestor
in any way and will not consider a later submission by
protestor unless such submission raises new issues which
could not have been earlier raised and constitutes in effect
a new protest (see MPEP § 1901.07). Improper protests will
be returned by the Examining Group Director.

  Treatment of Timely Submitted Protest

  If the protest has been timely submitted; i.e., before
** >the mailing of a notice of allowance under 37 CFR 1.311,
and the application is still pending when the protest and
application file are brought before the examiner,< the
examiner must consider each of the prior art or other
documents submitted in conformance with 37 CFR 1.291(b). At
least those prior art documents which the examiner relies on
in rejecting claims will be made of record by means of form
PTO - 892, unless protestor has listed such prior art or

other documents on form PTO - 1449, in which case the
examiner will place the examiner's initials adjacent to the
citations in the boxes provided on the form PTO - 1449 (see
MPEP § 609). Where the prior art or other documents have not
been cited on a PTO - 892, or listed and initialed on a PTO
- 1449, the examiner will place a notation in the protest
paper adjacent to the reference to the documents. The
notation should include the examiner's initials and the term
"checked." The examiner will also indicate in the next
Office  action  that  all  documents  submitted  have  been
considered.

  It is not intended that the examiner be overly technical
in construing 37 CFR 1.291(b) and refuse consideration of a
protest because it does not include all of the contents
enumerated by 37 CFR 1.291(b). The examiner should consider
the protest to the extent it is helpful and valid even
though one or more of the listed items is omitted.

  Where prior art or other documents are considered by the
examiner, even though not submitted in full conformance with
37 CFR 1.291(b), the examiner must , for all those documents
considered but not listed on the form PTO - 892, (1) mark
"checked" and place the examiner's initials beside each
citation, or (2) where all the documents cited on a given
page have been considered, mark "All checked" and place the
examiner's initials in the left - hand margin beside the
citations:  see  MPEP  §  609.  Where  prior  art  or  other
documents are listed by protestor on form PTO - 1449, even
though  not  submitted  in  full  conformance  with  37  CFR
1.291(b), the examiner  must , for all those documents
considered, place the examiner's initials adjacent to the
citations in the boxes provided on the form PTO - 1449.
Where the prior art or other documents are listed by
protestor on form PTO - 1449, but are not submitted in full
compliance with 37 CFR 1.291(b), the examiner  must , for
all those documents not considered, draw a line through the
citation on the form PTO - 1449; see MPEP § 609. If a
protest entered in an application file complies with 37 CFR
1.291(b), the examiner is required to fully consider  all
the issues, except for any issues of "fraud," "inequitable
conduct," or "duty of disclosure" raised by the protestor,
and clearly state the examiner's position thereon in detail.

 Protest Filed After ** Allowance

  **>If the protest is not submitted prior to the mailing
of a notice of allowance under 37 CFR 1.311, it should not
be entered in the application file. The applicant should be
notified that the protest is untimely and that it is not
being entered in the application file. The handling of the
protest will vary depending on the particular situation as
follows.

 A. Service of Copy Included

  Where the protest includes an indication of service of
copy on the applicant, the original protest should be
discarded.

 B. Service of Copy Not Included

  Where the protest does not include an indication of
service, the duplicate copy of the protest (if present)
should be discarded and the original protest papers should

be sent to the applicant along with the notification of
nonentry.<

 Copies of Documents Not Submitted

  If the protest is not accompanied by a copy of each
prior art or other document relied on as required by 37 CFR
1.291(b),  the  examiner  will  consider  the  documents
submitted. The protestor cannot be assured that the examiner
will consider the missing document(s). However, if the
examiner does so, the examiner will either cite the document
on form PTO - 892 or place a notation in the protest paper
adjacent to the reference to the document which will include
the examiner's initials and the term "checked." If the
examiner considered a document not submitted, the next
Office action will so indicate.

  Consideration of Protestor's Arguments

  In view of the value of written protests, it is
necessary that the examiner give careful consideration to
the points and arguments made on behalf of protestor. Any
Office action by the examiner treating the merits of a
timely submitted protest complying with 37 CFR 1.291(b) must
specifically consider and make evident by detailed reasoning
the examiner's position as to the major arguments and points
raised by the protestor. While it is not necessary for the
examiner to respond to each and every minute argument or
point, the major arguments and points must be specifically
covered. The examiner will not, under any circumstances,
treat or discuss those arguments or points directed to
"fraud," "inequitable conduct," or "violation of duty of
disclosure."

  Results of Consideration Reported to Group Director

  After the examiner has considered the protest, the
examiner will report the results of such consideration to
the group director.

1901.07  Protestor Participation in the Examination

  The degree of protestor participation in the examination
has been severely restricted. Any protest against a pending
application which is filed after December 8, 1981 will be
treated in accordance with the procedures set forth in the
"Interim . . Protest . . Procedures" published December
8, 1981 at 1013 O.G. 18 - 19, and published May 19, 1982 in
47 Fed. Reg. 21746 - 21753. Any protest filed on or before
December 8, 1981, including related protestor participation,
will be handled in accordance with practices in effect prior
to December 8, 1981.

  In accordance with the limited protestor participation
in protests filed after December 8, 1981, 37 CFR 1.291(c)
was amended effective July 1, 1982, and further amended on
March 16, 1992, to provide that:

  "limited involvement of the member of the public filing
a protest . . ends with the filing of the protest, and no
further submission on behalf of the protestor will be
considered unless such submission raises new issues which
could not have been earlier presented."

  Mere arguments relating to an Office action or an

applicant's response would not qualify as a new issue. The
mere filing of a protest does not grant access to protestor
or relieve the Office of its obligations under 35 U.S.C. 122
to maintain applications "in confidence." Nor does the mere
filing of a protest automatically mean that protestor will
have any "right" to participate to any particular degree. 37
CFR 1.291(c) does not permit protestor, or any other member
of the public, to contact or receive information from the
Office as to the disposition or status of the protest, or
the application to which it is directed, or to participate
in any Office proceedings relating to the protest. The
disposition of the protest will, once it has been filed
under paragraph (c), be an ex parte matter between the
Office and the applicant. Where protestor has access to an
application, for example, a reissue application which is
open to the public and may be inspected under 37 CFR 1.11,
the proceedings may thereby be monitored.

  Under 37 CFR 1.291(c), applicant may be required by the
Office to respond to a protest. Any response thereto would
be ex parte and would not be served on protestor. The  ex
parte nature of the requirements for information under
paragraph  (c)  differs  from  past  practice  under  which
information could be required, or requested, from applicant
and one or more protestors.

1901.07(a)  Service of Copies

  In protests filed after December 8, 1981, the Office
does not serve copies of Office actions, or other documents
mailed by the Office, on protestors; and no longer requires
applicants to serve copies of papers filed with the Office
on protestors: see "Interim . . Protest . . Procedures"
published December 8, 1981 at 1013 O.G. 18 - 19; 47 Fed.
Reg. 21746 - 21753 published May 19, 1982; and 37 CFR 1.291
as amended July 1, 1982 and March 16, 1992. In protests
filed on or before December 8, 1981, service of copies will
be handled under the procedures in force prior to December
8, 1981. However, if an application, in which said protest
was filed on or before December 8, 1981, is abandoned and a
continuation application is filed, any protest filed in said
continuation application will be treated as a new protest
and will be governed by the procedures in effect at the time
said new protest is filed. If said new protest was filed
after December 8, 1981, the Office does not serve copies,
nor require applicant to serve copies, on protestor.

  A protestor who had access to an application and had
filed a protest in the application prior to December 8,
1981, can request the Office to supply protestor with copies
of Office actions or other documents mailed by the Office.
Protestor, however, has no right to copies of Office actions
or other documents, the granting or denying of such requests
being within the sole discretion of, and for the convenience
of, the Office. Such a request is granted by the Office of
the Assistant Commissioner for Patents or the group director
only where protestor has served copies of the protest and
any subsequent papers on applicant. The granting normally
includes the requirement that each of the parties serve
copies of any papers filed on each other, and is, as set
forth above, within the sole discretion of, and for the
convenience of, the Office.

  When the protestor has been granted the right to receive
all Office correspondence, the name and address of the

protestor should be added to the front of the file at the
correspondence box.

  This will enable the clerical personnel to see that two
envelopes are needed and that dual mailing is required. The
protestor's name and address should be added in pencil or
red ink. However, the first line should read "PROTESTOR."

  Example: PROTESTOR

  James Jones

  ABC Corp.

  720 Avenue C

  New York, New York zip

  Failure to put the word "PROTESTOR" above the name and
address could cause the Publishing Division to assume that
the first address was inadvertently not cancelled and result
in the Notice of Allowance being sent to the Protestor. Use
of the identifier "PROTESTOR" will result in the Publishing
Division sending the Notice of Allowance (multipart forms)
to the Applicant and a single copy to the protestor.

1901.07(b)  Protests Limited to Single Submission

  Filing of Multiple Papers Relating to Same Issues

  Previously, the filing of multiple papers by either the
applicant and/or protestor(s) with respect to a specific
issue(s) has created problems in that the application files
became  unduly  expanded  and  unnecessary  delays  in  the
examination  were  encountered.  Therefore,  applicants  and
protestors were encouraged to make their first submission
with regard to specific issues as complete as possible in
order to avoid the necessity of filing multiple papers.

  Protestors Limited to Single Submission

  Where a protest is filed after December 8, 1981,
protestor is limited to a single submission and thus must
make such submission as complete as possible: see 37 CFR
1.291(c) as amended July 8, 1982 and March 16, 1992;
"Interim... Protest... Procedures" published December 8,1981
at 1013 O.G. 18 - 19; and 47 Fed. Reg. 21746 - 21753
published May 19, 1982. Under 37 CFR 1.291(c) protestor
participation ends with the filing of the initial protest,
and protestor will not be allowed to complete any protest
that is incomplete. No further submission on behalf of
protestor will be considered unless such submission clearly
raises  new  issues  which  could  not  have  been  earlier
presented.  Protests  which  will  not  be  entered  in  the
application  file  include  those  further  submissions  in
violation of 37 CFR 1.291(c) by which protestor seeks to
participate in the examination process. For example, mere
arguments relating to an Office action or an applicant's
response  would  not  qualify  as  a  new  issue.  Likewise,
additional comments seeking to bring in further or even new
data or information with respect to an issue previously
raised by protestor would not qualify as a new issue. Even
new protests which also argue Office actions or responses or
any matter beyond the new issue should not be accepted.
Improper protests will be refused consideration and returned

by the Examining Group Director. While improper protests
will be returned, a new protest by an earlier protestor will
be proper and can be entered if it is clearly limited to new
issues which could not have been earlier presented.

1902  Protestor Participation in Interviews

  Under  37  CFR  1.291(c),  protestor  participation  in
interviews is not permitted where the protest was filed
after December 8, 1981: see "Interim...Protest...Procedures"
published December 8, 1981 at 1013 O.G. 18 - 19; 47 Fed.
Reg. 21746 - 21753 published May 19, 1982. In protests filed
on or before December 8, 1981, protestor participation is
governed by the rules and procedures in effect prior to
December 8, 1981. Any such participation rights, in an
application  where  the  protest  was  filed  on  or  before
December 8, 1981, are limited to that application and do not
carry forward to any continuing application. Any protest
filed in a continuing application is treated as a new
protest and will be governed by the procedures in effect at
the time said new protest is filed.

  Where a protest has been filed in an application prior
to December 8, 1981, a protestor having access to said
application can request to be allowed to participate in any
interviews between applicants and the examiner, or could
request an interview with the examiner on protestor's own
behalf.  However,  interviews  with  a  protestor,  whether
protestor initiated or not, will not be permitted without
applicant's presence. An examiner should never communicate
orally with protestor except for purely procedural matters
unless applicant is represented, and protestor must refrain,
unless applicant is represented, from oral communication
with the examiner except to ask purely procedural questions
not related to the substance of the protest or the merits of
the application. No oral communications between the examiner
and protestor are permitted if the protest was filed after
December 8, 1981.

  Normally, protestor participation in interviews with
examiners will not be allowed unless special justifying
circumstances exist. Where authorized, participation by the
protestor in an interview will be according to guidelines
set forth below in MPEP § 1902.01.

  Where copies of Office actions are being sent to a
protestor or where protestor is present at an interview, a
copy of the "Interview Summary Form" and other records made
at the interview (excluding any transcript) will be provided
to  the  protestor.  Where  protestor  participates  in  an
interview, protestor may, or may not be required to, submit
his or her own record of the interview which will be made of
record in the file.

1902.01  Guidelines for Inter Partes Interviews

  Subject to the restrictions noted in MPEP § 1902, the
authority for granting inter partes interviews resides with
each Group Director. Protestor participation in interviews
with examiners will not ordinarily be permitted unless
protestor has access and justifying circumstances exist.
Where authorized, such participation will be according to
the following guidelines. The "guidelines" are being issued
so as to provide some uniformity as to the propriety of
interviews and the manner in which any such interviews, if

granted, are to be conducted.

1902.01(a)  Justifying Circumstances for Inter Partes
Interviews

  As  discussed  in  MPEP  §  1902,  protestors  are  not
permitted to participate in interviews in applications where
the protest was filed after December 8, 1981. However, where
a protest has been filed in an application on or before
December  8,  1981,  a  protestor  having  access  to  said
application may request to participate in interviews in said
application.

  Inter partes interviews are usually due to a request by:

  (1)  the primary examiner who feels that an inter
partes interview would be useful,

  (2) the  applicant  who  desires  to  have  the
protestor present,

  (3)  the protestor who desires to be included at an
interview,

  (4) the  protestor  who  wishes  to  initiate  an
interview, or

  (5)  a Court with related litigation which desires
an interview be held.

  Requests under categories (1), (2), and (5) should
normally be granted since it is the primary examiner who is
requesting an inter partes interview, the applicant desiring
the presence of the protestor at an interview, or a Court
desiring  that  the  parties  be  permitted  to  conduct  an
interview with the examiner. In any of these situations, the
group director should normally grant permission for an
inter partes interview unless other reasons are present
which, in the group director's opinion, would negate the
desirability of any such interview.

  Requests under category (3) are most often encountered
insofar as inter partes interviews are concerned. Examples
of situations in which an  inter partes interview should
normally be granted include those in which:

  (1)  the court has stayed the litigation and/or has
invited or required defendant (or plaintiff in a declaratory
judgment action) to participate in the reissue proceedings
and to be accorded "full participation" in the Patent and
Trademark Office deliberations;

  (2)  the nature of the issues would appear to make
such an interview desirable, as for example, issues relating
to public use, prior sale, inventorship and complex prior
art; and

  (3)  for other reasons where the examiner and group
director feel that the protestor's participation would be
helpful.

  Requests under category (4) usually would not be granted
since a protestor cannot initiate an interview with the
examiner or attend such an interview absent an agreement by
the applicant to also be present and participate.

  In any event, for an inter partes interview to be
conducted a  protest must have been filed in the application
by  the  protestor  prior  to  December  8,  1981,  and  the
protestor must have access to the application.

1902.01(b)  Circumstances Where Inter Partes Interviews
Would Normally Not Be Justified

  Many protests are filed wherein there is no court
litigation involving the parent patent. In these situations,
the decision as to whether or not to grant protestor's
request to participate in an inter partes interview must be
considered from the particular facts of each application.

  Normally, if only printed prior art of a noncomplex
nature  has  been  relied  on  in  the  protest  to  support
allegations of unpatentability, an  inter partes interview
would not be appropriate since the primary examiner should
be capable of interpreting the art. (However, in some
circumstances, protestor participation may be considered
useful and justify participation).

  Other issues which would not normally justify an inter
partes interview involve, for example, 35 U.S.C. 101, 251,
and 112.

  No interviews will be granted protestor where the
protest was filed in an application after December 8, 1981.

1902.01(c)  Notice of Interviews

  If the protestor participation at any interview has been
previously approved, applicant must thereafter request any
interview in advance of the requested interview date and
must represent at that time that protestor has received
actual notice (by telephone, if necessary) of the interview
request and been offered an opportunity to participate.
Protestor must also inform the Patent and Trademark Office
in advance whether or not protestor intends to participate
in any scheduled interview. In those situations, where
protestor participation has been approved, the examiner will
not hold any interview relating to  matters of substance
with applicant or applicant's representative(s) unless the
examiner is satisfied that protestor has  received actual
and timely notice of the interview and has been offered an
opportunity to participate. Of course, this caveat does not
relate to nonsubstantive matters such as status inquiries,
but does include subsequent interviews initiated by the
examiner or applicant even if only for minor amendments such
as  those  occurring  in  examiner  amendments.  For  minor
matters, conference calls may be utilized if arranged by the
parties.

  For those interviews requested by the primary examiner
and approved by the group director, the scheduling of the
interview should be coordinated by the examiner.

1903  Guidelines for Conducting Interviews

  Once an inter partes interview has been scheduled, the
parties should be provided with guidelines by, or at the
direction of, the group director as to the manner in which
the interview will be conducted. These guidelines should
address the following points:

  (1)  The issues the examiner desires particularly
addressed.

  (2)  A requirement that applicant or protestor
identify to the examiner the issues which applicant or
protestor  particularly  wish  to  discuss  prior  to  the
interview along with an indication that the other party has
been apprised of these issues.

  (3)  A  limitation  as  to  the  number  of
representatives from each party permitted to participate at
the interview (normally no more than 2 or 3).

  (4)  State that the supervisory primary examiner or
in  the  supervisory  primary  examiner's  absence,  another
primary examiner, will sit in on the interview.

  (5)  The order in which the parties will discuss
each of the issues (if appropriate and/or desirable, a time
limit per issue may also be set forth).

  (6)  An indication that the primary examiner will
not make any commitment on substance during the interview,
but will render a decision in writing after having an
opportunity to weigh all the comments submitted by the
parties following the interview.

  (7)  That the primary examiner will not entertain
any discussions relating to issues of fraud and/or duty of
disclosure.

  (8)  That the interview will be controlled by the
primary examiner and will be terminated at the discretion of
the primary examiner.

  (9)  The guidelines may specify time limitations
which may only be exceeded in the examiner's discretion.

  (10)  The location at which the interview will be
held.

1903.01  Record of Interviews

  Following the interview, the primary examiner will
require each of the parties to submit, for the record and to
the other parties, a short summary of what the parties feel
transpired at the interview, unless a court reporter has
been allowed at the interview. A period of 2 weeks should be
ample time for submission of the comments.

  If the director determines that a court reporter's
presence is desirable at the interview (if requested and
paid for by any of the parties), then a transcript of the
interview must be forwarded to the examiner as soon as it is
available and at no cost to the Patent and Trademark Office.
The party or parties requesting the court reporter must
agree, in advance, to bear the total cost of the same,
including the costs of any transcripts, and must make all
the necessary arrangements for securing the reporter.

  If a court reporter is not present, the primary examiner
must complete "Interview Summary Form PTO - 413" at the
conclusion of the interview briefly summarizing the issues
discussed, without commitment thereon, and provide each of

the parties with a copy thereof.

  If the protestor has not been granted permission to
participate at an  inter partes interview, but has been
granted service of all Office communications of substance,
it is appropriate that a copy of any interview summary be
forwarded to the protestor as soon as possible. Applicant
still has the usual responsibility to record the substance
of the interview and protestor has the opportunity to make
any observations or comments in relation thereto.

1904  Protestor Participation Before the Board of Patent
Appeals and Interferences

  A protestor cannot appeal a decision by the examiner
adverse to the protestor to the Board of Patent Appeals and
Interferences. Further, where the protest was filed after
December 8, 1981 in an application, a protestor is not
permitted by 37 CFR 1.291(c) to participate in an appeal by
applicant: see "Interim . . Protest . . Procedures"
published December 8, 1981, at 1013 O.G. 18 - 19; 47 Fed.
Reg. 21746 - 21753 published May 19, 1982.

  Where a protest has been filed in an application on or
before December 8, 1981 and protestor has access to said
application, the Office does permit protestor participation
in appeals filed by applicant under 35 U.S.C. 134 and 37 CFR
1.191.  Such  protestor,  with  access  to  an  application
appealed to the Board of Patent Appeals and Interferences,
who intends to file comments or a brief, without fee, in
opposition to applicant's brief should file an indication of
such intention within 1 month after the Notice of Appeal
under 37 CFR 1.191 is filed and serve a copy of the same
upon applicant. The indication of intention should state
that protestor agrees to file such comments or brief in
triplicate, within 1 month after applicant's brief is filed,
and also agrees to serve a copy of the comments or brief
upon applicant. If such an indication is not filed and
served, or the protestor's comments or brief is not timely
filed in triplicate and served, no assurance is given that
the examiner will consider the protestor's comments or brief
during the preparation of the Examiner's Answer.

  Such  protester  who  participates  by  the  filing  of
comments or a brief in opposition to the applicant's brief
may also request, at the time of filing the comments or
brief, to appear at any oral hearing which may be requested
by the applicant. If a protestor does not file such comments
or brief, the protestor cannot be present at any oral
hearing. If a protestor does file such a request, the Board
of Patent Appeals and Interferences, in its discretion, will
decide whether or not the issues on appeal are such that
protestor's participation at the hearing would be helpful.
The Board of Patent Appeals and Interferences will notify
protestor whether or not the request to appear at the oral
hearing is granted and, if granted, how much time will be
permitted. Of course, if applicant does not request an oral
hearing, or provides timely notification to the Board and
protestor that applicant will not appear, the protestor will
not be heard.

  In rare circumstances, the Office has on petition to the
Commissioner also permitted a protestor with access to the
application to include, in protestor's comments or brief, a
request that the Board make one or more rejections under 37

CFR 1.196(b): note In re Khoury , 207 USPQ 942 (Comm'r.
Pats. 1980).

1906  Supervisory Review of an Examiner's Decision
Adverse to Protestor

  As pointed out in MPEP § 1904, a protestor cannot appeal
to the Board of Patent Appeals and Interferences from an
adverse decision of the examiner. Further in an application
where the protest was filed after December 8, 1981, a
decision by examiner adverse to a protestor is final, and
under the restricted protestor participation permitted under
37 CFR 1.291(c) is not petitionable to the Commissioner: see
"Interim . . Protest . . Procedures" published December
8, 1981 at 1013 O.G. 18 - 19; 47 Fed. Reg. 21746 - 21753
published May 19, 1982. Where a protest was filed in an
application on or before December 8, 1981, a decision by the
examiner  adverse  to  a  protestor  is  final,  except  in
instances of clear error or abuse of discretion established
by petition to the Commissioner under 37 CFR 1.181. Any such
petition  should  be  directed  to  the  appropriate  group
director. Also, consideration of the petition does not
represent acknowledgment of any right of review in the
protestor.

1907  Unauthorized Participation by Protestor

  Office personnel must exercise care to ensure that
substantive matters relating to the application are not
discussed ex parte with protestor or communicated in writing
ex parte to protestor. Where protestor has not filed a
protest or otherwise participated in an application prior to
December 8, 1981, the examiner must not communicate in any
manner with protestor: note 37 CFR 1.291(c).

  Where protestor has participated in the application on
or  before  December  8,  1981  and  has  access  to  the
application, the examiner may communicate in writing with
protestor, such as, to request clarification of a protest or
additional information. A copy of any examiner's letter

 or communication to a protestor will be mailed to applicant
at the same time it is mailed to the protestor. Even where
communication in writing with protestor is permitted, the
examiner will not communicate orally with protestor, and
protestor must refrain from oral communications with the
examiner except to ask purely procedural questions which
have no relation to the substance of the protest or the
merits of the application, unless specifically authorized in
writing by the Assistant Commissioner for Patents.

1920  Citation of Prior Art Under 37 CFR 1.501(a)

 37 CFR 1.501(a) permits any person at any time during the
period of enforceability of a patent to cite to the Office,
in writing, prior art consisting of patent and printed
publications which that person states to be pertinent and
applicable to the patent and believes to have a bearing on
the patentability of any claim(s) of the patent. See MPEP §
2202 - § 2208.

  - -- - -- END - -- - --

 Chapter 2000 Duty of Disclosure

  2001  Duty of Disclosure, Candor, and Good Faith
  2001.01  Who Has Duty To Disclose
  2001.03  To Whom Duty of Disclosure Is Owed
  2001.04  Information Under 37 CFR 1.56(a)
  2001.05  Materiality Under 37 CFR 1.56(b)
  2001.06  Sources of Information
  2001.06(a)  Prior Art Cited in Related Foreign
  Applications
  2001.06(b)  Information Relating to or From Copending
  United States Patent Applications
  2001.06(c)  Information From Related Litigation
  2001.06(d)  Information Relating to Claims Copied From a
  Patent
  2002  Disclosure  __ By Whom and How Made
  2002.01  By Whom Made
  2002.02  Must be in Writing
  2003  Disclosure  __ When Made
  2003.01  Disclosure After Patent Is Granted
  2004  Aids to Compliance With Duty of Disclosure
  2010  Office Handling of Duty of Disclosure/Inequitable
  Conduct Issues
  2012  Reissue Applications Involving Issues of Fraud,
  Inequitable Conduct, and/or Violation of Duty of
  Disclosure
  2012.01  Collateral Estoppel
  2013  Protests Involving Issues of Fraud, Inequitable
  Conduct, and/or Violation of Duty of Disclosure
  2014  Duty of Disclosure in Reexamination Proceedings
  2016  Fraud, Inequitable Conduct, or Violation of Duty of
  Disclosure Affects All Claims
  2022.05  Determination of "Error Without Any Deceptive
  Intention"
 This Chapter deals with the duties owed toward the Patent
and  Trademark  Office  by  the  inventor  and  every  other
individual who is substantively involved in the preparation
or prosecution of the application and who is associated with
the inventor or the inventor's assignee. These duties, of
candor and good faith and disclosure, have been codified in
37 CFR 1.56, as promulgated pursuant to carrying out the
duties of the Commissioner under Sections 6, 131, and 132 of
Title 35 of the United States Code.

2001  Duty of Disclosure, Candor, and Good Faith [R - 2]

 37 CFR 1.5*>6<.  Duty to disclose information material to
patentability.

 (a)  A patent by its very nature is affected with a
public interest. The public interest is best served, and the
most effective patent examination occurs when, at the time
an application is being examined, the Office is aware of and
evaluates the teachings of all information material to
patentability. Each individual associated with the filing
and prosecution of a patent application has a duty of candor
and good faith in dealing with the Office, which includes a
duty to disclose to the Office all information known to that
individual to be material to patentability as defined in
this section. The duty to disclose information exists with
respect to each pending claim until the claim is cancelled
or withdrawn from consideration, or the application becomes
abandoned. Information material to the patentability of a
claim that is cancelled or withdrawn from consideration need

not be submitted if the information is not material to the
patentability of any claim remaining under consideration in
the application. There is no duty to submit information
which is not material to the patentability of any existing
claim. The duty to disclose all information known to be
material to patentability is deemed to be satisfied if all
information known to be material to patentability of any
claim issued in a patent was cited by the Office or
submitted to the Office in the manner prescribed by §
1.97(b) - (d) and 1.98. However, no patent will be granted
on an application in connection with which fraud on the
Office was practiced or attempted or the duty of disclosure
was violated through bad faith or intentional misconduct.
The Office encourages applicants to carefully examine:

 (1)  prior art cited in search reports of a foreign
patent office in a counterpart application, and

 (2)  the closest information over which individuals
associated with the filing or prosecution of a patent
application believe any pending claim patentably defines, to
make sure that any material information contained therein is
disclosed to the Office.

 (b)  Under this section, information is material to
patentability when it is not cumulative to information
already  of  record  or  being  made  of  record  in  the
application, and

 (1)  It establishes, by itself or in combination with
other information, a prima facie case of unpatentability of
a claim; or

 (2)  It refutes, or is inconsistent with, a position the
applicant takes in:

 (i)  Opposing an argument of unpatentability relied on
by the Office, or

 (ii)  Asserting an argument of patentability.

 A prima facie case of unpatentability is established when
the  information  compels  a  conclusion  that  a  claim  is
unpatentable under the preponderance of evidence, burden -
of - proof standard, giving each term in the claim its
broadest  reasonable  construction  consistent  with  the
specification, and before any consideration is given to
evidence which may be submitted in an attempt to establish a
contrary conclusion of patentability.

 (c)  Individuals  associated  with  the  filing  or
prosecution of a patent application within the meaning of
this section are:

 (1)  Each inventor named in the application;

 (2)  Each attorney or agent who prepares or prosecutes
the application; and

 (3)  Every other person who is substantively involved in
the preparation or prosecution of the application and who is
associated with the inventor, with the assignee or with
anyone  to  whom  there  is  an  obligation  to  assign  the
application.

 (d)  Individuals other than the attorney, agent or
inventor  may  comply  with  this  section  by  disclosing
information to the attorney, agent, or inventor.

 37 CFR 1.56 defines the duty to disclose information to the
Office.

2001.01 Who Has Duty To Disclose

 37 CFR 1.56  Duty to disclose information material to
patentability.

  *****

 (c)  Individuals  associated  with  the  filing  or
prosecution of a patent application within the meaning of
this section are:

 (1)  Each inventor named in the application;

 (2)  Each attorney or agent who prepares or prosecutes
the application; and

 (3)  Every other person who is substantively involved in
the preparation or prosecution of the application and who is
associated with the inventor, with the assignee or with
anyone  to  whom  there  is  an  obligation  to  assign  the
application.

 Individuals having a duty of disclosure are limited to
those who are "substantively involved in the preparation or
prosecution of the application." This is intended to make
clear that the duty does not extend to typists, clerks, and
similar personnel who assist with an application.

 The word "with" appears before "the assignee" and "anyone
to whom there is an obligation to assign" to make clear that
the duty applies only to individuals, not to organizations.
For instance, the duty of disclosure would not apply to a
corporation or institution as such. However, it would apply
to individuals within the corporation or institution who
were  substantively  involved  in  the  preparation  or
prosecution  of  the  application,  and  actions  by  such
individuals may affect the rights of the corporation or
institution.

 2001.03  To Whom Duty of Disclosure Is Owed

 37 CFR 1.56(a) states that the "duty of candor and good
faith" is owed "in dealing with the Office" and that all
such individuals have a "duty to disclose to the Office"
material information. This duty "in dealing with" and "to"
the Office extends, of course, to all dealings which such
individuals have with the Office, and is not limited to
representations  to  or  dealings  with  the  examiner.  For
example, the duty would extend to proceedings before the
Board of Patent Appeals and Interferences, the Office of the
Assistant Commissioner for Patents, etc.

 2001.04  Information Under 37 CFR 1.56(a)

 37 CFR 1.56.  Duty to disclose information material to
patent ability.

 (a)  A patent by its very nature is affected with a

public interest. The public interest is best served, and the
most effective patent examination occurs when, at the time
an application is being examined, the Office is aware of and
evaluates the teachings of all information material to
patentability. Each individual associated with the filing
and prosecution of a patent application has a duty of candor
and good faith in dealing with the Office, which includes a
duty to disclose to the Office all information known to that
individual to be material to patentability as defined in
this section. The duty to disclose information exists with
respect to each pending claim until the claim is cancelled
or withdrawn from consideration, or the application becomes
abandoned. Information material to the patentability of a
claim that is cancelled or withdrawn from consideration need
not be submitted if the information is not material to the
patentability of any claim remaining under consideration in
the application. There is no duty to submit information
which is not material to the patentability of any existing
claim. The duty to disclose all information known to be
material to patentability is deemed to be satisfied if all
information known to be material to patentability of any
claim issued in a patent was cited by the Office or
submitted to the Office in the manner prescribed by §
1.97(b) - (d) and 1.98. However, no patent will be granted
on an application in connection with which fraud on the
Office was practiced or attempted or the duty of disclosure
was violated through bad faith or intentional misconduct.
The Office encourages applicants to carefully examine:

 (1)  prior art cited in search reports of a foreign
patent office in a counterpart application, and

 (2)  the closest information over which individuals
associated with the filing or prosecution of a patent
application believe any pending claim patentably defines, to
make sure that any material information contained therein is
disclosed to the Office.

  *****

 The language of 37 CFR 1.56 (and 37 CFR 1.555) has been
modified effective March 16, 1992 to emphasize that there is
a duty of candor and good faith which is broader than the
duty to disclose material information. 37 CFR 1.56 further
states that "no patent will be granted on an application in
connection with which fraud on the Office was practiced or
attempted or the duty of disclosure was violated through bad
faith or intentional misconduct."

 The Office strives to issue valid patents. The Office has
both an obligation not to unjustly issue patents and an
obligation not to unjustly deny patents. Innovation and
technological advancement are best served when an inventor
is issued a patent with the scope of protection that is
deserved. The rules as adopted serve to remind individuals
associated with the preparation and prosecution of patent
applications of their duty of candor and good faith in their
dealings with the Office, and will aid the Office in
receiving, in a timely manner, the information it needs to
carry out effective and efficient examination of patent
applications.

 The amendment to 37 CFR 1.56 was proposed to address
criticism concerning a perceived lack of certainty in the
materiality standard. The rule as promulgated will provide

greater  clarity  and  hopefully  minimize  the  burden  of
litigation on the question of inequitable conduct before the
Office, while providing the Office with the information
necessary for effective and efficient examination of patent
applications. 37 CFR 1.56 has been amended to present a
clearer and more objective definition of what information
the Office considers material to patentability. The rules do
not define fraud or inequitable conduct which have elements
both of materiality and of intent.

 The definition of materiality in 37 CFR 1.56 does not
impose  substantial  new  burdens  on  applicants,  but  is
intended to provide the Office with the information it needs
to  make  a  proper  and  independent  determination  on
patentability. It is the patent examiner who should make the
determination after considering all the facts involved in
the particular case.

 37 CFR 1.56 states that each individual associated with the
filing and prosecution of a patent application has a duty to
disclose all information known to that individual to be
material to patentability as defined in the section. Thus,
the duty applies to contemporaneously or presently known
information. The fact that information was known years ago
does not mean that it was recognized that the information is
material to the present application.

 The term "information" as used in 37 CFR 1.56 means all of
the kinds of information required to be disclosed and
includes  any  information  which  is  "material  to
patentability." Materiality is defined in 37 CFR 1.56(b) and
discussed herein at MPEP § 2001.05. In addition to prior art
such as patents and publications, 37 CFR 1.56 includes, for
example, information on possible prior public uses, sales,
offers  to  sell,  derived  knowledge,  prior  invention  by
another, inventorship conflicts, and the like.

 The term "information" is intended to be all encompassing
similar to the scope of the term as discussed with respect
to 37 CFR 1.291(a) (see MPEP § 1901.02). 37 CFR 1.56(a) also
states:  "The  Office  encourages  applicants  to  carefully
examine: (1) prior art cited in search reports of a foreign
patent office in a counterpart application, and (2) the
closest information over which individuals associated with
the filing or prosecution of a patent application believe
any pending claim patentably defines, to make sure that any
material information contained therein is disclosed to the
Office." The sentence does not create any new duty for
applicants, but is placed in the text of the rule as helpful
guidance  to  individuals  who  file  and  prosecute  patent
applications.

 It should be noted that the rules are not intended to
require information  favorable to patentability such as, for
example, evidence of commercial success of the invention.
Similarly, the rules are not intended to require, for
example, disclosure of information concerning the level of
skill in the art for purposes of determining obviousness.

 37 CFR 1.56(a) states that the duty to disclose information
exists until the application becomes abandoned. The duty to
disclose  information,  however,  does  not  end  when  an
application becomes allowed but extends until a patent is
granted  on  that  application.  The  rules  provide  for
information being considered after a notice of allowance is

mailed and before the issue fee is paid (37 CFR 1.97(d)) and
for an application to be withdrawn from issue because one or
more claims are unpatentable (37 CFR 313(b)(3)) or for an
application to be withdrawn from issue and abandoned so that
information may be considered in a continuing application
before a patent issues (37 CFR 1.313(b)(5)).

 37 CFR 1.56 provides that the duty of disclosure can be met
by submitting information to the Office in the manner
prescribed by 37 CFR 1.97 and 1.98. 37 CFR 1.97 and 1.98
have  been  amended  effective  March  16,  1992  so  that
information will be submitted to the Office in the manner
and at the time which will facilitate consideration by the
examiner. Applicants are provided certainty as to when
information will be considered, and applicants will be
informed when information is not considered. The Office does
not believe that courts should, or will, find violations of
the  duty  of  disclosure  because  of  unintentional
noncompliance  with  37  CFR  1.97  and  1.98.  If  the
noncompliance is intentional, however, the applicant will
have assumed the risk that the failure to submit the
information in a manner that will result in its being
considered by the examiner may be held to be a violation.

 The Office does not anticipate any significant change in
the quantity of information cited to the Office. Presumably,
applicants  will  continue  to  submit  information  for
consideration by the Office in applications rather than
making  and  relying  on  their  own  determinations  of
materiality. An incentive remains to submit the information
to the Office because it will result in a strengthened
patent and will avoid later questions of materiality and
intent to deceive. In addition, the new rules will actually
facilitate the filing of information since the burden of
submitting information to the Office has been reduced by
eliminating, in most cases, the requirement for a concise
statement of the relevance of each item of information
listed in an information disclosure statement. It should
also be noted that 37 CFR 1.97(h) states that the filing of
an information disclosure statement shall not be considered
to be an admission that the information cited in the
statement  is,  or  is  considered  to  be,  material  to
patentability as defined in 37 CFR 1.56.

2001.05 Materiality Under 37 CFR 1.56(*>b<) [R - 2]

 37 CFR 1.56.  Duty to disclose information material to
patent ability.

  *****

 (b)  Under this section, information is material to
patentability when it is not cumulative to information
already  of  record  or  being  made  of  record  in  the
application, and

 (1)  It establishes, by itself or in combination with
other information, a prima facie case of unpatentability of
a claim; or

 (2)  It refutes, or is inconsistent with, a position the
applicant takes in:

 (i) Opposing an argument of unpatentability relied on by
the Office, or

 (ii) Asserting an argument of patentability.

 A prima facie case of unpatentability is established when
the  information  compels  a  conclusion  that  a  claim  is
unpatentable under the preponderance of evidence, burden -
of - proof standard, giving each term in the claim its
broadest  reasonable  construction  consistent  with  the
specification, and before any consideration is given to
evidence which may be submitted in an attempt to establish a
contrary conclusion of patentability.

  *****

 Under the rule, information is not material unless it comes
within the definition of 37 CFR 1.56(b)(1) or (2). If
information is not material, there is no duty to disclose
the information to the Office. Thus, it is theoretically
possible for applicants to draft claims and a specification
to avoid a prima facie case of obviousness over a reference
and then to be able to withhold the reference from the
examiner. The Office believes that most applicants will wish
to submit the information, however, even though they may not
be required to do so, to strengthen the patent and avoid the
risks of an incorrect judgment on their part on materiality
or that it may be held that there was an intent to deceive
the Office.

2001.06 Sources of Information

 All individuals covered by 37 CFR 1.56 (reproduced in MPEP
§ 2001.01) have a duty to disclose to the Patent and
Trademark Office all material information they are aware of
regardless of the source of or how they become aware of the
information. Materiality controls whether information must
be disclosed to the Office, not the circumstances under
which or the source from which the information is obtained.
If material, the information must be disclosed to the
Office. The duty to disclose material information extends to
information such individuals are aware of prior to or at the
time of filing the application or become aware of during the
prosecution thereof.

 Such individuals may be or become aware of material
information from various sources such as, for example, co -
workers,  trade  shows,  communications  from  or  with
competitors, potential infringers, or other third parties,
related foreign applications (see MPEP § 2001.06(a)), prior
or copending United States patent applications (see MPEP §
2001.06(b)), related litigation (see MPEP § 2001.06(c)) and
preliminary examination searches.

2001.06(a)  Prior Art Cited in Related Foreign
Applications

 Applicants and other individuals, as set forth in 37 CFR
1.56, have a duty to bring to the attention of the Office
any material prior art or other information cited or brought
to their attention in any related foreign application. The
inference that such prior art or other information is
material is especially strong where it is the only prior art
cited or where it has been used in rejecting the same or
similar claims in the foreign application. See Gemveto
Jewelry Company, Inc.  v.  Lambert Bros., Inc. , 216 USPQ
976 (S.D. N.Y. 1982) wherein a patent was held invalid or

unenforceable because patentee's foreign counsel did not
disclose to patentee's United States counsel or to the
Office prior art cited by the Dutch Patent Office in
connection  with  the  patentee's  corresponding  Dutch
application. The Court stated, 216 USPQ at 985,

 "Foreign patent attorneys representing applicants for U.S.
patents through local correspondent firms surely must be
held to the same standards of conduct which apply to their
American counterparts; a double standard of accountability
would allow foreign attorneys and their clients to escape
responsibility for fraud or inequitable conduct merely by
withholding  from  the  local  correspondent  information
unfavorable  to  patentability  and  claiming  ignorance  of
United States disclosure requirements."

2001.06(b)  Information Relating to or From Copending
United States Patent Applications

 The individuals covered by 37 CFR 1.56 have a duty to bring
to the attention of the examiner, or other Office official
involved with the examination of a particular application,
information within their knowledge as to other copending
United  States  applications  which  are  "material  to
patentability" of the application in question. As set forth
by the Court in Armour & Co.  v.  Swift & Co. ,175 USPQ 70,
79 (7th Cir. 1972),

 "we think that it is unfair to the busy examiner, no matter
how diligent and well informed he may be, to assume that he
retains details of every pending file in his mind when he is
reviewing a particular application . . [T]he applicant has
the burden of presenting the examiner with a complete and
accurate record to support the allowance of letters patent."

 See, also MPEP § 2004 at No. 9.

 Accordingly, the individuals covered by 37 CFR 1.56 cannot
assume that the examiner of a particular application is
necessarily  aware  of  other  applications  "material  to
patentability" of the application in question, but must
instead bring such other applications to the attention of
the examiner. For example, if a particular inventor has
different applications pending in which similar subject
matter but patentably indistinct claims are present that
fact must be disclosed to the examiner of each of the
involved applications. Similarly, the prior art references
from one application must be made of record in another
subsequent application if such prior art references are
"material to patentability" of the subsequent application.

  Normally,  if  the  application  under  examination  is
identified as a continuation or continuation - in - part of
an earlier application, the examiner will consider the prior
art cited in the earlier application. The examiner must
indicate in the first Office action whether the prior art in
a  related  earlier  application  has  been  reviewed.
Accordingly, no separate citation of the same prior art need
be made in the later application.

2001.06(c)  Information From Related Litigation

 Where the subject matter for which a patent is being sought
is or has been involved in litigation, the existence of such
litigation  and  any  other  material  information  arising

therefrom must be brought to the attention of the Patent and
Trademark Office; such as, for example, evidence of possible
prior public use or sales, questions of inventorship, prior
art,  allegations  of  "fraud,"  "inequitable  conduct,"  or
violation of duty of disclosure. Such information might
arise  during  litigation  in,  for  example,  pleadings,
admissions,  discovery  including  interrogatories,
depositions, and other documents, and testimony.

 Where a patent for which reissue is being sought is, or has
been,  involved  in  litigation  which  raised  a  question
material to examination of the reissue application, such as
the validity of the patent, or any allegation of "fraud,"
"inequitable conduct," or "violation of duty of disclosure,"
the existence of such litigation must be brought to the
attention of the Office by the applicant at the time of, or
shortly after, filing the application, either in the reissue
oath or declaration, or in a separate paper, preferably
accompanying the application, as filed. Litigation begun
after filing of the reissue application should be promptly
brought to the attention of the Office. The details and
documents from the litigation, insofar as they are "material
to patentability" of the reissue application as defined in
37 CFR 1.56, should accompany the application as filed, or
be submitted as promptly thereafter as possible.

 For example, the defenses raised against validity of the
patent, or charges of "fraud" or "inequitable conduct" in
the  litigation,  would  normally  be  "material  to  the
examination" of the reissue application. It would, in most
situations be appropriate to bring such defenses to the
attention of the Office by filing in the reissue application
a copy of the court papers raising such defenses. As a
minimum, the applicant should call the attention of the
Office to the litigation, the existence and the nature of
any allegations relating to validity and/or "fraud," or
"inequitable conduct" relating to the original patent, and
the nature of litigation materials relating to these issues.
Enough information should be submitted to clearly inform the
Office of the nature of these issues so that the Office can
intelligently evaluate the need for asking for further
materials in the litigation. See MPEP § 1442.04.

2001.06(d)  Information Relating to Claims Copied From a
Patent

  Where claims are copied or substantially copied from a
patent, 37 CFR 1.607(c) requires applicant shall, at the
time he or she presents the claim(s), identify the patent
and the numbers of the patent claims. Failure to comply with
37 CFR 1.607(c) may result in the issuance of a requirement
for information as to why an identification of the source of
the copied claims was not made. Clearly, the information
required by 37 CFR 1.607(c) as to the source of copied
claims is material information under 37 CFR 1.56 and failure
to inform the PTO of such information may violate the duty
of disclosure.

2002  Disclosure - By Whom and How Made

 37 CFR 1.56. Duty to disclose information material to
patent ability.

  *****

 (d)  Individuals other than the attorney, agent or
inventor  may  comply  with  this  section  by  disclosing
information to the attorney, agent, or inventor.

2002.01 By Whom Made

  37  CFR  1.56(d)  makes  clear  that  information  may  be
disclosed to the Office through an attorney or agent of
record  or  through  a  pro  se  inventor,  and  that  other
individuals may satisfy their duty of disclosure to the
Office by disclosing information to such an attorney, agent,
or inventor who then is responsible for disclosing the same
to the Office. Information that is not material need not be
passed along to the Office.

2002.02 Must be in Writing

 It is clear that the disclosures under 37 CFR 1.56 must be
in writing as prescribed by 37 CFR 1.2 which requires that

 [a]ll business with the Patent and Trademark Office should
be transacted in writing. ***The action of the . . Office
will be based exclusively on the written record in the
Office.

 Further, as provided in 37 CFR 1.4(b),

 Since each application file should be complete in itself, a
separate copy of every paper to be filed in an application
should be furnished for each application to which the paper
pertains, even though the contents of the papers filed in
two or more applications may be identical.

2003  Disclosure  __ When Made

 In reissue applications, applicants are encouraged to file
information disclosure statements at the time of filing or
within 2 months of filing, since reissue applications are
taken up "special": see MPEP § 1442 and § 1442.03. However,
in a reissue where waiver of the normal 2 month delay period
of 37 CFR 1.176 is being requested (see MPEP § 1441), the
statement  should  be  filed  at  the  time  of  filing  the
application, or as soon thereafter as possible.

 The presumption of validity is generally strong when prior
art was before and considered by the Office and weak when it
was not: Bolkcom  v.  Carborundum Co. , 523 F.2d 492, 498
186 USPQ 466, 471, 472 (6th Cir. 1975).

2003.01 Disclosure After Patent Is Granted

  BY CITATIONS OF PRIOR ART UNDER 37 CFR 1.501

 Where a patentee or any member of the public (including
private  persons,  corporate  entities,  and  government
agencies) has prior patents or printed publications which
the patentee or member of the public desires to have made of
record in the patent file, patentee or such member of the
public may file a citation of such prior art with the Patent
and  Trademark  Office  pursuant  to  37  CFR  1.501.  Such
citations and papers will be entered without comment by the
Office. The Office does not of course consider the citation
and papers but merely places them of record in the patent
file. Information which may be filed under 37 CFR 1.501 is
limited to prior art patents and printed publications. Any

citations which include items other than patents and printed
publications will not be entered in the patent file. See
MPEP § 2202 through § 2206.

  BY REEXAMINATION

 Where any person, including patentee, has prior art patents
and/or printed publications which said person desires to
have the Patent and Trademark Office consider after a patent
has issued, such person may file a Request for Reexamination
of the patent (see 37 CFR 1.510 and MPEP § 2209 through §
2220).

2004  Aids to Compliance With Duty of Disclosure [R - 2]

 While it is not appropriate to attempt to set forth
procedures by which attorneys, agents, and other individuals
may ensure compliance with the duty of disclosure, the items
listed below are offered as examples of possible procedures
which could help avoid problems with the duty of disclosure.
Though compliance with these procedures may not be required,
they are presented as helpful suggestions for avoiding duty
of disclosure problems.

  1.  Many attorneys, both corporate and private, are
using letters and questionnaires for applicants and others
involved with the filing and prosecution of the application
and checklists for themselves and applicants to ensure
compliance with the duty of disclosure. The letter generally
explains the duty of disclosure and what it means to the
inventor and assignee. The questionnaire asks the inventor
and assignee questions about

  __ the origin of the invention and its point of
departure from what was previously known and in the prior
art,

  __ possible public uses and sales,

  __ prior publication, knowledge, patents, foreign
patents, etc.

 The checklist is used by the attorney to ensure that the
applicant has been informed of the duty of disclosure and
that the attorney has inquired of and cited material prior
art.

 The use of these types of aids would appear to be most
helpful, though not required, in identifying prior art and
may well help the attorney and the client avoid or more
easily  explain  a  potentially  embarrassing  and  harmful
"fraud" allegation.

  2.  It  is  desirable  to  ask  questions  about
inventorship. Who is the proper inventor? Are there disputes
or  possible  disputes  about  inventorship?  If  there  are
questions, call them to the attention of the Patent and
Trademark Office.

  3.  It is desirable to ask questions of the inventor
about the disclosure of the best mode. Make sure that the
best mode is described. The disclosure of the best mode may
be raised in litigation. See, for example, Carlson "The Best
Mode Disclosure Requirement in Patent Practice", Vol. 60,
Journal of the Patent Office Society, page 171 (1978).

  4.  It is desirable for an attorney or agent to make
certain that the inventor, especially a foreign inventor,
recognizes his or her responsibilities in signing the oath
or declaration. Note that 37 CFR 1.69 requires that,

 37 CFR 1.69. Foreign language oaths and declarations.

 (a)  Whenever  an  individual  making  an  oath  or
declaration  cannot  understand  English,  the  oath  or
declaration must be in a language that such individual can
understand and shall state that such individual understands
the  content  of  any  documents  to  which  the  oath  or
declaration relates.

  *****

 Note MPEP § 602.06 for a more detailed discussion.

  5.  It is desirable for an attorney or agent to
carefully evaluate and explain to the applicant and others
involved the scope of the claims, particularly the broadest
claims. Ask specific questions about possible prior art
which might be material in reference to the broadest claim
or claims. There is some tendency to mistakenly evaluate
prior art in the light of the gist of what is regarded as
the invention or narrower interpretations of the claims,
rather than measuring the art against the broadest claim
with all of its reasonable interpretations. It is desirable
to pick out the broadest claim or claims and measure the
materiality  of  prior  art  against  a  reasonably  broad
interpretation of these claims.

  6.  It may be useful to evaluate the materiality of
prior art or other information from the viewpoint whether it
is the closest prior art or other information. This will
tend to put the prior art or other information in better
perspective. However, 37 CFR 1.56 may still require the
submission of prior art or other information which is not as
close as that of the record.

  7.  Care should be taken to see that prior art or other
information cited in a specification or in an information
disclosure statement is properly described and that the
information  is  not  incorrectly  or  incompletely
characterized. It is particularly important for an attorney
or agent to review, before filing, an application which was
prepared by someone else; e.g., a foreign application. It is
also important that an attorney or agent make sure that
foreign clients, including foreign applicants, attorneys,
and agents understand the requirements of the duty of
disclosure, and that the U.S. attorney or agent review any
information disclosure statements or citations to ensure
that compliance with 37 CFR 1.56 is present. See Gemveto
Jewelry Company, Inc.  v.  Lambert Bros., Inc. , 216 USPQ
976 (S.D. N.Y. 1982) wherein a patent was held invalid or
unenforceable because patentee's foreign counsel did not
disclose to patentee's United States counsel or to the
Office prior art cited by the Dutch Patent Office in
connection  with  the  patentee's  corresponding  Dutch
application. The Court stated, 216 USPQ at 985,

 Foreign patent attorneys representing applicants for U.S.
patents through local correspondent firms surely must be
held to the same standards of conduct which apply to their

American counterparts; a double standard of accountability
would allow foreign attorneys and their clients to escape
responsibility for fraud or inequitable conduct merely by
withholding  from  the  local  correspondent  information
unfavorable  to  patentability  and  claiming  ignorance  of
United States disclosure requirements.

  8.  Care  should  be  taken  to  see  that  inaccurate
statements or inaccurate experiments are not introduced into
the specification, either inadvertently or intentionally.
For example, stating that an experiment "was run" or "was
conducted" when in fact the experiment was not run or
conducted is a misrepresentation of the facts. No results
should be represented as actual results unless they have
actually  been  achieved.  Paper  examples  should  not  be
described using the past tense. See MPEP § 608.01(p) item D
and § 707.07(l). Also, misrepresentations can occur when
experiments which were run or conducted are inaccurately
reported  in  the  specification;  e.g.,  an  experiment  is
changed  by  leaving  out  one  or  more  ingredients.  See
Steierman  v.  Connelly , 192 USPQ 433 (* Bd. * Pat. Int.
1975); 192 USPQ 446 (* Bd. * Pat. Int. 1976).

  9.  Do not rely on the examiner of a particular
application to be aware of other applications belonging to
the same applicant or assignee. It is desirable to call such
applications to the attention of the examiner even if there
is  only  a  question  that  they  might  be  "material  to
patentability"  of  the  application  the  examiner  is
considering. It is desirable to be particularly careful that
prior art or other information in one application is cited
to the examiner in other applications to which it would be
material. Do not assume that an examiner will necessarily
remember, when examining a particular application, other
applications  which  the  examiner  is  examining,  or  has
examined. See Armour & Co.  v.  Swift & Co. , 175 USPQ 70,
79 (7th Cir. 1972);  Kangaroos U.S.A., Inc.  v.  Caldor, Inc
., 222 USPQ 703, 708, 713 - 714 (S.D. N.Y. 1984).

 While vacating the summary judgment and remanding for trial
in Kangaroos , the Court, 228 USPQ 32 (Fed. Cir. 1985)
stated at page 35 that a "lapse on the part of the examiner
does not excuse the applicant."

  10.  When in doubt, it is desirable and safest to
submit information. Even though the attorney, agent, or
applicant doesn't consider it necessarily material, someone
else may see it differently and embarrassing questions can
be avoided. The court in U.S. Industries  v.  Norton Co. ,
210 USPQ 94, 107 (N.D. N.Y. 1980) stated "In short, the
question of relevancy in close cases, should be left to the
examiner and not the applicant." See also  Labounty Mfg.,
Inc.  v.  U.S. Int'l Trade Comm. , 958 F.2d 1066, 22 USPQ 2d
1025 (Fed. Cir. 1992).

  11.  It may be desirable to submit information
about prior uses and sales even if it appears that they may
have been experimental, not involve the specifically claimed
invention, or not encompass a completed invention. Note
Hycor Corp.  v.  The Schleuter Co. , 740 F.2d 1529, 222 USPQ
553, 557 - 559 (Fed. Cir. 1984). See also  Labounty Mfg.,
Inc.  v.  U.S. Int'l Trade Comm ., 958 F.2d 1066, 22 USPQ 2d
1025 (Fed. Cir. 1992).

  12.  Submit information promptly. An applicant,

attorney, or agent who is aware of prior art or other
information and its significance should submit same early in
prosecution; e.g., before the first action by the examiner,
and not wait until after allowance. Potentially material
information discovered late in the prosecution should be
immediately submitted. That the issue fee has been paid is
no reason or excuse for failing to submit information. See
Elmwood Liquid Products, Inc. v.  Singleton Packing Corp .,
170 USPQ 398 (M.D. Fla. 1971).

  13.  It is desirable to avoid the submission of
long lists of documents if it can be avoided. Eliminate
clearly  irrelevant  and  marginally  pertinent  cumulative
information. If a long list is submitted, highlight those
documents  which  have  been  specifically  brought  to
applicant's  attention  and/or  are  known  to  be  of  most
significance. Note Penn Yan Boats, Inc.  v.  Sea Lark Boats,
Inc ., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972),
aff'd, 479 F.2d. 1338, 178 USPQ 577 (5th Cir. 1973), cert.
denied 414 U.S. 874 (1974).

  14. Watch  out  for  continuation  -  in  -  part
applications  where  intervening  material  information  or
documents may exist; particularly watch out for foreign
patents and publications related to the parent application
and dated more than 1 year before the filing date of the
CIP. These and other intervening documents may be material
information: In re Ruscetta , 118 USPQ 101, 104 (C.C.P.A.
1958);  In re von Lagenhoven , 458 F.2d. 132, 173 USPQ 426
(C.C.P.A.  1972);  Chromalloy  American  Corp.  v.  Alloy
Surfaces Co. , Inc., 339 F. Supp. 859, 173 USPQ 295 (D. Del.
1972).

  15.  Watch out for information that might be deemed
to be prior art under Section 102(f) and (g).

 Prior *>art< under 35 U.S.C. 102(f) may be combined with 35
U.S.C. 103; see Corning Glass Works v. Schuyler , 169 USPQ
193 (D.D.C. 1971), aff'd in  Corning Glass Works  v.
Brenner , 175 USPQ 516, (D.C. Cir. 1975) where the District
Court adopted defendant's post trial memorandum on 35 U.S.C.
102(f) and 103;  Halliburton  v  . Dow Chemical , 182 USPQ
178, 186 (N.D.Okla. 1974);  Dale Electronics  v.  R.C.L.
Electronics , 180 USPQ 225 (1st Cir. 1973) and,  Ex parte
Andresen , 212 USPQ 100 (Bd. App. 1981).

 Note also that prior invention under 35 U.S.C. 102(g), may
be combined with 35 U.S.C. 103, such as in In re Bass , 474
F.2d 1276, 177 USPQ 178 (C.C.P.A. 1973).

 Note 35 U.S.C. 103>(c)<** disqualifies 35 U.S.C. 102(f) /
103 or 102(g) / 103 prior art which was, at the time the
second invention was made, owned by or subject to an
obligation of assignment to, the person who owned the first
invention*>.< See 1050 O.G. 316.

  16.  Watch out for information picked up by the
inventors and others at conventions, plant visits, in -
house reviews, etc.; see, for example, Dale Electronics,
Inc.  v.  R.C.L. Electronics ,  Inc. , 180 USPQ 225, 228
(1st Cir. 1973).

  17.  Make sure that all of the individuals who are
subject to the duty of disclosure, such as spelled out in 37
CFR 1.56 are informed of and fulfill their duty.

 18. Finally, if information was specifically considered and
discarded as not material, this fact might be recorded in an
attorney's file or applicant's file, including the reason
for discarding it. If judgment might have been bad or
something might have been overlooked inadvertently, a note
made at the time of evaluation might be an invaluable aid in
explaining that the mistake was honest and excusable. Though
such records are not required, they could be helpful in
recalling and explaining actions in the event of a question
of "fraud" or "inequitable conduct" raised at a later time.

2010  Office Handling of Duty of Disclosure/ Inequitable
Conduct Issues

 Determination of inequitable conduct issues requires an
evaluation of the intent of the party involved. While some
court decisions have held that intent may be inferred in
some circumstances, consideration of the good faith of the
party, or lack thereof, is often required. In several court
decisions, a high level of proof of intent to mislead the
Office was required in order to prove inequitable conduct
under 37 CFR 1.56. See In re Harito , 847 F.2d 801.6 USPQ 2D
1930 (Fed. Cir. 1988) and  FMC Corp . v.  Manitowoc Co. Inc
., 835 F.2d 1411, 5 USPQ 2d 1112 (Fed. Cir. 1988). The
Office is not the best forum in which to determine whether
there was an "intent to mislead", such intent is best
determined when the trier of facts can observe demeanor of
witnesses subjected to cross - examination. A court, with
subpoena power, is presently the best forum to consider duty
of disclosure issues under the present evidentiary standard
for finding an "intent to mislead". The court proceeding
involves two participating adverse parties. This is not the
case in the Office, since even "protesting" parties are not
permitted to participate under the Rules. Also, it is the
courts and not the Office that are in the best position to
fashion an equitable remedy to fit the precise facts in
those  cases  where  inequitable  conduct  is  established.
Furthermore, inequitable conduct is not set by statute as a
criteria  for  patentability  but  rather  is  a  judicial
application of the doctrine of unclean hands which is
appropriate to be handled by the courts rather than by an
administrative body. Because of the lack of tools in the
Office to deal with this issue and because of its sensitive
nature  and  potential  impact  on  a  patent,  Office
determinations  generally  will  not  deter  subsequent
litigation of the same issue in the courts on appeal or in
separate  litigation.  Office  determinations  would
significantly add to the expense and time involved in
obtaining a patent with little or no benefit to the patent
owner or any other parties with an interest.

 Accordingly, the Office does not investigate and reject
original  or  reissue  applications  under  37  CFR  1.56.
Likewise,  the  Office  will  not  comment  upon  duty  of
disclosure issues which are brought to the attention of the
Office in original or reissue applications except to note in
the application, in appropriate circumstances, that such
issues are no longer considered by the Office during its
examination of patent applications. Examination of lack of
deceptive intent in reissue applications will continue but
without any investigation of inequitable conduct issues.
Applicant's statement of lack of deceptive intent normally
will  be  accepted  as  dispositive  except  in  special
circumstances such as an admission or judicial determination

of fraud or inequitable conduct. See MPEP § 2022.5.

2012  Reissue Applications Involving Issues of Fraud,
Inequitable Conduct, and/or Violation of Duty of Disclosure

 Questions of "fraud," "inequitable Conduct," or violation
of "duty of disclosure" or "candor and good faith" can arise
in reissue applications.

  REQUIREMENT FOR "ERROR WITHOUT ANY DECEPTIVE INTENTION"

 Both 35 U.S.C. 251 and 37 CFR 1.175 promulgated pursuant
thereto require that the error must have arisen "without any
deceptive intention." In re Heany , 1911 C.D. 138, 180,
unequivocally states

 "Where such a condition [fraudulent or deceptive intention]
is shown to exist the right to reissue is forfeited. "

 Similarly, the court in In re Clark , 187 USPQ 209, 213
(C.C.P.A. 1975) indicated,

 "Reissue is not available to rescue a patentee who had
presented claims limited to avoid particular prior art and
then had failed to disclose that prior art . . after that
failure to disclose has resulted in invalidating of the
claims."

 It is clear that "fraud" cannot be purged through the
reissue process. See conclusions of Law 89 and 91 in
Intermountain  Research  and  Engineering  Co.,  Inc.  v.
Hercules Inc. , 171 USPQ 577, 631, 632 (C.D. Cal. 1971).

 Clearly, where several patents or applications stem from an
original  application  which  contained  fraudulent  claims
ultimately allowed, the doctrine of unclean hands bars
allowance or enforcement of any of the claims of any of the
applications or patents: Keystone, Driller Co.  v.  General
Excavator Co. , 290 U.S. 240, 245, 19 USPQ 228, 230 (1933);
East Chicago Machine Tool Corp.  v.  Stone Container Corp. ,
181 USPQ 744, 748 (N.D. Ill., 1974), modified, 185 USPQ 210.
See also  Chromalloy American Corp.  v.  Alloy Surfaces,
Inc. , 173 USPQ 295 (D.Del. 1972) and  Strong v. General
Electric Co. , 162 USPQ 141 (N.D. Ga. 1969), aff'd, 168 USPQ
8  (5th  Cir.  1970)  where  fraud  of  inequitable  conduct
affecting only certain claims or only one of related patents
was held to affect the other claims or patent. Clearly,
"fraud" practiced or attempted in an application which
issues as a patent is "fraud" practiced or attempted in
connection with any subsequent application to reissue that
patent.  The  reissue  application  and  the  patent  are
inseparable as far as questions of "fraud," "inequitable
conduct," or "violation of the duty of disclosure" are
concerned. See  In re Heany, supra; and Norton  v.  Curtiss
, 433 F.2d 779, 167 USPQ 532, 543 (C.C.P.A. 1970), wherein
the Court stated,

 "We take this to indicate that any conduct which will
prevent the enforcement of a patent after the patent issues
should, if discovered earlier, prevent the issuance of the
patent."

 Clearly, if a reissue patent would not be enforceable after
its issue because of "fraud", "inequitable conduct" or
"violation of the duty of disclosure" during the prosecution

of the patent sought to be reissued, the reissue patent
application should not issue. Under such circumstances, an
appropriate remedy would be to reject the claims in the
application in accordance with 35 U.S.C. 251, see MPEP §
2022.05 and Chapter 1400.

2012.01 Collateral Estoppel

 The Supreme Court in Blonder - Tongue Laboratories, Inc.
v.  University of Illinois Foundation 402 U.S. 313, 169 USPQ
513 (1971) set forth the rule that once a patent has been
declared invalid via judicial inquiry, a collateral estoppel
barrier is created against further litigation involving the
patent, unless the patentee - plaintiff can demonstrate
"that he did not have" a full and fair chance to litigate
the validity of his patent in "the earlier case." See also
Ex parte Varga , 189 USPQ 209 (Bd. App. 1973). As stated in
Kaiser Industries Corp.  v.  Jones & Laughlin Steel Corp .,
185 USPQ 343, 362 (3rd Cir. 1975),

 "In fashioning the rule of Blonder - Tongue, Justice White
for a unanimous Court made it clear that a determination of
patent invalidity, after a thorough and equitable judicial
inquiry, creates a collateral estoppel barrier to further
litigation to enforce that patent."

 Under 35 U.S.C. 251, the Commissioner can reissue a patent
only if there is "error without any deceptive intention."
The Commissioner is without authority to reissue a patent
when "deceptive intention" was present during prosecution of
the parent application: In re Clark , 187 USPQ 209 (C.C.P.A.
1975), and  In re Heany , 1911 C.D. 138, 180. Thus, the
collateral estoppel barrier applies where reissue is sought
of a patent which has been held invalid or unenforceable for
"fraud" or "violation of duty of disclosure" in procuring of
said patent. It was held in  In re Kahn , 202 USPQ 772, 773
(Comr. Pats. 1979):

 "Therefore, since the Kahn patent was held invalid, inter
alia, for "failure to disclose material facts of which * * *
[Kahn] was aware" this application may be stricken under 37
CFR 1.56 via the doctrine of collateral estoppel as set
forth in Blonder - Tongue supra."

  *****

 "The Patent and Trademark Office . . has found no clear
justification for not adhering to the doctrine of collateral
estoppel under

 Blonder - Tongue in this case. Applicant has had his day in
court. He appears to have had a full and fair chance to
litigate the validity of his patent."

 Note MPEP § 2259 for collateral estoppel in reexamination
proceedings.

 37 CFR 1.291 permits protests by the public against pending
applications.

2013  Protests Involving Issues of Fraud, Inequitable
Conduct, and/or Violation of Duty of Disclosure

 37 CFR 1.291 permits protests by the public against pending
applications.

 Submissions under 37 CFR 1.291 are not limited to prior art
documents such as patents and publications, but are intended
to  include  any  information,  which  in  the  protestor's
opinion, would make or have made the grant of the patent
improper: see MPEP § 1901.02. This includes, of course,
information  indicating  the  presence  of  "fraud"  or
"inequitable  conduct"  or  "violation  of  the  duty  of
disclosure", which will be entered in the application file,
generally without comment, see MPEP § 1901.06.

 Protests should be in conformance with 37 CFR 1.291(a) and
(b), and include a statement of the alleged facts involved,
the  point  or  points  to  be  reviewed,  and  the  action
requested.  Any  briefs  or  memoranda  in  support  of  the
petition, and any affidavits, declarations, depositions,
exhibits, or other material in support of the alleged facts,
should accompany the protest.

2014  Duty of Disclosure in Reexamination Proceedings

 As provided in 37 CFR 1.555, the duty of disclosure in
reexamination proceedings applies to the patent owner. That
duty is a continuing obligation on the part of the patent
owner  throughout  the  proceedings.  However,  issues  of
"fraud," " inequitable conduct," or "violation of duty of
disclosure" are not considered in reexamination. See MPEP §
2280. If questions of "fraud" or "inequitable conduct" or
"violation of the duty of disclosure" are discovered during
reexamination proceedings, the existence of such questions
will be noted by the examiner in an Office action, in which
case  the  patent  owner  may  desire  to  consider  the
advisability of filing a reissue application to have such
questions considered and resolved. See MPEP § 2258.

 For the patent owner's duty to disclose prior or concurrent
proceedings in which the patent is or was involved, see MPEP
§ 2282 and § 2001.06(c).

2016  Fraud, Inequitable Conduct, or Violation of Duty of
Disclosure Affects All Claims

 A finding of "fraud," " inequitable conduct," or violation
of duty of disclosure with respect to any claim in an
application  or  patent,  renders  all  the  claims  thereof
unpatentable or invalid: Chromalloy American Corp.  v.
Alloy Surfaces Inc. , 173 USPQ 295 (N. Del. 1972) and
Strong  v.  General Electric Co. , 162 USPQ 141 (N. D. Ga.
1969), aff'd, 168 USPQ 8 (5th Cir. 1970). In  J. P. Stevens
& Co.,  v.  Lex Tex Ltd., Inc. , 223 USPQ 1089, 1093 - 1094
(Fed. Cir. 1984), the court stated,

 "Once a court concludes that inequitable conduct occurred,
all the claims __ not just the particular claims in which
the inequitable conduct is directly connected  __ are
unenforceable. See  generally , cases collected in 4 Chisum,
PATENTS, paragraph 19.03[6] at 19 - 85 n. 10 (1984).
Inequitable conduct "goes to the patent right as a whole,
independently of particular claims".  In re Clark,522 F.2d
623, 187 USPQ 209, 212 (CCPA)."

 The Court noted in Stevens that while in

 "In re Multiple Litigation Involving Frost Patent," 540
F.2d 601, 611, 191 USPQ 241, 249 (3rd. Cir. 1976), some

claims were upheld despite nondisclosure with respect to
others. The case is not precedent in this court."

 As stated in Gemveto Jewelry Co. v.  Lambert Bros., Inc. ,
542 F. Supp. 933, 216 USPQ 976, 984 (S. D. N. Y. 1984)

 "The gravement of the fraud defense is that the patentee
has failed to discharge his duty of dealing with the
examiner in a manner free from the taint of "fraud or other
inequitable conduct". If such conduct is established in
connection with the prosecution of a patent, the fact that
the lack of candor did not directly affect all the claims in
the patent has never been the governing principle. It is the
inequitable conduct that generates the unenforceability of
the patent and we cannot think of cases where a patentee
partially escaped the consequences of his wrongful acts by
arguing  that  he  only  committed  acts  of  omission  or
commission with respect to a limited number of claims. It is
an all or nothing proposition." [Emphasis in original.]

2022.05 Determination of "Error Without Any Deceptive
Intention"

 If the application is a reissue application, the action by
the examiner may extend to a determination as to whether the
"error" required by 35 U.S.C. 251 has been alleged and
shown.  Further,  the  examiner  should  determine  whether
applicant has averred in the reissue oath or declaration, as
required by 37 CFR 1.175(a)(6), that said "errors" arose
"without any deceptive intention." However, the examiner
should not normally comment or question as to whether in
fact the averred statement as to lack of deceptive intention
appears correct or true. See MPEP § 1414.04 and § 1444.

  - -- - --

  Chapter 2100 Patentability

  2105  Patentable Subject Matter - Living Subject Matter
  2106  Patentable Subject Matter - Computer - Related
  Inventions
  2106.01  Computer Programming and 35 U.S.C. 112, First
  Paragraph
  2106.02  Disclosure in Computer Programming Cases
  2107  General Principles Governing Utility Rejections
  2107.01 Procedural Considerations Related to
  Rejections for Lack of Utility
  2107.02  Special Considerations for Asserted
  Therapeutic or Pharmacological Utilities
  2111  Claim Interpretation; Broadest Reasonable
  Interpretation
  2111.01  Plain Meaning
  2111.02  Weight of Preamble
  2111.03  Transitional Phrases
  2112  Requirements of Rejection Based on Inherency;
  Burden of Proof
  2112.01  Composition, Product, and Apparatus Claims
  2112.02  Process Claims
  2113  Product by Process Claims
  2114  Apparatus and Article Claims - Functional Language
  2115  Material or Article Worked Upon by Apparatus
  2116  Material Manipulated in Process
  2116.01  Novel, Unobvious Starting Material or End
  Product

  2121  Prior Art; General Level of Operability Required to
  Make a Prima Facie Case
  2121.01  Use of Prior Art in Rejections Where
  Operability Is in Question
  2121.02  Compounds and Compositions - What Constitutes
  Enabling Prior Art
  2121.03  Plant Genetics - What Constitutes Enabling
  Prior Art
  2121.04  Apparatus and Articles - What Constitutes
  Enabling Prior Art
  2122  Discussion of Utility in the Prior Art
  2123  Rejection Over Prior Art's Broad Disclosure Instead
  of Preferred Embodiments
  2124  Exception to the Rule That the Critical Reference
  Date Must Precede the Filing Date
  2125  Drawings as Prior Art
  2126  Availability of a Document as a "Patent" for
  Purposes of Rejection Under 35 U.S.C. 102(a), (b), and
  (d)
  2126.01  Date of Availability of a Patent as a
  Reference
  2126.02  Scope of Reference's Disclosure Which Can Be
  Used to Reject Claims When the Reference Is a "Patent"
  but Not a "Publication"
  2127  Domestic and Foreign Patent Applications as Prior
  Art
  2128  "Printed Publications" as Prior Art
  2128.01  Level of Public Accessibility Required
  2128.02  Date Publication Is Available as a Reference
  2129  Admissions as Prior Art
  2131  Anticipation - Application of 35 U.S.C. 102(a),
  (b), and (e)
  2131.01  Multiple Reference 35 U.S.C. 102 Rejections
  2131.02  Genus - Species Situations
  2131.03  Anticipation of Ranges
  2131.04  Secondary Considerations
  2131.05  Nonanalogous Art
  2132  35 U.S.C. 102(a)
  2132.01  Publications as 35 U.S.C. 102(a) Prior Art
  2133  35 U.S.C. 102(b)
  2133.01  Rejections of Continuation - In - Part (CIP)
  Applications
  2133.02  Rejections Based on Publications and Patents
  2133.03  Rejections Based on "Public Use" or "On Sale"
  2133.03(a)  "Public Use"
  2133.03(b)  "On Sale"
  2133.03(c)  The "Invention"
  2133.03(d)  "In This Country"
  2133.03(e)  Permitted Activity; Experimental Use
  2133.03(e)(1)  Commercial Exploitation
  2133.03(e)(2)  Intent
  2133.03(e)(3)  "Completeness" of the Invention
  2133.03(e)(4)  Factors Indicative of an Experimental
  Purpose
  2133.03(e)(5)  Experimentation and Degree of Supervision
  and Control
  2133.03(e)(6)  Permitted Experimental Activity and Testing
  2133.03(e)(7)  Activity of an Independent Third Party
  Inventor
  2134  35 U.S.C. 102(c)
  2135  35 U.S.C. 102(d)
  2135.01  The Four Requirements of 35 U.S.C. 102(d)
  2136  35 U.S.C. 102(e)
  2136.01  Status of U.S. Patent as a Reference Before
  and After Issuance

  2136.02  Content of the Prior Art Available Against the
  Claims
  2136.03  Critical Reference Date
  2136.04  Different Inventive Entity; Meaning of "By
  Another"
  2136.05  Overcoming a Rejection Under 35 U.S.C. 102(e)
  2137  35 U.S.C. 102(f)
  2137.01  Inventorship
  2137.02  Applicability of 35 U.S.C. 103(c)
  2138  35 U.S.C. 102(g)
  2138.01  Interference Practice
  2138.02  "The Invention Was Made in This Country"
  2138.03  "By Another Who Has Not Abandoned, Suppressed,
  or Concealed It"
  2138.04  "Conception"
  2138.05  "Reduction to Practice"
  2138.06  "Reasonable Diligence"
  2141  35 U.S.C. 103; The Graham Factual Inquiries
  2141.01  Scope and Content of the Prior Art
  2141.01(a)  Analogous and Nonanalogous Art
  2141.02  Differences Between Prior Art and Claimed
  Invention
  2141.03  Level of Ordinary Skill in the Art
  2142  Legal Concept of Prima Facie Obviousness
  2143  Basic Requirements of a Prima Facie Case of
  Obviousness
  2143.01  Suggestion or Motivation to Modify the
  References
  2143.02  Reasonable Expectation of Success Is Required
  2143.03  All Claim Limitations Must Be Taught or
  Suggested
  2144  Sources of Rationale Supporting a Rejection Under
  35 U.S.C. 103
  2144.01  Implicit Disclosure
  2144.02  Reliance on Scientific Theory
  2144.03  Reliance on Common Knowledge in the Art or
  "Well Known" Prior Art
  2144.04  Legal Precedent as Source of Supporting
  Rationale
  2144.05  Obviousness of Ranges
  2144.06  Art Recognized Equivalence for the Same
  Purpose
  2144.07  Art Recognized Suitability for an Intended
  Purpose
  2144.08  Obviousness of Species When Prior Art Teaches
  Genus
  2144.09  Close Structural Similarity Between Chemical
  Compounds (Homologs, Analogues, Isomers)
  2145  Consideration of Applicant's Rebuttal Arguments
  2146  35 U.S.C. 103(c)
  2161  Three Separate Requirements for Specification Under
  35 U.S.C. 112, First Paragraph
  2162  Policy Underlying 35 U.S.C. 112, First Paragraph
  2163  The Written Description Requirement
  2163.01  Support for Claimed Subject Matter in
  Disclosure
  2163.02  Standard for Determining Compliance With the
  Written Description Requirement
  2163.03  Typical Circumstances Where Adequate Written
  Description Issue Arises
  2163.04  Burden on the Examiner With Regard to the
  Written Description Requirement
  2163.05  Changes to the Scope of Claims
  2163.06  Relationship of Written Description
  Requirement to New Matter

  2163.07  Amendments to Application Which Are Supported
  in the Original Description
  2163.07(a)  Inherent Function, Theory, or Advantage
  2163.07(b)  Incorporation by Reference
  2164  The Enablement Requirement
  2164.01  Test of Enablement >2164.01(a)  Undue
  Experimentation Factors
  2164.01(b)  How to Make the Claimed Invention
  2164.01(c)  How to Use the Claimed Invention<
  2164.02  Working Example
  2164.03  Relationship of Predictability of the Art and
  the Enablement Requirement
  2164.04  Burden on the Examiner Under the Enablement
  Requirement
  2164.05  Determination of Enablement Based on Evidence
  as a Whole
  2164.05(a)  Specification Must Be Enabling as of the
  Filing Date 2164.05(b) Specification Must Be Enabling
  to Persons of Ordinary Skill in the Art
  2164.06  **>Quantity of Experimentation< >2164.06(a)
  Examples of Enablement Issues - Missing Information
  2164.06(b)  Examples of Enablement Issues - Chemical
  Cases<
  2164.07  Relationship of Enablement Requirement to
  Utility Requirement of 35 U.S.C. 101
  2164.08  Enablement Commensurate in Scope with Claims
  2164.08(a)  Single Means Claim
  2164.08(b)  Inoperative Subject Matter
  2164.08(c)  Critical Feature Not Claimed
  2165  The Best Mode Requirement
  2165.01  Considerations Relevant to Best Mode 2165.02
  Best Mode Requirement Compared to Enablement
  Requirement
  2165.03  Requirements for Rejection for Lack of Best
  Mode
  2165.04  Examples of Evidence of Concealment
  2171  Two Separate Requirements for Claims Under 35
  U.S.C. 112, Second Paragraph
  2172  Subject Matter Which Applicants Regard as Their
  Invention >2172.01  Unclaimed Essential Matter<
  2173  Claims Must Particularly Point Out and Distinctly
  Claim the Invention
  2173.01  Claim Terminology
  2173.02  Clarity and Precision
  2173.03  Inconsistency Between Claim and Specification
  Disclosure or Prior Art
  2173.04  Breadth Is Not Indefiniteness
  2173.05  Specific Topics Related to Issues Under 35
  U.S.C. 112, Second Paragraph
  2173.05(a)  New Terminology
  2173.05(b)  Relative Terminology
  2173.05(c)  Numerical Ranges and Amounts Limitations
  2173.05(d)  Exemplary Claim Language (for example, such
  as)
  2173.05(e)  Lack of Antecedent Basis
  2173.05(f)  Reference to Limitations in Another Claim
  2173.05(g)  Functional Limitations
  2173.05(h)  Alternative Limitations
  2173.05(i)  Negative Limitations
  2173.05(j)  Old Combination
  2173.05(k)  Aggregation
  **
  2173.05(m)  Prolix
  2173.05(n)  Multiplicity
  2173.05(o)  Double Inclusion

  2173.05(p)  Claim Directed to Product - By - Process or
  Product and Process
  2173.05(q)  "Use" Claims
  2173.05(r)  Omnibus Claim
  2173.05(s)  Reference to Figures or Tables
  2173.05(t)  Chemical Formula
  2173.05(u)  Trademarks and Trade Names in a Claim
  2173.05(v)  Mere Function of a Machine
  2173.06  Prior Art Rejection of Claim Rejected as
  Indefinite
  2174  Relationship Between the Requirements of the First
  and Second Paragraphs of 35 U.S.C. 112
  2181  Identifying a 35 U.S.C. 112, Sixth Paragraph
  Limitation
  2182  Scope of the Search and Identification of the Prior
  Art
  2183  Making a Prima Facie Case of Equivalence
  2184  Determining Whether an Applicant Has Met the Burden
  of Proving Nonequivalence After a Prima Facie Case Is
  Made
  2185  Related Issues Under 35 U.S.C. 112, First or Second
  Paragraphs
  2186  ** >Relationship To< the Doctrine of Equivalents

2105  Patentable Subject Matter - Living Subject Matter
[R - 2]

  The decision of the Supreme Court in Diamond  v.
Chakrabarty , 206 USPQ 193 (1980), held that microorganisms
produced by genetic engineering are not excluded from patent
protection by 35 U.S.C. 101. It is clear from the Supreme
Court decision and opinion that the question of whether or
not an invention embraces living matter is irrelevant to the
issue of patentability. The test set down by the Court for
patentable subject matter in this area is whether the living
matter is the result of human intervention.

  In view of this decision, the Office has issued these
guidelines as to how 35 U.S.C. 101 will be interpreted.

  The Supreme Court made the following points in the
Chakrabarty  opinion:

 1. "Guided by these cannons of construction, this
Court has read the term `manufacture' in § 101 in accordance
with its dictionary definition to mean `the production of
articles for use from raw materials prepared by giving to
these  materials  new  forms,  qualities,  properties,  or
combinations whether by hand labor or by machinery.'"

 2.  "In  choosing  such  expansive  terms  as
`manufacture' and `composition of matter,' modified by the
comprehensive `any,' Congress plainly contemplated that the
patent laws would be given wide scope."

 3.  "The Act embodied Jefferson's philosophy that
`ingenuity  should  receive  a  liberal  encouragement.  `V
Writings of Thomas Jefferson, at 75 - 76. See Graham  v  .
John Deere Co ., 383 U.S. 1, 7 - 10 (1966). Subsequent
patent statutes in 1836, 1870, and 1874 employed this same
broad  language.  In  1952,  when  the  patent  laws  were
recodified Congress replaced the word `art' with `process,'
but  otherwise  left  Jefferson's  language  intact.  The
Committee Reports accompanying the 1952 act inform us that

Congress intended statutory subject matter to `include any
thing under the sun that is made by man.' S. Rep. No. 1979,
82d Cong. 2d Sess., 5 (1952)."

 4. "This is not to suggest that § 101 has no limits
or that it embraces every discovery. The laws of nature,
physical phenomena, and abstract ideas have been held not
patentable."

 5. "Thus, a new mineral discovered in the earth or a
new plant found in the wild is not patentable subject
matter. Likewise, Einstein could not patent his celebrated
law that E=mc 2 ; nor could Newton have patented the law of
gravity."

 6. "His claim is not to a hitherto unknown natural
phenomenon, but to a non - naturally occurring manufacture
  __
or composition of matter  a product of human ingenuity
`having a distinctive name, character [and] use.'"

 7.  "Congress  thus  recognized  that  the  relevant
distinction was not between living and inanimate things, but
between products of nature, whether living or not, and human
- made inventions. Here, respondent's microorganism is the
result of human ingenuity and research."

 8. After reference to Funk Seed & Kalo Co., 333
U.S.127  (1948),  "Here,  by  contrast,  the  patentee  has
produced  a  new  bacterium  with  markedly  different
characteristics from any found in nature and one having the
potential for significant utility. His discovery is not
nature's  handiwork,  but  his  own;  accordingly  it  is
patentable subject matter under § 101."

  A review of the Court statements above as well as the
whole Chakrabarty opinion reveals:

 (1) That the Court did not limit its decision to
genetically engineered living organisms,

 (2) The Court enunciated a very broad interpretation
of "manufacture" and "composition of matter" in Section 101
(Note esp. quotes 1, 2, and 3 above),

 (3) The Court set forth several tests for weighing
whether patentable subject matter under Section 101 is
present stating (in Quote 7 above) that:

  "The relevant distinction was not between living and
inanimate things but between products of nature, whether
living or not, and human - made inventions."

  The tests set forth by the Court are (note especially
the italicized portions):

  - "The laws of nature, physical phenomena and abstract
ideas" are not patentable subject matter.

  -  "A  non  -  naturally  occurring  manufacture  or
composition of matter - a product of human ingenuity -having
a distinctive name, character, [and] use" is patentable
subject matter.

  - "A new mineral discovered in the earth or a new plant

found  in  the  wild  is  not  patentable  subject  matter.
Likewise, Einstein could not patent his celebrated E=mc 2 ;
nor could  Newton have patented the law of gravity. Such
discoveries are `manifestations of . . nature, free to all
men and reserved exclusively to none.' "

  - "However, the production of articles for use from raw
materials prepared by giving to these materials new forms,
qualities, properties, or combinations whether by hand,
labor or machinery(emphasis added) is a manufacture under
Section 101."

  In analyzing the history of the Plant Patent Act of
1930, the Court stated: "In enacting the Plant Patent Act,
Congress addressed both of these concerns [the belief that
plants, even those artificially bred, were products of
nature for purposes of the patent law . . were thought not
amenable to the written description]. It explained at length
its belief that the work of the plant breeder `in aid of
nature' was patentable invention. S. Rep. No. 315, 71st
Cong. 2d Sess. 6 - 8 (1930); H.R. Rep. No. 1129. 71st Cong.
2d Sess. 7 - 9 (1930)."

  The Office will decide the questions as to patentable
subject matter under 35 U.S.C. 101 on a case - by - case
basis following the tests set forth in Chakrabarty ; e.g.,
that "a non - naturally occurring manufacture or composition
of matter" is patentable, etc. It is inappropriate to try to
attempt to set forth here in advance the exact parameters to
be followed.

  The standard of patentability has not and will not be
lowered. The requirements of 35 U.S.C. 102 and 103 still
apply. The tests outlined above simply mean that a rational
basis will be present for any 35 U.S.C. 101 determination.
In addition, the requirements of 35 U.S.C. 112 must also be
met. In this regard, see MPEP § 608.01(p).

  Following this analysis by the Supreme Court of the
scope of 35 U.S.C. 101, the Board of Patent Appeals and
Interferences has determined that plant subject matter or an
animal may be protected under 35 U.S.C. 101. In Ex Parte
Hibberd , 227 USPQ 443 (**>Bd. Pat. App. & Inter.< 1985) the
Board held that plant subject matter may be the proper
subject of a patent under 35 U.S.C. 101 even though such
subject matter may be protected under the Plant Patent Act
(35 U.S.C. 161 - 164) or the Plant Variety Protection Act (7
U.S.C. 2321 et seq.). In  Ex Parte Allen , 2 USPQ2d 1425
(**>Bd. Pat. App. & Inter.< 1987), the Board decided that a
polyploid Pacific coast oyster could have been the proper
subject of a patent under 35 U.S.C. 101 if all the criteria
for patentability were satisfied. Shortly after the  Allen
decision, the Commissioner of Patents and Trademarks issued
a notice (Animals - Patentability, 1077 O.G. 24, April 21,
1987)  that  the  Patent  and  Trademark  Office  would  now
consider  nonnaturally  occurring,  nonhuman  multicellular
living  organisms,  including  animals,  to  be  patentable
subject matter within the scope of 35 U.S.C. 101.

  >If  the  broadest  reasonable  interpretation  of  the
claimed invention as a whole encompasses a human being, then
a rejection under 35 U.S.C. 101 must be made indicating that
the claimed invention is directed to nonstatutory subject
matter. Furthermore, the claimed invention must be examined
with regard to all issues pertinent to patentability, and

any applicable rejections under 35 U.S.C. 102, 103, or 112
must also be made.<

2106  Patentable Subject Matter - **>Computer - Related
Inventions< [R - 2]

 **

 >I.  Introduction

  These Examination Guidelines for Computer - Related
Inventions ("Guidelines") are to assist Office personnel in
the examination of applications drawn to computer - related
inventions.  "Computer  -  related  inventions"  include
inventions  implemented  in  a  computer  and  inventions
employing computer - readable media. The Guidelines are
based on the Office's current understanding of the law and
are believed to be fully consistent with binding precedent
of the Supreme Court, the Federal Circuit and the Federal
Circuit's predecessor courts.

  These  Guidelines  do  not  constitute  substantive
rulemaking and hence do not have the force and effect of
law. These Guidelines have been designed to assist Office
personnel in analyzing claimed subject matter for compliance
with substantive law. Rejections will be based upon the
substantive  law  and  it  is  these  rejections  which  are
appealable. Consequently, any failure by Office personnel to
follow  the  Guidelines  is  neither  appealable  nor
petitionable.

  The Guidelines alter the procedures Office personnel
will follow when examining applications drawn to computer -
related inventions and are equally applicable to claimed
inventions implemented in either hardware or software. The
Guidelines also clarify the Office's position on certain
patentability standards related to this field of technology.
Office personnel are to rely on these Guidelines in the
event of any inconsistent treatment of issues between these
Guidelines  and  any  earlier  provided  guidance  from  the
Office.

  The Freeman - Walter - Abele test ( In re Abele , 684
F.2d 902, 905 - 07, 214 USPQ 682, 685 - 87 (CCPA 1982);  In
re Walter , 618 F.2d 758, 767, 205 USPQ 397, 406 - 07 (CCPA
1980);  In re Freeman , 573 F.2d 1237, 1245, 197 USPQ 464,
471  (CCPA  1978))  may  additionally  be  relied  upon  in
analyzing claims directed solely to a process for solving a
mathematical algorithm.

  Office  personnel  have  had  difficulty  in  properly
treating claims directed to methods of doing business.
Claims  should  not  be  categorized  as  methods  of  doing
business. Instead, such claims should be treated like any
other process claims, pursuant to these Guidelines when
relevant. See, e.g., In re Toma , 575 F.2d 872, 877 - 78,
197 USPQ 852, 857 (CCPA 1978);  In re Musgrave , 431 F.2d
882, 893, 167 USPQ 280, 289 - 90 (CCPA 1970). See also  In
re Schrader , 22 F.3d 290, 297 - 98, 30 USPQ2d 1455, 1461 -
62 (Fed. Cir. 1994) (Newman, J., dissenting);  Paine,
Webber, Jackson & Curtis, Inc. v.  Merrill Lynch,  Pierce,
Fenner & Smith, Inc.,564 F. Supp. 1358, 1368 - 69, 218 USPQ
212, 220 (D. Del. 1983).

  The appendix which appears at the end of this section

includes a flow chart of the process Office personnel will
follow in conducting examinations for computer - related
inventions.

 II.  Determine  What  Applicant  Has  Invented  and  Is
Seeking to Patent

  It is essential that patent applicants obtain a prompt
yet complete examination of their applications. Under the
principles of compact prosecution, each claim should be
reviewed for compliance with every statutory requirement for
patentability in the initial review of the application, even
if one or more claims are found to be deficient with respect
to some statutory requirement. Thus, Office personnel should
state all reasons and bases for rejecting claims in the
first  Office  action.  Deficiencies  should  be  explained
clearly, particularly when they serve as a basis for a
rejection. Whenever practicable, Office personnel should
indicate how rejections may be overcome and how problems may
be resolved. A failure to follow this approach can lead to
unnecessary delays in the prosecution of the application.

  Prior to focusing on specific statutory requirements,
Office personnel must begin examination by determining what,
precisely, the applicant has invented and is seeking to
patent, and how the claims relate to and define that
invention. (As the courts have repeatedly reminded the
Office: "The goal is to answer the question " `What did
applicants invent?' " Abele , 684 F.2d at 907, 214 USPQ at
687. Accord, e.g.,  Arrhythmia Research Tech. v.  Corazonix
Corp ., 958 F.2d 1053, 1059, 22 USPQ2d 1033, 1038 (Fed. Cir.
1992).) Consequently, Office personnel will no longer begin
examination  by  determining  if  a  claim  recites  a
"mathematical  algorithm."  Rather,  they  will  review  the
complete specification, including the detailed description
of the invention, any specific embodiments that have been
disclosed, the claims and any specific utilities that have
been asserted for the invention.

 A.  Identify and Understand Any Practical Application
Asserted for the Invention

  The subject matter sought to be patented must be a
"useful" process, machine, manufacture, or composition of
matter; i.e., it must have a practical application. The
purpose of this requirement is to limit patent protection to
inventions that possess a certain level of "real world"
value, as opposed to subject matter that represents nothing
more than an idea or concept, or is simply a starting point
for future investigation or research ( Brenner v.  Manson ,
383 U.S. 519, 528 - 36, 148 USPQ 689, 693 - 96 (1966);  In
re Ziegler , 992 F.2d 1197, 1200 - 03, 26 USPQ2d 1600, 1603
- 06 (Fed. Cir. 1993)). Accordingly, a complete disclosure
should contain some indication of the practical application
for the claimed invention; i.e., why the applicant believes
the claimed invention is useful.

  The  utility  of  an  invention  must  be  within  the
"technological" arts. See, e.g., Musgrave , 431 F.2d at 893,
167 USPQ at 289 - 90, cited with approval in  Schrader , 22
F.3d at 297, 30 USPQ2d at 1461 (Newman, J., dissenting).
(The definition of "technology" is the "application of
science and engineering to the development of machines and
procedures in order to enhance or improve human conditions,
or at least to improve human efficiency in some respect."

Computer Dictionary 384 (Microsoft Press, 2d ed. 1994).) A
computer - related invention is within the technological
arts. A practical application of a computer - related
invention is statutory subject matter. This requirement can
be discerned from the variously phrased prohibitions against
the patenting of abstract ideas, laws of nature or natural
phenomena. An invention that has a practical application in
the technological arts satisfies the utility requirement.
See, e.g.,  In re Alappat , 33 F.3d 1526, 1543, 31 USPQ2d
1545, 1556 - 57 (Fed. Cir. 1994) (in banc) (quoting  Diamond
v.  Diehr , 450 U.S. 175, 192, 209 USPQ 1, 10 (1981)). See
also  Alappat at 1569, 31 USPQ2d at 1578 - 79 (Newman, J.,
concurring) ("unpatentability of the principle does not
defeat patentability of its practical applications") (citing
O'Reilly v.  Morse , 56 U.S. (15 How.) 62, 114 - 19 (1854));
Arrhythmia , 958 F.2d at 1056, 22 USPQ2d at 1036;  Musgrave
, 431 F.2d at 893, 167 USPQ at 289 - 90 ("All that is
necessary, in our view, to make a sequence of operational
steps a statutory `process' within 35 U.S.C. 101 is that it
be in the technological arts so as to be in consonance with
the  Constitutional  purpose  to  promote  the  progress  of
`useful arts.' Const. Art. 1, sec. 8.").

  The applicant is in the best position to explain why an
invention  is  believed  useful.  Office  personnel  should
therefore focus their efforts on pointing out statements
made  in  the  specification  that  identify  all  practical
applications for the invention. Office personnel should rely
on such statements throughout the examination when assessing
the invention for compliance with all statutory criteria. An
applicant may assert more than one practical application,
but  only  one  is  necessary  to  satisfy  the  utility
requirement.  Office  personnel  should  review  the  entire
disclosure to determine the features necessary to accomplish
at least one asserted practical application.

 B.  Review  the  Detailed  Disclosure  and  Specific
Embodiments of the Invention to Determine What the Applicant
Has Invented

  The  written  description  will  provide  the  clearest
explanation of the applicant's invention, by exemplifying
the invention, explaining how it relates to the prior art
and explaining the relative significance of various features
of the invention. Accordingly, Office personnel should begin
their evaluation of a computer - related invention as
follows:

  -  determine what the programmed computer does when it
performs the processes dictated by the software (i.e., the
functionality of the programmed computer) ( Arrhythmia , 958
F.2d at 1057, 22 USPQ at 1036, "It is of course true that a
modern digital computer manipulates data, usually in binary
form,  by  performing  mathematical  operations,  such  as
addition,  subtraction,  multiplication,  division,  or  bit
shifting, on the data. But this is only how the computer
does what it does. Of importance is the significance of the
data and their manipulation in the real world, i.e., what
the computer is doing.");

  -  determine how the computer is to be configured to
provide that functionality (i.e., what elements constitute
the  programmed  computer  and  how  those  elements  are
configured  and  interrelated  to  provide  the  specified
functionality); and

  -  if applicable, determine the relationship of the
programmed computer to other subject matter outside the
computer that constitutes the invention (e.g., machines,
devices, materials, or process steps other than those that
are part of or performed by the programmed computer). (Many
computer - related inventions do not consist solely of a
computer.  Thus,  Office  personnel  should  identify  those
claimed elements of the computer - related invention that
are not part of the programmed computer, and determine how
those elements relate to the programmed computer. Office
personnel should look for specific information that explains
the role of the programmed computer in the overall process
or  machine  and  how  the  programmed  computer  is  to  be
integrated with the other elements of the apparatus or used
in the process.)

  Patent applicants can assist the Office by preparing
applications that clearly set forth these aspects of a
computer - related invention.

 C.  Review the Claims

  The claims define the property rights provided by a
patent, and thus require careful scrutiny. The goal of claim
analysis is to identify the boundaries of the protection
sought by the applicant and to understand how the claims
relate to and define what the applicant has indicated is the
invention. Office personnel must thoroughly analyze the
language of a claim before determining if the claim complies
with each statutory requirement for patentability.

  Office  personnel  should  begin  claim  analysis  by
identifying  and  evaluating  each  claim  limitation.  For
processes, the claim limitations will define steps or acts
to be performed. For products, the claim limitations will
define discrete physical structures. Product claims are
claims that are directed to either machines, manufactures or
compositions of matter. The discrete physical structures may
be comprised of hardware or a combination of hardware and
software.

  Office personnel are to correlate each claim limitation
to all portions of the disclosure that describe the claim
limitation. This is to be done in all cases; i.e., whether
or not the claimed invention is defined using means or step
plus function language. The correlation step will ensure
that  Office  personnel  correctly  interpret  each  claim
limitation.

  The subject matter of a properly construed claim is
defined by the terms that limit its scope. It is this
subject matter that must be examined. As a general matter,
the grammar and intended meaning of terms used in a claim
will dictate whether the language limits the claim scope.
Language that suggests or makes optional but does not
require steps to be performed or does not limit a claim to a
particular structure does not limit the scope of a claim or
claim limitation. (The following are examples of language
that may raise a question as to the limiting effect of the
language in a claim:

 (a) statements of intended use or field of use, (b)
"adapted  to"  or  "adapted  for"  clauses,  (c)  "wherein"
clauses, or (d) "whereby" clauses.

 This list of examples is not intended to be exhaustive.)

  Office personnel must rely on the applicant's disclosure
to properly determine the meaning of terms used in the
claims. Markman v.  Westview Instruments , 52 F.3d 967, 980,
34 USPQ2d 1321, 1330 (Fed. Cir.) (  in banc ), aff'd, **
U.S. **, 116 S. Ct. 1384 (1996). An applicant is entitled to
be his or her own lexicographer, and in many instances will
provide an explicit definition for certain terms used in the
claims. Where an explicit definition is provided by the
applicant  for  a  term,  that  definition  will  control
interpretation of the term as it is used in the claim.
Office personnel should determine if the original disclosure
provides a definition consistent with any assertions made by
applicant. See, e.g.,  In re Paulsen , 30 F.3d 1475, 1480,
31 USPQ2d 1671, 1674 (Fed. Cir. 1994) (inventor may define
specific terms used to describe invention, but must do so
"with reasonable clarity, deliberateness, and precision"
and, if done, must "'set out his uncommon definition in some
manner within the patent disclosure' so as to give one of
ordinary skill in the art notice of the change" in meaning)
(quoting  Intellicall, Inc. v.  Phonometrics, Inc. , 952
F.2d 1384, 1387 - 88, 21 USPQ2d 1383, 1386 (Fed. Cir.
1992)). If an applicant does not define a term in the
specification, that term will be given its "common meaning."
Paulsen at 1480, 31 USPQ2d at 1674.

  If the applicant asserts that a term has a meaning that
conflicts with the term's art - accepted meaning, Office
personnel should encourage the applicant to amend the claim
to better reflect what applicant intends to claim as the
invention. If the application becomes a patent, it becomes
prior art against subsequent applications. Therefore, it is
important for later search purposes to have the patentee
employ  commonly  accepted  terminology,  particularly  for
searching text - searchable databases.

  Office  personnel  must  always  remember  to  use  the
perspective of one of ordinary skill in the art. Claims and
disclosures are not to be evaluated in a vacuum. If elements
of an invention are well known in the art, the applicant
does not have to provide a disclosure that describes those
elements. In such a case the elements will be construed as
encompassing any and every art - recognized hardware or
combination  of  hardware  and  software  technique  for
implementing the defined requisite functionalities.

  Office personnel are to give claims their broadest
reasonable  interpretation  in  light  of  the  supporting
disclosure. See, e.g., In re Zletz, 893 F.2d 319, 321 - 22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989) ("During patent
examination  the  pending  claims  must  be  interpreted  as
broadly as their terms reasonably allow . . The reason
is simply that during patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth
of language explored, and clarification imposed . . An
essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in
this way can uncertainties of claim scope be removed, as
much as possible, during the administrative process.").

  Where means plus function language is used to define the
characteristics of a machine or manufacture invention, claim
limitations  must  be  interpreted  to  read  on  only  the

structures or materials disclosed in the specification and
"equivalents thereof." (Two in banc decisions of the Federal
Circuit have made clear that the Office is to interpret
means plus function language according to 35 U.S.C. 112,
sixth paragraph. In the first, In re Donaldson , 16 F.3d
1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir. 1994), the court
held:

  The plain and unambiguous meaning of paragraph six is
that one construing means - plus - function language in a
claim must look to the specification and interpret that
language in light of the corresponding structure, material,
or acts described therein, and equivalents thereof, to the
extent that the specification provides such disclosure.
Paragraph six does not state or even suggest that the PTO is
exempt from this mandate, and there is no legislative
history indicating that Congress intended that the PTO
should be. Thus, this court must accept the plain and
precise language of paragraph six.

  Consistent with Donaldson , in the second decision,  In
re Alappat , 33 F.3d at 1540, 31 USPQ2d at 1554, the Federal
Circuit held:

  Given Alappat 's disclosure, it was error for the Board
majority to interpret each of the means clauses in claim 15
so broadly as to "read on any and every means for performing
the function" recited, as it said it was doing, and then to
conclude that claim 15 is nothing more than a process claim
wherein each means clause represents a step in that process.
Contrary to suggestions by the Commissioner, this court's
precedents  do  not  support  the  Board's  view  that  the
particular apparatus claims at issue in this case may be
viewed as nothing more than process claims.)

  Disclosure may be express, implicit or inherent. Thus,
at the outset, Office personnel must attempt to correlate
claimed  means  to  elements  set  forth  in  the  written
description.  The  written  description  includes  the
specification and the drawings. Office personnel are to give
the claimed means plus function limitations their broadest
reasonable interpretation consistent with all corresponding
structures or materials described in the specification and
their equivalents. Further guidance in interpreting the
scope of equivalents is provided in MPEP § 2181 through §
2186.

  While it is appropriate to use the specification to
determine what applicant intends a term to mean, a positive
limitation from the specification cannot be read into a
claim  that  does  not  impose  that  limitation.  A  broad
interpretation of a claim by Office personnel will reduce
the  possibility  that  the  claim,  when  issued,  will  be
interpreted more broadly than is justified or intended. An
applicant can always amend a claim during prosecution to
better reflect the intended scope of the claim.

  Finally, when evaluating the scope of a claim, every
limitation in the claim must be considered. Office personnel
may not dissect a claimed invention into discrete elements
and then evaluate the elements in isolation . Instead, the
claim as a whole must be considered. See, e.g.,  Diamond v.
Diehr , 450 U.S. at 188 - 89, 209 USPQ at 9 ("In determining
the eligibility of respondents' claimed process for patent
protection under 101, their claims must be considered as a

whole. It is inappropriate to dissect the claims into old
and new elements and then to ignore the presence of the old
elements in the analysis. This is particularly true in a
process claim because a new combination of steps in a
process may be patentable even though all the constituents
of the combination were well known and in common use before
the combination was made.").

 III.  Conduct a Thorough Search of the Prior Art

  Prior to classifying the claimed invention under 35
U.S.C. 101, Office personnel are expected to conduct a
thorough search of the prior art. Generally, a thorough
search involves reviewing both U.S. and foreign patents and
nonpatent literature. In many cases, the result of such a
search will contribute to Office personnel's understanding
of the invention. Both claimed and unclaimed aspects of the
invention described in the specification should be searched
if there is a reasonable expectation that the unclaimed
aspects may be later claimed. A search must take into
account  any  structure  or  material  described  in  the
specification and its equivalents which correspond to the
claimed means plus function limitation, in accordance with
35 U.S.C. 112, sixth paragraph and MPEP § 2181 through §
2186.

 IV.  Determine Whether the Claimed Invention Complies
with 35 U.S.C. 101

 A.  Consider  the  Breadth  of  35  U.S.C.  101  Under
Controlling Law

  As the Supreme Court has held, Congress chose the
expansive language of 35 U.S.C. 101 so as to include
"anything under the sun that is made by man." Diamond v.
Chakrabarty , 447 U.S. 303, 308 - 09, 206 USPQ 193, 197
(1980). Accordingly, section 101 of title 35, United States
Code, provides:

  Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and  useful  improvement  thereof,  may  obtain  a  patent
therefor, subject to the conditions and requirements of this
title.

  (In Diamond , 477 U.S. at 308 - 309, 206 USPQ at 197, the
court stated:

  In choosing such expansive terms as "manufacture" and
"composition  of  matter,"  modified  by  the  comprehensive
"any," Congress plainly contemplated that the patent laws
would be given wide scope. The relevant legislative history
also supports a broad construction. The Patent Act of 1793,
authored by Thomas Jefferson, defined statutory subject
matter as "any new and useful art, machine, manufacture, or
composition of matter, or any new or useful improvement
[thereof]." Act of Feb. 21, 1793, 1, 1 Stat. 319. The Act
embodied  Jefferson's  philosophy  that  "ingenuity  should
receive a liberal encouragement." 5 Writings of Thomas
Jefferson 75 - 76 (Washington ed. 1871). See Graham v.  John
Deere Co.,383 U.S. 1, 7 - 10 (1966). Subsequent patent
statutes in 1836, 1870, and 1874 employed this same broad
language. In 1952, when the patent laws were recodified,
Congress  replaced  the  word  "art"  with  "process,"  but
otherwise left Jefferson's language intact. The Committee

Reports accompanying the 1952 Act inform us that Congress
intended statutory subject matter to "include anything under
the sun that is made by man." S. Rep. No. 1979, 82d Cong.,
2d Sess. 5 (1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess. 6
(1952).

  This perspective has been embraced by the Federal
Circuit:

  The plain and unambiguous meaning of 101 is that any new
and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may be
patented if it meets the requirements for patentability set
forth in Title 35, such as those found in ' 102, 103, and
112. The use of the expansive term "any" in 101 represents
Congress's intent not to place any restrictions on the
subject matter for which a patent may be obtained beyond
those specifically recited in 101 and the other parts of
Title 35 . . Thus, it is improper to read into 101
limitations as to the subject matter that may be patented
where  the  legislative  history  does  not  indicate  that
Congress clearly intended such limitations. [ Alappat , 33
F.3d at 1542, 31 USPQ2d at 1556.])

  As cast, 35 U.S.C. 101 defines four categories of
inventions  that  Congress  deemed  to  be  the  appropriate
subject matter of a patent; namely, processes, machines,
manufactures and compositions of matter. The latter three
categories define "things" while the first category defines
"actions" (i.e., inventions that consist of a series of
steps or acts to be performed). See 35 U.S.C. 100(b) ("The
term `process' means process, art, or method, and includes a
new  use  of  a  known  process,  machine,  manufacture,
composition of matter, or material.").

  Federal courts have held that 35 U.S.C. 101 does have
certain limits. First, the phrase "anything under the sun
that is made by man" is limited by the text of 35 U.S.C.
101, meaning that one may only patent something that is a
machine, manufacture, composition of matter or a process.
See, e.g., Alappat , 33 F.3d at 1542, 31 USPQ2d at 1556;  In
re  Warmerdam , 33 F.3d 1354, 1358, 31 USPQ2d 1754, 1757
(Fed. Cir. 1994). Second, 35 U.S.C. 101 requires that the
subject  matter  sought  to  be  patented  be  a  "useful"
invention. Accordingly, a complete definition of the scope
of 35 U.S.C. 101, reflecting Congressional intent, is that
any  new  and  useful  process,  machine,  manufacture  or
composition of matter under the sun that is made by man is
the proper subject matter of a patent. Subject matter not
within one of the four statutory invention categories or
which is not "useful" in a patent sense is, accordingly, not
eligible to be patented.

  The subject matter courts have found to be outside the
four  statutory  categories  of  invention  is  limited  to
abstract ideas, laws of nature and natural phenomena. While
this is easily stated, determining whether an applicant is
seeking to patent an abstract idea, a law of nature or a
natural phenomenon has proven to be challenging. These three
exclusions recognize that subject matter that is not a
practical application or use of an idea, a law of nature or
a natural phenomenon is not patentable. See, e.g.,  Rubber -
Tip Pencil Co. v.  Howard , 87 U.S. 498, 507 (1874) ("idea
of itself is not patentable, but a new device by which it
may be made practically useful is");  Mackay Radio &

Telegraph Co.  v.  Radio Corp. of America , 306 U.S. 86, 94
(1939) ("While a scientific truth, or the mathematical
expression of it, is not patentable invention, a novel and
useful structure created with the aid of knowledge of
scientific truth may be.");  Warmerdam , 33 F.3d at 1360, 31
USPQ2d at 1759 ("steps of `locating' a medial axis, and
`creating' a bubble hierarchy . . describe nothing more
than the manipulation of basic mathematical constructs, the
paradigmatic `abstract idea'").

  Courts have expressed a concern over "preemption" of
ideas, laws of nature or natural phenomena. The concern over
preemption was expressed as early as 1852. See Le Roy v.
Tatham , 55 U.S. 156, 175 (1852) ("A principle, in the
abstract, is a fundamental truth; an original cause; a
motive; these cannot be patented, as no one can claim in
either of them an exclusive right.");  Funk Brothers Seed
Co.  v.  Kalo Inoculant Co. , 333 U.S. 127, 132, 76 USPQ
280, 282 (1948) (combination of six species of bacteria held
to  be  nonstatutory  subject  matter).  The  concern  over
preemption serves to bolster and justify the prohibition
against the patenting of such subject matter. In fact, such
concerns are only relevant to claiming a scientific truth or
principle.  Thus,  a  claim  to  an  "abstract  idea"  is
nonstatutory because it does not represent a practical
application of the idea, not because it would preempt the
idea.

 B.  Classify the Claimed Invention as to Its Proper
Statutory Category

  To  properly  determine  whether  a  claimed  invention
complies with the statutory invention requirements of 35
U.S.C. 101, Office personnel should classify each claim into
one or more statutory or nonstatutory categories. If the
claim falls into a nonstatutory category, that should not
preclude  complete  examination  of  the  application  for
satisfaction of all other conditions of patentability. This
classification is only an initial finding at this point in
the examination process that will be again assessed after
the examination for compliance with 35 U.S.C. 102, 103, and
112 is completed and before issuance of any Office action on
the merits.

  If the invention as set forth in the written description
is statutory, but the claims define subject matter that is
not, the deficiency can be corrected by an appropriate
amendment of the claims. In such a case, Office personnel
should reject the claims drawn to nonstatutory subject
matter under 35 U.S.C. 101, but identify the features of the
invention that would render the claimed subject matter
statutory if recited in the claim.

 1.  Nonstatutory Subject Matter

  Claims to computer - related inventions that are clearly
nonstatutory  fall  into  the  same  general  categories  as
nonstatutory claims in other arts, namely natural phenomena
such as magnetism, and abstract ideas or laws of nature
which  constitute  "descriptive  material."  Descriptive
material  can  be  characterized  as  either  "functional
descriptive  material"  or  "nonfunctional  descriptive
material."  In  this  context,  "functional  descriptive
material" consists of data structures and computer programs
which impart functionality when encoded on a computer -

readable medium. (The definition of "data structure" is "a
physical  or  logical  relationship  among  data  elements,
designed to support specific data manipulation functions."
The  New  IEEE  Standard  Dictionary  of  Electrical  and
Electronics  Terms  308  (5th  ed.  1993).)  "Nonfunctional
descriptive material" includes but is not limited to music,
literary works and a compilation or mere arrangement of
data.

  Both types of "descriptive material" are nonstatutory
when  claimed  as  descriptive  material  per  se  .  When
functional descriptive material is recorded on some computer
- readable medium it becomes structurally and functionally
interrelated to the medium and will be statutory in most
cases. Compare  In re Lowry , 32 F.3d 1579, 1583 - 84, 32
USPQ2d 1031, 1035 (Fed. Cir. 1994) (claim to data structure
that  increases  computer  efficiency  held  statutory)  and
Warmerdam , 33 F.3d at 1360 - 61, 31 USPQ2d at 1759 (claim
to computer having specific memory held statutory product -
by - process claim) with  Warmerdam , 33 F.3d at 1361, 31
USPQ2d at 1760 (claim to a data structure per se held
nonstatutory). When nonfunctional descriptive material is
recorded on some computer - readable medium, it is not
structurally and functionally interrelated to the medium but
is  merely  carried  by  the  medium.  Merely  claiming
nonfunctional descriptive material stored in a computer -
readable medium does not make it statutory. Such a result
would exalt form over substance.  In re Sarkar , 588 F.2d
1330, 1333, 200 USPQ 132, 137 (CCPA 1978)("[E]ach invention
must  be  evaluated  as  claimed;  yet  semantogenic
considerations preclude a determination based solely on
words appearing in the claims. In the final analysis under
101, the claimed invention, as a whole, must be evaluated
for what it is.") (quoted with approval in  Abele , 684 F.2d
at 907, 214 USPQ at 687). See also  In re Johnson , 589 F.2d
1070, 1077, 200 USPQ 199, 206 (CCPA 1978) ("form of the
claim is often an exercise in drafting"). Thus, nonstatutory
music does not become statutory by merely recording it on a
compact disk. Protection for this type of work is provided
under the copyright law.

  Claims to processes that do nothing more than solve
mathematical  problems  or  manipulate  abstract  ideas  or
concepts are more complex to analyze and are addressed
below. See sections IV.B.2(d) and IV.B.2(e).

 (a)  Functional Descriptive Material: "Data Structures"
Representing  Descriptive  Material  Per  Se  or  Computer
Programs Representing Computer Listings  Per Se

  Data structures not claimed as embodied in computer -
readable media are descriptive material per se and are not
statutory because they are neither physical "things" nor
statutory processes. See, e.g., Warmerdam , 33 F.3d at 1361,
31 USPQ2d at 1760 (claim to a data structure per se held
nonstatutory). Such claimed data structures do not define
any structural and functional interrelationships between the
data structure and other claimed aspects of the invention
which  permit  the  data  structure's  functionality  to  be
realized. In contrast, a claimed computer - readable medium
encoded  with  a  data  structure  defines  structural  and
functional interrelationships between the data structure and
the medium which permit the data structure's functionality
to be realized, and is thus statutory.

  Similarly,  computer  programs  claimed  as  computer
listings per se, i.e., the descriptions or expressions of
the programs, are not physical "things," nor are they
statutory processes, as they are not "acts" being performed.
Such claimed computer programs do not define any structural
and  functional  interrelationships  between  the  computer
program and other claimed aspects of the invention which
permit the computer program's functionality to be realized.
In contrast, a claimed computer - readable medium encoded
with a computer program defines structural and functional
interrelationships between the computer program and the
medium which permit the computer program's functionality to
be realized, and is thus statutory. Accordingly, it is
important to distinguish claims that define descriptive
material  per  se  from  claims  that  define  statutory
inventions.

  Computer programs are often recited as part of a claim.
Office  personnel  should  determine  whether  the  computer
program is being claimed as part of an otherwise statutory
manufacture or machine. In such a case, the claim remains
statutory irrespective of the fact that a computer program
is included in the claim. The same result occurs when a
computer program is used in a computerized process where the
computer executes the instructions set forth in the computer
program. Only when the claimed invention taken as a whole is
directed to a mere program listing, i.e., to only its
description or expression, is it descriptive material per se
and hence nonstatutory.

  Since a computer program is merely a set of instructions
capable of being executed by a computer, the computer
program itself is not a process and Office personnel should
treat a claim for a computer program, without the computer -
readable medium needed to realize the computer program's
functionality,  as  nonstatutory  functional  descriptive
material. When a computer program is claimed in a process
where the computer is executing the computer program's
instructions, Office personnel should treat the claim as a
process claim. See Sections IV.B.2(b) - (e). When a computer
program is recited in conjunction with a physical structure,
such as a computer memory, Office personnel should treat the
claim as a product claim. See Section IV.B.2(a).

 (b)  Nonfunctional Descriptive Material

  Descriptive material that cannot exhibit any functional
interrelationship with the way in which computing processes
are performed does not constitute a statutory process,
machine, manufacture or composition of matter and should be
rejected under 35 U.S.C. 101. Thus, Office personnel should
consider the claimed invention as a whole to determine
whether  the  necessary  functional  interrelationship  is
provided.

  Where certain types of descriptive material, such as
music, literature, art, photographs and mere arrangements or
compilations of facts or data, are merely stored so as to be
read  or  outputted  by  a  computer  without  creating  any
functional interrelationship, either as part of the stored
data or as part of the computing processes performed by the
computer, then such descriptive material alone does not
impart functionality either to the data as so structured, or
to the computer. Such "descriptive material" is not a
process, machine, manufacture or composition of matter.

(Data consists of facts, which become information when they
are seen in context and convey meaning to people. Computers
process data without any understanding of what that data
represents. Computer Dictionary 210 (Microsoft Press, 2d ed.
1994).)

  The policy that precludes the patenting of nonfunctional
descriptive material would be easily frustrated if the same
descriptive material could be patented when claimed as an
article of manufacture. For example, music is commonly sold
to consumers in the format of a compact disc. In such cases,
the known compact disc acts as nothing more than a carrier
for  nonfunctional  descriptive  material.  The  purely
nonfunctional descriptive material cannot alone provide the
practical application for the manufacture.

  Office personnel should be prudent in applying the
foregoing guidance. Nonfunctional descriptive material may
be claimed in combination with other functional descriptive
material on a computer - readable medium to provide the
necessary functional and structural interrelationship to
satisfy the requirements of 35 U.S.C. 101. The presence of
the  claimed  nonfunctional  descriptive  material  is  not
necessarily determinative of nonstatutory subject matter.
For  example,  a  computer  that  recognizes  a  particular
grouping  of  musical  notes  read  from  memory  and  upon
recognizing that particular sequence, causes another defined
series  of  notes  to  be  played,  defines  a  functional
interrelationship  among  that  data  and  the  computing
processes performed when utilizing that data, and as such is
statutory because it implements a statutory process.

 (c)  Natural Phenomena Such as Electricity and Magnetism

  Claims  that  recite  nothing  but  the  physical
characteristics of a form of energy, such as a frequency,
voltage, or the strength of a magnetic field, define energy
or magnetism, per se, and as such are nonstatutory natural
phenomena. O'Reilly v.  Morse,56 U.S. (15 How.) at 112 -
114. However, a claim directed to a practical application of
a  natural  phenomenon  such  as  energy  or  magnetism  is
statutory.  Id.  at 114 - 119.

 2.  Statutory Subject Matter

 (a)  Statutory Product Claims

  (Products  may  be  either  machines,  manufactures  or
compositions of matter.

  A machine is:

  a concrete thing, consisting of parts or of certain
devices and combinations of devices.

 Burr v.  Duryee , 68 U.S. (1 Wall.) 531, 570 (1863).

  A manufacture is:

  the production of articles for use from raw or prepared
materials by giving to these materials new forms, qualities,
properties or combinations, whether by hand - labor or by
machinery. Diamond  v.  Chakrabarty , 447 U.S. at 308, 206
USPQ at 196 - 97 (quoting  American Fruit Growers, Inc.  v.
Brogdex Co ., 283 U.S. 1, 11 (1931).

  A composition of matter is:

  a composition[] of two or more substances [or] . . a[]
composite article[], whether . . [it] be the result of
chemical union, or of mechanical mixture, whether . . [it]
be [a] gas[], fluid[], powder[], or solid[]. Diamond  v.
Chakrabarty , 447 U.S. at 308, 206 USPQ at 197 (quoting
Shell Development Co.  v.  Watson , 149 F. Supp. 279, 280,
113 USPQ 265, 266 (D.D.C. 1957), aff'd per curiam, 252 F.2d
861, 116 USPQ 428 (D.C. Cir. 1958).)

  If a claim defines a useful machine or manufacture by
identifying  the  physical  structure  of  the  machine  or
manufacture  in  terms  of  its  hardware  or  hardware  and
software combination, it defines a statutory product. See,
e.g., Lowry , 32 F.3d at 1583, 32 USPQ2d at 1034 - 35;
Warmerdam , 33 F.3d at 1361 - 62, 31 USPQ2d at 1760.

  A machine or manufacture claim may be one of two types:
(1) a claim that encompasses any and every machine for
performing  the  underlying  process  or  any  and  every
manufacture  that  can  cause  a  computer  to  perform  the
underlying process, or (2) a claim that defines a specific
machine or manufacture. When a claim is of the first type,
Office personnel are to evaluate the underlying process the
computer  will  perform  in  order  to  determine  the
patentability of the product.

 (i)  Claims that Encompass Any Machine or Manufacture
Embodiment of a Process

  Office personnel must treat each claim as a whole. The
mere fact that a hardware element is recited in a claim does
not necessarily limit the claim to a specific machine or
manufacture. Cf. In re Iwahashi , 888 F.2d 1370, 1374 - 75,
12 USPQ2d 1908, 1911 - 12 (Fed. Cir. 1989), cited with
approval in  Alappat , 33 F.3d at 1544 n.24, 31 USPQ2d at
1558 n.24. If a product claim encompasses any and every
computer implementation of a process, when read in light of
the specification, it should be examined on the basis of the
underlying process. Such a claim can be recognized as it
will:

  -  define the physical characteristics of a computer
or computer component exclusively as functions or steps to
be performed on or by a computer, and

  -  encompass any and every product in the stated class
(e.g., computer, computer - readable memory) configured in
any manner to perform that process.

  Office personnel are reminded that finding a product
claim to encompass any and every product embodiment of a
process invention simply means that the Office will presume
that the product claim encompasses any and every hardware or
hardware platform and associated software implementation
that  performs  the  specified  set  of  claimed  functions.
Because this is interpretive and nothing more , it does not
provide any information as to the patentability of the
applicant's underlying process or the product claim.

  When Office personnel have reviewed the claim as a whole
and found that it is not limited to a specific machine or
manufacture, they shall identify how each claim limitation

has been treated and set forth their reasons in support of
their conclusion that the claim encompasses any and every
machine or manufacture embodiment of a process. This will
shift the burden to applicant to demonstrate why the claimed
invention  should  be  limited  to  a  specific  machine  or
manufacture.

  If a claim is found to encompass any and every product
embodiment of the underlying process, and if the underlying
process is statutory, the product claim should be classified
as a statutory product. By the same token, if the underlying
process  invention  is  found  to  be  nonstatutory,  Office
personnel  should  classify  the  "product"  claim  as  a
"nonstatutory product." If the product claim is classified
as  being  a  nonstatutory  product  on  the  basis  of  the
underlying process, Office personnel should emphasize that
they have considered all claim limitations and are basing
their finding on the analysis of the underlying process.

 (ii)  Product  Claims  -  Claims  Directed  to  Specific
Machines and Manufactures

  If a product claim does not encompass any and every
computer - implementation of a process, then it must be
treated as a specific machine or manufacture. Claims that
define a computer - related invention as a specific machine
or specific article of manufacture must define the physical
structure of the machine or manufacture in terms of its
hardware or hardware and "specific software." ("Specific
software" is defined as a set of instructions implemented in
a specific program code segment. See Computer Dictionary 78
(Microsoft Press, 2d ed. 1994) for definition of "code
segment.") The applicant may define the physical structure
of  a  programmed  computer  or  its  hardware  or  software
components in any manner that can be clearly understood by a
person skilled in the relevant art. Generally a claim drawn
to a particular programmed computer should identify the
elements of the computer and indicate how those elements are
configured in either hardware or a combination of hardware
and specific software.

  To adequately define a specific computer memory, the
claim must identify a general or specific memory and the
specific software which provides the functionality stored in
the memory.

  A claim limited to a specific machine or manufacture,
which has a practical application in the technological arts,
is statutory. In most cases, a claim to a specific machine
or manufacture will have a practical application in the
technological arts.

 (iii)  Hypothetical Machine Claims Which Illustrate Claims
of the Types Described in Sections IV.B.2(a)(i) and (ii)

 Two applicants present a claim to the following process:

  A process for determining and displaying the structure
of a chemical compound comprising:

  (a)  solving the wavefunction parameters for the
compound to determine the structure of a compound; and

  (b) displaying  the  structure  of  the  compound
determined in step (a).

 Each applicant also presents a claim to the following
apparatus:

  A computer system for determining the three dimensional
structure of a chemical compound comprising:

  (a)  means for determining the three dimensional
structure of a compound; and

  (b)  means for creating and displaying an image
representing  a  three  -  dimensional  perspective  of  the
compound.

 In addition, each applicant provides the noted disclosures
to support the claims:

 **  Double Click here to see the image  **

 (b)  Statutory Process Claims

  A claim that requires one or more acts to be performed
defines a process. However, not all processes are statutory
under 35 U.S.C. 101. To be statutory, a claimed computer -
related process must either: (1) result in a physical
transformation outside the computer for which a practical
application in the technological arts is either disclosed in
the specification or would have been known to a skilled
artisan (discussed in (i) below), or (2) be limited by the
language in the claim to a practical application within the
technological arts (discussed in (ii) below). See Diamond v.
Diehr , 450 U.S. at 183 - 84, 209 USPQ at 6 (quoting
Cochrane v.  Deener , 94 U.S. 780, 787 - 88 (1877)) ("A
[statutory] process is a mode of treatment of certain
materials to produce a given result. It is an act, or a
series of acts, performed upon the subject - matter to be
transformed and reduced to a different state or thing . .
. The process requires that certain things should be done
with certain substances, and in a certain order; but the
tools  to  be  used  in  doing  this  may  be  of  secondary
consequence."). See also  Alappat , 33 F.3d at 1543, 31
USPQ2d at 1556 - 57 (quoting  Diamond  v  . Diehr, 450 U.S.
at 192, 209 USPQ at 10). See also  id. at 1569, 31 USPQ2d at
1578 - 79 (Newman, J., concurring) ("unpatentability of the
principle does not defeat patentability of its practical
applicants") (citing  O`Reilly  v  . Morse,56 U.S. (15 How.)
at 114 - 19). The claimed practical application must be a
further limitation upon the claimed subject matter if the
process is confined to the internal operations of the
computer. If a physical transformation occurs outside the
computer,  it  is  not  necessary  to  claim  the  practical
application. A disclosure that permits a skilled artisan to
practice the claimed invention, i.e., to put it to a
practical use, is sufficient. On the other hand, it is
necessary to claim the practical application if there is no
physical transformation or if the process merely manipulates
concepts or converts one set of numbers into another.

  A claimed process is clearly statutory if it results in
a physical transformation outside the computer, i.e., falls
into one or both of the following specific categories ("safe
harbors").

 (i)  Safe Harbors

 -  Independent Physical Acts (Post - Computer Process
Activity)

  A process is statutory if it requires physical acts to
be  performed  outside  the  computer  independent  of  and
following  the  steps  to  be  performed  by  a  programmed
computer, where those acts involve the manipulation of
tangible physical objects and result in the object having a
different physical attribute or structure. Diamond  v  .
Diehr , 450 U.S. at 187, 209 USPQ at 8. Thus, if a process
claim includes one or more post - computer process steps
that  result  in  a  physical  transformation  outside  the
computer (beyond merely conveying the direct result of the
computer operation, see Section IV.B.2(d)(iii)), the claim
is clearly statutory.

  Examples of this type of statutory process include the
following:

  -  A method of curing rubber in a mold which relies
upon updating process parameters, using a computer processor
to determine a time period for curing the rubber, using the
computer processor to determine when the time period has
been reached in the curing process and then opening the mold
at that stage.

  -  A method of controlling a mechanical robot which
relies upon storing data in a computer that represents
various types of mechanical movements of the robot, using a
computer processor to calculate positioning of the robot in
relation to given tasks to be performed by the robot, and
controlling the robot's movement and position based on the
calculated position.

 -  Manipulation of Data Representing Physical Objects
or Activities (Precomputer Process Activity)

  Another statutory process is one that requires the
measurements  of  physical  objects  or  activities  to  be
transformed outside of the computer into computer data ( In
re Gelnovatch , 595 F.2d 32, 41 n.7, 201 USPQ 136, 145 n.7
(CCPA 1979) (data - gathering step did not measure physical
phenomenon)), where the data comprises signals corresponding
to physical objects or activities external to the computer
system,  and  where  the  process  causes  a  physical
transformation  of  the  signals  which  are  intangible
representations  of  the  physical  objects  or  activities.
Schrader , 22 F.3d at 294, 30 USPQ2d at 1459 citing with
approval  Arrhythmia , 958 F.2d at 1058 - 59, 22 USPQ2d at
1037 - 38;  Abele , 684 F.2d at 909, 214 USPQ at 688;  In re
Taner , 681 F.2d 787, 790, 214 USPQ 678, 681 (CCPA 1982).

  Examples of this type of claimed statutory process
include the following:

  -  A method of using a computer processor to analyze
electrical signals and data representative of human cardiac
activity  by  converting  the  signals  to  time  segments,
applying the time segments in reverse order to a high pass
filter means, using the computer processor to determine the
amplitude of the high pass filter's output, and using the
computer processor to compare the value to a predetermined
value.  In  this  example  the  data  is  an  intangible
representation of physical activity, i.e., human cardiac

activity. The transformation occurs when heart activity is
measured and an electrical signal is produced. This process
has  real  world  value  in  predicting  vulnerability  to
ventricular tachycardia immediately after a heart attack.

  -  A method of using a computer processor to receive
data representing Computerized Axial Tomography ("CAT") scan
images of a patient, performing a calculation to determine
the difference between a local value at a data point and an
average value of the data in a region surrounding the point,
and displaying the difference as a gray scale for each point
in the image, and displaying the resulting image. In this
example the data is an intangible representation of a
physical object; i.e., portions of the anatomy of a patient.
The transformation occurs when the condition of the human
body is measured with X - rays and the X - rays are
converted into electrical digital signals that represent the
condition of the human body. The real world value of the
invention lies in creating a new CAT scan image of body
tissue without the presence of bones.

  -  A method of using a computer processor to conduct
seismic exploration, by imparting spherical seismic energy
waves into the earth from a seismic source, generating a
plurality of reflected signals in response to the seismic
energy waves at a set of receiver positions in an array, and
summing  the  reflection  signals  to  produce  a  signal
simulating the reflection response of the earth to the
seismic energy. In this example, the electrical signals
processed  by  the  computer  represent  reflected  seismic
energy.  The  transformation  occurs  by  converting  the
spherical seismic energy waves into electrical signals which
provide a geophysical representation of formations below the
earth's surface. Geophysical exploration of formations below
the surface of the earth has real world value.

  If a claim does not clearly fall into one or both of the
safe harbors, the claim may still be statutory if it is
limited  by  the  language  in  the  claim  to  a  practical
application in the technological arts.

 (ii)  Computer - Related Processes Limited to a Practical
Application in the Technological Arts

  There is always some form of physical transformation
within a computer because a computer acts on signals and
transforms them during its operation and changes the state
of its components during the execution of a process. Even
though  such  a  physical  transformation  occurs  within  a
computer, such activity is not determinative of whether the
process is statutory because such transformation alone does
not  distinguish  a  statutory  computer  process  from  a
nonstatutory computer process. What is determinative is not
how the computer performs the process, but what the computer
does to achieve a practical application. See Arrhythmia ,
958 F.2d at 1057, 22 USPQ2d at 1036.

  A process that merely manipulates an abstract idea or
performs a purely mathematical algorithm is nonstatutory
despite  the  fact  that  it  might  inherently  have  some
usefulness. (In Sarkar , 588 F.2d at 1335, 200 USPQ at 139,
the court explained why this approach must be followed:

  No  mathematical  equation  can  be  used,  as  a
practical  matter,  without  establishing  and  substituting

values for the variables expressed therein. Substitution of
values dictated by the formula has thus been viewed as a
form of mathematical step. If the steps of gathering and
substituting  values  were  alone  sufficient,  every
mathematical equation, formula, or algorithm having any
practical use would be per se subject to patenting as a
"process"  under  101.  Consideration  of  whether  the
substitution of specific values is enough to convert the
disembodied ideas present in the formula into an embodiment
of those ideas, or into an application of the formula, is
foreclosed by the current state of the law.)

 For such subject matter to be statutory, the claimed
process must be limited to a practical application of the
abstract idea or mathematical algorithm in the technological
arts. See Alappat , 33 F.3d at 1543, 31 USPQ2d at 1556 - 57
(quoting  Diamond v.  Diehr , 450 U.S. at 192, 209 USPQ at
10). See also  Alappat at 1569, 31 USPQ2d at 1578 - 79
(Newman, J., concurring) ("unpatentability of the principle
does  not  defeat  patentability  of  its  practical
applications") (citing  O'Reilly v.  Morse , 56 U.S. (15
How.) at 114 - 19). For example, a computer process that
simply calculates a mathematical algorithm that models noise
is nonstatutory. However, a claimed process for digitally
filtering noise employing the mathematical algorithm is
statutory.

  Examples of this type of claimed statutory process
include the following:

  -  A computerized method of optimally controlling
transfer, storage and retrieval of data between cache and
hard disk storage devices such that the most frequently used
data is readily available.

  -  A method of controlling parallel processors to
accomplish multi - tasking of several computing tasks to
maximize computing efficiency. See, e.g., In re Bernhart,
417 F.2d 1395, 1400, 163 USPQ 611, 616 (CCPA 1969).

  -  A method of making a word processor by storing an
executable word processing application program in a general
purpose digital computer's memory, and executing the stored
program to impart word processing functionality to the
general purpose digital computer by changing the state of
the  computer's  arithmetic  logic  unit  when  program
instructions of the word processing program are executed.

  -  A digital filtering process for removing noise from
a digital signal comprising the steps of calculating a
mathematical algorithm to produce a correction signal and
subtracting the correction signal from the digital signal to
remove the noise.

 (c)  Nonstatutory Process Claims

  If the "acts" of a claimed process manipulate only
numbers, abstract concepts or ideas, or signals representing
any of the foregoing, the acts are not being applied to
appropriate  subject  matter.  Thus,  a  process  consisting
solely of mathematical operations, i.e., converting one set
of numbers into another set of numbers, does not manipulate
appropriate subject matter and thus cannot constitute a
statutory process.

  In practical terms, claims define nonstatutory processes
if they:

  -  consist solely of mathematical operations without
some  claimed  practical  application  (i.e.,  executing  a
"mathematical algorithm"); or

  -  simply manipulate abstract ideas, e.g., a bid (
Schrader, 22 F.3d at 293 - 94, 30 USPQ2d at 1458 - 59) or a
bubble hierarchy (  Warmerdam , 33 F.3d at 1360, 31 USPQ2d
at 1759), without some claimed practical application.

  A claimed process that consists solely of mathematical
operations is nonstatutory whether or not it is performed on
a computer. Courts have recognized a distinction between
types of mathematical algorithms, namely, some define a "law
of nature" in mathematical terms and others merely describe
an "abstract idea." See, e.g., In re Meyer , 688 F.2d 789,
794 - 95, 215 USPQ 193, 197 (CCPA 1982) ("Scientific
principles,  such  as  the  relationship  between  mass  and
energy, and laws of nature, such as the acceleration of
gravity, namely, a = 32 ft./sec. 2 , can be represented in
mathematical format. However, some mathematical algorithms
and formulae do not represent scientific principles or laws
of nature; they represent ideas or mental processes and are
simply logical vehicles for communicating possible solutions
to  complex  problems.  The  presence  of  a  mathematical
algorithm or formula in a claim is merely an indication that
a scientific principle, law of nature, idea or mental
process may be the subject matter claimed and, thus, justify
a rejection of that claim under 35 U.S.C. 101; but the
presence of a mathematical algorithm or formula is only a
signpost for further analysis."). Cf.  Alappat , 33 F.3d at
1543 n.19, 31 USPQ2d at 1556 n.19 in which the Federal
Circuit recognized the confusion:

  The Supreme Court has not been clear . . as to
whether such subject matter is excluded from the scope of
101 because it represents laws of nature, natural phenomena,
or abstract ideas. See Diehr , 450 U.S. at 186 (viewed
mathematical algorithm as a law of nature);  Gottschalk  v
. Benson , 409 U.S. 63, 71 - 72 (1972) (treated mathematical
algorithm as an "idea"). The Supreme Court also has not been
clear as to exactly what kind of mathematical subject matter
may not be patented. The Supreme Court has used, among
others, the terms "mathematical algorithm," "mathematical
formula," and "mathematical equation" to describe types of
mathematical  subject  matter  not  entitled  to  patent
protection standing alone. The Supreme Court has not set
forth, however, any consistent or clear explanation of what
it intended by such terms or how these terms are related, if
at all.

  Certain mathematical algorithms have been held to be
nonstatutory  because  they  represent  a  mathematical
definition of a law of nature or a natural phenomenon. For
example, a mathematical algorithm representing the formula E
= mc 2 is a "law of nature" - it defines a "fundamental
scientific truth" (i.e., the relationship between energy and
mass). To comprehend how the law of naturerelates to any
object, one invariably has to perform certain steps (e.g.,
multiplying a number representing the mass of an object by
the square of a number representing the speed of light). In
such a case, a claimed process which consists solely of the
steps  that  one  must  follow  to  solve  the  mathematical

representation of E = mc 2 is indistinguishable from the law
of nature and would "preempt" the law of nature. A patent
cannot be granted on such a process.

  Other mathematical algorithms have been held to be
nonstatutory because they merely describe an abstract idea.
An  "abstract  idea"  may  simply  be  any  sequence  of
mathematical  operations  that  are  combined  to  solve  a
mathematical problem. The concern addressed by holding such
subject  matter  nonstatutory  is  that  the  mathematical
operations merely describe an idea and do not define a
process that represents a practical application of the idea.

  Accordingly,  when  a  claim  reciting  a  mathematical
algorithm is found to define nonstatutory subject matter the
basis of the 35 U.S.C. 101 rejection must be that, when
taken as a whole, the claim recites a law of nature, a
natural phenomenon, or an abstract idea.

 (d)  Certain Claim Language Related to Mathematical
Operation Steps of a Process

 (i)  Intended Use or Field of Use Statements

  Claim language that simply specifies an intended use or
field of use for the invention generally will not limit the
scope of a claim, particularly when only presented in the
claim preamble. Thus, Office personnel should be careful to
properly interpret such language. Walter , 618 F.2d at 769,
205 USPQ at 409 (Because none of the claimed steps were
explicitly or implicitly limited to their application in
seismic  prospecting  activities,  the  court  held  that
"[a]lthough the claim preambles relate the claimed invention
to the art of seismic prospecting, the claims themselves are
not  drawn  to  methods  of  or  apparatus  for  seismic
prospecting; they are drawn to improved mathematical methods
for interpreting the results of seismic prospecting."). Cf.
Alappat, 33 F.3d at 1544, 31 USPQ2d at 1558. When such
language is treated as nonlimiting, Office personnel should
expressly identify in the Office action the claim language
that constitutes the intended use or field of use statements
and provide the basis for their findings. This will shift
the burden to applicant to demonstrate why the language is
to be treated as a claim limitation.

 (ii)  Necessary Antecedent Step to Performance of a
Mathematical  Operation  or  Independent  Limitation  on  a
Claimed Process

  In some situations, certain acts of "collecting" or
"selecting" data for use in a process consisting of one or
more mathematical operations will not further limit a claim
beyond the specified mathematical operation step(s). Such
acts merely determine values for the variables used in the
mathematical  formulae  used  in  making  the  calculations.
Walter , 618 F.2d at 769 - 70, 205 USPQ at 409. In other
words, the acts are dictated by nothing other than the
performance of a mathematical operation.  Sarker, 588 F.2d
at 1335, 200 USPQ at 139.

  If a claim requires acts to be performed to create data
that will then be used in a process representing a practical
application of one or more mathematical operations, those
acts must be treated as further limiting the claim beyond
the mathematical operation(s) per se . Such acts are data

gathering steps not dictated by the algorithm but by other
limitations which require certain antecedent steps and as
such constitute an independent limitation on the claim.

  Examples of acts that independently limit a claimed
process involving mathematical operations include:

  -  a method of conducting seismic exploration which
requires generating and manipulating signals from seismic
energy waves before "summing" the values represented by the
signals (Taner , 681 F.2d at 788, 214 USPQ at 679); and

  -  a method of displaying X - ray attenuation data as
a signed gray scale signal in a "field" using a particular
algorithm, where the antecedent steps require generating the
data using a particular machine (e.g., a computer tomography
scanner). Abele, 684 F.2d at 908, 214 USPQ at 687 ("The
specification  indicates  that  such  attenuation  data  is
available only when an X - ray beam is produced by a CAT
scanner, passed through an object, and detected upon its
exit. Only after these steps have been completed is the
algorithm  performed,  and  the  resultant  modified  data
displayed in the required format.").

  Examples of steps that do not independently limit one or
more mathematical operation steps include:

  -  "perturbing" the values of a set of process inputs,
where the subject matter "perturbed" was a number and the
act of "perturbing" consists of substituting the numerical
values of variables (Gelnovatch , 595 F.2d at 41 n.7, 201
USPQ at 145 n.7 ("Appellants' claimed step of perturbing the
values of a set of process inputs (step 3), in addition to
being a mathematical operation, appears to be a data -
gathering step of the type we have held insufficient to
change a nonstatutory method of calculation into a statutory
process . . In this instance, the perturbed process
inputs are not even measured values of physical phenomena,
but are instead derived by numerically changing the values
in the previous set of process inputs.")); and

  -  selecting a set of arbitrary measurement point
values (Sarkar , 588 F.2d at 1331, 200 USPQ at 135).

  Such steps do not impose independent limitations on the
scope of the claim beyond those required by the mathematical
operation limitation.

 (iii)  Post - Mathematical Operation Step Using Solution
or Merely Conveying Result of Operation

  In some instances, certain kinds of post - solution
"acts" will not further limit a process claim beyond the
performance of the preceding mathematical operation step
even if the acts are recited in the body of a claim. If,
however, the claimed acts represent some "significant use"
of the solution, those acts will invariably impose an
independent limitation on the claim. A "significant use" is
any activity which is more than merely outputting the direct
result of the mathematical operation. Office personnel are
reminded to rely on the applicant's characterization of the
significance of the acts being assessed to resolve questions
related to their relationship to the mathematical operations
recited in the claim and the invention as a whole. See
Sarkar , 588 F.2d at 1332 n.6, 200 USPQ at 136 n.6 ("post -

solution"  construction  that  was  being  modeled  by  the
mathematical process not considered in deciding 35 U.S.C.
101  question  because  applicant  indicated  that  such
construction was not a material element of the invention).
Thus, if a claim requires that the direct result of a
mathematical operation be evaluated and transformed into
something else, Office personnel cannot treat the subsequent
steps as being indistinguishable from the performance of the
mathematical operation and thus not further limiting on the
claim. For example, acts that require the conversion of a
series of numbers representing values of a wavefunction
equation for a chemical compound into values representing an
image that conveys information about the three - dimensional
structure of the compound and the displaying of the three -
dimensional structure cannot be treated as being part of the
mathematical operations.

  Office personnel should be especially careful when
reviewing claim language that requires the performance of
"post - solution" steps to ensure that claim limitations are
not ignored.

  Examples of steps found not to independently limit a
process involving one or more mathematical operation steps
include:

  -  step of "updating alarm limits" found to constitute
changing the number value of a variable to represent the
result of the calculation ( Parker v.  Flook , 437 U.S. 584,
585, 198 USPQ 193, 195 (1978));

  -  final step of magnetically recording the result of
a calculation ( Walter , 618 F.2d at 770, 205 USPQ at 409
("If 101 could be satisfied by the mere recordation of the
results of a nonstatutory process on some record medium,
even the most unskilled patent draftsman could provide for
such a step."));

  -  final step of "equating" the process outputs to the
values of the last set of process inputs found to constitute
storing the result of calculations ( Gelnovatch , 595 F.2d
at 41 n.7, 201 USPQ at 145 n.7);

  -  final step of displaying result of a calculation
"as a shade of gray rather than as simply a number" found to
not constitute distinct step where the data were numerical
values that did not represent anything ( Abele , 684 F.2d at
909, 214 USPQ at 688 ("This claim presents no more than the
calculation of a number and display of the result, albeit in
a particular format. The specification provides no greater
meaning to `data in a field' than a matrix of numbers
regardless of by what method generated. Thus, the algorithm
is neither explicitly nor implicitly applied to any certain
process. Moreover, that the result is displayed as a shade
of gray rather than as simply a number provides no greater
or  better  information,  considering  the  broad  range  of
applications encompassed by the claim.")); and

  -  step  of  "transmitting  electrical  signals
representing" the result of calculations ( In re De Castelet
, 562 F.2d 1236, 1244, 195 USPQ 439, 446 (CCPA 1977) ("That
the computer is instructed to transmit electrical signals,
representing the results of its calculations, does not
constitute the type of `post solution activity' found in
Flook , [437 U.S. 584, 198 USPQ 193 (1978)], and does not

transform the claim into one for a process merely using an
algorithm. The final transmitting step constitutes nothing
more than reading out the result of the calculations.")).

 (e)  Manipulation of Abstract Ideas Without a Claimed
Practical Application

  A process that consists solely of the manipulation of an
abstract  idea  without  any  limitation  to  a  practical
application is nonstatutory. See, e.g., Warmerdam , 33 F.3d
at 1360, 31 USPQ2d at 1759. See also  Schrader, 22 F.3d at
295, 30 USPQ2d at 1459. Office personnel have the burden to
establish a  prima facie case that the claimed invention
taken as a whole is directed to the manipulation of abstract
ideas without a practical application.

  In order to determine whether the claim is limited to a
practical application of an abstract idea, Office personnel
must  analyze  the  claim  as  a  whole,  in  light  of  the
specification, to understand what subject matter is being
manipulated and how it is being manipulated. During this
procedure, Office personnel must evaluate any statements of
intended use or field of use, any data gathering step and
any post - manipulation activity. See section IV.B.2(d)
above for how to treat various types of claim language. Only
when the claim is devoid of any limitation to a practical
application in the technological arts should it be rejected
under 35 U.S.C. 101. Further, when such a rejection is made,
Office personnel must expressly state how the language of
the claims has been interpreted to support the rejection.

 V.  Evaluate Application for Compliance with 35 U.S.C.
112

  Office personnel should begin their evaluation of an
application's compliance with 35 U.S.C. 112 by considering
the requirements of 35 U.S.C. 112, second paragraph. The
second  paragraph  contains  two  separate  and  distinct
requirements: (1) that the claim(s) set forth the subject
matter applicants regard as the invention, and (2) that the
claim(s) particularly point out and distinctly claim the
invention. An application will be deficient under 35 U.S.C.
112,  second  paragraph  when  (1)  evidence  including
admissions, other than in the application as filed, shows
applicant has stated that he or she regards the invention to
be different from what is claimed, or when (2) the scope of
the claims is unclear.

  After evaluation of the application for compliance with
35 U.S.C. 112, second paragraph, Office personnel should
then  evaluate  the  application  for  compliance  with  the
requirements of 35 U.S.C. 112, first paragraph. The first
paragraph contains three separate and distinct requirements:
(1) adequate written description, (2) enablement, and (3)
best mode. An application will be deficient under 35 U.S.C.
112, first paragraph when the written description is not
adequate to identify what the applicant has invented, or
when the disclosure does not enable one skilled in the art
to make and use the invention as claimed without undue
experimentation. Deficiencies related to disclosure of the
best mode for carrying out the claimed invention are not
usually encountered during examination of an application
because evidence to support such a deficiency is seldom in
the record.

  If deficiencies are discovered with respect to 35 U.S.C.
112,  Office  personnel  must  be  careful  to  apply  the
appropriate paragraph of 35 U.S.C. 112.

 A.  Determine Whether the Claimed Invention Complies
with 35 U.S.C. 112, Second Paragraph Requirements

 1.  Claims Setting Forth the Subject Matter Applicant
Regards as Invention

  Applicant's specification must conclude with claim(s)
that set forth the subject matter which the applicant
regards as the invention. The invention set forth in the
claims is presumed to be that which applicant regards as the
invention, unless applicant considers the invention to be
something different from what has been claimed as shown by
evidence, including admissions, outside the application as
filed. An applicant may change what he or she regards as the
invention during the prosecution of the application.

 2.  Claims Particularly Pointing Out and Distinctly
Claiming the Invention

  Office personnel shall determine whether the claims set
out and circumscribe the invention with a reasonable degree
of  precision  and  particularity.  In  this  regard,  the
definiteness of the language must be analyzed, not in a
vacuum,  but  always  in  light  of  the  teachings  of  the
disclosure as it would be interpreted by one of ordinary
skill in the art. Applicant's claims, interpreted in light
of the disclosure, must reasonably apprise a person of
ordinary skill in the art of the invention. However, the
applicant need not explicitly recite in the claims every
feature of the invention. For example, if an applicant
indicates that the invention is a particular computer, the
claims do not have to recite every element or feature of the
computer. In fact, it is preferable for claims to be drafted
in a form that emphasizes what the applicant has invented
(i.e., what is new rather than old).

  A means plus function limitation is distinctly claimed
if the description makes it clear that the means corresponds
to well - defined structure of a computer or computer
component implemented in either hardware or software and its
associated hardware platform. Such means may be defined as:

  -  a  programmed  computer  with  a  particular
functionality  implemented  in  hardware  or  hardware  and
software;

  -  a logic circuit or other component of a programmed
computer that performs a series of specifically identified
operations dictated by a computer program; or

  -  a  computer  memory  encoded  with  executable
instructions representing a computer program that can cause
a computer to function in a particular fashion.

  The scope of a "means" limitation is defined as the
corresponding structure or material (e.g., a specific logic
circuit)  set  forth  in  the  written  description  and
equivalents. See MPEP § 2181 through § 2186. Thus, a claim
using means plus function limitations without corresponding
disclosure of specific structures or materials that are not
well - known fails to particularly point out and distinctly

claim the invention. For example, if the applicant discloses
only the functions to be performed and provides no express,
implied or inherent disclosure of hardware or a combination
of hardware and software that performs the functions, the
application  has  not  disclosed  any  "structure"  which
corresponds to the claimed means. Office personnel should
reject such claims under 35 U.S.C. 112, second paragraph.
The rejection shifts the burden to the applicant to describe
at least one specific structure or material that corresponds
to the claimed means in question, and to identify the
precise location or locations in the specification where a
description of at least one embodiment of that claimed means
can be found. In contrast, if the corresponding structure is
disclosed to be a memory or logic circuit that has been
configured in some manner to perform that function (e.g.,
using a defined computer program), the application has
disclosed  "structure"  which  corresponds  to  the  claimed
means.

  When a claim or part of a claim is defined in computer
program code, whether in source or object code format, a
person of skill in the art must be able to ascertain the
metes and bounds of the claimed invention. In certain
circumstances, as where self - documenting programming code
is employed, use of programming language in a claim would be
permissible  because  such  program  source  code  presents
"sufficiently  high  -  level  language  and  descriptive
identifiers" to make it universally understood to others in
the  art  without  the  programmer  having  to  insert  any
comments. See Computer Dictionary 353 (Microsoft Press, 2ed.
1994)  for  a  definition  of  "self  -  documenting  code."
Applicants should be encouraged to functionally define the
steps the computer will perform rather than simply reciting
source or object code instructions.

 B.  Determine Whether the Claimed Invention Complies
with 35 U.S.C. 112, First Paragraph Requirements

 1.  Adequate Written Description

  The satisfaction of the enablement requirement does not
satisfy the written description requirement. See In re
Barker , 559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977),
cert. denied ,  Barker v.  Parker , 434 U.S. 1064 (1978) (a
specification may be sufficient to enable one skilled in the
art to make and use the invention, but still fail to comply
with the written description requirement). See also  In re
DiLeone , 436 F.2d 1404, 1405, 168 USPQ 592, 593 (CCPA
1971).  For  the  written  description  requirement,  an
applicant's specification must reasonably convey to those
skilled in the art that the applicant was in possession of
the claimed invention as of the date of invention. The
claimed invention subject matter need not be described
literally, i.e., using the same terms, in order for the
disclosure to satisfy the description requirement.

 2.  Enabling Disclosure

  An  applicant's  specification  must  enable  a  person
skilled in the art to make and use the claimed invention
without undue experimentation. The fact that experimentation
is complex, however, will not make it undue if a person of
skill  in  the  art  typically  engages  in  such  complex
experimentation. For a computer - related invention, the
disclosure must enable a skilled artisan to configure the

computer to possess the requisite functionality, and, where
applicable, interrelate the computer with other elements to
yield the claimed invention, without the exercise of undue
experimentation. The specification should disclose how to
configure a computer to possess the requisite functionality
or how to integrate the programmed computer with other
elements of the invention, unless a skilled artisan would
know how to do so without such disclosure. See, e.g.,
Northern Telecom v.  Datapoint Corp ., 908 F.2d 931, 941 -
43, 15 USPQ2d 1321, 1328 - 30 (Fed. Cir.),  cert. denied ,
Datapoint Corp. v.  Northern Telecom , 498 U.S. 920 (1990)
(judgment of invalidity reversed for clear error where
expert testimony on both sides showed that a programmer of
reasonable skill could write a satisfactory program with
ordinary effort based on the disclosure);  DeGeorge v.
Bernier , 768 F.2d 1318, 1324, 226 USPQ 758, 762 - 63 (Fed.
Cir. 1985) (superseded by statute with respect to issues not
relevant  here)  (invention  was  adequately  disclosed  for
purposes of enablement even though all of the circuitry of a
word processor was not disclosed, since the undisclosed
circuitry was deemed inconsequential because it did not
pertain to the claimed circuit);  In re Phillips , 608 F.2d
879, 882 - 83, 203 USPQ 971, 975 (CCPA 1979) (computerized
method of generating printed architectural specifications
dependent on use of glossary of predefined standard phrases
and error - checking feature enabled by overall disclosure
generally defining errors);  In re Donohue , 550 F.2d 1269,
1271, 193 USPQ 136, 137 (CCPA 1977) ("Employment of block
diagrams and descriptions of their functions is not fatal
under  35  U.S.C.  112,  first  paragraph,  providing  the
represented structure is conventional and can be determined
without undue experimentation.");  In re Knowlton , 481 F.2d
1357, 1366 - 68, 178 USPQ 486, 493 - 94 (CCPA 1973)
(examiner's contention that a software invention needed a
detailed description of all the circuitry in the complete
hardware system reversed).

  For many computer - related inventions, it is not
unusual for the claimed invention to involve more than one
field of technology. For such inventions, the disclosure
must satisfy the enablement standard for each aspect of the
invention. See In re Naquin , 398 F.2d 863, 866, 158 USPQ
317, 319 (CCPA 1968) ("When an invention, in its different
aspects,  involves  distinct  arts,  that  specification  is
adequate which enables the adepts of each art, those who
have the best chance of being enabled, to carry out the
aspect proper to their specialty.");  Ex parte Zechnall ,
194 USPQ 461, 461 (Bd. App. 1973) ("appellants' disclosure
must be held sufficient if it would enable a person skilled
in the electronic computer art, in cooperation with a person
skilled  in  the  fuel  injection  art,  to  make  and  use
appellants' invention"). As such, the disclosure must teach
a person skilled in each art how to make and use the
relevant  aspect  of  the  invention  without  undue
experimentation.  For  example,  to  enable  a  claim  to  a
programmed computer that determines and displays the three -
dimensional structure of a chemical compound, the disclosure
must

  -  enable a person skilled in the art of molecular
modeling to understand and practice the underlying molecular
modeling processes; and

  -  enable a person skilled in the art of computer
programming to create a program that directs a computer to

create and display the image representing the three -
dimensional structure of the compound.

 In other words, the disclosure corresponding to each aspect
of the invention must be enabling to a person skilled in
each respective art.

  In  many  instances,  an  applicant  will  describe  a
programmed computer by outlining the significant elements of
the programmed computer using a functional block diagram.
Office personnel should review the specification to ensure
that along with the functional block diagram the disclosure
provides  information  that  adequately  describes  each
"element"  in  hardware  or  hardware  and  its  associated
software and how such elements are interrelated. See In re
Scarbrough , 500 F.2d 560, 565, 182 USPQ 298, 301 - 02 (CCPA
1974) ("It is not enough that a person skilled in the art,
by carrying on investigations along the line indicated in
the instant application, and by a great amount of work
eventually might find out how to make and use the instant
invention. The statute requires the application itself to
inform, not to direct others to find out for themselves
(citation omitted).");  Knowlton , 481 F.2d at 1367, 178
USPQ at 493 (disclosure must constitute more than a "sketchy
explanation of flow diagrams or a bare group of program
listings together with a reference to a proprietary computer
on which they might be run"). See also  In re Gunn,537 F.2d
1123, 1127 - 28, 190 USPQ 402, 405 (CCPA 1976);  In re
Brandstadter , 484 F.2d 1395, 1406 - 07, 17 USPQ 286, 294
(CCPA 1973); and  In re Ghiron , 442 F.2d 985, 991, 169 USPQ
723, 727 - 28 (CCPA 1971).

 VI.  Determine Whether the Claimed Invention Complies
with 35 U.S.C. 102 and 103

  As  is  the  case  for  inventions  in  any  field  of
technology, assessment of a claimed computer - related
invention for compliance with 35 U.S.C. 102 and 103 begins
with a comparison of the claimed subject matter to what is
known in the prior art. If no differences are found between
the  claimed  invention  and  the  prior  art,  the  claimed
invention lacks novelty and is to be rejected by Office
personnel  under  35  U.S.C.  102.  Once  distinctions  are
identified between the claimed invention and the prior art,
those distinctions must be assessed and resolved in light of
the knowledge possessed by a person of ordinary skill in the
art. Against this backdrop, one must determine whether the
invention would have been obvious at the time the invention
was made. If not, the claimed invention satisfies 35 U.S.C.
103. Factors and considerations dictated by law governing 35
U.S.C. 103 apply without modification to computer - related
inventions.

  If the difference between the prior art and the claimed
invention is limited to descriptive material stored on or
employed by a machine, Office personnel must determine
whether the descriptive material is functional descriptive
material or nonfunctional descriptive material, as described
supra in Section IV. Functional descriptive material is a
limitation in the claim and must be considered and addressed
in assessing patentability under 35 U.S.C. 103. Thus, a
rejection of the claim as a whole under 35 U.S.C. 103 is
inappropriate unless the functional descriptive material
would have been suggested by the prior art. Nonfunctional
descriptive material cannot render nonobvious an invention

that would have otherwise been obvious. Cf. In re Gulack ,
703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)
(when descriptive material is not functionally related to
the substrate, the descriptive material will not distinguish
the invention from the prior art in terms of patentability).

  Common situations involving nonfunctional descriptive
material are:

  -  a computer - readable storage medium that differs
from the prior art solely with respect to nonfunctional
descriptive material, such as music or a literary work,
encoded on the medium,

  -  a computer that differs from the prior art solely
with respect to nonfunctional descriptive material that
cannot  alter  how  the  machine  functions  (i.e.,  the
descriptive material does not reconfigure the computer), or

  -  a process that differs from the prior art only with
respect to nonfunctional descriptive material that cannot
alter how the process steps are to be performed to achieve
the utility of the invention.

 Thus, if the prior art suggests storing a song on a disk,
merely choosing a particular song to store on the disk would
be presumed to be well within the level of ordinary skill in
the art at the time the invention was made. The difference
between the prior art and the claimed invention is simply a
rearrangement of nonfunctional descriptive material.

 VII.  Clearly Communicate Findings, Conclusions and Their
Bases

  Once Office personnel have concluded the above analyses
of the claimed invention under all the statutory provisions,
including 35 U.S.C. 101, 112, 102 and 103, they should
review all the proposed rejections and their bases to
confirm their correctness. Only then should any rejection be
imposed in an Office action. The Office action should
clearly communicate the findings, conclusions and reasons
which support them.

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

2106.01  Computer Programming and 35 U.S.C. 112, First
Paragraph [R - 3]

  The requirements for sufficient disclosure of inventions
involving computer programming is the same as for all
inventions sought to be patented. Namely, there must be an
adequate written description, the original disclosure should
be sufficiently enabling to allow one to make and use the
invention as claimed, and there must be presentation of a
best mode for carrying out the invention.

  The following guidelines, while applicable to a wide
range of arts, are intended to provide a guide for analyzing
35 U.S.C. 112, first paragraph, issues in applications
involving computer programs, software, firmware, or block
diagram cases wherein one or more of the "block diagram"

elements are at least partially comprised of a computer
software component. It should be recognized that sufficiency
of disclosure issues in computer cases necessarily will
require  an  inquiry  into  both  the  sufficiency  of  the
disclosed hardware as well as the disclosed soft ware due to
the  interrelationship  and  interdependence  of  computer
hardware and software.

 Written Description

  The function of the description requirement is to ensure
that the inventor had possession of, as of the filing date
of the application relied on, the specific subject matter
later  claimed  by  him  or  her;  how  the  specification
accomplishes this is not material. In re Herschler , 200
USPQ 711, 717 (CCPA 1979) and further reiterated in  In re
Kaslow , 217 USPQ 1089 (Fed. Cir. 1983). See also, MPEP §
2163 - § 2163.04.

  Best Mode

  While the purpose of the best mode requirement is to
"restrain inventors from applying for patents while at the
same  time  concealing  from  the  public  the  preferred
embodiments of their inventions which they have in fact
conceived," In re Gay , 135 USPQ 311, 315 (CCPA 1962);
"**only evidence of concealment (accidental or intentional)
is to be considered >[in judging the adequacy of a best mode
disclosure]<  .  That  evidence,  in  order  to  result  in
affirmance of a best mode rejection, must tend to show that
the quality of an applicant's best mode dislosure is so poor
as to effectively result in concealment." In re Sherwood ,
204 USPQ 537, 544 (CCPA 1980). Also, see White Consolidated
Industries  v. Vega Servo - Control , 214 USPQ 796, 824
(S.D. Michigan, S. Div. 1982), aff'd on other grounds, 218
USPQ 961 (Fed. Cir. 1983).  See also, MPEP § 2165 - §
2165.04.

  >There  are  two  factual  inquiries  to  be  made  in
determining whether a specification satisfies the best mode
requirement. First, there must be a subjective determination
as to whether at the time the application was filed, the
inventor knew of a best mode of practicing the invention.
Second, if the inventor had a best mode of practicing the
invention, there must be an objective determination as to
whether the best mode was disclosed in sufficient detail to
allow one skilled in the art to practice it. Fonar Corp.  v.
General Electric Co., ___F.3d ___, 41 USPQ2d 1801, 1804
(Fed. Cir. 1997);  Chemcast Corp.  v.  Arco Industries , 913
F.2d 923, 927 - 28, 16 USPQ2d 1033, 1036 (Fed. Cir. 1990).
"As a general rule, where software constitutes part of a
best mode of carrying out an invention, description of such
a best mode is satisfied by a disclosure of the functions of
the software. This is because, normally, writing code for
such software is within the skill of the art, not requiring
undue  experimentation,  once  its  functions  have  been
disclosed . . [F]low charts or source code listings are
not a requirement for adequately disclosing the functions of
software."  Fonar Corp., ___ F.3d at ___, 41 USPQ2d at 1805
(citations omitted).<

  Enablement

  When  basing  a  rejection  on  the  failure  of  the
applicant's disclosure to meet the enablement provisions of

the first paragraph of 35 U.S.C. 112, the examiner must
establish on the record that he has a reasonable basis for
questioning the adequacy of the disclosure to enable a
person of ordinary skill in the art to make and use the
claimed invention without resorting to undue experimentation
. See  In re Brown , 177 USPQ 691 (CCPA 1973);  In re Ghiron
, 169 USPQ 723 (CCPA 1971). Once the examiner has advanced a
reasonable  basis  for  questioning  the  adequacy  of  the
disclosure, it becomes incumbent on the applicant to rebut
that challenge and factually demonstrate that his or her
application disclosure is in fact sufficient. See  In re
Doyle , 179 USPQ at 232 (CCPA 1973);  In re Scarbrough , 182
USPQ 298, 302 (CCPA 1974);  In re Ghiron, supra . See also,
MPEP § 2106, V.B.2 and § 2164 - § 2164.08(c).

2106.02  Disclosure in Computer Programming Cases [R - 1]

  >To establish a reasonable basis for questioning the
adequacy of a disclosure, the examiner must present a
factual analysis of a disclosure to show that a person
skilled in the art would not be able to make and use the
claimed  invention  without  resorting  to  undue
experimentation.

  In computer cases, it is not unusual for the claimed
invention to involve two areas of prior art or more than one
technology, ( White Consolidated, supra , 214 USPQ at 821);
e.g., an appropriately programmed computer and an area of
application of said computer. In regard to the "skilled in
the art" standard, in cases involving both the art of
computer programming, and another technology, the examiner
must recognize that the knowledge of persons skilled in both
technologies is the appropriate criteria for determining
sufficiency. See  In re Naquin , 158 USPQ 317, (CCPA1968);
In re Brown , 177 USPQ 691 (CCPA 1973); and  White
Consolidated, supra at B22.

  In a typical computer case, system components are often
represented in a "block diagram" format, i.e., a group of
hollow rectangles representing the elements of the system,
functionally labelled, and interconnected by lines. Such
block diagram computer cases may be categorized into (1)
systems which include but are more comprehensive than a
computer and (2) systems wherein the block elements are
totally within the confines of a computer.

  BLOCK ELEMENTS MORE COMPREHENSIVE THAN A COMPUTER

  The first category of such block diagram cases involves
systems which include a computer as well as other system
hardware and/or software components. In order to meet his
burden of establishing a reasonable basis for questioning
the  adequacy  of  such  disclosure,  the  examiner  should
initiate a factual analysis of the system by focusing on
each  of  the  individual  block  element  components.  More
specifically, such an inquiry should focus on the diverse
functions attributed to each block element as well as the
teachings in the specification as to how such a component
could be implemented. If based on such an analysis, the
examiner can reasonably contend that more than routine
experimentation would be required by one of ordinary skill
in the art to implement such a component or components, that
component or components should specifically be challenged by
the examiner as part of a 35 U.S.C. 112, first paragraph
rejection.  Additionally,  the  examiner  should  determine

whether certain of the hardware or software components
depicted  as  block  elements  are  themselves  complex
assemblages which have widely differing characteristics and
which must be precisely coordinated with other complex
assemblages. Under such circumstances, a reasonable basis
may exist for challenging such a functional block diagram
form of disclosure. See In re Ghiron, supra, In re Brown,
supra . Moreover, even if the applicant has cited prior art
patents or publications to demonstrate that particular block
diagram hardware or software components are old, it should
not  always  be  considered  as  self  -  evident  how  such
components  are  to  be  interconnected  to  function  in  a
disclosed complex manner. See  In re Scarbrough ,  supra, at
301 and  In re Forman , 175 USPQ 12, 16 (CCPA 1972).
Furthermore,  in  complex  systems  including  a  digital
computer, a microprocessor, or a complex control unit as one
of many block diagram elements, timing between various
system elements may be of the essence and without a timing
chart relating the timed sequences for each element, an
unreasonable amount of work may be required to come up with
the detailed relationships an applicant alleges that he has
solved. See  In re Scarbrough, supra at 302.

  For example, in a block diagram disclosure of a complex
claimed system which includes a microprocessor and other
system components controlled by the microprocessor, a mere
reference  to  a  prior  art,  commercially  available
microprocessor,  without  any  description  of  the  precise
operations to be performed by the microprocessor, fails to
disclose  how  such  a  microprocessor  would  be  properly
programmed to either perform any required calculations or to
coordinate the other system components in the proper timed
sequence to perform the functions disclosed and claimed .
If, in such a system, a particular program is disclosed,
such a program should be carefully reviewed to ensure that
its scope is commensurate with the scope of the functions
attributed to such a program in the claims. See In re Brown,
supra at 695. If the disclosure fails to disclose any
program and if more than routine experimentation would be
required of one skilled in the art to generate such a
program, the examiner clearly would have a reasonable basis
for challenging the sufficiency of such a disclosure. The
amount of experimentation that is considered routine will
vary depending on the facts and circumstances of individual
cases. No exact numerical standard has been fixed by the
courts, but the "amount of required experimentation must,
however, be reasonable" (  White Consolidated, supra , at
963.)  One  court  apparently  found  that  the  amount  of
experimentation involved was reasonable where a skilled
programmer was able to write a general computer program,
implementing  an  embodiment  form,  within  4  hours.  (
Hirschfield, supra , at 279 et seq.). On the other hand,
another court found that, where the required period of
experimentation  for  skilled  programmers  to  develop  a
particular program would run to 1 ½ to 2 man years, this
would be "a clearly unreasonable requirement" (  White
Consolidated, supra at 963).

 BLOCK ELEMENTS WITHIN A COMPUTER

  The second category of block diagram cases occurs most
frequently in pure data processing applications where the
combination of block elements is totally within the confines
of a computer, there being no interfacing with external
apparatus other than normal input/output devices. In some

instances, it has been found that particular kinds of block
diagram disclosures were sufficient to meet the enabling
requirement of 35 U.S.C. 112, first paragraph. See In re
Knowlton , 178 USPQ 486 (CCPA 1973),  In re Comstock and
Gilmer , 178 USPQ 616 (CCPA 1973). Most significantly,
however, in both the Comstock and  Knowlton cases, the
decisions turned on the appellants disclosure of (1) a
reference  to  and  reliance  on  an  identified  prior  art
computer system and (2) an operative computer program for
the referenced prior art computer system. Moreover, in
Knowlton the disclosure was presented in such a detailed
fashion  that  the  individual  program's  steps  were
specifically  interrelated  with  the  operative  structural
elements in the referenced prior art computer system. The
Court in  Knowlton indicated that the disclosure did not
merely consist of a sketchy explanation of flow diagrams or
a bare group of program listings together with a reference
to a proprietary computer in which they might be run. The
disclosure was characterized as going into considerable
detail into explaining the interrelationships between the
disclosed  hardware  and  software  elements.  Under  such
circumstances, the Court considered the disclosure to be
concise as well as full, clear, and exact to a sufficient
degree to satisfy the literal language of 35 U.S.C. 112,
first paragraph. It must be emphasized that because of the
significance of the program listing and the reference to and
reliance on an identified prior art computer system, absent
either of these items, a block element disclosure within the
confines of a computer should be scrutinized in precisely
the same manner as the first category of block diagram cases
discussed above.

  Regardless  of  whether  a  disclosure  involves  block
elements  more  comprehensive  than  a  computer  or  block
elements totally within the confines of a computer, the
examiner, when analyzing method claims, must recognize that
the specification must be adequate to teach how to practice
the claimed method. If such practice requires particular
apparatus,  it  is  axiomatic  that  the  application  must
therefore provide a sufficient disclosure of that apparatus
if such is not already available. See In re Ghiron, supra at
727 and  In re Gunn , 190 USPQ 402, 406 (CCPA 1976). When
the examiner questions the adequacy of computer system or
computer programming disclosures, the examiner's reasons for
finding  the  specification  to  be  nonenabling  should  be
supported by the record as a whole. In this regard, it is
also essential for the examiner to reasonably challenge
evidence submitted by the applicant. For example, in  In re
Naquin, supra , affiant's statement unchallenged by the
examiner, that the average computer programmer was familiar
with the subroutine necessary for performing the claimed
process, was held to be a statement of fact which rendered
the examiner's rejection baseless. In other words, unless
the examiner presents a reasonable basis for challenging the
disclosure in view of the record as a whole, a 35 U.S.C.
112, first paragraph rejection in a computer system or
computer programming case will not be sustained on appeal.
See  In re Naquin, supra, In re Morehouse and Bolton , 192
USPQ 29, 32 (CCPA 1976).

  While no specific universally applicable rule exists for
recognizing  an  insufficiently  disclosed  application
involving  computer  programs,  an  examining  guideline  to
generally follow is to challenge the sufficiency of such
disclosures  which  fail  to  include  either  the  computer

program itself or a reasonably detailed flowchart which
delineates the sequence of operations the program must
perform. In programming applications software disclosure
only includes a flowchart, as the complexity of functions
and the generality of the individual components of the
flowchart  increase,  the  basis  for  challenging  the
sufficiency of such a flowchart becomes more reasonable
because the likelihood of more than routine experimentation
being required to generate a working program from such a
flowchart also increases.

  As stated earlier, once an examiner has advanced a
reasonable basis or presented evidence to question the
adequacy  of  a  computer  system  or  computer  programming
disclosure,  the  applicant  must  show  that  his  or  her
specification would enable one of ordinary skill in the art
to make and use the claimed invention without resorting to
undue experimentation. In most cases, efforts to meet this
burden involve submitting affidavits, referencing prior art
patents or technical publications, arguments of counsel, or
combinations of these approaches.

  AFFIDAVIT PRACTICE (37 CFR 1.132)

  In  computer  cases,  affidavits  must  be  critically
analyzed.  Affidavit  practice  usually  initially  involves
analyzing the skill level and/or qualifications of the
affiant, which should be of the routineer in the art. When
an affiant's skill level is higher than that required by the
routineer for a particular application, an examiner may
challenge the affidavit since it would not be made by a
routineer in the art, and therefore would not be probative
as to the amount of experimentation required by a routineer
in the art to implement the invention. An affiant having a
skill level or qualifications above that of the routineer in
the art would require less experimentation to implement the
claimed invention than that for the routineer. Similarly, an
affiant having a skill level or qualifications below that of
the routineer in the art would require more experimentation
to  implement  the  claimed  invention  than  that  for  the
routineer in the art. In either situation, the standard of
the routineer in the art would not have been met.

  In computer systems or programming cases, the problems
with a given affidavit, which relate to the sufficiency of
disclosure issue, generally involve affiants submitting few
facts  to  support  their  conclusions  or  opinions.  Some
affidavits may go so far as to present conclusions on the
ultimate legal question of sufficiency. In re Brandstadter,
Kienzle and Sykes , 179 USPQ 286 (CCPA 1973) illustrates the
extent of the inquiry into the factual basis underlying an
affiant's conclusions or opinions. In  Brandstadter , the
invention concerned a stored program controller (computer)
programmed  to  control  the  storing,  retrieving,  and
forwarding of messages in a communications system. The
disclosure consisted of broadly defined block diagrams of
the structure of the invention and no flowcharts or program
listings of the programs of the controller. The Court quoted
extensively  from  the  Examiner's  Office  Actions  and
Examiner's Answer in its opinion where it was apparent that
the Examiner consistently argued that the disclosure was
merely a broad system diagram in the form of labelled block
diagrams along with statements of a myriad of desired
results. Various affidavits were presented in which the
affiants stated that all or some of the system circuit

elements in the block diagrams were either well - known in
the art or "could be constructed" by the skilled design
engineer,  that  the  controller  was  "capable  of  being
programmed" to perform the stated functions or results
desired, and that the routineer in the art "could design or
construct or was able to program" the system. The Court did
consider the affiants' statements as being some evidence on
the ultimate legal question of enablement but concluded that
the statements failed in their purpose since they recited
conclusions  or  opinions  with  few  facts  to  support  or
buttress these conclusions. With reference to the lack of a
disclosed computer program or even a flowchart of the
program to control the message switching system, the record
contained no evidence as to the number of programmers
needed, the number of man - hours and the level of skill of
the programmers to produce the program required to practice
the invention.

  It should be noted also that it is not opinion evidence
directed to the ultimate legal question of enablement, but
rather factual evidence directed to the amount of time and
effort and level of knowledge required for the practice of
the  invention  from  the  disclosure  alone  which  can  be
expected to rebut a  prima facie case of nonenablement. See
Hirschfield  v  . Banner, Commissioner of Patents and
Trademarks  , 200 USPQ 276, 281 (D.D.C. 1978). It has also
been held that where an inventor described the problem to be
solved to an affiant, thus enabling the affiant to generate
a computer program to solve the problem, such an affidavit
failed to demonstrate that the application alone would have
taught a person of ordinary skill in the art how to make and
use the claimed invention. See  In re Brown, supra  at 695.
The Court indicated that it was not factually established
that the applicant did not convey to the affiant vital and
additional information in their several meetings in addition
to that set out in the application. Also of significance for
an  affidavit  to  be  relevant  to  the  determination  of
enablement is that it must be probative of the level of
skill of the routineer in the art as of the time the
applicant filed his application. See  In re Gunn, supra  at,
406. In this case, each of the affiants stated what was
known at the time he executed the affidavit, and not what
was known at the time the applicant filed his application.

 REFERENCING PRIOR ART DOCUMENTS

  Earlier, it had been discussed that citing in the
specification the commercial availability of an identified
prior art computer system is very pertinent to the issue of
enablement. But in some cases, this approach may not be
sufficient to meet the applicant's burden. Merely citing in
an affidavit extracts from technical publications in order
to satisfy the enablement requirement is not sufficient if
it is not made clear that a person skilled in the art would
know which, or what parts, of the cited circuits could be
used to construct the claimed device or how they could be
interconnected to act in combination to produce the required
results. See In re Forman, supra at 16. This analysis would
appear to be less critical where the circuits comprising
applicant's  system  are  essentially  standard  components
comprising an identified prior art computer system and a
standard device attached thereto.

  Prior art patents are often relied on by applicants to
show the state of the art for purposes of enablement.

However, these patents must have an issue date earlier than
the  effective  filing  date  of  the  application  under
consideration. See In re Budnick , 190 USPQ 422, 424 (CCPA
1976). An analogous point was made in  In re Gunn, supra
where the court indicated that patents issued after the
filing date of the applicant's application are not evidence
of subject matter known to any person skilled in the art
since their subject matter may have been known only to the
patentees and the Patent and Trademark Office.

  Merely citing prior art patents to demonstrate that the
challenged components are old may not be sufficient proof
since, even if each of the enumerated devices or labelled
blocks in a block diagram disclosure were old, per se, this
would  not  make  it  self  -  evident  how  each  would  be
interconnected  to  function  in  a  disclosed  complex
combination manner. Therefore, the specification in effect
must set forth the integration of the prior art; otherwise,
it is likely that undue experimentation, or more than
routine experimentation would be required to implement the
claimed invention. See In re Scarbrough, supra at 301. The
Court also noted that any cited patents which are used by
the applicant to demonstrate that particular box diagram
hardware or software components are old must be analyzed as
to whether such patents are germane to the instant invention
and as to whether such components provide better detail of
disclosure as to such components than an applicant's own
disclosure. Also any patent or publication cited to provide
evidence that a particular programming technique is well -
known in the programming art does not demonstrate that one
of  ordinary  skill  in  the  art  could  make  and  use
correspondingly disclosed programming techniques unless both
programming techniques are of approximately the same degree
or complexity. See In re Knowlton, supra at 37 (CCPA 1974).

  ARGUMENTS OF COUNSEL

  Arguments of counsel may be effective in establishing
that an examiner has not properly met his or her burden or
has otherwise erred in his or her position. In these
situations, an examiner may have failed to set forth any
basis for questioning the adequacy of the disclosure or may
not have considered the whole specification, including the
drawings and the written description. However, it must be
emphasized that arguments of counsel alone cannot take the
place of evidence in the record once an examiner has
advanced a reasonable basis for questioning the disclosure.
See In re Budnick, supra at, 424;  In re Schulze , 145 USPQ
716 (CCPA 1965); and  In re Cole , 140 USPQ 230 (CCPA 1964).
For  example,  in  a  case  where  the  record  consisted
substantially  of  arguments  and  opinions  of  applicant's
attorney, the Court indicated that factual affidavits could
have provided important evidence on the issue of enablement.
See  In re Knowlton, supra at, 37 and  In re Wiseman , 201
USPQ 658 (CCPA 1979).<

2107  General Principles Governing Utility Rejections [R
- 1]

 >35 U.S.C. 101  Inventions patentable

  Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof may obtain a patent therefor,
subject to the conditions and requirements of this title.

  See  MPEP  §  706.03(a)(1)  for  guidelines  for  the
examination of applications for compliance with the utility
requirement of 35 U.S.C. 101.

  The Office must examine each application to ensure
compliance  with  the  "useful  invention"  or  utility
requirement  of  35  U.S.C.  101.  In  discharging  this
obligation, however, Office personnel must keep in mind
several general principles that control application of the
utility requirement. As interpreted by the Federal courts,
35 U.S.C. 101 has two purposes. First, 35 U.S.C. 101 defines
which categories of inventions are eligible for patent
protection. An invention that is not a machine, an article
of  manufacture,  a  composition  or  a  process  cannot  be
patented. See Diamond v.  Chakrabarty , 447 U.S. 303, 206
USPQ 193 (1980);  Diamond v.  Diehr , 450 U.S. 175, 209 USPQ
1 (1981). Second, 35 U.S.C. 101 serves to ensure that
patents are granted on only those inventions that are
"useful." This second purpose has a Constitutional footing -
Article I, Section 8 of the Constitution authorizes Congress
to provide exclusive rights to inventors to promote the
"useful arts." See  Carl Zeiss Stiftung v.  Renishaw PLC ,
945 F.2d 1173, 20 USPQ2d 1094 (Fed. Cir. 1991). Thus, to
satisfy the requirements of 35 U.S.C. 101, an applicant must
claim an invention that is statutory subject matter and must
show that the claimed invention is "useful" for some purpose
either explicitly or implicitly. Application of this latter
element of 35 U.S.C. 101 is the focus of these guidelines.

  Deficiencies under the "useful invention" requirement of
35 U.S.C. 101 will arise in one of two forms. The first is
where it is not apparent why the applicant believes the
invention to be "useful." This can occur when an applicant
fails to identify any specific utility for the invention or
fails to disclose enough information about the invention to
make its usefulness immediately apparent to those familiar
with the technological field of the invention. Brenner v.
Manson , 383 U.S. 519, 148 USPQ 689 (1966);  In re Ziegler ,
992 F.2d 1197, 26 USPQ2d 1600 (Fed. Cir. 1993). The second
type of deficiency arises in the rare instance where an
assertion of specific utility for the invention made by an
applicant is not credible.

  a.  "Real world value" requirement

  To satisfy 35 U.S.C. 101, an invention must be "useful."
Courts have recognized that the term "useful" used with
reference to the utility requirement can be a difficult term
to define. Brenner v.  Manson , 383 U.S. 519, 529, 148 USPQ
689, 693 (1966) (simple everyday word like "useful" can be
"pregnant with ambiguity when applied to the facts of
life.").  Where  an  applicant  has  set  forth  a  specific
utility, courts have been reluctant to uphold a rejection
under 35 U.S.C. 101 solely on the basis that the applicant's
opinion as to the nature of the specific utility was
inaccurate. For example, in  Nelson v.  Bowler , 626 F.2d
853, 206 USPQ 881 (CCPA 1980), the CCPA reversed a finding
by the Office that the applicant had not set forth a
"practical" utility under 35 U.S.C. 101 despite the fact
that  the  applicant  asserted  that  the  composition  was
"useful" in a particular pharmaceutical application and
provided evidence to support that assertion. Courts have
used the labels "practical utility" or "specific utility" to
refer to this aspect of the "useful invention" requirement

of 35 U.S.C. 101. As the Court of Customs and Patent Appeals
stated in  Nelson v.  Bowler :

 Practical utility is a shorthand way of attributing "real -
world" value to claimed subject matter. In other words, one
skilled in the art can use a claimed discovery in a manner
which provides some immediate benefit to the public.

 Nelson  v.  Bowler , 626 F.2d 853, 856, 206 USPQ 881, 883
(CCPA 1980).

  Practical considerations require the Office to rely on
the inventor's understanding of his or her invention in
determining whether and in what regard an invention is
believed to be "useful." Because of this, Office personnel
should focus on and be receptive to specific assertions made
by the applicant that an invention is "useful" for a
particular  reason.  Office  personnel  should  distinguish
between  situations  where  an  applicant  has  disclosed  a
specific  use  for  or  application  of  the  invention  and
situations where the applicant merely indicates that the
invention  may  prove  useful  without  identifying  with
specificity  why  it  is  considered  useful.  For  example,
indicating  that  a  compound  may  be  useful  in  treating
unspecified disorders, or that the compound has "useful
biological" properties, would not be sufficient to define a
specific utility for the compound. Contrast the situation
where an applicant discloses a specific biological activity
and  reasonably  correlates  that  activity  to  a  disease
condition. Assertions falling within the latter category are
sufficient to identify a specific utility for the invention.
Assertions that fall in the former category are insufficient
to define a specific utility for the invention, especially
if the assertion takes the form of a general statement that
makes it clear that a "useful" invention may arise from what
has been disclosed by the applicant.  Knapp v.  Anderson ,
477 F.2d 588, 177 USPQ 688 (CCPA 1973).

  Some confusion can result when one attempts to label
certain types of inventions as not being capable of having a
specific utility based on the setting in which the invention
is to be used. One example are inventions to be used in a
research or laboratory setting. Many research tools such as
gas  chromatographs,  screening  assays,  and  nucleotide
sequencing  techniques  have  a  clear,  specific  and
unquestionable utility (e.g., they are useful in analyzing
compounds).  An  assessment  that  focuses  on  whether  an
invention is useful only in a research setting thus does not
address whether the specific invention is in fact "useful"
in  a  patent  sense.  Instead,  Office  personnel  must
distinguish between inventions that have a specifically
identified utility and inventions whose specific utility
requires further research to identify or reasonably confirm.
Labels such as "research tool," "intermediate" or "for
research purposes" are not helpful in determining if an
applicant  has  identified  a  specific  utility  for  the
invention.

  Office personnel also must be careful not to interpret
the phrase "immediate benefit to the public" or similar
formulations  in  other  cases  to  mean  that  products  or
services based on the claimed invention must be "currently
available" to the public in order to satisfy the utility
requirement. See, e.g., Brenner v.  Manson , 383 U.S. 519,
534 - 35, 148 USPQ 689, 695 (1966). Rather, any reasonable

use that an applicant has identified for the invention that
can be viewed as providing a public benefit should be
accepted as sufficient, at least with regard to defining a
"specific" utility.

  b.  Wholly inoperative inventions; "Incredible" utility

  An invention that is "inoperative" (i.e., it does not
operate  to  produce  the  results  claimed  by  the  patent
applicant) is not a "useful" invention in the meaning of the
patent law. See, e.g., Newman v.  Quigg , 877 F.2d 1575,
1581, 11 USPQ2d 1340, 1345 (Fed. Cir. 1989);  In re Harwood
, 390 F.2d 985, 989, 156 USPQ 673, 676 (CCPA 1968) ("An
inoperative invention, of course, does not satisfy the
requirement of 35 U.S.C. 101 that an invention be useful.").
However, as the Federal Circuit has stated, "[t]o violate
[35  U.S.C.  ]  101  the  claimed  device  must  be  totally
incapable of achieving a useful result ."  Brooktree Corp.
v.  Advanced Micro Devices, Inc. , 977 F.2d 1555, 1571, 24
USPQ2d 1401, 1412 (Fed. Cir. 1992) (emphasis added). See
also  E.I. du Pont De Nemours and Co. v.  Berkley and Co. ,
620 F.2d 1247, 1260 n.17, 205 USPQ 1, 10 n.17 (8th Cir.
1980) ("A small degree of utility is sufficient . . The
claimed invention must only be capable of performing some
beneficial function . . An invention does not lack utility
merely because the particular embodiment disclosed in the
patent  lacks  perfection  or  performs  crudely  .  .  .  A
commercially successful product is not required . . Nor is
it essential that the invention accomplish all its intended
functions . . or operate under all conditions . .
partial success being sufficient to demonstrate patentable
utility . . In short, the defense of non - utility cannot
be sustained without proof of total incapacity." If an
invention is only partially successful in achieving a useful
result, a rejection of the claimed invention as a whole
based on a lack of utility is not appropriate. See  In re
Brana , 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995);  In
re Gardner , 475 F.2d 1389, 177 USPQ 396 (CCPA),  reh'g
denied , 480 F.2d 879 (CCPA 1973);  In re Marzocchi , 439
F.2d 220, 169 USPQ 367 (CCPA 1971).

  Situations  where  an  invention  is  found  to  be
"inoperative" and therefore lacking in utility are rare, and
rejections maintained solely on this ground by a Federal
court even rarer. In many of these cases, the utility
asserted by the applicant was thought to be "incredible in
the  light  of  the  knowledge  of  the  art,  or  factually
misleading" when initially considered by the Office. In re
Citron , 325 F.2d 248, 253, 139 USPQ 516, 520 (CCPA 1963).
Other cases suggest that on initial evaluation, the Office
considered the asserted utility to be inconsistent with
known scientific principles or "speculative at best" as to
whether attributes of the invention necessary to impart the
asserted utility were actually present in the invention.  In
re Sichert , 566 F.2d 1154, 196 USPQ 209 (CCPA 1977).
However cast, the underlying finding by the court in these
cases was that, based on the factual record of the case, it
was clear that the invention could and did not work as the
inventor claimed it did. Indeed, the use of many labels to
describe a single problem (e.g., an assertion regarding
utility that is false) has led to some of the confusion that
exists today with regard to a rejection based on the
"utility" requirement. Examples of such cases include: an
invention asserted to change the taste of food using a
magnetic field (  Fregeau v.  Mossinghoff , 776 F.2d 1034,

227 USPQ 848 (Fed. Cir. 1985)), a perpetual motion machine (
Newman v.  Quigg , 877 F.2d 1575, 11 USPQ2d 1340 (Fed. Cir.
1989)), a flying machine operating on "flapping or flutter
function" (  In re Houghton , 433 F.2d 820, 167 USPQ 687
(CCPA 1970)), a method for increasing the energy output of
fossil fuels upon combustion through exposure to a magnetic
field (  In re Ruskin , 354 F.2d 395, 148 USPQ 221 (CCPA
1966)), uncharacterized compositions for curing a wide array
of cancers (  In re Citron , 325 F.2d 248, 139 USPQ 516
(CCPA 1963)), a method of controlling the aging process (
In re Eltgroth , 419 F.2d 918, 164 USPQ 221 (1970)), and a
method of restoring hair growth (  In re Ferens , 417 F.2d
1072, 163 USPQ 609 (CCPA 1969)). Thus, in view of the rare
nature of such cases, Office personnel should not label an
asserted utility "incredible," "speculative" or otherwise
unless it is clear that a rejection based on "lack of
utility" is proper.

  c.  Therapeutic or pharmacological utility

  Inventions asserted to have utility in the treatment of
human or animal disorders are subject to the same legal
requirements for utility as inventions in any other field of
technology. In re Chilowsky , 229 F.2d 457, 461 - 2, 108
USPQ 321, 325 (CCPA 1956) ("There appears to be no basis in
the statutes or decisions for requiring any more conclusive
evidence of operativeness in one type of case than another.
The character and amount of evidence needed may vary,
depending on whether the alleged operation described in the
application  appears  to  accord  with  or  to  contravene
established  scientific  principles  or  to  depend  upon
principles alleged but not generally recognized, but the
degree of certainty as to the ultimate fact of operativeness
or inoperativeness should be the same in all cases");  In re
Gazave , 379 F.2d 973, 978, 154 USPQ 92, 96 (CCPA 1967)
("Thus, in the usual case where the mode of operation
alleged can be readily understood and conforms to the known
laws  of  physics  and  chemistry,  operativeness  is  not
questioned, and no further evidence is required."). As such,
pharmacological or therapeutic inventions that provide any
"immediate benefit to the public" satisfy 35 U.S.C. 101. The
utility being asserted in  Nelson related to a compound with
pharmacological utility.  Nelson v.  Bowler , 626 F.2d 853,
856, 206 USPQ 881, 883 (CCPA 1980). Office personnel should
rely on  Nelson and other cases as providing general
guidance when evaluating the utility of an invention that is
based on any therapeutic, prophylactic, or pharmacological
activities of that invention.

  Courts  have  repeatedly  found  that  the  mere
identification of a pharmacological activity of a compound
that is relevant to an asserted pharmacological use provides
an "immediate benefit to the public" and thus satisfies the
utility requirement. As the CCPA held in  Nelson v.  Bowler
:

 Knowledge of the pharmacological activity of any compound
is obviously beneficial to the public. It is inherently
faster and easier to combat illnesses and alleviate symptoms
when the medical profession is armed with an arsenal of
chemicals having known pharmacological activities. Since it
is crucial to provide researchers with an incentive to
disclose pharmacological activities in as many compounds as
possible, we conclude that adequate proof of any such
activity constitutes a showing of practical utility.

 Nelson v.  Bowler , 626 F.2d 853, 856, 206 USPQ 881, 883
(CCPA 1980).

  In Nelson v.  Bowler , the CCPA addressed the practical
utility  requirement  in  the  context  of  an  interference
proceeding.  Bowler  challenged  the  patentability  of  the
invention claimed by Nelson on the basis that Nelson had
failed to sufficiently and persuasively disclose in his
application a practical utility for the invention. Nelson
had  developed  and  claimed  a  class  of  synthetic
prostaglandins  modeled  on  naturally  occurring
prostaglandins.  Naturally  occurring  prostaglandins  are
bioactive  compounds  that,  at  the  time  of  Nelson's
application, had a recognized value in pharmacology (e.g.,
the stimulation of uterine smooth muscle which resulted in
labor induction or abortion, the ability to raise or lower
blood pressure, etc.). To support the utility he identified
in his disclosure, Nelson included in his application the
results of tests demonstrating the bioactivity of his new
substituted prostaglandins relative to the bioactivity of
naturally occurring prostaglandins. The Court concluded that
Nelson had satisfied the practical utility requirement in
identifying  the  synthetic  prostaglandins  as
pharmacologically  active  compounds.  In  reaching  this
conclusion, the court considered and rejected arguments
advanced by Bowler that attacked the evidentiary basis for
Nelson's  assertions  that  the  compounds  were
pharmacologically active.

  In In re Jolles , 628 F.2d 1322, 206 USPQ 885 (CCPA
1980), an inventor claimed protection for pharmaceutical
compositions for treating leukemia. The active ingredient in
the  compositions  was  a  structural  analog  to  a  known
anticancer agent. The applicant provided evidence showing
that the claimed analogs had the same general pharmaceutical
activity as the known anticancer agents. The Court reversed
the Board's finding that the asserted pharmaceutical utility
was "incredible," pointing to the evidence that showed the
relevant pharmacological activity.

  In Cross v.  Iizuka , 753 F.2d 1040, 224 USPQ 739 (Fed.
Cir. 1985), the Federal Circuit affirmed a finding by the
Board  of  Patent  Appeals  and  Interferences  that  a
pharmacological  utility  had  been  disclosed  in  the
application of one party to an interference proceeding. The
invention that was the subject of the interference count was
a chemical compound used for treating blood disorders. Cross
had challenged the evidence in Iizuka's specification that
supported the claimed utility. However, the Federal Circuit
relied extensively on  Nelson v.  Bowler in finding that
Iizuka's  application  had  sufficiently  disclosed  a
pharmacological utility for the compounds. It distinguished
the case from cases where only a generalized "nebulous"
expression,  such  as  "biological  properties,"  had  been
disclosed in a specification. Such statements, the court
held,  "convey  little  explicit  indication  regarding  the
utility of a compound."  Cross , 753 F.2d at 1048, 224 USPQ
at 745 (citing  In re Kirk , 376 F.2d 936, 941, 153 USPQ 48,
52 (CCPA 1967)).

  Similarly, courts have found utility for therapeutic
inventions despite the fact that an applicant is at a very
early stage in the development of a pharmaceutical product
or therapeutic regimen based on a claimed pharmacological or

bioactive compound or composition. The Federal Circuit, in
Cross v.  Iizuka , 753 F.2d 1040, 1051, 224 USPQ 739, 747 -
48 (Fed. Cir. 1985), commented on the significance of data
from  in vitro testing that showed pharmacological activity:

 We perceive no insurmountable difficulty, under appropriate
circumstances,  in  finding  that  the  first  link  in  the
screening chain, in vitro testing, may establish a practical
utility for the compound in question. Successful  in vitro
testing will marshal resources and direct the expenditure of
effort to further  in vivo testing of the most potent
compounds, thereby providing an immediate benefit to the
public, analogous to the benefit provided by the showing of
an  in vivo utility.

 Recently, the Federal Circuit reiterated that therapeutic
utility sufficient under the patent laws is not to be
confused with the requirements of the FDA with regard to
safety and efficacy of drugs to marketed in the United
States.

 FDA approval, however, is not a prerequisite for finding a
compound useful within the meaning of the patent laws. Scott
[v.  Finney ], 34 F.3d 1058, 1063, 32 USPQ2d 1115, 1120
[(Fed.Cir.1994)].  Usefulness  in  patent  law,  and  in
particular in the context of pharmaceutical inventions,
necessarily includes the expectation of further research and
development. The stage at which an invention in this field
becomes useful is well before it is ready to be administered
to humans. Were we to require Phase II testing in order to
prove utility, the associated costs would prevent many
companies from obtaining patent protection on promising new
inventions, thereby eliminating an incentive to pursue,
through research and development, potential cures in many
crucial areas such as the treatment of cancer.

 In re Brana , 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir.
1995). Accordingly, Office personnel should not construe 35
U.S.C. 101, under the logic of "practi cal" utility or
otherwise, to require that an applicant demonstrate that a
therapeutic agent based on a claimed invention is a safe or
fully effective drug for humans. See, e.g.,  In re Sichert ,
566 F.2d 1154, 196 USPQ 209 (CCPA 1977);  In re Hartop , 311
F.2d 249, 135 USPQ 419 (CCPA 1962);  In re Anthony , 414
F.2d 1383, 162 USPQ 594 (CCPA 1969);  In re Watson , 517
F.2d 465, 186 USPQ 11 (CCPA 1975).

  These general principles are equally applicable to
situations where an applicant has claimed a process for
treating a human or animal disorder. In such cases, the
asserted  utility  is  usually  clear  -  the  invention  is
asserted to be useful in treating the particular disorder.
If the asserted utility is credible , there is no basis to
challenge such a claim on the basis that it lacks utility
under 35 U.S.C. 101.

  d.  Relationship  between  35  U.S.C.  112,  first
paragraph, and 35 U.S.C. 101

  A  deficiency  under  35  U.S.C.  101  also  creates  a
deficiency under 35 U.S.C. 112, first paragraph. See In re
Brana , 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995);  In
re Jolles , 628 F.2d 1322, 1326 n.10, 206 USPQ 885, 889 n.11
(CCPA 1980);  In re Fouche , 439 F.2d 1237, 1243, 169 USPQ
429, 434 (CCPA 1971) ("If such compositions are in fact

useless, appellant's specification cannot have taught how to
use them."). Courts have also cast the 35 U.S.C. 101 / 35
U.S.C. 112 relationship such that 35 U.S.C. 112 presupposes
compliance with 35 U.S.C. 101 compliance. See  In re Ziegler
, 992 F.2d 1197, 1200 - 1201, 26 USPQ2d 1600, 1603 (Fed.
Cir.  1993)  ("The  how  to  use  prong  of  section  112
incorporates as a matter of law the requirement of 35 U.S.C.
101 that the specification disclose as a matter of fact a
practical utility for the invention. ... If the application
fails as a matter of fact to satisfy 35 U.S.C. § 101, then
the application also fails as a matter of law to enable one
of ordinary skill in the art to use the invention under 35
U.S.C. § 112.");  In re Kirk , 376 F.2d 936, 942, 153 USPQ
48, 53 (CCPA 1967) ("Necessarily, compliance with § 112
requires a description of how to use presently useful
inventions, otherwise an applicant would anomalously be
required to teach how to use a useless invention."). For
example, the Federal Circuit recently noted, "[o]bviously,
if  a  claimed  invention  does  not  have  utility,  the
specification cannot enable one to use it."  In re Brana ,
51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995). As such, a
rejection properly imposed under 35 U.S.C. 101 should be
accompanied with a rejection under 35 U.S.C. 112, first para
graph. It is equally clear that a rejection based on "lack
of utility," whether grounded upon 35 U.S.C. 101 or 35
U.S.C. 112, first paragraph, rests on the same basis (i.e.,
the asserted utility is not credible). To avoid confusion,
any rejection that is imposed on the basis of 35 U.S.C. 101
should be accompanied by a rejection based on 35 U.S.C. 112,
first  paragraph.  The  35  U.S.C.  112,  first  paragraph,
rejection should be set out as a separate rejection that
incorporates by reference the factual basis and conclusions
set forth in the 35 U.S.C. 101 rejection. The 35 U.S.C. 112,
first paragraph, rejection should indicate that because the
invention as claimed does not have utility, a person skilled
in the art would not be able to use the invention as
claimed, and as such, the claim is defective under 35 U.S.C.
112, first paragraph. A 35 U.S.C. 112, first paragraph,
rejection should not be imposed or maintained unless an
appropriate basis exists for imposing a rejection under 35
U.S.C. 101. In other words, Office personnel should not
impose a 35 U.S.C. 112, first paragraph, rejection grounded
on a "lack of utility" basis unless a 35 U.S.C. 101
rejection is proper. In particular, the factual showing
needed to impose a rejection under 35 U.S.C. 101 must be
provided  if  a  rejection  under  35  U.S.C.  112,  first
paragraph, is to be imposed on "lack of utility" grounds.

  It is important to recognize that 35 U.S.C. 112, first
paragraph, addresses matters other than those related to the
question of whether or not an invention lacks utility. These
matters include whether the claims are fully supported by
the disclosure ( In re Vaeck , 947 F.2d 488, 495, 20 USPQ2d
1438, 1444 (Fed. Cir. 1991)), whether the applicant has
provided an enabling disclosure of the claimed subject
matter (  In re Wright , 999 F.2d 1557, 1561 - 1562, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993)), whether the applicant
has  provided  an  adequate  written  description  of  the
invention and whether the applicant has disclosed the best
mode of practicing the claimed invention (  Chemcast Corp.
v.  Arco Industries Corp. , 913 F.2d 923, 927 - 928, 16
USPQ2d 1033, 1036 - 1037 (Fed. Cir. 1990). See also  Transco
Products Inc. v.  Performance Contracting Inc. , 38 F.3d
551, 32 USPQ2d 1077 (Fed. Cir. 1994);  Glaxo Inc. v.
Novopharm Ltd. 52 F.3d 1043, 34 USPQ2d 1565 (Fed. Cir.

1995)). The fact that an applicant has disclosed a specific
utility for an invention and provided a credible basis
supporting that specific utility does not provide a basis
for  concluding  that  the  claims  comply  with  all  the
requirements of 35 U.S.C. 112, first paragraph. For example,
if an applicant has claimed a process of treating a certain
disease condition with a certain compound and provided a
credible basis for asserting that the compound is useful in
that regard, but to actually practice the invention as
claimed a person skilled in the relevant art would have to
engage in an undue amount of experimentation, the claim may
be defective under 35 U.S.C. 112, but not 35 U.S.C. 101. To
avoid confusion during examination, any rejection under 35
U.S.C. 112, first paragraph, based on grounds other than
"lack of utility" should be imposed separately from any
rejection imposed due to "lack of utility" under 35 U.S.C.
101 and 35 U.S.C. 112, first paragraph.<

2107.01  Procedural Considerations Related to Rejections
for Lack of Utility [R - 3]

  a.  The claimed invention is the focus of the utility
requirement

  The claimed invention is the focus of the assessment of
whether an applicant has satisfied the utility requirement.
Each claim (i.e., each "invention"), therefore, must be
evaluated  on  its  own  merits  for  compliance  with  all
statutory  requirements.  Generally  speaking,  however,  a
dependent claim will define an invention that has utility if
the claim from which it depends has defined an invention
having utility. An exception to this general rule is where
the  utility  specified  for  the  invention  defined  in  a
dependent  claim  differs  from  that  indicated  for  the
invention defined in the independent claim from which the
dependent claim depends. Where an applicant has established
utility for a species that falls within a identified genus
of compounds, and presents a generic claim covering the
genus, as a general matter, that claim should be treated as
being sufficient under 35 U.S.C. 101. Only where it can be
established that other species clearly encompassed by the
claim do not have utility should a rejection be imposed on
the generic claim. In such cases, the applicant should be
encouraged to amend the generic claim so as to exclude the
species that lack utility. A claim that raises this question
is likely to be deficient under 35 U.S.C. 112, second
paragraph, in terms of accurately defining the genus to
encompass  species  that  are  sufficiently  similar  to
constitute the genus.

  It is common and sensible for an applicant to identify
several specific utilities for an invention, particularly
where the invention is a product (e.g., a machine, an
article of manufacture or a composition of matter). However,
regardless of the category of invention that is claimed
(e.g., product or process), an applicant need only make one
credible assertion of specific utility for the claimed
invention to satisfy 35 U.S.C. 101 and 35 U.S.C. 112;
additional statements of utility, even if not "credible," do
not render the claimed invention lacking in utility. See,
e.g., Raytheon v.  Roper , 724 F.2d 951, 958, 220 USPQ 592,
598 (Fed. Cir. 1983),  cert. denied , 469 U.S. 835 (1984)
("When a properly claimed invention meets at least one
stated objective, utility under 35 U.S.C. 101 is clearly
shown." );  In re Gottlieb , 328 F.2d 1016, 1019, 140 USPQ

665, 668 (CCPA 1964) ("Having found that the antibiotic is
useful for some purpose, it becomes unnecessary to decide
whether  it  is  in  fact  useful  for  the  other  purposes
`indicated' in the specification as possibly useful." );  In
re Malachowski , 530 F.2d 1402, 189 USPQ 432 (CCPA 1976);
Hoffman v.  Klaus , 9 USPQ2d 1657 (Bd. Pat. App. & Inter.
1988). Thus, if applicant makes one credible assertion of
utility, utility for the claimed invention as a whole is
established.

  Statements made by the applicant in the specification or
incident to prosecution of the application before the Office
cannot, standing alone, be the basis for a lack of utility
rejection under 35 U.S.C. 101 or 35 U.S.C. 112. Tol -
O-Matic, Inc. v.  Proma Produkt - Und Mktg. Gesellschaft
m.b.h. , 945 F.2d 1546, 1553, 20 USPQ2d 1332, 1338 (Fed.
Cir.  1991)  (It  is  not  required  that  a  particular
characteristic set forth in the prosecution history be
achieved in order to satisfy 35 U.S.C. 101.). An applicant
may include statements in the specification whose technical
accuracy cannot be easily confirmed if those statements are
not necessary to support the patentability of an invention
with regard to any statutory basis. Thus, the Office should
not require an applicant to strike nonessential statements
relating to utility from a patent disclosure, regardless of
the technical accuracy of the statement or assertion it
presents. Office personnel should also be especially careful
not to read into a claim unclaimed results, limitations or
embodiments of an invention. See  Carl Zeiss Stiftung v.
Renishaw PLC , 945 F.2d 1173, 20 USPQ2d 1094 (Fed. Cir.
1991);  In re Krimmel , 292 F.2d 948, 130 USPQ 215 (CCPA
1961). Doing so can inappropriately change the relationship
of an asserted utility to the claimed invention and raise
issues not relevant to examination of that claim.

  b.  Is there an asserted or well - established utility
for the claimed invention?

  Upon initial examination, the Examiner should review the
specification to determine if there are any statements
asserting that the claimed invention is useful for any
particular purpose. A complete disclosure should include a
statement  which  identifies  a  specific  utility  for  the
invention.

  i.  An asserted utility must be specific, not general

  A statement of specific utility should fully and clearly
explain why the applicant believes the invention is useful.
Such statements will usually explain the purpose of or how
the invention may be used (e.g., a compound is believed to
be useful in the treatment of a particular disorder).
Regardless of the form of statement of specific utility, it
must enable one ordinarily skilled in the art to understand
why the applicant believes the claimed invention is useful.

  Except where an invention has a well - established
utility,  the  failure  of  an  applicant  to  specifically
identify why an invention is believed to be useful renders
the claimed invention deficient under 35 U.S.C. 101 and 35
U.S.C. 112, first paragraph. In such cases, the applicant
has failed to identify a "specific utility" for the claimed
invention. For example, a statement that a composition has
an  unspecified  "biological  activity"  or  that  does  not
explain why a composition with that activity is believed to

be useful fails to set forth a "specific utility." Brenner
v.  Manson , 383 US 519, 148 USPQ 689 (1966) (general
assertion of similarities to known compounds known to be
useful  without  sufficient  corresponding  explanation  why
claimed  compounds  are  believed  to  be  similarly  useful
insufficient under 35 U.S.C. 101);  In re Ziegler , 992 F.2d
1197,  1201,  26  USPQ2d  1600,  1604  (Fed.  Cir.  1993)
(disclosure that composition is "plastic - like" and can
form "films" not sufficient to identify specific utility for
invention);  In re Kirk , 376 F.2d 936, 153 USPQ 48 (CCPA
1967) (indication that compound is "biologically active" or
has "biological properties" insufficient standing alone).
See also  In re Joly , 376 F.2d 906, 153 USPQ 45 (CCPA
1967);  Kawai v.  Metlesics , 480 F.2d 880, 890, 178 USPQ
158, 165 (CCPA 1973) (contrasting description of invention
as sedative which did suggest specific utility to general
suggestion  of  "pharmacological  effects  on  the  central
nervous system" which did not). In contrast, a disclosure
that  identifies  a  particular  biological  activity  of  a
compound and explains how that activity can be utilized in a
particular therapeutic application of the compound does
contain an assertion of specific utility for the invention.

  Situations where an applicant either fails to indicate
why  an  invention  is  considered  useful,  or  where  the
applicant inaccurately describes the utility should rarely
arise. One reason for this is that applicants are required
to disclose the best mode known to them of practicing the
invention at the time they file their application. An
applicant who omits a description of the specific utility of
the invention, or who incompletely describes that utility,
may  encounter  problems  with  respect  to  the  best  mode
requirement of 35 U.S.C. 112, first paragraph.

  ii. No  statement  of  utility  for  the  claimed
invention in the specification does not per se negate
utility

  Occasionally, an applicant will not explicitly state in
the specification or otherwise assert a specific utility for
the  claimed  invention.  If  no  statements  can  be  found
asserting a specific utility for the claimed invention in
the specification, Office personnel should determine if the
claimed invention has a well - established utility. A well -
established  utility  is  one  that  would  be  immediately
apparent to a person of ordinary skill based upon disclosed
features or characteristics of the invention, or statements
made by the applicant in the written description of the
invention. If an invention has a well - established utility,
rejections under 35 U.S.C. 101 and 35 U.S.C. 112, first
paragraph, based on lack of utility should not be imposed.
In re Folkers , 344 F.2d 970, 145 USPQ 390 (CCPA 1965). For
example,  if  an  application  teaches  the  cloning  and
characterization of the nucleotide sequence of a well -
known protein such as insulin, and those skilled in the art
at the time of filing knew that insulin had a well -
established use, it would be improper to reject the claimed
invention as lacking utility solely because of the omitted
statement of specific utility.

  If a person of ordinary skill would not immediately
recognize a specific utility for the claimed invention
(i.e., why it would be useful) based on the characteristics
of the invention or statements made by the applicant, the
Examiner should reject the application under 35 U.S.C. 101

and under 35 U.S.C. 112, first paragraph, as failing to
identify a specific utility for the claimed invention. The
rejection should clearly indicate that the basis of the
rejection is that the application fails to identify a
specific utility for the invention. The rejection should
also specify that the applicant must respond by indicating
why the invention is believed useful and where support for
any subsequently asserted utility can be found in the
specification as filed.

  If  the  applicant  subsequently  indicates  why  the
invention is useful, Office personnel should review that
assertion according to the standards articulated below for
review of the credibility of an asserted utility.

  c.  Evaluating the credibility of an asserted utility

  i.  An  asserted  utility  creates  a  presumption  of
utility

  In most cases, an applicant's assertion of utility
creates a presumption of utility that will be sufficient to
satisfy the utility requirement of 35 U.S.C. 101. See, e.g.,
In re Jolles , 628 F.2d 1322, 206 USPQ 885 (CCPA 1980);  In
re Irons , 340 F.2d 974, 144 USPQ 351 (1965);  In re Langer
, 503 F.2d 1380, 183 USPQ 288 (CCPA 1974);  In re Sichert ,
566 F.2d 1154, 1159, 196 USPQ 209, 212 - 13 (CCPA 1977). As
the CCPA stated in  In re Langer :

  As a matter of Patent Office practice, a specification
which contains a disclosure of utility which corresponds in
scope to the subject matter sought to be patented must be
taken as sufficient to satisfy the utility requirement of §
101 for the entire claimed subject matter  unless there is a
reason for one skilled in the art to question the objective
truth of the statement of utility or its scope.

 In re Langer , 503 F.2d at 1391, 183 USPQ at 297 (emphasis
in original). The "Langer" test for utility has been used by
both the Federal Circuit and the CCPA in evaluation of
rejections under 35 U.S.C. 112, first paragraph, where the
rejection is based on a deficiency under 35 U.S.C. 101. In
In re Brana , 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995),
the  Federal  Circuit  explicitly  adopted  the  CCPA's
formulation of the "Langer" standard for 35 U.S.C. 112,
first  paragraph  rejections,  as  it  was  expressed  in  a
slightly reworded format in  In re Marzocch i, 439 F.2d 220,
223, 169 USPQ 367, 369 (CCPA 1971), namely:

  [A] specification disclosure which contains a teaching
of the manner and process of making and using the invention
in  terms  which  correspond  in  scope  to  those  used  in
describing and defining the subject matter sought to be
patented must be taken as in compliance with the enabling
requirement of the first paragraph of § 112 unless there is
reason to doubt the objective truth of the statements
contained therein which must be relied on for enabling
support. [emphasis added].

  Thus, Langer and subsequent cases direct the Office to
presume that a statement of utility made by an applicant is
true. See  In re Langer , 503 F.2d at 1391, 183 USPQ at 297;
In re Malachowski , 530 F.2d 1402, 1404, 189 USPQ 432, 435
(CCPA 1976);  In re Brana , 51 F.3d 1560, 34 USPQ2d 1436
(Fed. Cir. 1995). For obvious reasons of efficiency and in

deference to an applicant's understanding of his or her
invention, when a statement of utility is evaluated, Office
personnel should not begin by questioning the truth of the
statement of utility. Instead, any inquiry must start by
asking if there is any reason to question the truth of the
statement of utility. This can be done by simply evaluating
the logic of the statements made, taking into consideration
any evidence cited by the applicant. If the asserted utility
is credible (i.e., believable based on the record or the
nature of the invention), a rejection based on "lack of
utility"  is  not  appropriate.  Clearly,  Office  personnel
should not begin an evaluation of utility by assuming that
an asserted utility is likely to be false, based on the
technical field of the invention or for other general
reasons.

  Compliance with 35 U.S.C. 101 is a question of fact.
Raytheon v.  Roper , 724 F.2d 951, 956, 220 USPQ 592, 596
(Fed. Cir. 1983)  cert. denied , 469 US 835 (1984). Thus, to
overcome the presumption of truth that an assertion of
utility by the applicant enjoys, Office personnel must
establish that it is more likely than not that one of
ordinary skill in the art would doubt (i.e., "question") the
truth of the statement of utility. The evidentiary standard
to be used throughout  ex parte examination in setting forth
a rejection is a preponderance of the totality of the
evidence under consideration.  In re Oetiker , 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) ("After
evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the
record,  by  a  preponderance  of  evidence  with  due
consideration to persuasiveness of argument.");  In re
Corkill , 771 F.2d 1496, 1500, 226 USPQ 1005, 1008 (Fed.
Cir. 1985). A preponderance of the evidence exists when it
suggests that it is more likely than not that the assertion
in question is true.  Herman v.  Huddleston , 459 U.S. 375,
390 (1983). To do this, Office personnel must provide
evidence sufficient to show that the statement of asserted
utility would be considered "false" by a person of ordinary
skill in the art. Of course, a person of ordinary skill must
have the benefit of both facts and reasoning in order to
assess the truth of a statement. This means that if the
applicant has presented facts that support the reasoning
used in asserting a utility, Office personnel must present
countervailing facts and reasoning sufficient to establish
that a person of ordinary skill would not believe the
applicant's assertion of utility.  In re Brana , 51 F.3d
1560,  34  USPQ2d  1436  (Fed.  Cir.  1995).  The  initial
evidentiary standard used during evaluation of this question
is a preponderance of the evidence (i.e., the totality of
facts and reasoning suggest that it is more likely than not
that the statement of the applicant is false).

  ii.  When is an asserted utility not credible?

  Where an applicant has specifically asserted that an
invention has a particular utility, that assertion cannot
simply be dismissed by Office personnel as being "wrong,"
even when there may be reason to believe that the assertion
is not entirely accurate. Rather, Office personnel must
determine if the assertion of utility is credible(i.e.,
whether the assertion of utility is believable to a person
of ordinary skill in the art based on the totality of
evidence and reasoning provided). An assertion is credible
unless (a) the logic underlying the assertion is seriously

flawed, or (b) the facts upon which the assertion is based
are inconsistent with the logic underlying the assertion.
Credibility  as  used  in  this  context  refers  to  the
reliability of the statement based on the logic and facts
that are offered by the applicant to support the assertion
of utility.

  One situation where an assertion of utility would not be
considered credible is where a person of ordinary skill
would consider the assertion to be "incredible in view of
contemporary knowledge" and where nothing offered by the
applicant would counter what contemporary knowledge might
otherwise  suggest.  Office  personnel  should  be  careful,
however,  not  to  label  certain  types  of  inventions  as
"incredible" or "speculative" as such labels do not provide
the correct focus for the evaluation of an assertion of
utility. " Incredible utility" is a conclusion, not a
starting  point  for  analysis  under  35  U.S.C.  101  .  A
conclusion that an asserted utility is incredible can be
reached  only  after  the  Office  has  evaluated  both  the
assertion  of  the  applicant  regarding  utility  and  any
evidentiary basis of that assertion. The Office should be
particularly careful not to start with a presumption that an
asserted utility is,  per se , "incredible" and the proceed
to base a rejection under 35 U.S.C. 101 on that presumption.

  Rejections  under  35  U.S.C.  101  have  been  rarely
sustained by Federal courts. Generally speaking, in these
rare cases, the 35 U.S.C. 101 rejection was sustained either
because the applicant failed to disclose any utility for the
invention or asserted a utility that could only be true if
it violated a scientific principle, such as the second law
of thermodynamics, or a law of nature, or was wholly
inconsistent with contemporary knowledge in the art.  In re
Gazave 379 F.2d 973, 978, 154 USPQ 92, 96 (CCPA 1967).
Special care therefore should be taken when assessing the
credibility of an asserted therapeutic utility for a claimed
invention. In such cases, a previous lack of success in
treating a disease or condition, or the absence of a proven
animal model for testing the effectiveness of drugs for
treating a disorder in humans, should not, standing alone,
serve as a basis for challenging the asserted utility under
35 U.S.C. 101.

  d.  Initial burden is on the Office to establish a
prima facie case and provide evidentiary support thereof

  To properly reject a claimed invention under 35 U.S.C.
101, the Office must (a) make a prima facie showing that the
claimed  invention  lacks  utility,  and  (b)  provide  a
sufficient evidentiary basis for factual assumptions relied
upon in establishing the  prima facie showing.  In re
Gaubert , 524 F.2d 1222, 1224, 187 USPQ 664, 666 (CCPA 1975)
("Accordingly, the PTO must do more than merely question
operability - it must set forth factual reasons which would
lead one skilled in the art to question the objective truth
of the statement of operability."). If the Office cannot
develop a proper  prima facie case and provide evidentiary
support for a rejection under 35 U.S.C. 101, a rejection on
this ground should not be imposed. See, e.g.,  In re Oetiker
, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)
( "[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a  prima
facie case of unpatentability. If that burden is met, the
burden of coming forward with evidence or argument shifts to

the applicant.... If examination at the initial stage does
not produce a  prima facie case of unpatentability, then
without more the applicant is entitled to grant of the
patent."). See also  Fregeau v.  Mossinghoff , 776 F.2d
1034, 227 USPQ 848 (Fed. Cir. 1985) (applying  prima facie
case law to 35 U.S.C. 101);  In re Piasecki , 745 F.2d 1468,
223 USPQ 785 (Fed. Cir. 1984).

  The prima facie showing must be set forth in a well -
reasoned statement. The statement must articulate sound
reasons why a person of ordinary skill in the art would
conclude that it is more likely than not that an asserted
utility is not credible . The statement should specifically
identify the scientific basis of any factual conclusions
made in the  prima facie showing. The statement must also
explain  why  any  evidence  of  record  that  supports  the
asserted utility would not be persuasive to one of ordinary
skill.

  In addition to the statement setting forth the prima
facie showing, Office personnel must provide evidentiary
support for the prima facie case. In most cases, documentary
evidence (e.g., articles in scientific journals, or excerpts
from patents or scientific treatises) can and should be
cited to support any factual conclusions made in the prima
facie showing. Only when documentary evidence is not readily
available  should  the  Examiner  attempt  to  satisfy  the
Office's requirement for evidentiary support for the factual
basis  of  the  prima  facie  showing  solely  through  an
explanation  of  relevant  scientific  principles.  It  is
imperative that Office personnel use specificity in setting
forth an initial rejection under 35 U.S.C. 101 and support
any factual conclusions made in the prima facie showing. For
example, Office personnel should explain why any in vitro or
in  vivo  data  supplied  by  the  applicant  would  not  be
reasonably predictive of an asserted therapeutic utility
from the perspective of a person of ordinary skill in the
art. By using specificity, the applicant will be able to
identify the assumptions made by the Office in setting forth
the rejection and will be able to address those assumptions
properly.

  e.  Evidentiary requests by an examiner to support an
asserted utility

  In appropriate situations the Office may require an
applicant to substantiate an asserted utility for a claimed
invention. See In re Pottier , 376 F.2d 328, 330, 153 USPQ
407, 408 (CCPA 1967) ("When the operativeness of any process
would be deemed unlikely by one of ordinary skill in the
art, it is not improper for the examiner to call for
evidence of operativeness."). See also  In re Jolles , 628
F.2d 1322, 1327, 206 USPQ 885, 890 (CCPA 1980);  In re
Citron , 325 F.2d 248, 139 USPQ 516 (CCPA 1963);  In re
Novak , 306 F.2d 924, 928, 134 USPQ 335, 337 (CCPA1962). >In
In re Citron , the court held that when an "alleged utility
appears to be incredible in the light of the knowledge of
the art, or factually misleading, applicant must establish
the asserted utility by acceptable proof." 325 F.2d at 253,
139 USPQ at 520. The Court approved of the board's decision
which affirmed the rejection under 35 U.S.C. 101 " in view
of the art knowledge of the lack of a cure for cancer and
the  absence  of  any  clinical  data  to  substantiate  the
allegation ." 325 F.2d at 252, 139 USPQ at 519 (emphasis in
original). The Court thus established a higher burden on the

applicant where the statement of use is incredible or
misleading. In such a case, the examiner should challenge
the use and require sufficient evidence of operativeness.<
The purpose for this authority is to enable an applicant to
cure  an  otherwise  defective  factual  basis  for  the
operability of an invention. Because this is a curative
authority  (e.g.,  evidence  is  requested  to  enable  an
applicant to support an assertion that is inconsistent with
the facts of record in the application), Office personnel
should indicate not only why the factual record is defective
in relation to the assertions of the applicant, but also,
where appropriate, what type of evidentiary showing can be
provided by the applicant to remedy the problem.

  Requests for additional evidence should be imposed
rarely, and only if necessary to support the scientific
credibility of the asserted utility (e.g., if the asserted
utility is not consistent with the evidence of record and
current  scientific  knowledge).  As  the  Federal  Circuit
recently noted, "[o]nly after the PTO provides evidence
showing  that  one  of  ordinary  skill  in  the  art  would
reasonably doubt the asserted utility does the burden shift
to the applicant to provide rebuttal evidence sufficient to
convince such a person of the invention's asserted utility."
In re Brana , 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995)
(citing  In re Bundy , 642 F.2d 430, 433, 209 USPQ 48, 51
(CCPA 1981)). >In  Brana , the Court pointed out that the
purpose of treating cancer with chemical compounds does not
suggest,  per se, an incredible utility. Where the prior art
disclosed "structurally similar compounds to those claimed
by applicants which have been proven  in vivo to be
effective as chemotherapeutic agents against various tumor
models . ., one skilled in the art would be without basis
to reasonably doubt applicants' asserted utility on its
face." 51 F.3d at 1566, 34 USPQ2d at 1441.< As courts have
stated, "it is clearly improper for the Examiner to make a
demand for further test data, which as evidence would be
essentially redundant and would seem to serve for nothing
except perhaps to unduly burden the applicant."  In re
Isaacs , 347 F.2d 887, 890, 146 USPQ 193, 196 (CCPA 1965).

  f.  Consideration of a response to a prima facie
rejection for lack of utility

  If a rejection under 35 U.S.C. 101 has been properly
imposed, along with a corresponding rejection under 35
U.S.C. 112, first paragraph, the burden shifts to the
applicant to rebut the prima facie showing.  In re Oetiker ,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)
("The examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a  prima
facie case of unpatentability. If that burden is met, the
burden of coming forward with evidence or argument shifts to
the applicant . . After evidence or argument is submitted
by the applicant in response, patentability is determined on
the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument."). An
applicant  can  do  this  using  any  combination  of  the
following: amendments to the claims, arguments or reasoning,
or new evidence submitted in an affidavit or declaration
under 37 CFR 1.132, or in a printed publication. New
evidence provided by an applicant must be relevant to the
issues raised in the rejection. For example, declarations in
which conclusions are set forth without establishing a nexus
between those conclusions and the supporting evidence, or

which merely express opinions, may be of limited probative
value with regard to rebutting a  prima facie case.  In re
Grunwell , 609 F.2d 486, 203 USPQ 1055 (CCPA 1979);  In re
Buchner , 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991). See
MPEP § 716.01(a) through § 716.01(c).

  Once a response has been provided, Office personnel must
review  the  complete  record,  including  the  claims,  to
determine if it is appropriate to maintain the rejections
under 35 U.S.C. 101 and 35 U.S.C. 112. If the record as a
whole would make it more likely than not that the asserted
utility  for  the  claimed  invention  would  be  considered
credible by a person of ordinary skill in the art, the
Office cannot maintain the rejection. In re Rinehart , 531
F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).

  g.  Evaluation of evidence related to utility

  There  is  no  predetermined  amount  or  character  of
evidence that must be provided by an applicant to support an
asserted utility, therapeutic or otherwise. Rather, the
character and amount of evidence needed to support an
asserted utility will vary depending on what is claimed ( Ex
parte Ferguson , 117 USPQ 229 (Bd. App. 1957)), and whether
the  asserted  utility  appears  to  contravene  established
scientific principles and beliefs.  In re Gazave , 379 F.2d
973, 978, 154 USPQ 92, 96 (CCPA 1967);  In re Chilowsky ,
229  F.2d  457,  462,  108  USPQ  321,  325  (CCPA  1956).
Furthermore, the applicant does not have to provide evidence
sufficient to establish that an asserted utility is true
"beyond a reasonable doubt."  In re Irons 340 F.2d 974, 978,
144 USPQ 351, 354 (CCPA 1965). Nor must an applicant provide
evidence such that it establishes an asserted utility as a
matter of statistical certainty.  Nelson v.  Bowler , 626
F.2d 853, 856 - 57, 206 USPQ 881, 883 - 84 (CCPA 1980)
(reversing the Board and rejecting Bowler's arguments that
the evidence of utility was statistically insignificant. The
court  pointed  out  that  a  rigorous  correlation  is  not
necessary when the test is reasonably predictive of the
response). See also  Ray Bellet v.  Englehard, 493 F.2d
1380, 181 USPQ 453 (CCPA 1974) (data from animal testing is
relevant to asserted human therapeutic utility if there is a
"satisfactory correlation between the effect on the animal
and that ultimately observed in human beings"). Instead,
evidence will be sufficient if, considered as a whole, it
leads a person of ordinary skill in the art to conclude that
the asserted utility is more likely than not true .

2107.02  Special Considerations for Asserted Therapeutic or
Pharmacological Utilities [R - 1]

  >The  Federal  courts  have  consistently  reversed
rejections by the Office asserting a lack of utility for
inventions claiming a pharmacological or therapeutic utility
where an applicant has provided evidence that reasonably
supports such a utility. In view of this, Office personnel
should be particularly careful in their review of evidence
provided  in  support  of  an  asserted  therapeutic  or
pharmacological utility.

  a.  A reasonable correlation between the evidence and
the asserted utility is sufficient

  As a general matter, evidence of pharmacological or
other biological activity of a compound will be relevant to

an  asserted  therapeutic  use  if  there  is  a  reasonable
correlation  between  the  activity  in  question  and  the
asserted utility.  Cross v.  Iizuka , 753 F.2d 1040, 224
USPQ 739 (Fed. Cir. 1985);  In re Jolles , 628 F.2d 1322,
206 USPQ 885 (CCPA 1980);  Nelson v.  Bowler , 626 F.2d 853,
206 USPQ 881 (CCPA 1980). An applicant can establish this
reasonable correlation by relying on statistically relevant
data documenting the activity of a compound or composition,
arguments or reasoning, documentary evidence (e.g., articles
in scientific journals), or any combination thereof. The
applicant does not have to prove that a correlation exists
between a particular activity and an asserted therapeutic
use of a compound as a matter of statistical certainty, nor
does he or she have to provide actual evidence of success in
treating humans where such a utility is asserted. Instead,
as the courts have repeatedly held, all that is required is
a  reasonable  correlation  between  the  activity  and  the
asserted use  Nelson v.  Bowler , 626 F.2d 853, 857, 206
USPQ 881, 884 (CCPA 1980).

  b.  Structural similarity to compounds with established
utility

  Courts have routinely found evidence of structural
similarity  to  a  compound  known  to  have  a  particular
therapeutic or pharmacological utility as being supportive
of an assertion of therapeutic utility for a new compound.
In In re Jolles , 628 F.2d 1322, 206 USPQ 885 (CCPA 1980),
the claimed compounds were found to have utility based on a
finding of a close structural relationship to daunorubicin
and doxorubicin and shared pharmacological activity with
those compounds, both of which were known to be useful in
cancer  chemotherapy.  The  evidence  of  close  structural
similarity with the pharmacological activity with those
compounds, both of which were known to be useful in cancer
chemotherapy. The evidence of close structural similarity
with the known compounds was presented in conjunction with
evidence demonstrating substantial activity of the claimed
compounds in animals customarily employed for screening
anticancer agents. Such evidence should be given appropriate
weight in determining whether one skilled in the art would
find the asserted utility credible. Office personnel should
evaluate  not  only  the  existence  of  the  structural
relationship, but also the reasoning used by the applicant
or a declarant to explain why that structural similarity is
believed to be relevant to the applicant's assertion of
utility.

  c.  Data from in vitro or animal testing is generally
sufficient to support therapeutic utility

  If reasonably correlated to the particular therapeutic
or pharmacological utility, data generated using in vitro
assays, or from testing in an animal model or a combination
thereof almost invariably will be sufficient to establish
therapeutic  or  pharmacological  utility  for  a  compound,
composition or process. A cursory review of cases involving
therapeutic  inventions  where  35  U.S.C.  101  was  the
dispositive issue illustrates the fact that the Federal
courts are not particularly receptive to rejections under 35
U.S.C. 101 based on inoperability. Most striking is the fact
that in those cases where an applicant supplied a reasonable
evidentiary  showing  supporting  an  asserted  therapeutic
utility,  almost  uniformly  the  35  U.S.C.  101  -  based
rejection was reversed. See, e.g.,  In re Brana , 51 F.3d

1560, 34 USPQ 1436 (Fed. Cir. 1995);  Cross v.  Iizuka , 753
F.2d 1040, 224 USPQ 739 (Fed. Cir. 1985);  In re Jolles ,
628 F.2d 1322, 206 USPQ 885 (CCPA 1980);  Nelson v.  Bowler
, 626 F.2d 853, 856, 206 USPQ 881, 883 (CCPA 1980);  In re
Malachowski , 530 F.2d 1402, 189 USPQ 432 (CCPA 1976);  In
re Gaubert , 530 F.2d 1402, 189 USPQ 432 (CCPA 1975);  In re
Gazave , 379 F.2d 973, 154 USPQ 92 (CCPA 1967);  In re
Hartop , 311 F.2d 249, 135 USPQ 419 (CCPA 1962);  In re
Krimmel , 292 F.2d 948, 130 USPQ 215 (CCPA 1961). Only in
those cases where the applicant was unable to come forward
with any relevant evidence to rebut a finding by the Office
that the claimed invention was inoperative was a 35 U.S.C.
101 rejection affirmed by the court.  In re Citron , 325
F.2d 248, 253, 139 USPQ 516, 520 (CCPA 1963) (therapeutic
utility  for  an  uncharacterized  biological  extract  not
supported or scientifically credible);  In re Buting , 418
F.2d 540, 543, 163 USPQ 689, 690 (CCPA 1969) (record did not
establish a credible basis for the assertion that the single
class of compounds in question would be useful in treating
disparate types of cancers);  In re Novak , 306 F.2d 924,
134 USPQ 335 (CCPA 1962) (claimed compounds did not have
capacity to effect physiological activity upon which utility
claim based). Contrast, however,  In re Buting to  In re
Gardner , 475 F.2d 1389, 177 USPQ 396 (CCPA 1973),  reh'g
denied , 480 F.2d 879 (CCPA 1973), in which the court held
that utility for a genus was found to be supported through a
showing of utility for one species. In no case has a Federal
court required an applicant to support an asserted utility
with data from human clinical trials.

  If an applicant provides data, whether from in vitro
assays or animal tests or both, to support an asserted
utility, and an explanation of why that data supports the
asserted utility, the Office will determine if the data and
the explanation would be viewed by one skilled in the art as
being reasonably predictive of the asserted utility. See,
e.g.,  Ex parte Maas , 9 USPQ2d 1746 (Bd. Pat. App. & Inter.
1987);  Ex parte Balzarini , 21 USPQ2d 1892 (Bd. Pat. App. &
Inter. 1991). Office personnel must be careful to evaluate
all factors that might influence the conclusions of a person
of ordinary skill in the art as to this question, including
the test parameters, choice of animal, relationship of the
activity  to  the  particular  disorder  to  be  treated,
characteristics of the compound or composition, relative
significance of the data provided and, most importantly, the
explanation  offered  by  the  applicant  as  to  why  the
information provided is believed to support the asserted
utility.  If  the  data  supplied  is  consistent  with  the
asserted utility, the Office cannot maintain a rejection
under 35 U.S.C. 101.

  Evidence does not have to be in the form of data from an
art - recognized animal model for the particular disease or
disease condition to which the asserted utility relates.
Data from any test that the applicant reasonably correlates
to the asserted utility should be evaluated substantively.
Thus, an applicant may provide data generated using a
particular animal model with an appropriate explanation as
to why that data supports the asserted utility. The absence
of a certification that the test in question is an industry
- accepted model is not dispositive of whether data from an
animal model is in fact relevant to the asserted utility.
Thus, if one skilled in the art would accept the animal
tests as being reasonably predictive of utility in humans,
evidence from those tests should be considered sufficient to

support the credibility of the asserted utility.  In re
Hartop , 311 F.2d 249, 135 USPQ 419 (CCPA 1962);  In re
Krimme l, 292 F.2d 948, 953, 130 USPQ 215, 219 (CCPA 1961);
Ex parte Krepelka , 231 USPQ 746 (Bd. Pat. App. & Inter.
1986). Office personnel should be careful not to find
evidence unpersuasive simply because no animal model for the
human disease condition had been established prior to the
filing of the application. See  In re Chilowsky , 229 F.2d
457, 461, 108 USPQ 321, 325 (CCPA 1956) ("The mere fact that
something has not previously been done clearly is not, in
itself, a sufficient basis for rejecting all applications
purporting to disclose how to do it.");  In re Wooddy , 331
F.2d 636, 639, 141 USPQ 518, 520 (CCPA 1964) ("It appears
that no one on earth is certain as of the present whether
the process claimed will operate in the manner claimed. Yet
absolute certainty is not required by the law. The mere fact
that something has not previously been done clearly is not,
in itself, a sufficient basis for rejecting all applications
purporting to disclose how to do it." ).

  d. Human clinical data

  Office personnel should not impose on applicants the
unnecessary burden of providing evidence from human clinical
trials.  There  is  no  decisional  law  that  requires  an
applicant to provide data from human clinical trials to
establish utility for an invention related to treatment of
human disorders (See In re Isaacs , 347 F.2d 889, 146 USPQ
193 (CCPA 1963);  In re Langer , 503 F.2d 1380, 183 USPQ 288
(CCPA 1974)), even with respect to situations where no art -
recognized animal models existed for the human disease
encompassed by the claims.  Ex parte Balzarini , 21 USPQ2d
1892 (Bd. Pat. App. & Inter. 1991) (human clinical data is
not required to demonstrate the utility of the claimed
invention, even though those skilled in the art might not
accept other evidence to establish the efficacy of the
claimed therapeutic compositions and the operativeness of
the claimed methods of treating humans). Before a drug can
enter  human  clinical  trials,  the  sponsor,  often  the
applicant, must provide a convincing rationale to those
especially skilled in the art (e.g., the Food and Drug
Administration) that the investigation may be successful.
Such a rationale would provide a basis for the sponsor's
expectation that the investigation may be successful. In
order to determine a protocol for phase I testing, the first
phase of clinical investigation, some credible rationale of
how the drug might be effective or could be effective would
be necessary. Thus, as a general rule, if an applicant has
initiated human clinical trials for a therapeutic product or
process, Office personnel should presume that the applicant
has established that the subject matter of that trial is
reasonably predictive of having the asserted therapeutic
utility.

  e.  Safety and efficacy considerations

  The  Office  must  confine  its  review  of  patent
applications to the statutory requirements of the patent
law. Other agencies of the government have been assigned the
responsibility  of  ensuring  conformance  to  standards
established by statute for the advertisement, use, sale or
distribution of drugs. The FDA pursues a two - prong test to
provide approval for testing. Under that test, a sponsor
must  show  that  the  investigation  does  not  pose  an
unreasonable and significant risk of illness or injury and

that there is an acceptable rationale for the study. As a
review matter, there must be a rationale for believing that
the compound could be effective. If the use reviewed by the
FDA is not set forth in the specification, FDA review may
not satisfy 35 U.S.C. 101. However, if the reviewed use is
one set forth in the specification, Office personnel must be
extremely  hesitant  to  challenge  utility.  In  such  a
situation, experts at the FDA have assessed the rationale
for the drug or research study upon which an asserted
utility  is  based  and  found  it  satisfactory.  Thus,  in
challenging utility, Office personnel must be able to carry
their burden that there is no sound rationale for the
asserted utility even though experts designated by Congress
to decide the issue have come to an opposite conclusion.
"FDA approval, however, is not a prerequisite for finding a
compound useful within the meaning of the patent laws." In
re Brana , 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995)
(citing  Scott v.  Finney , 34 F.3d 1058, 1063, 32 USPQ2d
1115, 1120 (Fed. Cir. 1994).

  Thus, while an applicant may on occasion need to provide
evidence to show that an invention will work as claimed, it
is improper for Office personnel to request evidence of
safety in the treatment of humans, or regarding the degree
of effectiveness. See  In re Sichert , 566 F.2d 1154, 196
USPQ 209 (CCPA 1977);  In re Hartop , 311 F.2d 249, 135 USPQ
419 (CCPA 1962);  In re Anthony , 414 F.2d 1383, 162 USPQ
594 (CCPA 1969);  In re Watson , 517 F.2d 465, 186 USPQ 11
(CCPA 1975);  In re Krimmel , 292 F.2d 948, 130 USPQ 215
(CCPA 1961);  Ex parte Jovanovics , 211 USPQ 907 (Bd. Pat.
App. & Inter. 1981).

  f.  Treatment of specific disease conditions

  Claims directed to a method of treating or curing a
disease for which there have been no previously successful
treatments or cures warrant careful review for compliance
with 35 U.S.C. 101. The credibility of an asserted utility
for treating a human disorder may be more difficult to
establish where current scientific understanding suggests
that such a task would be impossible. Such a determination
has always required a good understanding of the state of the
art as of the time that the invention was made. For example,
in the 1960's, there were a number of cases where an
asserted use in treating cancer in humans was viewed as
"incredible." In re Jolles , 628 F.2d 1322, 206 USPQ 885
(CCPA 1980);  In re Buting , 418 F.2d 540, 163 USPQ 689
(CCPA 1969);  Ex parte Stevens , 16 USPQ2d 1379 (Bd. Pat.
App. & Inter. 1990);  Ex parte Busse , 1 USPQ2d 1908 (Bd.
Pat. App. & Inter. 1986);  Ex parte Krepelka , 231 USPQ 746
(Bd. Pat. App. & Inter. 1986);  Ex parte Jovanovics , 211
USPQ 907 (Bd. Pat. App. & Inter. 1981). The fact that there
is no known cure for a disease, however, cannot serve as the
basis for a conclusion that such an invention lacks utility.
Rather, Office personnel must determine if the asserted
utility  for  the  invention  is  credible  based  on  the
information disclosed in the application. Only those claims
for which an asserted utility is not credible should be
rejected. In such cases, the Office should carefully review
what is being claimed by the applicant. An assertion that
the claimed invention is useful in treating a symptom of an
incurable disease may be considered credible by a person of
ordinary skill in the art on the basis of a fairly modest
amount of evidence or support. In contrast, an assertion
that the claimed invention will be useful in "curing" the

disease  may  require  a  significantly  greater  amount  of
evidentiary support to be considered credible by a person of
ordinary skill in the art.  In re Sichert , 566 F.2d 1154,
196 USPQ 209 (CCPA 1977);  In re Jolles , 628 F.2d 1322, 206
USPQ 885 (CCPA 1980). See also  Ex parte Ferguson , 117 USPQ
229 (Bd. Pat. App. & Inter. 1957).

  In these cases, it is important to note that the Food
and Drug Administration has promulgated regulations that
enable a party to conduct clinical trials for drugs used to
treat  life  threatening  and  severely  -  debilitating
illnesses, even where no alternative therapy exists. See 21
CFR 312.80 - 88 (1994). Implicit in these regulations is the
recognition  that  experts  qualified  to  evaluate  the
effectiveness of therapeutics can and often do find a
sufficient basis to conduct clinical trials of drugs for
incurable  or  previously  untreatable  illnesses.  Thus,
affidavit evidence from experts in the art indicating that
there is a reasonable expectation of success, supported by
sound reasoning, usually should be sufficient to establish
that such a utility is credible .<

2111  Claim Interpretation; Broadest Reasonable
Interpretation [R - 1]

  >CLAIMS  MUST  BE  GIVEN  THEIR  BROADEST  REASONABLE
INTERPRETATION

  During patent examination, the pending claims must be
"given the broadest reasonable interpretation consistent
with  the  specification."  Applicant  always  has  the
opportunity to amend the claims during prosecution and broad
interpretation by the examiner reduces the possibility that
the claim, once issued, will be interpreted more broadly
than is justified. In re Prater , 162 USPQ 541, 550 - 51
(CCPA 1969) (Claim 9 was directed to a process of analyzing
data generated by mass spec trographic analysis of a gas.
The process comprised selecting the data to be analyzed by
subjecting the data to a mathematical manipulation. The
examiner made rejections under 35 U.S.C. 101 and 102. In the
section 102 rejection, the examiner explained that the claim
was anticipated by a mental process augmented by pencil and
paper markings. The court agreed that the claim was not
limited to using a machine to carry out the process since
the claim did not explicitly set forth the machine. The
court explained that "(reading a claim in light of the
specification, to thereby interpret limitations explicitly
recited in the claim, is a quite different thing from
`reading limitations of the specification into a claim,' to
thereby narrow the scope of the claim by implicitly adding
disclosed limitations which have no express basis in the
claim." The court found that applicant was advocating the
latter,  e.g.,  the  impermissible  importation  of  subject
matter from the specification into the claim.).<

2111.01  Plain Meaning [R - 1]

 >THE WORDS OF A CLAIM MUST BE GIVEN THEIR "PLAIN MEANING"
UNLESS THEY ARE DEFINED IN THE SPECIFICATION

  While the meaning of claims of issued patents are
interpreted  in  light  of  the  specification,  prosecution
history, prior art and other claims, this is not the mode of
claim  interpretation  to  be  applied  during  examination.
During  examination,  the  claims  must  be  interpreted  as

broadly as their terms reasonably allow. This means that the
words of the claim must be given their plain meaning unless
applicant  has  provided  a  clear  definition  in  the
specification.  In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)(discussed  below).  One  must  bear  in  mind  that,
especially in nonchemical cases, the words in a claim are
generally not limited in their meaning by what is shown or
disclosed  in  the  specification.  It  is  only  when  the
specification provides definitions for terms appearing in
the  claims  that  the  specification  can  be  used  in
interpreting claim language.  In re Vogel , 164 USPQ 619,
622 (CCPA 1970). There is one exception and that is when an
element is claimed using language falling under the scope of
35 U.S.C. 112, 6th paragraph (often broadly referred to as
means or step plus function language). In that case, the
specification must be consulted to determine the structure,
material, or acts corresponding to the function recited in
the claim.  In re Donaldson , 29 USPQ2d 1845 (Fed. Cir.
1994)(see MPEP § 2181 - § 2186).

  In In re Zletz , 13 USPQ2d 1320, 1322 (Fed. Cir. 1989),
the examiner and the Board had interpreted claims reading
"normally  solid  polypropylene"  and  "normally  solid
polypropylene having a crystalline polypropylene content" as
being limited to "normally solid linear high homopolymers of
propylene which have a crystalline polypropylene content."
The court ruled that limitations, not present in the claims,
were improperly imported from the specification. See also
In re Marosi, 218 USPQ 289 (Fed. Cir. 1983) ("Claims are not
to be read in a vacuum, and limitations therein are to be
interpreted in light of the specification in giving them
their `broadest reasonable interpretation.' " 218 USPQ at
292 (quoting  In re Okuzawa,537 F.2d 545, 548, 190 USPQ 464,
466 (CCPA 1976))(emphasis in original). The court looked to
the specification to construe "essentially free of alkali
metal" as including unavoidable levels of impurities but no
more.). Compare  In re Weiss,26 USPQ2d 1885 (Fed. Cir. 1993)
(unpublished decision - cannot be cited as precedent) (The
claim related to an athletic shoe with cleats that "break
away at a preselected level of force" and thus prevent
injury to the wearer. The examiner rejected the claims over
prior art teaching athletic shoes with cleats not intended
to break off and rationalized that the cleats would break
away given a high enough force. The court reversed the
rejection stating that when interpreting a claim term which
is ambiguous, such as `a preselected level of force,' we
must look to the specification for the meaning ascribed to
that term by the inventor." The specification had defined
"preselected level of force..." as that level of force at
which the breaking away will prevent injury to the wearer
during athletic exertion. It should be noted that the
limitation was part of a means plus function element.)

 "PLAIN MEANING" REFERS TO THE MEANING GIVEN TO THE TERM BY
THOSE OF ORDINARY SKILL IN THE ART

  When not defined by applicant in the specification, the
words of a claim must be given their plain meaning. In other
words, they must be read as they would be interpreted by
those of ordinary skill in the art. In re Sneed, 218 USPQ
385 (Fed. Cir. 1983) (The applicants had argued in an
amendment after final rejection that the term "flexible
plastic pipe," as used in the claims, pertained only to
pipes of 2 - inch diameter and 3 - inch diameter and not to
a pipe of 1.5 inch diameter. This definition of "flexible"

was also advanced in an affidavit. The prior art, however,
described 1.5 inch pipe as flexible. The court held that the
specification and the evidence (the prior art) failed to
support the gloss appellants sought to put on the term
"flexible." Note that applicant had not defined "flexible
plastic pipe" in the specification.);  In re Barr, 170 USPQ
330, 339 (CCPA 1971) ("The specification in this case
attempts no definition of the claim language `a phenyl
radical.' Accordingly we must presume that the phrase was
used  in  its  commonly  accepted  technical  sense.
...[Applicants] have not referred us to any standard work on
chemistry  which  indicates  that  the  commonly  accepted
technical meaning of the words `a phenyl radical', without
more, would encompass the hydroxyphenyl radical. On the
contrary,  Hackh's  [Chemical  Dictionary]  quite  plainly
defines `phenyl' as `the monovalent radical ... derived from
benzene ... or phenol.' ").

 APPLICANT MAY BE OWN LEXICOGRAPHER

  Applicant may be his or her own lexicographer as long as
the meaning assigned to the term is not repugnant to the
term's well known usage. In re Hill , 73 USPQ 482 (CCPA
1947).<

2111.02  Weight of Preamble [R - 1]

 >PREAMBLE IS NONLIMITING UNLESS IT BREATHES LIFE AND
MEANING INTO THE CLAIM

  The preamble is not given the effect of a limitation
unless it breathes life and meaning into the claim. In order
to limit the claim, the preamble must be "essential to point
out the invention defined by the claim." Kropa v.  Robie ,
88 USPQ 478, 481 (CCPA 1951) (discussed below). In claims
directed to articles and apparatus, any phraseology in the
preamble that limits the structure of that article or
apparatus must be given weight.  In re Stencel, 4 USPQ2d
1071 (Fed. Cir. 1987) (discussed below). On the other hand,
a preamble is generally not accorded any patentable weight
where it merely recites the purpose of a process or the
intended use of a structure, and where the body of the claim
does not depend on the preamble for completeness but,
instead, the process steps or structural limitations are
able to stand alone.  In re  Hirao , 535 F.2d 67, 190 USPQ
15 (CCPA 1976) (process claims, discussed below);  Kropa v.
Robie,88  USPQ  478,  481  (CCPA  1951)(claims  directed  to
apparatus, products, chemical structure, etc., as discussed
below).

  In In re Hirao , 535 F.2d 67, 190 USPQ 15 (CCPA 1976),
the claim preamble set forth "A process for preparing foods
and  drinks  sweetened  mildly,  and  protected  against
discoloration,  Streckler's  reaction,  and  moisture
absorption."  The  body  of  the  claim  recited  two  steps
directed to the formation of high purity maltose and a third
step of adding the maltose to foods and drinks as a
sweetener.  The  court  held  that  the  preamble  was  only
directed to the purpose of the process, the steps could
stand  alone  and  did  not  depend  on  the  preamble  for
completeness.

  In Kropa  v.  Robie , 88 USPQ 478, 481 (CCPA 1951), a
preamble reciting "An abrasive article" was deemed essential
to point out the invention defined by claims to an article

comprising abrasive grains and a hardened binder and the
process of making it. The court said that "it is only by
that phrase that it can be known that the subject matter
defined by the claims is comprised as an abrasive article.
Every union of substances capable  inter alia of use as
abrasive grains and a binder is not an `abrasive article.' "
Id. at 481. Therefore, the preamble served to further define
the structure of the article produced.

  In In re Stencel, 4 USPQ2d 1071 (Fed. Cir. 1987), the
claim was directed to a driver for setting a joint of a
threaded collar. The claim did not directly include the
structure of the collar as part of the claimed article. The
preamble did set forth the structure of the collar but the
examiner had not given this recitation any weight. The court
found that the collar structure could not be ignored. While
the claim was not directly limited to the collar, the collar
structure recited in the preamble did limit the structure of
the driver. The court stated that "the framework - the
teachings of the prior art - against which patentability is
measured is not all drivers broadly, but drivers suitable
for use in combination with this collar, for the claims are
so limited."  Id. at 1073.

 COMPOSITION CLAIMS - THE PREAMBLE IS GENERALLY NONLIMITING
IF THE PREAMBLE MERELY RECITES AN INHERENT PROPERTY

  When the claim is directed to a product, the preamble is
generally nonlimiting if the body of the claim is directed
to an old composition and the preamble merely recites a
property inherent in the old composition. Kropa v.  Robie,88
USPQ 478, 480 - 81 (CCPA 1951) (discussed above).

 THE INTENDED USE MAY FURTHER LIMIT THE CLAIM IF IT DOES
MORE THAN MERELY STATE PURPOSE OR INTENDED USE

  Intended use recitations and other types of functional
language  cannot  be  entirely  disregarded.  However,  in
apparatus, article, and composition claims, intended use
must result in a structural difference between the claimed
invention  and  the  prior  art  in  order  to  patentably
distinguish the claimed invention from the prior art. If the
prior art structure is capable of performing the intended
use, then it meets the claim. In a claim drawn to a process
of making, the intended use must result in a manipulative
difference as compared to the prior art. In re  Casey,152
USPQ 235 (CCPA 1967);  In re Otto , 136 USPQ 458, 459 (CCPA
1963) (The claims were directed to a core member for hair
curlers and a process of making a core member for hair
curlers. Court held that the intended use of hair curling
was of no significance to the structure and process of
making.)<

2111.03  Transitional Phrases [R - 3]

  The  transitional  phrases  "comprising",  "consisting
essentially of" and "consisting of" define the scope of a
claim with respect to what unrecited additional components
or steps, if any, are excluded from the scope of the claim.

  The transitional term "comprising", which is synonymous
with "including," "containing," or "characterized by," is
inclusive or open - ended and does not ex clude additional,
unrecited elements or method steps. Moleculon Research Corp.
v.  CBS, Inc. , 793 F.2d 1261, 229 USPQ 805 (Fed. Cir.

1986)>;<  In re Baxter , 656 F.2d 679,>686,< 210 USPQ 795,
803 (CCPA 1981);  Ex parte Davis , 80 USPQ 448, 450 (Bd.
App. 1948)("comprising" leaves "the claim open for the
inclusion  of  unspecified  ingredients  even  in  major
amounts").

  The transitional phrase "consisting of" excludes any
element, step, or ingredient not specified in the claim. In
re Gray , 53 F.2d 520, 11 USPQ 225 (CCPA 1931);  Ex parte
Davis , 80 USPQ 448, 450 (Bd. App. 1948)("consisting of"
defined as "closing the claim to the inclusion of materials
other than those recited except for impurities ordinarily
associated  therewith.").  Transitional  phrases  such  as
"composed of," "having," or "being" must be interpreted in
light of the specification to determine whether open or
closed claim language is intended. A claim which depends
from a claim which "consists of" the recited elements or
steps cannot add an element or step. When the phrase
"consists of" appears in a clause of the body of a claim,
rather than immediately following the preamble, it limits
only the element set forth in that clause; other elements
are not excluded from the claim as a whole.  Mannesmann
Demag Corp. v.  Engineered Metal Products Co.,793 F.2d 1279,
230 USPQ 45 (Fed. Cir. 1986).

  The transitional phrase "consisting essentially of"
limits the scope of a claim to the specified materials or
steps "and those that do not materially affect the basic and
novel characteristic(s)" of the claimed invention.  In re
Herz , 537 F.2d 549, 551 - 52, 190 USPQ 461, 463 (CCPA
1976)(emphasis  in  original)(Prior  art  hydraulic  fluid
required a dispersant which appellants argued was excluded
from  claims  limited  to  a  functional  fluid  "consisting
essentially of" certain components. In finding the claims
did not exclude the prior art dispersant, the court noted
that  appellants'  specification  indicated  the  claimed
composition can contain any well - known additive such as a
dispersant, and there was no evidence that the presence of a
dispersant would materially affect the basic and novel
characteristic of the claimed invention. The prior art
composition had the same basic and novel characteristic
(increased  oxidation  resistance)  as  well  as  additional
enhanced detergent and dispersant characteristics.). See
also  Atlas Powder Co. v.  E.I. duPont de Nemours & Co. ,
750 F.2d 1569, 224 USPQ 409 (Fed. Cir. 1984);  In re
Janakirama - Rao, 317 F.2d 951, 137 USPQ 893 (CCPA 1963);
Water Technologies Corp. v.  Calco, Ltd ., 850 F.2d 660, 7
USPQ2d 1097 (Fed. Cir. 1988). When an applicant contends
that additional steps or materials in the prior art are
excluded by the recitation of "consisting essentially of,"
applicant has the burden of showing that the introduction of
additional steps or components would materially change the
characteristics of applicant's invention.  In re De Lajarte,
337 F.2d 870, 143 USPQ 256 (CCPA 1964). See also  Ex parte
Hoffman, 12 USPQ2d 1061, 1063 - 64 (Bd. Pat. App. & Inter.
1989)("Although `consisting essentially of' is typically
used and defined in the context of compositions of matter,
we find nothing intrinsically wrong with the use of such
language as a modifier of method steps . . [rendering] the
claim open only for the inclusion of steps which do not
materially affect the basic and novel characteristics of the
claimed method. To determine the steps included versus
excluded  the  claim  must  be  read  in  light  of  the
specification . . [I]t is an applicant's burden to
establish that a step practiced in a prior art method is

excluded from his claims by `consisting essentially of'
language.").

2112  Requirements of Rejection Based on Inherency;
Burden of Proof [R - 3]

  >The express, implicit, and inherent disclosures of a
prior art reference may be relied upon in the rejection of
claims under 35 U.S.C. 102 or 103. "The inherent teaching of
a prior art reference, a question of fact, arises both in
the context of anticipation and obviousness." In re Napier ,
55  F.3d  610,  613,  34  USPQ2d  1782,  1784  (Fed.  Cir.
1995)(affirmed a 35 U.S.C. 103 rejection based in part on
inherent disclosure in one of the references). See also  In
re Grasselli , 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed.
Cir. 1983).<

 SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE
DISCOVERY OF A NEW PROPERTY

  The claiming of a new use, new function or unknown
property which is inherently present in the prior art does
not necessarily make the claim patentable. In re Best ,>562
F.2d 1252, 1254,<195 USPQ 430, 433 (CCPA 1977). See also
MPEP § 2112.01 with regard to inherency and product by
process claims and MPEP § 2141.02 with regard to inherency
and rejections under 35 U.S.C. 103.

 A REJECTION UNDER 35 U.S.C. 102 / 103 CAN BE MADE WHEN THE
PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE
PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC

  Where applicant claims a composition in terms of a
function, property or characteristic and the composition of
the prior art is the same as that of the claim but the
function is not explicitly disclosed by the reference, the
Examiner may make a rejection under both 35 U.S.C. 102 and
103, expressed as a 102 / 103 rejection. "There is nothing
inconsistent in concurrent rejections for obviousness under
35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In
re Best,>562, F2d 1252, 1255 n.4< 195 USPQ 430, 433 >n.4<
(CCPA 1977). This same rationale should also apply to
product, apparatus, and process claims claimed in terms of
function, property or characteristic. Therefore, 35 U.S.C.
102 / 103 rejection is appropriate for these types of claims
as well as for composition claims.

 EXAMINER MUST PROVIDE RATIONALE OR EVIDENCE TENDING TO SHOW
INHERENCY

  >The fact that a certain result or characteristic may
occur or be present in the prior art is not sufficient to
establish the inherency of that result or characteristic.
In re Rijckaert , 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957
(Fed. Cir. 1993)(reversed rejection because inherency was
based  on  what  would  result  due  to  optimization  of
conditions, not what was necessarily present in the prior
art);  In re Oelrich , 666 F.2d 578, 581 - 82, 212 USPQ 323,
326 (CCPA 1981).<

  "In relying upon the theory of inherency, the examiner
must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly
inherent characteristic necessarily flows from the teachings
of the applied prior art."  Ex parte Levy, 17 USPQ2d 1461,

1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original)
(Applicant's invention was directed to a biaxially oriented,
flexible dilation catheter balloon (a tube which expands
upon inflation) used, for example, in clearing the blood
vessels of heart patients). The examiner applied a U.S.
patent to Schjeldahl which disclosed injection molding a
tubular preform and then injecting air into the preform to
expand it against a mold (blow molding). The reference did
not  directly  state  that  the  end  product  balloon  was
biaxially oriented . It did disclose that the balloon was
"formed  from  a  thin  flexible  inelastic,  high  tensile
strength, biaxially oriented synthetic plastic material."
Id. at 1462 (emphasis in original). The examiner argued that
Schjeldahl's balloon was inherently biaxially oriented. The
Board reversed on the basis that the examiner did not
provide objective evidence or cogent technical reasoning to
support the conclusion of inherency.).

  ONCE  A  REFERENCE  TEACHING  PRODUCT  APPEARING  TO  BE
SUBSTANTIALLY IDENTICAL IS MADE THE BASIS OF A REJECTION AND
THE EXAMINER PRESENTS EVIDENCE OR REASONING TENDING TO SHOW
INHERENCY, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN
UNOBVIOUS DIFFERENCE

  "[T]he PTO can require an applicant to prove that the
prior  art  products  do  not  necessarily  >or  inherently<
possess the characteristics of his [or her] claimed product.
***Whether the rejection is based on `inherency' under 35
U.S.C. 102, on `prima facie obviousness' under 35 U.S.C.
103, jointly or alternatively, the burden of proof is the
same.>..[footnote omitted].<" The burden of proof is similar
to that required with respect to product - by - process
claims.  In re Fitzgerald**>619 F. 2d 67, 70,< 205 USPQ
594,>596< (CCPA 1980) (quoting  **>In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433 - 34 (CCPA 1977)<).

  In In re Fitzgerald ** , 205 USPQ 594 (CCPA 1980), the
claims were directed to a self - locking screw - threaded
fastener comprising a metallic threaded fastener having
patches of crystallizable thermoplastic bonded thereto. The
claim further specified that the thermoplastic had a reduced
degree  of  crystallization  shrinkage.  The  specification
disclosed that the locking fastener was made by heating the
metal fastener to melt a thermoplastic blank which is
pressed against the metal. After the thermoplastic adheres
to  the  metal  fastener,  the  end  product  is  cooled  by
quenching in water. The examiner made a rejection based on a
U.S. patent to Barnes. Barnes taught a self - locking
fastener in which the patch of thermoplastic was made by
depositing thermoplastic powder on a metallic fastener which
was then heated. The end product was cooled in ambient air,
by cooling air or by contacting the fastener with a water
trough. The court first noted that the two fasteners were
identical or only slightly different from each other. "Both
fasteners  possess  the  same  utility,  employ  the  same
crystallizable polymer (nylon 11), and have an adherent
plastic  patch  formed  by  melting  and  then  cooling  the
polymer."  Id. at 596 n.1. The court then noted that the
Board had found that Barnes' cooling rate could reasonably
be expected to result in a polymer possessing the claimed
crystallization shrinkage rate. Applicant had not rebutted
this finding with evidence that the shrinkage rate was
indeed  different.  They  had  only  argued  that  the
crystallization shrinkage rate was dependent on the cool
down rate and that the cool down rate of Barnes was much

slower than theirs. Because a difference in the cool down
rate  does  not  necessarily  result  in  a  difference  in
shrinkage, objective evidence was required to rebut the 35
U.S.C. 102 / 103  prima facie  case.

  See MPEP § 2113 for more information on the analogous
burden of proof applied to product - by - process claims.

2112.01  Composition, Product, and Apparatus Claims [R - 1]

 >PRODUCT AND APPARAT CLAIMS - WHEN THE STRUCTURE RECITED IN
THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE
CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE
INHERENT

  Where the claimed and prior art products are identical
or substantially identical in structure or composition, or
are  produced  by  identical  or  substantially  identical
processes, a prima facie case of either anticipation or
obviousness has been established.  In re Best,195 USPQ 430,
433 (CCPA 1977). "When the PTO shows a sound basis for
believing that the products of the applicant and the prior
art are the same, the applicant has the burden of showing
that they are not."  In re Spada,15 USPQ2d 1655, 1658 (Fed.
Cir. 1990). Therefore, the  prima facie case can be rebutted
by evidence showing that the prior art products do not
necessarily  possess  the  characteristics  of  the  claimed
product.  In re Best,195 USPQ 430, 433 (CCPA 1977).

  See also Titanium Metals Corp. v.  Banner , 227 USPQ 773
(Fed. Cir. 1985) (Claims were directed to a titanium alloy
containing 0.2 - 0.4% Mo and 0.6 - 0.9% Ni having corrosion
resistance. A Russian article disclosed a titanium alloy
containing 0.25% Mo and 0.75% Ni but was silent as to
corrosion resistance. The Federal Circuit held that the
claim was anticipated because the percentages of Mo and Ni
were squarely within the claimed ranges. The court went on
to say that it was immaterial what properties the alloys had
or who discovered the properties because the composition is
the same and thus must necessarily exhibit the properties.);

  In re Ludtke, 169 USPQ 563 (CCPA 1971) (Claim 1 was
directed  to  a  parachute  canopy  having  concentric
circumferential panels radially separated from each other by
radially extending tie lines. The panels were separated
"such that the critical velocity of each successively larger
panel will be less than the critical velocity of the
previous panel, whereby said parachute will sequentially
open and thus gradually decelerate." The court found that
the claim was anticipated by  Menget. Menget taught a
parachute having three circumferential panels separated by
tie lines. The court upheld the rejection finding that
applicant had failed to show that  Menget  did not possess
the functional characteristics of the claims.);

  Northam Warren Corp. v.  D. F. Newfield Co.,7 F.Supp  .
773, 22 USPQ 313 (E.D.N.Y. 1934) (A patent to a pencil for
cleaning fingernails was held invalid because a pencil of
the same structure for writing was found in the prior art.).

 COMPOSITION CLAIMS - IF THE COMPOSITION IS PHYSICALLY THE
SAME, IT MUST HAVE THE SAME PROPERTIES

  "Products of identical chemical composition can not have
mutually exclusive properties." A chemical composition and

its properties are inseparable. Therefore, if the prior art
teaches the identical chemical structure, the properties
applicant discloses and/or claims are necessarily present.
In re Spada , 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
(Applicant  argued  that  the  claimed  composition  was  a
pressure sensitive adhesive containing a tacky polymer while
the  product  of  the  reference  was  hard  and  abrasion
resistant. "The Board correctly found that the virtual
identity of monomers and procedures sufficed to support a
prima facie case of unpatentability of Spada's polymer
latexes for lack of novelty.").<

2112.02  Process Claims [R - 1]

 >PROCESS CLAIMS - PRIOR ART DEVICE ANTICIPATES A CLAIMED
PROCESS IF THE DEVICE CARRIES OUT THE PROCESS DURING NORMAL
OPERATION

  Under the principles of inherency, if a prior art
device, in its normal and usual operation, would necessarily
perform the method claimed, then the method claimed will be
considered to be anticipated by the prior art device. When
the prior art device is the same as a device described in
the specification for carrying out the claimed method, it
can be assumed the device will inherently perform the
claimed process. In re King, 231 USPQ 136 (Fed. Cir. 1986)
(The claims were directed to a method of enhancing color
effects produced by ambient light through a process of
absorption  and  reflection  of  the  light  off  a  coated
substrate. A prior art reference to  Donley disclosed a
glass substrate coated with silver and metal oxide 200 - 800
angstroms thick. While Donley disclosed using the coated
substrate to produce architectural colors, the absorption
and reflection mechanisms of the claimed process were not
disclosed. However, King's specification disclosed using a
coated substrate of Donley's structure for use in his
process. The Federal Circuit upheld the Board's finding that
"Donley inherently performs the function disclosed in the
method claims on appeal when that device is used in `normal
and usual operation' " and found that a  prima facie case of
anticipation was made out.  Id. at 138. It was up to
applicant to prove that Donley's structure would not perform
the claimed method when placed in ambient light.).

  See also In re Best,195 USPQ 430, 433 (CCPA 1977)
(Applicant claimed a process for preparing a hydrolytically
- stable zeolitic aluminosilicate which included a step of
"cooling the steam zeolite ... at a rate sufficiently rapid
that the cooled zeolite exhibits a X - ray diffraction
pattern ...." All the process limitations were expressly
disclosed by a U.S. patent to Hansford except the cooling
step. The court stated that any sample of Hansford's zeolite
would  necessarily  be  cooled  to  facilitate  subsequent
handling. Therefore, a  prima facie case under 35 U.S.C. 102
/ 103 was made. Applicant had failed to introduce any
evidence comparing X - ray diffraction patterns showing a
difference in cooling rate between the claimed process and
that of Hansford or any data showing that the process of
Hansford would result in a product with a different X - ray
diffraction. Either type of evidence would have rebutted the
prima facie  case under 35 U.S.C. 102. A further analysis
would be necessary to determine if the process was unobvious
under 35 U.S.C. 103.);

  Ex parte  Novitski,26 USPQ2d 1389 (Bd. Pat. App. &

Inter. 1993) (The Board rejected a claim directed to a
method  for  protecting  a  plant  from  plant  pathogenic
nematodes  by  inoculating  the  plant  with  a  nematode
inhibiting strain of  P. cepacia. A U.S. patent to  Dart
disclosed inoculation using  P. cepacia type Wisconsin 526
bacteria for protecting the plant from fungal disease. Dart
was silent as to nematode inhibition but the Board concluded
that nematode inhibition was an inherent property of the
bacteria. The Board noted that applicant had stated in the
specification that Wisconsin 526 possesses an 18% nematode
inhibition rating.).

 PROCESS OF USE CLAIMS - NEW AND UNOBVIOUS USES OF OLD
STRUCTURES AND COMPOSITIONS MAY BE PATENTABLE

  The discovery of a new use for an old structure based on
unknown properties of the structure might be patentable to
the discoverer as a process of using. In re Huck , 114 USPQ
161, 163 (CCPA 1957). However, when the claim recites using
an old composition or structure and the "use" is directed to
a result or property of that composition or structure, then
the claim is anticipated.  In re  May, 197 USPQ 601, 607
(CCPA 1978) (Claims 1 and 6, directed to a method of
effecting  nonaddictive  analgesia  (pain  reduction)  in
animals, were found to be anticipated by the applied prior
art  which  disclosed  the  same  compounds  for  effecting
analgesia but which was silent as to addiction. The court
upheld the rejection and stated that the applicants had
merely found a new property of the compound and such a
discovery did not constitute a new use. The court went on to
reverse the rejection of claims 2 - 5 and 7 - 10 which
recited a process of using a new compound. The court relied
on evidence showing that the nonaddictive property of the
new compound was unexpected.).

  See also In re Tomlinson, 363 F.2d 928, 150 USPQ 623
(CCPA  1966)  (The  claim  was  directed  to  a  process  of
inhibiting light degradation of polypropylene by mixing it
with  one  of  a  genus  of  compounds,  including  nickel
dithiocarbamate. A reference taught mixing polypropylene
with nickel dithiocarbamate to lower heat degradation. The
court held that the claims read on the obvious process of
mixing polypropylene with the nickel dithiocarbamate and
that the preamble of the claim was merely directed to the
result of mixing the two materials. "While the references do
not  show  a  specific  recognition  of  that  result,  its
discovery by appellants is tantamount only to finding a
property in the old composition ." 363 F.2d at 934, 150 USPQ
at 628 (emphasis in original).).<

2113  Product by Process Claims [R - 1]

 >PRODUCT - BY - PROCESS CLAIMS ARE NOT LIMITED TO THE
MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE
IMPLIED BY THE STEPS

  "Even though product - by process claims are limited by
and defined by the process, determination of patentability
is based on the product itself. The patentability of a
product does not depend on its method of production. If the
product in the product - by - process claim is the same as
or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a
different process." In re Thorpe , 227 USPQ 964, 966 (Fed.
Cir. 1985) (citations omitted) (Claim was directed to a

novolac color developer. The process of making the developer
was allowed. The difference between the inventive process
and the prior art was the addition of metal oxide and
carboxylic acid as separate ingredients instead of adding
the more expensive pre - reacted metal carboxylate. The
product - by - process claim was rejected because the end
product, in both the prior art and the allowed process, ends
up containing metal carboxylate. The fact that the metal
carboxylate is not directly added, but is instead produced
in - situ does not change the end product.).

 ONCE A PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS
FOUND AND A 35 U.S.C. 102 / 103 REJECTION MADE, THE BURDEN
SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE

  "The Patent Office bears a lesser burden of proof in
making out a case of prima facie obviousness for product -
by - process claims because of their peculiar nature" than
when a product is claimed in the conventional fashion.  In
re Fessmann,180 USPQ 324, 326 (CCPA 1974). Once the Examiner
provides a rationale tending to show that the claimed
product appears to be the same or similar to that of the
prior art, although produced by a different process, the
burden shifts to applicant to come forward with evidence
establishing an unobvious difference between the claimed
product and the prior art product.  In re Marosi, 218 USPQ
289, 292 (Fed. Cir. 1983) (The claims were directed to a
zeolite manufactured by mixing together various inorganic
materials in solution and heating the resultant gel to form
a crystalline metal silicate essentially free of alkali
metal. The prior art described a process of making a zeolite
which, after ion exchange to remove alkali metal, appeared
to be "essentially free of alkali metal." The court upheld
the rejection because the applicant had not come forward
with any evidence that the prior art was not "essentially
free  of  alkali  metal"  and  therefore  a  different  and
unobvious product.).

  Ex parte Gray , 10 USPQ2d 1922 (Bd. Pat. App. & Inter.
1989) (The prior art disclosed human nerve growth factor ( -
NGF) isolated from human placental tissue. The claim was
directed to - NGF produced through genetic engineering
techniques. The factor produced seemed to be substantially
the same whether isolated from tissue or produced through
genetic engineering. While the applicant questioned the
purity of the prior art factor, no concrete evidence of an
unobvious difference was presented. The Board stated that
the dispositive issue is whether the claimed factor exhibits
any unexpected properties compared with the factor disclosed
by  the  prior  art.  The  Board  further  stated  that  the
applicant should have made some comparison between the two
factors  to  establish  unexpected  properties  since  the
materials  appeared  to  be  identical  or  only  slightly
different.).

 THE USE OF 35 U.S.C. 102 / 103 REJECTIONS FOR PRODUCT - BY
- PROCESS CLAIMS HAS BEEN APPROVED BY THE COURTS

  "[T]he lack of physical description in a product - by -
process claim makes determination of the patentability of
the claim more difficult, since in spite of the fact that
the claim may recite only process limitations, it is the
patentability of the product claimed and not of the recited
process steps which must be established. We are therefore of
the opinion that when the prior art discloses a product

which reasonably appears to be either identical with or only
slightly different than a product claimed in a product - by
- process claim, a rejection based alternatively on either
section 102 or section 103 of the statute is eminently fair
and acceptable. As a practical matter, the Patent Office is
not equipped to manufacture products by the myriad of
processes put before it and then obtain prior art products
and make physical comparisons therewith." In re Brown , 173
USPQ 685, 688 (CCPA 1972).<

2114  Apparatus and Article Claims - Functional Language
[R - 1]

  >For a discussion of case law which provides guidance in
interpreting the functional portion of means - plus -
function limitations see MPEP § 2181 - § 2186.

 APPARAT CLAIMS MUST BE STRUCTURALLY DISTINGUISHABLE FROM
THE PRIOR ART

  Claims directed to apparatus must be distinguished from
the prior art in terms of structure rather than function. In
re Danley, 120 USPQ 528, 531 (CCPA 1959). "Apparatus claims
cover what a device is, not what a device does ."(emphasis
in original)  Hewlett - Packard Co . v.  Bausch & Lomb Inc
., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990).

 MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE
APPARAT CLAIM FROM THE PRIOR ART

  A claim containing a "recitation with respect to the
manner in which a claimed apparatus is intended to be
employed does not differentiate the claimed apparatus from a
prior art apparatus" if the prior art apparatus teaches all
the structural limitations of the claim.  Ex parte Masham, 2
USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of
claim 1 recited that the apparatus was "for mixing flowing
developer material" and the body of the claim recited "means
for mixing ..., said mixing means being stationary and
completely submerged in the developer material". The claim
was  rejected  over  a  reference  which  taught  all  the
structural limitations of the claim for the intended use of
mixing  flowing  developer.  However,  the  mixer  was  only
partially submerged in the developer material. The Board
held that the amount of submersion is immaterial to the
structure of the mixer and thus the claim was properly
rejected.).

 A PRIOR ART DEVICE CAN PERFORM ALL THE FUNCTIONS OF THE
APPARAT CLAIM AND STILL NOT ANTICIPATE THE CLAIM

  Even if the prior art device performs all the functions
recited in the claim, the prior art cannot anticipate the
claim if there is any structural difference. It should be
noted, however, that means plus function limitations are met
by structures which are equivalent to the corresponding
structures recited in the specification. In re Ruskin , 146
USPQ 211 (CCPA 1965) as implicitly modified by  In re
Donaldson , 29 USPQ2d 1845 (Fed. Cir. 1994).<

2115  Material or Article Worked Upon by Apparatus [R -
1]

 >MATERIAL OR ARTICLE WORKED UPON DOES NOT LIMIT APPARAT
CLAIMS

  "Expressions relating the apparatus to contents thereof
during an intended operation are of no significance in
determining patentability of the apparatus claim." Ex parte
Thibault , 164 USPQ 666, 667 (Bd. App. 1969). Furthermore,
"Inclusion of material or article worked upon by a structure
being claimed does not impart patentability to the claims."
In re Young , 25 USPQ 69 (CCPA 1935) (as restated in  In re
Otto , 136 USPQ 458, 459 (CCPA 1963).

  In In re Young, 25 USPQ 69 (CCPA 1935), a claim to a
machine for making concrete beams included a limitation to
the concrete reinforced members made by the machine as well
as the structural elements of the machine itself. The court
held that the inclusion of the article formed within the
body of the claim did not, without more, make the claim
patentable.

  In In re Casey , 152 USPQ 235 (CCPA 1967), an apparatus
claim recited "A taping machine comprising a supporting
structure, a brush attached to said supporting structure,
said brush being formed with projecting bristles which
terminate in free ends to collectively define a surface to
which adhesive tape will detachably adhere, and means for
providing  relative  motion  between  said  brush  and  said
supporting structure while said adhesive tape is adhered to
said surface." An obviousness rejection was made over a
reference to Kienzle which taught a machine for perforating
sheets. The court upheld the rejection stating that "the
references in claim 1 to adhesive tape handling do not
expressly or impliedly require any particular structure in
addition to that of Kienzle." The perforating device had the
structure of the taping device as claimed, the difference
was in the use of the device, and "the manner or method in
which such machine is to be utilized is not germane to the
issue of patentability of the machine itself.").

  Note that this line of cases is limited to claims
directed  to  machinery  which  works  upon  an  article  or
material in its intended use, it does not apply to product
claims or kit claims (i.e., claims directed to a plurality
of articles grouped together as a kit).<

2116  Material Manipulated in Process [R - 1]

 >MATERIAL RECITED IN PROCESS CLAIM MUST BE CONSIDERED IN
PATENTABILITY DETERMINATION

  The materials on which a process is carried out must be
accorded  weight  in  determining  the  patentability  of  a
process. Ex parte  Leonard , 187 USPQ 122 (Bd. App. 1974).

2116.01  Novel, Unobvious Starting Material or End Product
[R - 2]

 **

 >  All the limitations of a claim must be considered
when weighing the differences between the claimed invention
and the prior art in determining the obviousness of a
process or method claim. See MPEP § 2143.03.

  In re Ochiai , 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir.
1995) and  In re Brouwer , 77 F.3d 422, 37 USPQ2d 1663 (Fed.
Cir. 1996) addressed the issue of whether an otherwise

conventional process could be patented if it were limited to
making or using a nonobvious product. In both cases, the
Federal Circuit held that the use of  per se rules is
improper in applying the test for obviousness under 35
U.S.C. 103. Rather, 35 U.S.C. 103 requires a highly fact -
dependent analysis involving taking the claimed subject
matter as a whole and comparing it to the prior art. To
support a rejection under 35 U.S.C. 103, the collective
teachings of the prior art must have suggested to one of
ordinary skill in the art that, at the time the invention
was made, applicant's claimed invention would have been
obvious. In applying this test to the claims on appeal in
Ochiai and  Brouwer , the court held that there simply was
no suggestion or motivation in the prior art to make or use
novel,  nonobvious  products  in  the  claimed  processes.
Consequently, the court overturned the rejections based upon
35 U.S.C. 103.

  Interpreting the claimed invention as a whole requires
consideration of all claim limitations. Thus, proper claim
construction requires treating language in a process claim
which recites the making or using of a nonobvious product as
a  material  limitation.  Motivation  to  make  or  use  the
nonobvious product must be present in the prior art for a 35
U.S.C. 103 rejection to be sustained. The decision in Ochiai
specifically dispelled any distinction between processes of
making a product and methods of using a product with regard
to the effect of any product limitations in either type of
claim.

  As noted in Brouwer , 77 F.3d at 425, 37 USPQ2d at 1666,
the inquiry as to whether a claimed invention would have
been  obvious  is  "highly  fact  -  specific  by  design".
Accordingly obviousness must be assessed on a case - by -
case basis. The following decisions are illustrative of the
lack of  per se rules in applying the test for obviousness
under 35 U.S.C. 103 and of the fact intensive comparison of
claimed processes with the prior art:

  In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir.
1985) (The examiner rejected a claim directed to a process
in which patentable starting materials were reacted to form
patentable end products. The prior art showed the same
chemical reaction mechanism applied to other chemicals. The
court held that the process claim was obvious over the prior
art.);  In re Albertson , 332 F.2d 379, 141 USPQ 730 (CCPA
1964)(Process of chemically reducing one novel, nonobvious
material to obtain another novel, nonobvious material was
claimed. The process was held obvious because the reduction
reaction was old.);  In re Kanter, 399 F.2d 249, 158 USPQ
331 (CCPA 1968)(Process of siliconizing a patentable base
material  to  obtain  a  patentable  product  was  claimed.
Rejection based on prior art teaching the siliconizing
process  as  applied  to  a  different  base  material  was
upheld.); Cf.  In re Pleuddemann , 15 USPQ2d 1738 (Fed. Cir.
1990) (Methods of bonding polymer and filler using a novel
silane coupling agent held patentable even though methods of
bonding using other silane coupling agents were well known
because the process could not be conducted without the new
agent);  In re Kuehl, 475 F.2d 658, 177 USPQ 250 (CCPA
1973)(Process of cracking hydrocarbons using novel zeolite
catalyst  found  to  be  patentable  even  though  catalytic
cracking process was old." The test under 103 is whether in
view of the prior art the invention as a whole would have
been obvious at the time it was made, and the prior art here

does not include the zeolite, ZK - 22. The obviousness of
the process of cracking hydrocarbons with ZK - 22 as a
catalyst must be determined without reference to knowledge
of ZK - 22 and its properties." 177 USPQ at 255.); and  In
re Mancy , 499 F.2d 1289, 182 USPQ 303 (CCPA 1974)(Claim to
a process for the production of a known antibiotic by
cultivating a novel, unobvious microorganism was found to be
patentable.). <

 **

 **

2121  Prior Art; General Level of Operability Required
to Make a Prima Facie Case [R - 1]

 >PRIOR ART IS PRESUMED TO BE OPERABLE/ENABLING

  When the reference relied on expressly anticipates or
makes obvious all of the elements of the claimed invention,
the reference is presumed to be operable. Once such a
reference is found, the burden is on applicant to provide
facts rebutting the presumption of operability. In re Sasse,
207 USPQ 107 (CCPA 1980). See also MPEP § 716.07.

 WHAT CONSTITUTES AN "ENABLING DISCLOSURE" DOES NOT DEPEND
ON THE TYPE OF PRIOR ART THE DISCLOSURE IS CONTAINED IN

  The level of disclosure required within a reference to
make it an "enabling disclosure" is the same no matter what
type of prior art is at issue. It does not matter whether
the prior art reference is a U.S. patent, foreign patent, a
printed publication or other. There is no basis in the
statute (35 U.S.C. 102 or 103) for discriminating either in
favor of or against prior art references on the basis of
nationality. In re Moreton, 129 USPQ 227 (CCPA 1961).<

2121.01  Use of Prior Art in Rejections Where Operability
Is in Question [R - 1]

 >A REJECTION IS APPROPRIATE IF ONE OF ORDINARY SKILL COULD
PRACTICE THE CLAIMED INVENTION GIVEN THE TEACHINGS OF THE
REFERENCE COMBINED WITH KNOWLEDGE IN THE ART

  "In determining that quantum of prior art disclosure
which is necessary to declare an applicant's invention `not
novel' or `anticipated' within section 102, the stated test
is whether a reference contains an `enabling disclosure'...
." In re  Hoeksema,158 USPQ 596 (CCPA 1968). A reference
contains an "enabling disclosure" if the public was in
possession of the claimed invention before the date of
invention. "Such possession is effected if one of ordinary
skill in the art could have combined the publication's
description of the invention with his [or her] own knowledge
to make the claimed invention."  In re Donohue , 226 USPQ
619 (Fed. Cir. 1985).

  (a)  35  U.S.C.  102  Rejections  and  addition  of
evidence showing reference is operable

 SECONDARY EVIDENCE SHOWING REFERENCE CONTAINS AN "ENABLING
DISCLOSURE" CAN BE COMBINED WITH THE REFERENCE TO MAKE OUT A
35 U.S.C. 102 REJECTION

  It is possible to make a 35 U.S.C. 102 rejection even if

the reference does not itself teach one of ordinary skill
how to practice the invention, i.e., how to make or use the
article disclosed. If the reference teaches every claimed
element of the article, secondary evidence, such as other
patents  or  publications,  can  be  cited  to  show  public
possession of the method of making and/or using. In re
Donohue, 226 USPQ 619, 621 (Fed. Cir. 1985). See MPEP §
2131.01 for more information on 35 U.S.C. 102 rejections
using  secondary  references  to  show  that  the  primary
reference contains an "enabling disclosure."

  (b)  35 U.S.C. 103 rejections - Use of inoperative
prior art

 AN INOPERATIVE REFERENCE CAN BE USED IN A 35 U.S.C. 103
REJECTION FOR WHAT IT DOES TEACH

  "Even if a reference discloses an inoperative device, it
is prior art for all that it teaches." Beckman Instruments
v.  LKB Produkter AB , 13 USPQ2d 1301, 1304 (Fed. Cir.
1989). Therefore, "a non - enabling reference may qualify as
prior art for the purpose of determining obviousness under
35 U.S.C. 103."  Symbol Technologies Inc. v. Opticon Inc .,
19 USPQ2d 1241, 1247 (Fed. Cir. 1991).<

2121.02  Compounds and Compositions - What Constitutes
Enabling Prior Art [R - 1]

 >ONE OF ORDINARY SKILL IN THE ART MUST BE ABLE TO MAKE OR
SYNTHESIZE

  Where a process for making the compound is not developed
until after the date of invention, the mere naming of a
compound in a reference, without more, can not constitute a
description of the compound. In re Hoeksema, 158 USPQ 596
(CCPA 1968). Note, however, that a reference is presumed
operable  until  applicant  provides  facts  rebutting  the
presumption of operatibility.  In re Sasse , 207 USPQ 107
(CCPA 1980). Therefore, applicant must provide evidence
showing that a process for making was not known at the time
of the invention. See the following paragraph for the
evidentiary standard to be applied.

 A REFERENCE DOES NOT CONTAIN AN "ENABLING DISCLOSURE" IF
ATTEMPTS  AT  MAKING  THE  COMPOUND  OR  COMPOSITION  WERE
UNSUCCESSFUL BEFORE THE DATE OF INVENTION

  When  a  prior  art  reference  merely  discloses  the
structure of the claimed compound, evidence showing that
attempts to prepare that compound were unsuccessful before
the  date  of  invention  will  be  adequate  to  show
inoperability. In re Wiggins, 488 F.2d 538, 179 USPQ 421
(CCPA  1971).  However,  the  fact  that  an  author  of  a
publication did not attempt to make the compound disclosed,
without more, will not overcome a rejection based on that
publication.  In re Donohue, 226 USPQ 619 (Fed. Cir. 1985)
(In this case, the examiner had made a rejection under 35
U.S.C.  102(b)  over  a  publication,  which  disclosed  the
claimed compound, in combination with two patents teaching a
general process of making the particular class of compounds.
The  applicant  submitted  an  affidavit  stating  that  the
authors of the publication had not actually synthesized the
compound.  The  court  held  that  the  fact  that  the
publication's  author  did  not  synthesize  the  disclosed
compound  was  immaterial  to  the  question  of  reference

operability.  The  patents  were  evidence  that  synthesis
methods were well known. The court distinguished  Wiggins,
in which a very similar rejection was reversed. In  Wiggins
, attempts to make the compounds using the prior art methods
were all unsuccessful.). Compare  In re Hoeksema , 158 USPQ
596 (CCPA 1968) (A claim to a compound was rejected over a
patent to  De Boer which disclosed compounds similar in
structure to those claimed (obvious homologs) and a process
of making these compounds. Applicant responded with an
affidavit by an expert named  Wiley which stated that there
was no indication in the  De Boer patent that the process
disclosed in  De Boer could be used to produce the claimed
compound and that, he did not believe that the process
disclosed in  De Boe r could be adapted to the production of
the claimed compound. The court held that the facts stated
in this affidavit were legally sufficient to overcome the
rejection and that applicant need not show that all known
processes are incapable of producing the claimed compound
for this showing would be practically impossible.).<

2121.03  Plant Genetics - What Constitutes Enabling Prior
Art [R - 1]

 >THOSE OF ORDINARY SKILL MUST BE ABLE TO GROW AND CULTIVATE
THE PLANT

  When the claims are drawn to plants, the reference,
combined with knowledge in the prior art, must enable one of
ordinary skill in the art to reproduce the plant. In re
LeGrice, 133 USPQ 365 (CCPA 1962) (National Rose Society
Annual of England and various other catalogues showed color
pictures of the claimed roses and disclosed that applicant
had raised the roses. The publications were published more
than 1 year before applicant's filing date. The court held
that the publications did not place the rose in the public
domain. Information on the grafting process required to
reproduce the rose was not included in the publications and
such information was necessary for those of ordinary skill
in the art (plant breeders) to reproduce the rose.). Compare
Ex parte  Thompson , 24 USPQ2d 1618 (Bd. Pat. App. & Inter.
1992) (Seeds were commercially available more than 1 year
prior to applicant's filing date. One of ordinary skill in
the art could grow the claimed cotton cultivar from the
commercially  available  seeds.  Thus,  the  publications
describing the cotton cultivar had "enabled disclosures."
The  Board  distinguished  LeGrice  by  finding  that  the
catalogue picture of the rose of LeGrice was the only
evidence in that case. There was no evidence of commercial
availability in enabling form since the asexually reproduced
rose could not be reproduced from seed. Therefore, the
public would not have possession of the rose by its picture
alone, but the public would have possession of the cotton
cultivar based on the publications and the availability of
the seeds.).<

2121.04  Apparatus and Articles - What Constitutes Enabling
Prior Art [R - 1]

 >PICTURES MAY CONSTITUTE AN "ENABLING DISCLOSURE"

  Pictures and drawings may be sufficiently enabling to
put the public in the possession of the article pictured.
Therefore, such an enabling picture may be used to reject
claims to the article. However, the picture must show all
the  claimed  structural  features  and  how  they  are  put

together. Jockmus  v. Leviton, 28 F.2d 812 (2d Cir. 1928).
See also MPEP § 2125 for a discussion of drawings as prior
art.<

2122  Discussion of Utility in the Prior Art [R - 1]

 >UTILITY NEED NOT BE DISCLOSED IN REFERENCE

  In  order  to  constitute  anticipatory  prior  art,  a
reference must identically disclose the claimed compound,
but no utility need be disclosed by the reference. In re
Schoenwald, 22 USPQ2d 1671 (Fed. Cir. 1992) (The application
claimed compounds used in ophthalmic compositions to treat
dry eye syndrome. The examiner found a printed publication
which disclosed the claimed compound but did not disclose a
use for the compound. The court found that the claim was
anticipated since the compound and a process of making it
was taught by the reference. The court explained that "no
utility need be disclosed for a reference to be anticipatory
of a claim to an old compound." 22 USPQ2d at 1673. It is
enough  that  the  claimed  compound  is  taught  by  the
reference.).<

2123  Rejection Over Prior Art's Broad Disclosure
Instead of Preferred Embodiments [R - 1]

 >THE BROAD DISCLOSURE OF A REFERENCE IS RELEVANT PRIOR ART
FOR ALL IT WOULD HAVE SUGGESTED TO THOSE OF ORDINARY SKILL

  A reference may be relied upon for all that it would
have reasonably suggested to one having ordinary skill the
art, including nonpreferred embodiments. Merck & Co.  v.
Biocraft Laboratories , 10 USPQ2d 1843 (Fed. Cir. 1989).

 NONPREFERRED EMBODIMENT CONSTITUTE PRIOR ART

  Disclosed examples and preferred embodiments do not
constitute a teaching away from a broader disclosure or
nonpreferred embodiments. In re Susi,169 USPQ 423 (CCPA
1971). "A known or obvious composition does not become
patentable simply because it has been described as somewhat
inferior to some other product for the same use."  In re
Gurley  ,  31  USPQ2d  1130,  1132  (Fed.  Cir.  1994)  (The
invention was directed to a an epoxy impregnated fiber -
reinforced printed circuit material. The applied prior art
reference taught a printed circuit material similar to that
of the claims but impregnated with polyester - imide resin
instead of epoxy. The reference, however, disclosed that
epoxy was known for this use, but that epoxy impregnated
circuit  boards  have  "relatively  acceptable  dimensional
stability"  and  "some  degree  of  flexibility,"  but  are
inferior to circuit boards impregnated with polyester -
imide resins. The court upheld the rejection concluding
that, while the reference did teach away from using epoxy,
the  "teaching  away"  was  insufficient  to  overcome  the
rejection since "Gurley asserted no discovery beyond what
was known in the art."  Id. at 1132.)

 PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN

  "The use of patents as references is not limited to what
the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the
literature of the art, relevant for all they contain." In re
Heck , 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting  In re

Lemelson , 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA
1968)).<

2124  Exception to the Rule That the Critical Reference
Date Must Precede the Filing Date [R - 1]

  >IN  SOME  CIRCUMSTANCES  A  FACTUAL  REFERENCE  NEED  NOT
ANTEDATE THE FILING DATE

  In certain circumstances, references cited to show a
universal fact need not be available as prior art before
applicant's filing date. In re Wilson , 135 USPQ 442 (CCPA
1962). Such facts include the characteristics and properties
of a material or a scientific truism. Some specific examples
in which later publications showing factual evidence can be
cited include situations where the facts shown in the
reference are evidence "that, as of an application's filing
date , undue experimentation would have been required,  In
re Corneil , 347 F.2d 563, 568, 145 USPQ 702, 705 (CCPA
1965), or that a parameter absent from the claims was or was
not critical,  In re Rainer , 305 F.2d 505, 507 n.3, 134
USPQ 343, 345 n.3 (CCPA 1962), or that a statement in the
specification was inaccurate,  In re  Marzocchi,439 F.2d
220, 223 n.4, 169 USPQ 367, 370 n.4 (CCPA 1971), or that the
invention was inoperative or lacked utility,  In re Langer ,
503 F.2d 1380, 1391, 183 USPQ 288, 297 (CCPA 1974), or that
a claim was indefinite,  In re Glass , 492 F.2d 1228,1232
n.6,  181  USPQ  31,  34  n.6  (CCPA  1974),  or  that
characteristics of prior art products were known,  In re
Wilson , 311 F.2d 266, 135 USPQ 442 (CCPA 1962)."  In re
Koller, 204 USPQ 702, 706 n.5 (CCPA 1980) (quoting  In re
Hogan,194 USPQ 527, 537 n.17 (CCPA 1977) (emphasis in
original)). However, it is impermissible to use a later
factual reference to determine whether the application is
enabled or described as required under 35 U.S.C. 112, first
paragraph.  In re Koller , 204 USPQ 702, 706 n.5 (CCPA
1980). References which do not qualify as prior art because
they postdate the claimed invention may be relied upon to
show the level of ordinary skill in the art at or around the
time the invention was made.  Ex parte Erlich , 22 USPQ 1463
(Bd. Pat. App. & Inter. 1992).<

2125  Drawings as Prior Art [R - 1]

 >DRAWINGS CAN BE USED AS PRIOR ART

  Drawings and pictures can anticipate claims if they
clearly show the structure which is claimed. In re Marz ,
173 USPQ 25 (CCPA 1972). However, the picture must show all
the  claimed  structural  features  and  how  they  are  put
together.  Jockmus  v.  Leviton , 28 F.2d 812 (2d Cir.
1928).  The  origin  of  the  drawing  is  immaterial.  For
instance, drawings in a design patent can anticipate or make
obvious the claimed invention as can drawings in utility
patents. When the reference is a utility patent, it does not
matter that the feature shown is unintended or unexplained
in the specification. The drawings must be evaluated for
what they reasonably disclose and suggest to one of ordinary
skill in the art.  In re Aslanian, 200 USPQ 500 (CCPA 1979).
See MPEP § 2121.04 for more information on prior art
drawings as "enabled disclosures."

 PROPORTIONS OF FEATURES IN A DRAWING ARE NOT EVIDENCE OF
ACTUAL PROPORTIONS WHEN DRAWINGS ARE NOT TO SCALE

  When the reference does not disclose that the drawings
are to scale and is silent as to dimensions, arguments based
on measurement of the drawing features are of little value.
However, the description of the article pictured can be
relied on, in combination with the drawings, for what they
would reasonably teach one of ordinary skill in the art. In
re Wright,193 USPQ 332 (CCPA 1977) ("We disagree with the
Solicitor's conclusion, reached by a comparison of the
relative dimensions of appellant's and  Bauer's drawing
figures, that  Bauer `clearly points to the use of a chime
length of roughly 1/2 to 1 inch for a whiskey barrel.' This
ignores the fact that  Bauer does not disclose that his
drawings are to scale. ... However, we agree with the
Solicitor that  Bauer's teaching that whiskey losses are
influenced by the distance the liquor needs to `traverse the
pores of the wood' (albeit in reference to the thickness of
the barrelhead)" would have suggested the desirability of an
increased chime length to one of ordinary skill in the art
bent on further reducing whiskey losses."  Id. at 335 -
36.)<

2126  Availability of a Document as a "Patent" for
Purposes of Rejection Under 3 U.S.C. 102(a), (b), and (d) [R
- 1]

 >THE NAME "PATENT" ALONE DOES NOT MAKE A DOCUMENT AVAILABLE
AS A PRIOR ART PATENT UNDER 35 U.S.C. 102(a) or (b)

  What a foreign country designates to be a patent may not
be a patent for purposes of rejection under 35 U.S.C. 102(a)
and (b); it is the substance of the rights conferred and the
way information within the "patent" is controlled that is
determinative. In re Ekenstam 118 USPQ 349 (CCPA 1958). See
the next paragraph for further explanation with respect to
when a document can be applied in a rejection as a "patent."
See MPEP § 2135.01 for a further discussion of the use of
"patents" in 35 U.S.C. 102(d) rejections.

 A SECRET PATENT IS NOT AVAILABLE AS A REFERENCE UNDER 35
U.S.C. 102(a) or (b) UNTIL IT IS AVAILABLE TO THE PUBLIC BUT
IT MAY BE AVAILABLE UNDER 35 U.S.C. 102(d) AS OF GRANT DATE

  Secret  patents  are  defined  as  patents  which  are
insufficiently  accessible  to  the  public  to  constitute
"printed publications." Decisions on the issue of what is
sufficiently accessible to be a "printed publication" are
located in MPEP § 2128 - § 2128.01.

  Even if a patent grants an exclusionary right (is
enforceable), it is not available as prior art under 35
U.S.C. 102(a) or (b) if it is secret or private. In re
Carlson , 25 USPQ2d 1207, 1211 (Fed. Cir. 1992). The
document must be at least minimally available to the public
to  constitute  prior  art.  The  patent  is  sufficiently
available to the public for the purposes of 35 U.S.C. 102(a)
or  (b)  if  it  is  laid  open  for  public  inspection  or
disseminated in printed form. The date that the patent is
made available to the public is the date it is available as
a 35 U.S.C. 102(a) or (b) reference.  In re Ekenstam,118
USPQ 349 (CCPA 1958). But a period of secrecy after granting
the patent has been held to have no effect in connection
with  35  U.S.C.  102(d).  These  patents  are  usable  in
rejections under 35 U.S.C. 102(d) as of the date patent
rights are granted.  In re Kathawala,28 USPQ2d 1789 (Fed.
Cir. 1993). See MPEP § 2135 - § 2135.01 for more information

on 35 U.S.C. 102(d).

  In re Carlson, 25 USPQ2d 1207, 1211 (Fed. Cir. 1992)
("We recognize that Geschmacksmustern on display for public
view in remote cities in a far - away land may create a
burden of discovery for one without the time, desire, or
resources to journey there in person or by agent to observe
that which was registered under German law. Such a burden,
however, is by law imposed upon the hypothetical person of
ordinary skill in the art who is charged with knowledge of
all contents of the relevant prior art.")<

2126.01  Date of Availability of a Patent As a Reference [R
- 2]

 DATE FOREIGN PATENT IS EFFECTIVE AS A REFERENCE IS USUALLY
THE DATE PATENT RIGHTS ARE FORMALLY AWARDED TO ITS APPLICANT

  The date the patent is available as a reference is
generally the date that the patent becomes enforceable. This
date is the date the sovereign formally bestows patents
rights to the applicant. In re Monks , 588 F.2d 308, 200
USPQ 129 (CCPA 1978). There is an exception to this rule
when the patent is secret as of the date the rights are
awarded.  In re Ekenstam , 118 USPQ 349 (CCPA 1958).

  Note that MPEP § 901.05 section F summarizes in tabular
form dates of patenting for many foreign patents. Chisum,
Patents § 3.06[4] n.2 gives a good summary of decisions
which specify reference availability dates for specific
classes of foreign patents. A copy of  Chisum is kept in the
law library of the Solicitor's Office and in the **>Lutrelle
F. Parker, Sr., Memorial Law Library< located in CPK1 - 520.

2126.02  Scope of Reference's Disclosure Which Can Be Used
to Reject Claims When the Reference Is a "Patent" but Not a
"Publication" [R - 1]

 >OFTEN UNCLAIMED DETAILS FOUND IN THE PATENT SPECIFICATION
CAN BE RELIED ON EVEN IF PATENT IS SECRET

  When the patented document is used as a patent and not
as a publication, the examiner is not restricted to the
information conveyed by the patent claims but may use any
information provided in the specification which relates to
the subject matter of the patented claims when making a
rejection under 35 U.S.C. 102(a), (b) or (d). Ex parte Ovist
, 152 USPQ 709, 710 (Bd. App. 1963) (The claim of an Italian
patent was generic and thus embraced the species disclosed
in  the  examples,  the  Board  added  that  the  entire
specification was germane to the claimed invention and
upheld the examiner's 35 U.S.C. 102(b) rejection.);  In re
Kathawala , 28 USPQ2d 1785 (Fed. Cir. 1993) (The claims at
issue where rejected under 35 U.S.C. 102(d) by applicant's
own parent applications in Greece and Spain. The applicant
argued that the "invention ... patented' in Spain was not
the same `invention' claimed in the U.S. application because
the Spanish patent claimed processes for making [compounds
for inhibition of cholesterol biosynthesis] and claims 1 and
2 were directed to the compounds themselves."  Id. at 1786.
The Federal Circuit held that "when an applicant files a
foreign  application  fully  disclosing  his  invention  and
having the potential to claim his invention in a number of
ways, the reference in section 102(d) to `invention ...
patented' necessarily includes all disclosed aspects of the

invention."  Id. at 1789.)

  In re Fuge,124 USPQ 105 (CCPA 1959), does not conflict
with the above decisions. This decision simply states "that,
at the least , the scope of the patent embraces everything
included in the [claim]."  Id. at 107. (emphasis added).

  Note  that  the  courts  have  interpreted  the  phrase
"invention ... patented" in 102(a), (b), and (d) the same
way and have cited decisions without regard to which of
these subsections of 35 U.S.C. 102 was at issue in the
particular case at hand. Therefore, it does not seem to
matter to which subsection of 102 the cases are directed;
the court decisions are interchangeable as to this issue.<

2127  Domestic and Foreign Patent Applications as Prior
Art [R - 3]

  (a)  Abandoned applications, including provisional
applications

 37 CFR 1.108.  Abandoned applications not cited

  Abandoned applications as such will not be cited as
references except those which have been opened to inspection
by the public following a defensive publication.

 ABANDONED APPLICATIONS DISCLOSED TO THE PUBLIC CAN BE USED
AS PRIOR ART

  "An abandoned patent application may become evidence of
prior art only when it has been appropriately disclosed, as,
for example, when the abandoned pa tent is reference[d] in
the disclosure of another patent, in a publication, or by
voluntary disclosure...." Lee Pharmaceutical  v.  Kreps,
>577 F.2d 610, 613,< 198 USPQ 601, 605 (9th Cir. 1978). See
also 37 CFR 1.14(*>a<). The abandoned patent application
becomes available as prior art only as of the date the
public gains access to it as, for instance, when a patent
which incorporates it by reference is granted. Thus, the
subject matter of an abandoned application, including both
provisional and nonprovisional applications, referred to in
a prior art U.S. patent cannot be relied on in a 35 U.S.C.
102(e) rejection based on that patent since the disclosure
of the abandoned application is not public as of the filing
date of the patent.  In re Lund ,>376 F.2d 982, 991,< 153
USPQ 625, 633 (CCPA 1967) (The court reversed a rejection
over a patent which was a continuation - in - part of an
abandoned application. Applicant's filing date preceded the
issue  date  of  the  patent  reference.  The  abandoned
application contained subject matter which was essential to
the rejection but which was not carried over into the
continuation - in - part. The court held that the subject
matter of the abandoned application was not available to the
public as of either the parent's or the child's filing dates
and thus could not be relied on in the 102(e) rejection.).
>See MPEP § 2136.02 and § 2136.03 for the 35 U.S.C. 102(e)
date of a U.S. patent claiming priority under 35 U.S.C. 119
or 120.<

  (b) Applications  which  have  issued  into  U.S.
patents

 A 35 U.S.C. 102(e) REJECTION CANNOT RELY ON MATTER WHICH
WAS CANCELED FROM THE APPLICATION AND THUS DID NOT GET

PUBLISHED IN THE ISSUED PATENT

  Canceled matter in the application file of a U.S. patent
cannot be relied upon in a rejection under 35 U.S.C. 102(e).
**> Ex Parte <  Stalego , 154 USPQ 52>, 53< (Bd. App. 1966).
The canceled matter only becomes available as prior art as
of the date the application issues into a patent since this
is the date the application file wrapper becomes available
to the public.  In re Lund,>376 F.2d 982,< 153 USPQ 625
(CCPA 1967). For more information on available prior art for
use in 35 U.S.C. 102(e) rejections see MPEP § 2136.02.

  (c)  Foreign  applications  open  for  public
inspection (laid open applications)

 LAID OPEN APPLICATIONS MAY CONSTITUTE "PUBLISHED" DOCUMENTS

  When the specification is not issued in printed form but
is announced in an official journal and anyone can inspect
or obtain copies, it is sufficiently accessible to the
public to constitute a "publication" within the meaning of
35 U.S.C. 102(a) and (b). See In re Wyer,>655 F.2d 221,<210
USPQ 790 (CCPA 1981).

  Older cases have held that laid open patent applications
are not "published" and cannot constitute prior art. Ex
parte Haller , 103 USPQ 332 (Bd. App. 1953). However,
whether or not a document is "published" for the purposes of
35 U.S.C. 102 and 103 depends on how accessible the document
is to the public. As technology has made reproduction of
documents  easier,  the  accessibility  of  the  laid  open
applications  has  increased.  Items  provided  in  easily
reproducible form have thus become "printed publications" as
the phrase is used in 35 U.S.C. 102.  In re  Wyer ,>655 F.2d
221, 226,< 210 USPQ 790>, 794< (CCPA 1981) (laid open
Australian  patent  application  held  to  be  a  "printed
publication" even though only the abstract was published
because it was laid open for public inspection, microfilmed,
"diazo copies" were distributed to five suboffices having
suitable reproduction equipment and the diazo copies were
available for sale.). The contents of a foreign patent
application should not be relied upon as prior art until the
date of publication (i.e., the insertion into the laid open
application) can be confirmed by an examiner's review of a
copy of the document (MPEP § 901.05).

  (d)  Pending U.S. applications

  As specified in 37 CFR 1.14(a), all pending U.S.
applications  are  preserved  in  *>confidence<  except  for
reissue applications and applications in which a request to
open the complete application to inspection by the public
has been granted by the Office (37 CFR 1.11(b)). However, if
two  copending  applications  have  a  common  assignee  or
inventor, a rejection will be proper in some circumstances.
For instance, when the claims between the two applications
are  not  independent  or  distinct,  a  provisional  double
patenting  rejection  is  made.  See  MPEP  §  804.  If  the
copending applications differ by at least one inventor and
at least one of the applications is obvious in view of the
other, a provisional rejection over 35 U.S.C. 102(e) or 103
is made. See MPEP § 706.02(f) and 706.02(k) for procedure.

2128  "Printed Publications" as Prior Art [R - 1]

 >A REFERENCE IS A "PRINTED PUBLICATION" IF IT IS ACCESSIBLE
TO THE PUBLIC

  A reference is proven to be a "printed publication"
"upon a satisfactory showing that such document has been
disseminated or otherwise made available to the extent that
persons interested and ordinarily skilled in the subject
matter or art, exercising reasonable diligence, can locate
it." In re Wyer, 210 USPQ 790 (CCPA 1981) (quoting  I.C.E.
Corp.  v.  Armco Steel Corp. , 250 F.Supp. 738, 743, 148
USPQ  537,  540  (SDNY  1966)  ("We  agree  that  `printed
publication' should be approached as a unitary concept. The
traditional dichotomy between `printed' and `publication' is
no longer valid. Given the state of technology in document
duplication, data storage, and data retrieval systems, the
`probability of dissemination' of an item very often has
little to do with whether or not it is `printed' in the
sense of that word when it was introduced into the patent
statutes in 1836. In any event, interpretation of the words
`printed'  and  `publication'  to  mean  `probability  of
dissemination' and `public accessibility' respectively, now
seems  to  render  their  use  in  the  phrase  `printed
publication' somewhat redundant."  In re Wyer , 210 USPQ at
794.).

  See also Carella  v.  Starlight Archery,231 USPQ 644
(Fed. Cir. 1986) (Starlight Archery argued that  Carella's
patent claims to an archery sight were anticipated under 35
U.S.C. 102(a) by an advertisement in a Wisconsin Bow Hunter
Association (WBHA) magazine and a WBHA mailer prepared prior
to  Carella's filing date. However, there was no evidence as
to when the mailer was received by any of the addressees.
Plus, the magazine had not been mailed until 10 days after
Carella's filing date. The court held that since there was
no  proof  that  either  the  advertisement  or  mailer  was
accessible to any member of the public before the filing
date there could be no rejection under 35 U.S.C. 102(a).).

 EXAMINER NEED NOT PROVE ANYONE ACTUALLY LOOKED AT THE
DOCUMENT

  One  need  not  prove  someone  actually  looked  at  a
publication when that publication is accessible to the
public through a library or patent office. See In re Wyer ,
210 USPQ 790 (CCPA 1981);  In re Hall , 228 USPQ 453 (Fed.
Cir. 1986).<

2128.01  Level of Public Accessibility Required [R - 1]

 >A THESIS PLACED IN A UNIVERSITY LIBRARY MAY BE PRIOR ART
IF SUFFICIENTLY ACCESSIBLE TO THE PUBLIC

  A doctoral thesis indexed and shelved in a library is
sufficiently accessible to the public to constitute prior
art as a "printed publication." In re Hall , 228 USPQ 453
(Fed.  Cir.  1986).  Even  if  access  to  the  library  is
restricted,  a  reference  will  constitute  a  "printed
publication" as long as a presumption is raised that the
portion of the public concerned with the art would know of
the invention.  In re Bayer , 196 USPQ 670 (CCPA 1978).

  In In re Hall , 228 USPQ 453 (Fed. Cir. 1986), general
library cataloging and shelving practices showed that a
doctoral thesis deposited in university library would have
been indexed, cataloged and shelved and thus available to

the  public  before  the  critical  date.  Compare  In  re
Cronyn,13 USPQ2d 1070 (Fed. Cir.1989) (The theses were
shelved and indexed by index cards filed alphabetically by
student name and kept in a shoe box in the chemistry
library. The index cards only listed the student name and
title of the thesis. Two of three judges held that the
students' theses were not accessible to the public. The
court reasoned that the theses had not been either cataloged
or indexed in a meaningful way since thesis could only be
found if the researcher's name was known, but the name bears
no relationship to the subject of the thesis. One judge,
however, held that the fact that the theses were shelved in
the library was enough to make them sufficiently accessible
to  the  public.  The  nature  of  the  index  was  not
determinative. This judge relied on prior Board decisions (
Gulliksen  v.  Halberg, 75 USPQ 252, 257 (Bd. App. 1937) and
Ex parte Hershberger , 96 USPQ 54, 56 (Bd. App. 1952)),
which held that shelving a single copy in a public library
makes the work a "printed publication." It should be noted
that these Board decisions have not been expressly overruled
but have been criticized in other decisions. See  In re
Tenney,117 USPQ 348 (CCPA 1958) (concurring opinion by
J.Rich ) (A document, of which there is but one copy,
whether it be handwritten, typewritten or on microfilm, may
be technically accessible to anyone who can find it. Such a
document is not "printed" in the sense that a printing press
has been used to reproduce the document. If only technical
accessibility  were  required  "logic  would  require  the
inclusion within the term [printed] of all unprinted public
documents  for  they  are  all  `accessible.'  While  some
tribunals have gone quite far in that direction, as in the
`college  thesis  cases,'  I  feel  they  have  done  so
unjustifiably and on the wrong theory. Knowledge is not in
the possession of the public where there has been no
dissemination,  as  distinguished  from  technical
accessibility." "The real significance of the word `printed'
" is grounded in the "probability of wide circulation.").
See also  Deep Welding, Inc. v.  Sciaky Bros. , 163 USPQ 144
(7th  Cir.  1969)  (calling  the  holding  of  Ex  parte
Hershberger "extreme"). Compare  In re Bayer,196 USPQ 670
(CCPA  1978)  (A  reference  will  constitute  a  "printed
publication" as long as a presumption is raised that the
portion of the public concerned with the art would know of
the invention even if accessibility is restricted to only
this part of the public. But accessibility to applicant's
thesis was restricted to only three members of a graduate
committee. There can be no presumption that those concerned
with the art would have known of the invention in this
case.).

  ORALLY  PRESENTED  PAPER  CAN  CONSTITUTE  A  "PRINTED
PUBLICATION"  IF  WRITTEN  COPIES  ARE  AVAILABLE  WITHOUT
RESTRICTION

  A paper which is orally presented in a forum open to all
interested persons constitutes a "printed publication" if
written  copies  are  disseminated  without  restriction.
Massachusetts Institute of Technology  v.  AB Fortia, 774
F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir. 1985) (Paper
orally  presented  to  between  50  and  500  persons  at  a
scientific meeting open to all persons interested in the
subject matter, with written copies distributed without
restriction to all who requested, is a printed publication.
Six persons requested and obtained copies.).

 INTERNAL DOCUMENTS INTENDED TO BE CONFIDENTIAL ARE NOT
"PRINTED PUBLICATIONS"

  Documents and items only distributed internally within
an organization which are intended to remain confidential
are not "printed publications" no matter how many copies are
distributed. In re George , 2 USPQ2d 1880 (Bd. Pat. App. &
Inter. 1987) (Research reports disseminated in - house to
only  those  persons  who  understood  the  policy  of
confidentiality  regarding  such  reports  are  not  printed
publications even though the policy was not specifically
stated in writing.).  Garret Corp.  v.  U.S.,422 F.2d 874,
878, 164 USPQ 521, 524 (Ct. Cl.1970) ("While distribution to
government agencies and personnel alone may not constitute
publication ... distribution to commercial companies without
restriction on use clearly does.").  Northern Telecom Inc.
v  . Datapoint Corp. , 15 USPQ2d 1321 (Fed. Cir. 1990) (Four
reports on the AESOP - B military computer system which were
not under security classification were distributed to about
fifty organizations involved in the AESOP - B project. One
document  contained  the  legend  "Reproduction  or  further
dissemination is not authorized." The other documents were
of the class that would contain this legend. The documents
were housed in Mitre Corporation's library. Access to this
library was restricted to those involved in the AESOP - B
project. The court held that public access was insufficient
to make the documents "printed publications.").<

2128.02  Date Publication Is Available as a Reference [R -
1]

 >DATE OF ACCESSIBILITY CAN BE SHOWN THROUGH EVIDENCE OF
ROUTINE BUSINESS PRACTICES

  Evidence showing routine business practices can be used
to  establish  the  date  on  which  a  publication  became
accessible to the public. Specific evidence showing when the
specific document actually became available is not always
necessary. Constant  v  . Advanced Micro - Devices, Inc., 7
USPQ2d 1057 (Fed. Cir. 1988) (Court held that evidence
submitted by Intel regarding undated specification sheets
showing how the company usually treated such specification
sheets was enough to show that the sheets were accessible by
the public before the critical date.);  In re Hall, 228 USPQ
453 (Fed. Cir. 1986) (Librarian's affidavit establishing
normal time frame and practice for indexing, cataloging and
shelving doctoral theses established that the thesis in
question would have been accessible by the public before the
critical date.).

 A JOURNAL ARTICLE OR OTHER PUBLICATION BECOMES AVAILABLE AS
PRIOR ART ON DATE OF IT IS RECEIVED BY A MEMBER OF THE
PUBLIC

  A publication disseminated by mail is not prior art
until it is received by at least one member of the public.
Thus, a magazine or technical journal is effective as of its
date of publication (date when first person receives it) not
the date it was mailed or sent to the publisher. In re
Schlittler, 234 F.2d 882, 110 USPQ 304 (CCPA 1956).<

2129  Admissions as Prior Art [R - 3]

 ADMISSIONS BY APPLICANT CONSTITUTE PRI OR ART

  When applicant states that something is prior art, it is
taken as being available as prior art against the claims.
Admitted prior art can be used in obviousness rejections. In
re Nomiya , 184 USPQ 607, 610 (CCPA 1975) (Figures in the
application labeled "prior art" held to be an admission that
what was pictured was prior art relative to applicant's
invention.).

 A JEPSON CLAIM RESULTS IN AN IMPLIED ADMISSION THAT
PREAMBLE IS PRIOR ART

  The preamble elements in a Jepson - type claim (i.e., a
claim of the type discussed in 37 CFR 1.75(e); see MPEP §
608.01(m)) >"< are impliedly admitted to be old in the art,
>...< but it is only an implied admission. "  In re
Ehrreich,>590 F.2d 902, 909 - 910< 200 USPQ 504, 510 (CCPA
1979) (emphasis in original) (citations omitted). >See also
Sjolund  v  . Musland , 847 F.2d 1573, 1577, 6 USPQ2d 2020,
2023 (Fed. Cir. 1988);  Pentec, Inc.  v.  Graphic Controls
Corp. , 776 F.2d 309, 315, 227 USPQ 766, 770 (Fed. Cir.
1985); and  Reading & Bates Construction Co.  v.  Baker
Energy Resources Corp.,748 F.2d 645, 650, 223 USPQ 1168,
1172 (Fed. Cir. 1984).< Claims must be read in light of the
specification. Where the specification confirms that the
subject matter of the preamble was invented by another
before applicant's invention, the preamble is treated as
prior art. However, certain art may be prior art to one
inventive entity, but not to the public in general.  In re
Fout, >675 F.2d 297, 300 - 301,<213 USPQ 532, 535 - 36 (CCPA
1982).  This  is  the  case  when  applicant  has  made  an
improvement  on  his  or  her  own  prior  invention.  An
applicant's own foundational work should not, unless there
is a statutory bar, be treated as prior art solely because
knowledge  of  this  work  is  admitted.  Therefore,  when
applicant explains that the  Jepson format is being used to
avoid a double patenting rejection over their own copending
application, the implication that the pre amble is admitted
prior art is overcome.  Reading & Bates Construction Co.  v.
Baker Energy >Resources Corp., 748 F.2d 645, 650<, 223 USPQ
1168>, 1172< (Fed. Cir. 1984). >Compare<  In re Fout ,>675
F.2d 297, 300 - 01,< 213 USPQ 532, 535 - 36 (CCPA 1982) (The
court held that the preamble was admitted prior art because
the  specification  explained  that  Paglaro,  a  different
inventor, had invented the subject matter described in the
preamble.).

2131  Anticipation - Application of 35 U.S.C. 102(a),
(b), and (e) [R - 1]

 >35 U.S.C. 102.  Conditions for patentability; novelty and
loss of right to patent.

  A person shall be entitled to a patent unless - -

  (a) the invention was known or used by others in this
country, or patented or described in a printed publication
in this or a foreign country, before the invention thereof
by the applicant for a patent, or

  (b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or
on sale in this country, more than one year prior to the
date of application for patent in the United States, or

  (c) he has abandoned the invention, or

  (d) the invention was first patented or caused to be
patented, or was the subject of an inventor's certificate,
by the applicant or his legal representatives or assigns in
a foreign country prior to the date of the application for
patent in this country on an application for patent or
inventor's certificate filed more than twelve months before
the filing of the application in the United States, or

  (e) the invention was described in a patent granted on an
application for patent by another filed in the United States
before the invention thereof by the applicant for patent, or
on an international application by another who has fulfilled
the requirements of paragraphs (1), (2), and (4) of section
371(c) of this title before the invention thereof by the
applicant for patent, or

  (f) he did not himself invent the subject matter sought
to be patented, or (g) before the applicant's invention
thereof the invention was made in this country by another
who had not abandoned, suppressed, or concealed it. In
determining priority of invention there shall be considered
not only the respective dates of conception and reduction to
practice of the invention, but also the reasonable diligence
of one who was first to conceive and last to reduce to
practice, from a time prior to conception by the other.

 TO ANTICIPATE A CLAIM, THE REFERENCE MUST TEACH EVERY
ELEMENT OF THE CLAIM

  "A claim is anticipated only if each and every element
as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference."
Verdegaal Bros.  v . Union Oil Co. of California , 2 USPQ2d
1051, 1053 (Fed. Cir. 1987). "The identical invention must
be shown in as complete detail as is contained in the ...
claim."  Richardson  v . Suzuki Motor Co ., 9 USPQ2d 1913,
1920 (Fed. Cir. 1989). The elements must be arranged as
required by the claim, but this is not an  ipsissimis verbis
test, i.e. identity of terminology is not required.  In re
Bond , 15 USPQ2d 1566 (Fed. Cir. 1990). Note that, in some
circumstances, it is permissible to use multiple references
in a 35 U.S.C. 102 rejection. See MPEP § 2131.01.<

2131.01  Multiple Reference 35 U.S.C. 102 Rejections [R -
1]

  >(a)  General rule

 IN SOME CIRCUMSTANCES MORE THAN ONE REFERENCE CAN BE USED
IN A 102 REJECTION

  Normally, only one reference should be used in making a
rejection under 35 U.S.C. 102. However, a 35 U.S.C. 102
rejection over multiple references has been held to be
proper when the extra references are cited to (1) prove the
primary reference contains an "enabled disclosure"; (2)
explain the meaning of a term used in the primary reference;
or (3) show that a characteristic not disclosed in the
reference is inherent. See paragraphs b - d below for more
explanation of each circumstance.

  (b) To  prove  reference  contains  an  "enabled
disclosure"

 EXTRA REFERENCES AND EXTRINSIC EVIDENCE CAN BE USED TO SHOW
THE PRIMARY REFERENCE CONTAINS AN "ENABLED DISCLOSURE"

  When the claimed composition or machine is disclosed
identically by the reference, an additional reference may be
relied on to show that the primary reference has an "enabled
disclosure." In re Samour, 197 USPQ 1 (CCPA 1978) and  In re
Donohue , 226 USPQ 619 (Fed. Cir. 1985) (Compound claims
were rejected under 35 U.S.C. 102(b) over a publication in
view of two patents. The publication disclosed the claimed
compound structure while the patents taught methods of
making compounds of that general class. The applicant argued
that there was no motivation to combine the references
because no utility was previously known for the compound and
that the 35 U.S.C. 102 rejection over multiple references
was improper. The court held that the publication taught all
the elements of the claim and thus motivation to combine was
not required. The patents were only submitted as evidence of
what was in the public's possession before applicant's
invention.).

  (c)  To explain the meaning of a term used in the
primary reference

 EXTRA REFERENCES OR OTHER EVIDENCE CAN BE USED TO SHOW
MEANING OF A TERM USED IN THE PRIMARY REFERENCE

  Extrinsic evidence may be used to explain but not expand
the meaning of terms and phrases used in the reference
relied upon as anticipatory of the claimed subject matter.
In re Baxter Travenol,21 USPQ2d 1281 (Fed. Cir. 1991)
(Baxter Travenol's invention was directed to a blood bag
system incorporating a bag containing DEHP, an additive to
the plastic which improved the bag's red blood cell storage
capability.  The  examiner  rejected  the  claims  over  a
technical progress report by  Becker which taught the same
blood bag system but did not expressly disclose the presence
of DEHP. The report, however, did disclose using commercial
blood bags. It also disclosed the blood bag system as "very
similar to [Baxter] Travenol's commercial two bag blood
container." Extrinsic evidence (depositions, declarations
and  Baxter's own admissions) showed that commercial blood
bags, at the time  Becker's report was written, contained
DEHP. Therefore, one of ordinary skill in the art would have
known that "commercial blood bags" meant bags containing
DEHP. The claims were thus held to be anticipated.)

  (d)  To show that a characteristic not disclosed in
the reference is inherent

 EXTRA REFERENCE OR EVIDENCE CAN BE USED TO SHOW AN INHERENT
CHARACTERISTIC OF THE THING TAUGHT BY THE PRIMARY REFERENCE

  "To serve as an anticipation when the reference is
silent about the asserted inherent characteristic, such gap
in the reference may be filled with recourse to extrinsic
evidence. Such evidence must make clear that the missing
descriptive matter is necessarily present in the thing
described  in  the  reference,  and  that  it  would  be  so
recognized by persons of ordinary skill." Continental Can
Co. USA  v.  Monsanto Co.,20 USPQ2d 1746, 1749 (Fed. Cir.
1991) (The court went on to explain that "this modest
flexibility in the rule that `anticipation' requires that
every element of the claims appear in a single reference
accommodates situations in which the common knowledge of

technologists is not recorded in the reference; that is,
where technological facts are known to those in the field of
the invention, albeit not known to judges."  Id. at 1749 -
50.) Note that, in other cases, the courts have held that
there is no requirement that those of ordinary skill in the
art know of the inherent property. See MPEP § 2112 - § 2113
for case law on inherency. Also note that the critical date
of extrinsic evidence showing a universal fact need not
antedate the filing date. See MPEP § 2124.<

2131.02  Genus - Species Situations [R - 1]

 >A SPECIES WILL ANTICIPATE A CLAIM TO A GENUS

  "A generic claim cannot be allowed to an applicant if
the prior art discloses a species falling within the claimed
genus." The species in that case will anticipate the genus.
In re Slayter , 125 USPQ 345, 347 (CCPA 1960);  In re
Gosteli, 10 USPQ2d 1614 (Fed. Cir. 1989) (  Gosteli claimed
a genus of 21 specific chemical species of bicyclic thia -
aza compounds in Markush claims. The prior art reference
applied against the claims disclosed two of the

 chemical species. The parties agreed that the prior art
species would anticipate the claims unless applicant was
entitled to his foreign priority date.).

  A  REFERENCE  THAT  CLEARLY  NAMES  THE  CLAIMED  SPECIES
ANTICIPATES THE CLAIM NO MATTER HOW MANY OTHER SPECIES ARE
NAMED

  A genus does not always anticipate a claim to a species
within the genus. However, when the species is clearly
named, the species claim is anticipated no matter how many
other species are additionally named. Ex parte A,17 USPQ2d
1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was
named  in  a  reference  which  also  disclosed  45  other
compounds. The Board held that the comprehensiveness of the
listing did not negate the fact that the compound claimed
was specifically taught. The Board compared the facts to the
situation in which the compound was found in the  Merck
Index , saying that "the tenth edition of the  Merck Index
lists ten thousand compounds. In our view, each and every
one of those compounds is `described' as that term is used
in 35 U.S.C. § 102(a), in that publication.")  Id. at 1718;
In re Sivaramakrishnan , 213 USPQ 441 (CCPA 1982) (The
claims were directed to polycarbonate containing cadmium
laurate as an additive. The court upheld the Board's finding
that a reference specifically naming cadmium laurate as an
additive  amongst  a  list  of  many  suitable  salts  in
polycarbonate resin anticipated the claims. The applicant
had argued that cadmium laurate was only disclosed as
representative of the salts and was expected to have the
same properties as the other salts listed while, as shown in
the application, cadmium laurate had unexpected properties.
The court held that it did not matter that the salt was not
disclosed  as  being  preferred,  the  reference  still
anticipated  the  claims  and  because  the  claim  was
anticipated, the unexpected properties were immaterial.).

 A GENERIC CHEMICAL FORMULA WILL ANTICIPATE A CLAIMED
SPECIES COVERED BY THE FORMULA WHEN THE SPECIES CAN BE "AT
ONCE ENVISAGED" FROM THE FORMULA

  When the compound is not specifically named, but instead

it is necessary to select portions of teachings within a
reference  and  combine  them;  e.g.,  select  various
substituents from a list of alternatives given for placement
at specific sites on a generic chemical formula to arrive at
a specific composition, anticipation can only be found if
the classes of substituents are sufficiently limited or well
delineated. Ex parte A , 17 USPQ2d 1716 (Bd. Pat. App. &
Inter. 1990). If one of ordinary skill in the art is able to
"at once envisage" the specific compound within the generic
chemical  formula,  the  compound  is  anticipated.  One  of
ordinary  skill  in  the  art  must  be  able  to  draw  the
structural  formula  or  write  the  name  of  each  of  the
compounds included in the generic formula before any of the
compounds can be "at once envisaged." One may look to the
preferred embodiments to determine which compounds can be
anticipated.  In re Petering , 133 USPQ 275 (CCPA 1962).

  In In re Petering , 133 USPQ 275 (CCPA 1962), the prior
art disclosed a generic chemical formula "wherein X, Y, Z,
P, and R' represent either hydrogen or alkyl radicals, R a
side chain containing an OH group." The court held that this
formula, without more, could not anticipate a claim to 7 -
methyl - 9-[d, l' - ribityl] - iso - alloxazine because the
generic formula encompassed a vast number and perhaps even
an infinite number of compounds. However, the reference also
disclosed preferred substituents for X, Y, Z, R, and R' as
follows: where X, P, and R' are hydrogen, where Y and Z may
be hydrogen or methyl, and where R is one of eight specific
isoalloxazines. The court determined that this more limited
generic class consisted of about 20 compounds. The limited
number of compounds covered by the preferred formula in
combination with the fact that the number of substituents
was low at each site, the ring positions were limited, and
there was a large unchanging structural nucleus, resulted in
a finding that the reference sufficiently described "each of
the various permutations here involved as fully as if he had
drawn each structural formula or had written each name." The
claimed compound was 1 of these 20 compounds. Therefore, the
reference "described" the claimed compound and the reference
anticipated the claims.

  In In re Schauman, 197 USPQ 5 (CCPA 1978), claims to a
specific compound were anticipated because the prior art
taught a generic formula embracing a limited number of
compounds closely related to each other in structure and the
properties possessed by the compound class of the prior art
was that disclosed for the claimed compound. The broad
generic formula seemed to describe an infinite number of
compounds but claim 1 was limited to a structure with only
one variable substituent R. This substituent was limited to
low alkyl radicals. One of ordinary skill in the art would
at once envisage the subject matter within claim 1 of the
reference.).

  Compare In re Meyer, 599 F.2d 1026, 202 USPQ 175 (CCPA
1979) (A reference disclosing "alkaline chlorine or bromine
solution" embraces a large number of species and  cannot be
said to anticipate claims to "alkali metal hypochlorite.");
Akzo N. V. v.  International Trade Comm'n , 1 USPQ2d 1241
(Fed. Cir. 1986) (Claims to a process for making aramid
fibers using a 98% solution of sulfuric acid were not
anticipated by a reference which disclosed using sulfuric
acid solution but which did not disclose using a 98%
concentrated sulfuric acid solution.). See MPEP § 2144.08
for  a  discussion  of  obviousness  in  genus  -  species

situations.<

2131.03  Anticipation of Ranges [R - 1]

 >A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A
CLAIMED RANGE ANTICIPATES THE RANGE

  "When, as by a recitation of ranges or otherwise, a
claim  covers  several  compositions,  the  claim  is
`anticipated' if one of them is in the prior art." Titanium
Metals Corp. v . Banner, 227 USPQ 773 (Fed. Cir. 1985)
(citing  In re  Petering, 301 F.2d 676, 682, 133 USPQ 275,
280 (CCPA 1962))(emphasis in original) (Claims to titanium
(Ti) alloy with 0.6 - 0.9% nickel (Ni) and 0.2 - 0.4%
molybdenum (Mo) were held anticipated by a graph in a
Russian article on Ti - Mo - Ni alloys because the graph
contained an actual data point corresponding to a Ti alloy
containing 0.25% Mo and 0.75% Ni and this composition was
within the claimed range of compositions.).

 PRIOR ART WHICH TEACHES A RANGE WITHIN, OVERLAPPING, OR
TOUCHING THE CLAIMED RANGE ANTICIPATES IF THE PRIOR ART
RANGE  DISCLOSES  THE  CLAIMED  RANGE  WITH  "SUFFICIENT
SPECIFICITY"

  When the prior art discloses a range which touches,
overlaps or is within the claimed range, but no specific
examples falling within the claimed range are disclosed, a
case by case determination must be made as to anticipation.
In order to anticipate the claims, the claimed subject
matter must be disclosed in the reference with "sufficient
specificity  to  constitute  an  anticipation  under  the
statute." What constitutes a "sufficient specificity" is
fact dependent. If the claims are directed to a narrow
range, the reference teaches a broad range, and there is
evidence of unexpected results within the claimed narrow
range, depending on the other facts of the case, it may be
reasonable  to  conclude  that  the  narrow  range  is  not
disclosed with "sufficient specificity" to constitute an
anticipation of the claims. The unexpected results may also
render the claims unobvious. The question of "sufficient
specificity" is similar to that of "clearly envisaging" a
species from a generic teaching. See MPEP § 2131.02. A 35
U.S.C. 102 / 103 combination rejection is permitted if it is
unclear if the reference teaches the range with "sufficient
specificity." The examiner must, in this case, provide
reasons for anticipation as well as a motivational statement
regarding obviousness. Ex parte Lee, 31 USPQ2d 1105 (Bd.
Pat. App. & Inter. 1993) (expanded Board). For a discussion
of the obviousness of ranges see MPEP § 2144.05.<

2131.04  Secondary Considerations [R - 1]

 >EVIDENCE OF SECONDARY CONSIDERATIONS CANNOT OVERCOME A 35
U.S.C. 102 REJECTION

  Evidence of secondary considerations, such as unexpected
results or commercial success, is irrelevant to 35 U.S.C.
102 rejections and thus cannot overcome a rejection so
based. In re Wiggins , 179 USPQ 421, 425 (CCPA 1973).<

2131.05  Nonanalogous Art [R - 1]

 >ART CANNOT BE "NONANALOGOUS ART" WHEN IT ANTICIPATES THE
CLAIM

  "Arguments that the alleged anticipatory prior art is
`nonanalogous art' or `teaches away from the invention' or
is not recognized as solving the problem solved by the
claimed invention, [are] not `germane' to a rejection under
section 102." Twin Disc, Inc . v.  U. S ., 231 USPQ 417, 424
(Cl. Ct. 1986) (quoting  In re Self , 213 USPQ 1, 7 (CCPA
1982)).<

2132  35 U.S.C. 102(a) [R - 1]

 >35 U.S.C. 102  Conditions for patentability; novelty and
loss of right to patent.

  A person shall be entitled to a patent unless - -

  (a) the invention was known or used by others in this
country, or patented or described in a printed publication
in this or a foreign country, before the invention thereof
by the applicant for a patent.

  *****

  (a)  "Known or used..."

 "KNOWN OR USED" MEANS PUBLICLY KNOWN OR USED

  "The statutory language known or used by others in this
country' (35 U.S.C. § 102(a)), means knowledge or use which
is accessible to the public." Carella v. Starlight Archery,
231 USPQ 644 (Fed. Cir. 1986). The knowledge or use is
accessible to the public if there has been no deliberate
attempt to keep it secret.  W. L. Gore & Assoc. v. Garlock,
Inc., 220 USPQ 303 (Fed. Cir. 1983).

  See MPEP § 2128 - § 2128.02for case law concerning
public accessibility of publications.

 ANOTHER'S SALE OF A PRODUCT MADE BY A SECRET PROCESS CAN BE
A 35 U.S.C. 102(a) PUBLIC USE IF THE PROCESS CAN BE
DETERMINED BY EXAMINING THE PRODUCT

  "The nonsecret use of a claimed process in the usual
course of producing articles for commercial purposes is a
public use." But a secret use of the process coupled with
the sale of the product does not result in a public use of
the process unless the public could learn the claimed
process by examining the product. Therefore, secret use of a
process by another, even if the product is commercially
sold, cannot result in a rejection under 35 U.S.C. 102(a) if
an examination of the product would not reveal the process.
W.L. Gore & Assoc. v.  Garlock, In c., 220 USPQ 303 (Fed.
Cir. 1983).

  (b)  "In this country"

 ONLY KNOWLEDGE OR USE IN THE U.S.C. AN BE USED IN A 35
U.S.C. 102(a) REJECTION

  The knowledge or use relied on in a 35 U.S.C. 102(a)
rejection must be knowledge or use "in this country." Prior
knowledge or use which is not present in the United States,
even if widespread in a foreign country, cannot be the basis
of a rejection under 35 U.S.C. 102(a). In re Ekenstam, 118
USPQ 349 (CCPA 1958). Note that the changes made to 35

U.S.C. 104 by NAFTA (Public Law 103 - 182) and Uruguay Round
Agreements Act (Public Law 103 - 465) do not modify the
meaning of "in this country" as used in 35 U.S.C. 102(a) and
thus "in this country" still means in the United States for
purposes of 35 U.S.C. 102(a) rejections.

  (c)  "By others"

 "OTHERS" MEANS ANY COMBINATION OF AUTHORS OR INVENTORS
DIFFERENT THAN THE INVENTIVE ENTITY

  The term "others" in 35 U.S.C. 102(a) refers to any
entity which is different from the inventive entity. The
entity need only differ by one person to be "by others."
This holds true for all types of references eligible as
prior art under 35 U.S.C. 102(a) including publications as
well as public knowledge and use. Any other interpretation
of 35 U.S.C. 102(a) "would negate the one year [grace]
period afforded under § 102(b)." In re Katz, 215 USPQ 14
(CCPA 1982).

  (d)  "patented in this or a foreign country"

  See MPEP § 2126 for information on the use of secret
patents as prior art.<

2132.01  Publications as 35 U.S.C. 102(a) Prior Art [R - 1]

 >35 U.S.C. 102(a) PRIMA FACIE CASE IS ESTABLISHED IF
REFERENCE PUBLICATION IS "BY OTHERS"

  A prima facie case is made out under 35 U.S.C. 102(a)
if, within 1 year of the filing date, the invention, or an
obvious  variant  thereof,  is  described  in  a  "printed
publication" whose authorship differs in any way from the
inventive entity unless it is stated within the publication
itself that the publication is describing the applicant's
work.  In re Katz , 215 USPQ 14 (CCPA 1982). See MPEP § 2128
for case law on what constitutes a "printed publication."
Note that when the reference is a U.S. patent published
within the year prior to the application filing date, a 35
U.S.C. 102(e) rejection should be made. See MPEP § 2136 - §
2136.05 for case law dealing with 102(e).

 APPLICANT CAN REBUT PRIMA FACIE CASE BY SHOWING REFERENCE'S
DISCLOSURE WAS DERIVED FROM APPLICANT'S OWN WORK

  Applicant's disclosure of his or her own work within the
year before the application filing date cannot be used
against him or her under 35 U.S.C. 102(a). In re Katz , 215
USPQ 14 (CCPA 1982) (discussed below). Therefore, where the
applicant is one of the co - authors of a publication cited
against his or her application, the publication may be
removed as a reference by the filing of affidavits made out
by the other authors establishing that the relevant portions
of the publication originated with, or were obtained from,
applicant.  Such  affidavits  are  called  disclaiming
affidavits.  Ex parte Hirschler , 110 USPQ 384 (Bd. App.
1952). The rejection can also be overcome by submission of a
specific declaration by the applicant establishing that the
article is describing applicant's own work,  In re Katz ,
215 USPQ 14 (CCPA 1982). However, if there is evidence that
the co - author has refused to disclaim inventorship and
believes himself or herself to be an inventor, applicant's
affidavit will not be enough to establish that applicant is

the sole inventor and the rejection will stand.  Ex parte
Kroger , 219 USPQ 370 (Bd. Pat. App. & Int. 1982) (discussed
below). It is also possible to overcome the rejection by
adding the coauthors as inventors to the application if the
requirements of 35 U.S.C. 116, third paragraph are met.  In
re  Searles,164 USPQ 623 (CCPA 1970).

  In In re Katz, 215 USPQ 14 (CCPA 1982),  Katz stated in
a  co  -  authoreclaration  that  the  coauthors  of  the
publication,  Chiorazzi and  Eshhar , "were students working
under the direction and supervision of the inventor, Dr.
David H. Katz." The court held that this declaration, in
combination  with  the  fact  that  the  publication  was  a
research paper, was enough to establish  Katz as the sole
inventor and that the work described in the publication was
his own. In research papers, students involved only with
assay and testing are normally listed as coauthors but are
not considered co - inventors.

  In Ex parte Kroger, 219 USPQ 370 (Bd. Pat. App. & Inter.
1982),  Kroger, Knaster and others were listed as authors on
an article on photovoltaic power generation. The article was
used to reject the claims of an application listing  Kroger
and  Rod as inventors.  Kroger  and  Rod submitted
affidavits declaring themselves to be the inventors. The
affidavits also stated that  Knaster merely carried out
assignments and worked under the supervision and direction
of  Kroger. The Board stated that if this were the only
evidence in the case, it would be established, under  In re
Katz , that  Kroger and  Rod were the only inventors.
However, in this case, there was evidence that  Knaster had
refused to sign an affidavit disclaiming inventorship and
Knaster had introduced evidence into the case in the form of
a letter to the PTO in which he alleged that he was a co -
inventor. The Board held that the evidence had not been
fully developed enough to overcome the rejection. Note that
the rejection had been made under 35 U.S.C. 102(f) but the
Board treated the issue the same as if it had arisen under
35 U.S.C. 102(a). See also case law dealing with overcoming
102(e) rejections as presented in MPEP § 2136.05. Many of
the issues are the same.

 A RULE 131 AFFIDAVIT CAN BE USED TO OVERCOME A 35 U.S.C.
102(a) REJECTION

  When the reference is not a statutory bar under 35
U.S.C. 102(b), (c), or (d), applicant can overcome the
rejection by swearing back of the reference through the
submission of an affidavit under 37 CFR 1.131. In re
Foster,145 USPQ (CCPA 1965). If the reference is disclosing
applicant's own work as derived from him or her, applicant
may submit either a 37 CFR 1.131 affidavit to antedate the
reference or a 37 CFR 1.132 affidavit to show derivation of
the reference subject matter from applicant and invention by
applicant.  In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA
1969). See MPEP § 715 for more information on when an
affidavit under 37 CFR 1.131 can be used to overcome a
reference and what evidence is required.<

2133  35 U.S.C. 102(b) [R - 1]

 >35 U.S.C. 102. Conditions for patentability; novelty and
loss of right to patent unless - -

  A person shall be entitled to a patent unless - -

 ****

  (b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or
on sale in this country, more than one year prior to the
date of application for patent in the United States.

  *****

 THE 1 - YEAR GRACE PERIOD IS EXTENDED TO THE NEXT WORKING
DAY IF IT WOULD OTHERWISE END ON A HOLIDAY OR WEEKEND

  Publications, patents, public uses and sales must occur
"more than one year prior to the date of application for
patent in the United States" in order to bar a patent under
35 U.S.C. 102(b). However, applicant's own activity will not
bar a patent if the 1 - year grace period expires on a
Saturday, Sunday, or Federal holiday and the application's
U.S. filing date is the next succeeding business day. Ex
parte Olah , 131 USPQ 41 (Bd. App. 1960).

 THE 1 - YEAR TIME BAR IS MEASURED FROM THE U.S. FILING DATE

  If one discloses his or her own work more than 1 year
before the filing of the patent application, that person is
barred from obtaining a patent. In re Katz , 215 USPQ 14, 17
(CCPA 1982). The 1 - year time bar is measured from the U.S.
filing date. Thus, applicant will be barred from obtaining a
patent if the public came into possession of the invention
on a date before the 1 - year grace period ending with the
U.S. filing date. It does not matter how the public came
into possession of the invention. Public possession could
occur by a public use, public sale, a publication, a patent
or any combination of these. In addition, the prior art need
not be identical to the claimed invention but will bar
patentability if it is an obvious variant thereof.  In re
Foster , 145 USPQ 166 (CCPA 1966). See MPEP § 706.02
regarding the effective U.S. filing date of an application.<

2133.01  Rejections of Continuation - In - Part (CIP)
Applications [R - 1]

 >UNSUPPORTED CLAIMS IN A CONTINUATION - IN - PART CAN BE
REJECTED UNDER 35 U.S.C. 103 OR 35 U.S.C. 102(b) BY ANY
REFERENCE AVAILABLE AS PRIOR ART MORE THAN 1 YEAR BEFORE THE
CIP FILING DATE

  When applicant files a continuation - in - part whose
claims are not supported by the parent application, the
effective filing date is the filing date of the child CIP.
Any prior art disclosing the invention or an obvious variant
thereof having a critical reference date more than 1 year
prior to the filing date of the child will bar the issuance
of a patent under 35 U.S.C. 102(b), Paperless Accounting  v.
Bay Area Rapid Transit System,231 USPQ 649, 653 (Fed. Cir.
1986).<

2133.02  Rejections Based on Publications and Patents [R -
1]

 >APPLICANT'S OWN WORK WHICH WAS AVAILABLE TO THE PUBLIC
BEFORE THE GRACE PERIOD MAY BE USED IN A 35 U.S.C. 102(b)
REJECTION

  "Any invention described in a printed publication more
than one year prior to the date of a patent application is
prior  art  under  Section  102(b),  even  if  the  printed
publication  was  authored  by  the  patent  applicant."  De
Graffenried  v.  U.S. , 16 USPQ2d 1321, 1330 n.7 (Cl. Ct.
1990). "Once an inventor has decided to lift the veil of
secrecy from his [or her] work, he [or she] must choose
between  the  protection  of  a  federal  patent,  or  the
dedication of his [or her] idea to the public at large."
Bonito Boats Inc.  v  . Thunder Craft Boats Inc. , 489 U.S.
141, 9 USPQ2d 1847, 1851 (1989).

 A 35 U.S.C. 102(b) REJECTION CREATES A STATUTORY BAR TO
PATENTABILITY OF THE REJECTED CLAIMS

  A rejection under 35 U.S.C. 102(b) cannot be overcome by
affidavits and declarations under 37 CFR 1.131 (Rule 131
Declarations), foreign priority dates, or evidence that
applicant himself invented the subject matter. Outside the 1
- year grace period, applicant is barred from obtaining a
patent containing any anticipated or obvious claims. In re
Foster , 145 USPQ 166, 170 (CCPA 1965).<

2133.03  Rejections Based on "Public Use" or "On Sale" [R -
1]

  >35 U.S.C. 102(b) "contains several distinct bars to
patentability,  each  of  which  relates  to  activity  or
disclosure more than one year prior to the date of the
application. Two of these - the `public use' and the `on
sale'  objections  -  are  sometimes  considered  together
although it is quite clear that either may apply when the
other does not." Dart Industries  v.  E.I. du Pont de
Nemours & Co., 179 USPQ 392, 396 (7th Cir. 1973). There may
be a public use of an invention absent any sales activity.
Likewise, there may be a nonpublic; e.g., "secret," sale or
offer to sell an invention which nevertheless constitutes a
statutory bar.  Hobbs  v.  United States , 171 USPQ 713, 720
(5th Cir. 1971).

  In similar fashion, not all "public use" and "on sale"
activities will necessarily occasion the identical result.
Although both activities affect how an inventor may use an
invention prior to the filing of a patent application, "non
- commercial" 35 U.S.C. 102(b) activity may not be viewed
the same as similar "commercial" activity. See MPEP §
2133.03(a)  and  §  2133.03(e)(1).  Likewise,  "public  use"
activity by an applicant may not be considered in the same
light as similar "public use" activity by 1 other than an
applicant.  See  MPEP  §  2133.03(a)  and  §  2133.03(e)(7).
Additionally, the concepts of "completion" and "experimental
use" have differing significance in "commercial" and "non -
commercial"  environments.  See  MPEP  §  2133.03(c)  and  §
2133.03(e) - § 2133.03(e)(6).

  It should be noted that 35 U.S.C. 102(b) may create a
bar to patentability either alone, if the device in public
use or placed on sale anticipates a later claimed invention
or, in conjunction with 35 U.S.C. 103, if the claimed
invention  would  have  been  obvious  from  the  device  in
conjunction with the prior art. LaBounty Mfg. v. I.T.C.,22
USPQ2d 1025, 1028 (Fed. Cir. 1992).

  POLICY CONSIDERATIONS

 (1) "One policy underlying the [on - sale] bar is to
obtain widespread disclosure of new inventions to the public
via patents as soon as possible." RCA Corp . v.  Data Gen.
Corp. , 12 USPQ2d 1449, 1454 (Fed. Cir. 1989).

 (2) The public use and on - sale bars are meant to
prevent  the  inventor  from  commercially  exploiting  the
exclusivity of his [or her] invention substantially beyond
the statutorily authorized period. RCA Corp. v.  Data Gen.
Corp., 12 USPQ2d 1449, 1454 (Fed. Cir. 1989). See MPEP §
2133.03(e)(1).

 (3) Another underlying policy for the public use and
on - sale bars is to discourage "the removal of inventions
from the public domain which the public justifiably comes to
believe are freely available." Manville Sales  Corp.  v  .
Paramount Sys. Inc.,16 USPQ2d 1587, 1591 (Fed. Cir. 1990).<

2133.03(a)  "Public Use" [R - 3]

 ONE USE IN THE PUBLIC DOMAIN BY ONE PERSON MAY BAR A PATENT

  "[T]o constitute the public use of an invention it is
not necessary that more than one of the patent articles
should be publicly used. The use of a great number may tend
to strengthen the proof, but one well defined case of such
use is just as effectual to annul the patent as many."
Likewise, it is not necessary that more than one person use
the invention. Egbert  v.  Lippmann,104 U.S. 333, 336
(1881).

 PUBLIC KNOWLEDGE IS NOT NECESSARILY PUBLIC USE UNDER 35
U.S.C. 102(b)

  Mere knowledge of the invention by the public does not
warrant rejection under 35 U.S.C. 102(b). 35 U.S.C. 102(b)
bars public use or sale, not public knowledge. T.P.  Lab.
v. Professional Positions, Inc. , 220 USPQ 577, 581 (Fed.
Cir. 1984).

  Note, however, that public knowledge may provide grounds
for rejection under 35 U.S.C. 102(a). See MPEP § 2132 for
information on 35 U.S.C. 102(a).

  i.  Commercial versus noncommercial use and the impact
of secrecy

 "PUBLIC USE" AND "NON - SECRET USE" ARE NOT NECESSARILY
SYNONYMOUS

  "Public" is not necessarily synonymous with "non -
secret." The fact "that non - secret uses of the device were
made  [by  the  inventor  or  someone  connected  with  the
inventor]  prior  to  the  critical  date  is  not  itself
dispositive of the issue of whether activity barring a
patent under 35 U.S.C. 102(b) occurred. The fact that the
device was not hidden from view may make the use not secret,
but nonsecret use is not ipso facto ` public use' activity.
Nor, it must be added, is all secret use  ipso facto not
`public use' within the meaning of the statute," if the
inventor is making commercial use of the invention under
circumstances which preserve its secrecy.  TP Lab. v.
Professional Positioners, Inc. , 220 USPQ 577, 583 (Fed.
Cir. 1983) (citations omitted).

 EVEN IF THE INVENTION IS HIDDEN, INVENTOR WHO PUTS MACHINE
OR ARTICLE EMBODYING THE INVENTION IN PUBLIC VIEW IS BARRED
FROM OBTAINING A PATENT AS THE INVENTION IS IN PUBLIC USE

  When the inventor or someone connected to the inventor
puts the invention on display or sells it, there is a
"public use" within the meaning of 35 U.S.C. 102(b) even
though by its very nature an invention is completely hidden
from view as part of a larger machine or article, if the
invention is otherwise used in its natural and intended way
and the larger machine or article is accessible to the
public. In re Blaisdell , 113 USPQ 289, 292 (CCPA 1957);
Hall v  . Macneale, 107 U.S. 90, 96 - 97 (1882);  Ex parte
Kuklo , 25 USPQ2d 1387, 1390 (Bd. Pat. App. & Inter. 1992)
(Display of equipment including the structural features of
the claimed invention to visitors of laboratory is public
use even though public did not see inner workings of device.
The person to whom the invention is publicly disclosed need
not understand the significance and technical complexities
of the invention.).

 THERE IS NO PUBLIC USE IF INVENTOR RESTRICTED USE TO
LOCATIONS  WHERE  THERE  WAS  A  REASONABLE  EXPECTATION  OF
PRIVACY AND THE USE WAS FOR HIS OR HER OWN ENJOYMENT

  An inventor's private use of the invention, for his or
her own enjoyment is not a public use. Moleculon Research
Corp . v.  CBS, Inc ., 229 USPQ 803, 809 (Fed. Cir. 1986)
(Inventor showed inventive puzzle to close friends while in
his dorm room and later the president of the company at
which he was working saw the puzzle on the inventor's desk
and they discussed it. Court held that the inventor retained
control and thus these actions did not result in a "public
use.").

  ii.  Use by third parties deriving the invention
from applicant

 AN INVENTION IS IN PUBLIC USE IF THE INVENTOR ALLOWS
ANOTHER  TO  USE  THE  INVENTION  WITHOUT  RESTRICTION  OR
OBLIGATION OF SECRECY

  "Public use" of a claimed invention under 35 U.S.C.
102(b) occurs when the inventor allows another person to use
the invention without limitation, restriction or obligation
of secrecy to the inventor." In re Smith , 218 USPQ 976, 983
(Fed.  Cir.  1983).  The  presence  or  absence  of  a
confidentiality agreement is not itself determinative of the
public use issue, but is one factor to be considered along
with the time, place, and circumstances of the use which
show the amount of control the inventor retained over the
invention.  Moleculon Research Corp. v.  CBS, Inc.,229 USPQ
803, 809 (Fed. Cir. 1986). See  Ex parte C, 27 USPQ2d 1492,
1499 (Bd. Pat. App. & Inter. 1992) (Inventor sold inventive
soybean seeds to growers who contracted and were paid to
plant the seeds to increase stock for later sale. The
commercial nature of the use of the seed coupled with the
"on - sale" aspects of the contract and apparent lack of
confidentiality requirements rose to the level of a "public
use" bar.);  Egbert  v.  Lippmann , 104 U.S. 333, 336 (1881)
(Public use found where inventor allowed another to use
inventive corset insert, though hidden from view during use,
because he did not impose an obligation of secrecy or
restrictions on its use.).

  iii.  Use by independent third parties

 USE BY AN INDEPENDENT THIRD PARTY IS PUBLIC USE IF IT
SUFFICIENTLY "INFORMS" THE PUBLIC OF THE INVENTION OR A
COMPETITOR COULD REASONABLY ASCERTAIN THE INVENTION

  Any  "nonsecret"  use  of  an  invention  by  someone
unconnected  to  the  inventor,  such  as  someone  who  has
independently made the invention, in the ordinary course of
a business for trade or profit may be a "public use," Bird
Provisions Co.  v.  Owens Country Sausage , 197 USPQ 134,
138 - 40 (5th Cir. 1978). Additionally, even a "secret" use
by another inventor of a machine or process to make a
product is "public" if the details of the machine or process
are ascertainable by inspection or analysis of the product
that is sold or publicly displayed,  Gillman v.  Stern , 46
USPQ 430 (2d Cir. 1940);  Dunlop Holdings v.  Ram Golf Corp.
, 188 USPQ 481, 483 - 484 (7th Cir. 1975). * If the details
of an inventive process are not ascertainable from the
product sold or displayed and the third party has kept the
invention as a trade secret then that use is not a public
use and will not bar a patent issuing to someone unconnected
to the user.  W.L. Gore & Assocs.  v.  Garlock, Inc. , 220
USPQ 303, 310 (Fed. Cir. 1983). >However, a device qualifies
as prior art if it places the claimed features in the
public's possession before the critical date even if other
unclaimed aspects of the device were not publicly available.
Lockwood  v.  American Airlines, Inc.,41 USPQ2d 1961, 1964 -
65 (Fed. Cir. 1997) (Computer reservation system was prior
art even though "essential algorithms of the SABRE software
were proprietary and confidential and...those aspects of the
system that were readily apparent to the public would not
have been sufficient to enable one skilled in the art to
duplicate the [unclaimed aspects of the] system." ).< The
extent that the public becomes "informed" of an invention
involved in public use activity by one other than an
applicant depends upon the factual circumstances surrounding
the  activity  and  how  these  comport  with  the  policies
underlying the on sale and public use bars.  Manville Sales
Corp.  v.  Paramount Sys. Inc ., 16 USPQ2d 1587, 1591 (Fed.
Cir. 1990) (quoting  King Instrument Corp. v.  Otari Corp. ,
226 USPQ 402, 406 (Fed Cir. 1985)). By way of example, in an
allegedly "secret" use by a third party other than an
applicant, if a large number of employees of such a party,
who are not under a promise of secrecy, are permitted
unimpeded access to an invention, with affirmative steps by
the party to educate other employees as to the nature of the
invention, the public is "informed."  Chemithon Corp. v.
Proctor & Gamble Co.,159 USPQ 139, 154 (D.Md. 1968), aff'd.,
165 USPQ 678 (4th Cir. 1970).

  Even if public use activity by one other than an
applicant is not sufficiently "informing," there may be
adequate grounds upon which to base a rejection under 35
U.S.C. 102(f) and 35 U.S.C. 102(g). See Dunlop Holdings  v.
Ram Golf Corp. , 188 USPQ 481 (7th Cir. 1975). See MPEP §
2137 and § 2138 for more information on cases construing 35
U.S.C. 102(f) and 102(g).

2133.03(b)  "On Sale" [R - 3]

  THE BASIC TEST

  An impermissible sale has occurred if there was a
definite sale, or offer to sell, more than 1 year before the

effective filing date of the U.S. application and the
subject  matter  of  the  sale,  or  offer  to  sell,  fully
anticipated the claimed invention or would have rendered the
claimed invention obvious by its addition to the prior art.
Ferag AG  v.  Quipp Inc. , 33 USPQ2d 1512, 1514 (Fed. Cir.
1995).

  i.  The meaning of "sale"

  A sale is a contract between parties wherein the seller
agrees "to give and to pass rights of property" in return
for the buyer's payment or promise "to pay the seller for
the things bought or sold." In re Caveney , 226 USPQ 1, 4
(Fed. Cir. 1985).

 CONDITIONAL SALE MAY BAR A PATENT

  An invention may be deemed to be "on sale" even though
the  sale  was  conditional.  The  fact  that  the  sale  is
conditioned on buyer satisfaction does not, without more,
prove that the sale was for an experimental purpose. Strong
v.  General Elec. Co. , 168 USPQ 8, 12 (5th Cir. 1970).

 NONPROFIT SALE MAY BAR A PATENT

  A "sale" need not be for profit to bar a patent. If the
sale was for the commercial exploitation of the invention,
it is "on sale" within the meaning of 35 U.S.C. 102(b). In
re Dybel , 187 USPQ 593, 599 (CCPA 1975) ("Although selling
the devices for a profit would have demonstrated the purpose
of commercial exploitation, the fact that appellant realized
no  profit  from  the  sales  does  not  demonstrate  the
contrary.").

 A SINGLE SALE OR OFFER TO SELL MAY BAR A PATENT

  Even a single sale or offer to sell the invention may
bar patentability under 35 U.S.C. 102(b). Consolidated Fruit
- Jar Co.  v.  Wright , 94 U.S. 92, 94 (1876);  Atlantic
Thermoplastics Co.  v.  Faytex Corp., 23 USPQ2d 1481, 1483
(Fed. Cir. 1992).

 A SALE OF RIGHTS IS NOT A SALE OF THE INVENTION AND WILL
NOT IN ITSELF BAR A PATENT

  "An assignment or sale of the rights, such as patent
rights, in the invention is not a sale of `the invention'
within the meaning of section 102(b)." The sale must involve
the delivery of the physical invention itself. Moleculon
Research Corp. v.  CBS, Inc ., 229 USPQ 805, 809 (Fed. Cir.
1986).

 BUYER MUST BE UNCONTROLLED BY THE SELLER OR OFFERER

  A sale or offer for sale must take place between
separate entities. In re Caveney,226 USPQ 1, 4 (Fed. Cir.
1985). "Where the parties to the alleged sale are related,
whether there is a statutory bar depends on whether the
seller so controls the purchaser that the invention remains
out of the public's hands.  Ferag AG  v.  Quipp Inc ., 33
USPQ2d 1512, 1515 (Fed. Cir. 1995) ( Where the seller is a
parent company of the buyer company, but the President of
the buyer company had "essentially unfettered" management
authority over the operations of the buyer company, the sale
was a statutory bar.).

  ii.  Offers for sale

 A REJECTED OR UNRECEIVED OFFER FOR SALE IS ENOUGH TO BAR A
PATENT

  Since the statute creates a bar when an invention is
placed "on sale," a mere offer to sell is sufficient
commercial activity to bar a patent. In re Theis, 204 USPQ
188, 192 (CCPA 1979). Even a rejected offer may create an on
sale bar.  UMC Elecs.  v.  United States , 2 USPQ2d 1465,
1469 (Fed. Cir. 1987). In fact, the offer need not even be
actually received by a prospective purchaser.  Wende  v.
Horine , 225 F. 501 (7th Cir. 1915).

 DELIVERY OF THE OFFERED ITEM IS NOT REQUIRED

  "It is not necessary that a sale be consummated for the
bar to operate." Buildex  v.  Kason Indus. , 7 USPQ2d 1325,
1327 - 28 (Fed. Cir. 1988) (citations omitted).

 SELLER NEED NOT HAVE THE GOODS "ON HAND" WHEN THE OFFER FOR
SALE IS MADE

  Goods need not be "on hand" and transferred at the time
of the sale or offer. The date of the offer for sale is the
effective date of the "on sale" activity. J. A. La Porte,
Inc.  v.  Norfolk Dredging Co. , 229 USPQ 435, 438 (Fed.
Cir. 1986). However, the invention must be more than a mere
conception and at least close to completeness (see MPEP §
2133.03(c)) before the critical date.  UMC Elecs.  v.
United States , 2 USPQ2d 1465 (Fed. Cir. 1987). See also
>Micro Chemical Inc.  v.  Great Plains Chemical Co.,103 F.3d
1538, 1545, 41 USPQ2d 1238, 1243 (Fed. Cir. 1997) (The on -
sale bar was not triggered by an offer to sell because the
inventor "was not close to completion of the invention at
the time of the alleged offer and had not demonstrated a
high likelihood that the invention would work for its
intended purpose upon completion.");<  Shatterproof Glass
Corp. v.  Libbey - Owens Ford Co ., 225 USPQ 634 (Fed. Cir.
1985) (Where there was no evidence that the samples shown to
the potential customers were made by the new process and
apparatus, the offer to sell did not rise to the level of an
on sale bar.). Compare  Barmag Barmer Maschineenfabrik AG
v.  Murata Mach., Ltd. , 221 USPQ 561 (Fed. Cir. 1984)
(Where a "make shift" model of the inventive product was
shown to the potential purchasers in conjunction with the
offer to sell, the offer was enough to bar a patent under 35
U.S.C. 102(b).).

  iii.  Sale  by  inventor,  assignee  or  others
associated with the inventor in the course of business

 SALE ACTIVITY NEED NOT BE PUBLIC

  Unlike questions of public use, there is no requirement
that "on sale" activity be "public." "Public" as used in 35
U.S.C. 102(b) modifies "use" only. "Public" does not modify
"sale." Hobbs  v.  United States , 171 USPQ 713, 720 (5th
Cir. 1971).

 INVENTOR'S CONSENT TO THE SALE IS NOT A PREREQUISITE TO
FINDING AN ON SALE BAR

  If the invention was placed on sale by a third party who

obtained the invention from the inventor, a patent is barred
even if the inventor did not consent to the sale or have
knowledge that the invention was embodied in the sold
article. Electric Storage Battery Co.  v.  Shimadzu , 307
U.S. 5, 41 USPQ 155 (1938);  In re Blaisdell , 113 USPQ 289,
292 (CCPA 1957);  C.T.S. Corp.  v.  Electro Mat'ls ., 202
USPQ 22, 38 (S.D.N.Y. 1979).

 OBJECTIVE EVIDENCE OF INTENT TO SELL IS NEEDED

  In determining if a sale or offer to sell has occurred a
key question to ask is whether, under the totality of the
circumstances, the inventor placed his or her invention on
sale, objectively manifested by a sale or offer for sale of
a  product  that  embodies  the  invention  claimed  in  the
application. Objective evidence such as a description of the
inventive product in the contract of sale or in another
communication  with  the  purchaser  controls  over  an
uncommunicated intent by the seller to deliver the inventive
product under the contract for sale. Ferag AG  v.  Quipp
Inc. , 33 USPQ2d 1512, 1516 (Fed. Cir. 1995) (On sale bar
found where initial negotiations and agreement containing
contract for sale neither clearly specified nor precluded
use of the inventive design but an order confirmation more
than 1 year prior to filing of patent application for the
inventive design did specify use of inventive design.). The
purchaser need not have actual knowledge of the invention
for it to be on sale. "For example, merely offering to sell
a product by way of an advertisement or invoice may be
evidence of a definite offer for sale or a sale of a claimed
invention even though no details are disclosed. That the
offered product is in fact the claimed invention may be
established by any relevant evidence, such as memoranda,
drawings, correspondence, and testimony of witnesses."  RCA
Corp. v.  Data Gen. Corp. , 12 USPQ2d 1449, 1452 (Fed. Cir.
1989). However, "what the purchaser reasonably believes the
inventor to be offering is relevant to whether, on balance,
the offer objectively may be said to be of the patented
invention."  Envirotech Corp.  v.  Westech Eng'g Inc. , 15
USPQ2d 1230, 1234 (Fed. Cir. 1990) (Where a proposal to
supply a general contractor with a product did not mention a
new design but, rather, referenced a prior art design, the
uncommunicated intent of the supplier to supply the new
design if awarded the contract did not constitute an "on
sale" bar to a patent on the new design, even though the
supplier's bid reflected the lower cost of the new design.).

  iv.  Sales by independent third parties

 SALES OR OFFERS FOR SALE BY INDEPENDENT THIRD PARTIES WILL
BAR A PATENT

  Sale  or  offer  for  sale  of  the  invention  by  an
independent third party more than 1 year before the filing
date of applicant's patent will bar applicant from obtaining
a patent. "An exception to this rule exists where a patented
method is kept secret and remains secret after a sale of the
unpatented product of the method. Such a sale prior to the
critical date is a bar if engaged in by the patentee or
patent applicant, but not if engaged in by another." In re
Caveney,  226 USPQ 1, 3 - 4 (Fed. Cir. 1985).

 NONPRIOR ART PUBLICATIONS CAN BE USED AS EVIDENCE OF SALE
BEFORE THE CRITICAL DATE

  Abstracts identifying a product's vendor containing
information useful to potential buyers such as whom to
contact, price terms, documentation, warranties, training
and maintenance along with the date of product release or
installation before the inventor's critical date may provide
sufficient evidence of prior sale by a third party to
support a rejection based on 35 U.S.C. 102(b) or 103. In re
Epstein,  31  USPQ2d  1817  (Fed.  Cir.  1994)  (Examiner's
rejection was based on nonprior art published abstracts
which disclosed software products meeting the claims. The
abstracts specified software release dates and dates of
first installation which were more than 1 year before
applicant's filing date.).

2133.03(c)  The "Invention" [R - 3]

 35 U.S.C. 102. Conditions for patentability; novelty and
loss of right to patent.

  A person shall be entitled to a patent unless -

  *****

  (b) the invention was ... in public use or on sale in
this country, more than one year prior to the date of the
application for patent in the United States

  *****

  (i)  Level of completeness required

  The level of completion required likely will differ in
cases of "public use" which are not intertwined with a sale.
UMC Elecs. Co.  v.  United States, 2 USPQ2d 1465, 1468 n.6
(Fed. Cir. 1987)). The court decisions do not address the
level required in pure "public use" cases but it is unlikely
that the invention can be publicly used without a working
embodiment. The case law presented below is directed to "on
sale" situations.

 THE INVENTION NEED NOT BE "COMPLETE" OR "REDUCED TO
PRACTICE" AT THE TIME OF THE SALE

  If the invention was actually reduced to practice before
being sold or offered for sale more than 1 year before
filing of the application, a patent will be barred. In re
Hamilton , 11 USPQ2d 1890, 1893 (Fed. Cir. 1989). Actual
reduction to practice in this context usually requires
testing under actual working conditions in such a way as to
demonstrate the practical utility of an invention for its
intended purpose beyond the probability of failure, unless
by virtue of the very simplicity of an invention its
practical operativeness is clear.  Field  v.  Knowles , 86
USPQ 373, 379 (CCPA 1950);  Steinberg  v.  Seitz, 186 USPQ
209, 212 (CCPA 1975).

  A reduction to practice of the claimed invention is not
an  absolute  requirement  of  the  on  sale  bar.  KeyStone
Retaining Wall Sys. Inc.  v.  Westrock Inc ., 27 USPQ2d
1297, 1303 (Fed. Cir. 1993). Sometimes "something less than
a  complete  embodiment  of  the  invention  will  suffice."
However, the offering for sale of a mere conception of the
invention before the critical date is not enough. One must
look at the totality of the circumstances and what they show
as to whether the inventor was attempting to commercialize

the invention and thereby impermissibly extend the patent
term or other wise contravene any other of the policies
furthered by the "on sale" bar.  UMC Elecs. Co.  v.  United
States , 2 USPQ2d 1465, 1471 - 72 (Fed. Cir. 1987). In  UMC
Elecs. Co ., the court held that the invention, while
uncompleted before the critical date, was on sale within the
meaning of 35 U.S.C. 102(b) and enunciated several factors
leading to its decision. The development of the subject
invention was far beyond a mere conception. Much of the
invention was embodied in tangible form. The prior art
devices embodied each element of the claimed invention, save
one, and that portion was and had been sufficiently tested
to demonstrate to the satisfaction of the inventor that the
invention as ultimately claimed would work for its intended
purpose.

 DEPENDS ON HOW CERTAIN THE INVENTOR IS OF THE NATURE AND
USEFULNESS OF THE DEVICE

  Even if the inventor has not translated his or her
invention into a working device, the invention may be
sufficiently complete to create an "on sale" bar. Philco
Corp.  v.  Admiral Corp ., 131 USPQ 413, 430 (D. Del. 1961).
"What is required is that the inventor have some certainty
as to the nature and usefulness of the finished product." In
other words, "the invention must have been `sufficiently
tested to demonstrate that it will work for its intended
purpose.' "  Shatterproof Glass Corp. v.  Libbey - Owens
Ford Co ., 225 USPQ 634, 640 (Fed. Cir. 1985). See also
Micro Chemical Inc.  v.  Great Plains Chemical Co.,103 F.3d
1538, 1545, 41 USPQ2d 1238, 1243 (Fed. Cir. 1997) (The on -
sale bar was not triggered by an offer to sell because the
inventor "was not close to completion of the invention at
the time of the alleged offer and had not demonstrated a
high likelihood that the invention would work for its
intended purpose upon completion.").<

 Circumstances Showing Certainty

  If, at the time the device is offered for sale, the
inventor is close to production of the device embodied in
the claims and both the seller and offerer know what is to
be sold, the invention is sufficiently complete to give rise
to an on - sale bar. Philco Corp.  v.  Admiral Corp. , 131
USPQ 413, 430 (D. Del. 1961).

  Where  the  evidence  establishes  that  an  inventor's
confidence in an invention is shared by a party to whom the
inventor  has  shown  specific  drawings,  which  in  turn
precipitated initial commercial activity relative to the
invention by the other party, the invention is sufficiently
"complete" to invoke an "on sale" bar. Langsett  v.  Marmet
Corp. , 141 USPQ 903, 910 - 11 (W.D. Wisc. 1964). However,
where parties enter into a contract to construct a device to
meet certain performance factors, a sufficient level of
"completeness" may not be present until there is reasonable
agreement that the performance factors have in fact been
met.

  Even if an invention has been reduced "to a reality,"
the invention is not necessarily "complete" enough to create
an "on sale" bar unless one would know how the invention
would work upon installation, In re Dybel , 187 USPQ 593,
598 (CCPA 1975). However, such knowledge is not synonymous
with  a  lack  of  any  expectation  of  "problems"  upon

installation. As long as the "problems" are not due to
"fundamental  defects"  in  the  invention,  there  will  be
sufficient "completion."  In re Theis , 204 USPQ 188, 195 n.
11 (CCPA 1979);  National Biscuit Co.  v.  Crown Baking Co.
, 42 USPQ 214, 215 (1st Cir. 1939).

  The  invention  need  not  be  ready  for  satisfactory
commercial marketing for sale to bar a patent. Atlantic
Thermoplastics Co.  v.  Faytex Corp., 23 USPQ2d 1481, 1483
(Fed. Cir. 1992).

  ii. Inventor  has  submitted  a  37  CFR  1.131
affidavit or declaration

  Affidavits or declarations submitted under 37 CFR 1.131
to swear behind a reference (MPEP § 715.10) may constitute,
among other things, an admission that an invention was
"complete"  more  than  1  year  before  the  filing  of  an
application. In re Foster , 145 USPQ 166, 173 (CCPA 1965);
Dart Indus.  v.  E.I. duPont de Nemours & Co. , 179 USPQ
392, 396 (7th Cir. 1973).

2133.03(d)  "In This Country" [R - 1]

  >For purposes of judging the applicability of the 35
U.S.C. 102(b) bars, public use or on sale activity must take
place in the United States. The "on sale" bar does not
generally apply where both manufacture and delivery occur in
a foreign country. Gandy  v.  Main Belting Co. , 143 U.S.
587, 593 (1892). However, "on sale" status can be found if
substantial activity prefatory to a "sale" occurs in the
United States.  Robbins  v.  Lawrence Mfg. Co., 178 USPQ
577, 583 (9th Cir. 1973). An offer for sale, made or
originating in this country, may be sufficient prefatory
activity to bring the offer within the terms of the statute,
even though sale and delivery take place in a foreign
country. The same rationale applies to an offer by a foreign
manufacturer  which  is  communicated  to  a  prospective
purchaser in the United States prior to the critical date.
C.T.S. Corp.  v.  Piher Int'l Corp ., 201 USPQ 649 (7th Cir.
1979).<

2133.03(e)  Permitted Activity; Experimental Use [R - 1]

  >The basic test is that experimentation must be the
primary purpose and any commercial exploitation must be
incidental.

  If the use or sale was experimental, there is no bar
under 35 U.S.C. 102(b). "A use or sale is experimental for
purposes of section 102(b) if it represents a bona fide
effort to perfect the invention or to ascertain whether it
will answer its intended purpose. ... If any commercial
exploitation does occur, it must be merely incidental to the
primary  purpose  of  the  experimentation  to  perfect  the
invention."  LaBounty Mfg.  v.  I.T.C. , 22 USPQ2d 1025,
1028 (Fed. Cir. 1992) (quoting  Pennwalt Corp.  v.  Akzona
Inc.  ,  222  USPQ  833,  838  (Fed.  Cir.  1984)).  "The
experimental use exception ... does not include market
testing where the inventor is attempting to gauge consumer
demand for his claimed invention. The purpose of such
activities  is  commercial  exploitation  and  not
experimentation."  In re Smith , 218 USPQ 976, 983 (Fed.
Cir. 1983).<

2133.03(e)(1)  Commercial Exploitation [R - 1]

 >THERE MUST BE NO ATTEMPT AT MARKET PENETRATION BEFORE THE
CRITICAL DATE

  A strong policy of the on sale and public use bars is
the prevention of inventors from exploiting their inventions
commercially more than 1 year prior to the filing of a
patent application. Therefore, if applicant's precritical
date activity is, at any level, an attempt at market
penetration, a patent is barred. Thus, even if there is bona
fide experimental activity, an inventor may not commercially
exploit an invention more than 1 year prior to the filing
date of an application. In re Theis , 204 USPQ 188, 194
(CCPA 1979).

  THE  COMMERCIAL  ACTIVITY  MUST  LEGITIMATELY  ADVANCE
DEVELOPMENT OF THE INVENTION TOWARDS COMPLETION

  As the degree of commercial exploitation surrounding 35
U.S.C. 102(b) activity increases, the burden on an applicant
to establish clear and convincing evidence of experimental
activity  with  respect  to  a  public  use  becomes  more
difficult. Where the examiner has found a prima facie case
of a sale or an offer to sell, this burden will rarely be
met  unless  clear  and  convincing  necessity  for  the
experimentation is established by the applicant. This does
not mean, of course, that there are no circumstances which
would permit alleged experimental activity in an atmosphere
of commercial exploitation. In certain circumstances, even a
sale  may  be  necessary  to  legitimately  advance  the
experimental development of an invention if the primary
purpose of the sale is experimental.  In re Theis , 204 USPQ
188, 194 (CCPA 1979);  Robbins Co.  v.  Lawrence Mfg. Co .,
178 USPQ 577, 582 (9th Cir. 1973). However, careful scrutiny
by the examiner of the objective factual circumstances
surrounding such a sale is essential. See  Ushakoff  v.
United States , 140 USPQ 341 (Ct.Cl. 1964);  Cloud  v.
Standard Packaging Corp. , 153 USPQ 317 (7th Cir. 1967).

 SIGNIFICANT FACTORS INDICATIVE OF "COMMERCIAL EXPLOITATION"

  As discussed in MPEP § 2133.03, a policy consideration
in questions of 35 U.S.C. 102(b) activity is premature
"commercial  exploitation"  of  a  "completed"  or  nearly
completed invention (see MPEP § 2133.03(c)). The extent of
commercial activity which constitutes 35 U.S.C. 102(b) "on
sale" status depends upon the circumstances of the activity,
the basic indicator being the subjective intent of the
inventor  as  manifested  through  objective  evidence.  The
following activities should be used by the examiner as
indicia of this subjective intent:

 (1)  preparation  of  various  contemporaneous
"commercial" documents, e.g., orders, invoices, receipts,
delivery schedules, etc.;

 (2) preparation of price lists ( Akron Brass v.
Elkhart Brass Mfg. , 147 USPQ 301, 305 (7th Cir. 1965)) and
distribution of price quotations (  Amphenol Corp. v.
General. Time Corp. , 158 USPQ 113, 117 (7th Cir. 1968));

 (3) display of samples to prospective customers
(Cataphote Corp. v. DeSoto Chemical Coatings, 148 USPQ 527,
529 (9th Cir. 1966); Chicopee Mfg. Corp. v. Columbus Fiber

Mills Co., 118 USPQ 53, 65 - 67 (M.D.Ga. 1958));

 (4) demonstration of models or prototypes ( General
Elec. Co.  v.  United States , 206 USPQ 260, 266 - 67 (Ct.
Cl. 1979);  Red Cross Mfg.  v.  Toro Sales Co. , 188 USPQ
241, 244 - 45 (7th Cir. 1975);  Philco Corp. v.  Admiral
Corp ., 131 USPQ 413; 429 - 30 (D.Del. 1961)), especially at
trade conventions (  Interroyal Corp. v.Simmons Co. , 204
USPQ 562, 563 - 65 (S.D. N.Y. 1979)), and even though no
orders are actually obtained (  Monogram Mfg.  v.  F. & H.
Mfg .,62 USPQ 409, 412 (9th Cir. 1944));

 (5) use of an invention where an admission fee is
charged ( In re Josserand , 89 USPQ 371, 376 (CCPA 1951);
Greenewalt  v.  Stanley , 12 USPQ 122 (3d Cir. 1931)); and

 (6) advertising in publicity releases, brochures,
and various periodicals ( In re Theis , 204 USPQ 188, 193 n.
6 (CCPA 1979);  Interroyal Corp. v. Simmons Co., 204 USPQ
562, 564 - 66 (S.D.N.Y.1979);  Akron Brass  v.  Elkhart
Brass Mfg. ,147 USPQ 301, 305 (7th Cir.1965);  Tucker
Aluminum Prods  v.  Grossman , 136 USPQ 244, 245 (9th Cir.
1963)).

  The above activities may be determinative of "commercial
exploitation" even though (1) prices are estimated rather
than established, (2) no commercial production runs have
been made, and (3) the invention is never actually sold,
Chromalloy Am. Corp.  v.  Alloy Surfaces Co. , 173 USPQ 295,
301 - 02 (D.Del. 1972).<

2133.03(e)(2)  Intent [R - 1]

  >"When  sales  are  made  in  an  ordinary  commercial
environment and the goods are placed outside the inventor's
control, an inventor's secretly held subjective intent to
`experiment' even if true, is unavailing without objective
evidence  to  support  the  contention.  Under  such
circumstances, the customer at a minimum must be made aware
of the experimentation." LaBounty Mfg.  v.  I.T.C. , 22
USPQ2d 1025, 1029 (Fed. Cir. 1992) (quoting  Harrington Mfg.
v.  Co.  v.  Powell Mfg. Co ., 2 USPQ2d 1364, 1366 n.3 (Fed.
Cir. 1986);  Paragon Podiatry Laboratory Inc.  v.  KLM
Labs., Inc. , 984 F.2d 1182, 25 USPQ2d 1561 (Fed. Cir. 1993)
(Paragon sold the inventive units to the trade as completed
devices without any disclosure to either doctors or patients
of their involvement in alleged testing. Evidence of the
inventor's secretly held belief that the units were not
durable and may not be satisfactory for consumers was not
sufficient, alone, to avoid a statutory bar.).<

2133.03(e)(3)  "Completeness" of the Invention [R - 1]

 >EXPERIMENTAL USE ENDS WHEN THE INVENTION IS ACTUALLY
REDUCED TO PRACTICE

  Experimental use "means perfecting or completing an
invention to the point of determining that it will work for
its intended purpose." Therefore, experimental use "ends
with an actual reduction to practice." RCA Corp. v.  Data
Gen. Corp. , 12 USPQ2d 1449, 1453 (Fed. Cir. 1989). If the
examiner concludes from the evidence of record that an
applicant was satisfied that an invention was in fact
"complete," awaiting approval by the applicant from an
organization such as Underwriters' Laboratories will not

normally overcome this conclusion.  Interroyal Corp.  v.
Simmons Co. , 204 USPQ 362, 366 (S.D.N.Y. 1979);  Skill
Corp.  v.  Lucerne Prods , 178 USPQ 562, 565 (N.D.Ill.
1973), aff'd., 183 USPQ 396, 399 (7th Cir. 1974),  cert.
denied , 183 USPQ 65 (1975). See MPEP § 2133.03(c) for more
information of what constitutes a "complete" invention.

  The fact that alleged experimental activity does not
lead  to  specific  modifications  or  refinements  of  an
invention is evidence, although not conclusive evidence,
that such activity is not within the realm permitted by the
statute. This is especially the case where the evidence of
record  clearly  demonstrates  to  the  examiner  that  an
invention was considered "complete" by an inventor at the
time of the activity. Nevertheless, any modifications or
refinements which did result from such experimental activity
must at least be a feature of the claimed invention to be of
any probative value. In re Theis , 204 USPQ 188, 194 (CCPA
1979).

 DISPOSAL OF PROTOTYPES

  Where a prototype of an invention has been disposed of
by an inventor before the critical date, inquiry by the
examiner should focus upon the intent of the inventor and
the reasonableness of the disposal under all circumstances.
The  fact  that  an  otherwise  reasonable  disposal  of  a
prototype involves incidental income is not necessarily
fatal. In re Dybel , 187 USPQ 593, 597 n.5 (CCPA 1975).
However, if a prototype is considered "complete" by an
inventor and all experimentation on the underlying invention
has  ceased,  unrestricted  disposal  of  the  prototype
constitutes a bar under 35 U.S.C. 102(b).  In re Blaisdell ,
113 USPQ 289 (CCPA 1957);  contra,  Watson  v.  Allen , 117
USPQ 68 (D.C.Cir. 1957).<

2133.03(e)(4)  Factors Indicative of an Experimental
Purpose [R - 1]

  >The Court in City of Elizabeth  v.  American Nicholson
Pavement Co ., 97 U.S. 126 (1878) found several factors
persuasive of experimental activity:

 (a) the nature of the invention was such that any
testing had to be to some extent public;

 (b) testing had to be for a substantial period of
time;

 (c) testing was conducted under the supervision and
control of the inventor; and

 (d) the inventor regularly inspected the invention
during the period of experimentation.

  Supreme Court decisions subsequent to City of Elizabeth
identify  other  significant  factors  which  may  be
determinative of experimental purpose:

 (e) extent of any obligations or limitation placed
on a user during a period of experimental activity, as well
as the extent of an testing actually performed during such
period ( Egbert  v.  Lippmann , 104 U.S. 333 (1881));

 (f) conditional nature of any sale associated with

experimental activity ( Hall  v.  Macneale , 107 U.S. 90
(1882)); and

 (g) length of time and number of cases in which
experimental activity took place, viewed in light of what
was reasonably necessary for an alleged experimental purpose
( International Tooth Crown Co.  v.  Gaylord , 140 U.S. 55
(1891)).

  Other judicial opinions have supplemented these factors
by looking to the extent of any:

 (h) explicit or implicit obligations placed upon a
user to supply an inventor with the results of any testing
conducted during an experimental period and the extent of
inquiry made by the inventor regarding the testing ( Robbins
Co.  v.  Lawrence Mfg. Co. , 178 USPQ 577, 583 (9th Cir.
1973));

 (i) disclosure by an inventor to a user regarding
what the inventor considers as unsatisfactory operation of
the invention ( In re Dybel , 187 USPQ 593, 599 (CCPA
1975));

 (j) effort on the part of an inventor to retrieve
any experimental samples at the end of an experimental
period ( Omark Indus.  v.  Carlton Co. , 201 USPQ 825, 830
(D.Ore. 1978)); and

 (k)  a  doctor  -  patient  relationship  where  the
inventor/doctor conducted the experimentation ( TP Lab.  v.
Professional Positioners, Inc ., 220 USPQ 577, 582 (Fed.
Cir. 1984).

  Summarizing  the  above,  once  alleged  experimental
activity is advanced by an applicant to explain a prima
facie  case  under  35  U.S.C.  102(b),  the  examiner  must
determine whether the scope and length of the activity were
reasonable in terms of the experimental purpose intended by
the applicant and the nature of the subject matter involved.
No one of, or particular combination of,

 factors (a) through (k) is necessarily determinative of
this purpose.<

2133.03(e)(5)  Experimentation and Degree of
Supervision and Control [R - 1]

 >THE INVENTOR MUST MAINTAIN SUFFICIENT CONTROL OVER THE
INVENTION DURING TESTING BY THIRD PARTIES

  As discussed with reference to City of Elizabeth v.
American Nicholson Pavement Co ., 97 U.S. 126 (1878), a
significant  determinative  factor  in  questions  of
experimental  purpose  is  the  extent  of  supervision  and
control maintained by an inventor over an invention during
an alleged period of experimentation. Once a period of
experimental activity has ended and supervision and control
has been relinquished by an inventor without any restraints
on  subsequent  use  of  an  invention,  an  unrestricted
subsequent use of the invention is a 35 U.S.C. 102(b) bar.
In re Blaisdell , 113 USPQ 289, 293 (CCPA 1957).<

2133.03(e)(6)  Permitted Experimental Activity and
Testing [R - 1]

 >DEVELOPMENTAL TESTING IS PERMITTED

  Testing of an invention in the normal context of its
technological development is generally within the realm of
permitted experimental activity. Likewise, experimentation
to determine utility, as that term is applied in 35 U.S.C.
101, may also constitute permissible activity. See General
Motors Corp.  v.  Bendix Aviation Corp. , 102 USPQ 58, 69
(N.D.Ind. 1954). For example, where an invention relates to
a chemical composition with no known utility, i.e., a patent
application for the composition could not be filed (35
U.S.C. 101; 35 U.S.C. 112, first paragraph), continued
testing to find utility would likely be permissible under 35
U.S.C. 102(b), absent a sale of the composition or other
evidence of commercial exploitation.

 MARKET TESTING IS NOT PERMITTED

  Experimentation to determine product acceptance, i.e.,
market  testing,  is  typical  of  a  trader's  and  not  an
inventor's experiment and is thus not within the area of
permitted experimental activity. Smith & Davis Mfg. Co.  v.
Mellon , 58 F. 705, 707 (8th Cir. 1893) Likewise, testing of
an invention for the benefit of appeasing a customer, or to
conduct  "minor  `tune  up'  procedures  not  requiring  an
inventor's skills, but rather the skills of a competent
technician," are also not within the exception.  In re Theis
, 204 USPQ 188, 193 - 94 (CCPA 1979).

 EXPERIMENTAL ACTIVITY IN THE CONTEXT OF DESIGN APPLICATIONS

  The public use of an ornamental design which is directed
toward generating consumer interest in the aesthetics of the
design is not an experimental use. In re Mann , 861 F.2d
1581, 8 USPQ2d 2030 (Fed. Cir. 1988) (display of a wrought
iron table at a trade show held to be public use). However,
"experimentation  directed  to  functional  features  of  a
product also containing an ornamental design may negate what
otherwise would be considered a public use within the
meaning of section 102(b)."  Tone Brothers, Inc. v.  Sysco
Corp. , 28 F.3d 1192, 31 USPQ2d 1321, 1326 (Fed. Cir. 1994)
(A study wherein students evaluated the effect of the
functional features of a spice container design may be
considered an experimental use.).<

2133.03(e)(7)  Activity of an Independent Third Party
Inventor [R - 1]

 >EXPERIMENTAL USE EXCEPTION IS PERSONAL TO AN APPLICANT

  The statutory bars of 35 U.S.C. 102(b) are applicable
even though public use or on sale activity is by a party
other  than  an  applicant.  Where  an  applicant  presents
evidence of experimental activity by such other party, the
evidence will not overcome the prima facie case under 35
U.S.C. 102(b) based upon the activity of such party unless
the activity was under the supervision and control of the
applicant.  Magnetics  v.  Arnold Eng'g Co. , 168 USPQ 392,
394 (7th Cir. 1971),  Bourne  v.  Jones , 98 USPQ 206, 210
(S.D. Fla. 1951). aff'd., 98 USPQ 205 (5th Cir. 1953),
cert. denied , 99 USPQ 490 (1953); contra,  Watson  v.
Allen , 117 USPQ 68 (D.C.Cir. 1957). In other words, the
experimental  use  activity  exception  is  personal  to  an
applicant.<

2134  35 U.S.C. 102(c) [R - 1]

 >35 U.S.C. 102. Conditions for patentability; novelty and
loss of right to patent.

  A person shall be entitled to a patent unless - -

  *****

  (c) he has abandoned the invention.

 UNDER 35 U.S.C. 102(c), AN ABANDONMENT MUST BE INTENTIONAL

  "Actual abandonment under 35 U.S.C. 102(c) requires that
the inventor intend to abandon the invention, and intent can
be implied from the inventor's conduct with respect to the
invention. In re Gibbs , 437 F.2d 486, 168 USPQ 578 (CCPA
1971). Such intent to abandon the invention will not be
imputed, and every reasonable doubt should be resolved in
favor of the inventor."  Ex parte Dunne , 20 USPQ2d 1479
(Bd. Pat. App. & Inter. 1991).

 DELAY IN MAKING FIRST APPLICATION

  Abandonment  under  35  U.S.C.  102(c)  requires  a
deliberate, though not necessarily express, surrender of any
rights to a patent. To abandon the invention the inventor
must intend a dedication to the public. Such dedication may
be either express or implied, by actions or inactions of the
inventor.  Delay  alone  is  not  sufficient  to  infer  the
requisite intent to abandon. Moore  v.  U.S. , 194 USPQ 423,
428 (Ct. Cl. 1977) (The drafting and retention in his own
files of two patent applications by inventor indicates an
intent  to  retain  his  invention;  delay  in  filing  the
applications was not sufficient to establish abandonment);
but see  Davis Harvester Co., Inc.  v.  Long Mfg. Co. , 149
USPQ 420, 435 - 436 (E.D. N.C. 1966) (Where the inventor
does nothing over a period of time to develop or patent his
invention, ridicules the attempts of another to develop that
invention and begins to show active interest in promoting
and developing his invention only after successful marketing
by  another  of  a  device  embodying  that  invention,  the
inventor  has  abandoned  his  invention  under  35  U.S.C.
102(c).).

 DELAY IN REAPPLYING FOR PATENT AF TER ABANDONMENT OF
PREVIOUS PATENT APPLICATION

  Where there is no evidence of expressed intent or
conduct by inventor to abandon his invention, delay in
reapplying  for  patent  after  abandonment  of  a  previous
application does not constitute abandonment under 35 U.S.C.
102(c). Petersen  v.  Fee Int'l, Ltd. , 381 F. Supp. 1071,
182 USPQ 264 (W.D. Okla. 1974).

 DISCLOSURE WITHOUT CLAIMING IN A PRIOR ISSUED PATENT

  Any inference of abandonment (i.e., intent to dedicate
to the public) of subject matter disclosed but not claimed
in  a  previously  issued  patent  is  rebuttable  by  an
application filed at any time before a statutory bar arises.
Accordingly, a rejection of a claim of a patent application
under 35 U.S.C. 102(c) predicated solely on the issuance of
a patent which discloses the subject matter of the claim in

the application without claiming it would be improper,
regardless  of  whether  there  is  copendency  between  the
application at issue and the application which issued as the
patent. In re Gibbs , 437 F.2d 486, 168 USPQ 578 (CCPA
1971).

 ONLY WHEN THERE IS A PRIORITY CONTEST CAN A LAPSE OF TIME
BAR A PATENT

  The mere lapse of time will not bar a patent. The only
exception is when there is a priority contest under 35
U.S.C. 102(g) and applicant abandons, suppresses or conceals
the invention. Panduit Corp.  v.  Dennison Mfg.  Co. , 227
USPQ 337, 350 (Fed. Cir. 1985). Abandonment, suppression and
concealment are treated by the courts under 35 U.S.S.
102(g). See MPEP § 2138.03 for more information on this
issue.<

2135  35 U.S.C. 102(d) [R - 3]

 35 U.S.C. 102. Conditions for patentability; novelty and
loss of right to patent.

 A person shall be entitled to a patent unless - -

  *****

 (d)  the invention was first patented or caused to be
patented, or was the subject of an inventor's certificate,
by the applicant or his legal representatives or assigns in
a foreign country prior to the date of the application for
patent in this country on an application for patent or
inventor's certificate filed more than twelve months before
the filing of the application in the United States.

  *****

 GENERAL REQUIREMENTS OF 35 U.S.C. 102(d)

  35 U.S.C. 102(d) establishes four conditions which, if
all are present, establish a bar against the granting of a
patent in this country:

 (1) The foreign application must be filed more than
12 months before the effective U.S. filing date (See MPEP §
706.02  regarding  effective  U.S.  filing  date  of  an
application);

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

 (3) The foreign patent or inventor's certificate
must be actually granted (e.g., by sealing of the papers in
Great Britain) before the U.S. filing date. It need not be
published.

 (4) The same invention must be involved.

  If such a foreign patent or inventor's certificate is
discovered by the examiner, the rejection is made under 35
U.S.C. 102(d) on the ground of statutory bar. **>See MPEP §
2135.01 for case law which further clarifies each of the
four requirements of 35 U.S.C. 102(d).<

2135.01  The Four Requirements of 35 U.S.C. 102(d) [R - 1]

  >(a)  Foreign application must be filed more than 12
months before the effective U.S. filing date.

 AN ANNIVERSARY DATE ENDING ON A WEEKEND OR HOLIDAY RESULTS
IN AN EXTENSION TO THE NEXT BUSINESS DAY

  The U.S. application is filed in time to prevent a 35
U.S.C. 102(d) bar from arising if it is filed on the 1 year
anniversary  date  of  the  filing  date  of  the  foreign
application. If this day is a Saturday, Sunday or Federal
holiday,  the  year  would  be  extended  to  the  following
business day, see Ex parte Olah, 131 USPQ 41 (Bd. App.
1960).

 A CONTINUATION - IN - PART BREAKS THE CHAIN OF PRIORITY AS
TO FOREIGN AS WELL AS U.S. PARENTS

  In the case where applicant files a foreign application,
later files a U.S. application claiming priority based on
the foreign application, and then files a continuation - in
- part (CIP) application whose claims are not entitled to
the filing date of the U.S. parent, the effective filing
date is the filing date of the CIP and applicant cannot
obtain the benefit of either the U.S. parent or foreign
application filing dates. In re Langenhoven ,173 USPQ 426,
429 (CCPA 1972). If the foreign application issues into a
patent before the filing date of the CIP, it may be used in
a 35 U.S.C. 102(d) / 103 rejection if the subject matter
added to the CIP does not render the claims nonobvious over
the foreign patent.  Ex parte Appeal No. 242 - 47 , 196 USPQ
828 (Bd. App. 1976) (Foreign patent can be combined with
other prior art to bar a U.S. patent in an obviousness
rejection based on 35 U.S.C. 102(d) / 103).

  (b)  Foreign application must have been filed by
same applicant, his or her legal representative or assigns.

  Note that where the U.S. application was made by two or
more inventors, it is permissible for these inventors to
claim priority from separate applications, each to one of
the  inventors  or  a  subcombination  of  inventors.  For
instance, a U.S. application naming inventors A and B may be
entitled to priority from one application to A and one to B
filed in a foreign country.

  (c)  The foreign patent or inventor's certificate
was actually granted before the U.S. filing date.

 TO BE "PATENTED" AN EXCLUSIONARY RIGHT MUST BE AWARDED TO
THE APPLICANT

  "Patented" means "a formal bestowal of patent rights
from the sovereign to the applicant." In re Monks , 588 F.2d
308, 310, 200 USPQ 129, 131 (CCPA 1978);  American Infra -
Red Radiant Co.  v.  Lambert Indus. , 149 USPQ 722 (8th
Cir.),  cert.  denied  ,  385  US  920  (1966)  (German
Gebrauchsmuster petty patent was held to be a patent usable
in a 35 U.S.C. 102(d) rejection. Gebrauchmustern are not
examined and only grant a 6 - year patent term. However,
except as to duration, the exclusionary patent right granted
is as extensive as in the U.S.).

 A PUBLISHED APPLICATION IS NOT A "PATENT"

  An application must issue into a patent before it can be
applied in a 35 U.S.C. 102(d) rejection. Ex parte Fujishiro
, 199 USPQ 36 (Bd. App. 1977) ("Patenting," within the
meaning of 35 U.S.C. 102(d), does not occur upon laying open
of a Japanese utility model application (kokai or kohyo));
Ex parte Links, 184 USPQ 429 (Bd. App. 1974) (German
applications,  which  have  not  yet  been  published  for
opposition, are published in the form of printed documents
called Offenlegungsschriften 18 months after filing. These
applications are unexamined or in the process of being
examined at the time of publication. The Board held that an
Offenlegungsschrift is not a patent under 35 U.S.C. 102(d)
even though some provisional rights are granted. The court
explained that the provisional rights are minimal and do not
come  into  force  if  the  application  is  withdrawn  or
refused.).

 AN ALLOWED APPLICATION CAN BE A "PATENT" FOR PURPOSES OF 35
U.S.C. 102(d) AS OF THE DATE PUBLISHED FOR OPPOSITION EVEN
THOUGH IT HAS NOT YET BEEN GRANTED AS A PATENT

  An examined application which has been allowed by the
examiner and published to allow the public to oppose the
grant of a patent has been held to be a "patent" for
purposes of rejection under 35 U.S.C. 102(d) as of the date
of publication for opposition if substantial provisional
enforcement rights arise. Ex parte Beik, 161 USPQ 795 (Bd.
App.  1968)  (This  case  dealt  with  examined  German
applications. After a determination that an application is
allowable, the application is published in the form of a
printed document called an Auslegeschrift. The publication
begins a period of opposition were the public can present
evidence showing unpatentability. Provisional patent rights
are granted which are substantially the same as those
available once the opposition period is over and the patent
is granted. The Board found that an Auslegeschrift provides
the legal effect of a patent for purposes of rejection under
35 U.S.C. 102(d).).

 GRANT OCCURS WHEN PATENT BECOMES ENFORCEABLE

  The critical date of a foreign patent as a reference
under 35 U.S.C. 102(d) is the date the patent becomes
enforceable (issued, sealed or granted). In re Monks , 588
F.2d 308, 310, 200 USPQ 129, 131 (CCPA 1978) (British
reference became available as prior art on date the patent
was "sealed" because as of this date applicant had the right
to exclude others from making, using or selling the claimed
invention.).

 35 U.S.C. 102(d) APPLIES AS OF GRANT DATE EVEN IF THERE IS
A PERIOD OF SECRECY AFTER PATENT GRANT

  A period of secrecy after granting the patent, as in
Belgium and Spain, has been held to have no effect in
connection with 35 U.S.C. 102(d). These patents are usable
in rejections under 35 U.S.C. 102(d) as of the date patent
rights are granted. In re Kathawala , 28 USPQ2d 1789 (Fed.
Cir. 1993) (An invention is "patented" for purposes of 35
U.S.C. 102(d) when the patentees rights under the patent
become fixed. The fact that applicant's Spanish application
was not published until after the U.S. filing date is
immaterial since the Spanish patent was granted before U.S.
filing.);  Gramme Elec. Co.  v.  Arnoux and Hochhausen Elec.

Co. , 17 Fed. 838, 1883 C.D. 418 (S.D.N.Y. 1883), (Rejection
made under a predecessor of 35 U.S.C. 102(d) based on an
Austrian patent granted an exclusionary right for 1 year but
was kept secret, at the option of the patentee, for that
period. The court held that the Austrian patent grant date
was the relevant date under the statute for purposes of 35
U.S.C. 102(d) but that the patent could not have been used
to in a rejection under 35 U.S.C. 102(a) or (b).);  In re
Talbott , 443 F.2d 1397, 170 USPQ 281 (CCPA 1971) (Applicant
cannot avoid a 35 U.S.C. 102(d) rejection by exercising an
option  to  keep  the  subject  matter  of  a  German
Gebrauchsmuster (petty patent) in secrecy until time of U.S.
filing.).

  (d)  The same invention must be involved.

 "SAME INVENTION" MEANS THAT THE APPLICATION CLAIMS COULD
HAVE BEEN PRESENTED IN THE FOREIGN PATENT

  Under 35 U.S.C. 102(d), the "invention ... patented" in
the foreign country must be the same as the invention sought
to be patented in the U.S. When the foreign patent contains
the same claims as the U.S. application, there is no
question that "the invention was first patented ... in a
foreign country."  In re Kathawala , 28 USPQ2d 1785, 1787
(Fed. Cir. 1993). However, the claims need not be identical
or even within the same statutory class. If applicant is
granted a foreign patent which fully discloses the invention
and which gives applicant a number of different claiming
options in the U.S., the reference in 35 U.S.C. 102(d) to "
`invention  ...  patented'  necessarily  includes  all  the
disclosed aspects of the invention. Thus, the section 102(d)
bar applies regardless whether the foreign patent contains
claims to less than all aspects of the invention"  Id . at
1788. In essence, a 35 U.S.C. 102(d) rejection applies if
applicant's foreign application supports the subject matter
of the U.S. claims.  In re Kathawala, 28 USPQ2d 1785 (Fed.
Cir. 1993) (Applicant was granted a Spanish patent claiming
a method of making a composition. The patent disclosed
compounds, methods of use and processes of making the
compounds.  After  the  Spanish  patent  was  granted,  the
applicant filed a U.S. application with claims directed to
the compound but not the process of making it. The Federal
Circuit held that it did not matter that the claims in the
U.S. application were directed to the composition instead of
the process because the foreign specification would have
supported claims to the composition. It was immaterial that
the  formulations  were  unpatentable  pharmaceutical
compositions in Spain.).<

2136  35 U.S.C. 102(e) [R - 1]

 >35 U.S.C. 102. Conditions for patentability; novelty and
loss of right to patent.

 A person shall be entitled to a patent unless - -

  *****

 (e)  the invention was described in a patent granted on
an application for patent by another filed in the United
States before the invention thereof by the applicant for
patent, or on an international application by another who
has fulfilled the requirements of paragraphs (1), (2), and
(4) of section 371(c) of this title before the invention

thereof by the applicant for patent.

  *****

 ONLY U.S. PATENTS AND SIRS ARE ELIGIBLE AS PRIOR ART UNDER
35 U.S.C. 102(e)

  The reference must be a U.S. patent to be eligible for
use in a 35 U.S.C. 102(e) rejection. Ex parte Smolka, 207
USPQ 232 (Bd. App. 1980) (A foreign patent document with
priority back to an abandoned U.S. application cannot be the
basis for a 35 U.S.C. 102(e) rejection. The foreign document
cannot be prior art until it is patented or published.).
Statutory Invention Registrations can also be used in 35
U.S.C. 102(e) rejections as of their filing dates.

 DEFENSIVE PUBLICATIONS ARE NOT PRIOR ART AS OF THEIR FILING
DATE

  A defensive publication is not a patent, it is a
publication. Therefore, it is prior art only as of its
publication date. Ex parte Osmond, 191 USPQ 334 (Bd. App.
1973)  (Examiner  rejected  the  claims  over  Defensive
Publication T - 858,018 issued by the PTO to Jacobson. The
examiner made a 35 U.S.C. 102(a) rejection contending that a
defensive publication can be used as a reference under 35
U.S.C. 102(a) as of its filing date. This position was
authorized at that time by the MPEP and a Commissioner's
Notice establishing the Defensive Publication Program. The
Board found that in order for a 35 U.S.C. 102(a) rejection
to apply, the reference must be of public knowledge and a
Defensive publication is not public knowledge at the time of
its filing. Thus, the Board reversed the rejection. The
Board also found that 35 U.S.C. 102(e) could not be used as
a  basis  for  rejection  because  the  use  of  Defensive
Publications as of their filing dates was not supported by
section 102(e).) See MPEP § 711.06(a) for more information
on Defensive Publications as references.<

2136.01  Status of U.S. Patent as a Reference Before and
After Issuance [R - 1]

  >WHEN  THERE  IS  NO  COMMON  ASSIGNEE  OR  INVENTOR,  AN
APPLICATION MUST ISSUE AS A PATENT BEFORE IT IS AVAILABLE AS
PRIOR ART UNDER 35 U.S.C. 102(e)

  Generally, a U.S. patent must issue before it can be
used as a reference in a 35 U.S.C. 102(e) rejection. Ex
parte Smolka , 207 USPQ 232 (Bd. App. 1980) (An application
to Smolka and Schwuger was rejected over 35 U.S.C. 102(e)
based on a pending U.S. application to Corkill whose filing
date antedated the Smolka et al. application. A German
application corresponding to the Corkill application had
been published, but did not antedate the effective filing
date of the Smolka et al. application. The Board reversed
the rejection holding that a U.S. patent had to be issued to
Corkill before it could become available as prior art under
102(e). There was no common assignee nor any common inventor
between the two applications.).

 WHEN THERE IS A COMMON ASSIGNEE OR INVENTOR, A PROVISIONAL
35 U.S.C. 102(e) REJECTION OVER AN EARLIER FILED APPLICATION
CAN BE MADE

  Based on the assumption that an application will ripen

into a U.S. patent, it is permissible to provisionally
reject a later application over an earlier application under
35 U.S.C. 102(e). In re Irish, 167 USPQ 764 (CCPA 1970).
Such a provisional rejection "serves to put applicant on
notice at the earliest possible time of the possible prior
art relationship between copending applications" and gives
applicant the fullest opportunity to overcome the rejection
by amendment or submission of evidence. In addition, since
both applications are pending and usually have the same
assignee,  more  options  are  available  to  applicant  for
overcoming the provisional rejection than if the other
application were already issued.  Ex parte Bartfeld, 16
USPQ2d 1714 (Bd. Pat. App. & Int. 1990)  aff'd on other
grounds  In re Bartfeld, 17 USPQ2d 1885 (Fed. Cir. 1991).
Note that provisional rejections over 35 U.S.C. 102(e) are
only authorized when there is a common inventor or assignee,
otherwise  the  copending  application  must  remain
confidential. MPEP § 706.02(f) and § 706.02(k) discuss the
procedures to be used in provisional rejections over 35
U.S.C. 102(e) and 103.<

2136.02  Content of the Prior Art Available Against the
Claims [R - 3]

 A 35 U.S.C. 102(e) REJECTION MAY RELY ON ANY PART OF THE
PATENT DISCLOSURE

  Under 35 U.S.C. 102(e), the entire disclosure of a U.S.
patent having an earlier filing date can be relied on to
reject the claims. Sun Studs, Inc.  v.  ATA Equipment
Leasing , 10 USPQ2d 1338, 1342 (Fed. Cir. 1989).

 U.S. PATENT REFERENCE MUST ITSELF CONTAIN THE SUBJECT
MATTER RELIED ON IN THE REJECTION

  When a U.S. patent is used to reject claims under 35
U.S.C. 102(e), the disclosure relied on in the rejection
must be present in the issued patent. It is the filing date
of the U.S. patent being relied on as the critical reference
date and subject matter not included in the patent itself
can only be used when that subject matter becomes public.
Portions of the patent application which were canceled are
not part of the patent and thus cannot be relied on in a 35
U.S.C. 102(e) rejection over the issued patent. **> Ex
Parte< Stalego , 154 USPQ 52 (Bd. App. 1966). Likewise,
subject matter which is disclosed in a parent application,
but not included in the child continuation - in - part (CIP)
cannot be relied on in a 35 U.S.C. 102(e) rejection over the
issued CIP.  In re Lund ,>376 F.2d 982,<153 USPQ 625 (CCPA
1967) (The examiner made a 35 U.S.C. 102(e) rejection over
an issued U.S. patent which was a continuation - in - part
(CIP). The parent application of the U.S. patent reference
contained an example II which was not carried over to the
CIP. The court held that the subject matter embodied in the
canceled example II could not be relied on as of either
parent or child filing date. Thus, the use of example II
subject matter to reject the claims under 35 U.S.C. 102(e)
was improper.)

 THE SUPREME COURT HAS AUTHORIZED 35 U.S.C. 103 REJECTIONS
BASED ON 35 U.S.C. 102(e)

  U.S. patents may be used as of their filing dates to
show that the claimed subject matter is anticipated or
obvious. Obviousness can be shown by combining other prior

art with the U.S. patent reference in a 35 U.S.C. 103
rejection. Hazeltine Research  v.  Brenner, 382 U.S. 252,
147 USPQ 429 (1965).

2136.03  Critical Reference Date [R - 3]

  (a)  Foreign priority date

 REFERENCE'S FOREIGN PRIORITY DATE UNDER 35 U.S.C. 119(a) -
(d) CANNOT BE USED AS THE 35 U.S.C. 102(e) REFERENCE DATE

  A U.S. patent reference is effective prior art as of its
U.S. filing date. 35 U.S.C. 119(a) - (d) does not modify
section  102(e)  which  is  explicitly  limited  to  patent
references "filed in the United States before the invention
thereof by the applicant" (emphasis added). Therefore, the
foreign priority date of the reference under 35 U.S.C.
119(a) - (d) cannot be used to antedate the application
filing date. In contrast, applicant may be able to overcome
the 35 U.S.C. 102(e) rejection by proving he or she is
entitled to his or her own 35 U.S.C. 119 priority date which
is earlier than the reference's U.S. filing date.  In re
Hilmer , 359 F.2d 859, 149 USPQ 480 (CCPA 1966) ( Hilmer I )
(Applicant filed an application with a right of priority to
a German application. The examiner rejected the claims over
a U.S. patent to Habicht based on its Swiss priority date.
The  U.S.  filing  date  of  Habicht  was  later  than  the
application's German priority date. The court held that the
reference's Swiss priority date could not be relied on in a
35 U.S.C. 102(e) rejection. Because the U.S. filing date of
Habicht was later than the earliest effective filing date
(German priority date) of the application, the rejection was
reversed.). See MPEP § 201.15 for information on procedures
to be followed in considering applicant's right of priority.

  (b)  International (PCT) filing date

 REFERENCE'S INTERNATIONAL FILING DATE CAN BE USED AS THE 35
U.S.C. 102(e) REFERENCE DATE

  When the U.S. patent reference is entitled to the
benefit of an international application (PCT) under 35
U.S.C. 120, the 35 U.S.C. 102(e) critical date of the
reference is the international filing date as defined by 35
U.S.C. 363. Therefore, the international filing date of a
U.S.  patent  reference  can  be  used  to  antedate  the
application  being  examined.  **>  However,  when  a  U.S.
national stage application filed under 35 U.S.C. 371 becomes
a U.S. patent, the 35 U.S.C. 102(e) date of the U.S. Patent
as a prior art reference is the date applicant fulfilled the
requirements of 35 U.S.C. 371(c)(1), (c)(2), and (c)(4).<
See * MPEP § 715 and § 1896.

  (c)  Priority from provisional application under 35
U.S.C. 119(e)

  The 35 U.S.C. 102(e) critical reference date of a U.S.
patent entitled to the benefit of the filing date of a
provisional application under 35 U.S.C. 119(e) is the filing
date of the provisional application, except in the case of a
U.S. patent granted on an international (PCT) application in
which the requirements of paragraphs (1), (2) and (4) of 35
U.S.C. 371 have been fulfilled. By the terms of 35 U.S.C.
102(e), the critical reference date of a U.S. patent granted
on such a 35 U.S.C. 371 application is the date on which

paragraphs (1), (2) and (4) have been fulfilled, not the
filing date of the provisional application.

  (d)  Parent's filing date when reference is a
continuation - in - part of the parent

 FILING DATE OF U.S. PARENT APPLICATION CAN ONLY BE USED AS
THE 35 U.S.C. 102(e) DATE IF IT SUPPORTS THE CLAIMS OF THE
ISSUED CHILD

  In order to carry back the 35 U.S.C. 102(e) critical
date of the U.S. patent reference to the filing date of a
parent application, the parent application must (1) have a
right of priority to the earlier date under 35 U.S.C. 120
and (2) support the invention claimed as required by 35
U.S.C. 112, first paragraph. "For if a patent could not
theoretically have issued the day the application was filed,
it is not entitled to be used against another as `secret
prior art' " under 35 U.S.C. 102(e).  In re Wertheim ,>646
F.2d 527, 537,< 209 USPQ 554, 564 (CCPA 1981) (The examiner
made a 35 U.S.C. 103 rejection over a U.S. patent to
Pfluger. The Pfluger patent (Pfluger IV) was the child of a
string of abandoned parent applications (Pfluger I, the
first application, Pfluger II and III, both CIPs). Pfluger
IV  was  a  continuation  of  Pfluger  III.  The  court
characterized the contents of the applications as follows:
Pfluger I - subject matter A, II - AB, III - ABC, IV - ABC.
ABC anticipated the claims of the examined application, but
the filing date of III was later than the application filing
date. So the examiner reached back to "A" in Pfluger I and
combined this disclosure with another reference to establish
obviousness. The court held that the examiner impermissibly
carried over "A" and should have instead determined which of
the parent applications contained the subject matter which
made Pfluger patentable. Only if B and C were not claimed,
or at least not critical to the patentability of Pfluger IV,
could the filing date of Pfluger I be used. The court
reversed the rejection based on a determination that Pfluger
IV was only entitled to the Pfluger III filing date. The
added new matter (C) was critical to the claims of the
issued patent.). Note that  In re Wertheim modified the
holding of  In re Lund ,>376 F.2d 982,< 153 USPQ 625 (CCPA
1967) as to "carrying back" the subject matter to the parent
applications.

  See also Ex parte Gilderdale, 1990 Pat. App. LEXIS 25
(Bd. Pat. App. & Inter. Appeal no. 89 - 0352) (The examiner
made a 35 U.S.C. 102(e) rejection over a U.S. patent to
Hernandez et al. Hernandez et al.  was a continuation of a
continuation - in - part. Both the parent and grandparent
had been abandoned. The parent listed a different inventive
entity but supported the subject matter of the child's
claims. The parent was filed on the same day as the examined
application and thus no 35 U.S.C. 102(e) rejection could be
made based on the parent's filing date. The Board reversed
the rejection, explaining that the Hernandez patent was
entitled to the filing date of its parent, as the parent
supported the patent claims and 35 U.S.C. 120 was satisfied.
Under 35 U.S.C. 120, an application can claim the benefit of
an earlier filing date even if not all inventors are the
same. However, Hernandez was not entitled to the grandparent
filing  date  because  the  parent  and  child  applications
contained new matter as compared to the grandparent.).

  Compare Ex parte Ebata, 19 USPQ2d 1952 (Bd. Pat. App. &

Inter. 1991) (The claims were directed to a method of
administering a salt of lysocellin to animals. A 35 U.S.C.
102(e)  rejection  was  made  over  Martin.  Martin  was  a
continuation  of  an  application  which  was  in  turn  a
continuation - in - part of an abandoned application. The
grandparent application disclosed administering a manganese
complex of lysocellin to animals. The Board found that "the
new matter relates to additional forms of lysocellin which
are useful in Martin's process, i.e., species or embodiments
other than the manganese complex. This is far different from
adding limitations which are required or necessary for
patentability." Unlike the situation in  In re Wertheim ,
Martin's  invention  was  patentable  as  presented  in  the
grandparent application.).

  (e)  Date of conception or reduction to practice

 35 U.S.C. 102(e) REFERENCE DATE IS THE FILING DATE NOT DATE
OF PATENTEE'S CONCEPTION OR REDUCTION TO PRACTICE

  If the U.S. patent applied as a 35 U.S.C. 102(e)
reference discloses, but does not claim the subject matter
of the claims being examined or an obvious variant, the
patent is not prior art under 35 U.S.C. 102(g). When the
cases are not in interference, the effective date of the
reference U.S. patent as prior art is its filing date in the
United States, as stated in 35 U.S.C. 102(e). The date that
the prior art U.S. patent subject matter was conceived or
reduced to practice is of no importance when 35 U.S.C.
102(g) is not at issue. Sun Studs, Inc.  v.  ATA Equipment
Leasing ,>872 F.2d 978, 983,< 10 USPQ2d 1338, 1342 (Fed.
Cir. 1989) (The defendant sought to invalidate patents
issued to Mason and Sohn assigned to Sun Studs. The earliest
of these patents issued in June 1973. A U.S. patent to Mouat
was found which issued in March 1976 and which disclosed the
invention of Mason and Sohn. While the patent to Mouat
issued after the Mason and Sohn patents, it was filed 7
months earlier than the earliest of the Mason and Sohn
patents. Sun Studs submitted affidavits showing conception
in 1969 and diligence to the constructive reduction to
practice and therefore antedated the patent to Mouat. The
defendant sought to show that Mouat conceived the invention
in 1966. The court held that conception of the subject
matter of the reference only becomes an issue when the
claims of the conflicting patents cover inventions which are
the same or obvious over one another. When 35 U.S.C. 102(e)
applies but not 35 U.S.C. 102(g), the filing date of the
prior art patent is the earliest date that can be used to
reject or invalidate claims.).

2136.04  Different Inventive Entity; Meaning of "By
Another" [R - 1]

 >IF THERE IS ANY DIFFERENCE IN THE INVENTIVE ENTITY, THE
PATENT REFERENCE IS "BY ANOTHER"

  "Another" means other than applicants, In re Land , 151
USPQ 621 (CCPA 1966), in other words, a different inventive
entity.  The  inventive  entity  is  different  if  not  all
inventors are the same. The fact that the application and
patent have one or more inventors in common is immaterial.
Ex parte DesOrmeaux , 25 USPQ2d 2040 (Bd. Pat. App. & Inter.
1992) (The examiner made a 35 U.S.C. 102(e) rejection based
on an issued U.S. patent to three inventors. The rejected
application was a continuation - in - part of the issued

parent with an extra inventor. The Board found that the
patent was "by another" and thus could be used in a 35
U.S.C. 102(e) / 103 rejection of the application.).

 A DIFFERENT INVENTIVE ENTITY IS PRIMA FACIE EVIDENCE THAT
THE U.S. PATENT IS "BY ANOTHER"

  As stated by the House and Senate reports on the bills
enacting section 35 U.S.C. 102(e), this subsection of 102
codifies  the  Milburn  rule  of  Milburn  v.  Davis  -
Bournonville  ,  270  U.S.  390  (1926).  The  Milburn  rule
authorized the use of a U.S. patent containing a disclosure
of the invention as a reference against a later filed
application as of the U.S. patent filing date. The existence
of an earlier filed U.S. application containing the subject
matter claimed in the application being examined indicates
that applicant was not the first inventor. Therefore, a U.S.
patent by a different inventive entity, whether or not the
application shares some inventors in common with the patent,
is  prima facie evidence that the invention was made "by
another" as set forth in section 102(e).  In re Mathews ,
161 USPQ 276 (CCPA 1969);  In re Facius , 161 USPQ 294 (CCPA
1969);  Ex parte DesOrmeaux , 25 USPQ2d 2040 (Bd. Pat. App.
& Inter. 1992). See MPEP § 2136.05 for discussion of methods
of overcoming 102(e) rejections.<

2136.05  Overcoming a Rejection Under 35 U.S.C. 102(e) [R -
2]

 A 35 U.S.C. 102(e) REJECTION CAN BE OVERCOME BY ANTEDATING
THE FILING DATE OR SHOWING THAT DISCLOSURE RELIED ON IS
APPLICANT'S OWN WORK

  When a prior U.S. patent is not a statutory bar, a 35
U.S.C. 102(e) rejection can be overcome by antedating the
filing date (see MPEP § 2136.03 regarding critical reference
date of a U.S. patent) of the U.S. patent reference by
submitting an affidavit or declaration under 37 CFR 1.131 or
by submitting an affidavit or declaration under 37 CFR 1.132
establishing that the relevant dis closure is applicant's
own work. In re Mathews , 161 USPQ 276 (CCPA 1969). The
filing date can also be antedated by applicant's earlier
foreign priority application or provisional application if
35  U.S.C.  119  is  met  and  the  foreign  application  or
provisional application "supports" (conforms to 35 U.S.C.
112, first paragraph requirements) all the claims of the
U.S. application.  In re Gosteli , 10 USPQ2d 1614 (Fed. Cir.
1989). But a prior application which was not copending with
the application at issue cannot be used to antedate a
reference.  In re Costello , 219 USPQ 389 (Fed. Cir. 1983).
A terminal disclaimer also does not overcome a 35 U.S.C.
102(e) rejection.  In re Bartfeld , 17 USPQ2d 1885 (Fed.
Cir. 1991) (The examiner made a provisional 35 U.S.C. 102(e)
/ 103 rejection over a commonly owned copending application
with a different inventive entity. The rejected application
was a continuation - in - part (CIP) of the reference
application. Applicants argued that the terminal disclaimer
they had submitted should be effective to overcome the 35
U.S.C. 102(e) / 103 rejection ** because Congress enacted **
35 U.S.C. 103>(c)< to foster free exchange of ideas and
concepts at universities and corporate research centers by
prohibiting the use of "secret prior art" in making obvious
determinations when the subject matter originates in the
same organization. The court responded by explaining that
the  plain  language  of  35  U.S.C.  103>(c)<**  says  that

"subject matter developed by another person, which qualifies
as prior art only under subsection (f) or (g) of section 102
does  not  preclude  patentability"  (emphasis  added).
Therefore, rejections under 35 U.S.C. 102(e) are not covered
by 35 U.S.C. 103>(c)<** and a terminal disclaimer will not
remove the 35 U.S.C. 102(e) / 103 rejection.).

  See MPEP § 706.02(b) for a list of methods which can be
used to overcome rejections based on 35 U.S.C. 102(e)
rejections. For information on the required contents of a 37
CFR 1.131 affidavit or declaration and the situations in
which such affidavits and declarations are permitted see
MPEP § 715. An affidavit or declaration is not appropriate
if the reference describes applicant's own work. In this
case, applicant must submit an affidavit or declaration
under  37  CFR  1.132.  See  the  next  paragraph  for  more
information concerning the requirements of 37 CFR 1.132
affidavits and declarations.

 A 102(e) REJECTION CAN BE OVERCOME BY SHOWING THE PATENT IS
DESCRIBING APPLICANT'S OWN WORK

  "The fact that an application has named a different
inventive entity than a patent does not necessarily make
that patent prior art." Applied Materials Inc.  v.  Gemini
Research Corp. , 15 USPQ2d 1816 (Fed. Cir. 1988). The issue
turns on what the evidence of record shows as to who
invented the subject matter.  In re Whittle , 172 USPQ 535,
537 (CCPA 1972). In fact, even if applicant's work was
publicly  disclosed  prior  to  his  or  her  application,
applicant's own work may not be used against him or her
unless there is a time bar under 35 U.S.C. 102(b).  In re
DeBaun , 214 USPQ 933 (CCPA 1982) (citing  In re Katz , 215
USPQ 14 (CCPA 1982)). Therefore, when the unclaimed subject
matter of a patent is applicant's own invention, applicant
may overcome a  prima facie case based on the patent by
showing that the patent disclosure is a description of
applicant's own previous work. Such a showing can be made by
proving that the patentee was associated with applicant
(e.g.  worked  for  the  same  company)  and  learned  of
applicant's invention from applicant.  In re Mathews , 161
USPQ 276 (CCPA 1969). In the situation where one application
is first filed by inventor X and then a later application is
filed by X&Y, it must be proven that the joint invention was
made first, was thereafter described in the sole applicant's
patent and then the joint application was filed.  In re Land
, 151 USPQ 621 (CCPA 1966).

  In In re Land , 151 USPQ 621 (CCPA 1966), separate U.S.
patents to Rogers and to Land were used to reject a joint
application to Rogers and Land under 35 U.S.C. 102(e) / 103.
The inventors worked for the same company (Polaroid) and in
the same laboratory. All the patents flowed from the same
research. In addition, the patent applications were prepared
by the same attorneys, were interrelated and contained cross
- references to each other. The court affirmed the rejection
because (1) the inventive entities of the patents (one to
Rogers and one to Land) were different from the inventive
entity of the joint application (Rogers and Land) and (2)
Land and Rogers brought their knowledge of their individual
work with them when they made the joint invention. There was
no indication that the portions of the references relied on
disclosed anything they did jointly. Neither was there any
showing that what they did  jointly was done before the
filing of the reference patent applications.

  See also In re Carreira , 189 USPQ 461 (CCPA 1976) (The
examiner rejected claims to a joint application to Carreira,
Kyrakakis, Solodar, and Labana under 35 U.S.C. 102(e) and
103 in view of a U.S. patent issued to Tulagin and Carreira
or a patent issued to Clark. The applicant (Carreira et al.)
submitted declarations under 37 CFR 1.132 by Tulagin and
Clark in which each declarant stated he was "not the
inventor of the use of compounds having a hydroxyl group in
a position ortho to an azo linkage." The court held that
these statements were vague and inconclusive because the
declarants did not disclose the use of this generic compound
but rather species of this generic compound in their patents
and it was the species which met the claims. The declaration
that each did not invent the use of the generic compound
does not establish that Tulagin and Clark did not invent the
use of the species.)

  MPEP § 715.01(a), § 715.01(c), and § 716.10 set forth
more information pertaining to the contents and uses of
affidavits  and  declarations  under  37  CFR  1.132  for
antedating references.

 APPLICANT NEED NOT SHOW DILIGENCE OR REDUCTION TO PRACTICE
WHEN THE SUBJECT MATTER DISCLOSED IN THE REFERENCE IS
APPLICANT'S OWN WORK

  When the U.S. patent reference reflects applicant's own
work, applicant need not prove diligence or reduction to
practice to establish that he or she invented the subject
matter disclosed in the patent reference. A showing that the
reference disclosure arose from applicant's work coupled
with a showing of conception by the applicant before the
filing date of the reference will overcome the 35 U.S.C.
102(e) rejection. The showing can be made by submission of
an affidavit by the inventor under 37 CFR 1.132. The other
patentees  need  not  submit  an  affidavit  disclaiming
inventorship, but, if submitted, a disclaimer by all other
patentees should be considered by the examiner. In re
DeBaun, 214 USPQ 933 (CCPA 1982) (Declaration submitted by
DeBaun stated that he was the inventor of subject matter
disclosed in the U.S. patent reference of DeBaun and Noll.
Exhibits were attached to the declaration showing conception
and included drawings Debaun had prepared and given to
counsel for purposes of preparing the application which
issued as the reference patent. The court held that, even
though the evidence was not sufficient to antedate the prior
art patent under 37 CFR 1.131, diligence and/or reduction to
practice was not required to show DeBaun invented the
subject matter. Declarant's statement that he conceived the
invention first was enough to overcome the 35 U.S.C. 102(e)
rejection.).

 CLAIMING OF INDIVIDUAL ELEMENTS OR SUBCOMBINATIONS IN A
COMBINATION CLAIM OF THE REFERENCE PATENT DOES NOT ITSELF
ESTABLISH THAT THE PATENTEE INVENTED THOSE ELEMENTS

  The existence of combination claims in a U.S. patent is
not evidence that the patentee invented the individual
elements or subcombinations included if the elements and
subcombinations are not separately claimed apart from the
combination. In re DeBaun , 214 USPQ 933 (CCPA 1982) (citing
In re Facius , 161 USPQ 294, 301 (CCPA 1969)).

  See also In re Mathews, 161 USPQ 276 (CCPA 1969) (On

September 15, 1961, Dewey filed an application disclosing
and claiming a time delay protective device for an electric
circuit.  In  disclosing  the  invention,  Dewey  completely
described, but did not claim, a "gating means 19" invented
by Mathews which was usable in the protective device. Dewey
and Mathews were coworkers at General Electric Company, the
assignee. Mathews filed his application on March 7, 1963,
before the Dewey patent issued but almost 18 months after
its filing. The Mathews application disclosed that "one
illustration of a circuit embodying the present invention is
shown in copending patent application S.N. 138,476 - Dewey."
The examiner used Dewey to reject all the Mathews claims
under 35 U.S.C. 102(e). In response, Mathews submitted an
affidavit by Dewey under 37 CFR 1.132. In the affidavit,
Dewey stated that he did not invent the gating means 19 but
had learned of the gating means through Mathews and that GE
attorneys had advised that the gating means be disclosed in
Dewey's application to comply with 35 U.S.C. 112, first
paragraph. The examiner argued that the only way to overcome
a 35 U.S.C. 102(e) rejection was by submitting an affidavit
or declaration under 37 CFR 1.131 to antedate the filing
date of the reference. The Court reversed the rejection,
holding that the totality of the evidence on record showed
that Dewey derived his knowledge from Mathews who is "the
original, first and sole inventor.").

2137  35 U.S.C. 102(f) [R - 3]

 35 U.S.C. 102. Conditions for patentability; novelty and
loss of right to patent.

 A person shall be entitled to a patent unless - -

  *****

 (f)  he did not himself invent the subject matter sought
to be patented.

  *****

  Where it can be shown that an applicant "derived" an
invention from another, a rejection under 35 U.S.C. 102(f)
is proper. Ex parte Kusko, 215 USPQ 972, 974 (Bd. App. 1981)
("most, if not all, determinations under section 102(f)
involve  the  question  of  whether  one  party  derived  an
invention from another").

  While derivation will bar the issuance of a patent to
the deriver, MPEP § 2325, a disclosure by the deriver,
absent a bar under 35 U.S.C. 102(b), will not bar the
issuance of a patent to the party from which the subject
matter was derived. In re Costello , 219 USPQ 389,390 - 91
(Fed. Cir. 1983) ("[a] prior art reference that is not a
statutory bar may be overcome by two generally recognized
methods": an affidavit under 37 CFR 1.131, or an affidavit
under 37 CFR 1.132 "showing that the relevant disclosure is
a description of the applicant's own work");  In re Facius ,
161 USPQ 294,302 (CCPA 1969) (subject matter incorporated
into a patent that was brought to the attention of the
patentee by applicant, and hence derived by the patentee
from the applicant, is available for use against applicant
unless applicant had actually invented the subject matter
placed in the patent).

  Where there is a published article identifying the

authorship (MPEP § 715.01(c)) or a patent identifying the
inventorship  (MPEP  §  715.01(a))  that  discloses  subject
matter  being  claimed  in  an  application  undergoing
examination, the designation of authorship or inventorship
does not raise a presumption of inventorship with respect to
the subject matter disclosed in the article or with respect
to the subject matter disclosed but not claimed in the
patent so as to justify a rejection under 35 U.S.C. 102(f).
However, it is incumbent upon the inventors named in the
application,  in  response  to  an  inquiry  regarding  the
appropriate inventorship under subsection (f), or to rebut a
rejection under 35 U.S.C. 102(a) or (e), to provide a
satisfactory showing by way of affidavit under 37 CFR 1.132
that the inventorship of the application is correct in that
the reference discloses subject matter invented by the
applicant rather than derived from the author or patentee
notwithstanding  the  authorship  of  the  article  or  the
inventorship of the patent. In re Katz , 215 USPQ 14,18
(CCPA 1982) (inquiry is appropriate to clarify any ambiguity
created by an article regarding inventorship, and it is then
incumbent upon the applicant to provide "a satisfactory
showing that would lead to a reasonable conclusion that
[applicant] is the ... inventor" of the subject matter
disclosed in the article and claimed in the application).

 DERIVATION REQUIRES COMPLETE CONCEPTION BY ANOTHER AND
COMMUNICATION TO THE ALLEGED DERIVER

  "The mere fact that a claim recites the use of various
components, each of which can be argumentatively assumed to
be old, does not provide a proper basis for a rejection
under 35 U.S.C. 102(f)." Ex parte Billottet , 192 USPQ 413,
415 (Bd. App. 1976). Derivation requires complete conception
by another and communication of that conception by any means
to the party charged with derivation prior to any date on
which it can be shown that the one charged with derivation
possessed knowledge of the invention.  Kilbey  v.  Thiele,
199 USPQ 290, 294 (Bd. Pat. Inter. 1978).

  ** >See also Price  v.  Symsek , 988 F.2d 1187, 1190, 26
USPQ2d 1031, 1033 (Fed. Cir. 1993);  Hedgewick  v.  Akers ,
497  F.2d  905,  908,  182  USPQ  167,  169  (CCPA  1974).
"Communication of a complete conception must be sufficient
to enable one of ordinary skill in the art to construct and
successfully operate the invention."  Hedgewick , 497 F.2d
at 908, 182 USPQ at 169. See also  Gambro Lundia AB  v.
Baxter Healthcare Corp., 42 USPQ2d 1378, 1383 (Fed. Cir.
1997)(Issue  in  proving  derivation  is  "whether  the
communication enabled one of ordinary skill in the art to
make the patented invention.").<

 PARTY ALLEGING DERIVATION DOES NOT HAVE TO PROVE AN ACTUAL
REDUCTION TO PRACTICE, DERIVATION OF PUBLIC KNOW LEDGE, OR
DERIVATION IN THIS COUNTRY

  The party alleging derivation "need not prove an actual
reduction to practice in order to show derivation." Scott v.
Brandenburger  ,  216  USPQ  326,  327  (Bd.  App.  1982).
Furthermore,  the  application  of  subsection  (f)  is  not
limited to public knowledge derived from another, and "the
site of derivation need not be in this country to bar a
deriver from patenting the subject matter."  Ex parte
Andresen, 212 USPQ 100, 102 (Bd. App. 1981).

 DERIVATION DISTINGUISHED FROM PRIORITY OF INVENTION

  Although derivation and priority of invention both focus
on inventorship, derivation addresses originality (i.e., who
invented the subject matter), whereas priority focuses on
which party first invented the subject matter. Price  v.
Symsek , 26 USPQ2d 1031, 1033 (Fed. Cir. 1993).

 35 U.S.C. 102(f) MAY APPLY WHERE 35 U.S.C. 102(a) AND 35
U.S.C.  102(e)  ARE  NOT  AVAILABLE  STATUTORY  GROUNDS  FOR
REJECTION

  35 U.S.C. 102(f) does not require an inquiry into the
relative dates of a reference and the application, and
therefore may be applicable where subsections (a) and (e)
are not available for references having an effective date
subsequent to the effective date of the application being
examined. However for a reference having a date later than
the date of the application some evidence may exist that the
subject  matter  of  the  reference  was  derived  from  the
applicant in view of the relative dates. Ex parte Kusko, 215
USPQ 972, 974 (Bd. App. 1981) (The relative dates of the
events  are  important  in  determining  derivation;  a
publication dated more than a year after applicant's filing
date that merely lists as literary coauthors individuals
other than applicant is not the strong evidence needed to
rebut a declaration by the applicant that he is the sole
inventor.).

2137.01  Inventorship [R - 2]

  The requirement that the applicant for a patent be the
inventor  is  a  characteristic  of  U.S.  patent  law  not
generally shared by other countries. Consequently, foreign
applicants may misunderstand U.S. law regarding naming of
the actual inventors causing an error in the inventorship of
a U.S. application that may claim priority to a previous
foreign application under 35 U.S.C. 119. A petition under 37
CFR 1.48(a) is required to correct any error in naming the
inventors in the U.S. application as filed. MPEP § 201.03.
Foreign  applicants  may  need  to  be  reminded  of  the
requirement for identity of inventorship between a U.S.
application and a 35 U.S.C. 119 priority application. MPEP §
201.13.

  If a determination is made that the inventive entity
named in a U.S. application is not correct, such as when a
petition under 37 CFR 1.48(a) is not granted or is not
entered for technical reasons, but the admission therein
regarding the error in inventorship is uncontroverted, a
rejection under 35 U.S.C. 102(f) should be made.

 EXECUTORS OF OATH OR DECLARATION UNDER 37 CFR 1.63 ARE
PRESUMED TO BE THE INVENTORS

  The party or parties executing an oath or declaration
under 37 CFR 1.63 are presumed to be the inventors. Driscoll
v.  Cebalo , 5 USPQ2d 1477, 1481 (Bd. Pat. Inter. 1982);  In
re DeBaun , 214 USPQ 933, 936 (CCPA 1982) (The inventor of
an element,  per se, and the inventor of that element as
used  in  a  combination  may  differ.  "The  existence  of
combination claims does not evidence inventorship by the
patentee  of  the  individual  elements  or  subcombinations
thereof if the latter are not separately claimed apart from
the combination." 214 USPQ at 936 (quoting  In re Facius,
161 USPQ 294, 301 (CCPA 1969) (emphasis in original).);

Brader  v. Schaeffer, 193 USPQ 627, 631 (Bd. Pat. Inter.
1976)  (in  regard  to  an  inventorship  correction:  "[a]s
between inventors their word is normally taken as to who are
the actual inventors" when there is no disagreement).

 AN INVENTOR MUST CONTRIBUTE TO THE CONCEPTION OF THE
INVENTION

  The definition for inventorship can be simply stated:
"The threshold question in determining inventorship is who
conceived the invention. Unless a person contributes to the
conception of the invention, he is not an inventor. ...
Insofar as defining an inventor is concerned, reduction to
practice,  per se, is irrelevant [except for simultaneous
conception and reduction to practice,  Fiers  v.  Revel, 25
USPQ2d  1601,  1604  -  05  (Fed.  Cir.  1993)].  One  must
contribute to the conception to be an inventor."  In re
Hardee, 223 USPQ 1122, 1123 (Dep. Asst. Comm'r Pat. 1984).
See also  Ex parte Smernoff, 215 USPQ 545, 547 (Bd. App.
1982)  ("one  who  suggests  an  idea  of  a  result  to  be
accomplished, rather than the means of accomplishing it, is
not an coinventor"). See MPEP § 2138.04 - § 2138.05 for a
discussion  of  what  evidence  is  required  to  establish
conception or reduction to practice.

 AS LONG AS THE INVENTOR MAINTAINS INTELLECTUAL DOMINATION
OVER MAKING THE INVENTION, IDEAS, SUGGESTIONS, AND MATERIALS
MAY BE ADOPTED FROM OTHERS

  "In arriving at ... conception [the inventor] may
consider and adopt ideas and materials derived from many
sources ... [such as] a suggestion from an employee, or
hired consultant ... so long as he maintains intellectual
domination of the work of making the invention down to the
successful testing, selecting or rejecting as he goes ...
even if such suggestion [or material] proves to be the key
that unlocks his problem."  Morse v.  Porter , 155 USPQ 280,
283 (Bd. Pat. Inter. 1965). See also  New England Braiding
Co., Inc. v.  A.W. Chesterton Co. , 23 USPQ2d 1622, 1626
(Fed. Cir. 1992) (Adoption of the ideas and materials from
another can become a derivation.).

 THE INVENTOR IS NOT REQUIRED TO REDUCE THE INVENTION TO
PRACTICE

  Difficulties arise in separating members of a team
effort, where each member of the team has contributed
something, into those members that actually contributed to
the conception of the invention, such as the physical
structure or operative steps, from those members that merely
acted under the direction and supervision of the conceivers.
Fritsch  v.  Lin , 21 USPQ2d 1737, 1739 (Bd. Pat. App. &
Inter. 1991) (The inventor "took no part in developing the
procedures ... for expressing the EPO gene in mammalian host
cells and isolating the resulting EPO product." However, "it
is not essential for the inventor to be personally involved
in carrying out process steps ... where implementation of
those steps does not require the exercise of inventive
skill.");  In re DeBaun , 214 USPQ 933, 936 (CCPA 1982)
("there is no requirement that the inventor be the one to
reduce the invention to practice so long as the reduction to
practice was done on his behalf").

  See also Mattor v.  Coolegem , 189 USPQ 201, 204 (CCPA
1976) (one following oral instructions is viewed as merely a

technician);  Tucker  v.  Naito , 188 USPQ 260, 263 (Bd.
Pat. Inter. 1975) (inventors need not "personally construct
and test their invention");  Davis v.  Carrier , 28 USPQ
227, 229 (CCPA 1936) (noninventor's work was merely that of
a skilled mechanic carrying out the details of a plan
devised by another).

 REQUIREMENTS FOR JOINT INVENTORSHIP

  The inventive entity for a particular application is
based on some contribution to at least one of the claims
made by each of the named inventors. "Inventors may apply
for a patent jointly even though (1) they did not physically
work together or at the same time, (2) each did not make the
same type or amount of contribution, or (3) each did not
make a contribution to the subject matter of every claim of
the patent." 35 U.S.C. 116. "[T]he statute neither states
nor implies that two inventors can be `joint inventors' if
they have had no contact whatsoever and are completely
unaware of each other's work." What is required is some
"quantum of collaboration or connection." In other words,
"[f]or persons to be joint inventors under Section 116,
there must be some element of joint behavior, such as
collaboration  or  working  under  common  direction,  one
inventor seeing a relevant report and building upon it or
hearing another's suggestion at a meeting." Kimberly - Clark
Corp. v.  Procter & Gamble Distributing, 23 USPQ2d 1921,
1925 - 26 (Fed. Cir. 1992);  Moler  v.  Purdy, 131 USPQ 276,
279 (Bd. Pat. Inter. 1960) ("it is not necessary that the
inventive concept come to both [joint inventors] at the same
time").

 INVENTORSHIP IS GENERALLY "TO ANOTHER" WHERE THERE ARE
DIFFERENT INVENTIVE ENTITIES WITH AT LEAST ONE INVENTOR IN
COMMON

  "[A] joint application or patent and a sole application
or patent by one of the joint inventors are [by] different
legal entities and accordingly, the issuance of the earlier
filed application as a patent becomes a reference for
everything it discloses" ( Ex parte Utschig , 156 USPQ 156,
157 (Bd. App. 1966)) except where:

 (1)  the  claimed  invention  in  a  later  filed
application is entitled to the benefit of an earlier filed
application under 35 U.S.C. 120 (an overlap of inventors
rather than an identical inventive entity is permissible).
In this situation, a rejection under 35 U.S.C. 102(e) is
precluded. See Applied Materials Inc. v.  Gemini Research
Corp ., 15 USPQ2d 1816, 1818 (Fed. Cir. 1988) ("The fact
that an application has named a different inventive entity
than a patent does not necessarily make that patent prior
art."); and

 (2) the subject matter developed by another person
and the claimed subject matter were, at the time the
invention was made, owned by the same person or subject to
an obligation of assignment to the same person. In this
situation, a rejection under 35 U.S.C. 102(f) / 103 or
102(g) / 103 is precluded by ** 35 U.S.C. 103>(c)<.

  For case law relating to inventorship by "another"
involving different inventive entities with at least one
inventor in common see Ex parte DesOrmeaux, 25 USPQ2d 2040
(Bd. Pat. App. & Inter. 1992) (the presence of a common

inventor in a reference patent and a pending application
does not preclude the determination that the reference
inventive entity is to "another" within the meaning of 35
U.S.C. 102(e)) and the discussion of prior art available
under 35 U.S.C. 102(e) in MPEP § 2136.04.

2137.02  Applicability of 35 U.S.C. 103>(c)<** [R - 2]

  The  last  sentence  of  35  U.S.C.  103  states  that
subsection  (f)  of  35  U.S.C.  102  will  not  preclude
patentability where subject matter developed by another
person, that would otherwise qualify under subsection (f),
and  the  claimed  invention  of  an  application  under
examination were owned by the same person or subject to an
obligation of assignment to the same person at the time the
invention was made. See MPEP § 706.02(l) and § 2146.

2138  35 U.S.C. 102(g) [R - 1]

 >35 U.S.C. 102. Conditions for patentability; novelty and
loss of right to patent.

 A person shall be entitled to a patent unless - -

  *****

 (g) before the applicant's invention thereof the invention
was made in this country by another who had not abandoned,
suppressed, or concealed it. In determining priority of
invention there shall be considered not only the respective
dates  of  conception  and  reduction  to  practice  of  the
invention, but also the reasonable diligence of one who was
first to conceive and last to reduce to practice, from a
time prior to conception by the other.

  35 U.S.C. 102(g) issues such as conception, reduction to
practice and diligence, while more commonly applied to
interference matters, also arise in other contexts. New Idea
Farm Equipment Corp.  v.  Sperry Corp ., 916 F.2d 1561, 16
USPQ2d 1424, 1428 (Fed. Cir. 1990). For example, 35 U.S.C.
102(g) and 35 U.S.C. 103 have been combined in the context
of an ex parte rejection entirely divorced from the award of
priority in an interference.  In re Bass , 474 F.2d 1276,
177 USPQ 178, 183 (CCPA 1973) (in an unsuccessful attempt to
utilize a 37 CFR 1.131 affidavit relating to a combination
application, applicants admitted that the subcombination
screen of a copending application which issued as a patent
was earlier conceived than the combination). See also  Du
Pont de Nemours v.  Phillips Petroleum Co ., 849 F.2d 1430,
7 USPQ2d 1129, 1132 (Fed. Cir.),  cert. denied , 488 U.S.
986 (1988) (determining whether patent claims were novel
under 35 U.S.C. 102(g) in an infringement proceeding);  In
re Costello, et al., 717 F.2d 1346, 219 USPQ 389 (Fed. Cir.
1983)  (discussing  the  concepts  of  conception  and
constructive reduction to practice in the context of a
declaration under 37 CFR 1.131);  Kawai  v.  Metlesics , 480
F.2d 880, 178 USPQ 158 (CCPA 1973) (holding constructive
reduction to practice for priority under 35 U.S.C. 119
requires meeting the requirements of 35 U.S.C. 101 and 35
U.S.C. 112).<

2138.01  Interference Practice [R - 1]

 >35 U.S.C. 102(g) IS THE BASIS OF INTERFERENCE PRACTICE

  Subsection (g) of 35 U.S.C. 102 is the basis of
interference practice for determining priority of invention
between two parties. Bigham  v.  Godtfredsen , 857 F.2d
1415, 8 USPQ2d 1266, 1267 (Fed. Cir. 1988), 35 U.S.C. 135,
37 CFR 1.601+ and MPEP chapter 2300. An interference is an
inter partes proceeding directed at determining the first to
invent as among the parties to the proceeding, involving two
or more pending applications naming different inventors or
one or more pending applications and one or more unexpired
patents naming different inventors (37 CFR 1.601(i)). The
United States is unusual in having a first to invent rather
than a first to file system.  Paulik  v.  Rizkalla , 760
F.2d 1270, 226 USPQ 224, 225 (Fed. Cir. 1985) (reviews the
legislative  history  of  the  subsection  in  a  concurring
opinion by Judge Rich). The first of many to reduce an
invention to practice around the same time will be the sole
party to obtain a patent,  Radio Corporation of America v.
Radio Engineering Laboratories, Inc. , 21 USPQ 353, 353 - 4
(1934), unless another was the first to conceive and couple
a later - in - time reduction to practice with diligence
from a time just prior to when the second conceiver entered
the field to the first conceiver's reduction to practice.
Hull  v.  Davenport, 33 USPQ 506, 508 (CCPA 1937). See the
priority time charts below illustrating this point. Upon
conclusion of an interference, subject matter claimed by the
losing party that was the basis of the interference is
rejected under 35 U.S.C. 102(g), unless the acts showing
prior invention were not in this country.

  It is noted that 35 U.S.C. 101 requires that whoever
invents or discovers is the party who may obtain a patent
for the particular invention or discovery. 35 U.S.C. 111
(applicant) or 35 U.S.C. 116 (applicants) set forth the
requirement that the actual inventor(s) be the party who
applies for a patent or that a patent be applied for on
behalf of the inventor. Where it can be shown that an
applicant  has  "derived"  an  invention  from  another,  a
rejection under 35 U.S.C. 102(f) is proper. Ex parte Kusko,
215 USPQ 972, 974 (Bd. App. 1981) ("most, if not all,
determinations under Section 102(f) involve the question of
whether one party derived an invention from another"). Price
v. Symsek, 26 USPQ2d 1031,1033 (Fed. Cir. 1993) (Although
derivation  and  priority  of  invention  both  focus  on
inventorship, derivation addresses originality, i.e., who
invented the subject matter, whereas priority focuses on
which party invented the subject matter first.).

 PRIORITY TIME CHARTS

  The following priority time charts illustrate the award
of invention priority in several situations. The time charts
apply to interference proceedings and are also applicable to
declarations or affidavits filed under 37 CFR 1.131 to
antedate references which are available as prior art under
35 U.S.C. 102(a) or 102(e). Note, however, in the context of
37 CFR 1.131, an applicant does not have to show that the
invention was not abandoned, suppressed, or concealed from
the  time  of  an  actual  reduction  to  practice  to  a
constructive reduction to practice because the length of
time taken to file a patent application after an actual
reduction to practice is generally of no consequence except
in an interference proceeding. Paulik  v.  Rizkalla, 226
USPQ  224  (Fed.  Cir.  1985).  See  the  discussion  of
abandonment, suppression, and concealment in MPEP § 2138.03.

  For purposes of analysis under 37 CFR 1.131, the
conception and reduction to practice of the reference to be
antedated are both considered to be on the effective filing
date of domestic patent or foreign patent or the date of
printed publication.

  In the charts, C = conception, R = reduction to practice
(either actual or constructive), Ra = actual reduction to
practice, Rc = constructive reduction to practice, and T  =
  D 
commencement of diligence.

 I.

  C Rc

  - -- - -- END - -- - --  C R

  A is awarded priority in an interference, or antedates B
as a reference in the context of a declaration or affidavit
filed under 37 CFR 1.131, because A conceived the invention
before  B  and  constructively  reduced  the  invention  to
practice before B reduced the invention to practice. The
same result would be reached if the conception date was the
same for both inventors A and B.

 II.

  C T  Rc C R
  D 

  A is awarded priority in an interference, or antedates B
as a reference in the context of a declaration or affidavit
filed under 37 CFR 1.131, if A can show reasonable diligence
from T  (a point just prior to B's conception) until Rc
  D 
because A conceived the invention before B, and diligently
constructively reduced the invention to practice even though
this was after B reduced the invention to practice.

 III.

  C Ra Rc  C R

  A is awarded priority in an interference in the absence
of abandonment, suppression, or concealment from Ra to Rc,
because A conceived the invention before B, actually reduced
the invention to practice before B reduced the invention to
practice, and did not abandon, suppress, or conceal the
invention after actually reducing the invention to practice
and  before  constructively  reducing  the  invention  to
practice.

  A antedates B as a reference in the context of a
declaration or affidavit filed under 37 CFR 1.131 because A
conceived the invention before B and actually reduced the
invention to practice before B reduced the invention to
practice.

 IV.

  C T  Rc C R
  D 

  A is awarded priority in an interference if A can show
reasonable diligence from T  (a point just prior to B's
 D 

conception)  until  Ra  in  the  absence  of  abandonment,
suppression,  or  concealment  from  Ra  to  Rc,  because  A
conceived  the  invention  before  B,  diligently  actually
reduced the invention to practice (after B reduced the
invention to practice), and did not abandon, suppress, or
conceal the invention after actually reducing the invention
to practice and before constructively reducing the invention
to practice.

  A antedates B as a reference in the context of a
declaration or affidavit filed under 37 CFR 1.131 because A
conceived the invention before B, and diligently actually
reduced the invention to practice, even though this was
after B reduced the invention to practice.

 37 CFR 1.131 DOES NOT APPLY IN INTERFERENCE PROCEEDINGS

  Interference practice operates to the exclusion of ex
parte practice under 37 CFR 1.131 which permits an applicant
to show an actual date of invention prior to the effective
date of a patent or literature reference applied under 35
U.S.C. 102(a) or (e), as long as the patent is not a
domestic patent claiming the same patentable invention.  Ex
parte Standish , 10 USPQ2d 1454, 1457 (Bd. Pat. App. &
Inter. 1988) (An application claim to the "same patentable
invention"  claimed  in  a  domestic  patent  requires
interference rather than an affidavit under 37 CFR 1.131 to
antedate the patent. The term "same patentable invention"
encompasses a claim that is either anticipated by or obvious
in view of the subject matter recited in the patent claim.).
Subject matter which is available as prior art only under 35
U.S.C. 102(g) is by definition made before the applicant
made his invention and is therefore not open to further
inquiry under 37 CFR 1.131.

 LOST COUNTS IN AN INTERFERENCE ARE NOT, PER SE, STATUTORY
PRIOR ART

  Loss of an interference count alone does not make its
subject matter statutory prior art to losing party; however,
lost count subject matter that is available as prior art
under 35 U.S.C. 102 may be used alone or in combination with
other references under 35 U.S.C. 103. But see  In re Deckler
, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992) (Under the
principles of  res judicata and  collateral estoppel ,
Deckler was not entitled to claims that were patentably
indistinguishable from the claim lost in interference even
though  the  subject  matter  of  the  lost  count  was  not
available for use in an obviousness rejection under 35
U.S.C. 103.).<

2138.02  "The Invention Was Made in This Country" [R - 1]

  >An invention is made when there is a conception and a
reduction to practice. Dunn  v.  Ragin , 50 USPQ 472, 474
(Bd. Pat. Inter. 1941). Prior art under subsection (g) is
limited to an invention that is made.  In re Katz , 687 F.2d
450, 215 USPQ 14, 17 (CCPA 1982) (the publication of an
article, alone, is not deemed a constructive reduction to
practice, and therefore its disclosure does not prove that
any invention within the meaning of subsection (g) has ever
been made).

  Subject matter under subsection (g) is available only if
made in this country. 35 U.S.C. 104. Kondo v.  Martel, 220

USPQ  47  (Bd.  Pat.  Inter.  1983)  (acts  of  conception,
reduction to practice and diligence must be demonstrated in
this country). Compare  Colbert v.  Lofdahl , 21 USPQ2d
1068,  1071  (Bd.  Pat.  App.  &  Inter.  1991)  ("[i]f  the
invention is reduced to practice in a foreign country and
knowledge of the invention was brought into this country and
disclosed to others, the inventor can derive no benefit from
the work done abroad and such knowledge is merely evidence
of conception of the invention").

  Note, however, that 35 U.S.C. 104, as amended by GATT
(Public Law 103 - 465, 108 Stat. 4809 (1994)) and NAFTA
(Public Law 103 - 182, 107 Stat. 2057 (1993)), provides that
an applicant can establish a date of invention in a NAFTA
member country on or after December 8, 1993 or in WTO member
country other than a NAFTA member country on or after
January 1, 1996. Accordingly, an interference count may be
won or lost on the basis of establishment of invention by
one of the parties in a NAFTA or WTO member country, thereby
rendering the subject matter of that count unpatentable to
the other party under the principles of res judicata and
collateral estoppel, even though such subject matter is not
available as statutory prior art under 35 U.S.C. 102(g). See
MPEP § 2138.01 regarding lost interference counts which are
not statutory prior art.<

2138.03  "By Another Who Has Not Abandoned, Suppressed, or
Concealed It" [R - 1]

  >35 U.S.C. 102(g) generally makes available as prior art
within the meaning of 35 U.S.C. 103, the prior invention of
another who has not abandoned, suppressed or concealed it.
In re Bass , 474 F.2d 1276, 177 USPQ 178 (CCPA 1973)). See
also MPEP § 2332.  In re Suska , 589 F.2d 527, 200 USPQ 497
(CCPA 1979) (The result of applying the suppression and
concealment doctrine is that the inventor who did not
conceal (but was the  de facto last inventor) is treated
legally as the first to invent, while the  de facto first
inventor who suppressed or concealed is treated as a later
inventor. The  de facto first inventor, by his suppression
and concealment, lost the right to rely on his actual date
of invention not only for priority purposes, but also for
purposes of avoiding the invention of the counts as prior
art.).

  "The courts have consistently held that an invention,
though  completed,  is  deemed  abandoned,  suppressed,  or
concealed if, within a reasonable time after completion, no
steps are taken to make the invention publicly known. Thus
failure to file a patent application; to describe the
invention in a publicly disseminated document; or to use the
invention  publicly,  have  been  held  to  constitute
abandonment, suppression, or concealment." Correge  v  .
Murphy  ,  217  USPQ  753,  756  (Fed.  Cir.  1983)  quoting
International Glass Co. v.  United States , 408 F.2d 395,
159 USPQ 434, 441 (Ct. Cl. 1969) (An invention was actually
reduced to practice, 7 months later there was a public
disclosure of the invention, and 8 months thereafter a
patent application was filed. The court held filing a patent
application within 1 year of a public disclosure is not an
unreasonable delay, therefore reasonable diligence must only
be shown between the date of the actual reduction to
practice and the public disclosure to avoid the inference of
abandonment.).

  DURING  AN  INTERFERENCE  PROCEEDING,  AN  INFERENCE  OF
SUPPRESSION OR CONCEALMENT MAY ARISE FROM DELAY IN FILING
PATENT APPLICATION

  Once an invention is actually reduced to practice an
inventor  need  not  rush  to  file  a  patent  application.
Shindelar  v.  Holdeman , 207 USPQ 112, 116 (CCPA 1980). The
length of time taken to file a patent application after an
actual reduction to practice is generally of no consequence
except in an interference proceeding.  Paulik  v.  Rizkalla
, 226 USPQ 225, 226 (Fed. Cir. 1985) (suppression or
concealment may be deliberate or may arise due to an
inference from a "too long" delay in filing a patent
application).  Peeler  v.  Miller , 190 USPQ 117,124 (CCPA
1976) ("mere delay, without more, is not sufficient to
establish suppression or concealment." "What we are deciding
here is that Monsanto's delay is not `merely delay' and that
Monsanto's justification for the delay is inadequate to
overcome  the  inference  of  suppression  created  by  the
excessive delay." The word "mere" does not imply a total
absence of a limit on the duration of delay. Whether any
delay is "mere" is decided only on a case - by - case
basis.)

  Where a junior party in an interference relies upon an
actual  reduction  to  practice  to  demonstrate  first
inventorship, and where the hiatus in time between the date
for the junior party's asserted reduction to practice and
the filing of its application is unreasonably long, the
hiatus may give rise to an inference that the junior party
in fact suppressed or concealed the invention and the junior
party will not be allowed to rely upon the earlier actual
reduction to practice. Young  v.  Dworkin , 180 USPQ 388,
n.3 and 391 (CCPA 1974) (suppression and concealment issues
are to be addressed on a case - by - case basis).

 SUPPRESSION OR CONCEALMENT NEED NOT BE ATTRIBUTED TO
INVENTOR

  Suppression or concealment need not be attributed to the
inventor. Peeler  v.  Miller , 190 USPQ 117, 122 (CCPA 1976)
("four year delay from the time an inventor ... completes
his work ... and the time his assignee - employer files a
patent application is,  prima facie , unreasonably long in
an interference with a party who filed first");  Shindelar
v.  Holdeman207 USPQ 112, 116 - 17 (CCPA 1980) (A patent
attorney's workload will not preclude a holding of an
unreasonable delay-a total of 3 months was identified as
possible  of  excuse  in  regard  to  the  filing  of  an
application.).

 INFERENCE OF SUPPRESSION OR CONCEALMENT IS REBUTTABLE

  Notwithstanding a finding of suppression or concealment,
a  constructive  reduction  to  practice  such  as  renewed
activity just prior to other party's entry into field
coupled with the diligent filing of an application would
still cause the junior party to prevail. Lutzker v.  Plet ,
6 USPQ2d 1370, 1371 - 72 (Fed. Cir. 1988) (activities
directed towards commercialization not sufficient to rebut
inference);  Holmwood  v. Cherpeck, 2 USPQ2d 1942, 1945 (Bd.
Pat. App. & Inter. 1986) (the inference of suppression or
concealment may be rebutted by showing activity directed to
perfecting the invention, preparing the application, or
preparing other compounds within the scope of the generic

invention);  Engelhardt  v. Judd, 151 USPQ 732, 735 (CCPA
1966) ("We recognize that an inventor of a new series of
compounds  should  not  be  forced  to  file  applications
piecemeal  on  each  new  member  as  it  is  synthesized,
identified and tested for utility. A reasonable amount of
time should be allowed for completion of the research
project on the whole series of new compounds, and a further
reasonable time period should then be allowed for drafting
and filing the patent application(s) thereon");  Bogoslowsky
v.  Huse , 61 USPQ 349, 351 (CCPA 1944) (The doctrine of
suppression and concealment is not applicable to conception
without an actual reduction to practice.).

 ABANDONMENT

  A finding of suppression or concealment may not amount
to a finding of abandonment wherein a right to a patent is
lost. Steierman  v.  Connelly , 197 USPQ 288, 289 (Comm'r
Pat. 1976);  Correge  v.  Murphy , 217 USPQ 753, 755 (Fed.
Cir. 1983) (an invention cannot be abandoned until it is
first reduced to practice).<

2138.04  "Conception" [R - 1]

  >Conception  has  been  defined  as  "the  complete
performance of the mental part of the inventive act" and it
is "the formation in the mind of the inventor of a definite
and permanent idea of the complete and operative invention
as it is thereafter to be applied in practice ... ."
Townsend  v.  Smith  ,  4  USPQ  269,271  (CCPA  1930).
"[C]onception is established when the invention is made
sufficiently clear to enable one skilled in the art to
reduce it to practice without the exercise of extensive
experimentation or the exercise of inventive skill."  Hiatt
v.  Ziegler , 179 USPQ 757,763 (Bd. Pat. Inter. 1973).
Conception has also been defined as a disclosure of an
invention which enables one skilled in the art to reduce the
invention to a practical form without "exercise of the
inventive faculty."  Gunter v. Stream , 197 USPQ 482 (CCPA
1978). See also  Coleman  v. Dines , 224 USPQ 857 (Fed. Cir.
1985) (It is settled that in establishing conception a party
must show possession of every feature recited in the count,
and that every limitation of the count must have been known
to the inventor at the time of the alleged conception.
Conception  must  be  proved  by  corroborating  evidence.);
Hybritech Inc.  v.  Monoclonal Antibodies Inc. , 802 F. 2d
1367, 1376, 231 USPQ 81, 87 (Fed. Cir. 1986) (Conception is
the "formation in the mind of the inventor, of a definite
and permanent idea of the complete and operative invention,
as it is hereafter to be applied in practice.").

 CONCEPTION MUST BE DONE IN THE MIND OF THE INVENTOR

  The inventor must form a definite and permanent idea of
the complete and operable invention to establish conception.
Bosies  v.  Benedict , 30 USPQ2d 1862, 1865 (Fed. Cir. 1994)
(Testimony by a noninventor as to the meaning of a variable
of a generic compound described in an inventor's notebook
was insufficient as a matter of law to establish the meaning
of the variable because the testimony was not probative of
what the inventors conceived.).

 AS LONG AS THE INVENTOR MAINTAINS INTELLECTUAL DOMINATION
OVER MAKING THE INVENTION, IDEAS, SUGGESTIONS, AND MATERIALS
MAY BE ADOPTED FROM OTHERS

  An inventor may consider and adopt ideas, suggestions
and materials derived from many sources: a suggestion from
an employee, a hired consultant or a friend even if the
adopted material proves to be the key that unlocks the
problem so long as the inventor "maintains intellectual
domination of the work of making the invention down to the
successful testing, selecting or rejecting ... ."  Morse  v.
Porter  ,  155  USPQ  280,  283  (Bd.  Pat.  Inter.  1965);
Staehelin  v.  Secher, 24 USPQ2d 1513,1522 (Bd. Pat. App. &
Inter. 1992) ("evidence of conception naming only one of the
actual inventive entity inures to the benefit of and serves
as  evidence  of  conception  by  the  complete  inventive
entity").

  CONCEPTION  REQUIRES  CONTEMPORANEOUS  RECOGNITION  AND
APPRECIATION OF THE INVENTION

  There  must  be  a  contemporaneous  recognition  and
appreciation of the invention for there to be conception.
Silvestri  v.  Grant , 181 USPQ 706,708 (CCPA 1974) ("an
accidental and unappreciated duplication of an invention
does not defeat the patent right of one who, though later in
time was the first to recognize that which constitutes the
inventive subject matter");  Langer  v.  Kaufman , 175 USPQ
172,174 (CCPA 1972) (new form of catalyst was not recognized
when it was first produced; conception cannot be established
nunc pro tunc ). However, an inventor does not need to know
that the invention will work for there to be complete
conception.  Burroughs Wellcome Co.  v.  Barr Labs. Inc .,
32  USPQ2d  1915,  1919  (Fed.  Cir.  1994)  (Draft  patent
application disclosing treatment of AIDS with AZT reciting
dosages, forms, and routes of administration was sufficient
to collaborate conception whether or not the inventors
believed  the  inventions  would  work  based  on  initial
screening tests.).

  While conception of a species within a genus may
constitute  conception  of  the  genus,  conception  of  one
species and the genus may not constitute conception of
another species in the genus. Oka  v.  Youssefyeh , 7 USPQ2d
1169 (Fed. Cir. 1988) (conception of a chemical requires
both  the  idea  of  the  structure  of  the  chemical  and
possession of an operative method of making it). See also
Amgen  v. Chugai , 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (in
the isolation of a gene, defining a gene by its principal
biological property is not sufficient for conception absent
an ability to envision the detailed constitution as well as
a method for obtaining it);  Fiers  v.  Revel (formerly
Sugano), 25 USPQ2d 1601, 1605 (Fed. Cir. 1993) ("[b]efore
reduction to practice, conception only of a process for
making a substance, without conception of a structural or
equivalent  definition  of  that  substance,  can  at  most
constitute a conception of the substance claimed as a
process" but cannot constitute conception of the substance;
as "conception is not enablement," conception of a purified
DNA sequence coding for a specific protein by function and a
method for its isolation that could be carried out by one of
ordinary  skill  in  the  art  is  not  conception  of  that
material).

  On rare occasions conception and reduction to practice
occur simultaneously. Alpert  v.  Slatin , 134 USPQ 296, 299
(CCPA 1962). "[I]n some unpredictable areas of chemistry and
biology, there is no conception until the invention has been

reduced to practice."  MacMillan v.  Moffett , 167 USPQ 550,
552 - 553 (CCPA 1970). See also  Dunn  v.  Ragin , 50 USPQ
472, 475 (Bd. Pat. Inter. 1941) (a new variety of asexually
reproduced plant is conceived and reduced to practice when
it is grown and recognized as a new variety). Under these
circumstances, conception is not complete if subsequent
experimentation  reveals  factual  uncertainty  which  "so
undermines the specificity of the inventor's idea that it is
not yet a definite and permanent reflection of the complete
invention as it will be used in practice."  Burroughs
Wellcome Co.  v.  Barr Labs. Inc. , 32 USPQ2d 1915, 1920
(Fed. Cir. 1994).

 A PREVIOUSLY ABANDONED APPLICATION WHICH WAS NOT COPENDING
WITH A SUBSEQUENT APPLICATION IS EVIDENCE ONLY OF CONCEPTION

  An  abandoned  application  with  which  no  subsequent
application was copending serves to abandon benefit of the
application's filing as a constructive reduction to practice
and  the  abandoned  application  is  evidence  only  of
conception. In re Costello , 219 USPQ 389, 392 (Fed. Cir.
1983).<

2138.05  "Reduction to Practice" [R - 1]

  >Reduction to practice may be an actual reduction or a
constructive reduction to practice, i.e., filing of a patent
application. Dunn  v.  Ragin , 50 USPQ 472, 474 (Bd. Pat.
Inter. 1941) (asexually reproduced plants require an actual
reduction to practice). A reduction to practice can be done
by another on behalf of the inventor.  De Solms  v.
Schoenwald , 15 USPQ2d 1507, 1510 (Bd. Pat. App. & Inter.
1990).  "While  the  filing  of  the  original  application
theoretically  constituted  a  constructive  reduction  to
practice at the time, the subsequent abandonment of that
application also resulted in an abandonment of the benefit
of that filing as a constructive reduction to practice. The
filing of the original application is, however, evidence of
conception of the invention.  In re Costello , 219 USPQ 389,
392 (Fed. Cir. 1983).

 CONSTRUCTIVE REDUCTION TO PRACTICE REQUIRES COMPLIANCE WITH
35 U.S.C. 112, FIRST PARAGRAPH

  Proof of a constructive reduction to practice requires
sufficient disclosure under the "how to use" and "how to
make" requirements of 35 U.S.C. 112, first paragraph. Kawai
v.  Metlesics  ,  178  USPQ  158,  163  (CCPA  1973)  (A
constructive reduction to practice is not proven unless the
specification discloses a practical utility where one would
not be obvious. Prior art which disclosed an anticonvulsant
compound which differed from the claimed compound only in
the absence of a - CH<SB:0.039>2 - group connecting two
functional groups was not sufficient to establish utility of
the claimed compound because the compounds were not so
closely related that they could be presumed to have the same
utility.). See also  Bigham  v.  Godtfredsen , 8 USPQ2d
1266, 1268 (Fed. Cir. 1988) ("[t]he generic term halogen
comprehends a limited number of species, and ordinarily
constitutes a sufficient written description of the common
halogen species," except where the halogen species are
patentably distinct).

  The  first  conceiver  may  rely  on  earlier  filed
applications under 35 U.S.C. 120 ( Ginos  v.  Nedelec , 220

USPQ 831, 833 (Bd. Pat. Inter. 1983)) provided the earlier
application satisfies 35 U.S.C. 112, first paragraph (  Suh
v.  Hoefle , 23 USPQ2d 1321, 1325 (Bd. Pat. App. & Inter.
1992)).

 REQUIREMENTS TO ESTABLISH ACTUAL REDUCTION TO PRACTICE

  The  same  evidence  sufficient  for  a  constructive
reduction to practice may be insufficient to establish an
actual reduction to practice, which requires a showing of
the invention in a physical or tangible form that shows
every element of the count. Wetmore  v.  Quick , 190 USPQ
223, 227 (CCPA 1976). For an actual reduction to practice,
the  invention  must  have  been  sufficiently  tested  to
demonstrate that it will work for its intended purpose, but
it need not be in a commercially satisfactory stage of
development. If a device is so simple, and its purpose and
efficacy so obvious, construction alone is sufficient to
demonstrate workability.  King Instrument Corp.  v.  Otari
Corp ., 226 USPQ 402, 407 (Fed. Cir. 1985).

  For additional cases pertaining to the requirements
necessary to establish actual reduction to practice see DSL
Dynamic Sciences Ltd.  v.  Union Switch & Signal,18 USPQ2d
1152, 1155 (Fed. Cir. 1991) ("events occurring after an
alleged actual reduction to practice can call into question
whether reduction to practice has in fact occurred.");
Corona  v.  Dovan , 273 U.S. 692, 1928 CD 252 (1928) ("A
process is reduced to practice when it is successfully
performed. A machine is reduced to practice when it is
assembled, adjusted and used. A manufacture [i.e., article
of manufacture] is reduced to practice when it is completely
manufactured. A composition of matter is reduced to practice
when it is completely composed." 1928 C.D. at 262 - 263
(emphasis added).);  Fitzgerald  v.  Arbib , 122 USPQ 530,
531 - 32 (CCPA 1959) ("the reduction to practice of a three
- dimensional design invention requires the production of an
article  embodying  that  design"  in  "other  than  a  mere
drawing").

 TESTING REQUIRED TO ESTABLISH AN ACTUAL REDUCTION TO
PRACTICE

  "The nature of testing which is required to establish a
reduction to practice depends on the particular facts of
each case, especially the nature of the invention." Gellert
v.  Wanberg , 181 USPQ 648, 652 (CCPA 1974) ("an invention
may be tested sufficiently ... where less than all of the
conditions of actual use are duplicated by the tests");
Wells  v.  Fremont , 177 USPQ 22, 24 - 5 (Bd. Pat. Inter.
1972) ("even where tests are conducted under `bench' or
laboratory  conditions,  those  conditions  must  `fully
duplicate each and every condition of actual use' or if they
do not, then the evidence must establish a relationship
between the subject matter, the test condition and the
intended functional setting of the invention," but it is not
required that all the conditions of all actual uses be
duplicated, such as rain, snow, mud, dust and submersion in
water).

 REDUCTION TO PRACTICE REQUIRES RECOGNITION AND APPRECIATION
OF THE INVENTION

  The invention must be recognized and appreciated for a
reduction to practice to occur. Alsenz  v.  Hargraves , 13

USPQ2d 1371, 1374 (Bd. Pat. App. & Int. 1989) (a reduction
to  practice  cannot  be  established  nunc  pro  tunc  );
Meitzner  v.  Corte , 190 USPQ 407, 410 (CCPA 1976) (there
can be no conception or reduction to practice of a new form
or of a process using such a new form of an otherwise old
composition  where  there  has  been  no  recognition  or
appreciation of the existence of the new form);  Parker  v.
Frilette , 174 USPQ 321, 324 (CCPA 1972) ("[an] inventor
need not understand precisely why his invention works in
order to achieve an actual reduction to practice").

 IN AN INTERFERENCE PROCEEDING, ALL LIMITATIONS OF A COUNT
MUST BE REDUCED TO PRACTICE

  The device reduced to practice must include every
limitation of the count. Fredkin  v.  Irasek , 397 F.2d 342,
158 USPQ 280, 285 (CCPA 1968); every limitation in a count
is material and must be proved to establish an actual
reduction to practice.  Meitzner  v.  Corte , 190 USPQ 407,
410. See also  Hull  v.  Bonis , 214 USPQ 731, 734 (Bd. Pat.
Inter.  1982)  (no  doctrine  of  equivalents-remedy  is  a
preliminary motion to amend the count to conform to the
proofs).

 CLAIMED INVENTION IS NOT ACTUALLY REDUCED TO PRACTICE
UNLESS THERE IS A KNOWN UTILITY

  Utility for the invention must be known at the time of
the reduction to practice. Wiesner  v.  Weigert , 212 USPQ
721,  726  (CCPA  1981)  (except  for  plant  and  design
inventions);  Azar  v.  Burns , 188 USPQ 601, 604 (Bd. Pat.
Inter. 1975) (a composition and a method cannot be actually
reduced to practice unless the composition and the product
produced by the method have a practical utility);  Ciric  v.
Flanigen , 185 USPQ 103, 105 - 6 (CCPA 1975) ("when a count
does  not  recite  any  particular  utility,  evidence
establishing  a  substantial  utility  for  any  purpose  is
sufficient  to  prove  a  reduction  to  practice";  "the
demonstrated  similarity  of  ion  exchange  and  adsorptive
properties between the newly discovered zeolites and known
crystalline zeolites ... have established utility for the
zeolites of the count");  Engelhardt  v.  Judd , 151 USPQ
732, 735 (CCPA 1966) (When considering an actual reduction
to  practice  as  a  bar  to  patentability  for  claims  to
compounds, it is sufficient to successfully demonstrate
utility of the compounds in animals for somewhat different
pharmaceutical  purposes  than  those  asserted  in  the
specification  for  humans.);  Rey  -  Bellet  v.
Engelhardt,181 USPQ 453, 455 (CCPA 1974) (Two categories of
tests on laboratory animals have been considered adequate to
show utility and reduction to practice: first, tests carried
out to prove utility in humans where there is a satisfactory
correlation between humans and animals, and second, tests
carried out to prove utility for treating animals.).

 A PROBABLE UTILITY MAY NOT BE SUFFICIENT TO ESTABLISH
UTILITY

  A probable utility does not establish a practical
utility, which is established by actual testing or where the
utility can be "foretold with certainty." Bindra  v.  Kelly
, 206 USPQ 570, 575 (Bd. Pat. Inter. 1979) (Reduction to
practice was not established for an intermediate useful in
the preparation of a second intermediate with a known
utility in the preparation of a pharmaceutical. The record

established there was a high degree of probability of a
successful preparation because one skilled in the art may
have been motivated, in the sense of 35 U.S.C. 103, to
prepare  the  second  intermediate  from  the  first  inter
mediate. However, a strong probability of utility is not
sufficient to establish practical utility.);  Wu  v.  Jucker
, 167 USPQ 467, 472 (Bd. Pat. Inter. 1968) (screening test
where  there  was  an  indication  of  possible  utility  is
insufficient  to  establish  practical  utility).  But  see
Nelson  v.  Bowler , 206 USPQ 881, 885 (CCPA 1980) (Relevant
evidence is judged as a whole for its persuasiveness in
linking observed properties to suggested uses. Reasonable
correlation between the two is sufficient for an actual
reduction to practice.).<

2138.06  "Reasonable Diligence" [R - 1]

  >The diligence of 35 U.S.C. 102(g) relates to reasonable
"attorney - diligence" and "engineering - diligence" (
Keizer  v.  Bradley , 123 USPQ 215, 216 (CCPA 1959)), which
does not require that "an inventor or his attorney ... drop
all other work and concentrate on the particular invention
involved ... ."  Emery  v.  Ronden , 188 USPQ 264, 268 (Bd.
Pat. Inter. 1974).

 CRITICAL PERIOD FOR ESTABLISHING DILIGENCE BETWEEN ONE WHO
WAS FIRST TO CONCEIVE BUT LATER TO REDUCE TO PRACTICE THE
INVENTION

  The critical period for diligence for a first conceiver
but second reducer begins not at the time of conception of
the first conceiver but just prior to the entry in the field
of the party who was first to reduce to practice and
continues until the first conceiver reduces to practice.
Hull  v.  Davenport , 33 USPQ 506, 508 (CCPA 1937) ("lack of
diligence  from  the  time  of  conception  to  the  time
immediately preceding the conception date of the second
conceiver is not regarded as of importance except as it may
have a bearing upon his subsequent acts"). What serves as
the entry date into the field of a first reducer is
dependent upon what is being relied on by the first reducer,
e.g., conception plus reasonable diligence to reduction to
practice (  Fritsch  v.  Lin , 21 USPQ2d 1731, 1734 (Bd.
Pat. App. & Inter. 1991), (  Emery  v.  Ronden , 188 USPQ
264, 268 (Bd. Pat. Inter. 1974); an actual reduction to
practice or a constructive reduction to practice by the
filing of either a U.S. application (  Rebstock  v.  Flouret
, 191 USPQ 342, 345 (Bd. Pat. Inter. 1975)) or reliance upon
priority under 35 U.S.C. 119 of a foreign application (
Justus  v.  Appenzeller , 177 USPQ 332, 339 (Bd. Pat. Inter.
1971) (chain of priorities under 35 U.S.C. 119 and 120,
priority under 35 U.S.C. 119 denied for failure to supply
certified copy of the foreign application during pendency of
the application filed within the twelfth month)).

 THE ENTIRE PERIOD DURING WHICH DILIGENCE IS REQUIRED MUST
BE ACCOUNTED FOR BY EITHER AFFIRMATIVE ACTS OR ACCEPTABLE
EXCUSES

  An applicant must account for the entire period during
which diligence is required. Gould  v.  Schawlow , 150 USPQ
634, 643 (CCPA 1966) (Merely stating that there were no
weeks or months that the invention was not worked on is not
enough.);  In re Harry , 142 USPQ 164, 166 (CCPA 1964)
(statement that the subject matter "was diligently reduced

to practice" is not a showing but a mere pleading). A 2 -
day period lacking activity has been held to be fatal.  In
re Mulder , 219 USPQ 189, 193 (Fed. Cir. 1983) (37 CFR 1.131
issue);  Fitzgerald  v.  Arbib , 122 USPQ 530, 532 (CCPA
1959) (Less than 1 month of inactivity during critical
period. Efforts to exploit an invention commercially do not
constitute diligence in reducing it to practice. An actual
reduction to practice in the case of a design for a three -
dimensional article requires that it should be embodied in
some structure other than a mere drawing.);  Kendall  v.
Searles , 81 USPQ 363,369 (CCPA 1949) (Diligence requires
that applicants must be specific as to dates and facts.);

  The period during which diligence is required must be
accounted for by either affirmative acts or acceptable
excuses. Rebstock  v.  Flouret , 191 USPQ 342, 345 (Bd. Pat.
Inter. 1975);  Rieser  v.  Williams , 118 USPQ 96,100 (CCPA
1958) (Being last to reduce to practice, party cannot
prevail unless he has shown that he was first to conceive
and  that  he  exercised  reasonable  diligence  during  the
critical period from just prior to opponent's entry into the
field);  Griffith  v.  Kanamaru , 2 USPQ2d 1361 (Fed. Cir.
1987)  (Court  generally  reviewed  cases  on  excuses  for
inactivity including vacation extended by ill health and
daily job demands, and held lack of university funding and
personnel are not acceptable excuses);  Litchfield  v.
Eigen , 190 USPQ 113 (CCPA 1976) (budgetary limits and
availability  of  animals  for  testing  not  sufficiently
described);  Morway  v.  Bondi , 97 USPQ 318,323 (CCPA 1953)
(voluntarily laying aside inventive concept in pursuit of
other  projects  is  generally  not  an  acceptable  excuse
although there may be circumstances creating exceptions);
Anderson  v.  Crowther,152 USPQ 504, 512 (Bd. Pat. Inter.
1965) (preparation of routine periodic reports covering all
accomplishments  of  the  laboratory  insufficient  to  show
diligence);  Wu  v.  Jucker , 167 USPQ 467, 472 - 73 (Bd.
Pat. Inter. 1968) (applicant improperly allowed test data
sheets to accumulate to a sufficient amount to justify
interfering with equipment then in use on another project);
Tucker  v.  Natta , 171 USPQ 494,498 (Bd. Pat. Inter. 1971)
("[a]ctivity directed toward the reduction to practice of a
genus does not establish,  prima facie , diligence toward
the reduction to practice of a species embraced by said
genus");  Justus  v.  Appenzeller , 177 USPQ 332, 340 - 1
(Bd.  Pat.  Inter.  1971)  (Although  it  is  possible  that
patentee could have reduced the invention to practice in a
shorter time by relying on stock items rather than by
designing a particular piece of hardware, patentee exercised
reasonable diligence to secure the required hardware to
actually reduce the invention to practice. "[I]n deciding
the question of diligence it is immaterial that the inventor
may not have taken the expeditious course ... .").

 WORK RELIED UPON TO SHOW REASONABLE DILIGENCE MUST BE
DIRECTLY RELATED TO THE REDUCTION TO PRACTICE

  The work relied upon to show reasonable diligence must
be directly related to the reduction to practice of the
invention in issue. Naber  v.  Cricchi , 196 USPQ 294,296
(CCPA 1977),  cert. denied , 439 U.S. 826 (1978). "[U]nder
some circumstances an inventor should also be able to rely
on  work  on  closely  related  inventions  as  support  for
diligence toward the reduction to practice on an invention
in issue."  Ginos  v.  Nedelec , 220 USPQ 831, 836 (Bd. Pat.
Inter. 1983) (work on other closely related compounds that

were considered to be part of the same invention and which
were included as part of a grandparent application). "The
work relied upon must be directed to attaining a reduction
to practice of the subject matter of the counts. It is not
sufficient that the activity relied on concerns related
subject matter."  Gunn  v.  Bosch , 181 USPQ 758, 761 (Bd.
Pat. Inter. 1973) (An actual reduction to practice of the
invention at issue which occurred when the inventor was
working on a different invention "was fortuitous, and not
the result of a continuous intent or effort to reduce to
practice the invention here in issue. Such fortuitousness is
inconsistent with the exercise of diligence toward reduction
to  practice  of  that  invention."  181  USPQ  at  761.
Furthermore, evidence drawn towards work on improvement of
samples or specimens generally already in use at the time of
conception that are but one element of the oscillator
circuit of the count does not show diligence towards the
construction  and  testing  of  the  overall  combination.);
Broos  v.  Barton  ,  61  USPQ  447,  448  (CCPA  1944)
(preparation of application in U.S. for foreign filing
constitutes diligence);  De  Solms  v.  Schoenwald , 15
USPQ2d 1507 (Bd. Pat. App. & Inter. 1990) (principles of
diligence  must  be  given  to  inventor's  circumstances
including  skill  and  time;  requirement  of  corroboration
applies only to testimony of inventor);  Huelster  v.
Reiter , 78 USPQ 82 (CCPA 1948) (if inventor was not able to
make an actual reduction to practice of the invention, he
must also show why he was not able to constructively reduce
the invention to practice by the filing of an application).

  DILIGENCE  REQUIRED  IN  PREPARING  AND  FILING  PATENT
APPLICATION

  The diligence of attorney in preparing and filing patent
application  inures  to  the  benefit  of  the  inventor.
Conception was established at least as early as the date a
draft of a patent application was finished by a patent
attorney on behalf of the inventor. Conception is less a
matter of signature than it is one of disclosure. Attorney
does  not  prepare  a  patent  application  on  behalf  of
particular  named  persons,  but  on  behalf  of  the  true
inventive entity. Six days to execute and file application
is acceptable. Haskell  v.  Coleburne , 213 USPQ 192, 195
(CCPA 1982).  Bey  v.  Kollonitsch , 231 USPQ 967 (Fed. Cir.
1986) (Reasonable diligence is all that is required of the
attorney. Reasonable diligence is established if attorney
worked  reasonably  hard  on  the  application  during  the
continuous critical period. If the attorney has a reasonable
backlog  of  unrelated  cases  which  he  takes  up  in
chronological order and carries out expeditiously, that is
sufficient. Work on a related case(s) that contributed
substantially to the ultimate preparation of an application
can be credited as diligence.).

 END OF DILIGENCE PERIOD IS MARKED BY EITHER ACTUAL OR
CONSTRUCTIVE REDUCTION TO PRACTICE

 "[I]t is of no moment that the end of that period [for
diligence] is fixed by a constructive, rather than an
actual, reduction to practice." Justus  v.  Appenzeller ,
177 USPQ 332, 340 - 1 (Bd. Pat. Inter. 1971).<

2141  35 U.S.C. 103; The Graham Factual Inquiries [R -
2]

 35 U.S.C. 103.  Conditions for patentability; non -
obvious subject matter.

  >(a)<A patent may not be obtained though the invention is
not identically disclosed or described as set forth in
section 102 of this title, if the differences between the
subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been
obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.

  >(b)(l) Notwithstanding subsection (a), and upon timely
election by the applicant for patent to proceed under this
subsection, a biotechnological process using or resulting in
a composition of matter that is novel under section 102 and
nonobvious under subsection (a) of this section shall be
considered nonobvious if - -

  (A) claims to the process and the composition of matter
are contained in either the same application for patent or
in separate applications having the same effective filing
date; and

  (B) the composition of matter, and the process at the
time it was invented, were owned by the same person or
subject to an obligation of assignment to the same person.

  (2) A patent issued on a process under paragraph (1) - -

  (A) shall also contain the claims to the composition of
matter used in or made by that process, or

  (B) shall, if such composition of matter is claimed in
another patent, be set to expire on the same date as such
other patent, notwithstanding section 154.

  (3)  For  purposes  of  paragraph  (1),  the  term
`biotechnological process' means - -

  (A)  a  process  of  genetically  altering  or  otherwise
inducing a single - or multi - celled organism to - -

  (i) express an exogenous nucleotide sequence,

  (ii) inhibit, eliminate, augment, or alter expression of
an endogenous nucleotide sequence, or

  (iii) express a specific physiological characteristic not
naturally associated with said organism;

  (B) cell fusion procedures yielding a cell line that
expresses a specific protein, such as a monoclonal antibody;
and

  (C) a method of using a product produced by a process
defined by subparagraph (A) or (B), or a combination of
subparagraphs (A) and (B).<

  >(c)< Subject matter developed by another person, which
qualifies as prior art only under subsection (f) or (g) of
section 102 of this title, shall not preclude patentability
under this section where the subject matter and the claimed
invention were, at the time the invention was made, owned by

the same person or subject to an obligation of assignment to
the same person.

 STANDARD OF PATENTABILITY TO BE APPLIED IN OBVIOUSNESS
REJECTIONS

  Patent examiners carry the responsibility of making sure
that the standard of patentability enunciated by the Supreme
Court and by the Congress is applied in each and every case
. The Supreme Court in  Graham  v.  John Deere , 383 U.S. 1,
148 USPQ 459 (1966), stated that,

  "Under § 103, the scope and content of the prior art to
be determined; differences between the prior art and the
claims at issue are to be ascertained; and the level of
ordinary skill in the pertinent art resolved. Against this
background, the obviousness or nonobviousness of the subject
matter  is  determined.  Such  secondary  considerations  as
commercial success, long felt but unsolved needs, failure of
others, etc., might be utilized to give light to the
circumstances surrounding the origin of the subject matter
sought  to  be  patented.  As  indicia  of  obviousness  or
nonobviousness, these inquires may have relevancy . .

  "This in not to say, however, that there will not be
difficulties in applying the nonobviousness test. What is
obvious is not a question upon which there is likely to be
uniformity of thought in every given factual context. The
difficulties, however, are comparable to those encountered
daily  by  the  courts  in  such  frames  of  reference  as
negligence and scienter, and should be amenable to a case -
by - case development. We believe that strict observance of
the  requirements  laid  down  here  will  result  in  that
uniformity and definitiveness which Congress called for in
the 1952 Act.

  Office policy has consistently been to follow Graham  v.
John Deere Co. in the consideration and determination of
obviousness under 35 U.S.C. 103. As quoted above, the four
factual inquires enunciated therein as a background for
determining obviousness are briefly as follows:

 (1) Determining of the scope and contents of the
prior art;

 (2) Ascertaining the differences between the prior
art and the claims in issue;

 (3) Resolving the level of ordinary skill in the
pertinent art; and

 (4) Evaluating evidence of secondary considerations.

  The Supreme Court reaffirmed and relied upon the Graham
three pronged test in its consideration and determination of
obviousness in the fact situations presented in both the
Sakraida  v.  Ag Pro, Inc ., 425 U.S. 273, 189 USPQ 449,
reh'g denied , 426 U.S. 955 (1976) and  Anderson's - Black
Rock, Inc.  v.  Pavement Salvage Co. , 396 U.S. 57, 163 USPQ
673 (1969) decisions. In each case, the Court went on to
discuss whether the claimed combinations produced a "new or
different function" and a "synergistic result," but clearly
decided whether the claimed inventions were unobvious on the
basis of the three - way test in  Graham . Nowhere in its
decisions in those cases does the Court state that the "new

or  different  function"  and  "synergistic  result"  tests
supersede a finding of unobviousness or obviousness under
the  Graham test.

  Accordingly,  examiners  should  apply  the  test  for
patentability under 35 U.S.C. 103 set forth in Graham . See
below for a detailed discussion of each of the  Graham
factual inquiries. It should be noted that the Supreme
Court's  application  of  the  Graham  test  to  the  fact
circumstances in  Ag Pro was somewhat stringent, as it was
in  Black Rock . Note  Republic Industries, Inc. v  .
Schlage Lock Co. , 592 F.2d 963, 200 USPQ 769 (7th Cir.
1979). The Court of Appeals for the Federal Circuit stated
in  Stratoflex, Inc.  v.  Aeroquip Corp ., 713 F.2d 1530,
218 USPQ 871, 880 (Fed. Cir. 1983) that

  A requirement for synergism or a synergistic effect is
nowhere found in the statute, 35 U.S.C. When present, for
example in a chemical case, synergism may point toward
nonobviousness, but its absence has no place in evaluating
the evidence on obviousness. The more objective findings
suggested in Graham ,  supra , are drawn from the language
of the statute and are fully adequate guides for evaluating
the evidence relating to compliance with 35 U.S.C. 103.
Bowser Inc.  v.  United States , 388 F. 2d 346, 156 USPQ 406
(Ct. Cl. 1967).

 BASIC CONSIDERATIONS WHICH APPLY TO OBVIOUSNESS REJECTIONS

  When applying 35 U.S.C. 103, the following tenets of
patent law must be adhered to:

  (1) the claimed invention must be considered as a whole;

  (2) the references must be considered as a whole and must
suggest the desirability and thus the obviousness of making
the combination;

  (3) the references must be viewed without the benefit of
impermissible  hindsight  vision  afforded  by  the  claimed
invention and

  (4) reasonable expectation of success is the standard
with which obviousness is determined. Hodosh  v.  Block Drug
Co., Inc. , 786 F.2d 1136, 1143 n.5, 229 USPQ 182, 187, n.5
(Fed. Cir. 1986).

 OBJECTIVE EVIDENCE MUST BE CONSIDERED

  Objective evidence or secondary considerations such as
unexpected results, commercial success, long - felt need,
failure  of  others,  copying  by  others,  licensing,  and
skepticism  of  experts  are  relevant  to  the  issue  of
obviousness and must be considered in every case in which
they are present. When evidence of any of these secondary
considerations is submitted, the examiner must evaluate the
evidence. The weight to be accorded to the evidence depends
on  the  individual  factual  circumstances  of  each  case.
Stratoflex, Inc.  v.  Aeroquip Corp.,713 F.2d 1530, 218 USPQ
871 (Fed. Cir. 1983);  Hybritech, Inc.  v.  Monoclonal
Antibodies, Inc ., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir.
1986),  cert. denied , 480 U.S. 947 (1987). The ultimate
determination on patentability is made on the entire record.
In re Oetiker , 977 F.2d 1443, 24 USPQ2d 1443, 1445 (Fed.
Cir. 1992).

  See MPEP § 716 - § 716.06 for a discussion of objective
evidence and its role in the final legal determination of
whether a claimed invention would have been obvious under 35
U.S.C. 103.

2141.01  Scope and Content of the Prior Art [R - 2]

  (a)  Prior art available under 35 U.S.C. 102 is
available under 35 U.S.C. 103

  "Before answering Graham's `content' inquiry, it must be
known whether a patent or publication is in the prior art
under 35 U.S.C. § 102."  Panduit Corp.  v.  Dennison
Manufacturing Co.,810 F.2d 1561, 1 USPQ2d 1593,1597 (Fed.
Cir.),  cert. denied , 481 U.S. 1052 (1987). Subject matter
that is prior art under 35 U.S.C. 102 can be used to support
a rejection under section 103.  Ex parte Andresen , 212 USPQ
100, 102 (Bd. Pat. App. & Inter. 1981) ("it appears to us
that  the  commentator  [of  35  U.S.C.  A.]  and  the
[congressional] committee viewed section 103 as including
all of the various bars to a patent as set forth in section
102.").

  A 35 U.S.C. 103 rejection is based on 35 U.S.C. 102(a),
102(b), 102(e), etc. depending on the type of prior art
reference used and its publication or issue date. For
instance, an obviousness rejection over a U.S. patent which
was issued more than 1 year before the filing is said to be
a statutory bar just as if it anticipated the claims under
102(b). Analogously, an obviousness rejection based on a
publication which would be applied under 102(a) if it
anticipated the claims can be overcome by swearing behind
the publication date of the reference by filing an affidavit
or declaration under 37 CFR 1.131.

  For an overview of what constitutes prior art under 35
U.S.C. 102 see MPEP § 901 - § 901.06(d) and § 2121 - § 2129.

  (b)  Substantive content of the prior art

  See MPEP § 2121 - § 2129 for case law relating to the
substantive content of the prior art (e.g., availability of
inoperative devices, extent to which prior art must be
enabling,  broad  disclosure  rather  than  preferred
embodiments, admissions, etc.).

  (c)  Content of the prior art is determined at the
time the invention was made to avoid hindsight

  Requirement for "at the time the invention was made" is
to avoid impermissible hindsight. See MPEP § 2145, paragraph
(j) for a discussion of rebutting applicants' arguments that
a rejection is based on hindsight.

  "It is difficult but necessary that the decisionmaker
forget what he or she has been taught . . about the
claimed invention and cast the mind back to the time the
invention was made (often as here many years), to occupy the
mind of one skilled in the art who is presented only with
the references, and who is normally guided by the then -
accepted wisdom in the art." W.L. Gore & Associates, Inc.
v.  Garlock, Inc. , 721 F.2d 1540, 220 USPQ 303, 313 (Fed.
Cir. 1983),  cert. denied , 469 U.S. 851 (1984).

  (d)  35 U.S.C. 103>(c)<** - evidence required to
show conditions of 35 U.S.C. 103 apply

  An applicant who wants to avail himself or herself of
the benefits of**>35 U.S.C. 103(c)< has the burden of
establishing that subject matter which qualifies as prior
art under subsection (f) or (g) of section 102 and the
claimed invention were, at the time the invention was made,
owned by the same person or subject to an obligation of
assignment to the same person. Ex parte Yoshino , 227 USPQ
52 (Bd. Pat. App. & Inter. 1985). Note that**>35 U.S.C.
103(c)< is limited on its face to subject matter developed
by another person which qualifies as prior art only under
subsection (f) or (g) of section 102.  In re Bartfeld , 925
F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991) (Applicant
attempted to overcome a 35 U.S.C. 102(e) / 103 rejection
with a terminal disclaimer by alleging that the public
policy intent of 35 U.S.C. 103>(c)<** was to prohibit the
use of "secret" prior art in obviousness determinations. The
court rejected this argument, holding "We may not disregard
the unambiguous exclusion of § 102(e) from the statute's
purview." 17 USPQ2d at 1888.).

  See MPEP § 706.02(l) for the requirements which must be
met to establish common ownership.

2141.01(a)  Analogous and Nonanalogous Art [R - 1]

 >TO RELY ON A REFERENCE UNDER 35 U.S.C. 103, IT MUST BE
ANALOGOUS PRIOR ART

  The examiner must determine what is "analogous prior
art" for the purpose of analyzing the obviousness of the
subject matter at issue. "In order to rely on a reference as
a basis for rejection of an applicant's invention, the
reference must either be in the field of applicant's en
deavor or, if not, then be reasonably pertinent to the
particular problem with which the inventor was concerned."
In re Oetiker , 977 F.2d 1443, 24 USPQ2d 1443, 1445 (Fed.
Cir. 1992). See also  In re Deminski , 796 F.2d 436, 230
USPQ 313 (Fed. Cir. 1986);  In re Clay , 966 F.2d 656, 659,
23 USPQ2d 1058, 1060 - 61 (Fed. Cir. 1992) ("A reference is
reasonably  pertinent  if,  even  though  it  may  be  in  a
different field from that of the inventor's endeavor, it is
one which, because of the matter with which it deals,
logically would have commended itself to an inventor's
attention  in  considering  his  problem.");  and  Wang
Laboratories Inc.  v.  Toshiba Corp. , 993 F.2d 858, 26
USPQ2d 1767 (Fed. Cir. 1993).

  PTO  CLASSIFICATION  IS  SOME  EVIDENCE  OF  ANALOGY,  BUT
SIMILARITIES AND DIFFERENCES IN STRUCTURE AND FUNCTION CARRY
MORE WEIGHT

  While Patent Office classification of references and the
cross - references in the official search notes are some
evidence of "nonanalogy" or "analogy" respectively, the
court  has  found  "the  similarities  and  differences  in
structure and function of the inventions to carry far
greater weight." In re Ellis , 476 F.2d 1370, 177 USPQ 526,
527 (CCPA 1973) (The structural similarities and functional
overlap  between  the  structural  gratings  shown  by  one
reference and the shoe scrapers of the type shown by another
reference were readily apparent, and therefore the arts to
which  the  reference  patents  belonged  were  reasonably

pertinent to the art with which appellant's invention dealt
(pedestrian floor gratings).);  In re Clay , 966 F.2d 656,
23 USPQ2d 1058 (Fed. Cir. 1992) (Claims were directed to a
process for storing a refined liquid hydrocarbon product in
a storage tank having a dead volume between the tank bottom
and its outlet port wherein a gelled solution filled the
tank's dead volume to prevent loss of stored product while
preventing contamination. One of the references relied upon
disclosed a process for reducing the permeability of natural
underground  hydrocarbon  bearing  formations  using  a  gel
similar to that of applicant to improve oil production. The
court disagreed with the PTO's argument that the reference
and claimed inventions were part of the same endeavor,
"maximizing withdrawal of petroleum stored in petroleum
reserves," and found that the inventions involved different
fields of endeavor since the reference taught the use of the
gel in a different structure for a different purpose under
different temperature and pressure conditions, and since the
application related to storage of liquid hydrocarbons rather
than extraction of crude petroleum. The court also found the
reference was not reasonably pertinent to the problem with
which the inventor was concerned because a person having
ordinary skill in the art would not reasonably have expected
to solve the problem of dead volume in tanks for refined
petroleum by considering a reference dealing with plugging
underground formation anomalies.).

 ANALOGY IN THE CHEMICAL ARTS

  See, for example, Ex parte Bland , 3 USPQ2d 1103 (Bd.
Pat App. & Inter. 1986) (Claims were drawn to a particulate
composition useful as a preservative for an animal foodstuff
(or a method of inhibiting fungus growth in an animal
foodstuff  therewith)  comprising  verxite  having  absorbed
thereon propionic acid. All references were concerned with
absorbing biologically active materials on carriers, and
therefore the teachings in each of the various references
would have been pertinent to the problems in the other
references and the invention at hand.);

  Stratoflex, Inc.  v.  Aeroquip Corp ., 713 F.2d 1530,
218 USPQ 871 (Fed. Cir. 1983) (Problem confronting inventor
was preventing electrostatic buildup in PTFE tubing caused
by hydrocarbon fuel flow while precluding leakage of fuel.
Two prior art references relied upon were in the rubber hose
art, both referencing the problem of electrostatic buildup
caused by fuel flow. The court found that because PTFE and
rubber  are  used  by  the  same  hose  manufacturers  and
experience the same and similar problems, a solution found
for a problem experienced with either PTFE or rubber hosing
would be looked to when facing a problem with the other.);

  In re Mlot - Fijalkowski , 676 F.2d 666, 213 USPQ 713
(CCPA 1982) (Problem faced by appellant was enhancement and
immobilization  of  dye  penetrant  indications.  References
which taught the use of dyes and finely divided developer
materials to produce colored images preferably in, but not
limited to, the duplicating paper art were properly relied
upon because the court found that appellant's problem was
one of dye chemistry, and a search for its solution would
include the dye arts in general.).

 ANALOGY IN THE MECHANICAL ARTS

  See, for example, In re Oetiker , 977 F.2d 1443, 24

USPQ2d  1443  (Fed.  Cir.  1992)  (Applicant  claimed  an
improvement in a hose clamp which differed from the prior
art in the presence of a preassembly "hook" which maintained
the  preassembly  condition  of  the  clamp  and  disengaged
automatically when the clamp was tightened. The Board relied
upon a reference which disclosed a hook and eye fastener for
use in garments, reasoning that all hooking problems are
analogous. The court held the reference was not within the
field  of  applicant's  endeavor,  and  was  not  reasonably
pertinent to the particular problem with which the inventor
was concerned because it had not been shown that a person of
ordinary skill, seeking to solve a problem of fastening a
hose clamp, would reasonably be expected or motivated to
look to fasteners for garments. The Commissioner further
argued in the brief on appeal that a disengageable catch is
a common everyday mechanical concept, however the court held
that the Commissioner did not explain why a "catch" of
unstated structure is such a concept, and why it would have
made the claimed invention obvious.). Compare  Stevenson  v.
International Trade Commission , 612 F.2d 546, 204 USPQ 276
(CCPA 1979) ("In a simple mechanical invention a broad
spectrum of prior art must be explored and it is reasonable
to permit inquiry into other areas where one of ordinary
skill in the art would be aware that similar problems
exist." 204 USPQ at 280.);

  In re Deminski , 796 F.2d 436, 230 USPQ 313 (Fed. Cir.
1986) (Applicant's claims related to double - acting high
pressure gas transmission line compressors in which the
valves could be removed easily for replacement. The Board
relied upon references which taught either a double - acting
piston pump or a double - acting piston compressor. The
court agreed that since the cited pumps and compressors have
essentially the same function and structure, the field of
endeavor includes both types of double - action piston
devices for moving fluids.);

  Pentec, Inc.  v.  Graphic Controls Corp. , 776 F.2d 309,
227 USPQ 766 (Fed. Cir. 1985) (Claims at issue were di
rected to an instrument marker pen body, the improvement
comprising a pen arm holding means having an integrally
molded hinged member for folding over against the pen body.
Although the patent owners argued the hinge and fastener art
was  nonanalogous,  the  court  held  that  the  problem
confronting the inventor was the need for a simple holding
means to enable frequent, secure attachment and easy removal
of a marker pen to and from a pen arm, and one skilled in
the pen art trying to solve that problem would have looked
to the fastener and hinge art.);

  Ex parte Goodyear Tire & Rubber Co. , 230 USPQ 357 (Bd.
Pat. App. & Inter. 1985) (A reference in the clutch art was
held reasonably pertinent to the friction problem faced by
applicant, whose claims were directed to a braking material,
because brakes and clutches utilize interfacing materials to
accomplish their respective purposes.).

 ANALOGY IN THE ELECTRICAL ARTS

  See, for example, Wang Laboratories Inc.  v.  Toshiba
Corp. , 993 F.2d 858, 26 USPQ2d 1767 (Fed. Cir. 1993)
(Patent claims were directed to single in - line memory
modules  (SIMMs)  for  installation  on  a  printed  circuit
motherboard for use in personal computers. Reference to a
SIMM for an industrial controller was not necessarily in the

same field of endeavor as the claimed subject matter merely
because it related to memories. Reference was found to be in
a different field of endeavor because it involved memory
circuits in which modules of varying sizes may be added or
replaced, whereas the claimed invention involved compact
modular memories. Furthermore, since memory modules of the
claims at issue were intended for personal computers and
used dynamic random - access - memories, whereas reference
SIMM was developed for use in large industrial machine
controllers and only taught the use of static random -
access - memories or read - only - memories, the finding
that  the  reference  was  nonanalogous  was  supported  by
substantial evidence.);

  Medtronic, Inc.  v.  Cardiac Pacemakers , 721 F.2d 1563,
220 USPQ 97 (Fed. Cir. 1983) (Patent claims were drawn to a
cardiac pacemaker which comprised, among other components, a
runaway  inhibitor  means  for  preventing  a  pacemaker
malfunction from causing pulses to be applied at too high a
frequency rate. Two references disclosed circuits used in
high power, high frequency devices which inhibited the
runaway of pulses from a pulse source. The court held that
one of ordinary skill in the pacemaker designer art faced
with a rate - limiting problem would look to the solutions
of others faced with rate limiting problems, and therefore
the references were in an analogous art.).

 EXAMPLES OF ANALOGY IN THE DESIGN ARTS

  See MPEP § 1504.03(a)(1) for a discussion of the
relevant case law setting forth the general requirements for
analogous art in design applications.

  For examples of analogy in the design arts, see In re
Rosen , 673 F.2d 388, 213 USPQ 347 (CCPA 1982) (The design
at issue was a coffee table of contemporary styling. The
court held designs of contemporary furniture other than
coffee tables, such as the desk and circular glass table top
designs of the references relied upon, would reasonably fall
within the scope of the knowledge of the designer of
ordinary skill.);

  Ex parte Pappas , 23 USPQ2d 1636 (Bd. Pat. App. & Inter.
1992) (At issue was an ornamental design for a feed bunk
with an inclined corner configuration. Examiner relied upon
references to a bunk lacking the inclined corners claimed by
appellant and the  Architectural Precast Concrete Drafting
Handbook . The Board found the  Architectural Precast
Concrete Drafting Handbook was analogous art, noting that a
bunk may be a wood or concrete trough, and that both
references relied upon "disclose structures in which at
least one upstanding leg is generally perpendicular to a
base portion to define a corner configuration between the
leg and base portion.");

  In  re  Butera,28  USPQ2d  1399  (Fed.  Cir.  1993)
(unpublished  -  not  citable  as  precedent)  (The  claimed
invention,  a  spherical  design  for  a  combined  insect
repellant and air freshener, was rejected by the Board as
obvious over a single reference to a design for a metal ball
anode. The court reversed, holding the reference design to
be nonanalogous art. "A prior design is of the type claimed
if it has the same general use as that claimed in the design
patent application . . One designing a combined insect
repellant and air freshener would therefore not have reason

to know of or look to a design for a metal ball anode." 28
USPQ at 1400.).<

2141.02  Differences Between Prior Art and Claimed
Invention [R - 2]

  Ascertaining the differences between the prior art and
the  claims  at  issue  requires  interpreting  the  claim
language, and considering both the invention and the prior
art references as a whole. See MPEP § 2111 - §*>2116.01< for
case law pertaining to claim interpretation.

 THE CLAIMED INVENTION AS A WHOLE MUST BE CONSIDERED

  In determining the differences between the prior art and
the claims, the question under 35 U.S.C. 103 is not whether
the differences themselves would have been obvious, but
whether the claimed invention as a whole would have been
obvious.  Stratoflex, Inc.  v.  Aeroquip Corp. , 713 F.2d
1530, 218 USPQ 871 (Fed. Cir. 1983);  Schenck  v.  Nortron
Corp. , 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims
were directed to a vibratory testing machine (a hard -
bearing wheel balancer) comprising a holding structure, a
base structure, and a supporting means which form "a single
integral and gaplessly continuous piece."  Nortron argued
the invention is just making integral what had been made in
four bolted pieces, improperly limiting the focus to a
structural difference from the prior art and failing to
consider the invention as a whole. The prior art perceived a
need  for  mechanisms  to  dampen  resonance,  whereas  the
inventor eliminated the need for dampening via the one -
piece gapless support structure. "Because that insight was
contrary to the understandings and expectations of the art,
the structure effectuating it would not have been obvious to
those skilled in the art." 218 USPQ at 700 (citations
omitted).).

  See also In re Hirao , 535 F.2d 67, 190 USPQ 15 (CCPA
1976) (Claims were directed to a three step process for
preparing sweetened foods and drinks. The first two steps
were directed to a process of producing high purity maltose
(the sweetener), and the third was directed to adding the
maltose to foods and drinks. The parties agreed that the
first two steps were unobvious but formed a known product
and the third step was obvious. The Solicitor argued the
preamble was directed to a process for preparing foods and
drinks sweetened mildly and thus the specific method of
making the high purity maltose (the first two steps in the
claimed process) should not be given weight, analogizing
with product - by - process claims. The court held "due to
the admitted unobviousness of the first two steps of the
claimed combination of steps, the subject matter as a whole
would not have been obvious to one of ordinary skill in the
art at the time the invention was made." 190 USPQ at 17
(emphasis  in  original).  The  preamble  only  recited  the
purpose of the process and did not limit the body of the
claim. Therefore, the claimed process was a three step
process, not the product formed by two steps of the process
or the third step of using that product.).

 DISTILLING THE INVENTION DOWN TO A "GIST" OR "THRUST" OF AN
INVENTION DISREGARDS "AS A WHOLE" REQUIREMENT

  Distilling an invention down to the "gist" or "thrust"
of an invention disregards the requirement of analyzing the

subject matter "as a whole." W.L. Gore & Associates, Inc.
v.  Garlock, Inc. , 721 F.2d 1540, 220 USPQ 303 (Fed. Cir.
1983),  cert. denied , 469 U.S. 851 (1984) (restricting
consideration of the claims to a 10% per second rate of
stretching  of  unsintered  PTFE  and  disregarding  other
limitations resulted in treating claims as though they read
differently than allowed);  Bausch & Lomb v.  Barnes -
Hind/Hydrocurve, Inc. , 796 F.2d 443, 230 USPQ 416, 419, 420
(Fed. Cir. 1986),  cert. denied , 484 U.S. 823 (1987)
(District court focused on the "concept of forming ridgeless
depressions having smooth rounded edges using a laser beam
to  vaporize  the  material,"  but  "disregarded  express
limitations that the product be an ophthalmic lens formed of
a transparent cross - linked polymer and that the laser
marks be surrounded by a smooth surface of unsublimated
polymer."). See also  Jones  v.  Hardy , 727 F.2d 1524, 220
USPQ 1021, 1026 (Fed. Cir. 1984) ("treating the advantage as
the invention disregards statutory requirement that the
invention be viewed `as a whole' ");  Panduit Corp  v.
Dennison Manufacturing Co. , 810 F.2d 1561, 1 USPQ2d 1593,
(Fed. Cir.),  cert. denied , 481 U.S. 1052 (1987) (district
court  improperly  distilled  claims  down  to  a  one  word
solution to a problem).

 DISCOVERING SOURCE/CAUSE OF A PROBLEM IS PART OF "AS A
WHOLE" INQUIRY

  "[A] patentable invention may lie in the discovery of
the source of a problem even though the remedy may be
obvious once the source of the problem is identified. This
is part of the `subject matter as a whole' which should
always be considered in determining the obvi ousness of an
invention under 35 U.S.C. § 103."  In re Sponnoble , 405
F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969). However,
"discovery of the cause of a problem . . does not always
result in a patentable invention . . [A] different
situation exists where the solution is obvious from prior
art which contains the same solution for a similar problem
."  In re Wiseman , 596 F.2d 1019, 201 USPQ 658, 661 (CCPA
1979) (emphasis in original).

  In In re Sponnoble , the claim was directed to a plural
compartment mixing vial wherein a center seal plug was
placed between two compartments for temporarily isolating a
liquid - containing compartment from a solids - containing
compartment. The claim differed from the prior art in the
selection of butyl rubber with a silicone coating as the
plug material instead of natural rubber. The prior art
recognized that leakage from the liquid to the solids
compartment was a problem, and considered the problem to be
a result of moisture passing around the center plug because
of microscopic fissures inherently present in molded or
blown glass. The court found the inventor discovered the
cause of moisture transmission was through the center plug,
and there was no teaching in the prior art which would
suggest the necessity of selecting applicant's plug material
which was more impervious to liquids than the natural rubber
plug of the prior art.

  In In re Wiseman , claims directed to grooved carbon
disc brakes wherein the grooves were provided to vent steam
or vapor during a braking action to minimize fading of the
brakes were rejected as obvious over a reference showing
carbon disc brakes without grooves in combination with a
reference showing grooves in noncarbon disc brakes for the

purpose of cooling the faces of the braking members and
eliminating dust, thereby reducing fading of the brakes. The
court  affirmed  the  rejection,  holding  that  even  if
applicants discovered the cause of a problem, the solution
would have been obvious from the prior art which contained
the same solution (inserting grooves in disc brakes) for a
similar problem.

 APPLICANTS ALLEGING DISCOVERY OF A SOURCE OF A PROBLEM MUST
PROVIDE SUBSTANTIATING EVIDENCE

  Applicants who allege they discovered the source of a
problem must provide evidence substantiating the allegation,
either by way of affidavits or declarations, or by way of a
clear and persuasive assertion in the specification. In re
Wiseman  ,  596  F.2d  1019,  201  USPQ  658  (CCPA  1979)
(unsubstantiated statement of counsel was insufficient to
show appellants discovered source of the problem);  In re
Kaslow , 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983)
(Claims  were  directed  to  a  method  for  redeeming
merchandising coupons which contain a UPC "5 - by - 5" bar
code  wherein,  among  other  steps,  the  memory  at  each
supermarket  would  identify  coupons  by  manufacturer  and
transmit the data to a central computer to provide an audit
thereby  eliminating  the  need  for  clearinghouses  and
preventing retailer fraud. In challenging the propriety of
an obviousness rejection, appellant argued he discovered the
source of a problem (retailer fraud and manual clearinghouse
operations) and its solution. The court found appellant's
specification  did  not  support  the  argument  that  he
discovered  the  source  of  the  problem  with  respect  to
retailer fraud, and that the claimed invention failed to
solve the problem of manual clearinghouse operations.).

 DISCLOSED INHERENT PROPERTIES ARE PART OF "AS A WHOLE"
INQUIRY

  "In determining whether the invention as a whole would
have been obvious under section 103, we must first delineate
the invention as a whole. In delineating the invention as a
whole, we look not only to the subject matter which is
literally recited in the claim in question . . but also
those properties of the subject matter that are inherent in
the subject matterand are disclosed in the specification . .
. Just as we look to a chemical and its properties when we
examine the obviousness of a composition of matter claim, it
is this invention as a whole, and not some part of it, which
must be obvious under section 103." In re Antonie , 559 F.2d
618,  195  USPQ  6,8  (CCPA  1977)  (emphasis  in  original)
(citations omitted) (The claimed wastewater treatment device
had a tank volume to contractor area of 0.12 gal./sq. ft.
The court found the invention as a whole was the ratio of
0.12 and its inherent property that the claimed devices
maximized treatment capacity regardless of other variables
in the devices. The prior art did not recognize that
treatment capacity was a function of the tank volume to
contractor ratio, and therefore the parameter optimized was
not recognized in the art to be a result - effective
variable.). See also  In re Papesch , 315 F.2d 381, 137 USPQ
42, 51 (CCPA 1963) ("From the standpoint of patent law, a
compound and all its properties are inseparable.").

  Obviousness cannot be predicated on what is not known at
the time an invention is made, even if the inherency of a
certain feature is later established. In re Rijckaert , 9

F.2d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993). See MPEP § 2112
for the requirements of rejections based on inherency.

 PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING
DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS

  A  prior  art  reference  must  be  considered  in  its
entirety, i.e., as awhole , including portions that would
lead  away  from  the  claimed  invention.  W.L.  Gore  &
Associates, Inc.  v.  Garlock, Inc. , 721 F.2d 1540, 220
USPQ 303 (Fed. Cir. 1983),  cert. denied , 469 U.S. 851
(1984) (Claims were directed to a process of producing a
porous  article  by  expanding  shaped,  unsintered,  highly
crystalline poly(tetrafluoroethylene) (PTFE) by stretching
said PTFE at a 100% per second rate to more than five times
the original length. The prior art teachings with regard to
unsintered PTFE indicated the material does not respond to
conventional plastics processing, and the material should be
stretched slowly. A reference teaching rapid stretching of
conventional  plastic  polypropylene  with  reduced
crystallinity combined with a reference teaching stretching
unsintered PTFE would not suggest rapid stretching of highly
crystalline PTFE, in light of the disclosures in the art
that  teach  away  from  the  invention,  i.e.  that  the
conventional polypropylene should have reduced crystallinity
before  stretching,  and  that  PTFE  should  be  stretched
slowly.).

2141.03  Level of Ordinary Skill in the Art [R - 1]

 >FACTORS TO CONSIDER IN DETERMINING LEVEL OF ORDINARY SKILL

  "Factors that may be considered in determining level of
ordinary skill in the art include (1) the educational level
of the inventor; (2) type of problems encountered in the
art; (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the
technology; and (6) educational level of active workers in
the field." Environmental Designs, Ltd. v.  Union Oil Co .,
713 F.2d 693, 218 USPQ 865, 868 (Fed. Cir. 1983),  cert.
denied , 464 U.S. 1043 (1984).

  The "hypothetical `person having ordinary skill in the
art' to which the claimed subject matter pertains would, of
necessity  have  the  capability  of  understanding  the
scientific and engineering principles applicable to the
pertinent art." Ex parte Hiyamizu , 10 USPQ2d 1393, 1394
(Bd. Pat. App. & Inter. 1988) (The Board disagreed with the
examiner's definition of one of ordinary skill in the art (a
doctorate level engineer or scientist working at least 40
hours per week in semiconductor research or development),
finding that the hypothetical person is not definable by way
of credentials, and that the evidence in the application did
not support the conclusion that such a person would require
a  doctorate  or  equivalent  knowledge  in  science  or
engineering.).

  References which do not qualify as prior art because
they postdate the claimed invention may be relied upon to
show the level of ordinary skill in the art at or around the
time the invention was made. Ex parte Erlich , 22 USPQ 1463
(Bd. Pat. App. & Inter. 1992).

 SPECIFYING A PARTICULAR LEVEL OF SKILL IS NOT NECESSARY
WHERE THE PRIOR ART ITSELF REFLECTS AN APPROPRIATE LEVEL

  If the only facts of record pertaining to the level of
skill in the art are found within the prior art of record,
the court has held that an invention may be held to have
been obvious without a specific finding of a particular
level of skill where the prior art itself reflects an
appropriate  level.  Chore  -  Time  Equipment,  Inc.  v.
Cumberland Corp. , 713 F.2d 774, 218 USPQ 673 (Fed. Cir.
1983).

 ASCERTAINING LEVEL OF ORDINARY SKILL IS NECESSARY TO
MAINTAIN OBJECTIVITY

  "The importance of resolving the level of ordinary skill
in the art lies in the necessity of maintaining objectivity
in the obviousness inquiry." Ryko Manufacturing Co.  v.  Nu
- Star Inc. , 950 F.2d 714, 21 USPQ2d 1053, 1057 (Fed. Cir.
1991). The examiner must ascertain what would have been
obvious to one of ordinary skill in the art at the time the
invention was made, and not to the inventor, a judge, a
layman, those skilled in remote arts, or to geniuses in the
art at hand.  Environmental Designs, Ltd.  v.  Union Oil Co.
, 713 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983),  cert. denied
, 464 U.S. 1043 (1984).<

2142  Legal Concept of Prima Facie Obviousness [R - 1]

  >The legal concept of prima facie obviousness is a
procedural tool of examination which applies broadly to all
arts. It allocates who has the burden of going forward with
production of evidence in each step of the examination
process. See  In re Rinehart , 531 F.2d 1048, 189 USPQ 143
(CCPA 1976);  In re Linter , 458 F.2d 1013, 173 USPQ 560
(CCPA 1972);  In re Saunders , 444 F.2d 599, 170 USPQ 213
(CCPA 1971);  In re Tiffin , 443 F.2d 394, 170 USPQ 80 (CCPA
1971),  amended , 448 F.2d 791, 171 USPQ 294 (CCPA 1971);
In re Warner , 379 F.2d 1011, 154 USPQ 173 (CCPA 1967),
cert. denied , 389 U.S. 1057 (1968). The examiner bears the
initial burden of factually supporting any  prima facie
conclusion of obviousness. If the examiner does not produce
a  prima facie case, the applicant is under no obligation to
submit evidence of nonobviousness. If, however, the examiner
does produce a  prima facie case, the burden of coming
forward with evidence or arguments shifts to the applicant
who may submit additional evidence of nonobviousness, such
as comparative test data showing that the claimed invention
possesses improved properties not expected by the prior art.
The initial evaluation of  prima facie obviousness thus
relieves both the examiner and applicant from evaluating
evidence beyond the prior art and the evidence in the
specification as filed until the art has been shown to
suggest the claimed invention.

  To reach a proper determination under 35 U.S.C. 103, the
examiner must step backward in time and into the shoes worn
by the hypothetical "person of ordinary skill in the art"
when the invention was unknown and just before it was made.
In view of all factual information, the examiner must then
make a determination whether the claimed invention "as a
whole" would have been obvious at that time to that person.
Knowledge of applicant's disclosure must be put aside in
reaching this determination, yet kept in mind in order to
determine the "differences," conduct the search and evaluate
the "subject matter as a whole" of the invention. The
tendency to resort to "hindsight" based upon applicant's

disclosure is often difficult to avoid due to the very
nature of the examination process. However, impermissible
hindsight must be avoided and the legal conclusion must be
reached on the basis of the facts gleaned from the prior
art.

 ESTABLISHING A PRIMA FACIE CASE OF OBVIOUSNESS

  To establish a prima facie case of obviousness, three
basic criteria must be met. First, there must be some
suggestion  or  motivation,  either  in  the  references
themselves or in the knowledge generally available to one of
ordinary skill in the art, to modify the reference or to
combine  reference  teachings.  Second,  there  must  be  a
reasonable expectation of success. Finally, the prior art
reference  (or  references  when  combined)  must  teach  or
suggest  all  the  claim  limitations.  The  teaching  or
suggestion  to  make  the  claimed  combination  and  the
reasonable expectation of success must both be found in the
prior art, and not based on applicant's disclosure.  In re
Vaeck , 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991). See
MPEP § 2143 - § 2143.03 for decisions pertinent to each of
these criteria.

  The initial burden is on the examiner to provide some
suggestion of the desirability of doing what the inventor
has done. "To support the conclusion that the claimed
invention is directed to obvious subject matter, either the
references must expressly or impliedly suggest the claimed
invention or the examiner must present a convincing line of
reasoning as to why the artisan would have found the claimed
invention to have been obvious in light of the teachings of
the references." Ex parte Clapp , 227 USPQ 972, 973 (Bd.
Pat. App. & Inter. 1985). See MPEP § 2144 - § 2144.09 for
examples of reasoning supporting obviousness rejections.

  When the motivation to combine the teachings of the
references is not immediately apparent, it is the duty of
the examiner to explain why the combination of the teachings
is proper. Ex parte Skinner , 2 USPQ2d 1788 (Bd. Pat. App. &
Inter. 1986). A statement of a rejection that includes a
large number of rejections must explain with reasonable
specificity at least one rejection, otherwise the examiner
procedurally fails to establish a  prima facie case of
obviousness.  Ex parte Blanc , 13 USPQ2d 1383 (Bd. Pat. App.
& Inter. 1989) (Rejection based on nine references which
included at least 40 prior art rejections without explaining
any one rejection with reasonable specificity was reversed
as procedurally failing to establish a  prima facie case of
obviousness.).

  If the examiner determines there is factual support for
rejecting the claimed invention under 35 U.S.C. 103, the
examiner must then consider any evidence support ing the
patentability of the claimed invention, such as any evidence
in the specification or any other evidence submitted by the
applicant. The ultimate determination of patentability is
based on the entire record, by a preponderance of evidence,
with  due  consideration  to  the  persuasiveness  of  any
arguments and any secondary evidence. In re Oetiker , 977
F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). The legal
standard of "a preponderance of evidence" requires the
evidence to be more convincing than the evidence which is
offered in opposition to it. With regard to rejections under
35 U.S.C. 103, the examiner must provide evidence which as a

whole shows that the legal determination sought to be proved
(i.e., the reference teachings establish a  prima facie case
of obviousness) is more probable than not.

  When an applicant submits evidence, whether in the
specification as originally filed or in response to a
rejection, the examiner must reconsider the patentability of
the claimed invention. The decision on patentability must be
made based upon consideration of all the evidence, including
the evidence submitted by the examiner and the evidence
submitted by the applicant. A decision to make or maintain a
rejection in the face of all the evidence must show that it
was based on the totality of the evidence. Facts established
by rebuttal evidence must be evaluated along with the facts
on which the conclusion of obviousness was reached, not
against the conclusion itself. In re Eli Lilly & Co ., 902
F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990).

  See In re Piasecki , 745 F.2d 1468, 223 USPQ 785 (Fed.
Cir. 1984) for a discussion of the proper roles of the
examiner's  prima  facie  case  and  applicant's  rebuttal
evidence in the final determination of obviousness. See MPEP
§ 706.02(j) for a discussion of the proper contents of a
rejection under 35 U.S.C. 103.<

2143  Basic Requirements of a Prima Facie Case of
Obviousness [R - 1]

  >To establish a prima facie case of obviousness, three
basic criteria must be met. First, there must be some
suggestion  or  motivation,  either  in  the  references
themselves or in the knowledge generally available to one of
ordinary skill in the art, to modify the reference or to
combine  reference  teachings.  Second,  there  must  be  a
reasonable expectation of success. Finally, the prior art
reference  (or  references  when  combined)  must  teach  or
suggest all the claim limitations.

  The  teaching  or  suggestion  to  make  the  claimed
combination and the reasonable expectation of success must
both  be  found  in  the  prior  art,  not  in  applicant's
disclosure. In re Vaeck , 947 F.2d 488, 20 USPQ2d 1438 (Fed.
Cir. 1991).<

2143.01  Suggestion or Motivation to Modify the References
[R - 1]

 >THE PRIOR ART MUST SUGGEST THE DESIRABILITY OF THE CLAIMED
INVENTION

  "In determining the propriety of the Patent Office case
for obviousness in the first instance, it is necessary to
ascertain whether or not the reference teachings would
appear to be sufficient for one of ordinary skill in the
relevant art having the reference before him to make the
proposed substitution, combination, or other modification."
In re Linter , 458 F.2d 1013, 173 USPQ 560, 562 (CCPA 1972).

  Obviousness can only be established by combining or
modifying the teachings of the prior art to produce the
claimed invention where there is some teaching, suggestion,
or motivation to do so found either in the references
themselves or in the knowledge generally available to one of
ordinary skill in the art. In re Fine , 837 F.2d 1071, 5
USPQ2d 1596 (Fed. Cir. 1988);  In re Jones , 958 F.2d 347,

21 USPQ2d 1941 (Fed. Cir. 1992).

  In In re Fine , the claims were directed to a system for
detecting  and  measuring  minute  quantities  on  nitrogen
compounds comprising a gas chromatograph, a converter which
converts nitrogen compounds into nitric oxide by combustion,
and a nitric oxide detector. The primary reference disclosed
a  system  for  monitoring  sulfur  compounds  comprising  a
chromatograph, combustion means, and a detector, and the
secondary  reference  taught  nitric  oxide  detectors.  The
examiner and Board asserted that it would have been within
the skill of the art to substitute one type of detector for
another in the system of the primary reference, however the
court found there was no support or explanation of this
conclusion and reversed.

  In In re Jones , the claimed invention was the 2 - (2' -
aminoethoxy)ethanol  salt  of  dicamba,  a  compound  with
herbicidal activity. The primary reference disclosed  inter
alia  the  substituted  ammonium  salts  of  dicamba  as
herbicides, however the reference did not specifically teach
the claimed salt. Secondary references teaching the amine
portion of the salt were directed to shampoo additives and a
byproduct of the production of morpholine. The court found
there was no suggestion to combine these references to
arrive at the claimed invention.

 WHERE THE TEACHINGS OF THE PRIOR ART CONFLICT, THE EXAMINER
MUST WEIGH THE SUGGESTIVE POWER OF EACH REFERENCE

  The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art, and all teachings in the prior art must be
considered to the extent that they are in analogous arts.
Where the teachings of two or more prior art references
conflict,  the  examiner  must  weigh  the  power  of  each
reference to suggest solutions to one of ordinary skill in
the art, considering the degree to which one reference might
accurately discredit another. In re Young , 18 USPQ2d 1089
(Fed. Cir. 1991) (Prior art patent to Carlisle disclosed
controlling and minimizing bubble oscillation for chemical
explosives used in marine seismic exploration by spacing
seismic  sources  close  enough  to  allow  the  bubbles  to
intersect  before  reaching  their  maximum  radius  so  the
secondary pressure pulse was reduced. An article published
several years later by Knudsen opined that the Carlisle
technique does not yield appreciable improvement in bubble
oscillation suppression. However, the article did not test
the Carlisle technique under comparable conditions because
Knudsen did not use Carlisle's spacing or seismic source.
Furthermore,  where  the  Knudsen  model  most  closely
approximated the patent technique there was a 30% reduction
of the secondary pressure pulse. On these facts, the court
found that the Knudsen article would not have deterred one
of ordinary skill in the art from using the Carlisle patent
teachings.).

 FACT THAT REFERENCES CAN BE COMBINED OR MODIFIED IS NOT
SUFFICIENT TO ESTABLISH PRIMA FACIE OBVIOUSNESS

  The mere fact that references can be combined or
modified does not render the resultant combination obvious
unless the prior art also suggests the desirability of the
combination.  In re Mills , 916 F.2d 680, 16 USPQ2d 1430
(Fed. Cir. 1990) (Claims were directed to an apparatus for

producing an aerated cementitious composition by drawing air
into the cementitious composition by driving the output pump
at a capacity greater than the feed rate. The prior art
reference taught that the feed means can be run at a
variable speed, however the court found that this does not
require that the output pump be run at the claimed speed so
that air is drawn into the mixing chamber and is entrained
in the ingredients during operation. Although a prior art
device "may be capable of being modified to run the way the
apparatus  is  claimed,  there  must  be  a  suggestion  or
motivation in the reference to do so." 16 USPQ2d at 1432.).
See also  In re Fritch , 972 F.2d 1260, 23 USPQ2d 1780 (Fed.
Cir.  1992)  (flexible  landscape  edging  device  which  is
conformable  to  a  ground  surface  of  varying  slope  not
suggested by combination of prior art references).

 FACT THAT THE CLAIMED INVENTION IS WITHIN THE CAPABILITIES
OF ONE OF ORDINARY SKILL IN THE ART IS NOT SUFFICIENT BY
ITSELF TO ESTABLISH PRIMA FACIE OBVIOUSNESS

  A statement that modifications of the prior art to meet
the claimed invention would have been " ` well within the
ordinary skill of the art at the time the claimed invention
was made' " because the references relied upon teach that
all aspects of the claimed invention were individually known
in the art is not sufficient to establish a  prima facie
case of obviousness without some objective reason to combine
the teachings of the references.  Ex parte Levengood , 28
USPQ2d 1300 (Bd. Pat. App. & Inter. 1993).

 THE PROPOSED MODIFICATION CANNOT RENDER THE PRIOR ART
UNSATISFACTORY FOR ITS INTENDED PURPOSE

  If proposed modification would render the prior art
invention being modified unsatisfactory for its intended
purpose, then there is no suggestion or motivation to make
the proposed modification. In re Gordon , 733 F.2d 900, 221
USPQ 1125 (Fed. Cir. 1984) (Claimed device was a blood
filter assembly for use during medical procedures wherein
both the inlet and outlet for the blood were located at the
bottom end of the filter assembly, and wherein a gas vent
was present at the top of the filter assembly. The prior art
reference taught a liquid strainer for removing dirt and
water from gasoline and other light oils wherein the inlet
and outlet were at the top of the device, and wherein a pet
- cock (stopcock) was located at the bottom of the device
for periodically removing the collected dirt and water. The
reference further taught that the separation is assisted by
gravity. The Board concluded the claims were  prima facie
obvious, reasoning that it would have been obvious to turn
the  reference  device  upside  down.  The  court  reversed,
finding that if the prior art device was turned upside down
it would be inoperable for its intended purpose because the
gasoline to be filtered would be trapped at the top, the
water and heavier oils sought to be separated would flow out
of the outlet instead of the purified gasoline, and the
screen would become clogged.).

 THE PROPOSED MODIFICATION CANNOT CHANGE THE PRINCIPLE OF
OPERATION OF A REFERENCE

  If the proposed modification or combination of the prior
art would change the principle of operation of the prior art
invention  being  modified,  then  the  teachings  of  the
references are not sufficient to render the claims prima

facie obvious.  In re Ratti , 270 F.2d 810, 123 USPQ 349
(CCPA 1959) (Claims were directed to an oil seal comprising
a bore engaging portion with outwardly biased resilient
spring fingers inserted in a resilient sealing member. The
primary reference relied upon in a rejection based on a
combination of references disclosed an oil seal wherein the
bore engaging portion was reinforced by a cylindrical sheet
metal casing. Patentee taught the device required rigidity
for  operation,  whereas  the  claimed  invention  required
resiliency. The court reversed the rejection holding the
"suggested  combination  of  references  would  require  a
substantial reconstruction and redesign of the elements
shown in [the primary reference] as well as a change in the
basic  principle  under  which  the  [primary  reference]
construction was designed to operate." 123 USPQ at 352.).<

2143.02  Reasonable Expectation of Success Is Required [R -
1]

 >OBVIOUSNESS REQUIRES ONLY A REASONABLE EXPECTATION OF
SUCCESS

  The prior art can be modified or combined to reject
claims as prima facie obvious as long as there is a
reasonable expectation of success.  In re Merck & Co., Inc.
, 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (Claims
directed  to  a  method  of  treating  depression  with
amitriptyline (or nontoxic salts thereof) were rejected as
prima  facie  obvious  over  prior  art  disclosures  that
amitriptyline is a compound known to possess psychotropic
properties and that imipramine is a structurally similar
psychotropic  compound  known  to  possess  antidepressive
properties,  in  view  of  prior  art  suggesting  the
aforementioned compounds would be expected to have similar
activity  because  the  structural  difference  between  the
compounds involves a known bioisosteric replacement and
because  a  research  paper  comparing  the  pharmacological
properties of these two compounds suggested clinical testing
of amitriptyline as an antidepressant. The court sustained
the rejection, finding that the teachings of the prior art
provide a sufficient basis for a reasonable expectation of
success.);  Ex parte Blanc , 13 USPQ2d 1383 (Bd. Pat. App. &
Inter.  1989)  (Claims  were  directed  to  a  process  of
sterilizing a polyolefinic composition with high - energy
radiation  in  the  presence  of  a  phenolic  polyester
antioxidant to inhibit discoloration or degradation of the
polyolefin.  Appellant  argued  that  it  is  unpredictable
whether a particular antioxidant will solve the problem of
discoloration or degradation. However, the Board found that
because the prior art taught that appellant's preferred
antioxidant is very efficient and provides better results
compared with other prior art antioxidants, there would have
been a reasonable expectation of success.).

  AT  LEAST  SOME  DEGREE  OF  PREDICTABILITY  IS  REQUIRED;
APPLICANTS  MAY  PRESENT  EVIDENCE  SHOWING  THERE  WAS  NO
REASONABLE EXPECTATION OF SUCCESS

  Obviousness does not require absolute predictability,
however, at least some degree of predictability is required.
Evidence showing there was no reasonable expectation of
success may support a conclusion of nonobviousness. In re
Rinehart , 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (Claims
directed to a method for the commercial scale production of
polyesters in the presence of a solvent at superatmospheric

pressure were rejected as obvious over a reference which
taught the claimed method at atmospheric pressure in view of
a reference which taught the claimed process except for the
presence of a solvent. The court reversed, finding there was
no reasonable expectation that a process combining the prior
art steps could be successfully scaled up in view of
unchallenged evidence showing that the prior art processes
individually  could  not  be  commercially  scaled  up
successfully.).  See  also  Amgen,  Inc.  v.  Chugai
Pharmaceutical Co ., 927 F.2d 1200, 18 USPQ2d 1016 (Fed.
Cir.),  cert. denied , 502 U.S. 856 (1991) (In the context
of a biotechnology case, testimony supported the conclusion
that the references did not show that there was a reasonable
expectation of success. 18 USPQ2d at 1022, 1023.);  In re
O'Farrell , 853 F.2d 894, 7 USPQ2d 1673, 1681 (Fed. Cir.
1988) (The court held the claimed method would have been
obvious over the prior art relied upon because one reference
contained a detailed enabling methodology, a suggestion to
modify the prior art to produce the claimed invention, and
evidence suggesting the modification would be successful.).

 PREDICTABILITY IS DETERMINED AT THE TIME THE INVENTION WAS
MADE

  Whether an art is predictable or whether the proposed
modification  or  combination  of  the  prior  art  has  a
reasonable expectation of success is determined at the time
the invention was made. Ex parte Erlich , 3 USPQ2d 1011 (Bd.
Pat. App. & Inter. 1986) (Although an earlier case reversed
a rejection because of unpredictability in the field of
monoclonal antibodies, the court found " in this case at the
time this invention was made, one of ordinary skill in the
art  would  have  been  motivated  to  produce  monoclonal
antibodies specific for human fibroplast interferon using
the method of [the prior art] with a reasonable expectation
of success." 3 USPQ2d at 1016 (emphasis in original).).<

2143.03  All Claim Limitations Must Be Taught or Suggested
[R - 1]

  >To establish prima facie obviousness of a claimed
invention, all the claim limitations must be taught or
suggested by the prior art.  In re Royka , 490 F.2d 981, 180
USPQ 580 (CCPA 1974). "All words in a claim must be
considered  in  judging  the  patentability  of  that  claim
against the prior art."  In re Wilson , 424 F.2d 1382, 165
USPQ 494, 496 (CCPA 1970). If an independent claim is
nonobvious under 35 U.S.C. 103, then any claim depending
therefrom is nonobvious.  In re Fine , 837 F.2d 1071, 5
USPQ2d 1596 (Fed. Cir. 1988).

 INDEFINITE LIMITATIONS MUST BE CONSIDERED

  A claim limitation which is considered indefinite cannot
be disregarded. If a claim is subject to more than one
interpretation, at least one of which would render the claim
unpatentable over the prior art, the examiner should reject
the  claim  as  indefinite  under  35  U.S.C.  112,  second
paragraph (see MPEP § 706.03(d)) and should reject the claim
over the prior art based on the interpretation of the claim
that renders the prior art applicable.  Ex parte Ionescu ,
222 USPQ 537 (Bd. Pat. App. & Inter. 1984) (Claims on appeal
were rejected on indefiniteness grounds only; the rejection
was reversed and the case remanded to the examiner for
consideration of pertinent prior art.). Compare  In re

Wilson , 165 USPQ 494 (CCPA 1970) (if no reasonably definite
meaning can be ascribed to certain claim language, the claim
is indefinite, not obvious) and  In re Steele , 305 F.2d
859, 134 USPQ 292 (CCPA 1962) (it is improper to rely on
speculative assumptions regarding the meaning of a claim and
then  base  a  rejection  under  35  U.S.C.  103  on  these
assumptions).

 LIMITATIONS WHICH DO NOT FIND SUPPORT IN THE ORIGINAL
SPECIFICATION MUST BE CONSIDERED

  When evaluating claims for obviousness under 35 U.S.C.
103, all the limitations of the claims must be considered
and given weight, including limitations which do not find
support in the specification as originally filed (i.e., new
matter). Ex parte Grasselli , 231 USPQ 393 (Bd. App. 1983)
aff'd mem. 738 F.2d 453 (Fed. Cir. 1984) (Claim to a
catalyst expressly excluded the presence of sulfur, halogen,
uranium, and a combination of vanadium and phosphorous.
Although the negative limitations excluding these elements
did not appear in the specification as filed, it was error
to disregard these limitations when determining whether the
claimed invention would have been obvious in view of the
prior art.).<

2144  Sources of Rationale Supporting a Rejection Under
35 U.S.C. 103 [R - 1]

 >RATIONALE MAY BE IN A REFERENCE, OR REASONED FROM COMMON
KNOWLEDGE  IN  THE  ART,  SCIENTIFIC  PRINCIPLES,  ART  -
RECOGNIZED EQUIVALENTS, OR LEGAL PRECEDENT

  The rationale to modify or combine the prior art does
not have to be expressly stated in the prior art; the
rationale may be expressly or impliedly contained in the
prior art or it may be reasoned from knowledge generally
available to one of ordinary skill in the art, established
scientific principles, or legal precedent established by
prior case law. In re Fine , 837 F.2d 1071, 5 USPQ2d 1596
(Fed. Cir. 1988);  In re Jones , 958 F.2d 347, 21 USPQ2d
1941 (Fed. Cir. 1992). See also  In re Eli Lilly & Co ., 902
F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (discussion of
reliance on legal precedent);  In re Nilssen , 851 F.2d
1401, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (references do
not have to explicitly suggest combining teachings);  Ex
parte Clapp , 227 USPQ 972 (Bd. Pat. App. & Inter. 1985)
(examiner  must  present  convincing  line  of  reasoning
supporting rejection); and  Ex parte Levengood , 28 USPQ2d
1300 (Bd. Pat. App. & Inter. 1993) (reliance on logic and
sound scientific reasoning).

  THE  EXPECTATION  OF  SOME  ADVANTAGE  IS  THE  STRONGEST
RATIONALE FOR COMBINING REFERENCES

  The strongest rationale for combining references is a
recognition, expressly or impliedly in the prior art or
drawn  from  a  convincing  line  of  reasoning  based  on
established scientific principles or legal precedent, that
some advantage or expected beneficial result would have been
produced by their combination. In re Sernaker , 702 F.2d
989, 217 USPQ 1, 5 - 6 (Fed. Cir. 1983).

  LEGAL  PRECEDENT  CAN  PROVIDE  THE  RATIONALE  SUPPORTING
OBVIOUSNESS ONLY IF THE FACTS IN THE CASE ARE SUFFICIENTLY
SIMILAR TO THOSE IN THE APPLICATION

  The examiner must apply the law consistently to each
application after considering all the relevant facts. If the
facts in a prior legal decision are sufficiently similar to
those in an application under examination, the examiner may
use the rationale used by the court. If the ap plicant has
demonstrated the criticality of a specific limitation, it
would not be appropriate to relysolely on case law as the
rationale to support an obviousness rejection. "The value of
the  exceedingly  large  body  of  precedent  wherein  our
predecessor courts and this court have applied the law of
obviousness to particular facts, is that there has been
built a wide spectrum of illustrations and accompanying
reasoning, that have been melded into a fairly consistent
application of law to a great variety of facts." In re Eli
Lilly & Co ., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990).

 RATIONALE DIFFERENT FROM APPLICANT'S IS PERMISSIBLE

  The reason or motivation to modify the reference may
often  suggest  what  the  inventor  has  done,  but  for  a
different purpose or to solve a different problem. It is not
necessary that the prior art suggest the combination to
achieve  the  same  advantage  or  result  discovered  by
applicant. In re Linter , 458 F.2d 1013, 173 USPQ 560 (CCPA
1972) (discussed below);  In re Dillon , 919 F.2d 688, 16
USPQ2d 1897 (Fed. Cir. 1990),  cert. denied , 500 U.S. 904
(1991) (discussed below). Although  Ex parte Levengood , 28
USPQ2d 1300, 1302 (Bd. Pat. App. & Inter. 1993) states that
obviousness cannot be established by combining references
"without also providing evidence of the motivating force
which would impel one skilled in the art to do what the
patent applicant has done " (emphasis added), reading the
quotation in context it is clear that while there must be
motivation to make the claimed invention , there is no
requirement that the prior art provide the same reason as
the applicant to make the claimed invention.

  In In re Linter the claimed invention was a laundry
composition consisting essentially of a dispersant, cationic
fabric  softener,  sugar,  sequestering  phosphate,  and
brightener  in  specified  proportions.  The  claims  were
rejected over the combination of a primary reference which
taught all the claim limitations except for the presence of
sugar, and secondary references which taught the addition of
sugar  as  a  filler  or  weighting  agent  in  compositions
containing cationic fabric softeners. Appellant argued that
in the claimed invention, the sugar is responsible for the
compatibility  of  the  cationic  softener  with  the  other
detergent components. The court sustained the rejection,
stating "The fact that appellant uses sugar for a different
purpose does not alter the conclusion that its use in a
prior art composition would be [sic, would have been]  prima
facie obvious from the purpose disclosed in the references."
173 USPQ at 562.

  In In re Dillon , applicant claimed a composition
comprising a hydrocarbon fuel and a sufficient amount of a
tetra - orthoester of a specified formula to reduce the
particulate emissions from the combustion of the fuel. The
claims were rejected as obvious over a reference which
taught  hydrocarbon  fuel  compositions  containing  tri  -
orthoesters for dewatering fuels, in combination with a
reference teaching the equivalence of tri - orthoesters and
tetra  -  orthoesters  as  water  scavengers  in  hydraulic

(nonhydrocarbon) fluids. The Board affirmed the rejection
finding "there was a `reasonable expectation' that the tri -
and tetra - orthoester fuel compositions would have similar
properties  based  on  `close  structural  and  chemical
similarity' between the tri - and tetra - orthoesters and
the fact that both the prior art and Dillon use these
compounds `as fuel additives'." 16 USPQ2d at 1900. The court
held "it is not necessary in order to establish a  prima
facie case of obviousness . . that there be a suggestion
or  expectation  from  the  prior  art  that  the  claimed
[invention] will have the same or a similar utility as one
newly discovered by applicant ," and concluded that here a
prima facie case was established because "[t]he art provided
the motivation to make the claimed compositions in the
expectation that they would have similar properties." 16
USPQ2d at 1901 (emphasis in original).

  See MPEP § 2145, paragraph (b) for case law pertaining
to  the  presence  of  additional  advantages  or  latent
properties not recognized in the prior art.<

2144.01  Implicit Disclosure [R - 1]

  >"[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of
the reference but also the inferences which one skilled in
the art would reasonably be expected to draw therefrom." In
re Preda , 401 F.2d 825, 159 USPQ 342, 344 (CCPA 1968) (A
process for catalytically producing carbon disulfide by
reacting  sulfur  vapor  and  methane  in  the  presence  of
charcoal at a temperature of "about 750 ° - 830 ° C" was
found to be met by a reference which expressly taught the
same process at 700 ° C because the reference recognized the
possibility of using temperatures greater than 750 ° C. The
reference disclosed that catalytic processes for converting
methane  with  sulfur  vapors  into  carbon  disulfide  at
temperatures greater than 750 ° C (albeit without charcoal)
was known, and that 700 ° C was "much lower than had
previously proved feasible.");  In re Lamberti , 545 F.2d
747, 192 USPQ 278, 280 (CCPA 1976) (Reference disclosure of
a compound where the R - S-R' portion has "at least one
methylene group attached to the sulfur atom" implies that
the other R group attached to the sulfur atom can be other
than methylene and therefore suggests asymmetric dialkyl
moieties.).<

2144.02  Reliance on Scientific Theory [R - 1]

  >The rationale to support a rejection under 35 U.S.C.
103 may rely on logic and sound scientific principle. In re
Soli , 317 F.2d 941, 137 USPQ 797 (CCPA 1963). However, when
an examiner relies on a scientific theory, evidentiary
support for the existence and meaning of that theory must be
provided.  In re Grose , 592 F.2d 1161, 201 USPQ 57 (CCPA
1979) (Court held that different crystal forms of zeolites
would not have been structurally obvious one from the other
because there was no chemical theory supporting such a
conclusion.  The  known  chemical  relationship  between
structurally similar compounds (homologs, analogs, isomers)
did not support a finding of  prima facie obviousness of
claimed zeolite over the prior art because a zeolite is not
a compound but a mixture of compounds related to each other
by  a  particular  crystal  structure.).  Although  the
theoretical mechanism of an invention may be explained by
logic and sound scientific reasoning, this fact does not

support  an  obviousness  determination  unless  logic  and
scientific reasoning would have led one of ordinary skill in
the art to make the claimed invention.  Ex parte Levengood ,
28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993).<

2144.03  Reliance on Common Knowledge in the Art or "Well
Known" Prior Art [R - 1]

  >The rationale supporting an obviousness rejection may
be based on common knowledge in the art or "well - known"
prior art. The examiner may take official notice of facts
outside of the record which are capable of instant and
unquestionable demonstration as being "well - known" in the
art. In re Ahlert , 424 F.2d 1088, 165 USPQ 418, 420 (CCPA
1970) (Board properly took judicial notice that "it is
common  practice  to  postheat  a  weld  after  the  welding
operation is completed" and that "it is old to adjust the
intensity  of  a  flame  in  accordance  with  the  heat
requirements."). See also  In re Seifreid , 407 F.2d 897,
160  USPQ  804  (CCPA  1969)  (Examiner's  statement  that
polyethylene terephthalate films are commonly known to be
shrinkable is a statement of common knowledge in the art,
supported by the references of record.).

  If justified, the examiner should not be obliged to
spend time to produce documentary proof. If the knowledge is
of such notorious character that judicial notice can be
taken, it is sufficient so to state. In re Malcolm , 129
F.2d  529,  54  USPQ  235  (CCPA  1942).  If  the  applicant
traverses such an assertion the examiner should cite a
reference in support of his or her position.

  When a rejection is based on facts within the personal
knowledge of the examiner, the data should be stated as
specifically as possible, and the facts must be supported,
when called for by the applicant, by an affidavit from the
examiner. Such an affidavit is subject to contradiction or
explanation by the affidavits of the applicant and other
persons. See 37 CFR 1.107.

  Applicant must also seasonably challenge well known
statements and statements based on personal knowledge when
they  are  made  by  the  Board  of  Patent  Appeals  and
Interferences. In re Selmi , 156 F.2d 96, 70 USPQ 197 (CCPA
1946);  In re Fischer , 125 F.2d 725, 52 USPQ 473 (CCPA
1942). See also  In re Boon , 439 F.2d 724, 169 USPQ 231
(CCPA 1971) (a challenge to the taking of judicial notice
must contain adequate information or argument to create on
its face a reasonable doubt regarding the circumstances
justifying the judicial notice).

  For further views on official notice, see In re Ahlert ,
424  F.2d  1088,  165  USPQ  418,  420  -  421  (CCPA  1970)
("[A]ssertions of technical facts in areas of esoteric
technology must always be supported by citation of some
reference  work"  and  "allegations  concerning  specific
`knowledge' of the prior art, which might be peculiar to a
particular art should also be supported." Furthermore the
applicant must be given the opportunity to challenge the
correctness of such assertions and allegations. "The facts
so noticed serve to `fill the gaps' which might exist in the
evidentiary showing" and should not comprise the principle
evidence upon which a rejection is based.). See also  In re
Barr , 444 F.2d 588, 170 USPQ 330 (CCPA 1971) (scientific
journal references were not used as a basis for taking

judicial  notice  that  controverted  phrases  were  art  -
recognized because the court was not sure that the meaning
of the term at issue was indisputable among reasonable men);
and  In re Eynde , 480 F.2d 470, 178 USPQ 470,474 (CCPA
1973) ("The facts constituting the state of the art are
normally subject to the possibility of rational disagreement
among reasonable men and are not amenable to the taking of
[judicial] notice.").<

  If applicant does not seasonably traverse the well known
statement during examination, then the object of the well
known statement is taken to be admitted prior art. In re
Chevenard , 139 F.2d 71, 60 USPQ 239 (CCPA 1943). A
seasonable challenge constitutes a demand for evidence made
as soon as practicable during prosecution. Thus, applicant
is charged with rebutting the well known statement in the
next response after the Office Action in which the well
known statement was made. This is necessary because the
examiner must be given the opportunity to provide evidence
in the next Office Action or explain why no evidence is
required. If the examiner adds a reference to the rejection
in the next action after applicant's rebuttal, the newly
cited reference, if it is added merely as evidence of the
prior well known statement, does not result in a new issue
and thus the action can potentially be made final. If no
amendments are made to the claims, the examiner must not
rely  on  any  other  teachings  in  the  reference  if  the
rejection is made final.

2144.04  Legal Precedent as Source of Supporting Rationale
[R - 1]

  >As discussed in MPEP § 2144, if the facts in a prior
legal decision are sufficiently similar to those in an
application under examination, the examiner may use the
rationale used by the court. Examples directed to various
common practices which the court has held normally require
only ordinary skill in the art and hence are considered
routine expedients are discussed below. If the applicant has
demonstrated the criticality of a specific limitation, it
would not be appropriate to rely solely on case law as the
rationale to support an obviousness rejection.

  (a) Aesthetic design changes

  In re Seid , 161 F.2d 229, 73 USPQ 431 (CCPA 1947)
(Claim  was  directed  to  an  advertising  display  device
comprising a bottle and a hollow member in the shape of a
human figure from the waist up which was adapted to fit over
and cover the neck of the bottle, wherein the hollow member
and the bottle together give the impression of a human body.
Appellant argued that certain limitations in the upper part
of the body, including the arrangement of the arms, were not
taught by the prior art. The court found that matters
relating to ornamentation only which have no mechanical
function cannot be relied upon to patentably distinguish the
claimed invention from the prior art.). But see  Ex parte
Hilton , 148 USPQ 356 (Bd. App. 1965) (Claims were directed
to fried potato chips with a specified moisture and fat
content, whereas the prior art was directed to french fries
having a higher moisture content. While recognizing that in
some cases the particular shape of a product is of no
patentable significance, the Board held in this case the
shape (chips) is important because it results in a product
which  is  distinct  from  the  reference  product  (french

fries).).

  (b)  Elimination of a step or an element and its
function

 OMISSION OF AN ELEMENT AND ITS FUNCTION IS OBVIOUS IF THE
FUNCTION OF THE ELEMENT IS NOT DESIRED

  Ex parte Wu , 10 USPQ 2031 (Bd. Pat. App. & Inter.
1989). (Claims at issue were directed to a method for
inhibiting  corrosion  on  metal  surfaces  using  a
compositionconsisting of epoxy resin, petroleum sulfonate,
and hydrocarbon diluent. The claims were rejected over a
primary  reference  which  disclosed  an  anticorrosion
composition of epoxy resin, hydrocarbon diluent, and poly
basic acid salts wherein said salts were taught to be
beneficial when employed in a freshwater environment, in
view of secondary references which clearly suggested the
addition of petroleum sulfonate to corrosion inhibiting
compositions. The Board affirmed the rejection, holding that
it would have been obvious to omit the polybasic acid salts
of the primary reference where the function attributed to
such  salt  is  not  desired  or  required,  such  as  in
compositions  for  providing  corrosion  resistance  in
environments which do not encounter fresh water.). See also
In re  Larson , 340 F.2d 965, 144 USPQ 347 (CCPA 1965)
(Omission of additional framework and axle which served to
increase the cargo carrying capacity of prior art mobile
fluid carrying unit would have been obvious if this feature
was not desired.); and  In re Kuhle , 526 F.2d 553, 188 USPQ
7 (CCPA 1975) (deleting a prior art switch member and
thereby eliminating its function was an obvious expedient).

 OMISSION OF AN ELEMENT WITH RETENTION OF THE ELEMENT'S
FUNCTION IS AN INDICIA OF UNOBVIOUSNESS

  Note that the omission of an element and retention of
its function is an indicia of unobviousness.  In re  Edge ,
359 F.2d 896, 149 USPQ 556 (CCPA 1966) (Claims at issue were
directed to a printed sheet having a thin layer of erasable
metal bonded directly to the sheet wherein said thin layer
obscured the original print until removal by erasure. The
prior art disclosed a similar printed sheet which further
comprised an intermediate transparent and erasure - proof
protecting layer which prevented erasure of the printing
when the top layer was erased. The claims were found
unobvious over the prior art because the although the
transparent layer of the prior art was eliminated, the
function  of  the  transparent  layer  was  retained  since
appellant's metal layer could be erased without erasing the
printed indicia.).

  (c) Automating a manual activity

  In re  Venner , 262 F.2d 91, 120 USPQ 193, 194 (CCPA
1958) (Appellant argued that claims to a permanent mold
casting apparatus for molding trunk pistons were allowable
over the prior art because the claimed invention combined
"old permanent - mold structures together with a timer and
solenoid which automatically actuates the known pressure
valve system to release the inner core after a predetermined
time has elapsed." The court held that broadly providing an
automatic or mechanical means to replace a manual activity
which accomplished the same result is not sufficient to
distinguish over the prior art.).

  (d)  Changes in size, shape, or sequence of adding
ingredients

 CHANGES IN SIZE/PROPORTION

  In re  Rose , 220 F.2d 459, 105 USPQ 237 (CCPA 1955)
(Claims directed to a lumber package "of appreciable size
and weight requiring handling by a lift truck" where held
unpatentable over prior art lumber packages which could be
lifted by hand because limitations relating to the size of
the package were not sufficient to patentably distinguish
over the prior art.);  In re  Rinehart , 531 F.2d 1048, 189
USPQ 143 (CCPA 1976) ("mere scaling up of a prior art
process capable of being scaled up, if such were the case,
would not establish patentability in a claim to an old
process so scaled." 189 USPQ at 148.).

  In Gardner v.  TEC Systems, Inc. , 725 F.2d 1338, 220
USPQ 777 (Fed. Cir. 1984),  cert. denied , 469 U.S. 830, 225
USPQ 232 (1984), the Federal Circuit held that, where the
only difference between the prior art and the claims was a
recitation of relative dimensions of the claimed device and
a device having the claimed relative dimensions would not
perform differently than the prior art device, the claimed
device was not patentably distinct from the prior art
device.

 CHANGES IN SHAPE

  In re  Dailey , 357 F.2d 669, 149 USPQ 47 (CCPA 1966)
(The court held that the configuration of the claimed
disposable plastic nursing container was a matter of choice
which a person of ordinary skill in the art would have found
obvious  absent  persuasive  evidence  that  the  particular
configuration of the claimed container was significant.).

 CHANGES IN SEQUENCE OF ADDING INGREDIENTS

  Ex parte Rubin , 128 USPQ 440 (Bd. App. 1959) (Prior art
reference disclosing a process of making a laminated sheet
wherein a base sheet is first coated with a metallic film
and thereafter impregnated with a thermosetting material was
held to render  prima facie obvious claims directed to a
process of making a laminated sheet by reversing the order
of the prior art process steps.). See also  In re  Burhans ,
154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any
order of performing process steps is  prima facie obvious in
the absence of new or unexpected results);  In re  Gibson ,
5 USPQ 230 (CCPA 1930) (Selection of any order of mixing
ingredients is  prima facie obvious.).

  (e)  Making  portable,  integral,  separable,
adjustable, or continuous

 MAKING PORTABLE

  In re  Lindberg , 194 F.2d 732, 93 USPQ 23 (CCPA 1952)
(Fact that a claimed device is portable or movable is not
sufficient by itself to patentably distinguish over an
otherwise old device unless there are new or unexpected
results.).

 MAKING INTEGRAL

  In re  Larson , 340 F.2d 965, 144 USPQ 347, 349 (CCPA
1965) (A claim to a fluid transporting vehicle was rejected
as obvious over a prior art reference which differed from
the prior art in claiming a brake drum integral with a
clamping means, whereas the brake disc and clamp of the
prior art comprise several parts rigidly secured together as
a single unit. The court affirmed the rejection holding,
among  other  reasons,  "that  the  use  of  a  one  piece
construction instead of the structure disclosed in [the
prior art] would be merely a matter of obvious engineering
choice."); but see  Schenck v.  Nortron Corp. , 713 F.2d
782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to
a  vibratory  testing  machine  (a  hard  -  bearing  wheel
balancer) comprising a holding structure, a base structure,
and a supporting means which form "a single integral and
gaplessly  continuous  piece."  Nortron  argued  that  the
invention is just making integral what had been made in four
bolted pieces. The court found this argument unpersuasive
and held that the claims were patentable because the prior
art perceived a need for mechanisms to dampen resonance,
whereas the inventor eliminated the need for dampening via
the one - piece gapless support structure, showing insight
that was contrary to the understandings and expectations of
the art.).

 MAKING SEPARABLE

  In re  Dulberg , 289 F.2d 522, 129 USPQ 348, 349 (CCPA
1961) (The claimed structure, a lipstick holder with a
removable cap, was fully met by the prior art except that in
the prior art the cap is "press fitted" and therefore not
manually  removable.  The  court  held  that  "if  it  were
considered desirable for any reason to obtain access to the
end of [the prior art's] holder to which the cap is applied,
it would be obvious to make the cap removable for that
purpose.").

 MAKING ADJUSTABLE

  In re Stevens , 212 F.2d 197, 101 USPQ 284 (CCPA 1954)
(Claims were directed to a handle for a fishing rod wherein
the handle has a longitudinally adjustable finger hook, and
the hand grip of the handle connects with the body portion
by  means  of  a  universal  joint.  The  court  held  that
adjustability, where needed, is not a patentable advance,
and  because  there  was  an  art  -  recognized  need  for
adjustment in a fishing rod, the substitution of a universal
joint for the single pivot of the prior art would have been
obvious.).

 MAKING CONTINUOUS

  In re  Dilnot , 319 F.2d 188, 138 USPQ 248 (CCPA 1963)
(Claim directed to a method of producing a cementitious
structure wherein a stable air foam is introduced into a
slurry of cementitious material differed from the prior art
only in requiring the addition of the foam to be continuous.
The court held the claimed continuous operation would have
been obvious in light of the batch process of the prior
art.).

  (f)  Reversal, duplication, or rearrangement of
parts

 REVERSAL OF PARTS

  In re  Gazda , 219 F.2d 449, 104 USPQ 400 (CCPA 1955)
(Prior  art  disclosed  a  clock  fixed  to  the  stationary
steering wheel column of an automobile while the gear for
winding the clock moves with steering wheel; mere reversal
of such movement, so the clock moves with wheel, was held to
be an obvious expedient.).

 DUPLICATION OF PARTS

  In re  Harza , 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
(Claims at issue were directed to a water - tight masonry
structure wherein a water seal of flexible material fills
the joints which form between adjacent pours of concrete.
The claimed water seal has a "web" which lies perpendicular
to the workface and in the joint, and a plurality of "ribs"
which are parallel to the workface, forming the following
shape

 REARRANGEMENT OF PARTS

  In re  Japikse , 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)
(Claims to a hydraulic power press which read on the prior
art except with regard to the position of the starting
switch were held unpatentable because shifting the position
of the starting switch would not have modified the operation
of the device.);  In re Kuhle , 526 F.2d 553, 188 USPQ 7
(CCPA 1975) (the particular placement of a contact in a
conductivity measuring device was held to be an obvious
matter of design choice). However, "The mere fact that a
worker in the art could rearrange the parts of the reference
device to meet the terms of the claims on appeal is not by
itself sufficient to support a finding of obviousness. The
prior art must provide a motivation or reason for the worker
in  the  art,  without  the  benefit  of  appellant's
specification,  to  make  the  necessary  changes  in  the
reference device."  Ex parte Chicago Rawhide Manufacturing
Co. , 223 USPQ 351, 353 (Bd. Pat. App. & Inter. 1984).

  (g) Purifying an old product

  Pure materials are novel vis - a-vis less pure or impure
materials because there is a difference between pure and
impure materials. Therefore, the issue is whether claims to
a pure material are unobvious over the prior art. In re
Bergstrom , 427 F.2d 1394, 166 USPQ 256 (CCPA 1970). Purer
forms of known products may be patentable, but the mere
purity of a product, by itself, does not render the product
unobvious.  Ex parte  Gray , 10 USPQ2d 1922 (Bd. Pat. App. &
Inter. 1989).

  Factors to be considered in determining whether a
purified form of an old product is obvious over the prior
art  include  whether  the  claimed  chemical  compound  or
composition  has  the  same  utility  as  closely  related
materials in the prior art, and whether the prior art
suggests the particular form or structure of the claimed
material or suitable methods of obtaining that form or
structure. In re  Cofer , 354 F.2d 664, 148 USPQ 268 (CCPA
1966) (Claims to the free - flowing crystalline form of a
compound were held unobvious over references disclosing the
viscous liquid form of the same compound because the prior
art of record did not suggest the claimed compound in
crystalline form or how to obtain such crystals.).

  See also Ex parte  Stern , 13 USPQ2d 1379 (Bd. Pat. App.
& Inter. 1987) (Claims to interleukin 2 (a protein with a
molecular weight of over 12,000) purified to homogeneity
were held unpatentable over references which recognized the
desirability of purifying interleukin 2 to homogeneity in a
view of a reference which taught a method of purifying
proteins having molecular weights in excess of 12,000 to
homogeneity wherein the prior art method was similar to the
method disclosed by appellant for purifying interleukin 2.).

  Compare Ex parte  Gray , 10 USPQ2d 1922 (Bd. Pat. App. &
Inter. 1989) (Claims were directed to human nerve growth
factor  b - NGF free from other proteins of human origin,
and the specification disclosed making the claimed factor
through the use of recombinant DNA technology. The claims
were rejected as  prima facie obvious in view of two
references disclosing  b - NGF isolated from human placental
tissue. The Board applied case law pertinent to product - by
- process claims, reasoning that the prior art factor
appeared to differ from the claimed factor only in the
method of obtaining the factor. The Board held that the
burden of persuasion was on appellant to show that the
claimed product exhibited unexpected properties compared
with that of the prior art. The Board further noted that "no
objective evidence has been provided establishing that no
method was known to those skilled in this field whereby the
claimed material might have been synthesized." 10 USPQ2d at
1926.).<

2144.05  Obviousness of Ranges [R - 1]

  >See  MPEP  §  2131.03  for  case  law  pertaining  to
rejections based on the anticipation of ranges under 35
U.S.C. 102 and 35 U.S.C. 102 / 103.

  (a) Overlap of ranges

  In the case where the claimed ranges "overlap or lie
inside ranges disclosed by the prior art" a prima facie case
of obviousness exists.  In re  Wertheim , 541 F.2d 257, 191
USPQ 90 (CCPA 1976);  In re  Woodruff , 919 F.2d 1575, 16
USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon
monoxide concentrations of "about 1 - 5%" while the claim
was limited to "more than 5%." The court held that "about 1
- 5%" allowed for concentrations slightly above 5% thus the
ranges overlapped). Similarly, a  prima facie case of
obviousness exists where the claimed ranges and prior art
ranges do not overlap but are close enough that one skilled
in the art would have expected them to have the same
properties.  Titanium Metals Corporation of America v.
Banner , 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court
held as proper a rejection of a claim directed to an alloy
of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron,
balance titanium" as obvious over a reference disclosing
alloys of 0.75% nickel, 0.25% molybdenum, balance titanium
and 0.94% nickel, 0.31% molybdenum, balance titanium.).

  (b)  Optimization of ranges

 OPTIMIZATION WITHIN PRIOR ART CONDITIONS OR THROUGH ROUTINE
EXPERIMENTATION

  Generally, differences in concentration or temperature
will  not  support  the  patentability  of  subject  matter
encompassed by the prior art unless there is evidence

indicating such concentration or temperature is critical.
"[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum
or workable ranges by routine experimentation." In re  Aller
, 220 F.2d 454, 105 USPQ 233, 235 (CCPA 1955) (Claimed
process which was performed at a temperature between 40  _ C
and 80  _ C and an acid concentration between 25 and 70% was
held to be  prima facie obvious over a reference process
which differed from the claims only in that the reference
process was performed at a temperature of 100  _ C and an
acid concentration of 10%.). See also  In re  Hoeschele ,
406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric
polyurethanes which fell within the broad scope of the
references were held to be unpatentable thereover because,
among  other  reasons,  there  was  no  evidence  of  the
criticality of the claimed ranges of molecular weight or
molar proportions.). For more recent cases applying this
principle, see  Merck & Co. Inc . v.  Biocraft Laboratories
Inc. , 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.),  cert.
denied , 493 U.S. 975 (1989), and  In re  Kulling , 897 F.2d
1147, 14 USPQ2d 1056 (Fed. Cir. 1990).

 ONLY RESULT - EFFECTIVE VARIABLES CAN BE OPTIMIZED

  A particular parameter must first be recognized as a
result - effective variable, i.e., a variable which achieves
a recognized result, before the determination of the optimum
or workable ranges of said variable might be characterized
as routine experimentation. In re  Antonie , 559 F.2d 618,
195 USPQ 6 (CCPA 1977) (The claimed wastewater treatment
device had a tank volume to contractor area of 0.12 gal./sq.
ft. The prior art did not recognize that treatment capacity
is a function of the tank volume to contractor ratio, and
therefore the parameter optimized was not recognized in the
art to be a result - effective variable.). See also  In re
Boesch , 617 F.2d 272, 205 USPQ 215 (CCPA 1980) (prior art
suggested pro portional balancing to achieve desired results
in the formation of an alloy).

  (c) Obviousness rebuttable with secondary evidence

  Applicants can rebut a prima facie case of obviousness
based on overlapping ranges by showing unexpected results or
the criticality of the claimed range. "The law is replete
with cases in which the difference between the claimed
invention and the prior art is some range or other variable
within the claims . . In such a situation, the applicant
must show that the particular range is critical, generally
by  showing  that  the  claimed  range  achieves  unexpected
results relative to the prior art range."  In re  Woodruff ,
919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP §
716.02 - § 716.02(g) for a discussion of criticality and
unexpected results.<

2144.06  Art Recognized Equivalence for the Same Purpose [R
- 1]

 >COMBINING EQUIVALENTS KNOWN FOR THE SAME PURPOSE

  "It is prima facie obvious to combine two compositions
each of which is taught by the prior art to be useful for
the same purpose, in order to form a third composition to be
used for the very same purpose . . [T]he idea of
combining  them  flows  logically  from  their  having  been
individually taught in the prior art."  In re  Kerkhoven ,

626 F.2d 846, 205 USPQ 1069, 1072 (CCPA 1980) (citations
omitted) (Claims to a process of preparing a spray - dried
detergent by mixing together two conventional spray - dried
detergents were held to be  prima facie obvious.). See also
In re  Crockett , 279 F.2d 274, 126 USPQ 186 (CCPA 1960)
(Claims directed to a method and material for treating cast
iron  using  a  mixture  comprising  calcium  carbide  and
magnesium  oxide  were  held  unpatentable  over  prior  art
disclosures that the aforementioned components individually
promote the formation of a nodular structure in cast iron.);
and  Ex parte  Quadranti , 25 USPQ2d 1071 (Bd. Pat. App. &
Inter. 1992) (mixture of two known herbicides held  prima
facie obvious). But see  In re  Geiger , 815 F.2d 686, 2
USPQ2d 1276 (Fed. Cir. 1987) ("Based upon the prior art and
the  fact  that  each  of  the  three  components  of  the
composition used in the claimed method is conventionally
employed in the art for treating cooling water systems, the
board held that it would have been  prima facie obvious,
within the meaning of 35 U.S.C. 103, to employ these
components in combination for their known functions and to
optimize the amount of each additive.... Appellant argues
... hindsight reconstruction or at best, ... `obvious to
try'.... We agree with appellant.").

 SUBSTITUTING EQUIVALENTS KNOWN FOR THE SAME PURPOSE

  In  order  to  rely  on  equivalence  as  a  rationale
supporting an obviousness rejection, the equivalency must be
recognized  in  the  prior  art,  and  cannot  be  based  on
applicant's disclosure or the mere fact that the components
at issue are functional or mechanical equivalents. In re
Ruff , 256 F.2d 590, 118 USPQ 340 (CCPA 1958) (The mere fact
that components are claimed as members of a Markush group
cannot be relied upon to establish the equivalency of these
components. However, an applicant's express recognition of
an art - recognized or obvious equivalent may be used to
refute an argument that such equivalency does not exist.);
In re  Scott , 323 F.2d 1016, 139 USPQ 297 (CCPA 1963)
(Claims were drawn to a hollow fiberglass shaft for archery
and a process for the production thereof where the shaft
differed from the prior art in the use of a paper tube as
the core of the shaft as compared with the light wood or
hardened foamed resin core of the prior art. The Board found
the claimed invention would have been obvious, reasoning
that  the  prior  art  foam  core  is  the  functional  and
mechanical equivalent of the claimed paper core. The court
reversed, holding that components which are functionally or
mechanically equivalent are not necessarily obvious in view
of one another, and in this case, the use of a light wood or
hardened foam resin core does not fairly suggest the use of
a paper core.);  Smith v.  Hayashi , 209 USPQ 754 (Bd. of
Pat. Inter. 1980) (The mere fact that phthalocyanine and
selenium  function  as  equivalent  photoconductors  in  the
claimed environment was not sufficient to establish that one
would have been obvious over the other. However, there was
evidence that both phthalocyanine and selenium were known
photoconductors in the art of electrophotography. "This, in
our  view,  presents  strong  evidence  of  obviousness  in
substituting one for the other in an electrophotographic
environment as a photoconductor." 209 USPQ at 759.).

  An express suggestion to substitute one equivalent
component or process for another is not necessary to render
such substitution obvious. In re  Fout , 675 F.2d 297, 213
USPQ 532 (CCPA 1982).<

2144.07  Art Recognized Suitability for an Intended Purpose
[R - 1]

  >"The motivation to combine [prior art references] can
arise from the expectation that the prior art elements will
perform their expected functions to achieve their expected
results when combined for their common known purpose." In re
Floyd , Appeal No. 94 - 1071, slip op. at page 4 (Fed. Cir.
July 20, 1994) (unpublished-not citable as precedent). The
selection of a known material based on its suitability for
its intended use supported a  prima facie obviousness
determination  in  Sinclair  &  Carroll  Co.,  Inc.  v.
Interchemical Corp. , 325 U.S. 327, 65 USPQ 297 (1945)
(Claims to a printing ink comprising a solvent having the
vapor pressure characteristics of butyl carbitol so that the
ink would not dry at room temperature but would dry quickly
upon heating were held invalid over a reference teaching a
printing  ink  made  with  a  different  solvent  that  was
nonvolatile at room temperature but highly volatile when
heated in view of an article which taught the desired
boiling  point  and  vapor  pressure  characteristics  of  a
solvent for printing inks and a catalog teaching the boiling
point and vapor pressure characteristics of butyl carbitol.
"Reading a list and selecting a known compound to meet known
requirements is no more ingenious than selecting the last
piece to put in the last opening in a jig - saw puzzle." 65
USPQ at 301.).

  See also In re  Leshin , 227 F.2d 197, 125 USPQ 416
(CCPA  1960)  (selection  of  a  known  plastic  to  make  a
container of a type made of plastics prior to the invention
was held to be obvious);  Ryco, Inc. v.  Ag - Bag Corp. ,
857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed
agricultural bagging machine, which differed from a prior
art machine only in that the brake means were hydraulically
operated rather than mechanically operated, was held to be
obvious over the prior art machine in view of references
which disclosed hydraulic brakes for performing the same
function, albeit in a different environment.).<

2144.08  Obviousness of Species When Prior Art Teaches
Genus [R - 3]

 ** >I.  Interim Guidelines for the Examination of
Claims Directed to Species of Chemical Compositions Based
Upon a Single Prior Art Reference

  These "Genus - Species Guidelines" are to assist Office
personnel in the examination of applications which contain
claims to species or a subgenus of chemical compositions for
compliance with 35 U.S.C. 103 based upon a single prior art
reference which discloses a genus encompassing the claimed
species or subgenus but does not expressly disclose the
particular claimed species or subgenus. Office personnel
should attempt to find additional prior art to show that the
differences between the prior art primary reference and the
claimed invention as a whole would have been obvious. Where
such additional prior art is not found, Office personnel
should follow these guidelines to determine whether a single
reference 35 U.S.C. 103 rejection would be appropriate. The
guidelines are based on the Office's current understanding
of the law and are believed to be fully consistent with
binding precedent of the Supreme Court, the Federal Circuit,
and the Federal Circuit's predecessor courts.

  The analysis of the guidelines begins at the point
during examination after a single prior art reference is
found disclosing a genus encompassing the claimed species or
subgenus.  Before  reaching  this  point,  Office  personnel
should follow normal examination procedures. Accordingly,
Office personnel should first analyze the claims as a whole
in light of and consistent with the written description,
considering all claim limitations. When evaluating the scope
of  a  claim,  every  limitation  in  the  claim  must  be
considered. See, e.g., In re Ochiai , 71 F.3d 1565, 1572, 37
USPQ2d 1127, 1133 (Fed. Cir. 1995). However, the claimed
invention may not be dissected into discrete elements to be
analyzed in isolation, but must be considered as a whole.
See, e.g., W.L. Gore & Assoc., Inc.  v.  Garlock, Inc. , 721
F.2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert.
denied , 469 U.S. 851 (1984); Jones  v.  Hardy , 727 F.2d
1524, 1530, 220 USPQ 1021, 1026 (Fed. Cir. 1983) ("treating
the advantage as the invention disregards the statutory
requirement that the invention be viewed `as a whole' ").
Next, Office personnel should conduct a thorough search of
the prior art and identify all relevant references. Both
claimed and unclaimed aspects of the invention should be
searched if there is a reasonable expectation that the
unclaimed aspects may be later claimed. If the most relevant
prior  art  consists  of  a  single  prior  art  reference
disclosing a genus encompassing the claimed species or
subgenus, Office personnel should follow the guidelines set
forth herein.

  These  guidelines  do  not  constitute  substantive
rulemaking and hence do not have the force and effect of
law.  Rather,  they  are  to  assist  Office  personnel  in
analyzing  claimed  subject  matter  for  compliance  with
substantive law. Thus, rejections must be based upon the
substantive law, and it is these rejections which are
appealable, not any failure by Office personnel to follow
these guidelines.

  Office personnel are to rely on these guidelines in the
event of any inconsistent treatment of issues between these
guidelines  and  any  earlier  provided  guidance  from  the
Office.

 II.  Determine Whether the Claimed Species or Subgenus
Would Have Been Obvious to One of Ordinary Skill in the
Pertinent Art at the Time the Invention Was Made

  The patentability of a claim to a specific compound or
subgenus embraced by a prior art genus should be analyzed no
differently than any other claim for purposes of 35 U.S.C.
103. "The section 103 requirement of unobviousness is no
different in chemical cases than with respect to other
categories of patentable inventions." In re Papesch , 315
F.2d 381, 385, 137 USPQ 43, 47 (CCPA 1963). A determination
of patentability under 35 U.S.C. 103 should be made upon the
facts of the particular case in view of the totality of the
circumstances. See, e.g.,  In re Dillon , 919 F.2d 688, 692
- 93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (  in banc ),
cert. denied , 500 U.S. 904 (1991). Use of  per se  rules by
Office personnel is improper for determining whether claimed
subject matter would have been obvious under 35 U.S.C. 103.
See, e.g.,  In re Brouwer , 77 F.3d 422, 425, 37 USPQ2d
1663, 1666 (Fed. Cir. 1996);  In re Ochiai , 71 F.3d 1565,
1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995);  In re Baird ,

16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994). The
fact that a claimed species or subgenus is encompassed by a
prior art genus is not sufficient by itself to establish a
prima facie case of obviousness.  In re Baird , 16 F.3d 380,
382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) ("The fact that a
claimed compound may be encompassed by a disclosed generic
formula does not by itself render that compound obvious.");
In re Jones , 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed.
Cir. 1992) (Federal Circuit has "decline[d] to extract from
Merck [  & Co.  v.  Biocraft Laboratories Inc. , 874 F.2d
804, 10 USPQ2d 1843 (Fed. Cir. 1989)] the rule that . .
regardless of how broad, a disclosure of a chemical genus
renders obvious any species that happens to fall within
it.").  See  also  In re Deuel , 51 F.3d 1552, 1559, 34
USPQ2d 1210, 1215 (Fed. Cir. 1995).

  A proper obviousness analysis involves a three - step
process. First, Office personnel should establish a prima
facie case of unpatentability considering the factors set
out by the Supreme Court in Graham  v.  John Deere. See,
e.g., In re Bell , 991 F.2d 781, 783, 26 USPQ2d 1529, 1531
(Fed. Cir. 1993) ("The PTO bears the burden of establishing
a case of prima facie obviousness.");  In re Rijckaert , 9
F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In
re Oetiker , 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). Graham  v.  John Deere Co. , 383 U.S. 1, 17 - 18
(1966), requires that to make out a case of obviousness, one
must: (1) determine the scope and contents of the prior art;
(2) ascertain the differences between the prior art and the
claims in issue; (3) determine the level of skill in the
pertinent art; and (4) evaluate any evidence of secondary
considerations. If a prima facie case is established, the
burden shifts to applicant to come forward with rebuttal
evidence or argument to overcome the prima facie case. See,
e.g., Bell , 991 F.2d at 783 - 84, 26 USPQ2d at 1531;
Rijckaert , 9 F.3d at 1532, 28 USPQ2d at 1956; Oetiker , 977
F.2d at 1445, 24 USPQ2d at 1444 . Finally, Office personnel
should evaluate the totality of the facts and all of the
evidence  to  determine  whether  they  still  support  a
conclusion  that  the  claimed  invention  would  have  been
obvious to one of ordinary skill in the art at the time the
invention was made. Id.

 A.  Establishing a Prima Facie Case of Obviousness

  To establish a prima facie case of obviousness in a
genus - species chemical composition situation, as in any
other 35 U.S.C. § 103 case, it is essential that Office
personnel find some motivation or suggestion to make the
claimed invention in light of the prior art teachings. See,
e.g., In re Brouwer , 77 F.3d 422, 425, 37 USPQ2d 1663, 1666
(Fed. Cir. 1996) ("[T]he mere possibility that one of the
esters or the active methylene group - containing compounds
. . . could be modified or replaced such that its use would
lead to the specific sulfoalkylated resin recited in claim 8
does not make the process recited in claim 8 obvious "unless
the  prior  art  suggested  the  desirability  of  [such  a]
modification' or replacement.") (quoting In re Gordon , 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984); In re
Vaeck , 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991) ("[A] proper analysis under § 103 requires, inter alia
, consideration of . . whether the prior art would have
suggested to those of ordinary skill in the art that they
should make the claimed composition or device, or carry out
the claimed process."). In order to find such motivation or

suggestion there should be a reasonable likelihood that the
claimed invention would have the properties disclosed by the
prior  art  teachings.  The  prior  art  disclosure  may  be
express, implicit, or inherent. Regardless of the type of
disclosure, the prior art must provide some motivation to
one of ordinary skill in the art to make the claimed
invention in order to support a conclusion of obviousness.
See, e.g., , Vaeck , 947 F.2d at 493, 20 USPQ2d at 1442 (A
proper  obviousness  analysis  requires  consideration  of
"whether the prior art would also have revealed that in so
making or carrying out [the claimed invention], those of
ordinary  skill  would  have  a  reasonable  expectation  of
success."); In re Dow Chemical Co. , 837 F.2d 469, 473, 5
USPQ2d  1529,  1531  (Fed.  Cir.  1988)  ("The  consistent
criterion for determination of obviousness is whether the
prior art would have suggested to one of ordinary skill in
the art that this process should be carried out and would
have a reasonable likelihood of success, viewed in the light
of the prior art."); Hodosh  v.  Block Drug Co. , 786 F.2d
1136, 1143 n.5, 229 USPQ 182, 187 n.5 (Fed. Cir.), cert.
denied , 479 U.S. 827 (1986). These disclosed findings
should be made with a complete understanding of the first
three  "Graham  factors."  When  evidence  of  secondary
considerations  such  as  unexpected  results  is  initially
before the Office, for example in the specification, that
evidence should be considered in deciding whether there is a
prima facie case of obviousness. The determination as to
whether a prima facie  case exists should be made on the
full  record  before  the  Office  at  the  time  of  the
determination. Thus, Office personnel should (1) determine
the "scope and content of the prior art"; (2) ascertain the
"differences between the prior art and the claims at issue";
and (3) determine "the level of ordinary skill in the
pertinent art." Graham  v . John Deere , 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). Accord , e.g., In re Paulsen , 30 F.3d
1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994).

 1.  Determine The Scope and Content of the Prior Art

  As an initial matter, Office personnel should determine
the scope and content of the relevant prior art. Each
reference must qualify as prior art under 35 U.S.C. 102
(e.g., Panduit Corp.  v.  Dennison Mfg. Co. , 810 F.2d 1561,
1568, 1 USPQ2d 1593, 1597 (Fed. Cir.) ("Before answering
Graham's `content' inquiry, it must be known whether a
patent or publication is in the prior art under 35 U.S.C. §
102."), cert. denied , 481 U.S. 1052 (1987)), and should be
in the field of applicant's endeavor, or be reasonably
pertinent to the particular problem with which the inventor
was concerned.  In re Oetiker , 977 F.2d 1443, 1447, 24
USPQ2d 1443, 1445 (Fed. Cir. 1992).  Accord;  e.g., In re
Clay , 966 F.2d 656, 658 - 59, 23 USPQ2d 1058, 1060 (Fed.
Cir. 1992).

  In the case of a prior art reference disclosing a genus,
Office  personnel  should  make  findings  as  to  (1)  the
structure of the disclosed prior art genus and that of any
expressly described species or subgenus within the genus;
(2)  any  physical  or  chemical  properties  and  utilities
disclosed  for  the  genus,  as  well  as  any  suggested
limitations on the usefulness of the genus, and any problems
alleged to be addressed by the genus; (3) the predictability
of the technology; and (4) the number of species encompassed
by the genus taking into consideration all of the variables
possible.

 2.  Ascertain The Differences Between the Prior Art
Genus and the Claimed Species or Subgenus

  Once a relevant prior art genus is identified, Office
personnel should compare it to the claimed species or
subgenus  to  determine  the  differences.  Through  this
comparison, the closest disclosed species or subgenus in the
prior art reference should be identified and compared to
that claimed. Office personnel should make explicit findings
on the similarities and differences between the closest
prior art reference and the claimed species or subgenus
including findings relating to similarity of structure,
chemical properties and utilities. In Stratoflex, Inc.  v.
Aeroquip Corp. , 713 F.2d 1530, 1537, 218 USPQ 871, 877
(Fed. Cir. 1983), the Court noted that "the question under
35 U.S.C. § 103 is not whether the differences [between the
claimed  invention  and  the  prior  art]  would  have  been
obvious" but "whether the claimed invention as a whole would
have been obvious." (emphasis in original).

 3.  Determine the Level of Skill in the Art

  Office personnel should evaluate the prior art from the
standpoint of the hypothetical person having ordinary skill
in the art at the time the claimed invention was made. See,
Ryko Manufacturing Co.  v. Nu - Star Inc. , 950 F.2d 714,
718, 21 USPQ2d 1053, 1057 (Fed. Cir. 1991) ("The importance
of resolving the level of ordinary skill in the art lies in
the necessity of maintaining objectivity in the obviousness
inquiry."); Uniroyal Inc. v.  Rudkin - Wiley Corp. , 837
F.2d 1044, 1050, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied , 488 U.S. 825 (1988) (evidence must be viewed from
position of ordinary skill, not of an expert). In most
cases, the only facts of record pertaining to the level of
skill in the art will be found within the prior art
reference. However, any additional evidence presented by
applicant should be evaluated.

 4.  Determine Whether One of Ordinary Skill in the Art
Would Have Been Motivated to Select the Claimed Species or
Subgenus

  In light of the findings made relating to the three
Graham factors, Office personnel should determine whether
one of ordinary skill in the relevant art would have been
motivated to make the claimed invention as a whole, i.e. ,
to select the claimed species or subgenus from the disclosed
prior art genus. See, e.g., Ochiai , 71 F.3d at 1569 - 70,
37 USPQ2d at 1131; Deuel , 51 F.3d at 1557, 34 USPQ2d at
1214 ("[A] prima facie case of unpatentability requires that
the teachings of the prior art suggest the claimed compounds
to a person of ordinary skill in the art." (emphasis in
original));  Jones , 958 F.2d at 351, 21 USPQ2d at 1943 - 44
(Fed. Cir. 1992); Dillon , 919 F.2d at 692, 16 USPQ2d at
1901; In re Lalu , 747 F.2d 703, 705, 223 USPQ 1257, 1258
(Fed. Cir. 1984) ("The prior art must provide one of
ordinary skill in the art the motivation to make the
proposed molecular modifications needed to arrive at the
claimed compound."). See also In re Kemps , 97 F.3d 1427,
1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996) (discussing
motivation to combine). To address this key issue, Office
personnel should consider all relevant prior art teachings,
focusing on the following, where present.

 (a)  Consider the Size of the Genus

  Consider the size of the prior art genus, bearing in
mind  that  size  alone  cannot  support  an  obviousness
rejection. See ,  e.g. , Baird , 16 F.3d at 383, 29 USPQ2d
at 1552 (observing that "it is not the mere number of
compounds in this limited class which is significant here
but, rather, the total circumstances involved"). There is no
absolute correlation between the size of the prior art genus
and a conclusion of obviousness.  Id. Thus, the mere fact
that a prior art genus contains a small number of members
does  not  create  a  per  se  rule  of  obviousness.  Some
motivation to select the claimed species or subgenus must be
taught by the prior art. See ,  e.g. , Deuel , 51 F.3d at
1558 - 59, 34 USPQ2d at 1215 ("No particular one of these
DNAs can be obvious unless there is something in the prior
art to lead to the particular DNA and indicate that it
should be prepared.");  Baird , 16 F.3d at 382 - 83, 29
USPQ2d at 1552; Bell , 991 F.2d at 784, 26 USPQ2d at 1531
("Absent anything in the cited prior art suggesting which of
the 10 36  possible sequences suggested by Rinderknecht
corresponds to the IGF gene, the PTO has not met its burden
of establishing that the prior art would have suggested the
claimed sequences."). However, a genus may be so small that
it would anticipate the claimed species or subgenus. For
example, it has been held that a prior art genus containing
only 20 compounds inherently anticipated a claimed species
within  the  genus  because  "one  skilled  in  [the]  art
would...envisage each member " of the genus.  In re Petering
, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962) (emphasis
in original). Accord In re Schaumann , 572 F.2d 312, 316,
197 USPQ 5, 9 (CCPA 1978) (prior art genus encompassing
claimed species which disclosed preference for lower alkyl
secondary amines and properties possessed by the claimed
compound constituted description of claimed compound for
purposes of 35 U.S.C. § 102(b)). C.f., In re Ruschig , 343
F.2d 965, 974, 145 USPQ 274, 282 (CCPA 1965) (Rejection of
claimed compound in light of prior art genus based on
Petering is not appropriate where the prior art does not
disclose a small recognizable class of compounds with common
properties.).

 (b)  Consider the Express Teachings

  If  the  prior  art  reference  expressly  teaches  a
particular reason to select the claimed species or subgenus,
Office personnel should point out the express disclosure
which would have motivated one of ordinary skill in the art
to select the claimed invention. An express teaching may be
based on a statement in the prior art reference such as an
art recognized equivalence. For example, see Merck & Co.  v.
Biocraft Labs. , 874 F.2d 804, 807, 10 USPQ2d 1843, 1846
(Fed. Cir.), cert. denied , 493 U.S. 975 (1989) (holding
claims  directed  to  diuretic  compositions  comprising  a
specific mixture of amiloride and hydrochlorothiazide were
obvious over a prior art reference expressly teaching that
amiloride  was  a  pyrazinoylguanidine  which  could  be
coadministered with potassium excreting diuretic agents,
including hydrochlorothiazide which was a named example, to
produce a diuretic with desirable sodium and potassium
eliminating properties). See also, In re Kemps , 97 F.3d
1427, 1430, 40 USPQ2d 1309, 1312 (Fed. Cir. 1996) (holding
there is sufficient motivation to combine teachings of prior
art  to  achieve  claimed  invention  where  one  reference
specifically refers to the other).

 (c)  Consider the Teachings of Structural Similarity

  Consider any teachings of a "typical," "preferred," or
"optimum" species or subgenus within the disclosed genus. If
such a species or subgenus is structurally similar to that
claimed, its disclosure may motivate one of ordinary skill
in the art to choose the claimed species or subgenus from
the  genus,  based  on  the  reasonable  expectation  that
structurally  similar  species  usually  have  similar
properties. See, e.g., Dillon , 919 F.2d at 693, 696, 16
USPQ2d at 1901, 1904. See also Deuel, 51 F.3d at 1558, 34
USPQ2d at 1214 ("Structural relationships may provide the
requisite motivation or suggestion to modify known compounds
to obtain new compounds. For example, a prior art compound
may suggest its homologs because homologs often have similar
properties and therefore chemists of ordinary skill would
ordinarily  contemplate  making  them  to  try  to  obtain
compounds with improved properties."). The utility of such
properties will normally provide some motivation to make the
claimed species or subgenus. See Id.

  In making an obviousness determination, Office personnel
should consider the number of variables which must be
selected or modified, and the nature and significance of the
differences between the prior art and the claimed invention.
See, e.g., In re Jones , 958 F.2d 347, 350, 21 USPQ2d 1941,
1943 (Fed. Cir. 1992) (reversing obviousness rejection of
novel dicamba salt with acyclic structure over broad prior
art  genus  encompassing  claimed  salt,  where  disclosed
examples of genus were dissimilar in structure, lacking an
ether linkage or being cyclic); In re Susi , 440 F.2d 442,
445, 169 USPQ 423, 425 (CCPA 1971) (the difference from the
particularly preferred subgenus of the prior art was a
hydroxyl group, a difference conceded by applicant "to be of
little importance."). In the area of biotechnology, an
exemplified species may differ from a claimed species by a
conservative substitution ("the replacement in a protein of
one amino acid by another, chemically similar, amino acid .
. . [which] is generally expected to lead to either no
change or only a small change in the properties of the
protein." Dictionary of Biochemistry and Molecular Biology
97(John Wiley & Sons, 2d ed. 1989)). The effect of a
conservative substitution on protein function depends on the
nature of the substitution and its location in the chain.
Although at some locations a conservative substitution may
be benign, in some proteins only one amino acid is allowed
at a given position. For example, the gain or loss of even
one methyl group can destabilize the structure if close
packing is required in the interior of domains. James
Darnell et al., Molecular Cell Biology 51 (2d ed. 1990).

  The  closer  the  physical  and  chemical  similarities
between the claimed species or subgenus and any exemplary
species or subgenus disclosed in the prior art, the greater
the  expectation  that  the  claimed  subject  matter  will
function in an equivalent manner to the genus. See, e..g.,
Dillon , 919 F.2d at 696, 16 USPQ2d at 1904 (and cases cited
therein). C.f. Baird , 16 F.3d at 382 - 83, 29 USPQ2d at
1552 (disclosure of dissimilar species can provide teaching
away).

  Similarly, consider any teaching or suggestion in the
reference  of  a  preferred  species  or  subgenus  that  is
significantly  different  in  structure  from  the  claimed

species or subgenus. Such a teaching may weigh against
selecting the claimed species or subgenus and thus against a
determination of obviousness. Baird , 16 F.3d at 382 - 83,
29  USPQ2d  at  1552  (reversing  obviousness  rejection  of
species in view of large size of genus and disclosed
"optimum" species which differed greatly from and were more
complex than the claimed species); Jones , 958 F.2d at 350,
21 USPQ2d at 1943 (reversing obviousness rejection of novel
dicamba salt with acyclic structure over broad prior art
genus encompassing claimed salt, where disclosed examples of
genus were dissimilar in structure, lacking an ether linkage
or  being  cyclic).  For  example,  teachings  of  preferred
species of a complex nature within a disclosed genus may
motivate an artisan of ordinary skill to make similar
complex species and thus teach away from making simple
species within the genus. Baird , 16 F.3d at 382, 29 USPQ2d
at 1552. See also  Jones , 958 F.2d at 350, 21 USPQ2d at
1943 (disclosed salts of genus held not sufficiently similar
in structure to render claimed species prima facie obvious).

  Concepts used to analyze the structural similarity of
chemical compounds in other types of chemical cases are
equally useful in analyzing genus - species cases. For
example, a claimed tetra - orthoester fuel composition was
held to be obvious in light of a prior art tri - orthoester
fuel composition based on their structural and chemical
similarity and similar use as fuel additives. Dillon , 919
F.2d at 692 - 93, 16 USPQ2d at 1900 - 02. Likewise, claims
to amitriptyline used as an antidepressant were held obvious
in light of the structural similarity to imipramine, a known
antidepressant prior art compound, where both compounds were
tricyclic dibenzo compounds and differed structurally only
in the replacement of the unsaturated carbon atom in the
center  ring  of  amitriptyline  with  a  nitrogen  atom  in
imipramine. In re Merck & Co. , 800 F.2d 1091, 1096 - 97,
231 USPQ 375, 378 - 79 (Fed. Cir. 1986). Similarly, a
claimed protein compound having an amino acid sequence
including Met - Phe - Pro - Leu - (Asp)<SB:0.039>4 - Lys - Y
was held to be obvious in light of structural similarities
to the prior art. One reference provided motivation to
create fusion proteins in the forms X - (Asp)<SB:0.039>4 -
Lys - Y. Other references taught positioning Met at the
start of the amino acid sequence and that the sequences Phe
- Pro - Ile or Leu - Pro - Leu could serve as X in the basic
formula. The known structural similarity of Ile and Leu
meant that appellants merely substituted one element known
in the art for a known equivalent. Thus, the substitution
was held to be obvious. In re Mayne , 104 F.3d 1339, 1342 -
43, 41 USPQ2d 1451, 1454 - 55 (Fed. Cir. 1997). Other
structural similarities have been found to sup port a prima
facie case of obviousness; e.g., In re May , 574 F.2d 1082,
1093  -  95,  197  USPQ  601,  610  -  11  (CCPA  1978)
(stereoisomers); In re Wilder , 563 F.2d 457, 460, 195 USPQ
426, 429 (CCPA 1977) (adjacent homologs and structural
isomers); In re Hoch , 428 F.2d 1341, 1344, 166 USPQ 406,
409 (CCPA 1970) (acid and ethyl ester); In re Druey , 319
F.2d 237, 240, 138 USPQ 39, 41 (CCPA 1963) (omission of
methyl group from pyrazole ring). Generally, some teaching
of a structural similarity will be necessary to suggest
selection of the claimed species or subgenus. Id.

 (d)  Consider the Teachings of Similar Properties or
Uses

  Consider  the  properties  and  utilities  of  the

structurally similar prior art species or subgenus. It is
the  properties  and  utilities  that  provide  real  world
motivation for a person of ordinary skill to make species
structurally similar to those in the prior art. Dillon , 919
F.2d at 697, 16 USPQ2d at 1905;  In re Stemniski , 444 F.2d
581, 586, 170 USPQ 343, 348 (CCPA 1971). Conversely, lack of
any known useful properties weighs against a finding of
motivation to make or select a species or subgenus.  In re
Albrecht , 514 F.2d 1389, 1392, 1395 - 96, 185 USPQ 585,
587, 590 (CCPA 1975) (The prior art compound so irritated
the skin that it could not be regarded as useful for the
disclosed anesthetic purpose, and therefore a person skilled
in the art would not have been motivated to make related
compounds.); Stemniski, 444 F.2d at 586, 170 USPQ at 348
(close structural similarity alone is not sufficient to
create a prima facie case of obviousness when the reference
compounds lack utility, and thus there is no motivation to
make related compounds.). However, the prior art need not
disclose a newly discovered property in order for there to
be a prima facie case of obviousness. Dillon , 919 F.2d at
697, 16 USPQ2d at 1904 - 05 (and cases cited therein). If
the claimed invention and the structurally similar prior art
species share a useful property, that will generally be
sufficient to motivate an artisan of ordinary skill to make
the claimed species: e .g., id. For example, based on a
finding that a tri - orthoester and a tetra - orthoester
behave similarly in certain chemical reactions, it has been
held that one of ordinary skill in the relevant art would
have been motivated to select either structure. Id. at 692,
16 USPQ2d at 1900 - 01. In fact, similar properties may
normally be presumed when compounds are very close in
structure. Dillon,919 F.2d at 693, 696, 16 USPQ2d at 1901,
1904. See also In re Grabiak,769 F.2d 729, 731, 226 USPQ
870, 871 (Fed. Cir. 1985) ("When chemical compounds have
'very close' structural similarities and similar utilities,
without more a prima facie case may be made."). Thus,
evidence  of  similar  properties  weighs  in  favor  of  a
conclusion  that  the  claimed  invention  would  have  been
obvious.  Dillon , 919 F.2d at 697 - 98, 16 USPQ2d at 1905;
In re Wilder , 563 F.2d 457, 461, 195 USPQ 426, 430 (CCPA
1977); In re Linter , 458 F.2d 1013, 1016, 173 USPQ 560, 562
(CCPA 1972).

 (e)  Consider the Predictability of the Technology

  Consider the predictability of the technology. See,
e.g., Dillon, 919 F.2d at 692 - 97, 16 USPQ2d at 1901 - 05;
In re Grabiak , 769 F.2d 729, 732 - 33, 226 USPQ 870, 872
(Fed. Cir. 1985). If the technology is unpredictable, it is
less likely that structurally similar species will render a
claimed species obvious because it may not be reasonable to
infer that they would share similar properties. See, e.g. ,
In re May , 574 F.2d 1082, 1094, 197 USPQ 601, 611 (CCPA
1978)  (  prima  facie  obviousness  of  claimed  analgesic
compound based on structurally similar prior art isomer was
rebutted with evidence demonstrating that analgesia and
addiction properties could not be reliably predicted on the
basis of chemical structure); In re Schechter , 205 F.2d
185, 191, 98 USPQ 144, 150 (CCPA 1953) (unpredictability in
the insecticide field, with homologs, isomers and analogs of
known effective insecticides having proven ineffective as
insecticides, was considered as a factor weighing against a
conclusion  of  obviousness  of  the  claimed  compounds).
However,  obviousness  does  not  require  absolute
predictability, only a reasonable expectation of success;

i.e.  ,  a  reasonable  expectation  of  obtaining  similar
properties. See ,  e.g. , In re O'Farrell , 853 F.2d 894,
903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).

 (f)  Consider  Any  Other  Teaching  to  Support  the
Selection of the Species or Subgenus

  The categories of relevant teachings enumerated above
are those most frequently encountered in a genus - species
case, but they are not exclusive. Office personnel should
consider the totality of the evidence in each case. In
unusual  cases,  there  may  be  other  relevant  teachings
sufficient to support the selection of the species or
subgenus and, therefore, a conclusion of obviousness.

 5.  Make Express Fact - Findings And Determine Whether
They Support A Prima Facie Case of Obviousness

  Based on the evidence as a whole ( In re Bell , 991 F.2d
781,784, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993); In re
Kulling , 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1057 (Fed.
Cir. 1990)), Office personnel should make express fact -
findings relating to the Graham factors, focusing primarily
on the prior art teachings discussed above. The fact -
findings should specifically articulate what teachings or
suggestions in the prior art would have motivated one of
ordinary skill in the art to select the claimed species or
subgenus. Kulling , 897 F.2d at 1149, 14 USPQ2d at 1058;
Panduit Corp.  v.  Dennison Mfg. Co. , 810 F.2d 1561, 1579
n.42, 1 USQP2d 1593, 1606 n.42 (Fed. Cir.), cert. denied ,
481 U.S. 1052 (1987). Thereafter, it should be determined
whether these findings, considered as a whole, support a
prima facie case that the claimed invention would have been
obvious to one of ordinary skill in the relevant art at the
time the invention was made.

 B.  Determining Whether Rebuttal Evidence Is Sufficient
To Overcome the Prima Facie Case of Obviousness

  If a prima facie case of obviousness is established, the
burden  shifts  to  the  applicant  to  come  forward  with
arguments and/or evidence to rebut the prima facie  case.
See, e.g.,  Dillon,919 F.2d at 692, 16 USPQ2d at 1901.
Rebuttal evidence and arguments can be presented in the
specification, In re Soni , 54 F.3d 746, 750, 34 USPQ2d
1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu , 66 F.3d
292, 299, 36 USPQ2d 1089, 1094 - 95 (Fed. Cir. 1995), or by
way of an affidavit or declaration under 37 CFR 1.132, e.g.,
Soni , 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki ,
745 F.2d 1468, 1474, 223 USPQ 785, 789 - 90 (Fed. Cir.
1984). However, arguments of counsel cannot take the place
of factually supported objective evidence. See, e.g., In re
Huang , 100 F.3d 135, 139 - 40, 40 USPQ2d 1685, 1689 (Fed.
Cir. 1996); In re De Blauwe , 736 F.2d 699, 705, 222 USPQ
191, 196 (Fed. Cir. 1984).

  Office personnel should consider all rebuttal arguments
and evidence presented by applicants. See, e.g., In re Soni
, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995)
(error  not  to  consider  evidence  presented  in  the
specification). C.f., In re Alton , 76 F.3d 1168, 37 USPQ2d
1578  (Fed.  Cir.  1996)  (error  not  to  consider  factual
evidence submitted to counter a 35 U.S.C. 112 rejection); In
re Beattie , 974 F.2d 1309, 1313, 24 USPQ2d 1040, 1042 - 43
(Fed.  Cir.  1992)  (Office  personnel  should  consider

declarations from those skilled in the art praising the
claimed invention and opining that the art teaches away from
the invention.);  Piasecki, 745 F.2d at 1472, 223 USPQ at
788 ("[Rebuttal evidence] may relate to any of the Graham
factors  including  the  so  -  called  secondary
considerations."). Rebuttal evidence may include evidence of
"secondary considerations," such as "commercial success,
long felt but unsolved needs, [and] failure of others."
Graham  v.  John Deere Co. , 383 U.S. at 17, 148 USPQ at
467. See also, e.g. , In re Piasecki , 745 F.2d 1468, 1473,
223 USPQ 785, 788 (Fed. Cir. 1984) (commercial success).
Rebuttal evidence may also include evidence that the claimed
invention  yields  unexpectedly  improved  properties  or
properties not present in the prior art. Rebuttal evidence
may consist of a showing that the claimed compound possesses
unexpected properties. Dillon , 919 F.2d at 692 - 93, 16
USPQ2d at 1901. A showing of unexpected results must be
based on evidence, not argument or speculation. In re Mayne
, 104 F.3d 1339, 1343 - 44, 41 USPQ2d 1451, 1455 (Fed. Cir.
1997) (conclusory statements that claimed compound posesses
unusually  low  immune  response  or  unexpected  biological
activity  that  is  unsupported  by  comparative  data  held
insufficient  to  overcome  prima  facie  case  of
obviousness).Rebuttal evidence may include evidence that the
claimed invention was copied by others. See, e.g., In re
GPAC , 57 F.3d 1573, 1580, 35 USPQ2d 1116, 1121 (Fed. Cir.
1995); Hybritech Inc. v.  Monoclonal  Antibodies, 802 F.2d
1367, 1380, 231 USPQ 81, 90 (Fed. Cir. 1986), cert. denied ,
480 U.S. 947 (1987). It may also include evidence of the
state of the art, the level of skill in the art, and the
beliefs of those skilled in the art. See, e.g., In re
Oelrich, 579 F.2d 86, 91 - 92, 198 USPQ 210, 214 (CCPA 1978)
(Expert opinions regarding the level of skill in the art
were  probative  of  the  nonobviousness  of  the  claimed
invention.);  Piasecki , 745 F.2d at 1471, 1473 - 74, 223
USPQ  at  790  (Evidence  of  nontechnological  nature  is
pertinent to the conclusion of obviousness. The declarations
of those skilled in the art regarding the need for the
invention and its reception by the art were improperly
discounted by the Board);  Beattie , 974 F.2d at 1313, 24
USPQ2d at 1042 - 43 (Seven declarations provided by music
teachers opining that the art teaches away from the claimed
invention must be considered, but were not probative because
they did not contain facts and did not deal with the
specific prior art that was the subject of the rejection.).

  Consideration  of  rebuttal  evidence  and  arguments
requires Office personnel to weigh the proffered evidence
and arguments. Office personnel should avoid giving evidence
no weight, except in rare circumstances. Id. See also In re
Alton , 76 F.3d 1168, 1174 - 75, 37 USPQ2d 1578, 1582 - 83
(Fed. Cir. 1996). However, to be entitled to substantial
weight, the applicant should establish a nexus between the
rebuttal  evidence  and  the  claimed  invention,  i.e.  ,
objective evidence of nonobviousness must be attributable to
the claimed invention. The Federal Circuit has acknowledged
that applicant bears the burden of establishing nexus,
stating:

  In  the  ex  parte  process  of  examining  a  patent
application, however, the PTO lacks the means or resources
to gather evidence which supports or refutes the applicant's
assertion that the sales constitute commercial success. C.f.
Ex parte Remark , 15 USPQ2d 1498, 1503 ([BPAI] 1990)
(evidentiary  routine  of  shifting  burdens  in  civil

proceedings  inappropriate  in  ex  parte  prosecution
proceedings because examiner has no available means for
adducing evidence). Consequently, the PTO must rely upon the
applicant to provide hard evidence of commercial success.

 In re Huang , 100 F.3d 135, 139 - 40, 40 USPQ2d 1685, 1689
(Fed. Cir. 1996). See also GPAC , 57 F.3d at 1580, 35 USPQ2d
at 1121; In re Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d 1671,
1676 (Fed. Cir. 1994) (Evidence of commercial success of
articles not covered by the claims subject to the 35 U.S.C.
103  rejection  was  not  probative  of  nonobviousness).
Additionally, the evidence must be reasonably commensurate
in scope with the claimed invention. See also, e.g.,  In re
Kulling , 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed.
Cir. 1990); In re Grasselli,713 F.2d 731, 743, 218 USPQ 769,
777 (Fed. Cir. 1983). In re Soni , 54 F.3d 746, 34 USPQ2d
1684 (Fed. Cir. 1995) does not change this analysis. In
Soni , the Court declined to consider the Office's argument
that the evidence of nonobviousness was not commensurate in
scope with the claim because it had not been raised by the
Examiner (54 F.3d at 751, 34 USPQ2d at 1688).

  When  considering  whether  proffered  evidence  is
commensurate in scope with the claimed invention, Office
personnel  should  not  require  the  applicant  to  show
unexpected results over the entire range of properties
possessed by a chemical compound or composition. See, e.g.,
In re Chupp , 816 F.2d 643, 646, 2 USPQ2d 1437, 1439 (Fed.
Cir.  1987).  Evidence  that  the  compound  or  composition
possesses superior and unexpected properties in one of a
spectrum of common properties can be sufficient to rebut a
prima facie case of obviousness. Id.

  For example, a showing of unexpected results for a
single member of a claimed subgenus, or a narrow portion of
a claimed range would be sufficient to rebut a prima facie
case of obviousness if a skilled artisan "could ascertain a
trend in the exemplified data that would allow him to
reasonably  extend  the  probative  value  thereof."  In  re
Clemens , 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)
(Evidence of the unobviousness of a broad range can be
proven by a narrower range when one skilled in the art could
ascertain a trend that would allow him to reasonably extend
the probative value thereof.). But see , Grasselli , 713
F.2d  at  743,  218  USPQ  at  778  (evidence  of  superior
properties for sodium containing composition insufficient to
establish the non - obviousness of broad claims for a
catalyst with "an alkali metal" where it was well known in
the catalyst art that different alkali metals were not
interchangeable and applicant had shown unexpected results
only for sodium containing materials); In re Greenfield ,
571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978) (evidence
of  superior  properties  in  one  species  insufficient  to
establish  the  nonobviousness  of  a  subgenus  containing
hundreds of compounds); In re Lindner,457 F.2d 506, 508, 173
USPQ 356, 358 (CCPA 1972) (one test not sufficient where
there was no adequate basis for concluding the other claimed
compounds would behave the same way). However, an exemplary
showing  may  be  sufficient  to  establish  a  reasonable
correlation between the showing and the entire scope of the
claim, when viewed by a skilled artisan. See, e.g., Chupp ,
816 F.2d at 646, 2 USPQ2d at 1439; Clemens , 622 F.2d at
1036, 206 USPQ at 296. On the other hand, evidence of an
unexpected property may not be sufficient regardless of the
scope of the showing. Where the claims are not limited to a

particular use, and where the prior art provides other
motivation to select a particular species or subgenus, a
showing of a new use may not be sufficient to confer
patentability. See Dillon , 919 F.2d at 692, 16 USPQ2d at
1900 - 01. Accordingly, each case should be evaluated
individually based on the totality of the circumstances.

  Office personnel should not evaluate rebuttal evidence
for its "knockdown" value against the prima facie case,
Piasecki,745 F.2d at 1473, 223 USPQ at 788, or summarily
dismiss  it  as  not  compelling  or  insufficient.  If  the
evidence is deemed insufficient to rebut the prima facie
case of obviousness, Office personnel should specifically
set  forth  the  facts  and  reasoning  that  justify  this
conclusion.

 III.  Reconsider All Evidence and Clearly Communicate
Findings and Conclusions

  A determination under 35 U.S.C. 103 should rest on all
the evidence and should not be influenced by any earlier
conclusion. See, e.g., Piasecki , 745 F.2d at 1472 - 73, 223
USPQ at 788; In re Eli Lilly & Co., 902 F.2d 943, 945, 14
USPQ2d 1741, 1743 (Fed. Cir. 1990). Thus, once the applicant
has presented rebuttal evidence, Office personnel should
reconsider any initial obviousness determination in view of
the entire record. See, e.g., Piasecki , 745 F.2d at 1472,
223 USPQ at 788; Eli Lilly , 902 F.2d at 945, 14 USPQ2d at
1743. All the proposed rejections and their bases should be
reviewed to confirm their correctness. Only then should any
rejection be imposed in an Office action. The Office action
should  clearly  communicate  the  Office's  findings  and
conclusions, articulating how the conclusions are supported
by the findings.

  Where applicable, the findings should clearly articulate
which portions of the reference support any rejection.
Explicit findings on motivation or suggestion to select the
claimed invention should also be articulated in order to
support a 35 U.S.C. 103 ground of rejection. Dillon , 919
F.2d at 693, 16 USPQ2d at 1901; In re Mills , 916 F.2d 680,
683, 16 USPQ2d 1430, 1433 (Fed. Cir. 1990). Conclusory
statements  of  similarity  or  motivation,  without  any
articulated  rationale  or  evidentiary  support,  do  not
constitute sufficient factual findings.

 **  Double Click here to see the image  **

 2144.09  Close Structural Similarity Between Chemical
Compounds (Homologs, Analogues, Isomers) [R - 3]

 REJECTION BASED ON CLOSE STRUCTURAL SIMILARITY IS FOUNDED
ON THE EXPECTATION THAT COMPOUNDS SIMILAR IN STRUCTURE WILL
HAVE SIMILAR PROPERTIES

  A prima facie case of obviousness may be made when
chemical compounds have very close structural similarities
and similar utilities. "An obviousness rejection based on
similarity in chemical structure and function entails the
motivation of one skilled in the art to make a claimed
compound, in the expectation that compounds similar in
structure will have similar properties." In re Payne , 606
F.2d 303, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch ,
315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more

detail below) and In re Dillon , 919 F.2d 688, 16 USPQ2d
1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144)
for an extensive review of the case law pertaining to
obviousness  based  on  close  structu  ral  similarity  of
chemical compounds. >See also MPEP § 2144.08, paragraph
II.A.4.(c).<

 HOMOLOGY AND ISOMERISM ARE FACTS WHICH MUST BE CONSIDERED
WITH ALL OTHER RELEVANT FACTS IN DETERMINING OBVIOUSNESS

  Compounds which are position isomers (compounds having
the same radicals in physically different positions on the
same nucleus) or homologs (compounds differing regularly by
the successive addition of the same chemical group, e.g., by
- CH<SB:0.039>2 - groups) are generally of sufficiently
close  structural  similarity  that  there  is  a  presumed
expectation that such compounds possess similar properties.
In re Wilder , 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See
also In re May , 574 F.2d 1082, 197 USPQ 601 (CCPA 1978)
(stereoisomers prima facie obvious).

  Isomers having the same empirical formula but different
structures are not necessarily considered equivalent by
chemists  skilled  in  the  art  and  therefore  are  not
necessarily suggestive of each other. Ex parte Mowry , 91
USPQ 219 (Bd. App. 1950) (claimed cyclohexylstyrene not
prima  facie  obvious  over  prior  art  isohexylstyrene).
Similarly, homologs which are far removed from adjacent
homologs may not be expected to have similar properties. In
re Mills , 281 F.2d 218, 126 USPQ 513 (CCPA 1960) (prior art
disclosure of C<SB:0.039>8 to C<SB:0.039>12 alkyl sulfates
was not sufficient to render prima facie obvious claimed
C<SB:0.039>1 alkyl sulfate).

  Homology  and  isomerism  involve  close  structural
similarity which must be considered with all other relevant
facts in determining the issue of obviousness. In re Mills ,
281 F.2d 218, 126 USPQ 513 (CCPA 1960); In re Wiechert , 370
F.2d 927, 152 USPQ 247 (CCPA 1967); Homology should not be
automatically equated with  prima facie obviousness because
the claimed invention and the prior art must each be viewed
"as a whole." In re Langer , 465 F.2d 896, 175 USPQ 169
(CCPA 1972) (Claims to a polymerization process using a
sterically hindered amine were held unobvious over a similar
prior art process because the prior art disclosed a large
number of unhindered amines and only one sterically hindered
amine (which differed from a claimed amine by 3 carbon
atoms), and therefore the reference as a whole did not
apprise the ordinary artisan of the significance of hindered
amines as a class.).

 PRESENCE OF A TRUE HOMOLOGOUS ORISOMERIC RELATIONSHIP IS
NOT CONTROLLING

  Prior art structures do not have to be true homologs or
isomers to render structurally similar compounds prima facie
obvious. In re Payne , 606 F.2d 303, 203 USPQ 245 (CCPA
1979) (Claimed and prior art compounds were both directed to
heterocyclic carbamoyloximino compounds having pesticidal
activity. The only structural difference between the claimed
and prior art compounds was that the ring structures of the
claimed compounds had two carbon atoms between two sulfur
atoms whereas the prior art ring structures had either one
or three carbon atoms between two sulfur atoms. The court
held that although the prior art compounds were not true

homologs or isomers of the claimed compounds, the similarity
between  the  chemical  structures  and  properties  is
sufficiently close that one of ordinary skill in the art
would have been motivated to make the claimed compounds in
searching for new pesticides.).

  See also > In re Mayne, 104 F.3d 1339, 41 USPQ2d 1451
(Fed. Cir. 1997) (claimed protein was held to be obvious in
light of structural similarities to the prior art, including
known structural similarity of Ile and Len);<  In re Merck &
Co., Inc. , 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986)
(claimed and prior art compounds used in a method of
treating depression would have been expected to have similar
activity  because  the  structural  difference  between  the
compounds involved a known bioisosteric replacement) (see
MPEP § 2144.08>, paragraph I.A.4(c)< for a more detailed
discussion of the facts in the > Mayne and< Merck *>cases<);
In re Dillon , 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991)
(The tri - orthoester fuel compositions of the prior art and
the claimed tetra - orthoester fuel compositions would have
been expected to have similar properties based on close
structural and chemical similarity between the orthoesters
and the fact that both the prior art and applicant used the
orthoesters as fuel additives) (see MPEP § 2144 for a more
detailed discussion of the facts in the Dillon case.).

  Compare In re Grabiak , 769 F.2d 729, 226 USPQ 871 (Fed.
Cir. 1985) (substitution of a thioester group for an ester
group in an herbicidal safener compound was not suggested by
the prior art); In re Bell , 991 F.2d 781, 26 USPQ2d 1529
(Fed. Cir. 1993) (The established relationship between a
nucleic acid and the protein it en codes in the genetic code
does  not  render  a  gene  prima  facie  obvious  over  its
corresponding protein in the same way that closely related
structures in chemistry may create a prima facie case
because there are a vast number of nucleotide sequences that
might  encode  for  a  specific  protein  as  a  result  of
degeneracy in the genetic code (i.e., the fact that most
amino acids are specified by more than one nucleotide
sequence or codon).); In re Deuel ,**>51 F.3d 1552, 1558 -
59, 34 USPQ2d 1210, 1215< (Fed. Cir. 1995) ("A prior art
disclosure of the amino acid sequence of a protein does not
necessarily render particular DNA molecules encoding the
protein obvious because the redundancy of the genetic code
permits  one  to  hypothesize  an  enormous  number  of  DNA
sequences coding for the protein." The existence of a
general method of gene cloning in the prior art is not
sufficient, without more, to render obvious a particular
cDNA molecule.).

 >PRESENCE OR ABSENCE OF PRIOR ART SUGGESTION OF METHOD OF
MAKING A CLAIMED COMPOUND MAY BE RELEVANT IN DETERMINING
PRIMA FACIE OBVIOUSNESS

  "[T]he presence-or absence-of a suitably operative,
obvious process for making a composition of matter may have
an  ultimate  bearing  on  whether  that  composition  is
obvious-or  nonobvious-under  35  U.S.C.  103."  In  re
Maloney,411 F.2d 1321, 1323, 162 USPQ 98, 100 (CCPA 1969).<

  "[I]f the prior art of record fails to disclose or
render obvious a method for making a claimed compound, at
the time the invention was made, it may not be legally
concluded that the compound itself is in the possession of
the public. In this context, we say that the absence of a

known or obvious process for making the claimed compounds
overcomes a presumption that the compounds are obvious,
based on the close relationships between their structures
and those of prior art compounds." In re Hoeksema , 399 F.2d
269, 158 USPQ 597, 601 (CCPA 1968).

  See * In re Payne , 606 F.2d 303, 203 USPQ 245 (CCPA
1979) for a general discussion of circumstances under which
the prior art suggests methods for making novel compounds
which are of close structural similarity to compounds known
in the prior art. >In the biotechnology arts, the existence
of a general method of gene cloning in the prior art is not
sufficient, without more, to render obvious a particular
cDNA molecule. In re Deuel , 51 F.3d 1552, 34 USPQ2d 1210,
1215 (Fed. Cir. 1995) ("[T]he existence of a general method
of isolating cDNA or DNA molecules is essentially irrelevant
to the question whether the specific molecules themselves
would have been obvious, in the absence of other prior art
that suggests the claimed DNAs."); In re Bell , 991 F.2d
781, 785, 26 USPQ2d 1529, 1532 (Fed. Cir. 1993). However, it
may be proper to apply "methodology in rejecting product
claims under 35 U.S.C. 103, depending on the particular
facts  of  the  case,  the  manner  and  context  in  which
methodology  applies,  and  the  overall  logic  of  the
rejection." Ex parte Goldgaber , 41 USPQ2d 1172, 1176 (Bd.
Pat. App. & Inter. 1996).<

 PRESUMPTION OF OBVIOUSNESS BASED ON STRUCTURAL SIMILARITY
IS OVERCOME WHERE THERE IS NO REASONABLE EXPECTATION OF
SIMILAR PROPERTIES

  The presumption of obviousness based on a reference
disclosing structurally similar compounds may be overcome
where there is evidence showing there is no reasonable
expectation of similar properties in structurally similar
compounds. In re May , 574 F.2d 1082, 197 USPQ 601 (CCPA
1978) (appellant produced sufficient evidence to establish a
substantial degree of unpredictability in the pertinent art
area, and thereby rebutted the presumption that structurally
similar compounds have similar properties); In re Schechter
, 205 F.2d 185, 98 USPQ 144 (CCPA 1953). See also Ex parte
Blattner , 2 USPQ2d 2047 (Bd. Pat. App. & Inter. 1987)
(Claims directed to compounds containing a 7 - membered ring
were rejected as prima facie obvious over a reference which
taught 5 - and 6 - membered ring homologs of the claimed
compounds. The Board reversed the rejection because the
prior art taught that the compounds containing a 5 -
membered  ring  possessed  the  opposite  utility  of  the
compounds containing the 6 - membered ring, undermining the
examiner's  asserted  prima  facie  case  arising  from  an
expectation of similar results in the claimed compounds
which contain a 7 - membered ring.).

 IF PRIOR ART COMPOUNDS HAVE NO UTILITY, OR UTILITY ONLY AS
INTERMEDIATES, CLAIMED STRUCTURALLY SIMILAR COMPOUNDS MAY
NOT BEprima facie OBVIOUS OVER THE PRIOR ART

  If the prior art does not teach any specific or
significant utility for the disclosed compounds, then the
prior art is not sufficient to render structurally similar
claims  prima facie obvious because there is no motivation
for one of ordinary skill in the art to make the reference
compounds, much less any structurally related compounds. In
re Stemniski , 444 F.2d 581, 170 USPQ 343 (CCPA 1971).

  Where structurally similar "prior art compounds `cannot
be regarded as useful' for the sole use disclosed [by the
reference], . . a person having ordinary skill in the art
would lack the `necessary impetus' to make the claimed
compounds." In re Albrecht , 514 F.2d 1389, 185 USPQ 585,
590 (CCPA 1975) (prior art reference studied the local
anesthetic activity of various compounds, and taught that
compounds  structurally  similar  to  those  claimed  were
irritating to human skin and therefore "cannot be regarded
as useful anesthetics." 185 USPQ at 587.)

  Similarly, if the prior art merely discloses compounds
as intermediates in the production of a final product, one
of ordinary skill in the art would not have been motivated
to  stop  the  reference  synthesis  and  investigate  the
intermediate compounds with an expectation of arriving at
claimed compounds which have different uses. In re Lalu ,
747 F.2d 703, 223 USPQ 1257 (Fed. Cir. 1984).

prima facie CASE REBUTTABLE BY EVIDENCE OF SUPERIOR OR
UNEXPECTED RESULTS

  A prima facie case of obviousness based on structural
similarity is rebuttable by proof that the claimed compounds
possess unexpectedly advantageous or superior properties. In
re  Papesch  ,  315  F.2d  381,  137  USPQ  43  (CCPA  1963)
(Affidavit evidence which showed that claimed triethylated
compounds possessed anti - inflammatory activity whereas
prior art trimethylated compounds did not was sufficient to
overcome  obviousness  rejection  based  on  the  homologous
relationship between the prior art and claimed compounds.);
In re Wiechert , 370 F.2d 927, 152 USPQ 247 (CCPA 1967) (a 7
- fold improvement of activity over the prior art held
sufficient to rebut prima facie obviousness based on close
structural similarity).

  However, a claimed compound may be obvious because it
was suggested by, or structurally similar to, a prior art
compound even though a particular benefit of the claimed
compound asserted by patentee is not expressly disclosed in
the prior art. It is the differences in fact in their
respective  properties  which  are  determinative  of
nonobviousness. If the prior art compound does in fact
possess a particular benefit, even though the benefit is not
recognized in the prior art, applicant's recognition of the
benefit is not in itself sufficient to distinguish the
claimed compound from the prior art. In re Dillon , 919 F.2d
688, 16 USPQ2d 1897 (Fed. Cir. 1991).

  See MPEP § 716.02 - § 716.02(g) for a discussion of
evidence  alleging  unexpectedly  advantageous  or  superior
results.

2145  Consideration of Applicant's Rebuttal Arguments [R
- 3]

  (a) Argument  does  not  replace  evidence  where
evidence is necessary

  Attorney argument is not evidence unless it is an
admission, in which case, an Examiner may use the admission
in making a rejection. See MPEP § 2129 and § 2144.03 for a
discussion of admissions as prior art.

  The arguments of counsel cannot take the place of

evidence in the record. In re Schulze , 346 F.2d 600, 602,
145 USPQ 716, 718 (CCPA 1965). See MPEP § 716.01(c) for
examples of attorney statements which are not evidence and
which must be supported by an appropriate affidavit or
declaration.

  (b) Arguing  additional  advantages  or  latent
properties

prima  facie  OBVIOUSNESS  IS  NOT  REBUTTED  BY  MERELY
RECOGNIZING  ADDITIONAL  ADVANTAGES  OR  LATENT  PROPERTIES
PRESENT IN THE PRIOR ART

  Mere recognition of latent properties in the prior art
does not render nonobvious an otherwise known invention. In
re Wiseman , 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims
were directed to grooved carbon disc brakes wherein the
grooves were provided to vent steam or vapor during a
braking action. A prior art reference taught noncarbon disc
brakes which were grooved for the purpose of cooling the
faces of the braking members and eliminating dust. The court
held the prior art references when combined would overcome
the problems of dust and overheating solved by the prior art
and would inherently overcome the steam or vapor cause of
the problem relied upon for patentability by applicants.
Granting a patent on the discovery of an unknown but
inherent function (here venting steam or vapor) "would
remove from the public that which is in the public domain by
virtue of its inclusion in, or obviousness from, the prior
art." 201 at 661.);  In re Baxter Travenol Labs. , 952 F.2d
388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that
the  presence  of  DEHP  as  the  plasticizer  in  a  blood
collection  bag  unexpectedly  suppressed  hemolysis  and
therefore rebutted any prima facie showing of obviousness,
however the closest prior art utilizing a DEHP plasticized
blood  collection  bag  inherently  achieved  same  result,
although this fact was unknown in the prior art.).

  "The  fact  that  appellant  has  recognized  another
advantage which would flow naturally from following the
suggestion  of  the  prior  art  cannot  be  the  basis  for
patentability  when  the  differences  would  otherwise  be
obvious." Ex parte Obiaya , 227 USPQ 58, 60 (Bd. Pat. App. &
Inter.  1985)  (The  prior  art  taught  combustion  fluid
analyzers which used labyrinth heaters to maintain the
samples at a uniform temperature. Although appellant showed
an unexpectedly shorter response time was obtained when a
labyrinth heater was employed, the Board held this advantage
would flow naturally from following the suggestion of the
prior art.). See also  Lantech Inc. v.  Kaufman Co. of Ohio
Inc. , 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989),
cert. denied , 493 U.S. 1058 (1990) (unpublished - not
citable as precedent) ("The recitation of an additional
advantage associated with doing what the prior art suggests
does not lend patentability to an otherwise unpatentable
invention.").

  In re Lintner , 458 F.2d 1013, 173 USPQ 560 (CCPA 1972)
and In re Dillon , 16 USPQ2d 1897 (Fed. Cir. 1990) discussed
in MPEP § 2144 are also pertinent to this issue.

  See MPEP § 716.02 - § 716.02(g) for a discussion of
declaratory evidence alleging unexpected results.

  (c) Arguing  that  prior  art  devices  are  not

physically combinable

  "The test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the
structure of the primary reference . . Rather, the test
is what the combined teachings of those references would
have suggested to those of ordinary skill in the art." In re
Keller , 642 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). See
also  In re  Sneed , 710 F.2d 1544, 218 USPQ 385, 389 (Fed.
Cir. 1983) ("it is not necessary that the inventions of the
references be physically combinable to render obvious the
invention under review."); and  In re  Nievelt , 482 F.2d
965, 179 USPQ 224, 226 (CCPA 1973) ("Combining theteachings
of references does not involve an ability to combine their
specific structures.").

  However, the claimed combination cannot change the
principle of operation of the primary reference or render
the reference inoperable for its intended purpose. See MPEP
§ 2143.01.

  (d) Arguing against references individually

  One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations
of references. In re Keller , 642 F.2d 413, 208 USPQ 871
(CCPA 1981); In re Merck & Co., Inc. , 800 F.2d 1091, 231
USPQ 375 (Fed. Cir. 1986).

  (e )  Arguing  about  the  number  of  references
combined

  Reliance on a large number of references in a rejection
does not, without more, weigh against the obviousness of the
claimed invention. In re Gorman , 933 F.2d 982, 18 USPQ2d
1885 (Fed. Cir. 1991) (Court affirmed a rejection of a
detailed claim to a candy sucker shaped like a thumb on a
stick based on thirteen prior art references.).

  (f)  Arguing limitations which are not claimed

  Although the claims are interpreted in light of the
specification, limitations from the specification are not
read into the claims. In re Van Geuns , 988 F.2d 1181, 26
USPQ2d 1057 (Fed. Cir. 1993) (Claims to a superconducting
magnet which generates a "uniform magnetic field" were not
limited to the degree of magnetic field uniformity required
for Nuclear Magnetic Resonance (NMR) imaging. Although the
specification disclosed that the claimed magnet may be used
in an NMR appa ratus, the claims were not so limited.);
Constant v.  Advanced Micro - Devices, Inc. , 848 F.2d 1560,
7 USPQ2d 1057, 1064 - 1065 (Fed. Cir.), cert. denied , 488
U.S. 892 (1988) (Various limitations on which appellant
relied were not stated in the claims; the specification did
not provide evidence indicating these limitations must be
read into the claims to give meaning to the disputed
terms.); Ex parte McCullough , 7 USPQ2d 1889, 1891 (Bd. Pat.
App. & Inter. 1987) (Claimed electrode was rejected as
obvious  despite  assertions  that  electrode  functions
differently than would be expected when used in nonaqueous
battery since "although the demonstrated results may be
germane  to  the  patentability  of  a  battery  containing
appellant's  electrode,  they  are  not  germane  to  the
patentability of the invention claimed on appeal.").

  See MPEP § 2111 - § 2116.01, for additional case law
relevant to claim interpretation.

  (g) Arguing economic infeasibility

  The fact that a combination would not be made by
businessmen for economic reasons does not mean that a person
of ordinary skill in the art would not make the combination
because  of  some  technological  incompatibility.  In  re
Farrenkopf , 713 F.2d 714, 219 USPQ 1 (Fed. Cir. 1983)
(Prior art reference taught that addition of inhibitors to
radioimmunoassay  is  the  most  convenient,  but  costliest
solution to stability problem. The court held that the
additional  expense  associated  with  the  addition  of
inhibitors would not discourage one of ordinary skill in the
art from seeking the convenience expected therefrom.).

  (h) Arguing about the age of references

  "The mere age of the references is not persuasive of the
unobviousness of the combination of their teachings, absent
evidence that, notwithstanding knowledge of the references,
the art tried and failed to solve the problem." In re Wright
, 569 F.2d 1124, 193 USPQ 332, 335 (CCPA 1977) (One hundred
year old patent was properly relied upon in a rejection
based on a combination of references.). See also Ex parte
Meyer , 6 USPQ2d 1966 (Bd. Pat. App. & Inter. 1988) (length
of time between the issuance of prior art patents relied
upon (1920 and 1976) was not persuasive of unobviousness).

  (i)  Arguing that prior art is nonanalogous

  A prior art reference is analogous if the reference is
in the field of applicant's endeavor or, if not, the
reference is reasonably pertinent to the particular problem
with which the inventor was concerned. In re Oetiker , 977
F.2d 1443, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992).

  See MPEP § 2141.01(a) for case law pertaining to
analogous art.

  (j) Arguing  improper  rationales  for  combining
references

  (1)  Impermissible hindsight

  Applicants may argue that the examiner's conclusion of
obviousness  is  based  on  improper  hindsight  reasoning.
However, "[a]ny judgement on obviousness is in a sense
necessarily a reconstruction based on hindsight reasoning,
but so long as it takes into account only knowledge which
was within the level of ordinary skill in the art at the
time the claimed invention was made and does not include
knowledge gleaned only from applicant's disclosure, such a
reconstruction is proper." In re McLaughlin443 F.2d 1392,
170 USPQ 209, 212 (CCPA 1971).

  (2)  Obvious to try rationale

  An applicant may argue the examiner is applying an
improper  "obvious  to  try"  rationale  in  support  of  an
obviousness rejection.

  "The admonition that `obvious to try' is not the
standard under § 103 has been directed mainly at two kinds

of error. In some cases, what would have been `obvious to
try' would have been to vary all parameters or try each of
numerous possible choices until one possibly arrived at a
successful result, where the prior art gave either no
indication of which parameters were critical or no direction
as to which of many possible choices is likely to be
successful . . In others, what was `obvious to try' was
to explore a new technology or general approach that seemed
to be a promising field of experimentation, where the prior
art gave only general guidance as to the particular form of
the claimed invention or how to achieve it." In re O'Farrell
, 853 F.2d 894, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)
(citations omitted) (The court held the claimed method would
have been obvious over the prior art relied upon because one
reference  contained  a  detailed  enabling  methodology,  a
suggestion to modify the prior art to produce the claimed
invention, and evidence suggesting the modification would be
successful.). See the cases cited in O'Farrell for examples
of decisions where the court discussed an improper "obvious
to try" approach. See also In re Eli Lilly & Co. , 902 F.2d
943, 14 USPQ2d 1741 (Fed. Cir. 1990) and In re Ball Corp. ,
18 USPQ2d 1491 (Fed. Cir. 1991) (unpublished) for examples
of cases where appellants argued that an improper "obvious
to try" standard was applied, but the court found that there
was proper motivation to modify the references.

  (3)  Lack of suggestion to combine references

  As discussed in MPEP § 2143.01, there must be some
suggestion  or  motivation,  either  in  the  references
themselves or in the knowledge generally available to one of
ordinary skill in the art, to modify or combine reference
teachings. The Federal Circuit has produced a number of
decisions overturning obviousness rejections due to a lack
of suggestion in the prior art of the desirability of
combining references, as discussed in the aforementioned
section.

  (4)  References teach away from the invention or
render prior art unsatisfactory for intended purpose

  In addition to the material below, see MPEP § 2141.02
(prior art must be considered in its entirety, including
disclosures that teach away from the claims) and MPEP §
2143.01 (proposed modification cannot render the prior art
unsatisfactory  for  its  intended  purpose  or  change  the
principle of operation of a reference).

 THE NATURE OF THE TEACHING IS HIGHLY RELEVANT

  A prior art reference that "teaches away" from the
claimed invention is a significant factor to be considered
in determining obviousness; however, "the nature of the
teaching  is  highly  relevant  and  must  be  weighed  in
substance. A known or obvious composition does not become
patentable simply because it has been described as somewhat
inferior to some other product for the same use." In re
Gurley , 27 F.3d 551, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
(Claims were directed to an epoxy resin based printed
circuit  material.  A  prior  art  reference  disclosed  a
polyester - imide resin based printed circuit material, and
taught  that  although  epoxy  resin  based  materials  have
acceptable stability and some degree of flexibility, they
are inferior to polyester - imide resin based materials. The
court held the claims would have been obvious over the prior

art because the reference taught epoxy resin based material
was  useful  for  applicant's  purpose,  applicant  did  not
distinguish the claimed epoxy from the prior art epoxy, and
applicant asserted no discovery beyond what was known to the
art.).

 REFERENCES CANNOT BE COMBINED WHERE REFERENCE TEACHES AWAY
FROM THEIR COMBINATION

  It  is  improper  to  combine  references  where  the
references  teach  away  from  their  combination.  In  re
Grasselli , 713 F.2d 731, 218 USPQ 769, 779 (Fed. Cir. 1983)
(The claimed catalyst which contained both iron and an
alkali metal was not suggested by the combination of a
reference which taught the interchangeability of antimony
and alkali metal with the same beneficial result, combined
with a reference expressly excluding antimony from, and
adding iron to, a catalyst.).

  >Form Paragraphs : See MPEP § 707.07 for form paragraphs
7.37 through 7.38 which may be used where applicant's
arguments are not persuasive or are moot.<

2146  35 U.S.C. 103>(c)<** [R - 2]

 35 U.S.C. 103 Conditions of patentability; non - obvious
subject matter

  *****

  >(c)<Subject matter developed by another person, which
qualifies as prior art only under subsection (f) or (g) of
section 102 of this title, shall not preclude patentability
under this section where the subject matter and the claimed
invention were, at the time the invention was made, owned by
the same person or subject to an obligation of assignment to
the same person.

  ** 35 U.S.C. 103>(c)< provides that subject matter
developed by another which qualifies as "prior art" only
under 35 U.S.C. 102(f) or (g) is not to be considered when
determining whether an invention sought to be patented is
obvious under 35 U.S.C. 103, provided the subject matter and
the claimed invention were commonly owned at the time the
invention was made. 35 U.S.C. >103(c)<** applies only to
subject matter which qualifies as prior art under 35 U.S.C.
103; it does not affect subject matter which qualifies as
prior art under 35 U.S.C. 102, i.e., anticipatory prior art.
See MPEP § 706.02(l) regarding Office practice with respect
to ** 35 U.S.C. 103>(c)<.

2161  Three Separate Requirements for Specification
Under 35 U.S.C. 112, First Paragraph [R - 1]

 >THE SPECIFICATION MUST INCLUDE A WRITTEN DESCRIPTION OF
THE INVENTION, ENABLEMENT, AND BEST MODE OF CARRYING OUT THE
CLAIMED INVENTION

  The first paragraph of 35 U.S.C. 112 provides:

  The specification shall contain a written description of
the invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as
to  enable any person skilled in the art to which it

 pertains, or with which it is most nearly connected, to
make and use the same, and shall set forth the best mode
contemplated by the inventor of carrying out his invention.
(emphasis added).

  This  section  of  the  statute  requires  that  the
specification include the following:

 (1) a written description of the invention;

 (2) the manner and process of making and using the
invention (the enablement requirement); and

 (3) the best mode contemplated by the inventor of
carrying out his invention.

 THE THREE REQUIREMENTS ARE SEPARATE AND DISTINCT FROM EACH
OTHER

  The written description requirement is separate and
distinct from the enablement requirement. In re Barker , 559
F.2d 588, 194 USPQ 470 (CCPA 1977), cert. denied , 434 U.S.
1064 (1978); Vas - Cath, Inc. v. Mahurkar , 935 F.2d 1555,
19 USPQ2d 1111, 1115 (Fed. Cir. 1991) (While acknowledging
that some of its cases concerning the written description
requirement and the enablement requirement are confusing,
the Federal Circuit reaffirmed that under 35 U.S.C. 112,
first paragraph, the written description requirement is
separate and distinct from the enablement requirement and
gave an example thereof). An invention may be described
without the disclosure being enabling (e.g., a chemical
compound for which there is no disclosed or apparent method
of making), and a disclosure could be enabling without
describing the invention (e.g., a specification describing a
method of making and using a paint composition made of
functionally defined ingredients within broad ranges would
be enabling for formulations falling within the description
but would not describe any specific formulation). See In re
Armbruster , 512 F.2d 676, 677, 185 USPQ 152, 153 (CCPA
1975)  ("[A]  specification  which  `describes'  does  not
necessarily also `enable' one skilled in the art to make or
use the claimed invention."). Best mode is a separate and
distinct requirement from the enablement requirement. In re
Newton , 414 F.2d 1400, 163 USPQ 34 (CCPA 1969).<

 PROCEEDING CONTRARY TO ACCEPTED WISDOM IS EVIDENCE OF
NONOBVIOUSNESS

  The totality of the prior art must be considered, and
proceeding  contrary  to  accepted  wisdom  in  the  art  is
evidence of nonobviousness. In re Hedges , 783 F.2d 1038,
228 USPQ 685 (Fed. Cir. 1986) (Applicant's claimed process
for sulfonating diphenyl sulfone at a temperature above 127
_ C was contrary to accepted wisdom because the prior art as
a whole suggested using lower temperatures for optimum
results as evidenced by charring, decomposition, or reduced
yields at higher temperatures.)

  Furthermore, "[k]nown disadvantages in old devices which
would naturally discourage search for new inventions may be
taken  into  account  in  determining  obviousness."  United
States v. Adams , 383 U.S. 39, 148 USPQ 479, 484 (1966).

2162  Policy Underlying 35 U.S.C. 112, First Paragraph
[R - 1]

  >To obtain a valid patent, a patent application must be
filed that contains a full and clear disclosure of the
invention in the manner prescribed by 35 U.S.C. 112, first
paragraph.  The  requirement  for  an  adequate  disclosure
ensures that the public receives something in return for the
exclusionary rights that are granted to the inventor by a
patent. The grant of a patent helps to foster and enhance
the  development  and  disclosure  of  new  ideas  and  the
advancement of scientific knowledge. Upon the grant of a
patent in the U.S., information contained in the patent
becomes a part of the information available to the public
for further research and development, subject only to the
patentee's right to exclude others during the life of the
patent.

  In exchange for the patent rights granted, 35 U.S.C.
112, first paragraph sets forth the minimum requirements for
the  quality  and  quantity  of  information  that  must  be
contained in the patent to justify the grant. As will be
discussed in more detail below, the patentee must disclose
in the patent sufficient information to put the public in
possession of the invention and to enable those skilled in
the art to make and use the invention and must not conceal
from the public the best way of practicing the invention
that was known to the patentee at the time of filing the
patent  application.  Failure  to  fully  comply  with  the
disclosure requirements could result in the denial of a
patent, or in a holding of invalidity of an issued patent.<

2163  The Written Description Requirement [R - 1]

  >The written description requirement has several policy
objectives. "[T]he `essential goal' of the description of
the  invention  requirement  is  to  clearly  convey  the
information that an applicant has invented the subject
matter which is claimed." In re Barker , 559 F.2d 588, 592
n.4, 194 USPQ 470, 473 n.4 (CCPA 1977), cert. denied , 434
U.S. 1064 (1978). Another objective is to put the public in
possession of what the applicant claims as the invention so
that the public may ascertain if the patent applicant claims
anything that is in common use, or already known. Evans v.
Eaton , 20 U.S. (7 Wheat.) 356 (1822).

  An applicant's specification must convey with reasonable
clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention,
i.e., whatever is now claimed. Vas - Cath Inc. v. Mahurkar ,
935 F.2d 1555, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). The
written description requirement prevents an applicant from
claiming subject matter that was not described in the
application as filed, and the proscription against the
introduction of new matter in a patent application (35
U.S.C. 132 and 251) serves to prevent an applicant from
adding to the informational content of a patent application
after it is filed.<

2163.01  Support for the Claimed Subject Matter in
Disclosure [R - 1]

  >A  written  description  requirement  issue  generally
involves the question of whether the subject matter of a
claim is supported by [conforms to] the disclosure of an
application as filed. If the examiner concludes that the
claimed subject matter is not supported [described] in an

application as filed, this would result in a rejection of
the claim on the ground of a lack of written description
under 35 U.S.C. 112, first paragraph or denial of the
benefit  of  the  filing  date  of  a  previously  filed
application. The claim should not be rejected or objected to
on the ground of new matter. As framed by the court in In re
Rasmussen , 650 F.2d 1212, 211 USPQ 323 (CCPA 1981), the
concept of new matter is properly employed as a basis for
objection to amendments to the abstract, specification or
drawings attempting to add new disclosure to that originally
presented.  While  the  test  or  analysis  of  description
requirement and new matter issues is the same, the examining
procedure and statutory basis for addressing these issues
differ. See MPEP § 2163.06.<

2163.02  Standard for Determining Compliance With the
Written Description Requirement [R - 1]

  >The courts have described the essential question to be
addressed in a description requirement issue in a variety of
ways. An objective standard for determining compliance with
the  written  description  requirement  is,  "does  the
description clearly allow persons of ordinary skill in the
art to recognize that he or she invented what is claimed."
In re Gosteli , 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618
(Fed. Cir. 1989). Under Vas - Cath, Inc. v.  Mahurkar , 935
F.2d 1555, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy
the  written  description  requirement,  an  applicant  must
convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in
possession of the invention, and that the invention, in that
context,  is  whatever  is  now  claimed.  The  test  for
sufficiency of support in a parent application is whether
the disclosure of the application relied upon "reasonably
conveys to the artisan that the inventor had possession at
that time of the later claimed subject matter." Ralston
Purina Co. v. Far - Mar - Co., Inc. , 772 F.2d 1570, 1575,
227 USPQ 177, 179 (Fed. Cir. 1985) (quoting  In re Kaslow ,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983)).

  Whenever the issue arises, the fundamental factual
inquiry is whether a claim defines an invention that is
clearly conveyed to those skilled in the art at the time the
application was filed. The subject matter of the claim need
not be described literally (i.e., using the same terms or in
haec verba ) in order for the disclosure to satisfy the
description requirement. If a claim is amended to include
subject matter, limitations, or terminology not present in
the  application  as  filed,  involving  a  departure  from,
addition  to,  or  deletion  from  the  disclosure  of  the
application as filed, the examiner should conclude that the
claimed subject matter is not described in that application.
This conclusion will result in the rejection of the claims
affected under 35 U.S.C. 112, first paragraph - description
requirement, or denial of the benefit of the filing date of
a previously filed application, as appropriate.<

2163.03  Typical Circumstances Where Adequate Written
Description Issue Arises [R - 1]

  >A description requirement issue can arise in a number
of different circumstances where it must be determined
whether the subject matter of a new or amended claim is
supported  in  an  application  as  filed.  The  following
circumstances are typical:

  (a)  Amendment affecting a claim

  An amendment to the claims or the addition of a new
claim must be supported by the description of the invention
in the application as filed. In re Wright , 866 F.2d 422, 9
USPQ2d 1649 (Fed. Cir. 1989). Original claims constitute
their own description. In re Koller , 613 F.2d 819, 204 USPQ
702 (CCPA 1980). An amendment to the specification (e.g., a
change in the definition of a term used both in the
specification and claim) may indirectly affect a claim even
though no actual amendment is made to the claim.

  (b)  Reliance on filing date of parent application
under 35 U.S.C. 120

  Under 35 U.S.C. 120, the claims in a U.S. application
are entitled to the benefit of the filing date of an earlier
filed U.S. application if the subject matter of the claim is
disclosed in the manner provided by 35 U.S.C. 112, first
paragraph in the earlier filed application. In re Scheiber ,
587 F.2d 59, 199 USPQ 782 (CCPA 1978).

  (c)  Reliance on priority under 35 U.S.C. 119

  Under 35 U.S.C. 119(a) or (e), the claims in a U.S.
application  are  entitled  to  the  benefit  of  a  foreign
priority  date  or  the  filing  date  of  a  provisional
application if the corresponding foreign application or
provisional application supports the claims in the manner
required by 35 U.S.C. 112, first paragraph. In re Ziegler ,
992 F.2d 1197, 1200, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993);
Kawai v. Metlesics , 480 F.2d 880, 178 USPQ 158 (CCPA 1973);
In re Gosteli , 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir.
1989).

  (d)  Support for a claim corresponding to a count
in an interference

  A broad generic disclosure to a class of compounds was
not a sufficient written description of a specific compound
within the class. Fields v. Conover , 443 F.2d 1386, 170
USPQ 276 (CCPA 1970).<

2163.04  Burden on the Examiner With Regard to the Written
Description Requirement [R - 1]

  >The inquiry into whether the description requirement is
met must be determined on a case - by - case basis and is a
question of fact. In re Wertheim , 541 F.2d 257, 262, 191
USPQ 90, 96 (CCPA 1976). The examiner has the initial burden
of presenting evidence or reasons why persons skilled in the
art would not recognize in an applicant's disclosure a
description of the invention defined by the claims. In re
Wertheim , 541 F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976);
Ex parte Sorenson , 3 USPQ2d 1462, 1463 (Bd. Pat. App. &
Inter. 1987).

  (a)  Statement of rejection requirements

  Any time an examiner bases a rejection of a claim or the
denial of the effect of a filing date of a previously filed
application on the lack of a written description, the
examiner should:

 (1) identify the claim limitation not described; and

 (2) provide reasons why persons skilled in the art
at the time the application was filed would not have
recognized  the  description  of  this  limitation  in  the
disclosure of the application as filed. A typical reason
points out the differences between what is disclosed and
what is claimed. A simple statement that "There does not
appear to be a written description of the claim limitation
`______' in the application as filed." may be sufficient
where the support is not apparent and the applicant has not
pointed out where the limitation is supported.

  (b)  Response to amendments

  If applicant amends the claims and points out where
and/or how the originally filed disclosure supports the
amendment(s), and the examiner finds that the disclosure
does not reasonably convey that the inventor had possession
of the subject matter of the amendment at the time of the
filing of the application, the examiner has the initial
burden of presenting evidence or reasoning to explain why
persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the
claims.  Accordingly,  the  examiner  should  identify  what
portion(s) of the amendment lack support in the originally
filed disclosure, and should fully explain the basis for the
examiner's finding. The examiner also should comment on the
substance of applicant's remarks. Any affidavits attesting
to what one of ordinary skill in the art would consider
disclosed by the application as originally filed must be
thoroughly analyzed and discussed in the Office action.<

2163.05  Changes to the Scope of Claims [R - 1]

  >The failure to meet the written description requirement
of 35 U.S.C. 112, first paragraph, commonly arises when the
claims are changed after filing to either broaden or narrow
the  breadth  of  the  claim  limitations,  or  to  alter  a
numerical range limitation or to use claim language which is
not synonymous with the terminology used in the original
disclosure.

  (a)  Broadening claim

  In a reissue application, a claim to a display device
was broadened by removing the limitations directed to the
specific tapered shape of the tips without violating the
written description requirement. The shape limitation was
considered to be unnecessary since the specification, as
filed, did not describe the tapered shape as essential or
critical to the operation or patentability of the claim. In
re Peters , 723 F.2d 891, 221 USPQ 952 (Fed. Cir. 1983).

  However, in In re Wilder , 736 F.2d 1516, 222 USPQ 369
(Fed. Cir. 1984), the Federal Circuit affirmed that part of
a Board of Appeals decision rejecting reissue claims for a
recording apparatus which omitted a limitation that required
indexing means to scan an array of light emitting diodes "in
synchronism" with the scanning of the record medium by
scanning means. The court held that the generic invention
represented by the reissue claims (i.e., covering scanning
means  and  indexing  means  not  in  synchronism)  was  not
supported by the original patent's disclosure in such a way
as to indicate possession, as of the original filing date,

of that generic invention.

  The benefit of foreign priority was denied in In re
Gosteli , 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989),
because claims in the U.S. application were not supported in
the foreign priority application. In the claims of the U.S.
application,  chemical  compounds  representing  antibiotics
were generically claimed via reference to a structure with
varying moieties and were also claimed subgenerically in a
Markush format. The foreign application disclosed only 2 of
the species presented in the broad generic claim and in the
21  compounds  listed  in  the  Markush  claims.  The  court
concluded that the additional subject matter in the U.S.
application was not adequately described in the foreign
document.

  (b)  Narrowing or subgeneric claim

  The  introduction  of  claim  changes  which  involve
narrowing the claims by introducing elements or limitations
which are not supported by the as - filed disclosure is a
violation of the written description requirement of 35
U.S.C. 112, first paragraph. In Ex parte Ohshiro , 14 USPQ2d
1750 (Bd. Pat. App. & Inter. 1989), the Board affirmed the
rejection under 35 U.S.C. 112, first paragraph, of claims to
an internal combustion engine which recited "at least one of
said piston and said cylinder (head) having a recessed
channel."  The  Board  held  that  the  application  which
disclosed a cylinder head with a recessed channel and a
piston without a recessed channel did not specifically
disclose the "species" of a channeled piston.

  While this and other cases find that recitation of an
undisclosed species may violate the description requirement,
a change involving subgeneric terminology may or may not be
acceptable. Applicant was not entitled to the benefit of a
parent filing date when the claim was directed to a subgenus
(a specified range of molecular weight ratios) where the
parent application contained a generic disclosure and a
specific example that fell within the recited range because
the court held that subgenus range was not described in the
parent application. In re Lukach , 442 F.2d 967, 169 USPQ
795 (CCPA 1971). On the other hand, in Ex parte Sorenson , 3
USPQ2d 1462 (Bd. Pat. App. & Inter. 1987), the subgeneric
language of "aliphatic carboxylic acid" and "aryl carboxylic
acid" did not violate the written description requirement
because species falling within each subgenus were disclosed
as well as the generic carboxylic acid. See also In re Smith
, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972)
("Whatever may be the viability of an inductive - deductive
approach to arriving at a claimed subgenus, it cannot be
said that such a subgenus is necessarily described by a
genus encompassing it and a species upon which it reads."
(emphasis added)). Each case must be decided on its own
facts in terms of what is reasonably communicated to those
skilled in the art. In re Wilder , 736 F.2d 1516, 1520, 222
USPQ 369, 372 (Fed. Cir. 1984).

  (c)  Range limitations

  With respect to changing numerical range limitations,
the analysis must take into account which ranges one skilled
in the art would consider inherently supported by the
discussion in the original disclosure. In the decision in In
re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the

ranges described in the original specification included a
range of "25% - 60%" and specific examples of "36%" and
"50%." A corresponding new claim limitation to "at least
35%" did not meet the description requirement because the
phrase "at least" had no upper limit and caused the claim to
read literally on embodiments outside the "25% to 60%"
range, however a limitation to "between 35% and 60%" did
meet the description requirement.<

2163.06  Relationship of Written Description Requirement to
New Matter [R - 3]

  Lack of written description is an issue that generally
arises with respect to the subject matter of a claim. If an
applicant  amends  or  attempts  to  amend  the  abstract,
specification or drawings of an application, an issue of new
matter will arise if the content of the amendment is not
described in the application as filed. Stated another way,
information contained in any one of the specification,
claims or drawings of the application as filed may be added
to any other part of the application without introducing new
matter.

  There are two statutory provisions that prohibit the
introduction of new matter: 35 U.S.C. 132 - No amendment
shall introduce new matter into the disclosure of the
invention;  and,  similarly  providing  for  a  reissue
application,  35  U.S.C.  251  -  No  new  matter  shall  be
introduced into the application for reissue.

  (a)  Treatment of new matter

  The regulations provide for the treatment of new matter
as follows:

 37 CFR 1.118 Amendment of disclosure.

  (a) No amendment shall introduce new matter into the
disclosure of an application after the filing date of the
application, see 37 CFR 1.53(b). All amendments to the
specification, including the claims and the drawings filed
after the filing date of the application must conform to at
least one of them as it was at the time of the filing of the
application.  Matter  not  found  in  either,  involving  a
departure from or an addition to the original disclosure,
cannot be added to the application after its filing date
even  though  supported  by  an  oath  or  declaration  in
accordance with 37 CFR 1.63 or 37 CFR 1.67 filed after the
filing date of the application.

  (b) If it is determined that an amendment filed after the
filing date of the application introduces new matter, claims
containing new matter will be rejected and deletion of the
new  matter  in  the  specification  and  drawings  will  be
required even if the amendment is accompanied by an oath or
declaration in accordance with 37 CFR 1.63 or 37 CFR 1.67.

  If new subject matter is added to the disclosure,
whether it be in the abstract, the specification, >or< the
drawings, ** the examiner should object to the introduction
of new matter under 35 U.S.C. 132 or 251 as appropriate, and
require applicant to cancel the new matter. If new matter is
added to the claims, the examiner should reject the claims
under 35 U.S.C. 112, first paragraph - written description
requirement. In re Rasmussen , 650 F.2d 1212, 211 USPQ 323

(CCPA 1981). The examiner should still consider the subject
matter added to the claim in making rejections based on
prior art since the new matter rejection may be overcome by
applicant.

  In an instance in which the claims have not been
amended, per se, but the specification has been amended to
add new matter, a rejection of the claims under 35 U.S.C.
112, first paragraph should be made whenever any of the
claim limitations are affected by the added material.

  Whenever an objection or rejection is made based on 35
U.S.C. 112, first paragraph, the examiner should in the
interest of expeditious prosecution call attention to 37 CFR
1.118.

  When an amendment is filed in response to an objection
or rejection based on 35 U.S.C. 112, first paragraph, a
study of the entire application is often necessary to
determine whether or not "new matter" is involved. Applicant
should therefore specifically point out the support for any
amendments made to the disclosure.

  (b) Review  of  new  matter  objections  and/or
rejections

  A rejection of claims is reviewable by the Board of
Patent Appeals and Interferences, whereas an objection and
requirement to delete new matter is subject to supervisory
review by petition under 37 CFR 1.181. If both the claims
and specification contain new matter either directly or
indirectly,  and  there  has  been  both  a  rejection  and
objection by the examiner, the issue becomes appealable and
should not be decided by petition.

  (c) Claimed  subject  matter  not  disclosed  in
remainder of specification

  The claims as filed in the original specification are
part of the disclosure and therefore, if an application as
originally filed contains a claim disclosing material not
disclosed  in  the  remainder  of  the  specification,  the
applicant may amend the specification to include the claimed
subject matter. In re  Benno , 768 F.2d 1340, 226 USPQ 683
(Fed. Cir. 1985). Form paragraph 7.44 may be used where
originally claimed subject matter lacks proper antecedent
basis in the specification.

2163.07  Amendments to Application Which Are Supported in
the Original Description [R - 1]

  >Amendments to an application which are supported in the
original description are NOT new matter.

  (a)  Rephrasing

  Mere rephrasing of a passage does not constitute new
matter. Accordingly, a rewording of a passage where the same
meaning remains intact is permissible. In re Anderson , 471
F.2d 1237, 176 USPQ 331 (CCPA 1973). The mere inclusion of
dictionary or art recognized definitions known at the time
of filing an application would not be considered new matter.
If  there  are  multiple  definitions  for  a  term  and  a
definition is added to the application, it must be clear
from the application as filed that applicant intended a

particular definition, in order to avoid an issue of new
matter and/or lack of written description.

  (b)  Obvious errors

  An amendment to correct an obvious error does not
constitute new matter where one skilled in the art would not
only recognize the existence of error in the specification,
but also the appropriate correction. In re  Oda , 443 F.2d
1200, 170 USPQ 260 (CCPA 1971).

  Where a non - English foreign priority document under 35
U.S.C. 119 is of record in the application file, applicant
may not rely on the disclosure of that document to support
correction of an error in the pending application. Ex parte
Bondiou , 132 USPQ 356 (Bd. App. 1961). This prohibition
would apply regardless of the language of the foreign
priority documents because a claim for priority is simply a
claim for the benefit of an earlier filing date for subject
matter that is common to two or more applications, and does
not  serve  to  incorporate  the  content  of  the  priority
document in the application in which the claim for priority
is made. This prohibition does not apply in a situation
where the original application is in a non - English
language (37 CFR 1.52(d)), or where the original application
explicitly incorporates a non - English language document by
reference.<

2163.07(a)  Inherent Function, Theory, or Advantage [R -
1]

  >By disclosing in a patent application a device that
inherently performs a function or has a property, operates
according  to  a  theory  or  has  an  advantage,  a  patent
application necessarily discloses that function, theory or
advantage, even though it says nothing explicit concerning
it. The application may later be amended to recite the
function, theory or advantage without introducing prohibited
new matter. In re Reynolds , 443 F.2d 384, 170 USPQ 94 (CCPA
1971), In re Smythe , 480 F. 2d 1376, 178 USPQ 279 (CCPA
1973).<

2163.07(b)  Incorporation by Reference [R - 1]

  >Instead of repeating some information contained in
another document, an application may attempt to incorporate
the content of another document or part thereof by reference
to the document in the text of the specification. The
information  incorporated  is  as  much  a  part  of  the
application as filed as if the text was repeated in the
application, and should be treated as part of the text of
the application as filed. Replacing the identified material
incorporated by reference with the actual text is not new
matter. See MPEP § 608.01(p) for Office policy regarding
incorporation by reference.<

2164  The Enablement Requirement [R - 3]

  The enablement requirement refers to the requirement of
35  U.S.C.  112,  first  paragraph  that  the  specification
describe how to make and how to use the invention. The
invention that one skilled in the art must be enabled to
make and use is that defined by the claim(s) of the
particular application or patent.

  The purpose of the requirement that the specification
describe the invention in such terms that one skilled in the
art can make and use the claimed invention is to ensure that
the invention is communicated to the interested public in a
meaningful way. The information contained in the disclosure
of an application must be sufficient to inform those skilled
in the relevant art how to both make and use the claimed
invention. Detailed procedures for making and using the
invention may not be necessary if the description of the
invention itself is sufficient to permit those skilled in
the art to make and use the invention. A patent claim is
invalid if it is not supported by an enabling disclosure.

  >The  enablement  requirement  of  35  U.S.C.  112,  first
paragraph, is separate and distinct from the description
requirement. Vas Cath Inc.  v.  Mahurkar , 935 F.2d 1555,
1563, 19 USPQ2d 1111, 1116 - 17 (Fed. Cir. 1991) ("the
purpose of the `written description' requirement is broader
than to merely explain how to `make and use' "). See also
MPEP  §  2161.  Therefore,  the  fact  that  an  additional
limitation to a claim may lack descriptive support in the
disclosure as originally filed does not necessarily mean
that the limitation is also not enabled. In other words, the
statement of a new limitation in and of itself may enable
one skilled in the art to make and use the claim containing
that limitation even though that limitation may not be
described in the original disclosure. Consequently, such
limitations  must  be  analyzed  for  both  enablement  and
description using their separate and distinct criteria.

  Furthermore, when the subject matter is not in the
specification portion of the application as filed but is in
the claims, the limitation in and of itself may enable one
skilled in the art to make and use the claim containing the
limitation. When claimed subject matter is only presented in
the claims and not in the specification portion of the
application, the specification should be objected to for
lacking the requisite support for the claimed subject matter
using Form Paragraph 7.44. See MPEP § 2163.06. This is an
objection to the specification only and enablement issues
should be treated separately.<

2164.01  Test of Enablement [R - 3]

  Any analysis of whether a particular claim is supported
by the disclosure in an application requires a determination
of whether that disclosure, when filed, contained sufficient
information regarding the subject matter of the claims as to
enable one skilled in the pertinent art to make and use the
claimed invention. ** The standard for determining whether
the specification meets the enablement requirement was cast
in the Supreme Court decision of Mineral Separation  v.
Hyde,242 U.S. 261, 270 (1916) which postured the question:
is the experimentation needed to practice the invention
undue or unreasonable? That standard is still the one to be
applied. In re Wands , 858 F.2d 731, 737, 8 USPQ2d 1400,
1404 (Fed. Cir. 1988). Accordingly, even though the statute
does not use the term "undue experimentation," it has been
interpreted to require that the claimed invention be enabled
so that any person skilled in the art can make and use the
invention without undue experimentation. In re Wands , 858
F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988). See also
United States  v.  Telectronics, Inc.,857 F.2d 778, 785, 8
USPQ2d 1217, 1223 (Fed. Cir. 1988) ("The test of enablement
is whether one reasonably skilled in the art could make or

use the invention from the disclosures in the patent coupled
with  information  known  in  the  art  without  undue
experimentation."). A patent need not teach, and preferably
omits, what is well known in the art.  In re Buchner , 929
F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991);
Hybritech Inc. v.  Monoclonal Antibodies  , Inc  . , 802
F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986), cert.
denied , 480 U.S. 947 (1987); and Lindemann Maschinenfabrik
GMBH  v.  American Hoist & Derrick Co. , 730 F.2d 1452,
1463, 221 USPQ 481, 489 (Fed. Cir. 1984).< Determining
enablement is a question of law based on underlying factual
findings. In re Vaeck , 947 F.2d 488, 495, 20 USPQ2d 1438,
1444 (Fed. Cir. 1991);  Atlas Powder Co. v. E.I. duPont de
Nemours & Co. , 750 F.2d 1569,>1576,< 224 USPQ 409>, 413<
(Fed. Cir. 1984).

 UNDUE EXPERIMENTATION

  The fact that experimentation may be complex does not
necessarily make it undue, if the art typically engages in
such experimentation. > In re Certain Limited - Charge Cell
Culture Microcarriers , 221 USPQ 1165, 1174 (Int'l Trade
Comm'n 1983),  aff'd. sub nom., < M .I.T. v. A.B. Fortia ,
774 F.2d 1104, 227 USPQ 428 (Fed. Cir. 1985). See also In re
Wands , 858 F.2d at 737, 8 USPQ2d at 1404.< The test of
enablement is not whether any experimentation is necessary,
but whether, if experimentation is necessary, it is undue.
In re Angstadt , 537 F.2d 498,>504,< 190 USPQ 214>, 219<
(CCPA 1976).

 **

>2164.01(a)  Undue Experimentation Factors [R - 3]

  There are many factors to be considered when determining
whether  there  is  sufficient  evidence  to  support  a
determination  that  a  disclosure  does  not  satisfy  the
enablement  requirement  and  whether  any  necessary
experimentation is "undue." These factors include, but are
not limited to:

  (1)  the breadth of the claims;

  (2)  the nature of the invention;

  (3)  the state of the prior art;

  (4)  the level of one of ordinary skill;

  (5)  the level of predictability in the art;

  (6) the  amount  of  direction  provided  by  the
inventor;

  (7)  the existence of working examples; and

  (8)  the quantity of experimentation needed to make
or use the invention based on the content of the disclosure.
In re Wands,858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed.
Cir. 1988) (reversing the PTO's determination that claims
directed to methods for detection of hepatitis B surface
antigens did not satisfy the enablement requirement).

  In  Wands  ,  the  court  noted  that  there  was  no
disagreement as to the facts, but merely a disagreement as

to the interpretation of the data and the conclusion to be
made from the facts.  In re Wands, 858 F.2d at 736 - 40, 8
USPQ2d at 1403 - 07. The Court held that the specification
was enabling with respect to the claims at issue and found
that "there was considerable direction and guidance" in the
specification; there was "a high level of skill in the art
at the time the application was filed;" and "all of the
methods needed to practice the invention were well known."
858 F.2d at 740, 8 USPQ2d at 1406. After considering all the
factors related to the enablement issue, the court concluded
that "it would not require undue experimentation to obtain
antibodies needed to practice the claimed invention." Id .,
8 USPQ2d at 1407.

  It is improper to conclude that a disclosure is not
enabling based on an analysis of only one of the above
factors while ignoring one or more of the others. The
examiner's analysis must consider all the evidence related
to  each  of  these  factors,  and  any  conclusion  of
nonenablement must be based on the evidence as a whole (858
F.2d at 737, 740, 8 USPQ2d at 1404, 1407).

  A conclusion of lack of enablement means that, based on
the evidence regarding each of the above factors, the
specification, at the time the application was filed, would
not have taught one skilled in the art how to make and/or
use the full scope of the claimed invention without undue
experimentation. In re Wright , 999 F.2d 1557,1562, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993).

  The determination that "undue experimentation" would
have been needed to make and use the claimed invention is
not a single, simple factual determination. Rather, it is a
conclusion reached by weighing all the above noted factual
considerations. In re Wands,858 F.2d at 737, 8 USPQ2d at
1404. These factual considerations are discussed more fully
in MPEP § § 2164.08 (scope or breadth of the claims),
2164.05(a) (nature of the invention and state of the prior
art), 2164.05(b) (level of one of ordinary skill), 2164.03
(level of predictability in the art and amount of direction
provided by the inventor), 2164.02 (the existence of working
examples) and 2164.06 (quantity of experimentation needed to
make or use the invention based on the content of the
disclosure).<

>2164.01(b)  How to Make the Claimed Invention [R - 3]

  As long as the specification discloses at least one
method for making and using the claimed invention that bears
a reasonable correlation to the entire scope of the claim,
then  the  enablement  requirement  of  35  U.S.C.  112  is
satisfied. In re Fisher , 427 F.2d 833, 839, 166 USPQ 18, 24
(CCPA 1970). Failure to disclose other methods by which the
claimed invention may be made does not render a claim
invalid under 35 U.S.C. 112. Spectra - Physics, Inc.  v .
Coherent, Inc . 827 F.2d 1524, 1533, 3 USPQ2d 1737, 1743
(Fed. Cir.), cert. denied , 484 U.S. 954 (1987).

  Naturally,  for  unstable  and  transitory  chemical
intermediates,  the  "how  to  make"  requirement  does  not
require that the applicant teach how to make the claimed
product in stable, permanent or isolatable form. In re
Breslow , 616 F.2d 516, 521, 205 USPQ 221, 226 (CCPA 1980).

  A key issue that can arise when determining whether the

specification is enabling is whether the starting materials
or apparatus necessary to make the invention are available.
In the biotechnical area, this is often true when the
product  or  process  requires  a  particular  strain  of
microorganism and when the microorganism is available only
after extensive screening.

  The CCPA in In re Ghiron , 442 F.2d 985, 991, 169 USPQ
723, 727 (CCPA 1971), made clear that if the practice of a
method requires a particular apparatus, the application must
provide a sufficient disclosure of the apparatus if the
apparatus is not readily available. The same can be said if
certain  chemicals  are  required  to  make  a  compound  or
practice a chemical process.  In re Howarth, 654 F.2d 103,
105, 210 USPQ 689, 691 (CCPA 1981).<

>2164.01(c)  How to Use the Claimed Invention [R - 3]

  If a statement of utility in the specification contains
within it a connotation of how to use, and/or the art
recognizes that standard modes of administration are known
and contemplated, 35 U.S.C. 112, is satisfied. In re Johnson
, 282 F.2d 370, 373, 127 USPQ 216, 219 (CCPA 1960); In re
Hitchings , 342 F.2d 80, 87, 144 USPQ 637, 643 (CCPA 1965).
See also In re Brana,51 F.2d 1560, 1566, 34 USPQ2d 1437,
1441 (Fed. Cir. 1993).

  For example, it is not necessary to specify the dosage
or method of use if it is known to one skilled in the art
that  such  information  could  be  obtained  without  undue
experimentation.  If  one  skilled  in  the  art,  based  on
knowledge  of  compounds  having  similar  physiological  or
biological activity, would be able to discern an appropriate
dosage or method of use without undue experimentation, this
would be sufficient to satisfy 35 U.S.C. 112. The applicant
need not demonstrate that the invention is completely safe.
See also MPEP § 2107.

  When a compound or composition claim is limited by a
particular use, enablement of that claim should be evaluated
based on that limitation. See In re Vaeck , 947 F.2d 488,
495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (claiming a
chimeric  gene  capable  of  being  expressed  in  any
cyanobacterium and thus defining the claimed gene by its
use).

  In contrast, when a compound or composition claim is not
limited by a recited use, any enabled use that would
reasonably correlate with the entire scope of that claim is
sufficient to preclude a rejection for nonenablement based
on how to use. If multiple uses for claimed compounds or
compositions are disclosed in the application, then an
enablement  rejection  must  include  an  explanation,
sufficiently  supported  by  the  evidence,  why  the
specification fails to enable each disclosed use. In other
words,  if  any  use  is  enabled  when  multiple  uses  are
disclosed, the application is enabling for the claimed
invention.<

2164.02  Working Example [R - 3]

  Compliance with the enablement requirement of 35 U.S.C.
112, first paragraph does not turn on whether an example is
disclosed. An example may be "working" or "prophetic." A
working example is based on work actually performed. A

prophetic example describes an embodiment of the invention
based  on  predicted  results  rather  than  work  actually
conducted or results actually achieved.

  An  applicant  need  not  have  actually  reduced  the
invention to practice prior to filing. In Gould v.  Quigg ,
822 F.2d 1074, 1078, 3 USPQ 2d 1302, 1304 (Fed. Cir. 1987),
as of Gould's filing date, no person had built a light
amplifier or measured a population inversion in a gas
discharge. The Court held that "The mere fact that something
has not previously been done clearly is not, in itself, a
sufficient basis for rejecting all applications purporting
to disclose how to do it.">822 F.2d at 1078, 3 USPQ2d at
1304 (quoting In re Chilowsky , 229 F.2d 457, 461, 108 USPQ
321, 325 (CCPA 1956)).<

  The specification need not contain an example if the
invention is otherwise disclosed in such manner that one
skilled in the art will be able to practice it without an
undue amount of experimentation. In re Borkowski , 422 F.2d
904,>908,< 164 USPQ 642>,645< (CCPA 1970).

  Lack of a working example, however, is a factor to be
considered, especially in a case involving an unpredictable
and undeveloped art. But because only an enabling disclosure
is  required,  applicant  need  not  describe  all  actual
embodiments.

 >NONE OR ONE WORKING EXAMPLE

  When considering the factors relating to a determination
of non - enablement, if all the other factors point toward
enablement, then the absence of working examples will not by
itself render the invention non - enabled. In other words,
lack of working examples or lack of evidence that the
claimed invention works as described should never be the
sole reason for rejecting the claimed invention on the
grounds of lack of enablement. A single working example in
the specification for a claimed invention is enough to
preclude a rejection which states that nothing is enabled
since at least that embodiment would be enabled. However, a
rejection stating that enablement is limited to a particular
scope may be appropriate.

  The presence of only one working example should never be
the sole reason for rejecting claims as being broader than
the enabling disclosure, even though it is a factor to be
considered along with all the other factors. To make a valid
rejection, one must evaluate all the facts and evidence and
state why one would not expect to be able to extrapolate
that one example across the entire scope of the claims.

 CORRELATION: IN VITRO/IN VIVO

  The issue of "correlation" is related to the issue of
the presence or absence of working examples. "Correlation"
as used herein refers to the relationship between in vitro
or  in vivo animal model assays and a disclosed or a claimed
method of use. An  in vitro or  in vivo  animal model
example in the specification, in effect, constitutes a
"working  example"  if  that  example  "correlates"  with  a
disclosed or claimed method invention. If there is no
correlation, then the examples do not constitute "working
examples." In this regard, the issue of "correlation" is
also dependent on the state of the prior art. In other

words, if the art is such that a particular model is
recognized as correlating to a specific condition, then it
should be accepted as correlating unless the examiner has
evidence that the model does not correlate. Even with such
evidence, the examiner must weigh the evidence for and
against correlation and decide whether one skilled in the
art would accept the model as reasonably correlating to the
condition.  In re Brana , 51 F.3d 1560, 1566, 34 USPQ2d
1436, 1441 (Fed. Cir. 1995) (reversing the PTO decision
based on finding that  in vitro data did not support  in
vivo applications).

  Since the initial burden is on the examiner to give
reasons for the lack of enablement, the examiner must also
give reasons for a conclusion of lack of correlation for an
in vitro or in vivo animal model example. A rigorous or an
invariable exact correlation is not required, as stated in
Cross  v . Iizuka , 753 F.2d 1040, 1050, 224 USPQ 739, 747
(Fed. Cir. 1985):

  based upon the relevant evidence as a whole, there is a
reasonable correlation between the disclosed in vitro util
ity and an  in vivo activity, and therefore a rigorous
correlation  is  not  necessary  where  the  disclosure  of
pharmacological  activity  is  reasonable  based  upon  the
probative evidence. (Citations omitted.)

 WORKING EXAMPLES AND A CLAIMED GENUS

  For a claimed genus, representative examples together
with a statement applicable to the genus as a whole will
ordinarily be sufficient if one skilled in the art (in view
of level of skill, state of the art and the information in
the specification) would expect the claimed genus could be
used in that manner without undue experimentation. Proof of
enablement will be required for other members of the claimed
genus only where adequate reasons are advanced by the
examiner to establish that a person skilled in the art could
not use the genus as a whole without undue experimentation.
<

2164.03  Relationship of Predictability of the Art and the
Enablement Requirement [R - 3]

 > The amount of guidance or direction needed to enable the
invention is inversely related to the amount of knowledge in
the state of the art as well as the predictability in the
art. In re Fisher , 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA
1970). The "amount of guidance or direction" refers to that
information in the application, as originally filed, that
teaches exactly how to make or use the invention. The more
that is known in the prior art about the nature of the
invention, how to make, and how to use the invention, and
the more predictable the art is, the less information needs
to be explicitly stated in the specification. In contrast,
if little is known in the prior art about the nature of the
invention and the art is unpredictable, the specification
would need more detail as to how to make and use the
invention in order to be enabling.

  The "predictability or lack thereof" in the art refers
to the ability of one skilled in the art to extrapolate the
disclosed or known results to the claimed invention. If one
skilled in the art can readily anticipate the effect of a
change within the subject matter to which the claimed

invention pertains, then there is predictability in the art.
On the other hand, if one skilled in the art cannot readily
anticipate the effect of a change within the subject matter
to which that claimed invention pertains, then there is lack
of predictability in the art. Accordingly, what is known in
the  art  provides  evidence  as  to  the  question  of
predictability. In particular, the court in In re Marzocchi
, 439 F.2d 220, 223 - 24, 169 USPQ 367, 368 - 70 (CCPA
1971), stated:

  [i]n the field of chemistry generally, there may be
times when the well - known unpredictability of chemical
reactions will alone be enough to create a reasonable doubt
as to the accuracy of a particular broad statement put
forward  as  enabling  support  for  a  claim.  This  will
especially be the case where the statement is, on its face,
contrary to generally accepted scientific principles. Most
often,  additional  factors,  such  as  the  teachings  in
pertinent references, will be available to substantiate any
doubts that the asserted scope of objective enablement is in
fact commensurate with the scope of protection sought and to
support any demands based thereon for proof. [Footnote
omitted.]<

  The scope of the required enablement varies inversely
with the degree of predictability involved, but even in
unpredictable arts, a disclosure of every operable species
is not required. A single embodiment may provide broad
enablement in cases involving predictable factors, such as
mechanical or electrical elements. In re  Vickers , 141 F.2d
522,>526 - 27,< 61 USPQ 122>, 127< (CCPA 1944);  In re  Cook
, 439 F.2d 730,>734,< 169 USPQ 298>, 301< (CCPA 1971).
However, in applications directed to inventions in arts
where the results are unpredictable, the disclosure of a
single species usually does not provide an adequate basis to
support generic claims.  In re  Soll , 97 F.2d 623,>624,< 38
USPQ  189>,  191<  (CCPA  1938).  In  cases  involving
unpredictable factors, such as most chemical reactions and
physiological activity, more may be required.  In re  Fisher
,  427  F.2d  833,>839,<  166  USPQ  18>,  24<  (CCPA  1970)
(contrasting  mechanical  and  electrical  elements  with
chemical reactions and physiological activity). See also  In
re  Wright , 999 F.2d 1557,>1562,< 27 USPQ2d 1510>, 1513<
(Fed. Cir. 1993);  In re  Vaeck , 947 F.2d 488,>496,< 20
USPQ2d 1438>, 1445< (Fed. Cir. 1991). This is because it is
not obvious from the disclosure of one species, what other
species will work.  **

2164.04  Burden on the Examiner Under the Enablement
Requirement [R - 3]

  >Before any analysis of enablement can occur, it is
necessary for the examiner to construe the claims. For terms
that are not well - known in the art, or for terms that
could have more than one meaning, it is necessary that the
examiner select the definition that he/she intends to use
when  examining  the  application,  based  on  his/her
understanding of what applicant intends it to mean, and
explicitly set forth the meaning of the term and the scope
of the claim when writing an Office action. See G enentech
v.  Wellcome Foundation, 29 F.3d 1555, 1563 - 64, 31 USPQ2d
1161, 1167 - 68 (Fed. Cir. 1994).<

  In order to make a rejection, the examiner has the
initial burden to establish a reasonable basis to question

the enablement provided for the claimed invention. In re
Wright , 999 F.2d 1557,>1562,< 27 USPQ2d 1510 >,1513< (Fed.
Cir. 1993) (examiner must provide a reasonable explanation
as to why the scope of protection provided by a claim is not
adequately  enabled  by  the  disclosure).  A  specification
disclosure which contains a teaching of the manner and
process of making and using an invention in terms which
correspond in scope to those used in describing and defining
the subject matter sought to be patented must be taken as
being in compliance with the enablement requirement of 35
U.S.C. 112, first paragraph, unless there is a reason to
doubt  the  objective  truth  of  the  statements  contained
therein which must be relied on for enabling support.
Assuming that sufficient reason for such doubt exists, a
rejection for failure to teach how to make and/or use will
be proper on that basis.  In re Marzocchi , 439 F.2d
220,>224,< 169 USPQ 367 >, 370< (CCPA 1971). As stated by
the Court, "it is incumbent upon the Patent Office, whenever
a rejection on this basis is made, to explain why it doubts
the truth or accuracy of any statement in a supporting
disclosure and to back up assertions of its own with
acceptable evidence or reasoning which is inconsistent with
the contested statement. Otherwise, there would be no need
for the applicant to go to the trouble and expense of
supporting his presumptively accurate disclosure.">439 F.2d
at 224,< 169 USPQ at 370.

  According to In re Bowen , 492 F.2d 859,>862 - 63,< 181
USPQ 48 >,51< (CCPA 1974) the minimal requirement is for the
examiner  to  give  reasons  for  the  uncertainty  of  the
enablement. This standard is applicable even when there is
no evidence in the record of operability without undue
experimentation beyond the disclosed embodiments. See also
In re Brana ** , 51 F.3d 1560,>1566,< 34 USPQ2d 1436 >,1441<
(Fed. Cir. 1995) (citing In re Bundy , 642 F.2d 430, 433,
209  USPQ  48,  51  (CCPA  1981))  (Discussed  in  MPEP  §
2164.07,(a)(2), regarding the relationship of the enablement
requirement to the utility requirement of 35 U.S.C. 101).

  >While  the  analysis  and  conclusion  of  a  lack  of
enablement are based on the factors discussed in MPEP §
2164.01(a) and the evidence as a whole, it is not necessary
to discuss each factor in the written enablement rejection.
The language should focus on those factors, reasons, and
evidence  that  lead  the  examiner  to  conclude  that  the
specification fails to teach how to make and use the claimed
invention without undue experimentation , or that the scope
of any enablement provided to one skilled in the art is not
commensurate with the scope of protection sought by the
claims. This can be done by making specific findings of
fact,  supported  by  the  evidence,  and  then  drawing
conclusions based on these findings of fact. For example,
doubt may arise about enablement because information is
missing about one or more essential parts or relationships
between parts which one skilled in the art could not develop
without undue experimentation. In such a case, the examiner
should specifically identify what information is missing and
why one skilled in the art could not supply the in formation
without  undue  experimentation.  See  MPEP  §  2164.06(a).
References should be supplied if possible to support a prima
facie case of lack of enablement, but are not always
required. In re Marzocchi , 439 F.2d 220, 224, 169 USPQ 367,
370 (CCPA 1971). However, specific technical reasons are
always required.

  In  accordance  with  the  principles  of  compact
prosecution, if an enablement rejection is appropriate, the
first Office action on the merits should present the best
case with all the relevant reasons, issues, and evidence so
that all such rejections can be withdrawn if applicant
provides appropriate convincing arguments and/or evidence in
rebuttal. Providing the best case in the first Office action
will also allow the second Office action to be made final
should applicant fail to provide appropriate convincing
arguments and/or evidence. Citing new references and/or
expanding arguments in a second Office action could prevent
that Office action from being made final. The principles of
compact prosecution also dictate that if an enablement
rejection  is  appropriate  and  the  examiner  recognizes
limitations  that  would  render  the  claims  enabled,  the
examiner should note such limitations to applicant as early
in the prosecution as possible.

  In other words, the examiner should always look for
enabled,  allowable  subject  matter  and  communicate  to
applicant what that subject matter is at the earliest point
possible in the prosecution of the application.<

2164.05  Determination of Enablement Based on Evidence As a
Whole [R - 3]

  Once the examiner has >weighed all the evidence and<
established a reasonable basis to question the enablement
provided for the claimed invention, the burden falls on
applicant to present persuasive arguments, supported by
suitable proofs where necessary, that one skilled in the art
would be able to make and use the claimed invention using
the *>application< as a guide. In re Brandstadter , 484 F.2d
1395,>1406 - 07,< 179 USPQ 286>, 294< (CCPA 1973). ** >The
evidence provided by applicant need not be conclusive but
merely convincing to one skilled in the art.

  Applicant may submit factual affidavits under 37 CFR
1.132 or cite references to show what one skilled in the art
knew at the time of filing the application. A declaration or
affidavit is, itself, evidence that must be considered . The
weight to give a declaration or affidavit will depend upon
the amount of factual evidence the declaration or affidavit
contains to support the conclusion of enablement. In re
Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir.
1991) ("expert's opinion on the ultimate legal conclusion
must be supported by something more than a conclusory
statement"); cf. In re Alton, 76  F.3d 1168, 1174, 37 USPQ2d
1578, 1583 (Fed. Cir. 1996) (declarations relating to the
written  description  requirement  should  have  been
considered).

  Applicant should be encouraged to provide any evidence
to demonstrate that the disclosure enables the claimed
invention.  In  chemical  and  biotechnical  applications,
evidence actually submitted to the FDA to obtain approval
for  clinical  trials  may  be  submitted.  However,
considerations made by the FDA for approving clinical trials
are different from those made by the PTO in determining
whether a claim is enabled. See Scott  v.  Finney , 34 F.3d
1058,  1063,  32  USPQ2d  1115,  1120  (Fed.  Cir.  1994)
("[t]esting  for  full  safety  and  effectiveness  of  a
prosthetic device is more properly left to the [FDA].").
Once that evidence is submitted, it must be weighed with all
other evidence according to the standards set forth above so

as to reach a determination as to whether the disclosure
enables the claimed invention.

  To overcome a prima facie case of lack of enablement,
applicant must demonstrate by argument and/or evidence that
the disclosure, as filed , would have enabled the claimed
invention for one skilled in the art at the time of filing.
This  does  not  preclude  applicant  from  providing  a
declaration after the filing date which demonstrates that
the claimed invention works. However, the examiner should
carefully compare the steps, materials, and conditions used
in the experiments of the declaration with those disclosed
in the application to make sure that they are commensurate
in scope; i.e., that the experiments used the guidance in
the specification as filed and what was well known to one of
skill in the art. Such a showing also must be commensurate
with the scope of the claimed invention, i.e., must bear a
reasonable  correlation  to  the  scope  of  the  claimed
invention.

  The examiner must then weigh all the evidence before him
or her, including the specification and any new evidence
supplied  by  applicant  with  the  evidence  and/or  sound
scientific reasoning previously presented in the rejection
and decide whether the claimed invention is enabled. The
examiner  should  never  make  the  determination  based  on
personal opinion. The determination should always be based
on the weight of all the evidence.<

2164.05(a)  Specification Must Be Enabling as of the
Filing Date [R - 3]

  >Whether the specification would have been enabling as
of the filing date involves consideration of the nature of
the invention, the state of the prior art, and the level of
skill in the art. The initial inquiry is into the nature of
the invention; i.e., the subject matter to which the claimed
invention pertains. The nature of the invention becomes the
backdrop to determine the state of the art and the level of
skill possessed by one skilled in the art.

  The state of the prior art is what one skilled in the
art would have known, at the time the application was filed,
about the subject matter to which the claimed invention
pertains. The relative skill of those in the art refers to
the skill of those in the art in relation to the subject
matter to which the claimed invention pertains at the time
the application was filed. See MPEP § 2164.05(b).

  The state of the prior art provides evidence for the
degree of predictability in the art and is related to the
amount of direction or guidance needed in the specification
as filed to meet the enablement requirement. The state of
the prior art is also related to the need for working
examples in the specification.

  The state of the art for a given technology is not
static in time. It is entirely possible that a disclosure
filed on January 2, 1990, would not have been enabled;
however, if the same disclosure had been filed on January 2,
1996, it might have enabled the claims. Therefore, the state
of the prior art must be evaluated for each application
based on its filing date.

  35 U.S.C. 112 requires the specification to be enabling

only to a person "skilled in the art to which it pertains,
or with which it is most nearly connected." In general, the
pertinent art should be defined in terms of the problem to
be solved rather than in terms of the technology area,
industry, trade, etc. for which the invention is used.

  The specification need not disclose what is well - known
to those skilled in the art and preferably omits that which
is well - known to those skilled and already available to
the public. In re Buchner , 929 F.2d 660, 661, 18 USPQ2d
1331, 1332 (Fed. Cir. 1991); Hybritech Inc. v.  Monoclonal
Antibodies  , Inc  . , 802 F.2d 1367, 1384, 231 USPQ 81, 94
(Fed. Cir. 1986), cert. denied , 480 U.S. 947 (1987); and
Lindemann Maschinenfabrik GMBH v . American Hoist & Derrick
Co. , 730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir.
1984).<

  The state of the art existing at the filing date of the
application  is  used  to  determine  whether  a  particular
disclosure is enabling as of the filing date. Publications
dated after the filing date providing information publicly
first disclosed after the filing date generally cannot be
used to show what was known at the time of filing. In re
Gunn , 537 F.2d 1123,>1128,< 190 USPQ 402>,405 - 06< (CCPA
1976)  >; In re Budnick , 537 F.2d 535, 538, 190 USPQ 422,
424 (CCPA 1976) (In general, if an applicant seeks to use a
patent to prove the state of the art for the purpose of the
enablement requirement, the patent must have an issue date
earlier  than  the  effective  filing  date  of  the
application.)<.  While  a  later  dated  publication  cannot
supplement an insufficient disclosure in a prior dated
application to make it enabling, applicant can offer the
testimony of an expert based on the publication as evidence
of the level of skill in the art at the time the application
was filed.  Gould  v. Quigg , 822 F.2d 1074,>1077,< 3 USPQ2d
1302>, 1304< (Fed. Cir. 1987).

  **>In general, the examiner should not use post - filing
date references to demonstrate that the patent is non -
enabling. Exceptions to this rule could occur if a later -
dated reference provides evidence of what one skilled in the
art would have known on or before the effective filing date
of the patent application. In re Hogan , 559 F.2d 595, 605,
194 USPQ 527, 537 (CCPA 1977). If individuals of skill in
the art state that a particular invention is not possible
years after the filing date, that would be evidence that the
disclosed invention was not possible at the time of filing
and should be considered.< In In re Wright ,>999 F.2d 1557,
1562,<27 USPQ2d 1510>, 1513 - 14< (Fed. Cir. 1993) an
article published 5 years after the filing date of the
application adequately supported the examiner's position
that the physiological activity of certain viruses was
sufficiently unpredictable so that a person skilled in the
art would not have believed that the success with one virus
and one animal could be extrapolated successfully to all
viruses with all living organisms. Claims not directed to
the  specific  virus  and  the  specific  animal  were  held
nonenabled.

2164.05(b)  Specification Must Be Enabling to Persons
Skilled in the Art [R - 3]

  >The relative skill of those in the art refers to the
skill of those in the art in relation to the subject matter
to which the claimed invention pertains at the time the

application was filed.< Where different arts are involved in
the invention, the specification is enabling if it enables
persons skilled in each art to carry out the aspect of the
invention applicable to their specialty. In re Naquin , 398
F.2d 863,>866,< 158 USPQ 317>, 319< (CCPA 1968).

  When an invention, in its different aspects, involves
distinct arts, the specification is enabling if it enables
those skilled in each art, to carry out the aspect proper to
their specialty. "If two distinct technologies are relevant
to an invention, then the disclosure will be adequate if a
person of ordinary skill in each of the two technolo gies
could  practice  the  invention  from  the  disclosures."  *
>Technicon< Instruments Corp. v. Alpkem Corp. ,>664 F.Supp.
1558, 1578,< 2 USPQ 2d 1729, 1742 (D. Ore. 1986), aff'd in
part, vacated in part, rev'd in part, 837 F. 2d 1097 (Fed.
Cir. 1987) (unpublished opinion), appeal after remand, 866
F. 2d 417, 9 USPQ 2d 1540 (Fed. Cir. 1989). In Ex parte
Zechnall , 194 USPQ 461 (Bd. App. 1973), the Board stated
"appellants' disclosure must be held sufficient if it would
enable a person skilled in the electronic computer art, in
cooperation with a person skilled in the fuel injection art,
to make and use appellants' invention.">194 USPQ at 461.<

2164.06  ** >Quantity of Experimentation [R - 3]

  >The quantity of experimentation needed to be performed
by one skilled in the art is only one factor involved in
determining whether "undue experimentation" is required to
make  and  use  the  invention.  "[A]n  extended  period  of
experimentation may not be undue if the skilled artisan is
given sufficient direction or guidance." In re Colianni ,
561 F.2d 220, 224, 195 USPQ 150, 153 (CCPA 1977). " `The
test is not merely quantitative, since a considerable amount
of experimentation is permissible, if it is merely routine,
or if the specification in question provides a reasonable
amount of guidance with respect to the direction in which
the experimentation should proceed.' " In re Wands , 858
F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (citing
In re Angstadt , 537 F.2d 489, 502 - 04, 190 USPQ 214, 218
(CCPA 1976)). Time and expense are merely factors in this
consideration and are not the controlling factors. United
States  v.  Telectronics Inc.,857 F.2d 778, 785, 8 USPQ2d
1217, 1223 (Fed. Cir. 1988), cert. denied , 490 U.S. 1046
(1989).

  In the chemical arts, the guidance and ease in carrying
out an assay to achieve the claimed objectives may be an
issue to be considered in determining the quantity of
experimentation needed. For example, if a very difficult and
time consuming assay is needed to identify a compound within
the  scope  of  a  claim,  then  this  great  quantity  of
experimentation  should  be  considered  in  the  overall
analysis.  Time  and  difficulty  of  experiments  are  not
determinative  if  they  are  merely  routine.  Quantity  of
examples is only one factor that must be considered before
reaching the final conclusion that undue experimentation
would be required. In re Wands , 858 F.2d at 737, 8 USPQ2d
at 1404.

  i.  Example of Reasonable Experimentation

  In United States  v.  Telectronics Inc ., 857 F.2d 778,
8 USPQ2d 1217 (Fed. Cir. 1988),  cert. denied , 490 U.S.
1046 (1989), the court reversed the findings of the district

court for lack of clear and convincing proof that undue
experimentation was needed. The court ruled that since one
embodiment (stainless steel electrodes) and the method to
determine dose/response was set forth in the specification,
the specification was enabling. The question of time and
expense of such studies, approximately $50,000 and 6 - 12
months standing alone, failed to show undue experimentation.

  ii.  Example of Unreasonable Experimentation

  In In re Ghiron , 442 F.2d 985, 991 - 92, 169 USPQ 723,
727 - 28 (CCPA 1971), functional "block diagrams" were
insufficient to enable a person skilled in the art to
practice the claimed invention with only a reasonable degree
of experimentation because the claimed invention required a
"modification to prior art overlap computers," and because
"many of the components which appellants illustrate as
rectangles  in  their  drawing  necessarily  are  themselves
complex assemblages . . It is common knowledge that many
months or years elapse from the announcement of a new
computer by a manufacturer before the first prototype is
available. This does not bespeak of a routine operation but
of extensive experimentation and development work . ." <

>2164.06(a)  Examples of Enablement Issues - Missing
Information [R - 3]<

  It is common that the doubt arises about enablement
because information is missing about one or more essential
parts or relationships between parts which one skilled in
the art could not develop without undue experimentation. In
such a case, the examiner should specifically identify what
information is missing and why the missing information is
needed to provide enablement.

  (a)  Electrical and mechanical devices or processes

  For example, a disclosure of an electrical circuit
apparatus, depicted in the drawings by block diagrams with
functional labels, was held to be nonenabling in In re Gunn
, 537 F.2d 1123,>1129,< 190 USPQ 402>, 406< (CCPA 1976).
There was no indication in the specification as to whether
the parts represented by boxes were "off the shelf" or must
be specifically constructed or modified for applicant's
system. Also there were no details in the specification of
how the parts should be interconnected, timed and controlled
so as to obtain the specific operations desired by the
applicant. In In re Donohue , 550 F.2d 1269, 193 USPQ 136
(CCPA 1977), the lack of enablement was caused by lack of
information  in  the  specification  about  a  single  block
labelled "LOGIC" in the drawings.

  In re Ghiron , 442 F.2d 985, 169 USPQ 723 (CCPA 1971),
involved a method of facilitating transfers from one subset
of  program  instructions  to  another  which  required
modification of prior art "overlap mode" computers. The
Board rejected the claims on the basis,  inter alia , that
the disclosure was insufficient to satisfy the requirements
of 35 U.S.C. 112, first paragraph and was affirmed. The
Board focused on the fact that the drawings were "block
diagrams, i.e., a group of rectangles representing the
elements  of  the  system,  functionally  labelled  and
interconnected by lines.">442 F.2d at 991,< 169 USPQ at 727.
The specification did not particularly identify each of the
elements represented by the blocks or the relationship

therebetween,  nor  did  it  specify  particular  apparatus
intended to carry out each function. The Board further
questioned  whether  the  selection  and  assembly  of  the
required  components  could  be  carried  out  routinely  by
persons of ordinary skill in the art.

  An adequate disclosure of a device may require details
of how complex components are constructed and perform the
desired function. The claim before the court in In re
Scarbrough , 500 F.2d 560, 182 USPQ 298 (CCPA 1974) was
directed to a system which comprised several component parts
(e.g.,  computer,  timing  and  control  mechanism,  A/D
converter, etc.) only by generic name and overall ultimate
function. The court concluded that there was not an enabling
disclosure because the specification did not describe how
"complex elements known to perform broadly recited functions
in  different  systems  would  be  adaptable  for  use  in
Appellant's particular system with only a reasonable amount
of experimentation" and that "an unreasonable amount of work
would be required to arrive at the detailed relationships
appellant says that he has solved.">500 F.2d at 566,< 182
USPQ at 302.

  (b)  Microorganisms

  Patent  applications  involving  living  biological
products, such as microorganisms, as critical elements in
the process of making the invention, present a unique
question with regard to availability. The issue was raised
in a case involving claims drawn to a fermentative method of
producing  two  novel  antibiotics  using  a  specific
microorganism  and  claims  to  the  novel  antibiotics  so
produced. In re Argoudelis , 434 F.2d 1390, 168 USPQ 99
(CCPA 1970). As stated by the court, "a unique aspect of
using  microorganisms  as  starting  materials  is  that  a
sufficient description of how to obtain the microorganism
from nature cannot be given.">434 F.2d at 1392,< 168 USPQ at
102. It was determined by the court that availability of the
biological product via a public depository provided an
acceptable means of meeting the written description and the
enablement requirements of 35 U.S.C. 112, first paragraph.

  To satisfy the enablement requirement a deposit must be
made "prior to issue" but need not be made prior to filing
the application. In re Lundak , 773 F.2d 1216,>1223,< 227
USPQ 90>, 95< (Fed. Cir. 1985).

  The availability requirement of enablement must also be
considered in light of the scope or breadth of the claim
limitations. The Board of Appeals considered this issue in
an application which claimed a fermentative method using
microorganisms  belonging  to  a  species.  Applicants  had
identified three novel individual strains of microorganisms
that were related in such a way as to establish a new
species  of  microorganism,  a  species  being  a  broader
classification than a strain. The three specific strains had
been appropriately deposited. The issue focused on whether
the specification enabled one skilled in the art to make any
member of the species other than the three strains which had
been  deposited.  The  Board  concluded  that  the  verbal
description of the species was inadequate to allow a skilled
artisan to make any and all members of the claimed species.
Ex parte Jackson , 217 USPQ 804>,806< (Bd. App. 1982).

  >See MPEP § 2402 - § 2411.03 for a detailed discussion

of the deposit rules. See MPEP § 2411.01 for rejections
under 35 U.S.C. 112 based on deposit issues.<

  (c)  Drug Cases

  See MPEP § 2107 - § 2107.02 for a discussion of the
utility requirement under 35 U.S.C. 112, first paragraph, in
drug cases.

>2164.06(b)  Examples of Enablement Issues - Chemical
Cases [R - 3]

  The following summaries should not be relied on to
support a case of lack of enablement without carefully
reading the case.

  Several  Decisions  Ruling  That  the  Disclosure  Was
Nonenabling

 (1) In In re Wright , 999 F.2d 1557, 27 USPQ2d 1510
(Fed. Cir. 1993), the 1983 application disclosed a vaccine
against the RNA tumor virus known as Prague Avian Sarcoma
Virus, a member of the Rous Associated Virus family. Using
functional language, Wright claimed a vaccine "comprising an
immunologically effective amount" of a viral expression
product. Id , at 1559, 27 USPQ2d at 1511. Rejected claims
covered all RNA viruses as well as avian RNA viruses. The
examiner provided a teaching that in 1988, a vaccine for
another retrovirus (i.e., AIDS) remained an intractable
problem. This evidence, along with evidence that the RNA
viruses were a diverse and complicated genus, convinced the
Federal Circuit that the invention was not enabled for
either all retroviruses or even for avian retroviruses.

 (2) In In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010
(Fed. Cir. 1993), a 1985 application functionally claimed a
method of producing protein in plant cells by expressing a
foreign  gene.  The  court  stated:  "[n]aturally,  the
specification must teach those of skill in the art `how to
make and use the invention as broadly as it is claimed.'"
Id. at 1050, 29 USPQ2d at 2013. Although protein expression
in  dicotyledonous  plant  cells  was  enabled,  the  claims
covered any plant cell. The examiner provided evidence that
even as late as 1987, use of the claimed method in monocot
plant cells was not enabled.  Id. at 1051, 29 USPQ2d at
2014.

 (3) In In re Vaeck , 947 F.2d 488, 495, 20 USPQ2d
1438, 1444 (Fed. Cir. 1991), the court found that several
claims  were  not  supported  by  an  enabling  disclosure
"[t]aking  into  account  the  relatively  incomplete
understanding  of  the  biology  of  cyanobacteria  as  of
appellant's filing date, as well as the limited disclosure
by  appellants  of  the  particular  cyanbacterial  genera
operative in the claimed invention . ." The claims at
issue were not limited to any particular genus or species of
cyanobacte ria and the specification mentioned nine genera
and  the  working  examples  employed  one  species  of
cyanobacteria.

 (4) In In re Colianni , 561 F.2d 220, 222 - 23, 195
USPQ 150, 152 (CCPA 1977), the court affirmed a rejection
under  35  U.S.C.  112,  first  paragraph,  because  the
specification, which was directed to a method of mending a
fractured bone by applying "sufficient" ultrasonic energy to

the bone, did not define a "sufficient" dosage or teach one
of ordinary skill how to select the appropriate intensity,
frequency, or duration of the ultrasonic energy.

Several Decisions Ruling That the Disclosure Was Enabling

 (1) In PPG Ind.  v . Guardian Ind., 75 F.3d 1558,
1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996), the court ruled
that even though there was a software error in calculating
the ultraviolet transmittance data for examples in the
specification making it appear that the production of a
cerium oxide - free glass that satisfied the transmittance
limitation would be difficult, the specification indicated
that such glass could be made. The specification was found
to  indicate  how  to  minimize  the  cerium  content  while
maintaining low ultraviolet transmittance.

 (2) In In re Wands , 858 F.2d 731, 8 USPQ2d 1400
(Fed. Cir. 1988), the court reversed the rejection for lack
of  enablement  under  35  U.S.C.  112,  first  paragraph,
concluding that undue experimentation would not be required
to practice the invention. The nature of monoclonal antibody
technology is such that experiments first involve the entire
attempt to make monoclonal hybridomas to determine which
ones secrete antibody with the desired characteristics. The
court found that the specification provided considerable
direction and guidance on how to practice the claimed
invention and presented working examples, that all of the
methods needed to practice the invention were well known,
and that there was a high level of skill in the art at the
time the application was filed. Furthermore, the applicant
carried out the entire procedure for making a monoclonal
antibody  against  HBsAg  three  times  and  each  time  was
successful in producing at least one antibody which fell
within the scope of the claims.

 (3) In In re Bundy , 642 F.2d 430, 434, 209 USPQ 48,
51 - 52 (CCPA 1981), the court ruled that appellant's
disclosure was sufficient to enable one skilled in the art
to  use  the  claimed  analogs  of  naturally  occurring
prostaglandins even though the specification lacked any
examples of specific dosages, because the specification
taught  that  the  novel  prostaglandins  had  certain
pharmacological properties and possessed activity similar to
known E - type prostaglandins.<

2164.07  Relationship of Enablement Requirement to Utility
Requirement of 35 U.S.C. 101 [R - 3]

  The requirement of 35 U.S.C. 112, first paragraph as to
how to use the invention is different from the utility
requirement of 35 U.S.C. 101. The requirement of 35 U.S.C.
101 is that some use be set forth for the invention, and
that the use be provable and not against public policy. On
the other hand, 35 U.S.C. 112, first paragraph requires an
indication of how the use (required by section 101) can be
carried out, i.e., how the invention can be used.

  >If an applicant has disclosed a specific utility for an
invention and provided a credible basis supporting that
specific utility, that fact alone does not provide a basis
for  concluding  that  the  claims  comply  with  all  the
requirements of 35 U.S.C. 112, first paragraph. For example,
if an applicant has claimed a process of treating a certain
disease condition with a certain compound and provided a

credible basis for asserting that the compound is useful in
that regard, but to actually practice the invention as
claimed a person skilled in the relevant art would have to
engage in an undue amount of experimentation, the claim may
be defective under 35 U.S.C. 112, but not 35 U.S.C. 101. To
avoid confusion during examination, any rejection under 35
U.S.C. 112, first paragraph, based on grounds other than
"lack of utility" should be imposed separately from any
rejection imposed due to "lack of utility" under 35 U.S.C.
101 and 35 U.S.C. 112, first paragraph.<

  (a)  When utility requirement is not satisfied

  (1)  Not useful or operative

  If a claim fails to meet the utility requirement of 35
U.S.C.  101  because  it  is  shown  to  be  nonuseful  or
inoperative, then it necessarily fails to meet the how - to
- use aspect of the enablement requirement of 35 U.S.C. 112,
first paragraph. As noted in In re Fouche , 439 F.2d 1237,
169 USPQ 429 (CCPA 1971), if "compositions are in fact
useless, appellant's specification cannot have taught how to
use them.">439 F.2d at 1243,< 169 USPQ at 434. The examiner
should make both rejections (i.e., a rejection under 35
U.S.C. 112, first paragraph and a rejection under 35 U.S.C.
101) where the subject matter of a claim has been shown to
be nonuseful or inoperative.

  The 35 U.S.C. 112, first paragraph, rejection should
indicate that because the invention as claimed does not have
utility, a person skilled in the art would not be able to
use the invention as claimed, and as such, the claim is
defective under 35 U.S.C. 112, first paragraph. A 35 U.S.C.
112, first paragraph, rejection should not be imposed or
maintained unless an appropriate basis exists for imposing a
rejection under 35 U.S.C. 101. In other words, Office
personnel  should  not  impose  a  35  U.S.C.  112,  first
paragraph, rejection grounded on a "lack of utility" basis
unless a 35 U.S.C. 101 rejection is proper. In particular,
the factual showing needed to impose a rejection under 35
U.S.C. 101 must be provided if a 35 U.S.C. 112, first
paragraph, >rejection< is to be imposed on "lack of utility"
grounds. See MPEP § 706.03(a)(1) and § 2107 - § 2107.02 for
a more detailed discussion of the utility requirements of 35
U.S.C. 101 and 112, first paragraph.

 **

  (2)  ** >Burden on the examiner<

  When the examiner concludes that an application is
describing an invention that > is nonuseful, inoperative,
or< contradicts known scientific principles, the burden is
on the examiner to provide a reasonable basis to support
this conclusion. Rejections based on 35 U.S.C. 112, first
paragraph and 35 U.S.C. 101 should be made.

 EXAMINER HAS INITIAL BURDEN TO SHOW THAT ONE OF ORDINARY
SKILL IN THE ART WOULD REASONABLY DOUBT THE ASSERTED UTILITY

  The examiner has the initial burden of challenging an
asserted utility. Only after the examiner has provided
evidence showing that one of ordinary skill in the art would
reasonably doubt the asserted utility does the burden shift
to the applicant to provide rebuttal evidence sufficient to

convince one of ordinary skill in the art of the invention's
asserted utility. In re  Brana ** , 51 F.3d 1560,>1566,< 34
USPQ2d 1436>, 1441< (Fed. Cir. 1995) (citing  In re  Bundy ,
642 F.2d 430, 433, 209 USPQ 48, 51 (CCPA 1981)).

 **

  (3)  Rebuttal by applicant

 **  >If a rejection under 35 U.S.C. 101 has been
properly imposed, along with a corresponding rejection under
35 U.S.C. 112, first paragraph, the burden shifts to the
applicant to rebut the prima facie  showing. In re Oetiker ,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
There is no predetermined amount or character of evidence
that must be provided by an applicant to support an asserted
utility. Rather, the character and amount of evidence needed
to support an asserted utility will vary depending on what
is claimed ( Ex parte Ferguson , 117 USPQ 229, 231 (Bd. App.
1957)),  and  whether  the  asserted  utility  appears  to
contravene established scientific principles and beliefs. In
re Gazave , 379 F.2d 973, 978, 154 USPQ 92, 96 (CCPA 1967 );
In re Chilowsky , 229 F.2d 457, 462, 108 USPQ 321, 325 (CCPA
1956). Furthermore, the applicant does not have to provide
evidence sufficient to establish that an asserted utility is
true "beyond a reasonable doubt." In re Irons,340 F.2d 974,
978, 144 USPQ 351, 354 (CCPA 1965). Instead, evidence will
be sufficient if, considered as a whole, it leads a person
of ordinary skill in the art to conclude that the asserted
utility is more likely than not true. See MPEP § 2107.01 for
a more detailed discussion of consideration of a response to
a prima facie rejection for lack of utility and evaluation
of evidence related to utility. <

  (b) When utility requirement is satisfied

  In some instances, the use will be provided, but the
skilled artisan will not know how to effect that use. In
such a case, no rejection will be made under 35 U.S.C. 101,
but a rejection will be made under 35 U.S.C. 112, first
paragraph. As pointed out in Mowry v. Whitney , 81 U.S. (14
Wall.) 620 (1871), an invention may in fact have great
utility, i.e., may be "a highly useful invention," but the
specification may still fail to "enable any person skilled
in the art or science" to use the invention, 81 U.S. (14
Wall.) at 644. **

2164.08  Enablement Commensurate in Scope With the Claims
[R - 3]

  >All questions of enablement are evaluated against the
claimed subject matter. The focus of the examination inquiry
is whether everything within the scope of the claim is
enabled. Accordingly, the first analytical step requires
that the examiner determine exactly what subject matter is
encompassed by the claims. The examiner should determine
what each claim recites and what the subject matter is when
the claim is considered as a whole , not when its parts are
analyzed individually. No claim should be overlooked. With
respect  to  dependent  claims,  35  U.S.C.  112,  fourth
paragraph, should be followed. This paragraph states that "a
claim in a dependent form shall be construed to incorporate
by reference all the limitations of the claim to which it
refers" and requires the dependent claim to further limit
the subject matter claimed.

  The Federal Circuit has repeatedly held that "the
specification must teach those skilled in the art how to
make and use the full scope of the claimed invention without
`undue experimentation'." In re Wright, 999 F.2d 1557, 1561,
27 USPQ2d 1510, 1513 (Fed. Cir. 1993). Nevertheless, not
everything necessary to practice the invention need be
disclosed. In fact, what is well - known is best omitted.
In re Buchner , 929 F.2d 660, 661, 18 USPQ2d 1331, 1332
(Fed. Cir. 1991). All that is necessary is that one skilled
in the art be able to practice the claimed invention, given
the level of knowledge and skill in the art. Further the
scope  of  enablement  must  only  bear  a  "reasonable
correlation" to the scope of the claims. See, e.g.,  In re
Fisher , 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).<

  As  concerns  the  breadth  of  a  claim  relevant  to
enablement, the only relevant concern should be whether the
scope of enablement provided to one skilled in the art by
the disclosure is commensurate with the scope of protection
sought by the claims. In re Moore , 439 F.2d 1232,>1236,<
169 USPQ 236>, 239< (CCPA 1971).

  The determination of the propriety of a rejection based
upon the scope of a claim relative to the scope of the
enablement involves two stages of inquiry. The first is to
determine how broad the claim is with respect to the
disclosure. The entire claim must be considered. The second
inquiry is to determine if one skilled in the art is enabled
to make and use the entire scope of the claimed invention
without undue experimentation.

  How a teaching is set forth, by specific example or
broad terminology, is not important. In re Marzocchi , 439
F.2d 220,>223 - 24< 169 USPQ 367 >, 370< (CCPA 1971). A
rejection of a claim under>35 U.S.C. < 112 as broader than
the enabling disclosure is a first paragraph enablement
rejection and not a second paragraph definiteness rejection.
Claims are not rejected as **>broader than the enabling
disclosure<  under  35  U.S.C.  112  for  noninclusion  of
limitations dealing with factors which must be presumed to
be within the level of ordinary skill in the art; the claims
need not recite such factors where one of ordinary skill in
the art to whom the specification and claims are directed
would consider them obvious.  In re Skrivan , 427 F.2d
801,>806,< 166 USPQ 85>, 88< (CCPA 1970). > One does not
look to the claims but to the specification to find out how
to practice the claimed invention. W.L. Gore & Assoc., Inc.
v.  Garlock, Inc.,721 F.2d 1540, 1558, 220 USPQ 303, 316 -
17 ( Fed. Cir. 1983); In re Johnson , 558 F.2d 1008, 1017,
194 USPQ 187, 195 (CCPA 1977). In In re Goffe , 542 F.2d
564, 567, 191 USPQ 429, 431 (CCPA 1976), the Court stated:

  to provide effective incentives, claims must adequately
protect inventors. To demand that the first to disclose
shall limit his claims to what he has found will work or to
materials  which  meet  the  guidelines  specified  for
"preferred" materials in a process such as the one herein
involved would not serve the constitutional purpose of
promoting progress in the useful arts.

  When analyzing the enabled scope of a claim, the
teachings of the specification must not be ignored because
claims  are  to  be  given  their  broadest  reasonable
interpretation that is consistent with the specification.

"That claims are interpreted in light of the specification
does not mean that everything in the specification must be
read into the claims." Raytheon Co.  v.  Roper Corp.,724
F.2d 951, 957, 220 USPQ 592, 597 (Fed. Cir. 1983), cert.
denied, 469 U.S. 835 (1984).

  The record must be clear so that the public will have
notice as to the patentee's scope of protection when the
patent issues. If a reasonable interpretation of the claim
is broader than the description in the specification, it is
necessary for the examiner to make sure the full scope of
the claim is enabled. Limitations and examples in the
specification do not generally limit what is covered by the
claims.

  The breadth of the claims was a factor considered in
Amgen  v . Chugai Pharm. Co. , 927 F.2d 1200, 18 USPQ2d 1016
(Fed. Cir.), cert. denied , 502 U.S. 856 (1991). In the
Amgen case, the patent claims were directed to a purified
DNA sequence encoding polypeptides which are analogs of
erythropoietin (EPO). The Court stated that:

  Amgen has not enabled preparation of DNA sequences
sufficient to support its all - encompassing claims . .
[D]espite  extensive  statements  in  the  specification
concerning all the analogs of the EPO gene that can be made,
there is little enabling disclosure of particular analogs
and how to make them. Details for preparing only a few EPO
analog genes are disclosed . . This disclosure might
well justify a generic claim encompassing these and similar
analogs, but it represents inadequate support for Amgen's
desire to claim all EPO gene analogs. There may be many
other genetic sequences that code for EPO - type products.
Amgen has told how to make and use only a few of them and is
therefore not entitled to claim all of them.

 927 F.2d at 1213 - 14, 18 USPQ2d at 1027. However, when
claims  are  directed  to  any  purified  and  isolated  DNA
sequence encoding a specifically named protein where the
protein has a specifically identified sequence, a rejection
of the claims as broader than the enabling disclosure is
generally not appropriate because one skilled in the art
could readily determine any one of the claimed embodiments.

  See also In re Wright , 999 F.2d 1557, 27 USPQ2d 1510
(Fed. Cir. 1993) (The evidence did not show that a skilled
artisan would have been able to carry out the steps required
to practice the full scope of claims which encompass " any
and all live, non - pathogenic vaccines, and processes for
making such vaccines, which elicit immunoprotective activity
in any animal toward any RNA virus." 999 F.2d at 1562, 27
USPQ2d at 1513 (original emphasis)); In re Goodman , 11 F.3d
1046, 1052, 29 USPQ2d 2010, 2015 (Fed. Cir. 1993) (The
specification did not enable the broad scope of the claims
for producing mammalian peptides in plant cells because the
specification contained only an example of producing gamma -
interferon in a dicot species, and there was evidence that
extensive  experimentation  would  have  been  required  for
encoding mammalian peptide into a monocot plant at the time
of filing); In re Fisher , 427 F.2d 833, 839, 166 USPQ 18,
24 (CCPA 1970) (< Where applicant claimed a composition
suitable for the treatment of arthritis having a potency of
"at least" a particular value, the court held that the claim
was not commensurate in scope with the enabling disclosure
because the disclosure was not enabling for compositions

having a slightly higher potency. Simply because applicant
was the first to achieve a composition beyond a particular
threshold potency did not justify or support a claim that
would  dominate  every  composition  that  exceeded  that
threshold value. ** >); In re Vaeck , 947 F.2d 488, 495, 20
USPQ2d  1438,  1444  (Fed.  Cir.  1991)  (<  Given  the  *
>relatively<  incomplete  understanding  in  the
biotechnological  field  involved,  and  the  lack  of  a
reasonable correlation between the narrow disclosure in the
specification and the broad scope of protection sought in
the claims, a rejection under 35 U.S.C. 112, first paragraph
for lack of enablement was appropriate. **>).<

  If a rejection is made based on the view that the
enablement is not commensurate in scope with the claim, the
examiner  should  identify  the  subject  matter  that  is
considered to be enabled.

2164.08(a)  Single Means Claim [R - 3]

  A single means claim, i.e., where a means recitation
does not appear in combination with another recited element
of means, is subject to an undue breadth rejection under 35
U.S.C. 112, first paragraph. In re Hyatt , 708 F.2d 712,>714
- 715,< 218 USPQ 195>, 197< (Fed. Cir. 1983) (A single means
claim which covered every conceivable means for achieving
the stated purpose was held nonenabling for the scope of the
claim because the specification disclosed at most only those
means known to the inventor.). When claims depend on a
recited property, a fact situation comparable to Hyatt is
possible, where the claim covers every conceivable structure
(means) for achieving the stated property (result) while the
specification discloses at most only those known to the
inventor.

 **

2164.08(b)  Inoperative Subject Matter [R - 3]

  > The presence of inoperative embodiments within the
scope of a claim does not necessarily render a claim
nonenabled. The standard is whether a skilled person could
determine which embodiments that were conceived, but not yet
made, would be inoperative or operative with expenditure of
no more effort than is normally required in the art. Atlas
Powder Co.  v.  E.I. duPont de Nemours & Co. , 750 F.2d
1569, 1577, 224 USPQ 409, 414 (Fed. Cir. 1984) (prophetic
examples do not make the disclosure non - enabling).<

  Although,  typically,  inoperative  embodiments  are
excluded by language in a claim (e.g., preamble), the scope
of  the  claim  may  still  not  be  enabled  where  undue
experimentation is involved in determining those embodiments
that are operable. A disclosure of a large number of
operable embodiments and the identification of a single
inoperative embodiment did not render a claim broader than
the enabled scope because undue experimentation was not
involved  in  determining  those  embodiments  that  were
operable. In re Angstadt , 537 F.2d 498, 502 - 503, 190 USPQ
214, 218 (CCPA 1976). However, claims reading on significant
numbers  of  inoperative  embodiments  would  render  claims
nonenabled when the specification does not clearly identify
the  operative  embodiments  and  undue  experimentation  is
involved in determining those that are operative. > Atlas
Powder Co.  v.  E.I. duPont de Nemours & Co. , 750 F.2d

1569, 1577, 224 USPQ 409, 414 (Fed. Cir. 1984); < In re Cook
, 439 F.2d 730,>735,< 169 USPQ 298>, 302< (CCPA 1971).

2164.08(c)  Critical Feature Not Claimed [R - 3]

  A feature which is taught as critical in a specification
and is not recited in the claims should result in a
rejection of such claim under the enablement provision
section of 35 U.S.C. 112. See In re Mayhew , 527 F.2d
1229,>1233,< 188 USPQ 356>, 358< (CCPA 1976). In determining
whether  an  unclaimed  feature  is  critical,  the  entire
disclosure must be considered. Features which are merely
preferred are not to be considered critical. In re Goffe ,
542 F.2d 564,>567,< 191 USPQ 429>, 431< (CCPA 1976).

  >Limiting an applicant to the preferred materials in the
absence  of  limiting  prior  art  would  not  serve  the
constitutional purpose of promoting the progress in the
useful arts. Therefore, an enablement rejection based on the
grounds that a disclosed critical limitation is missing from
a claim should be made only when the language of the
specification makes it clear that the limitation is critical
for the invention to function as intended. Broad language in
the  disclosure,  including  the  abstract,  omitting  an
allegedly critical feature, tends to rebut the argument of
criticality.<

21 65 The Best Mode Requirement [R - 3]

  A third requirement of the first paragraph of 35 U.S.C.
112 is that:

  The specification . . shall set forth the best mode
contemplated by the inventor of carrying out his invention.

  The best mode requirement is a safeguard against the
desire  on  the  part  of  some  people  to  obtain  patent
protection without making a full disclosure as required by
the statute. The requirement does not permit inventors to
disclose only what they know to be their second-

 best embodiment, while retaining the best for themselves.
In re Nelson , 280 F.2d 172, 126 USPQ 242 (CCPA 1960).

  The failure to disclose a better method will not
invalidate a patent if the inventor, at the time of filing
the application, did not know of the better method OR did
not appreciate that it was the best method. All applicants
are required to disclose for the claimed subject matter the
best  mode  *contemplated  by  the  inventor  even  though
applicant may not have been the discoverer of that mode.*
Benger Laboratories Ltd. v.  R.K. Laros Co. , 209 F. Supp.
639, 135 USPQ 11 (E.D. Pa.*>1962<).

 ACTIVE CONCEALMENT OR GROSSLY INEQUITABLE CONDUCT IS NOT
REQUIRED TO ESTABLISH FAILURE TO DISCLOSE THE BEST MODE

  Failure to disclose the best mode need not rise to the
level of active concealment or grossly inequitable conduct
in order to support a rejection or invalidate a patent.
Where an inventor knows of a specific material that will
make possible the successful reproduction of the effects
claimed by the patent, but does not disclose it, speaking
instead  in  terms  of  broad  categories,  the  best  mode
requirement has not been satisfied. Union Carbide Corp. v.

Borg - Warner , 550 F.2d 555, 193 USPQ 1 (6th Cir. 1977).

  If the failure to set forth the best mode in a patent
disclosure is the result of inequitable conduct (e.g., where
the patent specification omitted crucial ingredients and
disclosed a fictitious and inoperable slurry as Example 1),
not  only  is  that  patent  in  danger  of  being  held
unenforceable, but other patents dealing with the same
technology that are sought to be enforced in the same cause
of  action  are  subject  to  being  held  unenforceable.
Consolidated Aluminum Corp. v. Foseco Inc. , 910 F.2d 804,
15 USPQ2d 1481 (Fed. Cir. 1990).

2165.01  Considerations Relevant to Best Mode [R - 1]

  >(a)  What is the invention

  Determine what the invention is - the invention is
defined in the claims. The specification need not set forth
details not relating to the essence of the invention. In re
Bosy , 360 F.2d 972, 149 USPQ 789 (CCPA 1966).

  (b)  Specific example is not required

  There is no statutory requirement for the disclosure of
a specific example - a patent specification is not intended
nor required to be a production specification. In re Gay ,
309 F.2d 768, 135 USPQ 311 (CCPA 1962).

  The absence of a specific working example is not
necessarily  evidence  that  the  best  mode  has  not  been
disclosed, nor is the presence of one evidence that it has.
Best mode may be represented by a preferred range of
conditions or group of reactants. In re Honn , 364 F.2d 454,
150 USPQ 652 (CCPA 1966).

  (c)  Designation as best mode is not required

  There is no requirement in the statute that applicants
point out which of their embodiments they consider to be
their best; that the disclosure includes the best mode
contemplated by applicants is enough to satisfy the statute.
Ernsthausen v.  Nakayama , 1 USPQ 2d 1539 (Bd. Pat. App. &
Inter. 1985).

  (d)  Updating best mode is not required

  There is no requirement to update in the context of a
foreign priority application under 35 U.S.C. 119, Standard
Oil Co. v. Montedison, S.p.A. , 494 F.Supp. 370, 206 USPQ
676 (D.Del. 1980) (better catalyst developed between Italian
priority and U.S. filing dates), and continuing applications
claiming the benefit of an earlier filing date under 35
U.S.C.  120,  Transco  Products,  Inc.  v.  Performance
Contracting Inc. , 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir.
1994) (continuation under 37 CFR 1.60); Sylgab Steel and
Wire Corp. v. Imoco - Gateway Corp. , 357 F.Supp. 657, 178
USPQ 22 (N.D. Ill. 1973) (continuation); Johns - Manville
Corp. v. Guardian Industries Corp. , 586 F.Supp. 1034, 221
USPQ 319 (E.D. Mich. 1983) (continuation and C - I-P). In
the last cited case, the court stated that applicant would
have been obliged to disclose an updated refinement if it
were essential to the successful practice of the invention
and it related to amendments to the C - I-P that were not
present in the parent application. In Carter - Wallace, Inc.

v. Riverton Laboratories, Inc. , 433 F.2d 1034, 167 USPQ 656
(2d Cir. 1970), the court assumed, but did not decide, that
an applicant must update the best mode when filing a C - I-P
application.

  (e)  Defect in best mode cannot be cured by new
matter

  If the best mode contemplated by the inventor at the
time of filing the application is not disclosed, such a
defect cannot be cured by submitting an amendment seeking to
put into the specification something required to be there
when the patent application was originally filed. In re Hay
, 534 F.2d 917, 189 USPQ 790 (CCPA 1976).

  Any proposed amendment of this type (adding a specific
mode of practicing the invention not described in the
application as filed) should be treated as new matter. New
matter under 35 U.S.C. 132 and 251 should be objected to and
coupled with a requirement to cancel the new matter.<

2165.02  Best Mode Requirement Compared to Enablement
Requirement [R - 1]

  >The best mode requirement is a separate and distinct
requirement from the enablement requirement of the first
paragraph of 35 U.S.C. 112. In re Newton , 414 F.2d 1400,
163 USPQ 34 (CCPA 1969).

  The best mode provision of 35 U.S.C. 112 is not directed
to a situation where the application fails to set forth any
mode - such failure is equivalent to nonenablement. In re
Glass , 492 F.2d 1228, 181 USPQ 31 (CCPA 1974).

  The enablement requirement looks to placing the subject
matter of the claims generally in the possession of the
public.  If,  however,  the  applicant  develops  specific
instrumentalities or techniques which are recognized by the
applicant at the time of filing as the best way of carrying
out the invention, then the best mode requirement imposes an
obligation to disclose that information to the public as
well. Spectra - Physics v. Coherent , 827 F.2d 1524, 3 USPQ
2d 1737 (Fed. Cir.), cert. denied , 484 U.S. 954 (1987).<

2165.03  Requirements for Rejection for Lack of Best Mode
[R - 1]

 >ASSUME BEST MODE IS DISCLOSED UNLESS THERE IS EVIDENCE TO
THE CONTRARY

  The examiner should assume that the best mode is
disclosed in the application, unless evidence is presented
that is inconsistent with that assumption. It is extremely
rare that a best mode rejection properly would be made in ex
parte prosecution. The information that is necessary to form
the basis for a rejection based on the failure to set forth
the best mode is rarely accessible to the examiner, but is
generally  uncovered  during  discovery  procedures  in
interference, litigation, or other inter partes proceedings.

 EXAMINER MUST DETERMINE WHETHER THE INVENTOR KNEW THAT ONE
MODE WAS BETTER THAN ANOTHER, AND IF SO, WHETHER THE
DISCLOSURE IS ADEQUATE TO ENABLE ONE OF ORDINARY SKILL IN
THE ART TO PRACTICE THE BEST MODE

  According to the approach used by the Court in Chemcast
Corp. v. Arco Industries , 913 F. 2d 923, 16 USPQ 2d 1033
(Fed. Cir. 1990), a proper best mode analysis has two
components:

 (1) Determine whether, at the time the application
was filed, the inventor knew of a mode of practicing the
claimed invention that the inventor considered to be better
than any other.

  The first component is a subjective inquiry because
it focuses on the inventor's state of mind at the time the
application was filed. Unless the examiner has evidence that
the inventors had information in their possession

 (a) at the time the application was filed

 (b) that a mode was considered to be better than any
others by the inventors

 there is no reason to address the second component and
there is no proper basis for a best mode rejection. If the
facts satisfy the first component, then, and only then, is
the following second component analyzed:

 (2) Compare what was known in (1) with what was
disclosed - is the disclosure adequate to enable one skilled
in the art to practice the best mode?

  Assessing the adequacy of the disclosure in this regard
is largely an objective inquiry that depends on the level of
skill in the art. Is the information contained in the
specification  disclosure  sufficient  to  enable  a  person
skilled in the relevant art to make and use the best mode?

  A best mode rejection is proper only when the first
inquiry can be answered in the affirmative, and the second
inquiry answered in the negative with reasons to support the
conclusion  that  the  specification  is  nonenabling  with
respect to the best mode.<

2165.04  Examples of Evidence of Concealment [R - 1]

  >In determining the adequacy of a best mode disclosure,
only evidence of concealment (accidental or intentional) is
to be considered. That evidence must tend to show that the
quality of an applicant's best mode disclosure is so poor as
to effectively result in concealment.

  (a) Examples - Best mode requirement satisfied

  In  one  case,  even  though  the  inventor  had  more
information in his possession concerning the contemplated
best mode than was disclosed (a known computer program) the
specification was held to delineate the best mode in a
manner sufficient to require only the application of routine
skill to produce a workable digital computer program. In re
Sherwood , 613 F.2d 809, 204 USPQ 537 (CCPA 1980).

  In another case, the claimed subject matter was a time
controlled thermostat, but the application did not disclose
the  specific  Quartzmatic  motor  which  was  used  in  a
commercial embodiment. The Court concluded that failure to
disclose the commercial motor did not amount to concealment
since similar clock motors were widely available and widely

advertised.  There  was  no  evidence  that  the  specific
Quartzmatic motor was superior except possibly in price.
Honeywell v. Diamond , 208 USPQ 452 (D.D.C. 1980).

  There was held to be no violation of the best mode
requirement even though the inventor did not disclose the
only mode of calculating the stretch rate for plastic rods
that he used because that mode would have been employed by
those  of  ordinary  skill  in  the  art  at  the  time  the
application was filed. W.L. Gore & Assoc. Inc. v.  Garlock
Inc. , 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).

  There was no best mode violation where there was no
evidence  that  the  monoclonal  antibodies  used  by  the
inventors differed from those obtainable according to the
processes  described  in  the  specification.  It  was  not
disputed that the inventors obtained the antibodies used in
the  invention  by  following  the  procedures  in  the
specification, that these were the inventors' preferred
procedures, and that the data reported in the specification
was for the antibody that the inventors had actually used.
Scripps Clinic and Research Foundation v. Genentech Inc. ,
927 F.2d 1565, 18 USPQ 2d 1001 (Fed. Cir. 1991).

  Where an organism was created by the insertion of
genetic  material  into  a  cell  obtained  from  generally
available sources, all that was required to satisfy the best
mode requirement was an adequate description of the means
for carrying out the invention, not deposit of the cells. As
to the observation that no scientist could ever duplicate
exactly the cell used by applicants, the court observed that
the issue is whether the disclosure is adequate, not that an
exact  duplication  is  necessary.  Amgen  Inc.  v.  Chugai
Pharmaceutical Co. Ltd. , 927 F.2d 1200, 18 USPQ 2d 1016
(Fed. Cir. 1991).

  There was held to be no violation of the best mode
requirement where the Solicitor argued that concealment
could be inferred from the disclosure in a specification
that each analog is "surprisingly and unexpectedly more
useful than one of the corresponding prostaglandins . .
for at least one of the pharmacological purposes." It was
argued  that  appellant  must  have  had  test  results  to
substantiate this statement and this data should have been
disclosed. The court concluded that no withholding could be
inferred from general statements of increased selectivity
and narrower spectrum of potency for these novel analogs,
conclusions  which  could  be  drawn  from  the  elementary
pharmacological testing of the analogs. In re Bundy , 642
F.2d 430, 435, 209 USPQ 48, 52 (CCPA 1981).

  (b) Examples - Best mode requirement not satisfied

  The best mode requirement was held to be violated where
inventors of a laser failed to disclose details of their
preferred TiCuSil brazing method which were not contained in
the prior art and were contrary to criteria for the use of
TiCuSil as contained in the literature. Spectra - Physics,
Inc. v. Coherent, Inc. , 827 F.2d 1524, 3 USPQ 2d 1737 (Fed.
Cir. 1987).

  The best mode requirement was violated because an
inventor failed to disclose whether to use a specific
surface  treatment  that  he  knew  was  necessary  to  the
satisfactory performance of his invention, even though how

to perform the treatment itself was known in the art. The
argument that the best mode requirement may be met solely by
reference to what was known in the prior art was rejected as
incorrect. Dana Corp. v. IPC Ltd. Partnership , 860 F.2d
415, 8 USPQ 2d 1692 (Fed. Cir. 1988).<

2171  Two Separate Requirements for Claims Under 35
U.S.C. 112, Second Paragraph [R - 1]

  >The second paragraph of 35 U.S.C. 112 is directed to
requirements for the claims:

  The specification shall conclude with one or more claims
particularly  pointing  out  and  distinctly  claiming  the
subject matter which the applicant regards as his invention.

 There are two separate requirements set forth in this
paragraph:

 (1) the claims must set forth the subject matter
that applicants regard as their invention; and

 (2) the claims must particularly point out and
distinctly define the metes and bounds of the subject matter
that will be protected by the patent grant.

  The first requirement is a subjective one because it is
dependent on what the applicants for a patent regard as
their invention. The second requirement is an objective one
because it is not dependent on the views of applicant or any
particular individual, but is evaluated in the context of
whether the claim is definite - i.e., whether the scope of
the claim is clear to a hypothetical person possessing the
ordinary level of skill in the pertinent art.

  Although an essential purpose of the examination process
is  to  determine  whether  or  not  the  claims  define  an
invention that is both novel and nonobvious over the prior
art, another essential purpose of patent examination is to
determine whether or not the claims are precise, clear,
correct, and unambiguous. The uncertainties of claim scope
should  be  removed,  as  much  as  possible,  during  the
examination process.

  The inquiry during examination is patentability of the
invention as applicant regards it. If the claims do not
particularly point out and distinctly claim that which
applicants regard as their invention, the appropriate action
by the examiner is to reject the claims under 35 U.S.C. 112,
second paragraph. In re Zletz , 893 F.2d 319, 13 USPQ2d 1320
(Fed. Cir. 1989). If a rejection is based on 35 U.S.C. 112,
second  paragraph,  the  examiner  should  further  explain
whether the rejection is based on indefiniteness or on the
failure to claim what applicants regard as their invention.
Ex parte Ionescu , 222 USPQ 537, 539 (Bd. App. 1984).<

2172  Subject Matter Which Applicants Regard as Their
Invention [R - 1]

  >(a)  Focus for examination

  A rejection based on the failure to satisfy this
requirement is appropriate only where applicant has stated,
somewhere other than in the application as filed, that the
invention is something different from what is de fined by

the claims. In other words, the invention set forth in the
claims must be presumed, in the absence of evidence to the
contrary, to be that which applicants regard as their
invention. In re Moore , 439 F.2d 1232, 169 USPQ 236 (CCPA
1971).

  (b)  Evidence to the contrary

  Evidence that shows that a claim does not correspond in
scope with that which applicant regards as applicant's
invention may be found, for example, in contentions or
admissions  contained  in  briefs  or  remarks  filed  by
applicant, In re Prater , 415 F.2d 1393, 162 USPQ 541 (CCPA
1969), or in affidavits filed under 37 CFR 1.132, In re
Cormany , 476 F.2d 998, 177 USPQ 450 (CCPA 1973). The
content of applicant's specification is not used as evidence
that the scope of the claims is inconsistent with the
subject matter which applicants regard as their invention.
As noted in In re Ehrreich , 590 F.2d 902, 200 USPQ 504
(CCPA 1979), agreement, or lack thereof, between the claims
and the specification is properly considered only with
respect to 35 U.S.C. 112, first paragraph; it is irrelevant
to compliance with the second paragraph of that section.

  (c)  Shift in claims permitted

  The second paragraph of 35 U.S.C. 112 does not prohibit
applicants from changing what they regard as their invention
during the pendency of the application. In re Saunders , 444
F.2d 599, 170 USPQ 213 (CCPA 1971) (Applicant was permitted
to claim and submit comparative evidence with respect to
claimed  subject  matter  which  originally  was  only  the
preferred embodiment within much broader claims (directed to
a  method).).  The  fact  that  claims  in  a  continuation
application were directed to originally disclosed subject
matter which applicants had not regarded as part of their
invention when the parent application was filed was held not
to  prevent  the  continuation  application  from  receiving
benefits of the filing date of the parent application under
35 U.S.C. 120. In re Brower , 433 F.2d 813, 167 USPQ 684
(CCPA 1970).<

>2172.01  Unclaimed Essential Matter [R - 3 ]

  A claim which omits matter disclosed to be essential to
the invention as described in the specification or in other
statements of record may be rejected under 35 U.S.C. 112,
first paragraph, as not enabling. In re Mayhew , 527 F.2d
1229, 188 USPQ 356 (CCPA 1976); MPEP 2164.08(c). Such
essential matter may include missing elements, steps or
necessary structural cooperative relationships of elements
described by the applicant(s) as necessary to practice the
invention.

  In  addition,  a  claim  which  fails  to  interrelate
essential  elements  of  the  invention  as  defined  by
applicant(s) in the specification may be rejected under 35
U.S.C. 112, second paragraph, for failure to point out and
distinctly claim the invention. See In re Venezia , 530 F.2d
956, 189 USPQ 149 (CCPA 1976);  In re Collier , 397 F.2d
1003, 158 USPQ 266 (CCPA 1968).<

2173  Claims Must Particularly Point Out and Distinctly
Claim the Invention [R - 1]

  >The primary purpose of this requirement of definiteness
of claim language is to ensure that the scope of the claims
is clear so the public is informed of the boundaries of what
constitutes infringement of the patent. A secondary purpose
is to provide a clear measure of what applicants regard as
the invention so that it can be determined whether the
claimed invention meets all the criteria for patentability
and whether the specification meets the criteria of 35
U.S.C. 112, first paragraph with respect to the claimed
invention.<

2173.01  Claim Terminology [R - 1]

  >A fundamental principle contained in 35 U.S.C. 112,
second  paragraph  is  that  applicants  are  their  own
lexicographers. They can define in the claims what they
regard as their invention essentially in whatever terms they
choose so long as the terms are not used in ways that are
contrary to accepted meanings in the art. Applicant may use
functional  language,  alternative  expressions,  negative
limitations, or any style of expression or format of claim
which makes clear the boundaries of the subject matter for
which protection is sought. As noted by the Court in In re
Swinehart , 439 F.2d 210. 160 USPQ 226 (CCPA 1971), a claim
may not be rejected solely because of the type of language
used  to  define  the  subject  matter  for  which  patent
protection is sought.<

2173.02  Clarity and Precision [R - 1]

  >The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35
U.S.C. 112, second paragraph is whether the claim meets the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
When the examiner is satisfied that patentable subject
matter is disclosed, and it is apparent to the examiner that
the claims are directed to such patentable subject matter,
he or she should allow claims which define the patentable
subject matter with a reasonable degree of particularity and
distinctness. Some latitude in the manner of expression and
the aptness of terms should be permitted even though the
claim language is not as precise as the examiner might
desire. Examiners are encouraged to suggest claim language
to applicants to improve the clarity or precision of the
language used, but should not reject claims or insist on
their own preferences if other modes of expression selected
by applicants satisfy the statutory requirement.

  The essential inquiry pertaining to this requirement is
whether the claims set out and circumscribe a particular
subject matter with a reasonable degree of clarity and
particularity.  Definiteness  of  claim  language  must  be
analyzed, not in a vacuum, but in light of (1) the content
of the particular application disclosure, (2) the teachings
of the prior art, and (3) the claim interpretation that
would be given by one possessing the ordinary level of skill
in the pertinent art at the time the invention was made. If
the scope of the invention sought to be patented cannot be
determined from the language of the claims with a reasonable
degree of certainty, a rejection of the claims under 35
U.S.C. 112, second paragraph is appropriate. In re Wiggins ,
488 F.2d 538, 179 USPQ 421 (CCPA 1973).<

2173.03  Inconsistency Between Claim and Specification

Disclosure or Prior Art [R - 1]

  >Although the terms of a claim may appear to be
definite, inconsistency with the specification disclosure or
prior art teachings may make an otherwise definite claim
take on an unreasonable degree of uncertainty. In re Cohn ,
438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack , 427
F.2d 1378, 166 USPQ 204 (CCPA 1970). In Cohn , the claim was
directed to a process of treating a surface with a corroding
solution until the metallic appearance is supplanted by an
"opaque" appearance. Noting that no claim may be read apart
from and independent of the supporting disclosure on which
it  is  based,  the  court  found  that  the  description,
definitions and examples set forth in the specification
relating to the appearance of the surface after treatment
were  inherently  inconsistent  and  rendered  the  claim
indefinite.<

2173.04  Breadth Is Not Indefiniteness [R - 1]

  >Breadth  of  a  claim  is  not  to  be  equated  with
indefiniteness. In re Miller , 441 F.2d 689, 169 USPQ 597
(CCPA 1971). If the scope of the subject matter embraced by
the claims is clear, and if applicants have not otherwise
indicated that they intend the invention to be of a scope
different from that defined in the claims, then the claims
comply with 35 U.S.C. 112, second paragraph.

  Undue breadth of the claim may be addressed under
different statutory provisions, depending on the reasons for
concluding that the claim is too broad. If the claim is too
broad because it does not set forth that which applicants
regard as their invention as evidenced by statements outside
of the application as filed, a rejection under 35 U.S.C.
112, second paragraph would be appropriate. If the claim is
too broad because it is not supported by the original
description or by an enabling disclosure, a rejection under
35 U.S.C. 112, first paragraph would be appropriate. If the
claim is too broad because it reads on the prior art, a
rejection under either 35 U.S.C. 102 or 103 would be
appropriate.<

2173.05  Specific Topics Related to Issues Under 35 U.S.C.
112, Second Paragraph [R - 1]

  >The following sections are devoted to a discussion of
specific topics where issues under 35 U.S.C. 112, second
paragraph  have  been  addressed.  These  sections  are  not
intended to be an exhaustive list of the issues that can
arise  under  35  U.S.C.  112,  second  paragraph,  but  are
intended  to  provide  guidance  in  areas  that  have  been
addressed  with  some  frequency  in  recent  examination
practice.  The  court  and  Board  decisions  cited  are
representative. As with all appellate decisions, the results
are largely dictated by the facts in each case. The use of
the same language in a different context may justify a
different result.<

2173.05(a)  New Terminology [R - 1]

 >THE MEANING OF EVERY TERM SHOULD BE APPARENT

  The meaning of every term used in a claim should be
apparent from the prior art or from the specification and
drawings at the time the application is filed. Applicants

need not confine themselves to the terminology used in the
prior art, but are required to make clear and precise the
terms that are used to define the invention whereby the
metes  and  bounds  of  the  claimed  invention  can  be
ascertained. During patent examination, the pending claims
must  be  given  the  broadest  reasonable  interpretation
consistent with the specification. In re Prater , 162 USPQ
541 (CCPA 1969). See also MPEP § 2111 - § 2111.01. When the
specification states the meaning that a term in the claim is
intended to have, the claim is examined using that meaning,
in  order  to  achieve  a  complete  exploration  of  the
applicant's invention and its relation to the prior art. In
re Zletz , 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989).

 THE REQUIREMENT FOR CLARITY AND PRECISION MUST BE BALANCED
WITH THE LIMITATIONS OF THE LANGUAGE

  Courts have recognized that it is not only permissible,
but often desirable, to use new terms that are frequently
more precise in describing and defining the new invention.
In re  Fisher , 427 F.2d 833, 166 USPQ 18 (CCPA 1970).
Although it is difficult to compare the claimed invention
with the prior art when new terms are used that do not
appear in the prior art, this does not make the new terms
indefinite.

  New terms are often used when a new technology is in its
infancy or is rapidly evolving. The requirements for clarity
and precision must be balanced with the limitations of the
language and the science. If the claims, read in light of
the specification, reasonably apprise those skilled in the
art both of the utilization and scope of the invention, and
if the language is as precise as the subject matter permits,
the statute (35 U.S.C. 112, second paragraph) demands no
more. Shatterproof Glass Corp. v. Libbey Owens Ford Co. ,
758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985) (interpretation
of  "freely  supporting"  in  method  claims  directed  to
treatment of a glass sheet);  Hybritech, Inc . v. Monoclonal
Antibodies, Inc. , 802 F.2d 1367, 231 USPQ 81 (Fed. Cir.
1986) (interpretation of a limitation specifying a numerical
value for antibody affinity where the method of calculation
was known in the art at the time of filing to be imprecise).
This does not mean that the examiner must accept the best
effort  of  applicant.  If  the  proposed  language  is  not
considered as precise as the subject matter permits, the
examiner should provide reasons to support the conclusion of
indefiniteness and is encouraged to suggest alternatives
that are free from objection.

 A TERM MAY NOT BE GIVEN A MEANING REPUGNANT TO ITS USUAL
MEANING

  While a term used in the claims may be given a special
meaning in the description of the invention, generally no
term may be given a meaning repugnant to the usual meaning
of the term. In re Hill , 161 F.2d 367, 73 USPQ 482 (CCPA
1947). However, it has been stated that consistent with the
well - established axiom in patent law that a patentee is
free to be his or her own lexicographer, a patentee may use
terms in a manner contrary to or inconsistent with one or
more of their ordinary meanings. Hormone Research Foundation
Inc. v. Genentech Inc.,904 F.2d 1558, 15 USPQ2d 1039 (Fed.
Cir.  1990).  Accordingly,  when  there  is  more  than  one
definition for a term, it is incumbent upon applicant to
make clear which definition is being relied upon to claim

the invention. Until the meaning of a term or phrase used in
a claim is clear, a rejection under 35 U.S.C. 112, second
paragraph is appropriate. It is appropriate to compare the
meaning of terms given in technical dictionaries in order to
ascertain the accepted meaning of a term in the art. In re
Barr , 444 F.2d 588, 170 USPQ 330 (CCPA 1971).<

2173.05(b)  Relative Terminology [R - 1]

  >The fact that claim language, including terms of
degree, may not be precise, does not automatically render
the claim indefinite under 35 U.S.C. 112, second paragraph.
Seattle Box Co. , v. Industrial Crating & Packing, Inc. ,
731 F.2d 818, 221 USPQ 568 (Fed. Cir. 1984). Acceptability
of the claim language depends on whether one of ordinary
skill in the art would understand what is claimed, in light
of the specification.

 WHEN A TERM OF DEGREE IS PRESENT, DETERMINE WHETHER A
STANDARD IS DISCLOSED OR WHETHER ONE OF ORDINARY SKILL IN
THE ART WOULD BE APPRISED OF THE SCOPE OF THE CLAIM

  When a term of degree is presented in a claim, first a
determination is to be made as to whether the specification
provides some standard for measuring that degree. If it does
not, a determination is made as to whether one of ordinary
skill in the art, in view of the prior art and the status of
the art, would be nevertheless reasonably apprised of the
scope of the invention. Even if the specification uses the
same term of degree as in the claim, a rejection may be
proper if the scope of the term is not understood when read
in  light  of  the  specification.  While,  as  a  general
proposition, broadening modifiers are standard tools in
claim drafting in order to avoid reliance on the doctrine of
equivalents in infringement actions, when the scope of the
claim is unclear a rejection under 35 U.S.C. 112, second
paragraph is proper. See In re Wiggins , 488 F. 2d 538, 541,
179 USPQ 421, 423 (CCPA 1973).

  When relative terms are used in claims wherein the
improvement over the prior art rests entirely upon size or
weight of an element in a combination of elements, the
adequacy of the disclosure of a standard is of greater
criticality.

 REFERENCE TO AN OBJECT THAT IS VARIABLE MAY RENDER A CLAIM
INDEFINITE

  A claim may be rendered indefinite by reference to an
object that is variable. For example, the Board has held
that a limitation in a claim to a bicycle that recited "said
front and rear wheels so spaced as to give a wheelbase that
is between 58 percent and 75 percent of the height of the
rider that the bicycle was designed for" was indefinite
because the relationship of parts was not based on any known
standard for sizing a bicycle to a rider, but on a rider of
unspecified build. Ex parte  Brummer , 12 USPQ2d 1653 (Bd.
Pat. App. & Inter. 1989). On the other hand, a claim
limitation specifying that a certain part of a pediatric
wheelchair be "so dimensioned as to be insertable through
the space between the doorframe of an automobile and one of
the seats" was held to be definite.  Orthokinetics, Inc. v.
Safety Travel Chairs Inc. , 806 F.2d 1565, 1 USPQ2d 1081
(Fed. Cir. 1986). The court stated that the phrase "so
dimensioned" is as accurate as the subject matter permits,

noting that the patent law does not require that all
possible lengths corresponding to the spaces in hundreds of
different automobiles be listed in the patent, let alone
that they be listed in the claims.

  (a)  About

  The term "about" used to define the area of the lower
end of a mold as between 25 to about 45% of the mold
entrance was held to be clear, but flexible. Ex parte
Eastwood , 163 USPQ 316 (Bd. App. 1968). Similarly, in W.L.
Gore & Associates, Inc. v. Garlock, Inc. , 721 F.2d 1540,
220 USPQ 303 (Fed. Cir. 1983), the court held that a
limitation  defining  the  stretch  rate  of  a  plastic  as
"exceeding  about  10%  per  second"  is  definite  because
infringement could clearly be assessed through the use of a
stopwatch. However, the court held that claims reciting "at
least about" were invalid for indefiniteness where there was
close prior art and there was nothing in the specification,
prosecution  history,  or  the  prior  art  to  provide  any
indication as to what range of specific activity is covered
by the term "about." Amgen v. Chugai Pharmaceutical Co. Ltd.
, 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991).

  (b)  Essentially

  The phrase "a silicon dioxide source that is essentially
free of alkali metal" was held to be definite because the
specification contained guidelines and examples that were
considered sufficient to enable a person of ordinary skill
in the art to draw a line between unavoidable impurities in
starting materials and essential ingredients. In re Marosi ,
710 F.2d 799, 218 USPQ 289 (CCPA 1983). The court further
observed that it would be impractical to require applicants
to specify a particular number as a cutoff between their
invention and the prior art.

  (c)  Similar

  The term "similar" in the preamble of a claim that was
directed to a nozzle "for high - pressure cleaning units or
similar apparatus" was held to be indefinite since it was
not clear what applicant intended to cover by the recitation
"similar" apparatus. Ex parte Kristensen , 10 USPQ2d 1701
(Bd. Pat. App. & Inter. 1989).

  A claim in a design patent application which read: "The
ornamental design for a feed bunk or similar structure as
shown and described." was held to be indefinite because it
was unclear from the specification what applicant intended
to cover by the recitation of "similar structure." Ex parte
Pappas , 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992).

  (d)  Substantially

  The term "substantially" is often used in conjunction
with another term to describe a particular characteristic of
the claimed invention. It is a broad term. In re Nehrenberg
, 280 F.2d 161, 126 USPQ 383 (CCPA 1960). The court held
that  the  limitation  "to  substantially  increase  the
efficiency of the compound as a copper extractant" was
definite in view of the general guidelines contained in the
specification. In re Mattison , 509 F.2d 563, 184 USPQ 484
(CCPA 1975). The court held that the limitation "which
produces substantially equal E and H plane illumination

patterns" was definite because one of ordinary skill in the
art would know what was meant by "substantially equal."
Andrew Corp. v. Gabriel Electronics , 847 F.2d 819, 6 USPQ2d
2010 (Fed. Cir. 1988).

  (e)  Type

  The addition of the word "type" to an otherwise definite
expression (e.g., Friedel - Crafts catalyst) extends the
scope of the expression so as to render it indefinite. Ex
parte Copenhaver , 109 USPQ 118 (Bd. App. 1955). Likewise,
the phrase "ZSM - 5-type aluminosilicate zeolites" was held
to be indefinite because it was unclear what "type" was
intended  to  convey.  The  interpretation  was  made  more
difficult by the fact that the zeolites defined in the
dependent claims were not within the genus of the type of
zeolites defined in the independent claim. Ex parte Attig ,
7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986).

  (f)  Other terms

  The phrases "relatively shallow," "of the order of,"
"the order of about 5mm," and "substantial portion" were
held to be indefinite because the specification lacked some
standard for measuring the degree intended and, therefore,
properly rejected as indefinite under 35 U.S.C. 112, second
paragraph. Ex parte Oetiker , 23 USPQ2d 641 (Bd. Pat. App &
Inter. 1992).

  The term "or like material" in the context of the
limitation "coke, brick, or like material" was held to
render the claim indefinite since it was not clear how the
materials other than coke or brick had to resemble the two
specified materials to satisfy the limitations of the claim.
Ex parte Caldwell , 1906 Comm'r Dec. 58 (Comm'r Pat. 1906).

  The terms "comparable" and "superior" were held to be
indefinite in the context of a limitation relating the
characteristics of the claimed material to other materials -
"properties  that  are  superior  to  those  obtained  with
comparable" prior art materials. Ex parte Anderson , 21
USPQ2d 1241 (Bd. Pat. App. & Inter. 1991). It was not clear
from the specification which properties had to be compared
and how comparable the properties would have to be to
determine  infringement  issues.  Further,  there  was  no
guidance as to the meaning of the term "superior."<

2173.05(c)  Numerical Ranges and Amounts Limitations [R -
1]

  >Generally, the recitation of specific numerical ranges
in a claim does not raise an issue of whether a claim is
definite.

  (a)  Narrow and broader ranges in the same claim

  Use of a narrow numerical range that falls within a
broader range in the same claim may render the claim
indefinite  when  the  boundaries  of  the  claim  are  not
discernible. Description of examples and preferences is
properly set forth in the specification rather than in the
claims. If stated in the claims, examples and preferences
lead to confusion over the intended scope of a claim. In
those instances where it is not clear whether the claimed
narrower range is a limitation, a rejection under 35 U.S.C.

112, second paragraph should be made. The Examiner should
analyze whether the metes and bounds of the claim are
clearly set forth. Examples of claim language which have
been held to be indefinite are (1) "a temperature of between
45 and 78 degrees Celsius, preferably between 50 and 60
degrees Celsius"; and (2) "a predetermined quantity, for
example, the maximum capacity."

  (b)  Open - ended numerical ranges

  Open - ended numerical ranges should be carefully
analyzed for definiteness. For example, when an independent
claim recites a composition comprising "at least 20% sodium"
and  a  dependent  claim  sets  forth  specific  amounts  of
nonsodium ingredients which add up to 100%, apparently to
the exclusion of sodium, an ambiguity is created with regard
to the "at least" limitation (unless the percentages of the
nonsodium  ingredients  are  based  on  the  weight  of  the
nonsodium ingredients). On the other hand, the court held
that a composition claimed to have a theoretical content
greater than 100% (i.e., 20 - 80% of A, 20 - 80% of B, and 1
- 25% of C) was not indefinite simply because the claims may
be  read  in  theory  to  include  compositions  that  are
impossible in fact to formulate. It was observed that
subject matter which cannot exist in fact can neither
anticipate nor infringe a claim. In re Kroekel , 504 F.2d
1143, 183 USPQ 610 (CCPA 1974).

  In a claim directed to a chemical reaction process, a
limitation required that the amount of one ingredient in the
reaction mixture should "be maintained at less than 7 mole
percent" based on the amount of another ingredient. The
examiner argued that the claim was indefinite because the
limitation sets only a maximum amount and is inclusive of
substantially no ingredient resulting in termination of any
reaction. The court did not agree be cause the claim was
clearly directed to a reaction process which did not warrant
distorting the overall meaning of the claim to preclude
performing the claimed process. In re Kirsch , 498 F.2d
1389, 182 USPQ 286 (CCPA 1974).

  Some terms have been determined to have the following
meanings in the factual situations of the reported cases:
the term "up to" includes zero as a lower limit, In re
Mochel , 470 F.2d 638, 176 USPQ 194 (CCPA 1974); and "a
moisture content of not more than 70% by weight" reads on
dry material, Ex parte Khusid , 174 USPQ 59 (Bd. App. 1971).

  (c)  "Effective amount"

  The common phrase "an effective amount" may or may not
be indefinite. The proper test is whether or not one skilled
in the art could determine specific values for the amount
based on the disclosure. See In re Mattison , 509 F.2d 563,
184 USPQ 484 (CCPA 1975). The phrase "an effective amount .
. . for growth stimulation" was held to be definite where
the amount was not critical and those skilled in the art
would be able to determine from the written disclosure,
including the examples, what an effective amount is. In re
Halleck , 422 F.2d 911, 164 USPQ 647 (CCPA 1970). The phrase
"an effective amount" has been held to be indefinite when
the claim fails to state the function which is to be
achieved and more than one effect can be implied from the
specification or the relevant art. In re Fredericksen213
F.2d 547, 102 USPQ 35 (CCPA 1954). The more recent cases

have tended to accept a limitation such as "an effective
amount"  as  being  definite  when  read  in  light  of  the
supporting disclosure and in the absence of any prior art
which would give rise to uncertainty about the scope of the
claim. In Ex parte Skuballa , 12 USPQ2d 1570 (Bd. Pat. App.
&  Inter.  1989),  the  Board  held  that  a  pharmaceutical
composition claim which recited an "effective amount of a
compound of claim 1" without stating the function to be
achieved was definite, particularly when read in light of
the supporting disclosure which provided guidelines as to
the intended utilities and how the uses could be effected.<

2173.05(d)  Exemplary Claim Language (for example, such
as) [R - 1]

  >Description of examples or preferences is properly set
forth in the specification rather than the claims. If stated
in the claims, examples and preferences lead to confusion
over the intended scope of a claim. In those instances where
it is not clear whether the claimed narrower range is a
limitation,  a  rejection  under  35  U.S.C.  112,  second
paragraph  should  be  made.  The  Examiner  should  analyze
whether the metes and bounds of the claim are clearly set
forth. Examples of claim language which have been held to be
indefinite because the intended scope of the claim was
unclear are:

 (1) "R is halogen, for example, chlorine";

 (2) "material such as rock wool or asbestos" Ex
parte Hall , 83 USPQ 38 (Bd. App. 1949);

 (3) "lighter hydrocarbons, such, for example, as the
vapors or gas produced" Ex parte Hasche , 86 USPQ 481 (Bd.
App. 1949); and

 (4) "normal operating conditions such as while in
the container of a proportioner" Ex parte Steigerwald , 131
USPQ 74 (Bd. App. 1961).<

2173.05(e)  Lack of Antecedent Basis [R - 1]

  >A claim is indefinite when it contains words or phrases
whose meaning is unclear. The lack of clarity could arise
where a claim refers to "said lever" or "the lever," where
the claim contains no earlier recitation or limitation of a
lever and where it would be unclear as to what element the
limitation was making reference. Similarly, if two different
levers are recited earlier in the claim, the recitation of
"said lever" in the same or subsequent claim would be
unclear where it is uncertain which of the two levers was
intended. A claim which refers to "said aluminum lever," but
recites only "a lever" earlier in the claim, is indefinite
because it is uncertain as to the lever to which reference
is made. Obviously, however, the failure to provide explicit
antecedent basis for terms does not always render a claim
indefinite. If the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is
not indefinite. Ex parte Porter , 25 USPQ2d 1144, 1145 (Bd.
Pat. App. & Inter. 1992) ("controlled stream of fluid"
provided reasonable antecedent basis for "the controlled
fluid").  Inherent  components  of  elements  recited  have
antecedent  basis  in  the  recitation  of  the  components
themselves. For example, the limitation "the outer surface
of said sphere" would not require an antecedent recitation

that the sphere has an outer surface.

 EXAMINER SHOULD SUGGEST CORRECTIONS TO ANTECEDENT PROBLEMS

  Antecedent problems in the claims are typically drafting
oversights that are easily corrected once they are brought
to the attention of applicant. The examiner's task of making
sure the claim language complies with the requirements of
the  statute  should  be  carried  out  in  a  positive  and
constructive way, so that minor problems can be identified
and easily corrected, and so that the major effort is
expended on more substantive issues. However, even though
indefiniteness in claim language is of semantic origin, it
is not rendered unobjectionable simply because it could have
been corrected. In re Hammack , 427 F.2d 1384 n.5, 166 USPQ
209 n.5 (CCPA 1970).

  A  CLAIM  TERM  WHICH  HAS  NO  ANTECEDENT  BASIS  IN  THE
DISCLOSURE IS NOT NECESSARILY INDEFINITE

  The mere fact that a term or phrase used in the claim
has no antecedent basis in the specification disclosure does
not  mean,  necessarily,  that  the  term  or  phrase  is
indefinite. There is no requirement that the words in the
claim must match those used in the specification disclosure.
Applicants are given a great deal of latitude in how they
choose to define their invention so long as the terms and
phrases used define the invention with a reasonable degree
of clarity and precision.<

2173.05(f)  Reference to Limitations in Another Claim [R
- 1]

  >A claim which makes reference to a preceding claim to
define a limitation is an acceptable claim construction
which should not necessarily be rejected as improper or
confusing  under  35  U.S.C.  112,  second  paragraph.  For
example, claims which read: "The product produced by the
method of claim 1." or "A method of producing ethanol
comprising contacting amylose with the culture of claim 1
under the following conditions ....." are not indefinite
under 35 U.S.C. 112, second paragraph, merely because of the
reference to another claim. See also Ex parte Porter , 25
USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) where reference to
"the nozzle of claim 7" in a method claim was held to comply
with 35 U.S.C. 112, second paragraph. However, where the
format of making reference to limitations recited in another
claim results in confusion, then a rejection would be proper
under 35 U.S.C. 112, second paragraph.<

2173.05(g)  Functional Limitations [R - 1]

  >A  functional  limitation  is  an  attempt  to  define
something by what it does, rather than by what it is (e.g.,
as  evidenced  by  its  specific  structure  or  specific
ingredients).  There  is  nothing  inherently  wrong  with
defining some part of an invention in functional terms.
Functional language does not, in and of itself, render a
claim improper. In re Swinehart , 439 F.2d 210, 169 USPQ 226
(CCPA 1971).

  A  functional  limitation  must  be  evaluated  and
considered, just like any other limitation of the claim, for
what it fairly conveys to a person of ordinary skill in the
pertinent art in the context in which it is used. A

functional limitation is often used in association with an
element, ingredient, or step of a process to define a
particular capability or purpose that is served by the
recited element, ingredient or step. Whether or not the
functional limitation complies with 35 U.S.C. 112, second
paragraph is a different issue from whether the limitation
is properly supported under 35 U.S.C. 112, first paragraph
or is distinguished over the prior art. A few examples are
set forth below to illustrate situations where the issue of
whether a functional limitation complies with 35 U.S.C. 112,
second paragraph was considered.

  It was held that the limitation used to define a radical
on a chemical compound as "incapable of forming a dye with
said oxidizing developing agent" although functional, was
perfectly acceptable because it set definite boundaries on
the patent protection sought. In re Barr , 444 F.2d 588, 170
USPQ 33 (CCPA 1971).

  In a claim that was directed to a kit of component parts
capable of being assembled, the Court held that limitations
such as "members adapted to be positioned" and "portions . .
. being resiliently dilatable whereby said housing may be
slidably  positioned"  serve  to  precisely  define  present
structural attributes of interrelated component parts of the
claimed assembly. In re Venezia , 530 F.2d 956, 189 USPQ 149
(CCPA 1976).<

2173.05(h)  Alternative Limitations [R - 1]

  >(a)  Markush groups

  Alternative expressions are permitted if they present no
uncertainty or ambiguity with respect to the question of
scope or clarity of the claims. One acceptable form of
alternative expression, which is commonly referred to as a
Markush group, recites members as being "selected from the
group consisting of A, B and C." See Ex parte Markush , 1925
C.D. 126 (Comm'r Pat. 1925).

  Ex parte Markush sanctions claiming a genus expressed as
a  group  consisting  of  certain  specified  materials.
Inventions in metallurgy, refractories, ceramics, pharmacy,
pharmacology and biology are most frequently claimed under
the  Markush  formula  but  purely  mechanical  features  or
process steps may also be claimed by using the Markush style
of claiming, see Ex parte Head , 214 USPQ 551 (Bd. App.
1981); In re Gaubert , 524 F.2d 1222, 187 USPQ 664 (CCPA
1975); and In re Harnisch , 631 F.2d 716, 206 USPQ 300 (CCPA
1980). It is improper to use the term "comprising" instead
of "consisting of." Ex parte Dotter , 12 USPQ 382 (Bd. App.
1931).

  The use of Markush claims of diminishing scope should
not,  in  itself,  be  considered  a  sufficient  basis  for
objection to or rejection of claims. However, if such a
practice renders the claims indefinite or if it results in
undue multiplicity, an appropriate rejection should be made.

  Similarly, the double inclusion of an element by members
of a Markush group is not, in itself, sufficient basis for
objection to or rejection of claims. Rather, the facts in
each case must be evaluated to determine whether or not the
multiple inclusion of one or more elements in a claim
renders that claim indefinite. The mere fact that a compound

may be embraced by more than one member of a Markush group
recited in the claim does not necessarily render the scope
of the claim unclear. For example, the Markush group,
"selected from the group consisting of amino, halogen,
nitro, chloro and alkyl" should be acceptable even though
"halogen" is generic to "chloro."

  The materials set forth in the Markush group ordinarily
must belong to a recognized physical or chemical class or to
an art - recognized class. However, when the Markush group
occurs in a claim reciting a process or a combination (not a
single compound), it is sufficient if the members of the
group are disclosed in the specification to possess at least
one property in common which is mainly responsible for their
function in the claimed relationship, and it is clear from
their very nature or from the prior art that all of them
possess this property. While in the past the test for
Markush - type claims was applied as liberally as possible,
present practice which holds that claims reciting Markush
groups are not generic claims (MPEP § 803) may subject the
groups to a more stringent test for propriety of the recited
members. Where a Markush expression is applied only to a
portion  of  a  chemical  compound,  the  propriety  of  the
grouping is determined by a consideration of the compound as
a whole, and does not depend on there being a community of
properties in the members of the Markush expression.

  When materials recited in a claim are so related as to
constitute a proper Markush group, they may be recited in
the conventional manner, or alternatively. For example, if
"wherein R is a material selected from the group consisting
of A, B, C and D" is a proper limitation, then "wherein R is
A, B, C or D" shall also be considered proper.

 SUBGEN U.S.C. LAIM

  A situation may occur in which a patentee has presented
a number of examples which, in the examiner's opinion, are
sufficiently representative to support a generic claim and
yet a court may subsequently hold the claim invalid on the
ground of undue breadth. Where this happens the patentee is
often limited to species claims which may not provide him
with suitable protection.

  The allowance of a Markush - type claim under a true
genus claim would appear to be beneficial to the applicant
without  imposing  any  undue  burden  on  the  Patent  and
Trademark Office or in any way detracting from the rights of
the public. Such a subgenus claim would enable the applicant
to claim all the disclosed operative embodiments and afford
applicant an intermediate level of protection in the event
the true genus claims should be subsequently held invalid.

  The examiners are therefore instructed not to reject a
Markush - type claim merely because of the presence of a
true genus claim embracive thereof.

  See also MPEP § 608.01(p) and § 715.03.

  See MPEP § 803 for restriction practice re Markush -
type claims.

  (b)  "Or" terminology

  Alternative expressions using "or" are acceptable, such

as "wherein R is A, B, C, or D." The following phrases were
each held to be acceptable and not in violation of 35 U.S.C.
112, second paragraph in In re Gaubert , 524 F.2d 1222, 187
USPQ 664 (CCPA 1975): "made entirely or in part of"; "at
least one piece"; and "iron, steel or any other magnetic
material."

  (c)  "Optionally"

  An alternative format which requires some analysis
before concluding whether or not the language is indefinite
involves the use of the term "optionally." In Ex parte
Cordova , 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the
language "containing A, B, and optionally C" was considered
acceptable  alternative  language  because  there  was  no
ambiguity as to which alternatives are covered by the claim.
A similar holding was reached with regard to the term
"optionally" in Ex parte Wu , 10 USPQ2d 2031 (Bd. Pat. App.
& Inter. 1989). In the instance where the list of potential
alternatives can vary and ambiguity arises, then it is
proper to make a rejection under 35 U.S.C. 112, second
paragraph and explain why there is confusion.<

2173.05(i)  Negative Limitations [R - 3]

  The current view of the courts is that there is nothing
inherently  ambiguous  or  uncertain  about  a  negative
limitation.  So  long  as  the  boundaries  of  the  patent
protection  sought  are  set  forth  definitely,  albeit
negatively, the claim complies with the requirements of 35
U.S.C. 112, second paragraph. Some older cases were critical
of negative limitations because they tended to define the
invention in terms of what it was not, rather than pointing
out  the  invention.  Thus,  the  court  observed  that  the
limitation "R is an alkenyl radical other than 2 - butenyl
and 2,4 - pentadienyl" was a negative limitation that
rendered the claim indefinite because it was an attempt to
claim the invention by excluding what the inventors did not
invent rather than distinctly and particularly pointing out
what they did invent. In re Schechter , 205 F.2d 185, 98
USPQ 144 (CCPA 1953).

  A  claim  which  recited  the  limitation  "**  >  said
homopolymer being free from the proteins, soaps, resins, and
sugars present in natural Hevea rubber<" in order to exclude
the characteristics of the prior art product, was considered
definite because each recited limitation was definite. In re
Wakefield , 422 F.2d 897>, 899, 904>164 USPQ 636>, 638, 641<
(CCPA 1970). In addition, the court found that the negative
limitation "incapable of forming a dye with said oxidized
developing agent" was definite because the boundaries of the
patent protection sought were clear.  In re Barr , 444 F.2d
588, 170 USPQ 330 (CCPA 1971).

  Any negative limitation or exclusionary proviso must
have  basis  in  the  original  disclosure.  See  Ex  parte
Grasselli , 231 USPQ 393 (Bd. App. 1983) aff'd mem., 738
F.2d 453 (Fed. Cir. 1984). The mere absence of a positive
recitation  is  not  basis  for  an  exclusion.  Any  claim
containing a negative limitation which does not have basis
in the original disclosure should be rejected under 35
U.S.C. 112, first paragraph as failing to comply with the
written description requirement. Note that a lack of literal
basis in the specification for a negative limitation may not
be sufficient to establish a  prima facie case for lack of

descriptive support.  Ex parte Parks , 30 USPQ2d 1234, 1236
(Bd. Pat. App. & Inter. 1993). See MPEP § 2163 - §
2163.07(b) for a discussion of the written description
requirement of 35 U.S.C. 112, first paragraph.

2173.05(j)  Old Combination [R - 1]

 >A CLAIM SHOULD NOT BE REJECTED ON THE GROUND OF OLD
COMBINATION

  With the passage of the 1952 Patent Act, the courts and
the Board have taken the view that a rejection based on the
principle of old combination is NO longer valid. Claims
should be considered proper so long as they comply with the
provisions of 35 U.S.C. 112, second paragraph.

  A rejection on the basis of old combination was based on
the principle applied in Lincoln Engineering Co. v. Stewart
- Warner Corp. , 303 U.S. 545, 37 USPQ 1 (1938). The
principle was that an inventor who made an improvement or
contribution  to  but  one  element  of  a  generally  old
combination, should not be able to obtain a patent on the
entire combination including the new and improved element. A
rejection required the citation of a single reference which
broadly disclosed a combination of the claimed elements
functionally cooperating in substantially the same manner to
produce substantially the same results as that of the
claimed combination. The case of In re Hall , 208 F.2d 370,
100 USPQ 46 (CCPA 1953) illustrates an application of this
principle.

  The CCPA pointed out in In re Bernhardt , 417 F.2d 1395,
163  USPQ  611  (CCPA  1969)  that  the  statutory  language
(particularly point out and distinctly claim) is the only
proper basis for an old combination rejection, and in
applying the rejection, that language determines what an
applicant has a right and obligation to do. A majority
opinion of the Board of Appeals held that Congress removed
the underlying rationale of Lincoln Engineering in the 1952
Patent Act, and thereby effectively legislated that decision
out of existence. Ex parte Barber , 187 USPQ 244 (Bd. App.
1974).  Finally,  the  Court  of  Appeals  for  the  Federal
Circuit, in Radio Steel and Mfg. Co. v. MTD Products, Inc. ,
731 F.2d 840, 221 USPQ 657 (Fed. Cir. 1984), followed the
Bernhardt case, and ruled that a claim was not invalid under
Lincoln Engineering because the claim complied with the
requirements  of  35  U.S.C.  112,  second  paragraph.
Accordingly, a claim should not be rejected on the ground of
old combination.<

2173.05(k)  Aggregation [R - 1]

  >Rejections on the ground of aggregation should be based
upon a lack of cooperation between the elements of the
claim.

  Example of aggregation: A washing machine associated
with a dial telephone.

  A claim is not necessarily aggregative because the
various elements do not function simultaneously, e.g., a
typewriter. In re Worrest , 201 F.2d 930, 96 USPQ 381
(1953). Neither is a claim necessarily aggregative merely
because  elements  which  do  cooperate  are  set  forth  in
specific detail.

  A rejection on aggregation should be made only after
consideration of the court's comments in In re Gustafson ,
331 F.2d 905, 141 USPQ 585 (1964), wherein the court
indicated it is improper to reject claims as "aggregative"
without specifying the statutory basis of the rejection,
i.e., an applicant is entitled to know whether his claims
are being rejected under 35 U.S.C. 101, 103, or 112. In
Gustafson , the court found that the real objection to the
claims was that they failed to comply with 35 U.S.C. 112,
second paragraph.<

  **

2173.05(m)  Prolix [R - 1]

  >Examiners should reject claims as prolix only when they
contain such long recitations or unimportant details that
the scope of the claimed invention is rendered indefinite
thereby. Claims are rejected as prolix when they contain
long  recitations  or  unimportant  details  which  hide  or
obscure the invention. Ex parte Iagan , 1911 C.D. 10, 162
O.G. 538 (Comm'r Pat. 1910), expresses the thought that very
long detailed claims setting forth so many elements that
invention cannot possibly reside in the combination should
be rejected as prolix. See also  In re Ludwick , 4 F.2d 959,
1925 C.D. 306, 339 O.G. 393 (D.C. Cir. 1925).<

2173.05(n)  Multiplicity [R - 3]

 37 CFR 1.75 Claim(s).

  (a)  The  specification  must  conclude  with  a  claim
particularly  pointing  out  and  distinctly  claiming  the
subject matter which the applicant regards as his invention
or discovery.

  (b) More than one claim may be presented provided they
differ substantially from each other and are not unduly
multiplied.

  (c) One or more claims may be presented in dependent
form, referring back to and further limiting another claim
or claims in the same application. Any dependent claim which
refers to more than one other claim ("multiple dependent
claim") shall refer to such other claims in the alternative
only. A multiple dependent claim shall not serve as a basis
for any other multiple dependent claim. For fee calculation
purposes under § 1.16, a multiple dependent claim will be
considered to be that number of claims to which direct
reference is made therein. For fee calculation purposes,
also, any claim depending from a multiple dependent claim
will be considered to be that number of claims to which
direct reference is made in that multiple dependent claim.
In  addition  to  the  other  filing  fees,  any  original
application which is filed with, or is amended to include,
multiple dependent claims must have paid the fee set forth
in § 1.16(d). Claims in dependent form shall be construed to
include all the limitations of the claim incorporated by
reference into the dependent claim. A multiple dependent
claim shall be construed to incorporate by reference all the
limitations of each of the particular claims In relation to
which it is being considered.

 (d)(1) The claim or claims must conform to the invention as

set forth in the remainder of the specification and the
terms and phrases used in the claims must find clear support
or antecedent basis in the description so that the meaning
of  the  terms  may  be  ascertained  by  reference  to  the
description (See § 1.58(a)).

  (2) See § § 1.141 to 1.146 as to claiming different
inventions in one application.

  (e) Where the nature of the case admits, as in the case
of an improvement, any independent claim should contain in
the following order, (1) a preamble comprising a general
description  of  all  elements  or  steps  of  the  claimed
combination which are conventional or known, (2) a

 phrase such as "wherein the improvement comprises," and (3)
those elements, steps, and/or relationships which constitute
that portion of the claimed combination which the applicant
regards as the new or improved portion.

  (f) If there are several claims, they shall be numbered
consecutively in Arabic numerals.

  >(g) The least restrictive claim should be presented as
claim number 1, and all dependent claims should be grouped
together with the claim or claims to which they refer to the
extent practicable.

  (h) The claim or claims must commence on a separate
sheet.

  (i) Where a claim sets forth a plurality of elements or
steps, each element or step of the claim should be separated
by a line indentation.<

  An unreasonable number of claims, that is, unreasonable
in view of the nature and scope of applicant's invention and
the state of the art, may afford a basis for a rejection on
the ground of multiplicity. A rejection on this ground
should include all the claims in the case inasmuch as it
relates to confusion of the issue.

  To avoid the possibility that an application which has
been rejected on the ground of undue multiplicity of claims
may  be  appealed  to  the  Board  of  Patent  Appeals  and
Interferences prior to an examination on the merits of at
least some of the claims presented, the examiner should, at
the  time  of  making  the  rejection  on  the  ground  of
multiplicity of claims, specify the number of claims which
in his or her judgment is sufficient to properly define
applicant's invention and require the applicant to select
certain claims, not to exceed the number specified, for
examination on the merits. The examiner should be reasonable
in setting the number to afford the applicant some latitude
in claiming the invention.

  The earlier views of the Court of Customs and Patent
Appeals on multiplicity were set forth in In re Chandler ,
45 CCPA 911, 117 USPQ 361 (1958) and In re Chandler , 50
CCPA 1422, 138 USPQ 138 (1963) (Applicants latitude in
stating their claims in regard to number and phraseology
employed "should not be extended to sanction that degree of
repetition and multiplicity which beclouds definition in a
maze of confusion." 138 USPQ at 148.). These views have been
somewhat revised by its views in In re Flint , 411 F.2d

1353, 162 USPQ 228 (CCPA 1969) ("The [42] claims differed
from one another and we have no difficulty in understanding
the scope of protection. Nor is it clear, on this record,
that the examiner or board was confused by the presentation
of claims in this case or that the public will be." 162 USPQ
at 231.) and In re Wakefield , 422 F.2d 897, 164 USPQ 636
(CCPA 1970) ("Examination of forty claims in a single
application may be tedious work, but this is no reason for
saying that the invention is obscured by the large number of
claims. We note that the claims were clear enough for the
examiner to apply references against all of them in his
first action." 164 USPQ at 639.).

  If a rejection on multiplicity is in order the examiner
should make a telephone call explaining that the claims are
unduly multiplied and will be rejected on that ground. Note
MPEP § 408. The examiner should request selection of a
specified number of claims for purposes of examination.

  If time for consideration is requested arrangements
should be made for a second telephone call, preferably
within three working days.

  When  claims  are  selected,  a  formal  multiplicity
rejection is made, including a complete record of the
telephone interview, followed by an action on the selected
claims.

  When applicant refuses to comply with the telephone
request,  a  formal  multiplicity  rejection  is  made.  The
applicant's response to a formal multiplicity rejection of
the examiner, to be complete, must either:

 (1) Reduce the number of claims presented to those
selected  previously  by  telephone,  or  if  no  previous
selection has been made to a number not exceeding the number
specified  by  the  examiner  in  the  Office  action,  thus
overcoming  the  rejection  based  upon  the  ground  of
multiplicity, or

 (2) In the event of a traverse of said rejection
applicant, besides specifically pointing out the supposed
errors of the multiplicity rejection, is required to confirm
the  selection  previously  made  by  telephone,  or  if  no
previous selection has been made, select certain claims for
purpose of examination, the number of which is not greater
than the number specified by the examiner.

  If the rejection on multiplicity is adhered to, all
claims retained will be included in such rejection and the
selected claims only will be additionally examined on their
merits. This procedure preserves applicant's right to have
the rejection on multiplicity reviewed by the Board of
Patent Appeals and Interferences.

  Also, it is possible to reject one claim on an allowed
claim if they differ only by subject matter old in the art.
This ground of rejection is set forth in Ex parte Whitelaw ,
1915 C.D. 18; 219 O.G. 1237. The Ex parte Whitelaw doctrine
is  restricted  to  cases  where  the  claims  are  un  duly
multiplied or are substantial duplicates. Ex parte Kochan ,
131 USPQ 204, 206 (Bd. App. 1961).

2173.05(o)  Double Inclusion [R - 1]

  >While the concept that double inclusion of an element
in members of a Markush group recited in a claim is, per se,
objectionable and renders a claim indefinite is supported by
some of the older cases like Ex parte White , 759 O.G. 783
(Bd. App. 1958) and Ex parte Clark , 174 USPQ 40 (Bd. App.
1971), other decisions clearly hold that there is no per se
rule of indefiniteness concerning overlapping members where
alternatives are recited in a claim - e.g., members of a
Markush group. In re Kelly , 305 F.2d 909, 134 USPQ 397
(CCPA 1962).

  The facts in each case must be evaluated to determine
whether or not the multiple inclusion of one or more
elements in a claim gives rise to indefiniteness in that
claim. The mere fact that a compound may be embraced by more
than one member of a Markush group recited in the claim does
not lead to any uncertainty as to the scope of that claim
for either examination or infringement purposes. On the
other hand, where a claim directed to a device can be read
to  include  the  same  element  twice,  the  claim  may  be
indefinite. Ex parte Kristensen , 10 USPQ2d 1701 (Bd. Pat.
App. & Inter. 1989).<

2173.05(p)  Claim Directed to Product - By - Process or
Product and Process [R - 1]

  >(a) Product - by - process

  There are many situations where claims are permissively
drafted to include a reference to more than one statutory
class of invention. A product - by - process claim, which is
a product claim that defines the claimed product in terms of
the process by which it is made, is proper. In re Moeller ,
28 CCPA 932, 48 USPQ 542, 1941 C.D. 316; In re Luck , 177
USPQ 523 (CCPA 1973); In re Steppan , 156 USPQ 143 (CCPA
1967); and In re Pilkington , 162 USPQ 145 (CCPA 1969). A
claim to a device, apparatus, manufacture, or composition of
matter may contain a reference to the process in which it is
intended to be used without being objectionable under 35
U.S.C. 112, second paragraph, so long as it is clear that
the claim is directed to the product and not the process.

  The fact that it is necessary for an applicant to
describe his product in product - by - process terms does
not prevent him from presenting claims of varying scope, Ex
parte Pantzer and Feier , 176 USPQ 141 (Bd. App. 1972).

  (b) Product and process in the same claim

  A single claim which claims both an apparatus and the
method steps of using the apparatus is indefinite under 35
U.S.C. 112, second paragraph. In Ex parte Lyell , 17 USPQ2d
1548 (Bd. Pat. App. & Inter. 1990), a claim directed to an
automatic transmission workstand and the method steps of
using it was held to be ambiguous and properly rejected
under 35 U.S.C. 112, second paragraph.

  Such claims should also be rejected under 35 U.S.C. 101
based on the theory that the claim is directed to neither a
"process" nor a "machine," but rather embraces or overlaps
two different statutory classes of invention set forth in 35
U.S.C. 101 which is drafted so as to set forth the statutory
classes of invention in the alternative only. Id. at 1551.<

2173.05(q)  "Use" Claims [R - 1]

  >Attempts to claim a process without setting forth any
steps involved in the process generally raises an issue of
indefiniteness under 35 U.S.C. 112, second paragraph. For
example, a claim which read: "A process for using monoclonal
antibodies of claim 4 to isolate and purify human fibroblast
interferon." was held to be indefinite because it merely
recites a use without any active, positive steps delimiting
how this use is actually practiced. Ex parte Erlich , 3
USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).

  Other decisions suggest that a more appropriate basis
for this type of rejection is 35 U.S.C. 101. In Ex parte
Dunki , 153 USPQ 678 (Bd. App. 1967), the Board held the
following claim to be an improper definition of a process:
"The use of a high carbon austenitic iron alloy having a
proportion of free carbon as a vehicle brake part subject to
stress by sliding friction." In Clinical Products Ltd. v.
Brenner , 255 F.Supp. 131, 149 USPQ 475 (D.D.C. 1966), the
district court held the following claim was definite, but
that it was not a proper process claim under 35 U.S.C. 101:
"The use of a sustained release therapeutic agent in the
body of ephedrine absorbed upon polystyrene sulfonic acid."

  Although a claim should be interpreted in light of the
specification  disclosure,  it  is  generally  considered
improper to read limitations contained in the specification
into the claims. See In re Prater , 415 F.2d 1393, 162 USPQ
541 (CCPA 1969) and In re Winkhaus , 527 F.2d 637, 188 USPQ
129 (CCPA 1975), which discuss the premise that one cannot
rely on the specification to impart limitations to the claim
that are not recited in the claim.

 A "USE" CLAIM SHOULD BE REJECTED UNDER ALTERNATIVE GROUNDS
BASED ON 35 U.S.C. 101 AND 112

  In view of the split of authority as discussed above,
the most appropriate course of action would be to reject a
"use" claim under alternative grounds based on 35 U.S.C. 101
and 112.

 BOARD HELD STEP OF "UTILIZING" WAS NOT INDEFINITE

  It is often difficult to draw a fine line between what
is  permissible,  and  what  is  objectionable  from  the
perspective of whether a claim is definite. In the case of
Ex parte Porter , 25 USPQ2d 1144 (Bd. Pat. App. & Inter.
1992), the Board held that a claim which clearly recited the
step of "utilizing" was not indefinite under 35 U.S.C. 112,
second paragraph. (Claim was to "A method for unloading
nonpacked,  nonbridging  and  packed,  bridging  flowable
particle catalyst and bead material from the opened end of a
reactor tube which comprises utilizing the nozzle of claim
7.") <

2173.05(r)  Omnibus Claim [R - 2]

  Some applications are filed with an omnibus claim which
reads as follows: A device substantially as shown and
described. This claim should be rejected under 35 U.S.C.
112, second paragraph because it is indefinite in that it
fails to point out what is included or excluded by the claim
language. See Ex parte Fressola , 27 USPQ2d 1608 (Bd. Pat.
App. & Inter. 1993), for a discussion of the history of
omnibus claims and an explanation of why omnibus claims do

not comply with the requirements of 35 U.S.C. 112, second
paragraph.

  Such a claim can be rejected using form paragraph 7.35
(reproduced in MPEP § 706.03>(d)<).

  For  cancellation  of  such  a  claim  by  examiner's
amendment, see MPEP § 1302.04(b).

2173.05(s)  Reference to Figures or Tables [R - 1]

  >Where  possible,  claims  are  to  be  complete  in
themselves. Incorporation by reference to a specific figure
or table "is permitted only in exceptional circumstances
where there is no practical way to define the invention in
words and where it is more concise to incorporate by
reference than duplicating a drawing or table into the
claim. Incorporation by reference is a necessity doctrine,
not for applicant's convenience." Ex parte Fressola , 27
USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations
omitted).

  Reference characters corresponding to elements recited
in the detailed description and the drawings may be used in
conjunction with the recitation of the same element or group
of elements in the claims. See MPEP § 608.01(m).<

2173.05(t)  Chemical Formula [R - 1]

  >Claims  to  chemical  compounds  and  compositions
containing chemical compounds often use formulas that depict
the chemical structure of the compound. These structures
should not be considered indefinite nor speculative in the
absence of evidence that the assigned formula is in error.
The absence of corroborating spectroscopic or other data
cannot be the basis for finding the structure indefinite.
See Ex parte Morton et al. , 134 USPQ 407 (Bd. App. 1961)
and Ex parte Sobin et al. , 139 USPQ 528 (Bd. App. 1962) in
this regard.

  A claim to a chemical compound is not indefinite merely
because a structure is not presented or because a partial
structure is presented. For example, the claim language at
issue in In re Fisher , 427 F.2d 833, 166 USPQ 18 (CCPA
1970) referred to a chemical compound as a "polypeptide of
at least 24 amino acids having the following sequence." A
rejection under 35 U.S.C. 112, second paragraph for failure
to identify the entire structure was reversed and the court
held: "While the absence of such a limitation obviously
broadens the claim and raises questions of sufficiency of
disclosure,  it  does  not  render  the  claim  indefinite."
Chemical compounds may be claimed by a name that adequately
describes the material to one skilled in the art. See Martin
v. Johnson , 454 F.2d 746, 172 USPQ 391 (CCPA 1972). A
compound  of  unknown  structure  may  be  claimed  by  a
combination of physical and chemical characteristics. See Ex
parte Brian et al. , 118 USPQ 242 (Bd. App. 1958). A
compound may also be claimed in terms of the process by
which  it  is  made  without  raising  an  issue  of
indefiniteness.<

2173.05(u)  Trademarks or Trade Names in a Claim [R - 2]

  The presence of a trademark or trade name in a claim is
not,  per  se  ,  improper  under  35  U.S.C.  112,  second

paragraph, but the claim should be carefully analyzed to
determine how the mark or name is used in the claim. It is
important to recognize that a trademark or trade name is
used to identify a source of goods, and not the goods
themselves. Thus a trademark or trade name does not identify
or describe the goods associated with the trademark or trade
name. See definitions of trademark and trade name in MPEP §
608.01(v). A list of some trademarks is found in Appendix I.

  If the trademark or trade name is used in a claim as a
limitation to identify or describe a particular material or
product, the claim does not comply with the requirements of
the 35 U.S.C. 112, second paragraph. Ex parte  Simpson , 218
USPQ 1020 (Bd. App. 1982). The claim scope is uncertain
since the trademark or trade name cannot be used properly to
identify any particular material or product. In fact, the
value of a trademark would >be lost to the extent that it
became descriptive of a< product, rather than used as an
identification of a source or origin of a product. Thus, the
use of a trademark or trade name in a claim to identify or
describe a material or product would not only render a claim
indefinite, but would also constitute an improper use of the
trademark or trade name.

  If a trademark or trade name appears in a claim and is
not intended as a limitation in the claim, the question of
why it is in the claim should be addressed. Does its
presence in the claim cause confusion as to the scope of the
claim? If so, the claim should be rejected under 35 U.S.C.
112, second paragraph.

2173.05(v)  Mere Function of Machine [R - 1]

  >In view of the decision of the Court of Customs and
Patent Appeals in In re Tarczy - Hornoch , 397 F.2d 856, 158
USPQ 141 (CCPA 1968) process or method claims are not
subject  to  rejection  by  Patent  and  Trademark  Office
examiners under 35 U.S.C. 112, second paragraph, solely on
the ground that they define the inherent function of a
disclosed machine or apparatus. The court in Tarczy -
Hornoch held that a process claim, otherwise patentable,
should not be rejected merely because the application of
which it is part discloses apparatus which will inherently
carry out the recited steps.<

2173.06  Prior Art Rejection of Claim Rejected as
Indefinite [R - 1]

  >All words in a claim must be considered in judging the
patentability of a claim against the prior art. In re Wilson
, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). The fact that
terms may be indefinite does not make the claim obvious over
the prior art. When the terms of a claim are considered to
be indefinite, at least two approaches to the examination of
an indefinite claim relative to the prior art are possible.

  First, where the degree of uncertainty is not great, and
where the claim is subject to more than one interpretation
and at least one interpretation would render the claim
unpatentable over the prior art, an appropriate course of
action would be for the examiner to enter two rejections:
(1) a rejection based on indefiniteness under 35 U.S.C. 112,
second paragraph; and (2) a rejection over the prior art
based on the interpretation of the claims which renders the
prior art applicable. Ex parte  Ionescu , 222 USPQ 537 (Bd.

App. 1984). When making a rejection over prior art in these
circumstances, it is important for the examiner to point out
how the claim is being interpreted. Second, where there is a
great deal of confusion and uncertainty as to the proper
interpretation of the limitations of a claim, it would not
be proper to reject such a claim on the basis of prior art.
As stated in  In re  Steele , 305 F.2d 859, 134 USPQ 292
(CCPA 1962), a rejection under 35 U.S.C. 103 should not be
based on considerable speculation about the meaning of terms
employed in a claim or assumptions that must be made as to
the scope of the claims.

  The first approach is recommended from an examination
standpoint because it avoids piecemeal examination in the
event that the examiner's 35 U.S.C. 112, second paragraph
rejection is not affirmed, and may give applicant a better
appreciation for relevant prior art if the claims are
redrafted to avoid the 35 U.S.C. 112, second paragraph
rejection.<

2174  Relationship Between the Requirements of the First
and Second Paragraphs of 35 U.S.C. 112 [R - 2]

  The requirements of the first and second paragraphs of
35 U.S.C. 112 are separate and distinct. If a description or
the  enabling  disclosure  of  a  specification  is  not
commensurate in scope with the subject matter encompassed by
a claim, that fact alone does not render the claim imprecise
or indefinite or otherwise not in compliance with 35 U.S.C.
112, second paragraph; rather, the claim is based on an
insufficient disclosure (35 U.S.C. 112, first paragraph) and
should be rejected on that ground. In re Borkowski , 422
F.2d 904, 164 USPQ 642 (CCPA 1970). If the specification
discloses that a particular feature or element is critical
or essential to the practice of the invention, failure to
recite or include that particular feature or element in the
claims may provide a basis for a rejection based on the
ground that those claims are not supported by an enabling
disclosure. In re Mayhew , 527 F.2d 1229, 188 USPQ 356 (CCPA
1976). In Mayhew , the examiner argued that the only mode of
operation of the process disclosed in the specification
involved the use of a cooling zone at a particular location
in the processing cycle. The claims were rejected because
they failed to specify either a cooling step or the location
of the step in the process. The court was convinced that the
cooling bath and its location were essential, and held that
claims which failed to recite the use of a cooling zone,
specifically located, were not supported by an enabling
disclosure (35 U.S.C. 112, first paragraph).

  In addition, if a claim is amended to include an
invention that is not described in the application as filed,
a rejection of that claim under 35 U.S.C. 112, first
paragraph as being directed to subject matter that is not
described in the specification as filed may be appropriate.
In re Simon , 302 F.2d 737, 133 USPQ 524 (CCPA 1962); In re
Panagrossi , 277 F.2d 181, 125 USPQ 410 (CCPA 1960). In
Simon , which involved a reissue application containing
claims to a >reaction product of a< composition, applicant
presented claims to a >reaction product of a< composition
comprising the subcombination A+B+C, whereas the original
claims and description of the invention were directed to a
composition comprising the combination A+B+C+D+E. The court
found  no  significant  support  for  the  argument  that
ingredients D+E were not essential to the claimed *>reaction

product< and concluded that claims directed to the >reaction
product of a< subcombination A+B+C were not described (35
U.S.C. 112, first paragraph) in the application as filed.

2181  Identifying a 35 U.S.C. 112, Sixth Paragraph
Limitation [R - 3]

  The purpose of this section is to set forth guidelines
for the examination of 35 U.S.C. 112, sixth paragraph "means
or step plus function" limitations in a claim. The Court of
Appeals for the Federal Circuit, in its en banc decision In
re Donaldson Co. , 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir.
1994), decided that a "means - or - step - plus - function"
limitation should be interpreted in a manner different than
patent  examining  practice  had  previously  dictated.  The
Donaldson decision affects only the manner in which the
scope of a "means or step plus function" limitation in
accordance  with  35  U.S.C.  112,  sixth  paragraph,  is
interpreted during examination.  Donaldson does not directly
affect the manner in which any other section of the patent
statutes is interpreted or applied.

  When making a determination of patentability under 35
U.S.C. 102 or 103, past practice was to interpret a "means
or step plus function" limitation by giving it the "broadest
reasonable interpretation." Under the PTO's long - standing
practice  this  meant  interpreting  such  a  limitation  as
reading on any prior art means or step which performed the
function specified in the claim without regard for whether
the  prior  art  means  or  step  was  equivalent  to  the
corresponding structure, material or acts described in the
specification. However, in Donaldson the Federal Circuit
stated that:

  Per  our  holding,  the  "broadest  reasonable
interpretation" that an examiner may give means - plus -
function language is that statutorily mandated in paragraph
six. Accordingly, the PTO may not disregard the structure
disclosed  in  the  specification  corresponding  to  such
language when rendering a patentability determination. 29
USPQ2d at 1850.

 Thus, examiners must interpret a 35 U.S.C. 112, sixth
paragraph "means or step plus function" limitation in a
claim as limited to the corresponding structure, materials
or acts described in the specification and equivalents
thereof in accordance with the following guidelines.

 LANGUAGE FALLING WITHIN 35 U.S.C. 112, SIXTH PARAGRAPH

  **>In  determining  whether  to  apply  the  statutory
procedures of 35 U.S.C. 112, sixth paragraph, the examiner
must determine whether the applicant intends to invoke the
statutory  mandates  for  means  -  plus  function  clauses.
Although the use of the term "means," particularly "means
for," generally invokes 35 U.S.C. 112, sixth paragraph, and
the use of a different formulation generally does not, there
is no particular language that must appear in a claim in
order for it to fall within the scope of 35 U.S.C. 112,
sixth paragraph. Greenberg  v.  Ethicon Endo - Surgery, Inc
., 91 F.3d 1580, 1584, 39 USPQ2d 1783, 1786 - 87 (Fed. Cir.
1996). However, it must be clear that the element in the
claim is set forth, at least in part, by the function it
performs as opposed to the specific structure, material, or
acts that perform the function. York Products Inc.  v.

Central Tractor Farm & Family Center , 99 F.3d 1568, 1574,
40  USPQ2d  1619,  1624  (Fed.  Cir.  1996)  ("Without  an
identified function, the term `means' in this claim cannot
invoke 35 U.S.C. § 112, paragraph 6."). See also Caterpillar
Inc.  v.  Detroit Diesel Corp. , 41 USPQ2d 1876, 1882 (N.D.
Ind. 1996) (35 U.S.C. 112, sixth paragraph "applies to
functional method claims where the element at issue sets
forth a step for reaching a particular result, but not the
specific  technique  or  procedure  used  to  achieve  the
result."). However, "the fact that a particular mechanism .
. . is defined in functional terms is not sufficient to
convert a claim element containing that term into a `means
for performing a specified function' within the meaning of
section 112(6)." Greenberg, 91 F.3d at 1583, 39 USPQ2d at
1786 ("detent mechanism" defined in functional terms was not
intended to invoke 35 U.S.C. 112, sixth paragraph). Although
use of the term "means" in a clause reciting predominantly
structure does not evoke 35 U.S.C. 112, sixth paragraph,
York Products , 99 F.3d at 1574, 40 USPQ2d at 1623, "[t]he
recitation of some structure in a means plus function
element does not preclude applicability of section 112(6)."
Laitram Corp.  v.  Rexnord, Inc. , 939 F.2d 1533, 1536, 19
USPQ2d 1367, 1369 (Fed. Cir. 1991). It is necessary to
decide on an element by element basis whether 35 U.S.C. 112,
sixth paragraph applies. Cole v.  Kimberly - Clark Corp .,
102 F.3d 524, 531, 41 USPQ2d 1001, 1006 (Fed. Cir. 1996)
(term "perforation means . . for tearing" did not invoke
35 U.S.C. 112, sixth paragraph because it recited a definite
structure which performed the described tearing function, as
well  as  the  location  and  extent  of  the  structure).<
Limitations that fall within the scope of 35 U.S.C. 112,
sixth paragraph include:

  (1) a  jet  driving  device  so  constructed  and
located on the rotor as to drive the rotor . . ["means"
unnecessary]. The term "device" coupled with a function is a
proper definition of structure in accordance with the last
paragraph of 35 U.S.C. 112. The addition of the words "jet
driving" to the term "device" merely renders the latter more
definite and specific. Ex parte Stanley , 121 USPQ 621 (Bd.
App. 1958);

  (2)  "printing means" and "means for printing"
which would have the same connotations. Ex parte Klumb , 159
USPQ 694 (Bd. App. 1967). However, the terms "plate" and
"wing," as modifiers for the structureless term "means,"
specify no function to be performed, and do not fall under
the last paragraph of 35 U.S.C. 112;

  (3)  force generating means adapted to provide . .
. . De Graffenreid v. U.S. , 20 Ct. Cl. 458, 16 USPQ2d 1321
(Ct. Cl. 1990);

  (4)  call cost register means, including a digital
display for providing a substantially instantaneous display
for . . Intellicall Inc. v. Phonometrics, Inc. , 952
F.2d 1384, 21 USPQ2d 1383 (Fed. Cir. 1992);

  (5)  reducing the coefficient of friction of the
resulting film [step plus function; "step" unnecessary], In
re Roberts , 470 F.2d 1399, 176 USPQ 313 (CCPA 1973); and

  (6)  raising the pH of the resultant pulp to about
5.0 to precipitate . . Ex parte Zimmerley , 153 USPQ 367
(Bd. App. 1966).

  In  the  event  that  it  is  unclear  whether  the  claim
limitation falls within the scope of 35 U.S.C. 112, sixth
paragraph, a rejection under 35 U.S.C. 112, second paragraph
may be appropriate.

 SINGLE MEANS CLAIMS

  Donaldson does not affect the holding of In re Hyatt ,
708 F.2d 712, 218 USPQ 195 (Fed. Cir. 1983) to the effect
that  a  single  means  claim  does  not  comply  with  the
enablement requirement of 35 U.S.C. 112, first paragraph. As
Donaldson applies only to an interpretation of a limitation
drafted to correspond to 35 U.S.C. 112, sixth paragraph,
which by its terms is limited to "an element in a claim to a
combination," it does not affect a limitation in a claim
which is not directed to a combination.

2182  Scope of the Search and Identification of the
Prior Art [R - 1]

  >As noted in MPEP § 2181, in In re Donaldson Co. , 16
F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994) the Federal
Circuit recognized that it is important to retain the
principle that claim language should be given its broadest
reasonable  interpretation.  This  principle  is  important
because it helps insure that the statutory presumption of
validity attributed to each claim of an issued patent is
warranted by the search and examination conducted by the
examiner. It is also important from the standpoint that the
scope of protection afforded by patents issued prior to
Donaldson  are  not  unnecessarily  limited  by  the  latest
interpretation of this statutory provision. Finally, it is
important from the standpoint of avoiding the necessity for
a patent specification to become a catalogue of existing
technology. A patent specification need not teach, and
preferably omits, what is well known in the art. Hybritech
Inc. v. Monoclonal Antibodies, Inc. , 802 F.2d 1367, 1384,
231 USPQ 81, 94 (Fed. Cir. 1986).

  The Donaldson decision thus does not substantially alter
examining practice and procedure relative to the scope of
the  search.  Both  before  and  after  Donaldson  ,  the
application of a prior art reference to a means or step plus
function limitation requires that the prior art element
perform the identical function specified in the claim.
However, if a prior art reference teaches identity of
function to that specified in a claim, then under  Donaldson
an examiner carries the initial burden of proof for showing
that the prior art structure or step is the same as or
equivalent to the structure, material, or acts described in
the specification which has been identified as corresponding
to the claimed means or step plus function.

  The "means or step plus function" limitation should be
interpreted in a manner consistent with the specification
disclosure. If the specification defines what is meant by
the limitation for the purposes of the claimed invention,
the examiner should interpret the limitation as having that
meaning. If no definition is provided, some judgment must be
exercised in determining the scope of the limitation.<

2183  Making a Prima Facie  Case of Equivalence [R - 1]

  >If the examiner finds that a prior art element performs

the function specified in the claim, and is not excluded by
any explicit definition provided in the specification for an
equivalent, the examiner should infer from that finding that
the prior art element is an equivalent, and should then
conclude that the claimed limitation is anticipated by the
prior art element. The burden then shifts to applicant to
show that the element shown in the prior art is not an
equivalent of the structure, material or acts disclosed in
the application. In re Mulder , 716 F.2d 1542, 219 USPQ 189
(Fed. Cir. 1983). No further analysis of equivalents is
required of the examiner until applicant disagrees with the
examiner's conclusion, and provides reasons why the prior
art element should not be considered an equivalent. See
also, In re Walter , 618 F.2d 758, 768, 205 USPQ 397, 407 -
08 (C.C.P.A. 1980) (a case treating 35 U.S.C. 112, sixth
paragraph, in the context of a determination of statutory
subject matter and noting "If the functionally - defined
disclosed means and their equivalents are so broad that they
encompass any and every means for performing the recited
functions . . the burden must be placed on the applicant
to demonstrate that the claims are truly drawn to specific
apparatus  distinct  from  other  apparatus  capable  of
performing the identical functions"); In re Swinehart , 439
F.2d 210, 212 - 13, 169 USPQ 226, 229 (C.C.P.A. 1971) (a
case in which the CCPA treated as improper a rejection under
35 U.S.C. 112, second paragraph, of functional language, but
noted that "where the Patent Office has reason to believe
that a functional limitation asserted to be critical for
establishing novelty in the claimed subject matter may, in
fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove
that the subject matter shown to be in the prior art does
not possess the characteristics relied on"); and In re
Fitzgerald , 619 F.2d 67, 205 USPQ 594 (CCPA 1980) (a case
indicating that the burden of proof can be shifted to the
applicant to show that the subject matter of the prior art
does not possess the characteristic relied on whether the
rejection is based on inherency under 35 U.S.C. 102 or
obviousness under 35 U.S.C. 103).

  See MPEP § 2184 for the factors to be considered when
determining whether the applicant has successfully

 met the burden of proving that the prior art element is not
equivalent to the structure, material or acts described in
the applicant's specification.

 IF NONEQUIVALENCE SHOWN, EXAMINER MUST CONSIDER OBVIOUSNESS

  However, even where the applicant has met that burden of
proof and has shown that the prior art element is not
equivalent to the structure, material or acts described in
the applicant's specification, the examiner must still make
a 35 U.S.C. 103 analysis to determine if the claimed means
or step plus function is obvious from the prior art to one
of ordinary skill in the art. Thus, while a finding of
nonequivalence  prevents  a  prior  art  element  from
anticipating a means or step plus function limitation in a
claim, it does not prevent the prior art element from
rendering the claim limitation obvious to one of ordinary
skill in the art. Because the exact scope of an "equivalent"
may be uncertain, it would be appropriate to apply a 35
U.S.C. 102 / 103 rejection where the balance of the claim
limitations are anticipated by the prior art relied on. A
similar approach is authorized in the case of product - by -

process claims because the exact identity of the claimed
product or the prior art product cannot be determined by the
examiner. In re Brown , 450 F.2d 531, 173 USPQ 685 (CCPA
1972).  In  addition,  although  it  is  normally  the  best
practice to rely on only the best prior art references in
rejecting a claim, alternative grounds of rejection may be
appropriate where the prior art shows elements that are
different from each other, and different from the specific
structure, material or acts described in the specification,
yet perform the function specified in the claim.<

2184  Determining Whether an Applicant Has Met the
Burden of Proving Nonequivalence After a Prima Facie Case Is
Made [R - 3]

  If  the  applicant  disagrees  with  the  inference  of
equivalence drawn from a prior art reference, the applicant
may provide reasons why the applicant believes the prior art
element should not be considered an equivalent to the
specific  structure,  material  or  acts  disclosed  in  the
specification. Such reasons may include, but are not limited
to:

 (1) teachings in the specification that particular
prior art is not equivalent,

 (2) teachings in the prior art reference itself that
may tend to show nonequivalence, or

 (3) Rule 132 affidavit evidence of facts tending to
show nonequivalence.

  TEACHINGS IN APPLICANT'S SPECIFICATION

  When the applicant relies on teachings in applicant's
own specification, the examiner must make sure that the
applicant is interpreting the "means or step plus function"
limitation in the claim in a manner which is consistent with
the disclosure in the specification. If the specification
defines what is meant by "equivalents" to the disclosed
embodiments for the purpose of the claimed means or step
plus function, the examiner should interpret the limitation
as having that meaning. If no definition is provided, some
judgment must be exercised in determining the scope of
"equivalents." Generally, an "equivalent" is interpreted as
embracing more than the specific elements described in the
specification for performing the specified function, but
less than any element that performs the function specified
in the claim. To interpret "means plus function" limitations
as  limited  to  a  particular  means  set  forth  in  the
specification would nullify the provisions of 35 U.S.C. 112
requiring that the limitation shall be construed to cover
the structure described in the specification and equivalents
thereof. D.M.I., Inc. v. Deere & Co. , 755 F.2d 1570, 1574,
225 USPQ 236, 238 (Fed. Cir. 1985).

  The scope of equivalents embraced by a claim limitation
is dependent on the interpretation of an "equivalent." The
interpretation will vary depending on how the element is
described in the supporting specification. The claim may or
may not be limited to particular structure, material or acts
(e.g., steps) as opposed to any and all structure, material
or acts performing the claimed function, depending on how
the specification treats that question.

  If the disclosure is so broad as to encompass any and
all structure, material or acts for performing the claimed
function,  the  claims  must  be  read  accordingly  when
determining patentability. When this happens the limitation
otherwise  provided  by  "equivalents"  ceases  to  be  a
limitation on the scope of the claim in that an equivalent
would be any structure, material or act other than the ones
described in the specification that perform the claimed
function. For example, this situation will often be found in
cases where (1) the claimed invention is a combination of
elements, one or more of which are selected from elements
that are old, per se, or (2) apparatus claims are treated as
indistinguishable from method claims. See, for example, In
re Meyer , 688 F.2d 789, 215 USPQ 193 (1982); In re Abele ,
684 F.2d 902, 909, 214 USPQ 682, 688 (C.C.P.A. 1982); In re
Walter , 618 F.2d 758, 767, 205 USPQ 397, 406 - 07 (C.C.P.A.
1980); In re Maucorps , 609 F.2d 481, 203 USPQ 812 (C.C.P.A.
1979); In re Johnson , 589 F.2d 1070, 200 USPQ 199 (C.C.P.A.
1978); and In re Freeman , 573 F.2d 1237, 1246, 197 USPQ
464, 471 (C.C.P.A. 1978).

  On the other end of the spectrum, the "equivalents"
limitation as applied to a claim may also operate to
constrict the claim scope to the point of covering virtually
only  the  disclosed  embodiments.  This  can  happen  in
circumstances  where  the  specification  describes  the
invention only in the context of a specific structure,
material or act that is used to perform the function
specified in the claim.

  FACTORS TO BE CONSIDERED IN DECIDING EQUIVALENCE

  When deciding whether an applicant has met the burden of
proof with respect to showing nonequivalence of a prior art
element that performs the claimed function, the following
factors may be considered. First, unless an element performs
the identical function specified in the claim, it cannot be
an equivalent for the purposes of 35 U.S.C. 112, sixth
paragraph. Pennwalt Corp. v. Durand - Wayland, Inc. , 833
F.2d 931, 4 USPQ2d 1737 (Fed. Cir. 1987), cert. denied , 484
U.S. 961 (1988).

  Second,  while  there  is  no  litmus  test  for  an
"equivalent" that can be applied with absolute certainty and
predictability,  there  are  several  indicia  that  are
sufficient to support a conclusion that one element is or is
not an "equivalent" of a different element in the context of
35 U.S.C. 112, sixth paragraph. Among the indicia that will
support a conclusion that one element is or is not an
equivalent of another are:

 (1) Whether the prior art element performs the
function specified in the claim in substantially the same
way, and produces substantially the same results as the
corresponding  element  disclosed  in  the  specification.
Lockheed Aircraft Corporation v. United States , 193 USPQ
449, 461 (Ct. Cl. 1977). The concepts of equivalents as set
forth in Graver Tank & Mfg. Co. v. Linde Air Products , 339
U.S.  605,  85  USPQ  328  (1950)  are  relevant  to  any
"equivalents" determination. Polumbo v. Don - Joy Co. , 762
F.2d 969, 975, n. 4, 226 USPQ 5, 8 - 9, n. 4 (Fed. Cir.
1985).

 (2) Whether a person of ordinary skill in the art
would have recognized the interchangeability of the element

shown  in  the  prior  art  for  the  corresponding  element
disclosed  in  the  specification.  Lockheed  Aircraft
Corporation v. United States , 193 USPQ 449, 461 (Ct. Cl.
1977); Data Line Corp. v. Micro Technologies, Inc. , 813
F.2d 1196, 1 USPQ2d 2052 (Fed. Cir. 1987).

 (3) Whether the prior art element is a structural
equivalent of the corresponding element disclosed in the
specification being examined. In re Bond , 910 F.2d 831, 15
USPQ2d 1566 (Fed. Cir. 1990). That is, the prior art element
performs  the  function  specified  in  the  claim  in
substantially the same manner as the function is performed
by the corresponding element described in the specification.

 (4) Whether >there are insubstantial differences
between the prior art element and< the structure, material
or  acts  disclosed  in  the  specification  **>  Warner  -
Jenkinson Co.  v.  Hilton Davis Chemical Co., ** U.S. **, 65
U.S.L.W. 4162, - , 41 USPQ2d 1865, 1875 (1997);< . Valmont
Industries. Inc. v. Reinke Manufacturing Co. Inc. , 983 F.2d
1039, 25 USPQ2d 1451 (Fed. Cir. 1993).

  These examples are not intended to be an exhaustive list
of the indicia that would support a finding that one element
is or is not an equivalent of another element for the
purposes of 35 U.S.C. 112, sixth paragraph. A finding
according to any of the above examples would represent a
sufficient, but not the only possible, basis to support a
conclusion that an element is or is not an equivalent. There
could  be  other  indicia  that  also  would  support  the
conclusion.

  MERE ALLEGATIONS OF NONEQUIVALENCE ARE NOT SUFFICIENT

  In  determining  whether  arguments  or  37  CFR  1.132
evidence presented by an applicant are persuasive that the
element shown in the prior art is not an equivalent, the
examiner should consider and weigh as many of the above -
indicated or other indicia as are presented by applicant,
and should determine whether, on balance, the applicant has
met the burden of proof to show nonequivalence. However,
under  no  circumstance  should  an  examiner  accept  as
persuasive a bare statement or opinion that the element
shown in the prior art is not an equivalent embraced by the
claim limitation. Moreover, if an applicant argues that the
"means" or "step" plus function language in a claim is
limited  to  certain  specific  structural  or  additional
functional  characteristics  (as  opposed  to  "equivalents"
thereof) where the specification does not describe the
invention as being only those specific characteristics, the
claim should not be allowed until the claim is amended to
recite those specific structural or additional functional
characteristics. Otherwise, a claim could be allowed having
broad functional language which, in reality, is limited to
only the specific structure or steps disclosed in the
specification. This would be contrary to public policy of
granting patents which provide adequate notice to the public
as to a claim's true scope.

  APPLICANT MAY AMEND CLAIMS

  Finally, as in the past, applicant has the opportunity
during proceedings before the Office to amend the claims so
that the claimed invention meets all the statutory criteria
for patentability. An applicant may choose to amend the

claim by further limiting the function so that there is no
longer identity of function with that taught by the prior
art element, or the applicant may choose to replace the
claimed  means  plus  function  limitation  with  specific
structure, material or acts that are not described in the
prior art.

2185  Related Issues Under 35 U.S.C. 112, First or
Second Paragraphs [R - 1]

  >Interpretation of claims as set forth in MPEP § 2181
may create some uncertainty as to what applicant regards as
the invention. If this issue arises, it should be addressed
in a rejection under 35 U.S.C. 112, second paragraph. While
35 U.S.C. 112, sixth paragraph permits a particular form of
claim limitation, it cannot be read as creating an exception
either  to  the  description,  enablement  or  best  mode
requirements  of  the  1st  paragraph  or  the  definiteness
requirement of the second paragraph of 35 U.S.C. 112. In re
Knowlton , 481 F.2d 1357, 178 USPQ 486 (CCPA 1973).

  If a "means or step plus function" limitation recited in
a  claim  is  not  supported  by  corresponding  structure,
material  or  acts  in  the  specification  disclosure,  the
following rejections should be considered:

 (1) under 35 U.S.C. 112, first paragraph, as not
being supported by an enabling disclosure because the person
skilled in the art would not know how to make and use the
invention without a description of elements to perform the
function.  The  description  of  an  apparatus  with  block
diagrams describing the function, but not the structure, of
the apparatus is not fatal under the enablement requirement
of 35 U.S.C. 112, first paragraph, as long as the structure
is conventional and can be determined without an undue
amount of experimentation. In re Ghiron , 442 F.2d 985, 991,
169 USPQ 723, 727 (CCPA 1971);

 (2) under 35 U.S.C. 112, second paragraph, as being
indefinite because the element or step is not defined in the
specification by corresponding structure, material or acts;
and

 (3) under 35 U.S.C. 102 or 103 where the prior art
anticipates or renders obvious the claimed subject matter
including the means or step that performs the function
specified in the claim, the theory being that since there is
no corresponding structure, etc. in the specification to
limit  the  means  or  step  plus  function  limitation,  an
equivalent  is  any  element  that  performs  the  specified
function.<

2186  ** >Relationship to< the Doctrine of Equivalents
[R - 3]

  **>The doctrine of equivalents arises in the context of
an infringement action. If an accused product or process
does  not  literally  infringe  a  patented  invention,  the
accused product or process may be found to infringe under
the doctrine of equivalents. The essential objective inquiry
is: "Does the accused product or process contain elements
identical or equivalent to each claimed element of the
patented invention?" Warner - Jenkinson Co.  v.  Hilton
Davis Chemical Co.,  ** U.S. **, 65 U.S.L.W. 4162, ___, 41
USPQ2d 1865, 1875 (1997). In determining equivalence, "[a]n

analysis of the role played by each element in the context
of the specific patent claim will thus inform the inquiry as
to whether a substitute element matches the function, way,
and result of the claimed element, or whether the substitute
plays  a  role  substantially  different  from  the  claimed
element." 41 USPQ2d at 1875.

  35 U.S.C. 112, sixth paragraph permits "means or step
plus function" limitations in claims to combinations, "with
the proviso that application of the broad literal language
of such claims must be limited to only those means that are
`equivalent'  to  the  actual  means  shown  in  the  patent
specification. This is an application of the doctrine of
equivalents in a restrictive role, narrowing the application
of broad literal claim elements." 41 USPQ2d at 1870.<
Accordingly, decisions involving the doctrine of equivalents
>should be considered, but< should not unduly influence a
determination under 35 U.S.C. 112, sixth paragraph during ex
parte examination.

  - -- - -- END - -- - --

  Chapter 2200 Citation of Prior Art and Reexamination of Patents

 2206V11,

 Rev. 3, July 1997

  2201  Introduction
  2202  Citation of Prior Art
  2203  Persons Who May Cite Prior Art
  2204  Time for Filing Prior Art Citation
  2205  Content of Prior Art Citation
  2206  Handling of Prior Art Citation
  2207  Entry of Court Decision in Patent File
  2208  Service of Citation on Patent Owner
  2209  Reexamination
  2210  Request for Reexamination
  2211  Time for Requesting Reexamination
  2212  Persons Who May File a Request
  2213  Representative of Requester
  2214  Content of Request
  2215  Fee for Requesting Reexamination
  2216  Substantial New Question of Patentability
  2217  Statement >in the Request< Applying Prior Art
  2218  Copies of Prior Art
  2219  Copy of Printed Patent
  2220  Certificate of Service
  2221  Amendments Included in Request by Patent Owner
  2222  Address of Patent Owner
  2223  Withdrawal of Attorney or Agent
  2224  Correspondence
  2225  Untimely Paper Filed Prior to Order
  2226  Initial Processing of Request
  2227  Incomplete Request
  2228  Informal Request
  2229  Notice of Request in Official Gazette
  2230  Constructive Notice to Patent Owner
  2231  Processing of Request Corrections
  2232  Public Access
  2233  Processing in Examining Group
  2234  Entry of Amendments
  2235  Record Systems
  2236  Assignment of Reexamination

  2237  Transfer Procedure
  2238  Time Reporting
  2239  Reexamination Ordered at the Commissioner's
  Initiative
  2240  Decision on Request
  2241  Time for Deciding Request
  2242  Criteria for Deciding Request
  2243  Claims Considered in Deciding Request
  2244  Prior Art on Which the Determination Is Based
  2245  Processing of Decision
  2246  Decision Ordering Reexamination
  2247  Decision on Request for Reexamination Denied
  2248  Petition From Denial of Request
  2249  Patent Owner's Statement
  2250  Amendment by Patent Owner
  2250.01  Correction of Patent Drawings
  2251  Reply by Requester
  2252  Consideration of Statement and Reply
  2253  Consideration by Examiner
  2254  Conduct of Reexamination Proceedings
  2255  Who Reexamines
  2256  Prior Art Patents and Printed Publications
  Considered by Examiner in Reexamination
  2257  Listing of Prior Art
  2258  Scope of Reexamination
  2259  Collateral Estoppel in Reexamination Proceedings
  2260  Office Actions
  2260.01  Dependent Claims
  2261  Special Status for Action
  2262  Form and Content of Office Action
  2263  Time for Response
  2264  Mailing of Office Action
  2265  Extension of Time
  2266  Responses
  2267  Handling of Inappropriate or Untimely Filed Papers
  2268  Petition for Entry of Late Papers
  2269  Reconsideration
  2270  Clerical Handling
  2271  Final Action
  2272  After Final Practice
  2273  Appeal in Reexamination
  2274  Appeal Brief
  2275  Examiner's Answer
  2276  Oral Hearing
  2277  Board of Patent Appeals and Interferences Decision
  2278  Action Following Decision
  2279  Appeal to Courts
  2280  Information Material to Patentability in
  Reexamination Proceeding
  2281  Interviews In Reexamination Proceedings
  2282  Notification of Existence of Prior or Concurrent
  Proceedings and Decisions Thereon
  2283  Multiple Copending Reexamination Proceedings
  2284  Copending Reexamination and Interference
  Proceedings
  2285  Copending Reexamination and Reissue Proceedings
  2286  Reexamination and Litigation Proceedings
  2287  Conclusion of Reexamination Proceeding
  2288  Issuance of Reexamination Certificate
  2289  Reexamination Review
  2290  Format of Certificate
  2291  Notice of Certificate Issuance in  Official Gazette
  2292  Distribution of Certificate
  2293  Intervening Rights
  2294  Terminated Reexamination Files

2201  Introduction

  Statutory basis for citation of prior patents or printed
publications in patent files and reexamination of patents
became available on July 1, 1981, as a result of new
sections 301 - 307 of title 35 United States Code which were
added by Public Law 96 - 517 enacted on December 12, 1980.
The  rules  of  practice  in  patent  cases  relating  to
reexamination were initially promulgated on April 30, 1981,
at 46 Fed. Reg. 24179 - 24180 and on May 29, 1981, at 46
Fed. Reg. 29176 - 29187.

 **  Double Click here to see the image  **

  This chapter is intended to be primarily a guide for
Patent and Trademark Office personnel on the processing of
prior art citations and reexamination requests. Secondarily,
it is to also serve as a guide on the formal requirements
for filing such documents in the Office.

  The flowchart shows the general provisions of both the
citation  of  prior  art  and  reexamination  proceedings
including reference to the pertinent rule sections.

2202  Citation of Prior Art

 35 U.S.C. 301.  Citation of prior art.

  Any person at any time may cite to the Office in writing
prior art consisting of patents or printed publications
which  that  person  believes  to  have  a  bearing  on  the
patentability of any claim of a particular patent. If the
person explains in writing the pertinency and manner of
applying such prior art to at least one claim of the patent,
the citation of such prior art and the explanation thereof
will become a part of the official file of the patent. At
the written request of the person citing the prior art, his
or her identity will be excluded from the patent file and
kept confidential.

 37 CFR 1.501.  Citation of prior art in patent files.

  (a) At any time during the period of enforceability of a
patent, any person may cite to the Patent and Trademark
Office in writing prior art consisting of patents or printed
publications which that person states to be pertinent and
applicable to the patent and believes to have a bearing on
the patentability of any claim of a particular patent. If
the citation is made by the patent owner, the explanation of
pertinency and applicability may include an explanation of
how the claims differ from the prior art. Citations by the
patent owner under § 1.555 and by a reexamination requester
under either § 1.510 or § 1.535 will be entered in the
patent file during a reexamination proceeding. The entry in
the patent file of citations submitted after the date of an
order to reexamine pursuant to § 1.525 by persons other than
the patent owner, or a reexamination requester under either
§ 1.510 or § 1.535, will be delayed until the reexamination
proceedings have been terminated.

  (b) If the person making the citation wishes his or her
identity to be excluded from the patent file and kept

confidential, the citation papers must be submitted without
any identification of the person making the submission.

  (c) Citation of patents or printed publications by the
public in patent files should either (1) reflect that a copy
of the same has been mailed to the patent owner at the
address as provided for in § 1.33(c); or in the event
service is not possible (2) be filed with the Office in
duplicate.

  *****

  Prior art in the form of patents or printed publications
may  be  cited  to  the  Patent  and  Trademark  Office  for
placement into the patent files. Such citations may be made
without payment of a fee. Citations of prior art may be made
separate from and without a request for reexamination.

  The basic purpose for citing prior art in patent files
is to inform the patent owner and the public in general that
such patents or printed publications are in existence and
should be considered when evaluating the validity of the
patent claims. Placement of citations in the patent file
along with copies of the cited prior art will also ensure
consideration  thereof  during  any  subsequent  reissue  or
reexamination proceeding.

  The citation of prior art provisions of 35 U.S.C. 301
and 37 CFR 1.501 do not apply to citations or protests filed
in pending applications.

2203  Persons Who May Cite Prior Art

  The patent owner or any member of the public may submit
prior art citations of patents or printed publications to
the Patent and Trademark Office. 35 U.S.C. 301 states that
"Any person at any time may cite to the Office . ."

  "Any person" may be corporate and governmental entities
as well as individuals.

  If a person citing prior art desires his or her identity
to be kept confidential, such a person need not identify
himself or herself.

  "Any  person"  includes  patentees,  licensees,
reexamination requesters, real parties in interest, persons
without a real interest, and persons acting for real parties
in interest without a need to identify the real party of
interest.

  The statute indicates that "at the written request of
the person citing the prior art, his or her identity will be
excluded  from  the  patent  file  and  kept  confidential".
Although an attempt will be made to exclude any such papers
from the public files, since the review will be mainly
clerical in nature, complete assurance of such exclusion
cannot be given. Persons citing art who desire to remain
confidential  are,  therefore  advised  to  not  identify
themselves anywhere in their papers.

  Confidential  citations  should  include  at  least  an
unsigned statement indicating that the patent owner has been
sent a copy of the citation papers. In the event that it is
not possible to serve a copy on the patent owner, a

duplicate copy should be filed with the Office.

  Patent examiners should not, at their own initiative,
place or forward for placement in the patent file any
citations of prior art. Patent examiners are charged with
the responsibility of making decisions as to patentability
for the Commissioner. Any activity by examiners which would
appear to indicate that patent claims are not patentable,
outside of those cases pending before them, is considered to
be inappropriate.

2204  Time for Filing Prior Art Citation [R - 3]

  Citations of prior art may be filed "at any time" under
35 U.S.C. 301. However, this period has been defined by rule
(37 CFR 1.501(a)) to be "any time during the period of
enforceability of a patent". The period of enforceability is
the length of the term of the patent ** plus the 6 years
under  the  statute  of  limitations  for  bringing  an
infringement  action>(35  U.S.C.  286)<.  In  addition,  if
litigation is instituted within the period of the statute of
limitations, citations may be submitted after the statute of
limitations has expired, as long as the patent is still
enforceable against someone. ** >While< citations of prior
art  may  be  filed  at  any  time  during  the  period  of
enforceability of the patent, citations submitted after the
date of any order to reexamine ** >will not be entered into
the patent file until the pending reexamination proceeding
has been terminated (37 CFR 1.501(a)), unless the citations
are submitted (1) by< the patent owner * >; (2) by< a
reexamination requester who also submits the fee and other
documents required under 37 CFR 1.510 * >; or (3)< in a
response under 37 CFR 1.535 **. Therefore, if prior art
cited by a third party is to be considered without the
payment of another reexamination fee, it must be presented
before reexamination is ordered.

  The purpose of this rule is to prevent harassment of the
patent owner due to frequent submissions of prior art
citations during reexamination proceedings.

2205  Content of Prior Art Citation [R - 3]

  The ** prior art which may be submitted under 35 U.S.C.
301 is limited to "written prior art consisting of patents
or printed publications".

  An explanation is required of how the person submitting
the prior art considers it to be pertinent and applicable to
the patent, as well as an explanation >of< why it is
believed  that  the  prior  art  has  a  bearing  on  the
patentability of any claim of the patent. Citations of prior
art by patent owners may also include an explanation of how
the claims of the patent differ from the prior art cited.

  It is preferred that copies of all the cited prior
patents or printed publications and any necessary English
translation be included so that the value of the citations
may be readily determined by persons inspecting the patent
files  and  by  the  examiner  during  any  subsequent
reexamination proceeding.

  All prior art citations filed by persons other than the
patent owner must either indicate that a copy of the
citation has been mailed to, or otherwise served on, the

patent owner at the correspondence address as defined under
37 CFR 1.33(c), or if for some reason service on the patent
owner is not possible, a duplicate copy of the citation must
be filed with the Office along with an explanation as to why
the service was not possible. The most recent address of the
attorney  of  record  may  be  obtained  from  the  Office's
register  of  registered  patent  attorneys  and  agents
maintained  by  the  Office  of  Enrollment  and  Discipline
pursuant to 37 CFR 10.5 and 10.11(a).

  All >prior art< citations submitted should identify the
patent in which the citation is to be placed by the patent
number, issue date, and patentee.

  A cover sheet with an identification of the patent
should have firmly attached to it all other documents
relating to the citation so that the documents will not
become  separated  during  processing.  The  documents
>themselves< should also contain, or have placed thereon, an
identification of the patent for which they are intended.

  ** >Affidavits or declarations relating to the prior art
documents submitted may accompany the citation to explain
the contents or pertinent dates in more detail. A commercial
success affidavit tied in with a particular prior art
document may also be acceptable. For example, the patent
owner may wish to cite a patent or printed publication which
raises the issue of obviousness of at least one patent
claim. Together with the cited art, the owner may file (a)
an affidavit of commercial success or other evidence of
nonobviousness, or (b) an affidavit which questions the
enablement of the teachings of the cited prior art.<

  No fee is required for the submission of citations under
37 CFR 1.501.

  A prior art citation is limited to the citation of
patents and printed publications and an explanation of the
pertinency and applicability of the patents and printed
publications. This may include an explanation by the patent
owner as to how the claims differ from the prior art. It may
also include affidavits and declarations. The prior art
citation cannot include any issue which is not directed to
patents and printed publications. Thus, for example, a prior
art citation cannot include a statement as to the claims
violating 35 U.S.C. 112, a statement as to the public use of
the claimed invention, or a statement as to the conduct of
the patent owner. A prior art citation must be directed to
patents and printed publications and cannot discuss what the
patent  owner  did,  or  failed  to  do,  with  respect  to
submitting  and/or  describing  patents  and  printed
publications, because that would be a statement as to the
conduct of the patent owner. The citation also should not
contain argument and discussion of references previously
treated in the prosecution of the invention which matured
into the patent or references previously treated in a
reexamination proceeding as to the patent.

  If the prior art citation contains ** >any< issue not
directed to patents and printed publications, it should not
be entered into the patent file, despite the fact that it
may otherwise contain a complete submission of patents and
printed publications with an explanation of the pertinency
and applicability. Rather, the prior art citation should be
returned to the sender as described in MPEP § 2206.

  Examples of letters submitting prior art under 37 CFR
1.501 follow.

 >EXAMPLE I - Submission by a third party:<

 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 In re patent of

 Joseph Smith

 Patent No. 4,444,444

 Issued: July 7, 1977

 For: Cutting Tool

 Submission of Prior Art Under 37 CFR 1.501

 Hon. >Assistant< Commissioner *>for< Patents **

 Washington, D. C. 20231

 Sir:

 The undersigned herewith submits in the above identified
patent the following prior art (including copies thereof)
which is pertinent and applicable to the patent and is
believed to have a bearing on the patentability of at least
claims 1 - 3 thereof:

 Weid et al  U.S 2,585,416 April 15,1933

 McGee  U.S 2,722,794 May 1, 1934

 Paulk et al  U.S 3,625,291 June 16, 1936

 ** >Each< of the references discloses a cutting tool
strikingly similar to the device of Smith in having pivotal
handles with cutting blades and a pair of dies. It is *
>believed< that each of the references has a bearing on the
patentability of claims 1 - 3 of the Smith patent.

 Insofar as claims 1 and 2 are concerned, each of the
references clearly anticipates the claimed subject matter
under 35 U.S.C. 102.

 As to claim 3, the differences between the subject matter
of this claim and the cutting tool of Weid et al are shown
in the device of Paulk et al. Further, Weid et al suggests
that different cutting blades can be used in their device. A
person of ordinary skill in the art at the time the
invention was made would have been led by the suggestion of
Weid et al to the cutting blades of Paulk et al as obvious
substitutes for the blades of Weid et al.

 Respectfully submitted,

 (Signed)

 John Jones

 Certificate of Service

 I hereby certify on this first day of June 1982, that a
true and correct copy of the foregoing "Submission of Prior
Art" was mailed by first - class mail, postage paid, to:

  Joseph Smith

  555 Emery Lane

  Arlington, VA 22202

 (Signed)

 John Jones

 >EXAMPLE II - Submission by the patent owner:<

 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 In re patent of

 Joseph Smith

 Patent No. 4,444,444

 Issued: July 7, 1977

 For: Cutting Tool

Submission of Prior Art Under 37 CFR 1.501

 Hon. >Assistant< Commissioner *>for< Patents **

 Washington, D. C. 20231

 Sir:

 The undersigned herewith submits in the above identified
patent the following prior art (including copies thereof)
which is pertinent and applicable to the patent and is
believed to have a bearing on the patentability of at least
claims 1 - 3 thereof:

 Weid et al  U.S 2,585,416 April 15,1933

 McGee  U.S 2,722,794 May 1, 1934

 Paulk et al  U.S 3,625,291 June 16, 1936

 ** >Each< of the references discloses a cutting tool
strikingly similar to the device of Smith in having pivotal
handles with cutting blades and a pair of dies. While it is
* >believed< that each of the references has a bearing on
the patentability of claims 1 - 3 of the Smith patent, the
subject matter claimed differs from the references and is
believed patentable thereover

 Insofar as claims 1 and 2 are concerned, none of the
references  show  the  particular  dies  claimed  and  the
structure of these claimed dies would not have been obvious
to a person of ordinary skill in the art at the time the
invention was made.

 As to claim 3, while the cutting blades required by this
claim are shown in Paulk et al, the remainder of the claimed
structure is found only in Weid et al. A person of ordinary

skill in the art at the time the invention was made would
not have found it obvious to substitute the cutting blades
of Paulk et al for those of Weid et al. In fact, the
disclosure of Weid et al would lead a person of ordinary
skill in the art away from the use of cutting blades such as
shown in Paulk et al.

 The reference to McGee, while generally similar, lacks the
particular  cooperation  between  the  elements  which  is
specifically set forth in each of claims 1 - 3.

 Respectfully submitted,

 (Signed)

 William Green

 Attorney for Patent Owner

2206  Handling of Prior Art Citation [R - 3]

  Prior art citations received in the Patent and Trademark
Office  will  be  forwarded  **  to  the  Reexamination
Preprocessing * >area of the Office of Initial Patent
Examination (OIPE)< for handling.

  If the prior art citation relates to a patent currently
undergoing reexamination, the Reexamination Preprocessing *
>area< should promptly forward the prior art citation to the
examining group assigned * the reexamination proceeding.

  It  is  the  responsibility  of  the  Reexamination
Preprocessing * >area< personnel where no reexamination
proceeding is present, or the examining group personnel
where a reexamination proceeding is present, to immediately
determine whether a citation ** meets the requirements of
the law and rules and to enter it into the patent file at
the appropriate time if it is proper.

  If a proper citation is filed after the date of an order
for reexamination, the citation is retained>(stored)< in the
examining group ** until the reexamination is terminated.
Note 37 CFR 1.501(a) and MPEP § 2294. ** >A tag should be
placed on the reexamination file as a reminder of the
citation to be placed in the patent file after termination
of the reexamination proceeding. The citation is then placed
in  the  Group's  citation  storage  file.  After  the
reexamination proceeding is terminated, the citation is
removed from the storage file and< processed for placement
in the patent file. Citations filed after the date of an
order for reexamination will not be considered by the
examiner during the reexamination.

  CITATION QUALIFIES FOR ENTRY UNDER 37 CFR 1.501

  I.  Citations by third party

  A. Prior to Order in Any Pending Reexamination
Proceeding>:<

  If the citation is proper (i.e., limited to patents and
printed publications) and is filed prior to an order in a
reexamination proceeding, it should be immediately entered
into the patent file. If the citation includes an indication
of service on the patent owner, the citation is merely

timely entered and no notice of such entry is sent to any
party. If the citation does not include an indication of
service, the patent owner should be notified that a citation
of prior art has been entered into the patent file. If a
duplicate copy of the citation was filed, the duplicate copy
should  be  sent  to  the  patent  owner  along  with  the
notification. If no duplicate copy is present, no copy will
be sent with the notification. Wording similar to the
following should be used:

  >"<A citation of prior art under 35 U.S.C. 301 and 37
CFR 1.501 has been filed on ____ in your patent number ____
entitled________.

  This notification is being made to inform you that the
citation of prior art has been placed in the file wrapper of
the above identified patent.

  The person submitting the prior art:

  1. [ ] was not identified

  2. [ ] is confidential

  3. [ ] is ____________.>"<

  B. After the Order in Any Pending Reexamination
Proceeding>:<

  If the citation is proper but is filed after an order
for reexamination in a pending reexamination, the citation
is  not  entered  at  the  time  because  of  the  ongoing
reexamination. The patent owner and sender (if known) should
be alerted of this fact. Such notification is important to
enable the patent owner to consider submitting the prior art
under  37  CFR  1.555  during  the  reexamination.  Such
notification will also enable the third party sender to
consider the desirability of filing a separate request for
reexamination. If the citation does not include service of a
copy on the patent owner and a duplicate copy is submitted,
the duplicate copy should be sent to the patent owner along
with the notification. If a duplicate copy is not present,
no copy will accompany the notification to the patent owner.
In this situation, the original copy (in storage) should be
made available for copying by the patent owner. If the
citation includes service of a copy on the patent owner, the
citation is placed in storage and not entered until the
reexamination is terminated. The patent owner and third
party sender (if known) should be given notice of this
action.

 >An example of a letter giving notice to the patent owner
and third party sender is as follows.

 John A. Jones  (Citation Sender)

 Jones & Smith

 1020 United First Bldg.

 1033 16th St.

 Seattle, Washington 98121

 Richard A. Davis  (Patent Owner)

 The A.B. Good Co.

 Patent Law Dept.

 9921 Stone Rd.

 Brookville, Ohio 44141

 In re Doe, et al.  :

 Reexamination Proceeding  :

 Control No. 90 / 999 ,999  : NOTIFICATION RE

 Filed: February 7, 2000  : PRIOR ART CITATION

 For: U.S. Patent No. 9,999,999  :

  The prior art citation filed May 19, 2000, is a proper
citation under 37 CFR 1.501(a); however, it was filed after
the May 2, 2000, date of the order for reexamination in
reexamination control # 90 / 999 ,999.

  Because the prior art citation was filed after the date
of the order for reexamination, the citation is being
retained in the examining group (Group 1300) until the
reexamination is terminated. Note 37 CFR 1.501(a) and MPEP §
2294. At that time, the citation will be processed for
placement in the patent file of patent # 9,999,999.

  The prior art citation filed May 19, 2000, will not be
considered in reexamination control # 90 / 999 ,999.

  The patent owner and sender of the citation are being
provided with a copy of this notification. If appropriate,
the patent owner may wish to consider submitting prior art
from the prior art citation pursuant to 37 CFR 1.555 during
the reexamination proceeding (reexamination control # 90 /
999 ,999). In addition, if appropriate, the sender may file
a request for reexamination to place the art of the prior
art citation before the patent examiner.

  Kenneth M. Schor

  Special Program Examiner

  Group 1300<

  II.  Citation filed by patent owner

  If a proper prior art citation is filed by the patent
owner, it should be entered in the file. This is true
whether the citation is filed prior to or after an order for
reexamination has been mailed. No notification to the patent
owner is necessary.

  The following diagram shows the various situations which
can occur when a proper prior art citation is filed and the
action to be taken for each alternative situation:

 **  Double Click here to see the image  **

  CITATION DOES NOT QUALIFY FOR ENTRY UNDER 37 CFR 1.501

  I.  Citation by third party

  If the citation is not proper (* >e.g.,< it is not
limited to *>patents< or printed publications), it should
not be entered in the patent file. The sender (if known) and
the patent owner in all cases should be notified that the
citation is improper and that it is not being entered in the
patent  file.  The  handling  of  the  citation  will  vary
depending on the particular following situation.

  A.  Service of Copy Included>:<

  Where the citation includes an indication of service of
copy on the patent owner and the identity of the third party
sender is known, the original citation paper should be
returned  to  the  third  party  sender  along  with  the
notification of nonentry. If the identity of the third party
sender is not known, the original citation papers should be
discarded.

  B.  Service of Copy Not Included; Identity of Third
Party Sender Known>:<

  Where the citation does not include an indication of
service on the patent owner, the identity of the third party
sender is known, and a duplicate copy of the citation is
present, the original citation papers should be returned to
the third party sender and the duplicate copy should be sent
to the patent owner along with the notification of nonentry.
If the duplicate copy required in 37 CFR 1.501(c) is not
present, the original citation papers should be sent to the
PATENT OWNER along with the notification of nonentry. >The
third party sender should be sent a notification that the
citation was not entered and that the original citation
papers were sent to the patent owner.<

  C. Service of Copy Not Included; Identity of
Third Party Sender Not Known>:<

  Where the citation does not include an indication of
service, the identity of the third party sender is not
known, and a duplicate copy of the citation is or is not
present, the duplicate copy (if present) should be discarded
and the original citation papers should be sent to the
patent owner along with the notification of nonentry.

  II.  Citation filed by the patent owner

  If an improper prior art citation >under 37 CFR 1.501<
is filed by the patent ow ner >prior to an order for
reexamination<, it should not be entered in the file. **

  The patent owner should be notified of the nonentry, and
the citation papers should be returned to the patent owner
along with the notification. >Prior art submission filed by
the patent owner after an order for reexamination should be
entered in the file under 37 CFR 1.555.<

  The following diagram shows the various situations which
can occur when an improper prior art citation is filed and
the action to be taken for each alternative situation. Any
unusual problems should be brought to the attention of the
Office of the >Deputy< Assistant Commissioner for * >Patent
Policy and Projects<

 **  Double Click here to see the image  **

2207  Entry of Court Decision in Patent File [R - 3]

 ** >The Solicitor's Office processes notices required by 35
U.S.C. 290, received from the clerks of the various courts,
and has them entered in the patent file. However, it is
considered desirable that the entire court decision be
supplied to the Office for entry into the patent file.
Accordingly, the Office will accept at any time from any
party for placement in the patent file, submissions of the
following: copies of notices of suits and other proceedings
involving the patent and copies of decisions or other court
papers, or papers filed in the court, from litigations or
other proceedings involving the patent. Such submissions
must be provided without additional comment. Persons making
such  submissions  must  limit  the  submission  to  the
notification  and  not  include  further  arguments  or
information. Any proper submission will be promptly placed
on record (entered) in the patent file. Entry of these
submissions is performed by the Files Repository personnel,
unless a reexamination proceeding is pending, in which case,
the Examining Group (or other area of the Office) having
responsibility for the reexamination enters the submission.

  Where a request for reexamination of the patent has been
filed:

  It is important for the Office to be aware of any prior
court or other proceedings in which a patent undergoing
reexamination is or was involved, and any results of such
proceedings. In accordance with 37 CFR 1.565(a), the patent
owner is required to provide the Office with information
regarding the existence of any such proceedings and the
results thereof, if known. As to third parties, note as
follows. Ordinarily, while a reexamination proceeding is
pending, third party submissions filed after the date of the
order are not placed in the reexamination or the patent
file. However, in order to ensure a complete file, with
updated status information as to prior proceedings regarding
a patent undergoing reexamination, submissions (as above -
described) limited to bare notice of the proceedings, with
copies of the papers of the proceedings, will be accepted
and placed in the file at any time during the reexamination
from any party.< See MPEP § 2240 and § 2242 for handling of
requests  for  reexamination  of  patents  involved  in
litigation.

2208  Service of Citation on Patent Owner [R - 3]

  A copy of any submission of a citation of prior art
patents or printed publications in a patent file should be
served on the patent owner so that the patent owner is
>kept< fully informed as to the content of his or her patent
file wrapper. See MPEP § 2206 for handling of prior art
citations.

  The service to the patent owner should be addressed to
the correspondence address as set forth in 37 CFR 1.33(c).
>See MPEP § 2222 as to the correspondence address.<

2209  Reexamination [R - 3]

  Procedures for reexamination of issued patents began on
July 1, 1981, the date when the reexamination provisions of
Public Law 96 - 517 came into effect.

  The reexamination statute and rules permit any person to
file a request for reexamination containing certain elements
and the fee required under 37 CFR 1.20(c). The Patent and
Trademark Office initially determines if "a substantial new
question of patentability" (35 U.S.C. 303(a)) is presented.
If such a new question has been presented, reexamination
will be ordered. The reexamination proceedings which follow
the order for reexamination are very similar to regular
examination procedures in patent applications ** >; however,
there are notable differences. For example, there are<
certain limitations as to the kind of rejections which may
be made, special reexamination forms to be used, and time
periods  set  to  provide  "special  dispatch."  When  the
reexamination proceedings are terminated, a certificate is
issued which indicates the status of all claims following
the reexamination.

  The following sections of this chapter explain the
details of reexamination.

  The intent of the reexamination procedures covered in
this chapter include the following:

  (1)  To provide procedures for reexamination of
patents.

  (2)  To implement reexamination in an essentially
ex parte manner.

  (3) To  minimize  the  processing  costs  and
complexities of reexamination.

  (4)  To maximize respect for the reexamined patent.

  (5)  To provide procedures for prompt and timely
determinations by the Office in accordance with the "special
dispatch" requirements of 35 U.S.C. 305.

  The basic characteristics of reexamination  are as
follows:

  (1)  Anyone can request reexamination at any time
during the period of enforceability of the patent.

  (2)  Prior art considered during reexamination is
limited to prior art patents or printed publications applied
under the appropriate parts of 35 U.S.C. 102 and 103.

  (3)  A substantial new question of patentability
must be * >present< for reexamination to be ordered.

  (4)  If  ordered,  the  actual  reexamination
proceeding is ex parte in nature.

  (5)  Decision on the request must be made **>no
later than 3< months from * >its< filing>,< and >the<
remainder  of  proceedings  must  proceed  with  "special
dispatch."

  (6)  If ordered, a reexamination proceeding will
>normally<  be  conducted  to  >its<  conclusion  and  >the<

issuance of >a reexamination< certificate.

  (7)  The scope of a claim cannot be enlarged by
amendment.

  (8)  All reexamination and patent files are open to
the public.

2210  Request for Reexamination [R - 3]

 35 U.S.C. 302.  Request for reexamination.

  Any  person  at  any  time  may  file  a  request  for
reexamination by the Office of any claim of a patent on the
basis of any prior art cited under the provisions of section
301 of this title. The request must be in writing and must
be accompanied by payment of a reexamination fee established
by the Commissioner of Patents pursuant to the provisions of
section 41 of this title. The request must set forth the
pertinency and manner of applying cited prior art to every
claim for which reexamination is requested. Unless the
requesting  person  is  the  owner  of  the  patent,  the
Commissioner promptly will send a copy of the request to the
owner of record of the patent.

 37 CFR 1.510.  Request for reexamination.

  (a) Any person may, at any time during the period of
enforceability of a patent, file a request for reexamination
by the Patent and Trademark Office of any claim of the
patent  on  the  basis  of  prior  art  patents  or  printed
publications cited under § 1.501. The request must be
accompanied by the fee for requesting reexamination set in §
1.20(c).

  (b)  Any  request  for  reexamination  must  include  the
following parts:

  (1)  A  statement  pointing  out  each  substantial  new
question of patentability based on prior patents and printed
publications.

  (2)  An  identification  of  every  claim  for  which
reexamination is requested, and a detailed explanation of
the pertinency and manner of applying the cited prior art to
every  claim  for  which  reexamination  is  requested.  If
appropriate, the party requesting reexamination may also
point out how claims distinguish over cited prior art.

  (3) A copy of every patent or printed publication relied
upon or referred to in paragraph (b)(1) and (2) of this
section accompanied by an English language translation of
all the necessary and pertinent parts of any non - English
language patent or printed publication.

  (4)  The  entire  specification  (including  claims)  and
drawings of the patent for which reexamination is requested
must be furnished in the form of cut - up copies of the
original patent with only a single column of the printed
patent securely mounted or reproduced in permanent form on
one side of a separate paper. A copy of any disclaimer,
certificate  of  correction,  or  reexamination  certificate
issued in the patent must also be included.

  (5) A certification that a copy of the request filed by a

person other than the patent owner has been served in its
entirety on the patent owner at the address as provided for
in § 1.33(c). The name and address of the party served must
be indicated. If service was not possible, a duplicate copy
must be supplied to the Office.

  (c)  If  the  request  does  not  include  the  fee  for
requesting reexamination or all of the parts required by
paragraph (b) of this section, the person identified as
requesting reexamination will be so notified and given an
opportunity to complete the request within a specified time.
If the fee for requesting reexamination has been paid but
the defect in the request is not corrected within the
specified  time,  the  determination  whether  or  not  to
institute reexamination will be made on the request as it
then exists. If the fee for requesting reexamination has not
been paid, no determination will be made and the request
will be placed in the patent file as a citation if it
complies with the requirements of § 1.501(a).

  (d) The filing date of the request is: (1) the date on
which the request including the entire fee for requesting
reexamination  is  received  in  the  Patent  and  Trademark
Office; or (2) the date on which the last portion of the fee
for requesting reexamination is received.

  (e) A request filed by the patent owner, may include a
proposed amendment in accordance with § 1.121(f).

  (f) If a request is filed by an attorney or agent
identifying another party on whose behalf the request is
being filed, the attorney or agent must have a power of
attorney from that party or be acting in a representative
capacity pursuant to § 1.34(a).

  Any  person,  at  any  time  during  the  period  of
enforceability  of  a  patent,  may  file  a  request  for
reexamination by the Patent and Trademark Office of any
claim of the patent based on prior art patents or printed
publications. The request must include the elements set
forth in 37 CFR 1.510(b) (see MPEP § 2214) and >must< be
accompanied by the fee as set forth in 37 CFR 1.20(c). No
attempt will be made to maintain a requester's name in
confidence.

  After the request for reexamination, including the
entire fee for requesting reexamination, is received in the
Patent and Trademark Office, no abandonment, withdrawal, or
striking, of the request is possible, regardless of who
requests the same. In some limited circumstances >, such as<
after a court decision * where all of the claims are finally
held invalid, a reexamination order may be vacated, see MPEP
§ 2286.

2211  Time for Requesting Reexamination [R - 3]

  Under 37 CFR 1.510(a), any person may, at any time
during the period of enforceability of a patent, file a
request for reexamination. This period was set by rule since
no useful purpose was seen for expending Office resources on
deciding patent validity questions in patents which cannot
be enforced. In this regard see Patlex Corporation v.
Mossinghoff  ,>758  F.2d  594,<  225  USPQ  243,  249  (Fed.
Cir.*>1988<). The period of enforceability is determined by
adding 6 years to the date on which the patent expires. The

patent expiration date for a utility patent, for example, is
determined by taking into account the term of the patent,
whether maintenance fees have been paid for the patent, and
whether any disclaimer was filed as to the patent to shorten
its term. Any other relevant information should also be
taken into account. In addition, if litigation is instituted
within the period of the statute of limitations, requests
for  reexamination  may  be  filed  after  the  statute  of
limitations has expired, as long as the patent is still
enforceable against someone.

2212  Persons Who May File a Request

  35 U.S.C. 302 and 37 CFR 1.510(a) both indicate that "any
person" may file a request for reexamination of a patent.
Accordingly, there are no persons who are excluded from
being  able  to  seek  reexamination.  Corporations  and/or
governmental entities are included within the scope of the
term  "any  person".  The  patent  owner  can  ask  for
reexamination  which  will  be  limited  to  an  ex  parte
consideration of prior patents or printed publications. If
the patent owner wishes to have a wider consideration of
issues by the Office, including matters such as prior public
use  or  sale,  the  patent  owner  may  file  a  reissue
application. It is also possible for the Commissioner to
initiate reexamination on the Commissioner's own initiative
under 37 CFR 1.520. Reexamination will be initiated by the
Commissioner on a very limited basis such as where a general
public policy question is at issue and there is no interest
by "any other person." Some of the persons likely to use
reexamination are patentees, licensees, potential licensees,
attorneys without identification of their real client in
interest, infringers, potential exporters, patent litigants,
interference applicants, and International Trade Commission
respondents. The name of the person who files the request
will not be maintained in confidence.

2213  Representative of Requester

  Where an attorney or agent files a request for an
identified client (the requester), he or she may act under
either a power of attorney, or act in a representative
capacity under 37 CFR 1.34(a), 37 CFR 1.510(f). While the
filing of the power of attorney is desirable, processing of
the reexamination request will not be delayed due to its
absence.

  If any question of authority to act is raised, proof of
authority may be required by the Office.

  All correspondence for a requester other than the patent
owner should be addressed to the representative of the
requester unless a specific indication is made to forward
correspondence to another address.

  If the request is filed by a person on behalf of the
patent owner, correspondence will be directed to the patent
owner at the address as indicated in 37 CFR 1.33(c),
regardless of the address of the person filing the request.
See  MPEP  §  2222  for  a  discussion  of  who  receives
correspondence on behalf of a patent owner and how changes
in the correspondence address are to be made.

  A  patent  owner  may  not  be  represented  during  a
reexamination proceeding by an attorney or other person who

is not registered to practice before the Office since those
individuals are prohibited by 37 CFR 1.33(c) from signing
amendments  and  other  papers  filed  in  a  reexamination
proceeding on behalf of the patent owner.

2214  Content of Request [R - 3]

 37 CFR 1.510.  Request for reexamination.

  (a) Any person may, at any time during the period of
enforceability of a patent, file a request for reexamination
by the Patent and Trademark Office of any claim of the
patent  on  the  basis  of  prior  art  patents  or  printed
publications cited under § 1.501. The request must be
accompanied by the fee for requesting reexamination set in §
1.20(c).

  *****

  37 CFR 1.510(a) requires the payment of * >the< fee
specified  in  37  CFR  1.20(c)  >for  a  request  for
reexamination. See MPEP § 2215<.

  37 CFR 1.510(b) sets forth the required elements of a
request for reexamination. The elements are as follows:

  "(1) a statement pointing out each substantial new
question of patentability based on prior patents and printed
publications."

  This  statement  should  clearly  point  out  what  the
requester considers to be the substantial new question of
patentability which would warrant a reexamination. The cited
prior art should be listed on a form PTO - 1449 by the
requester. See also MPEP § 2217.

  >A request for reexamination should not be filed to
resolve issues of patentability as to certain references,
while at the same time, the request urges that those
references do not present a substantial new question of
patentability (and that no order for reexamination should be
issued).<

  "(2)  An  identification  of  every  claim  for  which
reexamination is requested, and a detailed explanation of
the pertinency and manner of applying the cited prior art to
every  claim  for  which  reexamination  is  requested.  If
appropriate the party requesting reexamination may also
point out how claims distinguish over cited prior art."

  The request should apply the cited prior art to every
claim for which reexamination is requested. If the request
is filed by the patent owner, he or she may also indicate
how the claims distinguish from the cited prior art patents
and printed publications.

  "(3) A copy of every patent or printed publication
relied upon or referred to in paragraph (b)(1) and (2) of
this section accompanied by an English language translation
of all the necessary and pertinent parts of any non -
English language patent or printed publication."

  A copy of each cited patent or printed publication, as

well as a translation of each non - English document is
required so that all materials will be available to the
examiner for full consideration. See MPEP § 2218.

  "(4) The entire specification (including claims) and
drawings of the patent for which reexamination is requested
must be furnished in the form of cut - up copies of the
original patent with only a single column of the printed
patent securely mounted or reproduced in permanent form on
one side of a separate paper. A copy of any disclaimer,
certificate  of  correction,  or  reexamination  certificate
issued in the patent must also be included."

  A copy of the patent, for which reexamination is
requested, should be provided in a single column paste - up
format so that amendments can be easily entered and to ease
printing. See also MPEP § 2219. >The front page of the
patent may be presented in whole page format (i.e., not
single column). The drawings are presented as whole pages of
drawings.<

  "(5) A certification that a copy of the request filed by
a person other than the patent owner has been served in its
entirely on the patent owner at the address as provided for
in § 1.33(c). The name and address of the party served must
be indicated. If service was not possible, a duplicate copy
must be supplied to the Office."

  If the request is filed by a person other than the
patent owner, a certification that a copy of the request
papers has been served on the patent owner must be included.
The request should be as complete as possible since there is
no guarantee that the examiner will consider other prior art
when making the decision on the request. Also, if no
statement is filed by the patent owner, no later reply may
be filed by the requester. See also MPEP § 2220.

  Form PTO - 1465 should be helpful to persons filing
requests  for  reexamination.  The  use  of  this  form  is
encouraged but its use is not a requirement of the law nor
the rules.

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

  Attachment to Form *>PTO - 1465< requesting information
of Pat. No. 4,444,444

 Sir:

 Reexamination under 35 U.S.C. 302 - 307 and 37 CFR 1.510 is
requested of United States patent number 4,444,444 which
issued on July 7, 1977, to Joseph Smith. This patent is
still enforceable.

 Claims for which reexamination is requested

 Reexamination is requested of claims 1 - 3 of the Smith
patent in view of the earlier United States Patent document
number 594,225 to Berridge which is listed on attached form
PTO - 1499 and of which a copy is enclosed.

 Reexamination is also requested of claim 4 of the Smith
patent in view of the earlier Swiss Patent document 80,555
to Hotopp in view of the disclosure in "American Machinist"
magazine, October 16, 1950, issue, on page 169. An English
translation  of  the  German  language  Swiss  document  is
enclosed. Copies of the Hotopp and "American Machinist"
documents are also enclosed.

Explanation of pertinency and manner of applying cited prior
art to every claim for which reexamination is requested

 Claims 1 - 3 of the Smith patent are considered to be fully
anticipated under 35 U.S.C. 102 by the prior art patent
document to Berridge.

 Claim 3 of the Smith patent, which is more specific than
claims 1 and 2 in all features, is set forth below with an
explanation as to how the prior art patent document to
Berridge meets all the recited features.

 Smith, claim 3:

 "In a cutting and crimping tool"  (Berridge  page  1,
lines 10 - 13 states his invention is "an improved tool for
crimping metal which in its preferred form of embodiment is
combined with a cutting - tool or shears, forming therewith
a combination - tool.")

 "the combination with the cutting  (elements 4 and 5 in
Berridge) blades"

 "and their pivoted handles"  (elements  1  and  2  in
Berridge)

 "of bosses arranged at an angle  ("bosses" as used in
the to and offset from the plane of Smith claim is used to
mean the shear blades" a projection. The dies 6 and 7 of the
Berridge prior art patent document are arranged at the same
angle to the plane

  - 2 - Pat. No. 4,444,444

  of the shear blades and are arranged at an angle in the
same manner as shown in the drawing figures of the Smith
patent.)

 "and crimping dies formed on  (The dies 6 and 7 (bosses)
of the meeting faces of said bosses" Berridge have meeting
die - faces 12 and 13 (page 1, line 63) for performing
crimping operations (page 1, lines 70 - 74.1))

  Claim  4  of  the  Smith  patent  is  considered  to  be
unpatentable under 35 U.S.C. 103 in view of the prior art
Swiss patent document to Hotopp and further in view of the
prior art magazine publication on page 169 of the October
16, 1950 issue of American Machinist magazine.

 Claim 4 of Smith reads as quoted below

 "In a cutting and crimping tool,"  (The prior art Swiss
patent document to Hotopp discloses cutting jaws (column 1,
line 8) and dies "b" and "c" which may be used for
crimping.)

 "the combination of a pair of  (elements "a" and "e" in

the pivoted handles" prior art document to Hotopp).

 "with cutting jaws at one end  (The prior art document to
and crimping dies on the opposite Hotopp discloses cutting
jaws side of the pivot" (column 1 line 8) and crimping dies
"b" and "c" on the opposite side of pivot "d" from the
cutting jaws.)

 "and rounded prongs projecting (Rounded  prongs  are  not
from said cutting jaws" specifically disclosed by Hotopp but
are shown to be old in the art by the illustration in
"American Machinist" magazine under the title "DoublePurpose
Pliers Don't Break Insulation". To provide the cutting jaws
of Hotopp with rounded prongs as shown in the "American
Machinist" magazine is considered to be a matter which would
have been obvious to a person having ordinary skill in the
art at the time the invention was made.)

  - 3 - Pat. No. 4,444,444

Statement  pointing  out  substantial  new  question  of
patentability

 The prior art documents referred to above were not of
record in the file of the Smith patent. Since the claims in
the Smith patent are not allowable over these prior art
documents, a substantial new question of patentability is
raised. Further, these prior art documents are closer to the
subject matter of Smith than any prior art which was cited
during the prosecution of the Smith patent.

 

  John Doe

  Attorney for requester

2215  Fee for Requesting Reexamination [R - 3]

  In order for a request to be accepted, be given a filing
date, and be published in the Official Gazette , it is
necessary that the >entire< fee required under 37 CFR
1.20(c) for filing a request for reexamination be paid. **

  If the request for reexamination is >subsequently<
denied or vacated, a refund in accordance with 37 CFR
1.26(c) will be made to the identified requester.

  >If the entire fee for reexamination is not paid, the
request will be considered to be incomplete.< As stated in
37 CFR 1.510(c) and (d):

  *****

  (c) If the request does not include the fee for re
questing reexamination or all of the parts required by
paragraph (b) of this section, the person identified as
requesting reexamination will be so notified and given an
opportunity to complete the request within a specified time.
If the fee for requesting reexamination has been paid but
the defect in the request is not corrected within the
specified  time,  the  determination  whether  or  not  to
institute reexamination will be made on the request as it
then exists. If the fee for requesting reexamination has not
been paid, no determination will be made and the request

will be placed in the patent file as a citation if it
complies with the requirements of § 1.501(a).

  (d) The filing date of the request is: (1) the date on
which the request including the entire fee for requesting
reexamination  is  received  in  the  Patent  and  Trademark
Office; or (2) the date on which the last portion of the fee
for requesting reexamination is received.

  *****

  Where the entire filing fee is not paid, the request, if
otherwise proper, should be treated as a citation of prior
art under 37 CFR 1.501. >See MPEP § 2206 for handling of
prior art citations.<

2216  Substantial New Question of Patentability [R - 3]

  37 CFR 1.510(b)(1) requires that the request include "a
statement pointing out each substantial new question of
patentability  based  on  prior  patents  and  printed
publications." Under 35 U.S.C. 304 the Office must determine
whether  "a  substantial  new  question  of  patentability"
affecting any claim of the patent has been raised. If such a
new question is found, an order for reexamination of the
patent is issued. It is therefore clear that it is extremely
important that the request clearly set forth in detail
exactly what the requester considers the "substantial new
question of patentability" to be in view of prior patents
and printed publications. The request should point out how
any questions of patentability raised are substantially
different from those raised in the ** >previous examination<
of the patent before the Office. If a substantial new
question of patentability is found as to one claim, all
claims will be reexamined during the ex parte reexamination
process. See also MPEP § 2242.

  Questions relating to grounds of rejection other than
those based on prior >art< patents or printed publications
** should not be included in the request and will not be
considered by the examiner if included. >Examples of such
questions that will not be considered are public use, on
sale, and fraud.<

  Affidavits or declarations which explain the contents or
pertinent dates of prior patents or printed publications in
more detail may be considered in reexamination. See MPEP §
2258.

2217  Statement >in the Request< Applying Prior Art [R -
3]

  The third sentence of 35 U.S.C. 302 indicates that the
"request  must  set  forth  the  pertinency  and  manner  of
applying  cited  prior  art  to  every  claim  for  which
reexamination is requested." 37 CFR 1.510(b)(2) requires
that the request include "An identification of every claim
for  which  reexamination  is  requested,  and  a  detailed
explanation of the pertinency and manner of applying the
cited prior art to every claim for which reexamination is
requested." If the request is filed by the patent owner, the
request for reexamination may also point out how claims
distinguish over cited prior art.

  The prior art applied may only consist of prior >art<

patents or printed publications. Substantial new questions
of patentability may be based upon the following portions of
35 U.S.C. 102:

  "(a)  .  .  .  patented  or  described  in  a  printed
publication  in  this  or  a  foreign  country,  before  the
invention thereof by the applicant for patent, or"

  "(b) the invention was patented or described in a
printed publication in this or a foreign country . . more
than one year prior to the date of the application for
patent in the United States, or"

  *****

  "(d) the invention was first patented or caused to be
patented, or was the subject of an inventor's certificate,
by the applicant or his legal representatives or assigns in
a foreign country prior to the date of the application for
patent in this country on an application for patent or
inventor's certificate filed more than twelve months be fore
the filing of the application in the United States, or"

  "(e) the invention was described in a patent granted on
an application for patent by another filed in the United
States before the invention thereof by the applicant for
patent, or on an international application by another who
has fulfilled the requirements of paragraphs (1), (2), and
(4) of section 371(c) of this title before the invention
thereof by the applicant for patent, or"

  *****

  Similarly, substantial new questions of patentability
may also be made under 35 U.S.C. 103 which are based on the
above indicated portions of 35 U.S.C. 102. Public Law 98 -
622 enacted on November 8, 1984, changed a complex body of
case law and amended 35 U.S.C. 103 by adding a new sentence
which provides that the subject matter developed by another
which qualifies as prior art only under 35 U.S.C. 102(f) or
(g) shall not preclude patentability under 35 U.S.C. 103,
provided the subject matter and the claimed invention were
commonly owned at the time the invention was made. This
change overrules the practice under In re Bass ,>474 F.2d
1276,<  177  USPQ  178,  (CCPA  1973)  wherein  an  earlier
invention by a co - employee was treated as 35 U.S.C. 103
prior art and applies through 35 U.S.C. 102(g), and possibly
through 35 U.S.C. 102(f) with respect to a later invention
made by another employee of the same organization. However,
the Federal Circuit held in *>E.I. du Pont de Nemours Co.<
v. Phillips >Petroleum Co., 849 F.2d 1430,< 7 USPQ2d 1129**
(Fed. Cir. 1988), that the prior work of another under 35
U.S.C. 102(g), except as qualified by 35 U.S.C. 103 with
respect to certain commonly owned subject matter, can be
used as 35 U.S.C. 103 prior art so long as it has not been
abandoned,  suppressed,  or  concealed.  Accordingly,
substantial new questions of patentability may be found
under 35 U.S.C. 102(f) / 103 or (g)/103 based on the prior
invention of another disclosed in a patent or printed
publication. See Chapter 2100.

  Substantial new questions of patentability >must be<
based on ** patents or printed publications * >. Other
matters,< such as public use or sale, inventorship, 35
U.S.C. 101, 35 U.S.C. 112, fraud, etc.>,< will not be

considered when making the determination on the request and
should not be presented in the request. ** >Further, a prior
art<  patent  or  printed  publication  cannot  be  properly
applied as a ground for reexamination if it is merely used
as  evidence  of  alleged  prior  public  use  or  sale,
insufficiency of disclosure, etc. The prior >art< patent or
printed publication must be applied directly to claims under
35 U.S.C. 103 and/or an appropriate portion of 35 U.S.C. 102
or relate to the application of other prior >art< patents or
printed publications to claims on such grounds.

  The  statement  applying  the  prior  art  may,  where
appropriate, point out that claims in the patent for which
reexamination is requested are entitled only to the filing
date of the patent and are not supported by an earlier
foreign or United States patent application whose filing
date is claimed. ** >For example, the effective date of some
of the claims in a patent which resulted from a continuing
application under 35 U.S.C. 120 could be the filing date of
the continuing application since those claims were not
supported in the parent application. Therefore, intervening
patents or printed publications are available as prior art
under In re Ruscetta ,>255 F.2d 687,< 118 USPQ 101 (CCPA
1958),  In re van Langehhoven , 458 F.2d 132,173 USPQ 426
(CCPA 1972). See also MPEP § 201.11.<

  Under limited circumstances, e.g., where new or amended
claims are presented, double patenting may be raised in a
reexamination proceeding.

  The mere citation of new patents or printed publications
without  an  explanation  does  not  comply  with  37  CFR
1.510(b)(2). * >Requester must present an< explanation of
how the cited patents or printed publications are applied to
all  claims  which  *  requester  considers  to  merit
reexamination **. This not only sets forth the requester's
position to the Office, but also to the patent owner>(where
the patent owner is not the requester)<.

  Affidavits or declarations which explain the contents or
pertinent dates of prior patents or printed publications in
more detail may be considered in reexamination. See MPEP §
2258.

  ADMISSIONS

  **

  The consideration under 35 U.S.C. 303 of a request for
reexamination is limited to prior >art< patents and printed
publications. See Ex parte  McGaughey , 6 USPQ2d 1334, 1337
(Bd. Pat. App. & Inter. 1988). Thus an admission,  per se ,
may not be the basis for establishing a substantial new
question of patentability. However, an admission by the
patent owner of record in the file or in a court record may
be  utilized  in  combination  with  a  patent  or  printed
publication.

  ** >For handling of admissions during the examination
stage of a proceeding (i.e., after reexamination has been
ordered), see MPEP § 2258.<

  The admission can reside in the patent file (made of
record during the prosecution of the patent application) or
may be presented during the pendency of the reexamination

proceeding or in litigation. Admissions by the patent owner
as to any matter affecting patentability may be utilized to
determine  the  scope  and  content  of  the  prior  art  in
conjunction with patents and printed publications in a prior
art rejection, whether such admissions result from patents
or printed publications or from some other source. An
admission relating to any prior art (i.e., on sale, public
use, etc.) established in the record or in court may be used
by the examiner in combination with patents or printed
publications in a reexamination proceeding. The admission
must stand on its own. Information supplementing or further
defining the admission would be improper. Any admission
submitted by the patent owner is proper. A third party,
however, may not submit admissions of the patent owner made
outside the record >of the file< or the court >record<. Such
a submission would be outside the scope of reexamination.

2218  Copies of Prior Art

  It is required that a copy of each patent or printed
publication relied on or referred to in the request be filed
with the request (37 CFR 1.510(b)(3)). If any of the
documents are not in the English language, an English
language translation of all necessary and pertinent parts is
also required. An English language summary or abstract of a
non - English language document is usually not sufficient.

  It is also helpful to include copies of the prior art
considered during earlier prosecution of the patent for
which reexamination is requested. The presence of both the
old and the new prior art allows a comparison to be made to
determine  whether  a  substantial  new  question  of
patentability  is  indeed  present.  Copies  of  parent
applications  should  also  be  submitted  if  the  parent
application relates to the alleged substantial new question
of  patentability;  for  example,  if  the  patent  is  a
continuation - in - part and the question of patentability
relates to an In re Ruscetta , 255 F. 2d 687, 118 USPQ 101
(CCPA 1958) type rejection where support in the parent
application is relevant.

2219  Copy of Printed Patent

  The Patent and Trademark Office will prepare a separate
file wrapper for each reexamination request which will
become part of the patent file. Since in some instances, it
may not be possible to obtain the patent file promptly and
in order to provide a format which can be amended and used
for  printing,  requesters  are  required  under  37  CFR
1.510(b)(4) to include a copy of the entire specification
(including claims) and drawings of the patent for which
reexamination is requested in the form of a cut - up copy of
the original printed patent with only a single column of the
patent securely mounted or reproduced in permanent form on
one side of a sheet of paper. A copy of any disclaimer,
certificate  of  correction,  or  reexamination  certificate
issued in the patent must also be included so that a
complete history of the patent is before the Office for
consideration.  A  copy  of  any  Federal  court  decision,
complaint  in  a  pending  civil  action,  or  interference
decision should also be submitted.

2220  Certificate of Service

  If the requester is a person other than the patent

owner, the owner of the patent must be served with a copy of
the request in its entirety. The service should be made to
the correspondence address as indicated in 37 CFR 1.33(c).
The  name  and  address  of  the  person  served  and  the
certificate of service should be indicated on the request.

  The most recent address of the attorney or agent of
record can be determined by checking the Office's register
of patent attorneys and agents maintained by the Office of
Enrollment and Discipline pursuant to 37 CFR 10.5 and
10.11(a).  See  also  MPEP  §  2249  regarding  service  on
requester.

2221  Amendments Included in Request by Patent Owner

  Under 37 CFR 1.510(e), a patent owner may include a
proposed amendment with his or her request, if he or she so
desires. Any such amendment must be in accordance with 37
CFR 1.121(f). See MPEP § 2250. Amendments may also be
proposed by patent owners in a statement under 37 CFR 1.530
or during the actual ex parte reexamination prosecution (37
CFR 1.550(b)). See also MPEP § 2234 and § 2250.

  The request should be decided on the wording of the
claims without the amendments. The decision on the request
will be made on the basis of the patent claims as though the
amendment had not been presented. However, if the request
for reexamination is granted, the ex parte reexamination
prosecution should be on the basis of the claims as amended.

2222  Address of Patent Owner [R - 3]

 37 CFR 1.33.  Correspondence respecting patent
applications, reexamination proceedings, and other
proceedings.

  *****

  (c)  All  notices,  official  letters,  and  other
communications  for  the  patent  owner  or  owners  in  a
reexamination proceeding will be directed to the attorney or
agent of record (see § 1.34(b)) in the patent file at the
address listed on the register of patent attorneys and
agents maintained pursuant to § 10.5 and § 10.11 or, if no
attorney or agent is of record, to the patent owner or
owners at the address or addresses of record. Amendments and
other papers filed in a reexamination proceeding on behalf
of the patent owner must be signed by the patent owner, or
if there is more than one owner by all the owners, or by an
attorney or agent of record in the patent file, or by a
registered attorney or agent not of record who acts in a
representative capacity under the provisions of § 1.34(a).
Double correspondence with the patent owner or owners and
the patent owner's attorney or agent, or with more than one
attorney or agent, will not be undertaken. If more than one
attorney or agent is of record and a correspondence address
has not been specified, correspondence will be held with the
last attorney or agent made of record.

  *****

  >In<  37  CFR  1.33(c)  *>,  it  is  indicated<  which
correspondence address is to be normally used to direct
correspondence to the patent owner. In most instances, this
will be the address of the first named, most recent attorney

or agent >of record< in the patent file>,< at his or her
current address. As a general rule, the attorney - client
relationship terminates when the purpose for which the
attorney was employed is accomplished; e.g., the issuance of
a pa tent to the client. However, apart from the attorney -
client relationship, the Office has, by regulation, 37 CFR
10.23(c)(8),  made  it  the  responsibility  of  every
"practitioner,"  by  virtue  of  his/her  registration,  "to
inform a client or  former client ... of correspondence
received from the Office ... when the correspondence (*>i<)
could have a significant effect on a matter pending before
the Office, (ii) is received by the practitioner on behalf
of a client or former client, and (iii) is correspondence of
which a reasonable practitioner would believe under the
circumstances  the  client  or  former  client  should  be
notified."  (Emphasis  added.)  This  responsibility  of  a
practitioner to a former client manifestly is not eliminated
by withdrawing as an attorney of record. The practitioner if
he/she so desires, can minimize the need for forwarding
correspondence  concerning  issued  patents  by  having  the
correspondence address changed after the patent issues if
the correspondence address is the practitioner's address,
which frequently is the case where the practitioner is the
attorney of record.

  Further, 37 CFR 10.23(c)(8) requires a practitioner to
"timely notify the Office of an inability to notify a client
or former client of correspondence received from the Office"
(Emphasis  added.)  As  the  language  of  this  requirement
clearly indicates, the duty to notify the Office is a
consequence, not of any attorney - client relationship, but
rather arises by virtue of the practitioner's status as a
registered attorney or agent.

  If the patent owner desires that a different attorney or
agent receive correspondence, then a new power of attorney
must be filed. Correspondence will continue to be sent to
the attorney or agent of record in the patent file absent a
revocation of the same by the patent owner. If the attorney
or agent of record specifies a correspondence address to
which correspondence is to be directed, such direction
should  be  followed.  However,  since  a  change  in  the
correspondence  address  does  not  withdraw  a  power  of
attorney, a change of the correspondence address by the
patent owner does not prevent the correspondence from being
directed to the attorney or agent of record in the patent
file under 37 CFR 1.33(c).

  **>Submissions  to  the  Office  to  change  the
correspondence address or power of attorney in the record of
the patent should be addressed as follows:

  Where a request for reexamination has been filed and the
reexamination has not yet been assigned to an Examining
Group-

  Assistant Commissioner for Patents

  Box Reexam

  Washington D.C. 20231

  Where a request for reexamination has been filed and the
reexamination has already been assigned to an Examining
Group-

  Assistant Commissioner for Patents

  Washington D.C. 20231

  Where no request for reexamination has been filed and
the patent is in storage-

  Commissioner of Patents and Trademarks

  ATTN: Dissemination Support Division

  Washington D.C. 20231

  A sample form for changing correspondence address or
power of attorney is set forth below.

  CHANGE OF POWER OF ATTORNEY OR CORRESPONDENCE ADDRESS IN
  U.S. PATENT

 Address to:

 Assistant Commissioner for Patents

 Washington, D.C. 20231<

  To the Commissioner of Patents and Trademarks:

  In United States patent number ____, granted ____ to
____ (list first inventor) please make the following change:

  [ ] 1. Change the address of the attorney(s) of record
to: . .
. .

  [ ] 2. Change the correspondence address of the patent
owner to: . .
. . .

  [ ] 3. Add a power of attorney to >,< and address any
future correspondence to>,< the first named person below . .
. . .

 who I hereby appoint to transact all business in the Patent
and Trademark Office.

 who I hereby appoint to transact all business in the Patent
and Trademark Office.

  [ ] * 4. Remove all previous powers of attorney which I
hereby revoke and enter a power of attorney and address any
future correspondence to . .
. . .

  It is certified that the person whose signature appears
below has the authority to make the requested changes in the
patent. . .

 . .  . .

  Date Authorized Signature

  [ ] Attorney/Agent Reg. No. 

  [ ] Patent Owner

 *Requires signature of patent owner.

2223  Withdrawal of Attorney or Agent [R - 3]

  *>A< request by an attorney or agent of record to
withdraw from a patent will normally * be approved >only< if
at least 30 days remain in any running period for response.
See also MPEP § 402.06.

2224  Correspondence [R - 3]

 37 CFR 1.1.  **>Addresses for correspondence with the
Patent and Trademark Office<

  (a)  **>Except  for  §  1.1(a)(3)  (i)  and  (ii),  all
correspondence intended for the Patent and Trademark Office
must be addressed to either "Commissioner of Patents and
Trademarks, Washington, D.C. 20231" or to specific areas
within the Office as set out in paragraphs (a)(1), (2) and
(3)(iii) of this section. When appropriate, correspondence
should also be marked for the attention of a particular
office or individual.

  (1) Patent correspondence . All correspondence concerning
patent matters processed by organizations reporting to the
Assistant Commissioner for Patents should be addressed to
"Assistant  Commissioner  for  Patents,  Washington,  D.C.
20231."<

  *****

  (c) Requests for reexamination should be additionally
marked "Box Reexam."

  *****

  All requests for reexamination mailed to the Patent and
Trademark Office should be additionally marked "Box Ree
xam." on the face of the outer envelope. Such mail ** will
be sorted out immediately and processed by the Reexamination
Preprocessing * >staff<. The use of "Box Reexam" is limited
to the filing of the original request for reexamination.
Subsequent correspondence should not be marked "Box Reexam."
It should be directed to the examining group art unit
indicated on the Office letters. Any correction or change of
correspondence address for a United States patent should be
addressed to the Office at Box "Pa tent Address Change."

  A request for reexamination may not be sent by facsimile
transmission. See 37 CFR 1.6(d)(5).

  *>After the filing of the request for reexamination, any
letters< sent to the Patent and Trademark Office relating to
a reexamination proceeding should identify the proceeding by
the number of the patent undergoing reexamination, the
reexamination request control number assigned, examining
group  art  unit,  and  the  name  of  the  examiner.  The
certificate of mailing *>and transmission procedures< (37
CFR 1.8) and "Express Mail" **>mailing procedure< (37 CFR
1.10) may be used to file any paper in *>an existing<
reexamination proceeding.

  Communications from the Patent and Trademark Office to
the patent owner will be directed to the first named, most

recent attorney or agent of record in the patent file at the
current address on the Office's register of patent attorneys
and agents or to the patent owner's address if no attorney
or agent is of record, 37 CFR 1.33(c).

  Amendments and other papers filed on behalf of patent
owners  must  be  signed  by  the  patent  owners,  or  the
registered attorney or agent of record in the patent file,
or  any  registered  attorney  or  agent  acting  in  a
representative capacity under 37 CFR 1.34(a). See MPEP §
2213.

  Double correspondence with the patent owners and the
attorney or agent normally will not be undertaken by the
Office.

  Where no correspondence address is otherwise specified,
correspondence will be with the most recent attorney or
agent made of record >by the patent owner<.

  Note MPEP § 2220 on certificate of service.

2225  Untimely Paper Filed Prior to Order [R - 3]

  After filing of a request, no papers other than (1)
citations of patents or printed publications under 37 CFR
1.501; (2) another complete request under 37 CFR 1.510; or
(3) notifications pursuant to MPEP § 2282, should be filed
with the Office ** prior to the date of the decision on the
request for reexamination. Any papers other than those under
37 CFR 1.501 or 1.510 or MPEP § 2282 filed prior to the
decision on the request will be returned to the sender by
the **>Group Director< without consideration. A copy of the
letter accompanying the returned papers will be made of
record in the patent file. However, no copy of the returned
papers will be retained by the Office. If the submission of
the returned papers is appropriate later in the proceedings,
they will be accepted by the Office at that time. See In re
Amp Inc. , 212 USPQ 826 (Comm'r Pat. 1981); In re Knight ,
217 USPQ 294 (Comm'r Pat.1982) and Patlex Corporation  v.
Mossinghoff ,>771 F.2d 480,< 226 USPQ 985, 989 (Fed. Cir.
1985).

2226  Initial Processing of Request [R - 3]

 ,< and all initial clerical processing of requests for
reexamination>,< will be performed by the Reexamination
Preprocessing *>staff< in the Office of **>Initial Patent
Examination (OIPE).<

2227  Incomplete Request [R - 3]

 37 CFR 1.510.  Request for reexamination

  *****

  (c)  If  the  request  does  not  include  the  fee  for
requesting reexamination or all of the parts required by
paragraph (b) of this section, the person identified as
requesting reexamination will be so notified and given an
opportunity to complete the request within a specified time.
If the fee for requesting reexamination has been paid but
the defect in the request is not corrected within the
specified  time,  the  determination  whether  or  not  to
institute reexamination will be made on the request as it

then exists. If the fee for requesting reexamination has not
been paid, no determination will be made and the request
will be placed in the patent file as a citation if it
complies with the requirements of § 1.501(a).

  (d) The filing date of the request is: (1) the date on
which the request including the entire fee for requesting
reexamination  is  received  in  the  Patent  and  Trademark
Office; or (2) the date on which the last portion of the fee
for requesting reexamination is received.

  *****

  If the required fee under 37 CFR 1.20(c) is not paid in
full, the request is considered to be incomplete, 37 CFR
1.510(c), and will not be considered on its merits or have a
notice of its filing announced in the Official Gazette . The
request is considered to have a "filing date" under 37 CFR
1.510(d) only when the entire fee is paid. >Until the entire
fee is received, no control number or filing date will be
assigned and technically, no reexamination exists.<

  If no fee >is received<, or only a portion of the fee is
received, the Reexamination Preprocessing *>staff of OIPE<
will notify the requester of the defect and give the
requester a specified time, normally 1 month, to complete
the request. >This notice does not enter the system.< A
telephone call may also be made to the requester indicating
the amount of the insufficient fee. If the request is not
timely completed, any partial fee will be returned **>by the
OIPE  to  the  requester  along  with  a  notice  that  the
reexamination request has not been accepted and the process
has been terminated. The< request >itself< will be treated
as  a  citation  under  37  CFR  1.501(a)  if  it  complies
therewith. >If the request does not comply with 37 CFR
1.501(a), the request papers will also be returned to the
requester by OIPE.<

2228  Informal Request [R - 3]

  If the fee under 37 CFR 1.20(c) has been paid, but the
request does not contain all the elements called for by 37
CFR 1.510(b), the request is considered to be informal. All
requests which are accompanied with the entire fee will be
assigned a filing date from which the 3 - month period for
making a decision on the request will be computed. Notice of
filing of all complete requests will be published in the
Official Gazette , approximately 4 - 5 weeks after filing.

  The Reexamination Preprocessing >staff of OIPE< will
attempt to notify the requester of any informality in the
request in order to give the requester time to respond
before a decision is made on the request. If the requester
does not respond and correct the informality, the decision
on the request will be made on the information presented. If
the information presented does not present "a substantial
new  question  of  patentability,"  the  request  for
reexamination will be denied.

2229  Notice of Request in Official Gazette  [R - 3]

 37 CFR 1.11.  Files open to the public

  *****

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

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

  *****

  Under  37  CFR  1.11(c),  reexamination  requests  with
sufficient fees and any Commissioner initiated orders made
without a request will be announced in the Official Gazette
. The Reexamination Preprocessing *>staff of OIPE< will
complete a form with the information needed to print the
notice. The forms are forwarded at the end of each week to
the Office of Publications for printing in the Official
Gazette .

  In addition, a record of requests filed will be located
in  the  Public  Search  Room  and  in  the  Reexamination
Preprocessing *>area of OIPE<. Office personnel may use the
PALM system to determine if a request for reexamination has
been filed in a particular patent. The Official Gazette
notice will appear in the notice section of the  Official
Gazette under the heading of Reexamination Requests Filed
and will include the name of any requestor along with the
other items set forth in 37 CFR 1.11(c).

2230  Constructive Notice to Patent Owner

  In some instances, it may not be possible to deliver
mail to the patent owner because no current address is
available. If all efforts to correspond with the patent
owner  fail,  the  reexamination  proceeding  will  proceed
without the patent owner. The publication in the Official
Gazette of the notice of the filing of a request or the
ordering  of  reexamination  at  the  initiative  of  the
Commissioner will serve as constructive notice to the patent
owner in such an instance.

2231  Processing of Request Corrections [R - 3]

  Any payment of insufficient request filing fee should be
marked  "Box  Reexam"  so  that  the  fee  may  be  promptly
forwarded to the Reexamination Preprocessing *>area of the
Office<. If the fee payment completes the payment of the
required fee, the request will be processed, notice will be
published in the Official Gazette, and the request will be
forwarded  to  the  appropriate  examining  group  for
determination.

  Any correction of a defect other than the fee should be
directed to the examining group where the file is located>,
after the reexamination has been assigned to an examining

group<. The group clerical personnel >will< process any
timely corrections and enter them in the file of the
reexamination.

2232  Public Access [R - 3]

  The reexamination folders will be stored in a separate
central location (or other designated storage area) in the
patent examining group unless being acted upon by the
examiner or a communication is being processed by the group
clerical personnel. In view of the *>desire< to conduct the
reexamination  proceeding  with  special  dispatch,  the
reexamination folder may NOT be available to the public when
it is in the Reexamination Preprocessing *>area of OIPE<,
and when the examiner has started consideration of some
matter until an action is mailed. However, all areas should
be as reasonable as possible in allowing access and copying
of the file. At times other than those identified above, the
reexamination file will be made available to members of the
public upon request. Inspection will be permitted in the
patent examining group. If a copy of the file is requested,
it may be ordered from the Certification ** Division >of the
Office of Public Records (OPR),< or the file wrapper may be
hand - carried by a member of the group to the Record Room
and left with a member of the Record Room staff. The file
will be dispatched by using PALM transaction 1034 - 921. A
charge  card  PTOL  -  472  will  be  stapled  to  the  file
identifying  the  Reexamination  Control  Number,  Art  Unit
Number, **>the< name >of the appropriate group staff person<
and phone number.

  A member of the Record Room staff should call the
**>appropriate  Group  staff  person<  when  copying  is
completed, and the file can then be retrieved by a member of
the group. The group should maintain a tickler record of the
location of the file wrapper by some system.

  Similar procedures should be utilized in the event that
an associated patent file is requested for inspection and/or
copying.  Access  to  the  patent  file  wrapper  should  be
restricted only when the examiner is preparing an action in
the reexamination folder which requires consideration of the
patent file.

 **  Double Click here to see the image  **

  Sale of Copies of Reexamination Requests

  Copies of reexamination requests, all cited references,
and the file wrapper and contents of the patent file for
which  reexamination  is  requested  are  available  at  the
standard charge per page. Orders for such copies must
indicate  the  control  number  assigned  the  reexamination
request. Orders should be addressed ** >as follows: Box 10<
Commissioner of Patents and Trademarks, Washington, D.C.
20231, Attention: **>Certification Division of OPR<.

  TO DETERMINE ON PALM IF A REEXAMINATION REQUEST HAS BEEN
 FILED FOR A GIVEN PATENT NUMBER

  Assume Patent Number Is 4104156

  -Clear PALM Terminal

  -Key In: 3110 and Press Send

  -When Screen Fills

  Enter: PAT NO. 4104156 (In Family Name)

  Press: TAB

  Enter: $ (In Given Name)

  Press: TAB

  Enter: Y

  Press: *>TRANSMIT<

  Any reexamination for the patent number will be listed
on the return screen.

  There will be about a ten (10) day lag between filing
and data entry.

2233  Processing in Examining Group [R - 1]

  Each examining group has designated at least one **
>legal instrument examiner< and one backup clerk to act as *
>a< reexamination clerk and has assigned to that person
those clerical duties and responsibilities which are unique
to reexamination. * >Regular< docket clerks will still
perform their normal duties and responsibilities in handling
papers and records during the actual reexamination process.
The reexamination clerk has sole responsibility for clerical
processing until such time as the request is either granted
or denied. If a request is granted, the responsibility for
all docket activities relating to ex parte examination is
assigned to the regular ** >legal instrument examiner. A
Group may designate all of its legal instrument examiners as
reexamination clerks. The Group Special Program Examiner and
Paralegal will have the responsibility to oversee clerical
processing and will serve as a resource for questions.<

 FEES

  Under reexamination, there are no fees due other than
for the request and any appeal, brief, and oral hearing fees
under 37 CFR 1.191, 1.192 and 1.194(b). No fees are required
for additional claims added or for issue of the certificate.
Any petitions filed under 35 U.S.C. 133 or 37 CFR 1.182 or
1.183 relating to a reexamination proceeding require fees
(37  CFR1.17(h)  and  (l)).  Small  entity  reductions  are
available to the patent owner for the 35 U.S.C. 133, appeal,
brief, and oral hearing fees. Small entity reductions in
fees are not available for the reexamination filing fee nor
for petition fees for petitions filed under 37 CFR 1.182 and
1.183. When a fee is required in a merged proceeding, only a
single fee is needed even though multiple copies of the
submissions (one for each file) are required.

  MAILING

  A transmittal form with the requester's address will be
used to forward copies of Office actions to the requester.
Whenever an Office action is issued, a copy of this form
will be made and attached to a copy of the Office action.
The use of this form removes the need to retype the

requester's address each time a mailing is required. When
the patent owner is the requester, no such form is needed.

  The following steps should be taken when processing
reexamination requests in the examining groups.

  (1)  Report receipt of the reexamination file in
the group on the PALM terminal and forward the file to the
group's reexamination clerk.

  (2)  Date stamp the date of receipt in the group on
the reexamination file.

  (3) Charge  file  to  the  supervisory  primary
examiner  of  the  group  art  unit  indicated  on  the
reexamination file on the PALM terminal and forward the file
to the supervisory primary examiner.

  (4) The  supervisory  primary  examiner  promptly
reviews  the  subject  matter  of  the  patent  in  which
reexamination was requested and either transfers the request
file (which should rarely occur) or assigns it to a primary
examiner. The primary examiner is informed and the request
file is returned to the group's reexamination clerk for
entry of the examiner's name into PALM.

  (5)  At about 6 weeks after the filing of the
request, the request file should be given to the examiner
and charged to him or her on PALM.

  (6)  The primary examiner then drafts a decision on
the request and returns it to be typed on a "special" basis,
normally within 8 weeks after the filing date of the
request.

  (7)  The typed decision is forwarded to the primary
examiner for signature. After signing, the file is returned
to the group clerical unit for mailing and PALM update,
normally within 10 weeks after the filing date of the
request.

  The initial reexamination files were regular patent
application files which had orange tape applied to the face.
The current reexamination file wrappers have an orange color
for easy identification.

2234  Entry of Amendments [R - 3]

 37 CFR 1.121.  Manner of making amendments.

  *****

  (f) Proposed amendments presented in patents involved in
reexamination proceedings must be presented in the form of a
full copy of the text of: (1) Each claim which is amended
and (2) each paragraph of the description which is amended.
Matter deleted from the patent shall be placed between
brackets and matter added shall be underlined. Copies of the
printed  claims  from  the  patent  may  be  used  with  any
additions being indicated by carets and deleted material
being placed between brackets. Claims must not be renumbered
and the numbering of the claims added for reexamination must
follow the number of the highest numbered patent claim. No
amendment may enlarge the scope of the claims of the patent.
No new matter may be introduced into the patent.

  Amendments which comply with 37 CFR 1.121(f) are entered
in the reexamination file wrapper. An amendment is given a
Paper No. and is designated by consecutive letters of the
alphabet (A, B, C, etc.).

  The amendment will be entered by drawing a line in red
ink  through  the  claim(s)  or  paragraph(s)  canceled  or
amended,  and  the  substituted  copy  being  indicated  by
reference letter. Claims must not be renumbered and the
numbering of the claims added during reexamination must
follow the number of the highest numbered patent claim.

  ALL amendments in reexamination proceedings must be
presented in the form of a full copy of the text of each
claim which is amended and each paragraph of the description
which is amended.

  If a portion of the text is amended more than once, each
amendment should indicate ALL of the changes (insertions and
deletions) in relation to the current text of the patent
under reexamination.

  **

  Although amendments will be entered for purposes of
examination, the amendments are not legally effective until
the certificate is issued.

  See MPEP § 2250 for manner of making amendments by
patent owner >and for examples of proper claim amendment
format. For clerical handling of amendments, see MPEP §
2270<. See also MPEP § 2221 >for amendments included in the
request by the patent owner<. For entry of amendments in a
merged proceeding>,< see MPEP § 2283 and § 2285.

2235  Record Systems

  PALM - MONITORING SYSTEMS

  The Patent Access and Location Monitoring (PALM) system
is used to support the reexamination process. The sections
below delineate PALM related activities.

  (1) Reexamination File Data on PALM  - The routine PALM
retrieval  transactions  are  used  to  obtain  data  on
reexamination  files.  The  user  keys  in  the  retrieval
transaction code (2952, 2962, etc.) the reexamination series
code (90) and the reexamination control number. Almost all
data displayed for reexamination files has the same meaning
as for regular patent applications. Two changes should be
noted. In the first named applicant location (normally upper
left corner, abbreviation APPL) the patent number being
reexamined will a ppear for reexamination files. For a
patent undergoing reexamination the number of the proceeding
can  be  determined  on  the  2953  retrieval  screen.  The
pertinent  reexamination  number(s)  will  appear  in  the
"Details" section of the screen as a six digit number
preceded by an "R". If no "R" number is present then no
reexamination has been filed.

  (2) Reexamination File Location Control - The location of
a reexamination file is monitored in the same manner as
regular patent application files. All PALM transactions are
equally  applicable  to  regular  patent  applications  and

reexamination files.

  (3) Patent File Location Control - The movement of patent
files related to requests for reexamination throughout the
Office is monitored by the PALM system in the normal
fashion. Within the groups, the reexamination file and
patent file will be kept together, from initial receipt
until the reexamination is assigned to an examiner for
determination. At this point, the patent file will be
charged to the examiner assigned the reexamination file (use
transaction 1036) and will be kept in the examiner's room
until the proceeding is terminated. After the reexamination
proceeding has been terminated, the patent file should be
forwarded with the reexamination file to the Office of
Publications via the appropriate office. Publishing Division
will forward the patent file and the reexamination file to
the Record Room after printing of the certificate.

  (4) Reporting Events to PALM - The PALM system is used to
monitor  major  events  that  take  place  in  processing
reexamination proceedings. During initial processing all
major pre - ex parte examination events are reported. During
the ex parte phase the mailing of examiner's actions are
reported as well as owner's responses thereto. The group
reexamination  clerk  is  responsible  for  reporting  these
events using the bar code reader (BCR) initiated 2920
cathode - ray tube (CRT) update screen display. The events
that will be reported are as follows:

  Determination  Mailed  -  Denial  of  request  for
reexamination.

  Determination  Mailed  -  Grant  of  request  for
reexamination.

  Petition for reconsideration of determination received.

  Decision on petition mailed - Denied.

  Decision on petition mailed - Granted.

  Owner response to determination received.

  Requester response to determination received.

  The mailing of all examiner actions.

  The receipt of owner's responses to examiner's actions
and Office receipt date.

  Each of these events, as well as additional events
reported by the Reexamination Preprocessing Unit will be
permanently recorded and displayed in the "Contents" portion
of PALM. In addition, status representative of these events
will also be displayed.

  (5) Status Reports - Various weekly "tickler" reports can
be generated for each group given the event reporting
discussed above. The primary purpose of these computer
outputs is to assure that reexaminations are, in fact,
processed with "special dispatch."

  PALM Reports - A number of automated reports generated
from the PALM system are provided to the groups at the
beginning of each week. These reports serve to indicate to

the groups when certain deadlines are approaching. Each
report is subdivided by group and lists the requests in
control number sequence. The following reports have been
identified.

  Requests Not Yet Received in Group - This report serves
to indicate to a group those requests assigned to it for
which preprocessing has not been completed and which have
not yet been received in the group. This report provides an
indicator  of  future  workload  as  well  as  identifying
potential, problem stragglers.

  Requests Not Yet Assigned to an Examiner - This report
serves to highlight those requests which have not been
assigned to an examiner by the 6 - week anniversary of their
fi ling. Requests appearing on this report should be located
and docketed immediately.

  Requests Which Should Be Taken Up for Determination -
This report lists those requests which have been assigned to
an examiner and in which no determination has been mailed
and the 6 - week anniversary of their filing is past.
Requests on this report should be taken up for determination
by the examiner.

  Requests for Which Determinations Should be Prepared  -
This report lists those requests which have been assigned to
an examiner and in which no determination has been mailed
and the 2 - month anniversary of their filing is past.
Determinations for requests on this report should be in the
final stages of preparation.

  *Requests for Which Determinations Should Have Been
Mailed - This report lists those requests which have been
assigned to an examiner and in which no determination has
been mailed and the 10 - week anniversary of their filing is
past. Determinations for requests on this report should be
mailed immediately.

  *Overdue  Determinations  -  This  report  lists  those
requests in which no determination has been mailed and the 3
- month anniversary of their filing is past. This report
should always be zero.

  Overdue Petitions for Reconsideration of a Denial - This
report lists those requests in which the determination
denied reexamination and no petition has been received and 6
weeks  have  passed  since  the  determination  was  mailed.
Requests on this report should be terminated.

  Overdue Owner Responses to Determinations - This report
lists those requests in which the determination ordered
reexamination and the owner has not filed a response and 10
weeks have passed since the mailing of the determination.
These requests should be taken up for immediate ex parte
action by the examiner.

  Overdue Requester Responses to Statements - This report
lists those requests in which a proper OWNER statement was
received and NO requester reply has been received and 10
weeks have passed since the receipt of the owner response.
These requests should be taken up for immediate action.

  *Overdue First Ex Parte Actions - This report lists
those requests in which reexamination has been ordered and a

first action has not been mailed and 6 weeks have passed
since the request became available for ex parte prosecution.
These requests should be taken up for immediate action by
the examiner.

  *Overdue Action or Examiner's Answer - This report lists
those reexaminations which are up for second or subsequent
action by the examiner and no such action has been mailed
and 2 months have passed since the filing of an owner
response to a previous action.

  *Overdue Advisory Action - This report lists those
reexaminations which are up for action by the examiner and
no such action has been mailed and 1 month has passed since
the filing of an owner response to a previous final action.

  *Overdue Owner Response - This report lists those
requests in which there has been an action rendered and 4
months have passed without an owner response.

  *Overdue Certificates - This report lists those requests
in which a Notice of Intent to Issue a Reexamination
Certificate has been mailed and 3 months have passed since
its mailing and no issue date has been assigned.

  *Requests With Prolonged Prosecution - This report lists
pending requests which have not matured into a certificate
and 15 months have passed since the date of filing.

  *Asterisk items require immediate action and followup,
if appropriate.

  (6)  Historical  Reporting  -  A  variety  of  historical
reports are possible given the event recording described
above. Thus, such statistics as the number of requests filed
and determinations made in a specified period or number or
kind of reexaminations in which an appeal was filed can be
made available.

2236  Assignment of Reexamination

  Reexamination requests should normally be assigned to
the art unit which examines the class and subclass in which
the patent to be reexamined is currently classified as an
original and to the primary examiner most familiar with the
claimed subject matter of the patent. Where no knowledgeable
primary examiner is available, the reexamination may be
assigned to an assistant examiner. In such an instance the
supervisory primary examiner must sign all actions and take
responsibility for all actions taken.

2237  Transfer Procedure [R - 3]

  Although the number of reexamination requests which must
be  transferred  should  be  very  small,  the  following
procedures  have  been  established  for  an  expeditious
resolution of any such problems.

  No transfer inquiry forms (PTO - 447A) should be used in
reexamination  situations.  All  reexamination  requests  in
which a transfer is desired must be hand - carried with the
patent file by the supervisory primary examiner to the
supervisory primary examiner of the group art unit to which
a transfer is desired. Any conflict which cannot be resolved
by the supervisory primary examiners will be resolved by the

**>Group Directors< involved.

  If the reexamination request is accepted in the "new"
art unit, the "new" supervisory primary examiner assigns the
request  to  an  examiner>,<  and  the  "new"  group's
reexamination clerk PALMs in the request. >In addition, the
Offices of the Special Program Examiner for both groups must
be notified of the transfer by the respective supervisory
primary examiners.<

2238  Time Reporting

  A. Clerical time reporting

  Both the Program Management System (PMS) and Payroll
systems now used to monitor clerical time have been modified
to  report  reexamination  activities.  Time  devoted  to
processing actual reexamination files in the groups should
be reported using the appropriate PMS Code and Project Code.
It should be noted that all clerical time consumed by
reexamination activities must be reported in the above
manner. Such activities as supervision, copying, typing, and
docketing should be included.

  B. Professional time reporting

  Reexamination fees are based on full cost recovery and
it is essential that all time expended on reexamination
activities  be  reported  accurately.  Thus,  directors,
supervisory patent examiners and board members as well as
examiners should report time spent on reexamination on their
individual Time and Attendance Report using the following
Project Codes:

  119051 - Used to report all activities related to a
specific reexamination proceeding up until the time ex parte
prosecution is begun.

  119052 - Used to report all activities related to a
specific reexamination proceeding from the time it is taken
up for first, ex parte , action until the issuance of a
certificate takes place.

  Examiners and SPE's will use the above codes to report
their time for reexamination activities on the Examiner's
Biweekly Time Worksheet (PTO - 690E) by making appropriate
entries in the Item 16 space.

  Time reported using codes 119051 and 119052 will also be
reported in the Examiner Production System as "Other" time.

2239  Reexamination Ordered at the Commissioner's
Initiative

 37 CFR 1.520.  Reexamination at the initiative of the
Commissioner.

  The Commissioner, at any time during the period of
enforceability of a patent, may determine whether or not a
substantial new question of patentability is raised by
patents or printed publications which have been discovered
by the Commissioner or which have been brought to the
Commissioner's  attention  even  though  no  request  for
reexamination has been filed in accordance with § 1.510. The
Commissioner may initiate reexamination without a request

for reexamination pursuant to § 1.510. Normally requests
from outside the Patent and Trademark Office that the
Commissioner undertake reexamination on his own initiative
will  not  be  considered.  Any  determination  to  initiate
reexamination under this section will become a part of the
official file of the patent and will be given or mailed to
the patent owner at the address as provided for in §
1.33(c).

  The Commissioner may initiate reexamination without a
request being filed and without a fee being paid. Such
reexamination may be ordered at any time during the period
of enforceability of the patent.

  The  decision  to  order  reexamination  at  the
Commissioner's initiative is normally made by the Deputy
Assistant Commissioner for Patents after a review of all the
facts  concerning  the  patent.  It  may  be  made  by  the
Commissioner of Patents and Trademarks, Deputy Commissioner
or Assistant Commissioner for Patents. The number of such
Commissioner initiated orders is expected to be very small.

  If an Office employee becomes aware of an unusual fact
situation in a patent which he or she considers to clearly
warrant reexamination, a memorandum setting forth these
facts along with the patent file and any prior art patents
or printed publications should be forwarded to the Deputy
Assistant Commissioner for patents through the supervisory
chain of command.

  If an order to reexamine is to be issued, the decision
is prepared and signed by the Deputy Assistant Commissioner
for Patents, and the patent file is forwarded to the
Reexamination Preprocessing Unit for preparation of the
reexamination file and Official Gazette notice.

  The decision to order reexamination made in the Office
of the Deputy Assistant Commissioner for Patents is NOT
mailed by that Office. The Reexamination Preprocessing Unit,
once the reexamination file has been prepared and the
Control Number assigned, will mail the decision letter to
the patent owner. Prosecution will then proceed without
further communication with anyone but the owner.

  If the Deputy Assistant Commissioner for Patents refuses
to issue an order for reexamination, no record of any
consideration of the matter will be placed in the patent
file and the patent owner will not be notified.

  The Commissioner will not normally consider requests to
order  reexamination  at  the  Commissioner's  initiative
received from members of the public. If a member of the
public desires reexamination, a request and fee should be
filed in accordance with 37 CFR 1.510.

2240  Decision on Request

 35 U.S.C. 303  .  Determination of issue by
Commissioner.

  (a) Within three months following the filing of a request
for reexamination under the provisions of section 302 of
this  title,  the  Commissioner  will  determine  whether  a
substantial new question of patentability affecting any
claim of the patent concerned is raised by the request, with

or  without  consideration  of  other  patents  or  printed
publications. On his own initiative, and any time, the
Commissioner  may  determine  whether  a  substantial  new
question  of  patentability  is  raised  by  patents  and
publications discovered by him or cited under the provisions
of section 301 of this title.

  (b) A record of the Commissioner's determination under
subsection (a) of this section will be placed in the
official file of the patent, and a copy promptly will be
given or mailed to the owner of record of the patent and to
the person requesting reexamination, if any.

  (c) A determination by the Commissioner pursuant to
subsection (a) of this section that no substantial new
question of patentability has been raised will be final and
nonappealable. Upon such a determination, the Commissioner
may refund a portion of the reexamination fee required under
section 302 of this title.

 37 CFR 1.515.  Determination of the request for
reexamination.

  (a) Within three months following the filing date of a
request for reexamination, an examiner will consider the
request and determine whether or not a substantial new
question of patentability affecting any claim of the patent
is raised by the request and the prior art cited therein,
with or without consideration of other patents or printed
publications. The examiner's determination will be based on
the claims in effect at the time of the determination and
will become a part of the official file of the patent and
will be given or mailed to the patent owner at the address
as provided for in § 1.33(c) and to the person requesting
reexamination.

  (b) Where no substantial new question of patentability
has been found, a refund of a portion of the fee for
requesting reexamination will be made to the requester in
accordance with § 1.26(c).

  (c) The requester may seek review by a petition to the
Commissioner under § 1.181 within one month of the mailing
date of the examiner's determination refusing reexamination.
Any such petition must comply with § 1.181(b). If no
petition is timely filed or if the decision on petition
affirms that no substantial new question of patentability
has been raised, the determination shall be final and
nonappealable.

  Prior to making a determination on the request for
reexamination,  the  examiner  must  request  a  litigation
computer search by the STIC (Scientific Library) to check if
the patent has been, or is, involved in litigation. The
"Litigation Review" box on the reexamination file wrapper
should  be  completed  to  indicate  that  the  review  was
conducted and the results thereof. A copy of the STIC search
should be hole - punched and placed on the right side of the
reexamination file. Additional information or guidance as to
the litigation search may be obtained from the library of
the Office of the Solicitor, if necessary. If the patent is
or was involved in litigation, and a paper referring to the
court proceeding has been filed, reference to the paper by
number should be made in the "Litigation Review" box as
"litigation; see paper #1C". If a litigation records search

is already noted on the file, the examiner need not repeat
or update it.

  If litigation has concluded or is taking place in the
patent on which a request for reexamination has been filed,
the request must be promptly brought to the attention of the
Group Director, who should review the decision on the
request and any examiner's action to ensure it conforms to
the current Office litigation policy and guidelines. See
MPEP § 2286.

  35 U.S.C. 303 requires that the Commissioner determine
whether or not a "substantial new question of patentability"
affecting any claim of the patent of which reexamination is
desired, is raised in the request within a time period of 3
months following the filing date of a request. See also MPEP
§ 2241. Such a determination may be made with or without
consideration of other patents or printed publications in
addition to those cited in the request. No input from the
patent owner is considered prior to the determination unless
the patent owner filed the request. See Patlex Corporation
v. Mossinghoff , 226 USPQ 985 (Fed, Cir. 1985).

  The claims in effect at the time of the determination
will be the basis for deciding whether a substantial new
question  of  patentability  has  been  raised.  (37  CFR
1.515(a)). Amendments which have been presented with the
request if by the patent owner or which have been filed in a
pending reexamination proceeding in which the certificate
has not been issued, or amendments which have been submitted
in a reissue application on which no reissue patent has been
issued, will not be considered or commented upon when
deciding requests.

  The decision on the request for reexamination has as its
main object either the granting or denial of an order for
reexamination. This decision is based on whether or not "a
substantial new question of patentability" is found. The
final decision as to unpatentability will be made during any
reexamination proceedings. Accordingly no prima facie case
of unpatentability need be found to grant an order for
reexamination. It must be noted, however, that a decision to
deny an order for reexamination is equivalent to a holding
that the patent claims are patentable over the cited prior
art. Where there have been prior decisions relating to the
patent, see MPEP § 2242.

  It is only necessary to establish that a substantial new
question of patentability exists as to one of the patent
claims to order reexamination. In a reexamination, normally
all patent claims will be reexamined. However, where there
has been a prior Federal court decision as to some claims,
see MPEP § 2242. The decision should discuss ALL patent
claims in order to inform the patent owner of the examiner's
position so that a response thereto may be made in the
patent owner's statement.

  The examiner should indicate, insofar as possible, his
or her initial position on all the issues identified in the
request or by the requester so that comment thereon may be
received  in  the  patent  owner's  statement  and  in  the
requester's reply. However, the examiner SHOULD NOT reject
claims in the order for reexamination.

  The Commissioner of Patents and Trademarks has the

authority to order reexamination only in those cases which
raise a substantial new question of patentability. The
substantial  new  question  of  patentability  requirement
protects patentees from having to respond to, or participate
in  unjustified  reexaminations,  Patlex  Corporation  v.
Mossinghoff , 226 USPQ 985, 989 (Fed. Cir. 1985).

  SECOND OR SUBSEQUENT REQUEST FILED DURING REEXAMINATION

  If a second or subsequent request for reexamination is
filed (by any party) while a reexamination is pending, the
presence of a substantial new question of patentability
depends on the prior art cited by the second or subsequent
requester. If the requester includes in the second or
subsequent request prior art which raised a substantial new
question in the pending reexamination, reexamination should
generally be ordered. This is because the prior art which
raised a substantial new question of patentability resulting
in  an  order  for  reexamination  continues  to  raise  a
substantial new question of patentability until the pending
reexamination  is  concluded.  However,  in  aggravated
situations  where  it  appears  clear  that  the  second  or
subsequent request was filed for purposes of harassment, the
request should be denied. The grant of such a request would
unduly prolong the conclusion of the pending reexamination
and be inconsistent with the requirement that reexamination
proceeding be conducted with special dispatch. If the second
or subsequent requester does not include the prior art which
raised a substantial new question of patentability in the
pending reexamination, reexamination may or may not be
ordered depending on whether the different prior art raises
a substantial new question of patentability. The second or
subsequent request should be determined on its own merits
without reference to the pending reexamination.

  Where a reexamination is pending at the time a second or
subsequent request for reexamination is to be decided, see
MPEP § 2283.

2241  Time for Deciding Request [R - 3]

  The determination whether or not to reexamine must be
made within 3 months following the filing date of a request.
See 35 U.S.C. 303(a) and 37 CFR 1.515(a). The examiner
should pick up a request for decision about 6 weeks after
the request was filed. The decision should be mailed within
10 weeks of the filing date of the request. >Where there is
a prior reexamination pending for the same patent and
reexamination  has  already  been  ordered  for  that
reexamination, the examiner should immediately pick up the
new request for decision, i.e., there should be no delay of
6 weeks. See the last portion of MPEP § 2240 and also see
MPEP  §  2283  for  multiple  copending  reexamination
proceedings.< A determination to reexamine may be made ** at
any time during the period of enforceability of a patent. **

2242  Criteria for Deciding Request [R - 3]

 SUBSTANTIAL NEW QUESTION OF PATENTABILITY

  The presence or absence of "a substantial new question
of patentability" determines whether or not reexamination is
ordered. The meaning and scope of the term "a substantial
new question of patentability" is not defined in the statute
and must be developed to some extent on a case - by - case

basis >, using the case law to provide guidance as will be
discussed in this section<. If the prior art patents and
printed publications raise a substantial * question of
patentability of at least one claim of the patent, then a
substantial new question of patentability is present, unless
** the same question of patentability has already been
decided by (1) a final holding of invalidity by a Federal
Court>,<  or  (2)  by  the  Office  either  in  >a  previous
examination of the patent. A "previous examination of the
patent" is:< the original examination >of the application
which matured into the patent<, the examination *>in< a
reissue >application that has resulted in a reissue of the<
patent, or an earlier concluded reexamination. The answer to
the question of whether a "substantial new question of
patentability" exists, and therefore whether reexamination
may be had, is decided by the Commissioner, and, as 35
U.S.C. 303 provides, that determination is final, i.e., not
subject to appeal >on the merits of the decision<. See In re
Etter ,>756 F.2d 852,< 225 USPQ 1 (Fed. Cir. 1985).

  A prior art patent or printed publication raises a
substantial * question of patentability where there is a
substantial likelihood that a reasonable examiner would
consider  the  prior  art  patent  or  printed  publication
important  in  deciding  whether  or  not  the  claim  is
patentable. **>In< making the determination on the request,
the examiner should consider the prior art patents and/or
printed  publications  *  >to  determine<  if  there  is  a
substantial likelihood that a reasonable examiner would
consider them important>. If the prior art patents and/or
publications  would  be  considered  important,  then  the
examiner<  should  find  "a  substantial  new  question  of
patentability" unless the same question of patentability has
already been decided as to the claim in a final holding of
invalidity by a Federal court or * by the Office >in a
previous examination<. For example, the same question of
patentability may have already been decided by the Office
where the examiner finds the additional prior art patents or
printed publications are merely cumulative to similar prior
art already fully considered by the Office in a previous
examination of the claim.

  For "a substantial new question of patentability" to be
present, it is only necessary that>:<(1) the prior art
patents and/or printed publications raise a substantial *
question of patentability regarding at least one claim>,
i.e., the teaching of the (prior art) patents and printed
publications  is  such  that  a  reasonable  examiner  would
consider the teaching to be important in deciding whether or
not the claim is patentable,< and (2) the same question of
patentability as to the claim has not been decided by the
Office in a previous examination or in a final holding of
invalidity by the Federal Courts in a decision on the merits
involving the claim. It is not necessary that a " prima
facie " case of unpatentability exist as to the claim in
order for "a substantial new question of patentability" to
be present as to the claim. Thus, "a substantial new
question of patentability" as to a patent claim could be
present even if the examiner would not necessarily reject
the claim as either fully anticipated by, or obvious in view
of,  the  prior  patents  or  printed  publications.  The
difference  between  "a  substantial  new  question  of
patentability" and a " prima facie " case of unpatentability
is important. See generally In re Etter,>756 F.2d 852,<225
USPQ 1, 4 (Fed. Cir. 1985) (footnote 5).

  In  order  to  further  clarify  the  meaning  of  "a
substantial  new  question  of  patentability"  certain
situations are outlined below which, if present, should be
considered when making a decision as to whether or not "a
substantial new question of patentability" is present.

  POLICY IN SPECIFIC SITUATIONS

  (1)  Prior Favorable Decisions by the Patent and
Trademark Office on the Same or Substantially Identical
Prior Art in Relation to the Same Patent.

  A "substantial new question of patentability" is not
raised >by the prior art< if the Office has previously
considered the same question of patentability as to a patent
claim favorable to the patent owner based on the same prior
art  patents  or  printed  publications.  In  re  Recreative
Technologies , 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir.
1996). For this purpose, the same question of patentability
was "previously considered" if the grounds of rejection
based on the question of patentability:

  (1)  Would apply to the same claimed subject matter
as a previous rejection in the examination of the original
patent or earlier concluded reexamination;

  (2)  Would rely on the same combination of patents
and printed publications as the previous rejection; and

  (3)  Would apply the same statutory basis as the
previous rejection.

 In an unusual fact situation, application of the above -
stated test may be difficult or yield a questionable result.
Cf. Ex parte Chicago Rawhide, 223 USPQ 351 (Bd. Pat. App. &
Inter. 1984) and  Ex parte Gould, 231 USPQ 943, 946 (Bd.
Pat. App. & Inter. 1986). In such a situation, the examiner
should consult with the Group Director to determine the
appropriate action. See also MPEP § 2258.

  (2)  Prior Adverse Decisions by the Office on the
Same or Substantially Identical Prior Art in the Same
Patent.

  A prior decision adverse to the patentability of a claim
of a patent by the Office based upon prior art patents or
printed  publications  would  usually  mean  that  "a
substantially new question of patentability" is present.
Such an adverse decision by the Office could arise from a
reissue application which was abandoned after rejection of
the claim and without disclaiming the patent claim.

  (3) Prior  Adverse  Reissue  Application  Final
Decision by the Commissioner or the Board of Patent Appeals
and Interferences Based Upon Grounds Other Than Patents or
Printed Publications.

  Any prior adverse final decision by the Commissioner, or
the  Board  of  Patent  Appeals  and  Interferences,  on  an
application seeking to reissue the same patent on which
reexamination  is  requested  will  be  considered  by  the
examiner when determining whether or not a "substantial new
question of patentability" is present. To the extent that
such prior adverse final decision was based upon grounds

other  than  patents  or  printed  publications,  the  prior
adverse final decision will not be considered in determining
whether or not a "substantial new question of patentability"
is present.

  (4)  Prior Favorable or Adverse Decisions on the
Same or Substantially Identical Prior Patents or Printed
Publications in Other Cases not Involving the Patent.

  While the Office would consider decisions involving
substantially identical patents or printed publications in
determining  whether  a  "substantial  new  question  of
patentability" is raised, the weight to be given such
decisions will depend upon the circumstances. For example,
if the Office has used the same or substantially identical
prior art to reject the same or similar claims in another
application or patent under reexamination, this would be
considered  as  being  *>controlling<  in  making  a
determination. Similarly, if a foreign patent office or a
foreign court has used the same or substantially identical
prior art to reject or invalidate the same or similar
claims, this would be considered as being *>controlling< in
making the determination. Likewise, if a United States Court
has invalidated similar claims in another patent based on
the same or substantially identical prior patents or printed
publications,  this  would  be  considered  as  being
*>controlling<  in  making  the  determination.  Favorable
decisions on the same or substantially identical prior
patents or printed publications in other cases would be
considered but would not be controlling.

  POLICY WHERE A FEDERAL COURT DECISION HAS BEEN ISSUED ON
  THE PATENT

 >(1)  Final Court Holding of Validity.<

  When the initial question as to whether the prior art
raises a substantial new question of patentability as to a
patent claim is under consideration, the existence of a
final court decision of claim validity in view of the same
or different prior art does not necessarily mean that no new
question is present, **>because< of the different standards
of proof employed by the **>Federal District Courts< and the
Office. **>While< the Office may accord deference to factual
findings made by the court, the determination of whether a
substantial new question of patentability exists will be
made independently of the court's decision on validity *>,
because< it is not controlling on the Office.

 >(2)  Nonfinal  Court  Holding  of  Invalidity  or
Unenforceability.<

  A  nonfinal  holding  of  claim  invalidity  or
unenforceability will not be controlling on the question of
whether a substantial new question of patentability is
present.

 >(3)  Final  Court  Holding  of  Invalidity  or
Unenforceability.<

  **>A<  final  holding  of  claim  invalidity  or
unenforceability is controlling on the Office. In such
cases, a substantial new question of patentability would
not be present as to the claims finally held invalid or
unenforceable.

  *>As to (1) - (3) above, see< Ethicon  v.  Quigg ,>849
F.2d 1422,< 7 USPQ2d 1152 (Fed. Cir. 1988).

  Any situations requiring clarification should be brought
to the attention of the Office of the >Deputy< Assistant
Commissioner for *>Patent Policy and Projects<.

2243  Claims Considered in Deciding Request

  The claims in effect at the time of the determination
will be the basis for deciding whether "a substantial new
question of patentability" is present (37 CFR 1.515(a)).
While the examiner will ordinarily concentrate on those
claims for which reexamination is requested, the finding of
"a substantial new question of patentability" can be based
upon a claim of the patent other than the ones for which
reexamination is requested. For example, the request might
seek reexamination of particular claims, but the examiner is
not limited to those claims and can make a determination
that  "a  substantial  new  question  of  patentability"  is
present as to other claims in the patent without necessarily
finding "a substantial new question" with regard to the
claims  requested.  If  a  substantial  new  question  of
patentability is found as to any claim, reexamination will
be ordered and will normally cover all claims except where
some claims have been finally held invalid in a Federal
court decision on the merits. The decision should discuss
all patent claims in order to inform the patent owner of the
examiner's position. See MPEP § 2242 for patent claims which
have been the subject of a prior decision. Amendments or new
claims  will  not  be  considered  or  commented  upon  when
deciding a request.

2244  Prior Art on Which the Determination Is Based [R -
3]

  The determination whether or not "a substantial new
question of patentability" is present can be based upon any
prior art patents or printed publications. Section 303(a) of
the  statute  and  37  CFR  1.515(a)  provide  that  the
determination on a request will be made "with or without
consideration of other patents or printed publications,"
i.e., other than those relied upon in the request. The
examiner is not limited in making the determination to the
patents and printed publications relied on in the request.
The  examiner  can  find  "a  substantial  new  question  of
patentability" based upon the prior art patents or printed
publications relied on in the request, a combination of the
prior art relied on in the request and other prior art found
elsewhere, or based entirely on different patents or printed
publications. The primary source of patents and printed
publications used in making the determination are those
relied on in the request. However, the examiner can also
consider the prior art of record in the patent file from the
earlier examination or a reexamination and any patents and
printed publications of record in the patent file from
submissions under 37 CFR 1.501 which are in compliance with
37 CFR 1.98 in making the determination. If the examiner
believes that additional prior art patents and publications
can  be  readily  obtained  by  searching  to  supply  any
deficiencies in the prior art cited in the request, the
examiner can perform such an additional search. Such a
search should be limited to that area most likely to contain
the deficiency of the prior art previously considered and

should be made only where there is a reasonable likelihood
that prior art can be found to supply any deficiency
necessary to "a substantial new question of patentability."

  The determination should be made on the claims in effect
at the time the decision is made (37 CFR 1.515(a)).

  The Commissioner of Patents and Trademarks has the
authority to order reexamination only in those cases which
raise a substantial new question of patentability. The
substantial  new  question  of  patentability  requirement
protects patentees from having to respond to, or participate
in  unjustified  reexaminations,  Patlex  Corporation  v.
Mossinghoff ,>771 F.2d 480,< 226 USPQ 985* (Fed. Cir. 1985).

2245  Processing of Decision

  After  the  examiner  has  prepared  the  decision  and
proofread and signed the typed version, the reexamination
file and decision are given to the group's reexamination
clerk for processing.

  The reexamination clerk then prints the heading on the
decision by using the computer terminal and makes 3 copies
of any prior art documents not already supplied by or to the
patent owner or requester, if the request was made by a
party other than the patent owner. If the patent owner filed
the request, only 2 copies are required.

  A copy of the decision is then mailed to the requester
and the patent owner, along with any required copies of
prior  art  documents.  The  original  signed  copy  of  the
decision and a copy of any prior art enclosed is made of
record in the reexamination file.

  The file is returned to the special storage area in the
examining group.

2246  Decision Ordering Reexamination

 35 U.S.C. 304  .  Reexamination order by Commissioner.

  If, in a determination made under the provisions of
subsection 303(a) of this title, the Commissioner finds that
a substantial new question of patentability affecting any
claim of a patent is raised, the determination will include
an order for reexamination of the patent for resolution of
the question. The patent owner will be given a reasonable
period, not less than two months from the date a copy of the
determination is given or mailed to him, within which he may
file a statement on such question, including any amendment
to his patent and new claim or claims he may wish to
propose, for consideration in the reexamination. If the
patent owner files such a statement, he promptly will serve
a copy of it on the person who has requested reexamination
under the provisions of section 302 of this title. Within a
period of two months from the date of service, that person
may file and have considered in the reexamination a reply to
any  statement  filed  by  the  patent  owner.  That  person
promptly will serve on the patent owner a copy of any reply
filed.

 37 CFR 1.525.  Order to reexamine.

  (a) If a substantial new question of patentability is

found pursuant to § 1.515 or § 1.520, the determination will
include  an  order  for  reexamination  of  the  patent  for
resolution of the question. If the order for reexamination
resulted  from  a  petition  pursuant  to  §  1.515(c),  the
reexamination will ordinarily be conducted by an examiner
other  than  the  examiner  responsible  for  the  initial
determination under § 1.515(a).

  (b) If the order for reexamination of the patent mailed
to the patent owner at the address as provided for in §
1.33(c) is returned to the Office undelivered, the notice
published in the Official Gazette under § 1.11(c) will be
considered to be constructive notice and reexamination will
proceed.

  If the request is granted, the examiner will conclude
that a substantial new question of patentability has been
raised by identifying all claims and issues, the patents or
printed publications relied on, and a brief statement of the
rationale supporting each new question. In a simple case,
this may entail adoption of the reasons provided by the
requester. The references relied on by the examiner should
be cited on a PTO - 892, unless already listed on a form PTO
- 1449 by the requester, and a copy of the reference
supplied only where it has not been previously supplied to
the owner and requester.

  The decision granting the request is made on a decision
form  and  will  remind  the  owner  and  requester  of  the
statutory time periods that they have in which to respond.

  The wording of Form Paragraph 22.01 should be used at
the end of each decision letter.

¶ 22.01  New Question of Patentability

  A substantial new question of patentability affecting
claim [1] of United States Patent Number [2] is raised by
the request for reexamination.

  Extensions of time under 37 CFR 1.136(a) will not be
permitted  in  reexamination  proceedings  because  the
provisions of 37 CFR 1.136 apply only to "an applicant" and
not to parties in a reexamination proceeding. Additionally,
35 U.S.C. 305 requires that reexamination proceedings "will
be conducted with special dispatch" (37 CFR 1.550(a)).
Extension of time in reexamination proceedings are provided
for in 37 CFR 1.550(c).

  Upon determination that a substantial new question of
patentability is present, either pursuant to a request under
35  U.S.C.  302  and  37  CFR  1.515,  or  a  sua  sponte
determination under 35 U.S.C. 303(a), second sentence, and
37 CFR 1.520, the Commissioner issues an order to reexamine.
The statutory wording is that:

  [T]he determination [that a substantial new question of
patentability  is  raised]  will  include  an  order  for
reexamination of the patent for resolution of the question.
[35 U.S.C. § 304, first sentence]

  If the request is granted, the examiner must identify at
least one substantial new question of patentability and
explain how the prior art patents or printed publications
raise such a question. The examiner should indicate insofar

as possible, his or her initial position on all the issues
identified in the request or by the requester (without
rejecting claims) so that comment thereon may be received in
the patent owner's statement and in the requester's reply.
The prior art relied on should be listed by the examiner on
a form PTO - 892 if it is not already listed on a form PTO -
1449 by the requester.

  If arguments are presented as to grounds not based on
prior patents or printed publications, such as those based
on public use or sale, or abandonment under 35 U.S.C.
102(c), the examiner should note that such grounds are
improper  for  reexamination  and  are  not  considered  or
commented upon. See 37 CFR 1.552(c).

  Copies of any patents or printed publications relied on,
which have not been previously supplied to the owner and
requester, should be included with the decision.

  The decision granting a request must set forth the time
periods for the patent owner and requester to file their
statement and any reply thereto.

  Neither the patent owner nor the requester has any right
to petition or request reconsideration of a decision to
grant a request for reexamination even if the decision
grants reexamination for reasons other than those urged by
the requester or on less than all the grounds urged by the
requester. However, in cases where no discretion to grant a
request for reexamination exists, such as where the grant is
not based on patents or printed publications "appropriate
circumstances" under 37 CFR 1.181(a)(3) exist to vacate the
grant of such a request.

  Any prior art citations under 37 CFR 1.501 submitted
after the date of the decision on the order should be
retained in a separate file by the reexamination clerk and
stored until the reexamination proceeding is terminated, at
which time the prior art citation is then entered of record
on the patent file. See MPEP § 2206.

2247  Decision on Request for Reexamination Denied

  The request for reexamination will be denied if a
substantial new question of patentability is not found based
on patents or printed publications.

  If the examiner concludes that no substantial new
question of patentability has been raised, the examiner
should indicate why the claims are clearly patentable in a
manner  similar  to  that  used  to  indicate  reasons  for
allowance (MPEP § 1302.14). The examiner should also respond
to the substance of each argument raised by the requester
which is based on patents or printed publications. If
arguments are presented as to grounds not based on prior
patents or printed publications, such as those based on
public use or sale, or abandonment under 35 U.S.C. 102(c),
the examiner should note that such grounds are improper for
reexamination and are not considered or commented upon. See
37 CFR 1.552(c).

  A copy of any denied request and the decision thereon
are made part of the official patent file.

  If the denial of the request is not overturned by a

petition decision, a refund will be made to the requester
under 37 CFR 1.26(c) after the period for petition has
expired.

  Use Form Paragraph 22.02 as the introductory paragraph
in a decision denying reexamination.

¶ 22.02  No New Question of Patentability

  No substantial new question of patentability is raised
by the request for reexamination and prior art cited therein
for the reasons set forth below.

 **  Double Click here to see the image  **

 DECISION

  A substantial new question of patentability affecting
Claims 1 - 3 of United States Patent Number 9.999.999 to Key
is raised by the request for reexamination.

  Extensions of time under 37 CFR 1.136(a) will not be pe
rmitted in these proceedings because the provisions of 37
CFR 1.136 apply only to "an applicant" and not to parties in
a  reexamination  proceeding.  Additionally,  Office  policy
requires that reexamination proceedings "will be conducted
with special dispatch" (37 CFR 1.550(a)) and provides for
extensions of time in reexamination proceedings as set forth
in37 CFR 1.550(c).

  The request indicates that Requester considers that
Claims 1 - 3 are unpatentable over Smith taken with Jones.

  The request further indicates that Requester considers
that Claim 4 is unpatentable over the Horn publication.

  It is agreed that the consideration of Smith raises a
substantial new question of patentability as to Claims 1 - 3
of the Key patent. As pointed out on pages 2 - 3 of the
request,  Smith  teaches  using  an  extruder  supported  on
springs at a 30 degree angle to the horizontal but does not
teach the specific polymer of Claims 1 - 3 which is
extruded.  The  teaching  as  to  spring  -  supporting  the
extruder at 30 degrees was not present in the prosecution of
the application which became the Key patent. Further, there
is a substantial likelihood that a reasonable examiner would
consider this teaching important in deciding whether or not
the  claim  is  patentable.  Accordingly,  Smith  raises  a
substantial new question of patentability as to Claims 1 -
3, which question has not been decided in a previous
examination of the Key patent.

  The Horn publication does not raise a new question of
patentability as to Claim 4 because its teaching as to the
extrusion die is a substantial equivalent of the teaching of
the die by the Dorn patent which was considered in the
prosecution of the application which became the Key patent.
However, Claim 4 will be reexamined along with Claims 1 - 3
of the Key patent.

  Kenneth Schor Examiner, Gp 1300

 **  Double Click here to see the image  **

 DECISION

  No substantial new question of patentability is raised
by the request for reexamination and prior art cited therein
for the reasons set forth below.

  The request indicates that Requester considers that
Claims 1 - 2 are unpatentable over Smith taken with Jones.

  The request further indicates that Requester considers
that Claim 3 is unpatentable over Smith taken with Jones and
when further taken with the Horn publication.

  The claims of the Key patent, for which reexamination is
requested, require that an extruder be supported on springs
at an angle of 30 degrees to the horizontal, while a
specific chlorinated polymer is extruded through a specific
extrusion die.

  The Smith patent does not raise a substantial new
question of patentability as to the Key claims. Smith's
teaching as to the extruder being spring - supported at 30
degrees is a substantial equivalent of the teaching of same
by the Dorn patent which was considered in the prosecution
of the application which became the Key patent.

  In the request for reexamination, it is argued that
Jones teaches the extrusion die. However, Jones was also
used in the prosecution of the Key application to teach the
extrusion  die.  Further,  there  is  no  argument  in  the
reexamination request that Jones is being applied in a
manner  different  than  in  the  prosecution  of  the  Key
application.

  The Horn publication has been argued to show the
connection of the support means to the extruder via bolts,
as recited in Claim 3 of the Key patent. Although this
teaching was not provided in the prosecution of the Key
application, the teaching would not be considered to be
important to a reasonable examiner in deciding whether or
not the Key claims are patentable.

  The references set forth in the request have been
considered both alone and in combination. They fail to raise
a substantial new question of patentability as to any one of
the  Key  patent  claims.  Accordingly,  the  request  for
reexamination is DENIED.

  Kenneth Schor Examiner, Gp 1300

2248  Petition From Denial of Request

 37 CFR 1.515  .  Determination of the request for
reexamination.

  *****

  (c) The requester may seek review by a petition to the
Commissioner under § 1.181 within one month of the mailing
date of the examiner's determination refusing reexamination.
Any such petition must comply with § 1.181(b). If no
petition is timely filed or if the decision on petition
affirms that no substantial new question of patentability
has been raised, the determination shall be final and

nonappealable.

  PROCESSING OF PETITION UNDER 37 CFR 1.515(c)

  Once the request for reexamination has been denied, the
reexamination file will be stored in the group central files
to await a petition. If no petition is filed within one (1)
month, the file is forwarded to the Office of Finance for a
refund. If a petition is filed, it is forwarded to the
office of the group director for decision.

  The director's review will be de novo . Each decision by
the group director will conclude with the paragraph:

  "This decision is final and nonappealable. 37 CFR
1.515(c). No further communication on this matter will be
acknowledged or considered."

  If the petition is granted, the decision of the group
director should include a sentence setting a 2 - month
period for filing a statement under 37 CFR 1.530; the
reexamination file will then be returned to the supervisory
primary examiner of the art unit that will handle the
reexamination for consideration of reassignment to another
examiner.

  Reassignment will be the general rule and only in
exceptional  circumstances  where  no  other  examiner  is
available and capable to give a proper examination will the
case remain with the original examiner. If the original
determination is signed by the supervisory primary examiner,
the reexamination ordered by the director will be assigned
to a primary examiner.

  The requester may seek review of a denial of a request
for reexamination by petitioning the Commissioner under 37
CFR 1.515(c) and 1.181 within 1 month of the mailing date of
the  decision  denying  the  request  for  reexamination.  A
request for an extension of the time period to file a
petition from the denial of a request for reexamination can
only be entertained by filing a petition under 37 CFR 1.183
with appropriate fee to waive the time provisions of 37 CFR
1.515(c). Except for the limited exception described in MPEP
§ 2246, no petition may be filed requesting review of a
decision  granting a request for reexamination even if the
decision grants the request for reasons other than those
advanced by requester or as to claims other than those for
which requester sought reexamination. No right to review
exists if reexamination is ordered in such a case because
all claims will be reexamined in view of all prior art
during the reexamination under 37 CFR 1.550.

  After the time for petition has expired without a
petition having been filed, or a petition has been filed and
the decision thereon affirms the denial of the request, a
partial  refund  of  the  filing  fee  for  requesting
reexamination will be made to the requester. (35 U.S.C.
303(c) and 37 CFR 1.26(c)). A decision on a petition is
final and is not appealable.

2249  Patent Owner's Statement [R - 3]

 37 CFR 1.530.  Statement and amendment by patent owner.

  (a) Except as provided in § 1.510(e), no statement or

other response by the patent owner shall be filed prior to
the determinations made in accordance with § 1.515 or 1.520.
If a premature statement or other response is filed by the
patent owner it will not be acknowledged or considered in
making the determination.

  (b) The order for reexamination will set a period of not
less than two months from the date of the order within which
the patent owner may file a statement on the new question of
patentability including any proposed amendments the patent
owner wishes to make.

  (c) Any statement filed by the patent owner shall clearly
point  out  why  the  subject  matter  as  claimed  is  not
anticipated or rendered obvious by the prior art patents or
printed publications, either alone or in any reasonable
combinations. Any statement filed must be served upon the
reexamination requester in accordance with § 1.248.

  (d) Any proposed amendments to the description and claims
must be made in accordance with § 1.121(f). No amendment may
enlarge the scope of the claims of the patent or introduce
new matter. No amendment or new claims may be proposed for
entry in an expired patent. Moreover, no amended or new
claims will be incorporated into the patent by certificate
issued after the expiration of the patent.

  (e) Although the Office actions will treat proposed
amendments as though they have been entered, the proposed
amendments will not be effective until the reexamination
certificate is issued.

  The patent owner has no right to file a statement
subsequent to the filing of the request but prior to the
order for reexamination. Any such premature statement will
not be acknowledged or considered by the Office when making
the decision on the request. See MPEP § 2225 and Patlex Corp
. v. Mossinghoff ,>771 F.2d 480,< 226 USPQ 985 (Fed. Cir.
1985).

  If reexamination is ordered, the decision will set a
period of not less than 2 months within which period the
patent  owner  may  file  a  statement  and  any  narrowing
amendments to the patent claims. If necessary, an extension
of time beyond the 2 months may be requested under 37 CFR
1.550(c) by the patent owner. Such request is decided by the
Group Director.

  Any statement filed must clearly point out why the
patent claims are believed to the patentable, considering
the cited prior art patents or printed publications alone or
in any reasonable combination.

  A copy of the statement must be served on the requester,
if the request was not filed by the patent owner.

  In the event the decision is made to reexamine, the
patent statute (35 U.S.C. 304) provides that the owner will
have a period, not less than 2 months (minimum time), to
file a statement directed to the issue of patentability.
Since the 2 - month period is the minimum provided by
statute, first extensions may be granted up to one (1) month
based upon good and sufficient reasons. Further extensions
should be granted only in the most extraordinary situations;
e.g., death or incapacitation of the representative or

owner.

  Lack of proof of service poses a problem especially
where the patent owner fails to indicate that he or she has
served the requester in the statement subsequent to the
order  for  reexamination  (37  CFR  1.530(c)).  In  this
situation,  the  Reexamination  Clerk  should  immediately
contact the patent owner by telephone to see whether the
indication of proof of service was inadvertently omitted
from the patent owner's response. If it was, the patent
owner should be advised to submit a supplemental paper
indicating the manner and date of service on requester. If
the patent owner cannot be contacted, the Reexamination
Clerk will then contact the requester to verify that service
has in fact been made by the patent owner and indicate that
acknowledgment  of  proof  of  service  should  accompany
requester's reply (37 CFR 1.248(b)(1)). If the 2 - month
period for response under 37 CFR 1.530 has expired and
requester has not been served, the patent owner's statement
is considered inappropriate (37 CFR 1.248) and may be denied
consideration; see MPEP § 2267.

  It should be noted that the period for response by
requester for a reply under 37 CFR 1.535 is 2 months from
the owner's service date and not 2 months from the date the
patent owner's statement was received in the Patent and
Trademark Office.

2250  Amendment by Patent Owner [R - 3]

 37 CFR 1.121.  Manner of making amendments.

  *****

  (f) Proposed amendments presented in patents involved in
reexamination proceedings must be presented in the form of a
full copy of the text of (1) each claim which is amended and
(2) each paragraph of the description which is amended.
Matter deleted from the patent shall be placed between
brackets and matter added shall be underlined. Copies of the
printed  claims  from  the  patent  may  be  used  with  any
additions being indicated by carets and deleted material
being placed between brackets. Claims must not be renumbered
and the numbering of the claims added for reexamination must
follow the number of the highest numbered patent claim. No
amendment may enlarge the scope of the claims of the patent.
No new matter may be introduced into the patent.

  Amendments to the patent may be filed by the patent
owner. See MPEP § 2221. Such amendments, however, may not
enlarge the scope of a claim of the patent or introduce new
matter. Amended or new claims which broaden or enlarge the
scope of a claim of the patent should be rejected under 35
U.S.C. 305. The test for when an amended or "new claim
enlarges the scope of an original claim under 35 U.S.C. 305
is the same as that under the 2 - year limitation for
reissue applications adding enlarging claims under 35 U.S.C.
251, last paragraph." In re Freeman,>30 F.3d 1459,< 31
USPQ2d 1444, 1447 (Fed. Cir. 1994). See MPEP § 1412.03 For
handling of new matter, see MPEP § 2270. Additional claims
may  also  be  added  by  amendment  without  any  fee.  Any
amendment  proposed  will  normally  be  entered  and  be
considered to be entered for purposes of prosecution before
the Office; however, the amendments do not become effective
in the patent until the certificate under 35 U.S.C. 307 is

issued.

  No amendment will be permitted where the certificate
issues after expiration of the patent. See 37 CFR 1.530(d)
and (e). The patent expiration date for a utility patent,
for example, is determined by taking into account the term
of the patent, whether maintenance fees have been paid for
the patent, and whether any disclaimer was filed as to the
patent to shorten its term. Any other relevant information
should also be taken into account.

  Amendment Entry - Amendments which comply with 37 CFR
1.121(f) will be entered in the reexamination file wrapper.
An amendment will be given a Paper Number and be designated
by consecutive letters of the alphabet (A, B, C, etc.). The
amendment will be entered by drawing a line in red ink
through the claim(s) or paragraph(s) canceled or amended,
and  the  substituted  copy  being  indicated  by  reference
letter. See MPEP § 2234.

  ALL amendments in reexamination proceedings must be
presented in the form of a full copy of the text of each
claim which is amended and each paragraph of the description
which is amended.

  If a portion of the text is amended more than once, each
amendment should indicate ALL of the changes (insertions and
deletions) in relation to the current text of the patent u
nder reexamination.

  Examples  of  proper  claim  amendment  format  are  as
follows:

 (1)  Patent claim:

  A cutting means having a handle portion and a blade
portion.

 (2)  Proper first amendment format:

  A [cutting means] knife having a bone handle portion and
a notched blade portion.

 (3)  Proper second amendment format:

  A [cutting means] knife having a handle portion and a
serrated blade portion.

  Note that the second amendment includes the changes
presented in the first amendment; i.e., [cutting means]
knife , as well as the changes presented in the second
amendment; i.e., serrated . However, the term notched which
was presented in the first amendment and replaced by the
term serrated in the second amendment and the term bone
which was presented in the first amendment and deleted in
the second amendment are not shown in brackets; i.e.,
[notched] and [bone], in the second amendment. This is
because the terms [notched] and [bone] would not be changes
from the current patent text and therefore are not shown. In
both the first and the second amendments, the entire claim
is presented with all the changes from the current patent
text.

  No renumbering of patent claims is permitted.

  New claims added during reexamination must be underlined
and follow consecutively the number of the highest numbered
patent claim. If a new claim is amended during prosecution,
any material which is deleted will NOT appear in brackets
because such deleted material would not be a change to the
current patent text. The deleted material would not appear
in any fashion. Further, the new claim as amended will be
COMPLETELY underlined as required by 37 CFR 1.121(f). If the
patent expires during the ex parte reexamination procedure
and the patent claims have been amended, the Office will
hold the amendments as being improper and all subsequent
reexamination will be on the basis of the unamended patent
claims. This procedure is necessary since no amendments will
be incorporated into the patent by certificate after the
expiration of the patent.

  For entry of amendment in a merged proceeding, see MPEP
§ 2283 and § 2285.

  For  handling  a  dependent  claim  in  reexamination
proceedings, see MPEP § 2260.01.

2250.01  Correction of Patent Drawings

  In the reexamination proceeding the copy of the patent
drawings submitted pursuant to § 1.510(b)(4) will be used
for reexamination purposes provided no change whatsoever is
made to the drawings. If there is to be ANY change in the
drawings, a new sheet of drawing for each sheet changed must
be submitted. The change may NOT be made on the original
patent drawings.

  The new sheets of drawings must be submitted and
approved prior to forwarding the reexamination file to the
Office of Publications for issuance of the certificate. The
new  sheets  of  drawings  should  be  entered  in  the
reexamination file.

2251  Reply by Requester

 37 CFR 1.535.  Reply by requester.

  A reply to the patent owner's statement under § 1.530
may be filed by the reexamination requester within two
months from the date of service of the patent owner's
statement. Any reply by the requester must be served upon
the patent owner in accordance with § 1.248. If the patent
owner does not file a statement under § 1.530, no reply or
other submission from the reexamination requester will be
considered.

  If the patent owner files a statement in a timely
manner, the requester is given a period of 2 months from the
date of service to reply. Since the statute (Section 304)
did not provide this as a minimum time period, there will be
no extensions of time granted.

  The reply need not be limited to the issues raised in
the statement. The reply may include additional prior art
patents  and  printed  publications  and  raise  any  issue
appropriate for reexamination.

  If no statement is filed by the patent owner, no reply
is permitted from the requester.

  A copy of any reply by the requester must be served on
the patent owner.

  The requester is not permitted to file any further
papers  after  his  or  her  reply  to  the  patent  owner's
statement. Any further papers will not be acknowledged or
considered. The patent owner cannot file papers on behalf of
the requester and thereby circumvent the rules.

2252  Consideration of Statement and Reply

 37 CFR 1.540.  Consideration of responses.

  The failure to timely file or serve the documents set
forth in § 1.530 or in § 1.535 may result in their being
refused  consideration.  No  submissions  other  than  the
statement pursuant to § 1.530 and the reply by the requester
pursuant to § 1.535 will be considered prior to examination.

  Although 37 CFR 1.540 would appear to be discretionary
in stating that late responses "may result in their being
refused consideration," patent owners and requesters can
expect consideration to be refused if the statement and/or
reply is not timely filed. 37 CFR 1.540 restricts the number
and  kind  of  submissions  to  be  considered  prior  to
examination to those expressly provided for in 37 CFR 1.530
and 1.535. Untimely submissions will ordinarily not be
considered. Untimely submissions, other than untimely papers
filed by the patent owner after the period set for response,
will not be placed of record in the reexamination file but
will be returned to the sender.

  Papers filed in which no proof of service is included
and  proof  of  service  is  required  may  be  denied
consideration.  Where  no  proof  of  service  is  included,
inquiry should be made of the sender by the reexamination
clerk as to whether service was in fact made. If no service
was made, the paper is placed in the reexamination file but
is not considered; see MPEP § 2267.

2253  Consideration by Examiner

  Once reexamination is ordered, any submissions properly
filed and served in accordance with 37 CFR 1.530 and 1.535
will be considered by the primary examiner when preparing
the first Office action. The examiner will be guided in his
or her consideration by the provisions of 37 CFR 1.121(f)
with respect to any proposed amendments by the patent owner
to the description and claims and by 37 CFR 1.530(c)
regarding the patent owner's statement. If the requester's
reply to the patent owner's statement raises issues not
previously presented, such issues will be treated by the
examiner in an Office action pursuant to 37 CFR 1.552(c), if
not within the scope of reexamination.

  For handling of new matter, see MPEP § 2270.

2254  Conduct of Reexamination Proceedings [R - 3]

 35 U.S.C. 305.  Conduct of reexamination proceedings.

  After the times for filing the statement and reply
provided for by section 304 of this title have expired,
reexamination will be conducted according to the procedures
established for initial examination under the provisions of

sections 132 and 133 of this title. In any reexamination
proceeding under this chapter, the patent owner will be
permitted to propose any amendment to his patent and a new
claim  or  claims  thereto,  in  order  to  distinguish  the
invention as claimed from the prior art cited under the
provisions of section 301 of this title, or in response to a
decision adverse to the patentability of a claim of a
patent. No proposed amended or new claim enlarging the scope
of  a  claim  of  the  patent  will  be  permitted  in  a
reexamination  proceeding  under  this  chapter.  All
reexamination proceedings under this section, including any
appeal to the Board of Patent Appeals and Interferences,
will be conducted with special dispatch within the Office.

 37 CFR 1.550.  Conduct of reexamination proceedings.

  (a) All reexamination proceedings, including any appeals
to the Board of Patent Appeals and Interferences, will be
conducted with special dispatch within the Office. After
issuance of the reexamination order and expiration of the
time for submitting any responses thereto, the examination
will be conducted in accordance with § 1.104 - 1.119 and
will result in the issuance of a reexamination certificate
under § 1.570.

  (b) The patent owner will be given at least 30 days to
respond to any Office action. Such response may include
further statements in response to any rejections and/or
proposed amendments or new claims to place the patent in a
condition where all the claims, if amended as proposed,
would be patentable.

  (c) The time for taking any action by a patent owner in a
reexamination  proceeding  will  be  extended  only  for
sufficient cause, and for a reasonable time specified. Any
request for such extension must be filed on or before the
day on which action by the patent owner is due, but in no
case  will  the  mere  filing  of  the  request  effect  any
extension. See § 1.304(a) for extensions of time for filing
a notice of appeal to the U.S.C. ourt of Appeals for the
Federal Circuit or for commencing a civil action.

  (d) If the patent owner fails to file a timely and
appropriate response to any Office action, the reexamination
proceeding will be terminated and the Commissioner will
proceed to issue a certificate under § 1.570 in accordance
with the last action of the Office.

  (e) The reexamination requester will be sent copies of
Office actions issued during the reexamination proceeding.
Any document filed by the patent owner must be served on the
requester in the manner provided in § 1.248. The document
must  reflect  service  or  the  document  may  be  refused
consideration by the Office. The active participation of the
reexamination requester ends with the reply pursuant to §
1.535,  and  no  further  submissions  on  behalf  of  the
reexamination requester will be acknowledged or considered.
Further, no submissions on behalf of any third parties will
be acknowledged or considered unless such submissions are
(1) in accordance with § 1.510 or (2) entered in the patent
file prior to the date of the order to reexamine pursuant to
§ 1.525. Submissions by third parties, filed after the date
of the order to reexamine pursuant to § 1.525, must meet the
requirements of and will be treated in accordance with §
1.501(a).

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

  Once  reexamination  is  ordered  and  the  times  for
submitting any responses thereto have expired, no further
active participation by a reexamination requester is allowed
and no third party submissions will be acknowledged or
considered unless they are in accordance with 37 CFR 1.510.
The reexamination proceedings will be ex parte because this
was the intention of the legislation. The patent owner
cannot file papers on behalf of the requester and thereby
circumvent the intent of the legislation and the rules. The
Federal Circuit held in  Emerson Electric Co.  v.  Davoil,
Inc. ,**>88 F.3d 1051, 39 USPQ2d 1474 (Fed. Cir. 1996)< that
a federal district court does not have the authority to
order a patent owner to file papers prepared by a third
party in addition to the patent owner's own submission in a
patent reexamination proceeding. Such papers prepared by the
third party and filed by the patent owner will not be
entered, and the entire submission will be returned to the
patent owner as an inappropriate response. See MPEP § 2266
and  § 2267.  Ex parte proceedings also prevent extra
proceedings and reduce possible harassment of the patent
owner. The examination will be conducted in accordance with
37 CFR 1.104 - 1.119 (35 U.S.C. 132 and 133) and will result
in the issuance of a reexamination certificate under 37 CFR
1.570.  The  proceeding  shall  be  conducted  with  special
dispatch within the Office pursuant to 35 U.S.C. 305, last
sentence. A full search will not be made routinely by the
examiner. The reexamination requester will be sent copies of
Office actions and the patent owner must serve responses on
the requester. Citations submitted in the patent file prior
to issuance of an order for reexamination will be considered
by the examiner during the reexamination. Reexamination will
proceed even if the order is returned undelivered. The
notice under 37 CFR 1.11(c) is constructive notice and lack
of  response  from  the  patent  owner  will  not  delay
reexamination.

2255  Who Reexamines

  The examination will ordinarily be conducted by the same
primary examiner in the examining groups who made the
decision on whether the reexamination request should be
granted. See MPEP § 2236.

  However, if a petition under 37 CFR 1.515(c) is granted,
the reexamination will normally be conducted by another
examiner; see MPEP § 2248.

2256  Prior Art Patents and Printed Publications
Considered by Examiner in Reexamination

  The primary source of prior art will be the patents and
printed publications cited in the request.

  The examiner must also consider patents and printed
publications

  -cited by a reexamination requester under 37 CFR 1.510

  -cited in patent owner's statement under 37 CFR 1.530 or
a requester's reply under 37 CFR 1.535 if they comply with
37 CFR 1.98

  -cited by patent owner under a duty of disclosure (37
CFR 1.555) in compliance with 37 CFR 1.98

  -discovered by the examiner in searching

  -of record in the patent file from earlier examination

  -of record in patent file from 37 CFR 1.501 submission
prior to date of an order if it complies with 37 CFR 1.98.
The reexamination file must indicate which prior art patents
and printed publications the examiner has considered during
ex parte examination.

2257  Listing of Prior Art

  The examiner must list on a form PTO - 892, if not
already listed on a form PTO - 1449, all prior patents or
printed publications which have been properly:

  (1)  cited by the reexamination requester in the
request under 37 CFR 1.510,

  (2)  cited by the patent owner in the statement
under 37 CFR 1.530 if the citation complies with 37 CFR
1.98,

  (3)  cited by the reexamination requester in the
reply under 37 CFR 1.535 if the citation complies with 37
CFR 1.98, and

  (4)  cited by the patent owner under the duty of
disclosure requirements of 37 CFR 1.555 if the citation
complies with 37 CFR 1.98.

  The examiner must also list on a form PTO - 892, if not
already listed on a form PTO - 1449, all prior patents or
printed publications which have been cited in the decision
on the request, or applied in making rejections or cited as
being pertinent during the reexamination proceedings. Such
prior patents or printed publications may have come to the
examiners' attention because:

  (1)  they were of record in the patent file due to
a prior art submission under 37 CFR 1.501 which was received
prior to the date of the order,

  (2)  they were of record in the patent file as
result of earlier examination proceedings, or

  (3)  they were discovered by the examiner during a
prior art search.

  In instances where the examiner considers but does not
wish to cite documents of record in the patent file,
notations should be made in the reexamination file in the
manner set forth in MPEP § 717.05, items B5, C1 and C2.

  All citations listed on form PTO - 892 and all citations
not lined out on any form PTO - 1449 will be printed on the
reexamination certificate under "References cited."

2258  Scope of Reexamination [R - 3]

 37 CFR 1.552.  Scope of reexamination in reexamination
proceedings.

  (a) Patent claims will be reexamined on the basis of
patents or printed publications.

  (b)  Amended  or  new  claims  presented  during  a
reexamination proceeding must not enlarge the scope of the
claims of the patent and will be examined on the basis of
patents or printed publications and also for compliance with
the requirements of 35 U.S.C. 112 and the new matter
prohibition of 35 U.S.C. 132.

  (c) Questions other than those indicated in paragraphs
(a) and (b) of this section will not be resolved in a
reexamination proceeding. If such questions are discovered
during a reexamination proceeding, the existence of such
questions will be noted by the examiner in an Office action,
in which case the patent owner may desire to consider the
advisability of filing a reissue application to have such
questions considered and resolved.

  > PRIOR ART PATENTS OR PRINTED PUBLICATIONS<

  Rejections on prior art in reexamination proceedings may
only be made on the basis of prior >art< patents or printed
publications. Prior art rejections may be based upon the
following portions of 35 U.S.C. 102:

  "(a)  .  .  .  patented  or  described  in  a  printed
publication  in  this  or  a  foreign  country,  before  the
invention thereof by the applicant for patent, or"

  "(b) the invention was patented or described in a
printed publication in this or a foreign country . . more
than one year prior to the date of the application for
patent in the United States, or"

  *****

  "(d) the invention was first patented or caused to be
patented, or was the subject of an inventor's certificate,
by the applicant or his legal representatives or assigns in
a foreign country prior to the date of the application for
patent in this country on an application for patent or
inventor's certificate filed more than twelve months before
the filing of the application in the United States, or"

  "(e) the invention was described in a patent granted on
an application for patent by another filed in the United
States before the invention there of by the applicant for
patent, or on an international application by another who
has fulfilled the requirements of paragraphs (1), (2), and
(4) of section 371(c) of this title before the invention
thereof by the applicant for patent".

  *****

  Similarly, substantial new grounds of patentability may
also be made under 35 U.S.C. 103 which are based on the
above indicated portions of 35 U.S.C. 102.

  Public Law 98 - 622 enacted on November 8, 1984, changed

a complex body of case law and amended 35 U.S.C. by adding a
new sentence which provides that subject matter developed by
another which qualifies as prior art only under 35 U.S.C.
102(f) or (g) shall not preclude patentability under 35
U.S.C. 103 provided the subject matter and the claimed
invention were commonly owned at the time the invention was
made. This change overrules the practice under  In re Bass
,>474 F.2d 1276,<177 USPQ 178, (CCPA 1973) wherein an
earlier invention by a co - employee was treated as prior
art under 35 U.S.C. 102(g) and possibly § 102(f) with
respect to a later invention made by another employee of the
same organization. However, the Federal Circuit held in
*>E. I. du Pont de Nemours Co.< v.  Phillips >Petroleum Co.<
,>849 F.2d 1430,< 7 USPQ2d 1129** (Fed. Cir. 1988), that the
prior work of another under 35 U.S.C. 102(g), except as
qualified by 35 U.S.C. 103 with respect to certain commonly
owned subject matter, can be used as 35 U.S.C. 103 prior art
so long as it has not been abandoned, suppressed, or
concealed.  Accordingly,  a  substantial  new  question  of
patentability may be found under 35 U.S.C. 102(f) or (g)/103
based on the prior invention of another disclosed in a
patent or printed publication>, if there was no common
ownership at the time the claimed invention was made<. See
Chapter 2100.

  Once  reexamination  is  ordered  based  on  a  proper
substantial  new  question  of  patentability,  grounds  of
rejection previously considered by the Office may not be
raised by the examiner. In re Recreative Technologies , 83
F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996). For this
purpose, a ground of rejection was "previously considered"
if it:

  (1) is applied to the same claimed subject matter as a
previous rejection in the examination of the original patent
or earlier concluded reexamination;

  (2) relies on the same combination of patents and
printed publications as the previous rejection; and

  (3) applies the same statutory basis as the previous
rejection.

 In an unusual fact situation, application of the above -
stated test may be difficult or yield a questionable result.
Cf. Ex parte Chicago Rawhide, 223 USPQ 351 (Bd. Pat. App. &
Inter. 1984) and  Ex parte Gould, 231 USPQ 943, 946 (Bd.
Pat. App. & Inter. 1986). In such a situation, the examiner
should consult with the Group Director to determine the
appropriate action.

 >Matters other than patents or printed publications:<

  Rejections will not be based on matters other than
patents or printed publications, such as public use or sale,
inventorship, 35 U.S.C. 101, fraud, etc. In this regard, see
In re Lanham,1 USPQ2d 1877 (Comm'r Pat. 1986), and  Stewart
Systems v.  Comr. of Patents and Trademarks , 1 USPQ2d 1879
(E.D. Va. 1986). A rejection on prior public use or sale,
insufficiency of disclosure, etc., cannot be made even if it
relies on a prior patent or printed publication. Prior pa
tents or printed publications must be applied under an
appropriate portion of 35 U.S.C. 102 and/or 103 when making
a r ejection.

 >Intervening patents or printed publications:<

  Rejections may be made in reexamination proceedings
based on intervening patents or printed publications where
the patent claims under reexamination are entitled only to
the filing date of the patent and are not supported by an
earlier foreign or United States patent application whose
filing date is claimed. For example, under 35 U.S.C. 120,
the effective date of the claims would be the filing date of
the application which resulted in the patent. Intervening
patents or printed publications are available as prior art
under In re Ruscetta ,>255 F.2d 687,< 118 USPQ 101 (CCPA
1958) >, and  In re van Langehoven,458 F.2d 132, 173 USPQ
426 (CCPA 1972). See also MPEP § 201.11.

 Double patenting:<

  Under limited circumstances, e.g., where new or amended
claims are presented, double patenting may be raised in a
reexamination proceeding. As is the case for an application,
a *>judicially created< double patenting rejection can be
overcome  by  the  filing  of  a  terminal  disclaimer  in
accordance with 37 CFR 1.321(c).

  >Where  a  terminal  disclaimer  is  submitted  in  a
reexamination proceeding, Form Paragraph 14.23.01 should be
used if the terminal disclaimer is proper. If the terminal
disclaimer is not proper, Form Paragraph 14.25 should be
used, and one or more of the appropriate form paragraphs
14.26 to 14.32 must follow Form Paragraph 14.25 to indicate
why the terminal disclaimer is not accepted. See also MPEP §
1490.

 Affidavits or declarations:<

  Affidavits or declarations which explain the contents or
pertinent dates of prior patents or printed publications in
more detail may be considered in reexamination, but any
rejection must be based upon the prior patents or printed
publications as explained by the affidavits or declarations.
The rejection in such circumstances cannot be based on the
affidavits or declarations as such, but must be based on the
prior patents or printed publications.

 * >Admissions; Use of Admissions:<

 I .  Initial Reexamination Determination and Order

  The consideration under 35 U.S.C. 303 of a request for
reexamination is limited to prior >art< patents and printed
publications. See Ex parte McGaughey , 6 USPQ2d 1334, 1337
(Bd. Pat. App. & Inter. 1988). Thus an admission, per se,
may not be the basis for establishing a substantial new
question of patentability. However, an admission by the
patent owner of record in the file or in a court record may
be  utilized  in  combination  with  a  patent  or  printed
publication.

 II.  Reexamination  >Ordered,<  Examination  on  >the<
Merits

  After reexamination has been ordered, the examination on
the merits is dictated by 35 U.S.C. 305, see Ex parte
McGaughey , 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter.
1988).

  Admissions by the patent owner in the record as to
matters  affecting  patentability  may  be  utilized  in  a
reexamination proceeding; see 37 CFR 1.106(c).

  37 CFR 1.106(c) provides that admissions by the patent
owners as to matters affecting patentability may be utilized
in  a  reexamination  proceeding.  The  Supreme  Court  when
discussing 35 U.S.C. 103 in Graham v.  John Deere Co . , 383
U.S. 6, 148 USPQ 459 (1966) stated,  inter alia , "the scope
and  content  of  the  prior  art  are  to  be  determined."
Accordingly, a proper evaluation of the scope and content of
the prior art in determining obviousness would require a
utilization of any "admission" by the patent owner >which
can be used to interpret or modify a patent or printed
publication applied in a reexamination proceeding. This is
true< whether such admission results from a patent or
printed publication or from some other source. An admission
as to what is in the prior art is simply that, an admission,
and requires no independent proof. It is an acknowledged,
declared, conceded, or recognized fact or truth,  Ex parte
McGaughey , 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter.
1988). While the scope and content of the admission may
sometimes have to be determined, this can be done from the
record and from the paper file in the same manner as with
patents and printed publications. To ignore an admission by
the patent owner, from any source, and not use the admission
as part of the prior art  in conjunction with patents and
printed  publications  in  reexamination  would  make  it
impossible for the examiner to properly determine the scope
and content of the prior art as required by  Graham,  supra.

  The Board of Appeals upheld the use of an admission in a
reexamination proceeding in Ex parte  Seiko Koko Kabushiki
Kaisha , 225 USPQ 1260 (Bd. Pat. App. & Inter. 1984),  Ex
parte  Kimbell , 226 USPQ 688 (Bd. Pat. App. & Inter. 1985)
and in  Ex parte McGaughey , 6 USPQ2d 1334 (Bd. Pat. App. &
Inter. 1988). In  Seiko , the Board relied on  In re Nomiya
,>509 F.2d 566,< 184 USPQ 607 (CCPA 1975) holding an
admission of prior art in the specification of the parent
undergoing reexamination is considered prior art which may
be considered ** as evidence of obviousness under 35 U.S.C.
103. In  Kimbell >,< the Board referred to the patent
specification and noted the admission by appellant that an
explosion - proof housing was well known at the time of the
invention. In  Ex parte  McGaughey , 6 USPQ2d 1334, 1337
(Bd. Pat. App. & Int. 1988)>,< the Board held that any
equivocal admission relating to prior art is a fact which is
part of the scope and content of the prior art and that
prior art admissions established in the record are to be
considered in reexamination. >An admission from any source
can be used with respect to interpreting or modifying a
prior art patent or printed publication, in a reexamination
proceeding.< The Board expressly overruled the prior Board
decision in  Ex parte Horton,226 USPQ 697 (Bd. Pat. App. &
Inter. 1985) which held that admissions which are used as a
basis for a rejection in reexamination must relate to
patents and printed publications.

  The admission can reside in the patent file (made of
record during the prosecution of the patent application) or
may be presented during the pendency of the reexamination
proceeding or in litigation. Admissions by the patent owner
as to any matter affecting patentability may be utilized to
determine  the  scope  and  content  of  the  prior  art  in

conjunction with patents and printed publications in a prior
art rejection>,< whether such admissions result from patents
or printed publications or from some other source. An
admission relating to any prior art (i.e., on sale, public
use, etc.) established in the record or in court may be used
by the examiner in combination with patents or printed
publications in a reexamination proceeding. The admission
must stand on its own. Information supplementing or further
defining the admission would be improper. Any admission
submitted by the patent owner is proper. A third party,
however, may not submit admissions of the patent owner made
outside the record or the court. Such a submission would be
outside the scope of reexamination.

 >Claim Interpretation and Treatment:<

  Original patent claims will be examined only on the
basis of prior art patents or printed publications applied
under the appropriate parts of 35 U.S.C. 102 and 103. See
MPEP § 2217. During reexamination, claims are given the
broadest  reasonable  interpretation  consistent  with  the
specification and limitations in the specification are not
read into the claims (In re Yamamoto et al . >,740 F.2d
1569,< 222 USPQ 934 (Fed. Cir. 1984)). In a reexamination
proceeding involving claims of an expired patent, which are
not subject to amendment, a policy of liberal (i.e., narrow)
construction should be applied. Such a policy favors a
construction of a patent claim that will render it valid;
i.e., a narrow construction, over a broad construction that
would render it invalid. See  In re Papst - Motoren , 1
USPQ2d 1659 (Bd. Pat. App. & Inter. 1986). The statutory
presumption of validity, 35 U.S.C. 282, has no application
in reexamination (  In re Etter ,>756 F.2d 852,< 225 USPQ 1
(Fed. Cir. 1985)).

 **

 >COMPLIANCE WITH 35 U.S.C. 112<

  ** >Where new claims are presented or where any part of
the disclosure is amended, the claims of the reexamination
proceeding,< are to be examined for compliance with 35
U.S.C. 112 ** >. Consideration< of 35 U.S.C. 112 issues
should >, however,< be limited to the amendatory (i.e., new
language) matter. For example, a claim which is amended or a
new claim which is presented containing a limitation not
found in the original patent claim should be considered for
compliance under 35 U.S.C. 112 only with respect to that
limitation. To go further would be inconsistent with the
statute to the extent that 35 U.S.C. 112 issues would be
raised as to matter in the original patent claim. Thus, a
term in a patent claim which the examiner might deem to be
too broad cannot be considered as too broad in a new or
amended claim unless the amendatory matter in the new or
amended claim creates the issue.

 >35 U.S.C. 112 Issues To Be Considered:

  Compliance of new or amended claims with the enablement
and/or description requirements of the first paragraph of 35
U.S.C. 112 should be considered as to the amendatory and new
text in the reexamination proceeding. Likewise, the examiner
should determine whether the new or amended claims comply
with the second paragraph of 35 U.S.C. 112. MPEP § 2163 - §
2173.05(v) provide extensive guidance as to these matters.

 New matter:

  35 U.S.C. 305 provides for examination under 35 U.S.C.
132, which prohibits the introduction of new matter into the
disclosure. Thus, the question of new matter should be
considered in a reexamination proceeding. See MPEP § 2163.06
as  to  the  relationship  of  the  written  description
requirement of the first paragraph of 35 U.S.C. 112 and the
new matter prohibition under 35 U.S.C. 132. Where the new
matter is added to the claims or affects claim limitations,
the claims should be rejected under 35 U.S.C. 112, first
paragraph, for failing to meet the written description
requirement.

 Amendment of the Specification:

  Where the specification is amended in a reexamination
proceeding,  the  examiner  should  make  certain  that  the
requirements of 35 U.S.C. 112 are met. An amendment to the
specification can redefine the scope of the terms in a claim
such that the claim is no longer clear or is not supported
by  the  specification.  Thus,  an  amendment  to  the
specification can result in the failure of the claims to
comply with 35 U.S.C. 112, even where the claims are not
amended in any respect.

  CLAIMS IN PROCEEDING MUST NOT ENLARGE SCOPE OF THE CLAIMS
  OF THE PATENT

  Where new or amended claims are presented or where any
part of the disclosure is amended, the claims of the
reexamination proceeding should be examined under 35 U.S.C.
305, to determine whether they enlarge the scope of the
original claims. 35 U.S.C. 305(a) states that "no proposed
amended or new claim enlarging the scope of the claims of
the  patent  will  be  permitted  in  a  reexamination
proceeding...".

 Criteria for Enlargement of the Scope of the Claims:

  A broadened claim: A claim is broader than another claim
if it is broader (greater in scope) " in any respect ," even
though it may be narrower in other respects.  In re Freeman,
30 F.3d 1459, 1464, 32 USPQ2d 1444, 1447 (Fed. Cir. 1994).

  A  claim  presented  in  a  reexamination  proceeding
"enlarges the scope" of the claims of the patent being
reexamined where the claim is broader than each and every
claim of the patent.

  If any amended or newly added claim contains within its
scope any conceivable apparatus or process which would not
have infringed any of the original patent claims, then that
reexamination claim would be broader than the original
patent claims. Id. (quoting  Tillotson, Ltd.  v.  Walbro
Corp. , 831 F.2d 1033, 1037 n.2, 4 USPQ2d 1450, 1453 n.2
(Fed. Cir. 1987)).

  The addition of process claims as a new category of
invention to be claimed in the patent (i.e., where there
were no method claims present in the original patent) is
considered as being a broadening of the invention. See Ex
Parte Wikdahl , 10 USPQ2d 1546 (Bd. Pat. App. & Inter.
1989).

 Amendment of the Specification:

  Where the specification is amended in a reexamination
proceeding,  the  examiner  should  make  certain  that  the
amendment does not enlarge the scope of the claims of the
patent. An amendment to the specification can enlarge the
scope of the claims by redefining the scope of the terms in
a claim, even where the claims are not amended in any
respect.

 Rejection of Claims Where There Is Enlargement:

  Any claim which enlarges the scope of the claims of the
patent should be rejected under 35 U.S.C. 305(a). Form
Paragraph 22.11 is to be employed in making the rejection.

¶ 22.11  Rejection, 35 U.S.C. 305, Claim Enlarges Scope
of Patent

  Claim [1] rejected under 35 U.S.C. 305(a) as enlarging
the scope of the claim(s) of the patent being reexamined. In
35 U.S.C. 305(a), it is stated that "[n]o proposed amended
or new claim enlarging the scope of a claim of the patent
will be permitted in a reexamination proceeding...." A claim
presented in a reexamination proceeding "enlarges the scope"
of the patent claim(s) where the claim is broader than any
claim of the patent. A claim is broadened if it is broaderin
any respect , even though it may be narrower in other
respects.

  [2].

 Examiner Note:

  The claim limitations which are considered to broaden
the scope should be identified and explained in bracket [2].
See MPEP § 2258.

  OTHER MATTERS

  Where some of the patent claims in a patent being
reexamined have been the subject of a prior Office or court
decision, see MPEP § 2242. Where other proceedings involving
the patent are copending with the reexamination proceeding,
see MPEP § 2282 - § 2286.<

  Although a request for reexamination may not specify all
claims as presenting a substantial new question, each claim
of  the  patent  *  will  be  reexamined.  The  resulting
reexamination certificate will indicate the status of all of
the pa tent claims and any added patentable claims.

  Restriction  requirements  cannot  be  made  in  a
reexamination proceeding since no statutory basis exists **
>for restriction in a reexamination proceeding<.

  There are matters ancillary to reexamination which are
necessary  and  incident  to  patentability  which  will  be
considered. Amendments may be made to the specifiction to
correct,  for  example,  an  inadvertent  failure  to  claim
foreign priority or the continuing status of the patent
relative to a parent application if such correction is
necessary to overcome a reference applied against a claim of
the patent. No renewal of previously made claims for foreign

priority under 35 U.S.C. 119 or continuing status of the
application  under  35  U.S.C.  120,  is  necessary  during
reexamination. Correction of inventorship may also be made
during reexamination.

  Affidavits under 37 CFR 1.131 and 1.132 may be utilized
in  a  reexamination  proceeding.  Note,  however,  that  an
affidavit under 37 CFR 1.131 may not be used to "swear back"
of a reference patent if the reference patent is claiming
the same invention as the patent undergoing reexamination.
In such a situation, the patent owner may, if appropriate,
seek to raise this issue in an interference proceeding via
an  appropriate  reissue  application  if  such  a  reissue
application may be filed.

  Patent claims not subject to reexamination because of
their prior adjudication by a court should be identified.
See MPEP § 2242.

  For  handling  a  dependent  claim  in  reexamination
proceedings, see MPEP § 2260.01. All added claims will be
examined.

  Where grounds set forth in a prior Office or Federal
Court decision, which are not based on patents or printed
publications clearly raise questions as to the claims, the
examiner's Office action should clearly state that the
claims have not been examined as to those grounds not based
on patents or printed publications stated in the prior
decision. See 37 CFR 1.552(c). See In re Knight , 217 USPQ
294 (Comm'r Pat. 1982). All claims under reexamination
should, however, be reexamined on the basis of prior patents
and printed publications.

  If questions other than those indicated above (for
example, questions of patentability based on the public use
or sale, fraud, abandonment under 35 U.S.C. 102(c), etc.)
are  discovered  during  a  reexamination  proceeding,  the
existence of such questions will be noted by the examiner in
an Office action, in which case the patent owner may desire
to consider the advisability of filing a reissue application
to  have  such  questions  considered  and  resolved.  Such
questions could arise in a reexamination requester's 37 CFR
1.510 request or in a 37 CFR 1.535 reply by the requester.
Note Form Paragraph 22.03.

¶ 22.03  Issue Not Within Scope of Reexamination

  It is noted that an issue not within the scope of
reexamination proceedings has been raised. [1]. The issue
will not be considered in a reexamination proceeding. 37 CFR
1.552(c). While this issue is not within the scope of
reexamination, the patentee is advised that it may be
desirable to consider filing a  reissue application provided
that  the  patentee  believes  one  or  more  claims  to  be
partially or wholly inoperative or invalid based upon the
issue.

 Examiner Note:

  1. In bracket 1, identify the issues.

  2. This paragraph may be used either when the request for
reexamination is based upon issues such as public use or
sale, fraud, or abandonment of the invention, or when

questions are discovered during a reexamination proceeding.

  Where a request for reexamination is filed on a patent
after **>it has been reissued<, reexamination will be denied
because the patent on which the request for reexamination is
based has been surrendered. Should reexamination of the
reissued patent be desired, a new request for reexamination
including >,< and based on >,< the specification and claims
of the reissue patent must be filed. Where the reissue
patent  issues  after  the  filing  of  a  request  for
reexamination, see MPEP § 2285.

2259  Collateral Estoppel In Reexamination Proceedings

  MPEP § 2242 and § 2286 relate to the Office policy
controlling the determination on a request for reexamination
and subsequent reexamination where there has been a Federal
Court decision on the merits as to the patent for which
reexamination  is  requested.  Since  claims  finally  held
invalid  by  a  Federal  court  will  be  withdrawn  from
consideration and not reexamined during a reexamination
proceeding,  no  rejection  on  the  grounds  of  collateral
estoppel will be appropriate in reexamination.

2260  Office Actions

 37 CFR 1.104.  Nature of examination, examiner's action
reads in part:

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

  (b) . . in the case of a reexamination proceeding, both
the patent owner and the requester, will be notified of the
examiner's action. The reasons for any adverse action or any
objection or requirement will be stated and such information
or references will be given as may be useful in aiding the .
. . patent owner, to judge the propriety of continuing
prosecution.

  *****

  It is intended that the examiner's first ex parte action
on the merits be the primary action to establish the issues
which exist between the examiner and the patent owner
insofar as the patent is concerned. At the time the first
action  is  issued,  the  patent  owner  has  already  been
permitted to file a statement and an amendment pursuant to
37 CFR 1.530; and the reexamination requester, if the
requester is not the patent owner, has been permitted to
reply thereto pursuant to 37 CFR 1.535. Thus, at this point,
the issues should be sufficiently focused to enable the
examiner to make a definitive first  ex parte action on the
merits which should clearly establish the issues which exist
between the examiner and the patent owner insofar as the
patent is concerned. In view of the fact that the examiner's
first action will clearly establish the issues, the first
action should include a statement cautioning the patent

owner that a complete response should be made to the action
since the next action is expected to be a final rejection.
The first action should further caution the patent owner
that the requirements of 37 CFR 1.116(b) will be strictly
enforced a fter final rejection and that any amendments
after final rejection must include "a showing of good and
sufficient reasons why they are necessary and were not
earlier presented" in o rder to be considered The language
of Form Paragraph 22.04 is appropriate for inclusion in the
first Office action:

¶ 22.04  Papers to be Submitted in Response to Action

  In order to ensure full consideration of any amendments,
affidavits or declarations, or other documents as evidence
of  patentability,  such  documents  must  be  submitted  in
response to this Office action. Submissions after the next
Office action, which is intended to be a final action, will
be governed by the requirements of 37 CFR 1.116, which will
be strictly enforced.

2260.01  Dependent Claims

  If a base patent claim has been rejected or canceled,
any claim which is directly or indirectly dependent thereon
should  be  allowed  if  it  is  otherwise  allowable.  The
dependent claim should not be objected to or rejected merely
because it depends on a rejected or canceled claim. No
requirement should be made for rewriting the dependent claim
in independent form. As the original patent claim numbers
are not changed in a reexamination proceeding, the content
of the canceled base claim would remain in the printed
patent and would be available to be read as a part of the
allowed dependent claim.

  If a new claim (a claim other than a claim appearing in
a patent) has been canceled in a reexamination proceeding, a
claim  which  depends  thereon  should  be  rejected  as
incomplete. If a new base claim is rejected, a claim
dependent thereon should be objected to if it is otherwise
allowable and a requirement made for rewriting the dependent
claim in independent form.

2261  Special Status For Action [R - 3]

 35 U.S.C. 305. Conduct of reexamination proceedings.

  *****

  All  reexamination  proceedings  under  this  section,
including any appeal to the Board of Patent Appeals and
Interferences,  will  be  conducted  with  special  dispatch
within the Office.

  In view of the requirement for "special dispatch,"
reexamination proceedings will be "special" throughout their
pendency in the Office. The examiner's first action on the
merits should be completed within 1 month of the filing date
of the requester's reply (37 CFR 1.535), or within 1 month
of the filing date of the patent owner's statement (37 CFR
1.530) if there is no requester other than the patent owner.
If no submissions are made under either 37 CFR 1.530 or 37
CFR  1.535,  the  first  action  on  the  merits  should  be
completed within * > 1 <  month of any due date for such
submission. Mailing of the first action should occur within

6 WEEKS after the appropriate filing or due date of any
statement and any reply thereto.

  Any cases involved in litigation, whether they are
reexamination proceedings or reissue applications, will have
priority over all other cases. Reexamination proceedings not
involved in litigation will have priority over all other
cases  except  reexaminations  or  reissues  involved  in
litigation.

2262  Form and Content of Office Action

  The examiner's first Office action will be a statement
of the examiner's position and should be so complete that
the second Office action can properly be made a final
action. See MPEP § 2271.

  All Office actions are to be written or dictated and
then typed. The first Office action must be sufficiently
detailed that the pertinency and manner of applying the
cited prior art to the claims is clearly set forth therein.
If the examiner concludes in any Office action that one or
more of the claims are patentable over the cited patents or
printed publications, the examiner should indicate why the
claim(s) is clearly patentable in a manner similar to that
used to indicate reasons for allowance (MPEP § 1302.14). If
the record is clear why the claim(s) is clearly patentable,
the examiner may refer to the particular portions of the
record which clearly establish the patentability of the
claim(s). The first action should also respond to the
substance of each argument raised by the patent owner and
requester pursuant to 37 CFR 1.510, 1.530, and 1.535. If
arguments  are  presented  which  are  inappropriate  in
reexamination, they should be treated in accordance with 37
CFR 1.552(c). It is especially important that the examiner's
action in reexamination be thorough and complete in view of
the finality of a reexamination proceeding and the patent
owner's inability to file a continuation proceeding.

  Normally, the title will not need to be changed during
reexamination. If a change of the title is necessary, it
should be done as early as possible in the prosecution as a
part of an Office Action. If all of the claims are allowed
and a Notice of Intent to Issue a Reexamination Certificate
has been or is to be mailed, a change to the title of the
invention by the examiner may only be done by way of an
Examiner's  Amendment.  Changing  the  title  and  merely
initiating the change is NOT permitted in reexamination.

  A sample of a first Office action of reexamination
proceedings is set forth below.

 **  Double Click here to see the image  **

  Claims 1 - 3 of the Smith patent are not being
reexamined in view of the final decision in the ABC Corp. v.
Smith , 999 USPQ 99 (Fed. Cir. 1999). Claims 1 - 3 were held
not valid by the Court.

  The following is a quotation of 35 U.S.C. 103 which
forms the basis for all obviousness rejections set forth in
this Office action:

 A patent may not be obtained though the invention is not

identically disclosed or described as set forth in section
102 of this title, if the differences between the subject
matter sought to be patented and the prior art are such that
the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which
the invention was made.

 Subject matter developed by another person, which qualifies
as prior art only under subsection (f) or (g) of section 102
of this title, shall not preclude patentability under this
section where the subject matter and the claimed invention
were, at the time the invention was made, owned by the same
person, or subject to an obligation of assignment to the
same person.

  Claims 4 and 6 are rejected under 35 U.S.C. 103 as being
unpatentable over Berridge in view of McGee.

  Berridge teaches extruding a chlorinated polymer using
the same extrusion structure recited in Claims 4 and 6 of
the Smith patent. However, Berridge does not show supporting
the extrusion barrel at 30 degrees to the horizontal, using
spring  supports.  McGee  teaches  spring  supporting  an
extrusion barrel at an angle of 25 - 35 degrees, in order to
decrease imperfections in extruded chlorinated polymers. It
would have been obvious to one of ordinary skill in the
polymer extrusion art to support the extrusion barrel of
Berridge on springs and at an angle of 30 degrees because
McGee teaches this to be known in the polymer extrusion art
for  decreasing  imperfections  in  extruded  chlorinated
polymers.

  Claim 5 is patentable over the prior art patents and
printed publications because of the specific extrusion die
used with the Claim 4 spring - supported barrel. This serves
to  even  further  reduce  imperfections  in  the  extruded
chlorinated polymers and is not taught by the art of record,
alone or in combination.

  It is noted that an issue not within the scope of
reexamination proceedings has been raised. In the above -
cited final Court decision, a question is raised as to the
possible public use of the invention of Claim 6. This
question was also raised by requester in the reply to the
owner's statement. The issue will not be considered in a
reexamination proceeding (37 CFR 1.552(c)). While this issue
is not within the scope of reexamination, the patentee is
advised that it may be desirable to consider filing a
reissue application provided that the patentee believes one
or more claims to be partially or wholly inoperative or
invalid based upon the issue.

  Swiss Patent 80555 and the American Machinist article
are cited to show cutting and forming extruder apparatus
somewhat similar to that claimed in the Smith patent.

  In  order  to  ensure  full  consideration  of  any
amendments,affidavits, or declarations, or other documents
as  evidence  of  patentability,  such  documents  must  be
submitted in response to this Office action. Submissions
after the next Office action, which is intended to be a
final action, will be governed by the requirements of 37 CFR
1.116 which will be strictly enforced.

  Any inquiry concerning this communication should be
directed to Kenneth Schor at telephone number (703) 308 -
3606.

  /s/  Kenneth  Schor  Examiner,  Gp  1300  Reviewed  for
procedure MPEP 2286 /s/ Group Director, Gp 1300

 **  Double Click here to see the image  **

 **  Double Click here to see the image  **

2263  Time for Response [R - 3]

  A shortened statutory period of 2 MONTHS will be set for
response to Office actions, except where the reexamination
results from a court order or litigation is stayed for
purposes of reexamination, in which case the shortened
statutory period will be set at 1 month. See MPEP § 2286.
Note, however, that this 1 - month policy does NOT apply to
the 2 - month period for the filing of a statement under 37
CFR 1.530, which 2 - month period is set by 35 U.S.C. 304.

  Where a reexamination proceeding has been stayed because
of  a  copending  reissue  application,  and  the  reissue
application is abandoned, all actions in the reexamination
after the stay has been removed will set a*>1< month
shortened  statutory  period  unless  a  longer  period  for
response is clearly warranted by nature of the examiner's
action; see MPEP § 2285.

2264  Mailing of Office Action

  All forms will be structured so that the printer can be
used  to  print  the  identifying  information  for  the
reexamination file and the owner's name and address -
usually the legal representative, and only the first owner
where there are multiple owners. The forms granting or
denying  the  request  for  reexamination  will  have  the
requester's name and address at the bottom left hand corner
so as to provide the patent owner with requester's name and
address. All actions will have a courtesy copy mailed to the
requester by typing "cc Requester" at the bottom of each
action. A transmittal form PTOL - 465 is used for each
requester and owner in addition to the one named on the top
of the Office action.

  The transmittal form will be used as a master to make a
copy to be sent with the Office action to the requester and
any additional owner. The number of transmittal form(s)
provide a ready reference for the number of copies to be
made with each action and allow use of the window envelopes.
When the requester is the patent owner, the reexamination
clerk will indicate on the file wrapper: No copies needed -
Requester is Owner. A transmittal form could also be placed
inside the file with a similar notation to alert typists,
the examiner, and anyone else taking part in the processing
of the reexamination that no additional copies are needed.

2265  Extension of Time [R - 3]

 >37 CFR 1.550.  Conduct of reexamination proceedings.

  (c) The time for taking any action by a patent owner in a
reexamination  proceeding  will  be  extended  only  for
sufficient cause, and for a reasonable time specified. Any
request for such extension must be filed on or before the
day on which action by the patent owner is due, but in no
case will the mere filing of a request effect any extension.
See § 1.304(a) for extensions of time for filing a notice of
appeal to the U.S.C. ourt of Appeals for the Federal Circuit
or for commencing a civil action.<

  *****

  The provisions of 37 CFR 1.136(a) and (b) are NOT
applicable  to  reexamination  proceedings  under  any
circumstances. Public Law 97 - 247 amended 35 U.S.C. 41 to
authorize the Commissioner to charge fees for extensions of
time to take action in an "application." A reexamination
proceeding does not involve an "application." 37 CFR 1.136
authorizes  extensions  of  the  time  period  only  in  an
application in which an applicant must respond or take
action.  There  is  neither  an  "application,"  nor  an
"applicant" involved in a reexamination proceeding. >An
extension of time in a reexamination proceeding is requested
pursuant to 37 CFR 1.550(c). Accordingly, a request for an
extension must be filed (1) on or before the day on which
action by the patent owner is due and (2) must set forth
sufficient  reason  for  the  extension.<  Requests  for  an
extension of time in a reexamination proceeding will be
considered  only  after  the  decision  to  grant  or  deny
reexamination is mailed. Any request filed before that
decision  will  be  denied.  The  certificate  **  >and  the
certificate of transmission procedures< (37 CFR 1.8) and
>the< "Express Mail" ** >mailing procedure< (37 CFR 1.10) *
may be used to file >a request for extension of mail, as
well as< any >other< paper in * >an existing< reexamination
proceeding (see MPEP § 2266).

  With the exception of an automatic 1 - month extension
of time to take further action which will be granted upon
filing a first timely response to a final Office action>(see
MPEP § 2272)<, all requests for extensions of time to file a
patent owner statement under 37 CFR 1.530 or respond to any
subsequent Office action in a reexamination proceeding must
be filed under 37 CFR 1.550(c) and will be decided by the **
>Group Director< of the patent examining group conducting
the  reexamination  proceeding.  These  requests  for  an
extension of time will be granted only for sufficient cause
and must be filed on or before the day on which action by
the patent owner is due. In no case will mere filing of a
request for extension of time automatically effect any
extension. Evaluation of whether sufficient cause has been
shown for an extension must be made in the context of
providing the patent owner with a fair opportunity to
present an argument against any attack on the patent, and
the requirement of the statute (35 U.S.C. 305) that the
proceedings be conducted with special dispatch. In no case,
except in the after final practice noted above, will the
mere filing of a request effect any extension.

  Any request for an extension of time in a reexamination
proceeding  must  fully  state  the  reasons  therefor.  All
requests must be submitted in a separate paper which will be
forwarded to the ** >Group Director< for action. A request
for an extension of the time period to file a petition from
the denial of a request for reexamination can only be

entertained by filing a petition under 37 CFR 1.183 with
appropriate fee to waive the time provisions of 37 CFR
1.515(c). Since the reexamination examination process is
intended to be essentially ex parte , the party requesting
reexamination can anticipate that requests for an extension
of time to file a petition under 37 CFR 1.515(c) will be
granted only in extraordinary situations. >The time for
filing a third party requester reply under 37 CFR 1.535 to
the patent owner's statement cannot be extended under any
circumstances.< No extensions will be permitted to the time
for filing a reply under 37 CFR 1.535 by the requester **
>because the 2 - month period for filing the reply is a
statutory period. It should be noted that a statutory period
for response cannot be waived. See MPEP § 2251.<

  Ex parte prosecution will be conducted by initially
setting either a 1 - month or a 2 - month shortened period
for response, see MPEP § 2263. The patent owner also will be
given a 2 - month statutory period after the order for
reexamination to file a statement. See 37 CFR 1.530(b).
First  requests  for  extensions  of  these  statutory  time
periods will be granted for sufficient cause, and for a
reasonable time specified - usually 1 month. The reasons
stated in the request will be evaluated by the ** >Group
Director<, and the requests will be favorably considered
where there is a factual accounting of reasonably diligent
behavior by all those responsible for preparing a response
within the statutory time period. Second or subsequent
requests for extensions of time or requests for more than 1
month will be granted only in extraordinary situations. Any
request  for  an  extension  of  time  in  a  reexamination
proceeding to file a notice of appeal, a brief or reply
brief, or a request for reconsideration or rehearing will be
considered under the provisions of 37 CFR 1.550(c). The time
for filing the notice and reasons of appeal to the U.S.C.
ourt of Appeals for the Federal Circuit or for commencing a
civil action will be considered under the provisions of 37
CFR 1.304.

 FINAL ACTION - TIME FOR RESPONSE

  The after - final practice in reexamination proceedings
did not change October 1, 1982, and the automatic extension
of time policy for response to a final rejection and
associated practice are still in effect in reexamination
proceedings.

  The filing of a timely first response to a final
rejection having a shortened statutory period for response
is construed as including a request to extend the shortened
statutory period for an additional month, which will be
granted even if previous extensions have been granted, but
in no case may the period for response exceed 6 months from
the date of the final action. Even if pre vious extensions
have been granted, the primary examiner is authorized to
grant the request for extension of time which is implicit in
the filing of a timely first response to a final rejection.
>It should be noted that the filing of any timely first
response to a final rejection will be construed as including
a request to extend the shortened statutory period for an
additional month, even an informal response and even a
response that is not signed.< An object of this practice is
to obviate the necessity for appeal merely to gain time to
consider  the examiner's position in reply to an amendment
timely  filed  after  final  rejection.  Accordingly,  the

shortened statutory period for response to a final rejection
to which a proposed first response has been received will *
be extended*>1< month. Note that the Office policy of
construing a response after final as inherently including a
request for a 1 - month extension of time applies only to
the first response to the final rejection.

  Normally, examiners will complete a response to an
amendment after final rejection within 5 days after receipt
thereof. In those rare situations where the advisory action
cannot be mailed in sufficient time for the patent owner to
consider  the  examiner's  position  with  respect  to  the
proposed  first  response  before  termination  of  the
proceeding, the granting of additional time to complete the
response to the final rejection or to take other appropriate
action would be appropriate. See Groz & Sohme v.  Quigg , 10
USPQ2d 1787 (D.D.C. 1988). >The additional time should be
granted by the examiner, and the time granted should be set
forth in the advisory Office action.< The advisory action
form (PTOL -*>467<) states that "THE PERIOD FOR RESPONSE IS
EXTENDED TO RUN ___ MONTHS FROM THE DATE OF THE FINAL
REJECTION." The blank before "MONTHS" should be filled in
with an integer (2, 3, 4, 5, or 6); fractional months should
not be indicated. In no case can the period for reply to the
final rejection be extended to exceed*>6< months from the
mailing date thereof. An appropriate response (e.g., a
second or subsequent amendment or a notice of appeal) must
be filed within the extended period for response. If patent
owner elects to file a second or subsequent amendment, it
must place the reexamination in condition for allowance or
the reexamination proceeding stands terminated under 37 CFR
1.550(d) unless an appropriate notice of appeal was filed
before the expiration of the response period.

  EXTENSIONS OF TIME TO SUBMIT AFFIDAVITS AFTER FINAL
  REJECTION

  Frequently, patent owners request an extension of time,
stating as a reason therefor that more time is needed in
which to submit an affidavit. When such a request is filed
after final rejection, the granting of the request for
extension of time is without prejudice to the right of the
examiner to question why the affidavit is now necessary and
why it was not earlier presented. If the patent owner's
showing is insufficient, the examiner may deny entry of the
affidavit,  notwithstanding  the  previous  grant  of  an
extension of time to submit it. The grant of an extension of
time in these circumstances serves merely to keep the
proceeding  from  becoming  terminated  while  allowing  the
patent owner the opportunity to present the affidavit or to
take other appropriate action. Moreover, prosecution of the
reexamination to save it from termination must include such
timely, complete and proper action as required by 37 CFR
1.113. The admission of the affidavit for purposes other
than allowance of the claims, or the refusal to admit the
affidavit, and any proceedings relative, thereto, shall not
operate to save the proceeding from termination.

  Implicit  in  the  above  practice  is  the  fact  that
affidavits submitted after final rejection are subject to
the same treatment as amendments submitted after final
rejection, In re Affidavit Filed After Final Rejection,152
USPQ 292, 1966 C.D. 53 (Comm'r Pat. 1966).

2266  Responses [R - 3]

  The patent owner cannot file papers on behalf of a third
party. 37 CFR 1.550(e). If a third party paper accompanies
or is submitted as part of a timely filed response, the
response and third party paper are considered to be an
improper submission under 37 CFR 1.550(e), and the entire
submission shall be returned to the patent owner since the
Office will not determine which portion of the submission is
the third party paper. The third party paper will not be
considered. The decision returning the improper response and
the  third  party  paper  should  provide  an  appropriate
extension of time under 37 CFR 1.550(c) to refile the patent
owner response without the third party paper. See MPEP §
2254 and § 2267.

  If  the  patent  owner  fails  to  file  a  timely  and
appropriate response to any Office action, the reexamination
proceeding will be terminated and the Commissioner will
proceed  to  issue  a  reexamination  certificate.  The
certificate will normally issue indicating the status of the
claims as indicated in the last Office action. All rejected
claims should be canceled.

  The patent owner may request reconsideration of the
position stated in the Office action, with or without
amendment to the claims. Any request for reconsideration
must be in writing and must distinctly and specifically
point out the supposed errors in the examiner's action. A
general allegation that the claims define a patentable
invention without specifically pointing out how the language
of  the  claims  patentably  distinguishes  them  over  the
references is inadequate and is not in compliance with 37
CFR 1.111(b).

  Affidavits under 37 CFR 1.131 and 1.132 may be utilized
in  a  reexamination  proceeding.  Note,  however,  that  an
affidavit under 37 CFR 1.131 may not be used to "swear back"
of a reference patent if the reference patent is claiming
the same invention as the patent undergoing reexamination.
In such a situation the patent owner may, if appropriate,
seek to raise this issue in an interference proceeding via
an  appropriate  reissue  application  if  such  a  reissue
application may be filed.

  The certificate ** procedures (37 CFR 1.8 **) >and
"Express Mail" mailing procedure (37 CFR 1.10)< may be used
to file any paper in a reexamination proceeding.

2267  Handling of Inappropriate or Untimely Filed Papers
[R - 3]

  The applicable regulations (37 CFR 1.501(a), 1.550(e))
provide that certain types of correspondence will not be
considered or acknowledged unless timely received. In every
case, a decision is required as to the type of paper and
whether it is timely.

  The return of inappropriate submissions complies with
the regulations that certain papers will not be considered
and also reduces the amount of paper which would ultimately
have to be stored with the patent file.

  DISPOSITION OF PAPERS

  Where papers are filed during reexamination proceedings

which are inappropriate because of some defect, such papers
will either be returned to the sender or forwarded to one of
three files, the "Reexamination File," the "Patent File," or
the "Storage File." Any papers returned to the sender from
an  examining  group  must  be  accompanied  by  a  letter
indicating signature and approval of the group director.

  TYPES OF PAPERS RETURNED WITH COMMISSIONER'S OR GROUP
  DIRECTOR'S APPROVAL REQUIRED

 Filed by Owner  A. Premature Response by Owne  r

 § 1.530  Where the patent owner is NOT the re quester,
§ 1.540 any response or amendment filed by owner prior to an
order to reexamine is premature and will be returned and
will not be considered.

 § 1.550(e)  B. Paper Submitted on Behalf of Third Party
Submission filed on behalf of a third party will be returned
and will not be considered. Where third party paper is
submitted as part of a patent owner response, see MPEP §
2254 and § 2266.

 Filed by Requester  A. No Statement Filed by Owner

 § 1.535  If a patent owner fails to file a statement
within the prescribed limit, any reply by the requester is
inappropriate and will be re - turned and will not be
considered.

  B. Late Response by Requester

 § 1.535  Any response subsequent to*>2< months from §
1.540 the date of service of the patent owner's statement
will be returned and will not be considered.

  C. Additional Response by Requester

 § 1.550(e)  The active participation of the reexamina tion
requester ends with the reply pursuant to § 1.535. Any
further submission on behalf of requester will be returned
and will not be considered.

  Filed by Third Party

 § 1.501  Unless a paper submitted by a third party §
1.565(a) raises only issues appropriate under § 1.501, or
consists solely of a prior decision on the patent by another
forum, e.g., a court (see MPEP § 2207, § 2282, and § 2286),
it  will  be  returned  to  an  identified  third  party  or
destroyed if the submitter is unidentified.

  The "Reexamination File" and the "Patent File" will
remain  together  in  central  storage  area  prior  to  a
determination to reexamine but once an order to reexamine is
mailed, the "Patent File" will be maintained in the assigned
examiner's room.

 TYPES OF DEFECTIVE PAPERS TO BE LOCATED IN THE
  "REEXAMINATION FILE"

 Filed by Owner  A. Unsigned Papers

 § 1.33  Papers filed by owner which are unsigned or
signed by less than all of the owners (no attorney of record

or acting in representative capacity). B. No Proof of
Service

 § 1.248  Papers filed by the patent owner in which no
proof of service on requester is included and proof of
service  is  required,  may  be  denied  consideration.  C.
Untimely Papers

 § 1.530(b)  Where owner has filed a paper which is

 § 1.540  untimely, that is, it was filed after the

  period  set  for  response,  the  paper  will  not  be
considered.

 Filed by Requester  A. Unsigned Papers

  Papers filed by requester which are unsigned will not be
considered.

  B. No Proof of Service

 § 1.510(b)(5)  Papers filed by requester in which no
proof

 § 1.33  of service on owner is included and where

 § 1.248  proof of service is required may be denied
consideration.

  The "Storage Filed" will be maintained separate and
apart from the other two files and at a location selected by
the group director. For example, the group director may want
to locate the "Storage File" in a central area in the group
as with the reexamination clerk or in his own room.

  PAPERS LOCATED IN THE "STORAGE FILE"

 § 1.501  Citations by Third Parties

 § 1.550(e)  Submissions by third parties based solely on
prior art patents or publications filed after the date of
the order to reexamine are not entered into the patent file
but delayed until the reexamination proceedings have been
terminated.

 Proper timely filed citations by third parties are placed
in the "Patent File."

2268  Petition for Entry of Late Papers

  Due to the "special dispatch" provision of 35 U.S.C.
305, it is necessary and appropriate that the Office adhere
strictly to the time limit set by the Rules. However, due to
the fact substantial property rights are involved in patents
undergoing  reexamination,  the  Office  will  consider,  in
appropriate  circumstances,  petitions  showing  unavoidable
delay under 35 U.S.C. 133 where untimely papers are filed
subsequent to the order for reexamination (37 CFR 1.525).
Such petitions will be decided by the Assistant Commissioner
for Patents. Any such petition must detail the specific
circumstances necessitating the showing of unavoidable delay
and provide evidence to support the request.

  Under ordinary circumstances, the failure to timely file

a statement pursuant to 37 CFR 1.530 or a reply pursuant to
37 CFR 1.535 would not constitute adequate basis to justify
a showing of unavoidable delay regardless of the reasons for
the failure since no rights are lost by the failure to file
these documents. However, the failure to timely respond to
an  Office  action  rejecting  claims  may,  in  rare
circumstances, justify such a showing since rights may be
lost by the failure to timely respond. In this regard see In
re Katrapat , 6 USPQ2d 1863 (Comm'r Pat. 1988) and  In re
Egbers , 6 USPQ2d 1869 (Comm'r Pat. 1988).

2269  Reconsideration

  After response by the patent owner (37 CFR 1.111), the
patent under reexamination will be reconsidered and the
patent owner notified if claims are rejected or objections
or requirements made. The patent owner may respond to such
Office action with or without amendment and the patent under
reexamination will be again considered, and so on repeatedly
unless the examiner has indicated that the action is final.
See 37 CFR 1.112. Any amendment after the second Office
action, which will normally be final as provided for in MPEP
§ 2271, must ordinarily be restricted to the rejection or to
the objection or requirement made.

2270  Clerical Handling

  The person designated as the reexamination clerk will
handle most of the initial clerical processing of the
reexamination file.

  Amendments which comply with 37 CFR 1.121(f) will be
entered for purposes of reexamination in the reexamination
file wrapper. See MPEP § 2234 and § 2250 for manner of
entering amendments.

  For  entry  of  amendments  in  a  merged  reissue  -
reexamination proceeding, see MPEP § 2283 and § 2285.

  All amendments to the specification prior to final
action will be entered for purposes of the reexamination
proceeding even though they do not have legal effect until
the certificate is issued. Any "new matter" amendment will
be required to be canceled from the description, and claims
containing new matter will be rejected under 35 U.S.C. 112.
A "new matter" amendment to the drawing is ordinarily not
entered. See MPEP § 608.04, § 608.04(a) and (c).

2271  Final Action

  Before a final action is in order, a clear issue should
be developed between the examiner and the patent owner. To
bring the prosecution to a speedy conclusion and at the same
time deal justly with the patent owner and the public, the
examiner will twice provide the patent owner with such
information and references as may be useful in defining the
position of the Office as to unpatentability before the
action is made final. Initially, the decision ordering
reexamination of the patent will contain an identification
of the new questions of patentability that the examiner
considers to be raised by the prior art considered. In
addition,  the  first  Office  action  will  reflect  the
consideration of any arguments and/or amendments contained
in the request, the owner's statement filed pursuant to 37
CFR 1.530, and any reply thereto by the requester, and

should fully apply all relevant grounds of rejection to the
claims.

  The statement which the patent owner may file under 37
CFR 1.530 and the response to the first Office action should
completely respond to and/or amend with a view to avoiding
all outstanding grounds of rejection.

  It is intended that the second Office action in the
reexamination proceeding following the decision ordering
reexamination will be made final in accordance with the
guidelines set forth in MPEP § 706.07(a). The examiner
should not prematurely cut off the prosecution with a patent
owner who is seeking to define the invention in claims that
will offer the patent protection to which the patent owner
is entitled. However, both the patent owner and the examiner
should recognize that a reexamination proceeding may result
in the final cancellation of claims from the patent and that
the patent owner does not have the right to renew or
continue the proceedings by refiling under 37 CFR 1.60 or
1.62. Complete and thorough actions by the examiner coupled
with complete responses by the patent owner, including early
presentation of evidence under 37 CFR 1.131 or 1.132, will
go far in avoiding such problems and reaching a desirable
early termination of the reexamination proceeding. In making
a final rejection, all outstanding grounds of rejection of
record should be carefully reviewed and any grounds or
rejection relied on should be reiterated. The grounds of
rejection must (in the final rejection) be clearly developed
to such an extent that the patent owner may readily judge
the advisability of an appeal. However, where a single
previous Office action contains a complete statement of a
ground of rejection, the final rejection may refer to such a
statement  and  also  should  include  a  rebuttal  of  any
arguments raised in the patent owner's response. The final
rejection letter should conclude with a statement that: "The
above rejection is made FINAL."

  As with all other Office correspondence on the merits in
a reexamination proceeding, the final Office action must be
signed by a primary examiner.

2272  After Final Practice

  It is intended that prosecution before the examiner in a
reexamination proceeding will be concluded with the final
action. Once a final rejection that is not premature has
been entered in a reexamination proceeding, the patent owner
no longer has any right to unrestricted further prosecution.
Consideration of amendments submitted after final rejection
will be governed by the strict standards of 37 CFR 1.116.
Note, however, the patent owner is entitled to know the
examiner's ruling on a timely response filed after final
rejection before being required to file a notice of appeal.
Accordingly, the period for response to the final rejection
should be appropriately extended in the examiner's advisory
action. See Groz & Sohne v.  Quigg , 10 USPQ2d 1787 (D.D.C.
1988). The period for response may not be extended to run
past 6 months from the date of the final rejection. Both the
examiner  and  the  patent  owner  should  recognize  that
substantial  patent  rights  will  be  at  issue  with  no
opportunity for the patent owner to refile under 37 CFR 1.60
or 1.62 in order to continue prosecution. Accordingly, both
the examiner and the patent owner should identify and
develop  all  issues  prior  to  the  final  Office  action,

including the presentation of evidence under 37 CFR 1.131
and 1.132.

  FINAL REJECTION - TIME FOR RESPONSE

  The statutory period for response in a reexamination
proceeding will normally be two (2) months. If a response to
the final rejection is filed, the period for response
typically will be extended to run 3 months from the date of
the final rejection in the advisory action unless a previous
extension of time has been granted or the advisory action
cannot be mailed in sufficient time. See also MPEP § 2265.

 ACTION BY EXAMINER

  It should be kept in mind that a patent owner cannot, as
a matter of right, amend any finally rejected claims, add
new claims after a final rejection, or reinstate previously
canceled claims. A showing under 37 CFR 1.116(b) is required
and will be evaluated by the examiner for all proposed
amendments after final rejection except where an amendment
merely  cancels  claims,  adopts  examiner's  suggestions,
removes issues for appeal, or in some other way requires
only a cursory review by the examiner. An amendment filed at
any time after final rejection but before an appeal brief is
filed, may be entered upon or after filing of an appeal
provided the total effect of the amendment is to (1) remove
issues for appeal, and/or (2) adopt examiner suggestions.

  The first proposed amendment after final action in a
reexamination  proceeding  will  be  given  sufficient
consideration to determine whether it places all the claims
in condition where they are patentable and/or whether the
issues on appeal are reduced or simplified. Unless the
proposed amendment is entered in its entirety, the examiner
will briefly explain the reasons for not entering a proposed
amendment. For example, if the claims as amended present a
new issue requiring further consideration or search, the new
issue should be identified and a brief explanation provided
as to why a new search or consideration is necessary. The
patent owner should be notified if certain portions of the
amendment would be entered if a separate paper was filed
containing only such amendment.

  Any second or subsequent amendment after final will be
considered only to the extent that it removes issues for
appeal or puts a claim in obvious patentable condition.

  Since patents undergoing reexamination cannot become
abandoned and cannot be refiled, and since the holding of
claims  unpatentable  and  canceled  in  a  certificate  is
absolutely  final,  it  is  appropriate  that  the  examiner
consider the feasibility of entering amendments touching the
merits after final rejection or after appeal has been taken,
where there is a showing why the amendments are necessary
and a suitable reason is given why they were not earlier
presented.

2273  Appeal in Reexamination

 35 U.S.C. 306.  Appeal.

  The patent owner involved in a reexamination proceeding
under this chapter may appeal under the provisions of
section 134 of this title, and may seek court review under

the provisions of sections 141 to 145 of this title, with
respect to any decision adverse to the patentability of any
original or proposed amended or new claim of the patent.

  A patent owner who is dissatisfied with the primary
examiner's decision in the second or final rejection of his
or her claims may appeal to the Board of Patent Appeals and
Interferences for review of the rejection by filing a Notice
of Appeal within the required time. A Notice of Appeal must
be signed by the patent owner or his or her attorney or
agent, and be submitted along with the fee required by 37
CFR 1.17(e), (37 CFR 1.191(a)).

  The period for filing the Notice of Appeal is the period
set for response in the last Office action which is normally
two (2) months. The timely filing of a first response to a
final rejection having a shortened statutory period for
response is construed as including a request to extend the
period  for  response  an  additional  month,  even  if  an
extension has been previously granted, as long as the period
for response does not exceed six (6) months from the date of
the final rejection. The normal ex parte appeal procedures
set forth at 37 CFR 1.191 - 1.198 apply in reexamination.
The requester cannot appeal or otherwise participate in the
appeal.

  The reexamination statute does not provide for review of
a patentability decision favoring the patentee, Greenwood
v.  Seiko Instruments , 8 USPQ2d 1455 (D.D.C. 1988).

2274  Appeal Brief

  Where the brief is not filed, but within the period
allowed for filing the brief an amendment is presented which
places the claims of the patent under reexamination in a
patentable  condition,  the  amendment  may  be  entered.
Amendments should not be included in the appeal brief.

  The time for filing the appeal brief is two (2) months
from the date of the appeal or alternatively, within the
time allowed lowed for response to the action appealed from,
if such time is later.

  In the event that the patent owner finds that he or she
is unable to file a brief within the time allowed by the
rules, he or she may file a petition without any fee, to the
examining group, requesting additional time (usually one
month), and give reasons for the request. The petition
should be filed in duplicate and contain the address to
which the response is to be sent. If sufficient cause is
shown and the petition is filed prior to the expiration of
the period sought to be extended (37 CFR 1.192), the group
director is authorized to grant the extension for up to 1
month. Requests for extensions of time for more than 1 month
will also be decided by the group director, but will not be
granted unless extraordinary circumstances are involved;
e.g., death or incapacitation of the patent owner. The time
extended is added to the last calendar day of the original
period, as opposed to being added to the day it would have
been due when said last day is a Saturday, Sunday, or
Federal holiday.

  Failure to file the brief within the permissible time
will result in dismissal of the appeal. The reexamination
proceeding is then terminated and a certificate is issued

indicating the status of the claims at the time of appeal.

  A fee as set forth in 37 CFR 1.17(f) is required when
the appeal brief is filed for the first time in a particular
reexamination proceeding, 35 U.S.C. 41(a). 37 CFR 1.192
provides that the appellant shall file a brief of the
authorities and arguments on which he or she will rely to
maintain his or her appeal, including a concise explanation
of the invention which must refer to the specification by
page and line number, and to the drawing, if any, by
reference characters, and a copy of the claims involved. 37
CFR 1.192(a) requires the submission of 3 copies of the
appeal brief.

  For the sake of convenience, the copy of the claims
involved should be double spaced and should start on a new
page.

  The brief, as well as every other paper relating to an
appeal, should indicate the number of the examining group to
which the reexamination is assigned and the reexamination
control number. When the brief is received, it is forwarded
to the examining group where it is entered in the file and
referred to the examiner.

  Patent owners are reminded that their briefs in appeal
cases must be responsive to every ground of rejection stated
by the examiner. A reply brief should be filed in response
to any new grounds stated in the examiner's answer.

  Where an appellant fails to respond by way of brief or
reply brief to any ground of rejection, and it appears that
the failure is inadvertent, appellant should be notified by
the examiner that he or she is allowed 1 month to correct
the defect by filing a supplemental brief. Where this
procedure has not been followed, the Board of Patent Appeals
and Interferences should remand the reexamination file to
the  examiner  for  compliance.  When  the  record  clearly
indicates intentional failure to respond by brief to any
ground of rejection, for example, the examiner should inform
the Board of Patent Appeals and Interferences of this fact
in his or her answer and merely specify the claim affected.

  Where the failure to respond by brief appears to be
intentional, the Board of Patent Appeals and Interferences
may dismiss the appeal as to the claims involved. Oral
argument at a hearing will not remedy such deficiency of a
brief.

  The mere filing of any paper whatever entitled as a
brief cannot necessarily be considered as compliance with 37
CFR 1.192. The rule requires that the brief must set forth
the authorities and arguments relied on, and to the extent
that it fails to do so with respect to any ground of
rejection, the appeal as to that ground may be dismissed.

  It is essential that the Board of Patent Appeals and
Interferences should be provided with a brief fully stating
the position of the appellant with respect to each issue
involved in the appeal so that no search of the record is
required in order to determine that position. The fact that
appellant may consider a ground to be clearly improper does
not justify a failure on the part of the appellant to point
out to the Board the reasons for that view in the brief.

  A distinction must be made between the lack of any
argument and the presentation of arguments which carry no
conviction. In the former case dismissal is in order, while
in the latter case a decision on the merits is made,
although it may well be merely an affirmance based on the
grounds relied on by the examiner.

  Appellant must traverse every ground of rejection set
forth in the final rejection. Oral argument at the hearing
will not remedy such a deficiency in the brief. Ignoring or
acquiescing in any rejection, even one based upon formal
matters which could be cured by subsequent amendments, will
invite  a  dismissal  of  the  appeal.  The  reexamination
proceedings are considered terminated as of the date of the
dismissal.

2275  Examiner's Answer

  MPEP § 1208 - § 1208.02 relate to preparation of
examiner's answers in appeals. The procedures covered in
these sections apply to appeals in both patent applications
and patents undergoing reexamination proceedings.

2276  Oral Hearing

  If appellant desires an oral hearing, appellant must
file a written request for such hearing accompanied by the
fee set forth in 37 CFR 1.17(g) within 1 month after the
date of the examiner's answer.

  Where  the  appeal  involves  patents  undergoing
reexamination, oral hearings are open to the public as
observers unless the appellant requests that the hearing not
be open to the public and presents valid reasons for such a
request.

  MPEP § 1209 relates to oral hearings in appeals in both
patent applications and patents undergoing reexamination.

2277  Board of Patent Appeals and Interferences Decision

  MPEP § 1213 - § 1213.02 relate to decisions of the Board
of Patent Appeals and Interferences.

2278  Action Following Decision

  MPEP § 1214.01 - § 1214.07 relate to the handling of
applications and patents undergoing reexamination after the
appeal has been concluded.

2279  Appeal to Courts [R - 3]

  The normal appeal route provided to the United States
Court of Appeals for the Federal Circuit is available to a
patent owner not satisfied with the decision of the Board of
Patent Appeals and Interferences. A third party may not seek
j udicial review, Yuasa Battery v.  Comr ., 3 USPQ2d 1143
(D.D.C. 1987).

  The normal remedy by civil action under 35 U.S.C. 145 is
provided for the owner of a patent in a reexamination
proceeding.

  While the reexamination statutory provisions do not
provide for participation by requester during any court

review,  the  courts  have  permitted  intervention  in
appropriate circumstances; see Read v.  Quigg , 230 USPQ 62
(D.C.D.C. 1986) and  In re Etter ,>756 F.2d 852,< 225 USPQ 1
(Fed. Cir. 1985). See also MPEP § 1216, § 1216.01, and §
1216.02. A requester who is permitted to intervene in a
civil action has no standing to appeal the court's decision,
Boeing Co . v.  *>Comm'r, 853 F.2d 878,< 7 USPQ2d 1487 (Fed.
Cir. 1988).

2280  Information Material to Patentability in
Reexamination Proceeding

 37 CFR 1.555.  Information material to patentability in
reexam nation proceedings.

  (a) A patent by its very nature is affected with a public
interest. The public interest is best served, and the most
effective  reexamination  occurs  when,  at  the  time  a
reexamination proceeding is being conducted, the Office is
aware of and evaluates the teachings of all information
material to patentability in a reexamination proceeding.
Each individual associated with the patent owner in a
reexamination proceeding has a duty of candor and good faith
in dealing with the Office, which includes a duty to
disclose  to  the  Office  all  information  known  to  that
individual  to  be  material  to  patentability  in  a
reexamination proceeding. The individuals who have a duty to
disclose to the Office all information known to them to be
material to patentability in a reexamination proceeding are
the patent owner, each attorney or agent who represents the
patent  owner,  and  every  other  individual  who  is
substantively involved on behalf of the patent owner in a
reexamination  proceeding.  The  duty  to  disclose  the
information exists with respect to each claim pending in the
reexamination  proceeding  until  the  claim  is  cancelled.
Information material to the patentability of a cancelled
claim need not be submitted if the information is not
material to patentability of any claim remaining under
consideration in the reexamination proceeding. The duty to
disclose  all  information  known  to  be  material  to
patentability in a reexamination proceeding is deemed to be
satisfied  if  all  information  known  to  be  material  to
patentability of any claim in the patent after issuance of
the reexamination certificate was cited by the Office or
submitted  to  the  Office  in  an  information  disclosure
statement. However, the duties of candor, good faith, and
disclosure have not been complied with if any fraud on the
Office was practiced or attempted or the duty of disclosure
was violated through bad faith or intentional misconduct by,
or on behalf of, the patent owner in the reexamination
proceeding. Any information disclosure statement must be
filed with the items listed in § 1.98(a) as applied to
individuals  associated  with  the  patent  owner  in  a
reexamination proceeding, and should be filed within two
months of the date of the order for reexamination, or as
soon thereafter as possible.

  (b)  Under  this  section,  information  is  material  to
patentability in a reexamination proceeding when it is not
cumulative to information of record or being made of record
in the reexamination proceeding, and

  (1)  It  is  a  patent  or  printed  publication  that
establishes, by itself or in combination with other patents
or  printed  publications,  a  prima  facie  case  of

unpatentability of a claim; or

  (2) It refutes, or is inconsistent with, a position the
patent owner takes in:

  (i) Opposing an argument of unpatentability relied on by
the Office, or

  (ii) Asserting an argument of patentability.

 A prima facie case of unpatentability of a claim pending in
a  reexamination  proceeding  is  established  when  the
information  compels  a  conclusion  that  a  claim  is
unpatentable under the preponderance of evidence, burden -
of - proof standard, giving each term in the claim its
broadest  reasonable  construction  consistent  with  the
specification, and before any consideration is given to
evidence which may be submitted in an attempt to establish a
contrary conclusion of patentability.

  (c) The responsibility for compliance with this section
rests upon the individuals designated in paragraph (a) of
this section and no evaluation will be made by the Office in
the reexamination proceeding as to compliance with this
section. If questions of compliance with this section are
discovered during a reexamination proceeding, they will be
noted as unresolved questions in accordance with § 1.552(c).

  The duty of disclosure in reexamination proceedings
applies to the patent owner; to each attorney or agent who
represents the patent owner, and to every other individual
who is substantially involved on behalf of the patent owner.
That duty is a continuing obligation on all such individuals
throughout the proceeding. The continuing obligations during
the reexamination proceeding is that any such individual who
is  aware  of  or  becomes  aware  of,  patents  or  printed
publications  which  are  material  to  patentability  in  a
reexamination proceeding which have not previously been made
of record in the patent file must bring such patents or
printed publications to the attention of the Office.

  Such  individuals  are  strongly  encouraged  to  file
information disclosure statements, preferably in accordance
with 37 CFR 1.98, within two months of the date of the order
to reexamine, or as soon thereafter as possible, in order to
bring the patents or printed publications to the attention
of the Office. An information disclosure statement filed
under 37 CFR 1.555 by the patent owner after the order for
reexamination and before the first action on the merits may
be submitted as part of the statement under 37 CFR 1.530 or
may be filed as a separate paper. If the information
disclosure statement is filed as part of a statement under
37 CFR 1.530, the submission may include a discussion of the
patentability issues in the reexamination. If, however, the
submission is filed as a separate paper, not part of a
statement under 37 CFR 1.530, the submission must be limited
to a listing of the information disclosed and an explanation
of its relevance. See 37 CFR 1.98. Any discussion of the
information disclosed relating to patentability issues in
the reexamination would be improper.

  Any  individual  substantially  involved  in  the
reexamination proceeding may satisfy his or her duty by
disclosing the information to the attorney or agent having
responsibility for the reexamination proceeding or to a

patent owner acting in his or her own behalf. A patent owner
may satisfy his or her duty by disclosing the information to
the  attorney  or  agent  having  responsibility  for  the
reexamination proceeding. An attorney, agent, or patent
owner who receives information has no duty to submit such
information if it is not material to patentability in the
reexamination  proceeding.  See  37  CFR  1.555(b)  for  the
definition of "material to patentability."

  The responsibility of compliance with 37 CFR 1.555 rests
on all such individuals. Any fraud practiced or attempted on
the Office or any violation of the duty to disclosure
through bad faith or intentional misconduct by any such
individual results in noncompliance with 37 CFR 1.555(a).
This duty of disclosure is consistent with the duty placed
on patent applicants by 37 CFR 1.56. Any such issues
discovered during a reexamination proceeding will merely be
noted as unresolved questions under 37 CFR 1.552(c).

  All such individuals who fail to comply with 37 CFR
1.555(a) do so at the risk of diminishing the quality and
reliability of the patent reexamination certificate issuing
from the proceeding.

  For the patent owner's duty to disclose prior or
concurrent  proceedings  in  which  the  patent  is  or  was
involved, see MPEP § 2282.

2281  Interviews In Reexamination Proceedings

 37 CFR 1.560  .  Interviews in reexamination
proceedings.

  (a)  Interviews  in  reexamination  proceedings  pending
before the Office between examiners and the owners of such
patents or their attorneys or agents of record must be had
in the Office at such times, within Office hours, as the
respective examiners may designate. Interviews will not be
permitted at any other time or place without the authority
of the Commissioner. Interviews for the discussion of the
patentability of claims in patents involved in reexamination
proceedings will not be had prior to the first official
action  thereon.  Interviews  should  be  arranged  for  in
advance. Requests that reexamination requesters participate
in interviews with examiners will not be granted.

  (b) In every instance of an interview with an examiner, a
complete written statement of the reasons presented at the
interview as warranting favorable action must be filed by
the patent owner. An interview does not remove the necessity
for response to Office actions as specified in § 1.111.

  Only ex parte interviews between the examiner and patent
owner  and/or  the  patent  owner's  representative  are
permitted.  Requests  by  reexamination  requesters  to
participate in or to attend interviews will not be granted.

  Unless the Deputy Assistant Commissioner for Patents
authorizes otherwise, interviews between examiner and the
owners  of  patents  undergoing  reexamination  or  their
attorneys or agents must be had in the Office at such times,
within  Office  hours,  as  the  respective  examiners  may
designate.

  Interviews for the discussion of the patentability of

claims in patents involved in reexamination proceedings will
not be had prior to the first official action following the
order for reexamination and any submissions pursuant to 37
CFR 1.530 and 1.535.

  However, questions on purely procedural matters may be
answered by the examiner. Except for questions on strictly
procedural matters, an examiner will not conduct personal or
telephone interviews with requesters or other third parties
with  respect  to  a  patent  in  which  a  request  for
reexamination has been filed. Questions by third parties
(requester or otherwise relating to when the next Office
action will be rendered are improper as they relate to the
merits of the proceeding.

  In every instance of an interview with the examiner, a
complete written statement of the reasons presented at the
interview as warranting favorable action must be filed by
the patent owner. This requirement may not be waived by the
examiner.  Patent  owners  are  encouraged  to  submit  such
written  statement  as  soon  after  the  interview  as  is
possible, but no later than the next communication to the
Office. Service of the written statement of the interview on
the requester is required.

  The examiner must complete Interview Summary form PTOL -
474 for each interview held where a matter of substance has
been discussed (see MPEP § 713.04). A copy of the form
should be given to the patent owner at the conclusion of the
interview. The original should be made of record in the
reexamination file and a copy mailed to the requester.

  The general procedure for conducting interviews and
recording same are described at MPEP § 713.01 - § 713.04.

2282  Notification of Existence of Prior or Concurrent
Proceedings and Decisions Thereon

 37 CFR 1.565.  Concurrent Office proceedings.

  (a) In any reexamination proceeding before the Office,
the patent owner shall call the attention of the Office to
any prior or concurrent proceedings in which the patent is
or  was  involved  such  as  interferences,  reissue,
reexaminations,  or  litigation  and  the  results  of  such
proceedings.

  *****

  It is important for the Office to be aware of any prior
or concurrent proceedings in which a patent undergoing
reexamination is or was involved, such as interferences,
reissues, reexaminations or litigations, and any results of
such proceedings. 37 CFR 1.565(a) requires the patent owner
to  provide  the  Office  with  information  regarding  the
existence of any such proceedings, and the results thereof,
if known. Ordinarily, no submissions of any kind by third
parties filed after the date of the order are placed in the
reexamination  or  patent  file  while  the  reexamination
proceeding  is  pending.  However,  in  order  to  ensure  a
complete file, with updated status information regarding
prior or concurrent proceedings regarding the patent under
reexamination, the Office will accept at any time copies of
notices of suits and other proceedings involving the patent
and copies of decisions or papers filed in the court from

litigations or other proceedings involving the patent from
the parties involved or third parties for placement in the
patent file. Persons making such submissions must limit the
submissions to the notification and not include further
arguments or information. Any proper submissions will be
promptly placed of record in the patent file. See MPEP §
2286  for  Office  investigation  for  prior  or  concurrent
litigation.

2283  Multiple Copending Reexamination Proceedings

 37 CFR 1.565.  Concurrent Office proceedings.

  *****

  (c)  If  reexamination  is  ordered  while  a  prior
reexamination  proceeding  is  pending,  the  reexamination
proceedings will be consolidated and result in the issuance
of a single certificate under § 1.570.

  *****

  See MPEP § 2240 for a discussion as to whether a
substantial new question of patentability is raised by the
prior art cited in a second or subsequent request for
reexamination filed while a reexamination proceeding is
pending.

  If  reexamination  is  ordered  on  a  request  for
reexamination while a prior reexamination proceeding is
still pending, the decision on whether or not to combine the
proceedings will be made by the group director of the
examining group where the reexamination is pending. No
decision on combining the reexaminations should be made
until such time as reexamination is actually ordered in the
later filed request for reexamination.

 PROCEEDINGS MERGED

  If a second request is filed where the first certificate
will issue after 3 months from the filing of the second
request, the proceedings normally will be merged. In this
situation  the  second  request  is  decided  based  on  the
original patent claims and if reexamination is ordered, the
reexamination proceedings normally would be merged. If the
first certificate is in issue it will be withdrawn from
issue. The second reexamination proceeding will be merged
with the first reexamination proceeding and prosecution will
continue after the patent owner and second requester have
been given an opportunity to file a statement and reply,
respectively.

  If the second request is based upon essentially the same
patents or publications as in the first request or on
patents or printed publications which raise essentially the
same issues as those raised in the first request, and if
reexamination is ordered, the examination of the merged
proceeding will continue at the point reached in the first
reexamination proceeding. If, however,  new patents or
printed publications are presented in the second request
which raise different questions than those raised in the
first request, then prosecution in the merged reexamination
proceeding will be reopened ,if applicable, to the extent
necessary to fully treat the questions raised.

  The patent owner will be provided with an opportunity to
respond to any new rejection in a merged reexamination
proceeding prior to the action being made final. See MPEP §
2271. If the reexamination proceedings are combined, a
single certificate will be issued based upon the combined
proceedings, 37 CFR 1.565(c).

  SUSPENSIONS

  It may also be desirable in certain situations to
suspend a proceeding for a short and specified period of
time. For example, a suspension of a first reexamination
proceeding may be issued to allow time for the patent
owner's statement and the requester's reply in a second
proceeding prior to merging. Further, after the second
proceeding has been ordered , it may be desirable to suspend
the  second  proceeding  where  the  first  proceeding  is
presently on appeal before a Federal court to await the
court's decision prior to merging. A suspension will only be
granted in exceptional instances because of the statutory
requirements  that  examination  proceed  with  "special
dispatch" and must be with the express written approval of
the group director. Suspension will not be granted when
there is an outstanding Office action.

  MERGER OF REEXAMINATIONS

  The following guidelines should be observed when two
requests for reexamination directed to a single patent have
been filed.

  The second request (Request 2) should be processed as
quickly as possible and assigned to the same examiner to
which the first request (Request 1) is assigned. Request 2
should be decided immediately without waiting the usual
period. If Request 2 is denied, ex parte prosecution of
Request 1 should continue. If Request 2 is granted and the
proceedings  are  merged,  combined  prosecution  should  be
carried out once the patent owner's statement and any reply
by the requester have been received in Request 2.

  If ex parte prosecution has not begun on Request 1, it
should be processed up to that point and then normally held
until Request 2 is ready for  ex parte action following the
statement and reply or until Request 2 is denied. Request 2
should be determined on its own merits without reference to
Request 1.

  The  decision  by  the  group  director  merging  the
reexamination proceedings should include a requirement that
the patent owner maintain identical claims in both files.
Any responses by the patent owner must consist of a single
response, addressed to both files, filed in duplicate each
bearing an original signature, for entry in both files. Both
files will be maintained as separate complete files.

  When ex parte prosecution is appropriate in merged
proceedings, a single combined examiner's action will be
prepared.  Each  action  will  cross  -  reference  the  two
proceedings.  A  separate  action  cover  form  for  each
proceeding will be printed by the PALM printer for each
reexamination request control number. Each requester will
get a copy of the action with the appropriate cover form.
The patent owner will get a copy of each cover form and the
body of the action.

  When a "Notice Of Intent To Issue A Reexamination
Certificate" (NIRC) is appropriate, plural notices will be
printed. Both reexamination files will then be processed.
The  group  should  prepare  the  file  of  the  concurrent
proceedings in the manner specified in MPEP § 2287 before
release to Office of Publications.

  The  above  guidelines  should  be  extended  to  those
situations where more than two requests are filed for a
single patent.

  PROCEEDINGS NOT MERGED

  If  a  second  request  is  filed  where  the  first
reexamination certificate will issue within 3 months from
the filing of the second request, the proceedings normally
will  not  be  merged.  If  the  certificate  on  the  first
reexamination proceeding will issue before the decision on
the  second  request  must  be  decided,  the  reexamination
certificate is allowed to issue. The second request is then
considered based upon the claims in the patent as indicated
in the issued reexamination certificate rather than the
original claims of the patent. In such situations the
proceedings will not be merged. In NO case should a decision
on the second request be delayed beyond its 3 - month
deadline.

  FEES IN MERGED PROCEEDINGS

  Where the proceedings have been merged and a paper is
filed which requires payment of a fee (e.g., petition fee,
appeal fee, brief fee, oral hearing fee), only a single fee
need be paid. For example, only one fee need be paid for an
appeal  brief  even  though  the  brief  relates  to  merged
multiple proceedings and copies must be filed for each file
in the merged proceeding.

  PETITION TO MERGE MULTIPLE COPENDING REEXAMINATION
  PROCEEDINGS

  No petition to merge multiple reexamination proceedings
is necessary since the Office will generally, sua sponte,
make a decision as to whether or not it is appropriate to
merge  the  multiple  reexamination  proceedings.  If  any
petition to merge the proceedings is filed prior to the
determination ( 37 CFR 1.515) and order to reexamine ( 37
CFR 1.525) on the second request, it will not be considered
but will be returned to the party submitting the same by the
examining group director. The decision returning such a
premature  petition  will  be  made  of  record  in  both
reexamination files, but no copy of the petition will be
retained by the Office. See MPEP § 2267.

  While the patent owner can file a petition to merge the
proceedings at any time after the order to reexamine ( 37
CFR 1.525) on the second request, the better practice would
be to include any such petition with the patent owner's
statement under 37 CFR 1.530, in the event the examining
group director has not acted prior to that date to merge the
multiple reexamination proceedings. If the requester of any
of the multiple reexamination proceedings is not the patent
owner, that party may petition to merge the proceedings as a
part of a reply pursuant to 37 CFR 1.535 in the event the
examining group director has not acted prior to that date to

merge the multiple proceedings. A petition to merge the
multiple proceedings which is filed by a party other than
the  patent  owner  or  one  of  the  requesters  of  the
reexamination will not be considered but will be returned to
that party by the examining group director as being improper
under 37 CFR 1.550(e).

  All decisions on the merits of petitions to merge
multiple reexamination proceedings will be made by the
examining group director.

2284  Copending Reexamination and Interference
Proceedings

 37 CFR 1.565.  Concurrent Office proceedings.

  *****

  (b) If a patent in the process of reexamination is or
becomes involved in litigation or a reissue application for
the patent is filed or pending, the Commissioner shall
determine whether or not to stay the reexamination or
reissue proceeding.

  *****

  (e) If a patent in the process of reexamination is or
becomes involved in an interference, the Commissioner may
stay reexamination or the interference. The Commissioner
will not consider a request to stay an interference unless a
motion  (  §  1.635)  to  stay  the  interference  has  been
presented to, and denied by, an examiner - in - chief and
the request is filed within ten (10) days of a decision by
an examiner - in - chief denying the motion for a stay or
such other time as the examiner - in - chief may set.

  The general policy of the Office is that a reexamination
proceeding will not be delayed, or stayed, because of an
interference or the possibility of an interference. The
reasons for this policy are (1) the relatively long period
of time usually required for interferences and (2) the
requirement  of  35  U.S.C.  305  that  all  reexamination
proceedings be conducted with "special dispatch" within the
Office. In general, the Office will follow the practice of
making  the  required  and  necessary  decisions  in  the
reexamination proceeding and, at the same time, proceed with
the interference to the extent desirable. Decisions in the
interference will take into consideration the status of the
reexamination and what is occurring therein. The decision as
to what actions are taken in the interference will, in
general, be taken in accordance with normal interference
practice.

  ATTEMPTING TO PROVOKE AN INTERFERENCE WITH A PATENT
  INVOLVED IN A REEXAMINATION PROCEEDING

  An  interference  will  not  be  declared  between  an
application  and  a  patent  which  is  involved  in  a
reexamination proceeding except upon specific authorization
from the Office of the Assistant Commissioner for Patents.
When an amendment seeking to provoke an interference with a
patent involved in a reexamination proceeding is filed in a
pending  application,  the  owner  of  the  patent  must  be
notified (see 37 CFR 1.607(d)). The applicant must identify
the patent under reexamination with which interference is

sought. The corresponding application claims may be rejected
on any applicable ground including, if appropriate, the
prior art cited in the reexamination proceeding. Prosecution
of the application should continue as far as possible, but
if the application is placed in condition for allowance and
still contains claims which interfere with claims of the
patent  under  reexamination,  further  action  on  the
application should be suspended until the certificate on the
reexamination proceeding has been issued.

  MOTION TO SUSPEND INTERFERENCE UNDER 37 CFR 1.635 PENDING
  THE OUTCOME OF A REEXAMINATION PROCEEDING

  A motion under 37 CFR 1.635 to suspend an interference
pending the outcome of a reexamination proceeding may be
made at any time during the interference by any party
thereto. The motion must be presented to the examiner - in -
chief who will decide the motion based on the particular
fact situation. However, no consideration will be given such
a motion unless and until a reexamination order is issued,
nor  will  suspension  of  the  interference  normally  be
permitted until after any motions have been disposed of. If
the motion is denied by the examiner - in - chief, a request
to stay the interference may be made to the Commissioner
under 37 CFR 1.565(e).

 REQUEST BY THE EXAMINER FOR ACTION PURSUANT TO 37 CFR 1.641

  Normally,  examiners  should  not  have  to  alert  the
examiner - in - chief for action under 37 CFR 1.641 while
the reexamination proceeding is pending but should rely on
the parties of the interference to file a notice under 37
CFR 1.660.

  REQUEST FOR REEXAMINATION FILED DURING INTERFERENCE

  In view of the provisions of 37 CFR 1.510(a), "Any
person may, at any time during the period of enforceability
of a patent" file a request for reexamination. The patent
owner  must  notify  the  Board  of  Patent  Appeals  and
Interferences under 37 CFR 1.660 within 10 days of receiving
notice  that  the  request  was  filed.  Such  requests  for
reexamination will be processed in the normal manner. No
delay, or stay, of the reexamination will occur because the
requester is not a party to the interference. If the
examiner orders reexamination pursuant to 37 CFR 1.525 and
subsequently rejects a patent claim corresponding to a count
in the interference, the attention of the examiner - in -
chief shall be called thereto and appropriate action may be
taken under 37 CFR 1.641.

  PETITION TO STAY REEXAMINATION PROCEEDING BECAUSE OF
  INTERFERENCE

  Any petition to stay a reexamination proceeding, because
of  an  interference,  which  is  filed  prior  to  the
determination (37 CFR 1.515) and order to reexamine (37 CFR
1.525) will not be considered, but will be returned to the
party submitting the same. The decision returning such a
premature  petition  will  be  made  of  record  in  the
reexamination file, but no copy of the petition will be
retained by the Office. A petition to stay the reexamination
proceeding because of the interference may be filed by the
patent owner as a part of the patent owner's statement under
37 CFR 1.530 or subsequent thereto. If a party to the

interference, other than the patent owner, is a requester of
the reexamination, that party may petition to stay the
reexamination proceeding as a part of a reply pursuant to 37
CFR 1.535. If the other party to the interference is not the
requester, any petition by that party is improper under 37
CFR 1.550(e) and will not be considered. Any such improper
petitions will be returned to the party submitting the same.
Premature petitions to stay the reexamination proceedings;
i.e., those filed prior to the determination (37 CFR 1.515)
and order to reexamine (37 CFR 1.525) will be returned by
the examining group director as premature. Petitions to stay
filed subsequent to the date of the order for reexamination
will be referred to the Office of the Assistant Commissioner
for Patents for decision. All decisions on the merits of
petitions to stay a reexamination proceeding because of an
interference will be made in the Office of the Assistant
Commissioner for Patents.

 ACTION IN INTERFERENCE FOLLOWING REEXAMINATION

  If one or more claims of a patent which is involved in
an interference are canceled or amended by the issuance of a
reexamination certificate, appropriate action will be taken
by the examiner - in - chief under 37 CFR 1.641.

  Upon issuance of the reexamination certificate, the
patent owner must notify the examiner - in - chief thereof.

2285  Copending Reexamination and Reissue Proceedings

 37 CFR 1.565.  Concurrent Office proceedings.

  *****

  (d)  If  a  reissue  application  and  a  reexamination
proceeding on which an order pursuant to § 1.525 has been
mailed are pending concurrently on a patent, a decision will
normally be made to merge the two proceedings or to stay one
of  the  two  proceedings.  Where  merger  of  a  reissue
application and a reexamination proceeding is ordered, the
merged examination will be conducted in accordance with §
1.171 - 1.179 and the patent owner will be required to place
and maintain the same claims in the reissue application and
the reexamination proceeding during the pendency of the
merged proceeding. The examiner's actions and any responses
by the patent owner in a merged proceeding will apply to
both  the  reissue  application  and  the  reexamination
proceeding and be physically entered into both files. Any
reexamination proceeding merged with a reissue application
shall be terminated by the grant of the reissued patent.

  *****

  The general policy of the Office is that a reissue
application examination and a reexamination proceeding will
not be conducted separately at the same time as to a
particular patent. The reason for this policy is to permit
timely resolution of both proceedings to the extent possible
and  to  prevent  inconsistent,  and  possibly  conflicting,
amendments from being introduced into the two proceedings on
behalf of the patent owner. Accordingly, if both a reissue
application  and  a  reexamination  proceeding  are  pending
concurrently on a patent, a decision will normally be made
to merge the two proceedings or to stay one of the two
proceedings. The decision as to whether the proceedings are

to be merged, or which proceeding, if any, is to be stayed
is made in the Office of the Assistant Commissioner for
Patents. See In re Onda,229 USPQ 235 (Comm'r Pat. 1985).

  TIME FOR MAKING DECISION ON MERGING OR STAYING THE
  PROCEEDINGS

  A  decision  whether  or  not  to  merge  the  reissue
application examination and the reexamination proceeding, or
to stay one of the two proceedings, will not be made prior
to the mailing of an order to reexamine the patent pursuant
to 37 CFR 1.525. Until such time as reexamination is
ordered, the examination of the reissue application will
proceed. A determination on the request must not be delayed
because of the existence of a copending reissue application
since 35 U.S.C. 304 and 37 CFR 1.515 require a determination
within 3 months following the filing date of the request.
See MPEP § 2241. If the decision on the request denies
reexamination (MPEP § 2247), the examination or the reissue
applications  should  be  continued.  If  reexamination  is
ordered (MPEP § 2246), the reexamination file, the reissue
application, and the patent file should be delivered to the
Office of the Assistant Commissioner for Patents promptly
following  the  mailing  of  the  decision  ordering
reexamination. The delivery of the files to the Office of
the Assistant Commissioner should not be delayed awaiting
the filing of any statement under 37 CFR 1.530 and any reply
under 37 CFR 1.535.

  If a reissue application is filed during the pendency of
a reexamination proceeding, the reexamination file, the
reissue application, and the patent file should be delivered
to the Office of the Assistant Commissioner for Patents as
promptly as possible after the reissue application reaches
the examining group.

  The decision on whether or not the proceedings are to be
merged, or which proceeding, if any, is to be stayed will
generally be made as promptly as possible after receipt of
all of the files in the Office of the Assistant Commissioner
for Patents. However, the decision on merging or staying the
proceedings may in certain situations be delayed until any
submissions under 37 CFR 1.530 and 37 CFR 1.535 have been
filed. Until a decision is mailed merging the proceedings or
staying one of the proceedings, the two proceedings will
continue and be conducted simultaneously, but separately.

  The Office may in certain situations issue a certificate
at the termination of a reexamination proceeding, even if a
copending  reissue  application  or  another  reexamination
request has already been filed.

 CONSIDERATIONS IN DECIDING WHETHER TO MERGE THE PROCEEDINGS
 OR WHETHER TO STAY A PROCEEDING

  The decision on whether to merge the proceedings or stay
a proceeding will be made on a case - by - case basis based
upon  the  status  of  the  various  proceedings  with  due
consideration  being  given  to  the  finality  of  the
reexamination requested.

 (1)  Reissue about to issue, reexamination requested.

  If  the  reissue  patent  will  issue  before  the
determination on the reexamination request must be made, the

determination on the request should normally be delayed
until after the granting of the reissue patent and then be
decided on the basis of the claims in the reissue patent.
The reexamination, if ordered, would then be on the reissue
patent claims rather than the original patent claims. Since
the reissue application would no longer be pending, the
reexamination would be processed in a normal manner.

  Where  a  reissue  patent  has  been  issued,  the
determination on the request for reexamination should point
out to the requester and patent owner that the determination
has been made on the claims of the reissue patent and not on
the claims of the original patent. If a reissue patent
issues on the patent under reexamination after reexamination
is  ordered  the  next  action  from  the  examiner  in  the
reexamination should point out that further proceedings in
the reexamination will be based on the claims of the reissue
patent and not on the patent surrendered. Form Paragraph
22.05 may be used in the Office action.

¶ 22.05  Reexamination Based on Reissue Claims

  In view of the surrender of original patent [1] and the
granting of reissue patent [2] which has been issued on [3],
all subsequent proceedings in this reexamination will be
based on the reissue patent claims.

  Where the reissue patent has issued prior to the filing
of a request for reexamination of the parent patent, see
MPEP § 2258.

 (2)  Reissue pending, reexamination request filed.

  Where a reissue patent will not be granted prior to the
expiration  of  the  3  -  month  period  for  making  the
determination, a decision will be made as to whether the
proceedings are to be merged or which proceeding, if any, is
to be stayed after an order to reexamine has been issued.
The general policy of the Office is to merge the more narrow
reexamination  proceeding  with  the  broader  reissue
application examination whenever it is desirable to do so in
the interests of expediting the conduct of both proceedings.
In making a decision on whether or not to merge the two
proceedings, consideration will be given to the status of
the reissue application examination at the time the order to
reexamination the patent pursuant to 37 CFR 1.525 is mailed.
For example, if examination of the reissue application has
not begun, or if a rejection of the primary examiner has not
been  appealed  to  the  Board  of  Patent  Appeals  and
Interferences pursuant to 37 CFR 1.191, it is likely that a
merger  of  the  reissue  application  examination  and  the
reexamination proceeding will be ordered by the Office of
the Assistant Commissioner for Patents. If, however, the
reissue application is on appeal to the Board of Patent
Appeals and Interferences or the courts, that fact would be
considered  in  making  a  decision  whether  to  merge  the
proceedings or stay one of the proceedings. See In re
Stoddard , 213 USPQ 386 (Comm'r Pat. 1982); and  In re
Scragg,215 USPQ 715 (Comm'r Pat. 1982).

  If such a merger of the proceedings is ordered, the
order merging the proceedings will also require that the
patent  owner  place  the  same  claims  in  the  reissue
application and in the reexamination proceeding for purposes
of the merged proceedings. An amendment may be required to

be filed to do this within a specified time set in the order
merging the proceedings.

  If the reissue application examination has progressed to
a point where a merger of the two proceedings is not
desirable at that time, then the reexamination proceeding
will generally be stayed until the reissue application
examination is complete on the issues then pending. After
completion of the examination on the issues then pending in
the  reissue  application  examination,  the  stay  of  the
reexamination proceeding will be removed and the proceedings
either  merged  or  the  reexamination  proceeding  will  be
conducted separately if the reissue application has become
abandoned.  The  reissue  application  examination  will  be
reopened, if necessary, for merger of the reexamination
proceeding therewith.

  If a stay of a reexamination proceeding has been removed
following  a  reissue  application  examination,  the  first
Office action will be given a shortened statutory period for
response of 1 month unless a longer period for response
clearly is warranted by the nature of the examiner's action.
The second Office action will normally be final and also
have a 1 - month period for response. These shortened
periods are considered necessary to prevent undue delay in
terminating  the  proceedings  and  also  to  proceed  with
"special dispatch" in view of the earlier stay.

  If  the  reissue  application  examination  and  the
reexamination proceeding are merged, the issuance of the
reissue patent will also serve as the certificate under 37
CFR 1.570 and the reissue patent will so indicate.

 (3)  Reexamination  proceedings  underway,  reissue
application filed.

  When  a  reissue  application  is  filed  after  a
reexamination  proceeding  has  begun  following  an  order
therefor, the reexamination, patent, and the reissue files
should  be  forwarded  to  the  Office  of  the  Assistant
Commissioner for Patents for consideration as to whether or
not to merge the proceedings or stay one proceeding.

  Where reexamination has already been ordered prior to
the filing of a reissue application, the following factors
may  be  considered  in  deciding  whether  to  merge  the
proceedings or stay one proceeding:

  (a) The status of the reexamination proceeding: For
example, has a statement and reply been received, a first
Office action been mailed, a final rejection been given, or
printing of certificate begun?

  (b) The nature and scope of the reissue application: For
example, are the issues presented in the proceeding the
same, overlapping, or completely separate; and are the
reissue claims broadening or related to issues other than
rejections based on patents or printed publications?

  CONDUCT OF MERGED REISSUE APPLICATION EXAMINATION AND
  REEXAMINATION PROCEEDINGS

  If a reissue application examination and a reexamination
proceeding  are  merged,  the  merged  examination  will  be
conducted on the basis of the rules relating to the broader

reissue  application  examination.  Amendments  should  be
submitted in accordance with the reissue practice under 37
CFR 1.121(e); see MPEP § 1455. The examiner, in examining
the merged proceeding, will apply the reissue statute,
rules, and case law to the merged proceeding. This is
appropriate  in  view  of  the  fact  that  the  statutory
provisions for reissue applications and reissue application
examination include, inter alia , provisions equivalent to
35 U.S.C. 305 relating to the conduct of reexamination
proceedings.

  In any merged reissue application and reexamination
proceeding, the examiner's actions will take the form of a
single action which jointly applies to both the reissue
application and the reexamination proceeding. The action
will  contain  identifying  data  for  both  the  reissue
application and the reexamination proceeding and will be
physically entered into both files, which will be maintained
as separate files. Any responses by the applicant/patent
owner in such a merged proceeding must consist of a single
response, filed in duplicate, for entry in both files and
service of copy must be made on the reexamination requester.
A  copy  of  all  Office  actions  will  be  mailed  to  the
reexamination requester but not to any other third party.

  If  the  applicant/patent  owner  in  such  a  merged
proceeding fails to file a timely and appropriate response
to  any  Office  action,  the  merged  proceeding  will  be
terminated, the reissue application held abandoned, and the
Commissioner  will  proceed  to  issue  a  reexamination
certificate under 37 CFR 1.570 in accordance with the last
action of the Office unless further action is clearly needed
in view of the difference in rules relating to reexamination
and reissue proceedings.

  If  the  applicant/patent  owner  in  such  a  merged
proceeding files an express abandonment of the reissue
application pursuant to 37 CFR 1.138, the next Office action
of  the  examiner  will  accept  the  express  abandonment,
dissolve  the  merged  proceeding,  and  continue  the
reexamination proceeding. Any grounds of rejection which are
not  applicable  under  reexamination  should  be  withdrawn
(e.g., based on public use or sale) and any new grounds of
rejection which are applicable under reexamination (e.g.,
improper broadened claims) should be made by the examiner
upon dissolution of the merged proceeding. The existence of
any questions remaining which cannot be considered under
reexamination following dissolution of the merged proceeding
would be noted by the examiner as not being proper under
reexamination pursuant to 37 CFR 1.552(c).

  PETITION TO MERGE REISSUE APPLICATION EXAMINATION AND
  REEXAMINATION PROCEEDINGS OR TO STAY EITHER PROCEEDING
  BECAUSE OF THE EXISTENCE OF THE OTHER

  No petition to merge the proceedings, or stay one of
them, is necessary since the Office will generally, sua
sponte , make a decision to merge the proceedings or stay
one of them. If any petition to merge the proceedings, or to
stay one proceeding because of the other, is filed prior to
the determination (37 CFR 1.515) and order to reexamine (37
CFR 1.525), it will not be considered, but will be returned
to the party submitting the same by the examining group
director, regardless of whether the petition is filed in the
reexamination proceeding, the reissue application, or both.

This is necessary to prevent premature papers relating to
the reexamination proceeding from being filed. The decision
returning such a premature petition will be made of record
in both the reexamination file and the reissue application
file, but no copy of the petition will be retained by the
Office. See MPEP § 2267.

  The patent owner may file a petition under 37 CFR 1.182
to merge the proceedings, or stay one proceeding because of
the other, at the time the patent owner's statement under 37
CFR 1.530 is filed or subsequent thereto in the event the
Office has not acted prior to that date to merge the
proceedings or stay one of them. If the requester of the
reexamination is not the patent owner, that party may
petition to merge the proceedings, or stay one proceeding
because of the other, as a part of a reply pursuant to 37
CFR 1.535, in the event the Office has not acted prior to
that date to merge the proceedings or stay one of them. A
petition to merge the proceedings, or stay one of them
because of the other, which is filed by a party other than
the patent owner or the requester of the reexamination will
not be considered, but will be returned to that party by the
examining group director as being improper under 37 CFR
1.550(e).

  All decisions on the merits or petitions to merge the
reissue  application  examination  and  the  reexamination
proceeding, or to stay one proceeding because of the other,
will be made in the Office of the Assistant Commissioner for
Patents. Such petitions to merge the proceedings, or stay
one of the proceedings because of the other, which are filed
by the patent owner or the requester subsequent to the date
of the order for reexamination will be referred to the
Office  of  the  Assistant  Commissioner  of  Patents  for
decision.

  FEES IN MERGED PROCEEDINGS

  Where the proceedings have been merged and a paper is
filed which requires payment of a fee (e.g., petition fee,
appeal fee, brief fee, oral hearing fee), only a single fee
need be paid. For example, only one fee need be paid for an
appeal  brief  even  though  the  brief  relates  to  merged
multiple proceedings and copies must be filed for each file
in the merged proceeding.

2286  Reexamination and Litigation Proceedings [R - 3]

  The Federal courts and the Patent and Trademark Office
are jointly responsible for the overall administration of
the patent system.

  35 U.S.C. 302 permits a request for reexamination to be
filed "at any time." Thus, requests for reexamination are
frequently filed where the patent for which reexamination is
requested  is  involved  in  concurrent  litigation.  The
guidelines set forth below will generally govern Office
handling of reexamination requests where there is concurrent
litigation in the Federal courts.

 COURT ORDERED REEXAMINATION PROCEEDING OR LITIGATION STAYED
 FOR REEXAMINATION

  Any request for reexamination which indicates that it is
filed as a result of an order by a court or that litigation

is stayed for the filing of a reexamination request will be
taken up by the examiner for decision 6 weeks after the
request was filed. See MPEP § 2241. If reexamination is
ordered, the examination following the statement by the
patent owner under 37 CFR 1.530 and the reply by the
requester under 37 CFR 1.535 will be expedited to the extent
possible. Office actions in these reexamination proceedings
will normally set a 1 month shortened statutory period for
response  rather  than  the  2  months  usually  set  in
reexamination proceedings. See MPEP § 2263. This 1 - month
period may be extended only upon a showing of sufficient
cause. See MPEP § 2265. See generally Raytek, Inc . v.
Solfan Systems Inc ., 211 USPQ 405 (N. D. Cal., 1981);
Dresser Industries, Inc . v.  Ford Motor Co., et al , 211
USPQ 1114 (N. D., Texas, 1981);  Digital Magnetic Systems,
Inc.  v.  Ansley , 213 USPQ 290 (W. D. Okla., 1982);  Gould
v.  Control Laser Corp .,>705 F.2d 1340,< 217 USPQ 985 (Fed.
Cir. 1983);  The Toro Co . v.  R.L. Nelson Corp ., 223 USPQ
636 (C.D. Ill. 1984);  In re Vamco Machine and Tool, Inc
.,>752 F.2d 1564,< 224 USPQ 617 (Fed. Cir. 1985); and
Laffland Bros. Co . v.  Mid - Western Energy Corp ., 225
USPQ 886 (W.D. Okla. 1985).

  FEDERAL COURT DECISION KNOWN TO EXAMINER AT THE TIME THE
  DETERMINATION ON THE REQUEST FOR REEXAMINATION IS MADE

  If a Federal Court decision on the merits of a patent is
known to the examiner at the time the determination on the
request for reexamination is made, the following guidelines
will be followed by the examiner, whether or not the person
who filed the request was a party to the litigation. When
the initial question as to whether the prior art raises a
substantial new question of patentability as to a patent
claim is under consideration, the existence of a final court
decision of claim  validity in view of the same or different
prior art does not necessarily mean that no new question is
present,  in  view  of  the  different  standards  of  proof
employed by the district courts and the Office. Thus, while
the Office may accord deference to factual findings made by
the court, the determination of whether a substantial new
question of patentability exists will be made independently
of the court's decision on validity as it is not controlling
on the Office. A  non - final holding of claim  invalidity
or unenforceability will not be controlling on the question
of whether a substantial new question of patentability is
present.  A  final  holding  of  claim  invalidity  or
unenforceability, however, is controlling on the Office. In
such cases, a substantial new question of patentability
would  not be present as to the claims held invalid or
unenforceable. See  Ethicon v.  Quigg , 849 F.2d 1422, 7
USPQ2d 1152 (Fed. Cir. 1988).

  All determinations on requests for reexamination which
the examiner makes after a Federal Court decision must be
reviewed by the examining group director to ensure it
conforms  to  the  current  Office  litigation  policy  and
guidelines. See MPEP § 2240. This review is a procedural
review and not a review of the merits of the decision.

  For a discussion of the policy in specific situations
where a Federal court decision has been issued, see MPEP §
2242.

  REEXAMINATION WITH CONCURRENT LITIGATION BUT ORDERED PRIOR
  TO FEDERAL COURT DECISION

  In  view  of  the  statutory  mandate  to  make  the
determination  on  the  request  within  3  months,  the
determination on the request based on the record before the
examiner will be made without awaiting a decision by the
Federal court. It is not realistic to attempt to determine
what issues will be treated by the Federal Court prior to
the court decision. Accordingly, the determination on the
request  will  be  made  without  considering  the  issues
allegedly before the court. If reexamination is ordered, the
reexamination will continue until the Office becomes aware
that a court decision has issued. At such time, the request
will be reviewed in accordance with the guidelines set forth
below. The patent owner is required by 37 CFR 1.565(a) to
call the attention of the Office to any prior or concurrent
proceeding in which the patent is or was involved and thus
has an obligation to promptly notify the Office that a
decision has been issued in the Federal Court.

  FEDERAL COURT DECISION ISSUES AFTER REEXAMINATION ORDERED

  Pursuant to 37 CFR 1.565(a), the patent owner in a
reexamination proceeding must promptly notify the Office of
any Federal court decision involving the patent. Where the
reexamination proceeding is currently pending and the court
decision issues, or the Office becomes aware of a court
decision relating to a pending reexamination proceeding, the
order to reexamine is reviewed to see if a substantial new
question  of  patentability  is  still  present.  If  no
substantial new question of patentability is still present,
the order to reexamine is vacated by the examining group
director and reexamination is terminated. **

  A non - final district court decision concerning a
patent under reexamination shall have no binding effect on a
reexamination proceeding.

  The  issuance  of  a  final  district  court  decision
upholding validity during a reexamination also will have no
binding effect on the examination of the reexamination. This
is because the Court states in  Ethicon v.  Quigg ,>849 F.2d
1422, 1428,< 7 USPQ2d 1152, 1157 (Fed. Cir. 1988) that the
Office is  not bound by a court's holding of patent
validity and should continue the reexamination. The Court
notes that district courts and the Office use different
standards of proof in determining invalidity and thus on the
same  evidence  could  quite  correctly  come  to  different
conclusions. Specifically, invalidity in a district court
must be shown by "clear and convincing" evidence, whereas in
the O ffice it is sufficient to show nonpatentability by a
"preponderance"  of  evidence.  Since  the  "clear  and
convincing"  standard  is  harder  to  satisfy  than  the
"preponderance  standard,"  deference  will  ordinarily  be
accorded to the factual findings of the court where the
evidence before the Office and the court is the same. If
sufficient reasons are present, claims held valid by the
court may be rejected in reexamination.

  On the other hand, the Court states that a final holding
of  invalidity  is  binding  on  the  Office  and  the
reexamination may be discontinued. Upon the issuance of a
holding  of  claim  invalidity  or  unenforceability  by  a
district court, reexamination of those claims will continue
in the Office until the court's decision becomes  final .
Upon the issuance of a  final holding of invalidity or

unenforceability, the claims held invalid or unenforceable
will be withdrawn from consideration in the reexamination.
The reexamination will continue as to any remaining claims.
If  all  of  the  claims  are  finally  held  invalid  or
unenforceable, the reexamination will be vacated as no
longer  containing  a  substantial  new  question  of
patentability.

 LITIGATION REVIEW AND GROUP DIRECTOR APPROVAL

  In order to ensure that the Office is aware of prior or
concurrent  litigation,  the  examiner  is  responsible  for
conducting a reasonable investigation for evidence as to
whether the patent for which reexamination is requested has
been or is involved in litigation. The investigation will
include a review of the reexamination file, the patent file,
and the results of the litigation computer search by the
STIC.

  If the examiner discovers, at any time during the
reexamination proceeding, that there is litigation or that
there has been a Federal court decision on the patent, the
fact will be brought to the attention of the group director
prior to any further action by the examiner. The group
director must review any action taken by the examiner in
such  circumstances  to  ensure  current  Office  litigation
policy is being followed. This review is a procedural review
and not a review of the merits of the decision.

  FEDERAL COURT DECISION CONTROLLING IN REEXAMINATION
  PROCEEDING

  Once a Federal court has ruled upon the merits of a
patent and reexamination is still appropriate under the
guidelines set forth above, the Federal court decision will
be considered controlling and will be followed as to claims
finally held to be invalid by the court.

2287  Conclusion of Reexamination Proceeding [R - 2]

  Upon conclusion of the reexamination proceedings, the
examiner must complete a "Notice of Intent to Issue a
Reexamination Certificate and/or Examiner's Amendment"(NIRC)
and prepare the reexamination file so that the Office of
Publications  can  prepare  and  issue  a  certificate  in
accordance with 37 CFR 1.570 and 35 U.S.C. 307 setting forth
the results of the reexamination proceeding and the content
of the patent following the proceeding. See MPEP § 2288.

  The rules do not provide for an amendment to be filed in
a  reexamination  proceeding  after  prosecution  has  been
closed. 37 CFR 1.312 does not apply in reexamination. Any
amendment, information disclosure statement, or other paper
related to the merits of the reexamination proceeding filed
a fter prosecution has been closed must be accompanied by a
petition  under  37  CFR  1.182  to  have  the  amendment
considered.

  Normally the title will not need to be changed during
reexamination. If a change of the title is necessary, it
should be done as early as possible in the prosecution as a
part of an Office action. If all of the claims are allowed
and  a  "Notice  of  Intent  to  Issue  A  Reexamination
Certificate" has been or is to be mailed, a change to the
title of the invention by the examiner may only be done by

way of an Examiner's Amendment. Changing the title and
merely  initialing  the  change  is  not  permitted  in
reexamination.

  If all of the claims are disclaimed in a patent under
reexamination, a certificate under 37 CFR 1.570 will be
issued indicating that fact.

  In preparing the reexamination file for publication of
the certificate, the examiner must review the reexamination
and patent files to be sure that all the appropriate parts
are completed. The review should include completion of the
following items:

  (a) the "Reexamination Field of Search" and the "Search
Notes" - to be sure the file wrapper is filled in with the
classes and subclasses that were actually searched and other
areas consulted.

  (b) the "Claim No. For O.G." box - to be sure that a
representative claim which has been reexamined is indicated
for publication in the Official Gazette .

  (c) the "Drawing Fig. For Certificate and For O.G." box
- to be sure that an appropriate drawing figure is indicated
for printing on the certificate cover sheet and in the
Official Gazette .

  (d) the "Litigation Review" box - to be sure that the
Office is aware of prior or concurrent litigation.

  (e) the face of the file - to be sure that the necessary
data is included thereon.

  (f) the "Index of Claims" box - to be sure the status of
each claim is indicated and the final claim numbers are
indicated.

  The claims or claims should be selected in accordance
with the following instructions:

  (1) The broadest claim should be selected.

  (2) Examiners should ordinarily designate but one claim
on each invention, although when a plurality of inventions
are claimed in one application, additional claims up to a
maximum of five may be designated for publication. In the
case of reexamination, the examiner must select only one
claim.

  (3) A dependent claim should not be selected unless the
independent claim from which it depends is also printed. In
the case where a multiple dependent claim is selected, the
entire chain of claims for one embodiment should be listed.
In the case of reexamination, a dependent patent claim may
be selected where the independent original patent claim has
been canceled; in such a case, the dependent claim would be
printed while the independent claim would not be printed.

  (4) In reissue applications, the broadest claim with
changes or the broadest additional reissue claim should be
selected for printing.

  When recording this information in the box provided, the
following items should be kept in mind:

  (1) Write the claim number clearly in black ink.

  (2) If multiple claims are selected, the claim numbers
should be separated by commas.

  (3) The claim designated must be referred to by using
the renumbered patent claim number rather than the original
application claim number.

  The examiner must in all cases fill out a blue issue
slip form PTO - 270 or design issue slip form PTO - 328 and
include the current international classification (except
design  patents)  and  U.S.  classification  for  both  the
original classification and all cross - references. An issue
slip is required even if all of the claims are canceled.

  If any new cross - references are added, the examiner
must order a copy of the patent by using form PTO - 14B and
place the copy in the search file so that the certificate
may be attached thereto when it issues.

  If the patent owner desires the names of the attorneys
or agents to be printed on the certificate, a separate paper
limited to this issue which lists the names and positively
states that they should be printed on the certificate must
be filed. A mere power of attorney or change of address is
not a request that the name appear on the certificate.

  If a proper paper has been submitted by the patent owner
indicating the names of the attorneys or agents to be
published  on  the  certificate,  that  paper  should  be
physically placed on top of the other papers in the center
of  the  reexamination  file  at  the  conclusion  of  the
proceedings.

  The examiner must also complete a checklist, form PTO -
1516, for the reexamination file which will be forwarded to
the Office of Publications identifying:

  (a) Any amendments to the abstract and description

  (b) Any amendments to the drawings

  (c) Any terminal disclaimer or dedication filed during
reexamination.

  (d) Any certificate(s) of correction to the patent.

  (e) The patentability of claim(s)____ (and) ____ is
confirmed.

  (f) Claim(s) _____ (and) ____ was (were) previously
canceled. (Relates to a prior proceeding)

  (g) Claim(s) _____ (and) ____ was (were) previously
disclaimed.

  (h) Claim(s) _____ (and) ____ is (are) now disclaimed.

  (i) Claim(s) _____ (and) ____, having been finally
determined to be unpatentable, is (are) canceled.

  (j) Claim(s) _____ (and) ____ is (are) determined to be
patentable as amended. (Note: these claim(s) to be printed

on certificate.)

  (k) Claim(s) _____ (and) ____, dependent on an amended
claim, is (are) determined to be patentable. (Note: to be
used for claims which are not amended. Amended claims must
be listed in j above).

  (l) New claim(s) _____ (and) ____ is (are) added and
determined to be patentable. (Note: these claim(s) to be
printed on certificate.)

  (m) Claim(s) _____ (and) ____ was (were) not reexamined.

  (n) Other (identify claims and status) __________ .

  (o) Any decision of the Patent and Trademark Office,
Federal court or other forum which may affect the validity
of the patent but which have not been considered during
reexamination.

  A clean copy of the patent being reexamined should also
be provided to be forwarded out of Group with the file. The
examiner  should  inspect  the  title  report  in  the  file
(usually paper two or three). If the title report indicates
a title in the inventors, but the patent copy shows an
assignment to an assignee, a telephone call can be made to
the Patent Owner, and the Patent Owner can be asked to
submit a Certificate under 37 CFR 3.73(b) indicating that
title is in the Assignee (i.e. it has not reverted back to
the inventors). See MPEP § 320.

  After the examiner has completed the review and the
reexamination and patent files have been turned in, the
reexamination clerk will complete the Reexamination Clerk
Checklist Form PTO - 1517. The reexamination clerk will
revise and update the files and forward the reexamination
file, the patent file, clean copy of the patent, the
Examiner Checklist - Reexamination PTO - 1516, and the
Reexamination Clerk Checklist PTO - 1517 to the Office of
Publications for printing via the appropriate Office.

  The clerk should check to see if any changes in
especially:

  (a) the title,

  (b) the inventor,

  (c) the assignee,

  (d) the continuing data,

  (e) the foreign priority,

  (f) the address of the owner's attorney, or

  (g) the requester's address have been properly entered
on the face of the reexamination and patent files and in the
PALM data base.

  REEXAMINATION PROCEEDINGS IN WHICH ALL THE CLAIMS ARE
  CANCELED

  There  will  be  instances  that  all  claims  in  the
reexamination proceeding shall be canceled and an NIRC

issued indicating that fact. This would occur where the
patent owner fails to timely respond to an Office action,
and all live claims in the reexamination proceeding are
under rejection. It would also occur where all live claims
in the reexamination proceeding are to be canceled as a
result of a Board decision affirming the examiner, and the
time  for  appeal  to  the  court  and  for  requesting
reconsideration or modification has expired.

  Prior to canceling the claims and issuing the NIRC, the
examiner should telephone the patent owner to inquire if a
timely response, timely appeal, etc., was filed with the
Office so as to make certain that a timely response has not
been misdirected within the Office. Where the patent owner
indicates that no such filing was made, or where the patent
owner cannot be reached, the examiner will proceed to issue
a NIRC terminating prosecution.

  As an attachment to the NIRC, the examiner will draft an
examiner's  amendment  canceling  all  live  claims  in  the
reexamination proceeding. In the examiner's amendment, the
examiner should point out why the claims have been canceled.
For example, the examiner might state one of the two
following examples, as is appropriate:

  "Claims 1 - 5 and 6 - 8 were subject to rejection in the
last Office action mailed 9/9/99. Patent owner failed to
timely respond to that Office action. Accordingly claims 1 -
5 and 6 - 8 have been canceled. See 37 CFR 1.550(d) and MPEP
2266."

  "The rejection of claims 1 - 5 and 6 - 8 has been
affirmed in the Board decision of 9/9/99 and no timely
appeal to the court has been filed. Accordingly claims 1 - 5
and 6 - 8 have been canceled."

  If the patent owner was reached by telephone and
indicated that there was no timely filing (as discussed
above), the attachment to the NIRC will make the telephone
interview of record.

  In order to cancel the live claims, brackets should be
placed around all the live claims. All other claims in the
proceeding should have been either replaced or canceled.

  The examiner will designate a cancelled original patent
claim, to be printed in the Official Gazette , on the file
wrapper in the appropriate place for the claim chosen.<

  REEXAMINATION REMINDERS

  The following items deserve special attention. The
examiner should ensure they have been correctly completed or
followed before passing the case for issue.

  (1)All patent claims must be examined. See MPEP § 2243.

  (2) No renumbering of patent claims is permitted. New
claims may require renumbering. See MPEP § 2250.

  (3) Amendments to the description and claims must
conform to requirements of 37 CFR 1.121(f). This includes
any changes made by Examiner's Amendment. If a portion of
the text is amended more than once, each amendment should
indicate all of the changes (insertions and deletions) in

relation  to  the  current  text  in  the  patent  under
reexamination. See MPEP § 2250.

  (4) The prior art must be listed on a PTO - 892 or PTO -
1449 form. These forms must be properly completed. See MPEP
§ 2257.

  (5) The examiner and clerk checklists PTO - 1516 and
1517 must be entirely and  properly completed. A careful
reading of the instructions contained in these checklists is
essential. The clerical checklist is designed as a check and
review  of  the  examiner's  responses  on  the  examiner
checklist. Accordingly, the clerk should personally review
the file before completing an item. The clerk should check
to make certain that the responses to all related items on
both checklists are in agreement.

  (6) Multiple pending reexamination proceedings must be
merged. See MPEP § 2283.

  (7) Reasons for allowance are required for each allowed
claim. See MPEP § 2262.

  (8) There is no issue fee in reexamination. See MPEP §
2233.

  (10) The patent claims may not be amended nor new claims
added after expiration of the patent. See MPEP § 2250.

  (11) Original drawings cannot be physically changed. All
drawing amendments must be presented on new sheets. The new
sheets must be approved by the Office Draftsman before the
case is forwarded for issue. See MPEP § 2250.01.

  (12) An amended or new claim may not enlarge the scope
of a patent claim. See MPEP § 2250.

2288  Issuance of Reexamination Certificate

 35 U.S.C. 307.  Certificate of patentability,
unpatentability, and claim cancellation

  (a) In a reexamination proceeding under this chapter,
when  the  time  for  appeal  has  expired  or  any  appeal
proceeding has terminated, the Commissioner will issue and
publish a certificate canceling any claim of the patent
finally determined to be unpatentable, confirming any claim
of the patent determined to be patentable, and incorporating
in the patent any proposed amended or new claim determined
to be patentable.

  *****

 37 CFR 1.570.  Issuance of reexamination certificate
after reexamination proceedings.

  (a) Upon the conclusion of reexamination proceedings, the
Commissioner will issue a certificate in accordance with 35
U.S.C. 307 setting forth the results of the reexamination
proceeding and the content of the patent following the
reexamination proceeding.

  (b) A certificate will be issued in each patent in which
a reexamination proceeding has been ordered under § 1.525.
Any statutory disclaimer filed by the patent owner will be

made part of the certificate.

  (c) The certificate will be mailed on the day of its date
to the patent owner at the address as provided for in §
1.33(c). A copy of the certificate will also be mailed to
the requester of the reexamination proceeding.

  (d) If a certificate has been issued which cancels all of
the claims of the patent, no further Office proceedings will
be conducted with regard to that patent or any reissue
applications or reexamination requests relating thereto.

  (e) If the reexamination proceeding is terminated by the
grant of a reissued patent as provided in § 1.565(d), the
reissued  patent  will  constitute  the  reexamination
certificate required by this section and 35 U.S.C. 307.

  (f) A notice of the issuance of each certificate under
this section will be published in the Official Gazette on
its date of issuance.

  Since abandonment is not possible in a reexamination
proceeding, a certificate will be issued at the conclusion
of the proceeding in each patent in which a reexamination
proceeding has been ordered under 37 CFR 1.525 except where
the reexamination has been terminated by the grant of a
reissue patent on the same patent.

  Where the reexamination is terminated for a failure to
timely respond to an Office Action, see MPEP § 2266.

  The certificate will set forth the results of the
proceeding and the content of the patent following the
reexamination proceeding. The certificate will:

  (a) cancel any claims determined to be unpatentable;

  (b)  confirm  any  patent  claims  determined  to  be
patentable;

  (c) incorporate into the patent any amended or new
claims determined to be patentable;

  (d) make any changes in the description approved during
reexamination;

  (e) include any statutory disclaimer filed by the patent
owner;

  (f) refer to unamended claims held invalid on final
holding by another forum on grounds not based on patents or
printed publications;

  (g) refer to any patent claims not reexamined;

  (h) be mailed on the day of its date to the patent owner
at address provided for in 37 CFR 1.33(c) and a copy to the
requester; and

  (i) refer to patent claims, dependent on amended claims,
determined to be patentable.

  If a certificate issues which cancels all of the claims
of  the  patent,  no  further  Office  proceedings  will  be
conducted  with  regard  to  that  patent  or  any  reissue

application or reexamination request directed thereto.

  If a reexamination proceeding is terminated by the grant
of a reissued patent as provided for in 37 CFR 1.565(b), the
reissued  patent  will  constitute  the  reexamination
certificate required by 35 U.S.C. 307 and this section.

  A  notice  of  the  issuance  of  each  reexamination
certificate will be published in the Official Gazette on its
date of issuance in a format similar to that used for
reissue patents. See MPEP § 2291.

2289  Reexamination Review

  All reexamination cases are screened for obvious errors
and proper preparation in order to issue a certificate. A
patentability  review  will  be  made  in  a  sample  of
reexamination cases by the Quality Review Examiners. This
review is an appropriate vehicle to provide information on
the uniformity of practice and to help identify problem
areas.

2290  Format of Certificate

  The reexamination certificate is formatted much the same
as the title page of current U.S. patents. The certificate
is  titled  "Reexamination  Certificate"  and  includes  the
patent number of the original patent preceded by the letter
"B" and the number of the reexamination proceeding of that
patent. For example, "1" for first reexamination certificate
and "2" for the second reexamination certificate. The letter
designation  distinguishes  the  certificate  as  being  a
reexamination  certificate.  Thus,  a  second  reexamination
certificate for the same patent would be designated as "B2"
followed by the patent number.

  The certificate denotes the date the certificate was
issued at INID code [45] (see MPEP § 901.04). The title,
name of inventor, international and U.S. classification, the
abstract, and the list of prior art documents appear at
their respective INID code designations much the same as is
presently done in utility patents.

  The primary differences, other than as indicated above,
are:

  (1) the filing date and number of the request is
preceded by "Reexamination Request;"

  (2) the patent for which the certification is now issued
is identified under the heading "Reexamination Certificate
for"; and

  (3) the prior art documents cited at INID code [56] will
be only those which are part of the reexamination file and
cited on forms PTO - 1449 (and have not been crossed out
because they were not considered) and PTO - 892.

  Finally,  the  certificate  will  specify  the  claims
confirmed as patentable and those canceled. Any new claims
will be printed and any amended claims will be printed
indicating the amendments thereto. Any prior court decisions
will be identified as well as the citation of the court
decisions.

2291  Notice of Certificate Issuance in  Official
Gazette

  The Official Gazette notice will include bibliographic
information, and an indication of the status of each claim
following  reexamination.  Additionally,  a  representative
claim will be pub lished along with an indication of any
changes to the specification or drawing.

2292  Distribution of Certificate

  A copy of the reexamination certificate should be
stapled to each copy of the patent in the search files. A
copy of the certificate will also be made a part of any
patent copies prepared by the Office subsequent to the
issuance of the certificate.

  A copy of the certificate will also be forwarded to all
depository libraries and to those foreign offices which have
an exchange agreement with the U.S. Patent and Trademark
Office.

2293  Intervening Rights [R - 3]

 35 U.S.C. 307.  Certificate of patentability,
unpatentability, and claim cancellation.

  *****

  (b) Any proposed amended or new claim determined to be
patentable  and  incorporated  into  a  patent  following  a
reexamination proceeding will have the same effect as that
specified in section 252 of this title for reissued patents
on the right of any person who made, purchased, or used
within the United States, or imported into the United
States, anything patented by such proposed amended or new
claim, or who made substantial preparation for the same,
prior to issuance of a certificate under the provisions of
subsection (a) of this section.

  The situation of intervening rights resulting from
reexamination  proceedings  parallel  those  resulting  from
reissue proceedings and the rights detailed in 35 U.S.C. 252
apply equally in reexamination and reissue situations. See
Kaufman v.  Lantech ,>807 F.2d 1970,< 1 USPQ2d 1202, 1206
(Fed. Cir. 1986);  Fortal Corp . v.  Phone - Mate ,>825 F.2d
1577,< 3 USPQ2d 1771 (Fed. Cir. 1987);  Tennant v.  Hako
Minuteman , 4 USPQ2d 1167 (N.D. Ill. 1987); and  Key Mfg .
v.  Microdot , 4 USPQ2d (E.D. Mich. 1987).

2294  Terminated Reexamination Files

  Terminated reexamination files in which reexamination
has been denied should be forwarded to the Files Repository
(Location Code 920) for storage with the patent file.

  The files sent to the Files Repository must have either
(1) a certificate date and number (i.e., a Reexamination
Certificate  has  issued),  or  (2)  the  word  "Terminated"
written in green ink on the face of the file at the top
between the word "Reexam" and the patent number. The Reexam
Clerk in each group should make sure that an appropriate
refund has been made before the word "Terminated" is placed
on the file, and the files sent to the Files Repository.

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  Chapter 2300 Interference Proceedings Under Public Law 98 - 622

  2300.01  Introduction
  2300.02  Outline of Interference Procedure
  2301.01  Preliminaries to an Interference
  2301.01(a)  In Different Groups
  2301.01(b)  The Interference Search
  2301.02  Definitions
  2301.03  Filing Papers in Interferences
  2302  Ownership of Applications and Patents Involved in
  an Interference
  2303  Interference Between Applications
  2304  Applicant Requests Interference Between
  Applications
  2305  Examiner Suggests Claim to Applicant
  2305.01  Action To Be Made at Time of Suggesting Claims
  2305.02  Time Limit Set for Presenting Suggested Claims
  2305.03  Suggested Claims Presented After Period for
  Response Running Against Case
  2305.04  Suggestion of Claims, Application in Issue or
  in Interference
  2306  Interference Between an Application and a Patent
  2307  Applicant Requests Interference With a Patent
  2307.01  Presentation of Claims Corresponding to Patent
  Claims Not a Response to Last Office Action
  2307.02  Rejection of Claims Corresponding to Patent
  Claims
  2307.03  Presentation of Claims for Interference With a
  Patent, After Prosecution of Application is Closed
  2307.04  Presentation of Claims For Interference With a
  Patent Involved in a Reexamination Proceeding
  2307.05  Corresponding Patent Claims Not Identified
  2307.06  Presentation of Claims for Interference With a
  Patent, Patentee Must be Notified
  2308  Interference Between an Application and a Patent;
  Prima Facie Showing by Applicant
  2308.01  Patent Has Filing Date Earlier Than
  Application
  2308.02  Showing Under 37 CFR 1.608(b)
  2308.03  Patent Has Filing Date Later Than Application
  2309  Preparation of Interference Papers by Examiner
  2309.01  Formulation of Counts
  2309.02  Preparation of Papers - Initial Memorandum
  2309.03  Affidavits and Declarations Retained in File
  2309.04  Record in Each Interference Complete
  2309.05  Consultation With Examiner - in - Chief
  2309.06  Interfering Subject Matter in "Secrecy Order"
  Cases
  2310  Handling by Examiner - in - Chief
  2311  Declaration of Interference
  2312  Access to Applications in Interference
  2313  Lead Attorney or Agent
  2314  Jurisdiction Over Interference
  2315  Suspension of Ex Parte Prosecution
  2315.01  Suspension - Overlapping Applications

  2316  Sanctions For Failure to Comply With Rules or Order
  2317  Summary Judgment Against Applicant
  2318  Return of Unauthorized Papers
  2321  Preliminary Statement, Time for Filing
  2322  Preliminary Statement, Invention Made by Whom and
  Where
  2323  Preliminary Statement; Invention Made in United
  States
  2324  Preliminary Statement, Invention Made Abroad
  2325  Preliminary Statement, Derivation by an Opponent
  2326  Preliminary Statement, Earlier Application
  2327  Preliminary Statement, Sealing and Opening
  2328  Preliminary Statement, Correction of Error
  2329  Preliminary Statement, Effect of
  2330  Reliance on Earlier Application
  2331  Preliminary Statement Access
  2332  Abandonment, Suppression or Concealment To Be
  Argued
  2333  Preliminary Motions
  2333.01  Preliminary Motions-Related to Application Not
  Involved in Interference
  2333.02  Preliminary Motions - Benefit of Foreign
  Filing Date
  2334  Motions to Correct Inventorship
  2335  Miscellaneous Motions
  2336  Time for Filing Motions
  2337  Motion Content
  2338  Opposition and Reply
  2339  Evidence in Support of Motion, Opposition, or Reply
  2340  Motions, Hearing and Decision
  2341  Unpatentability Discovered
  2342  Addition to Interference
  2343  Prosecution by Assignee
  2344  Petitions
  2345  Extension of Time
  2346  Service of Papers
  2347  Translations
  2351  Times for Discovery and Testimony
  2352  Judgment for Failure To Take Testimony or File
  Record
  2353  Records and Exhibits
  2354  Final Hearing
  2355  Final Decision, Matters Considered
  2356  Briefs for Final Hearing
  2357  Burden of Proof
  2358  Final Decision
  2359  Board Recommendation
  2360  Notice of Reexamination, Reissue, Protest, or
  Litigation
  2361  Termination of Interference After Judgment
  2362  Request for Entry of Adverse Judgment
  2363  Action After Interference
  2363.01  No Interference In Fact
  2363.02  The Winning Party
  2363.03  The Losing Party
  2364  Entry of Amendments
  2364.01  Amendments Filed During Interference
  2365  Second Interference
  2366  Interference Settlement Agreement
  2371  Evidence
  2372  Manner of Taking Testimony
  2373  Notice of Examination of Witness
  2374  Persons Depositions Taken Before
  2375  Examination of Witness
  2376  Filing Transcript of Deposition

  2377  Form of Transcript of Deposition
  2378  Time for Filing Transcript of Deposition
  2379  Inspection of Transcript
  2382  Official Records and Printed Publications
  2383  Testimony From Another Interference or Proceeding
  2384  Testimony in a Foreign Country
  2385  Errors in Deposition
  2387  Additional Discovery
  2388  Use of Discovery
  2390  Arbitration of Interferences

2300.01 Introduction

 Title II of the Patent Law Amendments Act of 1984 (Pu blic
Law 98 - 622) combined the Patent and Trademark Board of
Appeals and Board of Patent Interferences into a new Board,
the Board of Patent Appeals and Interferences (Board), and
amended 35 U.S.C. 135(c) to provide that in an interference
the jurisdiction of the new Board would extend not only to
priority  of  invention,  but  also  to  questions  of
patentability. These provisions took effect on February 8,
1985. On the next working day, February 11, 1985, the former
interference rules, 37 CFR 1.201 to 1.288, were replaced
with a new set of rules, 37 CFR 1.601 to 1.688. With a few
exceptions,  the  new  rules  apply  to  all  interferences
declared  on  or  after  the  date  of  their  adoption;
interferences declared prior to that date will continue to
be governed by the old rules covered in Chapter 1100 of this
manual.

 The notice promulgating the new rules, which was published
in the Federal Register on December 12, 1984 (49 F.R. 48416)
and in the  Official Gazette on January 29, 1985 (1050 O.G.
385), included not only the text of the rules, but also a
discussion  of  the  rules  and  analysis  of  the  comments
received, which serve as the "legislative history" of the
rules. A practitioner who is or may become involved in an
interference under the new rules would be well advised to
study this notice closely.

  Attention  is  also  directed  to  the  correction  notice
published in the Federal Registe r on May 31, 1985 (50 F.R.
23122) and in the  Official Gazette on October 22, 1985
(1059 O.G. 27).

 It is believed that the statutory changes, and the new
rules, will result in a more rapid determination of the
rights of the parties, and avoid the lengthy proceedings
which have characterized some interferences in the past.
Since the Board has been given jurisdiction to decide
patentability, it will no longer be necessary to decide
whether or not an issue is "ancillary to priority". The
Board  can  now  decide  all  patentability  issues  in  the
interference, if properly raised by the parties, without the
necessity  for  dissolving  the  interference  and  pursuing
patentability questions ex parte(in which case a reversal of
the  ex parte rejection would require reinstatement of the
interference). Each interference under the new rules is
assigned to an examiner - in - chief, who is expected to
exercise such control over the interference that it will not
normally be pending before the Board more than 2 years (37
CFR 1.610). 37 CFR 1.616 provides that appropriate sanctions
may be imposed by an examiner - in - chief against a party
who fails to comply with the interference rules or an order

of the examiner - in - chief or Board. The ultimate
sanction, entry of adverse judgment against the party, may
be imposed by the Board in an extreme case.

 The interference practice is based on 35 U.S.C. 135, as
amended by P.L. 98 - 622.

 35 U.S.C. 135.  Interferences.

 (a)  Whenever an application is made for a patent which,
in the opinion of the Commissioner, would interfere with any
pending  application,  or  with  any  unexpired  patent,  an
interference may be declared and the Commissioner shall give
notice of such declaration to the applicants, or applicant
and patentee, as the case may be. The Board of Patent
Appeals  and  Interferences  shall  determine  questions  of
priority of the inventions and may determine questions of
patentability. Any final decision, if adverse to the claim
of an applicant, shall constitute the final refusal by the
Patent and Trademark Office of the claims involved, and the
Commissioner may issue a patent to the applicant who is
adjudged the prior inventor. A final judgment adverse to a
patentee from which no appeal or other review has been or
can be taken or had shall constitute cancellation of the
claims  involved  in  the  patent,  and  notice  of  such
cancellation shall be endorsed on copies of the patent
distributed  after  such  cancellation  by  the  Patent  and
Trademark Office.

 (b)  A claim which is the same as, or for the same or
substantially the same subject matter as, a claim of an
issued patent may not be made in any application unless such
a claim is made prior to one year from the date on which the
patent was granted.

 (c)  Any agreement or understanding between parties to
an  interference,  including  any  collateral  agreements
referred  to  therein,  made  in  connection  with  or  in
contemplation of the termination of the interference, shall
be in writing and a true copy thereof filed in the Patent
and  Trademark  Office  before  the  termination  of  the
interference as between the said parties to the agreement or
understanding. If any party filing the same so requests, the
copy  shall  be  kept  separate  from  the  file  of  the
interference, and made available only to Government agencies
on written request, or to any person on a showing of good
cause. Failure to file the copy of such agreement or
understanding shall render permanently unenforceable such
agreement or understanding and any patent of such parties
involved in the interference or any patent subsequently
issued on any application of such parties so involved. The
Commissioner may, however, on a showing of good cause for
failure to file within the time prescribed, permit the
filing of the agreement or understanding during the six
month  period  subsequent  to  the  termination  of  the
interference as between the parties to the agreement or
understanding.

 The Commissioner shall give notice to the parties or their
attorneys  of  record,  a  reasonable  time  prior  to  said
termination, of the filing requirement of this section. If
the  Commissioner  gives  such  notice  at  a  later  time,
irrespective  of  the  right  to  file  such  agreement  or
understanding within the six - month period on a showing of
good  cause,  the  parties  may  file  such  agreement  or

understanding within sixty days of the receipt of such
notice.

 Any discretionary action of the Commissioner under this
subsection shall be reviewable under section 10 of the
Administrative Procedure Act.

 (d)  Parties to a patent interference, within such time
as may be specified by the Commissioner by regulation, may
determine such contest or any aspect thereof by arbitration.
Such arbitration shall be governed by the provisions of
title 9 to the extent such title is not inconsistent with
this  section.  The  parties  shall  give  notice  of  any
arbitration award to the Commissioner, and such award shall,
as between the parties to the arbitration, be dispositive of
the issues to which it relates. The arbitration award shall
be unenforceable until such notice is given. Nothing in this
subsection shall preclude the Commissioner from determining
patentability of the invention involved in the interference.

 The Patent and Trademark Office (PTO) conducts interference
proceedings  to  determine  who  as  between  two  or  more
applicants for patent or one or more applicants and one or
more  patentees  is  the  first  inventor  of  a  patentable
invention. Prior to February 11, 1985, the determination was
made by a Board of Patent Interferences. The Patent Law
Amendments Act of 1984, Public Law 98 - 622. § 201 - § 202
combined the Board of Appeals and the Board of Patent
Interferences into a single Board of Patent Appeals and
Interferences (Board) and authorized the Board to consider
priority and patentability in interference cases.

 In view of the discretion given the Board under 35 U.S.C.
135(a), as amended by Public Law 98 - 622 ("The Board . .
. may determine questions of patentability . ."), the
rules  set  forth  in  this  chapter  will  apply  to  all
interferences declared on or after February 11, 1985, except
in special circumstances, such as: (1) interferences which
are declared as a result of a motion in another interference
which was pending before the Board before February 11, 1985
(e.g., an interference declared as a result of a motion
under 37 CFR 1.231 to declare an additional interference);
(2) an interference related to another interference declared
prior to February 11, 1985 (e.g., an interference involving
a method of using a compound where an interference involving
the same parties and the compound was declared prior to
February 11, 1985); and (3) an interference reinstituted
after having been dissolved under the old rules (37 CFR
1.201 - 1.288) (e.g., an interference reinstituted after
having been dissolved as a result of a motion under 37 CFR
1.231 to dissolve on the grounds of unpatentability where
the applicant has obtained allowance of the claims held
unpatentable  in  the  decision  on  motions).  For  these
interferences the provisions of MPEP Chapter 1100 remain in
effect.

 Through the rules and provisions of this chapter, the PTO
seeks to improve interference procedure so that the rights
of parties in interferences are determined at an early date
and the overall process of examining patent applications
which become involved in interferences is simplified.

 The new rules for interferences are set forth herein in 37
CFR 1.601 through 1.688. The new rules replace entirely the
previous interference rules (37 CFR 1.201 through 1.288). A

"six hundred" number series is used for the new rules. The
use of a six hundred number series for the new rules will
permit  interested  individuals  to  research  published
decisions (e.g., F.2d, USPQ) or computerized legal research
services (e.g., LEXIS) citing the new rules.

 An index of the headings of 37 CFR 1.601 - 1.688 and a
table correlating 37 CFR 1.201 through 1.288 (former rules)
to 37 CFR 1.601 through 1.688 (revised rules) appears below.

 Rule Correlation Table

 Former Rule  Revised Rule

 1.201(a)  1.601(i)

 1.201(b)  1.601(i)

 1.201(c)  1.602

 1.202  none

 1.203(a)  1.603

 1.203(b)  1.605(a)

 1.203(c)  1.605(b)

  new  1.604(a)

 1.203(d)  1.604(b)

 1.204(a)  none

 1.204(b)  1.608(a)

 1.204(c)  1.608(b)

 1.205(a)  1.606

 1.205(b)  1.607(a), (c)

 1.205(c)  1.607(d)

  new  1  .608(a)

 1.206(a)  1.607(b)

 1.207(a)  1.609

  new  1.610

 1.207(b)  1.611

 1.208 1.613(b)

 1.211 1.614

 1.212 1.615

  new  1.616

 1.228 1.617

  new  1.618

 1.215(a)  1.621(a)

 1.215(b)  1.621(b)

 1.215(c)  1.629(c)

 1.216(a)  1.622(a), (b)

 1.216(a)(1) - (6)  1.623(a)

 1.216(b)  1.623(c), 1.624(c), 1.625(c)

 1.216(c)  1.666

 1.217(a)  1.624(a), 1.625(a)

 1.217(b)  1.623(a)

 1.218 1.621(a)

 1.219 1.627

 1.222 1.628

 1.223 1.629

 1.224 1.630

 1.225 1.640(d), (e), and 1.651(c)(4)

 1.226 1.612

 1.227 1.631

Former Rule  Revised Rule

  new  1.632

 1.231 1.633, 1.634

 1.237 1.641

 1.238 1.642

 1.242 1.643

 1.243 1.635, 1.636, 1.637(b), 1.638 through 1.640

 1.244 1.644

 1.245 1.645(a)

 1.246 1.645(b)

 1.247 1.646

 1.248 1.646

  new  1.647

 1.251 1.651

 1.252 1.652

 1.253 1.653

 1.254 1.656

 1.255 1.656(c)

 1.256 1.654

 1.257(a)  1.657

 1.257(b)  1.658(c)

 1.258 1.655

 1.259 1.659

  new  1.660

 1.262 1.662(a)

 1.263 1.622(c)

 1.264 1.662(b)

  new  1.662(e)

 1.265 1.663

 1.266 1.664

 1.267 1.665

 1.268 1.666

 1.271 1.671(h)

  new  1.671(g)

 1.272(a)  1.672(a), (b)

 1.272(b)  1.672(d)

 1.272(c)  1.672(e), (f)

 1.273(a)  1.673(a), (c), (d)

  new  1.673(e)

 1.273(b)  1.673(f)

 1.274 1.674

 1.275 1.675

 1.276 1.676

 1.277 1.677

 1.278 1.678

 1.279 1.679

 1.281 1.645(a)

 1.282 1.682

 1.283 1.683

Former Rule  Revised Rule

 1.285 1.685

 1.286  eliminated

 1.287(a)(1)(i),(ii)  1.673(b)

 1.287(a)(1)(iii)  1.673(a)

 1.287(a)(2),(3)  eliminated

 1.287(b)  1.687(b)

 1.287(c)  1.687(c)

 1.287(d)(1)  1.673(c)

 1.287(d)(2)  1.616

 1.287(e)  1.687(d)

 1.288 1.688

2300.02 Outline of Interference Procedure

 The following statement appears in a "section - by -
section" analysis submitted for the Record by Representative
Kastenmeier during discussion of H.R. 6286 (Pub. L. 98 -
622) on the floor of the House (130 Cong. Rec. H10528,
columns 2 and 3):

 "It is expected that interferences will become simpler,
more expeditious, and less costly. Under the bill, all
issues of patentability and priority which arise in an
interference can be decided in a single proceeding rather
than in a series of complicated inter partes and  ex parte
proceedings."

 Under the revised rules, interferences are decided by the
Board. The Board has jurisdiction to determine (1) priority
of invention, (2) patentability of any claim corresponding
to a count both as to applicants and patentees, (3) any
issue of interference - in - fact as to any count, and (4)
any other issue necessary to resolve the interference. The
rules permit an interference to be declared on the basis of
a  single  count  defining  one  patentable  invention  in
interferences involving patents as well as applications. The
Board also has jurisdiction to determine whether counts are
patentably distinct.

 When an interference is declared, an examiner - in - chief
is assigned to handle the interlocutory stages of the
interference. An examiner having full signatory authority
determines when one or more applications or one or more
applications  and  a  patent  claim  the  same  patentable
invention. When the examiner makes such determination, the
examiner will forward any involved applications or patents
to the Board. The examiner will designate, at the time the
involved applications or patents are sent to the Board, the
claims of any application and patent which correspond to
each count. The examiner - in - chief can subsequently

designate additional claims to correspond to the count. The
examiner - in - chief assigned to handle the interference
will  issue  a  notice  to  the  parties  declaring  the
interference.

 The object of the interference will be to resolve all
controversies as to all interfering subject matter defined
by one or more counts. A final decision in the interference
will determine who, if anyone, is entitled to claims which
correspond to a count. Any decision adverse to an applicant
by the Board will constitute a final refusal by the PTO to
that applicant of the claims involved. Any decision adverse
to a patentee constitutes cancellation from the patent of
the claims involved.

 Any decision by the Board on any issue is binding on the
examiner and will govern further proceedings in the PTO.

 The designation of a single examiner - in - chief to handle
the interlocutory phases of an interference will permit
better  management  of,  and  control  over,  interference
proceedings. The rules provide that times be set and the
examiner - in - chief exercise control over proceedings in
the interference such that pendency of the interference
before the Board from declaration to final decision will not
normally exceed 24 months. The examiner - in - chief should
be familiar with the history of the interference and will be
accessible to counsel for the parties. For example, an
examiner  -  in  -  chief,  when  appropriate,  may  conduct
telephone  conference  calls  to  obtain  agreement  of  the
parties on the setting of schedules. The rules also permit
the examiner - in - chief to hold hearings in the PTO or by
conference telephone call in order to expedite or settle
interlocutory issues in interferences. Any hearing can be
transcribed by a court reporter under such conditions as an
examiner - in - chief or the Board deems appropriate. The
examiner - in - chief, where appropriate, will be available
by phone to rule on the admissibility of evidence in the
event parties encounter unusual problems during the taking
of depositions. The examiner - in - chief will also be
available to rule on requests for production of documents
which take place during cross - examination. Oral orders
given by phone will be followed by written orders.

 At the time an interference is declared, the examiner - in
- chief will set a time for filing preliminary motions. The
preliminary motions can include:

  (1)  A motion for judgment on the ground that a
claim corresponding to the count is not patentable to an
opponent under 35 U.S.C. 102, 103, 112, or any other
provision of law.

  (2)  A motion for judgment on the ground that there
is no interference - in - fact between the claims of the
opponents in the interference.

  (3)  A motion to add or to substitute new counts,
to amend a claim corresponding to a count, to designate an
application or patent claim to correspond to a count, to
designate  an  application  or  patent  claim  as  not
corresponding to a count, or to require an applicant to
present a claim to be designated to correspond to a count.

  (4)  A motion to substitute another application for

the application involved in the interference or to add an
application for reissue to the interference.

  (5)  A motion to declare another interference.

  (6)  A motion to be accorded the benefit of an
earlier application or to attack the benefit of an earlier
application which has been accorded to an opponent.

 Other motions are permitted as necessary, such as a motion
to amend the count and/or a claim corresponding to the count
in response to a preliminary motion for judgment.

 Oppositions to motions are permitted if filed within a time
set  by  the  examiner  -  in  -  chief.  Replies  are  also
authorized. Papers which are not authorized by the rules or
requested by the examiner - in - chief can be returned
unfiled.

  A  preliminary  statement  will  be  filed  prior  to  or
concurrently with the preliminary motions outlined above.

 Motions will be decided by an examiner - in - chief, who
may consult with an examiner on questions of patentability
which have not previously been decided by the examiner. The
examiner - in - chief may grant a motion, deny a motion,
defer consideration on the merits of a motion to final
hearing, or take such other action with respect to a motion
as  may  be  appropriate;  e.g.,  dismiss  an  entirely
inappropriate motion.

  At  the  time  preliminary  motions  are  decided,  the
preliminary statements will be opened. If a decision on a
motion or an inspection of the preliminary statement results
in entry of an order to show cause why a judgment should not
be entered, the party against whom judgment might be entered
can request a hearing before the examiner - in - chief and
two additional examiners - in - chief. The decision will
govern further proceedings. If adverse, the decision will
constitute  a  final  agency  action.  If  favorable,  the
interference will proceed before the examiner - in - chief.

 After preliminary motions are decided and assuming judgment
does not result, a period may be set for the parties to file
motions  for  additional  discovery.  The  scope  of  the
additional discovery would be the same as under current
practice.

 When a time period is set for filing discovery motions, or
after discovery has closed, the examiner - in - chief will
set a period for taking testimony. Any party wishing to take
testimony of a witness can elect to have the testimony of
the witness taken by deposition or presented by affidavit. A
transcript of an ex parte deposition can be used as an
affidavit. If an affidavit is presented, the opposing party
may then cross - examine on oral deposition. Any redirect
will take place at the deposition. The party calling the
witness is re sponsible for securing a court reporter and
filing the transcript and record associated with cross -
examination of its witness.

 In the event a party needs testimony from a third - party
who will not appear unless a subpoena is issued, including a
hostile witness, direct and cross - examination testimony
may be taken on oral deposition. The rules provide that

prior authorization of an examiner - in - chief is required
before a party can take testimony by issuance of a subpoena
under 35 U.S.C. 24. The revised rule thus adopts the policy
of Sheehan v.  Doyle , 513 F.2d 895, 898, 185 USPQ 489, 492
(1st Cir.)  cert. denied , 423 U.S. 874 (1975), and Sheehan
v. Doyle, 529 F.2d 38, 40, 188  USPQ 545, 546 (1st Cir.),
cert. denied , 429 U.S. 870 (1976),  rehearing denied , 429
U.S. 987 (1976), and rejects the policy announced in  Brown
v. Braddick , 595 F.2d 961, 967, 203 USPQ 95, 101 - 102 (5th
Cir. 1979). Testimony obtained in other proceedings; e.g.,
another interference or an infringement action, may be used
if otherwise admissible.

  Under the rules, the Federal Rules of Evidence are made
applicable to interferences, except for those portions which
relate to criminal actions, juries, and other matters not
relevant to interferences. Those portions include:

 (1)  Rule 103(c)

 (2)  Rule 104(c), (d), and (e)

 (3)  The language in Rule 105 which reads "and instruct
the jury accordingly."

 (4)  Rule 201(g)

 (5)  The language in Rule 403 which reads "or misleading
the jury."

 (6)  Rule 404(a)(1) and (2).

 (7)  The word "charge" in Rule 405(b).

 (8)  The language "or criminal" and proviso (ii) in Rule
410.

 (9)  Rule 412

 (10)  Rule 606

 (11)  The language "whether by an accused" and "other" in
the last sentence of Rule 607.

 (12)  The provisions of the first sentence of Rule 611(c)
relating to leading questions on direct examination do not
apply to statements made in an affidavit authorized to be
filed under the rules.

 (13)  The language "Except as otherwise provided in
criminal proceedings by section 3500 of Title 18, United
States Code" and "except that in criminal cases when the
prosecution elects not to comply, the order shall be one
striking the testimony or, if the court in its discretion
determines  that  the  interests  of  justice  so  require,
declaring a mistrial" in Rule 612.

 (14)  Rule 614.

 (15)  Rule 706

 (16)  The language "excluding, however, in criminal cases
matters  observed  by  police  officers  and  other  law
enforcement personnel" and "and against the Government in
criminal cases" in Rule 803(8).

 (17)  The language "but not including, when offered by
the Government in a criminal prosecution for purposes other
than impeachment, judgments against persons other than the
second" in Rule 803(22).

 (18)  The language "prosecution for homicide or in a" in
Rule 804(b)(2).

 (19)  The language "A statement tending to expose the
declarant to criminal liability and offered to exculpate the
accused is not admissible unless corroborating circumstances
clearly indicate the trustworthiness of the statement" in
Rule 804(b)(3).

 (20)  Rule 1101(a), (b), (d)(3), and (e).

 The examiner - in - chief will set a period for filing the
record and briefs. Oral hearings normally will be held
before a panel consisting of the examiner - in - chief
assigned to the interference and two other examiners - in -
chief. The panel will render a final decision in the
interference. Requests for reconsideration are permitted.

 In rendering its decision, the Board will consider only
that evidence which can be made available to the public
under 37 CFR 1.11(a). Accordingly, the Board will not
consider evidence which is submitted under a protective
order issued by a court if release of that evidence under 37
CFR 1.11(a) would be inconsistent with the terms of the
court's order.

 A final decision of the Board is reviewable in the U.S.C.
ourt of Appeals for the Federal Circuit or an appropriate
U.S. district court. Any reviewing court can review all
aspects of the decision including patentability, priority,
and all relevant interlocutory orders, such as denials of
discovery.

 Except as noted above, the revised rules are applicable to
all interferences declared on or after February 11, 1985.
Interferences declared prior to February 11, 1985 continue
to be governed by the prior rules (37 CFR 1.201 - 1.288,
July 1, 1984) and will be decided by personnel of the Board
of Patent Appeals and Interferences. Actions previously
taken by a patent interference examiner or examiners of
interference will be taken by an examiner - in - chief.

 An anticipated time schedule for a two - party interference
follows:

 Interference declared (1.611)

 Filing of preliminary statements (1.621)

  and preliminary motions (1.633) 3 months 3 mths

 Filing oppositions of preliminary

  motions (1.638(a)). 2/3 month 32/3 mths

 Filing replies to oppositions (1.638(b)) 2/3  month  41/3
mths

 Decision on preliminary motions (1.640(b)(1))

  open preliminary statements (1.631),

  set times for filing motions for discovery

  (1.687(c) and testimony (1.651(a)). 1 month 51/3 mths

 Filing of motions of discovery (1.635,

 1.651(a), 1.687(c)). 1 month 6 1/3 mths

 Filing of opposition to motion for discovery

 (1.638(a)). 2/3 month 7 mths

 Filing reply to opposition to motion for

  discovery (1.638(b))  2/3 month 7 2/3 mths

 Decision on motion for discovery  2/3 month 8 /3 mths

 Time for compliance with any discovery  2/3 month 9 mths

 Junior party testimony (case - in - chief;

 1.672(b)): Testimony 2 months 11 mths

 Senior party cross - examination of

  affiants if needed 1 month 12 mths

 Senior party testimony (case - in - chief and

  case - in rebuttal, 1.672(b): Testimony 1 2/3 mths
13 2/3 mths

 Junior party cross - examination of affiants

  if needed 1 month 14 2/3 mths

 Junior party testimony (case - in rebuttal):

  Testimony 1 1/3 mths 16 mths

 Senior party cross - examination of affiants

  if needed 2/3 months 16 2/3 mths

 Filing of record (1.653(c))  1 1/3 mths 18 mths

 Brief for junior party (1.656) 1 month 19 mths

 Brief for senior party (1.656) 1 month 20 mths

 Reply brief for junior party (1.656)  2/3 month 20 2/3
mths

 Final hearing (1.654)  1 month 21 2/3 mths

 Decision (1.658)  2 months 23 2/3 mths

2301.01 Preliminaries to an Interference

 An interference is often an expensive and time - consuming
proceeding. Yet, it is necessary to determine priority when
two applicants, or an applicant and a patentee, are claiming
the same patentable subject matter and their filing dates
are close together that there is a reasonable possibility
that the first to file is not the first inventor. The fact
that an application is a reissue application does not
preclude it from being involved in an interference.

 The greatest care must therefore be exercised both in the
search  for  interfering  applications  and  in  determining
whether an interference should be declared. Also the claims
in  recently  issued  patents,  especially  those  used  as
references  against  the  application  claims,  should  be
considered for possible interference.

 The question of the propriety of initiating an interference
in any given case is affected by so many factors that a
discussion of them here is impracticable. Some circumstances
which  render  an  interference  unnecessary  are  hereafter
noted, but each instance must be carefully considered if
serious errors are to be avoided.

 In determining whether an interference is necessary, a
claim should be given the broadest interpretation which it
reasonably will support, bearing in mind the following
general principles:

  (a)  The interpretation should not be strained.

  (b)  Express limitations in the claim should not be
ignored nor should limitations be read therein.

  (c)  Before a claim (unless it is a patented claim)
is considered as the basis for the count of an interference
the claim should be allowable and in good form. No pending
claim which is indefinite, ambiguous or otherwise defective
should be the basis for a count of an interference.

  (d)  A claim copied from a patent, if ambiguous,
should be interpreted in the light of the patent in which it
originated.

  (e)  Since an interference between cases having a
common assignee is not normally instituted, all cases must
be submitted to the Assignment Division for a title report.

  (f)  If doubts exist as to whether there is an
interference, an interference should not be declared.

2301.01(a)  In Different Groups

 An interference between applications assigned to different
groups is declared by the group where the controlling
interfering claim would be classified. Appropriate transfer
of one of the applications is made. After termination of the
interference, further transfer may be necessary depending
upon the outcome.

2301.01(b)  The Interference Search

 The search for interfering applications must not be limited
to the class or subclass in which the application is
classified, but must be extended to all classes, in and out
of the examining group, which it has been necessary to
search in the examination of the application. See MPEP §
1302.08.

 Moreover, the possibility of the existence of interfering
applications  should  be  kept  in  mind  throughout  the
prosecution. Where the examiner at any time finds that two
or more applications are claiming the same invention and the
examiner  does  not  deem  it  expedient  to  institute
interference proceedings at that time, the examiner should
make a record of the possible interference as on the face of
the file wrapper in the space reserved for class and
subclass designations. Such notations, however, if made on
the file wrapper or drawings, must not be such as to give
any hint to the applicants, who may inspect their own
applications at any time, of the date or identity of a
supposedly interfering application. Serial numbers or filing
dates of conflicting applications must never be placed upon
drawings or file wrappers. A book of "Prospective Inter
ferences" should be maintained containing complete data
concerning possible interferences and the page and line of
this book should be referred to on the respective file
wrappers or drawings. For future reference, this book may
include notes as to why prospective interferences were not
declared.

 In determining whether an interference exists, the primary
examiner must decide the question. An examiner - in - chief
may, however, be consulted for advice.

 The group director should be consulted if it is believed
that  the  circumstances  justify  an  interference  between
applications neither of which is ready for allowance.

2301.02 Definitions

 37 CFR 1.601.  Scope of rules, definitions.

 This subpart governs the procedure in patent interferences
in the Patent and Trademark Office. This subpart shall be
construed  to  secure  the  just,  speedy,  and  inexpensive
determination of every interference. For the meaning of
terms in the Federal Rules of Evidence as applied to
interferences, see § 1.671(c). Unless otherwise clear from
the  context,  the  following  definitions  apply  to  this
subpart:

 (a)  "Additional discovery" is discovery to which a
party may be entitled under § 1.687 in addition to discovery
to which the party is entitled as a matter of right under §
1.673(a) and (b).

 (b)  "Affidavit" means affidavit, declaration under §
1.68, or statutory declaration under 28 U.S.C. 1746. A
transcript of an e x parte deposition may be used as an
affidavit.

 (c)  "Board" means the Board of Patent Appeals and
Interferences.

 (d)  "Case - in - chief" means that portion of a party's
case where the party has the burden of going forward with

evidence.

 (e)  "Case - in - rebuttal" means that portion of a
party's case where the party presents evidence in rebuttal
to the case - in - chief of another party.

 (f)  A "count" defines the interfering subject matter
between (1) two or more applications or (2) one or more
applications and one or more patents. When there is more
than  one  count,  each  count  shall  define  a  separate
patentable invention. Any claim of an application or patent
which corresponds to a count is a claim involved in the
interference within the meaning of 35 U.S.C. 135(a). A claim
of a patent or application which is identical to a count is
said to "correspond exactly" to the count. A claim of a
patent or application which is not identical to a count, but
which defines the same patentable invention as the count, is
said to "correspond substantially" to the count. When a
count is broader in scope than all claims which correspond
to the count, the count is a "phantom count." A phantom
count is not patentable to any party.

 (g)  The "effective filing date" of an application or a
patent is the filing date of an earlier application accorded
to the application or patent under 35 U.S.C. 119, 120, or
365.

 (h)  In the case of an application, "filing date" means
the filing date assigned to the application. In the case of
a patent, "filing date" means the filing date assigned to
the application which issued as the patent.

 (i)  An "interference" is a proceeding instituted in the
Patent and Trademark Office before the Board to determine
any question of patentability and priority of invention
between two or more parties claiming the same patentable
invention. An interference may be declared between two or
more pending applications naming different inventors when,
in the opinion of an examiner, the applications contain
claims for the same patentable invention. An interference
may be declared between one or more pending applications and
one or more unexpired patents naming different inventors
when, in the opinion of an examiner, any application and any
unexpired patent contain claims for the same patentable
invention.

 (j)  An "interference - in - fact" exists when at least
one claim of a party which corresponds to a count and at
least one claim of an opponent which corresponds to the
count define the same patentable invention.

 (k)  A "lead" attorney or agent is a registered attorney
or  agent  of  record  who  is  primarily  responsible  for
prosecuting an interference on behalf of a party and is the
attorney or agent whom an examiner - in - chief may contact
to set times and take other action in the interference.

 (l)  A "party" is (1) an applicant or patentee involved
in the interference or (2) a legal representative or an
assignee  of  an  applicant  or  patentee  involved  in  an
interference. Where acts of a party are normally performed
by an attorney or agent, "party" may be construed to mean
the attorney or agent. An "inventor" is the individual named
as inventor in an application involved in an interference or
the individual named as inventor in a patent involved in an

interference.

 (m)  A  "senior  party"  is  the  party  with  earliest
effective filing date as to all counts or, if there is no
party with the earliest effective filing date as to all
counts, the party with the earliest filing date. A "junior
party" is any other party.

 (n)  Invention "A" is the "same patentable invention" as
an invention "B" when invention "A" is the same as (35
U.S.C. 102) or is obvious (35 U.S.C. 103) in view of
invention "B" assuming invention "B" is prior art with
respect to invention "A". Invention "A" is a "separate
patentable invention" with respect to invention "B" when
invention "A" is new (35 U.S.C. 102) and non - obvious (35
U.S.C. 103) in view of invention "B" assuming invention "B"
is prior art with respect to invention "A".

 (o)  "Sworn" means sworn or affirmed.

 (p)  "United States" means the United States of America,
its territories and possessions.

 Under 37 CFR 1.601, the rules shall be construed to secure
the  just,  speedy,  and  inexpensive  determination  of
interferences. 37 CFR 1.601 defines various terms used in
Subpart E of the Rules of Practice including "additional
discovery," "affidavit," "case - in - chief," "case - in -
rebuttal," "count," "effective filing date," "filing date,"
"interference," "interference - in - fact," "junior party,"
"lead attorney," "party," "phantom count," "same patentable
invention," "separate patentable invention," "senior party,"
"sworn,"  and  "United  States".  "Affidavits"  include
declarations under 35 U.S.C. 25 and 37 CFR 1.68 as well as
statutory declarations under 28 U.S.C. 1746. The definition
"United States" is the same as the definition of United
States in 35 U.S.C. 100(c).

 The definition of "interference" permits an interference
between one or more applications and one or more patents.
Thus, the revised rules follow the policy of Wilson v.
Yakel , 1876 C.D. 245 (Comm'r. Pat. 1876) and, to the extent
inconsistent therewith, do not follow the policy announced
in  Touval v.  Newcombe , 194 USPQ 509 (Comm'r. Pat. 1976).
However, in view of the statutory requirement for the
presence of at least one application in an interference, if
an applicant were to concede priority or otherwise be
terminated  from  an  interference  involving  only  one
application and more than one patent, the interference would
have  to  be  terminated  for  lack  of  subject  matter
jurisdiction unless one or more of the paten tees filed an
application  for  reissue  which  could  be  added  to  the
interference under 37 CFR 1.633(h).

  A  "count"  defines  interfering  subject  matter.  An
interference may have two counts only if the second count
defines a "separate patentable invention" from the first
count. The reason the second count must define a separate
patentable in vention is to permit the PTO to lawfully issue
separate patents to different parties in an interference
when a single party does not prevail as to all counts. A
"separate  patentable  invention"  is  defined  in  37  CFR
1.601(n):

 Invention (A) is a "separate patentable invention" with

respect to invention (B) when invention (A) is new (35
U.S.C. 102) and unobvious (35 U.S.C. 103) in view of
invention (B) assuming invention (B) is prior art with
respect to invention (A). application or patent involved in
an interference, should be marked "Box Interference." See 37
CFR 1.1(e) and MPEP § 501.

2301.03 Filing Papers In Interferences

 All papers filed by the parties in an interference may be
filed using the certificate of mailing or transmission
procedure (37 CFR 1.8), except for (1) papers which an
examiner - in - chief has ordered the parties to file by
hand or by "Express Mail," or (2) copies of agreements
between the parties filed pursuant to 35 U.S.C. 135(c) and
37 CFR 1.666. See MPEP § 2366. Mail containing papers
relating to an interference, or to an application or patent
involved  in  an  interference,  should  be  marked  "Box
Interference." See 37 CFR 1.1(e) and MPEP § 501.

 Any paper which may be filed in an interference using the
certificate of mailing or transmission procedure may be
transmitted to the PTO by facsimile ("fax"), except for the
following, which may not be transmitted by facsimile, and,
if submitted by facsimile, will not be accorded a date of
receipt:

  (1)  a preliminary statement under 37 CFR 1.621
(MPEP § 2321 to § 2326);

  (2)  a transcript of a deposition under 37 CFR
1.676 (MPEP § 2376);

  (3) a  transcript  of  interrogatories,  cross  -
interrogatories, or recorded answers under 37 CFR 1.684(c)
(MPEP § 2384).

  (4)  an evidentiary record and exhibits under 37
CFR 1.653 (MPEP § 2353).

 When transmitting an interference paper to the PTO by
facsimile, the procedure specified in MPEP § 502.01 must be
followed. The number of the interference should be entered
as a part of the sender's identification on a facsimile
cover sheet. The original of the paper which is transmitted
to the PTO should not be filed but should be retained as
evidence of proper execution in the event that questions
arise about the authenticity of the signature reproduced on
the facsimile - transmitted copy. See CFR 1.4(d)(2).

 See MPEP § 2309.04 concerning the filing of papers in two
or more related interferences.

2302  Ownership of Applications and Patents Involved in
an Interference

 37 CFR 1.602.  Interest in applications and patents
involved in an interference.

 (a)  Unless good cause is shown, an interference shall
not be declared or continued between (1) applications owned
by a single party or (2) applications and an unexpired
patent owned by a single party.

 (b)  The parties, within 20 days after an interference

is declared, shall notify the Board of any and all right,
title, and interest in any application or patent involved or
relied upon in the interference unless the right, title, and
interest  is  set  forth  in  the  notice  declaring  the
interference.

 (c)  If a change of any right, title, and interest in
any application or patent involved or relied upon in the
interference occurs after notice is given declaring the
interference  and  before  the  time  expires  for  seeking
judicial review of a final decision of the Board, the
parties shall notify the Board of the change within 20 days
of the change.

 37 CFR 1.602 continues the previous PTO practice (37 CFR
1.201(c)) of not declaring or continuing an interference
between (1) two or more applications owned by the same party
or (2) an application and a patent owned by a single party u
nless good cause is shown. A corporation and its wholly
owned subsidiary are considered a "single party" within the
meaning of 37 CFR 1.602(a). Under prior rules, when a patent
and  an  application  involved  in  an  interference  became
commonly  owned,  the  interference  was  not  "dissolved."
Rather, the PTO required that the interference be terminated
with a judgment. Chillas v.  Weisberg , 1928 C.D. 24 (Comm'r
Pat. 1928);  Malone v.  Toth , 202 USPQ 397 (Comm'r Pat.
1978); and  Morehouse v.  Armbuster , 209 USPQ 514 (Comm'r
Pat. 1980). Under the revised rules, all interferences,
including  those  involving  only  applications,  will  be
terminated with a judgment. As noted in Chillas v. Weisberg,
supra at 25 "the common owner can allow a judgment against
the junior party to be rendered by default or it can file a
concession  of  priority  from  one  party  to  the  other."
Paragraphs (b) and (c) of 37 CFR 1.602 continue the previous
PTO practice (37 CFR 1.201(c)) of requiring a party to
notify the PTO of any real party in interest not apparent on
the face of the notice declaring the interference (see 37
CFR 1.611) or of any change in the real party in interest
after the interference is declared. The PTO needs to know
the identity of any real party in interest to properly
enforce 37 CFR 1.602(a) and to enable an examiner - in -
chief  to  determine  whether  refusal  is  necessary  or
appropriate. A new requirement, in paragraph (b) and (c) of
37 CFR 1.602, not present in 37 CFR 1.201(c) is a 20 - day
time period for advising the PTO of the identity of, or any
change in, the real party in interest.

  COMMON OWNERSHIP

 Where applications by different inventive entities but of
common ownership claim the same subject matter or subject
matter that is not patentably different:

  I.  Interference  therebetween  is  normally  not
instituted  since  there  is  no  conflict  of  interest.
Elimination of conflicting claims from all except one case
should usually be required, 37 CFR 1.78(c). The common
assignee  must  determine  the  application  in  which  the
conflicting  claims  are  properly  placed.  Treatment  by
rejection is set forth in MPEP § 804.03.

  II.  Where an interference with a third party is
found to exist, the commonly owned application having the
earliest  effective  filing  date  will  be  placed  in
interference with the third party. The common assignee may

move during the interference under 37 CFR 1.633(d) to
substitute the other commonly owned application, if desired.

2303  Interference Between Applications

 37 CFR 1.603.  Interference between applications;
subject matter of the interference.

 Before an interference is declared between two or more
applications, the examiner must be of the opinion that there
is interfering subject matter claimed in the applications
which is patentable to each applicant subject to a judgment
in the interference. The interfering subject matter shall be
defined by one or more counts. Each count shall define a
separate  patentable  invention.  Each  application  must
contain, or be amended to contain, at least one claim which
corresponds to each count. All claims in the applications
which define the same patentable invention as a count shall
be designated to correspond to the count.

 Where two or more applications are found to be claiming the
same patentable invention, they may be put in interference,
dependent on the status of the respective applications and
the difference between their filing dates. One of the
applications should be in condition for allowance. Unusual
circumstances may justify an exception to this if the
approval of the group director is obtained.

  Interferences  will  not  be  declared  between  pending
applications if there is a difference of more than 3 months
in the effective filing dates of the oldest and the next
oldest applications, in the case of inventions of a simple
character, or a difference of more than 6 months in the
effective filing dates of the applications in other cases,
except in exceptional situations, as determined and approved
by the group director. One such exceptional situation would
be where one application has the earliest effective filing
date based on foreign priority and the other application has
the earliest effective United States filing date. If an
interference  is  declared,  all  applications  having  the
interfering subject matter should be included.

 Before taking any steps looking to the formation of an
interference, it is essential that the examiner make certain
that each of the prospective parties is claiming the same
patentable invention (as defined in 37 CFR 1.601(n)) and
that at least one claim of each party corresponds to each
count of the interference and is clearly readable upon the
disclosure of that party and allowable in its application.

 It is to be noted that while the claims of two or more
applicants may not be identical, yet if directed to the same
patentable  invention,  an  interference  exists.  But  mere
disclosure by an applicant of an invention which he or she
is not claiming does not afford a ground for suggesting to
that applicant a claim for the said invention based upon
claims  from  another  application  that  is  claiming  the
invention. The intention of the parties to claim the same
patentable invention, as expressed in the summary of the
invention or elsewhere in the disclosure or in the claims,
is an essential in every instance.

 Where the subject matter found to be allowable in one
application is disclosed and claimed in another application,
but the claims therein to such subject matter are either

nonelected  or  subject  to  election,  the  question  of
interference should be considered. The requirement of 37 CFR
1.601(i) that the conflicting applications shall contain
claims  for  the  same  patentable  invention  should  be
interpreted  as  meaning  generally  that  the  conflicting
claimed subject matter is sufficiently supported in each
application and is patentable to each applicant over the
prior art. The statutory requirement of first inventorship
is of transcendent importance and every effort should be
made to avoid the improvident issuance of a patent where
there is an adverse claimant.

 Following are illustrative situations where the examiner
should take action toward instituting interference:

  A.  Application  filed  with  claims  to  divisible
inventions I and II. Before action requiring restriction is
made, examiner discovers another case having claims to
invention I.

 The situation is not altered by the fact that a requirement
for restriction had actually been made but had not been
responded to. Nor is the situation materially different if
an election of noninterfering subject matter had been made
without traverse but no action given on the merits of the
elected invention.

  B.  Application  filed  with  claims  to  divisible
inventions I and II and in response to a requirement for
restriction,  applicant  traverses  the  same  and  elects
invention I. Examiner gives an action on the merits of I.
Examiner  subsequently  finds  an  application  to  another
containing allowed claims to invention II and which is ready
for issue.

 The situation is not altered by the fact that the election
is made without traverse and the nonelected claims possibly
cancelled.

  C.  Application filed with generic claims and claimed
species a, b, c, d, and e. Generic claims rejected and
election of a single species required. Applicant elects
species a, but continues to urge allowability of generic
claims. Examiner finds another application claiming species
b which is ready for issue .

 The allowability of generic claims in the first case is not
a condition precedent to setting up interference.

  D.  Application filed with generic claims and claims to
five  species  and  other  species  disclosed  but  not
specifically claimed. Examiner finds another application the
disclosure and claims of which are restricted to one of the
unclaimed species and have been found allowable.

 The prosecution of generic claims is taken as indication of
an intention to cover all species disclosed which come under
the generic claim.

 In all the above situations, the applicant has shown an
intention to claim the subject matter which is actually
being claimed in another application. These are to be
distinguished from situations where a distinct invention is
claimed in one application but merely disclosed in another
application without evidence of an intent to claim the same.

The question of interference should not be considered in the
latter instance. However, if the application disclosing but
not  claiming  the  invention  is  senior,  and  the  junior
application  is  ready  for  issue,  the  matter  should  be
discussed with the group director to determine the action to
be taken.

2304  Applicant Requests Interference Between
Applications

 37 CFR 1.604.  Request for interference between
applications by an applicant.

 (a)  An applicant may seek to have an interference
declared with an application of another by (1) suggesting a
proposed  count  and  presenting  at  least  one  claim
corresponding to the proposed count or identifying at least
one claim in his or her application that corresponds to the
proposed count, (2) identifying the other application and,
if known, a claim in the other application which corresponds
to  the  proposed  count,  and  (3)  explaining  why  an
interference should be declared.

 (b)  When an applicant presents a claim known to the
applicant to define the same patentable invention claimed in
a  pending  application  of  another,  the  applicant  shall
identify that pending application, unless the claim is
presented in response to a suggestion by the examiner. The
examiner shall notify the Commissioner of any instance where
it appears an applicant may have failed to comply with the
provisions of this paragraph.

2305  Examiner Suggests Claim to Applicant

 37 CFR 1.605.  Suggestion of claim to applicant by
examiner.

 (a)  The examiner may suggest that an applicant present
a claim in an application for the purpose of an interference
with another application or a patent. The applicant to whom
the claim is suggested shall amend the application by
presenting the suggested claim within a time specified by
the examiner, not less than one month. Failure or refusal of
an applicant to timely present the suggested claim shall be
taken  without  further  action  as  a  disclaimer  by  the
applicant of the invention defined by the suggested claim.
At the time the suggested claim is presented, the applicant
may also (1) call the examiner's attention to other claims
already in the application or which are presented with the
suggested claim and (2) explain why the other claims would
be more appropriate to be included in any interference which
may be declared.

 (b)  The suggestion of a claim by the examiner for the
purpose of an interference will not stay the period for
response to any outstanding Office action. When a suggested
claim is timely presented, ex parte proceedings in the
application  will  be  stayed  pending  a  determination  of
whether an interference will be declared.

 Although the subject of suggesting claims is treated in
detail at this point in the discussion of a prospective
interference  between  applications,  essentially  the  same
practice here outlined is also applicable to a prospective
interference with a patent.

 If the applications contain claims covering the entire
interfering subject matter, the examiner proceeds under 37
CFR 1.609 to form the interference; otherwise, proper claims
must be suggested to some or all of the parties.

  Under  37  CFR  1.605,  timely  filing  of  an  amendment
presenting a claim suggested by the examiner for purposes of
an interference would stay ex parte proceedings in the
application in which the claim is presented pending a
determination by the examiner of whether an interference
will be declared. Also under 37 CFR 1.605(a), when an
examiner suggests a claim, the applicant will be required to
copy verbatim the suggested claim. At the time the suggested
claim is copied, however, the applicant may also (1) call
the examiner's attention to other claims already in the
application or which are presented with the copied claim and
(2) explain why the other claims would be more appropriate
to be included in any interference which may be declared.

 It should be noted at this point that if an applicant
presents a claim which corresponds exactly or substantially
to  a  claim  in  another  application  or  patent  without
suggestion by the examiner, 37 CFR 1.604(b) and 37 CFR
1.607(c)  require  him  or  her  to  identify  the  other
application or patent. See MPEP § 2308.

 The question of what claim or claims to suggest in the
interfering application is one of great importance, and
failure to suggest such claims as will define clearly the
matter in issue leads to confusion and to prolongation of
the contest.

 Before deciding what claim or claims to suggest to an
applicant, the examiner should decide what the count or
counts of the prospective interference will be, keeping in
mind that the count must be patentable over the prior art
and define the parties' common invention (see MPEP § 2309
regarding the formation of counts). The claim suggested to
the applicant need not be identical to the prospective
count, but rather should be the broadest claim within the
scope  of  theprospective  count  which  the  applicant's
disclosure will support, and which is otherwise patentable
to the applicant.

 A response to the examiner's suggestion of a claim is not
complete unless it includes an amendment adding the exact
claim  suggested  to  the  application.  Even  though  the
applicant may consider the suggested claim unpatentable, too
narrow, or otherwise unsuitable, it must be presented;
otherwise, the invention defined by the suggested claim is
considered to be disclaimed. The applicant must make known
any such objections to the examiner, and may at the same
time present other claims, or call the examiner's attention
to other claims already in the application, and explain why
those claims would be more appropriately included in the
interference.

 If, in copying a suggested claim, an error is introduced by
the applicant, the examiner should correct the applicant's
claim to correspond to the suggested claim.

 Notification of the fact that the parties have the same
attorney should be given to both parties at the time claims
are suggested even though claims are suggested to only one

party. See also MPEP § 2313.01. Notation of the persons to
whom this letter is mailed should be made on all copies.

 The following sentence is usually added to the letter
suggesting claims where the same attorney or agent is of
record in applications of different ownership which have
conflicting subject matter:

  Attention is called to the fact that the attorney (or
agent) in this application is also the attorney (or agent)
in  an  application  of  another  party  and  of  different
ownership  claiming  substantially  the  same  patentable
invention as claimed in the above - identified application.

 The attention of the Commissioner is not called to the fact
that two conflicting parties have the same attorney until
actual interference is set up and then it is done by
notifying the examiner - in - chief as explained in MPEP §
2308.01.

 Form Paragraphs 11.04 and 11.05 may be used to suggest
claims for purposes of interference to applicants.

¶ 11.04  Suggestion of Claim

 The following allowable claim is suggested for the purpose
of an interference:

 [1]

 The suggested claim must be copied exactly, although other
claims may be proposed under 37 CFR 1.605(a).

 APPLICANT SHOULD MAKE THE SUGGESTED CLAIM WITHIN ONE MONTH
FROM THE DATE OF THIS LETTER. FAILURE TO DO SO WILL BE
CONSIDERED A DISCLAIMER OF THE SUBJECT MATTER OF THIS CLAIM
UNDER THE PROVISIONS OF 37 CFR 1.605(a). THE PROVISIONS OF
37 CFR 1.136(a) DO NOT APPLY TO THIS TIME PERIOD.

 Claim [2] considered unpatentable over this additionally
suggested claim.

 Examiner Note:

 1.  In bracket 1, insert the suggested claim.

 2.  In bracket 2, list all claims pending in the
application not considered to be patentably distinct from
the suggested claim.

 3.  Only one claim should be suggested unless claims to
separate patentably distinct inventions are present. 37 CFR
1.601(n). To suggest an additional claim to a separate
distinct invention, form paragraph 11.05 should follow this
paragraph.

 4.  If the Office action addresses other issues, such
as a rejection of other claims, paragraph 11.06 should be
included at the end of the action.

¶ 11.05  Suggestion of Additional Claim for a Distinct
Invention

 The following claim is considered allowable and directed to
a separate patentable invention from the claim suggested

above:

 [1]

 The additionally suggested claim must be copied exactly,
although other claims may be proposed under 37 CFR 1.605(a).

 APPLICANT MUST ALSO MAKE THIS ADDITIONALLY SUGGESTED CLAIM
WITHIN ONE MONTH FROM THE DATE OF THIS LETTER. FAILURE TO DO
SO WILL BE CONSIDERED A DISCLAIMER OF THE SUBJECT MATTER OF
THIS CLAIM UNDER THE PROVISIONS OF 37 CFR 1.605(a). THE
PROVISIONS OF 37 CFR 1.136(a) DO NOT APPLY TO THIS TIME
PERIOD.

 Claim [2] considered unpatentable over this additionally
suggested claim.

 Examiner Note:

 This paragraph must be preceded by paragraph 11.04 and
should only be used to suggest a patentably distinct claim
from the one suggested in paragraph 11.04.

¶ 11.06  Suggestion of Claims - Prosecution Suspended

 Applicant need not respond to the remaining issues in this
action if a suggested claim is copied for the purpose of an
interference within the time limit specified above. 37 CFR
1.605(b).

 Examiner Note:

 This paragraph should be used at the end of any Office
action where claims are suggested using either paragraph
11.04  or  11.08  and  where  additional  issues  (e.g.,  a
rejection of other claims) are addressed in the action that
will be suspended should applicant copy the suggested claim.

2305.01 Action To Be Made at Time of Suggesting Claims

 At the same time that the claims are suggested, an action
is made on each of the applications that are up for action
by the examiner, whether they be new or amended cases. In
this way, possible motions under 37 CFR 1.633(c) and (d) may
be forestalled. That is, the action on the new or amended
case may bring to light patentable claims that should be
included as corresponding to the count of, or as forming the
basis for, an additional count of the interference, and, on
the other hand, the rejection of unpatentable claims will
serve to indicate to the opposing parties the position of
the examiner with respect to such claims.

 When an examiner suggests that an applicant present a claim
for interference, the examiner should state which of the
claims already in the case are, in his or her opinion,
unpatentable over the claim suggested. This statement does
not constitute a formal rejection of the claims, but if the
applicant pre sents the suggested claim but disagrees with
the examiner's statement, the applicant should so state on
the record, not later than the time the claim is presented,
In re Bandel, 348 F.2d 563, 146 USPQ 389 (CCPA 1965). If the
applicant does not present the suggested claim by the
expiration of the period fixed for its presentation, the
examiner  should  then  reject  those  claims  which  were
previously stated as being unpatentable over the suggested

claim on the basis that the failure to present constituted a
concession that the subject matter of those claims is the
prior invention of another in this country under 35 U.S.C.
102(g) and thus prior art to the applicant under 35 U.S.C.
103. In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).
If the applicant does present the suggested claim, when the
interference  is  declared,  the  claims  stated  to  be
unpatentable over the suggested claim will be designated as
corresponding to the count.

2305.02 Time Limit Set for Presenting Suggested Claims

 Where claims are suggested for interference, a limited
period determined by the examiner, not less than one month,
is set for reply. See MPEP § 710.02(c).

 Should any one of the applicants fail to present the claim
or claims suggested within the time specified, all claims
not patentable thereover are rejected on the ground that the
applicant has disclaimed the invention to which they are
directed. If the applicant presents the suggested claims
later they will be rejected on the same ground. See MPEP §
706.03(u).

2305.03 Suggested Claims Presented After Period for
Response Running Against Case

 If suggested claims are presented within the time specified
for  making  the  claims,  the  applicant  may  ignore  any
outstanding rejections in the application. Even if claims
are suggested in an application near the end of the period
for response running against the case, and the time limit
for presenting the claims extends beyond the end of the
period, such claims will be admitted if filed within the
time limit even though outside the period for response to
the rejection (usually a 3 - month shortened statutory
period) and even though no amendment was filed responsive to
the Office action outstanding against the case at the time
of  suggesting  the  claims.  No  portion  of  the  case  is
abandoned provided the applicant presents the suggested
claims within the time specified. However, if the suggested
claims are not thus presented within the specified time, the
case becomes abandoned in the absence of a responsive
amendment filed within the period for response to the
rejection, 37 CFR 1.605(b).

2305.04 Suggestion of Claims, Application in Issue or in
Interference

 An application will not be withdrawn from issue for the
purpose of suggesting claims for an interference. When an
application pending before the examiner contains one or more
claims  defining  an  invention  to  which  claims  may  be
presented in a case in issue, the examiner may write a
letter suggesting such claims to the applicant whose case is
in issue, stating that if such claims be presented within a
certain specified time, the case will be withdrawn from
issue, the amendment entered and the interference declared.
Such letters must be submitted to the group director. If the
suggested claims are not presented in the application in
issue, it may be necessary to withdraw it from issue for the
purpose of rejecting other claims on the implied disclaimer
resulting from the failure to present the suggested claims.

 When the examiner suggests one or more claims for the

purpose of interference with a case in issue to an applicant
whose case is pending before him or her, the case in issue
will not be withdrawn for the purpose of interference unless
the suggested claims shall be presented in the pending
application within the time specified by the examiner. The
letter suggesting claims should be submitted to the group
director for approval.

 In either of the above cases, the Publishing Division
should be notified when the claims are suggested, so that in
case the issue fee is paid during the time in which the
suggested claims may be presented, proper steps may be taken
to prevent the issue fee from being applied.

 The examiner should borrow the allowed application from the
Publishing Division and hold the file until the claims are
presented  or  the  time  limit  expires.  This  avoids  any
possible issuance of the application as a patent should the
issue fee be paid. To further ensure against issuance of the
application, the examiner may pencil in the blank space
labeled, "Date paid" in the lower right - hand corner of the
file  wrapper,  the  initialed  request:  "Defer  for
interference." The issue fee is not applied to such an
application until the following procedure is carried out.

 When notified that the issue fee has been received, the
examiner shall prepare a memo to the Publishing Division
requesting that issue of the patent be deferred for a period
of 3 - months due to possible interference. This allows a
period of 2 months to complete any action needed. At the end
of this 2 - month period, the application must either be
released to the Publishing Division or be withdrawn from
issue.

 When an application is found claiming an invention for
which claims are to be suggested to other applications
alreadyinvolved  in  interference,  to  form  another
interference, the primary examiner borrows the last named
applications from the Service Branch of the Board of Patent
Appeals and Interferences. In case the application is to be
added to an existing interference, the primary examiner need
only send the application and form PTO - 850 (illustrated in
MPEP § 2309.02) properly filled out as to the additional
application  and  identifying  the  interference,  to  the
examiner - in - chief in charge of the interference who will
determine the action to be taken. Also, see MPEP § 2342.

¶ 11.07  Suggestion of Claims - Application in Issue

  This  application  has  been  withdrawn  from  issue  for
consideration of a potential interference based on the
claims suggested in this action.

 Examiner Note:

 1. If a conflicting application is in issue, it should be
withdrawn  using  paragraphs  10.01  or  10.02  prior  to
suggesting claims for interference.

 2. Either paragraph 11.04 or 11.08 must be used in
conjunction with this paragraph

¶ 11.08  Requirement To Copy Patent Claim

 The following claim number [1] from U.S. patent no. [2] is

suggested to applicant under 35 U.S.C. 135(a) for the
purpose of an interference:

 [3]

 The suggested claim must be copied exactly, although other
claims may be proposed under 37 CFR 1.605(a).

 APPLICANT MUST COPY THE PATENT CLAIM WITHIN ONE MONTH FROM
THE DATE OF THIS LETTER. THE EXTENSION OF TIME PROVISIONS OF
§ 1.136(a) DO NOT APPLY TO THIS TIME PERIOD. FAILURE TO COPY
THE CLAIM WILL BE TAKEN AS A CONCESSION THAT THE SUBJECT
MATTER OF THIS CLAIM IS THE PRIOR INVENTION OF ANOTHER UNDER
35 U.S.C. 102(g) AND THUS ALSO PRIOR ART UNDER 35 U.S.C.
103. In re Oguie , 186 USPQ 227 (CCPA 1975).

 Examiner Note:

 1.  In bracket 1, insert the number from the patent of
the suggested claim.

 2.  In bracket 2, insert the number of the patent.

 3.  In bracket 3, insert a copy of the patent claim.

 4.  Only one claim from the patent should be suggested
for  interference  unless  other  claims  to  a  separate
patentably distinct invention are claimed in the patent and
can be made by the applicant. To suggest an additional
claim, paragraph 11.09 should follow this paragraph.

 5.  If the Office action addresses other issues, such
as a rejection of the claims, paragraph 11.06 should be
included at the end of the Office action.

¶ 11.09  Copying Additional Patent Claim for a Distinct
Invention

 Claim number [1] from U.S. patent no. [2] is suggested
under 35 U.S.C. 135(a) in addition to claim [3] of the
patent, suggested above. The inventions defined by these
patent claims are considered to be "separate patentable
inventions" under 37 CFR 1.601(n) that could form the basis
for plural counts in an interference.

 The suggested patent claim, reproduced below, must be
copied exactly, although other claims may be proposed under
37 CFR 1.605(a):

 [4]

 APPLICANT MUST COPY THE ADDITIONAL PATENT CLAIM WITHIN ONE
MONTH FROM THE DATE OF THIS LETTER. THE EXTENSION OF TIME
PROVISIONS OF § 1.136(a) DO NOT APPLY TO THIS TIME PERIOD.
FAILURE TO COPY THIS ADDITIONAL CLAIM WILL BE TAKEN AS A
CONCESSION THAT THE SUBJECT MATTER OF THIS CLAIM IS THE
PRIOR INVENTION OF ANOTHER UNDER 35 U.S.C. 102(g) AND THUS
ALSO PRIOR ART UNDER 35 U.S.C. 103.

 Examiner Note:

 1.  In bracket 1, insert the number of the patent claim
that is patentably distinct from the claim specified in
paragraph 11.08.

 2.  This paragraph must follow paragraph 11.08 and
should only be used in those rare instances where both the
patent  and  the  application  claim  distinct,  interfering
inventions.

¶ 11.11  Failure to Apply Terms of Copied Claim to the
Disclosure

 Claim [1] of this application has been copied from U.S.
patent [2] for the purpose of an interference.

 Applicant has failed to specifically apply the terms of the
copied claim to the disclosure of the application, as
required under 37 CFR 1.607(a)(3).

 APPLICANT IS REQUIRED TO CORRECT THIS DEFICIENCY WITHIN ONE
MONTH FROM THE DATE OF THIS LETTER, THE EXTENSION OF TIME
PROVISIONS OF 37 CFR 1.136(a) DO NOT APPLY TO THIS TIME
PERIOD.

¶ 11.18  Foreign Priority Not Substantiated

 Should applicant desire to obtain the benefit of foreign
priority under 35 U.S.C. 119 prior to declaration of an
interference, a sworn translation of the foreign application
should be submitted under 37 CFR 1.55 in response to this
action.

 Examiner Note:

 This paragraph may be used when claims are suggested to
applicant  from  either  an  application  or  a  patent  and
applicant has a claim for priority not substantiated by a
sworn translation.

2306  Interference Between an Application and a Patent

 37 CFR 1.606.  Interference between an application and a
patent; subject matter of the interference.

 Before an interference is declared between an application
and an unexpired patent, an examiner must determine that
there  is  interfering  subject  matter  claimed  in  the
application and the patent which is patentable to the
applicant subject to a judgment in the interference. The
interfering subject matter will be defined by one or more
counts.  Each  count  shall  define  a  separate  patentable
invention. Any application must contain, or be amended to
contain, at least one claim which corresponds to each count.
All claims in the application and patent which define the
same patentable invention as a count shall be designated to
correspond to the count. At the time an interference is
initially declared ( § 1.611), a count shall not be narrower
in scope than any patent claim which corresponds to the
count and any single patent claim will be presumed, subject
to a motion under § 1.633(c), not to contain separate
patentable inventions.

 An interference may be declared between an application and
a patent if the application and patent are claiming the same
patentable invention, and at least one of the applicant's
claims to that invention are patentable to the applicant.
Since at least one of the applicant's claims must be
patentable, an interference between an application and a
patent cannot be declared if:

  1.  The  patent  is  a  statutory  bar  against  the
application under 35 U.S.C. 102(b);

  2.  The applicant's claims are not supported by the
application disclosure, or otherwise do not comply with 35
U.S.C. 112;

  3.  The  applicant  was  not  claiming  the  same  or
substantially the same invention as claimed in the patent
within 1 year after the date on which the patent was issued
(35 U.S.C. 135(b));

  4.  The patent is a reference against the application
under 35 U.S.C. 102(e), unless the applicant has filed a
showing under 37 CFR 1.608. See MPEP § 2307 concerning the
rejection of claims in an application which correspond to
claims of a patent.

 Since the claims of a patent may not be altered (except by
reissue or reexamination), the applicant must claim the same
patentable invention as is claimed in one or more claims of
a patent in order to provoke an interference with the
patent. The fact that the patent may disclose subject matter
claimed by the applicant is not a basis for interference if
the patent does not claim that subject matter.

 The practice followed prior to the adoption of 37 CFR
1.606, wherein each patent claim formed the basis for a
separate count of the interference, no longer applies. Under
present  practice,  the  counts  of  the  interference  are
formulated in essentially the same manner regardless of
whether a patent is involved. As stated in 37 CFR 1.606,
each count "shall define a separate patentable invention."
Therefore, instead of having the same number of counts as
copied patent claims, the examiner determines how many
separate patentable inventions are claimed by the applicant
and the patentee. When the interference is declared, there
will  be  only  one  count  for  each  separate  patentable
invention, with all the claims of the applicant and of the
patentee  which  claim  each  invention  desig  nated  as
corresponding to the count for that invention. See MPEP §
2309 for a more detailed discussion of the formulation of
counts.

 An interference between an application and a patent may
arise in one of the following ways:

  1.  During examination of an application, the examiner
may determine that the application contains one or more
allowable claims which are drawn to the same invention as
claimed in a patent. In that event, the examiner may proceed
to initiate the interference as described in MPEP § 2305.

  2.  The examiner may discover a patent which claims an
invention which is disclosed by the applicant and to which
the applicant could present patentable claims. In that
event, the examiner may suggest to the applicant a claim
which  would  define  the  same  invention  and  would  be
patentable to the applicant. See MPEP § 2305.

  3.  The applicant may provoke an interference with a
patent by presenting a proposed count and either presenting
a claim corresponding to the proposed count, or identifying
a claim already in the application that corresponds to the

proposed counts. See 37 CFR 1.607.

 The requirement that the claims of the application and of
the patent define the same patentable invention in order for
an interference to exist does not mean that the application
claim  or  claims  must  necessarily  be  identical  to  the
corresponding claim or claims of the patent. All that is
required under present practice is that a claim of the
application be drawn to the same patentable invention as a
claim of the patent. An application claim is considered to
be drawn to the same patentable invention as a patent claim
if it recites subject matter which is the same as (35 U.S.C.
102) or obvious in view of (35 U.S.C. 103), the subject
matter recited in the patent claim. 37 CFR 1.601(n). The
test is analogous to that applied for double patenting;
i.e., if the applicant's claims would have been subject to a
double  patenting  rejection  of  the  "same  invention"  or
"obviousness" type (see MPEP § 804) if the patent and
application were by the same inventive entity, then the
application and patent claim are directed to the same
invention. In all cases, the examiner should keep in mind
the fundamental principle that the issuance of two patents
for  inventions  which  are  either  identical  to  or  not
patentably distinct from each other must be avoided, Aelony
v.  Arni , 547 F.2d 566, 192 USPQ 486 (CCPA 1977).

  37  CFR  1.601(i)  includes  the  possibility  that  an
interference may include more than one unexpired patent. The
PTO does not have jurisdiction to determine interferences
involving only patents, since 35 U.S.C. 291 grants the
jurisdiction  to  the  courts.  However,  if  the  examiner
discovers two or more patents which are claiming the same
invention  as  an  application,  an  interference  may  be
instituted between the application and the patents. The
group  director's  approval  must  be  obtained  before  an
interference involving multiple patents will be declared.

 When an interference with a patent is proposed, it should
be ascertained before any steps are taken whether there is
common ownership. Note MPEP § 804.03. A title report must be
placed in both the application and the patented filewhen the
papers for an interference between an application and a
patent are forwarded. To this end the examiner, before
initiating an interference involving a patent, should refer
both the application and the patented file to the Assignment
Division for notation as to ownership.

  PATENT IN DIFFERENT GROUP

 When an applicant seeks to provoke an interference with a
patent  classified  in  another  group,  the  propriety  of
declaring  the  interference  is  decided  by  and  the
interference is initiated by the group where the patent is
classified. In such a case, it may be necessary to transfer
the application, including the drawings, temporarily to the
group which will initiate the interference.

 Under 37 CFR 1.606, at the time an interference is
declared, a rebuttable presumption will exist that any
patent claim designated to correspond to a count does not
embrace separate patentable inventions. Moreover, at the
time the interference is declared, no count will be narrower
in scope than the broadest patent claim designated to
correspond to that count. The presumption is  rebuttable and
may be challenged and overcome by a motion under 37 CFR

1.633(c).

2307  Applicant Requests Interference With a Patent

 37 CFR 1.607.  Request by applicant for interference
with patent.

 (a)  An applicant may seek to have an interference
declared between an application and an unexpired patent by,

 (1)  identifying the patent,

 (2)  presenting a proposed count,

 (3)  identifying at least one claim in the patent
corresponding to the proposed count,

 (4)  presenting at least one claim corresponding to the
proposed count or identifying at least one claim already
pending in his or her application that corresponds to the
proposed  count,  and,  if  any  claim  of  the  patent  or
application identified as corresponding to the proposed
count does not correspond exactly to the proposed count,
explaining why each such claim corresponds to the proposed
count, and

 (5)  applying the terms of any application claim

 (i)  identified as corresponding to the count and

 (ii)  not previously in the application to the disclosure
of the application.

 (b)  When an applicant seeks an interference with a
patent, examination of the application, including any appeal
to the Board, shall be conducted with special dispatch
within the Patent and Trademark Office. The examiner shall
determine  whether  there  is  interfering  subject  matter
claimed  in  the  application  and  the  patent  which  is
patentable to the applicant subject to a judgment in an
interference. If the examiner determines that there is any
in interfering subject matter, an interference will be
declared. If the examiner determines that there is no
interfering subject matter, the examiner shall state the
reasons why an interference is not being declared and
otherwise act on the application.

 (c)  When  an  applicant  presents  a  claim  which
corresponds exactly or substantially to a claim of a patent,
the applicant shall identify the patent and the number of
the patent claim, unless the claim is presented in response
to a suggestion by the examiner. The examiner shall notify
the Commissioner of any instance where an applicant fails to
identify the patent.

 (d)  A notice that an applicant is seeking to provoke an
interference with a patent will be placed in the file of the
patent and a copy of the notice will be sent to the
patentee.  The  identity  of  the  applicant  will  not  be
disclosed unless an interference is declared. If a final
decision is made not to declare an interference, a notice to
that effect will be placed in the patent file and will be
sent to the patentee.

  Special Dispatch

 Examiners should note that 37 CFR 1.607 requires that
examination of a application in which applicant seeks an
inter ference with a patent "shall be conducted with special
dispatch."

 See MPEP § 708.01.

2307.01 Presentation of Claims Corresponding to Patent
Claims Not a Response to Last Office Action

 The presentation of claims corresponding to claims of a
patent when not suggested by the Office does not constitute
a response to the last Office action unless the last Office
action relied solely on the patent for the rejection of all
the claims rejected in that action.

 Under 37 CFR 1.615, upon declaration of an interference, ex
parte  prosecution  of  an  application  involved  in  the
interference is suspended and any outstanding Office actions
are considered as withdrawn by operation of the rule,  Ex
parte Peterson , 49 USPQ 119 (Comm'r Pat 1941). Upon
termination of the interference, the examiner will reinstate
the action treated as withdrawn by operation of 37 CFR 1.615
and set a statutory period for response.

2307.02 Rejection of Claims Corresponding to Patent Claims

 When claims corresponding to claims of a patent are
presented, the application is taken up at once and the
examiner must determine whether the presented claims are
patentable to the applicant. If they are not, they should be
rejected on the appropriate ground(s). However, as long as
one of the presented claims is patentable to the applicant
and is claiming the same invention as at least one claim of
the patent, an interference should be declared.

 The ground of rejection of the patented claims may or may
not also be applicable to the claims in the patent; if it
is,  any  letter  including  the  rejection  must  have  the
approval of the group director. See MPEP 1003, item 10.

 An interference will not be declared where the examiner is
aware of a reference for the claims which correspond to the
patent claims, even if it would also be applicable to the
patent.  If  such  a  reference  is  discovered  while  an
interference involving a patent is pending, the examiner
should call the reference to the attention of the examiner -
in - chief in charge of the interference, for possible
action under 37 CFR 1.641.

 Examples of grounds of rejection which would not also be
applicable to the patent are insufficient disclosure in the
application, a reference whose date is junior to that of the
patent, or because the claims are barred to applicant by the
second paragraph of 35 U.S.C. 135, which reads: "(b) A claim
which is the same as, or for the same or substantially the
same subject matter as, a claim of an issued patent may not
be made in any application unless such a claim is made prior
to one year from the date on which the patent was granted."
See Ex parte Fine, 217 USPQ 76 (Bd. App. 1981). The
anniversary date of the issuance of a patent is "prior to
one year from the date on which the patent was granted",
Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964).
It should be noted that an applicant is permitted to copy a

patent claim outside the year period if he or she has been
claiming substantially the same subject matter within the
year limit. See Thompson v. Hamilton, 152 F.2d 994, 68 USPQ
161 (CCPA 1946); In re Frey, 182 F.2d 184, 86 USPQ 99 (CCPA
1950); Andrews v. Wickenden, 194 F.2d 729, 93 USPQ 27 (CCPA
1952); In re Tanke, 213 F.2d 551, 102 USPQ 93 (CCPA 1954);
Emerson v. Beach, 215 F.2d 290, 103 USPQ 45 (CCPA 1955);
Rieser v. Williams, 255 F.2d 419, 118 USPQ 96 (CCPA 1958);
Stalego v. Heymes, 263 F.2d 334, 120 USPQ 473 (CCPA 1959);
Corbett v. Chisholm, 568 F.2d 759, 196 USPQ 337 (CCPA 1977).

  If  the  patent  has  a  filing  date  earlier  than  the
application , see MPEP § 2308.01.

 37 CFR 1.607(b) requires that "When an applicant seeks an
interference with a patent, examination of the application,
including any appeal to the Board, shall be conducted with
special dispatch within the Patent and Trademark Office."
Therefore, when all the claims presented are rejected the
examiner sets a time limit for reply, not less than 30 days,
and all subsequent actions, including action of the Board on
appeal, are special. Failure to respond or appeal, as the
case may be, within the time fixed, will, in the absence of
a satisfactory showing, be deemed a disclaimer of the
invention claimed.

 While the time limit for an appeal from the final rejection
of a claim corresponding to a patent claim is usually set
under the provisions of 37 CFR 1.607(b), where the remainder
of the case is ready for final action, it may be advisable
to set a shortened statutory period for the entire case in
accordance with 37 CFR 1.134.

 The distinction between a limited time for reply under 37
CFR 1.607(b) and a shortened statutory period under 37 CFR
1.134 should not be lost sight of. The penalty resulting
from failure to reply within the time limit under 37 CFR
1.607(b) is loss of the claim or claims involved, on the doc
trine of disclaimer, and this is appealable; while failure
to respond within the set statutory period (37 CFR 1.134)
results in abandonment of the entire application. This is
not appealable.

 The rejection of claims presented for interference with a
patent sometimes creates a situation where two different
periods for response are running against the application -
one, the statutory period dating from the last full action
on the case; the other, the limited period set for the
response to the rejection (either first or final) of the
presented claims. This condition should be avoided where
possible as by setting a shortened period for the entire
case, but where unavoidable, it should be emphasized in the
examiner's letter.

 In this connection it is to be noted that a reply to a
rejection or an appeal from the final rejection of the
presented claims will not stay the running of the regular
statutory period if there is an unanswered Office action in
the case at the time of reply or appeal, nor does such reply
or appeal relieve the examiner from the duty of acting on
the case if it is up for action, when reached in its regular
order.

 Where an Office action sets a time limit for response to or
appeal from that action or a portion thereof, the examiner

should note at the end of the letter the date when the time
limit period ends and also the date when the statutory
period ends. See MPEP § 710.04.

¶ 11.12  Rejection of Claim Corresponding to Proposed
Count

 Claim [1] of this application has been copied by the
applicant from U.S. patent No. [2]. This claim is not
patentable to the applicant because [3].

 An interference cannot be initiated since a prerequisite
for interference under 37 CFR 1.606 is that the claim be
patentable to the applicant subject to a judgment in the
interference.

 Examiner Note:

 This paragraph must be preceded by a rejection of the
claim.

¶ 11.13  Claims Not Copied Within One Year

 Claim [1] rejected under 35 U.S.C. 135(b) as not being made
prior to one year from the date on which U.S. patent [2] was
granted.

¶ 11.14  Copied Claims Drawn to Different Invention

 Claim [1] of this application is asserted by applicant to
correspond to claims of U.S. patent [2].

 The examiner does not consider this claim to be directed to
the same invention as that of U.S. patent [3] because [4].
Accordingly, an interference cannot be initiated based upon
this claim.

2307.03 Presentation of Claims for Interference With a
Patent, After Prosecution of Application is Closed

 An amendment presenting a claim to provoke an interference
in an application not in issue is usually admitted and
promptly acted on. However, if the case had been closed to
further prosecution as by final rejection or allowance of
all the claims, or by appeal, such amendment is not entered
as a matter of right.

 An interference may result when an applicant presents
claims to provoke an interference with a patent which
provided the basis for final rejection. Where this occurs,
if the rejection in question has been appealed, the Board of
Patent Appeals and Interferences should be notified of the
withdrawal of this rejection so that the appeal may be
dismissed as to the involved claims.

 Where the prosecution of the application is closed and the
presented claims relate to an invention distinct from that
claimed in the application, entry of the amendment may be
denied ( Ex parte Shohan , 1941 C.D. 1 (Comm'r Pat. 1940)).
Admission of the amendment may very properly be denied in a
closed application, if  prima facie , the claims are not
supported by the applicant's disclosure. An applicant may
not have recourse to presenting a claim corresponding to a
patent claim which applicant has no right to make as a means
to reopen or prolong the prosecution of his or her case. See

MPEP § 714.19(4).

  AFTER NOTICE OF ALLOWANCE

 When an amendment which includes one or more claims
presented to provoke an interference with a patent is
received after the Notice of Allowance and the examiner
finds one or more of the claims patentable to the applicant
and an interference to exist, the examiner should prepare a
letter, requesting that the application be withdrawn from
issue for the purpose of interference. This letter, which
should designate the claims to be involved, together with
the file and the proposed amendments, should be sent to the
group director.

 When an amendment which includes one or more claims
presented to provoke an interference with a patent is
received after Notice of Allowance, and the examiner finds
basis for refusing the interference on any ground, the
examiner should make an oral report to the supervisory
primary examiner of the reasons for refusing the requested
interference. Notification to applicant is made on Form PTOL
- 271 if the entire amendment or a portion of the amendment
(including  all  the  presented  claims)  is  refused.  Form
paragraph 11.01 should be employed to express the adverse
recommendation as to the entry of the presented claims.

2307.04 Presentation of Claims For Interference With a
Patent Involved in a Reexamina tion Proceeding

 An interference will not be declared with a patent which is
involved in a reexamination proceeding except upon specific
authorization from the Office of the Assistant Commissioner
for Patents. When an amendment is filed in a pending
application  presenting  claims  for  the  purpose  of
interference with a patent involved in a reexamination
proceeding, the owner of the patent must be notified (see 37
CFR 1.607(d)). The applicant must identify the patent under
reexamination with which interference is sought. The claims
may be rejected on any applicable ground, including, if
appropriate,  the  prior  art  cited  in  the  reexamination
proceeding. Prosecution of the application should continue
as far as possible, but if the application is placed in
condition for allowance and still contains claims which
interfere  with  the  patent  under  reexamination,  further
action on the application should be suspended until the
reexamination proceeding is terminated. See MPEP § 2284.

¶ 11.15  Patent Claims Undergoing Reexamination

 This application contains claims which conflict with the
claims  of  U.S.  patent  No.  [1],  now  involved  in  a
reexamination proceeding.

  Prosecution  in  this  application  is  SUSPENDED  UNTIL
TERMINATION OF THE REEXAMINATION PROCEEDING.

  Applicant  should  inquire  as  to  the  status  of  this
application six months from the date of this letter.

 Examiner's Note:

 This paragraph should only be used when the application is
otherwise in condition for allowance.

2307.05 Corresponding Patent Claims Not Identified

 37 CFR 1.607(c) requires that "when an applicant presents a
claim which corresponds exactly or substantially to a claim
of a patent, the applicant shall identify the patent and the
number of the patent claim, unless the claim is presented in
response to a suggestion by the examiner."

 This requirement of 37 CFR 1.607(c) applies to claims
presented in an application at the time of filing as well as
to  claims  presented  in  an  amendment  to  a  pending
application. If an applicant, attorney, or agent presents a
claim corresponding exactly or substantially to a patent
claim without complying with 37 CFR 1.607(c) the examiner
may be led into making an action different from what would
have been made had the examiner been in possession of all
the facts. Therefore, failure to comply with 37 CFR 1.607,
when presenting aclaim corresponding to a patent claim, may
result in the issuance of a requirement for information as
to why an identification of the source of the claim was not
made.

 The examiner should require the applicant to supply a full
identification of the copied patent claims by using Form
Paragraph 11.10.

¶ 11.10  Failure to Identify Source of Patent Claims

 Claim [1] of this application has apparently been copied
from a U.S. patent without being suggested by the examiner.
The patent number and the number of the copied claim have
not been properly identified. 37 CFR 1.607(c).

 Applicant is required to identify the patent and claim
numbers and supply information explaining why a complete
identification of the copied patent claim(s) has not been
presented.  Following  applicant's  response  to  this
requirement or the abandonment thereof, the application will
be forwarded by the examiner to the Office of the Assistant
Commissioner for Patents for appropriate review as noted
under 37 CFR 1.607(c).

 APPLICANT IS REQUIRED TO RESPOND TO THIS REQUIREMENT WITHIN
ONE MONTH FROM THE DATE OF THIS LETTER TO AVOID ANY QUESTION
OF ABANDONMENT.

 Examiner's Note:

 The primary examiner must refrain from commenting as to the
reasons for applicant's failure to disclose the U.S. patent
identification.

 After the applicant's response or abandonment of the
application,  the  examiner  is  required  to  "notify  the
Commissioner of any instance where an applicant fails to
identify the patent" under 37 CFR 1.607(c). The examiner's
notification should be in the form of a memorandum directed
to the Office of the Assistant Commissioner for Patents. The
memorandum must be accompanied by the application and a copy
of the patent from which the claim(s) was copied.

2307.06 Presentation of Claims for Interference with a
Patent, Patentee Must Be Notified

 When an applicant seeks to provoke an interference with a

patent, 37 CFR 1.607(d) requires that the patentee be
notified (1) when the attempt to provoke the interference is
first made, and (2) if an interference is not declared of
the final decision not to declare an interference.

 This regulation provides a patentee with notice as soon as
an applicant attempts to provoke an interference with the
patent so that the patentee can preserve the invention
records from the moment the notice is received until the
time,  in  some  instances  many  years  later,  when  the
interference is ultimately declared between the patentee and
the applicant.

 Form Paragraphs 11.19 and 11.20 should be used to notify
the patentee.

¶ 11.19  Notice to Patentee, Interference Sought

  You are hereby notified under 37 CFR 1.607(d) that an
applicant is seeking to provoke an interference with your
patent No. [1].

 The identity of the applicant will not be disclosed unless
an interference is declared.

 If a final decision is made not to declare an interference,
a notice to that effect will be placed in the patent file
and will be sent to the patentee.

 If a n interference is declared, notice thereof will be
made under 37 CFR 1.611.

¶ 11.20  Notice to Patentee, Interference Not Declared

 Notice was communicated to you under 37 CFR 1.607(d) on [1]
that an applicant was seeking to provoke an interference
with your U.S. patent No. [2].

 A final determination of this issue has resulted in a
decision not to declare an interference.

 No inquiries regarding the identity of the applicant will
be entertained.

 Examiner's Note:

 In bracket 1, insert the date of mailing of the earlier
notice that claims had been copied from the patent.

 It is anticipated that patentees may make inquiries as to
the status of the application after the first notification
has been received. Since the group having responsibility for
the application will be indicated on the letter and the
letter will not contain any information pertaining to that
application, it will be necessary for each examining group
to establish and maintain some type of permanent record. The
type of permanent record is left to the discretion of the
group director. This permanent record must be independent of
the application file and the patented file in order to
provide adequate information for patentee inquiries relative
to nonreceipt of either a second notice or a notice of
declaration of interference either before or after either is
mailed from the Patent and Trademark Office. Additionally,
the permanent record must associate the appropriate patent
number and the serial number of the application. This record

could be a separate group file for 37 CFR 1.607(d) notices
sent to patentees having appropriate identification of the
patent and application.

 In summary, a 37 CFR 1.607(d) notice (Form Paragraph 11.19)
is prepared by a person in the group having jurisdiction
over the application attempting to provoke an interference
with a patent. The original is placed of record in the
patented file, one copy is sent to the patentee, and an
entry is made in the permanent group record for 37 CFR
1.607(d) notices. If a final decision is made that no
interference will be declared, a primary examiner will
prepare and sign a 37 CFR 1.607(d) notice (Form Paragraph
11.20).

 The original of this notice is entered of record in the
patented file, one copy is sent to the patentee, and another
entry is made in the permanent record for 37 CFR 1.607(d)
notices.  If  an  interference  is  to  be  instituted,  the
declaration of interference notice will be sent by an
examiner - in - chief and no additional form will be sent by
the examiner.

 ALTHOUGH THE PERMANENT RECORD FOR 37 CFR 1.607(d) NOTICES
INCLUDES IDENTIFICATION BOTH OF THE PATENT AND APPLICATION,
THE PATENTEE CANNOT AND SHOULD NOT BE GIVEN ANY INFORMATION
CONCERNING THE PARTY OR APPLICATION ATTEMPTING TO PROVOKE AN
INTERFERENCE UNLESS AND UNTIL AN INTERFERENCE IS DECLARED.
35 U.S.C. 122.

2308  Interference Between an Application and a Patent;
Prima Facie Showing by Applicant

 37 CFR 1.608.  Interference between an application and a
patent; prima facie showing by applicant.

 (a)  When the earlier of the filing date or effective
filing date of an application is three months or less after
the earlier of the filing date or effective filing date of a
patent,  the  applicant,  before  an  interference  will  be
declared, shall file an affidavit alleging that there is a
basis  upon  which  applicant  is  entitled  to  a  judgment
relative to the patentee.

 (b)  When  the  earlier  of  the  filing  date  or  the
effective filing date of an application is more than three
months after the earlier of the filing date or the effective
filing date under 35 U.S.C. 120 of a patent, the applicant,
before an interference will be declared, shall file (1)
evidence  which  may  consist  of  patents  or  printed
publications, other documents, and one or more affidavits
which demonstrate that applicant is prima facie entitled to
a judgment relative to the patentee and (2) an explanation
stating  with  particularity  the  basis  upon  which  the
applicant is  prima facie entitled to the judgment. Where
the basis upon which an applicant is entitled to judgment
relative  to  a  patentee  is  priority  of  invention,  the
evidence shall include affidavits by the applicant, if
possible, and one or more corroborating witnesses, supported
by documentary evidence, if available, each setting out a
factual description of acts and circumstances performed or
observed by the affiant, which collectively would  prima
facie entitle the applicant to judgment on priority with
respect to the earlier of the filing date or effective
filing date of the patent. To facilitate preparation of a

record ( § 1.653(g) and (h)) for final hearing, an applicant
should file affidavits on paper which is 8 1/2 x 11 inches
(21.8  by  27.9  cm.).  The  significance  of  any  printed
publication or other document which is self - authenticating
within the meaning of Rule 902 of the Federal Rules of
Evidence or § 1.671(d) and any patent shall be discussed in
an affidavit or the explanation. Any printed publication or
other document which is not self - authenticating shall be
authenticated  and  discussed  with  particularity  in  an
affidavit. Upon a showing of sufficient cause, an affidavit
may be based on information and belief. If an examiner finds
an application to be in condition for declaration of an
interference, the examiner will consider the evidence and
explanation only to the extent of determining whether a
basis upon which the application would be entitled to a
judgment relative to the patentee is alleged and, if a basis
is alleged, an interference may be declared.

 Under 37 CFR 1.608, the PTO will continue the previous
practice under deleted 37 CFR 1.204(c) of requiring an
applicant seeking to provoke an interference with a patent
to submit evidence which demonstrates that the applicant is
prima facie entitled to a judgment relative to the patentee.
Evidence would be submitted only when the earlier of the
filing date or effective filing date of the application is
more than 3 months after the earlier of the filing date or
effective filing date under 35 U.S.C. 120 of the patent. The
evidence may relate to patent ability and need not be
restricted to priority. When the evidence (1) consists of
prior printed publications and patents and (2) shows that
the claims of the application are not patentable, the claims
in the application would be rejected and the applicant could
file a request for reexamination of the patent.

2308.01 Patent Has Filing Date Earlier Than Application

 When an applicant attempts to provoke an interference with
a patent, the examiner must determine the effective filing
dates of the application and of the patent; only the
patent's  effective  United  States  filing  date  will  be
considered. Any claim of foreign priority by the patentee
under 35 U.S.C. 119 will not be taken into account when
determining  whether  or  not  an  interference  should  be
declared, in order to be consistent with the holding in In
re Hilmer , 359 F.2d 859, 149 USPQ 480 (CCPA 1966) to the
effect that the effective date of a United States patent  as
a reference is not effected by the for eign filing date to
which the patentee is entitled under 35 U.S.C. 119. If the
patentee is determined to be entitled to the benefit of a
prior United States application as to claimed subject matter
involved in the interference, that application must be
listed on the PTO - 850 form (see MPEP § 2309).

 If the effective date of the applicant is 3 months or less
than that of the patented application, the applicant must
submit an affidavit or declaration alleging that there is a
basis  upon  which  applicant  is  entitled  to  a  judgment
relative to the patentee, 37 CFR 1.608(a). The affidavit or
declaration may be made by persons other than the applicant.
See MPEP § 715.04.

 If the effective filing date of the application is more
than 3 months after the effective filing date of the patent,
37 CFR 1.608(b) requires that the applicant must file (1)
evidence, such as patents, publications and other documents,

and one or more affidavits or declarations which demonstrate
that  applicant  is  prima  facie  entitled  to  a  judgment
relative to the patentee, and (2) an explanation stating
with particularity the basis upon which the applicant is
prima facie entitled to the judgment.

 If an applicant is claiming the same invention as a patent
which has an earlier effective United States filing date but
there is not a statutory bar against the application, and
the applicant has not submitted the items required by 37 CFR
1.608(a) and (b), as appropriate, the application should be
rejected under 35 U.S.C. 102(e) / 103. A statement should be
included in the rejection that the patent cannot be overcome
by an affidavit or declaration under 37 CFR 1.131 but only
through interference proceedings. Note, however, 35 U.S.C.
135(b) and MPEP § 2307.02. The applicant should also be
advised that an affidavit under 37 CFR 1.608(b) or evidence
and an explanation under 37 CFR 1.608(b), as appropriate,
mustbe submitted and it should be stated, if applicable,
that the patentee has been accorded the benefit of an
earlier U.S. application.

 If the applicant does not agree he or she is claiming the
same invention as the patent, and files an affidavit under
37 CFR 1.131, the rejection should be repeated and made
final. The rejection should specify what the count or counts
of the interference between the application and the patent
would  be.  If  the  applicant  still  disagrees  with  the
examiner, the rejection may be appealed to the Board of
Patent  Appeals  and  Interferences,  and  the  question  of
whether  the  application  and  the  reference  patent  are
claiming  the  same  invention  may  be  argued  on  appeal,
inasmuch as the 37 CFR 1.131 affidavit cannot be considered
unless the applicant is found to be claiming an invention
which is patentably distinct from that claimed in the
patent. See In re Hidy, 303 F.2d 954, 133 USPQ650 (CCPA
1962) and In re Clark , 457 F.2d 1004, 173 USPQ 359 (CCPA
1972).

2308.02 Showing Under 37 CFR 1.608(b)

 The showing under 37 CFR 1.608(b) must be such as to show
that the applicant is prima facie entitled to a judgment
relative to the patentee. Since 35 U.S.C. 135(a), as amended
by Public Law 98 - 622, now gives the Board jurisdiction in
an interference proceeding over questions of both priority
and patentability, the 37 CFR 1.608(b) showing need not
attempt to show prior invention by the applicant, but may
instead demonstrate that the applicant would be entitled to
a  judgment  against  the  patentee  on  a  ground  of
unpatentability (as, for example, that the claims of the
patent which will correspond to the count or counts are
unpatentable over prior art or prior public use, or that the
patent does not comply with 35 U.S.C. 112).

 An applicant in preparing affidavits or declarations under
37 CFR 1.608(b) to provoke an interference with a patentee
whose effective U.S. filing date antedates the applicant's
by more than 3 months, should have in mind the provisions of
37 CFR 1.617, and especially the following:

  1.  That after these affidavits or declarations are
forwarded by the primary examiner for the declaration of an
interference, they will be examined by an examiner - in -
chief.

  2.  If the affidavits or declarations fail to establish
that applicant would prima facie be entitled to a judgment
relative  to  the  patentee,  an  order  will  be  issued
concurrently with the notice of interference, requiring
applicant to show cause why summary judgment should not be
entered against the applicant.

  3.  Additional evidence in response to such order will
not be considered unless justified by a showing under the
provisions of 37 CFR 1.617(b). If the applicant responds,
the  applicant  must  serve  the  patentee  and  any  other
opponents with a copy of the original showing under 37 CFR
1.608(b) and of the response, and they will be entitled to
present their views with respect thereto (37 CFR 1.617(d)).

  4.  All  affidavits  or  declarations  submitted  must
describe acts which the affiants performed or observed or
circumstances observed, such as structure used and results
of use or test, except on a proper showing as provided in 37
CFR 1.608(b). Statements of conclusion, for example, that
the invention of the counts was reduced to practice, are
generally considered to be not acceptable. It should also be
kept in mind that documentary exhibits which are not self -
authenticated  must  be  authenticated  and  discussed  with
particularity by an affiant having direct knowledge of the
matters involved. However, it is not necessary that the
exact  date  of  conception  or  reduction  to  practice  be
revealed in the affidavits, declarations, or exhibits if the
affidavits or declarations aver observation of the necessary
acts and facts, including documentation when available,
before the patentee's effective filing date. On the other
hand,  where  reliance  is  placed  upon  diligence,  the
affidavits  or  declarations  and  documentation  should  be
precise as to dates from a date just prior to patentee's
effective filing date. The showing should relate to the
essential factors in the determination of the question of
priority of invention as set out in 35 U.S.C. 102(g).

  5.  The explanation required by 37 CFR 1.608(b) should
be  in  the  nature  of  a  brief  or  explanatory  remarks
accompanying an amendment, and should set forth the manner
in which the requirements of the counts are satisfied and
how the requirements for conception, reduction to practice,
or diligence are met, or otherwise explain the basis on
which the applicant is prima facie entitled to a judgment.

  6.  Published decisions of the Court of Customs and
Patent  Appeals  and  the  Board  of  Patent  Interferences
concerning the quantum of proof required by an applicant to
make out a prima facie showing entitling the applicant to an
award of priority with respect to the filing date of a
patent so as to allow the interference to proceed, 37 CFR
1.617(a), second sentence, include  Kistler v.  Weber , 412
F.2d 280, 162 USPQ 214 (CCPA 1969);  Schwab v.  Pittman ,
451 F.2d 637, 172 USPQ 69 (CCPA 1971);  Murphy v.  Eiseman ,
166 USPQ 149 (Bd. Pat. Int. 1970);  Golota v.  Strom , 489
F.2d 1287, 180 USPQ 396 (CCPA 1974);  Horvitz v.  Pritchard
, 182 USPQ 505 (Bd. Pat. Int. 1974);  Azar v.  Burns , 188
USPQ 601 (Bd. Pat. Int. 1975) and  Wetmore v.  Quick , 536
F. 2d 937, 190 USPQ 223 (CCPA 1976).

 As noted above, the evaluation of a showing under 37 CFR
1.608(b) is made by an examiner - in - chief. However, when
a showing under 37 CFR 1.608(b) is filed, the examiner must

in spect it to determine whether the applicant is relying
upon prior invention or unpatentability as a basis for the
showing. If the applicant alleges prior invention, the
examiner should merely determine that (1) at least one date
prior to the effective filing date of the patent is alleged
and (2) the showing contains at least one affidavit or
declaration by a corroborating witness; i.e., by someone
other than a named inventor; if so, the examiner should
proceed to institute the interference as described in MPEP §
2309. If the showing is based on alleged unpatentability of
the patent claim or claims, the examiner should determine
whether any ground of unpatentability alleged is such that
it would also apply to the applicant; for example, if the
applicant  alleges  that  the  claims  of  the  patent  are
statutorily barred by a reference which would also be a bar
to the applicant. If the examiner finds that an alleged
ground of unpatentability would also apply to the applicant,
the interference should not be declared and the applicant's
claims which are drawn to the same invention as the claims
of the patent should be rejected on this admission of
unpatentability, without regard to the merits of the matter.
Compare Ex parte Grall , 202 USPQ 701 (Bd. App. 1978).
Although the applicant may wish to contest the question of
whether the common invention is patentable to the patentee,
an  interference  cannot  be  declared  unless  the  common
invention is patentable to the applicant.  Hilborn v.  Dann
, 546 F.2d 401, 192 USPQ 132 (CCPA 1976). If the alleged
unpatentability is based on patents or printed publications,
the applicant may still be able to file a request for
reexamination of the patent under 35 U.S.C. 302.

2308.03 Patent Has Filing Date Later Than Application

 Although a patent which has an effective U.S. filing date
later than the effective filing date of an application is
not prior art against that application, the application
should not be issued if the application and patent contain
claims to the same patentable invention. In order to avoid
the  issuance  of  two  patents  to  the  same  patentable
invention, the examiner should take steps to institute an
interference between the application and the patent.

 If the application contains at least one allowable claim
drawn to the same patentable invention as at least one
patent claim, the examiner may initiate the interference by
proceeding as described in MPEP § 2305.

 If the application discloses, but does not claim, an
invention claimed in the patent, so that a patent could be
granted to the applicant without an interference proceeding,
the patent should only be cited to the applicant. The
applicant can then determine whether to present claims to
provoke an interference with the patent.

2309  Preparation of Interference Papers by Examiner

 37 CFR 1.609.  Preparation of interference papers by
examiner.

 When the examiner determines that an interference should be
declared, the examiner shall forward to the Board:

 (a)  All relevant application and patent files and

 (b)  A statement identifying:

 (1)  The proposed count or counts;

 (2)  The claims of any application or patent which
correspond  to  each  count,  stating  whether  the  claims
correspond exactly or substantially to each count;

 (3)  The claims in any application which are deemed by
the examiner to be patentable over any count; and

 (4)  Whether an applicant or patentee is entitled to the
benefit of the filing date of an earlier application and, if
so,  sufficient  information  to  identify  the  earlier
application.

 37 CFR 1.609 sets forth what an examiner shall forward to
the Board when an interference is declared. For the most
part, 37 CFR 1.609 continues previous practice. However,
under 37 CFR 1.609(b)(3), the examiner must identify all
claims of an application which the examiner believes are
patentable over the proposed counts. Thus, a claim in an
application will either correspond to a count or will be
indicated as being patentable over the count. For instance,
in example 3, MPEP § 2309.01, the examiner must indicate
that (1) claims 1 and 2 of application E and claims 11 and
12 of application F correspond to the count and (2) claim 3
of application E defines a separate patentable invention
from the count.

2309.01 Formulation of Counts

 Before preparing the "Interference - Initial Memorandum"
(Form PTO - 850), the examiner must determine precisely what
the count or counts of the interference will be. Unlike
previous practice, under the revised rules (37 CFR 1.601 -
1.688) the question of whether the interference involves a
patent is essentially irrelevant to the formation of the
counts.

 In formulating the count or counts, the examiner must
decide two interrelated questions: (1) how many counts will
there be, and (2) what will the scope of each count be. The
following principles should be kept in mind:

  1.  Each count must be drawn to a separate patentable
invention, that is to say, the invention defined in each
count must not be the same as, or obvious over, the
invention defined in any other count. However, a count may
properly be included if it is unobvious over another count,
even though the reverse might not be true. For example, a
count to a species and a count to a genus might properly
both be included in the interference if the species is
patentable over the genus, even though the genus might not
be patentable, given the species.

  It is expected that most interferences will involve only
one count or a very small number of counts, in view of the
requirement of separate patentability.

  2.  A count should normally be sufficiently broad as to
encompass the broadest corresponding patentable claim of
each of the parties. However, a situation may arise where
the examiner considers that an applicant's corresponding
claim includes not only the common invention, but also
another invention; in that case, the count should be limited

to the common invention, and may be narrower than the
corresponding claim which recites the additional invention.
Note that 37 CFR 1.606 provides that a count may not
initially be narrower in scope than any  patent claim which
corresponds to it; this does not preclude later substitution
of a count which is narrower than the patent claim, as a
result of a preliminary motion under 37 CFR 1.633(c).

  3.  A count may not be so broad as to be unpatentable
over the prior art. If a count cannot be made sufficiently
broad in scope as to embrace the broadest corresponding
patentable claims of the parties without being unpatentable,
that would indicate either that the parties' corresponding
claims are unpatentable or perhaps, if the parties' claims
do not overlap, that they are drawn to two separately
patentable inventions and there is no interference in fact
between them.

 The following examples illustrate how counts should be
formulated. An examiner - in - chief should be consulted in
unusual situations which do not fit any of the examples.

 Example 1 : Application A contains patentable claim 1
(engine).  Application  B  contains  patentable  claim  8
(engine). If an interference is declared, there will be one
count (engine). Claim 1 of application A and claim 8 of
application B would be designated to correspond to the
count.

 Example 2 : Application C contains patentable claim 1
(engine) and 2 (6 - cylinder engine). Application D contains
patentable claim 8 (engine). An engine and a 6 - cylinder
engine  define  the  same  patentable  invention.  If  an
interference is declared, there will be one count (engine).
Claims 1 and 2 of application C and claim 8 of application D
would be designated to correspond to the count.

 Example 3 : Application E contains patentable claims 1
(engine), 2 (6 - cylinder engine) and 3 (engine with a
platinum piston). Application F contains patentable claims
11 (engine) and 12 (8 - cylinder engine). Claims 1 and 2 of
application E and claims 11 and 12 of application F define
the same patentable invention. Claim 3 of application E
defines a patentable invention from claims 1 and 2 of
application E and claims 11 and 12 of application F. If an
interference is declared, there will be one count (engine).
Claims 1 and 2 of application E and claims 11 and 12 of
application F would be designated to correspond to the
count. Claim 3 of application E would not be designated to
correspond to the count.

 Example 4 : Application G contains patentable claim 1
(engine), 2 (6 - cylinder engine) and 3 (engine with a
platinum piston). Application H contains patentable claims
11 (engine) and 15 (engine with a platinum piston). Claims 1
and 2 of application G and claim 11 of application H define
the same patentable invention. Claim 3 of application G and
claim 15 of application H define a patentable invention from
claims 1 and 2 of application G and claims 11 of application
H. If an interference is declared, there will be two counts:
Count 1 (engine) and count 2 (engine with a platinum
piston). Claims 1 and 2 of application G and claim 11 of
application H would be designated to correspond to the Count
1. Claim 3 of application G and claim 15 of application H
would be designated to correspond to Count 2.

 Example 5: Application J contains patentable claim 1
(engine), 2 (combination of an engine and a carburetor) and
3 (combination of an engine, a carburetor, and a catalytic
converter). Application K contains patentable claims 31
(engine), 32 (combination of an engine and a carburetor),
and 33 (combination of an engine, a carburetor, and an air
filter).  The  engine,  com  bination  of  an  engine  and
carburetor, and combination of an engine, carburetor, and
air  filter  define  the  same  patentable  invention.  The
combination  of  an  engine,  carburetor,  and  catalytic
convertor define a separate patentable invention from the
engine. If an interference is declared, there will be one
count (engine). Claims 1 and 2 of application J and claims
31, 32 and 33 of application K would be designated to
correspond to the Count. Claim 3 of application J would not
be designated as corresponding to the count.

 Example 6 : The PTO will continue to follow  Weldeck v.
Lewis , 120 USPQ 88 (Comm'r Pat. 1955). Application L
contains patentable claims 1 (Markush group of benzene or
toluene),  2  (benzene),  and  3  (toluene).  Application  M
contains patentable claims 11 (benzene). Benzene and toluene
define the same patentable invention. If an interference is
declared, there will be one count (Markush group of benzene
or toluene). Claims 1, 2 and 3 of application L and claim 11
of application M would be designated to correspond to the
count.

 Example 7 : Application N contains patentable claim 1
(benzene).  Application  P  contains  patentable  claim  11
(xylene). benzene and xylene define the same patentable
invention. If an interference is declared, there will be one
count (benzene or xylene). Claim 1 of application N and
claim 11 of application P would be designated to correspond
to the count.

 Example 8 : Application Q contains patentable claims 1
(Markush group of benzene or chloroform), 2 (benzene), and 3
(chloroform). Application R contains patentable claims 33
(benzene).  If  benzene  and  chloroform  define  the  same
patentable invention and an interference is declared, there
will be one count (Markush group of benzene or chloroform).
Claims 1, 2 and 3 of application Q and claim 33 of
application R would be designated to correspond to the
count. If chloroform defines a separate patentable invention
from benzene and an interference is declared, there will be
one count (benzene). Claims 1 and 2 of application Q and
claim 33 of application R would be designated to correspond
to the count. Claim 3 of application Q would not be
designated to correspond to the count.

 Example 9 : Application S contains patentable claims 1
(Markush group of benzene or chloroform), 2 (benzene), and 3
(chloroform). Application T contains patentable claims 11
(Markush group of benzene or chloroform), 12 (benzene), and
13 (chloroform). If benzene and chloroform define the same
patentable invention and an interference is declared, there
will be one count (Markush group of benzene or chloroform).
Claims 1, 2 and 3 of application S and claims 11, 12 and 13
of application T would be designated to correspond to the
count. The PTO will continue to adhere to  Becker v.
Patrick , 47 USPQ 314 (Comm'r. Pat. 1939). An interference
can have two counts only if one count defines a separate
patentable  invention  from  another  count.  If  chloroform

defines a separate patentable invention from benzene and an
interference is declared, there will be two counts: Count 1
(benzene) and Count 2 (chloroform). Claims 1 and 2 of
application S and claims 11 and 12 of application T would be
designated to correspond to Count 1. Claims 1 and 3 of
application S and claims 11 and 13 of application T would be
designated to correspond to Count 2.

  Example  10  :  Patent  A  contains  claim  1  (engine).
Application U contains patentable claim 11 (engine). If an
interference is declared, there will be one count (engine).
Claim 1 of patent A and claim 11 of application U would be
designated to correspond to the count.

 Example 11 : Patent B contains claims 1 (engine) and 2 (6 -
cylinder engine). Application V contains patentable claim 8
(engine). An engine and a 6 - cylinder engine define the
same patentable invention. If an interference is declared,
there will be one count (engine). Claims 1 and 2 of patent B
and  claim  8  of  application  V  would  be  designated  to
correspond to the count.

 Example 12 : Patent C contains claims 1 (engine), 2 (6 -
cylinder engine), and 3 (engine with a platinum piston).
Application W contains patentable claims 11 (engine) and 12
(8 - cylinder engine). Claims 1 and 2 of patent C and claims
11 and 12 of application W define the same patentable
invention. Claim 3 of patent C defines a separate patentable
invention from claims 1 and 2 of patent C and claims 11 and
12 of application W. If an interference is declared, there
will be one count (engine). Claims 1 and 2 of patent C and
claims 11 and 12 of application W would be designated to
correspond to the count. Claim 3 of patent C would not be
designated to correspond to the count.

 Example 13 : Patent D contains claims 1 (engine), 2 (6 -
cylinder engine), and 3 (engine with a platinum piston).
Application X contains patentable claims 11 (engine) and 15
(engine with a platinum piston ). Claims 1 and 2 of patent D
and claim 11 of application X define the same patentable
invention. Claim 3 of patent D and claim 15 of application X
define a separate patentable invention from claims 1 and 2
of patent D and claims 11 and 12 of application X. If an
interference is declared, there will be two counts. Count 1
(engine) and Count 2 (engine with a platinum piston). Claims
1 and 2 of patent D and claim 11 of application X would be
designated to correspond to Count 1. Claim 3 of patent D and
claim 15 of application X would be designated to correspond
to Count 2.

 Example 14 : Patent E contains claim 1 (Markush group of
benzene  or  toluene),  2  (benzene),  and  3  (toluene).
Application  Y  contains  patentable  claim  11  (benzene).
Benzene and toluene define the same patentable invention. If
an  interference  is  declared,  there  will  be  one  count
(Markush group of benzene or toluene). Claims 1, 2 and 3 of
patent E and claim 11 of application Y would be designated
to correspond to the count.

 Example 15 : In this example, the claims of patent E and
application Y of example 14 are reversed. Patent E contains
claim 1 (benzene). Application Y contains patentable claim
11 (Markush group of benzene or toluene), 12 (benzene), and
13 (toluene). If an interference is declared, the count will
be the same as the count in Example 14 - (Markush group of

benzene or toluene). Claim 1 of patent E and claims 11, 12
and 13 of application Y would be designated to correspond to
the count.

 Example 16 : The PTO will continue to follow cases such as
Case v.  CPC International Inc. , 730 F.2d 745, 221 USPQ 196
(Fed. Cir. 1984),  cert. denied , 105 S. Ct. 233, 224 USPQ
736 (1984);  Aelony v.  Arni , 547 F.2d 566, 192 USPQ 486
(CCPA 1977); and  Notz v.  Ehrenreich , 537 F.2d 539, 190
USPQ  413  (CCPA  1976),  and  declare  interferences  where
interfering  patent  and  application  claims  are  mutually
exclusive provided the claims define the same patentable
invention. Patent F contains claim 1 (benzene). Application
Z contains patentable claim 11 (xylene). Benzene and xylene
define the same patentable invention. If an interference is
declared, there will be one count (benzene or xylene). Claim
1 of patent F and claim 11 of application Z would be
designated to correspond to the count.

 Example 17 : It will be the practice of the PTO under 37
CFR 1.606 to initially declare interferences with counts
which are identical to or broader than patent claims which
correspond to the counts. A single patent claim will be
presumed, subject to a motion under 37 CFR 1.633(c), not to
define separate patentable inventions. Patent G contains
claims 1 (Markush group of benzene and chloroform), 2
(benzene),  and  3  (chloroform).  Application  AA  contains
patentable  claim  33  (benzene).  If  an  interference  is
declared, initially it will be presumed by the PTO, subject
to a later motion under 37 CFR 1.633(c), that benzene and
chloroform define the same patentable invention.

 There will be one count (Markush group of benzene or
chloroform). Claims 1, 2 and 3 of patent G and claim 33 of
application AA would be designated to correspond to the
count. If a party believes benzene and chloroform define
separate patentable inventions, that party could file a
motion under 37 CFR 1.633(c) to redefine the count and the
claims corresponding to the counts.

 Example 18 : Patent H contains claims 1 (Markush group of
benzene and chloroform), 2 (benzene), and 3 (chloroform).
Application AB contains patentable claims 11 (Markush group
of  benzene  and  chloroform),  12  (benzene)  and  13
(chloroform). Benzene and chloroform initially would be
presumed, subject to a motion under 37 CFR 1.633(c), to
define the same patentable invention, because they were
recited as a Markush group in a single patent claim. If an
interference is declared, there will be one count (Markush
group of benzene or chloroform). Claims 1, 2 and 3 of patent
H andclaims 11, 12 and 13 of application AB would be
designated to correspond to the count. If a party believes
benzene  and  chloroform  define  separate  patentable
inventions, the party could move under 37 CFR 1.633(c) to
substitute a count (benzene) for (Markush group of benzene
or chloroform) and to add a count (chloroform).

 Example 19 : Under 37 CFR 1.606, the PTO will continue to
follow the practice announced in  Ex parte Card and Card ,
1904 C.D. 383 (Comm r. Pat.). Patent J contains claim 1
(method of mixing, grinding, and heating).

 Application AC contains patentable claim 8 (method of
mixing and heating) and does not disclose or claim a
grinding step. In the context of the inventions disclosed in

patent J and application AC, a method of mixing, grinding,
and heating is the same patentable invention as a method of
mixing and heating. Under current practice, it would be said
that "grinding" is an "immaterial" limitation in claim 1 of
patent J. Under 37 CFR 1.606, the fact application AC does
not disclose grinding would not preclude an interference. If
an interference is declared, there will be one count (method
of mixing and heating). Claim 1 of patent J and claim 8 of
application AC would be designated to correspond to the
count.

 Example 20 : The facts in this example are the same as
Example 18. Assume that applicant AB believes that benzene
and  chloroform  define  separate  patentable  inventions.
Applicant AB would file a motion under 37 CFR 1.633(c)(1) to
substitute Count 2 (benzene) for Count 1 (Markush group of
benzene or chloroform) and add Count 3 (chloroform). If the
examiner - in - chief grants the motion, the interference
would be redeclared by deleting Count 1 and substituting in
its place Counts 2 and 3. Claims 1 and 2 of the patent H and
claims 11 and 12 of application AB will be designated to
correspond to Count 2. Claims 1 and 3 of patent H and claims
11 and 12 of application AB will be designated to correspond
to Count 3. If one party proves priority with respect to
both benzene and chloroform, that party would be entitled to
all claims in its application or patent corresponding to
Counts 2 and 3. The other party would not be entitled to a
patent containing any claim corresponding to Counts 2 and 3.
If patentee H proves priority with respect to benzene and
applicant AB proves priority with respect to chloroform
(assuming there was no issue raised at final hearing with
respect  to  the  patentable  distinctness  of  benzene  and
chloroform), the judgment will provide that patentee H is
not entitled to a patent with claims 1 and 3, but is
entitled to a patent with claim 2 and that applicant AB is
not entitled to a patent with claims 11 and 12, but is
entitled to a patent with claim 13. If an issue is properly
raised at final hearing as to whether benzene and chloroform
are the same patentable invention and the Board holds that
they are the same patentable invention, the party proving
the earliest priority as to either benzene or chloroform
would prevail as to all claims. Thus, if patentee H invented
benzene before applicant AB invented benzene or chloroform,
patentee H would be entitled to a patent containing claims 1
through 3 even if applicant AB invented chloroform before
patentee H invented chloroform. Applicant AB would not be
entitled to a patent with claims 11 through 13.

2309.02 Preparation of Papers - Initial Memorandum

 The only paper prepared by the examiner is the Initial
Memorandum (Form PTO - 850) addressed to the Board which
provides authorization for preparation of the declaration
notices. The later papers are prepared in the Service Branch
of the Board.

 A sample of a filled - out Form PTO - 850 is shown below.

 A separate form is used for each count of the interference.
The form need not be typed unless the count is not identical
to any claim of any of the parties. If the count is
identical to a claim of one of the parties, the number of
that claim is circled. If the count is not identical to any
claim of any of the parties, the count should be typed in
the space provided on the form (an additional plain sheet

may be attached if needed).

 The files to be included in the interference should be
listed by last name (of the first listed inventor if
application  is  joint),  serial  number  and  filing  date
irrespective of whether an application or a patent is
involved.

 The sequence of the listed applications is completely
immaterial. If the examiner has determined that a party is
entitled to the benefit of the filing date of one or more
applications (or patents) as to the counts, the blanks
provided on the form for indicating this fact should be
filled in as to all such applications. It is particularly
important to list all intermediate applications necessary to
provide continuity of pendency to the earliest benefit
application to which a party is entitled.

 An applicant will be accorded the benefit of a foreign
application on the Form PTO - 850 and the declaration
notices  only  if  the  papers  required  by  37  CFR  1.55,
including a sworn translation, have been filed and the
primary examiner has determined that the applicant is in
fact entitled to the benefit of such application. A patentee
may be accorded the benefit of the filing date of a foreign
application in the notice of interference provided he or she
has complied with the requirements of 37 CFR 1.55, has filed
a sworn translation, and the primary examiner has determined
that at least one species within the count involved in the
interference is supported by the disclosure of the foreign
application. Note, however, that a patentee should not be
accorded  the  benefit  of  a  foreign  application  if  an
application in the interference has an effective filing date
subsequent to the filing date of the foreign application.
See MPEP § 2308.01.

 The claims in each party's case which correspond and do not
correspond to the count must be listed in the spaces
provided on the form. A claim corresponds to a count if,
considering the count as prior art, the claim would be
unpatentable over the count under 35 U.S.C. 102 or 103. If
the examiner is in doubt as to whether a party's claim does
or does not correspond to a count, it should be listed as
corresponding to the count. If the party disagrees with this
listing, a motion may be filed under 37 CFR 1.633(c)(4)
during the interference to designate the claim as not
corresponding to the count.

 Note that for each count,  every claim in a party's
application  or  patent  must  be  designated  as  either
corresponding or not corresponding to the count. The fact
that a claim may be under rejection does not mean that it
should not be designated. For every claim of an application
which is listed on the form, the examiner must indicate
whether  or  not  that  claim  is  allowable  by  writing
"(allowable)"  or  "(not  allowable)"  next  to  the  claim
number(s).  At  least  one  of  the  claims  designated  as
corresponding to the count must be allowable.

 If an involved case contains multiple dependent claims, the
examiner should be careful to indicate which embodiments of
each  multiple  dependent  claim  correspond  or  do  not
correspond to each count. An embodiment of a multiple
dependent claim should not be circled on form PTO - 850 as
being the count, but rather, the embodiment should be

written out in independent form in the space provided.

 After Form PTO - 850 is filled out for each count of the
proposed interference, it must be signed by the primary
examiner in the space provided. The form must also be signed
by  the  group  director,  if  the  director's  approval  is
required (as when the interference involves two applications
whose effective filing dates are more than 6 months apart).

 When the form or forms are signed, they are forwarded to
the Board together with file of each U.S. application or
patent listed on the form(s), including all applications or
patents of which benefit is being claimed.

 If two of the parties have the same attorney or agent, the
examiner will in a separate memorandum call the attention of
the Board to that fact when the Initial Memorandum is
forwarded. The examiner - in - chief, when the interference
is declared, can then take such action as may be appropriate
under 37 CFR 1.613(b).

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2309.03 Affidavits and Declarations Retained in File

 When there are of record in the file of the application
affidavits or declarations under 37 CFR 1.131 or 1.608, they
should not be sealed but should be left in the file for
consideration by the Board. If the interference proceeds
normally, these affidavits or declarations will be removed
and sealed up by the Service Branch of the Board and
retained with the interference.

 Affidavits and declarations under 37 CFR 1.131 and 1.608
are available for inspection by an opposing party to an
interference after the preliminary motions under 37 CFR
1.633 are decided. See 37 CFR 1.612(b).

 Affidavits or declarations in the file of a patent are not
removed, inasmuch as they are available to the public since
the date the patent issued.

2309.04 Record in Each Interference Complete

 When there are two or more related interferences pending in
the Patent and Trademark Office, in order that the record of
the proceedings in each particular interference may be
separate and distinct, all motions and papers sought to be
filed therein must be titled in and relate only to the
particular interference to which they belong, and no motion
or paper can be filed in any interference which relates to,
or in which is joined, another interference or matter
affecting another interference.

2309.05 Consultation With Examiner - in - Chief

 The examiner should consult with one of the examiners - in
- chief in any case of doubt or where the practice appears
to be obscure or confused. In view of their specialized
experience they may be able to suggest a course of action
which will avoid considerable difficulty in the future
treatment of the case.

2309.06 Interfering Subject Matter in "Secrecy Order" Cases

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

  *****

 (b)  An interference will not be declared involving
national applications under secrecy order. However, if an
applicant  whose  application  under  secrecy  order  copies
claims from an issued patent, a notice of that fact will be
placed in the file wrapper of the patent. (See § 1.205(c)).

 Since declaration of an interference gives immediate access
to applications by opposing parties, no interference will be
declared involving an application which has a security
status therein (see MPEP § 107 and 107.02). Claims will be
suggested so that all parties will be claiming substantially
identical subject matter. When all applications contain the
claims suggested, the following letter will be sent to all
parties:

  "Claims 1, 2, etc. (including the conflicting claims and
claims not patentable over the application under security
status) conflict with those of another application. However,
the  security  status  (of  the  other  application/of  your
application)  does  not  permit  the  declaration  of  an
interference. Accordingly, action on the application is
suspended for so long as this situation continues.

  "Upon  removal  of  the  security  status  from  all
applications, an interference will be declared."

 The letter should also indicate the allowability of the
remaining claims, if any.

 A notice that claims have been presented in a "security
type" application for the purpose of interference with a
patent should be placed in the patented file. Also, in
accordance with 37 CFR 1.607(d), the patentee should be
notified. The question of an interference is taken up upon
termination of the "security status" of the application in
which patent claims are presented. The suggested notices
should be modified accordingly.

 The notices should be signed by the primary examiner. The
copy of the notice retained separately in the examining
group should, in addition, contain the identification of the
applications  and  patents  involved  and  the  interfering
claims.

2310  Handling by Examiner - in - Chief

 37 CFR 1.610.  Assignment of interference to examiner -
in - chief, time period for completing interference.

 (a)  Each interference will be declared by an examiner -
in - chief who may enter all interlocutory orders in the
interference, except that only a panel consisting of at
least three members of the Board shall (1) hear oral
argument at final hearing, (2) enter a decision under §
1.617, 1.640(c) or (e), 1.652, 1.656(i) or 1.658 or (3)
enter any other order which terminates the interference.

 (b)  As necessary, another examiner - in - chief may act
in place of the one who declared the interference. Unless

otherwise provided in this section, at the discretion of the
examiner - in - chief assigned to the interference, a panel
consisting of two or more members of the Board may enter
interlocutory orders.

 (c)  Unless otherwise provided in this subpart, times
for taking action by a party in the interference will be set
on a case - by - case basis by the examiner - in - chief
assigned to the interference. Times for taking action shall
be set and the examiner - in - chief shall exercise control
over  the  interference  such  that  the  pendency  of  the
interference before the Board does not normally exceed two
years.

 (d)  An examiner - in - chief may hold a conference with
the parties to consider: (1) Simplification of any issues,
(2) the necessity or desirability of amendments to counts,
(3) the possibility of obtaining admissions of fact and
genuineness of documents which will avoid unnecessary proof,
(4) any limitations on the number of expert witnesses, (5)
the  time  and  place  for  conducting  a  deposition  (  §
1.673(g)), and (6) any other matter as may aid in the
disposition of the interference. After a conference, the
examiner - in - chief may enter any order which may be
appropriate.

 (e)  The examiner - in - chief may determine a proper
course of conduct in an interference for any situation not
specifically covered by this part.

 Under 37 CFR 1.610, each interference will be declared by
an examiner - in - chief. The examiner - in - chief enters
all interlocutory orders in the interference. As necessary,
another examiner - in - chief may act in place of the
examiner - in - chief assigned to the interference. At the
discretion of the examiner - in - chief assigned to the
interference, a panel of two or more examiners - in - chief
may enter an interlocutory order. The examiner - in - chief
will set times and control proceedings such that pendency of
the interference normally will not exceed 24 months. Under
37 CFR 1.610(d), the examiner - in - chief is authorized to
hold conferences. Any conference can be by a telephone
conference call. Under 37 CFR 1.610(e), an examiner - in -
chief is authorized to determine a proper course of conduct
for any situation not specifically covered by the rules.

2311  Declaration of Interference

 37 CFR 1.611.  Declaration of interference.

 (a)  Notice of declaration of an interference will be
sent to each party.

 (b)  When a notice of declaration is returned to the
Patent and Trademark Office undelivered, or in any other
circumstance where appropriate, an examiner - in - chief may
(1) send a copy of the notice to a patentee named in a
patent  involved  in  an  interference  or  the  patentee`s
assignee of record in the Patent and Trademark Office or (2)
order publication of an appropriate notice in the Official
Gazette .

 (c)  The notice of declaration shall specify:

 (1)  The name and residence of each party involved in

the interference.

 (2)  The name and address of record of any attorney or
agent of record in any application or patent involved in the
interference;

 (3)  The name of any assignee of record in the Patent
and Trademark Office;

 (4)  The identity of any application or patent involved
in the interference;

 (5)  Where a party is accorded the benefit of the filing
date of an earlier application, the identity of the earlier
application;

 (6)  The count or counts;

 (7)  The claim or claims of any application or any
patent which correspond to each count; and

 (8)  The order of the parties.

  d) The notice of declaration may also specify the time
for: (1) Filing a preliminary statement as provided in §
1.621(a); (2) serving notice that a preliminary statement
has been filed as provided in § 1.621(b); and (3) filing
preliminary motions authorized by § 1.633, oppositions to
the motions, and replies to the oppositions.

 (e)  Notice may be given in the Official Gazette that an
interference has been declared involving a patent.

 Upon receipt of the Interference Initial Memorandum (Form
PTO - 850) and the case files from the primary examiner, the
interference is assigned to an examiner - in - chief, who is
thereafter responsible for handling it during its pendency
before the PTO. Under the revised rules, the examiner - in -
chief has wide discretion as to what actions he or she may
take, particularly with regard to the setting of times, and
in studying the rules it will be noted that many of their
provisions are modified by a qualification such as "unless
otherwise ordered by an examiner - in - chief." Therefore,
it may well be that different examiners - in - chief will
follow somewhat different procedures in the interferences
assigned to them.

  PREPARATION OF DECLARATION NOTICE

 The papers necessary in declaring an interference are
prepared at the Board. The notices to the parties and the
declaration sheet are signed by the examiner - in - chief,
who declares the interference by mailing the notices to the
several  parties  to  the  proceeding.  Thereafter  the
applications and interference files are kept at the Board
where they are also recorded in a card index.

 The fact that an application that has been made special by
the Commissioner becomes involved in an interference does
not entitle that interference to be taken up out of turn,
Strickland v.  Glazer , 214 USPQ 549 (Comm'r Par. 1980). The
parties  may  expedite  the  proceeding  by  taking  action
promptly when times are set, and by requesting that certain
time periods be reduced or eliminated.

 Under 37 CFR 1.611(a), the PTO will normally notify each
party at its correspondence address (37 CFR 1.33(a)) that an
interference is declared.

 Under 37 CFR 1.611(a), the PTO could, in appropriate
circumstance, also send a notice to a patentee or an
assignee.  An  appropriate  circumstance  for  sending  an
additional notice would be a situation where a patent was
issued on the basis of an application filed under 37 CFR
1.47. The matters to be specified in a notice declaring an
interference are set out in 37 CFR 1.611(c). One item to be
set out is the "order of the parties," meaning the order in
which the parties will take testimony. The "order of the
parties" is a procedural tool. It indicates the "style" of
the case  __which practitioners are encouraged to use. If
there are two counts and one party is "senior" as to one
count and "junior" as to another count, the party has the
burden of proof as to that count to which the party is
"junior." See 37 CFR 1.657. Appropriate testimony periods
will be set (37 CFR 1.651(b)) to accommodate differing
burdens of proof in cases where a party is "senior" on one
count and "junior" on another count.

 If Jones is the junior party and Smith is the senior party,
the order of the parties is: Jones v.  Smith . The order of
the parties may change as a result of the granting of a
motion under 37 CFR 1.633(d), (f), or (g). Under 37 CFR
1.611(d), the notice declaring the interference may also set
dates  for  filing  preliminary  statements,  notices  that
preliminary statements have been filed, motions under 37 CFR
1.633, oppositions to those motions, and replies to the
oppositions.

 In setting the times for filing preliminary statements and
preliminary motions, the examiner - in - chief may follow
different procedures. Some may hold a telephone conference
with the lead attorneys to work out times acceptable to all
parties, while others may specify times in the declaration
notices and state that those times will be final unless a
lead attorney requests by a certain date that they be
changed. In either event, the times, once finally set, will
not be changed except for good cause shown. Any motion to
extend time must reach the examiner - in - chief before
expiration of the time period to be extended, and may not be
granted even if it is unopposed. Note that 37 CFR 1.645
specifically provides that "The press of other business
arising after an examiner - in - chief sets a time for
taking action will not normally constitute good cause."

 Once an interference is declared involving an application,
ex parte prosecution of the application is suspended, and
the applicant need not respond to any PTO action outstanding
as of the date the interference is declared.

2312  Access to Applications in Interference

 37 CFR 1.612.  Access to applications.

 (a)  After an interference is declared, each party shall
have access to and may obtain copies of the files of any
application  set  out  in  the  notice  declaring  the
interference, except for affidavits filed under § 1.131 and
any evidence and explanation under § 1.608 filed separate
from an amendment. A party seeking access to any abandoned
or pending application referred to in the opposing party's

involved application or access to any pending application
referred to in the opposing party's patent must file a
motion under § 1.635.

 (b)  After preliminary motions under § 1.633 are decided
( § 1.640(b)), each party shall have access to and may
obtain copies of any affidavit filed under § 1.131 and any
evidence  and  explanation  filed  under  §  1.608  in  any
application  set  out  in  the  notice  declaring  the
interference.

 (c)  Any evidence and explanation filed under § 1.608 in
the  file  of  any  application  identified  in  the  notice
declaring the interference shall be served when required by
§ 1.617(b).

 (d)  The parties at any time may agree to exchange
copies of papers in the files of any application identified
in the notice declaring the interference.

  Request for Access by Interference Party

 37 CFR 1.612(a) requires an interference party seeking
access either to a pending or abandoned application referred
to in an opposing party's involved application or to a
pending application referred to in an opposing party's
involved patent, to file a motion under 37 CFR 1.635. Such a
motion is decided by an examiner - in - chief (37 CFR
1.640(b)).

 A party seeking access to file a motion under 37 CFR 1.635
must first confer with the opposing party in an effort to
resolve the issue of access as required by 37 CFR 1.637(b).
The examiner - in - chief will not decide the issue unless
it cannot be resolved by the parties.

 Under 37 CFR 1.612, except for affidavits under 37 CFR
1.131 and any evidence and explanation under 37 CFR 1.608(b)
filed separate from an amendment, each party has access to
the file of every other party after an interference is
declared. The files of applications and patents involved in
an interference are maintained in the Service Branch of the
Board for inspection and copying. Any explanation which is
filed  as  part  of  an  amendment  or  an  amendment  which
discusses details contained in an affidavit under 37 CFR
1.131 is not to be sealed under 37 CFR 1.612(a). Thus, 37
CFR 1.612(a) continues the practice discussed in Moorman v.
Martin, 103 USPQ 273 (Comm'r Pat. 1950) and Calvert, An
Overview of Interference Practice, 62 J. Pat. Off. Soc'y.
209, 293 (1980). Under 37 CFR 1.612(b), each party has
access to an opponent's affidavit under 37 CFR 1.131 or an
opponent's evidence and explanation under 37 CFR 1.608(b)
when a decision is rendered on motions under 37 CFR 1.633.
Under 37 CFR 1.612(c), a party is required to serve any
evidence and explanation under 37 CFR 1.608(b) if an order
to show cause is issued under 37 CFR 1.617(a) and the party
responds to the order under 37 CFR 1.617(b). Under 37 CFR
1.612(d), the parties may agree to exchange copies of their
respective files.

2313  Lead Attorney or Agent

 37 CFR 1.613.  Lead attorney, same attorney representing
different parties in an interference, withdrawal of attorney
or agent.

 (a)  Each  party  may  be  required  to  designate  one
attorney or agent of record as the lead attorney or agent.

 (b)  The same attorney or agent or members of the same
firm of attorneys or agents may not represent two or more
parties in an interference except as may be permitted under
this Chapter.

 (c)  An examiner - in - chief may make necessary inquiry
to  determine  whether  an  attorney  or  agent  should  be
disqualified from representing a party in an interference.
If an examiner - in - chief is of the opinion that an
attorneyor agent should be disqualified, the examiner - in -
chief shall refer the matter to the Commissioner. The
Commissioner will make a final decision as to whether any
attorney or agent should be disqualified.

 (d)  No attorney or agent of record in an interference
may withdraw as attorney or agent of record except with the
approval of an examiner - in - chief and after reasonable
notice to the party on whose behalf the attorney or agent
has appeared. A request to withdraw as attorney or agent of
record in an interference shall be made by motion ( §
1.635).

 Under 37 CFR 1.613(a), when a party has appointed more than
one attorney or agent of record, the party may be required
to designate a "lead" attorney or agent. A "lead" attorney
or agent is a registered attorney or agent of record who is
primarily responsible for prosecuting an interference on
behalf of a party and is the individual whom an examiner -
in - chief can contact to set times and take other action in
the interference. 37 CFR 1.613(b) continues the practice of
not permitting the same attorney or agent to represent two
or more parties in an interference except as permitted by
Chapter 1; see, for example, 37 CFR 1.344. Under 37 CFR
1.613(c), an examiner - in - chief can make an appropriate
inquiry to determine whether an attorney or agent should be
disqualified from representing a party. A final decision to
disqualify an attorney or agent is made by the Commissioner
under 35 U.S.C. 32.

2314  Jurisdiction Over Interference

 37 CFR 1.614.  Jurisdiction over interference.

 (a)  The  Board  shall  assume  jurisdiction  over  an
interference when the interference is declared under §
1.611.

 (b)  When the interference is declared the interference
is a contested case within the meaning of 35 U.S.C. 24.

 (c)  The examiner shall have jurisdiction over any
pending application until the interference is declared. An
examiner - in - chief, where appropriate, may for a limited
purpose  restore  jurisdiction  to  the  examiner  over  any
application involved in the interference.

 37 CFR 1.614 specifies when the Board gains jurisdiction
over an interference. The section also indicates when an
interference becomes a contested case within the meaning of
35 U.S.C. 24. A remand to the examiner is authorized and may
be useful in certain situations, such as, when a party moves

under 37 CFR 1.633(c) to add a proposed count which is
broader than any count in an interference. Alternatively, an
examiner - in - chief can obtain informal opinions from
examiners during the course of an interference. Nothing in
the  rules,  however,  is  intended  to  authorize  informal
conferences between an examiner - in - chief and an examiner
with respect to the merits of an application before the
Board in an ex parte appeal from an adverse decision of the
examiner.

 Where an interference is declared, all questions involved
therein are to be determined inter partes . This includes
not only the question of priority of invention but all
questions relative to the patentability to each of the
parties of the claims in issue or of any claim suggested to
be added to the issue.

 Examiners are admonished that inter parte s questions
should not be discussed  ex parte with any of the interested
parties and that they should so inform applicants or their
attorneys if any attempt is made to discuss  ex parte these
inter parte questions.

 The interference is declared when the examiner - in - chief
mails the notices of interference to the parties. The
interference is thus technically pending before the Board of
Patent Appeals and Interferences from the date on which the
notices are mailed, and from that date the files of the
various applications set out in the notices are opened to
inspection by the other parties to the extent provided in 37
CFR 1.612.

 Obvious minor errors in the counts or corresponding claims
of an application may be corrected by the examiner - in -
chief before the declaration notices are mailed. The changes
will be made in red ink and initialled in the margin by the
examiner - in - chief.

  Throughout  the  interference,  the  interference  and
application files involved are in the keeping of the Service
Branch of the Board except at such times that action is
required, such as for concurrent prosecution, when they are
temporarily in possession of the tribunal before whom the
particular question is pending.

 If, independent of the interference, action as to one or
more of the applications becomes necessary, the examiner
should consult the examiner - in - chief in charge of the
interference.

 The examiner merely borrows a patent file, if needed, as
where the patent is to be involved in a new interference.

2315  Suspension of Ex Parte Prosecution

 37 CFR 1.615.  Suspension of ex parte prosecution.

 (a)  When  an  interference  is  declared,  ex  parte
prosecution of an application involved in the interference
is suspended. Amendments and other papers related to the
application received during pendency of the  interference
will not be entered or considered in the interference
without the consent of an examiner - in - chief.

 (b)  Ex parte prosecution as to specified matters may be

continued concurrently with the interference with consent of
the examiner - in - chief.

 The treatment of amendments filed during an interference is
considered in detail in MPEP § 2364.

 Ex parte prosecution of an appeal under 37 CFR 1.191 may
proceed  concurrently  with  an  interference  proceeding
involving the same application with the consent of the
examiner - in - chief provided the primary examiner who
forwards the appeal certifies, in a memorandum to be placed
in the file, that the subject matter of the interference
does not conflict with the subject matter of the appealed
claims. The approval of the examiner - in - chief in charge
of the interference must be obtained before undertaking any
concurrent prosecution of the application.

2315.01 Suspension - Overlapping Applications

 Where one of several applications of the same inventor or
assignee which contain overlapping claims gets into an
interfer ence, the prosecution of all the cases not in the
interference should be carried as far as possible, by
treating as prior art the counts of the interference and by
insisting on proper lines of division or distinction between
the applications. In some instances, suspension of action by
the Office cannot be avoided. See MPEP § 709.01.

 Where an application involved in an interference includes,
in addition to the subject matter of the interference, a
separate and divisible invention, prosecution of the second
invention may be had during the pendency of the interference
by filing a divisional application for the second invention
or by filing a divisional application for the subject matter
of the interference and moving to substitute the latter
divisional  application  for  the  application  originally
involved in the interference. However, the application for
the second invention may not be passed to issue if it
contains claims broad enough to dominate matter claimed in
the application involved in the interference.

¶ 11.16  Rejection Based on Count of an Interference

 The rejection of claim [1] above based upon count [2] of
interference No. [3], to which applicant is a party, is a
provisional rejection for the purpose of resolving all
remaining  issues  in  this  application.  The  provisional
assumption that the count is prior art under 35 U.S.C.
102(g) against this application may or may not be true, and
prosecution in this case will be suspended pending final
determination of priority in the interference if and when no
other issues remain.

 Examiner Note:

 1.  This paragraph must follow all rejections under 35
U.S.C. 102 or 103 using the count of an interference as
prior art.

 2.  This paragraph is applicable only to an application
that is commonly owned by a party in the interference but is
not involved in the interference.

¶ 11.17  Suspension of Prosecution Pending Outcome of
Interference

 The outcome of interference No. [1] has a material bearing
on the patentability of the claims in this application.
Prosecution in this application is SUSPENDED pending a final
judgment in the interference.

  Applicant  should  call  this  case  up  for  action  upon
termination of the interference.

 Examiner Note:

 This paragraph should only be used in an application that
is not in the interference but is commonly owned by one of
the parties thereto.

2316  Sanctions for Failure to Comply With Rules or Order

 37 CFR 1.616.  Sanctions for failure to comply with
rules or order.

 An examiner - in - chief or the Board may impose an
appropriate sanction against a party who fails to comply
with the regulations of this part or any order entered by an
examiner - in - chief or the Board. An appropriate sanction
may include among others entry of an order:

 (a)  Holding certain facts to have been established in
the interference;

 (b)  Precluding a party from filing a motion or a
preliminary statement;

 (c)  Precluding a party from presenting or contesting a
particular issue;

 (d)  Precluding a party from requesting, obtaining, or
opposing discovery; or

 (e)  Granting judgment in the interference.

 37 CFR 1.616 permits an examiner - in - chief or the Board
to impose appropriate sanctions against a party who fails to
comply with the rules or with an order entered in the
interference. Paragraphs (a) through (e) of 37 CFR 1.616 set
forth some of the possible sanctions which can be entered.
The particular sanction to be entered will depend on the
facts of a given case and ordinarily will not be entered
prior to giving the affected party an opportunity to present
its views. An individual examiner - in - chief cannot impose
a sanction granting judgment inasmuch as entry of a judgment
requires action by the Board. See 37 CFR 1.610(a). A party
desiring sanctions imposed against an opponent can move
under 37 CFR 1.635 for entry of an order imposing sanctions.

 For examples of cases where sanctions are warranted, see
Woods v. Tsuchiya, 207 USPQ 228 (Comm'r Pat. 1979) and T
ezel v.  Bellantoni , 188 USPQ 688 (Bd. Pat. Int. 1975).

2317  Summary Judgment Against Applicant

 37 CFR 1.617.  Summary judgment against applicant.

 (a)  An examiner - in - chief shall review any evidence
filed by an applicant under § 1.608(b) to determine if the
applicant is prima facie entitled to a judgment relative to

the patentee. If the examiner - in - chief determines that
the evidence shows the applicant is  prima facie entitled to
a judgment relativeto the patentee, the interference shall
proceed in the normal manner under the regulations of this
part. If in the opinion of the examiner - in - chief the
evidence fails to show that the applicant is  prima facie
entitled  to  a  judgment  relative  to  the  patentee,  the
examiner - in - chief shall, concurrently with the notice
declaring the interference, enter an order stating the
reasons for the opinion and directing the applicant, within
a time set in the order, to show cause why summary judgment
should not be entered against the applicant.

 (b)  The applicant may file a response to the order and
state  any  reasons  why  summary  judgment  should  not  be
entered. Any request by the applicant for a hearing before
the Board shall be made in the response. Additional evidence
shall not be presented by the applicant or considered by the
Board  unless  the  applicant  shows  good  cause  why  any
additional evidence was not initially presented with the
evidence filed under § 1.608(b). At the time an applicant
files a response, the applicant shall serve on each opponent
a copy of any evidence filed under § 1.608(b) and this
paragraph.

 (c)  If a response is not timely filed by the applicant,
the Board shall enter a final decision granting summary
judgment against the applicant.

 (d)  If a response is timely filed by the applicant, all
opponents may file a statement within a time set by the
examiner - in - chief. The statement may set forth views as
to why summary judgment should be granted against the
applicant, but the statement shall be limited to discussing
why all the evidence presented by the applicant does not
overcome the reasons given by the examiner - in - chief for
issuing the order to show cause. Evidence shall not be filed
by any opponent. An opponent may not request a hearing.

 (e)  Within a time authorized by the examiner - in -
chief, an applicant may file a reply to any statement filed
by any opponent.

 (f)  When more than two parties are involved in an
interference,  all  parties  may  participate  in  summary
judgment proceedings under this section.

 (g)  If a response by the applicant is timely filed, the
examiner - in - chief or the Board shall decide whether the
evidence submitted under § 1.608(b) and any additional
evidence properly submitted under paragraph (b) of this
section shows that the applicant is prima facie entitled to
a judgment relative to the patentee. If the applicant is not
prima facie entitled to a judgment relative to the patentee,
the Board shall enter a final decision granting summary
judgment against the applicant. Otherwise, an interlocutory
order shall be entered authorizing the interference to
proceed in the normal manner under the regulations of this
subpart.

 (h)  Only an applicant who filed evidence under §
1.608(b) may request a hearing. If that applicant requests a
hearing, the Board may hold a hearing prior to entry of a
decision under paragraph (g) of this section. The examiner -
in - chief shall set a date and time for the hearing. Unless

otherwise ordered by the examiner - in - chief or the Board,
the applicant and any opponent will each be entitled to no
more than 30 minutes of oral argument at the hearing.

 37 CFR 1.617 provides for summary judgment proceedings in
those cases where a junior party applicant is required to
file evidence and an explanation under 37 CFR 1.608(b). To
avoid summary judgment, the junior party applicant must
establish that it is prima facie entitled to judgment
relative to the senior party patentee. For the most part,
practice under 37 CFR 1.617 will be the same as the previous
practice under 37 CFR 1.228. The major changes from the
previous practice are the following:

  (1) A  prima  facie  case  can  be  based  on
patentability as well as priority .

  (2) A  stricter  standard  will  be  imposed  for
presenting additional evidence after entry of an order to
show cause. Under previous practice (37 CFR 1.228, now
deleted), additional evidence could be submitted with a
response to an order to show cause "when a showing in excuse
of ..[its] omission from the original" showing is made. The
"good cause" showing required by 37 CFR 1.617(b) imposes a
stricter standard than was required under the prior rules.
The stricter standard is considered necessary in order to
encourage applicants copying claims from a patent to better
prepare the initial showings under 37 CFR 1.608(b). Under
previous practice, the Board of Patent Interferences found
that substantial time was lost in issuing orders to show
cause based on an inadequate initial showing only to have an
adequate showing made with the response to the order to show
cause. Under the "good cause" standard, ignorance by a party
or counsel of the provisions of the rules or the substantive
requirements of the law will not constitute good cause.

  (3)  When an interference involves more than two
parties, all opponents are permitted to participate in
summary  judgment  proceedings.  Thus,  the  revised  rules
overrule Chan v.  Akiba v.  Clayton , 189 USPQ 621 (Comm'r
Pat. 1975).

  (4)  Previously, an applicant had to file two
copies of its initial showing under 37 CFR 1.204(c). Under
37 CFR 1.608(b), a party need only file one copy of the
showing. However, any party responding to an order to show
cause must serve a copy of its initial showing under 37 CFR
1.608(b) with any response to the order to show cause.

  (5)  A single examiner - in - chief may order an
interference to proceed after issuance of an order to show
cause under 37 CFR 1.608(b) and the filing of a response by
an applicant under 37 CFR 1.617(b). Only the Board, however,
may enter summary judgment. See 37 CFR 1.617(b).

 Any opponent may attack the sufficiency of an applicant's
showing under 37 CFR 1.608(b) when that showing is presented
as  evidence  under  37  CFR  1.672.  In  summary  judgment
proceedings, all an applicant need do is make out a prima
facie case. If the interference is allowed to proceed in the
normal manner, the applicant must prove priority by a
preponderance of evidence (when the application and the
patent are copending) or beyond a reasonable doubt (when the
application was filed after the patent issued). Manifestly,
the burden in summary judgment proceedings is not as strict

as the burden in proceedings following summary judgment.
Brewer v.  DeMarinis , 558 F.2d 22, 28, 194 USPQ 308, 313
(CCPA 1977) and  Schwab v.  Pittman , 451 F.2d 637, 640, 172
USPQ 69, 71 (CCPA 1971).

 The second sentence of 37 CFR 1.617(d) is intended to make
clear that opponents may file statements in response to an
applicant's "response" but the statement "shall be limited
to  discussing  why  all  the  evidence  presented  by  the
applicant  does  not  overcome  the  reasons  given  by  the
examiner - in - chief for issuing the order to show cause."
The  PTO  does  not  intend  to  expand  summary  judgment
proceedings into a "mini - interference." An applicant
presents evidence under 37 CFR 1.608(b). If the examiner -
in - chief finds that evidence insufficient, an order to
show cause stating the reasons for the insufficiency is
issued. An applicant may respond and, if appropriate, file
"additional evidence." The PTO intends to be rather strict
in  permitting  the  filing  of  new  evidence.  After  the
applicant responds (with or without additional evidence),
any opponent may file a statement, the opponent should be
free  to  comment  on  all  the  evidence  (original  and
additional) which the applicant presents. Compare In re
Plockinger , 481 F.2d 1327, 179 USPQ 103 (CCPA 1973). Under
37 CFR 1.617(d) the opponent may not urge a rationale for
summary judgment which does not appear in the order to show
cause issued by the examiner - in - chief. However, it is
not the PTO's intent to interpret 37 CFR 1.617(d) in the
narrow manner the Court of Customs and Patent Appeals inter
preted 37 CFR 1.204(c) in  Kahl v.  Scoville , 609 F.2d 991,
995 - 996, 203 USPQ 652, 656 [headnote 6] (CCPA 1979). An
example will illustrate how the PTO intends to interpret 37
CFR 1.617(d).

 Example. An applicant copies claims from a patent and is
required to submit a showing under 37 CFR 1.608(b) Upon
review of the showing under 37 CFR 1.608(b), the examiner -
in - chief concludes that the showing fails to make out a
prima facie case of priority, because applicant has failed
to show an actual reduction to practice. Applicant files a
response and includes additional evidence which purports to
show an actual reduction to practice. The patentee then
files a statement in which two arguments are made.  First,
patentee argues that the additional evidence has not been
properly authenticated.  Second , patentee argues that even
if applicant has shown an actual reduction to practice,
summary  judgment  is  nevertheless  appropriate  because
applicant  suppressed  and  concealed  after  the  actual
reduction to practice. The first argument is proper, but the
second argument is not. A patentee may comment on the
sufficiency of the applicant's evidence. Fairness, however,
dictates that summary judgment be granted only after fair
notice in the order to show cause. Accordingly, summary
judgment will not be based on a rationale raised by a
patentee in a statement which does not correspond to the
rationale used by the examiner - in - chief in the order to
show cause.

  Once  summary  judgment  proceedings  have  concluded,  an
interference will proceed "in the normal manner." The change
is intended to codify the decisions in Walsh v.  Sakai , 167
USPQ 465 (Comm'r. Pat. 1967) and  Ing v.  Chiou , 207 USPQ
321 (Comm'r. Pat. 1979).

2318  Return of Unauthorized Papers

 37 CFR 1.618.  Return of unauthorized papers.

 (a)  The Patent and Trademark Office shall return to a
party any paper presented by the party when the filing of
the paper is not authorized by, or is not in compliance with
the requirements of, this subpart. Any paper returned will
not thereafter be considered by the Patent and Trademark
Office in the interference. A party may be permitted to file
a corrected paper under such conditions as may be deemed
appropriate by an examiner - in - chief.

 (b)  When presenting a paper in an interference, a party
shall not submit with the paper a copy of a paper previously
filed in the interference.

 Under 37 CFR 1.618, the PTO has authority to return to a
party any paper presented in an interference which is not
authorized by, or is not in compliance with the requirements
of, Subpart E of the Rules of Practice. When an improper
paper is filed, a party may be given an opportunity to file
a proper paper under such conditions as an examiner - in -
chief may deem appropriate. Two examples of improper papers
are: (1) replies to replies which are not authorized by the
rules and (2) papers presented which have attached thereto a
paper previously filed in the interference.

2321  Preliminary Statement, Time for Filing

 37 CFR 1.621.  Preliminary statement, time for filing,
notice of filing.

 (a)  Within the time set for filing preliminary motions
under § 1.633, each party may file a preliminary statement.
The preliminary statement may be signed by any individual
having knowledge of the facts recited therein or by an
attorney or agent of record.

 (b)  When a party files a preliminary statement, the
party shall also simultaneously file and serve on all
opponents in the interference a notice stating that a
preliminary  statement  has  been  filed.  A  copy  of  the
preliminary statement need not be served until ordered by
the examiner - in - chief.

 37 CFR 1.621 through 1.629 govern preliminary statements
which continue to be required in interference cases.

 Under 37 CFR 1.621, a preliminary statement can be signed
by an individual having knowledge of the facts (e.g., the
inventor) or by an attorney or agent of record. Permitting
an attorney or agent of record to sign a preliminary
statement eliminates unnecessary mailing of papers between
parties and their attorney or agent.

 A preliminary statement serves several useful purposes in
an interference: (1) it serves to limit a party's proofs as
to time, (2) it serves as a vehicle for permitting the
examiner - in - chief or the Board to issue orders to show
cause in those cases where it would be futile to take
testimony, and (3) it serves as notice to an opponent of the
case which is alleged by a party. Under the rules, the
issues which will be raised and decided by the Board at
final hearing are made known during the interlocutory stage
through (a) the preliminary statement, (b) motions under 37

CFR 1.633 and decisions thereon, and (c) notices under 37
CFR  1.632  of  a  party's  intent  to  argue  abandonment,
suppression, or concealment.

 The preliminary statements must be filed within the time
set for filing preliminary motions, and the opposing parties
notified of their filing. However, they are not served until
ordered by the examiner - in - chief after preliminary
motions (if any) have been decided.

 A preliminary statement cannot be transmitted by facsimile
(37 CFR 1.6(d)(9)).

2322  Preliminary Statement, Invention Made by Whom and
Where

 37 CFR 1.622.  Preliminary statement, who made
invention, where invention made.

 (a)  A party's preliminary statement must identify the
inventor who made the invention defined by each count and
must state on behalf of the inventor the facts required by
paragraph (a) of § 1.623, 1.624, and 1.625 as may be
appropriate. When an inventor identified in the preliminary
statement  is  not  an  inventor  named  in  the  party's
application or patent, the party shall file a motion under §
1.634 to correct inventorship.

 (b)  The preliminary statement shall state whether the
invention was made in the United States or abroad. If made
abroad, the preliminary statement shall state whether the
party is entitled to the benefit of the second sentence of
35 U.S.C. 104.

 Under 37 CFR 1.622, the preliminary statement must identify
the inventive entity who made the invention defined by each
count. If one of the inventors included in the inventive
entity identified in the preliminary statement is not an
inventor named in the application or patent involved in the
interference, a motion under 37 CFR 1.634 must be diligently
filed to correct the inventorship.

2323  Preliminary Statement; Invention Made in United
States

 37 CFR 1.623.  Preliminary statement; invention made in
United States.

 (a)  When the invention was made in the United States or
a party is entitled to the benefit of the second sentence of
35 U.S.C. 104, the preliminary statement must state the
following facts as to the invention defined by each count:

 (1)  The  date  on  which  the  first  drawing  of  the
invention was made.

 (2)  The date on which the first written description of
the invention was made.

 (3)  The date on which the invention was first disclosed
by the inventor to another person.

 (4)  The date on which the invention was first conceived
by the inventor.

 (5)  The date on which the invention was first actually
reduced to practice. If the invention was not actually
reduced to practice by or on behalf of the inventor prior to
the party's filing date, the preliminary statement shall so
state.

 (6)  The date after the inventor's conception of the
invention  when  active  exercise  of  reasonable  diligence
toward reducing the invention to practice began.

 (b)  If  a  party  intends  to  prove  derivation,  the
preliminary statement must also comply with § 1.625.

 (c)  When a party alleges under paragraph (a)(1) of this
section that a drawing was made, a copy of the first drawing
shall be filed with and identified in the preliminary
statement. When a party alleges under paragraph (a)(2) of
this section that a written description of the invention was
made, a copy of the first written description shall be filed
with and identified in the preliminary statement. See §
1.628(b) when a copy of the first drawing or written
description cannot be filed with the preliminary statement.

 37 CFR 1.623, 1.624, and 1.625, respectively, set out the
allegations which should be made in and the attachments
which should accompany, a preliminary statement when (1) the
invention was made in the United States, (2) the invention
was made abroad and was introduced into the United States,
and (3) derivation by an opponent from a party is to be an
issue.

2324  Preliminary Statement, Invention Made Abroad

 37 CFR 1.624.  Preliminary statement; invention made
abroad.

 (a)  When the invention was made abroad and a party
intends to rely on introduction of the invention into the
United States, the preliminary statement must state the
following facts as to the invention defined by each count.

  (1) The date on which a drawing of the invention was
first introduced into the United States.

 (2)  The date on which a written description of the
invention was first introduced into the United States.

 (3)  The date on which the invention was first disclosed
to another person in the United States.

 (4)  The date on which the inventor's conception of the
invention was first introduced into the United States.

 (5)  The date on which an actual reduction to practice
of the invention was first introduced into the United
States. If an actual reduction to practice of the invention
was not introduced into the United States, the preliminary
amendment shall so state.

 (6)  The date after introduction of the inventor's
conception into the United States when active exercise of
reasonable diligence in the United States toward reducing
the invention to practice began.

 (b)  If  a  party  intends  to  prove  derivation,  the

preliminary statement must also comply with § 1.625.

 (c)  When a party alleges under paragraph (a)(1) of this
section that a drawing was introduced into the United States
a copy of that drawing shall be filed with and identified in
the  preliminary  statement.  When  a  party  alleges  under
paragraph (a)(2) of this section that a written description
of the invention was introduced into the United States a
copy of that written description shall be filed with and
identified in the preliminary statement. See § 1.628(b) when
a copy of the first drawing or first written description
introduced in the United States cannot be filed with the
preliminary statement.

 Brewer v.  DeMarinis , 558 F.2d 22, 194 USPQ 308 (CCPA
1971), illustrates a case where an actual reduction to
practice abroad was introduced into the United States.

2325  Preliminary Statement, Derivation by an Opponent

 37 CFR 1.625.  Preliminary statement; derivation by an
opponent.

 (a)  When the invention was made in the United States or
abroad and a party intends to prove derivation by an
opponent from the party, the preliminary statement must
state the following as to the invention defined by each
count:

 (1)  The name of the opponent.

 (2)  The  date  on  which  the  first  drawing  of  the
invention was made.

 (3)  The date on which the first written description of
the invention was made.

 (4)  The date on which the invention was first disclosed
by the inventor to another person.

 (5)  The date on which the invention was first conceived
by the inventor.

 (6)  The  date  on  which  the  invention  was  first
communicated to the opponent.

 (b)  If  a  party  intends  to  prove  priority,  the
preliminary statement must also comply with § 1.623 or §
1.624.

 (c)  When a party alleges under paragraph (a)(2) of this
section that a drawing was made, a copy of the first drawing
shall be filed with and identified in the preliminary
statement. When a party alleges under paragraph (a)(3) of
this section that a written description of the invention was
made, a copy of the first written description shall be filed
with and identified in the preliminary statement. See §
1.628(b) when a first drawing or first written description
cannot be filed with the preliminary statement.

 A party does not have to allege derivation in a preliminary
statement where the party does not know derivation occurred
until the testimony period. 37 CFR 1.625 requires a party to
file a preliminary statement when derivation is an issue. If
derivation is not known or discovered prior to the date the

preliminary statement is due, a party must move to amend the
preliminary statement and allege derivation promptly after
existence of derivation is discovered.

2326  Preliminary Statement, Earlier Application

 37 CFR 1.626.  Preliminary statement; earlier
application.

 When a party does not intend to present evidence to prove a
conception or an actual reduction to practice and the party
intends to rely solely on thefiling date of an earlier
application filed in the United States or abroad to prove a
constructive  reduction  to  practice,  the  preliminary
statement may so state and identify the earlier application
with particularity.

 37 CFR 1.626 permits a party to file a preliminary
statement which states that the party only intends to rely
on the filing date of an earlier United States or foreign
application. Ordinarily, a junior party who fails to file a
preliminary statement is not entitled to access to any other
preliminary statement filed (see 37 CFR 1.631(b)). 37 CFR
1.626 permits a junior party who only intends to rely on an
earlier  application  to  have  access  to  any  opponent's
preliminary statement.

2327  Preliminary Statement, Sealing and Opening

 37 CFR 1.627.  Preliminary statement, sealing before
filing, opening of statement.

 (a)  The preliminary statement and copies of any drawing
or written description shall be filed in a sealed envelope
bearing only the name of the party filing the statement and
the  style  (e.g.,  Jones  v.  Smith)  and  number  of  the
interference. The sealed envelope should contain only the
preliminary statement and copies of any drawing or written
description. If the preliminary statement is filed through
the mail, the sealed envelope should be enclosed in an outer
envelope  addressed  to  the  Commissioner  of  Patents  and
Trademarks in accordance with § 1.1(e).

 (b)  A preliminary statement may be opened only at the
direction of an examiner - in - chief.

2328  Preliminary Statement, Correction of Error

 37 CFR 1.628.  Preliminary statement, correction of
error.

 (a)  A material error arising through inadvertence or
mistake in connection with (1) a preliminary statement or
(2) drawings or a written description submitted therewith or
omitted therefrom, may be corrected by a motion ( § 1.635)
for leave to file a corrected statement. The motion shall be
supported by an affidavit and shall show that the correction
is essential to the ends of justice and shall be accompanied
by the corrected statement. The motion shall be filed as
soon as practical after discovery of the error.

 (b)  When a party cannot attach a copy of a drawing or a
written description to the party's preliminary statement as
required by § 1.623(c), 1.624(c), or 1.625(c), the party (1)
shall  show  good  cause  and  explain  in  the  preliminary

statement why a copy of the drawing or written description
cannot be attached to the preliminary statement and (2)
shall attach to the preliminary statement the earliest
drawing or written description made in or introduced into
the United States which is available. The party shall file a
motion  (  §  1.635)  to  amend  its  preliminary  statement
promptly after the first drawing, first written description,
or drawing or written description, first introduced into the
United States becomes available. A copy of the drawing or
written description may be obtained, where appropriate, by a
motion ( § 1.635) for additional discovery under § 1.687 or
during a testimony period.

 37 CFR 1.628 sets out how an error in a preliminary
statement may be corrected.

 37 CFR 1.628(b) covers the possibility that a drawing might
not be available, e.g., a drawing destroyed in "a fire." 37
CFR 1.628(b) permits a party to allege a date when a first
drawing or a first written description was made in those
circumstances where the first drawing or first written
description is not available. The party is required (1) to
show good cause and explain in the preliminary statement why
a copy of the drawing or written description cannot be
attached to the preliminary statement and (2) attach to the
preliminary  statement  the  earliest  drawing  or  written
description made in or introduced into the United States
which is available. The party is also required to file a
motion to amend its preliminary statement promptly after the
drawing or written description becomes available. It is the
PTO's intent by the amendment to 37 CFR 1.628(b) to overrule
the holding of headnote [1] of Reddy v.  Davis , 187 USPQ
386, 388 (Comm'r. Pat. 1975).

2329  Preliminary Statement, Effect of

 37 CFR 1.629.  Effect of preliminary statement.

 (a)  A party shall be strictly held to any date alleged
in the preliminary statement. Doubts as to (1) definiteness
or sufficiency of any allegation in a preliminary statement
or (2) compliance with formal requirements will be resolved
against the party filing the statement by restricting the
party to the earlier of its filing date or effective filing
date or to the latest date of a period alleged in the
preliminary statement as may be appropriate. A party may not
correct a preliminary statement except as provided in §
1.628.

 (b)  Evidence which shows that an act alleged in the
preliminary statement occurred prior to the date alleged in
the statement shall establish only that the act occurred as
early as the date alleged in the statement.

 (c)  If a party does not file a preliminary statement,
the party:

 (1)  Shall be restricted to the earlier of the party's
filing date or effective filing date and

 (2)  Will not be permitted to prove that:

  (i) The party made the invention prior to the party's
filing date or

  (ii) Any opponent derived the invention from the party.

 (d)  If a party files a preliminary statement which
contains an allegation of a date of first drawing or first
written description and the party does not file a copy of
the  first  drawing  or  written  description  with  the
preliminary statement as required by § 1.623(c), § 1.624(c),
or § 1.625(c), the party will be restricted to the earlier
of the party's filing date or effective filing date as to
that allegation unless the party com plies with § 1.628(b).
The content of any drawing or written description submitted
with a preliminary statement will not normally be evaluated
or considered by the Board.

 (e)  A preliminary statement shall not be used as
evidence on behalf of the party filing the statement.

  37  CFR  1.629  sets  out  the  effect  of  a  preliminary
statement. A party who fails to file a preliminary statement
will not be permitted to prove (1) that the party made the
invention defined by the count prior to the party's filing
date or (2) that an opponent derived the invention from the
party.

2330  Reliance on Earlier Application

 37 CFR 1.630.  Reliance on earlier application.

 A party shall not be entitled to rely on the filing date of
an earlier application filed in the United States or abroad
unless  (a)  the  earlier  application  is  identified  (  §
1.611(c)(5)) in the notice declaring the in terference or
(b) the party files a preliminary motion under § 1.633
seeking the benefit of the filing date of the earlier
application.

2331  Preliminary Statement Access

 37 CFR 1.631.  Access to preliminary statement, service
of preliminary statement.

 (a)  Unless otherwise ordered by an examiner - in -
chief, concurrently with entry of a decision by the examiner
- in - chief on preliminary motions filed under § 1.633, any
preliminary statement filed under § 1.621(a) shall be opened
to inspection by the senior party and any junior party who
filed a preliminary statement. Within a time set by the
examiner - in - chief, a party shall serve a copy of its
preliminary statement on each opponent who served a notice
under § 1.621(b).

 (b)  A junior party who does not file a preliminary
statement shall not have access to the preliminary statement
of any other party.

 (c)  If  an  interference  is  terminated  before  the
preliminary statements have been opened, the preliminary
statements will remain sealed and will be returned to the
respective parties who submitted the statements.

 Under 37 CFR 1.631, preliminary statements normally will be
opened for inspection when an examiner - in - chief decides
preliminary motions filed under 37 CFR 1.633. A junior party
who does not file a preliminary statement is not entitled to
access to a preliminary statement of any other party. When

an interference is terminated before preliminary statements
are opened, any preliminary statement which has been filed
will be returned unopened to the party who submitted the
statement. The rules do not require all parties to file a
preliminary statement. If a junior party does not file a
preliminary statement, it will be denied access to any other
preliminary  statement  which  is  filed.  A  senior  party,
however, is always entitled to access to any preliminary
statement filed by a junior party. See 37 CFR 1.631(b).
However, a junior party is only required to serve a senior
party who files a statement.

2332  Abandonment, Suppression, or Concealment To Be
Argued

 37 CFR 1.632.  Notice of intent to argue abandonment,
suppression or concealment by opponent.

 A notice shall be filed by a party who intends to argue
that an opponent has abandoned, suppressed, or concealed an
actual reduction to practice (35 U.S.C. 102(g)). A party
will not be permitted to argue abandonment, suppression, or
concealment by an opponent unless the notice is timely
filed. Unless authorized otherwise by an examiner - in -
chief, a notice is timely when filed within ten (10) days of
the close of the testimony - in - chief of the opponent.

 Under 37 CFR 1.632, a notice must be filed by a party who
intends to argue that an opponent abandoned, suppressed, or
concealed an actual reduction to practice, 35 U.S.C. 102(g).
A party will not be permitted to brief (37 CFR 1.656) or
argue at final hearing (37 CFR 1.654) that an opponent
abandoned, suppressed, or concealed an actual reduction to
practice unless the notice is timely filed. A notice is
timely if filed within ten (10) days after the close of the
testimony - in - chief period of an opponent. While a party
has the burden of proving that an opponent abandoned,
suppressed, or concealed, the burden may be discharged on
the basis of the opponent's evidence alone, Shindelar v.
Holdeman , 628 F.2d 1337, 207 USPQ 112 (CCPA 1980). See also
Correge v.  Murphy , 705 F.2d 1326, 217 USPQ 753 (Fed. Cir.
1983);  Horwath v.  Lee,564 F.2d 948, 195 USPQ701 (CCPA
1977); and  Peeler v.  Miller , 535 F.2d 647, 190 USPQ 117
(CCPA 1976). Under previous practice where notice was not
required, it was possible that a party might learn for the
first time that abandonment, suppression, or concealment was
an issue when the party received an opponent's brief at
final hearing. See  Klug v.  Wood , 212 USPQ 767, 771 n. 2
(Bd. Pat. Int. 1981). At that point, it was often too late
to reopen proceedings in an interference. The purpose of
requiring the notice under 37 CFR 1.632 is to make the
parties and the Board aware during the interlocutory stage
of  an  interference  that  abandonment,  suppression,  or
concealment may be an issue in the interference. Early
notice permits the parties to ask for and the examiner - in
- chief to set appropriate testimony periods for a party to
present evidence related to abandonment, suppression, and
concealment,  particularly  in  those  cases  where  long
unexplained  delays  tend  to  prove  the  allegation  of
suppression or concealment. Early notice also eliminates the
need for the party moving to reopen the testimony period,
Klug v.  Wood, supra.

2333  Preliminary Motions

 37 CFR 1.633.  Preliminary motions.

 A party may file the following preliminary motions:

 (a)  A motion for judgment on the ground that an
opponent's claim corresponding to a count is not patentable
to the opponent. In determining amotion filed under this
paragraph, a claim may be construed by reference to the
prior art of record. A motion under this paragraph shall not
be based on: (1) priority of invention of the subject matter
of a count by the moving party as against any opponent or
(2) derivation of the subject matter of a count by an
opponent from the moving party. See § 1.637(a).

 (b)  A motion for judgment on the ground that there is
no interference - in - fact. A motion under this paragraph
is proper only if: (1) The interference involves a design
application or patent or a plant application or patent or
(2) no claim of a party which corresponds to a count is
identical to any claim of an opponent which corresponds to
that count. See § 1.637(a).

 (c)  A motion to redefine the interfering subject matter
by (1) adding or substituting a count, (2) amending an
application claim corresponding to a count or adding a claim
in the moving party's application to be designated to
correspond to a count, (3) designating an application or
patent claim to correspond to a count, (4) designating an
application or patent claim as not corresponding to a count,
or (5) requiring an opponent who is an applicant to add a
claim and to designate the claim to correspond to a count.
See § 1.637(a) and (c).

 (d) A motion to substitute a different application owned by
a party for an application involved in the interference. See
§ 1.637(a) and (d).

 (e)  A motion to declare an additional interference (1)
between  an  additional  application  not  involved  in  the
interference  and  owned  by  a  party  and  an  opponent's
application  or  patent  involved  in  the  interference  or
(2)when an interference involves three or more parties,
between less than all applications and any patent involved
in the interference. See § 1.637(a) and (e).

 (f)  A motion to be accorded the benefit of the filing
date of an earlier application filed in the United States or
abroad. See § 1.637(a) and (f).

 (g)  A motion to attack the benefit accorded an opponent
in the notice declaring the interference of the filing date
of an earlier application filed in the United States or
abroad. See § 1.637(a) and (g).

 (h)  When a patent is involved in an interference and
the patentee has on file or files an application for reissue
under § 1.171, a motion to add the application for reissue
to the interference. See § 1.637(a) and (h).

 (i)  When a motion is filed under paragraph (a), (b), or
(g) of this section, an opponent, in addition to opposing
the motion, may file a motion to redefine the interfering
subject matter under paragraph (c) of this section or a
motion to substitute a different application under paragraph
(d) of this section.

 (j)  When a motion is filed under paragraph (c)(1) of
this section an opponent, in addition to opposing the
motion, may file a motion for benefit under paragraph (f) of
this section as to the count to be added or substituted.

 Under 37 CFR 1.633, a party may file preliminary motions
for judgment to redefine the interference, to substitute a
different application in the interference, to declare an
additional interference, to be accorded the benefit of an
earlier application, to attack benefit previously accorded
an  opponent,  or  to  add  a  reissue  application  to  an
interference. The motions are called "preliminary motions"
in order to distinguish the motions from other motions which
might be filed during the course of an interference. The
preliminary motions replace motions authorized by former 37
CFR 1.231, now deleted.

 It was particularly important, under previous practice, to
review one's proofs in advance and bring such motions under
37 CFR 1.231 as might be necessary to conform the counts to
the proofs and to avoid post - interference estoppel. See
Torchin, The Pitfall of Interference Practice : 37 CFR
1.231. 60 J.P.O.S. 579 (1978). Close attention to the
preliminary motions is even more necessary under the new
rules, in view of the more stringent estoppel provisions
imposed by 37 CFR 1.658(c), discussed below in the "Final
Hearing" section.

 Under 37 CFR 1.633(a), a party can file a motion for jud
gment on the ground that an opponent's claim corresponding
to a count is unpatentable to the opponent. With two e
xceptions, unpatentability can be based on prior art (35
U.S.C. 102, 103), insufficiency of disclosure (35 U.S.C.
112, first paragraph), indefiniteness of claims (35 U.S.C.
112, second paragraph), double patenting, estoppel, or any
other ground which would support a holding that claims
corresponding  to  a  count  are  not  patentable.  The  two
exceptions are (1) priority of invention of the subject
matter of a count by the moving party as against any
opponent and (2) derivation of the subject matter of a count
by the opponent from the moving party. The two exceptions
are directed to issues which are traditional "priority"
issues; e.g., which inventor made the invention defined by a
count first or, when derivation is an issue, who made the
invention. Resolution of those "priority" issues almost
always requires the taking of testimony. A motion for
judgment, however, is proper when a party believes an
individual  not  involved  in  the  interference  made  the
invention defined by the count prior to an opponent in the
interference, but subsequent to the moving party. Thus, a
patentability issue, such as that raised under 35 U.S.C.
102(g) in Sutter Products Co. v. Pettibone Mulliken Corp.
428 F.2d 639, 166 USPQ 100 (7th Cir. 1970), can properly be
raised with a motion for judgment under 37 CFR 1.633(a).
Derivation by an opponent from an individual not involved in
the interference can also be raised under 37 CFR 1.633(a).

 Under 37 CFR 1.633(b), a party can move for a judgment when
the party believes there is no interference - in - fact. A
motion for judgment on the ground of no interference - in -
fact is only proper under one of three conditions: (1) when
an interference involves designs, (2) when the interference
involves plant applications or a plant application and plant
patent, or (3) when no claim of a party which corresponds to

a count is identical to any claim of an opponent which
corresponds to that count. An example illustrates when a
motion under 37 CFR 1.633(b) is proper.

 Example 1 . Application AD contains patentable claim 1 (6 -
cylinder engine). Application AE contains patentable claim 3
(8 - cylinder engine). An interference is declared with a
single count (6 - or 8 - cylinder engine). Claim 1 of
application AD and claim 3 of application AE are designated
to correspond to the count. Applicant AD believes that a 6 -
cylinder engine is a "separate patentable invention" (see 37
CFR 1.601(n)) from an 8 - cylinder engine. Applicant AD can
file a motion under 37 CFR 1.633(b) for a judgment on the
ground of no interference - in - fact stating why a 6 -
cylinder engine is patentably distinct from an 8 - cylinder
engine. If the Board ultimately agrees with applicant AD, a
patent can issue to AD containing  claim 1 of application AD
and a second patent can issue to AE containing claim 3 of
application AE.

 Under 37 CFR 1.633(c), a party may move to redefine
interfering subject matter. One way to redefine interfering
subject matter is to add or substitute a count. When a party
seeks to add a count, the party is required to demonstrate
that the proposed count to be added is directed to a
"separate patentable invention" from every other count in
the interference.

 A motion may be filed to amend an application claim which
has already been designated to correspond to a count. See 37
CFR 1.633(c)(2). Such a motion may be filed when a party
believes an application claim designated to correspond to a
count is unpatentable and the amended claim is believed to
be patentable.

 An applicant may move to add a claim to the applicant's
application and to designate the claim to be added to
correspond to a count. See 37 CFR 1.633(c)(2). Such a motion
may be filed when the applicant discloses specific subject
matterwhich is not claimed, wants to claim the subject
matter,  and  have  the  subject  matter  involved  in  the
interference.

 Another way to redefine interfering subject matter is to
designate a claim as corresponding or not corresponding to a
count. See 37 CFR 1.633(c)(3) and (c)(4). The following
examples illustrate this later point.

 Example 2. Application AF contains patentable claim 1
(engine). Patent K contains claims 3 (engine) and 5 ( 6 -
cylinder engine). Claim 1 of application AF and claim 3 of
patent  K  are  designated  to  correspond  to  the  count.
Applicant AF believes a 6 - cylinder is the "same patentable
invention" (see 37 CFR 1.601(n)) as engine. Applicant AF can
file a motion under 37 CFR 1.633(c)(3) to designate claim 5
of patent K as corresponding to the count. If the motion is
granted and applicant AF prevails in the interference,
judgment will be entered against patentee K and both claims
3 and 5 of patent K will be cancelled under 35 U.S.C.
135(a).

 Example 3. Application AG contains patentable claim 1
(engine). Patent L contains claim 3 (engine) and 5 (8 -
cylinder engine). An interference is declared with one count
(engine). Claim 1 of application AG and claims 3 and 5 of

patent L are designated to correspond to the count. Patentee
L believes that an 8 - cylinder engine defines a "separate
patentable invention" (see 37 CFR 1.601(n)) from engine.
Patentee L should file a motion under 37 CFR 1.633(c)(4) to
designated claim 5 of patent L as "not corresponding" to the
count. If the motion is granted and an adverse judgment is
entered against patentee L, only claim 3 will be cancelled
from the patent pursuant to 35 U.S.C. 135(a).

 A motion to redefine the interfering subject matter may
also request that an opponent who is an applicant be
required to add a claim to the opponent's application and to
designate the claim to correspond to a count. See 37 CFR
1.633(c)(5). Such a motion may be filed when a party sees
that the opponent discloses, but does not claim, subject
matter which the party believes should be involved in the
interference.

 37 CFR 1.633(i) continues the previous practice (from 37
CFR 1.231) of allowing a party to move to redefine the
subject matter of the interference or substitute a different
application when an opponent moves for judgment (see 37 CFR
1.633(a)  and  (b))  or  to  attack  benefit  (see  37  CFR
1.633(g)).

 Paragraph (j) of 37 CFR 1.633 permits an opponent to move
for benefit when a party moves to add or substitute a count.
Thus, when a motion to add a count is filed by a party and
an opponent wants benefit of an earlier application in the
event the motion to add is granted, the opponent should file
a motion under 37 CFR 1.633(j) to be accorded benefit. The
mere fact that the opponent had been accorded benefit of an
earlier application when the interference was declared does
not mean the opponent will be accorded benefit as to some
other count which may be added on motion of some other
party.

 37 CFR 1.633(e) adopts the estoppel rule approved by the
Court of Customs and Patent Appeals in Avery v.  Chase , 101
F.2d 205, 40 USPQ 343 (CCPA 1939),  cert. denied , 307 U.S.
638 (1939).

 The following comment by the CCPA in its opinion in In re
Shimer , 69 F.2d 556, 558, 21 USPQ 161, 163 (CCPA 1934),
accurately expresses the intent of the PTO in promulgating
37 CFR 1.633(e) and 1.658(c):

 "It may be stated that this rule works no hardship on him
who  is  diligent  in  pursuit  of  his  rights.  When  an
interference is declared, the files of his contestants are
open to him. He has full cognizance of their disclosures and
claims. So advised, it becomes his duty to put forward every
claim he has. [37 CFR 1.633(e)] . . affords him the
opportunity. If the rule be not enforced or enforceable,
then delays and litigation are greatly increased. It is
quite obvious that the doctrine of estoppel, as applied in
these cases, results in the better conduct of the business
of the Patent [and Trademark] Office and in the public
good."

 If a party believes that an opponent has committed "fraud"
or has engaged in "inequitable conduct," the party may file
a motion under 37 CFR 1.633(a) for judgment on the basis of
"fraud" or "inequitable conduct" and must make out a case by
clear and convincing evidence. The examiner - in - chief has

sufficient authority under the rules to preclude a party
from proceeding in an interference on a baseless charge of
"fraud"  or  "inequitable  conduct."  See  also  37  CFR
10.23(c)(18).

  Motion for Judgment, Prior Art Applicable to Movant

 When a party files a preliminary motion for judgment under
37 CFR 1.633(a) against an opponent in an interference on
the ground that the claim(s) corresponding to a count are
unpatentable over prior art, and, based upon the effective
filing date(s) of the application(s)/patent(s) involved in
the interference, the prior art would also be applicable to
the moving party, the following will apply:

 1.  The mere filing of the motionwillnot be construed
as an admission by the moving party [See Commissioner's
Notice of May 23, 1990, 1115 O.G. 31 (June 19, 1990),
discussing Winkler v.  Guglielmino , Appeal No. 89 - 1571
(Fed. Cir. May 9, 1990) (unpublished)].

 2.  When a motion for judgment based on unpatentability
over prior art is filed, the examiner - in - chief will
determine (i) whether the date(s) of the cited prior art are
such that it would on its face appear to apply to the moving
party, and (ii) if so, whether the motion includes an
explanation as to why the prior art would not be applicable
to  the  movant.  If  the  motion  does  not  contain  an
explanation, the examiner - in - chief will send a letter to
the moving party. The letter must:

 (a)  inform the movant that the prior art appears to be
applicable against the movant; (b) set a time period to
provide an explanation as to why the prior art does not
apply to the movant; (c) state that unless a sufficient
explanation (and evidence, if appropriate; e.g.,affidavit
under 37 CFR 1.132) is filed within the time set, the movant
will not be permitted to rely on any such explanation (and
evidence) in response to or in any subsequent action in the
interference.

 3.  If the movant provides no explanation, or an
insufficient explanation, as to why the cited prior art
would not apply to the movant, the examiner - in - chief
will determine whether or not the prior art cited in support
of the motion renders the count (claims corresponding to the
count)  unpatentable to the moving party as well as each of
the other parties. If the examiner - in - chief concludes
that the claims are unpatentable, an order to show cause
under 37 CFR 1.640 will be issued against all parties to
whom the prior art is applicable without regard to the dates
alleged in the preliminary statements. (The suggestion in
Goutzoulis v. Athale. 15 USPQ2d 1461 (Comm'r Pat. 1990)
that  a  preliminary  statement  might  be  considered  to
determine whether an order to show cause should be issued,
will not be followed.) Note that if the moving party
expressly  admits  that  the  prior  art  renders  his
corresponding claims unpatentable, the examiner - in - chief
must still determine whether the corresponding claims of the
other parties are unpatentable over that art.

 4.  In response to the order to show cause, the parties
have the options set forth in the Commissioner's Notice of
December 8, 1986, 1074 O.G. 4 (January 6, 1987), and/or may
move under 37 CFR 1.651(c)(4) for a testimony period, if

appropriate. However, the following should be noted:

 A.  If the party who filed the motion for judgment is
under the order to show cause, the party's showing and/or
request for testimony in response to the order to show cause
may not be based upon any reasons which could have been, but
were not, given in explanation of why the cited prior art
would not apply to the party.

 B.  If the prior art is not a statutory bar to a party
and the allegations in that party's preliminary statement,
if proven, would antedate the effective date(s) of the prior
art, an appropriate response to the order to show cause
would be a request to take testimony to antedate the prior
art, as well as to prove priority of invention.  If
applicable, this option may be specified in the order to
show cause.

 C.  A request for a testimony period to remove the
prior art based upon other reasons; e.g., inoperativeness of
a  reference,  unexpected  results,  etc.,  must  meet  the
criteria set forth in Hanagan v.  Kimura . Interference No.
102,150, 16 USPQ2d 1791 (Comm'r Pat. Apr. 5, 1990).

 D.  Even assuming corroboration, the evidence necessary
to antedate a reference is not necessarily the same as that
required to prove priority of invention. Cf .  Anderson v.
Norman  .  185  USPQ  371  (Comm'r  Pat.  1968).  Therefore,
depending on the circumstances, a request to take priority
testimony may not be adequate to cover taking testimony to
antedate the reference, and vice versa. Some examples of
such differences are:

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2333.01 Preliminary Motions - Related to Application Not
Involved in Interference

 Whenever a party in interference brings a motion under 37
CFR 1.633(d) or (e) concerning an application not already
included in the interference, the examiner - in - chief
should at once send the primary examiner a written notice of
such motion and the primary examiner should place this
notice in said application file.

 The notice is customarily sent to the examining group which
declared the interference since the application referredto
in the motion is generally examined in the same group.
However, if the application is not being examined in the
same group, then the correct examining group should be
ascertained and the notice forwarded to that group.

 This notice serves useful and essential purposes, and due
attention must be given to it by the examiner when it is
received. First, the examiner is cautioned by this notice
not to consider ex parte, questions which are pending before
the Office in inter partes proceedings involving the same
applicant or party in interest. Second, if the application
which isthe subject of the motion is in issue and the last
date for paying the issue fee will not permit determination
of  the  motion,  it  will  be  necessary  to  withdraw  the
application from issue. Third, if the application contains
an affidavit or declaration under 37 CFR 1.131 or 1.608,
this must be sealed because the opposing parties have access

to the application.

2333.02 Preliminary Motions - Benefit of Foreign Filing
Date

 If a request for the benefit of a foreign filing date under
35 U.S.C. 119 is filed while an application is involved in
interference, the papers are to be placed in the application
file in the same manner as amendments received during
interference,  and  appropriate  action  taken  after  the
termination of the interference.

 A party who desires to be accorded the benefit of a foreign
filing date which was not accorded in the declaration papers
should file a motion for benefit of that filing date under
37 CFR 1.633(f) and the matter will be considered on an
inter partes basis.

2334  Motions to Correct Inventorship

 37 CFR 1.634.  Motion to correct inventorship.

 A party may file a motion to (a) amend its application
involved in an interference to correct inventorship as
provided by § 1.48 or (b) correct inventorship of its patent
involved in an interference as provided in § 1.324. See §
1.637(a).

 37 CFR 1.634 authorizes a motion to correct inventorship in
an application (see 37 CFR 1.48) or a patent (see 37 CFR
1.324) involved in an interference .

 A party who wishes to change the named inventive entity of
its application or patent involved in an interference must
do so by way of a motion under 37 CFR 1.634. Such a motion
must be accompanied by the items required by 37 CFR 1.48 (in
the case of an application) or 37 CFR 1.324 (in the case of
a patent), and decided by the examiner - in - chief. If the
primary examiner becomes aware that papers under 37 CFR 1.48
or 1.324 have been filed in an application or patent,
respectively, involved in an interference, the examiner
should call them to the attention of the examiner - in -
chief in charge of the interference.

2335  Miscellaneous Motions

 37 CFR 1.635.  Miscellaneous motions.

 A party seeking entry of an order relating to any matter
other than a matter which may be raised under § 1.633 or
1.634 may file a motion requesting entry of the order. See §
1.637(a) and (b).

 37 CFR 1.635 authorizes the filing of motions other than
those specified in 37 CFR 1.633 or 1.634. Motions filed
under 37 CFR 1.635 will be referred to as "miscellaneous
motions" to distinguish from "preliminary motions" under 37
CFR 1.633. Instances where a miscellaneous motion can be
filed include motions to correct an error in a preliminary
statement, to extend time for taking action or to seek
judicial review, to obtain permission to proceed under 35
U.S.C. 24, or to obtain additional discovery.

2336  Time for Filing Motions

 37 CFR 1.636.  Motions, time for filing.

 (a)  A preliminary motion under § 1.633(a) through (h)
shall be filed within a time period set by an examiner - in
- chief.

 (b)  A preliminary motion under § 1.633(i) or (j) shall
be filed within 20 days of the service of the preliminary
motion  under  §  1.633(a),  (b),  (c)(1),  or  (g)  unless
otherwise ordered by an examiner - in - chief.

 (c)  A motion under § 1.634 shall be diligently filed
after an error is discovered in the inventorship of an
application or patent involved in an interference unless
otherwise ordered by an examiner - in - chief.

 (d)  A motion under § 1.635 shall be filed as specified
in this subpart or when appropriate unless otherwise ordered
by an examiner - in - chief.

 37 CFR 1.636 sets out the times within which a motion can
be filed.

 A party must exercise diligence in correcting inventorship.
Van Otteren v.  Hafner , 278 F.2d 738, 126 USPQ 151 (CCPA
1960).

2337  Motion Content

 37 CFR 1.637.  Content of motions.

 (a)  Every motion shall include (1) a statement of the
precise relief requested, (2) a statement of the material
facts in support of the motion, and (3) a full statement of
the reasons why the relief requested should be granted.

 (b)  A motion under § 1.635 shall contain a certificate
by the moving party stating that the moving party has
conferred with all opposing parties in an effort in good
faith to resolve by agreement the issues raised by the
motion. A moving party shall indicate in the motion whether
any other party plans to oppose the motion. The provisions
of this paragraph do not apply to a motion to suppress
evidence ( § 1.656(h)).

 (c)  A preliminary motion under § 1.633(c) shall explain
why the interfering subject matter should be redefined.

 (1)  A preliminary motion seeking to add or substitute a
count shall:

  (i) Propose each count to be added or substituted.

  (ii) When the moving party is an applicant, show the
patentability to the applicant of all claims in, or proposed
to be added to, the party's application which correspond to
each proposed count and apply the terms of

 the claims to the disclosure of the party's application;
when necessary a moving party applicant shall file with the
motion  an  amendment  adding  any  proposed  claim  to  the
application.

  (iii) Identify all claims in an opponent's application
which should be designated to correspond to each proposed

count; if an opponent's application does not contain such a
claim, the moving party shall propose a claim to be added to
the opponent's application. The moving party shall show the
patentability of any proposed claims to the opponent and
apply the terms of the claims to the disclosure of the
opponent's application.

  (iv) Designate the claims of any patent involved in the
interference which define the same patentable invention as
each proposed count.

  (v) Show that each proposed count defines a separate
patentable  invention  from  every  other  count  in  the
interference.

  (vi)  Be  accompanied  by  a  motion  under  §  1.633(f)
requesting the benefit of the filing date of any earlier
application filed in the United States or abroad.

 (2)  A  preliminary  motion  seeking  to  amend  an
application claim corresponding to a count or adding a claim
to be designated to correspond to a count shall:

  (i) Propose an amended or added claim.

  (ii) Show that the proposed or added claim defines the
same patentable invention as the count.

  (iii) Show the patentability to the applicant of each
amended or added claim and apply the terms of the amended or
added claim to the disclosure of the application; when
necessary a moving party applicant shall file with the
motion an amendment making the amended or added claim to the
application.

  (iv)  Be  accompanied  by  a  motion  under  §  1.633(f)
requesting the benefit of the filing date of any earlier
application filed in the United States or abroad.

 (3)  A  preliminary  motion  seeking  to  designate  an
application or patent claim to correspond to a count shall:

  (i) Identify the claim and the count.

  (ii) Show the claim defines the same patentable invention
as the count.

  (iii)  Be  accompanied  by  a  motion  under  §  1.633(f)
requesting the benefit of the filing date of any earlier
application filed in the United States or abroad.

 (4)  A  preliminary  motion  seeking  to  designate  an
application or patent claim as not corresponding to a count
shall:

  (i) Identity the claim and the count.

  (ii) Show the claim does not define the same patentable
invention as any other claim designated in the notice
declaring the interference as corresponding to the count.

 (5)  A preliminary motion seeking to require an opponent
who is an applicant to add a claim and designate the claim
as corresponding to a count shall:

  (i) Propose a claim to be added by the opponent.

  (ii) Show the patentability to the opponent of the claim
and apply the terms of the claim to the disclosure of the
opponent's application.

  (iii) Identify the count to which the claim shall be
designated to correspond.

  (iv) Show the claim defines the same patentable invention
as the count to which it will be designated to correspond.

 (d)  A preliminary motion under § 1.633(d) to substitute
a different application shall:

 (1)  Identify the different application.

 (2)  Certify that a complete copy of the file of the
different application, except for documents filed under §
1.131 or § 1.608, has been served on all opponents.

 (3)  Show the patentability to the applicant of all
claims in, or proposed to be added to, the different
application which correspond to each count and apply the
terms of the claims to the disclosure of the different
application; when necessary the applicant shall file with
the motion an amendment adding a claim to the different
application.

 (4)  Be  accompanied  by  a  motion  under  §  1.633(f)
requesting the benefit of the filing date of an earlier
application filed in the United States or abroad.

 (e)  A preliminary motion to declare an additional
interference  under  §  1.633(e)  shall  explain  why  an
additional interference is necessary.

 (1)  When the preliminary motion seeks an additional
interference under § 1.633(e)(1), the motion shall:

  (i) Identify the additional application.

  (ii) Certify that a complete copy of the file of the
additional application, except for documents filed under §
1.131 or § 1.608, has been served on all opponents.

  (iii) Propose a count for the additional interference.

  (iv) Show the patentability to the applicant of all
claims in, or proposed to be added to, the additional
application which correspond to each proposed count for the
additional interference and apply the terms of the claims to
the disclosure of the additional application; when necessary
the applicant shall file with the motion an amendment adding
any claim to the additional application.

  (v)  When  the  opponent  is  an  applicant,  show  the
patentability to the opponent of any claims in, or proposed
to be added to, the opponent's application which correspond
to the proposed count and apply the terms of the claims to
the disclosure of the opponent's application.

  (vi) Identify all claims in the opponent's application or
patent which should be designated to correspond to each
proposed count; if the opponent's application does not

contain any such claim, the motion shall propose a claim to
be added to the opponent's application.

  (vii) Show that each proposed count for the additional
interference defines a separate patentable invention from
all counts of the interference in which the motion is filed.

  (viii) Be accompanied by a motion under § 1.633(f)
requesting the benefit of the filing date of an earlier
application filed in the United States or abroad.

 (2)  When the preliminary motion seeks an additional
interference under § 1.633(e)(2), the motion shall:

  (i) Identify any application or patent to be involved in
the additional interference.

  (ii) Propose a count for the additional interference.

  (iii) When the moving party is an applicant, show the
patentability to the applicant of all claims in, or proposed
to be added to, the party's application which correspond to
each proposed count and apply the terms of the claims to the
disclosure of the party's application; when necessary a
moving  party  applicant  shall  file  with  the  motion  an
amendment adding any proposed claim to the application.

  (iv) Identify all claims in any opponent's application
which should be designated to correspond to each proposed
count; if an opponent's application does not contain such a
claim the moving party shall propose a claim to be added to
the opponent's application. The moving party shall show the
patentability of any proposed claim to the opponent and
apply the terms of the claim to the disclosure of the
opponent's application.

  (v) Designate the claims of any patent involved in the
interference which define the same patentable invention as
each proposed count.

  (vi) Show that each proposed count for the additional
interference defines a separate patentable invention from
all counts in the interference in which the motion is filed.

  (vii)  Be  accompanied  by  a  motion  under  §  1.633(f)
requesting the benefit of the filing date of an earlier
application filed in the United States or abroad.

 (f) A preliminary motion for benefit under § 1.633(f)
shall:

 (1) Identify the earlier application.

 (2) When the earlier application is an application filed in
the United States, certify that a complete copy of the file
of the earlier application, except for documents filed under
§ 1.131 or § 1.608, has been served on all opponents. When
the earlier application is an application filed abroad,
certify that a copy of the application filed abroad has been
served on all opponents. If the earlier application filed
abroad is not in English, the requirements of § 1.647 must
also be met.

  (3)  Show  that  the  earlier  application  constitutes  a
constructive re duction to practice of each count.

 (g) A preliminary motion to attack benefit under § 1.633(g)
shall explain, as to each count, why an opponent should not
be accorded the benefit of the filing date of the earlier
application.

 (h)  A preliminary motion to add an application for
reissue under § 1.633(h) shall:

 (1)  Identify the application for reissue.

 (2)  Certify that a complete copy of the file of the
application for reissue has been served on all opponents.

 (3)  Show  the  patentability  of  all  claims  in,  or
proposed to be added to, the application for reissue which
correspond to each count and apply the terms of the claims
to the disclosure of the application for reissue; when
necessary a moving applicant for reissue shall file with the
motion  an  amendment  adding  any  proposed  claim  to  the
application for reissue.

 (4)  Be  accompanied  by  a  motion  under  §  1.633(f)
requesting the benefit of the filing date of an earlier
application filed in the United States or abroad.

  Motion to Declare Additional Interference

 37 CFR 1.637(e)(1)(vi) requires that a motion to declare an
additional interference under 37 CFR 1.633(e)(1) between an
additional application not involved in the interference and
owned by a party and an opponent's application or patent i
nvolved in the interference either (1) designate the claims
of the opponent's application or patent which define the
same patentable invention defined by the proposed count, or
(2) if the opponent's application does not contain any such
claim, the moving party must propose a claim to be added to
the o pponent's application.

 37 CFR 1.637 sets out the content of motions. In prior
interference practice, parties and their counsel have had
difficulty meeting all the "unwritten" requirements for
motions under former 37 CFR 1.231. 37 CFR 1.637 is quite
specific in setting out the requirements for each type of
motion, particularly the preliminary motions. By setting out
with specificity the requirements for each type of motion,
it  is  intended  to  minimize  disposition  of  motions  on
technicalities.

 37 CFR 1.637 sets out the requirements of a motion under 37
CFR 1.633(c)(5). Those requirements are the moving party
must (1) propose a claim to be added to the opponent's
application, (2) show the patentability of the claim to the
opponent and apply the terms of the claim to the disclosure
of the opponent's application, (3) identify the count to
which the proposed claim shall be designated to correspond,
and (4) show that the proposed claim defines the same
patentable invention as the count to which it will be
designated to correspond. The following example illustrates
how practice under 37 CFR 1.633(c)(5) and 37 CFR 1.637(c)(5)
is expected to occur.

 Example. Application AV discloses engines and in particular
a 6 - cylinder engine. Application AV contains only claim 1
(engine). Application AW discloses engines in general, but

does not specifically disclose a 6 - cylinder engine.
Application AW contains only a single claim 3 (engine).
Seeing that application AV specifically discloses a 6 -
cylinder engine and believing that a 6 - cylinder is the
same patentable invention as "engine," AW could move under
37 CFR 1.633(c)(5) to require applicant AV to add a claim (6
- cylinder engine) and to have the claim designated to
correspond to the count (engine). Applicant AV could oppose
on the ground that a 6 - cylinder engine is not the "same
patentable invention" as "engine." If the motion is granted,
applicant AV would be required to a add a claim to 6 -
cylinder  engine  and  the  claim  would  be  designated  to
correspond  to  the  count.  If  applicant  AV  loses  the
interference, the judgment would preclude applicant AV from
obtaining a patent with claims to "engine" or "6 - cylinder
engine." If the motion is denied on the basis that a 6 -
cylinder  engine  is  not  the  same  patentable  invention,
applicant AV would not be required to present a claim to a 6
- cylinder engine and would be able to pursue such a claim
ex parte even if applicant AV loses the interference.

 If an applicant is ordered by an examiner - in - chief to
file an amendment to present a claim and the applicant fails
or refuses to timely present the amendment, the failure or
refusal will be taken without further action as a disclaimer
by the applicant of the subject matter of the claim. See the
second sentence of 37 CFR 1.640(b)(1).

 Under the rules, it is not the intent of the PTO to allow a
senior party to test the sufficiency of the case - in -
chief of a junior party prior to final hearing. Thus, a
"motion for a directed verdict" (see Rule 50(a) of the
Federal Rules of Civil Procedure) at the conclusion of the
junior party's case - in - chief and prior to a senior
party's case - in - chief is not authorized under the rules.
If a senior party believes the case - in - chief of the
junior party is insufficient as a matter of law, the senior
party may elect to proceed immediately to final hearing. If
the senior party is incorrect, however, the senior party
will have waived any right to present any case - in - chief
or rebuttal. See; e.g.,  Comstock v.  Kroekel , 200 USPQ
548, 550, n. 4 (Comm'r Pat. 1978); Lorenian v. Winstead, 127
USPQ 501, 508 (Bd. Pat. Int. 1959); and more recently,
Burson v. Carmichael, 731 F.2d 849, 221 USPQ 664 (Fed. Cir.
1984) ("There is no support in the law for repeated bites at
the apple"). This would be true even  if the only evidence
relied upon by the junior party is a showing under 37 CFR
1.608(b). In this respect, the rules codify the decision in
Walsh v.  Sakai , 167 USPQ 465 (Comm'r Pat. 1970).

2338  Opposition and Reply

 37 CFR 1.638.  Opposition and reply, time for filing
opposition and reply.

 (a)  Unless otherwise ordered by the examiner - in -
chief, any opposition to any motion shall be filed within 20
days after service of the motion. An opposition shall (1)
identify any material fact set forth in the motion which
isin dispute and (2) include an argument why the relief
requested in the motion should be denied.

 (b)  Unless otherwise ordered by an examiner - in -
chief, a reply shall be filed within 15 days after service
of the opposition. A reply shall be directed only to new

points raised in the opposition.

  37  CFR  1.638  authorizes  oppositions  to  motions.  Any
opposition must identify any material fact in dispute. A
reply to an opposition is authorized for all motions. A
reply to a reply is not authorized.

2339  Evidence in Support of Motion, Opposition, or Reply

 37 CFR 1.639.  Evidence in support of motion,
opposition, or reply.

 (a)  Proof of any material fact alleged in a motion,
opposition, or reply must be filed and served with the
motion, opposition, or reply unless the proof relied upon is
part of the interference file or the file of any patent or
application involved in the interference or any earlier
application filed in the United States of which a party has
been accorded or seeks to be accorded benefit.

 (b)  Proof may be in the form of patents, printed
publications, and affidavits.

 (c)  When a party believes the testimony is necessary to
support or oppose a preliminary motion under § 1.633 or a
motion to correct inventorship under § 1.634, the party
shall describe the nature of the testimony needed. If the
examiner - in - chief finds that testimony is needed to
decide the motion, the examiner - in - chief may grant
appropriate  interlocutory  relief  and  enter  an  order
authorizing the taking of testimony and deferring a decision
on the motion to final hearing.

 37 CFR 1.639 sets forth the evidence which may accompany a
motion, opposition, or reply. Every material fact alleged in
a motion, opposition, or a reply must be supported by proof.
37 CFR 1.639(b) authorizes affidavits to be used as proof
for any motion. The affidavit may later be used by a party
during  the  testimony  period  (see  37  CFR  1.671(e)  and
1.672(b)). When a party believes that testimony is necessary
to decide a motion under 37 CFR 1.633 or 1.634, the party
must describe the nature of the testimony needed. If an
examiner - in - chief agrees that testimony is needed,
appropriate  interlocutory  relief  will  be  granted  and
testimony will be ordered.

 It should be noted that if affidavits cannot be timely
prepared to be filed with a motion, the moving party may
wish to take advantage of paragraph (c) of 37 CFR 1.639
which requires a party to specify any testimony needed to
resolve a motion. A moving party or an opponent may describe
any testimony needed to resolve a motion under either 37 CFR
1.633 or 1.634. Often, testimony is needed to resolve
inventorship disputes. Accordingly, a party may describe
testimony needed to resolve motions to correct inventorship
under 37 CFR 1.634. It should be noted that if a party
relies solely on affidavits in support of a motion (under 37
CFR 1.633 or 1.634) and the issue raised in the motion is to
be considered at final hearing, the party must comply with
37 CFR 1.671(e).

 Example. An interference is declared with one count between
application AH and application AJ. Applicant AH files a
preliminary motion under 37 CFR 1.633(c)(1) to redefine the
interference by adding a second count. In order to succeed,

applicant AH must show that the proposed count to be added
is directed to a "separate patentable invention" (see 37 CFR
1.601n)) from the count already in the interference. In the
motion, applicant AH sets forth in detail the testimony
which will be required to prove that the subject matter of
the proposed count is to a separate patentable invention
from the subject matter of the count in the interference.
Applicant AJ opposes the motion on the ground that the
proposed and present counts define the "same patentable
invention" (see 37 CFR 1.608(n)). An examiner - in - chief
determines that a material fact is in dispute and that the
applicant AH has established testimony is needed to properly
rule on the motion. Under the circumstances, the motion will
be deferred to final hearing and a testimony period will be
ordered. The question of (1) whether the proposed and
present counts define the same patentable invention and (2)
priority will be decided at final hearing.

2340  Motions, Hearing and Decision

 37 CFR 1.640.  Motions, hearing and decision,
redeclaration of inter ference, order to show cause.

 (a)  A hearing on a motion may be held in the discretion
of the examiner - in - chief. The examiner - in - chief
shall set the date and time for any hearing. The length of
oral argument at a hearing on a motion is a matter within
the discretion of the examiner - in - chief. An examiner -
in  -  chief  may  direct  that  a  hearing  take  place  by
telephone.

 (b)  Motions will be decided by an examiner - in -
chief. An examiner - in - chief may consult with an examiner
in deciding motions involving a question of patentability.
An examiner - in - chief may grant or deny any motion or
take such other action which will secure the just, speedy,
and inexpensive determination of the interference.

 (1)  When preliminary motions under § 1.633 are decided,
the examiner - in - chief will, when necessary, set a time
for filing any amendment to an application involved in the
interference  and  for  filing  a  supplemental  preliminary
statement as to any new counts involved in the interference.
Failure or refusal of a party to timely present an amendment
required by an examiner - in - chief shall be taken without
further  action  as  a  disclaimer  by  that  party  of  the
invention involved. A supplemental preliminary statement
shall meet the requirements specified in § 1.623, § 1.624, §
1.625, or § 1.626, but need not be filed if a party states
that  it  intends  to  rely  on  a  preliminary  statement
previously filed under § 1.621(a). After the time expires
for  filing  any  amendment  and  supplemental  preliminary
statement, the examiner - in - chief will, if necessary,
redeclare the interference.

 (2)  After a decision is entered on preliminary motions
filed under § 1.633, a further motion under § 1.633 will not
be considered except as provided by § 1.655(b).

 (c)  When a decision on any motion under § 1.633, §
1.634, or § 1.635 is entered which does not result in the
issuance of an order to show cause under paragraph (d) of
this section, a party may file a request for reconsideration
within 14 days after the date of the decision. The filing of
a request for reconsideration will not stay any time period

set by the decision. The request for reconsideration shall
specify with particularity the points believed to have been
misapprehended or overlooked in rendering the decision. No
opposition to a request for reconsideration shall be filed
unless requested by an examiner - in - chief or the Board. A
decision of a single examiner - in - chief will not
ordinarily  be  modified  unless  an  opposition  has  been
requested by an examiner - in - chief or the Board. The
request for reconsideration shall be acted on by a panel of
the Board consisting of at least three examiners - in -
chief, one of whom will normally be the examiner - in -
chief who decided the motion.

 (d)  An examiner - in - chief may issue an order to show
cause why judgment should not be entered against a party
when:

 (1)  A  decision  on  a  motion  is  entered  which  is
dispositive of the interference against the party as to any
count;

 (2)  The party is a junior party who fails to file a
preliminary statement; or

 (3)  The party is a junior party whose preliminary
statement fails to overcome the earlier of the filing date
or effective filing date of another party.

 (e)  When an order to show cause is issued under
paragraph (d) of this section, the Board shall enter a
judgment in accordance with the order unless, within 20 days
after the date of the order, the party against whom the
orderissued  files  a  paper  which  shows  good  cause  why
judgment should not be entered in accordance with the order.
Any other party may file a response to the paper within 20
days of the date of service of the paper. If the party
against whom the order was issued fails to show good cause,
the Board shall enter judgment against the party. If a party
wishes to take testimony in response to an order to show
cause, the party's response should be accompanied by a
motion ( § 1.635) requesting the testimony period. See §
1.651(c)(4).

 Under 37 CFR 1.640, an examiner - in - chief will decide
all motions. A hearing (in person or by telephone) may be
held on a motion in the discretion of an examiner - in -
chief. Where appropriate, an examiner - in - chief may
consult with an examiner on a question of patentability
which arises in the first instance in the interference. For
example, a party may allege unpatentability over a reference
not previously considered, or may attempt to add a count
drawn to subject matter which was not previously examined.
Consultation will not be necessary where the examiner had
already ruled on the patentability question which comes
before the examiner - in - chief or the Board .

 The extent of the consultation will be determined by the
examiner - in - chief; the examiner may be consulted merely
on one point of patentability, or may be asked to conduct a
search  of  newly  -  presented  counts  or  claims.  The
consultation may be informal, as by a telephone call, or may
be by a more formal written memorandum to the examiner.

 It should be noted that nothing in 37 CFR 1.640 authorizes
conferences between examiners - in - chief and examiners in

ex parte appeals under 35 U.S.C. 134 from an adverse
decision of an examiner.

 In rendering a decision, the examiner - in - chief is not
limited to granting or denying a motion, but is also
empowered to "take such other action which will secure the
just,  speedy,  and  inexpensive  determination  of  the
interference." 37 CFR 1.640(b).

 A party is entitled to request reconsideration of a
decision on a motion by a single examiner - in - chief. An
opposition to a request for reconsideration may not be filed
unless ordered by an examiner - in - chief or the Board, but
the decision by the single examiner - in - chief will not
normally  be  modified  unless  an  opposition  has  been
requested. The request for reconsideration will be acted on
by a panel of the Board consisting of at least three
examiners - in - chief, one of whom will normally be the
examiner - in - chief who decided the motion. It is believed
that parties in interference cases will feel that their
requests for reconsideration are being more fully considered
if more than one person considers their request. The two
additional examiners - in - chief can consult with the
examiner - in - chief most familiar with the case, but can
control the decision on reconsideration by a majority vote.
Use of the examiner - in - chief who decided the motion and
two additional examiners - in - chief (1) minimizes delay
which would occur if three new examiners - in - chief were
used who were unfamiliar with the record and (2) minimizes
the possibility that reversible error occurred if only the
examiner  -  in  -  chief  who  decided  the  motion  also
individually decided the request for reconsideration.

 After the decision on motion is rendered, the interference
may take a number of different courses. If a motion for
judgment is granted, the examiner - in - chief will issue an
order to show cause against the party or parties to whom the
motion applies. Judgment will be entered against the party
or parties by the Board if they do not respond to the order.
If a motion for judgment is not granted an order to show
cause will be issued against the junior party who did not
file a preliminary statement, or whose statement fails to
overcome another party's effective filing date; otherwise,
the interference proceeds to the testimony stage.

 The former rules (37 CFR 1.231(d)) provided that a request
for reconsideration of a decision on 37 CFR 1.231 motions
would not be entertained; however, a party could petition
the Commissioner under 37 CFR 1.244 for the exercise of
supervisory authority with respect to the motion decision.
The revised rules effectively reverse this arrangement by
providing that a party may request that the Board reconsider
an examiner - in - chief's decision on any motion, except a
decision granting a motion for judgment (37 CFR 1.640(c)).
On the other hand, the ability to petition a decision on
motion is sharply curtailed by the provision of 37 CFR
1.644(a)(2) that petitions seeking to invoke the supervisory
authority of the Commissioner may not be filed prior to a
decision by the Board awarding judgment.

2341  Unpatentability Discovered

 37 CFR 1.641.  Unpatentability discovered by examiner -
in - chief.

 During the pendency of an interference, if the examiner -
in  -  chief  becomes  aware  of  a  reason  why  a  claim
corresponding to a count may not be patentable, the examiner
- in - chief may notify the parties of the reason and set a
time within which each party may present its views. After
considering anytimely filed views, the examiner - in - chief
shall decide how the interference shall proceed.

  If  the  examiner,  while  the  interference  is  pending,
discovers a reference or other reason which he or she
believes would render one or more of the parties' claims
corresponding to the count(s) unpatentable, the reference or
other reason should be brought to the attention of the
examiner - in - chief in charge of the interference. The
examiner - in - chief will determine what action, if any,
should be taken in the interference.

2342  Addition to Interference

 37 CFR 1.642.  Addition of application or patent to
interference.

 During the pendency of an interference, if the examiner -
in - chief becomes aware of an application or a patent not
involved  in  the  interference  which  claims  the  same
patentable invention as a count in the interference, the
examiner - in - chief may add the application or patent to
the interference on such terms as may be fair to all
parties.

 37 CFR 1.642 permits an examiner - in - chief to add a
newly  discovered  patent,  as  well  as  newly  discovered
applications, to an interference since 35 U.S.C. 135(a)
authorizes interferences between applications and patents.

  EXAMINER DISCOVERS ANOTHER APPLICATION OR PATENT DURING
  INTERFERENCE

 If, during the pendency of an interference, the examiner
discovers another application or patent claiming subject
matter which is the same as, or not patentably distinct
from, the invention defined in a count of the interference,
the examiner should bring the application or patent to the
attention of the examiner - in - chief in charge of the
interference. The examiner - in - chief will determine what
action, if any, should be taken in the interference.

 If the application in question is for reissue of a patent
involved in the interference, see MPEP § 2360.

2343  Prosecution by Assignee

 37 CFR 1.643.  Prosecution of interference by assignee.

 (a)  An assignee of record in the Patent and Trademark
Office of the entire interest in an application or patent
involved  in  an  interference  is  entitled  to  conduct
prosecution of the interference to the exclusion of the
inventor.

 (b)  An assignee of a part interest in an application or
patent involved in an interference may file a motion ( §
1.635) for entry of an order authorizing it to prosecute the
interference. The motion shall show (1) the inability or
refusal of the inventor to prosecute the interference or (2)

other cause why the ends of justice require that the
assignee of a part interest be permitted to prosecute the
interference. The examiner - in - chief may allow the
assignee of a part interest to prosecute the interference
upon such terms as may be appropriate.

2344  Petitions

 37 CFR 1.644.  Petitions in interferences.

 (a)  There is no appeal to the Commissioner in an
interference from a decision of an examiner - in - chief or
a panel consisting of more than one examiner - in - chief.
The  Commissioner  will  not  consider  a  petition  in  an
interference unless:

 (1)  The petition is from a decision of an examiner - in
- chief or a panel and the examiner - in - chief or the
panel shall be of the opinion (i) that the decision involves
a controlling question of procedure or an interpretation of
a rule to which there is a substantial ground for a
difference of opinion and (ii) that an immediate decision on
petition by the Commissioner may materially advance the
ultimate termination of the interference;

 (2)  The  petition  seeks  to  invoke  the  supervisory
authority of the Commissioner and is not filed prior to the
decision of the Board awarding judgment and does not relate
to (i) the merits of priority of invention or patentability
or (ii) the admissibility of evidence under the Federal
Rules of Evidence; or

 (3)  The petition seeks relief under § 1.183.

 (b)  A petition under paragraph (a)(1) of this section
filed more than 15 days after the date of the decision of
the examiner - in - chief or the panel may be dismissed as
untimely. A petition under paragraph (a)(2) of this section
shall not be filed prior to decision by the Board awarding
judgment.  Any  petition  under  paragraph  (a)(3)  of  this
section shall be timely if it is made as part of, or
simultaneously with, a proper motion under § 1.633, § 1.634,
or § 1.635. Any opposition to a petition shall be filed
within 15 days of the date of service of the petition.

 (c)  The filing of a petition shall not stay the
proceeding unless a stay is granted in the discretion of the
examiner - in - chief, the panel, or the Commissioner.

 (d)  Any petition must contain a statement of the facts
involved and the point or points to be reviewed and the
action requested. Briefs or memoranda, if any, in support of
the petition or opposition shall accompany or be embodied
therein. The petition will be decided on the basis of the
record made before the examiner - in - chief or the panel
and no new evidence will be considered by the Commissioner
in deciding the petition. Copies of documents already of
record in the interference shall not be submitted with the
petition or opposition.

 (e)  Any petition under paragraph (a) of this section
shall be accompanied by the petition fee set forth in §
1.17(h).

 (f)  Any request for reconsideration of a decision by

the Commissioner shall be filed within 15 days of the
decision of the Commissioner and must be accompanied by the
fee set forth in § 1.17(h). No opposition to a request for
reconsideration shall be filed unless requested by the
Commissioner. The decision will not ordinarily be modified
unless  such  an  opposition  has  been  requested  by  the
Commissioner.

 (g)  Where reasonably possible, service of any petition,
opposition, or request for reconsideration shall be such
that  delivery  is  accomplished  within  one  working  day.
Service  by  hand  or  "Express  Mail"  complies  with  this
paragraph.

 (h)  An oral hearing on the petition will not be granted
except when considered necessary by the Commissioner.

 (i)  The Commissioner may delegate to appropriate Patent
and  Trademark  Office  employees  the  determination  of
petitions under this section.

 Under 37 CFR 1.644, petitions to the Commissioner are
authorized in interference cases under certain restricted
conditions. Petitions in interferences have in the past been
the source of substantial delay. 37 CFR 1.644 attempts to
minimize those delays. 37 CFR 1.644 authorizes a petition to
theCommissioner from a decision of an examiner - in - chief
or a panel when the examiner - in - chief or the panel shall
be  of  the  opinion  (1)  that  the  decision  involves  a
controlling question of procedure or an interpretation of a
rule as to which there is a substantial ground for a
difference of opinion and (2) that an immediate decision on
petition would materially advance the ultimate termination
of  the  interference.  The  standard  is  intended  to  be
analogous to that of a district court certifying a question
to a court of appeals under 28 U.S.C. 1292(b). A petition
can be filed seeking to invoke the supervisory authority of
the Commissioner. However, the petition cannot be filed
prior to entry of judgment and cannot relate to the merits
of  priority  or  patentability  or  the  admissibility  of
evidence under the Federal Rules of Evidence. A petition may
also be filed seeking waiver of a rule. A fee as set forth
in 37 CFR 1.17(h) is charged for each petition and for each
request for reconsideration of a decision on petition. Any
petition can be decided on the record made before the
examiner - in - chief or the Board and additional evidence
cannot be submitted with the petition. An opposition cannot
be  filed  unless  ordered  by  the  Commissioner.  Where
reasonably possible, service of a petition must be such that
delivery is accomplished within 1 day. Service by hand or
"Express Mail" complies with this requirement.

 When a PTO employee is granted authority to decide a
petition under 37 CFR 1.644(i) in an interference case, the
employee will not be the examiner - in - chief handling the
interference or an employee on a panel of the Board deciding
the petition. It is expected that an employee deciding a
petition by delegation of authority will be one who could
exercise independent judgment on the petition bearing in
mind that a petition will be decided on the record made
before the examiner - in - chief or the panel. In connection
with this later point, findings of fact by an examiner - in
- chief or the Board will be presumed to be correct unless
shown to be clearly erroneous. Discretionary action by an
examiner - in - chief or the Board will not be overturned

unless it is shown that an abuse of discretion occurred.

 A petition under 37 CFR 1.644(a)(2) cannot be filed until
after the Board has entered judgment and the petition cannot
relate  to  the  merits  of  priority  of  invention  or
patentability  or  a  question  of  whether  evidence  is
admissible under Federal Rules of Evidence.

 The provisions of 37 CFR 1.644(g) apply only to petitions
filed under 37 CFR 1.644; those provisions do not apply to
oppositions under 37 CFR 1.638.

 The CCPA has stated that, "in performing his duties, the
Commissioner cannot usurp the functions or impinge upon the
jurisdiction of the Board . . established by 35 U.S.C.
135." In re Dickinson , 299 F.2d 954, 958, 133 USPQ 39, 43
(CCPA 1962). See also  Myers v.  Feigelman, supra , 455 F.2d
at 599, n. 8, 172 USPQ at 583 n. 8. However, it is also true
that the Commissioner "shall superintend or perform all
duties required by law respecting the granting of patents .
. . ." 35 U.S.C. 6;  Kingsland v.  Carter Carburetor Corp. ,
83 U.S. App. D.C. 266, 168 F.2d 565, 77 USPQ 499 (D.C. Cir.
1948);  In re Staeger , 189 USPQ 284, 285 n. 2 (Comm'r Pat.
1974).  The  Commissioner,  subject  to  approval  of  the
Secretary of Commerce, establishes the procedure by which
the examiner - in - chief and the Board will consider
interference cases, 35 U.S.C. 6. See also 35 U.S.C. 23
relating to affidavits and depositions.

 Under the rules, the Commissioner will not determine on
petition either "priority of invention" or "patentability."
See 37 CFR 1.644(a)(2). Likewise, the Commissioner will not
consider whether evidence should have been admitted or
excluded under the Federal Rules of Evidence. The PTO
believes that the Federal courts, which routinely rule on
admissibility under the Federal Rules, are in a better
position to determine whether the Board properly interpreted
the Federal Rules of Evidence.

  While  the  Commissioner  will  not  decide  "priority  of
invention" or "patentability" under 35 U.S.C. 135(a), it
does not follow that the Commissioner is precluded from
interpreting PTO rules on procedural matters, including
procedural matters related to the admissibility of evidence
on some basis other than the Federal Rules of Evidence,
e.g., whether a party has complied with a PTO rule such as
37 CFR 1.671(c) (procedure for relying on affidavits) or 37
CFR 1.671(g) (permission required for obtaining evidence by
subpoena).

2345  Extension of Time

 37 CFR 1.645.  Extension of time, late papers, stay of
proceedings.

 (a)  Except to extend the time for filing a notice of
appeal to the U.S.C. ourt of Appeals for the Federal Circuit
or for commencing a civil action, a party may file a motion
( § 1.635) seeking an extension of time to take action in an
interference. See § 1.304(a) for extensions of time for
filing a notice of appeal to the U.S.C. ourt of Appeals for
the Federal Circuit or for commencing a civil action. The
motion shall be filed within sufficient time to actually
reach the examiner - in - chief before expiration of the
time for taking action. A moving party should not assume

that the motion will be granted even if there is no
objection by any other party. The motion will be denied
unless the moving party shows good cause why an extension
should be granted. The press of other business arising after
an examiner - in - chief sets a time for taking action will
not  normally  constitute  good  cause.  A  motion  seeking
additional time to take testimony because a party has not
been able to procure the testimony of a witness shall set
forth the name of the witness, any steps taken to procure
the testimony of the witness, the dates on which the steps
were taken, and the facts expected to be proved through the
witness.

 (b)  Any paper belatedly filed will not be considered
except upon motion ( § 1.635) which shows sufficient cause
why the paper was not timely filed. See § 1.304(a) for
exclusive procedures relating to belated filing of a notice
of appeal to the U.S.C. ourt of Appeals for the Federal
Circuit or belated commencement of a civil action.

 (c)  The provisions of § 1.136 do not apply to time
periods in interferences.

 (d)  In an appropriate circumstance, an examiner - in -
chief may stay proceedings in an interference.

 37 CFR 1.645 permits a party to file a motion to seek an
extension of time to take action in an interference. The
motion must be filed within sufficient time to actually
reach an examiner - in - chief prior to expiration of the
time for taking action. Under 37 CFR 1.645, a moving party
cannot assume that a motion for extension of time will be
granted.  Under  37  CFR  1.610(d)(6),  a  request  for  an
extension of time can be made orally and an appropriate
order will then be entered thus eliminating considerable
paper work. The order will be the written record of the
request and decision. See 37 CFR 1.2. Extensions of time
have in the past caused numerous delays in interference
cases. Under previous interference practice, some delays
were caused because attorneys and agents on many occasions,
unexpectedly  received  orders  setting  times.  Under  the
revised practice, attorneys and agents can expect times to
be  set  for  filing  preliminary  statements,  preliminary
motions, motions for additional discovery, testimony, and
briefs after a conference call. It is expected that use of
conference calls will permit an examiner - in - chief and
attorneys or agents for parties to set a time schedule which
is mutually satisfactory. A motion to extend time will not
be granted unless a party shows good cause. The use of
conference calls will allow schedules to be set before
orders setting times are entered and therefore the press of
other business which arises after the examiner - in - chief
and attorneys and agents agree to times will not normally be
considered good cause.

 37 CFR 1.645(a) specifies the procedure to be used when a
written motion is filed. It should be noted that an examiner
- in - chief may require a written motion notwithstanding a
conference call.

 When counsel and an examiner - in - chief agree to a
schedule and times are set, the parties are expected to
adhere  to  the  schedule  unless  there  are  unusual
circumstances. Apart from work that counsel may have in an
interference, an examiner - in - chief has a docket and must

manage not only the interference involving counsel, but
numerous other interferences. The U.S.C. ourt of Appeals for
the Federal Circuit said the following in Rosemount Inc. v.
Beckman Instruments, Inc. , 727 F.2d 1540, 1549 - 1550, 221
USPQ 1, 10 (Fed. Cir. 1984):

 "The conduct of a trial, granting of continuances and the
like, is not, however, solely or entirely a matter of
balancing conveniences of the parties. The Federal Rules of
Civil Procedure recognize another consideration - the need
for the exercise of discretion by the trial court in
carrying out its duty of managing the judicial process, the
business of the court, and the administration of justice."

 However, the rules recognize the need for the exercise of
discretion of an examiner - in - chief in carrying out his
or her duty of managing the interference (37 CFR 1.610), the
business of the PTO (37 CFR 1.610), and the administration
of justice (37 CFR 1.610).

 Extensions of time to seek judicial review of a decision of
the Board are determined by the Commissioner, under the
provisions of 37 CFR 1.304(a). See MPEP § 1216.

2346  Service of Papers

 37 CFR 1.646.  Service of papers, proof of service.

 (a)  A copy of every paper filed in the Patent and
Trademark Office in an interference or an application or
patent involved in the interference shall be served upon all
other parties except:

 (1)  Preliminary statements when filed under § 1.621;
preliminary statements shall be served when service is
ordered by an examiner - in - chief.

 (2)  Certified transcripts and exhibits which accompany
the transcripts filed under § 1.676 or 1.684; copies of
transcripts shall be served as part of a party's record
under § 1.653(c).

 (b)  Service shall be on an attorney or agent for a
party. If there is no attorney or agent for the party,
service shall be on the party. An examiner - in - chief may
order additional service or waive service where appropriate.

 (c)  Unless otherwise ordered by an examiner - in -
chief, or except as otherwise provided by this subpart,
service of a paper shall be made as follows:

 (1)  By handing a copy of the paper to the person
served.

 (2)  By leaving a copy of the paper with someone
employed by the person at the person's usual place of
business.

 (3)  When the person served has no usual place of
business, by leaving a copy of the paper at the person's
residence with someone of suitable age and discretion then
residing therein.

 (4)  By mailing a copy of the paper by first class mail;
when service is by mail the date of mailing is regarded as

the date of service.

 (5)  When it is shown to the satisfaction of an examiner
- in - chief that none of the above methods of obtaining or
serving the copy of the paper was successful, the examiner -
in  -  chief  may  order  service  by  publication  of  an
appropriate notice in the  Official Gazette.

 (d)  An examiner - in - chief may order that a paper be
served by hand or "Express Mail".

 (e)  Proof of service must be made before a paper will
be considered in an interference. Proof of service may
appear on or be affixed to the paper. Proof of service shall
include the date and manner of service. In the case of
personal service under paragraphs (c)(1) through (c)(3) of
this section, proof of service shall include the names of
any person served and the person who made the service. Proof
of service may be made by an acknowledgment of service by or
on behalf of the person served or a statement signed by the
party or the party's attorney or agent containing the
information required by this section. A statement of an
attorney or agent attached to, or appearing in, the paper
stating the date and manner of service will be accepted as
prima facie proof of service.

2347  Translations

 37 CFR 1.647.  Translation of document in foreign
language.

 When a party relies on a document in a language other than
English, a translation of the document into English and an
affidavit attesting to the accuracy of the translation shall
be filed with the document.

 Under 37 CFR 1.647, when a party relies on a document in a
non - English language, an English language translation of
the document and an affidavit attesting to the accuracy of
the translation will be required. The rule applies to any
document, including evidence submitted with motions, foreign
applications for which a party seeks benefit, testimony and
exhibits introduced in evidence during testimony.

2351  Times for Discovery and Testimony

 37 CFR 1.651.  Setting times for discovery and taking
testimony, parties entitled to take testimony.

 (a)  At an appropriate stage in an interference, an
examiner - in - chief shall set (1) a time for filing
motions ( § 1.635) for additional discovery under § 1.687(c)
and  (2)  testimony  periods  for  taking  any  necessary
testimony.

 (b)  Where appropriate, testimony periods will be set to
permit a party to:

 (1)  Present its case - in - chief and/or case - in -
rebuttal and/or

 (2)  Cross - examine an opponent's case - in - chief
and/or a case - in - rebuttal.

 (c)  A party is not entitled to take testimony to

present a case - in - chief unless:

 (1)  The examiner - in - chief orders the taking of
testimony under § 1.639(c);

 (2)  The party alleges in its preliminary statement a
date of invention prior to the earlier of the filing date or
effective filing date of the senior party;

 (3)  A testimony period has been set to permit an
opponent to prove a date of invention prior to the earlier
of the filing date or effective filing date of the party and
the party has filed a preliminary statement alleging a date
of invention prior to that date; or

 (4)  A motion ( § 1.635) is filed showing good cause why
a testimony period should be set.

 (d)  Testimony shall be taken during the testimony
periods set under paragraph (a) of this section.

 Under 37 CFR 1.651, after a decision is entered on
preliminary motions, an examiner - in - chief sets times for
filing motions for additional discovery and for taking
testimony. Any motion for additional discovery will be to
obtain answers to interrogatories, requests for admissions,
and documents and things necessary for a party to prepare
its case - in - chief.

2352  Judgment for Failure To Take Testimony or File
Record

 37 CFR 1.652.  Judgment for failure to take testimony or
file record.

 If a junior party fails to timely take testimony authorized
under § 1.651, or file a record under § 1.653(c), an
examiner - in - chief, with or without a motion ( § 1.635)
by another party, may issue an order to show cause why
judgment should not be entered against the junior party.
When an order is issued under this section, the Board shall
enter judgment in accordance with the order unless, within
15 days after the date of the order, the junior party files
a paper which shows good cause why judgment should not be
entered in accordance with the order. Any other party may
file a response to the paper within 15 days of the date of
service of the paper. If the party against whom the order
was issued fails to show good cause, the Board shall enter
judgment against the party.

2353  Records and Exhibits

 37 CFR 1.653.  Record and exhibits.

 (a)  Testimony shall consist of affidavits under §
1.672(b)  and  (e),  transcripts  of  depositions  under  §
1.672(b)  and  (c),  agreed  statements  of  fact  under  §
1.672(f),  and  transcripts  of  interrogatories,  cross  -
interrogatories, and recorded answers under § 1.684(c).

 (b)  An affidavit shall be filed as set forth in §
1.672(b) or (e). A certified transcript of a deposition
including a deposition cross - examining an affiant, shall
be filed as set forth in § 1.676. An original agreed
statement shall be filed as set forth in § 1.672(f). A

transcript of interrogatories, cross - interrogatories, and
recorded answers shall be filed as set forth under §
1.684(c).

 (c)  In addition to the items specified in paragraph (b)
of this section and within a time set by an examiner - in -
chief each party shall file three copies and serve one copy
of a record consisting of:

 (1)  An index of the names of each witness giving the
pages of the record where the direct testimony and cross -
examination of each witness begins.

 (2)  An index of exhibits briefly describing the nature
of each exhibit and giving the page of the record where each
exhibit is first identified and offered into evidence.

 (3)  The count or counts.

 (4)  Each (i) affidavit, (ii) transcript, including
transcripts of cross - examination of any affiant, (iii)
agreed  statement  relied  upon  by  the  party,  and  (iv)
transcript of interrogatories, cross - interrogatories, and
recorded answers filed under paragraph (b) of this section.

 (5)  Each  notice,  official  record,  and  publication
relied upon by the party and filed under § 1.682(a).

 (6)  Any evidence from another interference, proceeding,
or action relied upon by the party under § 1.683.

 (7)  Each request for an admission and the admission and
each written interrogatory and the answer upon which a party
intends to rely under § 1.688.

 (d)  The pages of the record shall be consecutively
numbered.

 (e)  The name of each witness shall appear at the top of
each page of each affidavit or transcript.

 (f)  The record may be typewritten or printed.

 (g)  When the record is printed, it may be produced by
standard typographical printing or by any process capable of
producing a clear black permanent image. All printed matter
except on covers must appear in at least 11 point type on
opaque, unglazed paper. Margins must be justified. Footnotes
may not be printed in type smaller than 9 point. The page
size shall be 8 1/2 by 11 inches (21.8 by 27.9 cm.) with
type matter 6 1/2 by 9 1/2 inches (16.5 by 24.1 cm.). The
record shall be bound to lie flat when open.

 (h)  When the record is typewritten, it must be clearly
legible on opaque, unglazed, durable paper approximately 8
1/2 by 11 inches (21.8 by 27.9 cm.) in size (letter size).
Typing shall be double - spaced on one side of the paper in
not smaller than pica - type with a margin of 1 1/2 (3.8
cm.) on the left - hand side of the page. The pages of the
record shall be bound with covers at their left edges in
such manner to lie flat when open in one or more volumes of
convenient size (approximately 100 pages per volume is
suggested).  Multigraphed  or  otherwise  reproduced  copies
conforming to the standards specified in this paragraph may
be accepted.

 (i)  Each party shall file its exhibits with the record
specified in paragraph (c) of this section. One copy of each
documentary exhibit shall be served. Documentary exhibits
shall be filed in an envelope or folder and shall not be
bound as part of the record. Physical exhibits, if not filed
by an officerunder § 1.676(d), shall be filed with the
record. Each exhibit shall contain a label which identifies
the party submitting the exhibit and an exhibit number, the
style of the interference (e.g., Jones v. Smith), and the
interference number. Where possible, the label should appear
at the bottom right - hand corner of each documentary
exhibit. Upon termination of an interference, an examiner -
in - chief may return an exhibit to the party filing the
exhibit. When any exhibit is returned, the examiner - in -
chief shall enter an appropriate order indicating that the
exhibit has been returned.

 (j)  Any testimony, record, or exhibit which does not
comply with this section may be returned under § 1.618(a).

 37 CFR 1.653 sets out what shall be in the record to be
considered  by  the  Board  at  final  hearing.  The  record
continues to be printed or typed on paper 8 1/2 inches by 11
inches in size.Accordingly, when a party files an affidavit,
the party should use 8 1/2 by 11 inch paper for the
affidavit.

 The evidentiary record and exhibits cannot be transmitted
by facsimile; (37 CFR1.6(d)(9)).

2354  Final Hearing

 37 CFR 1.654.  Final hearing.

 (a)  At an appropriate stage of the interference, the
parties will be given an opportunity to appear before the
Board to present oral argument at a final hearing. An
examiner - in - chief shall set a date and time for final
hearing. Unless otherwise ordered by an examiner - in -
chief or the Board, each party will be entitled to no more
than 60 minutes of oral argument at final hearing.

 (b)  The opening argument of a junior party shall
include a fair statement of the junior party's case and the
junior party's position with respect to the case presented
on behalf of any other party. A junior party may reserve a
portion of its time for rebuttal.

 (c)  A party shall not be entitled to argue that an
opponent  abandoned,  suppressed,  or  concealed  an  actual
reduction to practice unless a notice under § 1.632 was
timely filed.

 (d)  After final hearing, the interference shall be
taken under advisement by the Board. No further paper shall
be filed except under § 1.658(b) or as authorized by an
examiner - in - chief or the Board. No additional oral
argument shall be had unless ordered by the Board.

 37 CFR 1.654 continues the practice of holding a final
hearing where oral argument may be presented by all parties.
No fee is charged for appearing at oral argument at final
hearing in an interference.

2355  Final Decision, Matters Considered

 37 CFR 1.655.  Matters considered in rendering a final
decision.

 (a)  In rendering a final decision, the Board may
consider any properly raised issue including (1) priority of
invention, (2) derivation by an opponent from a party who
filed  a  preliminary  statement  under  §  1.625,  (3)
patentability  of  the  invention,  (4)  admissibility  of
evidence, (5) any interlocutory matter deferred to final
hearing, and (6) any other matter necessary to resolve the
interference.  The  Board  may  also  consider  whether  any
interlocutory order was manifestly erroneous or an abuse of
discretion. All interlocutory orders shall be presumed to
have been correct and the burden of showing manifest error
or an abuse of discretion shall be on the party attacking
the order.

 (b)  A  party  shall  not  be  entitled  to  raise  for
consideration at final hearing a matter which properly could
have been raised by a motion under § 1.633 or 1.634 unless
(1) the motion was properly filed, (2) the matter was
properly raised by a party in an opposition to a motion
under § 1.633 or 1.634 and the motion was granted over the
opposition, or (3) the party shows good cause why the issue
was not timely raised by motion or opposition.

 (c)  To  prevent  manifest  injustice,  the  Board  may
consider an issue even though it would not otherwise be
entitled to consideration under this section.

 37 CFR 1.655 specifies the matters which can be considered
in rendering a final decision. Patentability is an issue
which may be raised. The Board can also consider whether any
interlocutory order was manifestly erroneous or an abuse of
discretion,  although  any  interlocutory  order  will  be
presumed to be correct and the burden of showing error shall
be on the party attacking the order. This last procedural
provision permits the Board to correct any manifest error
before a party seeks judicial review of an interlocutory
order along with judicial review of the Board's final
decision.

 Patentability will initially be determined by a single
examiner - in - chief. See 37 CFR 1.610(a) and 1.640(b). If
the examiner - in - chief determines that a claim of a party
is unpatentable to that party, an order to show cause why
judgment should not be entered as to that claim will be
issued to that party. See 37 CFR 1.640(d). If a response to
the order to show cause is filed, a decision will be entered
by the Board. See 37 CFR 1.610(a) and 1.640(e). If the Board
determines that the claim is not patentable to the party, a
final decision and judgment will be entered holding the
claim to be unpatentable. Review of the final decision and
judgment is by judicial review under 35 U.S.C. 141 or 146.
It should be noted, however, that if there are other claims
in the party's application or patent which are deemed to be
patentable, an interlocutory order will be entered holding
only that certain claims are unpatentable. A final order
holding those claims unpatentable will be entered after
final hearing on other issues. Such a practice will avoid
piecemeal judicial review.

2356  Briefs for Final Hearing

 37 CFR 1.656 Briefs for final hearing.

 (a)  Each party shall be entitled to file briefs for
final hearing. The examiner - in - chief shall determine the
briefs needed and shall set the time and order for filing
briefs.

 (b)  The opening brief of a junior party shall contain
under appropriate headings and in the order indicated:

 (1)  A table of contents, with page references, and a
table of cases (alphabetically arranged), statutes, and
other authorities cited, with references to the pages of the
brief where they are cited.

 (2)  A statement of the issues presented for decision in
the interference.

 (3)  A statement of the facts relevant to the issues
presented for decision with appropriate references to the
record.

 (4)  An argument, which may be preceded by a summary,
which shall contain the contentions of the party with
respect to the issues to be decided, and the reasons
therefor, with citations to the cases, statutes, other
authorities, and parts of the record relied on.

 (5)  A short conclusion stating the precise relief
requested.

 (6)  An appendix containing a copy of the counts.

 (c)  The opening brief of the senior party shall conform
to the requirements of paragraph (b) of this section except:

 (1)  A statement of the issues and of the facts need not
be made unless the party is dissatisfied with the statement
in the opening brief of the junior party and

 (2)  An appendix containing a copy of the counts need
not be included if the copy of the counts in the opening
brief of the junior party is correct.

 (d)  Briefs  may  be  printed  or  typewritten.  If
typewritten, legal - size paper may be used. The opening
brief of each party in excess of 50 legal - size double -
spaced typewritten pages or any other brief in excess of 25
legal - size double - spaced typewritten pages shall be
printed unless a satisfactory reason be given why the brief
should not be printed. Any printed brief shall comply with
the requirements of § 1.653(g). Any typewritten brief shall
comply with the requirements of § 1.653(h), except legal -
size paper may be used and the binding and covers specified
are not required.

 (e)  An original and three copies of each brief must be
filed.

 (f)  Any  brief  which  does  not  comply  with  the
requirements  of  this  section  may  be  returned  under  §
1.618(a).

 (g)  Any party, separate from its opening brief, but

filed concurrently therewith, may file an original and three
copies of concise proposed findings of fact and conclusions
of law. Any proposed findings of fact shall be supported by
specific references to the record. Any proposed conclusions
of law shall be supported by citation of cases, statutes, or
other authority. Any opposing party, separate from its
opening or reply brief, but filed concurrently therewith,
may file a paper accepting or objecting to any proposed
findings of fact or conclusions of law; when objecting, a
reason must be given. The Board may adopt the proposed
findings of fact and conclusions of law in whole or in part.

 (h)  If a party wants the Board in rendering its final
decision to rule on the admissibility of any evidence, the
party shall file with its opening brief an original and
three copies of a motion ( § 1.635) to suppress the
evidence. The provisions of § 1.637(b) do not apply to a
motion to suppress under this paragraph. Any objection
previously  made  to  the  admissibility  of  an  opponent's
evidence is waived unless the motion required by this
paragraph is filed. An original and three copies of an
opposition to the motion may be filed with an opponent's
opening brief or reply brief as may be appropriate.

 (i)  When a junior party fails to timely file an opening
brief, an order may issue requiring the junior party to show
cause why the Board should not treat failure to file the
brief as a concession of priority. If the junior party fails
to respond within a time period set in the order, judgment
may be entered against the junior party.

 Once the parties have filed their evidentiary records,
times will be set for filing briefs, and then the case will
be set for hearing. 37 CFR 1.656 is specific as to the
contents of the briefs.

 In large measure, 37 CFR 1.656 follows the requirements of
Rule 28 of the Federal Rules of Appellate Procedure. An
original and three copies of a brief are required. Under 37
CFR 1.656(h), if a party wants the Board in rendering its
final decision to rule that any evidence is inadmissible,
the party must file with its opening brief an original and
three copies of a motion to suppress the evidence. Any
previous objections to the admissibility of evidence is
waived  unless  the  motion  to  suppress  is  filed.  This
procedural provision makes clear that an objection to the
admissibility of evidence must be renewed at final hearing
and will be considered by the Board in rendering its final
decision.

 If a junior party fails to timely file an opening brief, an
order to show cause may be issued against the party, in
accordance with 37 CFR 1.656(f).

2357  Burden of Proof

 37 CFR 1.657.  Burden of proof as to date of invention.

 A rebuttable presumption shall exist that, as to each
count,  the  inventors  made  their  invention  in  the
chronological order of the earlier of their filing dates or
effective filing dates. The burden of proof shall be upon a
party who contends otherwise.

2358  Final Decision

 37 CFR 1.658.  Final decision.

 (a)  After final hearing, the Board shall enter a
decision resolving the issues raised at final hearing. The
decision may (1) enter judgment, in whole or in part, (2)
remand the interference to an examiner - in - chief for
further  proceedings,  or  (3)  take  further  action  not
inconsistent with law. A judgment as to a count shall state
whether or not each party is entitled to a patent containing
the claims in the party's patent or application which
correspond to the count. When the Board enters a decision
awarding judgment as to all counts, the decision shall be
regarded as a final decision.

 (b)  Any request for reconsideration of a decision under
paragraph (a) of this section shall be filed within one
month after the date of the decision. The request for
reconsideration shall specify with particularity the points
believed  to  have  been  misapprehended  or  overlooked  in
rendering  the  decision.  Any  reply  to  a  request  for
reconsideration shall be filed within 14 days of the date of
service of the request for reconsideration. Where reasonably
possible, service of the request for reconsideration shall
be such that delivery is accomplished by hand or "Express
Mail." The Board shall enter a decision on the request for
reconsideration. If the Board shall be of the opinion that
the  decision  on  the  request  for  reconsideration
significantly modifies its original decision under paragraph
(a) of this section, the Board may designate the decision on
the request for reconsideration as a new decision.

 (c)  A judgment in an interference settles all issues
which (1) were raised and decided in the interference, (2)
could  have  been  properly  raised  and  decided  in  the
interference by a motion under § 1.633(a) through (d) and
(f) through (j) or § 1.634 and (3) could have been properly
raised and decided in an additional interference with a
motion under § 1.633(e). A losing party who could have
properly moved, but failed to move, under § 1.633 or 1.634,
shall be estopped to take ex parte or  inter partes action
in the Patent and Trademark Office after the interference
which is inconsistent with that party's failure to properly
move, except that a losing party shall not be estopped with
respect to any claims which correspond, or properly could
have corresponded, to a count as to which that party was
awarded a favorable judgment.

  Filing of Reissue Application During Interference

 37 CFR 1.658(c) incorporates the guidelines set forth in
the interference rules correction notice (50 Fed. Reg.
23122, May 31, 1985, 1059 Official Gazette27, October 22,
1985) for the application of the doctrine of interference
estoppel under 37 CFR l.658(c) with respect to a losing
party's failure to move under 37 CFR 1.633(e) to declare an
"additional interference" between an additional application
not involved in the interference and owned by the party and
an  opponent's  appli  cation  or  patent  involved  in  the
interference on a separate patentable invention. The notice
states that generally a losing party will be estopped for
failure to move when the separate patentable invention
(subject matter) which could have been the subject of the
"additional interference" was claimed (during the pendency
of  the  interference)  (1)  in  the  opponent's  involved

application or patent or (2) in a noninvolved application
owned by the party during the pendency of the interference .

  Should  a  losing  party  after  the  termination  of  the
interference  acquire  an  application  which  discloses  or
claims the sep arate patentable invention and which could
have been the subject of the "additional interference",
estoppel would not apply because the party did not own the
application during the pendency of the interference. The
correction notice illustrates the general applicability of
interference estoppel in certain situations where a losing
party fails to move under 37 CFR 1.633(e) to declare an
"additional interference" on a separate patentable invention
as follows:

 **  Double Click here to see the image  **

 An invention disclosed and not claimed in a winning
opponent's patent would not form the basis for a count
because the patent does not contain a claim which can be
designated to correspond to the count. Thus, a motion to
declare an additional interference under 37 CFR 1.633(e)
could not have been properly brought, and interference
estoppel, therefore, would not apply.

  It  has  been  found  that  a  patentee  involved  in  an
interference may file a reissue application for some other
reason not contemplated by the rule, and for which the entry
of judgment or a motion under 37 CFR 1.633(h) would not be
appropriate. For example, the patentee might file a reissue
application for the purpose of amending claims of the patent
which are directed to an invention which is patentably
distinct from the issue of the interference and which is not
disclosed by the opposing party. In such a situation,
addition of the reissue application to the interference
would be unnecessary. 37 CFR 1.662(b) accommodates this
third possibility by providing that, instead of filing a
motion under 37 CFR 1.633(h) to add the reissue application
to the interference, a patentee may show good cause why such
a motion would not be appropriate under the particular
circumstances involved.

 In its final decision, the Board can (1) enter judgment, in
whole or in part, (2) remand the interference to an examiner
- in - chief, or (3) take further action not inconsistent
with law. A judgment as to a count will state whether or not
each party is entitled to a patent containing claims which
correspond to the count. When judgment is entered as to all
counts, the decision of the Board is considered final for
the purpose of judicial review. 37 CFR 1.658(c) defines the
doctrine of interference estoppel as it is to be applied in
the PTO after an interference is terminated. The definition
of interference estoppel is designed to encourage parties in
interference cases to settle as many issues as possible in
one proceeding. 37 CFR 1.658(c) creates an estoppel both as
to senior and junior parties unlike the previous practice
(37 CFR 1.257) which limited estoppel in some instances to
junior parties. An estoppel will not apply with respect to
any claims which correspond, or which properly could have
corresponded, to a count as to which the party is awarded a
favorable judgment.

 After the Board has rendered a final decision in an
interference, the losing party may either appeal to the

Court of Appeals for the Federal Circuit, under 35 U.S.C.
141, or file a civil action in a United States district
court, under 35 U.S.C. 146. Upon the filing of an appeal to
the Court of Appeals for the Federal Circuit, the opposing
party may elect to have the proceeding conducted in a
district court. In either event, the files will be retained
at the Board until the court proceeding has terminated. (The
PTO may, but normally does not, issue the application of a
winning  party  in  an  interference  involving  only
applications, notwithstanding the filing of a civil action
under 35 U.S.C. 146 by the losing party. See Monaco v.
Watson , 270 F.2d 335, 122 USPQ 564 (D.C. Cir. 1959).) See
MPEP § 1216.

2359  Board Recommendation

 37 CFR 1.659.  Recommendation.

 (a)  Should the Board have knowledge of any ground for
rejecting any application claim not involved in the judgment
of the interference, it may include in its decision a
recommended rejection of the claim. Upon resumption of ex
parte prosecution of the application, the examiner shall be
bound by the recommendation and shall enter and maintain the
recommended rejection unless an amendment or showing of
facts not previously of record is filed which, in the
opinion  of  the  examiner,  overcomes  the  recommended
rejection.

 (b)  Should the Board have knowledge of any ground for
reexamination of a patent involved in the interference as to
a  patent  claim  not  involved  in  the  judgment  of  the
interference,  it  may  include  in  its  decision  a
recommendation  to  the  Commissioner  that  the  patent  be
reexamined.  The  Commissioner  will  determine  whether
reexamination will be ordered.

 (c)  The Board may make any other recommendation to the
examiner or the Commissioner as may be appropriate.

 Under 37 CFR 1.659, the Board can make recommendations to
examiners and the Commissioner, including recommendations
that application claims not involved in the interference be
rejected and that a patent be reexamined as to patent claims
not involved in the interference.

 When a patent is involved in an interference each claim of
the patent will be designated to (1) correspond to a count
or (2) not correspond to a count. All claims which are
ultimately determined to correspond to a count will be
involved in the judgment of the interference. Inasmuch as
they are involved in the judgment of the interference, there
is no need to recommend reexamination of those claims. The
claims involved in the interference are either patentable or
unpatentable based on the final decision of the Board. 37
CFR  1.659(b)  merely  authorizes  the  Board  to  recommend
reexamination of patent claims which (1) are not involved in
the judgment and (2) for one reason or another neither party
saw fit to move to designate as corresponding to a count.

2360  Notice of Reexamination, Reissue, Protest, or
Litigation

 37 CFR 1.660.  Notice of reexamination, reissue, protest
or litigation.

 (a)  When a request for reexamination of a patent
involved in an interference is filed, the patent owner shall
notify the Board within 10 days of receiving notice that the
request was filed.

 (b)  When an application for reissue is filed by a
patentee involved in an interference, the patentee shall
notify the Board within 10 days of the day the application
for reissue is filed.

 (c)  When a protest under § 1.291 is filed against an
application involved in an interference, the applicant shall
notify the Board within 10 days of receiving notice that the
protest was filed.

 (d)  A party in an interference shall notify the Board
promptly  of  any  litigation  related  to  any  patent  or
application involved in an interference, including any civil
action commenced under 35 U.S.C. 146.

 Under 37 CFR 1.660, a party is required to notify the Board
when the party's patent or application becomes involved in
other PTO proceedings (reexamination, reissue, or protest)
or litigation. The requirements of 37 CFR 1.660 are designed
to keep the PTO and a party's opponent informed of activity
which is relevant to an interference. These rules attempt,
to the extent possible, to eliminate procedural surprise.
Inasmuch as mail delays occur and the PTO cannot react
instantaneously to every paper filed in connection with
every application or patent, the provisions of 37 CFR 1.660
are believed helpful in preventing surprise on the part of
opponents and unnecessary work by examiners - in - chief or
the Board due to a lack of knowledge of relevant activity
which may be taking place in the PTO .

  REISSUE APPLICATION FILED WHILE PATENT IS IN INTERFERENCE

 37 CFR 1.660(b) requires the patentee involved in the
interference to notify the Board of the filing of the
reissue application within 10 days of its filing date.

 The reissue application may be the subject of a motion
under 37 CFR 1.633(h), or may have been filed under 37 CFR
1.662(b) for the purpose of avoiding the interference.
Before  taking  any  action  on  the  reissue,  the  primary
examiner should consult the examiner - in - chief in charge
of the interference. It is particularly important that the
reissue application not be granted without the approval of
the examiner - in - chief.

2361  Termination of Interference After Judgment

 37 CFR 1.661.  Termination of interference after
judgment.

 After a final decision is entered by the Board, an
interference is considered terminated when no appeal (35
U.S.C. 141) or other review (35 U.S.C. 146) has been or can
be taken or had.

 37 CFR 1.661 sets forth when an interference is considered
terminated after a judgment is entered in the interference.
For the purpose of filing copies of settlement agreements
under 35 U.S.C. 135(c), if an appeal or civil action is not

filed, the interference is considered terminated as of the
date the time for filing an appeal or civil action expired,
37 CFR 1.661; Tallent v. Lamoine, 204 USPQ 1058 (Comm'r Pat.
1979). See also Nelson v. Bowler, 212 USPQ 760 (Comm'r Pat.
1981). If an appeal is taken to the Court of Appeals for the
Federal Circuit, the interference terminates on the date of
receipt of the court's mandate by the Patent and Trademark
Office. See MPEP § 1216.01. If a civil action is filed, and
the decision of the district court is not appealed, the
interference terminates on the date the time for filing an
appeal  from  the  court's  decision  expires,  Hunter  v.
Beissbarth, 15 USPQ2d 1343 (Comm'r. Pat. 1990).

2362  Request for Entry of Adverse Judgment

 37 CFR 1.662.  Request for entry of adverse judgement;
reissue filed by patentee.

 (a)  A party may, at any time during an interference,
request and agree to entry of an adverse judgment. The
filing by an applicant or patentee of a written disclaimer
of the invention defined by a count, concession of priority
or  unpatentability  of  the  subject  matter  of  a  count,
abandonment  of  the  invention  defined  by  a  count,  or
abandonment of the contest as to a count will be treated as
a request for entry of an adverse judgment against the
applicant or patentee as to all claims which correspond to
the count. Abandonment of an application by an applicant,
other than an applicant for reissue having a claim of the
patent sought to be reissued involved in the interference,
will betreated as a request for entry of an adverse judgment
against the applicant as to all claims corresponding to all
counts. Upon the filing by a party of a re quest for entry
of an adverse judgment, the Board may enter judgment against
the party.

 (b)  If a patentee involved in an interference files an
application for reissue during the interference and omits
all claims of the patent corresponding to the counts of the
interference for the purpose of avoiding the interference,
judgment may be entered against the patentee. A patentee who
files an application for reissue other than for the purpose
of avoiding the interference shall timely file a preliminary
motion under § 1.633(h) or show good cause why the motion
could  not  have  been  timely  filed  or  would  not  be
appropriate.

 (c)  The filing of a statutory disclaimer under 35
U.S.C.  253  by  a  patentee  will  delete  any  statutorily
disclaimed claims from being involved in the interference. A
statutory disclaimer will not be treated as a request for
entry of an adverse judgment against the patentee unless it
results in the deletion of all patent claims corresponding
to a count.

 37 CFR 1.662 provides that a party may request that an
adverse judgment be entered. The section also provides that
when a written disclaimer (not a statutory disclaimer),
concession of priority or unpatentability, abandonment of
the  invention,  abandonment  of  the  application,  or
abandonment  of  the  contest  is  filed,  the  disclaimer,
concession, or abandonment will be treated as a request for
entry of an adverse judgment. 37 CFR 1.622(b) provides that
when a patentee files a reissue application and omits all
claims of a patent corresponding to the counts of an

interference for the purpose of avoiding the interference,
judgment will be entered against the patentee. If the
reissue application is not filed for the purpose of avoiding
the interference, the patentee must either file a timely
motion under 37 CFR 1.633(h) to add it to the interference,
or show good cause (1) why the motion could not have been
timely  filed  or  (2)  why  such  a  motion  would  not  be
appropriate. Addition of the reissue application to the
interference might not be appropriate, for example, if the
reissue application was filed for the purpose of amending
claims  which  are  directed  to  an  invention  patentably
distinct  from  the  issue  of  the  interference  and  not
disclosed by the opposing party. Under 37 CFR 1.622(c), the
filing of a statutory disclaimer will not be treated as a
request for entry of an adverse judgment unless all patent
claims corresponding to a count are disclaimed. Under 37 CFR
1.662(d), if after entry of a judgment or after filing of a
statutory  disclaimer  no  interference  exists,  the
interference will be terminated as to any party against whom
judgment has not been entered and any further prosecution of
any application involved in the interference will be ex
parte before the examiner.

 When some of the patent claims corresponding to a count are
disclaimed, the interference proceeds on the basis of the
remaining claims which correspond to the count. If all
patent claims corresponding to a count are disclaimed,
judgment will be entered. The third sentence of 37 CFR
1.662(a) does not apply to an application which is not
involved  in  an  interference.  If  an  applicant  files  a
continuation - in - part application and successfully moves
(37 CFR 1.633(d)) to substitute the continuation - in - part
for  the  application  involved  in  the  interference,
abandonment of the application originally involved in the
interference would have no bearing on the interference.

2363  Action After Interference

 37 CFR 1.664.  Action after interference.

 (a)  After termination of an interference, the examiner
will promptly take such action in any application previously
involved in the interference as may be necessary. Unless
entered by order of an examiner - in - chief, amendments
presented during the interference shall not be entered, but
may be subsequently presented by the applicant subject to
the provisions of this subpart provided prosecution of the
application is not otherwise closed.

 (b)  After judgement, the application of any party may
be  held  subject  to  further  examination,  including  an
interference with another application.

 The files are not returned to the examining group until
after termination of the interference. Jurisdiction of the
examiner is automatically restored with the return of the
files, and the cases of all parties are subject to such ex
parte action as their respective conditions may require. The
date when the priority decision becomes final does not mark
the beginning of a statutory period for response by the
applicant. See  Ex parte Peterson , 49 USPQ 119, 1941 C.D. 8
(Comm'r Pat. 1941).

  The  action  to  be  taken  by  the  examiner  following
termination  of  the  interference  depends  upon  how  the

interference was terminated, and in some instances, the
basis of the termination. All interferences conducted under
rules 37 CFR 1.601 - 1.688 will be terminated by judgment.

 When the files are returned to the examining group after
termination of the interference, the primary examiner is
required to make an entry on the index in the interference
file on the next vacant line that the decision has been
noted, such as by the words "Decision Noted" and the primary
examiner's initials. The interference file is then returned
to the Service Branch of the Board when the examiner is
through with it. There it will be checked to see that such
note has been made and initialed before filing away the
interference record.

 If an application has been withdrawn from issue for
interference and is again passed to issue, a notation "Re -
examined and passed for issue" is placed on the file wrapper
together with a new signature of the primary examiner in the
box provided for this purpose. Such notation will be relied
on  by  the  Publishing  Division  as  showing  that  the
application is intended to be passed for issue and makes it
possible  to  screen  out  those  applications  which  are
mistakenly forwarded to the Publishing Division during the
pendency of the interference.

 See MPEP § 1302.12 with respect to listing references
discussed in motion decisions, and MPEP § 2364 concerning
the entry of amendments.

 Form Paragraph 11.02 may be used to resume ex parte
prosecution.

¶  11.02  Ex parte Prosecution is Resumed

 Interference No. [1] has been terminated by a decision [2]
to applicant. Ex parte prosecution is resumed.

 Examiner Note:

 In bracket 2, insert whether favorable or unfavorable.

2363.01 No Interference in Fact

 The Board may, if it finds that there is no interference in
fact, award judgment to both parties. In such a case, each
party - applicant may be granted a patent on the claims of
the applica tion designated to correspond to the count, if
those claims are otherwise patentable.

2363.02 The Winning Party

 If prosecution of the winning party's case had not been
closed,  the  winning  party  generally  may  be  allowed
additional and broader claims to the common patentable
subject matter. Note, however, In re Hoover Co., 134 F.2d
624, 57 USPQ 111 (CCPA 1943). The winning party of the
interference is not denied anything he or she was in
possession of prior to the interference, nor does he or she
acquire  any  additional  rights  as  a  result  of  the
interference. His or her case thus stands as it was prior to
the  interference.  If  the  application  was  under  final
rejection  as  to  some  of  its  claims  at  the  time  the
interference was formed, the institution of the interference
acted to suspend, but not vacate, the final rejection. After

termination of the interference, a letter is written the
applicant, as in the case of any other action unanswered at
the  time  the  interference  was  instituted,  setting  a
shortened period of 2 months within which to file an appeal
or cancel the finally rejected claims.

¶ 11.03  Office Action Unanswered

 This application contains an unanswered Office action
mailed on [1].

 A SHORTENED STATUTORY PERIOD FOR RESPONSE TO SUCH ACTION IS
SET TO EXPIRE [2] FROM THE DATE OF THIS LETTER.

 Examiner Note:

 This paragraph should be preceded by paragraph 11.02.

 In bracket [2] insert date, days or months.

2363.03 The Losing Party

 37 CFR 1.663.  Status of claim of defeated applicant
after interference.

 Whenever an adverse judgment is entered as to a count
against an applicant from which no appeal (35 U.S.C. 141) or
other review (35 U.S.C. 146) has been or can be taken or
had, the claims of the application corresponding to the
count stand finally disposed of without further action by
the examiner. Such claims are not open to further ex parte
prosecution.

 The Board's judgment in an interference conducted under 37
CFR 1.601 - 1.688 will state that the losing party is not
entitled to a patent containing the claims corresponding to
the count or counts. Under 37 CFR 1.663, such claims "stand
finally disposed of without further action by the examiner."
See also 35 U.S.C. 135(a). When the files are returned to
the examining group after termination of the interference, a
pencil line should be drawn through the claims as to which a
judgment of priority adverse to an applicant has been
rendered, and the notation "37 CFR 1.663" should be written
in the margin to indicate the reason for the pencil line. If
these claims have not been cancelled by the applicant and
the case is otherwise ready for issue, these notations
should be replaced by a line in red ink and the notation "37
CFR 1.663" in red ink before passing the case to issue, and
the applicant notified of the cancellation by an Examiner's
Amendment. If an action is necessary in the application
after  the  interference,  the  applicant  should  also  be
informed that "Claims (designated by numerals), as to which
a judgment adverse to the applicant has been rendered, stand
finally disposed of in accordance with 37 CFR 1.663."

 If all the claims in the application are eliminated, a
letter should be written informing the applicant that all
the  claims  in  the  application  have  been  disposed  of,
indicating the circumstances, that no claims remain subject
to prosecution, and that the application will be sent to the
abandoned  files  with  the  next  group  of  abandoned
applications. Proceedings are terminated as of the date the
interference terminated. See MPEP § 2361, third paragraph of
text.

 If the losing party's case was under rejection at the time
the interference was declared, such rejection is ordinarily
repeated (either in full or by reference to the previous
action) and, in addition, any other suitable rejections, as
discussed below, are made. If the losing party's application
was under final rejection or ready for issue, his or her
right to reopen the prosecution is restricted to subject
matter related to the issue of the interference.

 Where the losing party failed to get a copy of the
opponent's drawing or specification during the interference,
the losing party may order a copy thereof to enable said
party to respond to a rejection based on the successful
party's disclosure. Such order is referred to the examiner -
in - chief who has authority to approve orders of this
nature.

 In addition to repeating any outstanding rejection, the
examiner should consider whether any remaining claims in the
losing party's application should be rejected on the ground
of unpatentability under 35 U.S.C. 102 / 103 , or on the
ground of estoppel.

  1. UNPATENTABILITY UNDER 35 U.S.C. 102 / 103

 The examiner should determine from the Board's decision the
basis on which judgment was rendered against the applicant.
If the judgment was that applicant was not the first
inventor of the subject matter in issue, the application
claims may be rejected under 35 U.S.C. 102(g) / 103 as
unpatentable over the lost counts. If the judgment was based
on a holding that applicant derived the invention from
another, a rejection of claims as unpatentable over the lost
counts under 35 U.S.C. 102(f) / 103 may be in order. Where
the Board rendered judgment against the applicant because
his or her claims were unpatentable over prior art, under 35
U.S.C. 112, or on other grounds, the other claims in the
application should be review ed to determine whether any of
those grounds may be applicable to them.

  2. ESTOPPEL

 Claims which cannot be rejected as unpatentable over the
lost counts may still be subject to rejection on the ground
of estoppel. As stated in 37 CFR 1.658(c), a losing party
who could have properly moved under 37 CFR 1.633 or 1.634,
but failed to do so, is estopped to take subsequent action
in the PTO which is inconsistent with the party's failure to
properly move. However, in the event of a "split award," the
losing  party  is  not  estopped  as  to  claims  which
corresponded, or properly could have corresponded, to a
count which he or she won.

  The  following  examples  illustrate  the  application  of
estoppel to the losing party:

 Example 1 . Junior party applicant AL and senior party
applicant AK both disclose separate patentable inventions
"A" and "B" and claim only invention A in their respective
applications. An interference is declared with a single
count to invention A. Neither party files a motion under 37
CFR 1.633(c)(1) to add a count to invention B. Judgment as
to all of AL`s claims corresponding to the sole count is
awarded to junior party applicant AL. Senior party applicant
AK will be estopped to thereafter obtain a patent containing

claims to invention B, because applicant AK failed to move
to add a count to invention B in the interference. Junior
party applicant AL will not be estopped to obtain a patent
containing claims to invention B.

 Example 2 . In this example, the facts are the same as in
example 1 except that judgment is awarded as to all AK's
claims corresponding to the count to senior party applicant
AK. Junior party applicant AL will be estopped to obtain a
patent containing claims to invention B in the interference.
Senior party applicant AK will not be estopped to obtain a
patent containing claims to invention B.

 Example 3. Junior party applicant AM and senior party
applicant AP both disclose separate patentable inventions
"C", "D", and "E" and claim inventions C and D in their
respective applications. An interference is declared  with
two counts. Count 1 is to invention C and Count 2 is to
invention D. Neither party files a preliminary motion to add
a proposed Count 3 to invention E. judgment as to all AM's
claims corresponding to Counts 1 and 2 is awarded to junior
party AM. Senior party applicant AP will be estopped to
thereafter obtain a patent containing claims to invention E,
because applicant AP failed to move to add a count to
invention E to the interference. Junior party applicant AM
will not be estopped to obtain a patent containing a claim
to invention E.

 Example 4. In this example, the facts are the same as in
Example 3 except that judgment is awarded as to all AP's
claims corresponding to Counts 1 and 2 to senior party
applicant AP. Junior party applicant AM will be estopped to
obtain a patent containing claims to invention E, because
applicant AM failed to move to add a count to invention E in
the interference. Senior party applicant AP will not be
estopped to obtain a patent containing claims to invention
E.

 Example 5 . In this example, the facts are the same as in
Example 3 except that judgment is awarded on all of AM s
claims corresponding to Count 1 to junior party applicant AM
and judgment is awarded to all AP's claims corresponding to
Count 2 to senior party applicant AP. Both parties will be
estopped to obtain a patent containing claims to invention
E, because neither moved to add a count to invention E
during the interference. Assume that junior party AM could
have properly moved under 37 CFR 1.633(f) to be accorded the
benefit of an earlier application, but did not do so during
the interference. Junior party AM will not be estopped in
subsequent  ex parte prosecution from asking for benefit of
the earlier application as to the invention defined by Count
1. Accordingly, if the examiner were to reject junior party
AM's claim corresponding to Count 1 on the basis of some
newly  discovered  art,  junior  party  AM  could  properly
antedate the prior art by seeking the benefit under 35
U.S.C. 120 of the earlier application. Thus even though
junior party AM was a "losing party" as to Count 2 (an
adverse  judgment  as  to  junior  party  AM's  claims
corresponding to Count 2 having been entered), junior party
AM was awarded a favorable judgment (37 CFR 1.658(c)) as to
Count 1. Junior party AM will be estopped in subsequent  ex
parte prosecution from attempting to be accorded the benefit
of the earlier application as to the invention of Count 2.

 Example 6 . Applicant AQ discloses and claims invention

"F." Applicant AR discloses and claims separate patentable
inventions "F" and "G." The assignee of applicant AQ also
owns an application AS which discloses and claims invention
"G." An interference is declared between applicant AQ and
applicant AR. The sole count is directed to invention F. No
motion is filed by applicant AQ or its assignee to declare
an  additional  interference  between  applicant  AR  and
applicant AS with a count to invention G. A judgment as to
all AR's claims corresponding to the sole count is awarded
to applicant AR. Applicant AS and the assignee will be
estopped to obtain a patent containing claims to invention
G, because applicant AQ and the assignee failed to move to
declare an additional interference with a count to invention
G.

 Example 7. The facts in this example are the same as the
facts in Example 6 except that judgment as to all of AQ's
claims  corresponding  to  the  sole  count  is  awarded  to
applicant AQ. Applicant AS and the assignee would not be
estopped, because applicant AQ was not a "losing party" (37
CFR 1.658(c)).

 Example 8 . Applicant AT discloses a generic invention to
"solvent"  and  a  species  to  "benzene."  Application  AT
contains a patentable claim 1 (solvent) and no other claims.
Applicant AU discloses the generic invention to "solvent"
and species to "benzene" and "toluene." Application AU
contains patentable claim 3 (solvent) and no other claims.
An interference is declared with a single count (solvent).
Claim 1 of application AT and claim 3 of application AU are
designated  to  correspond  to  the  count.  No  preliminary
motions are filed. A judgment is entered in favor of
applicant AT on the claim corresponding to the sole count.
Applicant AU would be estopped to obtain a patent containing
a claim to benzene, because applicant AU failed to file a
preliminary motion under 37 CFR 1.633(c)(1) seeking to add a
count to benzene and benzene was disclosed in winning party
AT's application. Applicant AU would also be estopped to
obtain a patent containing a claim to toluene, unless
"toluene" defines a "separate patentable invention" from
"solvent."  A  basis  for  interference  estoppel  (37  CFR
1.658(c)) exists if "toluene" and "solvent" define the "same
patentable invention" because aclaim to "toluene" could
properly have been added and designated to correspond to the
count. See 37 CFR 1.633(c)(2).

 The following two examples illustrate the application of
estoppel against an applicant who lost the interference
based solely on the fact that the applicant was unable to
establish a date of invention prior to the opponent's
foreign filing date (see Ex parte Tytgat , 225 USPQ 907 (Bd.
App. 1985)):

 Example 9 . Application AV discloses engines in general and
in particular a 6 - cylinder engine. Application AV contains
only claim 1 (engine). Application AW discloses engines in
general, but does not specifically disclose a 6 - cylinder
engine. Application AW contains only a single claim 3
(engine). The U.S. "filing date" (37 CFR 1.601(h) of the AV
application is prior to the U.S. filing date of the AW
application,  but  the  AW  application  claims  a  foreign
priority date under 35 U.S.C. 119 based on an application
filed in a foreign country prior to the filing date of the
AV application. An interferenceis declared. The sole count
of the interference is to "an engine." Claim 1 of the AV

application and claim 3 of the AW application are designated
to  correspond  to  the  count.  During  the  interference,
applicant AV does not move under 37 CFR 1.633(c)(2) to add a
claim to a 6 - cylinder engine and to designate the claim to
correspond to the count. Applicant AW is awarded a judgment
in the interference based on the earlier filing date of the
foreign application. After the interference, applicant AV
adds claim 2 (6 - cylinder engine) to the AV application.
Whether AV would be entitled to a patent containing a claim
to a 6 - cylinder engine will depend solely on whether a 6 -
cylinder engine is a "separate patentable invention" from
"engine" - the subject matter of the count. If a 6 -
cylinder engine is a "separate patentable invention" within
the meaning of 37 CFR 1.601(n), applicant AV could not have
successfully moved under 37 CFR 1.633(c)(2) to add claim 2
and to designate it to correspond to the count. Therefore
applicant AV could obtain a patent containing claim 2. If,
on the other hand, a 6 - cylinder engine is not a "separate
patentable invention," claim 2 of the AV application would
be rejected on the basis of interference estoppel because
claim 2 could have been added by a motion under 37 CFR
1.633(c)(2). See 37 CFR 1.658(c).

 Example 10.  This example is basically the same as Example
9, except that application AV initially contains claim 1
(engine) and claim 2 (6 - cylinder engine). When the
interference is declared, both claims 1 and 2 of application
AV are designated to correspond to the count. During the
interference, applicant AV does not move under 37 CFR
1.633(c)(4) to designate claim 2 as not corresponding to the
count.  A  judgment  in  the  interference  is  entered  for
applicant AW based on the earlier filing date of the foreign
patent application. After the interference, applicant AV
would not be able to obtain a patent containing claim 2,
because the claim was designated to correspond to a count
and entry of the judgment constitutes a final decision by
the PTO refusing to grant applicant AV a patent containing
claim 2.

  ALLOWANCE OF LOSING PARTY'S APPLICATION

 Before allowing a losing party's application, the examiner
should carefully consider whether the grounds of estoppel
have  been  fully  applied.  In  order  to  promote  uniform
application of the doctrines of lost counts and estoppel,
the examiner must consult the examiner - in - chief who was
in charge of the interference before allowing the losing
party's case.

2364  Entry of Amendments

 Under 37 CFR 1.637(c)(1) and (2), (d)(3), (e)(1) and (2),
or (h), a moving party is required to submit with his or her
motion as a separate paper, an amendment embodying the
proposed claims if the claims are not already in the
application  concerned.  In  the  case  of  an  application
involved in the interference, this amendment is not entered
at that time but is placed in the application file.

 An amendment filed in connection with a motion to add or
substitute counts in an interference must include any claim
or claims to be added and be accompanied by the appropriate
fees (or fee authorization), if any, which would be due if
the amendment were to be entered, even though it may be that
the amendment will never be entered. Only upon the granting

of the motion may it be necessary for the other party or
parties  to  present  claims,  but  the  fees  (or  fee
authorization) must be paid whenever claims are presented.
Claims which have been submitted in response to a suggestion
by the Office for inclusion in an application must be
accompanied by the fee due (or fee authorization), if any.
Money paid in connection with the filing of a proposed
amendment will not be refunded by reason of the nonentry of
the amendment.

 If the motion is granted, the amendment is entered at the
time decision on the motion is rendered. If the motion is
not granted, the amendment, though left in the file, is not
entered and is so marked.

 If the motion is granted only in part and denied as to
another part, only so much of the amendment as is covered in
the grant of the motion is entered, the remaining part being
indicated and marked "not entered" in pencil. See 37 CFR
1.644.

  In  each  instance,  the  applicant  is  informed  of  the
disposition of the amendment in the first action in the case
following the termination of the interference. If the case
is otherwise ready for issue, the applicant is notified that
the application is allowed and the Notice of Allowance will
be sent in due course, that prosecution is closed, and to
what extent the amendment has been entered.

 As a corollary to this practice, it follows that where
prosecution of the winning application had been closed prior
to the declaration of the interference, as by being in
condition for issue, that application may not be reopened to
further prosecution following the interference, even though
additional claims had been presented in connection with a
motion in the interference.

 It should be noted at this point that, under 37 CFR 1.663,
the entry of an adverse judgment against a party who
requestssame pursuant to 37 CFR 1.662(a) finally disposes of
all claims of that party's application which are designated
as corresponding to the count.

2364.01 Amendments Filed During Interference

 If the amendment is filed in response to a letter by the
primary  examiner,  suggesting  a  claim  or  claims  for
interference with another party and for the purpose of
declaring an additional interference, the examiner enters
the amendment and takes the proper steps to initiate the
second interference.

  OTHER AMENDMENTS

  When  an  amendment  to  an  application  involved  in  an
interference  is  received,  the  examiner  inspects  the
amendmentand, if necessary, the application, to determine
whether or not the amendment affects the pending or any
prospective interference. If the amendment is an ordinary
one properly responsive to the last regular ex parte action
preceding the declaration of the interference and does not
affect the pending or any prospective interference, the
amendment is marked in pencil "not entered" and placed in
the file, a corresponding entry being endorsed in ink in the
contents column of the wrapper. After termination of the

interference, the amendment may be permanently entered and
considered as in the case of ordinary amendments filed
during the  ex parte prosecution of the case.

 If the amendment is one filed in a case where ex parte
prosecution of an appeal to the Board of Patent Appeals and
Interferences  is  being  conducted  concurrently  with  an
interference proceeding (see MPEP § 2314 and if it relates
to the appeal, it should be treated like any similar
amendment in an ordinary appealed case.

 When an amendment filed during interference purports to put
the application in condition for another interference either
with a pending application or with a patent, the primary
examiner must personally consider the amendment sufficiently
to determine whether, in fact, it does so.

 If the amendment presents allowable claims directed to an
invention  claimed  in  a  patent  or  in  another  pending
application in issue or ready for issue, the examiner
borrows the file, enters the amendment, and takes the proper
steps to initiate the second interference.

  Where  in  the  opinion  of  the  examiner,  the  proposed
amendment does not put the application in condition for
interference with another application not involved in the
interference, the amendment is placed in the file and marked
"not entered" and the applicant is informed why it will not
be now entered and acted upon.

 When the amendment seeks to provoke an interference with a
patent not involved in the interference and the examiner
believes that the claims presented are not patentable to the
applicant, and where the application is open to further ex
parte  prosecution,  the  file  should  be  obtained,  the
amendment entered, and the claims rejected, setting a time
limit for response. If reconsideration is requested and
rejection made final, a time limit for appeal should be set.
Where  the  application  at  the  time  of  forming  the
interference was closed to further  ex parte prosecution and
the disclosure of the application will  prima facie , not
support the claim presented, or where the claims presented
are drawn to a nonelected invention, the amendment will not
be entered and the applicant will be so informed giving very
briefly the reason for the nonentry of the amendment.

2365  Second Interference

 37 CFR 1.665.  Second interference.

 A second interference between the same parties will not be
declared upon an application not involved in an earlier
interference for an invention defined by a count of the
earlier interference. See § 1.658(c).

2366  Interference Settlement Agreement

 37 CFR 1.666.  Filing of interference settlement
agreements.

 (a)  Any agreement or understanding between parties to
an  interference,  including  any  collateral  agreements
referred  to  therein,  made  in  connection  with  or  in
contemplation of the termination of the interference, must
be in writing and a true copy thereof must be filed before

the termination of the interference ( § 1.661) as between
the parties to the agreement or understanding.

 (b)  If any party filing the agreement or understanding
under paragraph (a) of this section so requests, the copy
will be kept separate from the file of the interference, and
made  available  only  to  Government  agencies  on  written
request, or to any person upon petition accompanied by the
fee set forth in § 1.17(i) and on a showing of good cause.

 (c)  Failure to file the copy of the agreement or
understanding under paragraph (a) of this section will
render  permanently  unenforceable  such  agreement  or
understanding and any patent of the parties involved in the
interference  or  any  patent  subsequently  issued  on  any
application of the parties so involved. The Commissioner
may, however, upon petition accompanied by the fee set forth
in § 1.17(h) and on a showing of good cause for failure to
file within the time prescribed, permit the filing of the
agreement or understanding during the six month period
subsequent to the termination of the interference as between
the parties to the agreement or understanding.

 37 CFR 1.666 sets out the procedure for filing settlement
agreements in interference cases. The PTO is merely a
repository for copies of agreements filed under 35 U.S.C.
135(c) and does not undertake to rule on whether the statute
requires that a copy of any particular agreement be filed.
Nelson v.  Bowler , 212 USPQ 760 (Comm'r Pat. 1981).

 A Certificate of Mailing under 37 CFR 1.8 cannot be used
for the purpose of filing a settlement agreement, nor can
the settlement agreement be transmitted by facsimile, (37
CFR 1.6(d)(3) and 1.8(a)(2)(i)(C)).

2371  Evidence

 37 CFR 1.671.  Evidence must comply with rules.

 (a)  Evidence  consists  of  testimony  and  exhibits,
official records and publications filed under § 1.682,
evidence from another interference, proceeding, or action
filed under § 1.683, and discovery relied upon under §
1.688, and the specification (including claims) and drawings
of any application or patent:

 (1)  Involved in the interference.

 (2)  To which a party has been accorded benefit in the
notice declaring the interference or by a preliminary motion
granted under § 1.633.

 (3)  For which a party has sought, but has not been
denied, benefit by a preliminary motion under § 1.633.

 (4)  For which benefit was rescinded by a preliminary
motion granted under § 1.633.

 (b)  Except as otherwise provided in this subpart, the
Federal  Rules  of  Evidence  shall  apply  to  interference
proceedings. Those portions of the Federal Rules of Evidence
relating to criminal actions, juries, and other matters not
relevant to interferences shall not apply.

 (c)  Unless  the  context  is  otherwise  clear,  the

following terms of the Federal Rules of Evidence shall be
construed as follows:

 (1)  "Courts of the United States," "U.S. Magistrate,"
"court," "trial court," or "trier of fact" means examiner -
in - chief or Board as may be appropriate.

 (2)  "Judge" means examiner - in - chief.

 (3)  "Judicial notice" means official notice.

 (4)  "Civil action," "civil proceeding," "action," or
"trial" mean interference.

 (5)  "Appellate court" means United States Court of
Appeals for the Federal Circuit or a United States district
court when judicial review is under 35 U.S.C. 146.

 (6)  "Before the hearing" in Rule 703 means before
giving testimony by oral deposition or affidavit.

 (7)  "The trial or hearing " in Rules 803(24) and 804(5)
means the taking of testimony by oral deposition.

 (d)  Certification is not necessary as a condition to
admissibility when the record is a record of the Patent and
Trademark Office to which all parties have access.

 (e)  A party may not rely on an affidavit filed by that
party during ex parte prosecution of an application, an
affidavit under § 1.608, or an affidavit under § 1.639(b)
unless: (1) a copy of the affidavit is or has been served
and (2) a written notice is filed prior to the close of the
party's relevant testimony period stating that the party
intends to rely on the affidavit. When proper notice is
given under this paragraph, the affidavit shall be deemed
filed under § 1.672(b). A copy of the affidavit shall be
included in the record ( § 1.653).

 (f)  The significance of documentary and other exhibits
shall be discussed with particularity by a witness during
oral deposition or in an affidavit.

  g) A party must file a motion ( § 1.635) seeking
permission from an examiner - in - chief prior to taking
testimony or seeking documents or things under 35 U.S.C. 24.
The  motion  shall  describe  the  general  nature  and  the
relevance of the testimony, document, or thing.

 (h)  Evidence which is not taken or sought and filed in
accordance with this subpart shall not be admissible.

 37 CFR 1.671 sets out what will be considered evidence.

 37 CFR 1.671(b) and (c) provide that the Federal Rules of
Evidence apply to interference proceedings to the extent
indicated  in  the  rule.  It  should  be  noted  that  this
provision does not eliminate the well - settled requirement
for  independent  corroboration  of  prior  inventive  acts
performed by a party.

 Under 37 CFR 1.671(e), a party cannot rely on a previously
filed affidavit such as an affidavit under 37 CFR 1.131,
1.132, 1.608(b) or 1.639(b) unless the affidavit is served
and notice is given that the party intends to rely on the

affidavit. The purpose for the notice is to permit an
opponent to determine whether a deposition for cross -
examination is necessary (see 37 CFR 1.672(b) and 1.673(e)).

 37 CFR 1.671(e) is intended to overrule prior construction
of PTO rules in Holmes v.  Kelly , 586 F.2d 234, 237 n. 7,
199 USPQ 778, 782 n. 2 (CCPA 1978) and  Brecker v.  Jennings
, 204 USPQ 663 (Bd. Pat. Int. 1978), which considered a 37
CFR 1.132 affidavit in the file of an involved application
to be part of the "record" of an interference. Under 37 CFR
1.671(e), a party intending to rely on such an affidavit
must give notice and serve a copy of the affidavit on the
opponent.

 Even though the affidavit may have been considered by the
examiner - in - chief in deciding a preliminary motion, it
may not be considered by the Board at final hearing unless
37 CFR 1.671(e) has been complied with. Similarly, while 37
CFR 1.671(a) provides that specification (including claims)
and drawings of the involved and certain other cases are in
e vidence, other papers in those files are not in evidence
unless specifically introduced as exhibits.

 Under 37 CFR 1.671(f), the significance of documentary and
other exhibits must be discussed with particularity by a
witness during oral deposition or in an affidavit. 37 CFR
1.671(f)  sets  out  in  the  regulations  an  evidentiary
requirement imposed by precedent. See Popoff v.  Orchin ,
144 USPQ 762 (Bd. Pat. Int. 1963) (unexplained experimental
date should not be considered);  Chandler v.  Mock , 150
F.2d 563, 66 USPQ 209 (CCPA 1945) (records standing alone
were held to be meaningless), and  Smith v.  Bousquet , 111
F.2d 157, 45 USPQ 347 (CCPA 1940) (unexplained tests in
stipulated testimony are entitled to little weight). See
also  In re Borkowski , 505 F.2d 713, 184 USPQ 29 (CCPA
1974) and  Triplett v.  Steinmayer,129 F.2d 869, 54 USPQ 409
(CCPA 1942). Under 37 CFR 1.671(g), a party is required to
obtain permission from an examiner - in - chief prior to
proceeding under 35 U.S.C. 24. This requirement ensures that
a subpoena is necessary (e.g., a subpoena ordinarily should
not be necessary where testimony of an opponent is sought)
and that testimony sought through a 35 U.S.C. 24 subpoena is
relevant before a subpoena is issued. The motion seeking
permission to proceed under 35 U.S.C. 24, any opposition
thereto,  and  the  order  of  an  examiner  -  in  -  chief
authorizing the moving party to proceed under 35 U.S.C. 24
will be of assistance to a Federal court in the event a
party is required to resort to a court to enforce the
subpoena or to compel answers to questions propounded at any
deposition where a witness is appearing pursuant to a
subpoena. See  Sheehan v.  Doyle , 529 F.2d 38, 188 USPQ 545
(1st Cir. ),  cert. denied , 429 U.S. 870 (1976),  rehearing
denied , 429 U.S. 987 (1976).

 Under 37 CFR 1.671(h), any evidence which is not taken or
sought and filed in accordance with the regulations will not
be admissible.

 The courts have articulated a rule of law which the PTO
will continue to apply in determining admissibility of
laboratory notebooks under the "shop book", Rule 803(b)(6)
of the Federal Rules of Evidence. See; e.g., Alpert v.
Slatin , 305 F.2d 891, 134 USPQ 296 (CCPA 1962) and Elliott
v. Barker, 481 F.2d1337, 179 USPQ 100 (CCPA 1973).

 Ordinarily, the examiner - in - chief can order a party to
produce an individual for a deposition as long as the
individual is a party or is under the control of the party;
e.g., an employee of an assignee. Where so called "third
parties" are concerned, however, issuance of a subpoena may
be necessary, because the PTO has no authority to compel
attendance of third parties.

2372  Manner of Taking Testimony

 37 CFR 1.672.  Manner of taking testimony.

 (a)  Testimony of a witness may be taken by oral
deposition or affidavit in accordance with this subpart.

 (b)  A party wishing to take the testimony of a witness
whose testimony will not be compelled under 35 U.S.C. 24 may
elect to present the testimony of the witness by affidavit
or deposition. A party electing to present testimony of a
witness by affidavit shall, prior to the close of the
party's  relevant  testimony  period,  file  and  serve  an
affidavit of the witness or, where appropriate, a notice
under § 1.671(e). To facilitate preparation of the record (
§ 1.653(g) and (h)), a party should file an affidavit on
paper which is 8 1/2 by 11 inches (21.8 by 27.9 cm). A party
shall not be entitled to rely on any document referred to in
the affidavit unless a copy of the document is filed with
the affidavit. A party shall not be entitled to rely on any
thing mentioned in the affidavit unless the opponent is
given reasonable access to the thing. A thing is something
other than a document. After the affidavit is filed and
within a time set by an examiner - in - chief, any opponent
may file a request to cross - examine the witness on oral
deposition. If any opponent requests cross - examination of
an affiant, the party shall notice a deposition under §
1.673(e) for the purpose of cross - examination by any
opponent. Any redirect and recross shall take place at the
deposition. At any deposition for the purpose of cross -
examination of a witness whose testimony is presented by
affidavit, the party shall not be entitled to rely on any
document or thing not mentioned in one or more of the
affidavits filed under this paragraph, except to the extent
necessary to conduct proper redirect. A party electing to
present testimony of a witness by deposition shall notice a
deposition of the witness under § 1.673(a). The party who
gives notice of a deposition shall be responsible for
obtaining a court reporter and for filing a certified
transcript of the deposition as required by § 1.676.

 (c)  A party wishing to take the testimony of a witness
whose testimony will be compelled under 35 U.S.C. 24 must
first obtain permission from an examiner - in - chief under
§ 1.671(g). If permission is granted, the party shall notice
a deposition of the witness under § 1.673 and may proceed
under 35 U.S.C. 24. The testimony of the witness shall be
taken on oral deposition.

 (d)  Notwithstanding the provisions of this subpart, if
the parties agree in writing, a deposition may be taken
before any person authorized to administer oaths, at any
place, upon any notice, and in any manner, and when so taken
may be used like any other depositions.

 (e)  If the parties agree in writing, the testimony of
any witness may be submitted in the form of an affidavit

without opportunity for cross - examination. The affidavit
of the witness shall be filed in the Patent and Trademark
Office.

 (f)  If the parties agree in writing, testimony may be
submitted in the form of an agreed statement setting forth:
(1) How a particular witness would testify if called or (2)
the facts in the case of one or more of the parties. The
agreed statement shall be filed in the Patent and Trademark
Office. See § 1.653(a).

 37 CFR 1.672 sets forth the manner in which testimony shall
be taken. Testimony can be taken by deposition or affidavit
at the election of the party presenting the testimony. A
party presenting testimony by affidavit must file and serve
the affidavit. If the party presents testimony by affidavit
and an opponent elects to cross - examine the affiant, the
party is required to notice a deposition for the purpose of
cross - examination. Re - direct and re - cross will take
place at the deposition. Where the parties agree, testimony
can be presented by affidavit without opportunity for cross
-  examination  (see  37  CFR  1.672(e))  or  by  stipulated
testimony or an agreed statement of facts (see 37 CFR
1.672(f)).

 An affidavit may be used only when a witness agrees to sign
the affidavit. If an individual refuses to sign an affidavit
or voluntarily appear at a deposition the party calling the
witness will have to comply attendance at a deposition by a
subpoena under 35 U.S.C. 24 after receiving permission from
an examiner - in - chief.

 Before setting the times for discovery, taking testimony,
and filing the record, the examiner - in - chief in charge
of the interference will in all likelihood hold a pre -
trial conference with the parties lead attorneys. At this
conference, the attorneys should be prepared to discuss
whether they intend to take testimony, and whether the
testimony will be by oral deposition, by affidavit or
otherwise; the issues to be determined; the time which will
be required; and other matters relevant to the conduct of
the testimony. Following the conference, the examiner - in -
chief will normally issue an order setting the times for
discovery, taking testimony, and filing the record, and
making such other rulings as may be necessary in the
particular case.

 Former rule 37 CFR 1.287(a) required that a party provide
discovery by serving copies of documents and lists within a
specified time before taking testimony. The essence of this
requirement is carried forward in 37 CFR 1.673 where the
testimony of a witness is to be by deposition. If a witness'
tes timony will be by affidavit, prior service of documents
and lists is not required, but copies of documents referred
to in the affidavit must be filed and served therewith, and
the opponentmust be given reasonable access to any thing
mentioned therein, 37 CFR 1.672(b).

2373  Notice of Examination of Witness

 37 CFR 1.673.  Notice of examination of witness.

 (a)  A party electing to take testimony of a witness by
deposition shall, after complying with paragraphs (b) and
(g) of this section, file and serve a single notice of

deposition stating the time and place of each deposition to
be taken. Depositions may be noticed for a reasonable time
and place in the United States. Unless the parties agree in
writing, a deposition may not be noticed for any other place
without approval of an examiner - in - chief (see § 1.684).
The notice shall specify the name and address of each
witness and the general nature of the testimony to be given
by the witness. If the name of a witness is not known, a
general description sufficient to identify the witness or a
particular class or group to which the witness belongs may
be given instead.

 (b)  Unless the parties agree otherwise, a party shall
serve, but not file, at least three days prior to the
conference required by paragraph (g) of this section, if
service is made by hand or "Express Mail," or at least ten
days prior to the conference if service is made by any other
means, the following:

 (1)  A list and copy of each document in the party's
possession, custody, or control and upon which the party
intends to rely at any deposition and

 (2)  A list of and a proffer of reasonable access to
things in the party's possession, custody, or control and
upon which the party intends to rely at the deposition.

 (c)  A party shall not be permitted to rely at any
deposition on any witness not listed in the notice, or any
document not served or any thing not listed as required by
paragraph (b) of this section: (1) Unless all opponents
agree in writing or on the record to permit the party to
rely on the witness, document, or thing or (2) except upon a
motion ( § 1.635) promptly filed which is accompanied by any
proposed notice, additional documents, or lists and which
shows sufficient cause why the notice, documents, or lists
were not served in accordance with this section.

 (d)  Each opposing party shall have a full opportunity
to attend a deposition and cross - examine. If an opposing
party attends a deposition of a witness not named in a
notice and cross - examines the witness or fails to object
to the taking of the deposition, the opposing party shall be
deemed to have waived any right to object to the taking of
the deposition for lack of proper notice.

 (e)  A party electing to present testimony by affidavit
and who is required to notice depositions for the purpose of
cross - examination under § 1.672(b), shall, after complying
with paragraph (g) of this section, file and serve a single
notice of deposition stating the time and place of each
cross - examination deposition to be taken.

 (f)  The parties shall not take depositions in more than
one place at the same time or so nearly at the same time
that reasonable opportunity to travel from one place of
deposition to another cannot be had.

 (g)  Before serving a notice of deposition and after
complying with paragraph (b) of this section, a party shall
have an oral conference with all opponents to attempt to
agree on a mutually acceptable time and place for conducting
the deposition. A certificate shall appear in the notice
stating that the oral conference took place or explaining
why the conference could not be had. If the parties cannot

agree to a mutually acceptable place and time for conducting
the deposition at the conference, the parties shall contact
an examiner - in - chief who shall then designate the time
and place for conducting the deposition.

 (h)  A copy of the notice of deposition shall be
attached to the certified transcript of the deposition filed
under § 1.676(a).

 37 CFR 1.673 sets out how a deposition must be noticed. A
deposition can be noticed at any reasonable place in the
United States. The extent to which parties, witnesses, and
attorneys or agents have to travel may be considered in
determining whether a place is reasonable. Prior to serving
a notice of deposition, a party is required to take two
procedural steps. Under 37 CFR 1.673(b), a party is required
to serve a copy of the documents and a list of the things in
its possession, custody, and control upon which it intends
to rely. Under 37 CFR 1.673(g), the party is required to
have an oral conference (in person or by telephone) with all
opponents to attempt to agree on a mutually acceptable time
and place for taking the deposition. An examiner - in -
chief may set the time and place if agreement is not
reached. A single notice listing all the witnesses and the
general nature of their expected testimony is then served.
Under 37 CFR 1.673(c) and except as provided, a party can
not rely on any witness not mentioned in the notice, any
document not served, or any thing not listed. Under 37 CFR
1.673(h), a copy of any notice must be attached to the
certified transcript of each deposition filed.

2374  Persons Depositions Taken Before

 37 CFR 1.674.  Persons before whom depositions may be
taken.

 (a)  Within the United States or a territory or insular
possession of the United States a deposition shall be taken
before an officer authorized to administer oaths by the laws
of the United States or of the place where the examination
is held.

 (b)  Unless the parties agree in writing, the following
persons shall not be competent to serve as an officer: (1) A
relative or employee of a party, (2) a relative or employee
of an attorney or agent of a party, or (3) a person
interested, directly or indirectly, in the interference
either as counsel, attorney, agent, or otherwise.

 37 CFR 1.674 sets out the persons before whom depositions
can be taken.

2375  Examination of Witness

 37 CFR 1.675.  Examination of witness, reading and
signing transcript of deposition.

 (a)  Each witness before giving an oral deposition shall
be duly sworn according to law by the officer before whom
the deposition is to be taken.

 (b)  The  testimony  shall  be  taken  in  answer  to
interrogatories with any questions and answers recorded in
their regular order by the officer or by some other person,
who shall be subject to the provisions of § 1.674(b), in the

presence of the officer unless the presence of the officer
is waived on the record by agreement of all parties.

 (c)  All objections made at the time of the deposition
to the qualifications of the officer taking the deposition,
the manner of taking it, the evidence presented, the conduct
of any party, and any other objection to the proceeding
shall be noted on the record by the officer. Evidence
objected to shall be taken subject to any objection.

 (d)  Unless the parties agree in writing or waive
reading and signature by the witness on the record at the
deposition,  when  the  testimony  has  been  transcribed  a
transcript of the deposition shall be read by the witness
and then signed by the witness in the form of: (1) An
affidavit  in  the  presence  of  any  notary  or  (2)  a
declaration.

 37 CFR 1.675 sets out how a deposition is to be taken.

2376  Filing Transcript of Deposition

 37 CFR 1.676.  Certification and filing by officer,
marking exhibits.

 (a)  The officer shall prepare a certified transcript of
the  deposition  by  attaching  to  a  transcript  of  the
deposition a copy of the notice of deposition, any exhibits
to be annexed to the certified transcript, and a certificate
signed and sealed by the officer and showing:

 (1)  The witness was duly sworn by the officer before
commencement of testimony by the witness.

 (2)  The transcript is a true record of the testimony
given by the witness.

  (3) The name of the person by whom the testimony was
recorded and, if not recorded by the officer, whether the
testimony was recorded in the presence of the officer.

 (4)  The presence or absence of any opposing party.

 (5)  The place where the deposition was taken and the
day and hour when the deposition began and ended.

 (6)  The officer is not disqualified under § 1.674.

  (b) If the parties waived any of the requirements of
paragraph (a) of this section, the certificate shall so
state.

  (c)  The  officer  shall  note  on  the  certificate  the
circumstances under which a witness refuses to sign a
transcript.

  (d) Unless the parties agree otherwise in writing or on
the record at the deposition, the officer shall securely
seal the certified transcript in an envelope endorsed with
the style of the interference (e.g., Smith v. Jones), the
interference number, the name of the witness, and the date
of sealing and shall promptly forward the envelope to BOX
INTERFERENCE,  Commissioner  of  Patents  and  Trademarks,
Washington, D.C. 20231. Documents and things produced for
inspection during the examination of a witness, shall, upon

request of a party, be marked for identification and annexed
to the certified transcript, and may be inspected and copied
by any party, except that if the person producing the
documents and things desires to retain them, the person may:
(1) Offer copies to be marked for identification and annexed
to the certified transcript and to serve thereafter as
originals  if  the  person  affords  to  all  parties  fair
opportunity to verify the copies by comparison with the
originals or (2) offer the originals to be marked for
identification, after giving each party an opportunity to
inspect and copy them, in which event the documents and
things may be used in the same manner as if annexed to the
certified transcript. The exhibits shall then be filed as
specified in § 1.653(i). If the weight or bulk of a document
or thing shall reasonably prevent the document or thing from
being annexed to the certified transcript, it shall, unless
waived on the record at the deposition of all parties, be
authenticated  by  the  officer  and  forwarded  to  the
Commissioner in a separate package marked and addressed as
provided in this paragraph.

 37 CFR 1.676 sets out how a court reporter should prepare
and file a certified transcript of a deposition. 37 CFR
1.676(d)  sets  out  how  exhibits  are  to  be  marked  for
identification, used at deposition, and filed. Provisions
similar to those of Rule 30(f)1)(A) and (B) of the Federal
Rules of Civil Procedure are applicable to interferences.

 A transcript of a deposition cannot be transmitted by
facsimile, (37 CFR 1.6(d)(9)).

2377  Form of Transcript of Deposition

 37 CFR 1.677.  Form of a transcript of deposition.

 (a)  A transcript of a deposition must be typewritten on
opaque, unglazed, durable paper approximately 8 1/2 by 11
inches (21.8 by 27.9 cm.) in size (letter size). Typing
shall be double - spaced on one side of the paper in not
smaller than pica - type with a margin of 1 1/2 inches (3.8
cm.) on the left - hand side of the page. The pages must be
consecutively numbered throughout the entire record of each
party ( § 1.653(d)) and the name of the witness must be
typed at the top of each page ( § 1.653(e)). The questions
propounded to each witness must be consecutively numbered
unless paper with numbered lines is used and each question
must be followed by its answer.

 (b)  Exhibits must be numbered consecutively and each
must be marked as required by § 1.653(i).

 37 CFR 1.677 sets out the form of a transcript of a
deposition.

2378  Time for Filing Transcript of Deposition

 37 CFR 1.678.  Transcript of deposition must be filed.

 Unless otherwise ordered by an examiner - in - chief, a
certified transcript of a deposition must be filed in the
Patent and Trademark Office within 45 days from the date of
deposition.  If  a  party  refuses  to  file  a  certified
transcript, the examiner - in - chief or the Board may take
appropriate action under § 1.616. If a party refuses to file
a certified transcript, any opponent may move for leave to

file the certified transcript and include a copy of the
transcript as part of the opponent's record.

 Under 37 CFR 1.678, a transcript of a deposition must be
filed in the PTO within 45 days of the date of the
deposition.

2379  Inspection of Transcript

 37 CFR 1.679.  Inspection of transcript.

 A certified transcript filed in the Patent and Trademark
Office  may  be  inspected  by  any  party.  The  certified
transcript may not be removed from the Patent and Trademark
Office for printing ( § 1.653(g)) unless authorized by an
examiner - in - chief upon such terms as may be appropriate.

2382  Official Records and Printed Publications

 37 CFR 1.682.  Official records and printed
publications.

 (a)  A party may introduce into evidence, if otherwise
admissible, any official record or printed publication not
identified on the record during the taking of testimony of a
witness, by filing a notice offering the official record or
publication into evidence. If the evidence relates to the
party's case - in - chief, the notice shall be filed prior
to close of testimony of the party's case - in - chief. If
the evidence relates to rebuttal, the notice shall be filed
prior to the close of testimony of the party's case - in -
rebuttal. The notice shall: (1) Identify the official record
or printed publication, (2) identify the portion thereof to
be  introduced  in  evidence,  (3)  indicate  generally  the
relevance  of  the  portion  sought  to  be  introduced  in
evidence, and (4) where appropriate, be accompanied by a
certified copy of the official record or a copy of the
printed publication ( § 1.671(d)).

 (b)  A  copy  of  the  notice,  official  record,  and
publication shall be served.

 (c)  Unless otherwise ordered by an examiner - in -
chief, any written objection to the notice or to the
admissibility of the official record or printed publication
shall be filed within 15 days of service of the notice. See
also § 1.656(h).

 37 CFR 1.682 sets out how a party may introduce in
evidence,  if  otherwise  admissible,  official  records  or
printed publications. When a notice is served, a party is
also required to serve (but not file) copies of the official
records and printed publications. Any objection to the
notice or to the admissibility of any official record or
publication must be filed within 15 days of the date of
service of the notice.

 If an official record or printed publication is made an
exhibit during a deposition or in an affidavit, it need not
be submitted under 37 CFR 1.682. 37 CFR 1.682 permits a
party to make an official record or printed publication part
of the evidence being considered at final hearing without
calling  a  witness.  The  official  record  or  printed
publication must, however, be self - authenticating. On the
other hand, a party maypresent the official record or

printed publication as an exhibit during testimony. When
this latter course is followed, there is no need to take
advantage of the provisions of 37 CFR 1.682.

2383  Testimony From Another Interference or Proceeding

 37 CFR 1.683.  Testimony in another interference,
proceeding, or action.

 (a)  Prior to close of a party's appropriate testimony
period or within such time as may be set by an examiner - in
- chief, a party may file a motion ( § 1.635) for leave to
use in an interference testimony of a witness from another
interference,  proceeding,  or  action  involving  the  same
parties,  subject  to  such  conditions  as  may  be  deemed
appropriate by an examiner - in - chief. The motion shall
specify with particularity the exact testimony to be used
and shall demonstrate its relevance.

 (b)  Any objection to the admissibility of the testimony
of the witness shall be made in an opposition to the motion.
See also § 1.656(h).

 37 CFR 1.683 sets out how a party may use testimony from
another interference or proceeding.

2384  Testimony in a Foreign Country

 37 CFR 1.684.  Testimony in a foreign country.

 (a)  An examiner - in - chief may authorize testimony of
a witness to be taken in a foreign country. A party seeking
to take testimony in a foreign country shall, prior to the
close of the party's appropriate testimony period or within
such time as may be set by an examiner - in - chief, file a
motion ( § 1.635):

 (1)  Naming the witness.

 (2)  Describing the particular facts to which it is
expected that the witness will testify.

 (3)  Stating the grounds on which the moving party
believes that the witness will so testify.

 (4)  Demonstrating  that  the  expected  testimony  is
relevant.

 (5)  Demonstrating that the testimony cannot be taken in
this country at all or cannot be taken in this country
without hardship to the moving party greatly exceeding the
hardship to which all opposing parties will be exposed by
the taking of the testimony in a foreign country.

 (6)  Accompanied by an affidavit stating that the motion
is made in good faith and not for the purpose of delay or
harassing any party.

  (7) Accompanied by written interrogatories to be asked of
the witness.

 (b)  Any opposition under § 1.638(a) shall state any
objection to the written interrogatories and shall include
any cross - interrogatories to be asked of the witness. A
reply under § 1.638(b) may be filed and shall be limited to

stating  any  objection  to  any  cross  -  interrogatories
proposed in the opposition.

 (c)  If the motion is granted, the moving party shall be
responsible for obtaining answers to the interrogatories and
cross - interrogatories before an officer qualified to
administer oaths in the foreign country under the laws of
the United States or the foreign country. The officer shall
prepare  a  transcript  of  the  interrogatories,  cross  -
interrogatories, and recorded answers to the interrogatories
and  cross  -  interrogatories  and  shall  transmit  the
transcript to BOX INTERFERENCE, Commissioner of Patents and
Trademarks,  Washington,  D.C.  20231,  with  a  certificate
signed and sealed by the officer and showing:

 (1)  The witness was duly sworn by the officer before
answering the interrogatories and cross)interrogatories.

 (2)  The recorded answers are a true record of the
answers given by the witness to the interrogatories and
cross - interrogatories.

 (3)  The name of the person by whom the answers were
recorded and, if not recorded by the officer, whether the
answers were recorded in the presence of the officer.

 (4)  The presence or absence of any party.

 (5)  The place, day, and hour that the answers were
recorded.

 (6)  A copy of the recorded answers was read by or to
the witness before the witness signed the recorded answers
and that the witness signed the recorded answers in the
presence  of  the  officer.  The  officer  shall  state  the
circumstances under which a witness refuses to read or sign
recorded answers.

 (7)  The officer is not disqualified under § 1.674.

 (d)  If the parties agree in writing, the testimony may
be taken before the officer on oral deposition.

 (e)  A party taking testimony in a foreign country shall
have the burden of proving that false swearing in the giving
of testimony is punishable as perjury under the laws of the
foreign country. Unless false swearing in the giving of
testimony before the officer shall be punishable as perjury
under the laws of the foreign country where testimony is
taken, the testimony shall not be entitled to the same
weight as testimony taken in the United States. The weight
of the testimony shall be determined in each case.

 37 CFR 1.684 sets out how a party may take testimony in a
foreign country.

 37 CFR 1.684 does not apply to cross - examination. If a
party submits an affidavit under 37 CFR 1.672(b) or intends
to rely on an affidavit under 37 CFR 1.617(e), the party
must make the affiant available for cross - examination at a
deposition. See 37 CFR 1.673(e). A deposition may be noticed
only "for a reasonable time and place in the United States."
See 37 CFR 1.673(a). Accordingly, it is not expected that 37
CFR 1.684(a) will be used to cross - examine affiants
residing  in  foreign  countries.  The  party  filing  the

affidavit will be required to make the affiant available for
cross - examination in the United States.

  Interrogatories,  cross  -  interrogatories,  or  recorded
answers under 37 CFR 1.684(c) cannot be transmitted by
facsimile, (37 CFR 1.6(d)(9)).

2385  Errors in Deposition

 37 CFR 1.685.  Errors and irregularities in depositions.

 (a)  An error in a notice for taking a deposition is
waived unless a motion ( § 1.635) to quash the notice is
filed  as  soon  as  the  error  is,  or  could  have  been,
discovered.

 (b)  An objection to a qualification of an officer
taking a deposition is waived unless:

 (1)  The  objection  is  made  on  the  record  of  the
deposition before a witness begins to testify.

 (2)  If discovered after the deposition, a motion ( §
1.635) to suppress the deposition is filed as soon as the
objection is, or could have been, discovered.

 (c)  An error in irregularity in the manner in which
testimony is transcribed, a certified transcript is signed
by a witness, or a certified transcript is prepared, signed,
certified, sealed, endorsed, forwarded, filed, or otherwise
handled by the officer is waived unless a motion ( § 1.635)
to suppress the deposition is filed as soon as the error of
irregularity is, or could have been, discovered.

 (d)  An objection to the competency of a witness,
admissibility of evidence, manner of taking the deposition,
the form of questions and answers, any oath or affirmation,
or conduct of any party at the deposition is waived unless
an objection is made on the record at the deposition stating
the specific ground of objection. Any objection which a
party wishes considered by the Board at final hearing shall
be included in a motion to suppress under § 1.656(h).

 (e)  Nothing in this section precludes taking notice of
plain errors affecting substantial rights although they were
not brought to the attention of an examiner - in - chief or
the Board.

 37 CFR 1.685 sets out how objections during the taking of
depositions must be raised. Under 37 CFR 1.685(a), an error
in a notice of deposition is waived unless a motion to quash
the notice is filed as soon as the error is, or could have
been, discovered. Under 37 CFR 1.685(b), any objection to
the qualifications of the officer is waived unless (1) the
objection is noted on the record of the deposition before
the witness begins to testify or (2) if discovered after the
deposition, a motion to suppress is filed as soon as the
objection is, or could have been, discovered. Under 37 CFR
1.685(c), any error in the manner in which testimony is
transcribed, the transcript is signed by a witness, or the
transcript is prepared or otherwise handled by the court
reporter is waived unless a motion to suppress is filed as
soon as the error is, or could have been, discovered. Under
37  CFR  1.685(d),  any  objection  on  the  merits  to  the
admissibility of evidence (e.g., under the Federal Rules of

Evidence) is waived unless an objection is made on the
record at the deposition stating the specific ground of
objection.  Often  objections  are  cured  by  subsequent
testimony. Accordingly, any objection which a party wants
the Board to consider at final hearing must also be made the
subject of a motion under 37 CFR 1.656(h).

 37 CFR 1.685(d) requires an objection to be stated on the
record. An objection to the admissibility of evidence must
be stated on the record and a motion under 37 CFR 1.656(h)
renewing the objection at final hearing must be filed. No
longer will a party be permitted to attend a deposition and
fail to enter an objection only to raise the objection at
final hearing.

 A single examiner - in - chief may rule on admissibility of
evidence "where appropriate" and in "unusual" circumstances.
There are times during interferences where a motion in
limine can be helpful. For example, a junior party during
its case - in - chief may wish to examine a witness on a
document  which  was  not  served  as  required  by  37  CFR
1.673(b)(1). The senior party objects and realizes that if
the junior party is permitted to examine the witness on the
document,  extensive  cross  -  examination  using  numerous
documents would be necessary. In order to avoid wasting
considerable time, the parties could contact the examiner -
in - chief by phone for a determination in limine on whether
the junior party should be able to examine the witness on
the document. Under the circumstances outlined, the examiner
- in - chief in his or her discretion could enter an order
excluding the document from evidence. The order would be
subject  to  a  request  for  reconsideration.  See  37  CFR
1.640(c). Ordinarily, however, it would be expected that
parties would present evidence subject to objection. See 37
CFR 1.675(c), last sentence. It is not envisioned that a
single examiner - in - chief will routinely rule on the
admissibility of evidence.

2387  Additional Discovery

 37 CFR 1.687.  Additional discovery.

 (a)  A party is not entitled to discovery except as
authorized in this subpart.

 (b)  Where appropriate, a party may obtain production of
documents and things during cross - examination of an
opponent's witness or during the testimony period of the
party's case - in - rebuttal.

 (c)  Upon a motion ( § 1.635) brought by a party within
the time set by an examiner - in - chief under § 1.651 or
thereafter as authorized by § 1.645 and upon a showing that
the interest of justice so requires, an examiner - in -
chief may order additional discovery, as to matters under
the control of a party within the scope of the Federal Rules
of Civil Procedure, specifying the terms and conditions of
such additional discovery.

 (d)  The parties may agree to discovery among themselves
at any time. In the absence of an agreement, a motion for
additional discovery shall not be filed except as authorized
by this subpart.

 37 CFR 1.687 sets out how a party could seek and obtain

additional discovery. "Additional discovery" is defined in
37 CFR 1.601(a). 37 CFR 1.687(c) does not change the
standard ("interest of justice") for obtaining discovery.

 Additional discovery obtained under a protective order
issued by either the PTO or a district court will not be
admitted  in  evidence  in  the  PTO  in  determining  the
interference. All evidence submitted in an interference must
be made available to the public under the provisions of 37
CFR 1.11(a). Accordingly, any protective orders have to be
vacated before a document could be admitted in evidence in
the  PTO  which  is  subject  to  a  protective  order.  The
following example illustrates how the practice would work.

 Example. An interference involves party X and party Y.
During  the  interference,  party  X  files  a  motion  for
additional discovery under 37 CFR 1.687(c) asking that party
Y be required to produce certain documents. Party Y opposes
on the sole ground that the documents contain trade secret
and confidential information. Party Y indicates that it has
no objection to producing the documents for inspection by
counsel for party X, but insists that party X not be
permitted to inspect the documents. Accordingly, party Y
asks the examiner - in - chief to authorize the discovery
subject to entry of a protective order. Party Y argues,
however,  that  the  sanctions  of  37  CFR  1.616  are  not
sufficient in the event of a violation of the protective
order. Anexaminer - in - chief concludes that additional
discovery should be ordered, that a protective order is
appropriate, and that the sanctions of 37 CFR 1.616 are not
sufficient in the event of a violation of the protective
order. Under the circumstances, the examiner - in - chief
would enter an order directing party Y to produce the
documents for inspection by counsel of party X on the
condition that party X seek production of the documents by a
subpoena  duces secum under 35 U.S.C. 24. Upon issuance of
any subpoena, party Y could move the district court for
entry of a protective order. If the district court enters
the protective order, party Y can produce the documents to
counsel for party X. If the protective order of the examiner
- in - chief is violated, an appropriate sanction up to and
including judgment may be entered by the Board. In addition,
party Y would be in a position to seek contempt or sanctions
in  the  district  court.  The  documents  produced  for
interference  (until  the  protective  order  is  vacated),
because those documents are not documents which can be made
available to the public under 37 CFR 1.11(a).

2388  Use of Discovery

 37 CFR 1.688.  Use of discovery.

 (a)  If otherwise admissible a party may introduce into
evidence, an answer to a written request for an admission or
an answer to a written interrogatory obtained by discovery
under § 1.687 by filing a copy of the request for admission
or the written interrogatory and the answer. If the answer
relates to a party's case - in - chief, the answer shall be
filed prior to the close of testimony of the party's case -
in - chief. If the answer relates to the examiner - in -
chief, any written objection to the admissibility of an
answer shall be filed within 15 days of service of the
answer.

 (b)  A party may not rely upon any other matter obtained

by discovery unless it is introduced into evidence under
this subpart.

 37 CFR 1.688 sets out how a party can introduce into
evidence admissions and answers to interrogatories obtained
as a result of additional discovery.

2390  Arbitration of Interferences

 35 U.S.C. 135.  Interferences

  *****

 (d)  Parties to a patent interference, within such time
as may be specified by the Commissioner by regulation, may
determine such contest or any aspect thereof by arbitration.
Such arbitration shall be governed by the provisions of
title 9 to the extent such title is not inconsistent with
this  section.  The  parties  shall  give  notice  of  any
arbitration award to the Commissioner, and such award shall,
as between the parties to the arbitration, be dispositive of
the issues to which it relates. The arbitration award shall
be unenforceable until such notice is given. Nothing in this
subsection shall preclude the Commissioner from determining
patentability of the invention involved in the interference.

 37 CFR 1.690.  Arbitration of interferences.

 (a)  Parties to a patent interference may determine the
interference or any aspect thereof by arbitration. Such
arbitration shall be governed by the provisions of Title 9,
United States Code. The parties must notify the Board in
writing of their intention to arbitrate. An agreement to
arbitrate must be in writing, specify the issues to be
arbitrated, the name of the arbitrator or a date not more
than thirty (30) days after the execution of the agreement
for the selection of the arbitrator, and provide that the
arbitrator's award shall be binding on the parties and that
judgment thereon can be entered by the Board. A copy of the
agreement must be filed within twenty (20) days after its
execution. The parties shall be solely responsible for the
selection of the arbitrator and the rules for conducting
proceedings before the arbitrator. Issues not disposed of by
the arbitrator will be resolved in accordance with the
procedures established in 37 CFR, Subpart E of Part 1, as
determined by the examiner - in - chief.

 (b)  An arbitration proceeding under this section shall
be conducted within such time as may be authorized on a case
- by - case basis by an examiner - in - chief.

 (c)  An arbitration award will be given no consideration
unless it is binding on the parties, is in writing and
states in a clear and definite manner (1) the issue or
issues arbitrated and (2) the disposition of each issue. The
award may include a statement of the grounds and reasoning
in support thereof. Unless otherwise ordered by an examiner
- in - chief, the parties shall give notice to the Board of
an arbitration award by filing within twenty (20) days from
the  date  of  the  award  signed  by  the  arbitrator  or
arbitrators. When an award is timely filed, the award shall,
as to the parties to the arbitration, be dispositive of the
issue or issues to which it relates.

 (d)  An arbitration award shall not preclude the Office

from determining patentability of any invention involved in
the interference.

 Under 37 CFR 1.690 the arbitrator can determine issues of
patentability as between the parties but a determination by
him or her that the subject matter is patentable would not
be binding upon the PTO. If the arbitrator's award holds
that  a  party's  claims  corresponding  to  the  count  are
unpatentable over prior art or under 35 U.S.C. 112, that
determination would be binding on that party vis - a-vis the
party's opponent and would result in a judgment adverse to
that party. The judgment, however, would not discharge the
duty that each party has under 37 CFR 1.56 to bring to the
attention of the examiner in charge of its respective
application any prior art and/or reason relied on by the
arbitrator in the determination of unpatentability.

 It is the longstanding practice of the PTO to favor the
settlement of interferences and the PTO looks with favor on
all proper efforts in that direction as being conducive to
the termination of the proceeding. See 4 Rivise and Caesar,
Inte rference Law and Practice , § 861, p. 2956 (  Michie Co
. 1948) and the Commissioner's Notice of November 9, 1976,
titled,  "Extensions  of  time  and  Filing  of  Papers  in
Interferences," 953 Official Gazette 2 (December 7, 1976).
In this regard, the notice states that:

 . .stipulations or motions for extensions of time under
37 CFR 1.245 will not henceforth be approved or granted,
respectively, unless accompanied by a detailed showing of
facts sufficient to establish that the action for which the
extension is sought could not have been or cannot be taken
or completed during the time previously set therefor, and
that the entire extension appears necessary for the taking
or completion of that action. Since the Office favors the
amicable  settlement  of  interferences,  the  foregoing
requirement will be liberally applied in the case of a first
request for extension of time for the purpose of negotiating
settlement.

 Consequently, the examiner - in - chief may give favorable
consideration to a motion for an extension of time for
purposes of settlement; however, a further motion for an
extension for that purpose would not be granted unless it is
accompanied by a schedule of specific dates showing that the
parties will make a good faith effort to promptly terminate
the pro ceeding. If preliminary motions under 37 CFR 1.633
have not been filed, the examiner - in - chief would not
normally  extend  the  time  for  their  filing  merely  for
purposes of settlement. In these circumstances, the examiner
- in - chief would require that the preliminary motions be
filed or that their filing be waived.

 If the proceeding is in the testimony stage, the examiner -
in - chief could grant the parties' motion to extend all the
unexpired testimony times to close concurrently on the date
the record is due provided they file a stipulation that any
evidence to be submitted will be in one of the forms
specified in 37 CFR 1.672(e) and (f); i.e., affidavit
testimony or a stipulation either as to what a particular
witness would testify to if called or the facts in the case
of any party.

  Analogously,  the  aforesaid  practice  would  apply  to
arbitration. 37 CFR 1.690 requires that parties who intend

to arbitrate an interference notify the examiner - in -
chief in writing of their intention to arbitrate and file a
copy of the arbitration agreement within 20 days of its
execution. Pursuant to 35 U.S.C. 135(c), an agreement to
arbitrate is considered to be one "made in connection with
and  in  contemplation  of  the  termination  of  the
interference". The agreement must be in writing and a copy
filed in the PTO within 20 days after its e xecution. The
notification of intention to arbitrate must be made in a
separate paper. Merely incorporating the notification in the
agreement is not sufficient is comply with 37 CFR 1.690(a).
The parties also will be required to adhere to a time
schedule approved by the examiner - in - chief such that the
interference proceeding can be expeditiously resolved so as
to prevent the unnecessary postponement of the beginning of
the running of the term of any patent resulting from an
application  involved  in  the  interference,  Pritchard  v.
Loughlin, 361 F.2d 483, 149 USPQ 841 (CCPA 1966).

 If the parties desire to arbitrate an interference prior to
the close of the motion period, the examiner - in - chief
will not normally grant an extension of time for that
purpose.  The  parties  will  be  required  to  file  their
preliminary motions under 37 CFR 1.633. After the motions
are filed, the examiner - in - chief could grant an
extension only upon compliance with 37 CFR 1.645 which
requires a showing of "good cause." Such a "good cause"
showing would normally include a schedule, agreed to by the
parties,  setting  forth,  inter  alia,  the  dates  for(1)
executing  the  arbitration  agreement,  (2)  determining
priority, and (3) terminating the interference.

 37 CFR 1.690(a) requires that an arbitration agreement
include the following:

  (1)  The name of the arbitrator or a date certain
(not more than 30 days after the execution of the agreement)
for his or her selection.

  (2)  The issues to be decided by the arbitrator.

  (3)  A provision that the arbitrator's award is
binding on the parties and that the Board can enter a
judgment based thereon.

 37 CFR 1.690(c) requires that a copy of the arbitration
award be filed within 20 days from the date of the award or
by a date set by the examiner - in - chief.

 If the proceeding is in the testimony stage and the parties
desire to arbitrate, the examiner - in - chief could grant a
reasonable extension for that purpose. A motion for a
further extension for that purpose would not be granted
unless it were accompanied by a schedule, agreed to by the
parties, setting forth, inter alia , the dates for (1)
executing  the  arbitration  agreement,  (2)  determining
priority, and (3) terminating the interference. If the
parties were to submit the required schedule, a motion for a
further extension could be granted. If the parties file a
copy of the arbitration agreement and they agree that any
evidence submitted in the proceeding will be in one of the
forms specified by 37 CFR 1.672(e) or (f), the examiner - in
- chief could give favorable consideration to the parties'
motion that all the unexpired times be extended to close
concurrently on the date the record is due. By that date,

the parties would be required to file the arbitrator's award
and their records, if necessary, for the resolution of any
issue not decided by the arbitrator. If the award is not
dispositive of all the issues in the interference, the
examiner - in - chief would set brief times so that the
parties could explain their evidence relating to any issues
which the arbitrator did not, or was unable to, decide. For
example, the award might be dispositive of the issue of
priority between the parties and leave for the Board's
determination the question of substituting a new count
raised in a preliminary motion under 37 CFR 1.633.

 The arbitration award, filed by the parties, would be in
the nature of a final decision and should include the follo
wing:

  (1)  The style (e.g., Jones  v.  Smith ), the
number of the interference and the names of the real parties
in interest.

  (2)  The subject matter in issue, i.e., the counts
and  a  table  of  counts,  if  necessary,  indicating  the
relationship of the parties' claims corresponding to each
count and those claims not corresponding thereto.

  (3)  The issues for decision before the arbitrator.

  (4)  The arbitrator's decision. The decision may
also include a statement of the grounds and reasoning in
support thereof.

  (5)  A summary, if appropriate, indicating, inter
alia , that judgment should be awarded to one of the
parties.

 Any party to the arbitration can attack the award only in
the manner provided by 9 U.S.C. and 11.9 U.S.C. 10 reads as
follows:

 In either of the following cases the United States court in
and for the district wherein the award was made may make an
order vacating the award upon the application of any party
to the arbitration  __

 (a)  Where the award was procured by corruption, fraud,
or undue means.

 (b)  Where there was evident partiality or corruption in
the arbitrators, or either of them.

 (c)  Where the arbitrators were guilty of misconduct in
refusing to postpone the hearing, upon sufficient cause
shown,  or  in  refusing  to  hear  evidence  pertinent  and
material to the controversy; or of any other misbehavior by
which the rights of any party have been prejudiced.

 (d)  Where the arbitrators exceeded their powers, or so
imperfectly executed them that a mutual, final, and definite
award upon the subject matter submitted was not made.

 (e)  Where an award is vacated and the time within which
the agreement required the award to be made has not expired
the court may, in its discretion, direct a rehearing by the
arbitrators.

 9 U.S.C. 11 reads as follows:

 In either of the following cases the United States court in
and for the district wherein the award was made may make an
order  modifying  or  correcting  the  a  ward  upon  the
application of any party to the arbitration  __

 (a)  Where there was an evident material miscalculation
of figures or an evident material mistake in the description
of any person, thing, or property referred to in the award.

 (b)  Where the arbitrators have awarded upon a matter
not submitted to them, unless it is a matter not affecting
the merits of the decision upon the matter submitted.

 (c)  Where the award is imperfect in matter of form not
affecting the merits of the controversy.

 The order may modify and correct the award, so as to effect
the intent thereof and promote justice between the parties.

 See, for example, Fairchild and Co., Inc. v. Richmond, F.
and P.R. Co. , 516 F.Supp. 1305 (D.D.C. 1981). If such an
attack were to be made by one of the parties while the
interference is pending before the Board, the Board would
not stay the interference. Rather, the Board would issue its
judgment in accordance with the award. So long as the award
is in compliance with 37 CFR 1.690, it would carry the
presumption that the arbitrator acted correctly in making
his or her decision and accordingly the party designated by
the award as the prevailing party would be entitled  prima
facie to a judgment in its favor. If the dissatisfied party
brings an action in an appropriate United States district
court and if the court vacates, modifies, or corrects the
award, the Board would take action consistent with the
court's findings. No action would lie in the PTO to vacate
or correct an arbitration award, unless all parties agreed
in writing.

 The following examples illustrate the proposed practice of
the PTO concerning arbitration.

 EXAMPLE 1

  Arbitration Practice - Preliminary Stage

 An interference is declared on or after February 11, 1985.
The examiner - in - chief sets a time in accordance with 37
CFR 1.611 for filing preliminary motions under 37 CFR 1.633
and preliminary statements. The parties decided to arbitrate
the interference in accordance with 37 CFR 1.690 and file a
motion for an extension of time so that they can "freely"
arbitrate the interference, but do not file a waiver of
their right to file motions.

 The examiner - in - chief would deny the motion because the
parties' intention to arbitrate, in and of itself, does not
constitute a showing of "good cause" within the means of 37
CFR 1.645(a). Even if the parties file an agreement to
arbitrate, the PTO would not grant any extension of time to
permit the parties to "freely" arbitrate an interference
prior to the expiration of the time for filing preliminary
motions.

 EXAMPLE 2

  Arbitration Practice - Testimony Stage

 An interference is declared on or after February 11, 1985.
The examiner - in - chief sets a time in accordance with 37
CFR 1.611 for filing preliminary motions under 37 CFR 1.633.
The parties file preliminary motions; the examiner - in -
chief renders a decision thereon and sets the testimony
times. The parties file a notice of intent to arbitrate the
interference under 37 CFR 1.690(a) and a motion for a one
month extension of the testimony times. The examiner - in -
chief could grant the motion, but would indicate that if the
parties file another motion for an extension for that
purpose, the motion must be accompanied by a schedule,
agreed to by the parties, setting forth the dates for (1)
executing  the  arbitration  agreement,  (2)  determining
priority and (3) terminating the interference.

 The parties file a motion for an additional one month
extension of time to permit the parties to arbitrate the
interference. Accompanying the motion is a proposed schedule
of times and a copy of the arbitration agreement which
provides, inter alia, (i) the name of the arbitrator or a
date certain for his selection, (ii) that the arbitrator's
award will be binding on the parties, (iii) the issues to be
decided by the arbitrator and (iv) that the award will be
filed by the date the record is due. The parties also
indicate that the evidence to be filed in the proceeding
will be in one of the forms specified by 37 CFR 1.672(e) or
(f). The examiner - in - chief could grant the motion and
indicate that he or she will give favorable consideration to
a  motion  to  extend  all  the  unexpired  times  to  close
concurrently on the date the record is due should the
parties request such.

 On the date for filing the record, the parties file the
arbitrator's  award  and  their  evidentiary  records,  if
necessary. The award states (i) the style and number of the
interference and the real parties in interest, (ii) the
subject matter in issue and the parties' claims which
correspond thereto and which do not correspond thereto,
(iii) the issues for decision before the arbitrator, (iv)
the arbitrator's decision (which may include a statement of
the grounds and reasoning in support thereof) and (v) that
judgment should be awarded to one of the parties. The
examiner - in chief examines the award to ensure that it
complies with 37 CFR 1.690 and is dispositive of the issues
in the interference which can be decided by the arbitrator.
If the award is otherwise acceptable, the Board would issue
a  judgment  based  on  the  award.  If  the  award  is  not
dispositive of all the issues in the interference, the
examiner - in - chief would determine how the interference
will proceed.

 EXAMPLE 3

  Arbitration Practice - Award Decides Interference - in -
  Fact Issue and Junior Party Takes No Testimony

 An interference is declared on or after February 11, 1985.
The examiner - in - chief sets a time in accordance with 37
CFR 1.611 for filing preliminary motions under 37 CFR 1.633
and preliminary statements. The junior party files a motion
for judgment under 37 CFR 1.633(b) on the grounds that there
is no interference - in - fact between his claims correspond

ing to the count and his opponent's claims corresponding
thereto. The examiner - in - chief denies the motion,
examines the preliminary statements and sets the testimony
times.

  During  the  testimony  period,  the  parties  decide  to
arbitrate the interference, notify the examiner - in - chief
of  their  intent  to  arbitrate  and  file  an  arbitration
agreement which is approved by the examiner - in - chief. On
the date for filing the record, the junior party files the
award  together  with  a  motion  requesting  that  the
interference be terminated in view of the award. He or she
does not file a record. In his or her award the arbitrator
holds that no interference - in - fact exists between the
parties' claims corresponding to the count.

 The motion would be denied because the award decides a
matter of patentability which would not result in a judgment
adverse to one of the parties. Consequently, the junior
party would be placed under an order to show cause why
judgment under 37 CFR 1.652 should not be entered against
him or her for his or her failure to file an evidentiary
record by the time set therefor. In response to the order,
the junior party requests final hearing to review the
examiner - in - chief's denial of the motion for judgment
and a testimony period to show no interference - in - fact.
The examiner - in - chief would grant the junior party's
request to the extent that final hearing is set and would
deny the request for testimony because the junior party
already had the opportunity to take testimony on the matter.

 EXAMPLE 4

  __
  Arbitration Practice  Cannot Decide Patentability

 An interference is declared on or after February 11, 1985.
The examiner - in - chief sets a time in accordance with 37
CFR 1.611 for filing preliminary motions under 37 CFR 1.633
and preliminary statements. The junior party files a motion
for judgment under 37 CFR 1.633(a) on the ground that the
claims corresponding to the count are unpatentable over
prior art. In his or her decision on motions, the examiner -
in - chief grants the motion and places both parties under
an order pursuant to 37 CFR 1.640(d)(1) to show cause why
judgment should not be entered against them as to the count.
In response to the order, the senior party files a paper in
accordance with 37 CFR 1.640(e) purportedly showing good
cause why judgment should not be entered in accordance with
the order and a motion requesting permission to arbitrate
the patentability issue. The examiner - in - chief would
deny the motion. The arbitrator is without authority to
established vis - a-vis the public that the subject matter
of the count is patentable. Thus, the arbitration will serve
no useful purpose. The Board would consider the senior
party's paper and enter an appropriate order.

 EXAMPLE 5

  __
  Arbitration Practice  Award After Decision on Motions

 An interference is declared on or after February 11, 1985.
The examiner - in - chief sets a time in accordance with 37
CFR 1.611 for filing preliminary motions under 37 CFR 1.633
and preliminary statements. The junior party files a motion

for judgment under 37 CFR 1.633(a) on the ground that the
claims corresponding to counts 1 and 2 are unpatentable over
prior art. In his or her decision on motions, the examiner -
in - chief grants the motion with respect to count 1, denies
the motion with respect to count 2 and places both parties
under an order pursuant to 37 CFR 1.640(d)(1) to show cause
why judgment should not be entered against them as to count
1. The senior party files a paper in accordance with 37 CFR
1.640(e); the junior party, a response thereto. The Board
considers the paper and the response thereto and based on
the record enters judgment adverse to both parties as to
count 1. Thereafter, the examiner - in - chief examines the
preliminary statements and sets dates for taking testimony
and filing the record.

  During  the  testimony  period,  the  parties  decide  to
arbitrate the interference, notify the examiner - in - chief
of  their  intent  to  arbitrate  and  file  an  arbitration
agreement which is approved by the examiner - in - chief. In
his or her award, the arbitrator decides that judgment
should be awarded to the junior party. On the date for
filing the record, both parties file the award together with
a motion requesting that the interference be terminated in
view of the award. No record is filed.

 The motion would be granted and accordingly it would be
held that the senior party is not entitled to a patent
containing claims corresponding to count 2.

 EXAMPLE 6

  Arbitration Practice  __  Award Decides Patentability

 An interference is declared on or after February 11, 1985.
The examiner - in - chief sets a time in accordance with 37
CFR 1.611 for filing preliminary motions under 37 CFR 1.633
and preliminary statements. No motions for judgment under 37
CFR 1.633 are filed and after the examination of the
preliminary statements, the examiner - in - chief sets the
testimony times.

  During  the  testimony  period,  the  parties  decide  to
arbitrate the interference, notify the examiner - in - chief
of  their  intent  to  arbitrate  and  file  an  arbitration
agreement which is approved by the examiner - in - chief. In
the award, the arbitrator finds (1) that the evidence is
insufficient to establish a prior public use bar under 35
U.S.C. 102(b) against the junior party, (2) that the claims
of  the  junior  party  corresponding  to  the  count  are
patentable under 35 U.S.C. 103 over the prior art cited by
the senior party to the junior party, and (3) that judgment
on priority should be awarded to junior party. On the date
for filing the record, the parties file their records and
the  award  together  with  a  motion  requesting  that  the
interference to be terminated in view of the award.

 The motion would be granted and accordingly it would be
held that the senior party is not entitled to a patent
containing his or her claims corresponding to the count.
After the termination of the proceeding, each party has the
duty under 37 CFR 1.56 to bring before the primary examiner
the evidence concerning the purported public use bar and the
prior art cited by the senior party and/or considered by the
arbitrator.

 EXAMPLE 7

  Arbitration Practice  __  Award Grants Priority to Junior
 Party Contingent upon Granting of Preliminary Motion Under
  37 CFR 1.633(c)

 An interference is declared on or after February 11, 1985.
The examiner - in - chief sets a time in accordance with 37
CFR 1.611 for filing Preliminary motions under 37 CFR 1.633
and preliminary statements. The junior party files a motion
under 37 CFR 1.633(c)(1) to substitute another count. The
examiner - in - chief denies the motion, examines the
preliminary statements and sets the testimony times.

  During  the  testimony  period,  the  parties  decide  to
arbitrate the interference, notify the examiner - in - chief
of  their  intention  to  arbitrate  and  enter  into  an
arbitration agreement which is approved by the examiner - in
- chief. The agreement provides that any evidence to be
submitted  by  the  parties  will  be  in  the  form  of  a
stipulation under 37 CFR1.672(e) and (f). The parties file a
motion requesting that all the unexpired testimony times be
extended to close concurrently on the date the record is
due. The motion would be granted.

 On the date for filing the record, the junior party files
his or her record and the award. The award states, inter
alia, that if the Board at final hearing should grant the
junior party's motion under 37 CFR 1.633(c)(1) to substitute
a new count, judgment should be awarded to the junior party
based on the evidence. Otherwise, the award states that
judgment should be awarded to the senior party.

 The examiner - in - chief sets the brief times and after
the filing thereof the interference would be set for final
hearing so that the Board can review the examiner - in -
chief's denial of the junior party's motion under 37 CFR
1.633(c) and issue an appropriate judgment based on the
award.

 EXAMPLE 8

  Arbitration Practice  __  Award Attacked

 An interference is declared on or after February 11, 1985.
The examiner - in - chief sets a time in accordance with 37
CFR 1.611 for filing preliminary motions under 37 CFR 1.633
and  preliminary  statements.  No  preliminary  motions  are
filed. The examiner - in - chief examines the preliminary
statements and sets the testimony times.

  During  the  testimony  period,  the  parties  decide  to
arbitrate the interference, notify the examiner - in - chief
of their intention to arbitrate and file an arbitration
agreement which is approved by the examiner - in - chief.

 On the date for filing the record, both parties file their
records. The junior party files the award which states that
judgment should be awarded to him or her and a motion for
judgment based on that award. The senior party files an
opposition to the motion for judgment on the grounds (i)
that the award contains errors of law, (ii) that the award
was procured by "corruption, fraud or undue means" in
violation of 9 U.S.C. 10(a), and (iii) that the arbitrator
exhibited "evident partiality" in violation of 9 U.S.C.

10(b) and was "guilty of misconduct ... in refusing to hear
evidence pertinent and material" to the interference, citing
9 U.S.C. 10(c).

 The Board would grant the judgment based on the award,
holding that the senior party is not entitled to a patent
containing claims corresponding to the count. So long as the
award is in compliance with the provisions of 37 CFR 1.690,
it would carry a presumption that the arbitrator acted
properly in all respects. Consequently, before the PTO the
award is binding upon the parties and the junior party is
prima facie entitled to a judgment in its favor. Thus, no
action lies in the PTO as regards the matter raised by the
senior  party.  The  senior  party's  action  lies  in  an
appropriate United States district court and the PTO would
take any action consistent with the court's decision.

 EXAMPLE 9

  __
  Arbitration Practice  Award Cannot Modify Board's Final
  Decision

 An interference is declared on or after February 11, 1985.
The examiner - in - chief sets a time in accordance with 37
CFR 1.611 for filing preliminary motions under 37 CFR 1.633
and  preliminary  statements.  No  motions  are  filed.  The
examiner - in - chief examines the preliminary statements
and sets the testimony times.

  During  the  testimony  period,  the  parties  decide  to
arbitrate the interference and enter into an arbitration
agreement. neither party notifies the examiner - in - chief
of their intent to arbitrate nor do they file a copy of the
agreement in the interference. Both parties timely file
their records and briefs. Both waive oral argument. The
Board enters a final decision after consideration of the
evidence in favor of the senior party.

 The junior party requests reconsideration of the Board's
final deci sion, submits a copy of the arbitration award and
moves that the Board set aside its final decision and enter
judgment in his favor based on the award. In support of its
request, the junior party cites 9 U.S.C. 9 , which provides
that "any party to the arbitration may apply to the court so
specified for an order confirming the award" and 35 U.S.C.
135(d) which provides that title 9 applies to interference
arbitrations.

 The Board would deny the motion to set aside. The parties
did not comply with 37 CFR 1.690(a), i.e., notify the
examiner - in - chief in writing of their intention to
arbitrate and file a copy of the arbitration agreement
within twenty (20) days of its execution. The denial of the
motion is an appropriate sanction under 37 CFR 1.616. Such
action by the Board is considered consistent with long -
standing interference practice. Cf. Humphrey v. Fickert .,
1904 C.D. 447 (Comm'r Pats. 1904) wherein the Board, after
it had considered the evidence, refused to set aside its
award of priority to Fickert and act upon the Fickert's
concession of priority in favor of Humphrey, the losing
party.

 EXAMPLE 10

  __
  Arbitration Award Filed With Record  No Notice to
  Examiner - in - Chief

 An interference is declared on or after February 11, 1985.
The examiner - in - chief sets a time in accordance with 37
CFR 1.611 for filing

 preliminary motions under 37 CFR 1.633 and preliminary
statements. No motions are filed. The examiner - in - chief
examines the preliminary statements and sets the testimony
times.

  During  the  testimony  period,  the  parties  decide  to
arbitrate the interference and enter into an arbitration
agreement. Neither party notifies the examiner - in - chief
of the agreement. The junior party timely files its record
together with a copy of the arbitration award and a motion
for judgment based on the award.

 The motion would be denied. Under the provisions of 37 CFR
1.616, the examiner - in - chief would place both parties
under an order to show cause why judgment should not be
rendered against them for their failure to comply with 37
CFR 1.690(a), i.e., failing to notify him or her of their
intent to arbitrate and file a copy of the arbitration
agreement.

  - -- - --

  Chapter 2400 Biotechnology

  2401  Introduction
  2402  The Deposit Rules
  2403  Deposit of Biological Material
  2403.01  Material Capable of Self - Replication
  2403.02  Plant Material
  2404  Need or Opportunity To Make a Deposit
  2404.01  Biological Material That Is Known and Readily
  Available to the Public
  2404.02  Biological Material That Can Be Made or
  Isolated Without Undue Experimentation
  2404.03  Reference to a Deposit in the Specification
  2405  Acceptable Depository
  2406  Time of Making an Original Deposit
  2406.01  Description in Application Specification
  2406.02  Deposit After Filing Date - Corroboration
  2406.03  Possible Loss of U.S. Filing Date in Other
  Countries
  2407  Replacement or Supplement of Deposit
  2407.01  In a Pending Application
  2407.02  After a Patent Has Issued
  2407.03  Failure To Replace
  2407.04  Treatment of Replacement
  2407.05  Exemption From Replacement
  2407.06  Replacement May Not Be Recognized
  2408  Term of Deposit
  2409  Viability of Deposit
  2410  Furnishing of Samples
  2410.01  Conditions of Deposit
  2410.02  Certification of Accessibility of Deposit
  2411  Examination Procedures
  2411.01  Rejections Based on Deposit Issue
  2411.02  Responses to Rejections Based on Deposit Issue

  2411.03  Application in Condition for Allowance Except
  for Deposit
  2411.04  After a Patent Has Been Granted
  2411.05  Content of Application With Respect to
  Deposited Material
  2420  The Requirements for Patent Applications Containing
  Nucleotide Sequence and/or Amino Acid Sequence
  Disclosures - the Sequence Rules
  2421  Overview of the Sequence Rules
  2421.01  Applications Affected
  2421.02  Summary of the Requirements of the Sequence
  Rules
  2421.03  Notification of a Failure To Comply
  2421.04  Future Changes to the Sequence Rules
  2422  Nucleotide and/or Amino Acid Sequence Disclosures
  in Patent Applications
  2422.01  Definitions of Nucleotide and/or Amino Acids
  for Purpose of Sequence Rules
  2422.02  The Requirement for Exclusive Conformance;
  Sequences Presented in Drawing Figures
  2422.03  The Requirements for a Sequence Listing and
  Sequence Identifiers; Sequences Embedded in
  Application Text; Variants of a Presented Sequence
  2422.04  The Requirement for a Computer Readable Copy
  of the Official Paper Copy of the Sequence Listing
  2422.05  Reference to Previously Filed Identical
  Computer Readable Form; Continuing or Derivative
  Applications Request for Transfer of Computer Readable
  Form
  2422.06  Requirement for Statement Regarding Content of
  Paper and Computer Readable Copies of Sequence Listing
  2422.07  Requirements for Compliance, Statements
  Regarding New Matter, and Sanctions for Failure to
  Comply
  2422.08  Presumptions Regarding Compliance
  2422.09  Box Sequence; Hand Delivery of Sequence
  Listings and Computer Readable Forms
  2423  Symbols and Format To Be Used for Nucleotide and/or
  Amino Acid Sequence Data
  2423.01  Format and Symbols To Be Used in Sequence
  Listings
  2423.02  Depiction of Coding Regions
  2423.03  Presentation and Enumeration of Sequences
  2424  Requirements for Nucleotide and/or Amino Acid
  Sequences as Part of the Application Papers
  2424.01  Informational Requirements for the Sequence
  Listing
  2424.02  Categories of Information Items
  2424.03  Additional Miscellaneous Requirements
  2425  Form and Format for Nucleotide and/or Amino Acid
  Sequence Submissions in Computer Readable Form
  2426  Amendments to or Replacement of Sequence Listing
  and Computer Readable Copy Thereof
  2427  Form Paragraphs and Notice To Comply
  2427.01  Form Paragraphs
  2427.02  Notice To Comply
  2428  Sample Statements
  2429  Helpful Hints for Compliance
  2430  PatentIn Information; Utilities Programs; Training
  2431  Sample Sequence Listing
  2432  Sequence Listing Headings
  2433  Sequence Listing Headings for Mandatory Items

2401  Introduction [R - 3]

  This  chapter  provides  guidance  on  the  practices  and
procedures for implementation of the deposit rules (37 CFR
1.801 - 1.809) and the sequence rules (37 CFR 1.821 -
1.825). The final rule for deposits of biological materials
for patent purposes was published in the Federal Register ,
54 Fed. Reg. 34864 (August 22, 1989) and in the  Official
Gazette , 1106 O.G. 37 (September 12, 1989). The deposit
rules went into effect on January 1, 1990. The final rule
for the requirements for patent applications containing
nucleotide sequence and/or amino acid sequence disclosures
was published in the  Federal Register , 55 Fed. Reg. 18230
(May 1, 1990) and in the  Official Gazette , 1114 O.G. 29
(May 15, 1990). The sequence rules went into effect on
October 1, 1990.

 Additional information regarding the development of the
deposit rules can be obtained in the text of the draft
policy statement, published in BNA's Patent, Trademark and
Copyright Journal, 32 PTCJ 781 at 76, 90 (May 22, 1986), the
a dvanced notice of proposed rulemaking, published in the
Federal Register , 52 Fed. Reg. 34080 (September 9, 1987),
and in the  Official Gazette , 1082 O.G. 47 (September 29,
1987) and in the notice of proposed rulemaking, published in
the  Federal Register , 53 Fed. Reg. 39420 (October 6,
1988), and in the  Official Gazette , 1095 O.G. 47 (October
25, 1988). Additional information regarding the development
of the sequence rules can be obtained in the text of the
notice of proposed rulemaking, published in the  Federal
Register , 54 Fed. Reg. 18671 (May 2, 1989) and in the
Official Gazette , 1102 O.G. 34 (May 16, 1989).

 >See MPEP § 803.04 and § 1850 for restriction and unity of
invention  practice  respectively  in  patent  applications
claiming independent and distinct nucleotide sequences.<

2402  The Deposit Rules [R - 3]

 Every patent must contain a written description of the
invention sufficient to enable a person skilled in the art
to  which  the  invention  pertains  to  make  and  use  the
invention.  Where  the  invention  involves  a  biological
material and words alone cannot sufficiently describe how to
make and use the invention in a reproducible manner, access
to  the  biological  material  may  be  necessary  for  the
satisfaction of the statutory requirements for patentability
under 35 U.S.C. 112. Courts have recognized the necessity
and desirability of permitting an applicant for a patent to
supplement the written disclosure in an application with a
deposit of biological material which is essential to meet
some requirement of the statute with respect to the claimed
invention. Merck and Co., Inc.  v.  Chase Chemical Co. , 273
F. Supp. 68, 155 USPQ 139 (D. N.J. 1967);  In re Argoudelis
, 434 F.2d 666, 168 USPQ 99 (CCPA 1970). To facilitate the
recognition  of  deposited  biological  material  in  patent
applications throughout the world, the Budapest Treaty on
the International Recognition of the Deposit of Micro -
organisms  for  the  Purposes  of  Patent  Procedure  was
established in 1977, and became operational in 1981. The
Treaty requires signatory countries, like the United States,
to recognize a deposit with any depository which has been
approved by the World Intellectual Property Organization
(WIPO).

 The deposit rules (37 CFR 1.801 - 1.809) set forth

examining procedures and conditions of deposit which must be
satisfied in the event a deposit is required. The rules do
not address the substantive issue of whether a deposit is
required under any particular set of facts.

 The rules are effective for all applications filed on or
after January 1, 1990, and for all reexamination proceedings
in which the request for reexamination was filed on or after
January 1, 1990, except that deposits made prior to the
effective date which were acceptable under the then current
practice  will  be  acceptable  in  such  applications  and
proceedings. Since most of the provisions of the rules
reflect policy and practice existing prior to January 1,
1990, little change in practice or burden on applicants for
patent  and  patent  owners  relying  on  the  deposit  of
biological material has occurred. Applicants and patent
owners are encouraged to comply with these rules even if
their applications and reexamination proceedings were filed
prior to January 1, 1990. **

2403  Deposit of Biological Material

 37 CFR 1.801 Biological material.

 For the purposes of these regulations pertaining to the
deposit of biological material for purposes of patents for
inventions under 35 U.S.C. 101, the term biological material
shall include material that is capable of self - replication
either  directly  or  indirectly.  Representative  examples
include bacteria, fungi including yeast, algae, protozoa,
eukaryotic cells, cell lines, hybridomas, plasmids, viruses,
plant tissue cells, lichens and seeds. Viruses, vectors,
cell organelles and other non - living material existing in
and reproducible from a living cell may be deposited by
deposit of the host cell capable of reproducing the non -
living material.

 37 CFR 1.801 indicates that the rules pertaining to
deposits for purposes of patents for inventions under 35
U.S.C. 101 are intended to relate to biological material.
For the purposes of these rules, the term "biological
material" is defined in terms of a non - exhaustive list of
representative  materials  which  can  be  deposited  in
accordance with the procedures defined in these rules. These
rules are intended to address procedural matters in the
deposit of biological material for patent purposes. They are
not designed to decide substantive issues such as whether a
deposit of a particular organism or material

 would be recognized or necessary for the purposes of
satisfying  the  statutory  requirements  for  patentability
under 35 U.S.C. 112. Although the issue of the need to make
a deposit of biological material typically arises under the
enablement requirement of the first paragraph of 35 U.S.C.
112, the issue could also arise under the description
requirement (35 U.S.C. 112, first paragraph), best mode
requirement  (35  U.S.C.  112,  first  paragraph)  or  the
requirements of the second paragraph of 35 U.S.C. 112 with
respect to the claims.

 37 CFR 1.801 does not attempt to identify what biological
material either needs to be or may be deposited to comply
with the requirements of 35 U.S.C. 112. For the most part,
this issue must be addressed on a case - by - case basis.
Thus, while the Office does not currently contemplate that

there would be any situations where a material that is not
capable of self - replication either directly or indirectly
would be acceptable as a deposit, an applicant is clearly
not precluded by these rules from attempting to show in any
given application why the deposit of such a material should
be acceptable to satisfy the requirements of 35 U.S.C. 112.

2403.01  Material Capable of Self - Replication

 Biological material includes material that is capable of
self - replication either directly or indirectly. Direct
self - replication includes those situations where the
biological material reproduces by itself. Representative
examples of materials capable of self - replication are
defined in the rule. Indirect self - replication is meant to
include those situations where the biological material is
only capable of replication when another self - replicating
biological material is present. Self - replication after
insertion in a host is one example of indirect self -
replication. Examples of indirect replicating biological
materials include viruses, phages, plasmids, symbionts, and
replication defective cells. The list of representative
examples of each type of replicating material includes
viruses to demonstrate that the two lists in the rule are
not intended to be mutually exclusive.

2403.02  Plant Material

 Although plant material is included within the scope of the
definition of biological material for purposes of patents
for plant inventions under 35 U.S.C. 101, the rules on
deposits are not applicable to applications filed under the
Plant Patent Act (35 U.S.C. 161 - 164). The Office is of the
view that a deposit is not required under the present
provisions  of  35  U.S.C.  162.  Thus,  a  deposit  is  not
necessary  for  the  grant  of  a  plant  patent  under  the
provisions of 35 U.S.C. 161 - 164. As with other biological
material deposited for purposes of patents for inventions
under 35 U.S.C. 101, the deposit of plant material together
with the written specification must enable those skilled in
the art to make and use the claimed invention, in accordance
with the requirements of 35 U.S.C. 112.

 As with some types of reproducible biological material,
seeds can be reproduced only after a growing season which
may be relatively long. Although the rules do not specify a
specific number of seeds to be deposited to meet the
requirements of these rules, the Office will consider 2500
to be a minimum number in the normal case, but will give an
applicant the opportunity to provide justification why a
lesser number would be suitable under the circumstances of a
particular case. The Department of Agriculture requires a
deposit of 2500 seeds for the grant of a Plant Variety
Protection Certificate under the Plant Variety Protection
Act (7 U.S.C. 2321 et seq .). As the reproduction of seeds
will often take a substantial period of time, the Office
will require, at a minimum for the grant of a patent, a
number of seeds that is likely to satisfy demand for samples
once the patent is granted. In one instance, the Office
accepted a deposit of 600 seeds coupled with an undertaking
to  deposit  1900  more  seeds  with  due  diligence.  The
particular situation involved a "seedless" vegetable with
very few seeds per "fruit;" about two growing seasons were
required to provide the additional 1900 seeds.

2404  Need or Opportunity to Make a Deposit

 37 CFR 1.802 Need or Opportunity to make a deposit.

 (a) Where an invention is, or relies on, a biological
material, the disclosure may include reference to a deposit
of such biological material.

 (b) Biological material need not be deposited unless access
to such material is necessary for the satisfaction of the
statutory requirements for patentability under 35 U.S.C.
112. If a deposit is necessary, it shall be acceptable if
made  in  accordance  with  these  regulations.  Biological
material need not be deposited, inter alia, if it is known
and readily available to the public or can be made or
isolated without undue experimentation. Once deposited in a
depository complying with these regulations, a biological
material will be considered to be readily available even
though some requirement of law or regulation of the United
States or of the country in which the depository institution
is  located  permits  access  to  the  material  only  under
conditions imposed for safety, public health or similar
reasons.

  (c)  The  reference  to  a  biological  material  in  a
specification disclosure or the actual deposit of such
material by an applicant or patent

 owner does not create any presumption that such material is
necessary to satisfy 35 U.S.C. 112 or that deposit in
accordance with these regulations is or was required.

 37 CFR 1.802(a) permits a deposit of a biological material
to be referenced in a patent application where an invention
is, or relies on, a biological material. The invention may
rely on a biological material for the purposes of making or
using the invention, either as a preferred mode or an
alternative mode of operation. A reference to a deposit may
be included in a specification even though the deposit is
not required to satisfy the requirements of 35 U.S.C. 112.

 There is no necessary implication or presumption that can
or should be made about the need for a deposit simply
because reference to a deposit is made in an application
disclosure, as noted in paragraph (c). As noted in paragraph
(b), biological material need not be deposited unless access
to such material is necessary for the satisfaction of the
statutory requirements for patentability under 35 U.S.C. 112
and that access is not otherwise available in the absence of
a deposit. Where a deposit is required to provide the
necessary  access,  a  deposit  is  acceptable  for  patent
purposes only where it is made in accordance with these
regulations. Even where access to biological material is
required to satisfy these statutory requirements, a deposit
may not be necessary if access sufficient to satisfy these
requirements is otherwise available.

2404.01  Biological Material That Is Known and Readily
Available to the Public

 In an application where the invention required access to
specific biological material, an applicant could show that
the biological material is accessible because it is known
and readily available to the public. The concepts of "known
and readily available" are considered to reflect a level of

public  accessibility  to  a  necessary  component  of  an
invention disclosure that is consistent with an ability to
make and use the invention. To avoid the need for a deposit
on this basis, the biological material must be both known
and readily available - neither concept alone is sufficient.
A material may be known in the sense that its existence has
been published, but is not available to those who wish to
obtain that particular known biological material. Likewise,
a biological material may be available in the sense that
those having possession of it would make it available upon
request, but no one has been informed of its existence.

 The Board of Patent Appeals and Interferences has held that
a description of the precise geographic location of marine
tunicates, as a biological material, used in a claimed
invention was adequate to satisfy the enablement requirement
of 35 U.S.C. 112. Ex Parte Rinehart , 10 USPQ2d 1719 (Bd
Pat. App. & Int. 1985). The term "readily" used in the
phrase  "known  and  readily  available"  is  considered
appropriate to define that degree of availability which
would  be  reasonable  under  the  circumstances.  If  the
biological  material  and  its  natural  location  can  be
adequately described so that one skilled in the art could
obtain it using ordinary skill in the art, the disclosure
would  appear  to  be  sufficient  to  meet  the  enablement
requirement of 35 U.S.C. 112 without a deposit so long as
its  degree  of  availability  is  reasonable  under  the
circumstances.

 By showing that a biological material is known and readily
available or by making a deposit in accordance with these
rules, applicant does not guarantee that such biological
material will be available forever. Public access during the
term of the patent may affect the enforceability of the
patent.  Although  there  is  a  public  interest  in  the
availability of a deposited biological material during and
after the period of enforceability of the patent, there
should not be any undue concern about continued access to
the public. Unless there is a reasonable basis to believe
that the biological material will cease to be available
during  the  enforceable  life  of  the  patent,  current
availability would satisfy the requirement. The incentives
provided by the patent system should not be constrained by
the  mere  possibility  that  a  disclosure  that  was  once
enabling would become non - enabling over a period of time
through no fault of the patentee. In re Metcalfe , 410 F.2d
1378, 161 USPQ 789 (CCPA 1969).

  If  an  applicant  has  adequately  established  that  a
biological material is known and readily available, the
Office  will  accept  that  showing.  In  those  instances,
however, the applicant takes the risk that the material may
cease to be known and readily available. Such a defect
cannot be cured by reissue after the grant of a patent.

 On the other hand, Ex parte Humphreys , 24 USPQ2d 1255 (Bd
Pat. App. & Int. 1992), held that the only manner in which
applicants could satisfy their burden of assuring public
access to the needed biological material, and, thereby,
compliance with the enablement requirement of 35 U.S.C. 112,
was  by  making  an  appropriate  deposit.  The  fact  that
applicants and other members of the public were able to
obtain the material in question from a given depository
prior to and after the filing date of the application in
issue did not establish that upon issuance of a patent on

the application that such material would continue to be
accessible to the public. The applicants did not make of
record any of the facts and circumstances surrounding their
access to the material in issue from the depository, nor was
there any evidence as to the depository's policy regarding
the material if a patent would have been granted. Further,
there was no assurance that the depository would have
allowed unlimited access to the material if the application
had matured into a patent.

 There are many factors that may be used as indicia that a
biological material is known and readily available to the
public. Relevant factors include commercial availability,
references  to  the  biological  material  in  printed
publications, declarations of accessibility by those working
in the field, evidence of predictable isolation techniques,
or an existing deposit made in accordance with these rules.
Each  factor  may  or  may  not  be  sufficient  alone  to
demonstrate  that  the  biological  material  is  known  and
readily available. Those applicants that rely on evidence of
accessibility other than a deposit take the risk that the
patent may no longer be enforceable if the biological
material necessary to satisfy the requirements of 35 U.S.C.
112 ceases to be accessible.

 The Office will accept commercial availability as evidence
that a biological material is known and readily available
only when the evidence is clear and convincing that the
public has access to the material. A product could be
commercially available but only at a price that effectively
eliminates accessibility to those desiring to obtain a
sample. The relationship between the applicant relying on a
biological material and the commercial supplier is one
factor that would be considered in determining whether the
biological  material  was  known  and  readily  available.
However, the mere fact that the biological material is
commercially available only through the patent holder or the
patent holder's agents or assigns shall not, by itself,
justify a finding that the necessary material is not readily
available, absent reason to believe that access to the
biological material would later be improperly restricted.

 The mere reference to a deposit or the biological material
itself in any document or publication does not necessarily
mean that the deposited biological material is readily
available. Even a deposit made under the Budapest Treaty and
referenced in a United States or foreign patent document
would not necessarily meet the test for known and readily
available unless the deposit was made under conditions that
are  consistent  with  those  specified  in  these  rules,
including the provision that requires, with one possible
exception, that all restrictions on the accessibility be
irrevocably removed by the applicant upon the granting of
the patent. Ex parte Hildebrand , 15 USPQ2d 1662 (Bd Pat.
App. & Int. 1990).

 A Budapest Treaty deposit cited in a U.S. patent need not
be made available if it was not required to satisfy 35
U.S.C. 112. Thus, a reference to a deposit will not be
certified  available  unless  either  (1)  the  deposit  was
necessary to overcome a rejection under 35 U.S.C. 112, or
(2) there is, in the record, a statement by the examiner
that a rejection under 35 U.S.C. 112 would have been made
"but  for"  the  deposit  (assumes  deposit  information  in
record,  as  filed).  Otherwise,  public  access  cannot  be

certified and the deposit cannot be relied upon for other
purposes, e.g., the deposit cannot be relied upon by a third
party  to  establish  "known"  and  "readily  available"  in
another application. See 37 CFR 1.808 and MPEP § 2410 and §
2410.02.

 Once a deposit is made in a depository complying with these
rules, and under conditions complying with these rules, a
biological  material  will  be  considered  to  be  readily
available even though some requirement of law or regulation
in the United States or in the country where the depository
institution is located permits access to the material only
under conditions imposed for health, safety or similar
reasons. This provision is consistent with the Budapest
Treaty (Article 5) and is designed to permit the patenting
of  inventions  involving  materials  having  restricted
distribution, where the restrictions are imposed for the
public, as opposed to the private, welfare.

2404.02  Biological Material That Can Be Made or Isolated
Without Undue Experimentation

 Applicant may show that a deposit is not necessary even
though  specific  biological  materials  are  required  to
practice the invention if those biological materials can be
made or isolated without undue experimentation. Deposits may
be required to support the claims if an isolation procedure
requires  undue  experimentation  to  obtain  the  desired
biological material. Ex Parte Jackson , 217 USPQ 804 (Bd
App.  1982).  No  deposit  is  required,  however,where  the
required biological materials can be obtained from publicly
available material with only routine experimentation and a
reliable screening test.  Tabuchi  v.  Nubel , 559 F.2d
1183, 194 USPQ 521 (CCPA 1977);  Ex Parte Hata , 6 USPQ 2d
1652 (Bd Pat. App. & Int. 1987).

2404.03  Reference to a Deposit in the Specification

  37  CFR  1.802(c)  specifically  provides  that  the  mere
reference to a biological material in the specification
disclosure or the actual deposit of such material does not
create any presumption that such referenced or deposited
material is necessary to satisfy 35 U.S.C. 112, or that a
deposit in accordance with these regulations is or was
required. It should be noted, however, that a reference to a
biological material, present in an application upon filing,
may form the basis for making a deposit, where required,
after the filing date of a given application but that the
reference to the biological material, itself, cannot be
added  after  filing  without  risking  the  prohibited
introduction  of  new  matter  (35  U.S.C.  132).  See  the
discussion of the Lundak application in MPEP § 2406.01.

2405  Acceptable Depository [R - 3]

 37 CFR 1.803.  Acceptable depository.

 (a) A deposit shall be recognized for the purposes of these
regulations if made in

  (1)  any  International  Depositary  Authority  (IDA)  as
established under the Budapest Treaty on the International
Recognition of the Deposit of Micro - organisms for the
Purposes of Patent Procedure, or

 (2) any other depository recognized to be suitable by the
Office. Suitability will be determined by the Commissioner
on the basis of the administrative and technical competence,
and agreement of the depository to comply with the terms and
conditions applicable to deposits for patent purposes. The
Commissioner may seek the advice of impartial consultants on
the suitability of a depository. The depository must:

 (i) Have a continuous existence;

 (ii) Exist independent of the control of the depositor;

 (iii) Possess the staff and facilities sufficient to
examine the viability of a deposit and store the deposit in
a  manner  which  ensures  that  it  is  kept  viable  and
uncontaminated;

 (iv) Provide for sufficient safety measures to minimize the
risk of losing biological material deposited with it;

 (v) Be impartial and objective;

 (vi) Furnish samples of the deposited material in an
expeditious and proper manner; and

 (vii) Promptly notify depositors of its inability to
furnish samples, and the reasons why.

 (b) A depository seeking status under paragraph (a)(2) of
this section must direct a communication to the Commissioner
which shall:

 (1) Indicate the name and address of the depository to
which the communication relates;

 (2) Contain detailed information as to the capacity of the
depository to comply with the requirements of paragraph
(a)(2) of this section, including information on its legal
status, scientific standing, staff and facilities;

 (3) Indicate that the depository intends to be available,
for the purposes of deposit, to any depositor under these
same conditions;

 (4) Where the depository intends to accept for deposit only
certain kinds of biological material, specify such kinds;

 (5) Indicate the amount of any fees that the depository
will, upon acquiring the status of suitable depository under
paragraph  (a)(2)  of  this  section,  charge  for  storage,
viability statements and furnishings of samples of the
deposit.

 (c) A depository having status under paragraph (a)(2) of
this section limited to certain kinds of biological material
may extend such status to additional kinds of biological
material by directing a communication to the Commissioner in
accordance with paragraph (b) of this section. If a previous
communication under paragraph (b) of this section is of
record, items in common with the previous communication may
be incorporated by reference.

 (d) Once a depository is recognized to be suitable by the
Commissioner  or  has  defaulted  or  discontinued  its
performance under this section, notice thereof will be

published  in  the  Official  Gazette  of  the  Patent  and
Trademark Office.

 37 CFR 1.803 indicates that a depository will be recognized
as acceptable for the purposes of these regulations if it is
either  an  International  Depository  Authority  (IDA)
established under the Budapest Treaty, or if it is a
depository reco gnized as suitable by the Commissioner.
After the effective date of these regulations, a deposit of
biological material which is made in a depository which is
not recognized as acceptable under this regulation will not
be considered as satisfying the requirements of 35 U.S.C.
112. See Ex parte Humphreys , 24 USPQ2d 1255 (Bd Pat. App. &
Int. 1992). On the other hand, if a deposit is not required
to  satisfy  the  requirements  of  35  U.S.C.  112,  it  is
permissible to make reference to such a deposit even though
it may not be in a depository or made under the conditions
which  are  acceptable  under  these  regulations.  As  new
depositories are accepted under the Budapest Treaty or are
recognized as suitable by the Commissioner, their identity
will be announced in the  Official Gazette .

 An organization may be recognized as suitable by the Office
if  the  procedure  and  conditions  specified  in  37  CFR
1.803(a)(2) and 37 CFR 1.803(b) are followed. Generally, it
is not the intention of the Office to recognize as suitable
any organization where the need for a suitable depository
for patent purposes is being met by depositories recognized
as IDAs under the Budapest Treaty. Suitability will be
judged  by  the  Commissioner,  based  on  need  and  the
information supplied by the organization seeking status, and
information  obtained  from  other  sources  that  may  be
consulted.

 While there is a desire to provide flexibility to a patent
applicant in selecting an appropriate depository, these
rules are not intended to permit each patent applicant to
become its own depository since both the patent owner and
the public have an interest in the continued availability
and accessibility of the deposit during the enforceable life
of the patent, and the public has a continuing interest in
its availability when the patent is no longer enforceable.
The concept of a depository independent of the control of
the depositor or an IDA as an acceptable depository is based
on the need and desire to ensure the safe and reliable
storage  of  a  deposited  biological  material  under
circumstances that are substantially free of the opportunity
for intentional mishandling or negligent handling of the
deposited material. The use of an independent depository or
internationally recognized depository will tend to preserve
the integrity of the deposit process against those that may
accidentally alter the deposited material, may wish to
tamper with the deposited material or may wish to resume
control of its availability when the patent is no longer
enforceable, and will tend to preserve the interest of the
public in the access to the biological material once the
term of the patent expires.

 When a depository having status under 37 CFR 1.803(a)(2)
seeks to change the kinds of biological materials that it
will accept and maintain for the purposes of these rules, a
communication requesting such a change should be directed to
the Commissioner containing the information requested in 37
CFR  1.803(b).  When  such  a  change  is  requested,  the
requesting depository should provide a complete list of the

kinds of biological materials it will accept.

 37 CFR 1.803(d) indicates that once a depository is
recognized as suitable for the purposes of this rule, or has
defaulted  or  discontinued  its  performance  under  this
section, notice thereof will be published in the Official
Gazette of the Patent and Trademark Office. A current list
(as  of  January,*>1997<)  of  IDAs  recognized  under  the
Budapest Treaty, with addresses, is included below. The mere
fact  that  a  deposit  has  been  made  in  one  of  these
depositories does not mean that the terms of the deposit
meet either the requirements of the Budapest Treaty or the
deposit regulations. Many of the depositories recognized
under the Budapest Treaty have many different arrangements
under which biological material may be stored.

  The  World  Intellectual  Property  Organization  (WIPO)
publishes a Guide to the Deposit of Micro - organisms under
the Budapest Treaty (WIPO Publication No. 661 (E)) on the
procedures  and  requirements  concerning  the  deposit  of
biological material, including procedures for obtaining a
sample of deposited material, in each of the international
depositary authorities.

  CURRENT IDAs

 The following constitutes the list of IDAs recognized under
the  Budapest  Treaty.  The  list  is  current  as  of
January,*>1997<.

 >Advanced Biotechnology Center (ABC)

 Interlab Cell Line Collection

 (Biotechnology Dept)

 Largo Rossana Benzi, 10

 16132 Genova

 Italy<

 Agricultural Research Service Culture Collection (NRRL)

 1815 North University Street

 Peoria, Illinois 61604

 USA

 **

 All - Union Scientific Center of Antibiotics (VNIIA)

 Nagatinskaya Street 3 - a

 113105 Moscow

 Russian Federation

 American Type Culture Collection (ATCC)

 12301 Parklawn Drive

 Rockville, Maryland 20852

 USA

 Australian Government Analytical Laboratories (AGAL)

 The New South Wales Regional Laboratory

 1, Suakin Street

 Pymble, NSW 2073

 Australia

 Belgian Coordinated Collections of Microorganisms (BCCM)

 Prime Minister's Services

 **>Federal Office for Scientific, Technical and Cultural
Affairs (OSTC)<

 Rue de la Science 8

 B -*>1000< Brussells

 Belgium

 Centraalbureau Voor Schimmelcultures (CBS)

 Oosterstraat 1

 Postbus 273

 NL - 3740 AG Baarn

 Netherlands

 >China Center for Type Culture Collection (CCTCC)

 Wuhan University

 Wuhan 430072

 China

 China General Microbiological Culture Collection

 Center (CGMCC)

 China Committee for Culture Collection of

 Microorganisms

 P.O. Box 2714

 Beijing 100080

 China<

 Colleci ó n Espa ñ ola de Cultivos Tipo (CECT)

 Microbiology Department

 Biological Science Faculty

 46100 Burjasot (Valencia)

 Spain

 Collection Nationale De *>Cultures< De Micro - organismes
(CNCM)

 Institut Pasteur

 28, rue du Dr Roux

 75724 Paris C é dex 15

 France

 Culture Collection of Algae and Protozoa (CCAP)

 Institute of Freshwater Ecology

 Windermere Laboratory

 Ambleside, Cumbria LA22 0LP

 United Kingdom

 and Dunstaffnage Marine Laboratory

 P.O. Box 3

 Oban, Argyll PA34 4AD

 United Kingdom

 >Culture Collection of Yeasts (CCY)

 Institute of Chemistry

 Slovak Academy of Sciences

 D ú bravsk á cesta 9

 842 38 Bratislava,

 Slovakia<

 Czech Collection of Microorganisms (CCM)

 Ceskoslovensk á sb í rka mikroorganismu

 *>Masary< University

 ul. Tvrd é ho c. 14

 602 00 Brno

 Czech Republic

 **

 *>DSMZ - < Deutsche Sammlung Von Mikroorganismen und
ZellKulturen GmbH (*>DSMZ<)

 Mascheroder Weg 1b

 D -*>38124< Braunschweig

 Germany

 European Collection of Animal Cell Cultures (ECACC)

 Vaccine Research and Production Laboratory

 Public Health Laboratory Service

 Centre for Applied Microbiology and Research

 Porton Down

 Salisbury, Wiltshire SP4 0JG

 United Kingdom

 **

 International Mycological Institute (IMI)

 Bakeham Lane

 Englefield Green

 Egham, Surrey TW20 9TY

 United Kingdom

 >Korean Cell Line Research Foundation (KCLRF)

 Cancer Research Institute

 Seoul National University College of Medicine

 28 Yungon - dong, Chongno - gu

 Seoul 110 - 799

 Republic of Korea<

 Korea **>Research Institute of Bioscience and Biotechnology
(KRIBB)<

 *>52<, Oun - Dong

 Yusong - *>Ku<

 Taejon>305 - 333<

 Republic of Korea

 Korean Culture Center of Microorganisms (KCCM)

 College of Engineering

 Yonsei University

 Sodaemun gu

 Seoul 120 - 749

 Republic of Korea

  National  Bank  for  Industrial  Microorganisms  and  Cell
Cultures (NBIMCC)

 125, **>Tsarigradskochausse Blvd.<

 Block 2

 >1113< Sofia

 Bulgaria

  National  Collection  of  Agricultural  and  Industrial
Microorganisms (NCAIM)

 Department of Microbiology and Biotechnology

 University of Horticulture and the Food Industry

 Soml ó i ú t 14 - 16

 H - 1118 Budapest

 Hungary

 National Collection of Food Bacteria (NCFB)

 AFRC Institute of Food Research

 Reading Laboratory

 *>Earley Gate, Whiteknights Road<

 Reading *>, Berkshire RG6 2EF<

 United Kingdom

 National Collection of Type Cultures (NCTC)

 Central Public Health Laboratory

 61 Colindale Avenue

 London, NW9 5HT

 United Kingdom

 National Collection of Yeast Cultures (NCYC)

 AFRC Institute of Food Research

 Norwich Laboratory

 Colney Lane

 Norwich NR4 7UA

 United Kingdom

 National Collections of Industrial and Marine Bacteria
Limited (NCIMB)

 23 St. Machar Drive

 Aberdeen AB2 1RY

 Scotland

 United Kingdom

 National Institute of Bioscience and Human - Technology
(*>NIBH<)

 **

 Agency of Industrial Science and Technology

 Ministry of International Trade and Industry

 1 - 3, Higashi 1 - chome

 Tsukuba - shi

 Ibaraki - ken 305

 Japan

 >Russian Collection of Microorganisms (VKM)

 Prospekt Naouki, 5

 142292 Pushchino (Moscow Region)

 Russian Federation

 Russian National Collection of Industrial Microorganisms
(VKPM)

 GNII Genetika

 Dorozhny proezd. 1

 Moscow 113545

 Russian Federation<

2406  Time of Making an Original Deposit

 37 CFR 1.804 Time of making an original deposit.

  (a)  Whenever  a  biological  material  is  specifically
identified  in  an  application  for  patent  as  filed,  an
original deposit thereof may be made at any time before
filing the application for patent or, subject to § 1.809,
during pendency of the application for patent.

 (b) When the original deposit is made after the effective
filing date of an application for patent, the applicant
shall promptly submit a verified statement from a person in
a position to corroborate the fact, and shall state, that
the biological material which is deposited is a biological
material  specifically  identified  in  the  application  as
filed,  except  if  the  person  is  an  attorney  or  agent
registered to practice before the Office, in which case the
statement need not be verified.

 37 CFR 1.804 specifies the time for making an original
deposit to fulfill the requirements of 35 U.S.C. 112. For
the  reasons  discussed  throughout  this  section,  it  is
recommended that a deposit be made before the filing date of
the application. However, for the purposes of complying with
the requirements of 35 U.S.C. 112, a deposit of a biological
material  may  be  made  at  any  time  before  filing  the

application  for  patent  or  during  the  pendency  of  the
application subject to the conditions of 37 CFR 1.809. Where
a deposit is needed to satisfy the requirements of 35 U.S.C.
112 and it is made during the pendency of the application,
it must be made no later than the time period set by the
examiner at the time the Notice of Allowance and Issue Fee
Due is mailed. A necessary deposit need not be made by an
applicant  until  the  application  is  in  condition  for
allowance so long as the applicant provides a written
assurance that an acceptable deposit will be made on or
before the payment of the issue fee. This written assurance
must provide sufficiently detailed information to convince
the examiner that there is no outstanding issue regarding
deposits that needs to be resolved.

  These  rules  are  equally  applicable  in  the  cases  of
international and national stage applications filed under
the Patent Cooperation Treaty. Insofar as the rules do not
permit post - issuance original deposits, the failure to
make an original deposit in an application cannot be cured
by  filing  a  reissue  application  or  instituting  a
reexamination proceeding. However, if an amendment of claims
in a reexamination proceeding raises the need for a deposit,
an original deposit may be made during the reexamination
proceeding.

2406.01  Description in Application Specification

 37 CFR 1.804(a) specifies not only a permissible time frame
for making an original deposit, but also specifies that the
biological  material  deposited  must  be  specifically
identified in the application for patent as filed. The
requirement for a specific identification is consistent with
the description requirement of the first paragraph of 35
U.S.C.  112  and  provides  an  antecedent  basis  for  the
biological  material  which  either  has  been  or  will  be
deposited before the patent is granted.

 The description in the Lundak application as filed (now
patent 4,594,325) provides a suitable illustration of the
specific identification and description which are required
in an application as filed. In that application, an immortal
B - cell line was disclosed and claimed. The cell line was
referred to in the application, as filed, as WI - L2 - 729
HF2. The methods of obtaining and using this cell line were
also described in the application as filed. A deposit of the
cell line was made with the American Type Culture Collection
(ATCC) about a week after the application was filed in the
United States. The United States Court of Appeals for the
Federal Circuit held that the requirements of access by the
Office to a sample of the cell line during pendency, and
public access after grant, were met by Lundak's procedures.
The Court further held that the addition of information
designating the depository, accession number, and deposit
date of the deposited cell line in ATCC after the filing
date did not violate the prohibition against new matter in
35 U.S.C. 132. In re Lundak , 773 F.2d 1216, 227 USPQ 90
(Fed. Cir. 1985). However, it must be clear from the
application  as  filed  that  the  invention  claimed  and
described in the specification "was fully capable of being
reduced to practice (i.e., no technological problems, the
resolution of which would require more than ordinary skill
and  reasonable  time,  remained  in  order  to  obtain  an
operative, useful process)."  Feldman  v.  Aunstrup , 517
F.2d 1351, 1355, 186 USPQ 108, 113 (CCPA 1975),  cert.

denied , 424 U.S. 912 (1976).

2406.02  Deposit After Filing Date - Corroboration

 When the original deposit is made after the effective
filing date of an application for patent, an applicant is
required to promptly submit a verified statement from a
person in a position to corroborate that the biological
material  which  is  deposited  is  a  biological  material
specifically identified in the application (the filing date
of which is relied upon) as filed. The nature of this
corroboration  will  depend  on  the  circumstances  in  the
particular application under consideration, including the
length of time between the application filing date and the
date of deposit. While few, if any, situations can be
imagined where the description requirement of 35 U.S.C. 112
can be satisfied where the biological material was not in
existence at the time of filing, the rules will not preclude
such a situation as there is no requirement in the patent
law  that  an  actual  reduction  to  practice  occur  as  a
condition precedent to filing a patent application. The
requirement for a verified statement is not necessary under
37 CFR 1.804(b) if the person making the statement is an
attorney or agent registered to practice before the Office.

2406.03  Possible Loss of U.S. Filing Date in Other
Countries

 Those applicants intending to file patent applications in a
country foreign to the United States relying upon biological
material that must be deposited to satisfy the requirements
of 35 U.S.C. 112 when the application is filed in the United
States are cautioned that in many countries the deposit must
be made before the filing date of the priority application
in order to obtain foreign priority rights. Thus, while the
deposit of a biological material subsequent to the effective
filing date of a United States application is sufficient to
comply with 35 U.S.C. 112, an applicant may not be able to
rely on the filing date of such a U.S. application if a
patent is sought in certain countries foreign to the United
States.

2407  Replacement or Supplement of Deposit

 37 CFR 1.805 Replacement or supplement of deposit.

 (a) A depositor, after receiving notice during the pendency
of an application for patent, application for reissue patent
or reexamination proceeding, that the depository possessing
a deposit either cannot furnish samples thereof or can
furnish  samples  thereof  but  the  deposit  has  become
contaminated or has lost its capability to function as
described in the specification, shall notify the Office in
writing, in each application for patent or patent affected.
In such a case, or where the Office otherwise learns, during
the pendency of an application for patent, application for
reissue  patent  or  reexamination  proceeding,  that  the
depository  possessing  a  deposit  either  cannot  furnish
samples thereof or can furnish samples thereof but the
deposit has become contaminated or has lost its capability
to function as described in the specification, the need for
making  a  replacement  or  supplemental  deposit  will  be
governed by the same considerations governing the need for
making an original deposit under the provisions set forth in
§ 1.802(b). A replacement or supplemental deposit made

during the pendency of an application for patent shall not
be accepted unless it meets the requirements for making an
original deposit under these regulations, including the
requirement set forth under § 1.804(b). A replacement or
supplemental deposit made in connection with a patent,
whether or not made during the pendency of an application
for reissue patent or a reexamination proceeding or both,
shall not be accepted unless a certificate of correction
under § 1.323 is requested by the patent owner which meets
the terms of paragraphs (b) and (c) of this section.

 (b) A request for certificate of correction under this
section  shall  not  be  granted  unless  the  certificate
identifies:

  (1)  The  accession  number  for  the  replacement  or
supplemental deposit;

 (2) The date of the deposit; and

 (3) The name and address of the depository.

 (c) A request for a certificate of correction under this
section shall not be granted unless the request is made
promptly after the replacement or supplemental deposit has
been made and:

 (1) Includes a verified statement of the reason for making
the replacement or supplemental deposit;

 (2) Includes a verified statement from a person in a
position to corroborate the fact, and shall state, that the
replacement or supplemental deposit is of a biological
material which is identical to that originally deposited;

 (3) Includes a verified showing that the patent owner acted
diligently

 (i) In the case of a replacement deposit, in making the
deposit after receiving notice that samples could no longer
be furnished from an earlier deposit, or

 (ii) In the case of a supplemental deposit, in making the
deposit after receiving notice that the earlier deposit had
become contaminated or had lost its capability to function
as described in the specification;

 (4) Includes a verified statement that the term of the
replacement or supplemental deposit expires no earlier than
the term of the deposit being replaced or supplemented; and

  (5)  Otherwise  establishes  compliance  with  these
regulations, except that if the person making one or more of
the required statements or showing is an attorney or agent
registered to practice before the Office, that statement or
showing need not be verified.

 (d) A depositor s failure to replace a deposit, or in the
case of a patent, to diligently replace a deposit and
promptly thereafter request a certificate of correction
which meets the terms of paragraphs (b) and (c) of this
section, after being notified that the depository possessing
the deposit cannot furnish samples thereof, shall cause the
application or patent involved to be treated in any Office
proceeding as if no deposit were made.

 (e) In the event a deposit is replaced according to these
regulations, the Office will apply a rebuttable presumption
of identity between the original and the replacement deposit
where a patent making reference to the deposit is relied
upon during any Office proceeding.

 (f) A replacement or supplemental deposit made during the
pendency of an application for patent may be made for any
reason.

 (g) In no case is a replacement or supplemental deposit of
a  biological  material  necessary  where  the  biological
material,  in  accordance  with  §  1.802(b),  need  not  be
deposited.

 (h) No replacement deposit of a biological material is
necessary where a depository can furnish samples thereof but
the  depository  for  national  security,  health  or
environmental safety reasons is unable to provide samples to
requesters outside of the jurisdiction where the depository
is located.

 (i) The Office will not recognize in any Office proceeding
a replacement deposit of a biological material made by a
patent owner where the depository could furnish samples of
the deposit being replaced.

 37 CFR 1.805 relates to the deposit of a biological
material to replace or supplement a previous deposit. The
term "replacement" is directed to those situations where one
deposit is being substituted for another. An applicant may
have greater latitude in replacing a deposit during the
pendency of an application than after the patent is granted.
Replacement will typically take place where the earlier
deposit is no longer viable. The term "supplement" is
directed to those situations where the earlier deposit is
still viable in the sense that it is alive and capable of
replication either directly or indirectly, but has lost a
quality (e.g., purity, functionality) it allegedly possessed
at the time the application was filed. The procedures in
these rules contemplate that only the original depositor
would have a right to replace or supplement the original
deposit.

2407.01  In a Pending Application

 37 CFR 1.805(a) relates to the procedure for replacing or
supplementing  a  deposit  with  respect  to  a  pending
application or a patent. An applicant or patent owner is
required to notify the Office when it obtains information
that the depository possessing a deposit cannot furnish
samples of the deposit to satisfy the requirements of 35
U.S.C. 112. When the Office is so informed or otherwise
becomes aware that samples of the deposited material cannot
be furnished by the depository, the examiner will treat the
application  or  reexamination  proceeding,  whichever  is
applicable, as if no deposit existed. A replacement or
supplemental deposit will be accepted if it meets all the
requirements for making an original deposit.

 It should be noted that in a pending application, an
applicant need not replace the identical material previously
deposited, but may make an original deposit of a biological
material which is specifically identified and described in

the application as filed. Whether this alternative deposit
will meet the requirements of 35 U.S.C. 112 with respect to
the claimed subject matter must be resolved by the examiner
on a case - by - case basis. The conditions in 37 CFR
1.802(b) and 37 CFR 1.804(b) must be satisfied.

2407.02  After a Patent Has Issued

  A  replacement  deposit  made  in  connection  with  an
application for reissue patent or a reexamination proceeding
or both shall not be accepted unless a certificate of
correction is requested which meets the terms of 37 CFR
1.805(b) and 37 CFR 1.805(c) for replacement deposits. Any
correction made to the original patent will be automatically
incorporated into the reissued or reexamined patent unless
changes  are  made  during  examination  of  the  reissue
application or reexamination proceeding.

 37 CFR 1.805(b) and 37 CFR 1.805(c), specify the procedures
that a patent owner may follow to ensure that a patent
contains  the  appropriate  information  about  a  deposited
biological material in the event that a replacement or
supplemental deposit is made after the patent is granted. 37
CFR  1.805(b)  describes  the  information  which  must  be
contained in the certificate of correction, whereas 37 CFR
1.805(c) de scribes the information which must be provided
in the request to make the correction.

2407.03  Failure to Replace

 37 CFR 1.805(d) sets forth the Office position that the
failure to make a replacement deposit in a case pending
before the Office, for example a reissue or reexamination
proceeding, where a deposit is considered to be necessary to
satisfy the requirements of 35 U.S.C. 112, shall cause the
application or patent involved to be treated in any Office
proceeding as if no deposit were made. The provisions of 37
CFR 1.805(g) indicate that a replacement need not be made
where, at the point in time when replacement would otherwise
be necessary, access to the necessary biological material
was otherwise available. For example, a replacement deposit
would not be required under the circumstances where access
to the necessary biological material was established through
commercial suppliers.

2407.04  Treatment of Replacement

 37 CFR 1.805(e) indicates that the Office will apply a
rebuttable presumption of identity between the replacement
deposit and an original deposit where a patent making
reference to the deposit is relied on during any Office
proceeding. This means that where a replacement deposit is
permitted and made, the examiner will assume that the same
material as described in the patent is accessible from the
identified depository unless evidence to the contrary comes
to the attention of the Office.

 An applicant for patent may make a replacement deposit
during the pendency of the application for any reason. The
provisions of 37 CFR 1.805(f) recognize that since an
original deposit may be made during the pendency of the
application subject to the conditions of 37 CFR 1.809, a
replacement deposit logically cannot be held to any higher
standard or any further requirements.

2407.05  Exemption From Replacement

  The  provisions  of  37  CFR  1.805(h)  indicate  that  a
replacement  deposit  is  not  required  even  though  the
depository cannot furnish samples, under certain conditions,
to those requesting a sample outside of the jurisdiction
where  the  depository  is  located.  The  conditions  are
specified in this paragraph as being limited to national
security, health or environmental safety reasons.

2407.06  Replacement May Not Be Recognized

 Finally, 37 CFR 1.805(i) indicates that the Office will not
recognize in any Office proceeding a replacement deposit
made by the patent owner where the depository could furnish
samples of the original deposit being replaced. The best
evidence of what was originally deposited should not be lost
through destruction or replacement if made in association
with an existing patent. A supplemental deposit may be
accepted in an Office proceeding, however, depending on the
circumstances in each case.

2408  Term of Deposit [R - 1]

 37 CFR 1.806 Term of deposit.

 A deposit made before or during pendency of an application
for patent shall be made for a term of at least thirty (30)
years and at least five (5) years after the most recent
request for the furnishing of a sample of the deposit was
received by the depository. In any case, samples must be
stored under agreements that would make them available
beyond the enforceable life of the patent for which the
deposit was made.

 The term of deposit must satisfy the requirements of the
Budapest Treaty which sets a term of at least 30 years from
the date of deposit and at least five (5) years after the
most recent request for the furnishing of a sample of the
deposit was received by the depository. In the event that
the 30 - year term covers the 17 - year term > or 20 - year
term < of the patent plus six (6) years to include the
Statute of Limitations, no further requirement is necessary.
Unless applicant indicates that the deposit has been made
under the Budapest Treaty, applicant must indicate the term
for which the deposit has been made. The mere possibility of
patent term extension or extended litigation involving the
patent should not be considered in this analysis.

 In the event that the 30 - year term of deposit measured
from the date of deposit would necessarily terminate within
the period of enforceability of the patent (the normal 17 -
year term >or 20 - year term< plus six (6) years to include
the Statute of Limitations), samples must be stored under
agreements  that  would  make  them  available  beyond  the
enforceable life of the patent (i.e., until 23 > or 26 <
years after issuance) for which the deposit was made. No
requirement should be made as to any particular period of
time beyond the enforceable life of the patent. The purpose
of the requirement is to insure that a deposited biological
material necessary for the practice of a patented invention
would be available to the public after expiration of the
patent for which the deposit was made. The term of the
deposit must comply with the requirements of each sentence
of 37 CFR 1.806 whether or not the deposit is made under the

BudapestTreaty.  A  specific  statement  that  the  deposit
complies  with  the  second  sentence  of  this  section  is
required only where the 30 - year term would terminate
within the enforceable life of the patent.

2409  Viability of Deposit [R - 3]

 37 CFR 1.807.  Viability of deposit.

 (a)  A deposit of biological material that is capable of
self - replication either directly or indirectly must be
viable at the time of deposit and during the term of
deposit. ** Viability may be tested by the depository. The
test must >conclude only that the deposited material is
capable  of<  reproduction.  No  evidence  is  necessarily
required regarding the ability of the deposited material to
perform any function described in the patent application.

 (b)  A  viability  statement  for  each  deposit  of  a
biological material defined in paragraph (a) of this section
not made under the Budapest Treaty on the International
Recognition of the Deposit of Micro - organisms for the
Purposes  of  Patent  Procedure  must  be  filed  in  the
application and must contain:

 (1)  The name and address of the depository;

 (2)  The name and address of the depositor;

 (3)  The date of deposit;

 (4)  The identity of the deposit and the accession
number given by the depository;

 (5)  The date of the viability test;

 (6)  The procedures used to obtain a sample if the test
is not done by the depository; and

 (7)  A  statement  that  the  deposit  is  capable  of
reproduction.

 (c) If a viability test indicates that the deposit is not
viable upon receipt, or the examiner cannot, for scientific
or other valid reasons, accept the statement of viability
received from the applicant, the examiner shall proceed as
if no deposit has been made. The examiner will accept the
conclusion set forth in a viability statement issued by a
depository recognized under § 1.803(a).

 37 CFR 1.807 requires that the deposit of biological
material that is capable of self - replication either
directly or indirectly must be viable at the time of deposit
and  during  the  term  of  deposit.  This  requirement  for
viability is essentially a requirement that the deposited
material is capable of reproduction. For the purpose of
making a deposit under these rules, there is no requirement
that evidence be provided that the deposited material is
capable or has the ability to perform any function described
in the patent application. However, as with any other issue
of description or enablement, if the examiner has evidence
or reason to question the objective statements made in the
patent  application,  applicants  may  be  required  to
demonstrate that the deposited biological material will
perform in the manner described.

 Under the Budapest Treaty, there is a requirement that the
deposit be tested for viability before it is accepted. Thus,
a  mere  statement  by  an  applicant,  an  authorized
representative of applicant or the assignee that the deposit
has been accepted under the Budapest Treaty would satisfy 37
CFR 1.807.

 For each deposit which is not made under the Budapest
Treaty, a viability statement must be filed in the patent
application and contain the information listed in paragraph
(b) of this section. Under 37 CFR 1.807(c), the examiner
will  accept  the  conclusion  set  forth  in  a  viability
statement which is issued by a depository recognized under
37 CFR 1.803(a). If the viability test indicates that the
deposit is not viable upon receipt, or the examiner cannot,
for scientific or other valid reasons, accept the statement
of viability received from the applicant, the examiner shall
so  notify  the  applicant  stating  the  reasons  for  not
accepting the statement and proceed with the examination
process as if no deposit had been made.

2410  Furnishing of Samples

 37 CFR 1.808  Furnishing of samples.

 (a) A deposit must be made under conditions that assure
that:

 (1) Access to the deposit will be available during pendency
of the patent application making reference to the deposit to
one determined by the Commissioner to be entitled thereto
under § 1.14 and 35 U.S.C. 122, and

  (2)  Subject  to  paragraph  (b)  of  this  section,  all
restrictions imposed by the depositor on the availability to
the public of the deposited material will be irrevocably
removed upon the granting of the patent.

 (b) The depositor may contract with the depository to
require that samples of a deposited biological material
shall be furnished only if a request for a sample, during
the term of the patent:

 (1) Is in writing or other tangible form and dated;

 (2) Contains the name and address of the requesting party
and the accession number of the deposit; and

 (3) Is communicated in writing by the depository to the
depositor along with the date on which the sample was
furnished and the name and address of the party to whom the
sample was furnished.

 (c) Upon request made to the Office, the Office will
certify whether a deposit has been stated to have been made
under conditions which make it available to the public as of
the issue date of the patent grant provided the request
contains:

 (1) The name and address of the depository;

 (2) The accession number given to the deposit;

 (3) The patent number and issue date of the patent

referring to the deposit; and

 (4) The name and address of the requesting party.

2410.01  Conditions of Deposit

 37 CFR 1.808 requires that the deposit of biological
material be made under two (2) conditions:

 (1) access to the deposit will be available during pendency
of the patent application making reference to the deposit to
one determined by the Commissioner to be entitled thereto
under 37 CFR 1.14 and 35 U.S.C. 122, and

 (2) with one exception, that all restrictions imposed by
the depositor on the availability to the public of the
deposited biological material be irrevocably removed upon
the granting of the patent.

 The one exception that is permitted is specified in 37 CFR
1.808(b)which permits the depositor to contract with the
depository to require that samples of a deposited biological
material shall be furnished only if a request for a sample,
during the term of the patent, meets any one or all of the
three  conditions  specified  in  this  paragraph.  These
conditions are:

 (1) the request is in writing or other tangible form and
dated; and/or

 (2) the request contains the name and address of the
requesting party and the accession number of the deposit;
and/or

  (3)  the  request  is  communicated  in  writing  by  the
depository to the depositor along with the date on which the
sample was furnished and the name and address of the party
to whom the sample was furnished.

 It should be noted that this exception to the general rule
that all restrictions will be removed must be strictly
followed and that no variations of this explicit exception
will be accepted as meeting the conditions of this section.
Although this exception is consistent with the provisions in
the Budapest Treaty and its implementing regulations (Rule
11.4), other conditions on accessibility are permitted under
the  Budapest  Treaty  as  prescribed  by  national  law.
Consequently, the mere indication that a deposit has been
made under conditions prescribed by the Budapest Treaty
would satisfy all conditions of these regulations except the
requirement that all restrictions on access be removed on
grant of the patent. Ex parte Hildebrand , 15 USPQ2d 1662
(Bd Pat. App. & Int. 1990).

2410.02  Certification of Accessibility of Deposit

 Since the mere description of a deposit or identity of a
deposit in a patent specification is not necessarily an
indication that a requirement for deposit was made or that a
deposit which complies with these rules has been made,
accessibility to a deposited material referenced in a patent
may depend on the satisfaction of conditions not apparent on
the face of the patent. For these reasons, and upon request
made to the Patent and Trademark Office, the Office will
certify whether a deposit has been stated to have been made

under conditions which would make it available to the public
as of the issue date of the patent grant provided the
request is made to the Director of Patent Examining Group
1800, and contains the following information:

 (1) the name and address of the depository;

 (2) the accession number given to the deposit;

 (3) the patent number and issue date of the patent
referring to the deposit; and

 (4) the name and address of the requesting party.

 For those deposits made pursuant to the Budapest Treaty,
the World Intellectual Property Organization provides a form
(Form BP - 12) for requesting a certification of the
availability of samples of deposited micro - organisms
pursuant to Rule 11.3(a) of the Regulations under the
Budapest Treaty. Copies of this form are available from the
Director of Patent Examining Group 1800.

2411  Examination Procedures

 37 CFR 1.809.  Examination procedures.

 (a) The examiner shall determine pursuant to § 1.104 in
each application for patent, application for reissue patent
or reexamination proceeding if a deposit is needed, and if
needed, if a deposit actually made is acceptable for patent
purposes. If a deposit is needed and has not been made or
replaced  or  supplemented  in  accordance  with  these
regulations, the examiner, where appropriate, shall reject
the affected claims under the appropriate provision of 35
U.S.C. 112, explaining why a deposit is needed and/or why a
deposit actually made cannot be accepted.

 (b) The applicant for patent or patent owner shall respond
to a rejection under paragraph (a) of this section by-

 (1) In the case of an applicant for patent, making an
acceptable original or replacement or supplemental deposit
or assuring the Office in writing that an acceptable deposit
will be made on or before the date of payment of the issue
fee, or, in the case of a patent owner, requesting a
certificate of correction of the patent which meets the
terms of paragraphs (b) and (c) of § 1.805, or

  (2)  Arguing  why  a  deposit  is  not  needed  under  the
circumstances of the application or patent considered and/or
why a deposit actually made should be accepted. Other
replies to the examiner s action shall be considered non -
responsive. The rejection will be repeated until either
paragraph  (b)(1)  of  this  section  is  satisfied  or  the
examiner is convinced that a deposit is not needed.

 (c) If an application for patent is otherwise in condition
for allowance except for a needed deposit and the Office has
received a written assurance that an acceptable deposit will
be made on or before payment of the issue fee, the Office
will mail to the applicant a Notice of Allowance and Issue
Fee Due together with a requirement that the needed deposit
be made within three months. The period for satisfying this
requirement is extendible under § 1.136. Failure to make the
needed deposit in accordance with this requirement will

result in abandonment of the application for failure to
prosecute.

 (d) For each deposit made pursuant to these regulations,
the specification shall contain:

 (1) The accession number for the deposit;

 (2) The date of the deposit;

 (3) A description of the deposited biological material
sufficient  to  specifically  identify  it  and  to  permit
examination; and

 (4) The name and address of the depository.

 37 CFR 1.809 sets forth procedures that will be used by the
examiner to address a deposit issue. The burden is initially
on the Office to establish that access to a biological
material is necessary for the satisfaction of the statutory
requirements for patentability under 35 U.S.C. 112. Once the
Office has met this burden, the burden shifts to the
applicant or patent owner to demonstrate that access to such
biological material either is not necessary or is, either,
already available or that a deposit of such material will be
made in accordance with these regulations.

2411.01  Rejections Based on Deposit Issue

 Under 37 CFR 1.809(a), once the examiner has determined
that access to a biological material is necessary, and there
is no information that would support the conclusion that
access is currently available in accordance with these
regulations,  the  examiner  should  make  an  appropriate
rejection under 35 U.S.C. 112 until such time as a deposit
in accordance with these regulations is actually made or a
written assurance is received in the patent application that
such  a  deposit  will  be  made  upon  an  indication  of
allowability of the application. The examiner should clearly
indicate the statutory basis for the rejection and the
reasons that are relied upon by the examiner to conclude
that the application does not comply with some requirement
of 35 U.S.C. 112. Although not exhaustive, the following
grounds  of  rejection  may  be  applicable  in  appropriate
circumstances:

 (1) 35 U.S.C. 112, first paragraph - lack of an enabling
disclosure without access to a specific biological material.
This ground of rejection should be accompanied by evidence
of scientific reasoning to support the conclusion that a
person skilled in the art could not make or use the
invention  defined  in  and  commensurate  with  the  claims
without access to the specific biological material.

  (2)  35  U.S.C.  112,  first  paragraph  -  description
requirement. This ground of rejection typically arises in
the context that the application as filed does not contain a
description to support an amendment to the specification or
claims. An amendment to the claims that is not described in
the application as filed would justify a rejection of the
affected claims under 35 U.S.C. 112, first paragraph. If an
amendment is made to the application, other than the claims,
that is not described in the application as filed, this
would justify an objection under 35 U.S.C. 112, first
paragraph and/or 35 U.S.C. 132 (prohibition against the

introduction of new matter) and a requirement that the
amendment be canceled.

 (3) 35 U.S.C. 112, first paragraph - best mode requirement.
This ground of rejection will be rare in the ex parte
examination process because it requires (i) a finding by the
examiner that, at the time the application was filed, the
inventor(s) knew of a specific material that was considered
by the inventor(s) to be better than any other, and (ii) if
a  best  mode  was  contemplated  at  that  time,  that  the
inventor(s)  concealed  the  best  mode  (accidentally  or
intentionally) by failing to adequately describe that best
mode. See Chemcast Corp.  v.  Arco Industries Corp. , 913
F.2d 923, 16 USPQ2d 1033 (Fed. Cir. 1990). The Court of
Appeals for the Federal Circuit has twice resolved a best
mode  issue  arising  in  the  context  of  a  biotechnology
invention in favor of the patentee. See  Scripps Clinic and
Research Foundation  v.  Genentech Inc. , 927 F.2d 1565, 18
USPQ2d 1001 (Fed. Cir. 1991) with respect to monoclonal
antibodies, and  Amgen Inc.  v.  Chugai Pharmaceutical Co.
Ltd. , 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991) with
respect to mammalian host cells.

 (4) 35 U.S.C. 112, second paragraph - indefiniteness. This
ground of rejection, as applied to a deposit issue, requires
the examiner to provide reasons why the terms in the claims
and/or scope of the invention are unclear because of an
incomplete or inaccurate description or the absence of a
reference to a biological material.

 (5) 35 U.S.C. 112, second paragraph - claims do not set
forth what applicants regard as their invention. This ground
of rejection requires the citation of some evidence, not
contained in the application as filed, that the claims do
not set forth what applicants regard as their invention. In
re Prater , 415 F.2d 1393, 162 USPQ 541 (CCPA 1969). Any
disagreement  between  the  content  of  the  application
disclosure and the scope of the claims should be addressed
under 35 U.S.C. 112, first paragraph. See  In re Ehrreich ,
590 F.2d 902, 200 USPQ 504 (CCPA 1979).

 Where a deposit is required to satisfy 35 U.S.C. 112, a
deposit must be made in accordance with these regulations. A
deposit accepted in any IDA under the Budapest Treaty shall
be accepted for patent purposes if made under conditions
which  comply  with  37  CFR  1.806  and  37  CFR  1.808(a)
concerning term of deposit and permissible conditions on
access once the patent is granted.

2411.02  Responses to Rejections Based on Deposit Issue

 Once a rejection under 35 U.S.C. 112 has been made by the
examiner directed to the absence of access to a biological
material,  applicant  may  respond,  pursuant  to  37  CFR
1.809(b)(1), by either making an acceptable original or
replacement deposit in accordance with these regulations, or
assuring the Office in writing that an acceptable deposit
will be made on or before the date of payment of the issue
fee, or by submitting an argument of why a deposit is not
required under the circumstances of the application being
considered.  Other  replies  to  such  a  rejection  by  the
examiner shall be considered non - responsive and may result
in abandonment of the application. The rejection will be
repeated and made final until the requirements of 37 CFR
1.809(b)(1) are satisfied or the examiner is convinced that

a deposit is not required for the claimed subject matter.
Once the rejection is made final, the requirements of 37 CFR
1.116 apply to further submissions. The written assurance
will be accepted by the Office if it clearly states that an
acceptable deposit will be made within the required time and
under conditions which satisfy these rules. In the case that
an  acceptable  written  assurance  has  been  made  by  the
applicant, the rejection under 35 U.S.C. 112 directed to the
absence of access to the biological material should be
removed.

2411.03  Application in Condition for Allowance Except for
Deposit

 As set forth in 37 CFR 1.809(c), in the event that an
application  for  patent  is  otherwise  in  condition  for
allowance except for a required deposit and the Office has
received a written assurance that an acceptable deposit will
be made, the Office will mail to the applicant a requirement
that the required deposit be made within three (3) months
together with the Notice of Allowance and Issue Fee Due.
Although the period for paying the issue fee cannot be
extended under the provisions of 37 CFR 1.136, the period
for satisfying the requirement to make an acceptable deposit
may be extended under the provisions of that section.
Failure to make the needed deposit in accordance with this
requirement may be considered a failure to prosecute the
application under 35 U.S.C. 133 and result in abandonment of
the application. Once the deposit has been made, information
regarding the deposit, such as the name of the depository,
the accession number and the date of the deposit, that is to
be added to the specification must be added by means of
filing an amendment under the provisions of 37 CFR 1.312. A
petition and fee are required if the 37 CFR 1.312 amendment
is filed after the issue fee has been paid.

2411.04  After a Patent Has Been Granted

 In a proceeding involving a patent, it may not be possible
to request a certificate of correction of the patent which
meets the terms of 37 CFR 1.805(b) and 37 CFR 1.805(c). For
example, if the patent owner is on notice that samples of an
original  deposit  can  no  longer  be  furnished  by  the
depository, failure to diligently make a replacement deposit
will preclude grant of a certificate of correction. A
replacement deposit subsequently made will not be recognized
by  the  Office  nor  will  a  request  for  certificate  of
correction, even if made promptly thereafter, be granted. It
would also not be possible to request a certificate of
correction of the patent which meets the terms of 37 CFR
1.805(b) and 37 CFR 1.805(c) where no original deposit was
made before or during the pendency of the application which
matured into the patent.

 A patent defective because of lack of a necessary deposit
is necessarily fatally defective for failure to comply with
the first paragraph of 35 U.S.C. 112. Reissue is not
available in such cases. See In re Hay , 534 F.2d 917, 189
USPQ 790 (CCPA 1976). Whether reissue is available where a
biological material necessary for compliance with 35 U.S.C.
112 was known and readily available at the time of issuance
of  the  patent  and  subsequently  ceased  to  be  readily
available is problematic. Nevertheless, the rules do not
provide for post - issuance original deposits.

 Where an applicant for patent has any doubt as to whether
access to a biological material specifically identified in
the specification is necessary to satisfy 35 U.S.C. 112 or
whether such a material, while currently freely available,
may become unavailable in the future, the applicant would be
well - advised to make a deposit thereof before any patent
issues. Similarly, where a patent owner has any doubt
whether a deposit referred to in the specification is a
biological material necessary to satisfy 35 U.S.C. 112 and,
if the material is necessary, whether it is otherwise known
and readily available, the patent owner would be well -
advised to follow the procedures set forth in 37 CFR
1.805(b) and 37 CFR 1.805(c) after receiving the notice
specified in those paragraphs.

2411.05  Content of Application with Respect to Deposited
Material

 37 CFR 1.809(d) sets forth the requirements for the content
of the specification with respect to a deposited biological
material. Specifically, the specification shall contain the
accession number for the deposit, the date of the deposit,
the name and address of the depository, and a description of
the deposited biological material sufficient to specifically
identify it and to permit examination. The description also
must be sufficient to permit verification that the deposited
biological material is in fact that disclosed. Once the
patent issues, the description must be sufficient to aid in
the resolution of questions of infringement. As a general
rule,  the  more  information  that  is  provided  about  a
particular deposited biological material, the better the
examiner  will  be  able  to  compare  the  identity  and
characteristics of the deposited biological material with
the prior art.

2420  The Requirements for Patent Applications
Containing Nucleotide Sequence and/or Amino Acid Sequence
Disclosures - the Sequence Rules

  Prior  to  the  effective  date  (October  1,  1990)  and
implementation of the sequence rules (37 CFR 1.821 through
1.825), applications for patents that included nucleotide or
amino acid sequence information posed special problems for
the Office. While not related to the disclosure requirements
of an invention, problems existed in the presentation,
examination  and  printing  of  nucleotide  and  amino  acid
sequence data that appeared in patent applications because
of the lack of uniformity in submission of sequence data to
the Office and the impracticality of properly searching and
examining sequences submitted in paper form. In summary, the
diversity  and  complexity  of  nucleotide  and  amino  acid
sequence  data  resulted  in  searching  and  analysis
difficulties both within the Office and outside the Office,
decreased accuracy of search and reproduction and increased
costs.  These  difficulties  made  the  development  and
implementation of the sequence rules a critical necessity
for the Office. As such, the Office amended its regulations
to establish a standardized format for descriptions of
nucleotide and amino acid sequence data submitted as a part
of patent applications, in conjunction with the required
submission of that data in computer readable form. The final
rules were published in the Federal Register at 55 FR 18230
(May 1, 1990) and in the  Official Gazette at 1114 O.G. 29
(May 15, 1990). The sequence rules went into effect on
October 1, 1990.

2421  Overview of the Sequence Rules

2421.01  Applications Affected

 The sequence rules require the use of standard symbols and
a standard format for sequence data in most sequence - type
patent applications. They further require the submission of
that data in computer readable form. Compliance is required
for most disclosures of sequence data in new applications.
For the purpose of the sequence rules, the term "new" with
regard to applications means:

 - For regular US applications, the application must have
been  filed  on  or  after  October  1,  1990.  Continuing
applications that claim a date prior to October 1, 1990,
under 35 U.S.C. 120, except continuations - in - part (CIPs)
filed on or after October 1, 1990, where material added
includes a sequence, are not new applications.

 - For PCT applications, the international filing date must
be on or after October 1, 1990, and the US must be one of
the designated states and the US must be the International
Searching Authority and/or the International Preliminary
Examining Authority. For national stage applications, the
international filing date, not the 371 date, is used. For
international applications, the international filing date,
not the U.S. or foreign priority date, is used.

 - Not applicable to reissues or reexams filed after October
1, 1990, unless application which matured into patent was
also subject to rules.

 - Not applicable to continuations or divisionals filed
after October 1, 1990, unless parent application was also
subject to rules.

 - Will apply to CIPs where parent application subject to
rules or where new material includes sequence information
that falls within rules. Where a CIP is filed on or after
October 1, 1990, and claims the benefit of a filing date
prior to October 1, 1990, under 35 U.S.C. 120 and material
added includes a sequence, the requirement for compliance is
limited  to  the  newly  added  sequence  material.  Full
compliance, for all sequence information in the CIP is,
however, encouraged.

 The Office encourages voluntary compliance for applications
not subject to rules, but all aspects of the rules must be
complied with before data will be entered into the database.
This includes submission of all statements required by the
rules. In exceptional circumstances, it should be noted that
the Office may waive the rules via a 37 CFR 1.183 petition.

2421.02  Summary of the Requirements of the Sequence Rules

 Basically, the sequence rules define a set of symbols and
procedures that are both mandatory and the only way that an
applicant is permitted to describe information about a
sequence that falls within the definitions used in the
rules. Thus, 37 CFR 1.821 of the rules defines a sequence
for the purpose of the rules, the requirements for specific
symbols, formats, paper and computer readable copies of the
sequence,  and  the  deadlines  for  complying  with  the
requirements. 37 CFR 1.822 to 37 CFR 1.824 set forth

detailed descriptions of the requirements that are mandatory
for the presentation of sequence data, and 37 CFR 1.825 sets
forth procedures that are available to an applicant in the
event  that  amendments  to  the  sequence  information  or
replacement of the computer readable copy become necessary.

  The  sequence  rules  embrace  all  unbranched  nucleotide
sequences with ten or more bases and all unbranched, non - D
amino acid sequences with four or more amino acids. The
rules apply to all sequences in a given application, whether
claimed or not. All such sequences are relevant for the
purposes of building a comprehensive database and properly
assessing prior art. It is therefore essential that all
sequences,  whether  only  disclosed  or  also  claimed,  be
included in the database.

2421.03  Notification of a Failure to Comply

 With respect to the Office's determination of compliance
with the sequence rules and the opportunities afforded
applicants  to  satisfy  the  requirements  of  the  rules,
applicants  will  be  notified  of  easily  detectable
deficiencies early in the application process. Deficiencies
of a more sophisticated nature will likely only be detected
by  the  examiner  to  whom  the  application  is  assigned.
Applicants whose computer readable forms are damaged in the
mail, are not readable, or are missing mandatory elements
will be notified shortly after receipt of the application by
the Office. Other errors or inconsistencies will be noted by
the  examiner  early  in  the  examination  process.  Upon
detection of damage or a deficiency, a notice will be sent
to the applicant detailing the damage or deficiency and
setting at least a one month period for response. The period
for response will usually be one month. However, if the
notice is sent out with an Office communication having a
longer period for response, the period for response may be
longer than one month, e.g., where the notice is sent with
an Office action on the merits setting a three month period
for response. Extensions of time in which to reply will be
available pursuant to 37 CFR 1.136. When an action by the
applicant, such as a response to a notice to comply from the
Office, is determined to be a bona fide attempt to comply
with the rules and it is apparent that compliance with some
requirement has inadvertently been omitted, the opportunity
to explain and supply the omission will be given before the
question of abandonment will be considered. See 37 CFR
1.135(c). The relevant form paragraphs and a copy of the
Notice to Comply to be used in applications subject to the
sequence rules are included in MPEP § 2427 Form Paragraphs
and Notice to Comply.

 A notification of a failure to comply with the sequence
rules will usually be accompanied by an analysis of a
submitted computer readable form. Any inquiries regarding a
specific computer readable form that has been processed by
the Office should be directed to the Systems Branch of the
Biotechnology  Division  of  the  Scientific  and  Technical
Information Center.

2421.04  Future Changes to the Sequence Rules

 With general regard to the symbols and format to be used
for nucleotide and/or amino acid sequence data set forth in
37  CFR  1.822  and  the  form  and  format  for  sequence
submissions in computer readable form set forth in 37 CFR

1.824, the Office intends to accommodate progress in the
areas of both standardization and computerization as they
relate to sequence data by subsequently amending the rules
to take into account any such progress. This progress will
probably be reflected in the refinement of or liberalization
of the rules. For example, progress in the area of the
standardization of sequence data will likely result in a
more comprehensive rule. For example, the D - amino acids
and branched sequences that are currently excluded from the
rule may, in the future, be brought within the scope of the
rule once the necessary standardization technology becomes
available. As a further example, the computer readable form
is currently limited to diskettes and tapes, but it can
readily  be  seen  that  progress  in  the  technology  for
developing databases of the type the Office has envisioned
will likely permit a broadening of the permissible types of
computer readable forms that may be submitted. The same can
be said for the computer/operating - system configurations
that are currently permitted by the rules. As the Office
becomes able to provide greater refinement and liberality in
these areas, the Office will do so by the publication of
notices  in  the  Official  Gazette  or  formal  rulemaking
proposals, as appropriate.

2422  Nucleotide and/or Amino Acid Sequence Disclosures
in Patent Applications

 37 CFR 1.821.  Nucleotide and/or amino acid sequence
disclosures in patent applications.

 (a)  "Nucleotide and/or amino acid sequences" as used in
§ 1.821 through 1.825 is interpreted to mean an unbranched
sequence of four or more amino acids or an unbranched
sequence of ten or more nucleotides. Branched sequences are
specifically excluded from this definition. Nucleotides and
amino acids are further defined as follows:

 (1)  "Nucleotides" are intended to embrace only those
nucleotides that can be represented using the symbols set
forth in § 1.822(b)(1). Modifications, e.g., methylated
bases, may be described as set forth in § 1.822(b), but
shall not be shown explicitly in the nucleotide sequence.

 (2)  "Amino acids" are those L - amino acids commonly
found in naturally occurring proteins and are listed in §
1.822(b)(2). Those amino acid sequences containing D - amino
acids are not intended to be embraced by this definition.
Any amino acid sequence that contains post - translationally
modified amino acids may be described as the amino acid
sequence that is initially translated using the symbols
shown in § 1.822(b)(2) with the modified positions, e.g.,
hydroxylations or glycosylations, being described as set
forth in § 1. 822(b), but these modifications shall not be
shown explicitly in the amino acid sequence. Any peptide or
protein that can be expressed as a sequence using the
symbols in § 1.822(b)(2) in conjunction with a description
elsewhere  in  the  "Sequence  Listing"  to  describe,  for
example, modified linkages, cross links and end caps, non -
peptidyl bonds, etc., is embraced by this definition.

 (b)  Patent applications which contain disclosures of
nucleotide and/or amino acid sequences, in accordance with
the definition in paragraph (a) of this section, shall, with
regard to the manner in which the nucleotide and/or amino
acid  sequences  are  presented  and  described,  conform

exclusively to the requirements of § 1.821 through 1.825.

 (c)  Patent applications which contain disclosures of
nucleotide and/or amino acid sequences must contain, as a
separate part of the disclosure on paper copy, hereinafter
referred to as the "Sequence Listing," a disclosure of the
nucleotide  and/or  amino  acid  sequences  and  associated
information using the symbols and format in accordance with
the  requirements  of  §  1.822  and  1.823.  Each  sequence
disclosed must appear separately in the "Sequence Listing."
Each sequence set forth in the "Sequence Listing" shall be
assigned a separate identifier written as SEQ ID NO:1, SEQ
ID NO:2, SEQ ID NO:3, etc.

 (d) Where the description or claims of a patent application
discuss  a  sequence  listing  that  is  set  forth  in  the
"Sequence Listing" in accordance with paragraph (c) of this
section, reference must be made to the sequence by use of
the assigned identifier, in the text of the description or
claims, even if the sequence is also embedded in the text of
the description or claims of the patent application.

 (e) A copy of the "Sequence Listing" referred to in
paragraph (c) of this section must also be submitted in
computer readable form in accordance with the requirements
of § 1.824. The computer readable form is a copy of the
"Sequence Listing" and will not necessarily be retained as
part  of  the  patent  application  file.  If  the  computer
readable form of a new application is to be identical with
the computer readable form of another application of the
applicant on file in the Office, reference may be made to
the other application and computer readable form in lieu of
filing  a  duplicate  computer  readable  form  in  the  new
application. The new application shall be accompanied by a
letter making such reference to the other application and
computer readable form, both of which shall be completely
identified.

 (f)  In addition to the paper copy required by paragraph
(c) of this section and the computer readable form required
by paragraph (e) of this section, a statement that the
content of the paper and computer readable copies are the
same must be submitted with the computer readable form. Such
a statement must be a verified statement if made by a person
not registered to practice before the Office.

 (g)  If any of the requirements of paragraphs (b)
through (f) of this section are not satisfied at the time of
filing under 35 U.S.C. 111 or at the time of entering the
national stage under 35 U.S.C. 371, applicant has one month
from the date of a notice which will be sent requiring
compliance  with  the  requirements  in  order  to  prevent
abandonment of the application. Any submission in response
to a requirement under this paragraph must be accompanied by
a statement that the submission includes no new matter. Such
a statement must be a verified statement if made by a person
not registered to practice before the Office.

 (h)  If any of the requirements of paragraphs (b)
through (f) of this section are not satisfied at the time of
filing,  in  the  United  States  Receiving  Office,  an
international  application  under  the  Patent  Cooperation
Treaty (PCT) applicant has one month from the date of a
notice which will be sent requiring compliance with the
requirements, or such other time as may be set by the

Commissioner, in which to comply. Any submission in response
to a requirement under this paragraph must be accompanied by
a statement that the submission does not include new matter
or go beyond the disclosure in the international application
as filed. Such a statement must be a verified statement if
made by a person not registered to practice before the
Office.

 (i)  Neither the presence nor the absence of information
which is not required under § 1.821 through 1.825, in an
application  shall  create  any  presumption  that  such
information is necessary to satisfy one or more of the
requirements of 35 U.S.C. 112. Further, the grant of a
patent on an application that is subject to the requirements
of § 1.821 through 1.825 shall constitute a conclusive
presumption that said patent complies with the requirements
of § 1.821 through 1.825.

 (j)  Envelopes  containing  only  application  papers,
computer readable forms and fees filed under this section
should be marked "Box SEQUENCE."

2422.01  Definitions of Nucleotide and/or Amino Acids for
Purpose of Sequence Rules

 37 CFR 1.821(a) presents a definition for "nucleotide
and/or amino acid sequences." This definition sets forth
limits, in terms of numbers of amino acids and/or numbers of
nucleotides, at or above which compliance with the sequence
rules is required. Further, compliance with the sequence
rules is only required for unbranched sequences. Branched
sequences are explicitly excluded from the scope of the
sequence rules. The limit of four or more amino acids was
established  for  consistency  with  limits  in  place  for
industry database collections whereas the limit of ten or
more nucleotides, while lower than certain industry database
limits,  was  established  to  encompass  those  nucleotide
sequences to which the smallest probe will bind in a stable
manner. The limits for amino acids and nucleotides are also
consistent with those established for sequence data exchange
with the Japanese Patent Office and the European Patent
Office.

 37 CFR 1.821(a)(1) and 37 CFR 1.821(a)(2) present further
definitions for those nucleotide and amino acid sequences
that are intended to be embraced by the sequence rules.
Situations in which the applicability of the rules are in
issue will be resolved on a case - by - case basis.

 Nucleotide sequences are further limited to those that can
be  represented  by  the  symbols  set  forth  in  37  CFR
1.822(b)(1). The presence of other than typical 5' to 3'
phosphodiester linkages in a nucleotide sequence does not
render the rules inapplicable. The Office does not want to
exclude linkages of the type commonly found in naturally
occurring  nucleotides,  e.g.,  eukaryotic  end  capped
sequences.

 Amino acid sequences are further limited to those listed in
37 CFR 1.822(b)(2) and those L - amino acids that are
commonly  found  in  naturally  occurring  proteins.  The
limitation to L - amino acids is based upon the fact that
there  currently  exists  no  widely  accepted  standard
nomenclature for representing the scope of amino acids
encompassed by non - L-amino acids, and, as such, the

process of meaningfully encoding these other amino acids for
computerized  searching  and  printing  is  not  currently
feasible. The presence of one or more D - amino acids in a
sequence will exclude that sequence from the scope of the
rules. (Voluntary compliance is, however, encouraged in
these situations; the symbol "Xaa" can be used to represent
D - amino acids.) The sequence rules embrace "[a]ny peptide
or protein that can be expressed as a sequence using the
symbols  in  37  CFR  1.822(b)(2)  in  conjunction  with  a
description elsewhere in the "Sequence Listing" to describe,
e.g., modified linkages, cross links, end caps, non -
peptidyl bonds, etc." 37 CFR 1.821(a)(2).

 With regard to amino acid sequences, the use of the terms
"peptide or protein" implies, however, that the amino acids
in a given sequence are linked by at least three consecutive
peptide bonds. Accordingly, an amino acid sequence is not
excluded from the scope of the rules merely due to the
presence of a single non - peptidyl bond. If an amino acid
sequence can be represented by a string of amino acid
abbreviations,  with  reference,  where  necessary,  to  a
features table to explain modifications in the sequence, the
sequence comes within the scope of the rules. However, the
rules are not intended to encompass the subject matter that
is generally referred to as synthetic resins.

2422.02  The Requirement for Exclusive Conformance;
Sequences Presented in Drawing Figures

 37 CFR 1.821(b) requires exclusive conformance, with regard
to the manner in which the nucleotide and/or amino acid
sequences are presented and described, with the sequence
rules for all applications that include nucleotide and amino
acid  sequences  that  fall  within  the  definitions.  This
requirement is necessary to minimize any confusion that
could result if more than one format for representing
sequence data was employed in a given application. It is
also expected that the required standard format will be more
readily and widely accepted and adopted if its use is
exclusive, as well as mandatory.

  In  view  of  the  fact  that  many  significant  sequence
characteristics may only be demonstrated by a figure, the
exclusive conformance requirement of this section may be
relaxed for drawing figures. This is especially true in view
of the fact that the representation of double stranded
nucleotides is not permitted in the "Sequence Listing" and
many significant nucleotide features, such as "sticky ends"
and the like, will only be shown effectively by reference to
a  drawing  figure.  Further,  the  similarity  or  homology
between/among sequences can only be depicted in an effective
manner in a drawing figure. Similarly, drawing figures are
recommended for use with amino acid sequences to depict
structural features of the corresponding protein, such as
finger regions and Kringle regions. The situations discussed
herein are given by way of example only and there may be
many other reasons for relaxing the requirements of this
section for the drawing figures. It should be noted, though,
that when a sequence is presented in a drawing, regardless
of the format or the manner of presentation of that sequence
in the drawing, the sequence must still be included in the
Sequence Listing and the sequence indentifer ("SEQ ID NO:X")
must be used, either, in the drawing or in the Brief
Description of the Drawings.

2422.03  The Requirements for a Sequence Listing and
Sequence Identifiers; Sequences Embedded in Application
Text; Variants of a Presented Sequence

 37 CFR 1.821(c) requires that applications containing
nucleotide and/or amino acid sequences that fall within the
above definitions, contain, as a separate part of the
disclosure on paper copy, a disclosure of the nucleotide
and/or amino acid sequences, and associated information,
using the format and symbols that are set forth in 37 CFR
1.822  and  37  CFR  1.823.  This  separate  part  of  the
disclosure,  beginning  on  a  new  page  within  the
specification, is referred to as the "Sequence Listing," and
requires that each sequence disclosed in the application
appear separately in the "Sequence Listing," with each
sequence further being assigned a sequence identification
number, referred to as "SEQ ID NO." A plurality of sequences
may, if feasible, be presented on a single page, and this
may  be  extended  to  the  separate  presentation  of  both
nucleotide and amino acid sequences on the same page. The
requirement  for  sequence  identification  numbers,  at  a
minimum, requires that each sequence be assigned a different
number  for  purposes  of  identification.  However,  where
practical and for ease of reference, sequences should be
presented  in  the  separate  part  of  the  application  in
numerical order and in the order in which they are discussed
in the application.

 The requirement for compliance in 37 CFR 1.821(c) is
directed to " disclosures of nucleotide and/or amino acid
sequences."  (Emphasis  added.)  All  sequence  information,
whether claimed or not, that meets the length thresholds in
37 CFR 1.821(a) is subject to the rules. The goal of the
Office is to build a comprehensive database that can be used
for, inter alia, the purpose of assessing the prior art. It
is  therefore  essential  that  all  sequence  information,
whether only disclosed or also claimed, be included in the
database. In those instances in which prior art sequences
are only referred to in a given application by name and a
publication  or  accession  reference,  they  need  not  be
included as part of the "Sequence Listing," unless an
examiner  considers  the  referred  -  to  sequence  to  be
"essential material," per MPEP § 608.01(p). However, if the
applicant presents the sequence as a string of particular
bases or amino acids, it is necessary to include the
sequence in the "Sequence Listing," regardless of whether
the applicant considers the sequence to be prior art. In
general, any sequence that is disclosed and/or claimed as a
sequence, i.e., as a string of particular bases or amino
acids, and that otherwise meets the criteria of 37 CFR
1.821(a), must be set forth in the "Sequence Listing."

 It is generally acceptable to present a single, general
sequence in accordance with the sequence rules and to
discuss and/or claim variants of that general sequence
without presenting each variant as a separate sequence in
the  "Sequence  Listing."  By  way  of  example  only,  the
following types of sequence disclosures would be treated as
noted herein by the Office. With respect to "conservatively
modified variants thereof" of a sequence, the sequences may
be described as SEQ ID NO:X and "conservatively modified
variants thereof," if desired. With respect to a sequence
that "may be deleted at the C - terminus by 1, 2, 3, 4, or 5
residues," all of the implied variations do not need to be
included in the "Sequence Listing." If such a situation were

encompassed by the rules, it would introduce far too much
complexity into the "Sequence Listing" and the Office's
database. The possible mathematical variations that could
result from this type of language could reasonably require a
"Sequence Listing" that would be thousands of pages in
length. In this latter example, only the undeleted sequence
needs to be included in the "Sequence Listing," and the
sequences may be described as SEQ ID NO:X from which
deletions have been made at the C - terminus by 1, 2, 3, 4,
or 5 residues. The Office's database will only contain the
undeleted sequence.

 37 CFR 1.821(d) requires the use of the assigned sequence
identifier in all instances where the description or claims
of a patent application discuss sequences regardless of
whether a given sequence is also embedded in the text of the
description or claims of an application. This requirement is
also intended to permit references, in both the description
and claims, to sequences set forth in the "Sequence Listing"
by  the  use  of  assigned  sequence  identifiers  without
repeating the sequence in the text of the description or
claims. Sequence identifiers can also be used to discuss
and/or claim parts or fragments of a properly presented
sequence. For example, language such as "residues 14 to 243
of SEQ ID NO:23" is permissible and the fragment need not be
separately presented in the "Sequence Listing." Where a
sequence is embedded in the text of an application, it must
be presented in a manner that complies with the requirements
of the sequence rules.

 The rules do not alter, in any way, the requirements of 35
U.S.C. 112. The implementation of the rules has had no
effect  on  disclosure  and/or  claiming  requirements.  The
rules, in general, or the use of sequence identifiers
throughout  the  specification  and  claims,  specifically,
should not raise any issues under 35 U.S.C. 112, first or
second  paragraphs.  The  use  of  sequence  identification
numbers (SEQ ID NO:X) only provides a shorthand way for
applicants to discuss and claim their inventions. These
identification numbers do not in any way restrict the manner
in which an invention can be claimed.

2422.04  The Requirement for a Computer Readable Copy of
the Official Paper Copy of the Sequence Listing

 37 CFR 1.821(e) requires the submission of a copy of the
"Sequence Listing" in computer readable form. The infor
mation on the computer readable form will be entered into
the Office's database for searching and printing nucleotide
and amino acid sequences. This electronic database will also
enable the Office to exchange patented sequence data, in
electronic form, with the Japanese Patent Office and the
European Patent Office. It should be noted that the Office's
database  complies  with  the  confidentiality  requirement
imposed by 35 U.S.C. 122. Pending application sequences are
maintained in the database separately from published or
patented sequences. That is, the Office will not exchange or
make public any information on any sequence until the patent
application containing that information is published or
matures into a patent, or as otherwise allowed by 35 U.S.C.
122.

 The second sentence of 37 CFR 1.821(e) indicates that, as
between the paper copy of the "Sequence Listing" and the
computer readable copy thereof, the paper copy serves as the

official copy. However, the Office may permit correction of
the paper copy, at the least, during the pendency of a given
application by reference to the computer readable copy
thereof if both the paper and computer readable forms were
submitted at the time of filing of the application and the
totality of the circumstances otherwise substantiate the
proposed correction. A mere discrepancy between the paper
copy and the computer readable form may not, in and of
itself, be sufficient to justify a proposed correction. In
this regard, the Office will assume that the computer
readable form has been incorporated by reference into the
application when the paper and computer readable forms were
submitted at the time of filing of the application. The
Office will attempt to accommodate or address all correction
issues, but it must be kept in mind that the real burden
rests with the applicant to ensure that any discrepancies
between the paper copy and the computer readable form are
eliminated or minimized. Applicants should be aware that
there will be instances where the applicant may have to
suffer the conserquences of any discrepancies between the
two. All corrections will be made by appropriate fee - paid
petitions. The paper copy also serves as the official copy
for priority purposes. The Office does not desire to be
bound by a requirement to permanently preserve computer
readable forms for support, priority or correction purposes.
For  example,  the  Office  will  make  corrections,  where
appropriate, by reference to the computer readable form as
long as the computer readable form is still available to the
Office. However, once use to the Office for processing has
ended, i.e., once the Office has entered the data contained
on the computer readable form into the appropriate database,
the Office does not intend to further preserve the computer
readable form submitted by the applicant.

2422.05  Reference to Previously Filed Identical Computer
Readable Form; Continuing or Derivative Applications;
Request for Transfer of Computer Readable Form

 The last two sentences of 37 CFR 1.821(e) set forth the
procedure to be followed when a computer readable form of a
given application is identical with a computer readable form
of another application. In that situation, an applicant may
make  reference  to  the  other  application  and  computer
readable form therein in lieu of filing a duplicate computer
readable form in the given application. That is, additional
computer readable forms will not be required in derivative
or continuing applications if the sequence information is
exactly the same, i.e., with no additions or deletions, as
that in a parent or previously filed application in which a
complying computer readable form had been filed. If sequence
information is deleted from or added to that submitted in a
previously  filed  application,  the  procedure  in  this
paragraph is not available and a new computer readable form
is required. To take advantage of the procedure outlined in
this section, applicants must request that the previously
submitted  sequence  information  be  used  in  the  given
application in much the same manner as applicants must now
request the transfer of drawings in derivative or continuing
applications. A letter must be submitted in the given
application requesting use of the previously filed sequence
information. The letter must completely identify the other
application,  by  application  number,  and  the  computer
readable  form,  by  indicating  whether  it  was  the  only
computer readable form filed in that application or whether
it was the second, or subsequent, computer readable form

filed.

2422.06  Requirement for Statement Regarding Content of
Paper and Computer Readable Copies of Sequence Listing

 37 CFR 1.821(f) requires that the paper and computer
readable copies of the "Sequence Listing" be accompanied by
a statement that the content of the paper and computer
readable copies are the same, at the time when the computer
readable  form  is  submitted.  This  statement  must  be  a
verified statement if it is made by a person not registered
to practice before the Office. Such a statement may be made
by the applicant. See MPEP § 2428 for further information
and Sample Statements.

2422.07  Requirements for Compliance, Statements Regarding
New Matter, and Sanctions for Failure to Comply [R - 1]

 37 CFR 1.821(g) requires compliance with the requirements
of 37 CFR 1.821(b) through (f), as discussed above, if they
are not satisfied at the time of filing under 35 U.S.C.
111>(a)< or at the time of entering the national stage of an
international application under 35 U.S.C. 371, within one
month from the date of a notice requiring compliance. >
Applications filed under 35 U.S.C. 111(b) need not comply
with 37 CFR 1.821 through 1.825, however, applicants are
encouraged to file a Sequence Listing as defined in 37 CFR
1.821(c)  for  ease  of  identification  of  the  sequence
information contained in the provisional application. <
Failure to comply will result in the abandonment of the
application. The time period for response may be longer than
one month if coupled with a different Office requirement.
Submissions in response to requirements under this paragraph
must be accompanied by a statement that the submission
includes no new matter. This statement must be a verified
statement if made by a person not registered to practice
before the Office. Again, such a statement may be made by
the applicant. Extensions of time in which to reply to a
requirement under this paragraph are available pursuant to
37 CFR 1.136. When an action by the applicant is a bona fide
attempt to comply with these rules and it is apparent that
compliance with some requirement has inadvertently been
omitted, the opportunity to explain and supply the omission
will  be  given  before  the  question  of  abandonment  is
considered. See 37 CFR 1.135(c).

 37 CFR 1.821(h) requires compliance with the requirements
of 37 CFR 1.821(b) through (f), as discussed above, within
one month from the date of a notice requiring compliance in
an international application filed in the United States
Receiving Office under the Patent Cooperation Treaty (PCT),
if the above noted requirements are not satisfied at the
time of filing. Submissions in response to requirements
under this paragraph must be accompanied by a statement that
the submission does not include new matter or go beyond the
disclosure in the international application as filed. This
statement must be a verified statement if made by a person
not  registered  to  practice  before  the  Office.  Such  a
statement  may  be  made  by  an  applicant.  International
applications  that  fail  to  comply  with  any  of  the
requirements of 37 CFR 1.821(b) - (f) will be searched to
the extent possible without the benefit of the information
in computer readable form.

 The requirement to submit a statement that a submission in

response to the requirements of this section does not
include new matter or go beyond the disclosure in the
application as filed is not the first instance in which the
applicant has been required to ensure that there is not new
matter upon amendment. The requirement is analogous to that
found in 37 CFR 1.125 regarding substitute specifications.
When a substitute specification is required because the
number or nature of amendments would make it difficult to
examine  the  application,  the  applicant  must  include  a
statement that the substitute specification includes no new
matter. The necessity of requiring a substitute "Sequence
Listing," or pages thereof, is similar to the necessity of
requiring a substitute specification and, likewise, the
burden is on the applicant to ensure that no new matter is
added. Applicants have a duty to comply with the statutory
prohibition (35 U.S.C. 132 and 35 U.S.C. 251) against the
introduction of new matter.

 It should be noted that the treatment accorded errors in
sequencing or any other errors prior to the implementation
date of the sequence rules will be no different for those
applications filed on or after the implementation date of
these rules. The correction of errors in sequencing or any
other errors that are made in describing an invention are,
as  they  have  always  been,  subject  to  the  statutory
prohibition (35 U.S.C. 132 and 35 U.S.C. 251) against the
introduction of new matter.

2422.08  Presumptions Regarding Compliance

 37 CFR 1.821(i) makes clear that neither the presence nor
absence of information which is not required under the
sequence  rules  will  create  a  presumption  that  such
information is necessary to satisfy any of the requirements
of 35 U.S.C. 112. Further, this paragraph states that the
grant of a patent on an application that is subject to 37
CFR 1.821 through 37 CFR 1.825 constitutes a conclusive
presumption  that  the  granted  patent  complies  with  the
requirements of these rules. This paragraph addresses the
concerns with respect to the weight that may ultimately be
accorded an omission of an item of information which is not
required under the rule, regardless of whether that item has
been designated as "recommended" or "optional."

2422.09  Box Sequence; Hand Delivery of Sequence Listings
and Computer Readable Forms

 37 CFR 1.821(j) was included to facilitate administrative
processing of all application papers, computer readable
forms and fees filed under this section. Accordingly, all
such application papers, computer readable forms and fees
filed in the Office should be marked "Box SEQUENCE."

 Correspondence relating to the Sequence Rules may also be
hand - delivered to the Group. In cases of hand delivery to
the Mail Window or to the Group, the floppy disk should be
placed in a protective mailer labeled with at least the
application number, if available. The labeling requirements
of 37 CFR 1.824(h) must also be complied with. The use of
staples and clips, if any, should be confined to carefully
attaching the mailer to the submitted papers without contact
or compression of the magnetic media which may cause the
disk to be unreadable. In no situations, should additional
or  complimentary  copies  of  diskettes  be  delivered  to
Examiners or other Office personnel.

2423  Symbols and Format To Be Used for Nucleotide
and/or Amino Acid Sequence Data

 37 CFR 1.822 Symbols and format to be used for nucleotide
and/or amino acid sequence data.

 (a) The symbols and format to be used for nucleotide and/or
amino acid sequence data shall conform to the requirements
of paragraphs (b) through (p) of this section.

 (b) The code for representing the nucleotide and/or amino
acid sequence characters shall conform to the code set forth
in the tables in paragraphs (b)(1) and (b)(2) of this
section. No code other than that specified in this section
shall be used in nucleotide and amino acid sequences. A
modified base or amino acid may be presented in a given
sequence as the corresponding unmodified base or amino acid
if the modified base or amino acid is one of those listed in
paragraphs  (p)(1)  or  (p)(2)  of  this  section  and  the
modification is also set forth elsewhere in the Sequence
Listing  (for  example,  FEATURES  §  1.823(b)(2)(ix)).
Otherwise,  all  bases  or  amino  acids  not  appearing  in
paragraphs (b)(1) or (b)(2) of this section shall be listed
in a given sequence as "N" or "Xaa," respectively, with
further information, as appropriate, given elsewhere in the
Sequence Listing.

  (1) Base codes:

  Symbol Meaning

  A A; adenine

  C C; cytosine

  G G; guanine

  T T; thymine

  U U; uracil

  M A or C

  R A or G

  W A or T/U

  S C or G

  Y C or T/U

  K G or T/U

  V A or C or G; not T/U

  H A or C or T/U; not G

  D A or G or T/U; not C

  B C or G or T/U; not A

  N (A or C or G or T/U) or (unknown or other)

  (2) Amino acid three - letter abbreviations:

  Abbreviation Amino acid name

  Ala Alanine

  Arg Arginine

  Asn Asparagine

  Asp Aspartic Acid

  Asx Aspartic Acid or Asparagine

  Cys Cysteine

  Glu Glutamic Acid

  Gln Glutamine

  Glx Glutamine or

  Glutamic Acid Gly Glycine

  His Histidine

  Ile Isoleucine

  Leu Leucine

  Lys Lysine

  Met Methionine

  Phe Phenylalanine

  Pro Proline

  Ser Serine

  Thr Threonine

  Trp Tryptophan

  Tyr Tyrosine

  Val Valine

  Xaa Unknown or other

 (c) A nucleotide sequence shall be listed using the one -
letter code for the nucleotide bases, as in paragraph (b)(1)
of this section.

 (d) The amino acids corresponding to the codons in the
coding  parts  of  a  nucleotide  sequence  shall  be  typed
immediately below the corresponding codons. Where a codon
spans an intron, the amino acid symbol shall be typed below
the portion of the codon containing two nucleotides.

 (e) The amino acids in a protein or peptide sequence shall
be listed using the three - letter abbreviation with the
first letter as an upper case character, as in paragraph
(b)(2) of this section.

 (f) The bases in a nucleotide sequence (including introns)

shall be listed in groups of 10 bases except in the coding
parts of a sequence. Leftover bases, fewer than 10 in
number, at the end of noncoding parts of a sequence shall be
grouped together and separated from adjacent groups of 10 or
3 bases by a space.

 (g) The bases in the coding parts of a nucleotide sequence
shall be listed as triplets (codons).

 (h) A protein or peptide sequence shall be listed with a
maximum of 16 amino acids per line, with a space provided
between each amino acid.

 (i) A nucleotide sequence shall be listed with a maximum of
16 codons or 60 bases per line, with a space provided
between each codon or group of 10 bases.

 (j) A nucleotide sequence shall be presented, only by a
single strand, in the 5' to 3' direction, from left to
right.

 (k) An amino acid sequence shall be presented in the amino
to carboxy direction, from left to right, and the amino and
carboxy groups shall not be presented in the sequence.

 (l) The enumeration of nucleotide bases shall start at the
first base of the sequence with number 1. The enumeration
shall be continuous through the whole sequence in the
direction 5' to 3'. The enumeration shall be marked in the
right margin, next to the line containing the one - letter
codes for the bases, and giving the number of the last base
of that line.

 (m) The enumeration of amino acids may start at the first
amino acid of the first mature protein, with number 1. The
amino acids preceding the mature protein, e.g., pre -
sequences, pro - sequences, pre - pro - sequences and signal
sequences, when presented, shall have negative numbers,
counting backwards starting with the amino acid next to
number 1. Otherwise, the enumeration of amino acids shall
start at the first amino acid at the amino terminal as
number 1. It shall be marked below the sequence every 5
amino acids.

 (n) For those nucleotide sequences that are circular in
configuration, the enumeration method set forth in paragraph
(l) of this section remains applicable with the exception
that the designation of the first base of the nucleotide
sequence may be made at the option of the applicant. The
enumeration method for amino acid sequences that is set
forth in paragraph (m) of this section remains applicable
for amino acid sequences that are circular in configuration.

 (o) A sequence with a gap or gaps shall be presented as a
plurality of separate sequences, with separate sequence
identifiers, with the number of separate sequences being
equal in number to the number of continuous strings of
sequence data. A sequence that is made up of one or more
noncontiguous segments of a larger sequence or segments from
different  sequences  shall  be  presented  as  a  separate
sequence.

 (p) The code for representing modified nucleotide bases and
modified and unusual amino acids shall conform to the code
set forth in the tables in paragraphs (p)(1) and (p)(2) of

this section. The modified base controlled vocabulary in
paragraph (p)(1) of this section and the modified and
unusual amino acids in paragraph (p)(2) of this section
shall not be used in the nucleotide and/or amino acid
sequences; but may be used in the description and/or the
"Sequence Listing" corresponding to, but not including, the
nucleotide and/or amino acid sequence.

  (1) Modified base controlled vocabulary:

  Abbreviation Modified base description

  ac4c 4 - acetylcytidine

  chm5u 5 - (carboxyhydroxylmethyl)uridine

  cm 2' - O-methylcytidine

  cmnm5s2u 5 - carboxymethylaminomethyl - 2- thioridine

  cmnm5u 5 - carboxymethylaminomethyluri dine

  d dihydrouridine

  fm 2' - O-methylpseudouridine

  gal q beta,D - galactosylqueosine

  gm 2' - O-methylguanosine

  i inosine

  i6a N6 - isopentenyladenosine

  m1a 1 - methyladenosine

  m1f 1 - methylpseudouridine

  m1g 1 - methylguanosine

  m1i 1 - methylinosine

  m22g 2,2 - dimethylguanosine

  m2a 2 - methyladenosine

  m2g 2 - methylguanosine

  m3c 3 - methylcytidine

  m5c 5 - methylcytidine

  m6a N6 - methyladenosine

  m7g 7 - methylguanosine

  mam5u 5 - methylaminomethyluridine

  mam5s2u 5 - methoxyaminomethyl - 2-thiou ridine

  man q beta,D - mannosylqueosine

  mcm5s2u 5 - methoxycarbonylmethyl - 2- thiouridine

  mcm5u 5 - methoxycarbonylmethyluridine

  mo5u 5 - methoxyuridine

  ms2i6a 2 - methylthio - N6 - isopentenyladenosine

  ms2t6a  N  -  ((9  -  beta  -  D-ribofuranosyl  -  2-
methylthiopurine - 6-yl) carbamoyl)threonine

  mt6a N - ((9 - beta - D-ribofuranosylpu rine - 6 - yl)N
- methyl - carbamoyl)threonine

  mv uridine - 5-oxyacetic acid methylester

  o5u uridine - 5-oxyacetic acid (v)

  osyw wybutoxosine

  p pseudouridine

  q queosine

  s2c 2 - thiocytidine

  s2t 5 - methyl - 2-thiouridine

  s2u 2 - thiouridine

  s4u 4 - thiouridine

  t 5 - methyluridine

  t6a N - ((9 - beta - D-ribofuranosylpu rine 6 - yl)
carbamoyl) threonine

  tm 2' - O-methyl - 5-methyluridine

  um 2' - O-methyluridine

  yw wybutosine

  x 3 - (3 - amino - 3-carboxypropyl)uri dine, (acp3)u

  (2) Modified and unusual amino acids:

  Abbreviation Modified and unusual amino acid

  Aad 2 - Aminoadipic acid

  bAad 3 - aminoadipic acid

  bAla beta - Alanine,beta - Amino propionic acid

  Abu 2 - Aminobutyric acid

  4Abu 4 - Aminobutyric acid, piperidinic acid

  Acp 6 - Aminocaproic acid

  Ahe 2 - Aminoheptanoic acid

  Aib 2 - Aminoisobutyric acid

  bAib 3 - Aminoisobutyric acid

  Apm 2 - Aminopimelic acid

  Dbu 2,4 - Diaminobutyric acid

  Des Desmosine

  Dpm 2,2' - Diaminopimelic acid

  Dpr 2,3 - Diaminopropionic acid

  EtGly N - Ethylglycine

  EtAsn N - Ethylasparagine

  Hyl Hydroxylysine

  aHyl allo - Hydroxylysine

  3Hyp 3 - Hydroxyproline

  4Hyp 4 - Hydroxyproline

  Ide Isodesmosine

  aIle allo - Isoleucine

  MeGly N - Methylglycine, sarcosine

  MeIle N - Methylisoleucine

  MeLys 6 - N-Methyllysine

  MeVal N - Methylvaline

  Nva Norvaline

  Nle Norleucine

  Orn Ornithine

2423.01  Format and Symbols To Be Used in Sequence Listings

 37 CFR 1.822 sets forth the format and symbols to be used
for listing nucleotide and/or amino acid sequence data. The
codes for representing the nucleotide and/or amino acid
characters in the sequences are set forth in the tables of
37 CFR 1.822(b)(1) and37 CFR 1.822(b)(2). For the purpose of
setting forth the sequence in the "Sequence Listing," only
those symbols in 37 CFR 1.822(b)(1) for "Base codes" and in
37 CFR 1.822(b)(2) for "Amino acids" are to be used, as
further set forth in 37 CFR 1.822(c) and 37 CFR 1.822(e). No
other symbols shall be used in nucleotide and amino acid
sequences. The "Modified base controlled vocabulary" in 37
CFR 1.822(p)(1) and the "Modified and unusual amino acids"
in 37 CFR 1.822(p)(2) are not to be used in setting forth
the sequences; but, they may be used in the description
and/or the "Sequence Listing" corresponding to, but not
including, the sequence itself. A modified base or amino
acid  may  be  presented  in  a  given  sequence  as  the
corresponding unmodified base or amino acid if the modified
base or amino acid is one of those listed in 37 CFR
1.822(p)(1) or 37 CFR 1.822(p)(2) and the modification is
also set forth elsewhere in the "Sequence Listing;" for
example, in the features table. Otherwise, all bases or
amino acids not appearing in 37 CFR 1.822 ( b) (1) or 37 CFR
1.822(b)(2) must be listed in a given sequence as "N" or

"Xaa,"  respectively,  with  further  information  given
elsewhere  in  the  "Sequence  Listing."  This  further
information can generally be provided under the "Feature"
information item in 37 CFR 1.823(b)(2)(ix).

 In 37 CFR 1.822(b)(2) and 37 CFR 1.822(e), the use of three
- letter codes for amino acids is required. The use of the
three - letter codes for amino acids is preferred over the
one - letter codes from the perspective of facilitating the
examiner's  review  of  the  application  papers,  including
the"Sequence Listing", and the public's, as well as the
examiner's, use of the printed patents. The three - letter
codes can be presented using the upper case for the first
character and lower case for the remaining two characters or
all upper case characters. The PatentIn program has the
capability of converting from one - letter to three - letter
amino acid codes and printing the amino acid sequence in
three - letter codes regardless of input.

 37 CFR 1.822(d) through (p) set forth the format for
presenting sequence data. These paragraphs set forth the
manner in which the characters in sequences are to be
grouped, spaced, presented and numbered.

2423.02  Depiction of Coding Regions

 37 CFR 1.822(d) requires, in the event that an applicant
chooses to depict coding regions, the depiction of amino
acids corresponding to codons in the coding parts of a
nucleotide  sequence  immediately  below  the  corresponding
codons. Further, in 37 CFR 1.822(d), the situation in which
a codon spans an intron has been addressed. In those
situations, the "amino acid symbol shall be typed below the
portion of the codon containing two nucleotides." This
requirement clarifies the representation of an amino acid
that corresponds to a codon that spans an intron.

 It should be noted that the sequence rules do not, in any
way, require the depiction of coding regions or the amino
acids corresponding to the codons in those coding regions.
37  CFR  1.822(d)  only  requires  that  where  amino  acids
corresponding to the codons in the coding parts of a
nucleotide sequence are depicted, they must be depicted
below the corresponding codons. There is absolutely no
requirement in the rules to depict coding regions. Nor is
there a requirement to separately list the amino acids
corresponding to the codons in the coding parts of a
nucleotide sequence unless the applicant desires to discuss
the amino acids as a separate sequence. That is, when the
coding  parts  of  a  nucleotide  sequence  and  their
corresponding amino acids have been identified, if applicant
desires to discuss those amino acids in the coding parts of
the nucleotide as a separate sequence, those amino acids
must also be set forth as a separate sequence. The separate
submission of the amino acid sequence that corresponds to
the coding parts of a nucleotide sequence is, however,
recommended and encouraged because the amino acid sequence
may not be captured in the sequence database if it is only
presented in the "Sequence Listing" as a mixed nucleotide
and amino acid sequence.

2423.03  Presentation and Enumeration of Sequences

 37 CFR 1.822(j) provides that nucleotide sequences shall
only be represented by a single strand, in the 5' to 3'

direction, from left to right. That is, double stranded
nucleotides  shall  not  be  represented  in  the  "Sequence
Listing." A double stranded nucleotide may be represented as
two  single  stranded  nucleotides,  and  any  relationship
between the two may be shown in the drawings.

 The procedures for presenting and numbering amino acid
sequences are set forth in 37 CFR 1.822(k) and 37 CFR
1.822(m). Two alternatives are presented for numbering amino
acid sequences. Amino acid sequences may be numbered with
respect to the identification of the first amino acid of the
first mature protein or with respect to the first amino acid
appearing at the amino terminal. The enumeration procedure
for nucleotides is set forth in 37 CFR 1.822(i). Sequences
that are circular in configuration are intended to be
encompassed by these rules, and numbering procedures for
them  are  provided  in  37  CFR  1.822(n).  The  numbering
procedures set forth in 37 CFR 1.822(k) through (n) are not
necessarily intended to be consistent with all currently
employed numbering procedures. The objective here is to
establish a reasonable numbering procedure that can readily
be followed and adhered to. These formatting procedures also
reflect those that have been agreed to for electronic data
exchange with the JPO and the EPO.

 In 37 CFR 1.822(o) the procedures for presenting and
numbering hybrid and gapped sequences are set forth. A
sequence that is made up of one or more noncontiguous
segments of a larger sequence or segments from different
sequences, i.e., a hybrid sequence, shall be presented as a
separate sequence. A "gap" for the purpose of this section
is not intended to embrace a gap or gaps that is/are
introduced into the presentation of otherwise continuous
sequence information in, e.g., a drawing figure, to show
alignments or similarities with other sequences. The "gaps"
referred to in this section are gaps representing unknown or
undisclosed regions in a sequence between regions that are
known or disclosed. In the situation where a contiguous
fragment of a sequence that has already been properly set
forth in a "Sequence Listing" is discussed and/or claimed,
the fragment does not need to be separately included in the
"Sequence  Listing."  It  may  be  referred  to  in  the
specification, claims or drawings as, e.g., "residues 2
through 33 of SEQ ID NO:12," assuming that SEQ ID NO:12 has
been properly included in the "Sequence Listing."

2424  Requirements for Nucleotide and/or Amino Acid
Sequences as Part of the Application Papers

 37 CFR 1.823.  Requirements for nucleotide and/or amino
acid sequences as part of the application papers.

 (a)  The "Sequence Listing," required by § 1.821(c),
setting forth the nucleotide and/or amino acid sequences,
and associated information in accordance with paragraph (b)
of this section, must begin on a new page and be titled
"Sequence Listing" and appear immediately prior to the
claims. Each page of the "Sequence Listing" shall contain no
more than 66 lines and each line shall contain no more than
72  characters.  A  fixed  -  width  font  shall  be  used
exclusively throughout the "Sequence Listing."

 (b)  The "Sequence Listing" shall, except as otherwise
indicated, include, in addition to and immediately preceding
the  actual  nucleotide  and/or  amino  acid  sequence,  the

following items of information. The order and presentation
of the items of information in the "Sequence Listing" shall
conform  to  the  arrangement  given  below,  except  that
parenthetical explanatory information following the headings
(identifiers) is to be omitted. Each item of information
shall  begin  on  a  new  line,  enumerated  with  the
number/numeral/letter in parentheses as shown below, with
the heading (identifier) in upper case characters, followed
by a colon, and then followed by the information provided.
Except as allowed below, no item of information shall occupy
more than one line. Those items of information that are
applicable for all sequences shall only be set forth once in
the "Sequence Listing." The submission of those items of
information  designated  with  an  "M"  is  mandatory.  The
submission of those items of information designated with an
"R" is recommended, but not required. The submission of
those  items  of  information  designated  with  an  "O"  is
optional.  Those  items  designated  with  "rep"  may  have
multiple responses and, as such, the item may be repeated in
the "Sequence Listing."

 (1) GENERAL INFORMATION (Application, diskette/tape and
publication information):

 (i) APPLICANT (maximum of first ten named applicants;
specify one name per line: SURNAME comma OTHER NAMES and/or
INITIALS - M/rep):

 (ii) TITLE OF INVENTION (title of the invention, as
elsewhere in application, four lines maximum - M):

 (iii) NUMBER OF SEQUENCES (number of sequences in the
"Sequence Listing" - M):

 (iv) CORRESPONDENCE ADDRESS (M):

 (A)  ADDRESSEE (name of applicant, firm, company or
institution, as may be appropriate):

 (B)  STREET (correspondence street address, as elsewhere
in application, four lines maximum):

 (C)  CITY (correspondence city address, as elsewhere in
application):

 (D)  STATE  (correspondence  state,  as  elsewhere  in
application):

 (E)  COUNTRY (correspondence country, as elsewhere in
application):

 (F)  ZIP  (correspondence  zip  or  postal  code,  as
elsewhere in application):

 (v) COMPUTER READABLE FORM (M):

 (A)  MEDIUM TYPE (type of diskette/tape submitted):

 (B)  COMPUTER (type of computer used with diskette/tape
submitted):

 (C)  OPERATING SYSTEM (type of operating system used):

 (D)  SOFTWARE (type of software used to create computer
readable form):

 (vi) CURRENT APPLICATION DATA (M, if available):

 (A)  APPLICATION  NUMBER  (U.S  application  number,
including a series code, a slash and a serial number, or
U.S. PCT application number, including the letters PCT, a
slash,  a  two  letter  code  indicating  the  U.S.  as  the
Receiving Office, a two digit indication of the year, a
slash and a five digit number, if available):

 (B)  FILING DATE (U.S. or PCT application filing date,
if available; specify as dd - MMM - yyyy):

 (C)  CLASSIFICATION (IPC/US classification or F - term
designation,  where  F  -  terms  have  been  developed,  if
assigned, specify each designation, left justified, within
an eighteen position alpha numeric field - rep, to a maximum
of ten classification designations):

 (vii) PRIOR APPLICATION DATA (prior domestic, foreign
priority or international application data, if applicable -
M/rep):

 (A)  APPLICATION NUMBER (application number; specify as
two letter country code and an eight digit application
number; or if a PCT application, specify as the letters PCT,
a slash, a two letter code indicating the Receiving Office,
a two digit indication of the year, a slash and a five digit
number):

 (B)  FILING DATE (document filing date, specify as dd -
MMM - yyyy):

 (viii) ATTORNEY/AGENT INFORMATION (O):

 (A)  NAME (attorney/agent name; SURNAME comma OTHER
NAMES and/or INITIALS):

 (B)  REGISTRATION NUMBER (attorney/agent registration
number):

 (C)  REFERENCE/DOCKET NUMBER (attorney/agent reference
or docket number):

 (ix) TELECOMMUNICATION INFORMATION (O):

 (A)  TELEPHONE  (telephone  number  of  applicant  or
attorney/agent):

 (B)  TELEFAX  (telefax  number  of  applicant  or
attorney/agent):

 (C)  TELEX  (telex  number  of  applicant  or
attorney/agent):

 (2) INFORMATION FOR SEQ ID NO: X (rep):

 (i) SEQUENCE CHARACTERISTICS (M):

 (A)  LENGTH (sequence length, expressed as number of
base pairs or amino acid residues):

 (B)  TYPE (sequence type, i.e., whether nucleic acid or
amino acid):

 (C)  STRANDEDNESS (if nucleic acid, number of strands of
source organism molecule, i.e., whether single stranded,
double stranded, both or unknown to applicant):

 (D)  TOPOLOGY  (whether  source  organism  molecule  is
circular, linear, both or unknown to applicant):

 (ii) MOLECULE TYPE (type of molecule sequenced in SEQ ID
NO:X (at least one of the following should be included with
subheadings, if any, in Sequence Listing - R)):

 - Genomic RNA;

 - Genomic DNA;

 - mRNA

 - tRNA;

 - rRNA;

 - snRNA;

 - scRNA;

 - preRNA;

 - cDNA to genomic RNA;

 - cDNA to mRNA;

 - cDNA to tRNA;

 - cDNA to rRNA;

 - cDNA to snRNA;

 - cDNA to scRNA;

 - Other nucleic acid;

  (A) DESCRIPTION (four lines maximum):

 - protein and

 - peptide.

 (iii) HYPOTHETICAL (yes/no - R):

 (iv) ANTI - SENSE (yes/no - R):

 (v) FRAGMENT TYPE (for proteins and peptides only, at least
one of the following should be included in the Sequence
Listing - R):

 - N - terminal fragment;

 - C - terminal fragment and

 - internal fragment.

 (vi) ORIGINAL SOURCE (original source of molecule sequenced
in SEQ ID NO:X - R):

 (A)  ORGANISM (scientific name of source organism):

 (B)  STRAIN:

 (C) INDIVIDUAL  ISOLATE  (name/number  of
individual/isolate):

 (D)  DEVELOPMENTAL STAGE (give developmental stage of
source organism and indicate whether derived from germ -
line or rearranged developmental pattern):

 (E)  HAPLOTYPE:

 (F)  TISSUE TYPE:

 (G)  CELL TYPE:

 (H)  CELL LINE:

 (I)  ORGANELLE:

 (vii) IMMEDIATE SOURCE (immediate experimental source of
the sequence in SEQ ID NO:X - R):

 (A)  LIBRARY (library - type,name):

 (B)  CLONE (clone(s)):

 (viii) POSITION IN GENOME (position of sequence in SEQ ID
NO:X in genome - R):

 (A)  CHROMOSOME/SEGMENT  (chromosome/segment  -
name/number):

 (B)  MAP POSITION:

 (C)  UNITS (units for map position, i.e., whether units
are genome percent, nucleotide number or other/specify):

  (ix)  FEATURE  (description  of  points  of  biological
significance in the sequence in SEQ ID NO:X - R/rep):

 (A)  NAME/KEY  (provide  appropriate  identifier  for
feature - four lines maximum):

 (B)  LOCATION (specify location according to syntax of
DDBJ/EMBL/GenBank  Feature  Tables  Definition,  including
whether feature is on complement of presented sequence;
where appropriate state number of first and last bases/amino
acids in feature - four lines maximum):

 (C)  IDENTIFICATION METHOD (method by which the feature
was identified, i.e., by experiment, by similarity with
known sequence or to an established consensus sequence, or
by similarity to some other pattern - four lines maximum):

 (D)  OTHER INFORMATION (include information on phenotype
conferred, biological activity of sequence or its product,
macromolecules which bind to sequence or its product, or
other relevant information - four lines maximum):

  (x)  PUBLICATION  INFORMATION  (Repeat  section  for  each
relevant publication - O/rep):

 (A)  AUTHORS (maximum of first ten named authors of
publication; specify one name per line: SURNAME comma OTHER

NAMES and/or INITIALS - rep):

 (B)  TITLE (title of publication):

 (C)  JOURNAL (journal name in which data published):

 (D)  VOLUME (journal volume in which data published):

 (E)  ISSUE  (journal  issue  number  in  which  data
published):

 (F)  PAGES  (journal  page  numbers  in  which  data
published):

 (G)  DATE (journal date in which data published; specify
as dd - MMM - yyyy, MMM - yyyy or Season - yyyy):

 (H)  DOCUMENT NUMBER (document number, for patent type
citations only; specify as two letter country code, eight
digit document number (right justified), one letter and, as
appropriate, one number or a space as a document type code;
or if a PCT application, specify as the letters PCT, a
slash, a two letter code indicating the Receiving Office, a
two digit indication of the year, a slash and a five digit
number; or if a PCT publication, specify as the two letters
WO, a two digit indication of the year, a slash and a five
digit publication number):

 (I)  FILING DATE (document filing date, for patent -
type citations only; specify as dd - MMM - yyyy):

 (J)  PUBLICATION DATE (document publication date; for
patent - type citations only, specify as dd - MMM - yyyy):

 (K)  RELEVANT RESIDUES IN SEQ ID NO:X (rep): FROM
(position) TO (position)

 (xi) SEQUENCE DESCRIPTION: SEQ ID NO:X:

 2424.01  Informational Requirements for the Sequence
Listing

 37 CFR 1.823 sets forth the informational requirements for
inclusion in the separate part of the disclosure on paper
copy (the "Sequence Listing") that must be submitted in
accordance with 37 CFR 1.821(c). This section lists the
items  of  information  that  are  to  be  included  in  the
"Sequence Listing," which constitutes the separate part of
the disclosure on paper copy. The items of information are
to be presented in the "Sequence Listing," immediately
preceding the actual nucleotide and/or amino acid sequence,
in the order in which those items are listed in this
section. Page and line length requirements are set forth.
The requirement to use a fixed width font to present
sequence data is also set forth. This latter requirement is
made to ensure that the desired sequence character spacing
and numbering is maintained upon printing. The heading for
each item of information shall not include the parenthetical
explanatory information included in this section.

2424.02  Categories of Information Items

 In 37 CFR 1.823, the items of information are broken down
into two categories. The first category is directed to
"GENERAL INFORMATION" and includes information relating to

the application being filed and the diskette/tape being
submitted. This information will be applicable for all
sequences and, as such, will need to be set forth only once
in a given "Sequence Listing." The second category is
directed to "INFORMATION FOR SEQ ID NO:X" and includes
information  that  will  be  specific  for  each  sequence
disclosed. Where more than one sequence is disclosed, this
category will be repeated and subsequent headings should be
set forth as: "(2) INFORMATION FOR SEQ ID NO:2:," "(2)
INFORMATION FOR SEQ ID NO:3:," etc.

  Throughout  the  above  two  categories,  the  items  of
information are further broken down into categories relating
to whether their submission is mandatory (M), recommended
(R) or optional (O). Certain items are also designated as
those that may repeat (rep) in a given "Sequence Listing."
The numbering of repeated items should remain constant so
that the overall numbering scheme of the "Sequence Listing"
conforms to that specified in this section. The first
category includes those items for which inclusion in the
"Sequence Listing" is mandatory. These mandatory items of
information relate to the patent application, the computer
readable  form,  basic  sequence  data  and  the  applicable
priority  or  PCT  data.  The  reference  in  37  CFR
1.823(b)(1)(vi)(C) to "F - terms" relates to the key - word
indexing of patents that is being undertaken by the JPO in
conjunction with their automation plans. The second category
includes those items for which inclusion in the "Sequence
Listing" is recommended, but not required. These recommended
items of information provide further information relating to
the sequence listed. These additional items of information
are  of  interest  to  examiners  and  will  create  a  more
comprehensive database; as a result, the items would serve
to  facilitate  sequence  searching.  The  third  category
includes items of information that are primarily for the
purpose  of  providing  more  complete  information  upon
dissemination, for which inclusion in the "Sequence Listing"
is also optional.

2424.03  Additional Miscellaneous Requirements

 Throughout 37 CFR 1.823(b)(1) and 37 CFR 1.823(b)(2), the
items of information relating to patent applications and
patent publications should be provided keeping in mind the
appropriate standards that have been established by the
World Intellectual Property Organization (WIPO). In general,
an application should be identified by a country code, a
number and a filing date, while a published patent document
should be identified by a country code, a number and kind
code. Proper citation of priority patent applications is
covered in MPEP § 201.14(d). For published patent documents,
the country code, number and kind code will appear on the
front page of the document. Unpublished PCT applications are
identified by the letters PCT, the country code of the
Receiving Office, the last two digits of the year of filing
and  a  number,  e.g.,  PCT/AT81/00033,  PCT/FR88/00100.  A
published PCT application is identified by the letters WO,
the last two digits of the year of publication, a number and
a kind code, e.g., WO82/02827A, WO88/06811A. Country codes
from WIPO Standard ST.3 are reproduced in MPEP § 1870 Annex
B and kind codes from WIPO Standard ST.16 are reproduced in
MPEP § 1871 as Appendix II. Questions on proper citation of
patent documents should be directed to the Search and
Information Resources Administration, International Liaison
Staff.

 In 37 CFR 1.823(b)(1)(i), the item of information relating
to "APPLICANT" should be limited to a maximum of the first
ten named applicants in the application. Similarly, in 37
CFR 1.823(b)(2)(x), the item of information relating to
"AUTHORS" should be limited to to a maximum of the first ten
named authors in the publication.

 In 37 CFR 1.823(b)(1)(v)(B), 37 CFR 1.823(b)(1)(vi)(C) and
37 CFR 1.823(b)(1)(vi)(D), "dd - MMM - yyyy" is the format
for the presentation of date information in the "Sequence
Listing." The lower case letters designate numeric responses
and the upper case letters designate alphabetical responses.
As such, March 2, 1988, would be presented as 02 - MAR -
1988. In 37 CFR 1.823(b)(2)(x)(G), "dd - MMM - yyyy, MMM -
yyyy or Season - yyyy" encompass all variations in date
designations that may be encountered.

 In 37 CFR 1.823(b)(2)(ix), relating to "FEATURES" or the
description of the points of biological significance in a
given sequence, it is recommended, but not required, that
the information that is provided by the applicant conform to
the controlled vocabulary that is set forth in GenBank's
"Feature  Representation  in  Nucleotide  Sequence  Data
Libraries," Release 57.0, as may be amended. Further, the
feature "LOCATION" should be specified using the syntax of
the DDBJ/EMBL/GenBank Feature Table Definition.

 In 37 CFR 1.823(b)(2)(x), publication information for a
given sequence is collected. The publication information
encompasses both patent - type publications and non - patent
literature  publications.  Information  item  "(K)  RELEVANT
RESIDUES IN SEQ ID NO: X" is intended to collect information
relating to the correspondence between a sequence set forth
in  the  "Sequence  Listing"  and  published  sequence
information. The starting (FROM) and end (TO) positions in
the  listed  sequence  that  correspond  to  the  published
sequence information should be set forth.

2425  Form and Format for Nucleotide and/or Amino Acid
Sequence Submissions in Computer Readable Form

 37 CFR 1.824 Form and format for nucleotide and/or amino
acid sequence submissions in computer readable form.

 (a) The computer readable form required by § 1.821(e) shall
contain a printable copy of the "Sequence Listing," as
defined in § 1.821(c), 1.822 and 1.823, recorded as a single
file on either a diskette or a magnetic tape. The computer
readable form shall be encoded and formatted such that a
printed copy of the "Sequence Listing" may be recreated
using the print commands of the computer/operating - system
configurations specified in paragraph (f) of this section.

 (b) The file in paragraph (a) of this section shall be
encoded in a subset of the American Standard Code for
Information Interchange (ASCII). This subset shall consist
of all the printable ASCII characters including the ASCII
space character plus line - termination, pagination and end
-  of  -  file  characters  associated  with  the
computer/operating  -  system  configurations  specified  in
paragraph (f) of this section. No other characters shall be
allowed.

 (c) The computer readable form may be created by any means,

such as word processors, nucleotide/amino acid sequence
editors or other custom computer programs; however, it shall
be readable by one of the computer/operating - system
configurations specified in paragraph (f) of this section,
and shall conform to the specifications in paragraphs (a)
and (b) of this section.

 (d) The entire printable copy of the "Sequence Listing"
shall be contained within one file on a single diskette or
magnetic tape unless it is shown to the satisfaction of the
Commissioner that it is not practical or possible to submit
the entire printable copy of the "Sequence Listing" within
one file on a single diskette or magnetic tape.

 (e) The submitted diskette or tape shall be write -
protected such as by covering or uncovering diskette holes,
removing diskette write tabs or removing tape write rings.

 (f) As set forth in paragraph (c), above, any means may be
used to create the computer readable form, as long as the
following conditions are satisfied. A submitted diskette
shall be readable on one of the computer/operating - system
configurations described in paragraphs (1) through (3),
below.  A  submitted  tape  shall  satisfy  the  format
specifications described in paragraph (4), below.

 (1) Computer: IBM PC/XT/AT, IBM PS/2 or compatibles;

 Operating system: PC - DOS or MS - DOS (Versions 2.1 or
above);

 Line Terminator: ASCII Carriage Return plus ASCII Line
Feed;

 Pagination: ASCII Form Feed or Series of Line Terminators;

 End - of - File: ASCII SUB (Ctrl - Z);

 Media: Diskette - 5.25 inch, 360 Kb storage;

 Diskette - 5.25 inch, 1.2 Mb storage;

 Diskette - 3.50 inch, 720 Kb storage;

 Diskette - 3.50 inch, 1.44 Mb storage;

 Print Command: PRINT filename.extension;

 (2) Computer: IBM PC/XT/AT, IBM PS/2 or compatibles;

 Operating system: Xenix;

 Line Terminator: ASCII Carriage Return;

 Pagination: ASCII Form Feed or Series of Line Terminators;

 End - of - File: None;

 Media:  Diskette - 5.25 inch, 360 Kb storage;

 Diskette - 5.25 inch, 1.2 Mb storage;

 Diskette - 3.50 inch, 720 Kb storage;

 Diskette - 3.50 inch, 1.44 Mb storage;

 Print Command: lpr filename;

 (3) Computer: Apple Macintosh;

 Operating System: Macintosh;

 Macintosh File Type: text with line termination

 Line Terminator: Pre - defined by text type file;

 Pagination: Pre - defined by text type file;

 End - of - file: Pre - defined by text type file;

 Media: Diskette - 3.50 inch, 400 Kb storage;

 Diskette - 3.50 inch, 800 Kb storage;

 Diskette - 3.50 inch, 1.4 Mb storage;

  Print  Command:  Use  PRINT  command  from  any  Macintosh
Application that processes text files, such as MacWrite or
TeachText;

 (4) Magnetic tape: 0.5 inch, up to 2400 feet;

 Density: 1600 or 6250 bits per inch, 9 track;

 Format: raw, unblocked;

 Line Terminator: ASCII Carriage Return plus optional ASCII
Line Feed;

 Pagination: ASCII Form Feed or Series of Line Terminators;

 Print Command (Unix shell version given here as sample
response - mt/dev/rmt0; lpr</dev/rmt0):

 (g) Computer readable forms that are submitted to the
Office will not be returned to the applicant.

  (h)  All  computer  readable  forms  shall  have  a  label
permanently affixed thereto on which has been hand printed
or typed, a description of the format of the computer
readable form as well as the name of the applicant, the
title of the invention, the date on which the data were
recorded on the computer readable form and the name and type
of computer and operating system which generated the files
on the computer readable form. If all of this information
can not be printed on a label affixed to the computer
readable form, by reason of size or otherwise, the label
shall include the name of the applicant and the title of the
invention  and  a  reference  number,  and  the  additional
information may be provided on a container for the computer
readable form with the name of the applicant, the title of
the invention, the reference number and the additional
information  affixed  to  the  container.  If  the  computer
readable form is submitted after the date of filing under 35
U.S.C. 111, after the date of entry in the national stage
under 35 U.S.C. 371 or after the time of filing, in the
United States Receiving Office, an international application
under the PCT, the labels mentioned herein must also include
the date of the application and the application number,
including series code and serial number.

 37 CFR 1.824 sets forth the requirements for sequence
submissions  in  computer  readable  form.  Any  computer
operating system may be utilized to produce a sequence
submission, provided that the system is capable of producing
a file having the characteristics specified in 37 CFR 1.824,
and is capable of writing the properly formatted file to one
of  the  acceptable  diskettes  or  tapes.  Currently,  the
computer readable form is limited to diskettes or tapes.
However, as noted above, it is contemplated that this may be
broadened  in  the  future  in  light  of  progress  in  the
technology for developing and establishing databases of this
type. That is, it is possible that this may be broadened in
the future to encompass other media and formats. If a given
sequence and its associated information cannot practically
or possibly fit on a single diskette or tape, as is required
in 37 CFR 1.824(d), an exception via a non - fee petition to
waive this provision will normally be granted. As set forth
in 37 CFR 1.824(g), the computer readable forms that are
submitted  in  accordance  with  these  rules  will  not  be
returned to the applicant. 37 CFR 1.824(h) requires the
labeling, with appropriate identifying information, of the
computer readable forms that are submitted in accordance
with these rules.

2426  Amendments to or Replacement of Sequence Listing
and Computer Readable Copy Thereof

 37 CFR 1.825 Amendments to or replacement of sequence
listing and computer readable copy thereof.

 (a) Any amendment to the paper copy of the "Sequence
Listing" ( § 1.821(c)) must be made by the submission of
substitute sheets. Amendments must be accompanied by a
statement that indicates support for the amendment in the
application, as filed, and a statement that the substitute
sheets include no new matter. Such a statement must be a
verified statement if made by a person not registered to
practice before the Office.

 (b) Any amendment to the paper copy of the "Sequence
Listing," in accordance with paragraph (a) of this section,
must be accompanied by a substitute copy of the computer
readable  form  (  §  1.821(e))  including  all  previously
submitted data with the amendment incorporated therein,
accompanied  by  a  statement  that  the  copy  in  computer
readable form is the same as the substitute copy of the
"Sequence Listing." Such a statement must be a verified
statement if made by a person not registered to practice
before the Office.

 (c) Any appropriate amendments to the "Sequence Listing" in
a patent, e.g., by reason of reissue or certificate of
correction, must comply with the requirements of paragraphs
(a) and (b) of this section.

 (d) If, upon receipt, the computer readable form is found
to be damaged or unreadable,

 applicant must provide, within such time as set by the
Commissioner, a substitute copy of the data in computer
readable form accompanied by a statement that the substitute
data is identical to that originally filed. Such a statement
must be a verified statement if made by a person not
registered to practice before the Office.

 37 CFR 1.825 sets forth the procedures for amending the
"Sequence Listing" and the computer readable copy thereof.
The procedures that have been defined in this section
involve the submission of either substitute sheets of the
"Sequence Listing" or substitute copies of the computer
readable form, in conjunction with statements that indicate
support for the amendment in the application, as filed, and
that the substitute sheets or copies include no new matter.
(See  MPEP  §  2428  for  further  information  and  Sample
Statements.) The requirement for statements regarding the
absence of new matter follows current practice relating to
the submission of substitute specifications, as set forth in
37 CFR 1.125. 37 CFR 1.825(c) addresses the situation where
amendments to the "Sequence Listing" are made after a patent
has been granted, e.g., by a certificate of correction,
reissue or reexamination. 37 CFR 1.825(d) addresses the
possibility and presents a remedy for the situation where
the computer readable form may be found by the Office to be
damaged or unreadable.

2427  Form Paragraphs and Notice to Comply

2427.01  Form Paragraphs

 In order to minimize the extension of pendency due to the
implementation of the sequence rules, all compliance issues
should be addressed in a single communication with the
applicant. That communication should set a 1 - month period
for response that may be extended in accordance with the
provisions of 37 CFR 1.136. However, depending upon the
nature of applicant's response, a followup communication
regarding the sequence rules may be necessary. The form
paragraphs  that  follow  are  to  be  used  in  these
communications.  The  form  paragraphs  should  be  used  as
follows:

 7.200 - This form paragraph should be used for the first
mailing of a Notice to Comply.

 7.201 - This form paragraph should be used for the first
mailing of a CRF Diskette Problem Report.

 7.202 - This form paragraph should be used when an
applicant has made a bona fide attempt to comply but the
response generates an error listing from the Scientific and
Technical Information Center (STIC). This should be used for
a second mailing to applicant unless it is evident that
there has been a deliberate omission; this form paragraph
may also be used to extend the period for response for the
initially mailed notice.

 7.203 - This form paragraph should be used when there has
been a deliberate omission in the response or where the
reason the response is incomplete cannot be characterized as
an apparent oversight or instance of inadvertence.

¶ 7.200  Cover Letter for Use with Notice to Comply
with Sequence Rules

 This application contains sequence disclosures that are
encompassed by the definitions for nucleotide and/or amino
acid sequences set forth in 37 CFR 1.821(a)(1) and (a)(2).
However,  this  application  fails  to  comply  with  the
requirements of 37 CFR 1.821 through 1.825 for the reason(s)

set forth on the attached Notice To Comply With Requirements
For  Patent  Applications  Containing  Nucleotide  Sequence
And/Or Amino Acid Sequence Disclosures.

  Any  inquiry  concerning  this  communication  should  be
directed to Examiner [1] , Art Unit  [2] , whose telephone
number is (703) 308 -  [3] . Any inquiry of a general nature
or relating to the status of this application should be
directed to the Group receptionist whose telephone number is
(703) 308 - 0196.

 APPLICANT IS GIVEN ONE MONTH FROM THE DATE OF THIS LETTER
WITHIN WHICH TO COMPLY WITH THE SEQUENCE RULES, 37 CFR 1.821
- 1.825. Failure to comply with these requirements will
result in ABANDONMENT of the application under 37 CFR
1.821(g). Extensions of time may be obtained by filing a
petition  accompanied  by  the  extension  fee  under  the
provisions of 37 CFR 1.136. In no case may an applicant
extend  the  period  for  response  beyond  the  six  month
statutory period. Direct the response to the undersigned.
Applicant is requested to return a copy of the attached
Notice to Comply with the response.

 Examiner notes:

 1.  Use this form paragraph only for the initial
communication to the applicant . Use either 7.202 or 7.203
for subsequent communications.

 2.  Insert appropriate information in brackets.

 3.  Print this paragraph on a PTOL - 90 and attach a
Notice to Comply With Requirements for Patent Applications
Containing Nucleotide Sequence And/Or Amino Acid Sequence
Disclosures, along with a marked - up copy of the Raw
Sequence Listing, if any. If the PTOL - 90 has a pre -
printed response period heading, it should be blocked out.

¶ 7.201  Cover Letter for Use with CRF Diskette Problem
Report

 This application contains sequence disclosures that are
encompassed by the definitions for nucleotide and/or amino
acid sequences set forth in 37 CFR 1.821(a)(1) and (a)(2). A
computer readable form (CRF) of the sequence listing was
submitted. However, the CRF could not be processed by the
Scientific and Technical Information Center (STIC) for the
reason(s) set forth on the attached CRF Diskette Problem
Report.

  Any  inquiry  concerning  this  communication  should  be
directed to Examiner [1] , Art Unit  [2] , whose telephone
number is (703) 308 -  [3] .

 Any inquiry of a general nature or relating to the status
of  this  application  should  be  directed  to  the  Group
receptionist whose telephone number is (703) 308 - 0196.

 APPLICANT IS GIVEN ONE MONTH FROM THE DATE OF THIS LETTER
WITHIN WHICH TO COMPLY WITH THE SEQUENCE RULES, 37 CFR 1.821
- 1.825. Failure to comply with these requirements will
result in ABANDONMENT of the application under 37 CFR
1.821(g). Extensions of time may be obtained by filing a
petition  accompanied  by  the  extension  fee  under  the
provisions of 37 CFR 1.136. In no case may an applicant

extend  the  period  for  response  beyond  the  six  month
statutory period. Direct the response to the undersigned.
Applicant is requested to return a copy of the attached CRF
Diskette Problem Report with the response.

 Examiner notes:

 1.  Use this form paragraph only for the initial
communication to the applicant . Use either 7.202 or 7.203
for subsequent communications.

 2.  Insert appropriate information in brackets.

 3.  Print this paragraph on a PTOL - 90 and attach the
CRF Diskette Problem Report. If the PTOL - 90 has a
preprinted response period heading, it should be blocked
out.

 ¶ 7.202 CRF Submission Is Not Fully Responsive, Bona Fide
Attempt

 The communication filed on [1] is not fully responsive to
the communication mailed  [2] for the reason(s) set forth on
the attached Notice to Comply With the Sequence Rules or CRF
Diskette Problem Report.

 Since the response appears to be bona  fide , but through
an apparent oversight or inadvertence failed to provide a
complete response, applicant is required to complete the
response within a time limit of one (1) month from the date
of this letter or within the time remaining in the response
period of the communication mailed  [3] , whichever is the
longer. 37 CFR 1.135(c).

 NO EXTENSION OF THIS TIME LIMIT MAY BE GRANTED UNDER EITHER
37 C.F.R. 1.136(a) OR (b), BUT THE STATUTORY PERIOD FOR
RESPONSE SET IN THE COMMUNICATION MAILED [4] MAY BE EXTENDED
UP TO A MAXIMUM OF SIX (6) MONTHS UNDER 37 CFR 1.136.

 Examiner notes:

 1.  This form paragraph may be used whether or not the
six - month period for response has expired.

 It is intended for use whenever a bona  fide response has
been submitted. This practice does not apply where there has
been a deliberate omission of some necessary part of a
complete response or where the reason the response is
incomplete cannot be characterized as an apparent oversight
or apparent inadvertence. Under such cases the examiner has
no authority to grant an extension if the six - month period
for response has expired. Use form paragraph 7.203 under
such circumstances.

 2.  In bracket 1 insert the date of the response and in
brackets  2,  3  and  4  insert  the  mail  date  of  the
communication requiring compliance.

 3.  Print this paragraph on a PTOL - 90 and attach a
Notice to Comply With Requirements for Patent Applications
Containing Nucleotide Sequence And/Or Amino Acid Sequence
Disclosures, along with a marked - up copy of the Raw
Sequence Listing, or CRF Diskette Problem Report. If the
PTOL - 90 has a pre - printed response period heading, it
should be blocked out.

 4.  See 37 CFR 1.135(c), 1.821(g); MPEP 710.02(c),
711.02(a), 714.02, 714.03.

¶ 7.203  CRF Submission Is Not Fully Responsive

 The communication filed on [1] is not fully responsive to
the communication mailed  [2] for the reason(s) set forth on
the attached Notice to Comply With the Sequence Rules or CRF
Diskette Problem Report.

 If a complete response has not been submitted by the time
the shortened statutory period for response set in the
communication mailed [3] has expired, this application will
become abandoned unless applicant corrects the deficiency
and obtains an extension of time under 37 C.F.R. 1.136. In
no case may an applicant extend the period for response
beyond the six month statutory period.

 Examiner notes:

 1.  This form paragraph may not be used when the six -
month  period  for  response  has  expired.  Use  this  form
paragraph in the situation where in the response (within the
six - months) there has been a deliberate omission of some
necessary part of a complete response. When the response
appears to be bona  fide , but through an apparent oversight
or inadvertence failed to provide a complete response, use
form paragraph 7.202.

 2.  In bracket 1 insert the date of the response and in
brackets 2 and 3 insert the mail date of the communication
requiring compliance.

 3.  Print this paragraph on a PTOL - 90 and attach a
Notice to Comply With Requirements for Patent Applications
Containing Nucleotide Sequence And/Or Amino Acid Sequence
Disclosures, along with a marked - up copy of the Raw
Sequence Listing, or CRF Diskette Problem Report. If the
PTOL - 90 has a pre - printed response period heading, it
should be blocked out.

2427.02  Notice To Comply

 The text of the Notice to Comply with the requirements of
the sequence rules follows. The appropriate box on the
notice should be checked depending upon the particular
deficiencies that have been identified. A copy of the "Raw
Sequence Listing," where available, should also be sent to
the applicant. The "Raw Sequence Listing" should also be
entered into the application file upon receipt from STIC.

  Application No.  ___________________________

 NOTICE TO COMPLY WITH REQUIREMENTS FOR PATENT APPLICATIONS
CONTAINING NUCLEOTIDE SEQUENCE AND/OR AMINO ACID SEQUENCE
DISCLOSURES

  The  nucleotide  and/or  amino  acid  sequence  disclosure
contained in this application does not comply with the
requirements for such a disclosure as set forth in 37 CFR
1.821 - 1.825 for the following reason(s):

 1.  This application clearly fails to comply with the
requirements of 37 CFR 1.821 - 1.825. Applicant's attention

is directed to these regulations, published at 1114 O.G. 29,
May 15, 1990 and at 55 FR 18230, May 1, 1990.

 2.  This application does not contain, as a separate
part of the disclosure on paper copy, a "Sequence Listing"
as required by 37 CFR 1.821(c).

 3.  A copy of the "Sequence Listing" in computer
readable form has not been submitted as required by 37 CFR
1.821(e).

 4.  A copy of the "Sequence Listing" in computer
readable form has been submitted. However, the content of
the  computer  readable  form  does  not  comply  with  the
requirements of 37 CFR 1.822 and/or 1.823, as indicated on
the attached copy of the marked - up "Raw Sequence Listing."

 5.  The computer readable form that has been filed with
this  application  has  been  found  to  be  damaged  and/or
unreadable as indicated on the attached CRF Diskette Problem
Report.  A  substitute  computer  readable  form  must  be
submitted as required by 37 CFR 1.825(d).

 6.  The paper copy of the "Sequence Listing" is not the
same as the computer readable form of the "Sequence Listing"
as required by 37 CFR 1.821(e).

 7.  Other:____________________________________

 Applicant must provide:

 _ An initial or substitute computer readable form (CRF)
copy of the "Sequence Listing"

 _ An initial or substitute paper copy of the "Sequence
Listing", as well as an amendment directing its entry into
the specification

 _ A statement that the content of the paper and computer
readable copies are the same and, where applicable, include
no new matter, as required by 37 CFR 1.821(e) or 37 CFR
1.821(f) or 37 CFR 1.821(g) or 37 CFR 1.825(b) or 37 CFR
1.825(d).

 For questions regarding compliance with these requirements,
please contact:

 For Rules Interpretation, call (703) 308 - 1123

 For CRF submission help, call (703) 308 - 4212

 For PatentIn software help, call (703) 557 - 0400

  Please return a copy of this notice with your response.

2428  Sample Statements

 Sample language for the statements required to support
sequence  rule  submissions  is  provided  below.  These
statements are given by way of example only, other language
may, of course, be used. For the statements that relate to
the assertion that the content of the paper and computer
readable copies are the "same," it is acknowledged that
there may be some non - substantive differences between the
two, e.g., page numbers and page breaks may be present in

the paper copy but not in the computer readable copy
thereof.  This  requirement  for  sameness  relates  to  the
informational content of the paper and computer readable
copies relevant to the requirements of the sequence rules.

  37 CFR 1.821(f) - I hereby state that the content of the
paper and computer readable copies of the Sequence Listing,
submitted in accordance with 37 CFR 1.821(c) and (e),
respectively, are the same.

  37 CFR 1.821(g) [or (h)] - I hereby state that the
submission, filed in accordance with 37 CFR 1.821(g) [or
(h)], herein does not include new matter [or go beyond the
disclosure in the international application].

  37 CFR 1.825(a) - I hereby state that the amendments,
made in accordance with 37 CFR 1.825(a), included in the
substitute sheet(s) of the Sequence Listing are supported in
the application, as filed, at _____________. I hereby state
that the substitute sheet(s) of the Sequence Listing does
(do) not include new matter.

  37 CFR 1.825(b) - I hereby state that the substitute
copy of the computer readable form, submitted in accordance
with 37 CFR 1.825(b), is the same as the amended Sequence
Listing.

  37 CFR 1.825(d )  - I hereby state that the substitute
copy of the computer readable form, submitted in accordance
with 37 CFR 1.825(d), is identical to that originally filed.

 A sample verification, see also 37 CFR 1.68, follows:

 I hereby declare that all statements made herein of my own
knowledge  are  true  and  that  all  statements  made  on
information and belief are believed to be true; and further
that these statements were made with the knowledge that
willful false statements and the like so made are punishable
by fine or imprisonment, or both, under Section 1001 of
Title 18 of the United States Code and that such willful
false  statements  may  jeopardize  the  validity  of  the
application or any patent issued thereon.

2429  Helpful Hints for Compliance

 The Office has now had a good deal of experience in the
implementation of the sequence rules. The following list
sets forth helpful hints, for both examiners and applicants,
for compliance. For the most part, the list is a compilation
of frequently asked questions.

 -  Compliance is not a filing date issue.

 -  Compliance is not a 35 U.S.C. 112 issue.

 -  Compliance is not a 35 U.S.C. 119 / 120 issue.

 -  Compliance is not a new matter issue. The standard
for resolution of inconsistencies between the paper and the
electronic  copies  and/or  errors  in  the  paper  copy  of
sequence information is based on the new matter standard.

 -  Compliance can be achieved via amendment.

 -  The paper copy of Sequence Listing is an integral

part of the application. The Sequence Listing should begin
on a new page immediately prior to the claims, with pages
numbered consecutively with the rest of the application. The
new page that begins the "Sequence Listing" should be
entitled "Sequence Listing." If not submitted as such at
filing, the Sequence Listing must be inserted into the
application via amendment, e.g., by preliminary amendment.

 -  Substitute pages must be used for changes to the
Sequence Listing.

 -  Punctuation,  information  item  headings  and
parentheses listed in 37 CFR 1.823 are very important for
our database. Extra colons and parentheses should not be
used in Sequence Listings.

 -  The computer readable form cannot contain page
numbers. Page numbers should only be placed on the paper
copy of the Sequence Listing.

 -  The PatentIn computer program is not the only means
by which to comply with the rules. Any word processing
program can be used to generate a Sequence Listing if it has
the capability to convert a file into ASCII text.

 -  If a word processing program is used to generate a
"Sequence Listing," hard page break controls should not be
used and margins should be adjusted to the smallest setting.

 -  However,  word  processing  files  should  not  be
submitted to the Office; the Sequence Listing generated by a
word processing file should be saved as an ASCII text file
for submission. Most word processing programs provide this
feature.

 -  Statements in accordance with 37 CFR 1.821(f), (g),
(h) and 37 CFR 1.825 and proper labeling in accordance with
37 CFR 1.824(h) should be noted. Sample statements to
support filings and submissions in accordance with 37 CFR
1.821 through 1.825 are provided in MPEP § 2428 Sample
Statements.

 -  Use Box Sequence - 37 CFR 1.821(j).

 -  Three and a half inch disks are less fragile than
five and a quarter inch disks.

 -  On nucleotide sequences, since only single strands
may be depicted in the "Sequence Listing," please remember
to show strands in 5' to 3' direction.

 -  The single stranded nucleotide depicted in the
"Sequence Listing" may represent a strand of a nucleotide
sequence that may be single or double stranded which may be,
further, linear or circular. An amino acid sequence or
peptide may be linear or circular. In some instances, a
sequence may be both single stranded and double stranded
and/or both linear and circular. The response "not relevant"
is also an acceptable response for both "Strandedness" and
"Topology."

 -  Current Application Data and Prior Application Data
fields should always be supplied even if left blank. The
Current Application Data headings should appear in the
"Sequence Listing" in all cases. If the information about

the current application is not known or is unavailable at
the time of completing the Sequence Listing, then the line
following each heading should be left blank. This would
normally be the case when the "Sequence Listing" is included
in a newly filed application. Similarly, if information
regarding prior applications is inapplicable or not known at
the time of completing the "Sequence Listing" but will be
later filed, then the Prior Application Data field headings
should appear with the line following the heading left
blank.

 -  Margin requirements and minimum character size for
the Sequence Listing must be complied with and can usually
be satisfied by using 10 point, 12 pitch type.

 -  If you receive a Notice to Comply that should not
have been sent to you, a simple letter, in the form of a
request  for  reconsideration  of  the  notice,  to  the
organization sending the notice should suffice to clarify
the matter.

 -  There are a limited number of Mandatory Items of
Information. They are listed in MPEP § 2433 Sequence Listing
Headings for Mandatory Items.

 -  Figures can be used to convey information not
readily conveyed by the Sequence Listing. The exclusive
conformance requirement of 37 CFR1.821(b) will be relaxed
for drawing figures. However, the sequence information so
conveyed must still be included in a "Sequence Listing" and
the sequence identifier ("SEQ ID NO:X") must be used,
either, in the drawing or in the "Brief Description of the
Drawings."

 -  Extra copies of computer readable forms should not
be sent to examiners.

 -  Inosine should be represented by the use of "N".

 -  Stop codons, represented by an asterisk, are not
permitted in amino acid sequences.

 -  Punctuation should not be used in a sequence to
indicate unknown nucleotide bases or amino acid residues nor
should punctuation be used to delimit active or functional
regions of a sequence. These regions should be noted as
Features of the sequence per 37 CFR 1.823(b)(2)(ix).

 -  The presence of an unnatural amino acid in a
sequence does not have the same effect as the presence of a
D - amino acid. The sequence may still be subject to the
rules even though one or more of the amino acids is not
naturally occurring.

 -  Cyclic and branched peptides are causing some
confusion  in  the  application  of  the  rules.  Specific
questions should be directed to Group 1800 personnel.

 -  A cyclic peptide with a tail is regarded as a
branched sequence, and thereby exempt from the rules, if all
bonds adjacent to the amino acid from which the tail
emanates are normal peptide bonds .

 -  Representations of amino acid sequences, such as

XY(AA)  Z where X, Y and Z can be various amino acids
  n 
(properly formatted as Xaas) and (AA)  is a spacer where AA
  n 
can be any amino acid and n can be 0, 1, 2 or 3, are exempt
from the rules. In the specific example given, the sequence
is exempt due to the presence of the spacer in which the
variable AA, which would properly be represented as Xaa, can
be zero, one, two or three amino acids. In general, at a
given position in a sequence, that position must be occupied
by a single constituent, even though that single constituent
might be a variable, such as an Xaa or an N.

 -  Single letter amino acid abbreviations are not
acceptable  anywhere  in  the  application,  including  the
"Sequence Listing."

 -  Zero (0) is not used when the numbering of amino
acids  uses  negative  numbers  to  distinguish  the  mature
protein.

 -  Subscripts or superscripts are not permitted in
"Sequence Listings."

 -  If a "Sequence Listing" is amended, an entirely new
computer  readable  form  is  required  regardless  of  the
triviality of the amendment. Amendments to the paper copy of
the "Sequence Listing" must be made by substitute sheets.

 -  Note  field  length  limitations.  For  specific
instances, they may be waived, but compliance is encouraged.

 -  The exclusive conformance requirement of 37 CFR
1.821(b)  requires  that  any  amendment  of  the  sequence
information in a "Sequence Listing" be accompanied by an
amendment to the corresponding information, if any, embedded
in the text of the specification or presented in a drawing
figure.

 -  Any  inquiries  regarding  a  specific  computer
readable form that has been processed by the Office should
be directed to the Systems Branch of the Biotechnology
Division of the Scientific and Technical Information Center.

2430  Patent In Information; Utilities Programs;
Training

 In those areas of biotechnology in which nucleotide and/or
amino acid sequence information is significant, many patent
applicants  are  accustomed  to,  or  familiar  with,  the
submission of such sequence information, in electronic form,
to various sequence databases, such as GenBank, which is
produced by the National Institutes of Health. In order to
facilitate such submissions, or merely for the purpose of
researching  and  developing  sequence  information,  many
eventual patent applicants also generate or encode sequence
information in computer readable form. In order to further
facilitate compliance with the sequence rules, the Office
has made available to the public an input program that is
based on the AuthorIn program produced by GenBank. This
input program is specifically tailored to the requirements
of the sequence rules and will generate both the paper and
electronic copies of a Sequence Listing that comply with the
requirements of the rules. The input program is called
PatentIn. It is available from the Office for $480.00 and
can be paid for by check made out to the Commissioner of

Patents and Trademarks or by debit to a deposit account.
Copies can be obtained by written request to: Commissioner
of Patents and Trademarks, Patent and Trademark Office,
Washington, D.C. 20231, Attention - Lois E. Boland, Special
Program Examiner, Office of the Assistant Commissioner for
Patents, Crystal Park 2 - Suite 919. Additional information
regarding PatentIn orders can be obtained from the Search
and Information Resources Administration, Crystal Park 3 -
Suite 702 at (703) 557 - 0400. Copies can be obtained by
facsimile request if the authorization to debit a deposit
account is included. Facsimile requests should be directed
to: (703) 557 - 0668 or (703) 305 - 8825.

  PatentIn  is  available  for  IBM  PC  XT,  AT,  PS/2  and
compatible computers. It runs only on a system with a hard
disk drive. MS - DOS or PC - DOS Version 3.0 or higher is
recommended.  Installation  of  PatentIn  on  a  hard  disk
requires a minimum of 1.2 megabytes free disk space. The
program requires a PC with 550 kilobytes free in RAM (random
access memory). A MacIntosh version of PatentIn is not
available.

  The  PatentIn  program  materials  include  four  program
diskettes (3 1/2 or 5 1/4 inch), a PatentIn User Manual, a
PatentIn Quick Reference Card, and Supplemental Instructions
for the PatentIn Program. The Supplemental Instructions
address, among other things, known bugs and operational
difficulties, common editing problems, asterisks in peptide
sequences  and  the  use  of  ASCII  text  editors  or  word
processors.  For  those  purchasing  the  program,  software
support is also provided by the Office through the Search
and Information Resources Administration.

 The Office, in cooperation with the European Patent Office,
has developed a group of utilities programs that facilitate
sequence  manipulation  and  aid  in  the  conversion  of  a
PatentIn Sequence Listing to a format that complies with the
European Patent Office submission rules. Copies of the
utilities programs can be obtained through the Search and
Information Resources Administration.

 While use of the PatentIn program is not required for
compliance with the sequence rules, its use is highly
recommended as Office experience has shown that sub missions
developed with PatentIn are far less likely to include
errors than those developed without the program The many
automatic features of the PatentIn program also greatly ease
the  generation  of  Sequence  Listings  when  compared  to
generating them by hand in a word processing environment.
This is especially true for Sequence Listings that include
many sequences and/or sequences having great lengths.

 The Office provides hands - on training in the use of the
PatentIn and associated utilities programs. The classes are
held in Washington D.C. as demand warrants. In addition, on
site  training  may  be  arranged  at  locations  outside
Washington, D.C. To express interest in such classes, please
contact the Search and Information Resources Administration.

2431  Sample Sequence Listing

  A  sample  "Sequence  Listing"  is  included  below.  As
indicated, it is only necessary to list information that is
applicable to a given sequence in the "Sequence Listing."
The sample "Sequence Listing" also serves to illustrate that

when the coding parts of a nucleotide sequence and their
corresponding amino acids have been identified, if applicant
desires to discuss those amino acids in the coding parts of
the nucleotide as a separate sequence, those amino acids
must also be set forth as a separate sequence. In the given
sample, it can be assumed that the applicant desired to
discuss  the  amino  acids  as  a  separate  sequence.  This
convention will minimize ambiguities that may result in
those instances where the amino acids corresponding to the
coding  parts  of  a  nucleotide  sequence  constitute  two
separate amino acid sequences. In those instances, if an
applicant desires to discuss the two separate amino acid
sequences,  they  must  be  separately  presented  in  the
"Sequence  Listing."  Further,  in  those  instances  when
applicant desires to discuss, as separate sequences, all
three reading frames of the coding regions of a nucleotide
sequence, six separate sequences should be set forth in the
"Sequence  Listing"  to  minimize  confusion.  These  six
sequences, each having a different sequence identifier,
would include three nucleotide sequences separately showing
each of the three reading frames of the coding regions of
the  sequence  and  three  separate  amino  acid  sequences
corresponding to the translation of the three reading frames
of the nucleotide sequence.

  SAMPLE SEQUENCE LISTING

 (1) GENERAL INFORMATION:

 (i) APPLICANT:  Doe, Joan X

  Doe, John Q

 (ii) TITLE OF INVENTION: Isolation and Characterization of
a Gene Encoding a Protease fromParamecium sp.

 (iii) NUMBER OF SEQUENCES: 2

 (iv) CORRESPONDENCE ADDRESS:

 (A)  ADDRESSEE: Smith and Jones

 (B)  STREET: 123 Main Street

 (C)  CITY: Smalltown

 (D)  STATE: Anystate

 (E)  COUNTRY: USA

 (F)  ZIP: 12345

 (v) COMPUTER READABLE FORM:

 (A)  MEDIUM TYPE: Diskette, 3.50 inch, 800 Kb storage

 (B)  COMPUTER: Apple Macintosh

 (C)  OPERATING SYSTEM: Macintosh 5.0

 (D)  SOFTWARE: MacWrite

 (vi) CURRENT APPLICATION DATA:

 (A) APPLICATION NUMBER: 09/999,999

 (B)  FILING DATE: 28 - FEB - 1989

 (C)  CLASSIFICATION: 999 / 99

 (vii) PRIOR APPLICATION DATA:

 (A)  APPLICATION NUMBER: PCT/US 88 / 99999

 (B)  FILING DATE: 01 - MAR - 1988

 (viii) ATTORNEY/AGENT INFORMATION:

 (A)  NAME: Smith, John A

 (B)  REGISTRATION NUMBER: 00001

 (C)  REFERENCE/DOCKET NUMBER:

 01 - 0001

 (ix) TELECOMMUNICATION INFORMA  TION:

 (A)  TELEPHONE: (909) 999 - 0001

 (B)  TELEFAX: (909) 999 - 0002

 (2) INFORMATION FOR SEQ ID NO:1:

 (i) SEQUENCE CHARACTERISTICS:

 (A)  LENGTH: 954 base pairs

 (B)  TYPE: nucleic acid

 (C)  STRANDEDNESS: single

 (D)  TOPOLOGY: linear

 (ii)MOLECULE TYPE: genomic DNA

 (iii) HYPOTHETICAL: yes

 (iv) ANTI - SENSE: no

 (vi) ORIGINAL SOURCE:

 (A)  ORGANISM: Paramecium sp

 (C)  INDIVIDUAL/ISOLATE:XYZ2

 (G)  CELL TYPE: unicellular organism

 (vii) IMMEDIATE SOURCE:

 (A)  LIBRARY: genomic

 (B)  CLONE: Para - XYZ2/36

 (x) PUBLICATION INFORMATION:

 (A)  AUTHORS: Doe, Joan X

  Doe, John Q

 (B)  TITLE: Isolation and Characterization of a Gene
Encoding a Protease from Paramecium sp.

 (C)  JOURNAL: Fictional Genes

 (D)  VOLUME: I

 (E)  ISSUE: 1

 (F)  PAGES: 1 - 20

 (G)  DATE: 02 - MAR - 1988

 (K)  RELEVANT RESIDUES IN SEQ ID NO:1: FROM 1 TO 954

  (xi) SEQUENCE DESCRIPTION: SEQ ID NO:1 :

  ATCGGGATAG TACTGGTCAA GACCGGTGGA CACCGGTTAA CCCCGGTTAA
GTACCGGTTA 60

  TAGGCCATTT CAGGCCAAAT GTGCCCAACT ACGCCAATTG TTTTGCCAAC
GGCCAACGTT 120

  ACGTTCGTAC GCACGTATGT ACCTAGGTAC TTACGGACGT GACTACGGAC
ACTTCCGTAC 180

  GTACGTACGT TTACGTACCC ATCCCAACGT AACCACAGTG TGGTCGCAGT
GTCCCAGTGT 240

  ACACAGACTG CCAGACATTC TTCACAGACA CCCC ATG ACA CCA CCT
GAA CGC CTC 295

  Met Thr Pro Pro Glu Arg Leu

  - 30

  TTC CTC CCA AGG GTG TGT GGC ACC ACC CTA CAC CTC CTC CTT
CTG GGG 343

  Phe Leu Pro Arg Val Cys Gly Thr Thr Leu His Leu Leu Leu
Leu Gly

  - 25 - 20 - 15

  CTG CTG CTG GTT CTG CTG CCT GGG GCC CAT GTGAGGCAGC
AGGAGAATGG393

  Leu Leu Leu Val Leu Leu Pro Gly Ala His

  - 10 - 5

  GGTGGCTCAG CCAAACCTTG AGCCCTAGAG CCCCCCTCAA CTCTGTTCTC
CTAG GGG 450

  Gly

  CTC ATG CAT CTT GCC CAC AGC AAC CTC AAA CCT GCT GCT CAC
CTC ATT 498

  Leu Met His Leu Ala His Ser Asn Leu Lys Pro Ala Ala His
Leu Ile

  1  5 10 15

  GTAAACATCC ACCTGACCTC CCAGACATGT CCCCACCAGC TCTCCTCCTA

CCCCTGCCTC 558

  AGGAACCCAA GCATCCACCC CTCTCCCCCA ACTTCCCCCA CGCTAAAAAA
AACAGAGGGA 618

  GCCCACTCCT ATGCCTCCCC CTGCCATCCC CCAGGAACTC AGTTGTTCAG
TGCCCACTTC 678

  TAC CCC AGC AAG CAG AAC TCA CTG CTC TGG AGA GCA AAC ACG
GAC CGT 726

  Tyr Pro Ser Lys Gln Asn Ser Leu Leu Trp Arg Ala Asn Thr
Asp Arg

  20  25 30

  GCC TTC CTC CAG GAT GGT TTC TCC TTG AGC AAC AAT TCT CTC
CTG GTC 774

  Ala Phe Leu Gln Asp Gly Phe Ser Leu Ser Asn Asn Ser Leu
Leu Val

  35  40 45

  TAGAAAAAAT AATTGATTTC AAGACCTTCT CCCCATTCTG CCTCCATTCT
GACCATTTCA 834

  GGGGTCGTCA CCACCTCTCC TTTGGCCATT CCAACAGCTC AAGTCTTCCC
TGATCAAGTC 894

  ACCGGAGCTT TCAAAGAAGG AATTCTAGGC ATCCCAGGGG ACCCACACCT
CCCTGAACCA 954

 (2) INFORMATION FOR SEQ ID NO:2:

 (i) SEQUENCE CHARACTERISTICS:

 (A)  LENGTH: 82 amino acids

 (B)  TYPE: amino acid

 (D)  TOPOLOGY: linear

 (ii) MOLECULE TYPE: protein

 (ix) FEATURE:

 (A)  NAME/KEY: signal sequence

 (B)  LOCATION: - 34 to - 1

 (C)  IDENTIFICATION METHOD: similarity to other signal
sequences, hydrophobic

 (D)  OTHER INFORMATION: expresses protease

 (x) PUBLICATION INFORMATION:

 (A)  AUTHORS: Doe, Joan X

  Doe, John Q

 (B)  TITLE: Isolation and Characterization of a Gene
Encoding a Protease from Paramecium sp.

 (C)  JOURNAL: Fictional Genes

 (D)  VOLUME: I

 (E)  ISSUE: 1

 (F)  PAGES: 1 - 20

 (G)  DATE: 02 - MAR - 1988

 (K)  RELEVANT RESIDUES IN SEQ ID NO:2: FROM - 34 TO 48

 (xi) SEQUENCE DESCRIPTION: SEQ ID NO:2:

 Met  Thr Pro Pro Glu Arg Leu Phe Leu Pro Arg Val Cys Gly
Thr Thr

  - 30 - 25 - 20

 Leu  His Leu Leu Leu Leu Gly Leu Leu Leu Val Leu Leu Pro
Gly Ala

  - 15 - 10 - 5

 His  Gly Leu Met His Leu Ala His Ser Asn Leu Lys Pro Ala
Ala His

  1 5 10

 Leu  Ile Tyr Pro Ser Lys Gln Asn Ser Leu Leu Trp Arg Ala
Asn Thr

 15  20 25 30

 Asp  Arg Ala Phe Leu Gln Asp Gly Phe Ser Leu Ser Asn Asn
Ser Leu

  35 40 45

 Leu  Val

2432  Sequence Listing Headings

 A complete listing of abbreviated headings for all items of
information is provided below. After the heading for each
item in the "Sequence Listing," the appropriate information
or a yes/no answer should be provided. Where "SEQ ID NO:X"
appears,  the  appropriate  sequence  identification  number
should be provided for X.

 (1) GENERAL INFORMATION:

 (i) APPLICANT:

 (ii) TITLE OF INVENTION:

 (iii) NUMBER OF SEQUENCES:

 (iv) CORRESPONDENCE ADDRESS:

 (A)  ADDRESSEE:

 (B)  STREET:

 (C)  CITY:

 (D)  STATE:

 (E)  COUNTRY:

 (F)  ZIP:

 (v) COMPUTER READABLE FORM:

 (A)  MEDIUM TYPE:

 (B)  COMPUTER:

 (C)  OPERATING SYSTEM:

 (D)  SOFTWARE:

 (vi) CURRENT APPLICATION DATA :

 (A)  APPLICATION NUMBER:

 (B)  FILING DATE:

 (C)  CLASSIFICATION:

 (vii) PRIOR APPLICATION DATA:

 (A)  APPLICATION NUMBER:

 (B)  FILING DATE:

 (viii) ATTORNEY/AGENT INFORMATION:

 (A)  NAME:

 (B)  REGISTRATION NUMBER:

 (C)  REFERENCE/DOCKET NUMBER:

 (ix) TELECOMMUNICATION INFORMATION:

 (A)  TELEPHONE:

 (B)  TELEFAX:

 (C)  TELEX:

 2) INFORMATION FOR SEQ ID NO: X:

 (i) SEQUENCE CHARACTERISTICS:

 (A)  LENGTH:

 (B)  TYPE:

 (C)  STRANDEDNESS:

 (D)  TOPOLOGY:

 (ii) MOLECULE TYPE:

 (iii) HYPOTHETICAL:

 (iv) ANTI - SENSE:

 (v) FRAGMENT TYPE:

 (vi) ORIGINAL SOURCE:

 (A)  ORGANISM:

 (B)  STRAIN:

 (C)  INDIVIDUAL ISOLATE:

 (D)  DEVELOPMENTAL STAGE:

 (E)  HAPLOTYPE:

 (F)  TISSUE TYPE:

 (G)  CELL TYPE:

 (H)  CELL LINE:

 (I)  ORGANELLE:

 (vii) IMMEDIATE SOURCE:

 (A)  LIBRARY:

 (B)  CLONE:

 (viii) POSITION IN GENOME:

 (A)  CHROMOSOME/SEGMENT:

 (B)  MAP POSITION:

 (C)  UNITS:

 (ix) FEATURE:

 (A)  NAME/KEY:

 (B)  LOCATION:

 (C)  IDENTIFICATION METHOD:

 (D)  OTHER INFORMATION:

 (x) PUBLICATION INFORMATION:

 (A)  AUTHORS:

 (B)  TITLE:

 (C)  JOURNAL:

 (D)  VOLUME:

 (E)  ISSUE:

 (F)  PAGES:

 (G)  DATE:

 (H)  DOCUMENT NUMBER:

 (I)  FILING DATE:

 (J)  PUBLICATION DATE:

 (K)  RELEVANT RESIDUES :

 (xi) SEQUENCE DESCRIPTION: SEQ ID NO:X:

2433  Sequence Listing Headings for Mandatory Items

 The Sequence Listing headings for all mandatory items are
listed below. It can be seen from this somewhat limited list
of information items that full copliance with the rules can
be readily achieved by focusing on the mandatory information
items.

 (1) GENERAL INFORMATION:

 (i) APPLICANT:

 (ii) TITLE OF INVENTION:

 (iii) NUMBER OF SEQUENCES:

 (i) APPLICANT:  Doe, Joan X

 (iv) CORRESPONDENCE ADDRESS:

 (A)  ADDRESSEE:

 (B)  STREET:

 (C)  CITY:

 (D)  STATE:

 (E)  COUNTRY:

 (F)  ZIP:

 (v) COMPUTER READABLE FORM:

 (A)  MEDIUM TYPE:

 (B)  COMPUTER:

 (C)  OPERATING SYSTEM:

 (D)  SOFTWARE:

 (vi) CURRENT APPLICATION DATA (If otherwise, heading should
still be supplied):

 (A)  APPLICATION NUMBER:

 (B)  FILING DATE:

 (C)  CLASSIFICATION:

 (vii) PRIOR APPLICATION DATA (If applicable):

 (A)  APPLICATION NUMBER:

 (B)  FILING DATE:

 2) INFORMATION FOR SEQ ID NO: X:

 (i) SEQUENCE CHARACTERISTICS:

 (A)  LENGTH:

 (B)  TYPE:

 (C)  STRANDEDNESS:

 (D)  TOPOLOGY:

 (xi) SEQUENCE DESCRIPTION: SEQ ID NO:X:

  - -- - --

  Chapter 2500 Maintenance Fees

  2501  Introduction
  2504  Patents Subject to Maintenance Fees
  2506  Times for Submitting Maintenance Fee Payments
  2510  Mailing Address for Maintenance Fee Documents
  2511  Submission of Maintenance Fee Documents by
  Facsimile
  2515  Information Required for Submission of Maintenance
  Fee Payment
  2520  Maintenance Fee Amounts
  2522  Methods of Payment
  2530  Informalities
  2540  Fee Address for Maintenance Fee Purposes
  2542  Change of Correspondence Address
  2550  Small Entity Status
  2560  Revocation of Power of Attorney and Withdrawal of
  Attorney
  2570  Status Requests
  2575  Notices
  2580  Review of Decision Refusing to Accept and Record
  Pay ment of a Maintenance Fee Filed Prior to
  Expiration of Patent
  2590  Acceptance of Delayed Payment of Maintenance Fee in
  Expired Patent to Reinstate Patent
  2591  Intervening Rights in Reinstated Patents

  2595  Forms

2501  Introduction  [ R - 3 ]

 35 U.S.C. 41.  Patent fees; patent and trademark search
systems.

 ****

 (b)  The Commissioner shall charge the following fees
for maintaining in force all patents based on applications
filed on or after December 12, 1980:

 (1)  3 years and 6 months after grant, $650 [$*>1,020<].

 (2)  7  years  and  6  months  after  grant,  $1,310
[$*>2,050<].

 (3)  11  years  and  6  months  after  grant,  $1,980

[$*>3,080<].

  Unless  payment  of  the  applicable  maintenance  fee  is
received in the Patent and Trademark Office on or before the
date the fee is due or within a grace period of six months
thereafter, the patent will expire as of the end of such
grace period. The Commissioner may require the payment of a
surcharge as a condition of accepting within such six -
month grace period the late payment of the applicable
maintenance fee. No fee will be established for maintaining
a design or plant patent in force.

 Note: Under 35 U.S.C. 41(f), the amounts of the fees have
been increased by rule effective October 1,*>1996< to the
bracketed amounts; see 37 CFR 1.20(e) - (g) for current fee
amounts.

 (c)(1)  The Commissioner may accept the payment of any
maintenance fee required by subsection (b) of this section
which is made within twenty - four months after the six -
month grace period if the delay is shown to the satisfaction
of the Commissioner to have been unintentional, or at any
time after the six - month grace period if the delay is
shown to the satisfaction of the Commissioner to have been
unavoidable. The Commissioner may require the payment of a
surcharge  as  a  condition  of  accepting  payment  of  any
maintenance fee after the six - month grace period. If the
Commissioner accepts payment of a maintenance fee after the
six - month grace period, the patent shall be considered as
not having expired at the end of the grace period.

 (2)  A patent, the term of which has been maintained as
a result of the acceptance of a payment of a maintenance fee
under this subsection, shall not abridge or affect the right
of any person or that person's successors in business who
made, purchased, offered to sell, or used anything protected
by the patent within the United States, or imported anything
protected by the patent into the United States after the 6 -
month  grace  period  but  prior  to  the  acceptance  of  a
maintenance fee under this subsection, to continue the use
of, to offer for sale, or to sell to others to be used,
offered for sale, or sold, the specific thing so made,
purchased, offered for sale, used, or imported. The court
before which such matter is in question may provide for the
continued manufacture, use, offer for sale, or sale of the
thing made, purchased, offered for sale, or used within the
United States, or imported into the United States, as
specified, or for the manufacture, use, offer for sale, or
sale in the United States of which substantial preparation
was made after the 6 - month grace period but before the
acceptance of a maintenance fee under this subsection, and
the court may also pro vide for the continued practice of
any process that is practiced, or for the practice of which
substantial preparation was made, after the 6 - month grace
period but before the acceptance of a maintenance fee under
this subsection, to the extent and under such terms as the
court deems equitable for the protection of investments made
or business commenced after the 6 - month grace period but
before the acceptance of a maintenance fee under this
subsection.

 Public Law 96 - 517, enacted December 12, 1980, established
the requirement to pay maintenance fees for applications
filed on or after that date. The statutory provisions
regarding maintenance fees have been subsequently modified

by Public Law 97 - 247, enacted August 27, 1982; Public Law
98 - 622, enacted November 8, 1984; Public Law 102 - 204,
enacted December 10, 1991; and Public Law 102 - 444, enacted
October 23, 1992.

  Patent Maintenance Division

 The Patent Maintenance Division provides specialized advice
and guidance to the public on maintenance fee matters, sets
policy and provides guidelines to the Entity and Status
Branch.

 The Entity and Status Branch determines the proper status
of  issued  patents  which  are  subject  to  payment  of
maintenance fees; receives and processes fee transmittals;
determines small entity status; responds to public inquiries
on post - issuance status and maintenance fees; determines
if  patents  have  expired  and/or  can  be  revived;  and
determines if maintenance fees are timely and properly
computed. This Branch also produces Official Gazette notices
of maintenance fees due and of expiration of patents due to
failure to pay maintenance fee addresses in a patent post -
issuance automated file.

  Office of Public Records Dissemination Support Division
  Records Maintenance Branch

 The Records Maintenance Branch updates patent post issuance
automated files using the following information:

  (1)  Change of Address

  (2)  Powers of Attorney and Revocations Thereof

  (3)  Withdrawals of Attorneys and Agents

  (4)  Small Entity Status

 The official mailing address for submitting requests to
update all post - issuance patent information is:

  >Box 9<

  Commissioner of Patents and Trademarks

  ATTN: ** Dissemination Support Division

  **

  Washington, D.C. 20231

2504  Patents Subject to Maintenance Fees

 37 CFR 1.362. Time for payment of maintenance fees.

 (a)  Maintenance fees as set forth in § 1.20(e) through
(g) are required to be paid in all patents based on
applications filed on or after December 12, 1980, except as
noted in paragraph (b) of this section, to maintain a patent
in force beyond 4, 8, and 12 years after the date of grant.

 (b)  Maintenance fees are not required for any plant
patents or any design patents. Maintenance fees are not
required for a reissue patent if the patent being reissued
did not require maintenance fees.

 (c)  The  application  filing  dates  for  purposes  of
payment of maintenance fees are as follows:

 (1)  For an application not claiming benefit of an
earlier application, the actual United States filing date of
the application.

 (2)  For an application claiming benefit of an earlier
foreign application under 35 U.S.C. 119, the United States
filing date of the application.

 (3)  For  a  continuing  (continuation,  division,
continuation - in - part) application claiming the benefit
of a prior patent application under 35 U.S.C. 120, the
actual  United  States  filing  date  of  the  continuing
application.

 (4)  For a reissue application, the United States filing
date of the original non - reissue application on which the
patent reissued is based.

 (5)  For an international application which has entered
the United States as a Designated Office under 35 U.S.C.
371, the international filing date granted under Article
11(1) of the Patent Cooperation Treaty which is considered
to be the United States filing date under 35 U.S.C. 363.

 (d)  Maintenance fees may be paid in patents without
surcharge during the periods extending respectively from:

 (1)  3 years through 3 years and 6 - months after grant
for the first maintenance fee,

 (2)  7 years through 7 years and 6 months after grant for
the second maintenance fee, and

 (3)  11 years through 11 years and 6 months after grant
for the third maintenance fee.

 (e) Maintenance fees may be paid with the surcharge set
forth in § 1.20(h) during the respective grace periods
after:

 (1)  3 years and 6 months and through the day of the 4th
anniversary of the grant for the first maintenance fee,

 (2)  7 years and 6 months and through the day of the 8th
anniversary of the grant for the second maintenance fee, and

 (3)  11 years and 6 months and through the day of the
12th anniversary of the grant for the third maintenance fee.

 (f)  If the last day for paying a maintenance fee
without  surcharge  set  forth  in  paragraph  (d)  of  this
section, or the last day for paying a maintenance fee with
surcharge set forth in paragraph (e) of this section, falls
on a Saturday, Sunday, or a federal holiday within the
District of Columbia, the maintenance fee and any necessary
surcharge may be paid under paragraph (d) or paragraph (e)
respectively on the next succeeding day which is not a
Saturday, Sunday, or federal holiday.

 (g)  Unless the maintenance fee and any applicable
surcharge is paid within the time periods set forth in

paragraphs (d), (e), or (f) of this section, the patent will
expire as of the end of the grace period set forth in
paragraph (e) of this section. A patent which expires for
the failure to pay the maintenance fee will expire at the
end of the same date (anniversary date) the patent was
granted in the 4th, 8th, or 12th year after grant.

 Maintenance fees are required to be paid on all patents
based on applications filed on or after December 12, 1980,
except for plant patents and design patents. Furthermore,
maintenance fees are not required for a reissue patent if
the patent being reissued did not require maintenance fees.

  Application  filing  dates  for  purposes  of  determining
whether or not a patent is subject to payment of maintenance
fees are as follows:

 (1) For an application not claiming benefit of an earlier
application, the actual United States filing date of the
application.

 (2) For an application claiming benefit of an earlier
foreign application under 35 U.S.C. 119, the actual United
States filing date of the application.

 (3) For a continuing (continuation, division, continuation
- in - part) application claiming the benefit of a prior
patent application under 35 U.S.C. 120, the actual United
States filing date of the continuing application.

 (4) For a reissue application, including a continuing
reissue  application  claiming  the  benefit  of  a  reissue
application under 35 U.S.C. 120, the United States filing
date of the original nonreissue application on which the
patent reissued is based.

 (5) For an international application that has entered the
United States as a Designated Office under 35 U.S.C. 371,
the international filing date granted under Article 11(1) of
the Patent Cooperation Treaty which is considered to be the
United States filing date under 35 U.S.C. 363.

2506  Times for Submitting Maintenance Fee Payments

 37 CFR 1.362(d) sets forth the time periods when the
maintenance fees for a utility patent can be paid without
surcharge. Those periods, referred to generally as the
"window period," are the 6 - month periods preceding each
due date. The "due dates" are defined in 35 U.S.C. 41(b).
The window periods are (1) 3 years to 3 1/2 years after the
date of issue for the first maintenance fee payment, (2) 7
years to 7 1/2 years after the date of issue for the second
maintenance fee payment, and (3) 11 years to 11 1/2 years
after the date of issue for the third and final maintenance
fee payment. A maintenance fee paid on the last day of a
window period can be paid without surcharge. The last day of
a window period is the same day of the month the patent was
granted 3 years and 6 - months, 7 years and 6 months, or 11
years and 6 months after grant of the patent.

 37 CFR 1.362(e) sets forth the time periods when the
maintenance fees for a utility patent can be paid with
surcharge. Those periods, referred to generally as the
"grace period," are the 6 - month periods immediately
following each due date. The grace periods are (1) 3 1/2

years and through the day of the 4th anniversary of the
grant of the patent, (2) 7 1/2 years and through the day of
the 8th anniversary of the grant of the patent and, (3) 11
1/2 years and through the day of the 12th anniversary of the
grant of the patent. A maintenance fee may be paid with the
surcharge on the same date (anniversary date) the patent was
granted in the 4th, 8th, or 12th year after grant to prevent
the patent from expiring.

 Maintenance fees for a reissue patent are due based upon
the schedule established for the original utility patent.

 If the day for paying a maintenance fee falls on a
Saturday, Sunday, or a Federal holiday within the District
of Columbia, the maintenance fee may be paid on the next
succeeding day that is not a Saturday, Sunday, or Federal
holiday. For example, if the window period for paying a
maintenance fee without a surcharge ended on a Saturday,
Sunday,  or  a  Federal  holiday  within  the  District  of
Columbia, the maintenance fee can be paid without surcharge
on the next succeeding day that is not a Saturday, Sunday,
or a Federal holiday within the District of Columbia.
Likewise, if the grace period for paying a maintenance fee
with a surcharge ended on a Saturday, Sunday, or a Federal
holiday within the District of Columbia, the maintenance fee
can be paid with surcharge on the next succeeding day that
is not a Saturday, Sunday, or a Federal holiday within the
District of Columbia. In the latter situation, the failure
to pay the maintenance fee and surcharge on the next
succeeding day that is not a Saturday, Sunday, or a Federal
holiday within the District of Columbia will result in the
patent expiring on a date (4, 8, or 12 years after the date
of  grant)  earlier  than  the  last  date  on  which  the
maintenance fee and surcharge could be paid. This situation
results from the provisions of 35 U.S.C. 21, but those
provisions do not extend the expiration date of the patent
if the maintenance fee and any required surcharge are not
paid when required. For example, if the grace period for
paying a maintenance fee with a surcharge ended on a
Saturday, the maintenance fee and surcharge could be paid on
the next succeeding business day; e.g., Monday, but the
patent will have expired at midnight on Saturday if the
maintenance fee and surcharge were not paid on the following
Monday. Therefor, if the maintenance fee and any applicable
surcharge are not paid, the patent will expire as of the end
of the grace period as listed above. A patent that expires
for failure of payment will expire on the anniversary date
the patent was granted in the 4th, 8th, or 12th year after
the grant.

2510  Mailing Address for Maintenance Fee Documents

 The mailing address for all communications concerning
maintenance fee payments is:

 Commissioner of Patents and Trademarks
 Box M Fee
 Washington, D.C. 20231

 37 CFR 1.366(b) provides that the certificate of mailing
procedures of 37 CFR 1.8 or the mailing by "Express Mail"
provisions  of  37  CFR  1.10  may  be  utilized  in  paying
maintenance fees. The specific requirements of either 37 CFR
1.8 or 1.10 must be fully complied with if the benefits of
either are desired. See MPEP § 512 and § 513.

2511  Submission of Maintenance Fee Documents by
Facsimile

 Payment of a maintenance fee is accepted via facsimile,
when charged to a deposit account. In addition, requests
pertaining to post - issuance documents, such as change of
correspondence address, assignment of fee address, etc., may
be submitted by facsimile.

  37  CFR  1.366(b)  provides  that  the  certificate  of
transmission procedure of 37 CFR 1.8 may be utilized in
paying maintenance fees. The specific requirements of 37 CFR
1.8 must be fully complied with if the benefits thereof are
desired.

2515  Information Required for Submission of Maintenance
Fee Payment [R - 3]

 37 CFR 1.366. Submission of maintenance fees.

 (a)  The patentee may pay maintenance fees and any
necessary surcharges, or any person or organization may pay
maintenance fees and any necessary surcharges on behalf of a
patentee. Authorization by the patentee need not be filed in
the Patent and Trademark Office to pay maintenance fees and
any necessary surcharges on behalf of the patentee.

 (b)  A maintenance fee and any necessary surcharge
submitted for a patent must be submitted in the amount due
on the date the maintenance fee and any necessary surcharge
are paid and may be paid in the manner set forth in § 1.23
or  by  an  authorization  to  charge  a  deposit  account
established pursuant to § 1.25. Payment of a maintenance fee
and any necessary surcharge or the authorization to charge a
deposit account must be submitted within the periods set
forth  in  §  1.362(d),  (e),  or  (f).  Any  payment  or
authorization of maintenance fees and surcharges filed at
any other time will not be accepted and will not serve as a
payment of the maintenance fee except insofar as a delayed
payment  of  the  maintenance  fee  is  accepted  by  the
Commissioner in an expired patent pursuant to a petition
filed under § 1.378. Any authorization to charge a deposit
account  must  authorize  the  immediate  charging  of  the
maintenance fee and any necessary surcharge to the deposit
account. Payment of less than the required amount, payment
in a manner other than that set forth in § 1.23, or the
filing of an authorization to charge a deposit account
having insufficient funds will not constitute payment of a
maintenance fee or surcharge on a patent. The certificate
procedures of either § 1.8 or § 1.10 may be utilized in
paying maintenance fees and any necessary surcharges.

 (c)  In submitting maintenance fees and any necessary
surcharges,  identification  of  the  patents  for  which
maintenance fees are being paid must include the following:

 (1)  The patent number, and

 (2)  The serial number of the United States application
for the patent on which the maintenance fee is being paid.

 (d)  Payments of maintenance fees and any surcharges
should identify the fee being paid for each patent as to
whether it is the 3 1/2, 7 1/2, or 11 1/2 year fee, whether

small entity status is being changed or claimed, the amount
of the maintenance fee and any surcharge being paid, any
assigned payor number, the patent issue date, and the United
States application filing date. If the maintenance fee and
any necessary surcharge is being paid on a reissue patent,
the payment must identify the reissue patent by reissue
patent number and reissue application serial number as
required by paragraph (c) of this section and should also
include the original patent number, the original patent
issue date and the original United States application filing
date.

 (e)  Maintenance fee payments and surcharge payments
relating thereto must be submitted separate from any other
payments for fees or charges, whether submitted in the
manner set forth in § 1.23 or by an authorization to charge
a deposit account. If maintenance fee and surcharge payments
for more than one patent are submitted together, they should
be submitted on as few sheets as possible with the patent
numbers listed in increasing patent number order. If the
payment submitted is insufficient to cover the maintenance
fees and surcharges for all the listed patents, the payment
will be applied in the order the patents are listed,
beginning at the top of the listing.

 (f)  Notification of any change in status resulting in
loss of entitlement to small entity status must be filed in
a patent prior to paying, or at the time of paying, the
earliest maintenance fee due after the date on which status
as a small entity is no longer appropriate. See § 1.28(b).

 (g)  Maintenance fees and surcharges relating thereto
will not be refunded except in accordance with § 1.26 and
1.28(a).

 37 CFR 1.366 establishes the guidelines and procedures for
submission of maintenance fees, including any necessary
surcharges. The patentee may pay maintenance fees and any
necessary surcharges or any person or organization may pay
maintenance fees and any necessary surcharges on behalf of
the patentee without filing in the Office evidence of
authorization by the patentee to pay maintenance fees. This
will enable patentees to pay the maintenance fees and any
necessary surcharges themselves or authorize some person or
organization to pay maintenance fees and any necessary
surcharges on their behalf. No verification of the authority
to pay maintenance fees and any necessary surcharges in a
particular patent will be made by the Office. While anyone
may pay the maintenance fees and any necessary surcharges on
a patent, any Office notices relating to maintenance fees
will be mailed to the "fee address" set forth in 37 CFR
1.363.

 A maintenance fee and any necessary surcharge for a patent
must be submitted in the amount due on the date the
maintenance fee and any necessary surcharge are paid, and at
the proper time; i.e., within the periods set forth in 37
CFR 1.362. If the amount of the maintenance fee is correct
on the date it is paid and credited to the patent, a later
change in the maintenance fees to reflect a new fee amount
will not require a modification in the amount paid. However,
in order for the maintenance fee to be considered paid, it
must be submitted in accordance with 37 CFR 1.366.

 Maintenance fee payments and any necessary surcharges must

include the Patent Number and the Application/Serial Number
as required by 37 CFR 1.366(c). The >application< serial
number required to be submitted is not that of a prior
parent application, but rather the actual application that
matured into the patent for which maintenance fees are to be
paid. If the maintenance fee is being paid on a reissue
patent, the >application< serial number required is that of
the reissue application. Since this required information
will be used as a cross - check to ensure that the
maintenance fee is properly credited, the application serial
number must correspond to the patent that issued therefrom.
If less than the required information is submitted, the
Office will not credit the payment. Additionally, if notice
is required that the proper identifying data has not been
submitted, it would result in requiring the payment of a
surcharge if the necessary data is submitted after the
window period closes. If the required information is not
submitted until after the end of the grace period, the
patent would have expired because of the failure to properly
identify the patent to which the maintenance fee payment is
to be credited prior to the expiration of the grace period.
The patentee in such circumstance could proceed under 37 CFR
1.378 (see MPEP  § 2590), if appropriate, or could file a
petition under 37 CFR 1.377 (see MPEP § 2580) within the
period set therein seeking to have the maintenance fee
accepted  as  timely  even  though  all  of  the  required
identifying data was not present prior to expiration of the
grace period.

 Under 37 CFR 1.366(d), the following information should
also be submitted for each patent on which a maintenance fee
or surcharge is paid (37 CFR 1.366(d)): (1) the United
States Application Filing Date, (2) the Issue Date, (3) the
Fee Year (e.g., 3 ½ , 7 ½ , or 11 ½ year fee), (4) the
amount of the maintenance fee and any surcharge being
submitted, (5) any assigned payor>(now customer)< number,
and (6) whether small entity status is being changed or
claimed with the payment. Where the payment is a maintenance
fee and any necessary surcharge on a reissue patent, in
addition to the information requested for all payments, it
is requested that the original patent number, original issue
date, and the original U.S. application filing date be
furnished.  The  reason  for  requesting  this  additional
information is that the original issue date and the original
U.S. application filing date are the dates that control if
and when maintenance fees must be paid to prevent the
reissue patent from expiring. Although the submission of the
information  requested  under  37  CFR  1.366(d)  is  not
mandatory, it would expedite the processing of maintenance
fee payments. In addition, the indication of the fee code
used  by  the  Office  would  assist  in  proper  financial
crediting of the maintenance fee within the Office. It is
also suggested that the telephone number of the person
submitting the maintenance fee be supplied.

 The required information is considered to be the least that
can be required to make a cross - check and thus ensure that
the maintenance fee is being credited to the proper patent.
An error in either the patent issue date or the application
filing date, or both, by the person paying the maintenance
fee would not result in a refusal to accept the maintenance
fee and to credit the payment thereof to the patent, if the
patent number and the U.S. application serial number were
correct; i.e., in agreement. However, if any error included
either the patent number or the U.S. application serial

number such that they were not in agreement, the payment
would not be accepted and credited until correction was
made. The date of the correction would be the date the
maintenance fee payment is credited as being made.

  The  Maintenance  Fee  Transmittal  Form,  PTO/SB/45,  is
suggested when submitting maintenance fees. This form is
available,  upon  request,  from  the  Patent  Maintenance
Division.

 The Office processes fees in the order in which they are
presented. If payment submitted is insufficient to cover the
maintenance fees and surcharges for all patents listed, and
there is no authorization to charge a deposit account, the
payment will be applied in the order the patents are listed,
beginning at the top of the listing.

2520  Maintenance Fee Amounts

 37 CFR 1.20(e) - (h) sets the fee amounts for the
maintenance  fees  and  the  grace  period  surcharge.  The
maintenance fee amounts are subject to adjustment to reflect
fluctuations occurring in the Consumer Price Index pursuant
to 35 U.S.C. 41(f). The maintenance fee amounts (37 CFR
1.20(e) - (h)) are subject to a 50% reduction for small
entities pursuant to 35 U.S.C. 41(h). The Patent Maintenance
Division may be contacted for the current maintenance fee
amounts.

  37  CFR  1.366(g)  provides  that  maintenance  fees  and
surcharges relating thereto will not be refunded except in
accordance with 37 CFR 1.26 and 1.28(a). A patentee cannot
obtain a refund of a maintenance fee which was due and
payable  on  the  patent.  Any  duplicate  payment  will  be
refunded to the fee address.

2522  Methods of Payment

 The maintenance fee and any necessary surcharge may be paid
in the manner set forth in 37 CFR 1.23; i.e., it should be
in  United  States  specie  (e.g.,  cash),  Treasury  notes,
national  bank  notes,  post  office  money  orders,  or  by
certified  check  As  indicated  in  37  CFR  1.23,  if  the
maintenance fee and any necessary surcharge is sent in any
other form, the Office may delay or cancel the credit until
collection  is  made.  For  example,  a  personal  or  other
uncertified  check  drawn  on  a  U.S.  bank  that  is  not
immediately  negotiable;  e.g.,  because  of  a  lack  of  a
signature or insufficient funds, will not constitute payment
of a maintenance fee and/or surcharge. Any remittance from a
foreign country must be payable and immediately negotiable
in the United States for the full amount of the maintenance
fee and/or surcharge required.

 37 CFR 1.366(b) provides that maintenance fees and any
necessary surcharge may be paid by authorization to charge a
deposit account established pursuant to 37 CFR 1.25. The
authorization  to  charge  the  deposit  account  must  be
submitted within an appropriate window or grace period and
must be limited to maintenance fees and surcharges payable
on the date of submission. The authorization to charge the
deposit account cannot be submitted prior to the third,
seventh, or eleventh year after grant of the patent. If an
authorization to charge a deposit account were submitted to
pay the maintenance due at 3 years and 6 months after grant,

a new authorization to charge a deposit account or other
form of payment will have to be submitted at the appropriate
time for each of the maintenance fees due at 7 years and 6
months  and  11  years  and  6  months.  Any  payment  or
authorization filed at any time other than that set forth in
37 CFR 1.362(d), (e), or (f) will not serve as a payment of
the maintenance fee, except insofar as a delayed payment of
the maintenance fee is accepted by the Commissioner pursuant
to 37 CFR 1.378. See MPEP § 2590. A payment of less than the
required amount, a payment in a manner other than that set
forth in 37 CFR 1.23, or the filing of an authorization to
charge a deposit account having insufficient funds, will not
constitute payment of a maintenance fee on a patent. The
authorization  is  required  to  authorize  the  immediate
charging of the maintenance fee to the deposit account. An
authorization would be improper if it only authorized the
maintenance fee to be charged at a later date; e.g., on the
last possible day of payment without surcharge. Such an
authorization would not serve as payment of the maintenance
fee. Any payment which fails to result in the entire proper
amount of the maintenance fee being present on the due date
will not constitute payment of the maintenance fee.

  Maintenance  fee  payments  and  any  surcharges  relating
thereto must be submitted separate from any other payments
for fees or charges, whether submitted in the manner set
forth in 37 CFR 1.23 or by authorization to charge a deposit
account, 37 CFR 1.366(e). Maintenance fee payments and
surcharge payments relating thereto that are comingled with
payments for other fees or charges; e.g., application filing
fees, issue fees, document supply fees, etc., will not be
accepted. Maintenance fees require processing by a separate
area of the Office and are not processed in the same manner
as other fees and charges. Maintenance fees for a number of
patents can be submitted together in one submission and one
payment. 37 CFR 1.366(e) specifies that if maintenance fee
payments for more than one patent are submitted together,
they should be submitted on as few sheets as possible,
listing the patent numbers in increasing patent number
order. If the payment submitted is insufficient to cover the
maintenance fees and any surcharges for all the listed
patents, the payment will be applied in the order the
patents are listed. In such a circumstance where the fees
are insufficient, the maintenance fee and any surcharge for
one or more of the last listed patents will not be paid.

 Money orders and checks must be made payable to the
Commissioner of Patents and Trademarks. Remittances from
foreign countries must be payable and immediately negotiable
in the United States for the full amount required.

 It is not suggested that cash be sent by mail. However, if
cash is sent it will be at the risk of the sender and should
be sent via registered mail.

2530  Informalities

 Informalities in the payment of maintenance fees occur
when:

 (1) Payment was received without the patent and application
serial number, (2) Payment was received with an incorrect
patent or application serial number, (3) Payment for a
reissue patent was received and the reissue patent number
and/or  the  reissue  application  serial  number  was  not

provided, (4) Payment was received; however, additional
funds are required due to surcharge or fee increase, (5)
Payment was received in an amount for small entity; however,
records do not indicate a statement claiming small entity
was received, or (6) Payment was received after the patent
expired.

 If an informality occurs, notice will be sent to the party
submitting the maintenance fee provided the grace period
provided by 37 CFR 1.362(e) has not expired. Response to the
informality is required prior to expiration of the grace
period in order to avoid the expiration of the patent. If a
response is not received prior to expiration of the patent,
then an appropriate petition under 37 CFR 1.377 or 1.378 is
required. See MPEP § 2580 and § 2590.

2540  Fee Address for Maintenance Fee Purposes [R - 3]

 37 CFR 1.363. Fee address for maintenance fee purposes.

 (a)  All  notices,  receipts,  refunds,  and  other
communications relating to payment or refund of maintenance
fees will be directed to the correspondence address used
during prosecution of the application as indicated in §
1.33(a) unless:

 (1)  A  "fee  address"  for  purposes  of  payment  of
maintenance fees is set forth when submitting the issue fee,
or

 (2)  A change in the correspondence address for all
purposes is filed after payment of the issue fee, or

 (3)  A "fee address" or a change in the "fee address" is
filed for purposes of receiving notices, receipts and other
correspondence relating to the payment of maintenance fees
after the payment of the issue fee, in which instance, the
latest such address will be used.

 (b)  An assignment of a patent application or patent
does not result in a change of the "correspondence address"
or "fee address" for maintenance fee purposes.

 All notices, receipts, refunds and other communications
relating to the payment or refund of a maintenance fee will
be directed to the correspondence address used during the
prosecution of the application, unless a "fee address" for
the purpose of payment of the maintenance fee has been
designated or a change in the correspondence address has
been made (see MPEP § 2542). 37 CFR 1.33(d) allows a
correspondence address or change thereto to be filed during
the enforceable life of the patent. Due to the possible
expiration of a patent for failure to timely pay a required
maintenance fee, patentees should ensure that the Office is
properly notified of the proper "fee address" to which all
maintenance fee communications are to be directed.

 Under the statutes and regulations, the Office has no duty
to notify patentee of the requirement to pay maintenance
fees or to notify patentee when the maintenance fee is due.
It is solely the responsibility of the patentee to ensure
that  the  maintenance  fee  is  paid  timely  to  prevent
expiration  of  the  patent.  The  failure  to  receive  the
reminder notice will not shift the burden of monitoring the
time for paying a maintenance fee from the patentee to the

Office. The Office will attempt to assist patentees through
the mailing of a Maintenance Fee Reminder in the grace
period. However, the failure to receive a Maintenance Fee
Reminder will not relieve the patentee of the obligation to
timely  pay  the  appropriate  maintenance  fee  to  prevent
expiration of the patent, nor will it constitute unavoidable
delay if the patentee seeks to reinstate the patent under 37
CFR 1.378(b); see In re Patent No. 4,409,763,7 USPQ2d 1798
(Comm'r Pat. 1988),  aff'd  Rydeen v.  Quigg , 748 F. Supp.
900, 16 USPQ2d 1876 (D.D.C. 1990),  aff'd **, 937 F.2d 623
(Fed. Cir. 1991)>(table)<,  cert. denied **>, 502 U.S. 1075<
(**  1992).  Maintenance  fee  correspondence  will  not  be
directed to more than one address.

 **

 The "Fee Address" Indication Form, PTO/SB/47, and the
Request for *>Customer< Number Form, PTO/SB/*>125<, are
suggested when requesting establishment of a "Fee Address"
or the assignment of a "*>Customer< Number." **>The "Fee
Address" Indication Form, PTO/SB/47 is< available, upon
request, from the Patent Maintenance Division. Requests for
the establishment of a "Fee Address" ** should be submitted
to the Patent Maintenance Division prior to or at the time
of payment of maintenance fees in order to ensure that
receipt of payment is directed to the fee address. >See MPEP
§ 403 concerning requests for a Customer Number.<

 Additional patent numbers may be assigned to a "*>Customer<
Number" at any time, with a written request.

 The "*>Customer< Number" of the Fee Address should be
referred to on all future maintenance fee payments in order
to expedite the payment.

2542  Change of Correspondence Address

 Unless a fee address has been designated, all notices,
receipts, refunds, and other communications relating to the
patent will be directed to the correspondence address used
during the prosecution of the application. Practitioners of
record when the patent issues who do not wish to receive
correspondence relating to maintenance fees must change the
correspondence address in the patented file or provide a fee
address to which such correspondence should be sent. It is
not  required  that  a  practitioner  file  a  request  for
permission to withdraw pursuant to 37 CFR 1.36 solely for
the purpose of changing the correspondence address in a
patented file, even though a withdrawal of a practitioner
would change the correspondence address.

 The correspondence address should be updated or changed as
necessary to ensure that all communications are received in
a timely manner. A change of correspondence address may be
made by the inventors named in the patent, an attorney or
agent of record, or by the assignee complying with 37 CFR
3.73(b).

 Requests for a change of the correspondence address may be
sent to the Office of Public Records, Dissemination Support
Division, Records Maintenance Branch during the enforceable
life of the patent. To ensure accuracy and to expedite
requests for change to the correspondence address, it is
suggested that the request include both the patent number
and the application serial number.

2550  Small Entity Status

 In order to claim small entity status for the purpose of
paying a maintenance fee, a verified statement must be filed
prior to or with the maintenance fee paid as a small entity.
A verified statement is only required to be filed once and
will remain effective until changed.

 37 CFR 1.366(f) serves as a reminder to patentees of the
necessity to check for the loss of small entity status prior
to paying each maintenance fee on a patent. This is also a
requirement of 37 CFR 1.28(b). The notification of any
change in status resulting in loss of entitlement to small
entity status must be filed in a patent prior to paying, or
at the time of paying, the earliest maintenance fee due
after the date on which status as a small entity is no
longer appropriate. If status as a small entity has been
previously established by filing a statement and such status
is checked and found to be proper, no notification is
required.  It  is  not  necessary  to  file  new  verified
statements claiming small entity status at this point if the
status as a small entity has been established and is still
proper even if rights have been transferred to a small
entity who has not previously filed a verified statement.
The requirement is to notify the Office of the loss of
entitlement and to pay the maintenance fee in the proper
amount for other than a small entity where appropriate. The
refund provisions of 37 CFR 1.28(a) for later submitted
small entity statements does apply to maintenance fees.

2560  Revocation of Power of Attorney and Withdrawal of
Attorney

  The  revocation  or  withdrawal  of  an  attorney  may  be
submitted at any time; however, it is recommended that it be
done well prior to the date a maintenance fee is due.

 When processing a revocation of a power of attorney, the
Office of Public Records, Dissemination Support Division,
Records Maintenance Branch forwards copies of the completed
action to the requester and the attorney being removed.
Also, a copy is placed in the patent file wrapper.

 When processing a withdrawal of an attorney, the Office of
Public  Records,  Dissemination  Support  Division,  Records
Maintenance Branch forwards copies of the completed action
to the attorney and the patent owner. Also, a copy is placed
in the patent file wrapper.

 It should be noted that an assignment does not act as a
revocation of power of attorney for authorization previously
given. However, the assignee of the entire interest may
revoke a previous power of attorney. See 37 CFR 3.71 and
3.73.

2570  Status Requests

 The Patent Maintenance Division will respond to requests
for the status of patents. Status can be requested in
person, by telephone, or by facsimile. Telephone status
requests are limited to five patent numbers per telephone
call. In - person and facsimile requests are limited to 30
patent numbers.

  When  requesting  status  of  a  patent,  the  patent  and
application serial number must be provided to the Patent
Maintenance Division.

 The Patent Maintenance Division has a form available, for
the user's convenience, when submitting requests in person
or via facsimile.

2575  Notices

 Under the statutes and the regulations, the Office has no
duty to notify patentees when their maintenance fees are
due. It is the responsibility of the patentee to ensure that
the maintenance fees are paid to prevent expiration of the
patent. The Office will, however, provide some notices as
reminders that maintenance fees are due, but the notices,
errors in the notices, or the lack of notices will in no way
relieve a patentee from the responsibility to make timely
payment of each maintenance fee to prevent the patent from
expiring by operation of law. The notices provided by the
Office will be merely courtesy in nature and intended to aid
patentees. These notices, errors in these notices, or the
lack  of  notices  will  in  no  way  shift  the  burden  of
monitoring the time for paying maintenance fees on patents
from the patentee to the Office.

  Preprinted Standard Notices

 The patent grant currently includes a reminder notice that
maintenance  fees  may  be  due.  The  Notice  of  Allowance
currently includes a reminder notice that maintenance fees
may be due.

  Official Gazette Notice

 A notice will appear in each issue of the Official Gazette
which will indicate which patents have been granted 3, 7,
and 11 years earlier, that the window period has opened, and
that maintenance fee payments will now be accepted for those
patents.

 Another Official Gazette notice published after expiration
of the grace period will indicate any patent which has
expired due to nonpayment of maintenance fees and any
patents which have been reinstated. An annual compilation of
such expirations and reinstatements will also be published.

  Maintenance Fee Reminders

 Since patentees are expected to maintain their own record
and docketing systems and since most patentees are expected
to pay their maintenance fees during the window period to
prevent payment of a surcharge, the Office will not send any
reminder notices to the patentee until after the grace
period has begun. This will reduce and simplify the mailing
of notices but still give patentees an opportunity to pay
their maintenance fee with surcharge during the grace period
before expiration of their patents. The Office will mail any
Maintenance Fee Reminder to the fee address as set forth in
37 CFR 1.363. See MPEP § 2540.

  Receipt Notices

 The Office will issue a receipt for payment of maintenance
fees after entry of the maintenance fee payment. Such a

receipt will provide an opportunity for the patentee to
check if the Office has properly credited the payment. The
original document submitted by the patentee when paying the
maintenance  fee  will  also  be  appropriately  marked  and
returned to the fee address.

 Expiration Notices

 The Office will mail a Notice of Patent Expiration to the
fee address when Office records indicate that a patent has
expired for failure to pay a required maintenance fee.

2580  Review of Decision Refusing to Accept and Record
Payment of a Maintenance Fee Filed Prior to Expiration of
Patent [R - 3]

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

 (a)  Any patentee who is dissatisfied with the refusal
of the Patent and Trademark Office to accept and record a
maintenance fee which was filed prior to the expiration of
the patent may petition the Commissioner to accept and
record the maintenance fee.

 (b)  Any petition under this section must be filed
within 2 - months of the action complained of, or within
such other time as may be set in the action complained of,
and must be accompanied by the fee set forth in § 1.17(h).
The petition may include a request that the petition fee be
refunded if the refusal to accept and record the maintenance
fee is determined to result from an error by the Patent and
Trademark Office.

 (c)  Any petition filed under this section must comply
with the requirements of paragraph (b) of § 1.181 and must
be signed by an attorney or agent registered to practice
before the Patent and Trademark Office, or by the patentee,
the assignee, or other party in interest. Such petition must
be in the form of a verified statement if made by a person
not registered to practice before the Patent and Trademark
Office.

 37 CFR 1.377 provides a mechanism for review of a decision
refusing to accept and record payment of a maintenance fee
filed prior to the expiration of a patent. 37 CFR 1.377(a)
permits a patentee who is dissatisfied with the refusal of
the Office to accept and record a maintenance fee which was
filed prior to the expiration of the patent to petition the
Commissioner to accept and record the maintenance fee. This
petition may be used, for example, in situations where an
error is present in the identifying data required by 37 CFR
1.366(c) with the maintenance fee payment; i.e., either the
patent  number  or  the  application  serial  number  are
incorrect. See MPEP § 2515. A petition under 37 CFR 1.377
would not be appropriate where there is a complete failure
to include at least one correct mandatory identifier as
required by 37 CFR 1.366(c) for the patent since no evidence
would be present as to the patent on which the maintenance
fee was intended to be paid. If the maintenance fee payment
with an incorrect mandatory identifier was made near the end
of the grace period, the patent might expire since the
Office would not credit the fee to a patent. A petition
under 37 CFR 1.377 would not be appropriate where the

patentee paid a maintenance fee on one patent when the
patentee intended to pay the maintenance fee on a different
patent but through error identified the wrong patent number
and application serial number. Likewise, a petition under 37
CFR  1.377  would  not  be  appropriate  where  the  entire
maintenance fee payment, including any necessary surcharge,
was not filed prior to expiration of the patent.

 Any petition filed under 37 CFR 1.377 must be filed within
2 - months of the action complained of, or within such other
time as may be set in the action complained of. The petition
must be accompanied by the proper petition fee. The petition
may include a request that the petition fee be refunded if
the refusal to accept and record the maintenance fee is
determined to have resulted from an error by the Office.

 Any petition filed under 37 CFR 1.377 must comply with the
requirements of 37 CFR 1.181(b) and must be signed by an
attorney or agent registered to practice before the Office,
or  by  the  patentee,  the  assignee,  or  other  party  in
interest. A person or organization whose only responsibility
insofar as the patent is concerned is the payment of a
maintenance fee is not a party in interest for purposes 37
CFR 1.377. The petition must be in the form of verified
statement if made by a person not registered to practice
before the Office. If the petition is signed by a person not
registered to practice before the Office, the petition must
indicate whether the person signing the petition is the
patentee, assignee, or other party in interest. An assignee
must comply with the requirements of 37 CFR 3.73(b) which is
discussed in MPEP § 324.

 Any petition under 37 CFR 1.377 should be marked on the
front page of the communication to the attention of the
Office of Petitions and addressed as follows:

 By mail:  >Assistant< Commissioner *>for< Patents **

  Box DAC

  Washington, D.C. 20231

2590  Acceptance of Delayed Payment of Maintenance Fee
in Expired Patent to Reinstate Patent [R - 3]

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

 (a)  The Commissioner may accept the payment of any
maintenance fee due on a patent after expiration of the
patent if, upon petition, the delay in payment of the
maintenance  fee  is  shown  to  the  satisfaction  of  the
Commissioner to have been unavoidable (paragraph (b) of this
section) or unintentional (paragraph (c) of this section)
and if the surcharge required by § 1.20(i) is paid as a
condition of accepting payment of the maintenance fee. If
the Commissioner accepts payment of the maintenance fee upon
petition, the patent shall be considered as not having
expired, but will be subject to the conditions set forth in
35 U.S.C. 41(c)(2).

 (b)  Any petition to accept an unavoidably delayed
payment of a maintenance fee filed under paragraph (a) of
this section must include:

 (1)  the required maintenance fee set forth in § 1.20(e)
- (g);

 (2)  the surcharge set forth in § 1.20(i)(1); and

 (3)  a showing that the delay was unavoidable since
reasonable care was taken to ensure that the maintenance fee
would be paid timely and that the petition was filed
promptly after the patentee was notified of, or otherwise
became aware of, the expiration of the patent. The showing
must enumerate the steps taken to ensure timely payment of
the maintenance fee, the date and the manner in which
patentee became aware of the expiration of the patent, and
the steps taken to file the petition promptly.

 (c)  Any petition to accept an unintentionally delayed
payment of a maintenance fee filed under paragraph (a) of
this section must be filed within twenty - four months after
the six - month grace period provided in § 1.362(e) and must
include:

 (1)  the required maintenance fee set forth in § 1.20(e)
- (g);

 (2)  the surcharge set forth in § 1.20(i)(2); and

 (3)  a statement that the delay in payment of the
maintenance fee was unintentional.

 (d)  Any petition under this section must be signed by
an attorney or agent registered to practice before the
Patent  and  Trademark  Office,  or  by  the  patentee,  the
assignee, or other party in interest. Such petition must be
in the form of a verified statement if made by a person not
registered to practice before the Patent and Trademark
Office.

 (e)  Reconsideration of a decision refusing to accept a
maintenance fee upon petition filed pursuant to paragraph
(a) of this section may be obtained by filing a petition for
reconsideration within two - months of, or such other time
as set in, the decision refusing to accept the delayed
payment of the maintenance fee. Any such petition for
reconsideration must be accompanied by the petition fee set
forth in § 1.17(h). After decision on the petition for
reconsideration, no further reconsideration or review of the
matter will be undertaken by the Commissioner. If the
delayed payment of the maintenance fee is not accepted,, the
maintenance fee and the surcharge set forth in § 1.20(i)
will be refunded following the decision on the petition for
reconsideration, or after the expiration of the time for
filing such a petition for reconsideration, if none is
filed. Any petition fee under this section will not be
refunded  unless  the  refusal  to  accept  and  record  the
maintenance fee is determined to result from an error by the
Patent and Trademark Office.

 37 CFR 1.378(a) provides that the Commissioner may accept
the payment of any maintenance fee due on a patent based on
an expiration of the patent if, upon petition, the delay in
payment of the maintenance fee is shown to the satisfaction
of  the  Commissioner  to  have  been  unavoidable  or
unintentional. The appropriate surcharge set forth in §
1.20(i) must be paid as a condition of accepting payment of
the maintenance fee. The surcharges set at 37 CFR 1.20(i)

are established pursuant to 35 U.S.C. 41(c) and, therefore,
are not subject to small entity provisions of 35 U.S.C.
41(h).  No  separate  petition  fee  is  required  for  this
petition.  If  the  Commissioner  accepts  payment  of  the
maintenance  fee  upon  petition,  the  patent  shall  be
considered as not having expired but will be subject to the
intervening rights and provisions of 35 U.S.C. 41(c)(2).

 Any petition under 37 CFR 1.378(b) or (c) should be marked
on the front page of the communication to the attention of
the Office of Petitions and addressed as follows:

 By mail:  >Assistant< Commissioner *>for< Patents **

  Box DAC

  Washington, D.C. 20231

 Any petition under 37 CFR 1.378 must be signed by an
attorney or agent registered to practice before the Patent
and Trademark Office, or by the patentee, the assignee, or
other party in interest. A person or organization whose only
responsibility insofar as the patent is concerned is the
payment of a maintenance fee is not a party in interest for
purposes of 37 CFR 1.378. The petition must be in the form
of a verified statement if made by a person not registered
to practice before the Patent and Trademark Office. If the
petition is signed by a person not registered to practice
before the Office, the petition must indicate that the
person signing the petition is the patentee, assignee, or
other party in interest. An assignee must comply with the
requirements of 37 CFR 3.73(b) which is discussed in MPEP §
324.

  37  CFR  1.378(e)  provides  a  mechanism  for  obtaining
reconsideration  of  a  decision  refusing  to  accept  a
maintenance fee upon petition filed pursuant to paragraph
(a). This mechanism is a petition for reconsideration which
may be filed within 2 months of, or such other time as set
in the decision refusing to accept the delayed payment of
the maintenance fee. In contrast to petitions filed under
paragraph (a), the petition for reconsideration requires the
petition fee set forth in 37 CFR 1.17(h). After a decision
on  the  petition  for  reconsideration,  no  further
reconsideration or review of the matter will be undertaken
by the Commissioner. The maintenance fee and the surcharge
submitted will be refunded if the delayed payment of the
maintenance fee is not accepted. The refund will be made
following the decision on the petition for reconsideration,
or after the expiration of the time for filing such a
petition for reconsideration, if none is filed. The petition
fee for filing the petition for reconsideration will not be
refunded  unless  the  refusal  to  accept  and  record  the
maintenance fee is determined to result from an error by the
Office.

  Unavoidable Delay

 37 CFR 1.378(b) provides that a patent may be reinstated at
any time following expiration of the patent for failure to
timely pay a maintenance fee. A petition to accept late
payment  of  a  maintenance  fee,  where  the  delay  was
unavoidable, must include (1) the required maintenance fee
set forth in § 1.20(e) - (g), (2) the surcharge set forth in
§  1.20(i)(1),  and  (3)  a  showing  that  the  delay  was

unavoidable since reasonable care was taken to ensure that
the maintenance fee would be paid timely and that the
petition was filed promptly after the patentee was notified
of, or otherwise became aware of, the expiration of the
patent.

 The required showing must enumerate the steps taken to
ensure timely payment of the maintenance fee, the date and
the manner in which patentee became aware of the expiration
of the patent, and the steps taken to file the petition
promptly.  Furthermore,  an  adequate  showing  requires  a
statement by all persons with direct knowledge of the cause
of the delay, setting forth the facts as they know them.
Such a statement must be verified if made by a person not
registered to practice before the Patent and Trademark
Office. Copies of all documentary evidence referred to in a
statement should be furnished as exhibits to the statement.

 **>As language in 35 U.S.C. 41(c)(1) is identical to that
in  35  U.S.C.  133  (i.e.,  "unavoidable"  delay),  a  late
maintenance  fee  for  the  unavoidable  delay  standard  is
considered under the same standard for reviving an abandoned
application under 35 U.S.C. 133. See Ray v.  Lehman , 55
F.3d 606, 608 - 09, 34 USPQ2d 1786, 1787 (Fed. Cir. 1995)
(quoting  In re Patent No. 4,409,763 , 7 USPQ2d 1798, 1800
(Comm'r Pat. 1988),  aff'd ,  Rydeen v.  Quigg , 748 F.
Supp. 900, 16 USPQ2d 1876 (D.D.C. 1990),  aff'd , 937 F.2d
623 (Fed. Cir. 1991) (table),  cert. denied , 502 U.S. 1075
(1992)). Decisions on reviving abandoned applications have
adopted  the  reasonably  prudent  person  standard  in
determining if the delay was unavoidable:

 The word `unavoidable' . . is applicable to ordinary
human affairs, and requires no more or greater care or
diligence than is generally used and observed by prudent and
careful men in relation to their most important business. It
permits them in the exercise of this care to rely upon the
ordinary and trustworthy agencies of mail and telegraph,
worthy and reliable employees, and such other means and
instrumentalities as are usually employed in such important
business. If unexpectedly, or through the unforeseen fault
or imperfection of these agencies and instrumentalities,
there occurs a failure, it may properly be said to be
unavoidable, all other conditions of promptness in its
rectification being present.

 In re Mattullath , 38 App. D.C. 497, 514 - 15 (1912)
(quoting  Ex parte Pratt , 1887 Dec. Comm'r Pat. 31, 32 - 33
(Comm'r Pat. 1887)); see also  Ex parte Henrich , 1913 Dec.
Comm'r Pat. 139, 141 (Comm'r Pat. 1913). In addition,
decisions on revival are made on a "case - by - case basis,
taking all the facts and circumstances into account."  Smith
v.  Mossinghoff , 671 F.2d 533, 538, 213 USPQ 977, 982 (D.C.
Cir. 1982). The requirement in 35 U.S.C. 133 for a showing
of unavoidable delay requires not only a showing that the
delay which resulted in the abandonment of the application
was unavoidable (or expiration of the patent as it applies
to 35 U.S.C. 41(c)(1)), but also a showing of unavoidable
delay from the time an applicant becomes aware of the
abandonment  of  the  application  until  the  filing  of  a
petition to revive (or a petition under 37 CFR 1.378(b) to
reinstate the patent under 35 U.S.C. 41(c)(1)). See  In re
Application of Takao , 17 USPQ2d 1155 (Comm'r Pat. 1990).
Finally, a petition cannot be granted where a petitioner has
failed to meet his or her burden of establishing that the

delay was "unavoidable."  Haines v.  Quigg , 673 F. Supp.
314, 316 - 17, 5 USPQ2d 1130, 1131 - 32 (N.D. Ind. 1987).

 As 35 U.S.C. 41(c) requires the payment of fees at
specified intervals to maintain a patent in force, rather
than some response to a specific action by the Office under
35 U.S.C. 133, a reasonably prudent person in the exercise
of due care and diligence would have taken steps to ensure
the timely payment of such maintenance fees. Ray , 55 F.3d
at 609, 34 USPQ2d at 1788. That is, an adequate showing that
the delay in payment of the maintenance fee at issue was
"unavoidable" within the meaning of 35 U.S.C. 41(c) and 37
CFR 1.378(b)(3) requires a showing of the steps taken to
ensure the timely payment of the maintenance fees for this
patent.  Id. Thus, where the record fails to disclose that
the patentee took reasonable steps, or discloses that the
patentee took no steps, to ensure timely payment of the
maintenance fee, 35 U.S.C. 41(c) and 37 CFR 1.378(b)(3)
preclude  acceptance  of  the  delayed  payment  of  the
maintenance fee under 37 CFR 1.378(b).

 In view of the requirement to enumerate the steps taken to
ensure timely payment of the maintenance fee, the patentee's
lack of knowledge of the need to pay the maintenance fee and
the failure to receive the Maintenance Fee Reminder do not
constitute unavoidable delay. See Patent No. 4,409,763,
supra . See also Final Rule entitled "Final Rules for Patent
Maintenance Fees," published in the  Federal Register at 49
Fed.  Reg.34716,  34722  -  23  (August  31,  1984),  and
republished in the  Official Gazette at 1046  Off. Gaz. Pat.
Office28, 34 (September 25, 1984). Under the statutes and
regulations, the Office has no duty to notify patentees of
the  requirement  to  pay  maintenance  fees  or  to  notify
patentees when the maintenance fees are due. It is solely
the responsibility of the patentee to assure that the
maintenance fee is timely paid to prevent expiration of the
patent. The lack of knowledge of the requirement to pay a
maintenance fee and the failure to receive the Maintenance
Fee Reminder will not shift the burden of monitoring the
time for paying a maintenance fee from the patentee to the
Office.

 Thus, evidence that despite reasonable care on behalf of
the patentee and/or the patentee's agents, and reasonable
steps to ensure timely payment, the maintenance fee was
unavoidably not paid, could be submitted in support of an
argument that the delay in payment was unavoidable. For
example, an error in a docketing system could possibly
result in a finding that a delay in payment was unavoidable
if it were shown that reasonable care was exercised in
designing and operating the system and if it were shown that
the patentee took reasonable steps to ensure that the patent
was entered into the system to ensure timely payment of the
maintenance fees.<

 Unintentional Delay

 Public Law 102 - 444 amended 35 U.S.C. 41(c)(1) to permit
the Commissioner to accept late payment of any maintenance
fee filed within 24 months after the 6 - month grace period,
if the delay in payment is shown to the satisfaction of the
Commissioner to have been unintentional.

 In addition to the timeliness deadline set forth in the
preceding  paragraph,  a  petition  filed  under  the

unintentional standard of 37 CFR 1.378(c) must include (1)
the required maintenance fee set forth in 37 CFR 1.20(e)
through  (g),  (2)  the  surcharge  for  an  unintentionally
expired patent as set forth in 37 CFR 1.20(i)(2), and (3) a
statement that the delay in payment of the maintenance fee
was unintentional. Such statement must be verified if made
by a person not registered to practice before the Patent and
Trademark Office.

 A person seeking reinstatement of an expired patent should
not make a statement that the delay in payment of the
maintenance fee was unintentional unless the entire delay
was unintentional, including the period from discovery that
the maintenance fee was not timely paid until payment of the
maintenance fee. For example, a statement that the delay in
payment of the maintenance fee was unintentional would not
be  proper  when  the  patentee  becomes  aware  of  an
unintentional failure to timely pay the maintenance fee and
then  intentionally  delays  filing  a  petition  for
reinstatement of the patent under 37 CFR 1.378.

 Public Law 102 - 444 and 37 CFR 1.378(c) are effective as
to any patent that would be covered by the literal language
of the sections. Public Law 102 - 444 and interim rule 37
CFR 1.378(c) were effective October 23, 1992. Since Public
Law 102 - 444 provides up to a 24 - month period after the 6
- month grace period provided in 35 U.S.C. 41(c) to seek
reinstatement of an expired patent where the delay was
unintentional, any patent that expired on or after October
23, 1990, for failure to timely pay a maintenance fee is
eligible for relief under 37 CFR 1.378(c). However, it
should  be  noted  that  a  petition  to  reinstate  an
unintentionally expired patent, the required maintenance
fee, and the surcharge required under the unintentional
standard (37 CFR 1.20(i)(2)) must be filed within 24 months
after the 6 - month grace period to be eligible for relief
under the unintentional standard.

2591  Intervening Rights in Reinstated Patents

 Intervening rights in reinstated patents are provided by 35
U.S.C. 41(c)(2) which is reproduced in MPEP § 2501. No
patent, the term of which has been maintained as a result of
the acceptance of a late payment of a maintenance fee, shall
abridge or affect the right of any person or his successors
in business who made, purchased, or used after the 6 - month
grace period but prior to the acceptance of the late
maintenance  fee  anything  protected  by  the  patent,  to
continue the use of, or to sell to others to be used or
sold, the specific thing s made, purchased, or used. A court
before which such matter is in question may provide for the
continued manufacture, use, or sale of the thing made,
purchased, or used as specified, or for the manufacture,
use, or sale of which substantial preparation was made after
the 6 - month grace period but before the acceptance of the
late maintenance fee, and it may also provide for the
continued practice of any process, practiced, or for the
practice of which substantial preparation was made, after
the 6 - month grace period but prior to the acceptance of
the late maintenance fee, to the extent and under such terms
as  the  court  deems  equitable  for  the  protection  of
investments made or business commenced after the 6 - month
grace  period  but  before  the  acceptance  of  the  late
maintenance fee.

>2595  Forms [R - 3]

 The following forms which are suggested when submitting a
maintenance  fee  or  establishing  a  fee  address  for
maintenance fee purposes are reproduced on the following
pages. "Maintenance Fee Transmittal Form," Form PTO/SB 45;
and "`Fee Address' Indication Form," Form PTO/SB/47.<

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  Appendix I Partial List of Trademarks

  The following is a partial list of trademarks which may
appear from time to time in patent applications. Proper
usage of trademarks requires that they be capitalized at all
times. See MPEP § 608.01(v).

  Any questions by the examiners as to whether an apparent
trademark is in fact a registered trademark or not, and to
what particular goods it applies, should be referred to the
Trademark Search Branch (308 - 9800) for determination.

  Particular goods on or in connection with which the
  Trademark trademark is used

  Particular goods on or in connection with which the
  Trademark trademark is used

  ** >ACE  . .  Elastic bandages, adhesive bandages,
  adherent compounds for attaching
  surgical dressings or bandages to the
  skin, and bandage fastening clips

  ACTIONWEAR  . .  Men's, women's, children's, and
  infants' garments - namely coats,
  sweaters, blouses, shirts, underwear,
  and sleepwear

  ADRENALIN  . .  Hemostatic, astringent, blood -
  pressure raising and stimulating
  preparations for medicinal or
  surgical purposes

  AEROJET  . .  Thrust motors whose general pur pose is
  to provide thrust by means of a
  combustion process, and includes all
  the component parts of such motors

  AEROSOL  . .  Wetting agents for use in reducing the
  interfacial tension between liquids
  and solids or between two immiscible
  liquids

  AIRVEYOR  . .  Conveyors for conveying and handling
  materials

  ANCHOR  . .  Metallic fencing and related components

  ARNEL  . .  Yarns; textile fibers, including staple
  fibers and continuous filaments

  BARBIE  . .  Doll; accessories for doll

  BEEF STICK  . .  Summer sausage

  BIRKENSTOCK  . .  Footwear - namely, sandals, shoes, and
  shoe insoles

  BLUSH  . .  Wines

  BOOGIE  . .  Surfboards

  BUSS  . .  Electric fuses, fuse holders, fuse
  wire, and protectors for electric
  circuits that include fuse links and
  thermal cutouts and that respond to
  heavy overloads or short circuits to
  open the circuits

  BUTTERFLY  . .  Medical infusion sets for
  administration of fluids

  CALGON  . .  Water softening and water conditioning
  for industrial, laundry, and semi -
  industrial use

  CALROD  . .  Electrical resistance heaters;
  electrical resistance heating
  elements for cooling devices

  CARBORUNDUM  . .  Electrical devices comprising detectors
  for radio apparatus, resistance rods,
  lightning arrestors, resistors, and
  resistor units

  CARBORUNDUM  . .  Crystalline substance used as an
  abradant and for other purposes

  CAROUSEL  . .  Photographic projectors

  CAT  . .  Machinery for earth moving, earth
  conditioning, and material handling,
  namely, loaders and engines therefor,
  and parts for the foregoing; vehicles
  and internal combustion engines for
  earth and material hauling and
  handling, namely tractors and engines
  therefor, and parts for the foregoing

  CATERPILLAR  . .  Tractors, engines, treads, etc.

  CHAP STICK  . .  Medicinal preparation for chapped skin,
  sunburn, and hangnails

  CLOROX  . .  Household cleanser compositions,
  laundry detergent

  COCA - COLA  . .  Beverages and syrups for the
  manufacture of such beverages
  (carbonated soft drink)

  COCOA - PUFFS  . .  Ready to eat breakfast cereal

  COKE  . .  Nonalcoholic, maltless beverages and
  the syrups for making such beverages

  COREX  . .  Thermosetting plastic in the nature of
  a paint converted by heat into an
  insoluble, unfusible film

  CRAWLER  . .  Children's play clothes, namely,
  overalls, shirts, rompers, and
  sunsuits

  CYCLONE  . .  Seeders and planters

  DACRON  . .  Yarns of synthetic fibers; synthetic
  polyester fibers for generalized use
  in the industrial arts

  DORITOS  . .  Corn chips, potato chips, tortilla
  chips, pretzels, and nut meats

  FEDEX  . .  Shipping containers in the nature of
  document envelopes, boxes and tubes;
  pick - up, transportation, storage,
  and delivery of documents, packages
  and freight by land and air

  FIBERGLAS  . .  Inorganic material in a fibrous
  condition or in the form of a loose
  mass of filaments or fibers

  FLEXWOOD  . .  Fabric - backed wood veneer

  FLYING SAUCER  . .  Toys, namely model airplanes and
  aerodynamic flying discs

  FOAMICIDE  . .  Chemical composition for addition to
  foaming liquids present in bottle and
  container washing processes and in
  industrial chemistry processes, to
  prevent the formation of foam therein

  FOOTLETS  . .  Anklets, knee - hi socks, hosiery, and
  footsocks

  FORMICA  . .  Laminates and solid surfacing materials
  in the form of slabs made
  predominantly of plastic for use in
  the manufacture of countertops,
  vanity tops, tabletops, sinkbowls,
  bath tubs, wall paneling, flooring,
  and furniture

  GLAD  . .  Plastic bag holders

  GLAD LOCK  . .  Plastic bags for packaging, such as
  food storage and freezer bags

  HACKY SACK  . .  Footbags used in a kicking game;
  conducting kicking game tournaments
  and kicking game instructional
  clinics

  HI - LITER  . .  Marking pens

  INTERNET  . .  Communication services, namely
  providing electronic data
  transmission services in the
  electronic banking field and retail
  marketing field

  INTERNET  . .  Carpeting installation information
  exchange and consulting services
  rendered by computer
  INTERNET

  TELEVISION  . .  Distribution and production of
  broadcast and nonbroadcast television
  programs, videotaped programs and
  audio tapes

  IRONCLAD  . .  Storage - battery plates

  JARLSBERG  . .  Cheese

  JEEP  . .  Automobiles and structural parts
  thereof

  JELL - O  . .  A compound used in the preparation of
  (jellies) desserts (pastries and ice
  - cream); gelatin dessert

  JELLO - LIGHT  . .  Pudding

  JET SKI  . .  Boats, recreational watercraft, floor
  mats, clothing, paint for machinery,
  tarpaulins, used to hold down boat
  covers; straps, namely boat covers
  and boat towing lines, motor oil,
  duffle bags

  KARMELKORN  . .  Popcorn candy, seasoned popcorn, cheese
  - covered popcorn, and popcorn balls
  each of which is made from popped
  popcorn; and also  unpopped
  popcorn, candy, candied apple, nuts,
  and ice cream

  KEVLAR  . .  Man - made fibers for generalized use
  in the industrial arts

  KITTY LITTER  . .  Ground clay used for litters for small
  animals, i.e., cats, rats, mice,
  hamsters

  KLEENEX  . .  Absorbent tissue suitable for cleaning,
  hygienic, and cosmetic purposes, and
  paper towels

  KOOSH  . .  Tossing balls

  LIFE SAVERS  . .  Chewing - gum, candy, sweetmeats, and
  confections

  LINOTYPE  . .  Typesetting machines and parts thereof;
  accessories and equipment for use
  with typeset machines and systems -
  namely, line printers, video

  terminals, keyboards, tape
  perforators, tape readers, graphic
  scanners, optical character readers
  and computer programs

  LIQUID PAPER  . .  Office supply products, namely
  correction fluid, error correction
  tapes

  LISTSERV  . .  Computer software for managing
  electronic mailing lists

  LOAFERS  . .  Ladies', men's, and boys' shoes made of
  leather, rubber, fabric, and various
  combinations of such materials

  LUCITE  . .  Enamel and paint

  LYCRA  . .  Synthetic fibers and filaments for
  generalized use in the industrial
  arts

  MINI BAR  . .  Small - sized pry bars

  MONOTYPE  . .  Type casting and composing machines,
  including keyboards and casting -
  machines and repair parts and
  supplies therefor; paper ribbons or
  controllers for type casting and
  composing machines; photo typesetting
  machines utilizing cameras and laser
  beam, and structural parts thereof,
  typefaces, typefonts and type designs
  of alphanumeric characters and/or
  typographical symbols recorded as
  visible images in printer's type

  MUSIC BY MUZAK  . .  Planned music service for transmitting
  specially programmed background music
  to stores, restaurants, homes,
  hotels, banks, railroads, airlines,
  boats, transportation terminals,
  factories and other industrial and
  commercial establishments throughout
  the U.S.

  MYLAR  . .  Flexible film for packaging purposes;
  polyester film

  OILGEAR  . .  Valves for use in and in connection
  with the hydraulic transmission of
  power

  ORLON  . .  Synthetic fiber - forming polymers and
  copolymers of acrylic acid or its
  derivatives produced in the form of
  fibers for further use in the
  industrial arts

  PAMPERS  . .  Disposable diapers

  PARA - SAIL  . .  Parachutes

  PERF - A-TAPE  . .  Paper tape for sealing composition
  board joints

  PERMALLOY  . .  Metal hardening agent sold as a
  component part of machine parts;
  namely, sheaves, drill steels, barrel
  rollers, and pins for mining
  machinery such as drag line conveyors
  and drills

  PIZZA ROLLS  . .  Pasta snacks, namely hamburger flavor
  pasta snacks, cheeseburger flavor
  pasta snacks, pepperoni and cheese
  flavor pasta snacks, sausage, and
  cheese flavor pasta snacks, and
  shrimp and cheese flavor pasta snacks

  POPSICLE  . .  Frozen confections on sticks and liquid
  flavoring concentrates for making
  said confections

  POST - IT  . .  Stationary notes containing adhesive on
  one side for attachment to surfaces

  PYREX  . .  Beakers, flasks, test tubes, etc.;
  glass

  QUICKEN  . .  Computer software programs and user
  documentation supplied therewith

  Q - TIPS  . .  Absorbent swabs and balls for toiletry,
  medical, and cosmetic uses; swabs
  consisting of small sticks of wood or
  paper having wads of cotton twisted
  about one or both ends, intended for
  use primarily as a cosmetic aid

  RICE KRISPIES  . .  Cereal breakfast food

  RIPPLE  . .  Wines

  ROLLERBLADE  . .  Boots equipped with longitudinally
  aligned rollers used for skating and
  skiing

  ROQUEFORT  . .  Cheese

  SANKA  . .  Coffees and teas, coffee and tea
  extracts, both dry and liquid, and
  tea and coffee substitutes

  SCOTCH  . .  Masking tape, cellophane tape, acetate
  fiber tape and other pressure -
  sensitive adhesive tapes; liquid
  adhesive, adhesive sheet material, an
  adhesive coated sheet material in
  sheet or strip form; adhesive tape

  SNAP - ON  . .  Sharpening stones, nail clipper;
  calibrated rulers, magnetic paper
  clips, magnetic tape holders, drill
  bit gauges, tape measurers; tools and
  machinery

  SNOOZ - ALARM  . .  Electronic repeat alarm timer sold as a
  component of alarm clocks; clocks

  SPEED NUT  . .  Nuts
  SPERRY

  TOP - SIDER  . .  Boating coats, boating hats, boating
  suits, boating jackets, boating
  shirts and boating trousers, footwear

  STELLITE  . .  Metal alloys

  STELLITE  . .  Rivet setting tools

  SWOOSH  . .  Footwear

  TABASCO  . .  Pepper sauce

  TALON  . .  Thread

  TEFLON  . .  Synthetic resinous fluorine -
  containing polymers in form of
  molding and extruding compositions,
  fabricated shapes - namely, sheets,
  [rods] tubes, tape and filaments [ -
  solutions,] and emulsions;
  polytetrafluoroethylene coatings in
  the nature of paints and varnishes
  TELEMARKETING

  INC  . .  Telephone marketing consulting
  services; conducting telephone sales
  campaigns for business clients

  TELETYPE  . .  Printing - telegraph apparatus

  TELEX  . .  Equipment and apparatus for electronic
  treatment of sound - namely, sound
  recorders - reproducers, phonographs,
  tape decks, tape recorders, tape
  cartridge players, tape duplicators,
  tapes for sound recording and
  reproduction, combination tape
  recorders and radios, and combination
  phonographs - tape decks, and
  components and parts for all of said
  equipment

  THERMOS  . .  Temperature - retaining vessels; double
  - walled glass vessels with vacuum
  between the walls

  TOLL HOUSE  . .  Prepared edible chocolate

  TOUCH - TONE  . .  Musical instruments, mainly timpani and
  other drums, mallets for playing
  drums, and other percussion
  instruments and parts thereof

  TRAV - O-LATER  . .  Endless conveyors

  TRIGGER  . .  Indicating tripping fuses

  TROUT CHOW  . .  Feed for fish

  TWIST - LOCK  . .  Electrical wiring apparatus, namely
  electric flush receptacles,
  attachment plug, caps, cord - cou
  pling, caps, couplings, connectors, 
  motor couplings, attachment plugs,
  and motor plugs

  TYVEK  . .  Fabrics of man - made fibers and
  filaments suitable for making into
  household furnishings and apparel and
  for industrial uses

  VASELINE  . .  Emollient and medicinal preparation for
  external and internal use; petroleum
  jelly, oil petrol, white mineral oil;
  moisturizing lotion and cream

  VELCRO  . .  Notion - namely, a synthetic material
  sold in ribbon, sheet, or piece goods
  form, said material having
  complemental parts which adhere to
  each other when pressed together and
  adapted for use as a closure
  fastener, or button for closing
  garments, curtains, or the like;
  separable fasteners - namely, hook
  and loop - type fasteners and
  components thereof

  VICTROLA  . .  Prerecorded audio cassettes; records
  for talking - machines

  VIDEOFILE  . .  Document storage systems designed to
  automate the storage and retrieval of
  document images, and components
  thereof

  VIENNA BEEF  . .  Tongue, corned beef, frankfurters,
  wieners, knockwurst, polish sausage,
  pastrami, salami, and bologna

  VISE - GRIP  . .  Hand tools and instruments, namely
  pliers and workholding clamps with or
  without a cutting edge, wrenches,
  wrenches with a wire cutter and
  welding clamps, and sheet metal
  bending tool

  VOTATOR  . .  Machinery for processing and handling
  materials in fluid, plastic, or
  particulate form including food
  products
  WEATHER-

  OMETER  . .  Apparatus for testing the effect of
  weather upon the surface of objects

  WEED EATER  . .  Machinery for edging and trimming
  vegetation; weed and grass cutting
  machinery for edging and trimming
  lawns

  WIFFLE  . .  Simulated or auxiliary pliable plastic
  baseballs and a game played therewith

  WINDBREAKER  . .  Men's, young men's, boys', women's,
  misses' and girl's apparel for
  sportswear, dress wear, work wear,
  and uniforms; namely jackets, vests,
  trousers, suits, shirts, blouses

  WINDOWS  . .  Cartridges containing software for
  operating or enhancing the

 operation of laser printers, which cartridges are to be
  inserted into the printers, and
  accompanying software for
  installation in computers which
  communicate with the printers;
  computer programs and manuals sold as
  a unit; namely graphical operating
  environment programs for
  microcomputers

  WINDSURFER  . .  Sailboats having a free sail system

  WITE - OUT  . .  Typing and drawing correction fluid
  (erasing liquid)

  XEROX  . .  Electrophotographic copying machines
  (and equipment for recording x - ray
  images - namely, processors for
  electrostatically charging
  xeroradiographic plates and
  conditioners for producing positive
  or negative prints)

  ZIPLOC  . .  Plastic bags<

 Appendix II List of Decisions Cited Sec. No.

  Rev. 3, June 1997
  . .  Sec. No.

  A, Ex parte, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)  
  716.02  2131.02

  Abele, In re, 684 F.2d 902, 214 USPQ 682 (CCPA 1982)  
  2106  2184

  Abseck et al., Ex parte, 133 USPQ 411 (P.O. Super. Exam. 1960)
  1208.03

  Adidas Fabrique v. Andsmore Sportswear Corp., 223 USPQ 1109
  (S.D. N.Y. 1984)  . .  1504.06

  Adler v. Kluver, 159 USPQ 511 (Bd. Pat. Inter. 1968)  

  715.05

  Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977)  
  2306  2309.01

  Affidavit Filed After Final Registration, In re, 152 USPQ 292,
  1966 C.D. 53 (Comm'r Pat. 1966)  . .  2265

  Ahlert, In re, 424 F2d 1088, 165 USPQ 418 (CCPA 1970)  
  2144.03

  Ahrens v. Grey, 1931 C.D. 9; 402 O.G. 261 (Bd. App. 1929)  
  201.13

  Akron Brass Co. v. Elkhart Brass Mfg. Co., 147 USPQ 301 (7th
  Cir. 1965)  . . 
  2133.03(e)(1)

  Akzo N.V. v. International Trade Comm'n, 808 F.2d 1471, 1 USPQ2d
  1241 (Fed. Cir. 1986)  . .  2131.02

  Alappat, In re, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994)
  2106

  Albertson, In re, 332 F.2d 379, 141 USPQ 730 (CCPA 1964)  
  2116.01

  Albrecht, In re, 514 F.2d 1389, 185 USPQ 585 (CCPA 1975)  
  2144.08  2144.09

  Allen, Ex parte, 2 USPQ2d 1425 (Bd. Pat. App. & Inter. 1987)  
  2105

  Aller, In re, 220 F.2d 454, 105 USPQ 233 (CCPA 1955)  
  2144.05

  Alpert v. Slatin, 305 F.2d 891, 134 USPQ 296 (CCPA 1962)  
  2138.04  2371

  Alpine Eng'g, Inc. v. Automated Building Components, Inc.,
  BNA/PTCJ 367: A - 12 (S.D. Fla. 1978)  . .  1442.05

  Alsenz v. Hargraves, 13 USPQ2d 1371 (Bd. Pat. App. & Inter.
  1989)  . .  2138.05

  Alton, In re, 76 F.3d 1168, 37 USPQ2d 1578 (Fed. Cir. 1996)  
  2144.08  2164.05

  Altoona Publix Theatres v. American Tri - Ergon Corp., 294 U.S.
  477, 24 USPQ 308 (1935)  . .  1490

  American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1 (1931)
  2106

  American Infra - Red Radiant Co., Inc., et al. v.

  Lambert Indus. Inc. et al., 149 USPQ 722 (8th Cir. 1966)  
  901.05  2135.01

  Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 18
  USPQ2d 1016 (Fed. Cir.), cert. denied, 502 U.S. 856 (1991)  
  2138.04  2143.02

  . .  2164.08

  . .  2165.04
  2173.05(a)

  . .  2411.01

  AMI Indus., Inc. v. E.A. Indus., Inc., 204 USPQ 568 (W.D.N.C.
  1978)  . . 
  1442.05(a)

  Amos, In re, 953 F.2d 613, 21 USPQ2d 1271 (Fed. Cir. 1991)  
  1412.01

  Amp. Inc., In re, 212 USPQ 826 (Comm'r Pat. 1981)  2225

  Amphenol Corp. v. Gen'l Time Corp., 158 USPQ 113 (7th Cir. 1968)
  2133.03(e)(1)

  Anderson, Ex parte, 21 USPQ2d 1241 (Bd. Pat. App. & Inter. 1991)
  2173.05(a)

  Anderson, In re, 471 F.2d 1237, 176 USPQ 331 (CCPA 1973)  
  601.01(d)  2163.07

  Anderson's - Black Rock Inc. v. Pavement Salvage Co., 396 U.S.
  57, 163 USPQ 673 (1969)  . . 
  716.01(a)

  Anderson v. Crowther, 152 USPQ 504 (Bd. Pat. Inter. 1965)  
  2138.06

  Andresen, Ex parte, 212 USPQ 100, 102 (Bd. Pat. App. & Inter.
  1981)  . .  2137
  2141.01

  Andrew Corp. v. Gabriel Electronics, 847 F.2d 819, 6 USPQ2d 2010
  (Fed. Cir. 1988)  . . 
  2173.05(a)

  Andrews v. Wickenden, 194 F.2d 729, 93 USPQ 27 (CCPA 1952)  
  2307.02

  Angstadt, In re, 537 F.2d 498, 190 USPQ 214 (CCPA 1976)  
  2164.01  2164.06

  . . 
  2164.08(b)

  Anthony, Ex parte, 230 USPQ 467 (Bd. App. 1982), aff'd No. 84 -
  1357 (Fed. Cir. 1985)  . .  1490

  Anthony, In re, 414 F. 2d 1383, 162 USPQ 594 (CCPA 1969)  
  2107  2107.02

  Antonie, In re, 559 F.2d 618, 195 USPQ 6 (CCPA 1977)  
  2141.02  2144.05

  Antonious v. Kamata - Ri & Co. Ltd., 204 USPQ 294 (D. Md. 1979)
  1442.05

  A&P Tea Co. v. Supermarket Corp., 340 U.S. 147, 87 USPQ 303
  (1950)  . . 
  716.01(a)

  Appeal, Decided 9/3/68, Ex parte, 866 O.G. 16 (Bd. App. 1968)
  1504.02

  Appeal No. 194 - 38, 152 USPQ 70, 1955 C.D. 31 (Bd. App. 1965)
  901.05(b)

  Appeal No 239 - 48, 151 USPQ 711, 1966 C.D. 22, 833, O.G. 10
  (Bd. App. 1965)  . .  1504.02

  Appeal No. 242 - 47, 196 USPQ 828 (Bd. App. 1976)  
  901.05(b)

  . .  2135.01

  Applied Materials Inc. v. Gemini Research Corp., 835 F.2d 279,
  15 USPQ2d 1816 (Fed. Cir. 1988)  . .  2136.05
  2137.01

  Application Filed July 13, 1950, In re, 105 USPQ 154, 1955 C.D.
  3, 693 O.G. 136, (Comm'r Pat. 1955)  . .  1214.01

  Application Filed Nov. 16, 1945, In re, 89 USPQ 280, 1951 C.D.
  1, 646 O.G. 5 (Comm'r Pat. 1951)  . . 
  904.01(a)

  Application of Takao, 17 USPQ2d 1155 (Comm'r Pat. 1990)  
  2590

  Application Papers Filed Jan. 20, 1956, In re, 706 O.G. 4
  (Comm'r Pat. 1956)  . .  714.07

  Application Papers Filed Sept. 10, 1954, In re, 108 USPQ 340
  (Comm'r Pat. 1955)  . . 
  409.03(c)

  Argoudelis, In re, 434 F.2d 1390, 168 USPQ 99 (CCPA 1970)  
  2164.06

  . . 
  2164.06(a) 2402

  Armbruster, In re, 512 F. 2d 676, 185 USPQ 152 (CCPA 1975)  
  608.01(b)  2161

  Armour & Co. v. Swift & Co., 466 F.2d 767, 175 USPQ 70 (7th Cir.
  1972)  . . 
  2001.06(b)  2004

  Armstrong, In re, 280 F.2d 132, 126 USPQ 281 (CCPA 1960)  
  716.02(e)

  Arnott, In re, 19 USPQ2d 1049 (Comm'r Pats. 1991 )

  Arrhythmia Research Tech. v. Corazonix Corp., 458 F.2d 1053, 22
  USPQ2d 1033 (Fed. Cir. 1992)  . .  2106

  Arzberger, In re, 112 F.2d 834, 46 USPQ 32 (CCPA 1940)  
  1601

  Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
  281, 227 USPQ 657 (Fed. Cir. 1985)  . . 
  716.01(b)

  . .  716.01(c)

  Aslanian, In re, 590 F.2d 911, 200 USPQ 500 (CCPA 1979)  
  2125

  Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 23
  USPQ2d 1481 (Fed. Cir. 1992)  . . 
  2133.03(b)

  . . 
  2133.03(c)

  Atlas Powder Co. v. E.I. duPont de Nemours & Co., 750 F.2d 1569,
  224 USPQ 409 (Fed. Cir. 1984)  . .  2111.03

  . .  2164.01
  2164.08(b)

  Attig, Ex parte, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986)  
  2173.05(a)

  Automatic Weighing Mech. Co. v. Pneumetic Scale Corp. Ltd., 166
  F.2d 288, 1909 C.D. 498, 139 O.G. 991 (1st Cir. 1909)  
  715.07

  Avery v. Chase, 101 F.2d 205, 40 USPQ 343, (CCPA 1939) cert.
  denied, 307 U.S. 638 (1939)  . .  2333

  Ayers, Ex parte, 108 USPQ 444 (Bd. App. 1955)  . . 
  608.04(a)

  Azar v. Burns, 188 USPQ 601 (Bd. Pat. Inter. 1975)  2138.05
  2308.02

  Badger, Ex parte, 1901 C.D. 195, 97 O.G. 1596 (Comm'r Pat. 1901)
  608.02(f)

  Baird, In re, 16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir. 1994)  
  2144.08

  Ball Corp., In re, 925 F.2d 1480, 18 USPQ2d 1491 (Fed. Cir.
  1991)  . .  2145

  Ball Corp. v. United States, 729 F.2d 1429, 221 USPQ 289 (Fed.
  Cir. 1984)  . .  1412.02
  1490

  Balzarini, Ex parte, 21 USPQ2d 1892 (Bd. Pat. App. & Inter.
  1991)  . .  2107.02

  Bandel, In re, 348 F.2d 563, 146 USPQ 389 (CCPA 1965) 715
  2305.01

  Barber, Ex parte, 187 USPQ 244 (Bd. App. 1974)  . 
  2173.05(j)

  Barber, In re, 81 F.2d 231, 28 USPQ 187 (CCPA 1936)  804

  Barker, In re, 559 F.2d 588, 194 USPQ 470 (CCPA 1977), cert.
  denied, Barker v. Parker 434 w5 1064 (1978)  . .  2106
  2161

  Barmag Barmer Maschinenfabrik v. Murata Mach. Ltd., 731 F.2d
  831, 221 USPQ 561 (Fed. Cir. 1984)  . . 
  2133.03(b)

  Barr, In re, 444 F2d 588, 170 USPQ 330 (CCPA 1971)  2111.01

  . .  2144.03

  2173.05(a)

  . . 
  2173.05(g) 2173.05(i)

  Bartfeld, Ex parte, 16 USPQ2d 1714 (Bd. Pat. App. & Inter. 1990)
  2136.01

  Bartfeld, In re, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991)
  804  2136.01

  . .  2136.05
  2141.01

  Bass, In re, 474 F.2d 1276, 177 USPQ 178 (CCPA 1973)  715
  2004

  . .  2138
  2138.03

  Bausch & Lomb v. Barnes - Hind/Hydrocurve, Inc., 796 F.2d 443,
  230 USPQ 416 (Fed. Cir. 1986)  . .  2141.02

  Baxter, In re, 656 F.2d 679, 210 USPQ 795 (CCPA 1987)  
  2111.03

  Baxter Travenol Labs., In re, 952 F.2d 388, 21 USPQ2d 1281 (Fed.
  Cir. 1991)  . .  2131.01
  2145

  Bayer, In re, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978)  
  2128.01

  Beattie, In re, 974 F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992)
  716.01(c)  2144.08

  Beck, In re, 155 F.2d 398, 69 USPQ 520 (CCPA 1946)  
  715.01(b)

  Becker v. Patrick, 47 USPQ 314 (Comm'r Pat. 1939)  2309.01

  Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 13
  USPQ2d 1301 (Fed. Cir. 1989)  . .  2121.01

  Belk, et al., Ex parte, 161 USPQ 795 (Bd. Pat. App. 1968)  
  901.05

  . .  901.05(b)
  2135.01

  Bell, In re, 991 F.2d 781, 26 USPQ2d 1529 (Fed. Cir. 1993)  
  2144.08  2144.09

  Bendix Corp. et al. v. Balax Inc., et al., 164 USPQ 485 (7th
  Cir. 1970)  . .  901.05

  Benger Laboratories Ltd. v. R.K. Laros Co., 209F Supp. 639, 135
  USPQ 11 (E.D. Pa. 1966)  . .  2165

  Benke, Ex parte, 1904 C.D. 63, 108 O.G. 1588 (Comm'r Pat. 1904)
  811.02

  Bennet, In re, 766 F.2d 524, 226 USPQ 413 (Fed. Cir. 1985)  
  1403  1412.03

  Benno, In re, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985)  
  2163.06

  Benson, In re, 122 USPQ 279, 1959 C.D. 5, 744 O.G. 353 (Comm'r
  Pat. 1959)  . .  608.01
  714.07

  Bergstrom, In re, 427 F.2d 1394, 166 USPQ 256 (CCPA 1970)  
  2144.04

  Berkman, In re, 642 F.2d 427, 209 USPQ 45 (CCPA 1981)  
  1504.20

  Bernhart, In re, 417 F.2d 1395, 163 USPQ 611 (CCPA 1969)  
  2106  2173.05(j)

  Best, In re, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977)  
  2112  2112.01

  . .  2112.02

  Bey v. Kollonitsch, 806 F.2d 1024, 231 USPQ 967 (Fed. Cir. 1986)
  2138.06

  Bielomatik Lueze & Co., v. Southwest Tablet Mfg. Co., 204 USPQ
  226 (N.D. Texas 1979)  . .  1442.05

  . . 
  1442.05(b)

  Biesecker, Ex parte, 144 USPQ 129 (Bd. App. 1964)  715.02
  715.03

  Bigham v. Godtfredsen, 857 F.2d 1415, 8 USPQ2d 1266 (Fed. Cir.
  1988)  . .  2138.01
  2138.05

  Billottet, Ex parte, 192 USPQ 413 (Bd. App. 1976)  2137

  Bindra v. Kelly, 206 USPQ 570 (Bd. Pat. Inter. 1979)  
  2138.05

  Bird Provisions Co. v. Owens Country Sausage, 197 USPQ 134 (5th
  Cir. 1978)  . . 
  2133.03(a)

  Blaisdell, In re, 242 F.2d 779, 113 USPQ 289 (CCPA 1957)  
  2133.03(a)

  . . 
  2133.03(b) 2133.03(e)(3)

  . . 
  2133.03(e)(5)

  Blake, In re, 358 F.2d 750, 149 USPQ 217 (CCPA 1966)  
  715.07

  Blanc, Ex parte, 13 USPQ2d 1383 (Bd. Pat. App. & Inter. 1989)
  716.02(c)

  . .  2142
  2143.02

  Bland, Ex parte, 3 USPQ2d 1103 (Bd. Pat App. & Inter. 1986)  

  2141.01(a)

  Blattner, Ex parte, 2 USPQ2d 2047 (Bd. Pat. App. & Inter. 1987)
  2144.09

  Blondel, In re, 499 F.2d 1311, 182 USPQ 294 (CCPA 1974)  
  716.02(b)

  Blonder - Tongue Labs., Inc. v. Univ. of Ill., Foundation, 402
  U.S. 313, 169 USPQ 513 (1971)  . .  2012.01

  Blout, In re, 333 F.2d 928, 142 USPQ 173 (CCPA 1964)  715

  Blum, In re, 374 F.2d 904, 153 USPQ 177, (CCPA 1967)  
  1503.01

  . .  1503.02
  1503.03

  Blumcraft of Pittsburgh v. Ladd, Comm'r Pat., 144 USPQ 562
  (D.D.C. 1965)  . .  1504.05

  Boeing Co. v. Comm'r, 853 F.2d 878, 7 USPQ2d 1487 (Fed. Cir.
  1988)  . .  2279

  Boesch, In re, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)  
  716.02(b)  716.02(d)

  . .  716.02(e)
  2144.05

  Bogoslowsky v. Huse, 142 F.2d 75, 61 USPQ 349 (CCPA 1944)  
  2138.03

  Bolkcom v. Carborundum Co., 523 F.2d 492, 187 USPQ 446 (6th Cir.
  1975)  . .  2003

  Bond, In re, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990)  
  2131  2184

  Bondiou, Ex parte, 132 USPQ 356 (Bd. App. 1961)  .  2163.07

  Bonito Boats Inc. v. Thunder Craft Boats Inc, 489 U.S. 141, 9
  USPQ2d 1847 (1989)  . .  2133.02

  Bonnie - B Co., Ex parte, 1923 C.D. 42, 313 O.G. 453 (Comm'r
  Pat. 1922)  . .  103  104

  Boon, In re, 439 F.2d 724, 169 USPQ 231 (CCPA 1971)  
  2144.03

  Borkowski, In re, 422 F.2d 904, 164 USPQ 642 (CCPA 1970)  
  2164.02  2174

  Borkowski, In re, 505 F.2d 713, 184 USPQ 29 (CCPA 1974)  
  715.07  2371

  Bose Corp., In re, 687 F. 432, 772 F.2d 866, 227 USPQ 1 (Fed.
  Cir. 1985)  . .  1203

  Bosies v. Benedict, 27 F.3d 539, 30 USPQ2d 1862 (Fed. Cir. 1994)
  2138.04

  Bosy, In re, 360 F.2d 972, 149 USPQ 789 (CCPA 1966)  
  2165.01

  Bourne v. Jones, 98 USPQ 206 (S.D. Fla. 1951)  . . 
  2133.03(e)(7)

  Bowen, In re, 492 F.2d 859, 181 USPQ 48 (CCPA 1974)  
  2164.04

  Bowers, In re, 359 F2d 886, 149 USPQ 57 (CCPA 1966)  
  706.02(l) 804

  Bowser Inc. v. United States, 388 F.2d 346, 156 USPQ 406 (Ct.
  Cl. 1967)  . .  2141

  Bowyer, Ex parte, 42 USPQ 526, 1939 C.D. 5, 505 O.G. 759 (Comm'r
  Pat. 1939)  . . 
  715.07(b)

  Boylan, In re, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968)  804

  Braat, In re, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 1991)  
  804

  Brader v. Schaeffer, 193 USPQ 627 (Bd. Pat. Inter. 1976)  
  2137.01

  Bradley and Franklin, In re, 600 F.2d 807, 202 USPQ 480 (CCPA
  1979)  . .  2106.02

  Braithwaite, In re, 379 F.2d 594, 154 USPQ 29 (CCPA 1967)  
  804  804.02

  . .  806.04(i)
  806.04(j)

  Brana et al., In re, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir.
  1995)  . .  2107
  2107.01

  . .  2107.02
  2164.01(c)

  . .  2164.02
  2164.04 2164.07

  Brandstadter, In re, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973)  
  716.01(c)

  . .  716.09
  2106

  . .  2106.02
  2164.05

  Brecker v. Jennings, 204 USPQ 663 (Bd. Pat. Int. 1978)  
  2371

  Brenner v. Manson, 383 U.S. 519, 148 USPQ 689 (1966)  
  2106

  . .  2107
  2107.01

  Brenner v. State of Israel, 862 O.G. 661, 158 USPQ 584 (D.C.
  Cir. 1968)  . .  201.14

  . .  201.16
  1402

  Breslow, In re, 616 F.2d 516, 205 USPQ 221 (CCPA 1980)  
  2164.01(b)

  Breuer v. DeMarinis, 558 F.2d 22, 194 USPQ 308 (CCPA 1977)  
  2317  2324

  Brian et al., Ex parte, 118 USPQ 242 (Bd. App. 1958)  
  2173.05(t)

  Bridgeford, In re, 357 F.2d 679, 149 USPQ 55 (CCPA 1966)  
  806.05(f)

  Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555,
  24 USPQ2d 1401 (Fed. Cir. 1992)  . .  2107

  Broos v. Barton, 142 F.2d 690, 61 USPQ 447 (CCPA 1944)  
  2138.06

  Brouwer, In re, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996)  
  706.02(n)

  . .  2116.01
  2144.08

  Brower, In re, 433 F.2d 813, 167 USPQ 684 (CCPA 1970)  
  2172

  Brown, In re, 459 F.2d 531, 173 USPQ 685 (CCPA 1972)  
  2112  2113

  Brown, In re, 450 F.2d 531, 173 USPQ 685 (CCPA 1972)  
  2183

  Brown, In re, 477 F.2d 946, 177 USPQ 691 (CCPA 1973)  
  2106.02

  Brown v. Braddick, 595 F.2d 961, 203 USPQ 95 (5th Cir. 1979)  
  2300.02

  Brummer, Ex parte, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989)
  2173.05(a)

  Buchner, In re, 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991)
  716.09  2107.01

  . .  2164.01
  2164.05

  . . 
  2164.05(a) 2164.08

  Budnick, In re, 537 F.2d 535, 190 USPQ 422 (CCPA 1976)  
  2106.02

  Buildex v. Kason Indus, 849 F.2d 1461, 7 USPQ2d 1325 (Fed. Cir.
  1988)  . . 
  2133.03(b)

  Bullier, Ex parte, 1899 C.D. 155 (Comm'r Pat. 1899)  
  709.01

  Bundy, In re, 642 F.2d 430, 209 USPQ 48 (CCPA 1981)  

  2107.01  2164.04

  . . 
  2164.06(b) 2164.07

  . .  2165.04

  Burckel, In re, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)  
  716.02(e)

  Burhans, In re, 154 F.2d 690, 69 USPQ 330 (CCPA 1946)  
  2144.04

  Burlington Industries Inc. v. Quigg, 822 F.2d 1581, 3 USPQ2d
  1436 (Fed. Cir. 1987)  . .  716.04

  Burr. v. Duryee, 68 U.S. (1 Wall.) 531 (1863)  . .  2106

  Burroughs Wellcome Co. v. Barr Labs. Inc., 32 USPQ2d 1915 (Fed.
  Cir. 1994)  . .  2138.04

  Burrowes, Ex parte, 1904 C.D. 155, 110 O.G. 599 (Comm'r Pat.
  1904)  . .  1214.01

  Burson v. Carmichael, 731 F.2d 849, 221 USPQ 664 (Fed. Cir.
  1984)  . .  2337

  Busse, Ex parte, 1 USPQ2d 1908 (Bd. Pat. App. & Inter. 1986)  
  2107.02

  Butera, In re, 1 F.3d 1252, 28 USPQ2d 1399 (Fed. Cir. 1993)  
  2141.01(a)

  Buting, In re, 418 F.2d 540, 163 USPQ 689 (CCPA 1969)  
  2107.02

  C, Ex parte, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992)  
  2133.03(a)

  Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015,
  226 USPQ 881 (Fed. Cir. 1985)  . . 
  716.03(b)  716.06

  Caldwell, Ex parte, 1906 Comm'r Dec. 58 (Comm'r Pat. 1906)  
  2173.05(a)

  California Research Corp. v. Ladd, 356 F.2d 813,

  148 USPQ 404 (D.C. Cir. 1966)  . .  1216.02

  Campbell, In re, 212 F.2d 606, 101 USPQ 406 (CCPA 1954)  
  1504.20

  Card and Card, Ex parte, 1904 C.D. 383 (Comm'r Pat. 1904)  
  2309.01

  Carella v. Starlight Archery, 804 F.2d 135, 231 USPQ 644 (Fed.
  Cir. 1986)  . .  2128
  2132

  Carl Zeiss Stiftung v. Renishaw PLC, 945 F.2d 1173, 20 USPQ2d
  1094 (Fed. Cir. 1991)  . .  2107
  2107.01

  Carletti et al, In re, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964)

  1504

  Carlson, In re, 79 F.2d 900, 27 USPQ 400 (CCPA 1935)  
  715.04

  Carlson, In re, 983 F.2d 1032, 25 USPQ2d 1207 (Fed. Cir. 1992)
  2126

  Carman Indus. Inc. v. Wahl et al., 724 F.2d 932, 220 USPQ 481
  (Fed. Cir. 1983)  . .  804
  1504.06

  Carreira, In re, 532 F.2d 1356, 189 USPQ 461 (CCPA 1976)  
  716.09  2136.05

  Carroll, In re, 601 F.2d 1184, 202 USPQ 571 (CCPA 1979)  
  716.01(c)

  Carter, In re, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982)  
  1504

  Carter - Wallace, Inc. v. Riverton Laboratories, Inc., 433 F.2d
  1034, 167 USPQ 656 (2d Cir. 1970)  . .  2165.01

  Case v. CPC Int'l Inc., 730 F.2d 745, 221 USPQ 196 (Fed. Cir.
  1984) cert. denied 469 U.S. 872 (1984)  . .  2309.01

  Casey, In re, 370 F.2d 576, 152 USPQ 235 (CCPA 1967)  
  2111.02  2115

  Cataphote Corp. v. Desoto Chem. Coatings, 143 USPQ 292 (N.D.
  Cal. 1964), aff'd, 148 USPQ 229 (9th Cir.); mod. on other grounds
  149 USPQ 159 (9th Cir.), cert. denied, 385 U.S. 832 (1966)  
  2133.03(e)(1)

  Caterpillar Inc. v. Detroit Diesel Corp., 41 USPQ2d 1876 (N.D.
  Ind. 1996)  . .  2181

  Caterpillar Tractor Co. v. Commissioner of Patents and
  Trademarks, 231 USPQ 590 (E.D. Va. 1986)  . .  1850

  Cavallito, In re, 282 F.2d 363, 127 USPQ 206 (CCPA 1960)  
  2164.07

  Cavallito, In re, 306 F.2d 505, 134 USPQ 370 (CCPA 1962)  
  2164.07

  Cavanagh, In re, 436 F.2d 491, 168 USPQ 466 (CCPA 1971)  
  716.04

  Caveney, In re, 761 F.2d 671, 226 USPQ 1 (Fed. Cir. 1985)  
  2133.03(b)

  Certain Ceramic Tile Setters, In re, No. 337 - TA - 41, BNA/PTJC
  385: A - 21 (Int'l Trade Comm'n. 1978)  . . 
  1442.05(b)

  Certain High - Voltage Circuit Interrupters and Components
  Thereof, In re, 204 USPQ 50 (Int'l Trade Comm'n. 1979)  
  1442.05(a)

  Certain Limited - Charge Cell Culture Microcarriers, 221 USPQ
  1165 (Int'l Trade Comm'n 1983), aff'd. sud nom  . .  2164.01

  Chan v. Akiba v. Clayton, 189 USPQ 621 (Comm'r Pat. 1975)  

  2317

  Chandler, In re, 254 F.2d 396, 117 USPQ 361 (CCPA 1958)  
  2173.05(n)

  Chandler, In re, 319 F.2d 211, 138 USPQ 138 (CCPA 1963)  
  2173.05(n)

  Chandler v. Mock, 150 F.2d 563, 66 USPQ 209 (CCPA 1945)  
  2371

  Chapman, In re, 357 F.2d 418, 148 USPQ 711 (CCPA 1966)  
  716.02(e)

  Chemcast Corp. v. Acro Indus. Corp., 913 F.2d 923, 16 USPQ2d
  1033 (Fed. Cir. 1990)  . .  2106.01
  2107

  . .  2165.03
  2411.01

  Chemithon Corp. v. Procter & Gamble Co., 159 USPQ 139 (D. Md.
  1968) affd. 165 USPQ 678 (4th Cir. 1970)  . . 
  2133.03(a)

  Chevenard, In re, 139 F.2d 71, 60 USPQ 239 (CCPA 1943)  
  2144.03

  Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289
  (Comm'r Pats. 1978)  . .  513

  Chicago Rawhide, Ex parte, 223 USPQ 351 (Bd. Pat. App. & Inter.
  1984)  . .  2144.04
  2242

  Chicopee Mfg. Corp. v. Columbus Fiber Mills Co., 118 USPQ 53
  (M.D. Ga. 1958)  . . 
  2133.03(e)(1)

  Chiddix, In re, 209 USPQ 78 (Comm'r Pat. 1980)  .  1206

  Chillas v. Weisberg, 1928 C.D. 24 (Comm'r Pat. 1928)  
  2302

  Chilowski, In re, 229 F.2d 457, 108 USPQ 321 (CCPA 1956)  
  2107  2107.01

  . .  2107.02
  2164.02

  . .  2164.07

  Chilowsky, In re, 306 F.2d 908, 134 USPQ 515 (CCPA 1962)  
  716.01(c)

  Choat v. Rome Indus. Inc. et al., 462 F Supp. 728, 203 USPQ 549
  (N.D. Ga. 1979)  . .  1442.05

  . . 
  1442.05(b)

  Chore - Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774,
  218 USPQ 673 (Fed. Cir. 1983)  . .  2141.03

  Christensen, In re, 330 F.2d 652, 141 USPQ 295 (CCPA 1964)  

  804.03

  Christie v. Seybold, 1893 C.D. 515, 64 O.G. 1650 (6th Cir. 1893)
  715.07(a)

  Chromalloy American Corp. v. Alloy Surfaces Co., 339 F.Supp 859,
  173 USPQ 295 (D. Del. 1972)  . .  201.11

  . .  2004 2012

  . .  2016
  2133.03(e)(1)

  Chu, In re, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995)  
  201.11

  . .  716.02(f)
  2144.08

  Chupp, In re, 816 F.2d 643, 2 USPQ2d 1437 (Fed. Cir. 1987)  
  716.01(d)

  . .  716.02
  2144.08

  Ciric v. Flanigen, 511 F.2d 1182, 185 USPQ 103 (CCPA 1975)  
  2138.05

  Citron, In re, 325 F.2d 248, 139 USPQ 516 (CCPA 1963)  
  2107  2107.01

  . .  2107.02

  City of Elizabeth v. American Nicholson Paving Co., 97 U.S. 126
  (1878)  . . 
  2133.03(e)(4)

  . . 
  2133.03(e)(5)

  Clamp, In re, 151 USPQ 423 (Comm'r Pat. 1966)  . .  201.13

  Clapp, Ex parte, 227 USPQ 972 (Bd. Pat. App & Inter. 1985)  
  706.02(j)  2142

  . .  2144

  Clark, Ex parte, 174 USPQ 40 (Bd. App. 1971)  . . 
  2173.05(o)

  Clark, In re, 522 F.2d 623, 187 USPQ 209 (CCPA 1975)  
  2012  2012.01

  . .  2016

  Clark, In re, 457 F.2d 1004, 173 USPQ 359 (CCPA 1972)  
  715.05  2308.01

  Clarke, In re, 356 F.2d 987, 148 USPQ 665 (CCPA 1966)  
  715.03

  Clay, In re, 966 F.2d 656, 23 USPQ2d 1058 (Fed. Cir. 1992)  
  2141.01(a)  2144.08

  Clemens, In re, 622 F.2d 1029, 206 USPQ 289 (CCPA 1980)  

  716.02(d)  2144.08

  Clifford, Ex parte, 49 USPQ 152 (Bd. App. 1940)  .  901.02

  Clinical Products Ltd. v. Brenner, 255 F.Supp. 131, 149 USPQ 475
  (D.D.C. 1966)  . . 
  706.03(d)  2173.05(q)

  Cloud v. Standard Packaging Corp., 153 USPQ 317 (7th Cir. 1967)
  2133.03(e)(1)

  Coca - Cola Co. v. Gemini Rising Inc., 175 USPQ 56 (E.D.N.Y.
  1972)  . .  1512

  Cofer, In re, 354 F.2d 664, 148 USPQ 268 (CCPA 1966)  
  2144.04

  Cogar v. Schuyler, 173 USPQ 389 (D.C. Cir. 1972)  
  409.03(i)

  Cohn, In re, 438 F.2d 984, 169 USPQ 95 (CCPA 1971)  2173.03

  Colbert v. Lofdahl, 21 USPQ2d 1068 (Bd. Pat. App. & Inter. 1991)
  2138.02

  Cole, In re, 326 F.2d 769, 140 USPQ 230 (CCPA 1964)  
  2106.02

  Cole v. Kimberly - Clark Corp., 102 F.3d 524, 41 USPQ2d 1001
  (Fed. Cir. 1996)  . .  2181

  Coleman v. Dines, 754 F.2d 353, 224 USPQ 857 (Fed. Cir. 1985)
  2138.04

  Colianni, In re, 561 F.2d 220, 195 USPQ 150 (CCPA 1977)  
  2164.06  2164.06(b)

  Collier, In re, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968)  
  2173.05(l)

  Comstock and Gilmer, In re, 481 F.2d 905, 178 USPQ 616 (CCPA
  1973)  . .  2106.02

  Comstock, Ex parte, 1923 C.D. 82, 317 O.G. 4 (Comm'r Pat. 1923)
  1214.01

  Comstock v. Kroeked, 200 USPQ 548 (Comm'r Pat. 1978)  
  2337

  Consolidated Aluminum Corp. v. Foseco Inc., 910 F.2d 804, 15
  USPQ2d 1481 (Fed. Cir. 1990)  . .  2165

  Consolidated Fruit Jar Co. v. Wright, 94 U.S. 92 (1876)  
  2133.03(b)

  Constant, In re, 827 F.2d 728, 3 USPQ2d 1479, (Fed. Cir. 1987)
  cert. denied, 484 U.S. 894 (1987)  . .  1444

  Constant v. Advanced Micro - Devices, Inc., 848 F.2d 1560, 7
  USPQ2d 1057 (Fed. Cir.)  . .  2128.02
  2145

  Continental Can Co., Inc. et al. v. Schuyler, 326 F.Supp. 283,
  168 USPQ 625 (D.D.C. 1970)  . . 
  201.06(a)

  . .  201.11
  1216.01

  Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 20
  USPQ2d 1746 (Fed. Cir. 1991)  . .  2131.01

  Cook, In re, 439 F.2d 730, 169 USPQ 298 (CCPA 1971)  
  2164.03  2164.08(b)

  Cook and Merigold, In re, 439 F.2d 730, 169 USPQ 298 (CCPA 1971)
  2164.03

  . . 
  2164.08(b)

  Cooper et al., In re, 230 USPQ 638 (Dep. Assist. Comm'r Pat.
  1986)  . .  201.03

  Copenhaver, Ex parte, 109 USPQ 118 (Bd. App. 1955)  
  2173.05(a)

  Corba, In re, 212 USPQ 825 (Comm'r Pat. 1981)  . .  1504.20

  Corbett v. Chisholm, 568 F.2d 759, 196 USPQ 337 (CCPA 1977)  
  2307.02

  Cordova, Ex parte, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989)
  2173.05(h)

  Corkill, In re, 711 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985)
  716.02  2107.01

  Cormany, In re, 476 F.2d 998, 177 USPQ 450 (CCPA 1973)  
  2172

  Corneil, In re, 347 F.2d 563, 145 USPQ 702 (CCPA 1965)  
  2124

  Corning Glass Works v. Schuyler, 169 USPQ 193 (D.C. Cir. 1971)
  aff'd 175 USPQ 516 (D.C. Cir. 1975)  . .  2004

  Cornwall, In re, 230 F.2d 457, 109 USPQ 57 (CCPA 1956)  
  1504.03

  Corona v. Dovan, 273 U.S. 692, 1928 CD 252 (1928)  2138.05

  Correge v. Murphy, 705 F.2d 1326, 217 USPQ 753 (Fed. Cir. 1983)
  2138.03  2332

  Costello, In re, 717 F.2d 1346, 219 USPQ 389 (Fed. Cir. 1983)
  716.09  2136.05

  . .  2137 2138

  . .  2138.04
  2138.05

  Crockett, In re, 279 F.2d 274, 126 USPQ 186 (CCPA 1960)  
  2144.06

  Cronyn, In re, 890 F.2d 1158, 13 USPQ2d 1070 (Fed. Cir.1989)  
  2128.01

  Crosby, In re, 157 F.2d 198, 71 USPQ 73, 1947 C.D. 35, 595 O.G.

  5 (CCPA 1946)  . .  716.07

  Cross v. Iizuka, 753 F.2d 1040, 224 USPQ 739 (Fed. Cir. 1985)
  2107  2107.02

  . .  2164.02

  Crossman, In re, 187 USPQ 367 (PTO Solicitor 1975)  103

  C.T.S. Corp. v. Electro Mat'ls, 202 USPQ 22 (S.D. N.Y. 1979)  
  2133.03(b)

  C.T.S. Corp. v. Piher Int'l Corp., 201 USPQ 649 (7th Cir. 1979)
  2133.03(d)

  Cutter Co. v. Metropolitan Elec. Mfg. Co., 275 F. 158 (2d Cir.
  1921)  . .  603.01

  Dailey, In re, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)  
  2144.04

  Dale Electronics Inc. v. R.C.L. Electronics, 488 F.2d 382, 180
  USPQ 225 (1st Cir. 1973)  . . 
  608.01(h)  2004

  Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 203
  USPQ 161 (2nd Cir. 1979)  . .  1512

  Dana Corp. v. IPC Ltd. Partnership, 860 F.2d 415, 8 USPQ2d 1692
  (Fed. Cir. 1988)  . .  2165.04

  Danly, In re, 263 F.2d 844, 120 USPQ 528 (CCPA 1959)  
  2114

  Dann v. Johnston, 425 U.S. 219, 189 USPQ 257 (1976)  
  716.01(a)

  Dart Indus. v. E.I. du Pont de Nemours & Co., 179 USPQ 392 (7th
  Cir. 1973)  . .  2133.03

  . . 
  2133.03(c)

  Data Line Corp. v. Micro Technologies, Inc., 813 F.2d 1196, 1
  USPQ2d 2052 (Fed. Cir. 1987)  . .  2184

  Davis, Ex parte, 80 USPQ 448 (Bd. App. 1948)  . .  2111.03

  Davis Harvester Co., Inc. v. Long Mfg. Co., 149 USPQ 420 (E.D.
  N.C. 1966)  . .  2134

  Davis v. Carrier, 81 F.2d 250, 28 USPQ 227 (CCPA 1936)  
  2137.01

  DeBaun, In re, 687 F.2d 459, 214 USPQ 933 (CCPA 1982)  
  715.01(a)  716.09

  . .  2136.05
  2137.01

  De Blauwe, In re, 736 F.2d 699, 222 USPQ 191 (Fed. Cir. 1984)
  716.01(c)  2144.08

  DeCastelet, In re, 562 F.2d 1236, 195 USPQ 439 (CCPA 1977)  
  2106

  Deckler, In re, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992)
  715  2138.01

  Deep Welding, Inc. v. Sciaky Bros., 163 USPQ 144 (7th Cir. 1969)
  2128.01

  Defano, In re, 392 F.2d 280, 157 USPQ 192 (CCPA 1968)  
  715.02  715.03

  DeGeorge v. Bernier, 768 F.2d 1318, 226 USPQ 758 (Fed. Cir.
  1985)  . .  2106

  De Graffenried v. U.S., 16 USPQ2d 1321 (Ct. Cl. 1990)  
  2133.02  2181

  De Lajarte, In re, 337 F.2d 870, 143 USPQ 256 (CCPA 1964)  
  2111.03

  Delavoye, Ex parte, 1906 C.D. 320, 124 O.G. 626 (Comm'r Pat.
  1906)  . .  604.02

  Delgar Inc. v. Schuyler, 172 USPQ 513 (D.D.C. 1970)  
  711.03(c)

  Demaco Corp. v. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7
  USPQ2d 1222 (Fed. Cir. 1988) cert. denied, 488 U.S. 956 (1988)
  716.01(b)

  . .  716.01(d)
  716.03

  . .  716.03(a)
  716.03(b)

  Deminski, In re, 796 F.2d 436, 230 USPQ 313 (Fed. Cir. 1986)  
  2141.01(a)

  DeSeversky v. Brenner, 424 F.2d 857, 164 USPQ 495 (D.C.. Cir.
  1970)  . .  1216.02

  De Solms v. Schoenwald, 15 USPQ2d 1507 (Bd. Pat. App. & Inter.
  1990)  . .  2138.05
  2138.06

  DesOrmeaux, Ex parte, 25 USPQ2d 2040 (Bd. Pat. App. & Inter.
  1992)  . .  2136.04
  2137.01

  Deuel, In re, 51 F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995)  
  2144.08  2144.09

  Diamond v. Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980)  
  2106  2107

  Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981)  2106
  2107

  Dickinson, In re, 299 F.2d 954, 133 USPQ 39 (CCPA 1962)  
  2344

  Digital Magnetic Sys., Inc. v. Ansley, 213 USPQ 290 (W.D. Okla.
  1982)  . .  2286

  DiLeone, In re, 436 F.2d 1404 168 USPQ 592 (CCPA 1971)  

  2106

  Dillon, In re, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) (in
  banc), cert. denied, 500 U.S. 904 (1991)  . .  2144
  2144.08

  . .  2144.09
  2145

  Dilnot, In re, 319 F.2d 188, 138 USPQ 248 (CCPA 1963)  
  2144.04

  D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 225 USPQ 236 (Fed.
  Cir. 1985)  . .  2184

  Doll, In re, 419 F.2d 925, 164 USPQ 218 (CCPA 1970)  
  1412.03

  Donaldson, In re, 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994)
  2106  2111.01  2114

  . .  2181 2182

  Donaldson, Ex parte, 26 USPQ2d 1250 (Bd. Pat. App. & Inter.
  1992)  . .  1504.01

  Donnell, Ex parte, 1923 C.D. 54, 315 O.G. 398 (Comm'r Pat. 1923)
  806.05(b)  820.01

  Donohue, In re, 550 F.2d 1269, 193 USPQ 136 (CCPA 1977)  
  2106  2164.06

  . . 
  2164.06(a)

  Donohue, In re, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985)  
  2121.01

  . .  2121.02
  2131.01

  Donovan, Ex parte, 1890 C.D. 109, 52 O.G. 309 (Comm'r Pat. 1890)
  715.07

  Dotter, Ex parte, 12 USPQ 382 (Bd. App. 1931)  . . 
  2173.05(h)

  Dow Chemical Co., In re, 837 F.2d 469, 5 USPQ2d 1529 (Fed. Cir.
  1988)  . .  716.04
  2144.08

  Dow Chemical Co. v. American Cyanamid Co., 816 F.2d 617, 2
  USPQ2d 1350 (Fed. Cir. 1987)  . .  716.06
  2144.08

  Doyle, In re, 482 F.2d 1385, 179 USPQ 227 (CCPA 1973)  
  1445  2106.01

  Dresser Indus. Inc. v. Ford Motor Co., et al., 211 USPQ 1114
  (N.D. Texas, 1981)  . .  2286

  Dreyfus, 137 USPQ 475 (Comm'r Pat. 1935)  . .  103

  Driscoll v. Cebalo, 5 USPQ2d 1477 (Bd. Pat. Inter. 1982)  
  2137.01

  Druey, In re, 319 F.2d 237, 138 USPQ 39 (CCPA 1963)  
  2144.08

  DSL Dynamic Sciences Ltd. v. Union Switch & Signal, 928 F.2d
  1122, 18 USPQ2d 1152 (Fed. Cir. 1991)  . .  2138.05

  Dubost v. U.S. Patent and Trademark Office, 777 F.2d 1561, 227
  USPQ 977 (Fed. Cir. 1985)  . .  201.13

  Dulberg, In re, 289 F.2d 522, 129 USPQ 348 (CCPA 1961)  
  2144.04

  Dunki, Ex parte, 153 USPQ 678 (Bd. App. 1967)  . . 
  706.03(d)

  . . 
  2173.05(q)

  Dunlop Holdings v. Ram Golf Corp., 188 USPQ 481 (7th Cir. 1975)
  2133.03(a)

  Dunne, Ex parte, 20 USPQ2d 1479 (Bd. Pat. App. & Inter. 1991)
  2134

  Dunn, In re, 349 F.2d 433, 146 USPQ 479 (CCPA 1965)  
  804.02

  Dunn v. Ragin, 50 USPQ 472 (Bd. Pat. Inter. 1941)  2138.02

  . .  2138.04
  2138.05

  Dupont v. Phillips, 849 F.2d 1430, 7 USPQ2d 1129, (Fed. Cir.
  1988)  . .  2138
  2217  2258

  Durden, In re, 763 F.2d 1406, 226 USPQ 359 (Fed Cir. 1985)  
  2116.01

  Dybel, In re, 524 F.2d 1393, 187 USPQ 593 (CCPA 1975)  
  2133.03(b)

  . . 
  2133.03(c)

  . . 
  2133.03(e)(3)

  . . 
  2133.03(e)(4)

  East Chicago Machine Tool Corp. v. Stone Container Corp., 181
  USPQ 744 (N.D. Ill. 1974) modified 185 USPQ 210 (N.D. Ill. 1974)
  2012

  Eastwood, Ex parte, 163 USPQ 316 (Bd. App. 1968)  
  2173.05(a)

  Ebata, Ex parte, 19 USPQ2d 1952 (Bd. Pat. App. & Inter. 1991)
  2136.03

  E.C.H. Will v. Freundlich - Gomez Machinery Corp., 201 USPQ 476
  (S.D. N.Y. 1978)  . . 
  1442.05(b)

  Eckel, In re, 393 F.2d 848, 157 USPQ 415 (CCPA 1968)  
  804.02

  Edge, In re, 359 F.2d 896, 149 USPQ 556 (CCPA 1966)  
  2144.04

  Egbers, In re, 6 USPQ2d 1869 (Comm'r Pat. 1988)  .  2268

  Egbert v. Lippmann, 104 U.S. 333 (1881)  . . 
  2133.03(a)

  . . 
  2133.03(e)(4)

  Eggan, Ex parte, 1911 C.D. 213, 172 O.G. 1091 (Comm'r Pat. 1911)
  403.01  403.02

  Ehrreich, In re, 590 F.2d 902, 200 USPQ 504 (CCPA 1979)  
  2129

  . .  2172
  2411.01

  E.I. du Pont De Nemours and Co. v. Berkley and Co., 620 F.2d
  1247, 205 USPQ 1 (8th Cir. 1980)  . .  2107

  Eickmeyer, In re, 602 F.2d 974, 202 USPQ 655 (CCPA 1979)  
  715.05  715.07

  Ekenstam, In re, 256 F.2d 321, 118 USPQ 349, (CCPA 1958)  
  901.05

  . .  901.05(b)
  2126

  . .  2126.01
  2132

  Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 41 USPQ
  155 (1938)  . . 
  2133.03(b)

  Eli Lilly, In re, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990)
  716.01(d)  716.02(b)

  . .  716.02(c)
  2142

  . .  2144
  2144.08 2145

  Elliott, Ex parte, 1904 C.D.103, 109 O.G. 1337 (Comm'r Pat.
  1904)  . . 
  608.02(g)

  Elliott v. Barker, 481 F.2d 1337, 179 USPQ 100 (CCPA 1973)  
  2317

  Ellis, In re, 476 F.2d 1370, 177 USPQ 526 (CCPA 1973)  
  2141.01(a)

  Elmwood Liquid Prod. Inc. v. Singleton Packing Corp., 170 USPQ
  398 (M.D. Fla. 1970)  . .  2004

  Elrich, Ex parte, 3 USPQ2d 1009 (Bd. Pat. App. & Inter. 1987)
  2136.03

  Eltgroth, In re, 419 F.2d 918, 164 USPQ 221 (CCPA 1970)  
  2107

  Emerson v. Beach, 215 F.2d 290, 103 USPQ 45 (CCPA 1954)  
  2307.02

  Emery v. Ronden, 188 USPQ 264 (Bd. Pat. Inter. 1974)  
  2138.06

  Engelhardt v. Judd, 369 F.2d 408, 151 USPQ 732 (CCPA 1966)  
  2138.03  2138.05

  Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 218
  USPQ 865 (Fed. Cir. 1983)  . .  716.04

  . .  2141.03

  Envirotech Corp. v. Westech Eng'g Inc., 904 F.2d 1571, 15 USPQ2d
  1230 (Fed. Cir. 1990)  . . 
  2133.03(b)

  Epstein, In re, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994)
  716.07  2133.03(b)

  Erlich, Ex parte, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986)
  2143.02  2173.05(q)

  Erlich, Ex parte, 22 USPQ 1463 (Bd. Pat. App. & Inter. 1992)  
  2141.03

  Ernsthausen v. Nakayama, 1 USPQ2d 1539 (Bd. Pat. App. & Inter.
  1985)  . .  2165.01

  Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988)
  2242  2286

  Etter, In re, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985)  
  2242  2258  2279

  Evans v. Eaton, 20 U.S. (7 Wheat.) 356 (1822)  . .  2163

  EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 225 USPQ 20
  (Fed. Cir. 1985)  . . 
  716.03(b)

  Eynde, In re, 480 F.2d 470, 178 USPQ 470 (CCPA 1973)  
  2144.03

  Facius, In re, 408 F2d 1396, 161 USPQ 294 (CCPA 1969)  
  715.01(a)  715.01(c)

  . .  715.01(c)
  2132.01

  . .  2136.04
  2136.05

  . .  2137
  2137.01

  Fairchild and Co. Inc. v. Richmond, F and P.R. Co., 516 F.Supp.
  1305 (D.D.C. 1981)  . .  2390

  Farrenkopf, In re, 713 F.2d 714, 219 USPQ 1 (Fed. Cir. 1983)  
  2145

  Fas - Line Sales & Rentals Inc. v. E.Z. Lay Pipe Corp., 203 USPQ
  497 (W.D. Okla. 1979)  . . 
  1442.05(a)

  Fassett, 1877 C.D. 317, 11 O.G. 420 (Comm'r Pat. 1871)  
  1410.01  1420

  Faulkner v. Baldwin Piano and Organ Co., 195 USPQ 410 (7th Cir.
  1977)  . .  2004

  Feldman v. Aunstrup, 517 F.2d 1351, 186 USPQ 108 (CCPA 1975),
  cert. denied, 424 U.S. 912 (1976)  . .  2406.01

  Ferag AG v. Quipp Inc., 45 F.3d 1562, 33 USPQ2d 1512 (Fed. Cir.
  1995)  . . 
  2133.03(b)

  Ferens, In re, 417 F.2d 1072, 163 USPQ 609 (CCPA 1969)  
  2107

  Ferguson, Ex parte, 117 USPQ 229 (Bd. App. 1957) 2107.01

  . .  2107.02
  2164.07

  Fessmann, In re, 489 F.2d 742, 180 USPQ 324 (CCPA 1974)  
  2113

  Field v. Knowles, 183 F.2d 593, 86 USPQ 373 (CCPA 1950)  
  2133.03(c)

  Fielder, In re, 471 F.2d 640, 176 USPQ 300 (CCPA 1973)  
  716.03(b)

  Fielder and Underwood, In re, 471 F.2d 640, 176 USPQ 300 (CCPA
  1973)  . . 
  716.01(a)

  Fields v Conover, 443 F.2d 1386, 170 USPQ 276 (CCPA 1970)  
  2163.03

  Fiers v. Revel, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993)
  2137.01  2138.04

  Fine, Ex parte, 217 USPQ 76 (Bd. App. 1981)  . .  2307.02

  Fine, In re, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988)  
  2143.01

  . .  2143.03
  2144

  Finley, In re, 174 F.2d 130, 81 USPQ 383 (CCPA 1949)  
  716.02(e)

  Fischer, In re, 125 F.2d 725, 52 USPQ 473 (CCPA 1942)  
  2144.03

  Fischer & Porter Co. v. Corning Glass Works, 61 F.R.D. 321, 181
  USPQ 329 (E.D. Pa. 1974)  . .  1701.01

  Fisher, In re, 427 F.2d 833, 166 USPQ 18 (CCPA 1970)  
  2164.01(b)

  . .  2164.03
  2164.08

  . . 
  2173.05(a) 2173.05(t)

  Fisher Controls Co., v. Control Components, Inc., 196 USPQ 817
  (S.D. Iowa 1977)  . . 
  1442.05(a)

  Fitzgerald, In re, 619 F.2d 67, 205 USPQ 594 (CCPA 1980)  
  2122  2183

  Fitzgerald v. Arbib, 268 F.2d 763, 122 USPQ 530 (CCPA 1959)  
  2138.05  2138.06

  Flick Reedy Corp. v. Hydro Line Manfg. Co., 351 F.2d 546, 146
  USPQ 694(7th Cir. 1965) cert. denied, 383 U.S. 958 (1966)  
  608.01(h)

  Flint, In re, 411 F.2d 1353, 162 USPQ 228 (CCPA 1969)  
  2173.05(n)

  Floyd, In re, Appeal No. 94 - 1071, slip op. at page 4 (Fed.
  Cir. July 20, 1994)  . .  2144.07

  Folkers, In re, 344 F.2d 970, 145 USPQ 390 (CCPA 1965)  
  2107.01

  Fonar Corp. v. General Electric Co., 107 F.3d 1543, 41 USPQ2d
  1801 (Fed. Cir. 1997)  . .  2106.01

  Fong, In re, 288 F.2d 932, 129 USPQ 264 (CCPA 1961)  
  715.02  715.03

  Fong et al., In re, 378 F.2d 977, 154 USPQ 25 (CCPA 1967)  
  804

  Forman, In re, 463 F.2d 1125, 175 USPQ 12 (CCPA 1972)  
  2106.02

  Fortal Corp. v. Phone - Mate, 825 F.2d 1577, 3 USPQ2d 1771 (Fed.
  Cir. 1987)  . .  2293

  Foster, Ex parte, 1903 C.D. 213, 105 Q.G. 261 (Comm'r Pat. 1903)
  715.04

  Foster, In re, 343 F.2d 980, 145 USPQ 166 (CCPA 1965)  
  2132.01  2133

  . .  2133.02
  2133.03(c)

  Fotland, In re, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985)  
  1403  1412.03

  Fouche, In re, 439 F.2d 1237, 169 USPQ 429 (CCPA 1971)  
  716.02(b)

  . .  2107
  2164.07

  Fout, In re, 675 F.2d 297, 213 USPQ 532 (CCPA 1982)  
  706.02(l)

  . .  2129
  2144.06

  Fox, Ex parte, 128 USPQ 157, 1960 C.D. 28, 761 O.G. 906 (Bd.
  App. 1957)  . . 
  608.04(a)

  Fredericksen, In re, 213 F.2d 547, 102 USPQ 35 (CCPA 1954)  
  2173.05(c)

  Fredkin v. Irasek, 397 F.2d 342, 158 USPQ 280 (CCPA 1968)  
  2138.05

  Freeman, In re, 573 F.2d 1237, 197 USPQ 464 (CCPA 1978)  
  2106  2184

  Freeman, In re, 30 F.3d 1459, 31 USPQ2d 1444 (Fed. Cir. 1994)
  706.03(w)

  Fregeau v. Mossinghoff, 776 F.2d 1034, 227 USPQ 848 (Fed. Cir.
  1985)  . .  2107
  2107.01

  Fressola, Ex parte, 27 USPQ2d 1608 (Bd. Pat. App. & Inter. 1993)
  2173.05(r)

  . . 
  2173.05(s)

  Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995)  
  608.01(m)

  Frey, In re, 182 F.2d 184, 86 USPQ 99 (CCPA 1950)  2307.02

  Fried, In re, 329 F.2d 323, 141 USPQ 27, (CCPA 1964)  
  608.01(p)

  Frilette and Weisz, In re, 412 F.2d 164, 162 USPQ 163 (CCPA
  1969)  . . 
  715.01(b)

  Fritch, In re, 972 F.2d 1260, 23 USPQ2d 1780 (Fed. Cir. 1992)
  2143.01

  Fritsch v. Lin, 21 USPQ2d 1731 (Bd. Pat. App. & Inter. 1991)  
  2137.01  2138.06

  Fuge, In re, 272 F.2d 954, 124 USPQ 105 (CCPA 1959)  
  901.05  2126.02

  Fujishiro et al., Ex parte, 199 USPQ 36 (Bd. App. 1977)  
  901.05  2135.01

  Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 76 USPQ
  280  . .  (1948)

  . .  2105 2106

  Gallo, In re, 231 USPQ 496 (Comm'r Pat. 1986)  . .  103

  Gambro Lundia AB v. Baxter Healthcare Corp., 42 USPQ2d 1378
  (Fed. Cir. 1997)  . .  2137

  Gandy v. Main Belting Co., 143 U.S. 587 (1892)  . 
  2133.03(d)

  Garbo, In re, 287 F.2d 192, 129 USPQ 72 (CCPA 1961)  
  1504

  Gardner, In re, 475 F.2d 1389, 177 USPQ 396 (CCPA 1973), reh'g
  denied, 480 F.2d 879 (CCPA 1973)  . .  2107
  2107.02

  Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed.
  Cir. 1984)  . .  2144.04

  Garfinkel, In re, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971)  
  715

  Garret Corp. v. U.S., 422 F.2d 874, 164 USPQ 521 (Ct. Cl. 1970)
  2128.01

  Garrett v. Cox, 110 USPQ 52, (CCPA 1956)  . .  1302.04

  Gaubert, In re, 524 F.2d 1222, 187 USPQ 664 (CCPA 1975)  
  2107.02

  Gaubert, In re, 530 F.2d 1402, 189 USPQ 432 (CCPA 1975)  
  2107.02

  Gay, In re, 309 F.2d 708, 135 USPQ 311 (CCPA 1962)  
  608.01(h)  2165.01

  Gazave, In re, 379 F.2d 973, 154 USPQ 92 (CCPA 1967)  
  2164.07  2107

  . .  2107.01
  2107.02

  Gazda, In re, 219 F.2d 449, 104 USPQ 400 (CCPA 1955)  
  2144.04

  Gearon v. United States, 121 F.Supp. 652, 101 USPQ 460 (ct. cl.
  1954), cert. denied, 348 U.S. 942, 104 USPQ 409 (1955)  
  601.01(e)

  Gebauer - Fuelnegg, In re, 121 F.2d 505, 50 USPQ 125 (CCPA 1941)
  608.01(v)

  Geiger, In re, 815 F.2d 686, 2 USPQ2d 1276 (Fed. Cir. 1987)  
  716.02(e)  2144.06

  Geiger et al., In re, 425 F.2d 1276, 165 USPQ 572 (CCPA 1970)
  1504.06

  Gellert v. Wanberg, 495 F.2d 779, 181 USPQ 648 (CCPA 1974)  
  2138.05

  Gelles, Ex parte, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992)
  716.02  716.02(b)

  Gelnovatch, In re, 595 F.2d 32, 201 USPQ 136 (CCPA 1979)  
  2106

  Gemveto Jewelry Co., Inc. v. Lambert Bros. Inc., 542 F. Supp.
  933, 216 USPQ 976 (S.D. N.Y. 1982)  . . 
  2001.06(a)

  . .  2004 2016

  Genentech v. Wellcome Foundation, 29 F.3d 1555, 31 USPQ2d 1161
  (Fed. Cir. 1994)  . .  2164.04

  General Electric v. United States, 206 USPQ 260 (Ct. CI. 1979)
  2133.03(e)(1)

  General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d
  1272, 23 USPQ2d 1839 (Fed. Cir. 1992)  . .  804

  General Motors Corp. v. Bendix Aviation Corp.,

  102 USPQ 58 (N.D. Ind. 1954)  . . 
  2133.03(e)(6)

  General Tire and Rubber Co. v. Watson - Bowman Assoc., Inc., 193
  USPQ 479 (D. Del. 1977)  . . 
  1442.05(b)

  George, Ex parte, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991)
  716.01(c)

  George, In re, 2 USPQ2d 1880 (Bd. Pat. App. & Inter. 1987)  
  2128.01

  Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916
  F.2d 683, 16 USPQ2d 1436 (Fed. Cir. 1990)  . .  804

  Gershon, In re, 372 F.2d 535, 152 USPQ 602 (CCPA 1967)  
  716.02(c)  716.04

  Ghiron, In re, 442 F.2d 985, 169 USPQ 723 (CCPA 1971)  
  2106

  . . 
  2164.01(b) 2164.06

  . . 
  2164.06(a) 2185

  Gibbs, In re, 437 F.2d 486, 168 USPQ 578 (CCPA 1971)  715
  2134

  Gibson, In re, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)  2144.04

  Gilderdale, Ex parte, 1990 Pat. App. LEXIS 25 (Bd. Pat. App. &
  Inter. Appeal no. 89 - 0352)  . .  2136.03

  Gillman v. Stern, 46 USPQ 430 (2d Cir. 1940)  . . 
  2133.03(a)

  Ginos v. Nedelec, 220 USPQ 831 (Bd. Pat. Inter. 1983)  
  2138.05  2138.06

  Glaser v. Strickland, 220 USPQ 446 (Bd. Pat. Inter. 1983)  
  716.09

  Glass, In re, 492 F.2d 1228, 181 USPQ 31 (CCPA 1974)  
  608.01(h)

  . .  2124
  2165.02

  Glavas, In re, 230 F.2d 447, 109 USPQ 50 (CCPA 1956)  
  1504.02  1504.03

  Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 34 USPQ2d 1565 (Fed.
  Cir. 1995)  . .  2107

  Goffe, In re, 542 F.2d 564, 191 USPQ 429 (CCPA 1976)  
  2164.08

  . . 
  2164.08(c)

  Goldman, In re, 205 USPQ 1086 (Comm'r Pat. 1980) 2126.01

  Goldstein, In re, 16 USPQ2d 1963 (Dep. Assist. Comm'r Pat. 1988)
  402.10

  Golota v. Strom, 489 F.2d 1287, 180 USPQ 396 (CCPA 1974)  
  2308.02

  Good, Ex parte, 1911 C.D. 43, 164 O.G. 789 (Comm'r Pat. 1911)
  608.02(d)

  Goodman, In re, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993)
  804  2164.06(b)

  . .  2164.08

  Goodyear Tire & Rubber Co., Ex parte, 230 USPQ 357 (Bd. Pat.
  App. & Inter. 1985)  . . 
  2141.01(a)

  Gordon, In re, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984)  
  2143.01  2144.08

  Gorman, In re, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991)  
  2145

  Gosteli, In re, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989)
  715.03  2131.02

  . .  2136.05
  2163.02

  . .  2163.03
  2163.05

  Gottlieb et al., In re, 51 CCPA 1114, 328 F.2d 1016, 140 USPQ
  665 (CCPA 1964)  . .  2107.01

  Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)  
  2106

  Gould, Ex parte, 231 USPQ 943, (Bd. Pat. App. & Inter. 1986)  
  2242

  Gould v. Control Laser Corp., 705 F.2d 1340, 217 USPQ 985 (Fed.
  Cir. 1983)  . .  2286

  Gould v. Quigg, 822 F.2d 1074, 3 USPQ2d 1302 (Fed. Cir. 1987)
  2164.02

  . . 
  2164.05(a)

  Gould v. Schawlow, 363 F.2d 908, 150 USPQ 634 (CCPA 1966)  
  2138.06

  Gourtoff, Ex parte, 1924 C.D. 153, 329 O.G. 536 (Comm'r Pat.
  1924)  . .  707.13
  710.06

  GPAC, In re, 57 F.3d 1573, 35 USPQ2d 1116 (Fed. Cir. 1995)  
  716.03  2144.08

  Grabiak, In re, 769 F.2d 729, 226 USPQ 871 (Fed. Cir. 1985)  
  2144.08  2144.09

  Graff, In re, 42 USPQ2d 1471 (Fed. Cir. 1997)  . .  1412.02

  Graham et al. v. John Deere, 383 U.S. 1, 148 USPQ 459 (1966)  
  706.02(j)

  . .  716.01(a)
  804

  . .  1504.03
  2106

  . .  2141
  2144.08

  Grall, Ex parte, 202 USPQ 701 (Bd. App. 1978)  . .  2308.02

  Gramme Elec. Co. v. Arnoux and Hochhausen Elec. Co., et al., 17
  Fed. 838, 1883 C.D.418 (S.D. N.Y., 1883)  . .  901.05
  2135.01

  Grasselli, Ex parte, 231 USPQ 393 (Bd. App. 1983)  2143.03
  2173.05(i)

  Grasselli, In re, 713 F.2d 731, 218 USPQ 769 (Fed. Cir. 1983)
  716.02(d)  2112

  . .  2145
  2144.08

  Graver Tank & Mfg. Co. v. Linde Air Products, 339 U.S. 605, 85
  USPQ 328 (1950)  . .  2184
  2186

  Gray, Ex parte, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989)  
  716.01(c)

  . .  716.02(g)

  . .  2113
  2144.04

  Gray, In re, 115 USPQ 80 (Comm'r Pat. 1956)  . . 
  409.03(f)

  Gray, In re 53 F.2d 520, 11 USPQ 225 (CCPA 1931) 2111.03

  Grayson, Ex parte, 51 USPQ 413 (Bd. App. 1941)  . 
  706.03(a)

  Greenberg v. Ethicon Endo - Surgery, Inc., 91 F.3d 1580, 39
  USPQ2d 1783 (Fed. Cir. 1996)  . .  2181

  Greenewalt v. Stanley, 12 USPQ 122 (3d Cir. 1931)  
  2133.03(e)(1)

  Greenfield, In re, 40 F.2d 775, 5 USPQ 474 (CCPA 1930)  
  1214.01

  Greenfield, In re, 571 F.2d 1185, 197 USPQ 227 (CCPA 1978)  
  2144.08

  Greenwood v. Seiko Instruments, 8 USPQ2d 1455 (D.D.C. 1988)  
  2273

  Grier, Ex parte, 1923 C.D. 27, 309 O.G. 223 (Comm'r Pat. 1923)
  820

  Griffith v. Kanamaru, 816 F.2d 624, 2 USPQ2d 1361 (Fed. Cir.
  1987)  . .  2138.06

  Griswold, In re, 365 F.2d 834, 150 USPQ 804 (CCPA 1966)  
  804.02

  Grose, In re, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979)  
  2144.02

  Groz & Sohne v. Quigg, 10 USPQ2d 1787 (D.D. C. 1988)  
  2265  2272

  Grunwell, In re, 609 F.2d 486, 203 USPQ 1055 (CCPA 1979)  
  2107.01

  Gruschwitz et al., Ex parte, 138 USPQ 505, 1963 C.D. 859, 138
  USPQ 505 (Bd. App. 1961)  . .  901.05

  . .  901.05(b)

  Gulack, In re, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983)  
  2106

  Gulliksen v. Halberg, 75 USPQ 252 (Bd. App. 1937)  2128.01

  Gunn, In re, 537 F.2d 1123, 190 USPQ 402 (CCPA 1976)  
  2106  2106.02

  . . 
  2164.05(a) 2164.06

  . . 
  2164.06(a)

  Gunn v. Bosch, 181 USPQ 758 (Bd. Pat. Inter. 1973)  2138.06

  Gunter v. Stream, 573 F.2d 77, 197 USPQ 482 (CCPA 1978)  
  2138.04

  Gurley, In re, 27 F.3d 551, 31 USPQ2d 1130 (Fed. Cir. 1994)  
  2123  2145

  Gustafson, In re, 331 F.2d 905, 141 USPQ 585 (CCPA 1964)  
  2173.05(k)

  Gustafson v. Strange, 227 USPQ 174 (Comm'r Pats. 1985)  513

  Gwinn, Ex parte, 112 USPQ 439 (Bd App. 1955)  . . 
  706.03(a)

  Haas, In re, 580 F.2d 461, 198 USPQ 334 (CCPA 1978)  803

  Hack, In re, 245 F.2d 246, 114 USPQ 161 (CCPA 1957)  
  2112.02

  Hafner, In re, 410 F.2d 1403, 161 USPQ 783 (CCPA 1969)  
  201.11

  Hageman, Ex parte, 179 USPQ 747 (Bd. App. 1971)  .  201.11

  Haines v. Quigg, 673 F.Supp. 314, 5 USPQ2d 1130 (N.D. Ind. 1987)
  2590

  Hale, Ex parte, 49 USPQ 209 (Bd. App. 1941)  . .  715.09

  Hall, Ex parte, 83 USPQ 38 (Bd. App. 1949)  . . 
  2173.05(d)

  Hall, In re, 208 F.2d 370, 100 USPQ 46 (CCPA 1953)  
  2173.05(j)

  Hall, In re, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986)  
  2128

  . .  2128.01
  2128.02

  Hall v. Macneale, 107 U.S. 90 (1882)  . . 
  2133.03(a)

  . . 
  2133.03(e)(4)

  Halleck, In re, 422 F.2d 911, 164 USPQ 647 (CCPA 1970)  
  2173.05(c)

  Halliburton v. Dow Chemical, 182 USPO 178 (N.D. Okla. 1970)  
  2004

  Haller, Ex parte, 103 USPQ 332 (Bd. App. 1953)  .  901.05
  2127

  Hamilton, In re, 882 F.2d 1576, 11 USPQ2d 1890 (Fed. Cir. 1989)
  2133.03(c)

  Hammack, In re, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970)  
  2173.03

  Hammack, In re, 427 F2d 1384, 166 USPQ 209 (CCPA 1970)  
  2173.05(e)

  Hammell, In re, 332 F.2d 796, 141 USPQ 832, (CCPA 1964)  
  709.01

  Hardee, In re, 223 USPQ 1122 (Comm'r Pat. 1984)  .  803.02
  2137.01

  Hargraves, In re, 53 F.2d 900, 11 USPQ 240 (CCPA 1931)  804

  Harnish, In re, 631 F.2d 716, 206 USPQ 300 (CCPA 1980)  
  803.02

  . . 
  2173.05(h)

  Harrington Mfg. v. Co. v. Powell Mfg. Co., 815 F.2d 1478, 2
  USPQ2d 1364 (Fed. Cir. 1986)  . . 
  2133.03(e)(2)

  Harris, Ex parte, 79 USPQ 439 (Comm'r Pat. 1948)  
  707.05(f)

  Harry, In re, 333 F.2d 920, 142 USPQ 164 (CCPA 1964)  
  715.07  2138.06

  Hartley, Ex parte, 1908 C.D. 224 (Comm'r Pat.1908)  720.05

  Hartop, In re, 311 F.2d 249, 135 USPQ 419 (CCPA 1962)  
  2107  2107.02

  Harwood, In re, 390 F.2d 985, 156 USPQ 673 (CCPA 1968)  
  2107

  Harza, In re, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)  
  2144.04

  Hasche, Ex parte, 86 USPQ 481 (Bd. App. 1949)  . . 
  2173.05(d)

  Haskell v. Colebourne, 671 F.2d 1362, 213 USPQ 192 (CCPA 1982)
  2138.06

  Hata, Ex parte, 6 USPQ2d 1652 (Bd Pat. App. & Int. 1987)  
  2404.02

  Hawkins, In re, 179 USPQ 157, 486 F.2d 569 (CCPA 1973)  
  608.01(p)

  Hawkins, In re, 179 USPQ 163, 486 F.2d 579 (CCPA 1973)  
  608.01(p)

  Hawkins, In re, 179 USPQ 167, 486 F.2d 577 (CCPA 1973)  
  608.01(p)

  Hay, In re, 534 F.2d 917, 189 USPQ 790 (CCPA 1976)  
  608.01(h)

  . .  2165.01
  2411.04

  Hazeltine Research Inc. v. Brenner, 147 USPQ 429 (U.S. 1965)  
  2136.02

  Head, Ex parte, 214 USPQ 551 (Bd. App. 1981)  . . 
  2173.05(h)

  Healy, Ex parte, 1898 C.D. 157, 84 Q.G. 1281 (Comm'r Pat. 1898)
  806.04(b)

  Heany, In re, 1911 C.D. 138 (Comm'r Pat. 1911)  .  2012
  2012.01

  Heck, In re, 699 F.2d 1331, 216 USPQ 1038 (CCPA 1982)  
  2123

  Heckman, Ex parte, 135 USPQ 229 (P.O. Super. Exam. 1960)  
  1504.05

  Hedges, In re, 783 F.2d 1038, 228 USPQ 685 (Fed. Cir. 1986)  
  2145

  Hedgewick v. Akers, 497 F.2d 905, 182 USPQ 167 (CCPA 1974)  
  2137

  Hellsund, In re, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973)  
  715

  Hengehold, In re, 440 F.2d 1395 169 USPQ 473, (CCPA 1971)  
  821

  Henrich, Ex parte, 1913 Dec. Comm'r Pat. 139 (Comm'r Pat 1913)
  2590

  Henriksen, In re, 399 F.2d 253, 158 USPQ 224 (CCPA 1968)  
  201.11

  Heritage, In re, 182 F.2d 639, 86 USPQ 160 (CCPA 1950)  
  901.02

  Heritage Pat. No. 2,375,414, Ex parte, decided Jan. 26, 1944  
  819.01

  Herman v. Huddleston, 459 U.S. 375 (1983)  . .  2107.01

  Herrmann et al., In re, 261 F.2d 598, 120 USPQ 182 (CCPA 1949)
  707.07(f)

  Hershberger, Ex parte, 96 USPQ 54 (Bd. App. 1952)  2128.01

  Herschler, In re, 591 F.2d 693, 200 USPQ 711 (CCPA 1979)  
  2106.01

  Herz, In re, 537 F.2d 549, 190 USPQ 461 (CCPA 1976)  
  2111.03

  Hewlett - Packard Co. v. Bausch & Lomb Inc., 882 F.2d 1556 11
  USPQ2d 1750, (Fed. Cir. 1989)  . .  1414.03

  Hewlett - Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 15
  USPQ2d 1525 (Fed. Cir. 1990)  . .  2114

  Hiatt v. Ziegler, 179 USPQ 757 (Bd. Pat. Inter. 1973)  
  2138.04

  Hibberd, Ex parte, 227 USPQ 443 (Bd. Pat. App. & Inter. 1985)
  1206

  . .  1601 2105

  Hidy, In re, 303 F.2d 954, 133 USPQ 650 (CCPA 1962)  
  715.05

  . .  804.02
  2308.01

  Hilborn v. Dann, 546 F.2d 401, 192 USPQ 132 (CCPA 1976)  
  2308.02

  Hildebrand, Ex parte, 15 USPQ2d 1662 (Bd. Pat. App. & Inter.
  1990)  . .  2404.01
  2410.01

  Hill, In re, 161 F.2d 367, 73 USPQ 482 (CCPA 1947)  2111.01
  2173.05(a)

  Hill, In re, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)  
  716.02(d)

  Hilmer, In re, 359 F.2d 859, 149 USPQ 480, (CCPA 1966)  715
  2136.03

  . .  2308.01

  Hilton, Ex parte, 148 USPQ 356 (Bd. App. 1965)  .  2144.04

  Hirschler, Ex parte 110 USPQ 384 (Bd. App. 1952) 2136.01

  Hirao, In re, 535 F.2d 67, 190 USPQ 15 (CCPA 1976)  2111.02
  2141.02

  Hitchings, In re, 342 F.2d 80, 144 USPQ 637 (CCPA 1965)  
  2164.01(c)

  Hiyamizu, Ex parte, 10 USPQ2d 1393 (Bd. Pat. App. & Inter. 1988)
  2141.03

  Hobbs v. United States, 171 USPQ 713 (5th Cir. 1971)  
  2133.03

  . . 
  2133.03(b)

  Hoch, In re, 428 F2d 1341, 166 USPQ 406 (CCPA 1970)  
  706.02(j)  2144.08

  Hodge v. Rostker, 501 F.Supp. 332 (D. D.C. 1980) 1216.02

  Hodosh v. Block Drug Co., Inc., 786 F.2d 1136, 229 USPQ 182
  (Fed. Cir.) cert. denied, 479 U.S. 827 (1986)  . .  2141
  2144.08

  Hoeksema, In re, 399 F.2d 269, 158 USPQ 597 (CCPA 1968)  
  2121.01

  . .  2121.02
  2144.09

  Hoeschele, In re, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)  
  2144.05

  Hoffman, Ex parte, 12 USPQ2d 1061 (Bd. Pat. App. & Inter. 1989)
  2111.03

  Hoffman v. Klaus, 9 USPQ2d 1657 (Bd. Pat. App. & Inter. 1988)
  2107.01

  Hogan, In re, 559 F.2d 595, 194 USPQ 527 (CCPA 1977)  
  2124

  Holladay, In re, 584 F.2d 384, 199 USPQ 516 (CCPA 1978)  
  716.02(e)

  Hollingsworth, In re, 253 F.2d 238, 117 USPQ 182 (CCPA 1958)  
  716.03(a)

  Holmes v. Kelly, 586 F.2d 234, 199 USPQ 778 (CCPA 1978)  
  2371

  Holmwood v. Cherpeck, 2 USPQ2d 1942 (Bd. Pat. App. & Inter.
  1986)  . .  2138.03

  Homan, Ex parte, 1905 C.D. 288 (Comm'r Pat. 1905)  715.07

  Honeywell v. Diamond, 208 USPQ 452 (D.D.C. 1980) 2165.04

  Honigsbaum v. Lehman, 903 F.Supp. 8, 37 USPQ2d 1799 (D.D.C.
  1995)  . .  513

  Honn, In re, 364 F.2d 454, 150 USPQ 652 (CCPA 1966)  
  608.01(h)

  . .  2165.01

  Hook, Ex parte, 102 USPQ 130 (Bd. App. 1953)  . .  715.07

  Hoover Co., In re, 134 F.2d 624, 57 USPQ 111 (CCPA 1943)  
  2363.02

  Hormone Research Foundation Inc. v. Genentech Inc., 904 F.2d
  1558, 15 USPQ2d 1039 (Fed. Cir. 1990)  . . 
  2173.05(a)

  Horton, Ex parte, 226 USPQ 697 (Bd. Pat. App. & Inter. 1985)  
  2258

  Horvitz v. Pritchard, 182 USPQ 505 (Bd. Pat. & Int. 1974)  
  2308.02

  Horwath v. Lee, 564 F.2d 948, 195 USPQ 701 (CCPA 1977)  
  2332

  Hostettler, In re, 356 F.2d 562, 148 USPQ 514 (CCPA 1966)  
  715.03

  Hough, In re, 108 USPQ 89, 703 O.G.200 (Comm'r Pat. 1955)  
  409.03(i)

  Houghton, In re, 433 F.2d 820, 167 USPQ 687 (CCPA 1970)  
  2107

  Hovlid v. Asari, 305 F.2d 747, 134 USPQ 162 (9th Cir. 1962)  
  201.11

  Howarth, In re, 654 F.2d 103, 210 USPQ 689 (CCPA 1981)  
  716.09

  . . 
  2164.01(b)

  Hozumi, Ex parte, 3 USPQ2d 1059 (Bd. Pat. App. & Inter. 1984)
  803.02

  Hruby, In re, 153 USPQ 61 (CCPA 1967)  . .  1504.01

  Huang, In re, 100 F.3d 135, 40 USPQ2d 1685 (Fed. Cir. 1996)  
  716.03

  . .  716.03(b)
  2144.08

  Huelster v. Reiter, 168 F.2d 542, 78 USPQ 82 (CCPA 1948)  
  2138.06

  Hull v. Bonis, 214 USPQ 731 (Bd. Pat. Inter. 1982)  2138.05

  Hull v. Davenport, 90 F.2d 103, 33 USPQ 506 (CCPA 1937)  
  2138.01  2138.06

  Humber, Ex parte, 217 USPQ 265 (Bd. App. 1961)  . 
  716.02(e)

  Humphrey v. Fickert, 1904 C.D. 447 (Comm'r Pat. 1904)  
  2390

  Humphreys, Ex parte, 24 USPQ2d 1255 (Bd. Pat. App. & Inter.
  1992)  . .  2404.01
  2405

  Hunt Co. v. Mallinckrodt Chem.Works, 177 F.2d 583, 83 USPQ 277,
  (2d Cir. 1949)  . .  201.11
  1504.20

  Hunter, Ex parte, 1889 C.D. 218, 49 Q.G. 733 (Comm'r Pat. 1889)
  715.07(a)

  Hunter v. Biessbarth, 15 USPQ2d 1343 (Comm'r Pat. 1990)  
  2361

  Hyatt, In re, 708 F.2d 712, 218 USPQ 195 (Fed. Cir. 1983)  
  2164.08(a)  2181

  Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
  231 USPQ 81 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987)
  716.03(b

  . .  2138.04
  2141

  . .  2144.08
  2164.01

  . . 
  2164.05(d)

  . . 
  2173.05(a) 2182

  Iagan, Ex parte, 1911 C.D. 10, 162 O.G. 538 (Comm'r Pat. 1910)
  2173.05(m)

  I.C.E. Corp. v. Armco Steel Corp., 250 F.Supp. 738, 148 USPQ 537
  (SDNY 1966)  . .  2128

  Indiana General Corp. v. Krystinel Corp., 297 F.Supp. 427, 161
  USPQ 82 (S.D. N.Y. 1969) aff'd, 421 F.2d 1033, 164 USPQ 321 (2d
  Cir. 1970)  . . 
  608.01(h)

  Information Research and Engineering Co., Inc. v. Hercules Inc.,
  171 USPQ 577 (C.D. Cal. 1971)  . .  2012

  Intellicall Inc. v. Phonometrics, Inc., 952 F.2d 1384, 21 USPQ2d
  1383 (Fed. Cir. 1992)  . .  2106
  2181

  International Glass Co. v. United States, 408 F.2d 395, 159 USPQ
  434 (Ct. Cl. 1969)  . .  2138.03

  Int'l Tooth Crown Co. v. Gaylord, 140 U.S. 55 (1891)  
  2133.03(e)(4)

  Interroyal Corp. v. Simmons Co., 204 USPQ 562 (S.D. N.Y. 1979)
  2133.03(e)(1)

  . . 
  2133.03(e)(3)

  Ionescu, Ex parte, 222 USPQ 537 (Bd. App. 1984)  .  2143.03

  . .  2171
  2173.06

  Irish, In re, 433 F.2d 1342, 167 USPQ 764 (CCPA 1970)  
  2136.01

  Irons, In re, 340 F.2d 974, 144 USPQ 351 (CCPA 1965)  
  2107.01  2164.07

  Irwin, Ex parte, 1928 C.D. 13, 367 O.G. 701j (Comm'r Pat. 1928)
  604.02

  Isaacs, In re, 347 F.2d 889, 146 USPQ 193 (CCPA 1963)  
  2107.01  2107.02

  Ishizaka, Ex parte, 24 USPQ2d 1621 (Bd. Pat. App. & Inter. 1992)
  716.02(b)

  Iwahashi, In re, 888 F.2d 1370, 12 USPQ2d 1908 (Fed. Cir. 1989)
  2106

  Jackson, Ex parte, 217 USPQ 804 (Bd. Pat. App. & Inter. 1982)
  2164.06

  . . 
  2164.06(a) 2404.02

  Jaffe, Ex parte, 147 USPQ 45 (Bd. of App. 1964)  .  1504

  J. A. La Porte, Inc. v. Norfolk Dredging Co., 787 F.2d 1577, 229
  USPQ 435 (Fed. Cir. 1986)  . . 
  2133.03(b)

  Janakirama - Rao, In re, 317 F.2d 951, 137 USPQ 893 (CCPA 1963)
  2111.03

  Japikse, In re, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)  
  2144.04

  Jentoft, In re, 392 F.2d 633, 157 USPQ 363 (CCPA 1968)  
  1490

  Jessell v. Newland, 195 USPQ 678, (Dep. Comm'r Pat. 1977)  
  1605

  Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928)  .  2121.04
  2125

  John O. Butler Co. v. Block Drug Co. Inc., 226 USPQ 855 (D. Ill.
  1985)  . .  1504

  Johns - Manville Corp. v. Guardian Industries Corp., 586 F.Supp.
  1034, 221 USPQ 319 (E.D. Mich. 1983)  . .  2165.01

  Johnson, In re, 282 F.2d 370, 127 USPQ 216 (CCPA 1960)  
  2164.01(c)

  Johnson, In re, 558 F.2d 1008, 194 USPQ 187 (CCPA 1977)  
  2164.08

  Johnson, In re, 589 F.2d 1070, 200 USPQ 199, (CCPA 1978)  
  2106  2184

  Johnson, In re, 747 F.2d 1456, 223 USPQ 1260 (Fed. Cir. 1984)
  716.02(e)

  Jolles, In re, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980)  
  2107

  . .  2107.01
  2107.02

  Joly, In re, 376 F.2d 906, 153 USPQ 45 (CCPA 1967)  
  608.01(p)

  Jones, Ex parte, 1924 C.D. 59, 327 Q.G. 681 (Comm'r Pat. 1924)
  709.01

  Jones, In re, 373 F.2d 1007, 153 USPQ 77 (CCPA 1967)  
  706.03(a)

  Jones, In re, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992)  
  2143.01

  . .  2144
  2144.08

  Jones v. Hardy, 727 F.2d 1524, 220 USPQ 1021 (Fed. Cir. 1984)
  2141.02  2144.08

  Joy Technologies nc. v. Manbeck, 751 F.Supp. 225, 17 USPQ2d 1257
  (D.D.C. 1990)  . . 
  716.03(a)

  J. P. Stevens & Co. v. Lex Tex Ltd., Inc., 747 F.2d 1553, 223
  USPQ 1089 (Fed. Cir. 1984)  . .  201.6

  Josserand, In re, 188 F.2d 486, 89 USPQ 371 (CCPA 1951)  
  2133.03(e)(1)

  Jovanovics, Ex parte, 211 USPQ 907 (Bd. Pat. App. & Inter. 1981)
  2107.02

  Justus v. Appenzeller, 177 USPQ 332, (Bd. Pat. Inter. 1971)  
  2138.06

  Kaghan, In re, 387 F.2d 398, 156 USPQ 130 (CCPA 1967)  
  706.03(w)

  Kahl v. Scoville, 609 F.2d 991, 203 USPQ 652 (CCPA 1979)  
  2317

  Kahn, In re, 202 USPQ 772 (Comm'r Pat. 1979)  . .  2012.01

  . .  2040.02

  Kaiser Industries Corp. v. Jones & Laughlin Steel Corp., 185
  USPQ 343 (3d Cir. 1975)  . .  2012.01

  KangaROOS USA, Inc., v. Caldor Inc., 778 F.2d 1571, 228 USPQ 32
  (Fed. Cir. 1985)  . .  1504.20

  Kanter, In re, 399 F.2d 249, 158 USPQ 331 (CCPA 1968)  
  2116.01

  Kantor, Ex parte, 177 USPQ 455 (Bd. App. 1958)  . 
  715.07(a)

  Kaplan, In re, 789 F.2d 1574,229 USPQ 678 (Fed. Cir. 1986)  
  804

  Kaslow, In re, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983)  
  2106.01

  . .  2141.02
  2163.02

  Kathawala, In re, 9 F.3d 942, 28 USPQ2d 1785 (Fed. Cir. 1993)
  2126  2126.02

  . .  2135.01

  Katrapat, In re, 6 USPQ2d 1863 (Comm'r Pat. 1988)  2268

  Kattwinkle, Ex parte, 12 USPQ 11 (Bd. App. 1931  . 
  608.01(v)

  Kaufman v. Lantech, 807 F.2d 1970, USPQ 2d 1202, (Fed. Cir.
  1986)  . .  2293

  Katz, In re, 687 F.2d 450, 215 USPQ 14 (CCPA 1982)  
  715.01(c)  716.09

  . .  2132
  2132.01 2133

  . .  2136.05
  2137 2138.02

  Kawai v. Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973)  
  2107.01  2138

  . .  2138.05
  2163.03

  Kaye, In re, 332 F.2d 816, 141 USPQ 829 (CCPA 1964)  
  706.02(k)

  Keizer v. Bradley, 270 F.2d 396, 123 USPQ 215 (CCPA 1959)  
  2138.06

  Keller, In re, 642 F.2d 413, 208 USPQ 871 (CCPA 1981)  
  2145

  Kellogg Switchboard & Supply Co., The, In re, 1906 C.D. 274
  (Comm'r Pat. 1906)  . .  106

  Kelly, In re, 200 USPQ 560 (Comm'r Pat. 1978)  . .  1504.05

  Kelly, In re, 305 F.2d 909, 134 USPQ 397 (CCPA 1962)  
  2173.05(o)

  Kemps, In re, 97 F.3d 1427, 40 USPQ2d 1309 (Fed. Cir. 1996)  
  2144.08

  Kendall v. Searles, 173 F.2d 986, 81 USPQ 363 (CCPA 1949)  

  2138.06

  Kerkhoven, In re, 626 F.2d 846, 205 USPQ 1069 (CCPA 1980)  
  2144.06

  Key Mfg. Group Inc. v. Microdot, 4 USPQ2d (E.D. Mich. 1987)  
  2293

  Keyes, Ex parte, 214 USPQ 579 (Bd. App. 1982)  . . 
  716.01(c)

  Keystone Driller Co. v. Gen'l Excavator Co., 290 U.S. 240, 19
  USPQ 228 (1933)  . .  2012

  KeyStone Retaining Wall Sys. Inc. v. Westrock Inc., 997 F.2d
  1444, 27 USPQ2d 1297 (Fed. Cir. 1993)  . . 
  2133.03(c)

  Khusid, Ex parte, 174 USPQ 59 (Bd. App. 1971)  . . 
  2173.05(c)

  Kilbey v. Thiele, 199 USPQ 290 (Bd. Pat. Inter. 1978)  
  2137

  Killian v. Watson, 121 USPQ 507 (D.D.C. 1958)  . .  1216.02

  Kimbell, Ex parte, 226 USPQ 688 (Bd. App. 1985)  .  2258

  Kimberly - Clark Corp., 102 F.3d 524, 41 USPQ2d 1001 (Fed. Cir.
  1996)  . .  2181

  King Instrument Corp. v. Otari Corp., 767 F.2d 853, 226 USPQ 402
  (Fed Cir. 1985)  . . 
  2133.03(a)

  . .  2138.05

  Kings, In re, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir.1986)  
  1206  2112.02

  Kingsland v. Carter Carburetor Corp., 168 F.2d 565, 77 USPQ 499
  (D.C. Cir. 1948)  . .  2344

  Kirk, In re, 376 F.2d 936, 153 USPQ 48 (CCPA 1967)  2107
  2107.01

  Kirsch, In re, 498 F.2d 1389, 182 USPQ 286 (CCPA 1974)  
  2173.05(c)

  Kistler v. Weber, 412 F.2d 280, 162 USPQ 214 (CCPA 1969)  
  2308.02

  Klein, In re, 5 USPQ 259, 1930 C.D. 2, 393 O.G. 519 (Comm'r Pat.
  1930)  . .  201.08

  Klug v. Wood, 212 USPQ 767 (Bd. Pat. Int. 1981)  .  2332

  Kluis, Ex parte, 70 USPQ 165 (Bd. App. 1945)  . .  1604

  Klumb, Ex parte, 159 USPQ 694 (Bd. App. 1967)  . .  2181

  Knapp v. Anderson, 477 F.2d 588, 177 USPQ 688 (CCPA 1973)  
  2107

  Knell v. Mueller, 174 USPQ 460 (Comm'r Pat. 1971)  804.02

  Knight, In re, 217 USPQ 294 (Comm'r Pat. 1982)  .  2225
  2258

  Knohl et al., In re, 386 F.2d 476, 155 USPQ 586 (CCPA 1967)  
  804.02

  Knowlton, In re, 481 F.2d 1357, 178 USPQ 486 (CCPA 1973)  
  2106

  . .  2106.02
  2185

  Kochan, Ex parte, 131 USPQ 204 (Bd. App. 1961)  . 
  2173.05(n)

  Kokaji, In re, 2 USPQ2d 1309 (Comm'r Pat. 1987)  . 
  201.06(b)

  Koller, In re, 613 F.2d 819, 204 USPQ 702 (CCPA 1980)  
  2124  2163.03

  Kollman, In re, 595 F.2d 48, 201 USPQ 193 (CCPA 1979)  
  716.02(d)

  Kondo v. Martel, 220 USPQ 47 (Bd. Pat. Inter. 1983)  
  2138.02

  Komenak, Ex parte, 45 USPQ 186, 1940 C.D. 1, 512 O.G. 739
  (Comm'r Pat. 1940)  . .  201.09

  Kotler, Ex parte, 1901 C.D.62, 95 O.G. 2684 (Comm'r Pat. 1901)
  608.01(o)

  Krepelka, Ex parte, 231 USPQ 746 (Bd. Pat. App. & Inter. 1986)
  2107.02

  Krimmel, In re, 292 F.2d 948, 130 USPQ 215 (CCPA 1961)  
  2107.01

  . .  2107.02

  Kristensen, Ex parte, 10 USPQ2d 1701 (Bd. Pat. App. & Inter.
  1989)  . . 
  2173.05(a)

  . . 
  2173.05(o)

  Kroekel, In re, 504 F.2d 1143, 183 USPQ 610 (CCPA 1974)  
  2173.05(c)

  Kroekel, In re, 803 F.2d 705, 231 USPQ 640 (Fed. Cir. 1986)  
  715

  Kroger, Ex parte, 218 USPQ 370 (Bd. App. 1982)  .  716.09

  . .  2132.01

  Kropa v. Robie, 187 F.2d 150, 88 USPQ 478 (CCPA 1951)  
  2111.02

  Kuehl, In re, 425 F.2d 658, 177 USPQ 250 (CCPA 1973)  
  2116.01

  Kuhle, In re, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)  2144.04

  Kuklo, Ex parte, 25 USPQ2d 1387 (Bd. Pat. App. & Inter. 1992)
  2133.03(a)

  Kulling, In re, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990)
  2144.05

  . .  2144.08

  Kusko, Ex parte, 215 USPQ 972 (Bd. App. 1981)  . .  2137
  2138.01

  Kuttwinkle, Ex parte, 12 USPQ 11, (Bd. App. 1931)  608.01

  Labounty Mfg., Inc. v. U.S. Int'l Trade Comm, 958 F.2d 1066, 22
  USPQ2d 1025 (Fed. Cir. 1992)  . .  2004
  2133.03

  . . 
  2133.03(e)

  . . 
  2133.03(e)(2)

  Lafferty, Ex parte, 190 USPQ 202 (Bd. App. 1975) 1403

  Laffland Bros. Co. v. Mid Western Energy Corp. 225 USPQ 886
  (W.D. Okla. 1985)  . .  2286

  Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 19 USPQ2d 1367
  (Fed. Cir. 1991)  . .  2181

  Lalu, In re, 747 F.2d 703, 223 USPQ 1257 (Fed. Cir. 1984)  
  2144.08  2144.09

  Lamberti, In re, 545 F.2d 747, 192 USPQ 278 (CCPA 1976)  
  2144.01

  Lancaster et al., Ex parte, 151 USPQ 713, 1966 C.D. 20, 833 O.G.
  8,(Bd. App. 1965)  . .  1504.02

  Land and Rogers, In re, 368 F.2d 866, 151 USPQ 621 (CCPA 1966)
  2136.04

  . .  2136.05

  Lander, Ex parte, 223 USPQ 687 (Bd. App. 1983)  .  1504.02

  Lange v. Comm'r, 352 F.Supp. 166, 176 USPQ 162 (D.D. C. 1972)
  1701.01

  Langer, In re, 465 F.2d 896, 465 F.2d 915, 175 USPQ 169 (CCPA
  1972)  . .  2144.09

  Langer, In re, 503 F.2d 1380, 183 USPQ 288 (CCPA 1974)  
  2107.01

  . .  2107.02
  2124

  Langer v. Kaufman, 465 F.2d 915, 175 USPQ 172 (CCPA 1972)  
  2138.04

  Langsett v. Marmet Corp., 141 USPQ 903, (W.D. Wisc .1964)  

  2133.03(c)

  Lanham, Ex parte, 135 USPQ 106, (Bd. App. 1961)  . 
  608.01(p)

  Lanham, In re, 1 USPQ2d 1877 (Comm'r Pat. 1986)  .  2258

  Lantzke, Ex parte, 1910 C.D. 100, 156 O.G. 257 (Comm'r Pat.
  1910)  . .  810.01

  Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12
  USPQ2d 1076 (Fed. Cir. 1989)  . .  2145

  Lapworth, In re, 451 F.2d 1094, 172 USPQ 129 (CCPA 1971)  
  1504

  Larson, In re, 340 F.2d 965, 144 USPQ 347 (CCPA 1965)  
  2144.04

  Lasscell, Ex parte, 1884 C.D. 66, 29 O.G. 861 (Comm'r Pat. 1884)
  711.01

  Lawrence, Ex parte, 70 USPQ 326, 1946 C.D. 1 (Comm'r Pat. 1946)
  1509

  Lee, Ex parte, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993)  
  2131.03

  Lee Pharmaceutical v. Kreps, 577 F.2d 610, 198 USPQ 601 (9th
  Cir. 1978)  . .  2127

  Lee v. Dayton - Hudson Corp., 838 F.2d 1186, 5 USPQ2d 1625 (Fed.
  Cir. 1988)  . .  1504

  Lee et al., In re, 199 USPQ 108 (Comm'r Pat. 1978)  803

  Lee - Boy Mfg. Co. v. Puckett, 202 USPQ 573 (D. Ga. 1978)  
  1442.05

  Leggett v. Avery, 101 U.S. 256 (1879)  . .  1490

  LeGrice, In re, 301 F.2d 929, 133 USPQ 365 (CCPA 1962)  
  2121.03

  Lemelson, In re, 397 F.2d 1006, 158 USPQ 275 (CCPA 1968)  
  2123

  Lemieux, Ex parte, 115 USPQ 148, 1957 C.D. 47, 725 O.G. (Bd.
  App. 1957)  . . 
  715.01(c)

  Leonard, Ex parte, 187 USPQ 122 (Bd. App. 1974)  .  2116

  Le Roy v. Tatham, 55 U.S. (14 How.) 156 (1852)  .  2106

  Leshin, In re, 227 F.2d 197, 125 USPQ 416 (CCPA 1960)  
  2144.07

  Levengood, Ex parte, 28 USPQ2d 1300 (Bd. Pat. App. & Inter.
  1993)  . .  2143.01
  2144

  Levy, Ex parte, 17 USPQ2d 1461 (Bd. Pat. App. & Inter. 1990)  
  2112

  Lincoln Engineering Co. v. Stewart - Warner Corp., 303 U.S. 545,
  37 USPQ 1 (1938)  . . 
  2173.05(j)

  Lindberg, In re, 194 F.2d 732, 93 USPQ 23 (CCPA 1952)  
  2144.04

  Lindell, In re, 385 F.2d 453, 155 USPQ 521 (CCPA 1967)  
  716.01(c)

  Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co.,
  730 F.2d 1452, 221 USPQ 481 (Fed. Cir. 1984)  . .  716.03

  . .  2164.01
  2164.05(a)

  Lindner, In re, 457 F.2d 506, 173 USPQ 356 (CCPA 1972)  
  716.01(c)

  . .  716.02(d)
  2144.08

  Links, Ex parte, 184 USPQ 429 (Bd. App. 1974)  . . 
  901.05(b)

  . .  2135.01

  Lintner, In re, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972)  
  2142  2143.01

  . .  2144
  2144.08 2145

  Litchfield v. Eigen, 535 F.2d 72, 190 USPQ 113 (CCPA 1976)  
  2138.06

  Litton Systems Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ
  97 (Fed. Cir. 1984)  . . 
  601.01(e)

  . .  716.03(b)

  Ljungstrom, Ex parte, 1905 C.D. 541, 119 O.G. 2335 (Comm'r Pat.
  1905)  . .  814

  Lockheed Aircraft Corporation v. United States, 193 USPQ 449
  (Ct. Cl. 1977)  . .  2184

  Lockwood v. American Airlines, Inc., 41 USPQ2d 1961 (Fed. Cir.
  1997)  . . 
  2133.03(a)

  Loewenbach, Ex parte, 1904 C.D. 170, 110 O.G. 857 (Comm'r Pat.
  1904)  . .  819

  Lohman, Ex parte, 1912 C.D. 336, 184 O.G. 287 (Comm'r Pat. 1912)
  1503.02

  Longi, In re, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985)  
  804

  Lopresti, In re, 333 F.2d 932, 142 USPQ 177 (CCPA 1964)  715

  Loreniam v. Winstead, 127 USPQ 501 (Bd. Pat. App. Int. 1959)  
  2337

  Lowry, In re, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994)  
  2106

  Luck, In re, 476 F.2d 650, 177 USPQ 523 (CCPA 1973)  
  2173.05(o)

  Ludtke, In re, 441 F.2d 660, 169 USPQ 563 (CCPA 1971)  
  2112.01

  Ludwick, In re, 4 F.2d 959, 339 O.G. 393 (D.C. Cir. 1925)  
  2173.05(m)

  Lukach, In re, 442 F.2d 967, 169 USPQ 795 (CCPA 1971)  
  201.11  2163.05

  Lund et al., In re, 376 F.2d 982, 153 USPQ 625 (CCPA 1967)  
  901.01  901.02

  . .  2127
  2136.02

  . .  2136.03

  Lundak, In re, 773 F.2d 1216, 227 USPQ 90 (Fed. Cir. 1985)  
  2164.06

  . . 
  2164.06(a) 2406.01

  Lutzker v. Plet, 843 F.2d 1364, 6 USPQ2d 1370 (Fed. Cir. 1988)
  2138.03

  Lyell, Ex parte, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990)
  2173.05(o)

  Lyon, Ex parte, 146 USPQ 222, 1965 C.D. 362, (Bd. App. 1964)  
  201.03

  Maas, Ex parte, 9 USPQ2d 1746 (Bd. Pat. App. & Inter. 1987)  
  2107.02

  Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S.
  86, 40 USPQ 199 (1939)  . .  2106

  MacKay v. Quigg, 641 F. Supp 567, 231 USPQ 90 (D.D.C. 1986)  
  1216.02

  MacMillan v. Moffett, 432 F.2d 1237, 167 USPQ 550 (CCPA 1970)
  2138.04

  Mageli et al., In re, 470 F.2d 1380, 176 USPQ 305 (CCPA 1973)
  716.03(b)

  Magerlein, In re, 602 F.2d 366, 202 USPQ 473 (CCPA 1979)  
  716.02(b)

  Magnetics v. Arnold Eng'g Co., 168 USPQ 392 (7th Cir. 1971)  
  2133.03(e)(7)

  Malachowski, In re, 530 F.2d 1402, 189 USPQ 432 (CCPA 1976)  
  2107.02

  Malcolm, In re, 129 F.2d 529, 54 USPQ 235, 1942 C.D. 589 543
  O.G. 440 (CCPA 1942)  . .  2144.03

  Malone v. Toth, 202 USPQ 397 (Comm'r Pat. 1978)  .  2302

  Mancy, In re, 499 F.2d 1289, 182 USPQ 303 (CCPA 1974)  
  2116.01

  Mann, In re, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988)  
  1504.02

  . . 
  2133.03(e)(6)

  Mannesmann Demag Corp. v. Engineered Metal Products Co., Inc.,
  793 F.2d 1279, 230 USPQ 45 (Fed. Cir. 1986)  . .  2111.03

  Mantell, In re, 454 F.2d 1398, 172 USPQ 530 (CCPA 1073)  
  715.03

  Manville Sales Corp. v. Paramount Sys. Inc., 917 F.2d 544, 16
  USPQ2d 1587 (Fed. Cir. 1990)  . .  2133.03

  . . 
  2133.03(a)

  Margolis, In re, 785 F.2d 1029, 228 USPQ 940 (Fed. Cir. 1986)
  716.01(a)

  Margolis et al. v Banner, 599 F.2d 435, 202 USPQ 365 (CCPA 1979)
  804.03

  Marinissen, Ex parte, 155 USPQ 528, 842 O.G. 528 (Bd. App. 1966)
  1504.02

  Markman v. Westview Instruments, 52 F.3d 967, 34 USPQ2d 1321,
  (Fed. Cir.) (in banc), aff'd **US**, 116 S.Ct. 1384 (1996)  
  2106

  Markush, Ex parte, 1925 C.D. 126, 340 O.G. 839 (Comm'r Pat.
  1924)  . . 
  2173.05(h)

  Marosi, In re, 710 F.2d 799, 218 USPQ 289 (CCPA 1983)  
  2111.01  2113

  . . 
  2173.05(a)

  Marsh Eng. Co., 1913 C.D. 183 (Comm'r Pat. 1913) 103

  Martin, In re, 154 F.2d 126, 69 USPQ 75 (CCPA 1946)  
  1212

  Martin v. Johnson, 454 F.2d 746, 172 USPQ 391 (CCPA 1972)  
  2173.05(t)

  Marzocchi, In re, 439 F.2d 220, 169 USPQ 367 (CCPA 1971)  
  2107  2107.01

  . .  2124
  2164.03

  . .  2164.04
  2164.08

  Masham, Ex parte, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)

  2114

  Massachusetts Institute of Technology v. A.B. Fortia, 774 F.2d
  1104, 227 USPQ 428 (Fed. Cir. 1985)  . .  2128.01

  Mathews, In re, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969)  
  715.01(c)

  . .  2136.04
  2136.05

  Mattison, In re, 509 F.2d 563, 184 USPQ 484 (CCPA 1975)  
  2173.05(a)

  . . 
  2173.05(c)

  Mattor v. Coolegem, 530 F.2d 1391, 189 USPQ 201 (CCPA 1976)  
  2137.01

  Mattson, In re, 208 USPQ 168 (Comm'r Pat. 1980)  . 
  601.01(e)

  Mattullath, In re, 38 App. D.C. 497, (1912)  . .  2590

  Maucorps, In re, 609 F.2d 481, 203 USPQ 812 (CCPA 1979)  
  2184

  May, In re, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978)  
  716.02(c)  2112.02

  . .  2144.08
  2144.09

  Mayewsky, In re, 860 F.2d 430, 162 USPQ 86 (E.D. Va. 1969)  
  1701.01

  Mayhew, In re, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976)  
  2164.08(c)

  . . 
  2173.05(l) 2174

  Mayne, In re, 104 F.3d 1339, 41 USPQ2d 1451 (Fed. Cir. 1977)  
  2144.08  2144.09

  Mazer v. Stein, 347 US 201, 100 USPQ 325 (1954)  .  1512

  McCormick, Ex parte, 1904 C.D. 575 113 O.G. 2508 (Assist Comm'r
  1924)  . .  709.01

  McCulloch Gas Processing Co. v. Dept. of Energy, 650 F.2d 1216
  (Temp. Emer. Ct. App. 1981)  . .  1701.01

  McCullough, Ex parte, 7 USPQ2d 1889 (Bd. Pat. App. & Inter.
  1987)  . .  2145

  McGaughey, Ex parte, 6 USPQ2d 1334, (Bd. Pat. App. & Inter.
  1988)  . .  2258

  McGrady v. Aspenglas Corp.. et al., 487 F.Supp. 859, 208 USPQ
  242 (S.D. N.Y. 1981)  . .  1503.01
  1504.01

  McKellin, In re, 529 F.2d 1342, 188 USPQ 428 (CCPA 1976)  

  715

  McKenna et al., In re, 203 F.2d 717, 97 USPQ 348 (CCPA 1953)  
  716.01(c)

  McLaughlin, In re, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971)  
  2145

  Mead, In re, 581 F.2d 257, 198 USPQ 412 (CCPA 1978)  
  1402

  . .  1412.01
  1450

  Mead Johnson & Co. Ex parte, 227 USPQ 78 (Bd. Pat. App. & Inter.
  1985)  . .  716.02

  Meden v. Curtis, 1905 C.D. 272: 117 O.G. 1795 (Comm'r Pat. 1905)
  819.01

  Medtronic, Inc. v. Cardiac Pacemakers, 721 F.2d 1563, 220 USPQ
  97 (Fed. Cir. 1983)  . . 
  2141.01(a)

  Meitzner v. Corte, 537 F.2d 524, 190 USPQ 407 (CCPA 1976)  
  2138.05

  Mendenhall v. Cedarapids Inc., 5 F.3d 1557, 28 USPQ2d 1081 (Fed.
  Cir. 1993)  . .  201.11

  Merchant, In re, 575 F.2d 865, 197 USPQ 785 (CCPA 1978)  
  716.02(e)

  Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d
  1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989)  716.02
  2123

  . .  2144.05
  2144.08

  Merck & Co., Inc., In re, 800 F.2d 1091, 231 USPQ 375 (Fed. Cir.
  1986)  . .  716.02

  . .  2143.02
  2144.08

  . .  2144.09
  2145

  Merck and Co., Inc. v. Chase Chem. Co., 273 F.Supp. 68, 155 USPQ
  139 (D.N.J. 1967)  . .  2402

  Mercoid Corp. v. Milwaukee as Specialty Co., 46 USPQ 23 (E.D.
  Wis. 1940)  . .  401.08

  Mergenthaler v. Scudder, 1897 C.D. 724, 81 O.G. 1417 (D.C. Cir.
  1897)  . . 
  706.02(l)  715.07

  Merz, Ex parte, 75 USPQ 296 (Bd. App. 1947)  . . 
  715.07(a)

  Messick, Ex parte, 7 USPQ 57, 1930 C.D. 6, 400 O.G. 3 (Comm'r
  Pat.1930)  . . 
  710.01(a)

  Metcalfe, In re, 410 F.2d 1378, 161 USPQ 789 (CCPA 1969)  
  2404.01

  Metcalfe and Lowe, In re, 410 F.2d 1378, 161 USPQ 789 (CCPA
  1969)  . . 
  608.01(v)

  Metropolitan Eng. Co. v. Coe, 78 F.2d 199, 25 USPQ 216 (D.C.
  Cir. 1935)  . .  716.07

  Meyer, Ex parte, 6 USPQ2d 1966 (Bd. Pat. App. & Inter. 1988)  
  2145

  Meyer, In re, 599 F.2d 1026, 202 USPQ 175 (CCPA 1979)  
  2131.02

  Meyer, In re, 688 F.2d 789, 215 USPQ 193 (CCPA 1982)  
  2106  2184

  Michalek, In re, 162 F2d 229, 74 USPQ 107 (CCPA 1947)  
  716.07

  Micro Chemical Inc. v. Great Plains Chemical Co., 103 F.3d 1538,
  41 USPQ2d 1238 (Fed. Cir. 1997)  . . 
  2133.03(b)

  . . 
  2133.03(c)

  Milburn v. Davis - Bournonville Co., 270 U.S. 390, 46 S. Ct.
  324, 1926 C.D. 303, 344 O.G. 817 (1926)  . .  2136.04

  Miles Labs. Inc. v. Shandon Inc., 997 F.2d 870, 27 USPQ2d 1123
  (Fed. Cir. 1993)  . . 
  716.01(a)

  Miller, Ex parte, 1922 C.D. 36, 305 O.G. 419 (Comm'r Pat. 1922)
  714.15

  Miller, In re, 418 F.2d 1392, 164 USPQ 46 (CCPA 1969)  
  706.03(a)

  Miller, In re, 441 F.2d 689, 169 USPQ 597 (CCPA 1971)  
  2173.04

  Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894)  . .  804

  Mills, In re, 281 F.2d 218, 126 USPQ 513 (CCPA 1960)  
  2144.09

  Mills, In re, 916 F.2d 680, 16 USPQ2d 1430 (Fed. Cir. 1990)  
  2143.01  2144.08

  Milton, Ex parte, 164 Ms D. 1, 63 USPQ 132 (P.O. Super. Exam.
  1938)  . . 
  710.04(a)

  Mineral Separation v. Hyde, 242 U.S. 261 (1916)  .  2164.01

  M.I.T. v. A.B. Fortia, 774 F.2d 1104, 227 USPQ 428 (Fed. Cir.
  1985)  . .  2164.01

  Mlot - Fijalkowski, In re, 676 F.2d 666, 213 USPQ 713 (CCPA
  1982)  . . 

  2141.01(a)

  Mochel, In re, 470 F.2d 638, 176 USPQ 194 (CCPA 1974)  
  2173.05(c)

  Moeller, In re, 117 F.2d 565, 48 USPQ 542 (CCPA 1941)  
  2173.05(o)

  Mogen David Wine Corp., In re, 328 F.2d 925, 140 USPQ 575 (CCPA
  1964)  . .  1512

  Moleculon Research Corp. v. CBS, Inc., 793 F.2D 1261, 229 USPQ
  805 (Fed. Cir. 1986)  . .  2111.03

  . . 
  2133.03(a)

  . . 
  2133.03(b)

  Moler v. Purdy, 131 USPQ 276 (Bd. Pat. Inter. 1960)  
  2137.01

  Monaco v. Watson, 270 F.2d, 335, 122 USPQ 564 (D.C. Cir. 1959)
  2358

  Monks, In re, 588 F.2d 308, 200 USPQ 129 (CCPA 1978)  
  901.05

  . .  901.05(b)
  1504

  . .  2126.01
  2135.01

  Monogram Mfg. v. F & H Mfg., 62 USPQ 409 (9th Cir. 1944)  
  2133.03(e)(1)

  Monsanto Co. v. Kamp, 269 F.Supp. 818, 154 USPQ 259 (D.D.C.
  1967)  . .  1216.02

  Moore, In re, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971)  
  2164.08  2172

  Moore, In re, 444 F.2d 572, 170 USPQ 260 (CCPA 1971)  
  715.07

  Moore v. U.S., 194 USPQ 423 (Ct. Cl. 1977)  . .  2134

  Moorman v. Martin, 103 USPQ 273 (Comm'r Pat. 1950)  2312

  Morehouse and Bolton, In re, 545 F.2d 162, 192 USPQ 29 (CCPA
  1976)  . .  2106.02

  Morehouse v. Armbruster, 209 USPQ 514 (Comm'r Pat. 1980)  
  2302

  Moreton, In re, 288 F.2D 708, 129 USPQ 227 (CCPA 1961)  
  2121

  Morse v. Porter, 155 USPQ 280 (Bd. Pat. Inter. 1965)  
  2137.01  2138.04

  Morton et al., Ex parte, 134 USPQ 407 (Bd. App. 1961)  
  2173.05(t)

  Morway v. Bondi, 203 F.2d 742, 97 USPQ 318 (CCPA 1953)  
  2138.06

  Mosher, In re, 248 F.2d 956, 115 USPQ 140 (CCPA 1957)  
  1216.01

  Mott, In re, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976)  
  706.02(k)  804

  Mowry, Ex parte, 91 USPQ 219 (Bd. App. 1950)  . .  2144.09

  Mowry v. Whitney, 81 U.S. (14 Wall.) 620 (1871)  .  2164.07

  Mraz, In re, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972)  
  2125

  Mulder, In re, 716 F.2d 1542, 219 USPQ 189 (Fed. Cir. 1983)  
  2138.06  2183

  Multiple Litigation Involving Frost Patent, In re, 540 F.2d 601,
  185 USPQ 729 (3d Cir. 1976)  . .  2016

  Murphy v. Eiseman, 166 USPQ 149 (Bd. Pat. Int. 1970)  
  2308.02

  Musgrave, In re, 431 F.2d 882, 167 USPQ 280 (CCPA 1970)  
  2106

  Myers, In re, 120 USPQ 225, 1959 C.D. 1, 738 O.G. 947 (Comm'r
  Pat. 1958)  . .  608.02

  Myers v. Feigelman, 455 F.2d 596, 172 USPQ 580 (CCPA 1972)  
  2344

  Naber v. Cricchi, 567 F.2d 382, 196 USPQ 294 (CCPA 1977)  
  2138.06

  Nalbandian, In re, 661 F.2d 1214; 211 USPQ 782 (CCPA 1981)  
  1504.03

  Napier, In re, 55 F.3d 610, 34 USPQ2d 1782 (Fed. Cir. 1995)  
  2112

  Naquin, In re, 398 F.2d 863, 158 USPQ 317 (CCPA 1968)  
  2106

  . .  2106.02
  2164.05(a)

  Nat'l Biscuit Co. v. Crown Baking Co., 42 USPQ 214 (1st Cir.
  1939)  . . 
  2133.03(c)

  Nehrenberg, In re, 280 F.2d 161, 126 USPQ 383 (CCPA 1960)  
  2173.05(a)

  Nelson, Ex parte, 164 Ms. D. 361, 26 J.P.O.S. 564  
  710.04(a)

  Nelson, In re, 280 F.2d 172, 126 USPQ 242 (CCPA 1960)  
  2165

  Nelson, In re, 420 F.2d 1079, 164 USPQ 458 (CCPA 1970)  
  715.07(a)

  Nelson v. Bowler, 212 USPQ 760 (Comm'r Pat. 1981)  2361
  2366

  Nelson v. Bowler, 626 F.2d 853, 206 USPQ 881 (CCPA 1980)  
  2107  2107.01

  . .  2107.02
  2138.05

  New England Braiding Co., Inc. v. A.W. Chesterton Co., 970 F.2d
  878, 23 USPQ2d 1622 (Fed. Cir. 1992)  . .  2137.01

  New Idea Farm Equipment Corp. v. Sperry Corp., 916 F.2d 1561, 16
  USPQ2d 1424 (Fed. Cir. 1990)  . .  2138

  Newell Companies v. Kenney Manufacturing Co., 864 F.2d 757, 9
  USPQ2d 1417 (Fed. Cir. 1988)  . . 
  716.01(d)

  . .  716.04

  Newman v. Quigg, 877 F.2d 1575, 11 USPQ2d 1340 (Fed. Cir. 1989)
  2107

  Newton, In re, 414 F.2d 1400, 163 USPQ 34 (CCPA 1969)  
  2161  2165.02

  Nievelt, In re, 482 F.2d 965, 179 USPQ 224 (CCPA 1973)  
  2145

  Nilssen, In re, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988)
  1701.01  2144

  Nitto Chemical Industry Co. Ltd. v. Comer, 39 USPQ2d 1778
  (D.D.C. 1994)  . .  513

  Nitz v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976)  
  2309.01

  Nolan, In re, 553 F.2d 1261, 193 USPQ 641 (CCPA 1977)  
  716.02(b)  716.02(c)

  Nomiya, In re, 509 F.2d 566, 184 USPQ 607 (CCPA 1975)  
  2129  2258

  Norlund, Ex parte, 1913 C.D. 161, 192 O.G. 989 (Comm'r Pat.
  1913)  . .  1213.01

  Northam Warren Corp. v. D. F. Newfield Co., 7 F.Supp. 773, 22
  USPQ 313 (E.D.N.Y. 1934)  . .  2112.01

  Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 15
  USPQ2d 1321

  (Fed. Cir. 1990)  . .  2106
  2128.01

  Norton v. Curtiss, 433 F.2d 779, 167 USPQ 532 (CCPA 1970)  
  2012

  Novak, In re, 306 F.2d 924, 134 USPQ 335 (CCPA 1962)  
  2107.01

  Novitski, Ex parte, 26 USPQ2d 1389 (Bd. Pat. App. & Inter. 1993)

  2112.02

  Noznick et al., In re, 478 F.2d 1260, 178 USPQ 43 (CCPA 1973)
  716.03(b)

  Obiaya, Ex parte, 227 USPQ 58 (Bd. Pat. App. & Inter. 1985)  
  2145

  Ochiai, In re, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995)  
  706.02(n)

  . .  2116.01
  2144.08

  Ockert, In re, 245 F.2d 467, 114 USPQ 330 (CCPA 1957) 804

  Oda, In re, 443 F.2d 1200, 170 USPQ 260 (CCPA 1971)  
  2163.07

  Oelrich, In re, 579 F.2d 86, 198 USPQ 210 (CCPA 1978)  
  716.01(c)  2144.08

  Oelrich, In re, 666 F.2d 578, 212 USPQ 323 (CCPA 1981)  
  2112

  Oetiker, Ex parte, 23 USPQ2d 641 (Bd. Pat. App. & Inter. 1992)
  2173.05(a)

  Oetiker, In re, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992)
  716.01(d)

  . .  1504.01
  2107.01

  . .  2141
  2141.01(a)

  . .  2142
  2144.08

  . .  2145
  2164.07

  O'Farrell, In re, 853 F.2d 894, 7 USPQ2d 1673 (Fed. Cir. 1988)
  2143.02

  . .  2144.08
  2145

  Oguie, In re, 517 F.2d 1382, 186 USPO 227 (CCPA 1975)  
  2305.01  2305.04

  Ohshiro, Ex parte, 14 USPQ2d 1750 (Bd. Pat. App. & Inter. 1989)
  2163.05

  Ohsumi, Ex parte, 21 USPQ2d 1020 (Bd. Pat. App. & Inter. 1991)
  1206

  Oka v. Youssefyeh, 849 F.2d 581, 7 USPQ2d 1169 (Fed. Cir. 1988)
  2138.04

  Okuzawa, In re, 537 F.2d 545, 190 USPQ 464 (CCPA 1976)  
  2111.01

  Olah, Ex parte, 131 USPQ 41 (Bd. App. 1960)  . .  201.13

  . .  706.02(a)
  901.05

  . .  2133
  2135.01

  Omark Indus. v. Carlton Co., 201 USPQ 825 (D. Ore. 1978)  
  2133.03(e)(4)

  Onda, In re, 229 USPQ 235 (Comm'r Pat. 1985)  . . 
  706.02(l)  2285

  Oppenauer, In re, 143 F.2d 974, 62 USPQ 297 (CCPA 1944)  
  716.09

  O'Reilly v. Morse, 56 U.S. (15 How.) 62  . . 
  706.03(a)  2106

  Orita, et al., In re, 550 F.2d 1277, 193 USPQ 145 (CCPA 1977)
  1402  1450

  Orthokinetics, Inc. v. Safety Travel Chairs Inc., 806 F.2d 1565,
  1 USPQ2d 1081 (Fed. Cir. 1986)  . . 
  2173.05(a)

  Orthopedic Equipment Co., Inc. v. All Orthopedic Appliances,
  Inc., 707 F.2d 1376, 217 USPQ 1281 (Fed. Cir. 1983)  716.04

  Osmond, Ex parte, 191 USPQ 334 (Bd. App. 1973)  .  2136

  Otto, In re, 312 F.2d 937, 136 USPQ 458 (CCPA 1963)  
  2111.02  2115

  Ovist et al., Ex parte, 152 USPQ 709 (Bd. App. 1963)  
  901.05

  . .  2126.02

  Ovshinsky, Ex parte, 10 USPQ2d 1075 (Bd. Pat. App. & Inter.
  1989)  . .  715.07

  Pabst - Motoren, In re, 1 USPQ2d 1659 (Bd. Pat. App. & Inter.
  1986)  . .  2258

  Paine, Webber, Jackson & Curtis, Inc. v. Merrill Lynch, Pierce,
  Fenner, & Smith, Inc., 564 F.Supp. 1358, 218, USPQ 212 (D. Del.
  1983)  . .  2106

  Palmer, In re, 451 F.2d 1100, 172 USPQ 126 (CCPA 1971)  
  716.01(a)

  Panagrossi, In re, 277 F.2d 181, 125 USPQ 410 (CCPA 1960)  
  2174

  Panduit Corp. v. Dennison Manufacturing Co., 774 F.2d 1082, 227
  USPQ 337 (Fed. Cir. 1985)  . .  716.06
  2134

  Panduit Corp. v. Dennison Manufacturing Co., 810 F.2d 1561, 1
  USPQ2d 1593 (Fed. Cir.), cert. denied, 481 US 1052 (1982)  
  2141.01  2141.02

  . .  2144.08

  Pantzer and Feier, Ex parte, 176 USPO 141 (Bd App. 1972)  
  2173.05(o)

  Paperless Accounting v. Bay Area Rapid Transit System, 804 F.2d
  659, 231 USPQ 649 (Fed. Cir. 1986)  . .  2133.01

  Papesch, In re, 315 F.2d 381, 137 USPQ 42 (CCPA 1963)  
  716.02  2141.02

  . .  2144.08
  2144.09

  Pappas, Ex parte, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992)
  2141.01(a)

  . . 
  2173.05(a)

  Paragon Podiatry Laboratory Inc. v. KLM Labs., Inc., 984 F.2d
  1182, 25 USPQ2d 1561 (Fed. Cir. 1993)  . . 
  2133.03(e)(2)

  Parker v. Flook, 437 U.S. 584, 198 USPQ 193 (1978)  2106

  Parker v. Frilette, 462 F.2d 544, 174 USPQ 321 (CCPA 1972)  
  2138.05

  Parks, Ex parte, 30 USPQ2d 1234 (Bd. Pat. App. & Inter. 1993)
  2173.05(i)

  Patent No. 4,409,763, In re, 7 USPQ2d 1798 (Comm'r Pat. 1988),
  aff'd  . .  2590

  Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed.
  Cir. 1985)  . .  2225
  2240

  . .  2244 2249

  Patlex Corp. v. Mossinghoff, 758 F.2d 594, 225 USPQ 243, 249
  (Fed. Cir. 1988)  . .  2211

  Paulik v. Rizkalla, 760 F.2d 1270, 226 USPQ 224 (Fed. Cir. 1985)
  2138.01  2138.03

  Paulsen, In re, 30 F.3d 1475, 31 USPQ2d 1671 (Fed. Cir. 1994)
  716.03

  . .  2106
  2144.08

  Payne, Ex parte, 1904 C.D. 42, 108 O.G. 1049 (Comm'r Pat. 1903)
  707.07(g)

  Payne, In re, 606 F.2d 303, 203 USPQ 245 (CCPA 1979)  
  716.02  716.02(e)

  . .  2144.09

  Peeler v. Miller, 535 F.2d 647, 190 USPQ 117 (CCPA 1976)  
  2138.03  2332

  Peck, Ex parte, 1901 C.D. 136, 96 O.G. 2409 (Comm'r Pat. 1901)
  608.02(f)

  Penn Yan Boats, Inc. v. Sea Lark Boats Inc., 354 F.Supp. 948,
  175 USPQ 260, (S.D. Fla. 1972), aff'd, 479 F.2d 1338, 178 USPQ
  577 (5th Cir. 1973), cert. denied, 414 USPQ 874 (1974)  
  2004

  Pennwalt Corp. v. Durand - Wayland, Inc., 833 F.2d 931, 4 USPQ2d
  1737 (Fed. Cir. 1987)  . .  2184

  Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 227 USPQ
  766 (Fed. Cir. 1985)  . . 
  716.03(b)

  . .  716.06
  2129

  . . 
  2141.01(a)

  Perkin - Elmer Corp. v. Westinghouse Elec. Corp., BNA/PTCJ 376;
  A - 11 (Int'l E.D. N.Y. 1978)  . . 
  1442.05(b)

  Petering, In re, 301 F.2d 676, 133 USPQ 275 (CCPA 1962)  
  2131.02

  . .  2131.03
  2144.08

  Peters, In re, 723 F.2d 891, 221 USPQ 952 (Fed. Cir. 1983)  
  2163.05

  Petersen v. Fee Int'l, Ltd., 381 F.Supp. 1071, 182 USPQ 264
  (W.D. Okla. 1974)  . .  2134

  Peterson, Ex parte, 49 USPQ 119, 1941 C.D. 8 (Comm'r Pat. 1941)
  710.02(b)

  . .  2307.01
  2363

  Peterson, Ex parte, 63 USPQ 99 (Bd. App. 1944)  .  901.02

  Phelan, In re, 205 F.2d 183, 98 USPQ 156 (CCPA 1953)  804

  Philco Corp. v. Admiral Corp., 131 USPQ 413 (O. Del. 1961)  
  2133.03(c)

  . . 
  2133.03(e)(1)

  Phillips, In re, 608 F.2d 879, 203 USPQ 971 (CCPA 1979)  
  2106

  Piasecki, In re, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984)
  716.01(d)  2107.01

  . .  2142
  2144.08

  PIC Inc. v. Prescon Corp., 195 USPQ 525 (D. Del. 1975)  
  1442.05(a)

  Pickles, Ex parte, 1904 C.D. 126, 109 O.G. 1888 (Comm'r Pat.
  1904)  . .  810.02

  Pierce v. Allen B. DuMont Laboratories, Inc., 297 F.2d 323, 131
  USPQ 340 (3rd Cir. 1961)  . .  804

  Pierce v. Watson, 124 USPQ 356 (D.C. Cir. 1960)  . 
  715.01(b)

  Pilkington, In re, 411 F.2d 1345, 162 USPQ 145 (CCPA 1969)  
  2173.05(o)

  Pio, In re, 217 F.2d 956, 104 USPQ 177 (CCPA 1954)  716.07

  Platner, In re, 155 USPQ 222 (Comm'r Pat. 1967)  .  1504.05

  Pleuddemann, In re, 910 F.2d 823, 15 USPQ2d 1738 (Fed. Cir.
  1990)  . .  2116.01

  Plockinger, In re, 481 F.2d 1327, 179 USPQ 103 (CCPA 1973)  
  2317

  Plumb, In re, 470 F.2d 1403, 176 USPQ 323 (CCPA 1973)  
  715.03

  Polumbo v. Don - Joy Co., 762 F.2d 969, 226 USPQ 5 (Fed. Cir.
  1985)  . .  2184

  Popoff v. Orchin, 144 USPQ 762 (Bd. Pat. Int. 1963)  
  2371

  Porter, Ex parte, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992)
  608.01(n)  2173.05(e)

  . . 
  2173.05(f) 2173.05(q)

  Porter Co., Inc. v. Gates Rubber Co., 187 USPQ 692 (D. Colo.
  1975)  . . 
  608.01(h)

  Pottier, In re, 376 F.2d 328, 153 USPQ 407 (CCPA 1967)  
  2107.01

  Powell, Ex parte, 37 USPQ 285, 1938 C.D. 15, 489 O.G. 231 (Bd.
  App. 1938)  . . 
  715.01(c)

  Power Controls Corp., v. Hybrinetics, Inc., 806 F.2d 234, 231
  USPQ 774 (Fed. Cir. 1986)  . .  1504

  PPG Ind. v. Guardian Ind., 75 F.3d 1558, 37 USPQ2d 1618 (Fed.
  Cir. 1996)  . . 
  2164.06(b)

  Prater, In re, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969)  
  2111  2172

  . . 
  2173.05(a) 2173.05(q)

  . .  2411.01

  Pratt, Ex parte, 1887 Dec. Comm'r Pat. 31 (Comm'r Pat. 1887)  
  2590

  Preda, In re, 401 F.2d 825, 159 USPQ 342 (CCPA 1968)  
  2144.01

  Price v. Symsek, 988 F.2d 1187, 26 USPQ2d 1031 (Fed. Cir. 1993)
  2137  2138.01

  Pritchard v. Loughin, 361 F.2d 483, 149 USPQ 841 (CCPA 1966)  
  2390

  Protein Found. Inc. v. Brenner, 260 F.Supp. 519, 151 USPQ 561
  (D.D.C. 1966)  . . 
  706.02(a)

  Quad Environmental Technologies Corp. v. Union Sanitary
  District, 946 F.2d 870, 20 USPQ2d 1392 (Fed. Cir. 1991)  
  804.02

  Quadranti, Ex parte, 25 USPQ2d 1071 (Bd. Pat. App. & Inter.
  1992)  . .  2144.06

  Quayle, Ex parte, 25 USPQ 74, 1935 C.D. 11, 453 O.G. 213 (Comm'r
  Pat. 1935)  . . 
  710.02(b)

  . .  713.04
  714.14

  . .  714.15

  Rackham, Ex parte, 1923 C.D. 4 (Comm'r Pat. 1922)  901.05

  Radio Corporation of America v. Radio Engineering Laboratories,
  Inc., 54 S. Ct. 752, 21 USPQ 353 (1934)  . .  2138.01

  Radio Steel and Mfg. Co. v. MTD Products, Inc., 731 F.2d 840,
  221 USPQ 657 (Fed. Cir. 1984)  . . 
  2173.05(j)

  Rainer, In re, 305 F.2d 505, 134 USPQ 343 (CCPA 1962)  
  2124

  Rainer, In re, 390 F.2d 771, 156 USPQ 334 (CCPA 1968)  
  715.03

  Ralston Purina Co. v. Far - Mar - Co., Inc., 772 F.2d 1570, 227
  USPQ 177 (Fed. Cir. 1985)  . .  2163.02

  Rasmussen, In re, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)  
  706.03(o)  1504.04

  . .  2163.01
  2163.06

  Ratny, In re, 24 USPQ2d 1713 (Comm'r Pat. 1992)  .  323

  Ratti, In re, 270 F.2d 810, 123 USPQ 349 (CCPA 1959)  
  2143.01

  Ray v. Lehman, 55 F.3d 606, 34 USPQ2d 1786 (Fed. Cir. 1995)  
  2590

  Ray Bellet v. Englehard, 493 F.2d 1380, 181 USPQ 453 (CCPA 1974)
  2107.01

  Raytek, Inc. v. Solfan Systems, Inc., 211 USPQ 405 (N.D. Cal.,
  1981)  . .  2286

  Raytheon v. Roper, 724 F.2d 951, 220 USPQ 592 (Fed. Cir. 1983),
  cert. denied, 469 U.S. 835 (1984)  . .  2107.01

  . .  2164.08

  RCA v. Applied Digital Data Sys. Inc., 467 F.Supp. 99, 201 USPQ
  451 (D. Del. 1979)  . .  1442.05

  . . 
  1442.05(b)

  RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 12 USPQ2d 1449,
  (Fed. Cir. 1989)  . .  2133.03

  . . 
  2133.03(b)

  . . 
  2133.03(e)(3)

  Read v. Quigg 230 USPQ 2 (D.D.C. 1986)  . .  2279

  Reading & Bates Construction Co. v. Baker Energy, 748 F.2d 645,
  223 USPQ 1168 (Fed. Cir. 1984)  . .  2129

  Rebstock v. Flouret, 191 USPQ 342 (Bd. Pat. Inter. 1975)  
  2138.06

  Recreative Technologies, In re, 83 F.3d 1394, 38 USPQ2d 1776
  (Fed. Cir. 1996)  . .  2242
  2258

  Reddy v. Davis, 187 USPQ 386 (Comm'r Pat. 1975)  .  2328

  Red Cross Mfg. v. Toro Sales Co., 188 USPQ 241 (7th Cir. 1975)
  2133.03(e)(1)

  Reeves Bros. Inc. v. U.S. Laminating Corp., 157 USPQ 235 (E.D.
  N.Y. 1968)  . .  901.05

  Reid, In re, 179 F.2d 998, 84 USPQ 478 (CCPA 1950)  716.07

  Rekers et al., In re, 203 USPQ 1034 (Comm'r Pat. 1979)  
  804.03

  Remark, Ex parte, 15 USPQ2d 1498 ((Bd. Pat. App. & Inter. 1990)
  716.03

  . .  716.03(b)
  2144.08

  Remington, Ex parte, 1905 C.D. 28, 114 O.G. 694 (Comm'r Pat.
  1904)  . .  1503.01

  Republic Indus. Inc. v. Schlage Lock Co. 593 F.2d 963, 200 USPQ
  769 (7th Cir. 1979)  . .  2141

  Reuge, Ex parte, 115 USPQ 51 (Bd. Pat. App. & Inter. 1957)  
  901.05  901.05(b)

  Rey - Bellet v. Engelhardt, 493 F.2d 1380, 181 USPQ 453 (CCPA
  1974)  . .  2138.05

  Reynolds, In re, 443 F.2d 384, 170 USPQ 94 (CCPA 1971)  
  2163.07(a)

  Reynolds Metal Co. v. Acorn Building Components, Inc., 548 F.2d
  155, 192 USPQ 737 (6th Cir. 1977)  . . 
  608.01(h)

  Reynolds Metal Co. v. Aluminum Co. of America, 198 USPQ 529
  (N.D. Ind. 1978)  . . 
  1442.05(a)

  Richardson v. Suzuki Motor Co., 868 F.2d 1226, 9 USPQ2d 1913
  (Fed. Cir. 1989)  . .  2131

  Richman, In re, 409 F.2d 269, 161 USPQ 359 (CCPA 1969)  
  1412.02

  Riegger v. Beierl, 1910 C.D. 12, 150 O.G. 826 (Comm'r Pat. 1909)
  604.06

  Rieser v. Williams, 225 F.2d 419, 118 USPQ 96 (CCPA 1958)  
  2138.06  2307.02

  Rijckaert, In re, 9 F.3d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993)
  2112

  . .  2141.02
  2144.08

  Rinehart, Ex parte, 10 USPQ2d 1719 (Bd. Pat. App. & Inter. 1985)
  2404.01

  Rinehart, In re, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976)  
  2107.01  2142

  . .  2143.02
  2144.04

  Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426, 178 USPQ 577
  (9th Cir. 1973)  . . 
  2133.03(d)

  . . 
  2133.03(e)(1)

  . . 
  2133.03(e)(4)

  Robeson, In re, 331 F.2d 610, 141 USPQ 485 (CCPA 1964)  
  706.02(k)

  Roberts, In re, 470 F.2d 1399, 176 USPQ 313 (CCPA 1973)  
  2181

  Rohm & Haas Co. v. Roberts Chem. Inc., 142 F.Supp. 499, 110 USPQ
  93 (S.W. Va. 1956) rev'd on other grounds 245 F.2d 693, 113 USPQ
  423 (4th Cir. 1957)  . .  1403

  Rohm and Haas Co. v. Mobil Oil Corp., 201 USPQ 80 (D. Del. 1978)
  1442.05(a)

  Rogoff, In re, 261 F.2d 601, 120 USPQ 185 (CCPA 1958)  
  1412.03  2258

  Rose, In re, 220 F.2d 459, 105 USPQ 237 (CCPA 1955)  
  2144.04

  Rosen, In re, 673 F.2d 388, 213 USPQ 347 (CCPA 1982)  
  1504.03  2141.01(a)

  Rosenberg, Ex parte, 46 USPQ 393 (Bd. App. 1939) 1610

  Rosenblum v. Hiroshima, 220 USPQ 383 (Comm'r Pat. 1983)  
  1206

  Rosemount Inc. v. Beckman Instruments, Inc., 727 F.2d 1540, 221
  USPQ 1 (Fed. Cir. 1984)  . .  2345

  Rothermel, In re, 276 F.2d 393, 125 USPQ 328 (CCPA 1960)  
  716.01

  Rowand, In re, 526 F.2d 558, 187 USPQ 487, (CCPA 1975)  
  1412.01  1450

  Royka, In re, 490 F.2d 981, 180 USPQ 580 (CCPA 1974)  
  2143.03

  Rubber - Tip Pencil Co. v. Howard, 87 U.S. 498 (1874)  
  2106

  Rubin, Ex parte, 128 USPQ 440 (Bd. App. 1959)  . .  2144.04

  Rubinfield, In re, 270 F.2d 391, 123 USPQ 210 (CCPA 1959)  
  1504.05

  Ruff, In re, 256 F.2d 590, 118 USPQ 340 (CCPA 1958)  
  2144.06

  Ruscetta, In re, 255 F.2d 687, 118 USPQ 101 (CCPA 1958)  
  201.11  2004

  . .  2217 2218

  Ruschig, In re, 343 F.2d 965, 145 USPQ 274 (CCPA 1965)  
  2144.08

  Ruskin, In re, 347 F.2d 843, 146 USPQ 211 (CCPA 1965)  
  2114

  Ruskin, In re, 354 F.2d 395, 148 USPQ 221 (CCPA 1966)  
  2107

  Russell, In re, 239 F.2d 387, 112 USPQ 58 (CCPA 1956)  
  1504.05

  Rutan, In re, 231 USPQ 864 (Comm'r Pat. 1986)  . .  150

  Ruth, In re, 278 F.2d 729, 126 USPQ 155 (CCPA 1960)  
  1412.03  2258

  Ryco, Inc. v. Ag - Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed.
  Cir. 1988)  . .  2144.07

  Rydeen v. Quigg, 748 F.Supp. 900, 16 USPQ2d 1876 (D.D.C. 1990),
  aff'd, 937 F.2d 623 (Fed. Cir. 1991) (table), cert. denied, 502
  U.S. 1075 (1992)  . .  2590

  Ryko Manufacturing Co. v. Nu - Star Inc., 950 F.2d 714, 21
  USPQ2d 1053 (Fed. Cir. 1991)  . .  2141.03
  2144.08

  Sakraida v. Ag. Pro. Inc., 425 U.S. 273, 189 USPQ 449 (1979)  

  716.01(a)  2141

  Salmon et al., In re, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir.
  1983)  . .  1504.20

  Samour, In re, 571 F.2d 559, 197 USPQ 1 (CCPA 1978)  
  2131.01

  Sampson v. Comm'r Pat. 195 USPQ 136, 137 (D.D.C. 1976)  
  1402

  Sandford, Ex parte 1914 C.D. 69,104 O.G. 1346 (Comm'r Pat. 1914)
  1504.05

  Sarett, In re, 327 F.2d 1005, 140 USPQ 474 (CCPA 1964)  804

  Sarkar, In re, 575 F.2d 870, 197 USPQ 788 (CCPA 1978) 724

  Sarkar, In re, 588 F.2d 1330, 200 USPQ 132 (CCPA 1978)  
  2106

  Sasajima, Ex parte, 212 USPQ 103 (Bd. App. 1981)  
  716.02(f)

  Sasse, In re, 629 F.2d 675, 207 USPQ 107 (CCPA 1980)  
  716.07

  . .  2121
  2121.02

  Sassin, Ex parte, 1906 C.D. 205 (Comm'r Pat. 1906)  
  409.03(d)

  Saunder Indus., Inc. v. Carborundum Co., 201 USPQ 204 (N.D. Ohio
  1978)  . . 
  1442.05(a)

  Saunders, Ex parte, 1883 C.D. 23, 23 O.G. 1224 (Comm'r Pat.
  1883)  . .  715.07

  Saunders, In re, 444 F.2d 599, 170 USPQ 213 (CCPA 1971)  
  716.02(f)

  . .  2142 2172

  Scarborough, In re, 500 F.2d 560, 182 USPQ 298 (CCPA 1974)  
  2106

  . .  2106.01
  2106.02

  . .  2164.06
  2164.06(a)

  Schaub, In re, 537 F.2d 509, 190 USPQ 324 (CCPA 1976)  
  715.03

  Schauman, In re, 572 F.2d 312, 197 USPQ 5 (CCPA 1978)  
  2131.02  2144.08

  Schechter, In re, 205 F.2d 185, 98 USPQ 144 (CCPA 1953)  
  2144.08

  . .  2144.09
  2173.05(i)

  Scheiber, In re, 587 F.2d 59, 199 USPQ 782 (CCPA 1978)  
  2163.03

  Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir.
  1983)  . .  2141.02
  2144.04

  Schier, Ex parte, 21 USPQ2d 1016 (Bd. Pat. App. & Inter. 1991)
  1206

  Schlittler, In re, 234 F.2d 882, 110 USPQ 304 (CCPA 1956)  
  2128.02

  Schnell, In re, 46 F.2d 203, 8 USPQ 19 (CCPA 1931)  1504.01

  Schneller, In re, 397 F.2d 350, 158 USPQ 210 (CCPA 1968)  
  804

  Schoenwald, In re, 964 F.2d 1122, 22 USPQ2d 1671 (Fed. Cir.
  1992)  . .  2122

  Schrader, In re, 22 F.3d 290, 30 USPQ2d 1445 (Fed. Cir. 1994)
  2106

  Schulze, In re, 346 F.2d 600, 145 USPQ 716 (CCPA 1965)  
  716.01(c)

  t2106.02, 2145

  Schwab v. Pittman, 451 F.2d 637, 172 USPQ 69 (CCPA 1971)  
  2308.02  2317

  Schwarz, In re, 147 USPQ 394 (Comm'r Pat. 1960)  . 
  409.03(c)

  Schwarze, Ex parte, 151 USPQ 426 (Bd. App. 1966)  
  608.01(p)

  Scott, In re, 323 F.2d 1016, 139 USPQ 297 (CCPA 1963)  
  2144.06

  Scott v. Brandenburger, 216 USPQ 326 (Bd. App. 1982)  
  2137

  Scott v. Finney, 34 F.3d 1058, 32 USPQ2d 1115 (Fed. Cir. 1994)
  2107  2107.02

  . .  2164.05

  Scragg, In re, 215 USPQ 715 (Comm'r Pat. 1982)  .  2285

  Scripps Clinic and Res. Found. v. Genentech Inc., 927 F.2d 1565,
  18 USPQ2d 1001 (Fed. Cir. 1991)  . .  2165.04

  . .  2411.01

  Scudder, Ex parte, 169 USPQ 814 (Bd. App. 1971)  .  1402

  Scully Signal Co. v. Electronics Corp. of America,  196 USPQ
  657 (1st. Cir. 1977)

  Searles, In re, 422 F.2d 431, 164 USPQ 623 (CCPA 1970)  
  602.03  2132.01

  Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d
  818, 221 USPQ 568 (Fed. Cir. 1984)  . . 
  2173.05(a)

  Seebach, In re, 88 F.2d 722, 33 USPQ 149, (CCPA 1937)  
  709.01

  Seid, In re, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)  2144.04

  Seifreid, In re, 407 F.2d 897, 160 USPQ 804 (CCPA 1969)  
  2144.03

  Seiko Koko Kubushiki Kaisha, Ex parte, 225 USPQ 1260 (Bd. App.
  1984)  . .  2258

  Self, In re, 671 F.2d 1344, 213 USPQ 1 (CCPA 1982)  2131.05

  Selmi, In re, 156 F.2d 96, 70 USPQ 197 (CCPA 1946)  2144.03

  Sernaker, In re, 702 F.2d 989, 217 USPQ 1 (Fed. Cir. 1983)  
  1206  2144

  Shaffer Tool Works v. Joy Mfg. Co., 687 F.Supp. 80,

  167 USPQ 170 (S.D. Tex. 1970)  . .  1701.01

  Sharp, Ex parte, Pat. No. 2,232,739  . .  820

  Shatterproof Glass Corp. v. Libbey Owens Ford Co., 758 F.2d 613,
  225 USPQ 634 (Fed. Cir. 1985)  . . 
  2133.03(b)

  . . 
  2133.03(c)

  . . 
  2173.05(a)

  Sheehan v. Doyle, 513 F.2d 895, 185 USPQ 489, (1st Cir.) cert.
  denied, 423 U.S. 874; (1975); 529 F.2d 38, 188 USPQ 545 (1st
  Cir.), cert. denied, 429 U.S. 987 (1976)  . .  2300.02
  2374

  Shell Development Co. v. Watson, 149 F.Supp. 279, 113 USPQ 265
  (D. D.C. 1957), aff'd per curiam, 252 F.2d 861, 116 USPQ 428
  (D.C. Cir. 1958)  . .  2106

  Shepherd, In re, 172 F.2d 560, 80 USPQ 495 (CCPA 1949)  
  716.07

  Sherwood, In re, 613 F.2d 809, 204 USPQ 537 (CCPA 1980)  
  608.01(h)

  . .  2106.01
  2165.04

  Shimer, In re, 69 F.2d 556, 21 USPQ 161 (CCPA 1934)  
  2333

  Shindelar v. Holdeman, 628 F.2d 1337, 207 USPQ 112 (CCPA 1980)
  2138.03  2332

  Shohan, Ex parte, 1941 C.D. 1 (Comm'r Pat. 1940) 2307.03

  Shokal, In re, 242 F.2d 771, 113 USPQ 283 (CCPA 1957)  

  715.03

  Sichert, In re, 566 F.2d 1154, 196 USPQ 209 (CCPA 1977)  
  2107

  . .  2107.01
  2107.02

  Silvestri v. Grant, 496 F.2d 593, 181 USPQ 706 (CCPA 1974)  
  2138.04

  Simon, In re, 302 F.2d 737, 133 USPQ 524 (CCPA 1962)  
  2174

  Simpson, Ex parte, 218 USPQ 1020 (Bd. App. 1982)  
  706.03(d)

  . . 
  2173.05(u)

  Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S.
  327, 65 USPQ 297 (1945)  . .  2144.07

  Sivaramakrishnan, In re, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982)
  2131.02

  Sjolund v. Musland, 847 F.2d 1573, 6 USPQ 2020 (Fed. Cir. 1988)
  2129

  Skill Corp. v. Lucerne Products, 178 USPQ 562 (N.D. Ill. 1973),
  aff'd, USPQ 396, (7th Cir. 1979), cert. denied, 183 USPQ 65
  (1975)  . . 
  2133.03(e)(3)

  Skinner, Ex parte, 2 USPQ2d 1788 (Bd. Pat. App. & Inter. 1986)
  2142

  Skrivan, In re, 427 F.2d 801, 166 USPQ 85 (CCPA 1970)  
  2164.08

  Skuballa, Ex parte, 12 USPQ2d 1570 (Bd. Pat. App. & Inter. 1989)
  2173.05(c)

  Slayter, In re, 276 F.2d 408, 125 USPQ 345 (CCPA 1960)  
  715.03  2131.02

  Smernoff, Ex parte, 215 USPQ 545 (Bd. App. 1982) 2137.01

  . . 
  2133.03(e)

  Smith, Ex parte, 1888 C.D. 131, 44 O.G. 1183 (Comm'r Pat. 1888)
  806.04(c)

  Smith, In re, 458 F.2d 1389, 173 USPQ 679 (CCPA 1972)  
  2163.05

  Smith v. Bousquet, 111 F.2d 157, 45 USPQ 347 (CCPA 1940)  
  2371

  Smith v. Hayashi, 209 USPQ 754 (Bd. of Pat. Inter. 1980)  
  2144.06

  Smith v. Mossinghoff, 671 F.2d 533, 213 USPQ 977 (D.C. Cir.
  1982)  . .  2590

  Smith and Mclaughlin, In re, 714 F.2d 1127, 218 USPQ 976 (Fed.
  Cir., 1983)  . . 
  2133.03(a)

  . . 
  2133.03(b)

  Smith Davis Mfg. Co. v. Mellon, 58 F.705 (8th Cir.1893)  
  2133.03(e)(6)

  Smolka, Ex parte, 207 USPQ 232 (Bd. App. 1980)  .  2136
  2136.01

  Smyth, In re, 189 F.2d 982, 90 USPQ 106 (CCPA 1951)  
  716.09

  Smythe, In re, 480 F.2d 1376, 178 USPQ 279 (CCPA 1973)  
  2163.07(a)

  Sneed and Young, In re, 710 F.2d 1594, 218 USPQ 385 (Fed. Cir.
  1983)  . .  1445

  . .  2111.01
  2145

  Snyder, Ex parte, 1904 C.D. 242, 110 O.G. 2636 (Comm'r Pat.
  1904)  . .  810.02

  Sobin et al., Ex parte, 139 USPQ 528 (Bd. App. 1962)  
  2173.05(t)

  Soli, In re, 317 F.2d 941, 127 USPQ 797 (CCPA 1963)  
  2144.02

  Soll, In re, 97 F.2d 623, 38 USPQ 189 (CCPA 1938)  2164.03

  Soni, In re, 54 F.3d 746, 34 USPQ2d 1684 (Fed. Cir. 1995)  
  707.07(f)  2144.08

  Sorenson, Ex parte, 3 USPQ2d 1462 (Bd. Pat. App. & Inter. 1987)
  2163.04  2163.05

  Spada, In re, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Cir. 1990)  
  2112.01

  Spectra - Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 3
  USPQ2d 1737 (Fed. Cir.), cert. denied, 484 U.S. 954 (1987)  
  2164.01(b)

  . .  2165.02
  2165.04

  Spiller, In re, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974)  
  715.02  715.03

  Sponnoble, In re, 405 F.2d 578, 160 USPQ 237 (CCPA 1969)  
  2141.02

  Staeger, In re, 189 USPQ 284 (Comm'r Pat. 1974)  .  2344

  Staeger v. Commissioner, 189 USPQ 272 (D.D.C. 1976)  
  409.03(b)

  Staehelin v. Secher, 24 USPQ2d 1513 (Bd. Pat. App. & Inter.

  1992)  . .  2138.04

  Stalego, Ex parte, 154 USPQ 52 (Bd. App. 1966)  .  901.01

  . .  2127
  2136.02

  Stalego v. Heymes, 263 F.2d 334, 120 USPQ 473 (CCPA 1959)  
  2307.02

  Standard Oil Co. v. Montedison, S.p.A., 494 F.Supp. 370, 206
  USPQ 676 (D.Del. 1980)  . .  2165.01

  Standish, Ex parte, 10 USPQ2d 1454 (Bd. Pat. App. & Inter. 1988)
  716.03(a)

  . .  716.03(b)
  2138.01

  Stanley, Ex parte, 121 USPQ 621 (Bd. App. 1958)  .  2181

  Steele, In re, 305 F.2d 859, 134 USPQ 292 (CCPA 1959)  
  2143.03  2173.06

  Steenbock, In re, 83 F.2d 912, 30 USPQ 45 (CCPA 1936)  
  201.11

  Steierman v. Connelly, 197 USPQ 288 (Comm'r Pat. 1976)  
  2138.03

  Steigerwald, Ex parte, 131 USPQ 74 (Bd. App. 1961)  
  2173.05(d)

  Steinberg v. Seitz, 517 F.2d 1359, 186 USPQ 209 (CCPA 1975)  
  2133.03(c)

  Stemniski, In re, 444 F.2d 581, 170 USPQ 343 (CCPA 1971)  
  2144.08  2144.09

  Stempel, In re, 113 USPQ 77, 1957 C.D. 200, 717 O.G. 886 (CCPA
  1957)  . .  715.03

  Stencel, In re, 828 F.2d 751, 4 USPQ2d 1071 (Fed. Cir. 1987)  
  2111.02

  Steppan, In re, 394 F.2d 1013, 156 USPQ 143 (CCPA 1967)  
  2173.05(o)

  Stern, Ex parte, 13 USPQ2d 1379 (Bd. Pat. App. & Inter. 1987)
  2144.04

  Stevens, Ex parte, 16 USPQ2d 1379 (Bd. Pat. App. & Inter. 1990)
  2107.02

  Stevens, In re, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949)  
  1504.01

  Stevens, In re, 212 F.2d 197, 101 USPQ 284 (CCPA 1954)  
  2144.04

  Stevenson v. International Trade Commission, 612 F.2d 546, 204
  USPQ 276 (CCPA 1979)  . . 
  2141.01(a)

  Stewart Sys. v. Comm'r of Pat. and Trademarks 1 USPQ2d 1879

  (E.D. Va. 1986)  . .  2258

  Sticker Indus. Supply Corp. v. Blaw Knox Co., 160 USPQ 177 (7th
  Cir. 1968)  . .  201.11

  Stoddard, In re, 213 USPQ 386 (Comm'r Pat. 1982) 2285

  Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871
  (Fed. Cir. 1983)  . . 
  716.01(a)

  . .  2141
  2141.01(a)

  . .  2141.02
  2144.08

  Strickland v. Glaser, 214 USPQ 549 (Comm'r Pat. 1980)  
  2311

  Strijland, Ex parte, 26 USPQ2d 1259 (Bd. Pat. App. & Inter.
  1992)  . .  1504.01

  Striker, In re, 182 USPQ 507, (Comm'r Pat. 1973)  
  409.03(b)

  Strong v. Gen'l Electric Co., 162 USPQ 141 (N.D. Ga. 1969)
  aff'd, 168 USPQ 8 (5th Cir. 1970) 168 USPQ 8 (5th Cir. 1970)  
  2133.03(b)

  Stryker, In re, 435 F.2d 1340, 168 USPQ 372 (CCPA 1971)  
  715.02

  Studiengesellschaft Kohle mbH v. Northern Petrochemical Co., 784
  F.2d 351, 228 USPQ 837 (Fed. Cir. 1986)  . .  804.01

  Suh v. Hoefle, 23 USPQ2d 1321 (Bd. Pat. App. & Inter. 1992)  
  2138.05

  Sun Studs, Inc. v. ATA Equipment Leasing, 872 F.2d 978, 10
  USPQ2d 1338 (Fed. Cir. 1989)  . .  2136.02
  2136.03

  Susi, In re, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)  
  2123  2144.08

  Suska, In re, 589 F.2d 527, 200 USPQ 497 (CCPA 1979)  
  2138.03

  Sutter Products Co. v. Pettibone Milliken Corp., 428 F.2d 639,
  166 USPQ 100 (7th Cir. 1970)  . .  2333

  Swanberg, In re, 129 USPQ 364 (Comm'r Pat. 1960) 608.01

  Sweet, In re, 136 F.2d 722, 58 USPQ 327 (CCPA 1943)  
  1211.01

  Swinehart, In re, 439 F.2d 210, 169 USPQ 226 (CCPA 1971)  
  2173.01

  . . 
  2173.05(g) 2183

  Switzer et al., In re, 166 F.2d 827, 77 USPQ 156 (CCPA 1948)  
  901.02

  Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964)  
  1403

  . .  1412.03
  2307.02

  Sylgab Steel & Wire Corp. v. Imoco - Gateway Corp., 357 F. Supp
  657, 178 USPQ 22 (N.D. Ill. 1973)  . . 
  608.01(h)

  . .  2165.01

  Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 19
  USPQ2d (Fed. Cir. 1991)  . .  804
  2121.01

  Tabuchi v. Nubel, 559 F.2d 1183, 194 USPQ 521 (CCPA 1977)  
  2404.02

  Taggart, In re, 115 USPQ 413, 1957 C.D. 6, 725 O.G. 397 (Comm'r
  Pat. 1957)  . .  608.02

  Talbott, In re, 443 F.2d 1397, 170 USPQ 281 (CCPA 1971)  
  901.05  1504.02

  . .  2135.01

  Tallent v. Lemoine, 204 USPQ 1058 (Comm'r Pat. 1979)  
  2361

  Tanczyn, In re, 347 F.2d 830, 146 USPQ 298 (CCPA 1965)  
  715.02

  Taner, In re, 681 F.2d 787, 214 USPQ 678 (CCPA 1982)  
  2106

  Tangsrid, In re, 184 USPQ 746 (Comm'r Pat. 1973)  
  201.14(b)

  Tanke, In re, 213 F.2d 551, 102 USPQ 93 (CCPA 1954)  
  2307.02

  Tansel, In re, 253 F.2d 241, 117 USPQ 188 (CCPA 1958)  
  706.02(l)

  Tarczy - Hornoch, In re, 397 F.2d 856, 158 USPQ 141 (CCPA 1955)
  2173.05(v)

  Teague, In re, 254 F.2d 145, 117 USPQ 284 (CCPA 1958)  
  715.05  804.02

  Technicon Instruments Corp. v. Alpkem Corp., 664 F.Supp. 1558, 2
  USPQ2d 1729 (D.Ore 1986)  . . 
  2164.05(a)

  Tennant v. Hako Minuteman, 4 USPQ2d 1167 (N.D. Ill. 1987)  
  2293

  Tenney, In re, 254 F.2d 619, 117 USPQ 348 (CCPA 1958)  
  2128.01

  Texas Instruments Inc. v. Int'l Trade Comm'n, 988 F.2d 1165, 26
  USPQ2d 1018 (Fed. Cir. 1993)  . .  716.04

  Tezel v. Bellantoni, 188 USPQ 688 (Bd. Pat. Inter. 1975)  
  2316

  Theis, In re, 610 F.2d 786, 204 USPQ 188 (CCPA 1979)  
  2133.03(b)

  . . 
  2133.03(c)

  . . 
  2133.03(e)(1)

  . . 
  2133.03(e)(3)

  . . 
  2133.03(e)(6)

  The NutraSweet Co., Ex parte, 19 USPQ2d 1586 (Bd. Pat. App. &
  Inter. 1991)  . .  716.02

  Thibault, Ex parte, 164 USPQ 666 (Bd. App. 1969) 2115

  Thompson, Ex parte, 24 USPQ2d 1618 (Bd. Pat. App. & Inter. 1992)
  2121.03

  Thompson v. Hamilton, 152 F.2d 994, 68 USPQ 161 (CCPA 1946)  
  2307.02

  Thorington et al., In re, 418 F.2d 528, 163 USPQ 644 (CCPA 1969)
  804  1504.06

  Thorpe, In re, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985)  
  2113

  Thumm, Ex parte, 132 USPQ 66 (Bd. App. 1961)  . .  716.02

  Tiffin, In re, 443 F.2d 394, 170 USPQ 88 (CCPA 1971)  
  716.04

  Tiffin, In re, 443 F.2d 394, 170 USPQ 80 (CCPA 1971)  
  2142

  Tiffin, In re, 448 F.2d 791, 171 USPQ 294 (1971) (CCPA 1971)  
  716.03(a)

  Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 4 USPQ2d 1450
  (Fed. Cir. 1987)  . .  1412.03
  2258

  Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773
  (Fed. Cir. 1985)  . .  2112.01

  . .  2131.03
  2144.05

  Tol - O-Matic Inc. v. Proma Produkt - Und Mktg. Gesellschaft
  m.b.h., 945 F.2d 1546, 20 USPQ2d 1332 (Fed. Cir. 1991)  
  2107.01

  Toma, In re, 575 F.2d 872, 197 USPQ 852 (CCPA 1978)  
  2106

  Tomlinson, In re, 363 F.2d 928, 150 USPQ 623 (CCPA 1966)  
  2112.02

  Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d 1321
  (Fed. Cir. 1994)  . . 
  2133.03(e)(6)

  Toro Co. v. L.R. Nelson Corp., 223 USPQ 636 (C.D. Ill. 1984)  
  2286

  Touval v. Newcombe, 194 USPQ 509 (Comm'r Pat. 1976)  
  2301.02

  Townsend, In re, 1913 C.D. 55 (Comm'r Pat. 1929) 720.05

  Townsend v. Smith, 36 F.2d 292, 4 USPQ 269 (CCPA 1929)  
  2138.04

  T.P. Lab. v. Professional Positions, Inc., 724 F.2d 965, 220
  USPQ 577 (Fed. Cir. 1984)  . . 
  2133.03(a)

  . . 
  2133.03(e)(4)

  Transco Products, Inc. v. Performance Contracting Inc., 38 F.3d
  551, 32 USPQ2d 1077 (Fed. Cir. 1994)  . .  201.11
  2107

  . .  2165.01

  Transmatic, Inc. v. Gulton Indus. Inc., 202 USPQ 559 (6th Cir.
  1979)  . .  1504.06

  Trevette, Ex parte, 1901 C.D. 170, 97 O.G. 1173 (Comm'r Pat.
  1901)  . .  820

  Trimless Cabinets, In re, 128 USPQ 95 (Comm'r Pat. 1960)  
  103

  Triplett v. Steinmayer, 129 F.2d 869, 54 USPQ 409 (CCPA 1942)
  2371

  Tucker v. Naito, 188 USPQ 260 (Bd. Pat. Inter. 1975)  
  2137.01

  Tucker v. Natta, 171 USPQ 494 (Bd. Pat. Inter. 1971)  
  2138.06

  Tucker Aluminum Prod. v. Grossman, 136 USPQ 244 (9th Cir. 1963)
  2133.03(e)(1)

  Twin Disc, Inc. v. U.S., 231 USPQ 417 (Cl. Ct. 1986)  
  2131.05

  Tytgat, Ex parte, 225 USPQ 907 (Bd. App. 1985)  .  2363.03

  UMC Elec. Co. v. United States, 816 F.2d 647, 2 USPQ2d 1465
  (Fed. Cir. 1987)  . .  804
  2133.03(b)

  . . 
  2133.03(c)

  Union Carbide Corp. v. Borg - Warner Corp., 550 F.2d 355, 193
  USPQ 1 (6th Cir. 1977)  . . 
  608.01(h)  2165

  Uniroyal Inc. v. Rudkin - Wiley Corp., 837 F.2d 1044, 5 USPQ2d
  1434 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988)  2144.08

  United States v. Adams, 383 U.S. 39, 148 USPQ 479 (1966)  
  716.01(b)

  . .  716.04
  2145

  United States v. Morgan, 313 U.S. 409, 61 S. Ct. 999 (1941)  
  1701.01

  United States v. Telectronics, Inc., 857 F.2d 778, 8 USPQ2d 1217
  (Fed. Cir. 1988), cert. denied, 490 U.S. 1046 (1989)  
  2164.01  2164.06

  United States Indus. Chem. Inc. v. Carbide and Carbon Chem.
  Corp., 315 U.S. 668, 53 USPQ 6 (1942)  . .  1411.02

  U.S. Industries v. Norton Co., 210 USPQ 107 (N.D. N.Y. 1980)  
  2004

  Ushakoff v. United States, 140 USPQ 341 (CT. Cl. 1964)  
  2133.03(e)(1)

  Utschig, Ex parte, 156 USPQ 156 (Bd. App. 1966)  .  2137.01

  Vaeck, In re, 947 F.2d 448, 20 USPQ2d 1438 (Fed. Cir. 1991)  
  706.02(j)

  . .  904.01(d)
  2107

  . .  2142 2143

  . .  2144.08
  2164.01

  . . 
  2164.01(c) 2164.03

  . . 
  2164.06(b) 2164.08

  Valmont Industries Inc. v. Reinke Manufacturing Co., Ind., 983
  F.2d 1039, 25 USPQ2d 1451 (Fed. Cir. 1993)  . .  2184
  2186

  Vamco Machine and Tool Inc., In re, 752 F.2d 1564, 224 USPQ 617
  (Fed. Cir. 1985)  . . 
  716.03(b)  2286

  Vandenberg v. Dairy Equipment Co., 740 F.2d 1560, 224 USPQ 195
  (Fed. Cir. 1984)  . .  716.06

  Vander Wal., Ex parte, 109 USPQ 119, 1956 C.D. 11, 705 O.G. 5
  (Bd. Pat. App. 1955)  . . 
  608.04(a)

  Van Esdonk, In re, 187 USPQ 671 (Comm'r Pat. 1975)  
  201.06(a)  201.16

  Van Geuns, In re, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993)
  2145

  Van Langehhoven, In re, 458 F.2d 132, 173 USPQ 426 (CCPA 1972)
  2217  2258

  Van Ornum and Stang, In re, 686 F.2d 937, 214 USPQ 761 (CCPA
  1982)  . .  804

  Van Otteren v. Hafner, 278 F.2d 738, 126 USPQ 151 (CCPA 1960)
  201.03  2336

  Varga, Ex Parte, 189 USPQ 209 (Bd. App. 1973)  . .  2012.01

  Vas - Cath, Inc. v. Makurkar, 935 F.2d 1555, 19 USPQ2d 1111
  (Fed. Cir. 1991)  . .  1504.20
  2161

  . .  2163
  2163.02 2164

  Venezia, In re, 530 F.2d 956, 189 USPQ 149 (CCPA 1976)  
  2172.01  2173.05(g)

  Venner, In re, 262 F.2d 91, 120 USPQ 193 (CCPA 1958)  
  2144.04

  Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 1051, 2
  USPQ2d 1051 (Fed. Cir. 1987)  . .  2131

  Vickers, In re, 141 F.2d 522, 61 USPQ 122 (CCPA 1944)  
  2164.03

  Vincent v. Mossinghoff, 230 USPQ 621, (D.D.C. 1985)  513

  Vogel et al., In re, 422 F.2d 438, 164 USPQ 619 (CCPA 1970)  
  804  804.02

  . .  1504.06
  2111.01

  Von Brimer v. Whirlpool Corp., 536 F.2d 838, 190 USPQ 528 (9th
  Cir. 1976)  . .  1208.03

  Von Lagenhoven, In re, 458 F.2d 132, 173 USPQ 426 (CCPA 1972)
  201.11  2004

  Wadlinger et al., In re, 496 F.2d 1200, 181 USPQ 826 (CCPA 1974)
  1412.02

  Wagenorst, In re, 62 F.2d 831, 16 USPQ 126, 20 CCPA 829 (CCPA
  1933)  . .  715.05

  Wagner, In re, 103 F.2d 414, 41 USPQ 504, (CCPA 1936)  
  716.02

  Wahl et al. v. Rexnord, Inc., 206 USPQ 865 (3rd Cir. 1980)  
  1504.06

  Wakefield, In re, 422 F.2d 897, 164 USPQ 636 (CCPA 1970)  
  715.02

  . . 
  2173.05(i) 2173.05(n)

  Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 31
  USPQ2d 1855 (Fed. Cir. 1994)  . . 

  706.03(o)

  Walsdorf v. Comm., 229 USPQ 559 (D.D.C. 1986)  . .  1216.02

  Walsh v. Sakai, 167 USPQ 465 (Comm'r Pat. 1970)  .  2337

  Walter, In re, 618 F.2d 758, 205 USPQ 397 (CCPA 1980)  
  2106

  . .  2183 2184

  Wands, In re, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988)  
  2164.01  2164.01(a)

  . .  2164.06
  2164.06(b)

  Wang Laboratories Inc. v. Toshiba Corp., 993 F.2d 858, 26 USPQ2d
  1767 (Fed. Cir. 1993)  . .  2164.01
  2141.01(a)

  . .  2164.06
  2164.06(b)

  Ward, In re, 236 F.2d 428, 111 USPQ 101 (CCPA 1956)  
  715.05  804.02

  Warmerdam, In re, 33 F.3d 1354, 31 USPQ2d 1754 (Fed. Cir. 1994)
  2106

  Warner, In re, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967)  
  2142

  Warner - Jenkinsen Co. v. Hilton Davis Chemical Co., **U.S.** 41
  USPQ2d 1865 (1997)  . .  2184
  2186

  Water Technologies Corp. v. Calco, Ltd., 850 F.2d 660, 7 USPQ2d
  1097 (Fed. Cir. 1988)  . .  2111.03

  Watkinson, In re, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990)
  1201  1402  1450

  Watson, In re, 517 F.2d 465, 186 USPQ 11 (CCPA 1975)  
  2107  2107.02

  Watson v. Allen, 117 USPQ 68 (D.C. Cir. 1957)  . . 
  2133.03(e)(3)

  . . 
  2133.03(e)(7)

  Waugh, In re, 135 F.2d 627, 57 USPQ 371 (CCPA 1943)  819

  Waymouth, In re, 499 F.2d 1273, 182 USPQ 290 (CCPA 1974)  
  716.02

  Webb, In re, 916 F.2d 1553, 16 USPQ2d 1433 (Fed. Cir. 1990)  
  1504.01

  Weber, In re, 405 F.2d 1403, 160 USPQ 549 (CCPA 1969)  
  716.07

  Weber et al., In re, 580 F.2d 455, 198 USPQ 328 (CCPA 1978)  
  803

  Weiler et al., In re, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir.
  1986)  . .  1414.03

  Weiss, Ex parte, 159 USPQ I22, 852 O.G. 255, (Bd. App. 1967)  
  901.05  1504.02

  Weiss, In re, 989 F.2d 1202, 26 USPQ2d 1885 (Fed. Cir. 1993)  
  2111.01

  Weldeck v. Lewis, 120 USPQ 88 (Comm'r Pat. 1955) 2309.01

  Wells v. Fremont, 177 USPQ 22 ( Bd. Pat. Inter. 1972)  
  2138.05

  Wende v. Horine, 225 F. 501 (7th Cir. 1915)  . . 
  2133.03(b)

  Wertheim, In re, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)  
  2144.05

  . .  2163.04
  2163.05

  Wertheim, In re, 646 F.2d 527, 209 USPQ 554 (CCPA 1981)  
  2136.03

  Western Elec. Co. v. Piezo Technology, Inc., 860 F.2d 428, 8
  USPQ2d 1853 (Fed. Cir 1988)  . .  1701.01

  Weston, Ex parte, 1911 C.D. 218, 173 Q.G. 285 (Comm'r Pat. 1911)
  810.02

  Wetmore v. Quick, 536 F.2d 631, 190 USPQ 223 (CCPA 1976)  
  2138.05  2308.02

  Wetterau, In re, 356 F.2d 556, 148 USPQ 499 (CCPA 1966)  804

  White, Ex parte, 759 O.G. 783 (Bd. App. 1958)  . . 
  2173.05(o)

  White et al., In re, 405 F.2d 904, 160 USPQ 417 (CCPA 1969)  
  804

  White Consolidated Industries v. Vega Servo - Control, Inc., 713
  F.2d 788,218 USPQ 961 (Fed. Cir. 1983); 214 USPQ 796 (S.D. Mich.
  1982)  . . 
  608.01(p)

  . .  2106.02

  Woods v. Tsuchiya, 207 USPQ 228 (Comm'r Pat. 1979)  2316

  Whitelaw, Ex parte, 1915 C.D. 18, 219 O.G. 1237 (Comm'r Pat.
  1914)  . . 
  2173.05(n)

  Whittle, In re, 454 F.2d 1193, 172 USPQ 535 (CCPA 1972)  
  2136.05

  Wiechert, In re, 370 F.2d 927, 152 USPQ 247 (CCPA 1967)  
  2144.09

  Wiesner v. Weigert, 666 F.2d 582, 212 USPQ 721 (CCPA 1981)  
  2138.05

  Wiggins, In re, 488 F.2d 538, 179 USPQ 421 (CCPA 1973)  
  2121.02  2131.04

  . .  2173.02
  2173.05(a)

  Wilder, In re, 563 F.2d 457, 195 USPQ 426 (CCPA 1977)  
  2144.08  2144.09

  Wilder, In re, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984)  
  1402  2163.05

  Wilkinson, In re, 304 F.2d 673, 134 USPQ 171 (CCPA 1962)  
  715.07

  Willien, In re, 74 F.2d 550, 24 USPQ 210 (CCPA 1935)  715

  Willingham, In re, 282 F.2d 353, 127 USPQ 211 (CCPA 1960)  
  714.19

  . .  1302.04
  1412.02

  Wilson, In re, 311 F.2d 266, 135 USPQ 442 (CCPA 1962)  
  2124

  Wilson, In re, 424 F.2d 1382, 165 USPQ 494, (CCPA 1970)  
  2143.03  2173.06

  Wilson v. Yakel, 1876 C.D. 245 (Comm'r Pat. 1876)  2301.02

  Winkhaus, In re, 527 F.2d 637, 188 USPQ 129 (CCPA 1975)  
  2173.05(q)

  Winkler v. Guglielmino, Appeal No., 89 - 1571 (Fed. Cir. May 9,
  1990) (unpublished)  . .  2333

  Wirt, Ex parte, 1905 C.D. 247, 117 O.G. 599 (Comm'r Pat. 1905)
  714.13

  Wiseman, In re, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)  
  2106.02

  . .  2141.02
  2145

  Wikdahl, Ex parte, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)
  2258

  Wittry, In re, 489 F.2d 1299, 180 USPQ 320 (CCPA 1974)  
  1414.01

  W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
  220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)
  2132  2133.03(a)

  . .  2141.01
  2141.02

  . .  2144.08
  2164.08

  . .  2165.04
  2173.05(a)

  Wooddy, In re, 331 F.2d 636, 141 USPQ 518 (CCPA 1964)  
  2107.02

  Woodruff, In re, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
  2144.05

  Worrest, In re, 201 F.2d 930, 96 USPQ 381 (CCPA 1953)  
  2173.05(k)

  Wright, 1876 C.D. 217, 10 O.G. 587 (Comm'r Pat. 1876)  
  1410.01

  Wright, In re, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977)  
  2125  2145

  Wright, In re, 866 F.2d 422, 9 USPQ2d 1649 (Fed. Cir. 1989)  
  2163.03

  Wright, In re, 999 F.2d 1557, 27 USPQ2d 1510 (Fed. Cir. 1993)
  2107  2164.03

  . . 
  2164.01(a) 2164.04

  . . 
  2164.05(a) 2164.06(b)

  . .  2164.08

  Wu, Ex parte, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989)  
  2144.04  2173.05(h)

  Wu v. Jucker, 167 USPQ 467 (Bd. Pat. Inter. 1968)  2138.05
  2138.06

  Wyer, In re, 655 F.2d 221, 210 USPQ 790 (CCPA 1981)  
  901.05  2127  2128

  Yale, In re, 434 F.2d 66, 168 USPQ 46 (CCPA 1970)  716.07

  Yamamoto et al., In re, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir.
  1984)  . .  2258

  Yardley, In re, 181 F.2d 331, 181 USPQ 331 (CCPA 1974)  
  1512

  Yarn Processing Patent Validity Litigation, 183 USPQ 65 (5th
  Cir. 1974)  . .  2128.01

  York Products Inc. v. Central Tractor Farm & Family Center, 99
  F.3d 1568, 40 USPQ2d 1619 (Fed. Cir. 1996)  . .  2181

  Yoshino, Ex parte, 227 USPQ 52 (Bd. Pat. App. & Inter. 1985)  
  2141.01

  Young, Ex parte, 18 Gour. 24  . .  1213.01

  Young, In re, 75 F.2d 966, 25 USPQ 69 (CCPA 1935)  2115

  Young, In re, 927 F.2d 588, 18 USPQ2d 1089 (Fed. Cir. 1991)  
  2143.01

  Young v. Dworkin, 489 F.2d 1277, 180 USPQ 388 (CCPA 1974)  
  2138.03

  Yuasa Battery v. Comm'r, 3 USPQ2d 1143 (D.D.C. 1987)  
  2279

  Zahn, In re, 617 F.2d 261, 204 USPQ 988 (CCPA 1980)  
  1503.02

  Zechnall, Ex parte, 194 USPQ 461 (Bd. App. 1973) 2106
  2164.05(a)

  Zenitz, In re, 333 F.2d 924, 142 USPQ 158 (CCPA 1964)  
  716.02(f)

  Zickendraht, In re, 319 F.2d 225, 138 USPQ 22 (CCPA 1963)  
  804  804.03

  Ziegler, In re, 443 F.2d 1211, 170 USPQ 129 (CCPA 1971)  804

  Ziegler, In re, 992 F.2d 1197, 26 USPQ2d 1600 (Fed. Cir. 1993)
  2106  2107

  . .  2107.01
  2163.03

  Zimmerley, Ex parte, 153 USPQ 367 (Bd. App. 1966)  2181

  Zletz, In re, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989)  
  715  2106  2111.01

  2171, 2173.05(a)

  Appendix L - Patent Laws

  PATENT LAWS

 United States Code

 Title 35 - Patents

  PART I - PATENT AND TRADEMARK OFFICE

 CHAPTER 1 - ESTABLISHMENT, OFFICERS, FUNCTIONS

 Sec.

 1  Establishment.

 2  Seal.

 3  Officers and employees.

 4  Restrictions  on  officers  and  employees  as  to
interest in patents.

 5  [Repealed.]

 6  Duties of Commissioner.

 7  Board of Patent Appeals and Interferences.

 8  Library.

 9  Classification of patents.

 10  Certified copies of records.

 11  Publications.

 12  Exchange  of  copies  of  patents  with  foreign
countries.

 13  Copies of patents for public libraries.

 14  Annual report to Congress.

  CHAPTER 2 - PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE

 21  Filing date and day for taking action.

 22  Printing of papers filed.

 23  Testimony in Patent and Trademark Office cases.

 24  Subpoenas, witnesses.

 25  Declaration in lieu of oath.

 26  Effect of defective execution.

  CHAPTER 3 - PRACTICE BEFORE PATENT AND TRADEMARK OFFICE

 31  Regulations for agents and attorneys.

 32  Suspension or exclusion from practice.

 33  Unauthorized representation as practitioner.

  CHAPTER 4 - PATENT FEES' FUNDING, SEARCH SYSTEMS

 41  Patent fees; patent and trademark search systems.

 42  Patent and Trademark Office funding.

  PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

  CHAPTER 10 - PATENTABILITY OF INVENTIONS

 100  Definitions.

 101  Inventions patentable.

 102  Conditions for patentability; novelty and loss of
right to patent.

 103  Conditions for patentability; non - obvious subject
matter.

 104  Invention made abroad.

 105  Inventions in outer space.

  CHAPTER 11 - APPLICATION FOR PATENT

 111  Application.

 112  Specification.

 113  Drawings.

 114  Models, specimens.

 115  Oath of applicant.

 116  Inventors.

 117  Death or incapacity of inventor.

 118  Filing by other than inventor.

 119  Benefit of earlier filing date; right of priority.

 120  Benefit of earlier filing date in the United
States.

 121  Divisional applications.

 122  Confidential status of applications.

  CHAPTER 12 - EXAMINATION OF APPLICATION

 131  Examination of application.

 132  Notice of rejection; reexamination.

 133  Time for prosecuting application.

 134  Appeal  to  the  Board  of  Patent  Appeals  and
Interferences.

 135  Interferences.

 CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE DECISION

 141  Appeal to Court of Appeals for the Federal Circuit.

 142  Notice of appeal.

 143  Proceedings on appeal.

 144  Decision on appeal.

 145  Civil action to obtain patent.

 146  Civil action in case of interference.

  CHAPTER 14 - ISSUE OF PATENT

 151  Issue of patent.

 152  Issue of patent to assignee.

 153  How issued.

 154  Contents and term of patent.

 155  Patent term extension.

 155  A patent term restoration.

 156  Extension of patent term.

 157  Statutory invention registration.

  CHAPTER 15 - PLANT PATENTS

 161  Patents for plants.

 162  Description, claim.

 163  Grant.

 164  Assistance of the Department of Agriculture.

  CHAPTER 16 - DESIGNS

 171  Patents for designs.

 172  Right of priority.

 173  Term of design patent.

  CHAPTER 17 - SECRECY OF CERTAIN INVENTIONS AND FILING
  APPLICATIONS IN FOREIGN COUNTRIES

 181  Secrecy of certain inventions and withholding of
patent.

 182  Abandonment  of  invention  for  unauthorized
disclosure.

 183  Right to compensation.

 184  Filing of application in foreign country.

 185  Patent barred for filing without license.

 186  Penalty.

 187  Nonapplicability to certain persons.

 188  Rules and regulations, delegation of power.

  CHAPTER [18] 38 - PATENT RIGHTS IN INVENTIONS MADE WITH
  FEDERAL ASSISTANCE

 200  Policy and objective.

 201  Definitions.

 202  Disposition of rights.

 203  March - in rights.

 204  Preference for United States industry.

 205  Confidentiality.

 206  Uniform clauses and regulations.

 207  Domestic and foreign protection of federally owned
inventions.

 208  Regulations governing Federal licensing.

 209  Restrictions  on  licensing  of  federally  owned
inventions.

 210  Precedence of chapter.

 211  Relationship to antitrust laws.

 212  Disposition of rights in educational awards.

  PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

  CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS

 251  Reissue of defective patents.

 252  Effect of reissue.

 253  Disclaimer.

 254  Certificate of correction of Patent and Trademark
Office mistake.

 255  Certificate of correction of applicant's mistake.

 256  Correction of named inventor.

  CHAPTER 26 - OWNERSHIP AND ASSIGNMENT

 261  Ownership; assignment.

 262  Joint owners.

  CHAPTER 27 - GOVERNMENT INTERESTS IN PATENTS

 266  [Repealed.]

 267  Time for taking action in Government applications.

  CHAPTER 28 - INFRINGEMENT OF PATENTS

 271  Infringement of patent.

 272  Temporary presence in the United States.

 CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER
  ACTIONS

 281  Remedy for infringement of patent.

 282  Presumption of validity; defenses.

 283  Injunction.

 284  Damages.

 285  Attorney fees.

 286  Time limitation on damages.

 287  Limitation on damages and other remedies; marking
and notice.

 288  Action for infringement of a patent containing an
invalid claim.

 289  Additional  remedy  for  infringement  of  design
patent.

 290  Notice of patent suits.

 291  Interfering patents.

 292  False marking.

 293  Nonresident patentee; service and notice.

 294  Voluntary arbitration.

 295  Presumptions: Product made by patented process. 296
Liability of States, instrumentalities of States, and State
officials for infringement of patents.

 CHAPTER 30 - PRIOR ART CITATIONS TO OFFICE AND
  REEXAMINATION OF PATENTS

 301  Citation of prior art.

 302  Request for reexamination.

 303  Determination of issue by Commissioner.

 304  Reexamination order by Commissioner.

 305  Conduct of reexamination proceedings.

 306  Appeal.

 307  Certificate of patentability, unpatentability, and
claim cancellation.

  PART IV - PATENT COOPERATION TREATY

  CHAPTER 35 - DEFINITIONS

 351  Definitions.

 CHAPTER 36 - INTERNATIONAL STAGE

 361  Receiving Office.

 362  International Searching Authority and International
Preliminary Examining Authority.

 363  International application designating the United
States: Effect.

 364  International stage: Procedure.

 365  Right of priority; benefit of the filing date of a
prior application.

 366  Withdrawn international application.

 367  Actions of other authorities: Review.

 368  Secrecy of certain inventions; filing international
applications in foreign countries.

  CHAPTER 37 - NATIONAL STAGE

 371  National stage: Commencement.

 372  National stage: Requirements and procedure.

 373  Improper applicant.

 374  Publication of international application: Effect.

 375  Patent issued on international application: Effect.

 376  Fees.

  LAWS NOT IN TITLE 35, UNITED STATES CODE

 18 U.S.C. 1008  Statements or entries generally.

 18 U.S.C. 2071  Concealment,  removal,  or  mutilation
generally.

  PART I - PATENT AND TRADEMARK OFFICE

 CHAPTER 1 - ESTABLISHMENT, OFFICERS, FUNCTIONS

 Sec.

 1  Establishment.

 2  Seal.

 3  Officers and employees.

 4  Restrictions  on  officers  and  employees  as  to
interest in patents.

 5  [Repealed.]

 6  Duties of Commissioner.

 7  Board of Patent Appeals and Interferences.

 8  Library.

 9  Classification of patents.

 10  Certified copies of records.

 11  Publications.

 12  Exchange  of  copies  of  patents  with  foreign
countries.

 13  Copies of patents for public libraries.

 14  Annual report to Congress.

 35 U.S.C. 1  Establishment.

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

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 2  Seal.

  The Patent and Trademark Office shall have a seal with
which  letters  patent,  certificates  of  trademark
registrations, and papers issued from the Office shall be
authenticated.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 3  Officers and employees.

  (a) There shall be in the Patent and Trademark Office a
Commissioner  of  Patents  and  Trademarks,  a  Deputy
Commissioner, two Assistant Commissioners, and examiners -
in - chief appointed under section 7 of this title. The
Deputy Commissioner, or, in the event of a vacancy in that
office,  the  Assistant  Commissioner  senior  in  date  of
appointment, shall fill the office of Commissioner during a
vacancy in that office until the Commissioner is appointed
and  takes  office.  The  Commissioner  of  Patents  and
Trademarks,  the  Deputy  Commissioner,  and  the  Assistant
Commissioners shall be appointed by the President, by and
with the advice and consent of the Senate. The Secretary of
Commerce,  upon  the  nomination  of  the  Commissioner,  in
accordance with law shall appoint all other officers and
employees.

  (b) The Secretary of Commerce may vest in himself the
functions  of  the  Patent  and  Trademark  Office  and  its
officers and employees specified in this title and may from
time to time authorize their performance by any other
officer or employee.

  (c) The Secretary of Commerce is authorized to fix the
per annum rate of basic compensation of each examiner - in -
chief in the Patent and Trademark Office at not in excess of
the maximum scheduled rate provided for positions in grade
17 of the General Schedule of the Classification Act of
1949, as amended.

  (d) The Commissioner of Patents and Trademarks shall be
an  Assistant  Secretary  of  Commerce  and  shall  receive
compensation at the rate prescribed by law for Assistant
Secretaries of Commerce.

  (e) The members of the Trademark Trial and Appeal Board
of the Patent and Trademark Office shall each be paid at a
rate not to exceed the maximum rate of basic pay payable for
GS - 16 of the General Schedule under section 5332 of title
5.

  (Subsection (c) amended Sept. 6, 1958, Public Law 85 -
933, sec. 1, 72 Stat. 1793; Sept. 23, 1959, Public Law 85 -
370, sec. 1(a), 73 Stat. 650; Aug. 14, 1964, Public Law 88 -
426, sec. 305(26), 78 Stat. 425; Jan. 2, 1975, Public Law 93
- 596, sec. 1, 88 Stat. 1949; Jan. 2, 1975, Public Law 93 -
601, sec. 1, 88 Stat. 1956; Aug. 27, 1982, Public Law 97 -
247, sec. 4, 96 Stat. 319.)

  (Subsection (d) added Oct. 25, 1982, Public Law 97 - 366,
96 Stat. 1760.)

  (Subsection (e) added Nov. 8, 1984, Public Law 98 - 622,

sec. 405, 98 Stat. 3392.)

 35 U.S.C. 4  Restrictions on officers and employees as
to interest in patents.

  Officers and employees of the Patent and Trademark
Office shall be incapable, during the period of their
appointments and for one year thereafter, of applying for a
patent and of acquiring, directly or indirectly, except by
inheritance or bequest, any patent or any right or interest
in any patent, issued or to be issued by the Office. In
patents applied for thereafter they shall not be entitled to
any  priority  date  earlier  than  one  year  after  the
termination of their appointment.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 5  [Repealed]

  (June 6, 1972, Public Law 92 - 310, Title II, sec.
208(a), 86 Stat. 203.)

 35 U.S.C. 6  Duties of Commissioner.

  (a)  The  Commissioner,  under  the  direction  of  the
Secretary of Commerce, shall superintend or perform all
duties required by law respecting the granting and issuing
of patents and the registration of trademarks; shall have
the authority to carry on studies, programs, or exchanges of
items  or  services  regarding  domestic  and  international
patent and trademark law or the administration of the Patent
and  Trademark  Office,  including  programs  to  recognize,
identify, assess, and forecast the technology of patented
inventions and their utility to industry; and shall have
charge of property belonging to the Patent and Trademark
Office. He may, subject to the approval of the Secretary of
Commerce, establish regulations, not inconsistent with law,
for the conduct of proceedings in the Patent and Trademark
Office.

  (b)  The  Commissioner,  under  the  direction  of  the
Secretary  of  Commerce,  may,  in  coordination  with  the
Department  of  State,  carry  on  programs  and  studies
cooperatively with foreign patent offices and international
intergovernmental  organizations,  or  may  authorize  such
programs and studies to be carried on, in connection with
the performance of duties stated in subsection (a) of this
section.

  (c)  The  Commissioner,  under  the  direction  of  the
Secretary of Commerce, may, with the concurrence of the
Secretary of State, transfer funds appropriated to the
Patent and Trademark Office, not to exceed $100,000 in any
year, to the Department of State for the purpose of making
special  payments  to  international  intergovernmental
organizations  for  studies  and  programs  for  advancing
international cooperation concerning patents, trademarks,
and related matters. These special payments may be in in
addition to any other payments or contributions to the
international organization and shall not be subject to any
limitations imposed by law on the amounts of such other
payments or contributions by the Government of the United
States.

  (Subsection (c) amended Oct. 5, 1971, Public Law 92 -
132, 85 Stat. 364; Jan. 2, 1975, Public Law 93 - 596, sec.
1, 88 Stat. 1949; Aug. 27, 1982, Public Law 97 - 247, sec.
13, 96 Stat. 321.)

  (Subsection (d) repealed Aug. 27, 1982, Public Law 97 -
247, sec. 7, 96 Stat. 320.)

  (Subsection (a) amended Dec. 10, 1991, Public Law 102 -
204, sec. 8, 105 Stat. 1641.)

 35 U.S.C. 7  Board of Patent Appeals and
Interferences.

  (a) The examiners - in - chief shall be persons of
competent legal knowledge and scientific ability, who shall
be appointed to the competitive service. The Commissioner,
the Deputy Commissioner, the Assistant Commissioners, and
the examiners - in - chief shall constitute the Board of
Patent Appeals and Interferences.

  (b) The Board of Patent Appeals and Interferences shall,
on written appeal of an applicant, review adverse decisions
of  examiners  upon  applications  for  patents  and  shall
determine  priority  and  patentability  of  invention  in
interferences declared under section 135(a) of this title.
Each appeal and interference shall be heard by at least
three  members  of  the  Board  of  Patent  Appeals  and
Interferences, who shall be designated by the Commissioner.
Only the Board of Patent Appeals and Interferences has the
authority to grant rehearings.

  (c) Whenever the Commissioner considers it necessary, in
order to keep current the work of the Board of Patent
Appeals and Interferences, the Commissioner may designate
any patent examiner of the primary examiner grade or higher,
having the requisite ability, to serve as examiner - in -
chief for periods not exceeding six months each. An examiner
so designated shall be qualified to act as a member of the
Board of Patent Appeals and Interferences. Not more than one
of  the  members  of  the  Board  of  Patent  Appeals  and
Interferences  hearing  an  appeal  or  determining  an
interference may be an examiner so designated. The Secretary
of Commerce is authorized to fix the pay of each designated
examiner - in - chief in the Patent and Trademark Office at
not to exceed the maximum rate of basic pay payable for
grade GS - 16 of the General Schedule under section 5332 of
title 5. The rate of basic pay of each individual designated
examiner - in - chief shall be adjusted, at the close of the
period for which that individual was designated to act
examiner - in - chief, to the rate of basic pay that
individual would have been receiving at the close of such
period if such designation had not been made.

  (Amended Nov. 8, 1984, Public Law 98 - 622, sec. 201(a),
98 Stat. 3386.)

 35 U.S.C. 8  Library.

  The Commissioner shall maintain a library of scientific
and other works and periodicals, both foreign and domestic,
in the Patent and Trademark Office to aid the officers in
the discharge of their duties.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88

Stat. 1949.)

 35 U.S.C. 9  Classification of patents.

  The  Commissioner  may  revise  and  maintain  the
classification by subject matter of United States letters
patent, and such other patents and printed publications as
may  be  necessary  or  practicable,  for  the  purpose  of
determining with readiness and accuracy the novelty of
inventions for which applications for patent are filed.

 35 U.S.C. 10  Certified copies of records.

  The  Commissioner  may  furnish  certified  copies  of
specifications and drawings of patents issued by the Patent
and Trademark Office, and of other records available either
to the public or to the person applying therefor.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 11  Publications.

  (a) The Commissioner may print, or cause to be printed,
the following:

  1.  Patents, including specifications and drawings,
together with copies of the same. The Patent and Trademark
Office may print the headings of the drawings for patents
for the purpose of photolithography.

  2.  Certificates of trademark registrations, including
statements and drawings, together with copies of the same.

  3.  The Official Gazette of the United States Patent
and Trademark Office .

  4.  Annual indexes of patents and patentees, and of
trademarks and registrants.

  5.  Annual volumes of decisions in patent and trade -
mark cases.

  6.  Pamphlet copies of the patent laws and rules of
practice,  laws  and  rules  relating  to  trademarks,  and
circulars or other publications relating to the business of
the Office .

  (b) The Commissioner may exchange any of the publications
specified in items 3, 4, 5, and 6 of subsection (a) of this
section for publications desirable for the use of the Patent
and Trademark Office.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 12  Exchange of copies of patents with
foreign countries.

  The Commissioner may exchange copies of specifications
and drawings of United States patents for those of foreign
countries.

 35 U.S.C. 13  Copies of patents for public libraries.

  The  Commissioner  may  supply  printed  copies  of
specifications and drawings of patents to public libraries
in the United States which shall maintain such copies for
the use of the public, at the rate for each year's issue
established for this purpose in section 41(d) of this title.

  (Amended Aug. 27, 1982, Public Law 97 - 247, sec. 15, 96
Stat. 321.)

 35 U.S.C. 14  Annual report to Congress.

  The Commissioner shall report to Congress annually the
moneys received and expended, statistics concerning the work
of the Office, and other information relating to the Office
as may be useful to the Congress or the public.

 CHAPTER 2 - PROCEEDINGS IN THE PATENTS AND TRADEMARK OFFICE

 Sec.

 21  Filing date and day for taking action.

 22  Printing of papers filed.

 23  Testimony in Patent and Trademark Office cases.

 24  Subpoenas, witnesses.

 25  Declaration in lieu of oath.

 26  Effect of defective execution.

 35 U.S.C. 21  Filing date and day for taking action.

  (a) The Commissioner may by rule prescribe that any paper
or fee required to be filed in the Patent and Trademark
Office will be considered filed in the Office on the date on
which it was deposited with the United States Postal Service
or would have been deposited with the United States Postal
Service but for postal service interruptions or emergencies
designated by the Commissioner.

  (b) When the day, or the last day, for taking any action
or paying any fee in the United States Patent and Trademark
Office falls on Saturday, Sunday, or a Federal holiday
within the District of Columbia, the action may be taken, or
fee paid, on the next succeeding secular or business day.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949; Aug. 27, 1982, Public Law 97 - 247, sec. 12, 96
Stat. 321.)

 35 U.S.C. 22  Printing of papers filed.

  The Commissioner may require papers filed in the Patent
and Trademark Office to be printed or typewritten.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 23  Testimony in Patent and Trademark Office
cases

  The  Commissioner  may  establish  rules  for  taking
affidavits and depositions required in cases in the Patent

and Trademark Office. Any officer authorized by law to take
depositions to be used in the courts of the United States,
or of the State where he resides, may take such affidavits
and depositions.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 24  Subpoenas, witnesses

  The clerk of any United States court for the district
wherein testimony is to be taken for use in any contested
case in the Patent and Trademark Office, shall, upon the
application of any party thereto, issue a subpoena for any
witness residing or being within such district, commanding
him to appear and testify before an officer in such district
authorized to take depositions and affidavits, at the time
and place stated in the subpoena. The provisions of the
Federal Rules of Civil Procedure relating to the attendance
of witnesses and to the production of documents and things
shall apply to contested cases in the Patent and Trademark
Office.

  Every witness subpoenaed and in attendance shall be
allowed the fees and traveling expenses allowed to witnesses
attending the United States district courts.

  A judge of a court whose clerk issued a subpoena may
enforce obedience to the process or punish disobedience as
in other like cases, on proof that a witness, served with
such subpoena, neglected or refused to appear or to testify.
No witness shall be deemed guilty of contempt for disobeying
such subpoena unless his fees and traveling expenses in
going to, and returning from, and one day's attendance at
the place of examination, are paid or tendered him at the
time of the service of the subpoena; nor for refusing to
disclose any secret matter except upon appropriate order of
the court which issued the subpoena.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 25  Declaration in lieu of oath.

  (a) The Commissioner may by rule prescribe that any
document to be filed in the Patent and Trademark Office and
which is required by any law, rule, or other regulation to
be under oath may be subscribed to by a written declaration
in  such  form  as  the  Commissioner  may  prescribe,  such
declaration to be in lieu of the oath otherwise required.

  (b)  Whenever  such  written  declaration  is  used,  the
document  must  warn  the  declarant  that  willful  false
statements  and  the  like  are  punishable  by  fine  or
imprisonment, or both (18 U.S.C. 1001).

  (Added Mar. 26, 1964, Public Law 88 - 292, sec. 1, 78
Stat. 171; amended Jan. 2, 1975, Public Law 93 - 596, sec.
1, 88 Stat. 1949.)

 35 U.S.C. 26  Effect of defective execution.

  Any document to be filed in the Patent and Trademark
Office and which is required by any law, rule, or other
regulation to be executed in a specified manner may be

provisionally  accepted  by  the  Commissioner  despite  a
defective execution, provided a properly executed document
is submitted within such time as may be prescribed.

  (Added Mar. 26, 1964, Public Law 88 - 292, sec. 1, 78
Stat. 171; amended Jan. 2, 1975, Public Law 93 - 596, sec.
1, 88 Stat. 1949.)

  CHAPTER 3 - PRACTICE BEFORE PATENT AND TRADEMARK OFFICE

 Sec.

 31  Regulations for agents and attorneys.

 32  Suspension or exclusion from practice.

 33  Unauthorized representation as practitioner.

 35 U.S.C. 31  Regulations for agents and attorneys.

  The  Commissioner,  subject  to  the  approval  of  the
Secretary of Commerce, may prescribe regulations governing
the recognition and conduct of agents, attorneys, or other
persons representing applicants or other parties before the
Patent and Trademark Office, and may require them, before
being recognized as representatives of applicants or other
persons, to show that they are of good moral character and
reputation and are possessed of the necessary qualifications
to render to applicants or other persons, valuable service,
advice, and assistance in the presentation or prosecution of
their applications or other business before the Office.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 32  Suspension or exclusion from practice.

  The Commissioner may, after notice and opportunity for a
hearing, suspend or exclude, either generally or in any
particular case, from further practice before the Patent and
Trademark Office, any person, agent, or attorney shown to be
incompetent or disreputable, or guilty of gross misconduct,
or who does not comply with the regulations established
under section 31 of this title, or who shall, by word,
circular, letter, or advertising, with intent to defraud in
any manner, deceive, mislead, or threaten any applicant or
prospective applicant, or other person having immediate or
prospective business before the Office. The reasons for any
such suspension or exclusion shall be duly recorded. The
United States District Court for the District of Columbia,
under such conditions and upon such proceedings as it by its
rules determines, may review the action of the Commissioner
upon the petition of the person so refused recognition or so
suspended or excluded.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat.1949.)

 35 U.S.C. 33  Unauthorized representation as
practitioner.

  Whoever, not being recognized to practice before the
Patent and Trademark Office, holds himself out or permits
himself to be held out as so recognized, or as being
qualified to prepare or prosecute applications for patent,

shall be fined not more than $1,000 for each offense.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

  CHAPTER 4 - PATENT FEES; FUNDING; SEARCH SYSTEMS

 Sec.

 41  Patent fees; patent and trademark search systems.

 42  Patent and Trademark Office funding.

 35 U.S.C. 41  Patent fees; patent and trademark search
systems.

  (a)  The Commissioner shall charge the following fees:

  (1)(A) On filing each application for an original patent,
except in design or plant cases, $500 [$770].

  (2) For issuing each original or reissue patent, except
in design or plant cases, $820 [$1,290].

  (3) In design and plant cases:

  (4)(A) On filing each application for the reissue of a
patent, $500 [$770].

  (B) In addition, on filing or on presentation at any
other time, $52 [$80] for each claim in independent form
which is in excess of the number of independent claims of
the original patent, and $14 [$22] for each claim (whether
independent or dependent) which is in excess of 20 and also
in excess of the number of claims of the original patent.

  (5) On filing each disclaimer, $78 [$110].

  (6)(A) On filing an appeal from the examiner to the
Board of Patent Appeals and Interferences, $190 [$300].

  (7) On filing each petition for the revival of an
unintentionally abandoned application for a patent or for
the unintentionally delayed payment of the fee for issuing
each patent, $820 [$1,290], unless the petition is filed
under section 133 or 151 of this title, in which case the
fee shall be $78 [$110].

  (8) For petitions for 1 - month extensions of time to
take actions required by the Commissioner in an application:

  (9) Basic national fee for an international application
where the Patent and Trademark Office was the International
Preliminary  Examining  Authority  and  the  International
Searching Authority, $450 [$700].

  (10) Basic national fee for an international application
where the Patent and Trademark Office was the International
Searching Authority but not the International Preliminary
Examining Authority, $500 [$770].

  (11) Basic national fee for an international application
where the Patent and Trademark Office was neither the
International  Searching  Authority  nor  the  International
Preliminary Examining Authority, $670 [$1,040].

  (12) Basic national fee for an international application
where the international preliminary examination has been
paid  to  the  Patent  and  Trademark  Office,  and  the
international preliminary examination report states that the
provisions of Article 33(2), (3), and (4) of the Patent
Cooperation Treaty have been satisfied for all claims in the
application entering the national stage, $66 [$96].

  (13) For filing or later presentation of each independent
claim in the national stage of an international application
in excess of 3, $52 [$80].

  (14) For filing or later presentation of each claim
(whether independent or dependent) in a national stage of an
international application in excess of 20, $14 [$22].

  (15)  For  each  national  stage  of  an  international
application containing a multiple dependent claim, $160
[$260].

  For the purpose of computing fees, a multiple dependent
claim as referred to in section 112 of this title or any
claim depending therefrom shall be considered as separate
dependent claims in accordance with the number of claims to
which reference is made. Errors in payment of the additional
fees may be rectified in accordance with regulations of the
Commissioner.

  (b) The Commissioner shall charge the following fees for
maintaining in force all patents based on applications filed
on or after December 12, 1980:

  (1) 3 years and 6 months after grant, $650 [$1,020].

  (2) 7 years and 6 months after grant, $1,310 [$2,050].

  (3) 11 years and 6 months after grant, $1,980 [$3,080].

  Unless payment of the applicable maintenance fee is
received in the Patent and Trademark Office on or before the
date the fee is due or within a grace period of six months
thereafter, the patent will expire as of the end of such
grace period. The Commissioner may require the payment of a
surcharge as a condition of accepting within such 6 - month
grace period the late payment of the applicable maintenance
fee. No fee will be established for maintaining a design or
plant patent in force.

  (c)(1) The Commissioner may accept the payment of any
maintenance fee required by subsection (b) of this section
which is made within 24 months after the 6 - month grace
period if the delay is shown to the satisfaction of the
Commissioner to have been unintentional, or at any time
after the 6 - month grace period if the delay is shown to

the  satisfaction  of  the  Commissioner  to  have  been
unavoidable. The Commissioner may require the payment of a
surcharge  as  a  condition  of  accepting  payment  of  any
maintenance fee after the 6 - month grace period. If the
Commissioner accepts payment of a maintenance fee after the
6 - month grace period, the patent shall be considered as
not having expired at the end of the grace period.

  (2) A patent, the term of which has been maintained as a
result of the acceptance of a payment of a maintenance fee
under this subsection, shall not abridge or affect the right
of any person or that person's successors in business who
made, purchased, offered to sell, or used anything protected
by the patent within the United States, or imported anything
protected by the patent into the United States after the 6 -
month  grace  period  but  prior  to  the  acceptance  of  a
maintenance fee under this subsection, to continue the use
of, to offer for sale, or to sell to others to be used,
offered for sale, or sold, the specific thing so made,
purchased, offered for sale, used, or imported. The court
before which such matter is in question may provide for the
continued manufacture, use, offer for sale, or sale of the
thing made, purchased, offered for sale, or used within the
United States, or imported into the United States, as
specified, or for the manufacture, use, offer for sale, or
sale in the United States of which substantial preparation
was made after the 6 - month grace period but before the
acceptance of a maintenance fee under this subsection, and
the court may also provide for the continued practice of any
process that is practiced, or for the practice of which
substantial preparation was made, after the 6 - month grace
period but before the acceptance of a maintenance fee under
this subsection, to the extent and under such terms as the
court deems equitable for the protection of investments made
or business commenced after the 6 - month grace period but
before the acceptance of a maintenance fee under this
subsection.

  (d) The Commissioner shall establish fees for all other
processing, services, or materials relating to patents not
specified in this section to recover the estimated average
cost  to  the  Office  of  such  processing,  services,  or
materials, except that the Commissioner shall charge the
following fees for the following services:

  (1) For recording a document affecting title, $40, per
property.

  (2) For each photocopy, $.25 per page.

  (3) For each black and white copy of a patent, $3.

  The yearly fee for providing a library specified in
section 13 of this title with uncertified printed copies of
the specifications and drawings for all patents issued in
that year shall be $50.

  (e) The Commissioner may waive the payment of any fee for
any service or material related to patents in connection
with  an  occasional  or  incidental  request  made  by  a
department or agency of the Government, or any officer
thereof. The Commissioner may provide any applicant issued a
notice under section 132 of this title with a copy of the
specifications and drawings for all patents referred to in
that notice without charge.

  (f) The fees established in subsections (a) and (b) of
this section may be adjusted by the Commissioner on October
1,  1992,  and  every  year  thereafter,  to  reflect  any
fluctuations occurring during the previous 12 months in the
Consumer Price Index, as determined by the Secretary of
Labor. Changes of less than 1 per centum may be ignored.

  (g) No fee established by the Commissioner under this
section shall take effect until at least 30 days after
notice of the fee has been published in the Federal Register
and in the Official Gazette of the Patent and Trademark
Office.

  Note: Fees established by the Commissioner of Patents
and Trademarks under section 41(d) of title 35, United
States Code, during fiscal year 1992 may take effect on or
after 1 day after such fees are published in the Federal
Register. Section 41(g) of title 35, United States Code, and
section 553 of title 5, United States Code, shall not apply
to the establishment of such fees during fiscal year 1992.

  (h)(1) Fees charged under subsection (a) or (b) shall be
reduced by 50 percent with respect to their application to
any small business concern as defined under section 3 of the
Small Business Act, and to any independent inventor or
nonprofit organization as defined in regulations issued by
the Commissioner of Patents and Trademarks.

  (2)  With  respect  to  its  application  to  any  entity
described in paragraph (1), any surcharge or fee charged
under subsection (c) or (d) shall not be higher than the
surcharge or fee required of any other entity under the same
or substantially similar circumstances.

  (i)(1) The Commissioner shall maintain, for use by the
public, paper or microform collections of United States
patents,  foreign  patent  documents,  and  United  States
trademark registrations arranged to permit search for and
retrieval of information. The Commissioner may not impose
fees directly for the use of such collections, or for the
use of the public patent and trademark search rooms or
libraries.

  (2)  The  Commissioner  shall  provide  for  the  full
deployment of the automated search systems of the Patent and
Trademark Office so that such systems are available for use
by the public, and shall assure full access by the public
to, and dissemination of, patent and trademark information,
using a variety of automated methods, including electronic
bulletin boards and remote access by users to mass storage
and retrieval systems.

  (3) The Commissioner may establish reasonable fees for
access by the public to the automated search systems of the
Patent and Trademark Office. If such fees are established, a
limited amount of free access shall be made available to
users of the systems for purposes of education and training.
The Commissioner may waive the payment by an individual of
fees authorized by this subsection upon a showing of need or
hardship, and if such waiver is in the public interest.

  (4) The Commissioner shall submit to the Congress an
annual report on the automated search systems of the Patent
and Trademark Office and the access by the public to such

systems. The Commissioner shall also publish such report in
the Federal Register. The Commissioner shall provide an
opportunity for the submission of comments by interested
persons on each such report.

  (Subsection (a)(6) amended Nov. 8, 1984, Public Law 98 -
622, sec. 204(a), 98 Stat. 3388.)

  (Subsection (g) amended Dec. 12, 1980, Public Law 96 -
517, sec. 2, 94 Stat. 3017; Aug. 27, 1982, Public Law 97 -
247, sec. 3, 96 Stat. 317.)

  (Subsection (h) added Nov. 6, 1986, Public Law 99 - 607,
sec. 1(b)(2).)

  (Subsections (a), (b), (d), (f), and (g) amended Dec. 10,
1991, Public Law 102 - 204, sec. 5, 105 Stat. 1637.)

  (Subsections (a)(9) - (15) and (i) added Dec. 10, 1991,
Public Law 102 - 204, sec. 5, 105 Stat. 1637.)

  (Subsection (c)(1) amended Oct. 23, 1992, Public Law 102
- 444, sec. 1, 106 Stat. 2245)

  (Subsection (a)(1)(C) added Dec. 8, 1994, Public Law 103
- 465, sec. 532, 108 Stat. 4809, effective June 8, 1995.)

  (Subsection (c)(2) amended, Dec. 8, 1994, Public Law 103
- 465, sec. 533, 108 Stat. 4809, effective Jan. 1, 1996.)

 (* Ed. Note: The amounts in brackets are the new fees that
went into effect on October 1, 1996.)

 35 U.S.C. 42  Patent and Trademark Office funding.

  (a) All fees for services performed by or materials
furnished by the Patent and Trademark Office will be payable
to the Commissioner.

  (b)  All  fees  paid  to  the  Commissioner  and  all
appropriations for defraying the costs of the activities of
the Patent and Trademark Office will be credited to the
Patent and Trademark Office Appropriation Account in the
Treasury of the United States, the provisions of section
725e of title 31, United States Code, notwithstanding.

  (c)  Revenues  from  fees  shall  be  available  to  the
Commissioner  to  carry  out,  to  the  extent  provided  in
appropriation  Acts,  the  activities  of  the  Patent  and
Trademark Office. Fees available to the Commissioner under
section 31 of the Trademark Act of 1946 may be used only for
the processing of trademark registrations and for other
activities, services and materials relating to trademarks
and to cover a proportionate share of the administrative
costs of the Patent and Trademark Office.

  (d) The Commissioner may refund any fee paid by mistake
or any amount paid in excess of that required.

  (e) The Secretary of Commerce shall, on the day each year
on which the President submits the annual budget to the
Congress, provide to the Committees on the Judiciary of the
Senate and the House of Representatives:

  (1) a list of patent and trademark fee collections by the

Patent and Trademark Office during the preceding fiscal
year;

  (2) a list of activities of the Patent and Trademark
Office during the preceding fiscal year which were supported
by patent fee expenditures, trademark fee expenditures, and
appropriations;

  (3) budget plans for significant programs, projects, and
activities of the Office, including out - year funding
estimates;

  (4) any proposed disposition of surplus fees by the
Office; and

  (5) such other information as the committees consider
necessary.

  (Amended Nov. 14, 1975, Public Law 94 - 131, sec. 4, 89
Stat. 690; Dec. 12, 1980, Public Law 96 - 517, sec. 3, 94
Stat. 3018; Aug. 27, 1982, Public Law 97 - 247, sec. 3(g),
96 Stat. 319.)

  (Subsection (c) amended Dec. 10, 1991, Public Law 102 -
204, sec. 5, 105 Stat. 1640.)

  (Subsection (e) added Dec. 10, 1991, Public Law 102 -
204, sec. 4, 105 Stat. 1637.)

  PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

  CHAPTER 10 - PATENTABILITY OF INVENTIONS

 Sec.

 100  Definitions.

 101  Inventions patentable.

 102  Conditions for patentability; novelty and loss of
right to patent.

 103  Conditions for patentability; non - obvious subject
matter.

 104  Invention made abroad.

 105  Inventions in outer space.

 35 U.S.C. 100  Definitions.

  When used in this title unless the context otherwise
indicates - --

  (a) The term "invention" means invention or discovery.

  (b) The term "process" means process, art, or method, and
includes a new use of a known process, machine, manufacture,
composition of matter, or material.

  (c) The terms "United States" and "this country" mean the
United States of America, its territories and possessions.

  (d) The word "patentee" includes not only the patentee to
whom the patent was issued but also the successors in title

to the patentee.

 35 U.S.C. 101  Inventions patentable.

  Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and  useful  improvement  thereof,  may  obtain  a  patent
therefor, subject to the conditions and requirements of this
title.

 35 U.S.C. 102  Conditions for patentability; novelty and
loss of right to patent.

  A person shall be entitled to a patent unless -

  (a) the invention was known or used by others in this
country, or patented or described in a printed publication
in this or a foreign country, before the invention thereof
by the applicant for patent, or

  (b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or
on sale in this country, more than one year prior to the
date of the application for patent in the United States, or

  (c) he has abandoned the invention, or

  (d) the invention was first patented or caused to be
patented, or was the subject of an inventor's certificate,
by the applicant or his legal representatives or assigns in
a foreign country prior to the date of the application for
patent in this country on an application for patent or
inventor's certificate filed more than twelve months before
the filing of the application in the United States, or

  (e) the invention was described in a patent granted on an
application for patent by another filed in the United States
before the invention thereof by the applicant for patent, or
on an international application by another who has fulfilled
the requirements of paragraphs (1), (2), and (4) of section
371(c)  of  this  title  before  the  invention  thereof  by
applicant for patent, or

  (f) he did not himself invent the subject matter sought
to be patented, or

  (g)  before  the  applicant's  invention  thereof  the
invention was made in this country by another who had not
abandoned,  suppressed,  or  concealed  it.  In  determining
priority of invention there shall be considered not only the
respective dates of conception and reduction to practice of
the invention, but also the reasonable diligence of one who
was first to conceive and last to reduce to practice, from a
time prior to conception by the other.

  (Amended July 28, 1972, Public Law 92 - 358, sec. 2, 86
Stat. 501; Nov. 14, 1975, Public Law 94 - 131, sec. 3, 89
Stat. 691.)

 35 U.S.C. 103  Conditions for patentability; non -
obvious subject matter.

  (a)  A patent may not be obtained though the invention
is not identically disclosed or described as set forth in
section 102 of this title, if the differences between the

subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been
obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.

 (b)  (1)  Notwithstanding subsection (a), and upon
timely election by the applicant for patent to proceed under
this  subsection,  a  biotechnological  process  using  or
resulting in a composition of matter that is novel under
section 102 and nonobvious under subsection (a) of this
section shall be considered nonobvious if-

  (2) A patent issued on a process under paragraph (1)-

  (3)  For  purposes  of  paragraph  (1),  the  term
"biotechnological process" means-

  (ii) inhibit, eliminate, augment, or alter expression of
an endogenous nucleotide sequence, or

  (iii) express a specific physiological characteristic not
naturally associated with said organism;

  (c)  Subject matter developed by another person, which
qualifies as prior art only under subsection (f) or (g) of
section 102 of this title, shall not preclude patentability
under this section where the subject matter and the claimed
invention were, at the time the invention was made, owned by
the same person or subject to an obligation of assignment to
the same person.

  (Second paragraph added Nov. 8, 1984, Public Law 98 -
622, sec. 103, 98 Stat. 3384; amended Nov. 1, 1995, Public
Law 104 - 41, sec.1, 109 stat. 351.)

 35 U.S.C. 104  Invention made abroad.

  (a) IN GENERAL.-

  (1)  PROCEEDINGS.-In  proceedings  in  the  Patent  and
Trademark Office, in the courts, and before any other
competent  authority,  an  applicant  for  a  patent,  or  a
patentee, may not establish a date of invention by reference
to knowledge or use thereof, or other activity with respect
thereto, in a foreign country other than a NAFTA country or
a WTO member country, except as provided in sections 119 and
365 of this title.

  (2) RIGHTS.-If an invention was made by a person, civil
or military-

  (A)  while domiciled in the United States, and
serving in any other country in connection with operations
by or on behalf of the United States,

  (B)  while domiciled in a NAFTA country and serving

in another country in connection with operations by or on
behalf of that NAFTA country, or

  (C)  while domiciled in a WTO member country and
serving in another country in connection with operations by
or on behalf of that WTO member country,

 that person shall be entitled to the same rights of
priority in the United States with respect to such invention
as if such invention had been made in the United States,
that NAFTA country, or that WTO member country, as the case
may be.

  (3)  USE  OF  INFORMATION.-To  the  extent  that  any
information in a NAFTA country or a WTO member country
concerning knowledge, use, or other activity relevant to
proving or disproving a date of invention has not been made
available  for  use  in  a  proceeding  in  the  Patent  and
Trademark Office, a court, or any other competent authority
to the same extent as such information could be made
available in the United States, the Commissioner, court, or
such other authority shall draw appropriate inferences, or
take other action permitted by statute, rule, or regulation,
in favor of the party that requested the information in the
proceeding.

  (b) DEFINITIONS.-As used in this section-

  (1) The term "NAFTA country" has the meaning given that
term in section 2(4) of the North American Free Trade
Agreement Implementation Act; and

  (2) The term "WTO member country" has the meaning given
that term in section 2(10) of the Uruguay Round Agreements
Act.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949; Nov. 14, 1975, Public Law 94 - 131, sec. 6, 89
Stat. 691; Dec. 8, 1993, Public Law 103 - 182, sec. 331, 107
Stat. 2057 (as to NAFTAcountry); amended Dec. 8, 1994,
Public Law 103 - 465, sec. 531,108 Stat. 4809, effective
Jan. 1, 1996 as to WTO member country.)

 35 U.S.C. 105  Inventions in outer space.

  (a)  Any invention made, used, or sold in outer space on
a space object or component thereof under the jurisdiction
or control of the United States shall be considered to be
made, used or sold within the United States for the purposes
of this title, except with respect to any space object or
component  thereof  that  is  specifically  identified  and
otherwise provided for by an international agreement to
which the United States is a party, or with respect to any
space object or component thereof that is carried on the
registry  of  a  foreign  state  in  accordance  with  the
Convention on Registration of Objects Launched into Outer
Space.

  (b) Any invention made, used, or sold in outer space on a
space object or component thereof that is carried on the
registry  of  a  foreign  state  in  accordance  with  the
Convention on Registration of Objects Launched into Outer
Space, shall be considered to be made, used, or sold within
the  United  States  for  the  purposes  of  this  title  if
specifically so agreed in an international agreement between

the United States and the state of registry.

  (Added Nov. 15, 1990, Public Law 101 - 580, sec. 1, 104
Stat. 2863; Dec. 8, 1993, Public Law 103 - 182, Stat 331,
107 Stat. 2057.)

  CHAPTER 11 - APPLICATION FOR PATENT

 Sec.

 111  Application.

 112  Specification.

 113  Drawings.

 114  Models, specimens.

 115  Oath of applicant.

 116  Inventors.

 117  Death or incapacity of inventor.

 118  Filing by other than inventor.

 119  Benefit of earlier filing date in foreign country;
right of priority.

 120  Benefit of earlier filing date in the United
States.

 121  Divisional applications.

 122  Confidential status of applications.

 35 U.S.C. 111  Application.

  (a) IN GENERAL.-

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

  (2) CONTENTS.-Such application shall include-

  (A)  a specification as prescribed by section 112
of this title;

  (B)  a drawing as prescribed by section 113 of this
title; and

  (C)  an oath by the applicant as prescribed by
section 115 of this title.

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

  (4)  FAILURE TO SUBMIT.-Upon failure to submit the fee
and oath within such prescribed period, the application

shall be regarded as abandoned, unless it is shown to the
satisfaction  of  the  Commissioner  that  the  delay  in
submitting  the  fee  and  oath  was  unavoidable  or
unintentional. The filing date of an application shall be
the date on which the specification and any required drawing
are received in the Patent and Trademark Office.

  (b) PROVISIONAL APPLICATION.-

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

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

  (B)  a drawing as prescribed by section 113 of this
title.

  (2) CLAIM.-A claim, as required by the second through
fifth paragraphs of section 112, shall not be required in a
provisional application.

  (3) FEE.-(A) The application must be accompanied by the
fee required by law.

  (B) The  fee  may  be  submitted  after  the
specification and any required drawing are submitted, within
such period and under such conditions, including the payment
of a surcharge, as may be prescribed by the Commissioner.

  (C)  Upon failure to submit the fee within such
prescribed period, the application shall be regarded as
abandoned, unless it is shown to the satisfaction of the
Commissioner that the delay in submitting the fee was
unavoidable or unintentional.

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

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

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

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

  (8) APPLICABLE PROVISIONS.-The provisions of this title
relating  to  applications  for  patent  shall  apply  to
provisional applications for patent, except as otherwise
provided,  and  except  that  provisional  applications  for

patent shall not be subject to sections 115, 131, 135, and
157 of this title.

  (Amended Aug. 27, 1982, Public Law 97 - 247, sec. 5, 96
Stat. 319; amended Dec. 8, 1994, Public Law 103 - 465, sec.
532, 108 Stat. 4809, effective June 8, 1995.)

 35 U.S.C. 112  Specification.

  The specification shall contain a written description of
the invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as
to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make
and use the same, and shall set forth the best mode
contemplated by the inventor of carrying out his invention.

  The specification shall conclude with one or more claims
particularly  pointing  out  and  distinctly  claiming  the
subject matter which the applicant regards as his invention.

  A claim may be written in independent or, if the nature
of the case admits, in dependent or multiple dependent form.

  Subject to the following paragraph, a claim in dependent
form shall contain a reference to a claim previously set
forth and then specify a further limitation of the subject
matter claimed. A claim in dependent form shall be construed
to incorporate by reference all the limitations of the claim
to which it refers.

  A claim in multiple dependent form shall contain a
reference, in the alternative only, to more than one claim
previously set forth and then specify a further limitation
of the subject matter claimed. A multiple dependent claim
shall not serve as a basis for any other multiple dependent
claim. A multiple dependent claim shall be construed to
incorporate  by  reference  all  the  limitations  of  the
particular  claim  in  relation  to  which  it  is  being
considered.

  An element in a claim for a combination may be expressed
as a means or step for performing a specified function
without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover
the corresponding structure, material, or acts described in
the specification and equivalents thereof.

  (Amended July 24, 1965, Public Law 89 - 83, sec. 9, 79
Stat. 261; Nov. 14, 1975, Public Law 94 - 131, sec. 7, 89
Stat. 691.)

 35 U.S.C. 113  Drawings.

  The applicant shall furnish a drawing where necessary
for the understanding of the subject matter sought to be
patented. When the nature of such subject matter admits of
illustration  by  a  drawing  and  the  applicant  has  not
furnished such a drawing, the Commissioner may require its
submission within a time period of not less than two months
from the sending of a notice thereof. Drawings submitted
after the filing date of the application may not be used (i)
to overcome any insufficiency of the specification due to
lack of an enabling disclosure or otherwise inadequate
disclosure therein, or (ii) to supplement the original

disclosure thereof for the purpose of interpretation of the
scope of any claim.

  (Amended Nov. 14, 1975, Public Law 94 - 131, sec. 8, 89
Stat. 691.)

 35 U.S.C. 114  Models, specimens.

  The Commissioner may require the applicant to furnish a
model of convenient size to exhibit advantageously the
several parts of his invention.

  When the invention relates to a composition of matter,
the  Commissioner  may  require  the  applicant  to  furnish
specimens or ingredients for the purpose of inspection or
experiment.

 35 U.S.C. 115  Oath of applicant.

  The applicant shall make oath that he believes himself
to be the original and first inventor of the process,
machine,  manufacture,  or  composition  of  matter,  or
improvement thereof, for which he solicits a patent; and
shall state of what country he is a citizen. Such oath may
be  made  before  any  person  within  the  United  States
authorized by law to administer oaths, or, when made in a
foreign country, before any diplomatic or consular officer
of the United States authorized to administer oaths, or
before any officer having an official seal and authorized to
administer  oaths  in  the  foreign  country  in  which  the
applicant may be, whose authority is proved by certificate
of a diplomatic or consular officer of the United States, or
apostille of an official designated by a foreign country
which, by treaty or convention, accords like effect to
apostilles of designated officials in the United States.
Such oath is valid if it complies with the laws of the state
or country where made. When the application is made as
provided in this title by a person other than the inventor,
the oath may be so varied in form that it can be made by
him.

  (Amended Aug. 27, 1982, Public Law 97 - 247, sec. 14(a),
96 Stat. 321.)

 35 U.S.C. 116  Inventors.

  When an invention is made by two or more persons
jointly, they shall apply for patent jointly and each make
the required oath, except as otherwise provided in this
title. Inventors may apply for a patent jointly even though
(1) they did not physically work together or at the same
time, (2) each did not make the same type or amount of
contribution, or (3) each did not make a contribution to the
subject matter of every claim of the patent.

  If a joint inventor refuses to join in an application
for patent or cannot be found or reached after diligent
effort, the application may be made by the other inventor on
behalf  of  himself  and  the  omitted  inventor.  The
Commissioner, on proof of the pertinent facts and after such
notice to the omitted inventor as he prescribes, may grant a
patent to the inventor making the application, subject to
the same rights which the omitted inventor would have had if
he had been joined. The omitted inventor may subsequently
join in the application.

  Whenever  through  error  a  person  is  named  in  an
application for patent as the inventor, or through an error
an inventor is not named in an application, and such error
arose without any deceptive intention on his part, the
Commissioner  may  permit  the  application  to  be  amended
accordingly, under such terms as he prescribes.

  (Amended Aug. 27, 1982, Public Law 97 - 247, sec. 6(a),
96 Stat. 320; Nov. 8, 1984, Public Law 98 - 622, sec.
104(a), 98 Stat. 3384.)

 35 U.S.C. 117  Death or incapacity of inventor.

  Legal representatives of deceased inventors and of those
under legal incapacity may make application for patent upon
compliance with the requirements and on the same terms and
conditions applicable to the inventor.

 35 U.S.C. 118  Filing by other than inventor.

  Whenever an inventor refuses to execute an application
for patent, or cannot be found or reached after diligent
effort, a person to whom the inventor has assigned or agreed
in writing to assign the invention or who otherwise shows
sufficient proprietary interest in the matter justifying
such action, may make application for patent on behalf of
and as agent for the inventor on proof of the pertinent
facts and a showing that such action is necessary to
preserve the rights of the parties or to prevent irreparable
damage; and the Commissioner may grant a patent to such
inventor upon such notice to him as the Commissioner deems
sufficient, and on compliance with such regulations as he
prescribes.

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

  (a) An application for patent for an invention filed in
this  country  by  any  person  who  has,  or  whose  legal
representatives or assigns have, previously regularly filed
an application for a patent for the same invention in a
foreign country which affords similar privileges in the case
of applications filed in the United States or to citizens of
the United States, shall have the same effect as the same
application would have if filed in this country on the date
on which the application for patent for the same invention
was first filed in such foreign country, if the application
in this country is filed within twelve months from the
earliest date on which such foreign application was filed;
but no patent shall be granted on any application for patent
for an invention which had been patented or described in a
printed publication in any country more than one year before
the date of the actual filing of the application in this
country, or which had been in public use or on sale in this
country more than one year prior to such filing.

  (b) No application for patent shall be entitled to this
right of priority unless a claim therefor and a certified
copy of the original foreign application, specification, and
drawings upon which it is based are filed in the Patent and
Trademark Office before the patent is granted, or at such
time during the pendency of the application as required by
the Commissioner not earlier than six months after the
filing  of  the  application  in  this  country.  Such

certification shall be made by the patent office of the
foreign country in which filed and show the date of the
application and of the filing of the specification and other
papers. The Commissioner may require a translation of the
papers filed if not in the English language and such other
information as he deems necessary.

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

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

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

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

  (Amended Oct. 3, 1961, Public Law 87 - 333, sec. 1, 75
Stat. 748; July 28, 1972, Public Law 92 - 358, sec. 1, 86
Stat. 502; Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949; amended Dec. 8, 1994, Public Law 103 - 465, sec.
532, 108 Stat. 4809, effective June 8, 1995.)

 35 U.S.C. 120  Benefit of earlier filing date in the
United States.

  An application for patent for an invention disclosed in
the manner provided by the first paragraph of section 112 of
this title in an application previously filed in the United

States, or as provided by section 363 of this title, which
is filed by an inventor or inventors named in the previously
filed application shall have the same effect, as to such
invention,  as  though  filed  on  the  date  of  the  prior
application, if filed before the patenting or abandonment of
or termination of proceedings on the first application or on
an application similarly entitled to the benefit of the
filing date of the first application and if it contains or
is amended to contain a specific reference to the earlier
filed application.

  (Amended Nov. 14, 1075, Public Law 94 - 131, sec. 9, 89
Stat. 691; Nov. 8, 1984, Public Law 98 - 622, sec. 104(b),
98 Stat. 3385.)

 35 U.S.C. 121  Divisional applications.

  If two or more independent and distinct inventions are
claimed in one application, the Commissioner may require the
application to be restricted to one of the inventions. If
the other invention is made the subject of a divisional
application which complies with the requirements of section
120 of this title it shall be entitled to the benefit of the
filing date of the original application. A patent issuing on
an application with respect to which a requirement for
restriction under this section has been made, or on an
application filed as a result of such a requirement, shall
not be used as a reference either in the Patent and
Trademark Office or in the courts against a divisional
application or against the original application or any
patent  issued  on  either  of  them,  if  the  divisional
application is filed before the issuance of the patent on
the  other  application.  If  a  divisional  application  is
directed solely to subject matter described and claimed in
the original application as filed, the Commissioner may
dispense with signing and execution by the inventor. The
validity of a patent shall not be questioned for failure of
the Commissioner to require the application to be restricted
to one invention.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

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

  Applications for patents shall be kept in confidence by
the  Patent  and  Trademark  Office  and  no  information
concerning the same given without authority of the applicant
or owner unless necessary to carry out the provisions of any
Act of Congress or in such special circumstances as may be
determined by the Commissioner.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

  CHAPTER 12 - EXAMINATION OF APPLICATION

 Sec.

 131  Examination of application.

 132  Notice of rejection; reexamination.

 133  Time for prosecuting application.

 134  Appeal  to  the  Board  of  Patent  Appeals  and
Interferences.

 135  Interferences.

 35 U.S.C. 131  Examination of application.

  The Commissioner shall cause an examination to be made
of the application and the alleged new invention; and if on
such examination it appears that the applicant is entitled
to a patent under the law, the Commissioner shall issue a
patent therefor.

 35 U.S.C. 132  Notice of rejection; reexamination.

  Whenever, on examination, any claim for a patent is
rejected,  or  any  objection  or  requirement  made,  the
Commissioner shall notify the applicant thereof, stating the
reasons for such rejection, or objection or requirement,
together with such information and references as may be
useful  in  judging  of  the  propriety  of  continuing  the
prosecution of his application; and if after receiving such
notice, the applicant persists in his claim for a patent,
with  or  without  amendment,  the  application  shall  be
reexamined. No amendment shall introduce new matter into the
disclosure of the invention.

 35 U.S.C. 133  Time for prosecuting application.

  Upon  failure  of  the  applicant  to  prosecute  the
application within six months after any action therein, of
which notice has been given or mailed to the applicant, or
within such shorter time, not less than thirty days, as
fixed by the Commissioner in such action, the application
shall be regarded as abandoned by the parties thereto,
unless it be shown to the satisfaction of the Commissioner
that such delay was unavoidable.

 35 U.S.C. 134  Appeal to the Board of Patent Appeals and
Interferences.

  An applicant for a patent, any of whose claims has been
twice rejected, may appeal from the decision of the primary
examiner to the Board of Patent Appeals and Interferences,
having once paid the fee for such appeal.

  (Amended Nov. 8, 1984, Public Law 98 - 622, sec. 204(c),
98 Stat. 3388.)

 35 U.S.C. 135  Interferences.

  (a) Whenever an application is made for a patent which,
in the opinion of the Commissioner, would interfere with any
pending  application,  or  with  any  unexpired  patent,  an
interference may be declared and the Commissioner shall give
notice of such declaration to the applicants, or applicant
and patentee, as the case may be. The Board of Patent
Appeals  and  Interferences  shall  determine  questions  of
priority of the inventions and may determine questions of
patentability. Any final decision, if adverse to the claim
of an applicant, shall constitute the final refusal by the
Patent and Trademark Office of the claims involved, and the
Commissioner may issue a patent to the applicant who is
adjudged the prior inventor. A final judgment adverse to a
patentee from which no appeal or other review has been or

can be taken or had shall constitute cancellation of the
claims  involved  in  the  patent,  and  notice  of  such
cancellation shall be endorsed on copies of the patent
distributed  after  such  cancellation  by  the  Patent  and
Trademark Office.

  (b) A claim which is the same as, or for the same or
substantially the same subject matter as, a claim of an
issued patent may not be made in any application unless such
a claim is made prior to one year from the date on which the
patent was granted.

  (c) Any agreement or understanding between parties to an
interference, including any collateral agreements referred
to therein, made in connection with or in contemplation of
the termination of the interference, shall be in writing and
a true copy thereof filed in the Patent and Trademark Office
before the termination of the interference as between the
said parties to the agreement or understanding. If any party
filing the same so requests, the copy shall be kept separate
from the file of the interference, and made available only
to Government agencies on written request, or to any person
on a showing of good cause. Failure to file the copy of such
agreement  or  understanding  shall  render  permanently
unenforceable such agreement or understanding and any patent
of such parties involved in the interference or any patent
subsequently issued on any application of such parties so
involved. The Commissioner may, however, on a showing of
good cause for failure to file within the time prescribed,
permit the filing of the agreement or understanding during
the six - month period subsequent to the termination of the
interference as between the parties to the agreement or
understanding.

  The Commissioner shall give notice to the parties or
their attorneys of record, a reasonable time prior to said
termination, of the filing requirement of this section. If
the  Commissioner  gives  such  notice  at  a  later  time,
irrespective  of  the  right  to  file  such  agreement  or
understanding within the six - month period on a showing of
good  cause,  the  parties  may  file  such  agreement  or
understanding within sixty days of the receipt of such
notice.

  Any discretionary action of the Commissioner under this
subsection shall be reviewable under section 10 of the
Administrative Procedure Act.

  (d) Parties to a patent interference, within such time as
may be specified by the Commissioner by regulation, may
determine such contest or any aspect thereof by arbitration.
Such arbitration shall be governed by the provisions of
title 9 to the extent such title is not inconsistent with
this  section.  The  parties  shall  give  notice  of  any
arbitration award to the Commissioner, and such award shall,
as between the parties to the arbitration, be dispositive of
the issues to which it relates. The arbitration award shall
be unenforceable until such notice is given. Nothing in this
subsection shall

 preclude the Commissioner from determining patentability of
the invention involved in the interference.

  (Subsection (a) amended Nov. 8, 1984, Public Law 98 -
622, sec. 202, 98 Stat. 3386.)

  (Subsection (c) amended Oct. 15, 1962, Public Law 87 -
831, 76 Stat. 958; Jan. 2, 1975, Public Law 93 - 596, sec.
1, 88 Stat. 1949.)

  (Subsection (d) added Nov. 8, 1984, Public Law 98 - 622,
sec. 105, 98 Stat. 3385.)

 CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE DECISION

 Sec.

 141  Appeal to Court of Appeals for the Federal Circuit.

 142  Notice of appeal.

 143  Proceedings on appeal.

 144  Decision on appeal.

 145  Civil action to obtain patent.

 146  Civil action in case of interference

 35 U.S.C. 141  Appeal to the Court of Appeals for the
Federal Circuit.

  An applicant dissatisfied with the decision in an appeal
to the Board of Patent Appeals and Interferences under
section 134 of this title may appeal the decision to the
United States Court of Appeals for the Federal Circuit. By
filing such an appeal the applicant waives his or her right
to proceed under section 145 of this title. A party to an
interference dissatisfied with the decision of the Board of
Patent Appeals and Interferences on the interference may
appeal the decision to the United States Court of Appeals
for the Federal Circuit, but such appeal shall be dismissed
if any adverse party to such interference, within twenty
days after the appellant has filed notice of appeal in
accordance with section 142 of this title, files notice with
the Commissioner that the party elects to have all further
proceedings conducted as provided in section 146 of this
title. If the appellant does not, within thirty days after
filing of such notice by the adverse party, file a civil
action under section 146, the decision appealed from shall
govern the further proceedings in the case.

  (Amended Nov. 8, 1984, Public Law 98 - 622, sec. 203(a),
98 Stat. 3387.)

 35 U.S.C. 142  Notice of appeal.

  When an appeal is taken to the United States Court of
Appeals for the Federal Circuit, the appellant shall file in
the Patent and Trademark Office a written notice of appeal
directed to the Commissioner, within such time after the
date of the decision from which the appeal is taken as the
Commissioner prescribes, but in no case less than 60 days
after that date.

  (Amended Nov. 8, 1984, Public Law 98 - 620, sec. 414(a),
98 Stat. 3363.)

 35 U.S.C. 143  Proceedings on appeal.

  With respect to an appeal described in section 142 of
this title, the Commissioner shall transmit to the United
States Court of Appeals for the Federal Circuit a certified
list of the documents comprising the record in the Patent
and  Trademark  Office.  The  court  may  request  that  the
Commissioner forward the original or certified copies of
such documents during the pendency of the appeal. In an ex
parte case, the Commissioner shall submit to the court in
writing the grounds for the decision of the Patent and
Trademark Office, addressing all the issues involved in the
appeal. The court shall, before hearing an appeal, give
notice  of  the  time  and  place  of  the  hearing  to  the
Commissioner and the parties in the appeal.

  (Amended Nov. 8, 1984, Public Law 98 - 620, sec. 414(a),
98 Stat. 3363.)

 35 U.S.C. 144  Decision on appeal.

  The United States Court of Appeals for the Federal
Circuit shall review the decision from which an appeal is
taken on the record before the Patent and Trademark Office.
Upon its determination the court shall issue its mandate and
opinion, which shall be entered of record in the Patent and
Trademark Office and shall govern the further proceedings in
the case.

  (Amended Nov. 8, 1984, Public Law 98 - 620, sec. 414(a),
98 Stat. 3363.)

 35 U.S.C. 145  Civil action to obtain patent.

  An applicant dissatisfied with the decision of the Board
of Patent Appeals and Interferences in an appeal under
section 134 of this title may, unless appeal has been taken
to the United States Court of Appeals for the Federal
Circuit,  have  remedy  by  civil  action  against  the
Commissioner in the United States District Court for the
District of Columbia if commenced within such time after
such decision, not less than sixty days, as the Commissioner
appoints. The court may adjudge that such applicant is
entitled to receive a patent for his invention, as specified
in any of his claims involved in the his invention, as
specified in any of his claims involved in the decision of
the Board of Patent Appeals and Interferences, as the facts
in  the  case  may  appear,  and  such  adjudication  shall
authorize  the  Commissioner  to  issue  such  patent  on
compliance with the requirements of law. All the expenses of
the proceedings shall be paid by the applicant.

  (Amended Nov. 8, 1984, Public Law 98 - 620, sec. 203(b),
98 Stat. 3387.)

 35 U.S.C. 146  Civil action in case of interference.

  Any party to an interference dissatisfied with the
decision of the Board of Patent Appeals and Interferences
may have remedy by civil action, if commenced within such
time after such decision, not less than sixty days, as the
Commissioner appoints or as provided in section 141 of this
title, unless he has appealed to the United States Court of
Appeals for the Federal Circuit, and such appeal is pending
or has been decided. In such suits the record in the Patent
and Trademark Office shall be admitted on motion of either
party upon the terms and conditions as to costs, expenses,

and the further cross - examination of the witnesses as the
court imposes, without prejudice to the right of the parties
to take further testimony. The testimony and exhibits of the
record in the Patent and Trademark Office when admitted
shall have the same effect as if originally taken and
produced in the suit.

  Such suit may be instituted against the party in
interest as shown by the records of the Patent and Trademark
Office at the time of the decision complained of, but any
party in interest may become a party to the action. If there
be adverse parties residing in a plurality of districts not
embraced within the same state, or an adverse party residing
in a foreign country, the United States District Court for
the District of Columbia shall have jurisdiction and may
issue summons against the adverse parties directed to the
marshal of any district in which any adverse party resides.
Summons  against  adverse  parties  residing  in  foreign
countries may be served by publication or otherwise as the
court directs. The Commissioner shall not be a necessary
party but he shall be notified of the filing of the suit by
the clerk of the court in which it is filed and shall have
the right to intervene. Judgment of the court in favor of
the right of an applicant to a patent shall authorize the
Commissioner to issue such patent on the filing in the
Patent and Trademark Office of a certified copy of the
judgment and on compliance with the requirements of law.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949; Apr. 2, 1982, Public Law 97 - 164, sec. 163, 96
Stat. 49; Nov. 8, 1984, Public Law 98 - 622, sec. 203(c), 98
Stat. 3387.)

  CHAPTER 14 - ISSUE OF PATENT

 Sec.

 151  Issue of patent.

 152  Issue of patent to assignee.

 153  How issued.

 154  Contents and term of patent.

 155  Patent term extension.

 155  A patent term restoration.

 156  Extension of patent term.

 157  Statutory invention registration.

 35 U.S.C. 151  Issue of patent.

  If it appears that applicant is entitled to a patent
under  the  law,  a  written  notice  of  allowance  of  the
application shall be given or mailed to the applicant. The
notice shall specify a sum, constituting the issue fee or a
portion thereof, which shall be paid within three months
thereafter.

  Upon payment of this sum the patent shall issue, but if
payment  is  not  timely  made,  the  application  shall  be
regarded as abandoned.

  Any remaining balance of the issue fee shall be paid
within three months from the sending of a notice thereof,
and, if not paid, the patent shall lapse at the termination
of this three - month period. In calculating the amount of a
remaining balance, charges for a page or less may be
disregarded.

  If any payment required by this section is not timely
made, but is submitted with the fee for delayed payment and
the delay in payment is shown to have been unavoidable, it
may be accepted by the Commissioner as though no abandonment
or lapse had ever occurred.

  (Amended July 24, 1965, Public Law 89 - 83, secs. 4 and
6, 79 Stat. 260; Jan. 2, 1975, Public Law 93 - 601, sec. 3,
88 Stat. 1956.)

 35 U.S.C. 152  Issue of patent to assignee.

  Patents may be granted to the assignee of the inventor
of record in the Patent and Trademark Office,

 upon the application made and the specification sworn to by
the inventor, except as otherwise provided in this title.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 153  How issued.

  Patents shall be issued in the name of the United States
of America, under the seal of the Patent and Trademark
Office, and shall be signed by the Commissioner or have his
signature placed thereon and attested by an officer of the
Patent and Trademark Office designated by the Commissioner,
and shall be recorded in the Patent and Trademark Office.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 154  Contents and term of patent.

  (a) IN GENERAL.-

  (1) CONTENTS.-Every patent shall contain a short title of
the invention and a grant to the patentee, his heirs or
assigns, of the right to exclude others from making, using,
offering for sale, or selling the invention throughout the
United States or importing the invention into the United
States, and, if the invention is a process, of the right to
exclude others from using, offering for sale or selling
throughout the United States, or importing into the United
States, products made by that process, referring to the
specification for the particulars thereof.

  (2) TERM.-Subject to the payment of fees under this
title, such grant shall be for a term beginning on the date
on which the patent issues and ending 20 years from the date
on which the application for the patent was filed in the
United States or, if the application contains a specific
reference to an earlier filed application or applications
under section 120, 121, or 365(c) of this title, from the
date on which the earliest such application was filed.

  (3) PRIORITY.-Priority under section 119, 365(a), or
365(b) of this title shall not be taken into account in
determining the term of a patent.

  (4)  SPECIFICATION  AND  DRAWING.-A  copy  of  the
specification and drawing shall be annexed to the patent and
be a part of such patent.

  (b) TERM EXTENSION.-

  (1) INTERFERENCE DELAY OR SECRECY ORDERS.-If the issue of
an original patent is delayed due to a proceeding under
section 135(a) of this title, or because the application for
patent is placed under an order pursuant to section 181 of
this title, the term of the patent shall be extended for the
period of delay, but in no case more than 5 years.

  (2) EXTENSION FOR APPELLATE REVIEW.-If the issue of a
patent is delayed due to appellate review by the Board of
Patent Appeals and Interferences or by a Federal court and
the patent is issued pursuant to a decision in the review
reversing an adverse determination of patentability, the
term of the patent shall be extended for a period of time
but in no case more than 5 years. A patent shall not be
eligible for extension under this paragraph if it is subject
to a terminal disclaimer due to the issue of another patent
claiming subject matter that is not patentably distinct from
that under appellate review.

  (3) LIMITATIONS.-The period of extension referred to in
paragraph (2)-

  (A)  shall include any period beginning on the date
on which an appeal is filed under section 134 or 141 of this
title, or on which an action is commenced under section 145
of this title, and ending on the date of a final decision in
favor of the applicant;

  (B)  shall be reduced by any time attributable to
appellate review before the expiration of 3 years from the
filing date of the application for patent; and

  (C)  shall be reduced for the period of time during
which  the  applicant  for  patent  did  not  act  with  due
diligence, as determined by the Commissioner.

  (4)  LENGTH  OF  EXTENSION.-The  total  duration  of  all
extensions of a patent under this subsection shall not
exceed 5 years.

  (c) CONTINUATION.-

  (1) DETERMINATION.-The term of a patent that is in force
on or that results from an application filed before the date
that is 6 months after the date of the enactment of the
Uruguay Round Agreements Act shall be the greater of the 20
- year term as provided in subsection (a), or 17 years from
grant subject to any terminal disclaimers.

  (2) REMEDIES.-The remedies of sections 283, 284, and 285
of this title shall not apply to Acts which -

  (A) were  commenced  or  for  which  substantial
investment was made before the date that is 6 months after
the date of the enactment of the Uruguay Round Agreements

Act; and

  (B)  became infringing by reason of para graph (1).

  (3) . . REMUNERATION.-The acts referred to in paragraph
(2) may be continued only upon the payment of an equitable
remuneration to the patentee that is determined in an action
brought under chapter 28 and chapter 29 (other than those
provisions excluded by paragraph (2)) of this title.

  (Amended July 24, 1965, Public Law 89 - 83, sec. 5, 79
Stat. 261; Dec. 12, 1980, Public Law 96 - 517, sec. 4, 94
Stat. 3018; amended August 23, 1988, Public Law 100 - 418,
sec. 9002, effective Feb. 23, 1989; amended Dec. 8, 1994,
Public Law 103 - 465, sec. 532, 108 Stat. 4809, effective
June 8, 1995 except subsection (a)(1) effective Jan. 1,
1996.)

 35 U.S.C. 155  Patent term extension.

  Notwithstanding the provisions of section 154, the term
of a patent which encompasses within its scope a composition
of matter or a process for using such composition shall be
extended if such composition or process has been subjected
to  a  regulatory  review  by  the  Federal  Food  and  Drug
Administration  pursuant  to  the  Federal  Food,  Drug  and
Cosmetic  Act  leading  to  the  publication  of  regulation
permitting the interstate distribution and sale of such
composition or process and for which there has thereafter
been a stay of regulation of approval imposed pursuant to
section 409 of the Federal Food, Drug and Cosmetic Act,
which stay was in effect on January 1, 1981, by a length of
time to be measured from the date such stay of regulation of
approval was imposed until such proceedings are finally
resolved and commercial marketing permitted. The patentee,
his  heirs,  successors,  or  assigns  shall  notify  the
Commissioner of Patents and Trademarks within 90 days of the
date of enactment of this section or the date the stay of
regulation of approval has been removed, whichever is later,
of the number of the patent to be extended and the date the
stay was imposed and the date commercial marketing was
permitted. On receipt of such notice, the Commissioner shall
promptly issue to the owner of record of the patent a
certificate of extension, under seal, stating the fact and
length of the extension and identifying the composition of
matter or process for using such composition to which such
extension is applicable. Such certificate shall be recorded
in the official file of each patent extended and such
certificate shall be considered as part of the original
patent, and an appropriate notice shall be published in the
Official Gazette of the Patent and Trademark Office.

  (Amended Jan. 4, 1983, Public Law 97 - 414, 96 Stat.
2065.)

 35 U.S.C. 155A  Patent term restoration.

  (a) Notwithstanding section 154 of this title, the term
of each of the following patents shall be extended in
accordance with this section:

  (1) Any patent which encompasses within its scope a
composition of matter which is a new drug product, if during
the regulatory review of the product by the Federal Food and
Drug Administration -

  (2) Any patent which encompasses within its scope a
process for using the composition described in paragraph
(1).

  (b) The term of any patent described in subsection (a)
shall be extended for a period equal to the period beginning
February 20, 1976, and ending May 26, 1981, and such patent
shall have the effect as if originally issued with such
extended term.

  (c) The patentee of any patent described in subsection
(a) of this section shall, within ninety days after the date
of enactment of this section, notify the Commissioner of
Patents and Trademarks of the number of any patent so
extended. On receipt of such notice, the Commissioner shall
confirm such extension by placing a notice thereof in the
official file of such patent and publishing an appropriate
notice of such extension in the Official Gazette of the
Patent and Trademark Office.

  (Added Oct. 13, 1983, Public Law 98 - 127, sec. 4(a), 97
Stat. 832.)

 35 U.S.C. 156  Extension of patent term.

  (a) The term of a patent which claims a product, a method
of using a product, or a method of manufacturing a product
shall be extended in accordance with this section from the
original expiration date of the patent if -

  (1) the term of the patent has not expired before an
application is submitted under subsection (d)(i) for its
extension;

  (2) the term of the patent has never been extended under
subsection (e)(1) of this section;

  (3) an application for extension is submitted by the
owner of record of the patent or its agent and in accordance
with the requirements of paragraphs (1) through (4) of
subsection (d);

  (4) the product has been subject to a regulatory review
period before its commercial marketing or use;

  (5)(A) except as provided in subparagraph (B) or (C), the
permission for the commercial marketing or use of the
product after such regulatory review period is the first
permitted commercial marketing or use of the product under
the provision of law under which such regulatory review
period occurred;

  (i) claims a new animal drug or a veterinary biological
product which (I) is not covered by the claims in any other
patent which has been extended, and (II) has received
permission for the commercial marketing or use in non - food
- producing animals and in food - producing animals, and

  (ii) was not extended on the basis of the regulatory
review period for use in non - food - producing animals, the
permission for the commercial marketing or use of the drug
or product after the regulatory review period for use in
food - producing animals is the first permitted commercial
marketing or use of the drug or product for administration
to a food - producing animal.

  The product referred to in paragraphs (4) and (5) is
hereinafter in this section referred to as the "approved
product."

  (b) Except as provided in subsection (d)(5)(F), the
rights derived from any patent the term of which is extended
under this section shall during the period during which the
term of the patent is extended -

  (1) in the case of a patent which claims a product, be
limited to any use approved for the product -

  (i) under the provision of law under which the applicable
regulatory review occurred, or

  (ii)  under  the  provision  of  law  under  which  any
regulatory review described in paragraph (1), (4), or (5) of
subsection (g) occurred, and

  (2) in the case of a patent which claims a method of
using a product, be limited to any use claimed by the patent
and approved for the product -

  (i) under any provision of law under which an applicable
regulatory review occurred, and

  (ii)  under  the  provision  of  law  under  which  any
regulatory review described in paragraph (1), (4), or (5) of
subsection (g) occurred, and

  (3) in the case of a patent which claims a method of
manufacturing  a  product,  be  limited  to  the  method  of
manufacturing as used to make -

  As used in this subsection, the term "product" includes
an approved product.

  (c) The term of a patent eligible for extension under
subsection (a) shall be extended by the time equal to the
regulatory review period for the approved product which
period occurs after the date the patent is issued, except
that-

  (1) each period of the regulatory review period shall be
reduced by any period determined under subsection (d)(2)(B)
during which the applicant for the patent extension did not
act with due diligence during such period of the regulatory
review period;

  (2) after any reduction required by paragraph (1), the
period of extension shall include only one - half of the

time  remaining  in  the  periods  described  in  paragraphs
(1)(B)(i), (2)(B)(i), (3)(B)(i), (4)(B)(i), and (5)(B)(i) of
subsection (g);

  (3) if the period remaining in the term of a patent
after the date of the approval of the approved product under
the provision of law under which such regulatory review
occurred when added to the regulatory review period as
revised under paragraphs (1) and (2) exceeds fourteen years,
the period of extension shall be reduced so that the total
of both such periods does not exceed fourteen years, and

  (4) in no event shall more than one patent be extended
under subsection (e)(i) for the same regulatory review
period for any product.

  (d)(1) To obtain an extension of the term of a patent
under this section, the owner of record of the patent or its
agent shall submit an application to the Commissioner.
Except as provided in paragraph (5), such an application may
only be submitted within the sixty - day period beginning on
the date the product received permission under the provision
of law under which the applicable regulatory review period
occurred for commercial marketing or use. The application
shall con tain -

  (2)(A) Within 60 days of the submittal of an application
for extension of the term of a patent under paragraph (1),
the Commissioner shall notify -

  (i) the Secretary of Agriculture if the patent claims a
drug product or a method of using or manufacturing a drug
product and the drug product is subject to the Virus - Serum
- Toxin Act, and

  (ii) the Secretary of Health and Human Services if the
patent claims any other drug product, a medical device, or a
food additive or color additive or a method of using or
manufacturing such a product, device, or additive and if the
product, device, and additive are subject to the Federal
Food, Drug and Cosmetic Act, of the extension application
and shall submit to the Secretary who is so notified a copy
of the application. Not later than 30 days after the receipt
of an application from the Commissioner, the Secretary
reviewing the application shall review the dates contained
in  the  application  pursuant  to  paragraph  (1)(C)  and
determine the applicable regulatory review period, shall
notify the Commissioner of the determination, and shall
publish  in  the  Federal  Register  a  notice  of  such
determination.

  (B)(i) If a petition is submitted to the Secretary making
the determination under subparagraph (A), not later than 180
days  after  the  publication  of  the  determination  under
subparagraph (A), upon which it may reasonably be determined
that the applicant did not act with due diligence during the
applicable regulatory review period, the Secretary making
the determination shall, in accordance with regulations
promulgated by the Secretary, determine if the applicant
acted with due diligence during the applicable regulatory

review period. The Secretary making the determination shall
make such determination not later than 90 days after the
receipt of such a petition. For a drug product, device, or
additive subject to the Federal Food, Drug, and Cosmetic Act
or the Public Health Service Act, the Secretary may not
delegate the authority to make the determination prescribed
by this clause to an office below the Office of the
Commissioner of Food and Drugs. For a product subject to the
Virus - Serum - Toxin Act, the Secretary of Agriculture may
not  delegate  the  authority  to  make  the  determination
prescribed by this clause to an office below the office of
the  Assistant  Secretary  for  Marketing  and  Inspection
Services.

  (ii) The Secretary making a determination under clause
(i) shall notify the Commissioner of the determination and
shall publish in the Federal Register a notice of such
determination together with the factual and legal basis for
such  determination.  Any  interested  person  may  request,
within the 60 - day period beginning on the publication of a
determination, the Secretary making the determination to
hold an informal hearing on the determination. If such a
request is made within such period, such Secretary shall
hold such hearing not later than 30 days after the date of
the request, or at the request of the person making the
request, not later than 60 days after such date. The
Secretary who is holding the hearing shall provide notice of
the hearing to the owner of the patent involved and to any
interested person and provide the owner and any interested
person an opportunity to participate in the hearing. Within
30 days after the completion of the hearing, such Secretary
shall affirm or revise the determination which was the
subject of the hearing and notify the Commissioner of any
revision of the determination and shall publish any such
revision in the Federal Register.

  (3) For the purposes of paragraph (2)(B), the term "due
diligence"  means  that  degree  of  attention,  continuous
directed  effort,  and  timeliness  as  may  reasonably  be
expected from, and are ordinarily exercised by, a person
during a regulatory review period.

  (4) An application for the extension of the term of a
patent is subject to the disclosure requirements prescribed
by the Commissioner.

  (5)(A) If the owner of record of the patent or its agent
reasonably expects that the applicable regulatory review
period  described  in  paragraphs  (1)(B)(ii),  (2)(B)(ii),
(3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of subsection (g) that
began for a product that is the subject of such patent may
extend beyond the expiration of the patent term in effect,
the owner or its agent may submit an application to the
Commissioner for an interim extension during the period
beginning 6 months, and ending 15 days before such term is
due to expire. The application shall contain-

  (i) the identity of the product subject to regulating
review and the Federal statute under which such review is
occurring;

  (ii)  the  identity  of  the  patent  for  which  interim
extension is being sought and the identity of each claim of
such patent which claims the product under regulatory review
or a method of using or manufacturing the product;

  (iii) information to enable the Commissioner to determine
under subsection (a)(1), (2), and (3) the eligibility of a
patent for extension;

  (iv) a brief description of the activities undertaken by
the applicant during the applicable regulatory review period
to date with respect to the product under review and the
significant dates applicable to such activities; and

  (v) such patent or other information as the Commissioner
may require.

  (i) for not to exceed 5 years from the date of expiration
of the original patent term; or

  (ii) if the patent is subject to subsection (g)(6)(C),
from  the  date  on  which  the  product  involved  receives
approval for commercial marketing or use.

  (i) in the case of a patent which claims a product, be
limited to any use then under regulatory review;

  (ii) in the case of a patent which claims a method of
using a product, be limited to any use claimed by the patent
then under regulatory review; and

  (iii) in the case of a patent which claims a method of
manufacturing  a  product,  be  limited  to  the  method  of
manufacturing  as  used  to  make  the  product  then  under
regulatory review.

  (e)(1) A determination that a patent is eligible for
extenion may be made by the Commissioner solely on the basis
of the representations contained in the application for the
extension. If the Commissioner determines that a patent is
eligible for extension under subsection (a) and that the
requirements of paragraphs (1) through (4) of subsection (d)
have been complied with, the Commissioner shall issue to the
applicant for the extension of the term of the patent a
certificate  of  extension,  under  seal,  for  the  period
prescribed by subsection (c). Such certificate shall be
recorded in the official file of the patent and shall be
considered as part of the original patent.

  (2) If the term of a patent for which an application has
been submitted under subsection (d)(1) would expire before a
certificate of extension is issued or denied under paragraph
(1)  respecting  the  application,  the  Commissioner  shall
extend, until such determination is made, the term of the
patent for periods of up to one year if he determines that
the patent is eligible for extension.

  (f) For purposes of this section:

  (1) The term "product" means:

  (2) The term "drug product" means the active ingredient

of-

  (3) The term "major health or environmental effects test"
means a test which is reasonably related to the evaluation
of the health or environmental effects of a product, which
requires at least six months to conduct, and the data from
which is submitted to receive permission for commercial
marketing or use. Periods of analysis or evaluation of test
results are not to be included in determining if the conduct
of a test required at least six months.

  (4)(A) Any reference to section 351 is a reference to
section 351 of the Public Health Service Act.

  (5)  The  term  "informal  hearing"  has  the  meaning
prescribed for such term by section 201(y) of the Federal
Food, Drug and Cosmetic Act.

  (6) The term "patent" means a patent issued by the United
States Patent and Trademark Office.

  (7) The term "date of enactment" as used in this section
means September 24, 1984, for human drug product, a medical
device, food additive, or color additive.

  (8) The term "date of enactment" as used in this section
means the date of enactment of the Generic Animal Drug and
Patent  Term  Restoration  Act  for  an  animal  drug  or  a
veterinary biological product.

  (g) For purposes of this section, the term "regulatory
review period" has the following meanings:

  (1)(A) In the case of a product which is a new drug,
antibiotic drug, or human biological product, the term means
the period described in subparagraph (B) to which the
limitation described in paragraph (6) applies.

  (i) the period beginning on the date an exemption under
subsection (i) of section 505 or subsection (d) of section
507 became effective for the approved product and ending on
the date an application was initially submitted for such
drug product under section 351, 505, or 507, and

  (ii) the period beginning on the date the application was
initially submitted for the approved product under section
351, subsection (b) of section 505, or section 507 and
ending on the date such application was approved under such
section.

  (2)(A) In the case of a product which is a food additive
or color additive, the term means the period described in
subparagraph  (B)  to  which  the  limitation  described  in
paragraph (6) applies.

  (i) the period beginning on the date a major health or
environmental effects test on the additive was initiated and
ending on the date a petition was initially submitted with
respect to the product under the Federal Food, Drug, and

Cosmetic Act requesting the issuance of a regulation for use
of the product, and

  (ii) the period beginning on the date a petition was
initially submitted with respect to the product under the
Federal Food, Drug, and Cosmetic Act requesting the issuance
of a regulation for use of the product, and ending on the
date such regulation became effective or, if objections were
filed to such regulation, ending on the date such objections
were resolved and commercial marketing was permitted or, if
commercial marketing was permitted and later revoked pending
further proceedings as a result of such objections, ending
on the date such proceedings were finally resolved and
commercial marketing was permitted.

  (3)(A) In the case of a product which is a medical
device, the term means the period described in subparagraph
(B) to which the limitation described in paragraph (6)
applies.

  (i)  the  period  beginning  on  the  date  a  clinical
investigation on humans involving the device was begun and
ending on the date an application was initially submitted
with respect to the device under section 515, and

  (ii) the period beginning on the date an application was
initially submitted with respect to the device under section
515 and ending on the date such application was approved
under such Act or the period beginning on the date a notice
of  completion  of  a  product  development  protocol  was
initially submitted under section 515(f)(5) and ending on
the date the protocol was declared completed under section
515(f)(6).

  (4)(A) In the case of a product which is a new animal
drug, the term means the period described in subparagraph
(B) to which the limitation described in paragraph (6)
applies.

  (i) the period beginning on the earlier of the date a
major health or environmental effects test on the drug was
initiated or the date an exemption under subsection (j) of
section 512 became effective for the approved new animal
drug product and ending on the date an application was
initially submitted for such animal drug product under
section 512, and

  (ii) the period beginning on the date the application was
initially submitted for the approved animal drug product
under subsection (b) of section 512 and ending on the date
such application was approved under such section.

  (5)(A) In the case of a product which is a veterinary
biological product, the term means the period described in
subparagraph  (B)  to  which  the  limitation  described  in
paragraph (6) applies.

  (i) the period beginning on the date the authority to
prepare an experimental biological product under the Virus -
Serum - Toxin Act became effective and ending on the date an
application for a license was submitted under the Virus -
Serum - Toxin Act, and

  (ii) the period beginning on the date an application for
a license was initially submitted for approval under the
Virus - Serum - Toxin Act and ending on the date such
license was issued.

  (6) A period determined under any of the preceding
paragraphs is subject to the following limitations:

  (i) no request for an exemption described in paragraph
(1)(B) or (4)(B) was submitted and no request for the
authority described in paragraph (5)(B) was submitted,

  (ii)  no  major  health  or  environment  effects  test
described in paragraph (2)(B) or (4)(B) was initiated and no
petition for a regulation or application for registration
described in such paragraph was submitted, or

  (iii) no clinical investigation described in paragraph
(3) was begun or product development protocol described in
such paragraph was submitted, before such date for the
approved product the period of extension determined on the
basis of the regulatory review period determined under any
such paragraph may not exceed five years.

  (h) The Commissioner may establish such fees as the
Commissioner determines appropriate to cover the costs to
the Office of receiving and acting upon applications under
this section.

  (Added Sept. 24, 1984, Public Law 98 - 417, sec. 201, 98
Stat. 1598; amended Nov. 16, 1988, Public Law 100 - 670,
sec. 201, 102 Stat. 3971; Dec. 3, 1993, Public Law 103 -
179, sec. 5, 107 Stat. 2040; subsection (a)(2) amended, Dec
8, 1994, Public Law 103 - 465, sec. 532, 108 Stat. 4809,
effective June 8, 1995.)

 35 U.S.C. 157  Statutory invention registration.

  (a) Notwithstanding any other provision of this title,
the  Commissioner  is  authorized  to  publish  a  statutory
invention  registration  containing  the  specification  and
drawings of a regularly filed application for a patent
without examination if the applicant -

  (1) meets the requirements of section 112 of this title;

  (2) has complied with the requirements for printing; as
set forth in regulations of the Commissioner;

  (3) waives the right to receive a patent on the invention
within such period as may be prescribed by the Commissioner;
and

  (4) pays application, publication, and other processing
fees established by the Commissioner.

  If an interference is declared with respect to such an
application, a statutory invention registration may not be
published unless the issue of priority of invention is
finally determined in favor of the applicant.

  (b) The waiver under subsection (a)(3) of this section by
an applicant shall take effect upon publication of the
statutory invention registration.

  (c) A statutory invention registration published pursuant
to this section shall have all of the attributes specified
for patents in this title except those specified in section
183 and sections 271 through 289 of this title. A statutory
invention registration shall not have any of the attributes
specified for patents in any other provision of law other
than  this  title.  A  statutory  invention  registration
published pursuant to this section shall give appropriate
notice to the public, pursuant to regulations which the
Commissioner shall issue, of the preceding provisions of
this subsection. The invention with respect to which a
statutory  invention  certificate  is  published  is  not  a
patented invention for purposes of section 292 of this
title.

  (d)  The  Secretary  of  Commerce  shall  report  to  the
Congress  annually  on  the  use  of  statutory  invention
registrations. Such report shall include an assessment of
the degree to which agencies of the federal government are
making use of the statutory invention registration system,
the degree to which it aids the management of federally
developed technology, and an assessment of the cost savings
to the Federal Government of the uses of such procedures.

  (Added Nov. 8, 1984, Public Law 98 - 662, sec. 102, 98
Stat. 3383.)

  CHAPTER 15 - PLANT PATENTS

 Sec.

 161  Patents for plants.

 162  Description, claim.

 163  Grant.

 164  Assistance of the Department of Agriculture.

 35 U.S.C. 161  Patents for plants.

  Whoever invents or discovers and asexually reproduces
any distinct and new variety of plant, including cultivated
sports, mutants, hybrids, and newly found seedlings, other
than a tuber propagated plant or a plant found in an
uncultivated state, may obtain a patent therefor, subject to
the conditions and requirements of this title.

  The provisions of this title relating to patents for
inventions shall apply to patents for plants, except as
otherwise provided .

  (Amended Sept. 3, 1954, 68 Stat. 1190.)

 35 U.S.C. 162  Description, claim.

  No  plant  patent  shall  be  declared  invalid  for
noncompliance  with  section  112  of  this  title  if  the
description is as complete as is reasonably possible.

  The claim in the specification shall be in formal terms

to the plant shown and described.

 35 U.S.C. 163  Grant.

  In the case of a plant patent the grant shall be of the
right to exclude others from asexually reproducing the plant
or selling or using the plant so reproduced.

 35 U.S.C. 164  Assistance of the Department of
Agriculture.

  The  President  may  by  Executive  order  direct  the
Secretary of Agriculture, in accordance with the requests of
the Commissioner, for the purpose of carrying into effect
the provisions of this title with respect to plants (1) to
furnish  available  information  of  the  Department  of
Agriculture, (2) to conduct through the appropriate bureau
or  division  of  the  Department  research  upon  special
problems, or (3) to detail to the Commissioner officers and
employees of the Department.

  CHAPTER 16 - DESIGNS

 Sec.

 171  Patents for designs.

 172  Right of priority.

 173  Term of design patent.

 35 U.S.C. 171  Patents for designs.

  Whoever invents any new, original, and ornamental design
for an article of manufacture may obtain a patent therefor,
subject to the conditions and requirements of this title.

  The provisions of this title relating to patents for
inventions shall apply to patents for designs, except as
otherwise provided.

 35 U.S.C. 172  Right of priority.

  The right of priority provided for by subsections (a)
through (d) of section 119 of this title and the time
specified in section 102(d) shall be six months in the case
of designs. The right of priority provided for by section
119(e) of this title shall not apply to designs.

  (Amended Dec. 8, 1994, Public Law 103 - 465, sec. 532,
108 Stat. 4809, effective June 8, 1995.)

 35 U.S.C. 173  Term of design patent.

  Patents for designs shall be granted for the term of
fourteen years from the date of grant.

  (Amended Aug. 27, 1982, Public Law 97 - 247, sec. 16, 96
Stat. 321; amended Dec. 8, 1994, Public Law 103 - 465, sec.
532, 108 Stat. 4809, effective June 8, 1995.)

  CHAPTER 17 - SECRECY OF CERTAIN INVENTIONS AND FILING
  APPLICATIONS IN FOREIGN COUNTRIES

 Sec.

 181  Secrecy of certain inventions and withholding of
patent.

 182  Abandonment  of  invention  for  unauthorized
disclosure.

 183  Right to compensation.

 184  Filing of application in foreign country.

 185  Patent barred for filing without license.

 186  Penalty.

 187  Nonapplicability to certain persons.

 188  Rules and regulations, delegation of power.

 35 U.S.C. 181  Secrecy of certain inventions and
withholding of patent.

  Whenever publication or disclosure by the grant of a
patent on an invention in which the Government has a
property interest might, in the opinion of the head of the
interested Government agency, be detrimental to the national
security, the Commissioner upon being so notified shall
order that the invention be kept secret and shall withhold
the grant of a patent therefor under the conditions set
forth hereinafter.

  Whenever the publication or disclosure of an invention
by the granting of a patent, in which the Government does
not have a property interest, might, in the opinion of the
Commissioner, be detrimental to the national security, he
shall  make  the  application  for  patent  in  which  such
invention is disclosed available for inspection to the
Atomic Energy Commission, the Secretary of Defense, and the
chief officer of any other department or agency of the
Government designated by the President as a defense agency
of the United States.

  Each individual to whom the application is disclosed
shall  sign  a  dated  acknowledgment  thereof,  which
acknowledgment  shall  be  entered  in  the  file  of  the
application.  If,  in  the  opinion  of  the  Atomic  Energy
Commission, the Secretary of a Defense Department, or the
chief officer of another department or agency so designated,
the publication or disclosure of the invention by the
granting of a patent therefor would be detrimental to the
national  security,  the  Atomic  Energy  Commission,  the
Secretary of a Defense Department, or such other chief
officer shall notify the Commissioner and the Commissioner
shall order that the invention be kept secret and shall
withhold the grant of a patent for such period as the
national  interest  requires,  and  notify  the  applicant
thereof. Upon proper showing by the head of the department
or agency who caused the secrecy order to be issued that the
examination of the application might jeopardize the national
interest, the Commissioner shall thereupon maintain the
application in a sealed condition and notify the applicant
thereof. The owner of an application which has been placed
under a secrecy order shall have a right to appeal from the
order to the Secretary of Commerce under rules prescribed by
him.

  An invention shall not be ordered kept secret and the
grant of a patent withheld for a period of more than one
year. The Commissioner shall renew the order at the

 end thereof, or at the end of any renewal period, for
additional periods of one year upon notification by the head
of the department or the chief officer of the agency who
caused  the  order  to  be  issued  that  an  affirmative
determination has been made that the national interest
continues to so require. An order in effect, or issued,
during a time when the United States is at war, shall remain
in effect for the duration of hostilities and one year
following cessation of hostilities. An order in effect, or
issued,  during  a  national  emergency  declared  by  the
President shall remain in effect for the duration of the
national  emergency  and  six  months  thereafter.  The
Commissioner may rescind any order upon notification by the
heads of the departments and the chief officers of the
agencies  who  caused  the  order  to  be  issued  that  the
publication or disclosure of the invention is no longer
deemed detrimental to the national security.

 35 U.S.C. 182  Abandonment of invention for unauthorized
disclosure.

  The invention disclosed in an application for patent
subject to an order made pursuant to section 181 of this
title may be held abandoned upon its being established by
the  Commissioner  that  in  violation  of  said  order  the
invention  has  been  published  or  disclosed  or  that  an
application for a patent therefor has been filed in a
foreign country by the inventor, his successors, assigns, or
legal representatives, or anyone in privity with him or
them,  without  the  consent  of  the  Commissioner.  The
abandonment shall be held to have occurred as of the time of
violation. The consent of the Commissioner shall not be
given  without  the  concurrence  of  the  heads  of  the
departments and the chief officers of the agencies who
caused the order to be issued. A holding of abandonment
shall  constitute  forfeiture  by  the  applicant,  his
successors, assigns, or legal representatives, or anyone in
privity with him or them, of all claims against the United
States based upon such invention.

 35 U.S.C. 183  Right to compensation.

  An  applicant,  his  successors,  assigns,  or  legal
representatives,  whose  patent  is  withheld  as  herein
provided, shall have the right, beginning at the date the
applicant is notified that, except for such order, his
application is otherwise in condition for allowance, or
February 1, 1952, whichever is later, and ending six years
after a patent is issued thereon, to apply to the head of
any department or agency who caused the order to be issued
for compensation for the damage caused by the order of
secrecy  and/or  for  the  use  of  the  invention  by  the
Government, resulting from his disclosure. The right to
compensation for use shall begin on the date of the first
use of the invention by the Government. The head of the
department or agency is authorized, upon the presentation of
a claim, to enter into an agreement with the applicant, his
successors,  assigns,  or  legal  representatives,  in  full
settlement  for  the  damage  and/or  use.  This  settlement
agreement  shall  be  conclusive  for  all  purposes

notwithstanding any other provision of law to the contrary.
If full settlement of the claim cannot be effected, the head
of the department or agency may award and pay to such
applicant,  his  successors,  assigns,  or  legal
representatives, a sum not exceeding 75 per centum of the
sum which the head of the department or agency considers
just compensation for the damage and/or use. A claimant may
bring suit against the United States in the United States
Claims Court or in the District Court of the United States
for the district in which such claimant is a resident for an
amount which when added to the award shall constitute just
compensation for the damage and/or use of the invention by
the Government. The owner of any patent issued upon an
application that was subject to a secrecy order issued
pursuant to section 181 of this title, who did not apply for
compensation as above provided, shall have the right, after
the date of issuance of such patent, to bring suit in the
United States Claims Court for just compensation for the
damage caused by reason of the order of secrecy and/or use
by the Government of the invention resulting from his
disclosure. The right to compensation for use shall begin on
the  date  of  the  first  use  of  the  invention  by  the
Government. In a suit under the provisions of this section
the United States may avail itself of all defenses it may
plead in an action under section 1498 of title 28. This
section shall not confer a right of action on anyone or his
successors, assigns, or legal representatives who, while in
the full - time employment or service of the United States,
discovered, invented, or developed the invention on which
the claim is based.

  (Amended Apr. 2, 1982, Public Law 97 - 164, sec. 160, 96
Stat. 48.)

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

  Except when authorized by a license obtained from the
Commissioner a person shall not file or cause or authorize
to be filed in any foreign country prior to six months after
filing in the United States an application for patent or for
the registration of a utility model, industrial design, or
model in respect of an invention made in this country. A
license shall not be granted with respect to an invention
subject to an order issued by the Commissioner pursuant to
section 181 of this title without the concurrence of the
head of the departments and the chief officers of the
agencies who caused the order to be issued. The license may
be granted retroactively where an application has been filed
abroad through error and without deceptive intent and the
application does not disclose an invention within the scope
of section 181 of this title.

  The  term  "application"  when  used  in  this  chapter
includes applications and any modifications, amendments, or
supplements thereto, or divisions thereof.

  The  scope  of  a  license  shall  permit  subsequent
modifications,  amendments,  and  supplements  containing
additional subject matter if the application upon which the
request for the license is based is not, or was not,
required to be made available for inspection under section
181 of this title and if such modifications, amendments, and
supplements  do  not  change  the  general  nature  of  the
invention in a manner which would require such application
to be made available for inspection under such section 181.

In any case in which a license is not, or was not, required
in order to file an application in any foreign country, such
subsequent modifications, amendments, and supplements may be
made, without a license, to the application filed in the
foreign country if the United States application was not
required to be made available for inspection under section
181 and if such modifications, amendments, and supplements
do not, or did not, change the general nature of the
invention in a manner which would require the United States
application to have been made available for inspection under
such section 181.

  (Amended August 23, 1988, Public Law 100 - 418, sec.
9101.)

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

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

 patent does not disclose subject matter within the scope of
section 181 of this title.

  (Amended August 23, 1988, Public Law 100 - 418, sec.
9101.)

 35 U.S.C. 186  Penalty.

  Whoever, during the period or periods of time an
invention has been ordered to be kept secret and the grant
of a patent thereon withheld pursuant to section 181 of this
title, shall, with knowledge of such order and without due
authorization, willfully publish or disclose or authorize or
cause  to  be  published  or  disclosed  the  invention,  or
material  information  with  respect  thereto,  or  whoever
willfully, in violation of the provisions of section 184 of
this title, shall file or cause or authorize to be filed in
any foreign country an application for patent or for the
registration of a utility model, industrial design, or model
in respect of any invention made in the United States,
shall, upon conviction, be fined not more than $10,000 or
imprisoned for not more than two years, or both.

  (Amended August 23, 1988, Public Law 100 - 418, sec.
9101.)

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

  The prohibitions and penalties of this chapter shall not
apply to any officer or agent of the United States acting
within the scope of his authority, nor to any person acting
upon his written instructions or permission.

 35 U.S.C. 188  Rules and regulations, delegation of

power.

  The Atomic Energy Commission, the Secretary of a defense
department, the chief officer of any other department or
agency of the Government designated by the President as a
defense agency of the United States, and the Secretary of
Commerce, may separately issue rules and regulations to
enable the respective department or agency to carry out the
provisions of this chapter, and may delegate any power
conferred by this chapter.

  CHAPTER [18] 38 - PATENT RIGHTS IN INVENTIONS MADE WITH
  FEDERAL ASSISTANCE

 Sec.

 200  Policy and objective.

 201  Definitions.

 202  Disposition of rights.

 203  March - in rights.

 204  Preference for United States industry.

 205  Confidentiality.

 206  Uniform clauses and regulations.

 207  Domestic and foreign protection of federally owned
inventions.

 208  Regulations governing Federal licensing.

 209  Restrictions  on  licensing  of  federally  owned
inventions.

 210  Precedence of chapter.

 211  Relationship to antitrust laws.

 212  Disposition of rights in educational awards.

 35 U.S.C. 200  Policy and objective.

  It is the policy and objective of the Congress to use
the patent system to promote the utilization of inventions
arising from federally supported research or development; to
encourage maximum participation of small business firms in
federally supported research and development efforts; to
promote  collaboration  between  commercial  concerns  and
nonprofit organizations, including universities; to ensure
that inventions made by nonprofit organizations and small
business  firms  are  used  in  a  manner  to  promote  free
competition and enterprise; to promote the commercialization
and public availability of inventions made in the United
States by United States industry and labor; to ensure that
the  Government  obtains  sufficient  rights  in  federally
supported inventions to meet the needs of the Government and
protect the public against nonuse or unreasonable use of
inventions; and to minimize the costs of administering
policies in this area.

  (Added Dec. 12, 1980, Public Law 96 - 517, sec. 6(a), 94

Stat. 3019.)

 35 U.S.C. 201  Definitions.

  As used in this chapter -

  (a) The term "Federal agency" means any executive agency
as defined in section 105 of title 5, United States Code,
and the military departments as defined by section 102 of
title 5, United States Code.

  (b) The term "funding agreement" means any contract,
grant, or cooperative agreement entered into between any
Federal agency, other than the Tennessee Valley Authority,
and any contractor for the performance of experimental,
developmental, or research work funded in whole or in part
by  the  Federal  Government.  Such  term  includes  any
assignment, substitution of parties, or subcontract of any
type entered into for the performance of experimental,
developmental, or research work under a funding agreement as
herein defined.

  (c)  The  term  "contractor"  means  any  person,  small
business firm, or nonprofit organization that is a party to
a funding agreement.

  (d) The term "invention" means any invention or discovery
which is or may be patentable or otherwise protectable under
this title or any novel variety of plant which is or may be
protectable under the Plant Variety Protection Act (7 U.S.C.
2321, et seq.).

  (e) The term "subject invention" means any invention of
the  contractor  conceived  or  first  actually  reduced  to
practice  in  the  performance  of  work  under  a  funding
agreement: Provided, That in the case of a variety of plant,
the date of determination (as defined in section 41(d) of
the Plant Variety Protection Act (7 U.S.C. 2401(d)) must
also occur during the period of contract performance.

  (f) The term "practical application" means to manufacture
in the case of a composition or product, to practice in the
case of a process or method, or to operate in the case of a
machine or system; and, in each case, under such conditions
as to establish that the invention is being utilized and
that its benefits are to the extent permitted by law or
Government regulations available to the public on reasonable
terms.

  (g)  The  term  "made"  when  used  in  relation  to  any
invention means the conception or first actual reduction to
practice of such invention.

  (h) The term "small business firm" means a small business
concern as defined at section 2 of Public Law 85 - 536 (15
U.S.C.  632)  and  implementing  regulations  of  the
Administrator of the Small Business Administration.

  (i) The term "nonprofit organization" means universities
and  other  institutions  of  higher  education  or  an
organization of the type described in section 501(c)(3) of
the Internal Revenue Code of 1954 (26 U.S.C. 501(c)) and
exempt from taxation under section 501(a) of the Internal
Revenue Code (26 U.S.C. 501(a)) or any nonprofit scientific
or  educational  organization  qualified  under  a  State

nonprofit organization statute.

  (Subsection (d) amended Nov. 8, 1984, Public Law 98 -
620, sec. 501(1), 98 Stat. 3364.)

  (Subsection (e) amended Nov. 8, 1984, Public Law 98 -
620, sec. 501(2), 98 Stat. 3364.)

  (Subsection (i) added Dec. 12, 1980, Public Law 96 - 517,
sec. 6(a), 94 Stat. 3019.)

 35 U.S.C. 202  Disposition of rights.

  (a) Each nonprofit organization or small business firm
may, within a reasonable time after disclosure as required
by paragraph (c)(1) of this section, elect to retain title
to any subject invention: Provided, however, That a funding
agreement may provide otherwise (i) when the contractor is
not located in the United States or does not have a place of
business located in the United States or is subject to the
control  of  a  foreign  government,  (ii)  in  exceptional
circumstances when it is determined by the agency that
restriction or elimination of the right to retain title to
any subject invention will better promote the policy and
objectives of this chapter, (iii) when it is determined by a
Government authority which is authorized by statute or
Executive  order  to  conduct  foreign  intelligence  or
counterintelligence  activities  that  the  restriction  or
elimination of the right to retain title to any subject
invention is necessary to protect the security of such
activities, or (iv) when the funding agreement includes the
operation of a Government - owned, contractor - operated
facility of the Department of Energy primarily dedicated to
that  Department's  naval  nuclear  propulsion  or  weapons
related programs and all funding agreement limitations under
this subparagraph on the contractor's right to elect title
to a subject invention are limited to inventions occurring
under the above two programs of the Department of Energy.
The rights of the nonprofit organization or small business
firm shall be subject to the provisions of paragraph (c) of
this section and the other provisions of this chapter.

  (b)(1) The rights of the Government under subsection (a)
shall not be exercised by a Federal agency unless it first
determines that at least one of the conditions identified in
clauses (i) through (iii) of subsection (a) exists. Except
in the case of subsection (a)(iii), the agency shall file
with the Secretary of Commerce, within thirty days after the
award of the applicable funding agreement, a copy of such
determination.  In  the  case  of  a  determination  under
subsection (a)(ii), the statement shall include an analysis
justifying the determination. In the case of determinations
applicable to funding agreements with small business firms,
copies shall also be sent to the Chief Counsel for Advocacy
of the Small Business Administration. If the Secretary of
Commerce  believes  that  any  individual  determination  or
pattern of determinations is contrary to the policies and
objectives of this chapter or otherwise not in conformance
with this chapter, the Secretary shall so advise the head of
the agency concerned and the Administrator of the Office of
Federal  Procurement  Policy,  and  recommend  corrective
actions.

  (2) Whenever the Administrator of the Office of Federal
Procurement Policy has determined that one or more Federal

agencies are utilizing the authority of clause (i) or (ii)
of subsection (a) of this section in a manner that is
contrary to the policies and objectives of this chapter the
Administrator is authorized to issue regulations describing
classes of situations in which agencies may not exercise the
authorities of those clauses.

  (3) At least once every 5 years, the Comptroller General
shall transmit a report to the Committees on the Judiciary
of the Senate and House of Representatives on the manner in
which this chapter is being implemented by the agencies and
on such other aspects of Government patent policies and
practices with respect to federally funded inventions as the
Comptroller General believes appropriate.

  (4) If the contractor believes that a determination is
contrary to the policies and objectives of this chapter or
constitutes an abuse of discretion by the agency, the
determination shall be subject to the last paragraph of
section 203(2).

  (c) Each funding agreement with a small business firm or
nonprofit organization shall contain appropriate provisions
to effectuate the following:

  (1) That the contractor disclose each subject invention
to the Federal agency within a reasonable time after it
becomes known to contractor personnel responsible for the
administration of patent matters, and that the Federal
Government may receive title to any subject invention not
disclosed to it within such time.

  (2) That the contractor make a written election within
two years after disclosure to the Federal agency (or such
additional time as may be approved by the Federal agency)
whether the contractor will retain title to a subject
invention: Provided , That in any case where publication, on
sale, or public use, has initiated the one year statutory
period  in  which  valid  patent  protection  can  still  be
obtained in the United States, the period for election may
be shortened by the Federal agency to a date that is not
more than sixty days prior to the end of the statutory
period: And  provided further , That the Federal Government
may receive title to any subject invention in which the
contractor does not elect to retain rights or fails to elect
rights within such times.

  (3) That a contractor electing rights in a subject
invention agrees to file a patent application prior to any
statutory bar date that may occur under this title due to
publication, on sale, or public use, and shall thereafter
file corresponding patent applications in other countries in
which it wishes to retain title within reasonable times, and
that the Federal Government may receive title to any subject
inventions in the United States or other countries in which
the contractor has not filed patent applications on the
subject invention within such times.

  (4) With respect to any invention in which the contractor
elects rights, the Federal agency shall have a nonexclusive,
nontransferable, irrevocable, paid - up license to practice
or have practiced for or on behalf of the United States any
subject invention throughout the world: Provided,  That the
funding agreement may provide for such additional rights;
including the right to assign or have assigned foreign

patent rights in the subject invention, as are determined by
the agency as necessary for meeting the obligations of the
United States under any treaty, international agreement,
arrangement of cooperation, memorandum of understanding, or
similar arrangement, including military agreements relating
to weapons development and production.

  (5) The right of the Federal agency to require periodic
reporting  on  the  utilization  or  efforts  at  obtaining
utilization that are being made by the contractor or his
licensees  or  assignees:  Provided  ,  That  any  such
information, as well as any information on utilization or
efforts at obtaining utilization obtained as part of a
proceeding under section 203 of this chapter shall be
treated by the Federal agency as commercial and financial
information  obtained  from  a  person  and  privileged  and
confidential and not subject to disclosure under section 552
of title 5 of the United States Code.

  (6) An obligation on the part of the contractor, in the
event a United States patent application is filed by or on
its behalf or by any assignee of the contractor, to include
within the specification of such application and any patent
issuing thereon, a statement specifying that the invention
was made with Government support and that the Government has
certain rights in the invention.

  (7) In the case of a nonprofit organization, (A) a
prohibition upon the assignment of rights to a subject
invention in the United States without the approval of the
Federal agency, except where such assignment is made to an
organization which has as one of its primary functions the
management of inventions (provided that such assignee shall
be subject to the same provisions as the contractor); (B) a
requirement that the contractor share royalties with the
inventor; (C) except with respect to a funding agreement for
the operation of a Government - owned - contractor -
operated facility, a requirement that the balance of any
royalties or income earned by the contractor with respect to
subject inventions, after payment of expenses (including
payments to inventors) incidental to the administration of
subject  inventions,  be  utilized  for  the  support  of
scientific research, or education; (D) a requirement that,
except  where  it  proves  infeasible  after  a  reasonable
inquiry, in the licensing of subject inventions shall be
given to small business firms; and (E) with respect to a
funding agreement for the operation of a Government - owned
- contractor - operator facility, r equirements (i) that
after payment of patenting costs, licensing costs, payments
to  inventors,  and  other  expenses  incidental  to  the
administration of subject inventions, 100 percent of the
balance of any royalties or income earned and retained by
the contractor during any fiscal year, up to an amount equal
to five percent of the annual budget of the facility, shall
be  used  by  the  contractor  for  scientific  research,
development, and education consistent with the research and
development  mission  and  objectives  of  the  facility,
including activities that increase the licensing potential
of other inventions of the facility provided that if said
balance exceeds five percent of the annual budget of the
facility, that 75 percent of such excess shall be paid to
the Treasury of the United States and the remaining 25
percent shall be used for the same purposes as described
above in this clause (D); and (ii) that, to the extent it
provides  the  most  effective  technology  transfer,  the

licensing of subject inventions shall be administered by
contractor employees on location at the facility.

  (8) The requirements of sections 203 and 204 of this
chapter.

  (d) If a contractor does not elect to retain title to a
subject invention in cases subject to this section, the
Federal agency may consider and after consultation with the
contractor grant requests for retention of rights by the
inventor  subject  to  the  provisions  of  this  Act  and
regulations promulgated hereunder.

  (e) In any case when a Federal employee is a co -
inventor of any invention made under a funding agreement
with a nonprofit organization or small business firm, the
Federal agency employing such co - inventor is authorized to
transfer or assign whatever rights it may acquire in the
subject  invention  from  its  employee  to  the  contractor
subject to the conditions set forth in this chapter.

  (f)(1) No funding agreement with a small business firm or
nonprofit organization shall contain a provision allowing a
Federal agency to require the licensing to third parties of
inventions owned by the contractor that are not subject
inventions unless such provision has been approved by the
head of the agency and a written justification has been
signed by the head of the agency. Any such provision shall
clearly state whether the licensing may be required in
connection with the practice of a subject invention, a
specifically identified work object, or both. The head of
the  agency  may  not  delegate  the  authority  to  approve
provisions  or  sign  justifications  required  by  this
paragraph.

  (2) A Federal agency shall not require the licensing of
third parties under any such provision unless the head of
the agency determines that the use of the invention by
others is necessary for the practice of a subject invention
or for the use of a work object of the funding agreement and
that such action is necessary to achieve the practical
application of the subject invention or work object. Any
such  determination  shall  be  on  the  record  after  an
opportunity for an agency hearing. Any action commenced for
judicial review of such determination shall be brought
within sixty days after notification of such determination.

  (Subsection (a) amended Nov. 8, 1984, Public Law 98 -
602, sec. 501(3), 98 Stat. 3364.)

  (Subsection (b)(2) amended Nov. 8, 1984, Public Law 98 -
620, sec. 501(4), 98 Stat. 3365.)

  (Subsection (b)(4) added Nov. 8, 1984, Public Law 98 -
620, sec. 501(4A), 98 Stat. 3365.)

  (Subsection (c)(4) amended Nov. 8, 1984, Public Law 98 -
620, sec. 501(5), 98 Stat. 3365.)

  (Subsection (c)(5) amended Nov. 8, 1984, Public Law 98 -
620, sec. 501(6), 98 Stat. 3365.)

  (Subsection (c)(7) amended Nov. 8, 1984, Public Law 98 -
620, sec. 501(7), (8), 98 Stat. 3366.)

  (Subsection (f)(2) added Dec. 12, 1980, Public Law 96 -
517, sec. 6(a), 94 Stat. 3020.)

  (Subsection (b)(3) amended Dec. 10, 1991, Public Law 102
- 204, sec. 10, 105 Stat. 1641.)

 35 U.S.C. 203  March - in rights.

  (1) With respect to any subject invention in which a
small business firm or nonprofit organization has acquired
title under this chapter, the Federal agency under whose
funding agreement the subject invention was made shall have
the  right,  in  accordance  with  such  procedures  as  are
provided in regulations promulgated hereunder, to require
the contractor, an assignee, or exclusive licensee of a
subject  invention  to  grant  a  nonexclusive,  partially
exclusive, or exclusive license in any field of use to a
responsible applicant or applicants, upon terms that are
reasonable under the circumstances, and if the contractor,
assignee, or exclusive licensee refuses such request, to
grant  such  a  license  itself,  if  the  Federal  agency
determines that such -

  (a)  action  is  necessary  because  the  contractor  or
assignee has not taken, or is not expected to take within a
reasonable  time,  effective  steps  to  achieve  practical
application of the subject invention in such field of use;

  (b) action is necessary to alleviate health or safety
needs which are not reasonably satisfied by the contractor,
assignee, or their licensees;

  (c) action is necessary to meet requirements for public
use specified by Federal regulations and such requirements
are not reasonably satisfied by the contractor, assignee, or
licensees; or

  (d) action is necessary because the agreement required by
section 204 has not been obtained or waived or because a
licensee of the exclusive right to use or sell any subject
invention in the United States is in breach of its agreement
obtained pursuant to section 204.

  (2) A determination pursuant to this section or section
202(b)(4) shall not be subject to the Contract Disputes Act
(41  U.S.C.  §  601  et  seq.).  An  administrative  appeals
procedure shall be established by regulations promulgated in
accordance with section 206. Additionally, any contractor,
inventor, assignee, or exclusive licensee adversely affected
by a determination under this section may, at any time
within sixty days after the determination is issued, file a
petition in the United States Claims Court, which shall have
jurisdiction to determine the appeal on the record and to
affirm, reverse, remand or modify, as appropriate, the
determination of the Federal agency. In cases described in
paragraphs (a) and (c), the agency's determination shall

 be held in abeyance pending the exhaustion of appeals or
petitions filed under the preceding sentence.

  (Added Dec. 12, 1980, Public Law 96 - 517, sec. 6(a), 94
Stat. 3022; amended Nov. 8, 1984, Public Law 98 - 620, sec.
501(9), 98 Stat. 3367.)

 35 U.S.C. 204  Preference for United States industry.

  Notwithstanding any other provision of this chapter, no
small business firm or nonprofit organization which receives
title to any subject invention and no assignee of any such
small business firm or nonprofit organization shall grant to
any person the exclusive right to use or sell any subject
invention in the United States unless such person agrees
that  any  products  embodying  the  subject  invention  or
produced through the use of the subject invention will be
manufactured substantially in the United States. However, in
individual cases, the requirement for such an agreement may
be  waived  by  the  Federal  agency  under  whose  funding
agreement the invention was made upon a showing by the small
business firm, nonprofit organization, or assignee that
reasonable but unsuccessful efforts have been made to grant
licenses on similar terms to potential licensees that would
be likely to manufacture substantially in the United States
or that under the circumstances domestic manufacture is not
commercially feasible.

  (Added Dec. 12, 1980, Public Law 96 - 517, sec. 6(a), 94
Stat. 3023.)

 35 U.S.C. 205  Confidentiality.

  Federal  agencies  are  authorized  to  withhold  from
disclosure  to  the  public  information  disclosing  any
invention in which the Federal Government owns or may own a
right, title, or interest (including a nonexclusive license)
for a reasonable time in order for a patent application to
be  filed.  Furthermore,  Federal  agencies  shall  not  be
required to release copies of any document which is part of
an application for patent filed with the United States
Patent and Trademark Office or with any foreign patent
office.

  (Added Dec. 12, 1980, Public Law 96 - 517, sec. 6(a), 94
Stat. 3023.)

 35 U.S.C. 206  Uniform clauses and regulations.

  The Secretary of Commerce may issue regulations which
may be made applicable to Federal agencies implementing the
provisions of sections 202 through 204 of this chapter and
shall  establish  standard  funding  agreement  provisions
required  under  this  chapter.  The  regulations  and  the
standard  funding  agreement  shall  be  subject  to  public
comment before their issuance.

  (Amended Nov. 8, 1984, Public Law 98 - 620, sec. 501(10),
98 Stat. 3367.)

 35 U.S.C. 207  Domestic and foreign protection of
federally owned inventions.

  (a) Each Federal agency is authorized to -

  (1) apply for, obtain, and maintain patents or other
forms of protection in the United States and in foreign
countries on inventions in which the Federal Government owns
a right, title, or interest;

  (2) grant nonexclusive, exclusive, or partially exclusive
licenses under federally owned patent applications, patents,
or other forms of protection obtained, royalty - free or for

royalties or other consideration, and on such terms and
conditions, including the grant to the licensee of the right
of enforcement pursuant to the provisions of chapter 29 of
this title as determined appropriate in the public interest;

  (3) undertake all other suitable and necessary steps to
protect and administer rights to federally owned inventions
on behalf of the Federal Government either directly or
through contract; and

  (4) transfer custody and administration, in whole or in
part, to another Federal agency, of the right, title, or
interest in any federally owned invention.

  (b) For the purpose of assuring the effective management
of Government - owned inventions, the Secretary of Commerce
authorized to - -

  (1)  assist  Federal  agency  efforts  to  promote  the
licensing and utilization of Government - owned inventions;

  (2) assist Federal agencies in seeking protection and
maintaining inventions in foreign countries, including the
payment of fees and costs connected therewith; and

  (3) consult with and advise Federal agencies as to areas
of science and technology research and development with
potential for commercial utilization.

  (Added Dec. 12, 1980, Public Law 96 - 517, sec. 6(a), 94
Stat. 3023, Amended Nov. 8, 1984, Public Law 98 - 620, sec.
501(11) 98 Stat. 3367.)

 35 U.S.C. 208  Regulations governing Federal licensing.

  The Secretary of Commerce is authorized to promulgate
regulations specifying the terms and conditions upon which
any federally owned invention, other than inventions owned
by the Tennessee Valley Authority, may be licensed on a
nonexclusive, partially exclusive, or exclusive basis.

  (Added Dec. 12, 1980, Public Law 96 - 517, sec. 6(a), 94
Stat. 3024; Amended Nov. 8, 1984, Public Law 98 - 620, sec.
501(12), 98 Stat. 3367.)

 35 U.S.C. 209  Restrictions on licensing of federally
owned inventions.

  (a) No Federal agency shall grant any license under a
patent or patent application on a federally owned invention
unless the person requesting the license has supplied the
agency with a plan for development and/or marketing of the
invention, except that any such plan may be treated by the
Federal  agency  as  commercial  and  financial  information
obtained from a person and privileged and confidential and
not subject to disclosure under section 552 of title 5 of
the United States Code.

  (b) A Federal agency shall normally grant the right to
use or sell any federally owned invention in the United
States only to a licensee that agrees that any products
embodying the invention or produced through the use of the
invention will be manufactured substantially in the United
States.

  (c)(1)  Each  Federal  agency  may  grant  exclusive  or
partially exclusive licenses in any invention covered by a
federally owned domestic patent or patent application only
if, after public notice and opportunity for filing written
objections, it is determined that -

  (2) A Federal agency shall not grant such exclusive or
partially exclusive license under paragraph (1) of this
subsection if it determines that the grant of such license
will tend substantially to lessen competition or result in
undue concentration in any section of the country in any
line of commerce to which the technology to be licensed
relates,  or  to  create  or  maintain  other  situations
inconsistent with the antitrust laws.

  (3)  First  preference  in  the  exclusive  or  partially
exclusive licensing of federally owned inventions shall go
to small business firms submitting plans that are determined
by the agency to be within the capabilities of the firms and
equally likely, if executed, to bring the invention to
practical application as any plans submitted by applicants
that are not small business firms.

  (d) After consideration of whether the interests of the
Federal Government or United States industry in foreign
commerce will be enhanced, any Federal agency may grant
exclusive or partially exclusive licenses in any invention
covered by a foreign patent application or patent, after
public notice and opportunity for filing written objections,
except that a Federal agency shall not grant such exclusive
or partially exclusive license if it determines that the
grant of such license will tend substantially to lessen
competition or result in undue concentration in any section
of the United States in any line of commerce to which the
technology to be licensed relates, or to create or maintain
other situations inconsistent with antitrust laws.

  (e)  The  Federal  agency  shall  maintain  a  record  of
determinations to grant exclusive or partially exclusive
licenses .

  (f) Any grant of a license shall contain such terms and
conditions as the Federal agency determines appropriate for
the protection of the interests of the Federal Government
and the public, including provisions for the following:

  (1) periodic reporting on the utilization or efforts at
obtaining utilization that are being made by the licensee
with particular reference to the plan submitted: Provided,
That any such information may be treated by the Federal
agency as commercial and financial information obtained from
a person and privileged and confidential and not subject to
disclosure under section 552 of title 5 of the United States
Code;

  (2) the right of the Federal agency to terminate such
license in whole or in part if it determines that the
licensee is not executing the plan submitted with its
request for a license and the licensee cannot otherwise
demonstrate to the satisfaction of the Federal agency that
it has taken or can be expected to take within a reasonable

time, effective steps to achieve practical application of
the invention;

  (3) the right of the Federal agency to terminate such
license in whole or in part if the licensee is in breach of
an agreement obtained pursuant to paragraph (b) of this
section; and

  (4) the right of the Federal agency to terminate the
license in whole or in part if the agency determines that
such action is necessary to meet requirements for public use
specified by Federal regulations issued after the date of
the  license  and  such  requirements  are  not  reasonably
satisfied by the licensee.

  (Added Dec. 12, 1980, Public Law 96 - 517, sec. 6(a), 94
Stat. 3024.)

 35 U.S.C. 210  Precedence of chapter.

  (a) This chapter shall take precedence over any other Act
which would require a disposition of rights in subject
inventions  of  small  business  firms  or  nonprofit
organizations contractors in a manner that is inconsistent
with this chapter, including but not necessarily limited to
the following:

  (1) section 10(a) of the Act of June 29, 1935, as added
by title 1 of the Act of August 14, 1946 (7 U.S.C. 427i(a);
60 Stat. 1085);

  (2) section 205(a) of the Act of August 14, 1946 (7
U.S.C. 1624(a); 60 Stat. 1090);

  (3) section 501(c) of the Federal Mine Safety and Health
Act of 1977 (30 U.S.C. 951(c); 83 Stat. 742);

  (4) section 106(c) of the National Traffic and Motor
Vehicle Safety Act of 1966 (15 U.S.C. 1395(c); 80 Stat.
721);

  (5) section 12 of the National Science Foundation Act of
1950 (42 U.S.C. 1871(a); 82 Stat. 360);

  (6) section 152 of the Atomic Energy Act of 1954 (42
U.S.C. 2182; 68 Stat. 943);

  (7) section 305 of the National Aeronautics and Space Act
of 1958 (42 U.S.C. 2457);

  (8) section 6 of the Coal Research Development Act of
1960 (30 U.S.C. 666; 74 Stat. 337);

  (9) section 4 of the Helium Act Amendments of 1960 (50
U.S.C. 167b; 74 Stat. 920);

  (10) section 32 of the Arms Control and Disarmament Act
of 1961 (22 U.S.C. 2572; 75 Stat. 634);

  (11) subsection (e) of section 302 of the Appalachian
Regional Development Act of 1965 (40 U.S.C. App. 302(e); 79
Stat. 5);

  (12) section 9 of the Federal Nonnuclear Energy Research
and Development Act of 1974 (42 U.S.C. 5901; 88 Stat. 1878);

  (13) section 5(d) of the Consumer Product Safety Act (15
U.S.C. 2054(d); 86 Stat. 1211);

  (14) section 3 of the Act of April 5, 1944 (30 U.S.C.
323; 58 Stat. 191);

  (15) section 8001(c)(3) of the Solid Waste Disposal Act
(42 U.S.C. 6981(c); 90 Stat. 2829);

  (16) section 219 of the Foreign Assistance Act of 1961
(22 U.S.C. 2179; 83 Stat. 806);

  (17) section 427(b) of the Federal Mine Health and Safety
Act of 1977 (30 U.S.C. 937(b); 86 Stat. 155);

  (18) section 306(d) of the Surface Mining and Reclamation
Act of 1977 (30 U.S.C. 1226(d); 91 Stat. 455);

  (19) section 21(d) of the Federal Fire Prevention and
Control Act of 1974 (15 U.S.C. 2218(d); 88 Stat. 1548);

  (20)  section  6(b)  of  the  Solar  Photovoltaic  Energy
Research Development and Demonstration Act of 1978 (42
U.S.C. 5585(b); 92 Stat. 2516);

  (21) section 12 of the Native Latex Commer cialization
and Economic Development Act of 1978 (7 U.S.C. 178(j); 92
Stat. 2533); and

  (22) section 408 of the Water Resources and Development
Act of 1978 (42 U.S.C. 7879; 92 Stat. 1360).

  The Act creating this chapter shall be construed to take
precedence over any future Act unless that Act specifically
cites this Act and provides that it shall take precedence
over this Act.

  (b) Nothing in this chapter is intended to alter the
effect of the laws cited in paragraph (a) of this section or
any other laws with respect to the disposition of rights in
inventions made in the performance of funding agreements
with persons other than nonprofit organizations or small
business firms.

  (c) Nothing in this chapter is intended to limit the
authority of agencies to agree to the disposition of rights
in inventions made in the performance of work under funding
agreements with persons other than nonprofit organizations
or small business firms in accordance with the Statement of
Government Patent Policy issued on February 18, 1983, agency
regulations, or other applicable regulations or to otherwise
limit the authority of agencies to allow such persons to
retain ownership of inventions, except that all funding
agreements, including those with other than small business
firms  and  nonprofit  organizations,  shall  include  the
requirements established in paragraph 202(c)(4) and section
203 of this title. Any disposition of rights in inventions
made  in  accordance  with  the  Statement  or  implementing
regulations,  including  any  disposition  occurring  before
enactment of this section, are hereby authorized.

  (d) Nothing in this chapter shall be construed to require
the disclosure of intelligence sources or methods or to
otherwise affect the authority granted to the Director of

Central Intelligence by statute or Executive order for the
protection of intelligence sources or methods.

  (Subsection (c) amended Nov. 8, 1984, Public Law 98 -
620, sec. 501(13), 98 Stat. 3367.)

  (Subsection (d) added Dec. 12, 1980, Public Law 96 - 517,
sec. 6(a), 94 Stat. 3026.)

 35 U.S.C. 211  Relationship to antitrust laws.

  Nothing in this chapter shall be deemed to convey to any
person immunity from civil or criminal liability, or to
create any defenses to actions, under any antitrust law.

  (Added Dec.12, 1980, Public Law 96 - 517, sec. 6(a), 94
Stat. 3027.)

 35 U.S.C. 212  Disposition of rights in educational
awards.

  No scholarship, fellowship, training grant, or other
funding agreement made by a Federal agency primarily to an
awardee for educational purposes will contain any provision
giving the Federal agency any rights to inventions made by
the awardee.

  (Added Nov. 8, 1984, Public Law 98 - 620, sec. 501(14),
98 Stat. 3368.)

  PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

  CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS

 Sec.

 251  Reissue of defective patents.

 252  Effect of reissue.

 253  Disclaimer.

 254  Certificate of correction of Patent and Trademark
Office mistake.

 255  Certificate of correction of applicant's mistake.

 256  Correction of named inventor.

 35 U.S.C. 251  Reissue of defective patents.

  Whenever any patent is, through error without any
deceptive intention, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or drawing,
or by reason of the patentee claiming more or less then he
had a right to claim in the patent, the Commissioner shall,
on the surrender of such patent and the payment of the fee
required by law, reissue the patent for the invention
disclosed in the original patent, and in accordance with a
new and amended application, for the unexpired part of the
term  of  the  original  patent.  No  new  matter  shall  be
introduced into the application for reissue.

  The Commissioner may issue several reissued patents for
distinct and separate parts of the thing patented, upon

demand of the applicant, and upon payment of the required
fee for a reissue for each of such reissued patents.

  The provisions of this title relating to applications
for patent shall be applicable to applications for reissue
of a patent, except that application for reissue may be made
and sworn to by the assignee of the entire interest if the
application does not seek to enlarge the scope of the claims
of the original patent.

  No reissued patent shall be granted enlarging the scope
of the claims of the original patent unless applied for
within two years from the grant of the original patent.

 35 U.S.C. 252  Effect of reissue.

  The surrender of the original patent shall take effect
upon the issue of the reissued patent, and every reissued
patent shall have the same effect and operation in law, on
the trial of actions for causes thereafter arising, as if
the same had been originally granted in such amended form,
but in so far as the claims of the original and reissued
patents are identical, such surrender shall not affect any
action then pending nor abate any cause of action then
existing, and the reissued patent, to the extent that its
claims  are  identical  with  the  original  patent,  shall
constitute  a  continuation  thereof  and  have  effect
continuously from the date of the original patent.

  A reissued patent shall not abridge or affect the right
of any person or that person`s successors in business who,
prior to the grant of a reissue, made, purchased, offered to
sell, or used within the United States, or imported into the
United States, anything patented by the reissued patent, to
continue the use of, to offer to sell, or to sell to others
to be used, offered for sale, or sold, the specific thing so
made, purchased, offered for sale, used, or imported unless
the making, using, offering for sale, or selling of such
thing infringes a valid claim of the reissued patent which
was in the original patent. The court before which such
matter  is  in  question  may  provide  for  the  continued
manufacture, use, offer for sale, or sale of the thing made,
purchased, offered for sale, used, or imported as specified,
or for the manufacture, use, offer for sale, or sale in the
United States of which substantial preparation was made
before the grant of the reissue, and the court may also
provide for the continued practice of any process patented
by the reissue that is practiced, or for the practice of
which substantial preparation was made, before the grant of
the reissue, to the extent and under such terms as the court
deems equitable for the protection of investments made or
business commenced before the grant of the reissue.

  (Amended Dec. 8, 1994, Public Law 103 - 465, sec. 533,
108 Stat. 4809, effective Jan. 1, 1996.)

 35 U.S.C. 253  Disclaimer.

  Whenever, without any deceptive intention, a claim of a
patent is invalid the remaining claims shall not thereby be
rendered invalid. A patentee, whether of the whole or any
sectional interest therein, may, on payment of the fee
required by law, make disclaimer of any complete claim,
stating therein the extent of his interest in such patent.
Such disclaimer shall be in writing and recorded in the

Patent and Trademark Office, and it shall thereafter be
considered as part of the original patent to the extent of
the interest possessed by the disclaimant and by those
claiming under him.

  In like manner any patentee or applicant may disclaim or
dedicate to the public the entire term, or any terminal part
of the term, of the patent granted or to be granted.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 254  Certificate of correction of Patent and
Trademark Office mistake.

  Whenever a mistake in a patent, incurred through the
fault  of  the  Patent  and  Trademark  Office,  is  clearly
disclosed by the records of the Office, the Commissioner may
issue a certificate of correction stating the fact and
nature of such mistake, under seal, without charge, to be
recorded in the records of patents. A printed copy thereof
shall be attached to each printed copy of the patent, and
such certificate shall be considered as part of the original
patent. Every such patent, together with such certificate,
shall have the same effect and operation in law on the trial
of actions for causes thereafter arising as if the same had
been  originally  issued  in  such  corrected  form.  The
Commissioner may issue a corrected patent without charge in
lieu of and with like effect as a certificate of correction.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 255  Certificate of correction of applicant's
mistake.

  Whenever a mistake of a clerical or typographical
nature, or of minor character, which was not the fault of
the Patent and Trademark Office, appears in a patent and a
showing has been made that such mistake occurred in good
faith, the Commissioner may, upon payment of the required
fee, issue a certificate of correction, if the correction
does not involve such changes in the patent as would
constitute new matter or would require reexamination. Such
patent, together with the certificate, shall have the same
effect and operation in law on the trial of actions for
causes thereafter arising as if the same had been originally
issued in such corrected form.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 256  Correction of named inventor.

  Whenever through error a person is named in an issued
patent as the inventor, or through error an inventor is not
named in an issued patent and such error arose without any
deceptive intention on his part, the Commissioner may, on
application of all the parties and assignees, with proof of
the facts and such other requirements as may be imposed,
issue a certificate correcting such error.

  The error of omitting inventors or naming persons who
are not inventors shall not invalidate the patent in which
such error occurred if it can be corrected as provided in

this section. The court before which such matter is called
in question may order correction of the patent on notice and
hearing of all parties concerned and the Commissioner shall
issue a certificate accordingly.

  (Amended Aug. 27, 1982, Public Law 97 - 247, sec. 6(b),
96 Stat. 320.)

  CHAPTER 26 - OWNERSHIP AND ASSIGNMENT

 Sec.

 261  Ownership; assignment.

 262  Joint owners.

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

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

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

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

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

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949; Aug. 27, 1982, Public Law 97 - 247, sec. 14(b),
96 Stat. 321.)

 35 U.S.C. 262  Joint owners.

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

  (Amended Dec. 8, 1994, Public Law 103 - 465 sec. 533, 108
Stat. 4809, effective Jan. 1, 1996.)

  CHAPTER 27 - GOVERNMENT INTERESTS IN PATENTS

 Sec.

 266  [Repealed.]

 267  Time for taking action in Government applications.

 35 U.S.C. 266  [Repealed.]

  (Repealed July 24, 1965, Public Law 89 - 83, sec. 8, 79
Stat. 261.)

 35 U.S.C. 267  Time for taking action in Government
applications.

  Notwithstanding the provisions of sections 133 and 151
of this title, the Commissioner may extend the time for
taking any action to three years, when an application has
become the property of the United States and the head of the
appropriate department or agency of the Government has
certified to the Commissioner that the invention disclosed
therein is important to the armament or defense of the
United States.

  CHAPTER 28 - INFRINGEMENT OF PATENTS

 Sec.

 271  Infringement of patent.

 272  Temporary presence in the United States.

 35 U.S.C. 271  Infringement of patent.

  (a) Except as otherwise provided in this title, whoever
without authority makes, uses, offers to sell, or sells any
patented invention, within the United States, or imports
into the United States any patented invention during the
term of the patent therefor, infringes the patent.

  (b) Whoever actively induces infringement of a patent
shall be liable as an infringer.

  (c) Whoever offers to sell or sells within the United
States or imports into the United States a component of a
patented machine, manufacture, combination, or composition,
or a material or apparatus for use in practicing a patented
process, constituting a material part of the invention,
knowing the same to be especially made or especially adapted
for use in an infringement of such patent, and not a staple
article or commodity of commerce suitable for substantial
noninfringing  use,  shall  be  liable  as  a  contributory
infringer.

  (d) No patent owner otherwise entitled to relief for
infringement or contributory infringement of a patent shall
be denied relief or deemed guilty of misuse or illegal
extension of the patent right by reason of his having done
one or more of the following: (1) derived revenue from acts
which if performed by another without his consent would
constitute contributory infringement of the patent; (2)
licensed or authorized another to perform acts which if
performed without his consent would constitute contributory
infringement of the patent; (3) sought to enforce his patent

rights against infringement or contributory infringement;
(4) refused to license or use any rights to the patent; or
(5) conditioned the license of any rights to the patent or
the sale of the patented product on the acquisition of a
license to rights in another patent or purchase of a
separate product, unless, in view of the circumstances, the
patent owner has market power in the relevant market for the
patent or patented product on which the license or sale is
conditioned.

  (e)(1) It shall not be an act of infringement to make,
use, offer to sell, or sell within the United States or
import into the United States a patented invention (other
than a new animal drug or veterinary biological product (as
those terms are used in the Federal Food, Drug, and Cosmetic
Act and the Act of March 4, 1913) which is primarily
manufactured  using  recombinant  DNA,  recombinant  RNA,
hybridoma technology, or other processes involving site
specific genetic manipulation techniques) solely for uses
reasonably related to the development and submission of
information  under  a  Federal  law  which  regulates  the
manufacture, use, or sale of drugs or veterinary biological
products.

  (2) It shall be an act of infringement to submit - -

  (3) In any action for patent infringement brought under
this section, no injunctive or other relief may be granted
which would prohibit the making, using, offering to sell, or
selling within the United States or importing into the
United States of a patented invention under paragraph (1).

  (4) For an act of infringement described in para graph
(2)-

  The remedies prescribed by subparagraphs (A), (B), and
(C) are the only remedies which may be granted by a court
for an act of infringement described in paragraph (2),
except that a court may award attorney fees under section
285.

  (f)(1) Whoever without authority supplies or causes to be
supplied in or from the United States all or a substantial
portion of the components of a patented invention, where
such components are uncombined in whole or in part, in such
manner  as  to  actively  induce  the  combination  of  such
components outside of the United States in a manner that
would infringe the patent if such combination occurred
within the United States, shall be liable as an infringer.

  (2) Whoever without authority supplies or causes to be
supplied in or from the United States any component of a
patented invention that is especially made or especially
adapted for use in the invention and not a staple article or
commodity of commerce suitable for substantial noninfringing
use, where such component is uncombined in whole or in part,
knowing that such component is so made or adapted and
intending that such component will be combined outside of
the United States in a manner that would infringe the patent
if such combination occurred within the United States, shall

be liable as an infringer.

  (g) Whoever without authority imports into the United
States or offers to sell, sells, or uses within the United
States a product which is made by a process patented in the
United States shall be liable as an infringer, if the
importation, offer to sell, sale, or use of the product
occurs during the term of such process patent. In an action
for infringement of a process patent, no remedy may be
granted for infringement on account of the noncommercial use
or retail sale of a product unless there is no adequate
remedy under this title for infringement on account of the
importation or other use, offer to sell, or sale of that
product. A product which is made by a patented process will,
for purposes of this title, not be considered to be so made
after -

  (1) it is materially changed by subsequent processes; or

  (2) it becomes a trivial and nonessential component of
another product.

  (h) As used in this section, the term "whoever" includes
any State, any instrumentality of a State, any officer or
employee of a State or instrumentality of a State acting in
his  official  capacity.  Any  State,  and  any  such
instrumentality, officer, or employee, shall be subject to
the provisions of this title in the same manner and to the
same extent as any nongovernmental entity.

  (i) As used in this section, an "offer for sale" or an
"offer to sell" by a person other than the patentee or any
assignee of the patentee, is that in which the sale will
occur before the expiration of the term of the patent.

  (Subsection (d) amended Nov. 19, 1988, Public Law 100 -
703, Title II, sec. 201, 102 Stat. 4676.)

  (Subsection (e) added Sept. 24, 1984, Public Law 98 -
417, sec. 202, 98 Stat. 1603.)

  (Subsection (f) added Nov. 8, 1984, Public Law 98 - 622,
sec. 101, 98 Stat. 3383.)

  (Subsection (g) added Aug. 23, 1988, Public Law 100 -
418, sec. 9003, effective Feb. 23, 1989.)

  (Amended Nov. 16, 1988, Public Law 100 - 670, sec.
201(i), 102 Stat. 3971)

  (Subsection (d) amended Nov. 19, 1988, Public Law 100 -
703, Title II, sec. 201 102 Stat. 4676)

  (Subsection (h) added Oct. 28, 1992, Public Law 102 -
560, sec. 2, 106 Stat. 4230)

  (Subsections (a), (c), (e), and (g) amended Dec. 8, 1994,
Public Law 103 - 465, sec. 533, 108 Stat. 4809, effective
Jan. 1 1996.)

  (Subsection (i) added Dec. 8, 1994, Public Law 103 - 465,
sec. 533 , 108 Stat. 4809, effective Jan. 1, 1996.)

 35 U.S.C. 272  Temporary presence in the United States.

  The use of any invention in any vessel, aircraft or
vehicle of any country which affords similar privileges to
vessels,  aircraft,  or  vehicles  of  the  United  States,
entering the United States temporarily or accidentally,
shall not constitute infringement of any patent, if the
invention is used exclusively for the needs of the vessel,
aircraft, or vehicle and is not offered for sale or sold in
or used for the manufacture of anything to be sold in or
exported from the United States.

  (Amended Dec. 8, 1994, Public Law 103 - 465, sec. 533,
108 Stat. 4809, effective Jan. 1, 1996.)

 CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER
  ACTIONS

 Sec.

 281  Remedy for infringement of patent.

 282  Presumption of validity; defenses.

 283  Injunction.

 284  Damages.

 285  Attorney fees.

 286  Time limitation on damages.

 287  Limitation on damages and other remedies; marking
and notice.

 288  Action for infringement of a patent containing an
invalid claim.

 289  Additional  remedy  for  infringement  of  design
patent.

 290  Notice of patent suits.

 291  Interfering patents.

 292  False marking.

 293  Nonresident patentee; service and notice.

 294  Voluntary arbitration.

 295  Presumption: Product made by patented process

 296  Liability of States, instrumentalities of States,
and State - officials for infringement of patents

 35 U.S.C. 281  Remedy for infringement of patent.

  A patentee shall have remedy by civil action for
infringement of his patent.

 35 U.S.C. 282  Presumption of validity; defenses.

  A patent shall be presumed valid. Each claim of a patent
(whether in independent, dependent, or multiple dependent
form) shall be presumed valid independently of the validity
of other claims; dependent or multiple dependent claims

shall be presumed valid even though dependent upon an
invalid claim. Notwithstanding the preceding sentence, if a
claim to a composition of matter is held invalid and that
claim was the basis of a determination of nonobviousness
under section 103(b)(1), the process shall no longer be
considered  nonobvious  solely  on  the  basis  of  section
103(b)(1). The burden of establishing invalidity of a patent
or any claim thereof shall rest on the party asserting such
invalidity.

  The following shall be defenses in any action involving
the validity or infringement of a patent and shall be
pleaded:

  (1)  Noninfringement,  absence  of  liability  for
infringement, or unenforceability,

  (2) Invalidity of the patent or any claim in suit on any
ground specified in part II of this title as a condition for
patentability,

  (3) Invalidity of the patent or any claim in suit for
failure to comply with any requirement of sections 112 or
251 of this title,

  (4) Any other fact or act made a defense by this title.

  In actions involving the validity or infringement of a
patent the party asserting invalidity or noninfringement
shall give notice in the pleadings or otherwise in writing
to the adverse party at least thirty days before the trial,
of the country, number, date, and name of the patentee of
any patent, the title, date, and page numbers of any
publication to be relied upon as anticipation of the patent
in suit or, except in actions in the United States Claims
Court, as showing the state of the art, and the name and
address of any person who may be relied upon as the prior
inventor or as having prior knowledge of or as having
previously used or offered for sale the invention of the
patent in suit. In the absence of such notice proof of the
said matters may not be made at the trial except on such
terms as the court requires.

  Invalidity of the extension of a patent term or any
portion thereof under section 156 of this title because of
the material failure-

  (1) by the applicant for the extension, or

  (2) by the Commissioner,

 to comply with the requirements of such section shall be a
defense in any action involving the infringement of a patent
during the period of the extension of its term and shall be
pleaded.  A  due  diligence  determination  under  section
156(d)(2) is not subject to review in such an action.

  (Amended July 24, 1965, Public Law 89 - 83, sec. 10, 79
Stat. 261; Nov. 24, 1975, Public Law 94 - 131, sec. 10, 89
Stat. 692; Sept. 24, 1984, Public Law 98 - 417, sec. 203, 98
Stat. 1603; amended Nov. 1, 1995, Public Law 104 - 41, sec.
2, 109 Stat. 352.)

 35 U.S.C. 283  Injunction.

  The several courts having jurisdiction of cases under
this title may grant injunctions in accordance with the
principles of equity to prevent the violation of any right
secured  by  patent,  on  such  terms  as  the  court  deems
reasonable.

 35 U.S.C. 284  Damages.

  Upon finding for the claimant the court shall award the
claimant damages adequate to compensate for the infringement
but in no event less that a reasonable royalty for the use
made of the invention by the infringer, together with
interest and costs as fixed by the court.

  When the damages are not found by a jury, the court
shall assess them. In either event the court may increase
the damages up to three times the amount found or assessed.

  The court may receive expert testimony as an aid to the
determination  of  damages  or  of  what  royalty  would  be
reasonable under the circumstances.

 35 U.S.C. 285  Attorney fees.

  The court in exceptional cases may award reasonable
attorney fees to the prevailing party.

 35 U.S.C. 286  Time limitation on damages.

  Except as otherwise provided by law, no recovery shall
be had for any infringement committed more than six years
prior to the filing of the complaint or counterclaim for
infringement in the action.

  In  the  case  of  claims  against  the  United  States
Government for use of a patented invention, the period
before bringing suit, up to six years, between the date of
receipt  of  a  written  claim  for  compensation  by  the
department or agency of the Government having authority to
settle such claim, and the date of mailing by the Government
of a notice to the claimant that his claim has been denied
shall not be counted as a part of the period referred to in
the preceding paragraph.

 35 U.S.C. 287  Limitation on damages and other remedies;
marking and notice.

  (a) Patentees, and persons making, offering for sale, or
selling within the United States any patented article for or
under them, or importing any patented article into the
United States, may give notice to the public that the same
is patented, either by fixing thereon the word "patent" or
the abbreviation "pat.", together with the number of the
patent, or when, from the character of the article, this
cannot be done, by fixing to it, or to the package wherein
one or more of them is contained, a label containing a like
notice. In the event of failure so to mark, no damages shall
be recovered by the patentee in any action for infringement,
except on proof that the infringer was notified of the
infringement and continued to infringe thereafter, in which
event  damages  may  be  recovered  only  for  infringement
occurring  after  such  notice.  Filing  of  an  action  for
infringement shall constitute such notice.

  (b)(1) An infringer under section 271(g) shall be subject

to all the provisions of this title relating to damages and
injunctions except to the extent those remedies are modified
by this subsection or section 9006 of the Process Patent
Amendments  Act  of  1988.  The  modifications  of  remedies
provided in this subsection shall not be available to any
person who -

  (2) No remedies for infringement under section 271(g) of
this title shall be available with respect to any product in
the possession of, or in transit to, the person subject to
liability under such section before that person had notice
of infringement with respect to that product. The person
subject to liability shall bear the burden of proving any
such possession or transit.

  (3)(A) In making a determination with respect to the
remedy in an action brought for infringement under section
271(g), the court shall consider-

  (i) the good faith demonstrated by the defendant with
respect to a request for disclosure;

  (ii) the good faith demonstrated by the plaintiff with
respect to a request for disclosure, and

  (iii) the need to restore the exclusive rights secured by
the patent.

  (i) a request for disclosure made by the defendant;

  (ii) a response within a reasonable time by the person
receiving the request for disclosure; and

  (iii) the submission of the response by the defendant to
the manufacturer, or if the manufacturer is not known, to
the  supplier,  of  the  product  to  be  purchased  by  the
defendant, together with a request for a written statement
that the process claimed in any patent disclosed in the
response is not used to produce such product.

  The failure to perform any acts described in the
preceding sentence is evidence of absence of good faith
unless  there  are  mitigating  circumstances.  Mitigating
circumstances include the case in which, due to the nature
of the product, the number of sources for the product, or
like commercial circumstances, a request for disclosure is
not necessary or practicable to avoid infringement.

  (4)(A) For purposes of this subsection, a "request for
disclosure" means a written request made to a person then
engaged in the manufacture of a product to identify all
process patents owned by or licensed to that person, as of
the time of the request, that the person then reasonably
believes could be asserted to be infringed under section
271(g) if that product were imported into, or sold, offered
for sale, or used in, the United States by an unauthorized
person. A request for disclosure is further limited to a
request -

  (i) which is made by a person regularly engaged in the
United States in the sale of the type of products as those

manufactured by the person to whom the request is directed,
or which includes facts showing that the person making the
request plans to engage in the sale of such products in the
United States;

  (ii) which is made by such person before the person's
first importation, use, offer for sale, or sale of units of
the product produced by an infringing process and before the
person had notice of infringement with respect to the
product; and

  (iii) which includes a representation by the person
making the request that such person will promptly submit the
patents  identified  pursuant  to  the  request  to  the
manufacturer, or if the manufacturer is not known, to the
supplier, of the product to be purchased by the person
making the request, and will request from that manufacturer
or supplier a written statement that none of the processes
claimed in those patents is used in the manufacture of the
product.

  (5)(A)  For  purposes  of  this  subsection,  notice  of
infringement means actual knowledge, or receipt by a person
of a written notification, or a combination thereof, of
information sufficient to persuade a reasonable person that
it is likely that a product was made by a process patented
in the United States.

  (i)  promptly  transmits  the  written  notification  or
response to the manufacturer or, if the manufacturer is not
known, to the supplier, of the product purchased or to be
purchased by that person; and

  (ii) receives a written statement from the manufacturer
or supplier which on its face sets forth a well grounded
factual basis for a belief that the identified patents are
not infringed.

  (6) A person who receives a response to a request for
disclosure under this subsection shall pay to the person to
whom the request was made a reasonable fee to cover actual
costs incurred in complying with the request, which may not
exceed the cost of a commercially available automated patent
search of the matter involved, but in no case more than
$500.

  (c)(1)  With  respect  to  a  medical  practitioner's
performance  of  a  medical  activity  that  constitutes  an
infringement under section 271(a) or (b) of this title, the
provisions of sections 281, 283, 284, and 285 of this title
shall not apply against the medical practitioner or against
a related health care entity with respect to such medical
activity.

  (2) For the purposes of this subsection:

  (3) This subsection does not apply to the activities of
any person, or employee or agent of such person (regardless
of whether such person is a tax exempt organization under
section 501(c) of the Internal Revenue Code), who is engaged
in  the  commercial  development,  manufacture,  sale,
importation, or distribution of a machine, manufacture, or
composition of matter or the provision of pharmacy or
clinical laboratory services (other than clinical laboratory
services provided in a physician's office), where such
activities are:

  (4) This subsection shall not apply to any patent issued
before the date of enactment of the subsection.

  (Amended August 23, 1988, Public Law 100 - 418, effective
date Feb. 23, 1989; amended Dec. 8, 1994, Public Law 103 -
465, sec. 533, 108 Stat. 4809, effective Jan. 1, 1996;
subsection (c) added Sept. 30, 1996, Public Law 104 - 208,
sec. 616, 110 Stat. 3009.)

 35 U.S.C. 288  Action for infringement of a patent
containing an invalid claim.

  Whenever, without deceptive intention, a claim of a
patent is invalid, an action may be maintained for the
infringement of a claim of the patent which may be valid.
The patentee shall recover no costs unless a disclaimer of
the invalid claim has been entered at the Patent and
Trademark Office before the commencement of the suit.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 289  Additional remedy for infringement of
design patent.

  Whoever during the term of a patent for a design,
without license of the owner, (1) applies the patented
design, or any colorable imitation thereof, to any article
of manufacture for the purpose of sale, or (2) sells or
exposes for sale any article of manufacture to which such
design or colorable imitation has been applied shall be
liable to the owner to the extent of his total profit, but
not  less  than  $250,  recoverable  in  any  United  States
district court having jurisdiction of the parties.

  Nothing in this section shall prevent, lessen, or
impeach any other remedy which an owner of an infringed
patent has under the provisions of this title, but he shall
not twice recover the profit made from the infringement.

 35 U.S.C. 290  Notice of patent suits.

  The clerks of the courts of the United States, within
one month after the filing of an action under this title,
shall give notice thereof in writing to the Commissioner,
setting forth so far as known the names and addresses of the
parties, name of the inventor, and the designating number of
the patent upon which the action has been brought. If any
other patent is subsequently included in the action he shall

give  like  notice  thereof.  Within  one  month  after  the
decision is rendered or a judgment issued the clerk of the
court shall give notice thereof to the Commissioner. The
Commissioner shall, on receipt of such notices, enter the
same in the file of such patent.

 35 U.S.C. 291  Interfering patents.

  The owner of an interfering patent may have relief
against the owner of another by civil action, and the court
may  adjudge  the  question  of  validity  of  any  of  the
interfering patents, in whole or in part. The provisions of
the second paragraph of section 146 of this title shall
apply to actions brought under this section.

 35 U.S.C. 292  False marking.

  (a) Whoever, without the consent of the patentee, marks
upon, or affixes to, or uses in advertising in connection
with anything made, used, offered for sale, or sold by same
person within the United States, or imported by the person
into the United States, the name or any imitation of the
name of the patentee, the patent number, or the words
"patent," "patentee," or the like, with the intent of
counterfeiting or imitating the mark of the patentee, or of
deceiving the public and inducing them to believe that the
thing was made, offered for sale, sold, or imported into the
United States by or with the consent of the patentee; or

  Whoever  marks  upon,  or  affixes  to,  or  uses  in
advertising in connection with any unpatented article the
word "patent" or any word or number importing the same is
patented, for the purpose of deceiving the public; or

  Whoever  marks  upon,  or  affixes  to,  or  uses  in
advertising in connection with any article the words "patent
applied for," "patent pending," or any word importing that
an application for patent has been made, when no application
for patent has been made, or if made, is not pending, for
the purpose of deceiving the public -

  Shall be fined not more than $500 for every such
offense.

  (b) Any person may sue for the penalty, in which event
one - half shall go to the person suing and the other to the
use of the United States.

  (Subsection (a) amended Dec. 8, 1994, Public Law 103 -
465, sec. 533, 108 Stat. 4809, effective Jan. 1, 1996.)

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

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

that it would have if the patentee were personally within
the jurisdiction of the court.

  (Amended Jan. 2, 1975, Public Law 93 - 596, sec. 1, 88
Stat. 1949.)

 35 U.S.C. 294  Voluntary arbitration.

  (a) A contract involving a patent or any right under a
patent may contain a provision requiring arbitration of any
dispute relating to patent validity or infringement arising
under the contract. In the absence of such a provision, the
parties to an existing patent validity or infringement
dispute may agree in writing to settle such dispute by
arbitration. Any such provision or agreement shall be valid,
irrevocable, and enforceable, except for any grounds that
exist at law or in equity for revocation of a contract.

  (b) Arbitration of such disputes, awards by arbitrators,
and confirmation of awards shall be governed by title 9,
United  States  Code,  to  the  extent  such  title  is  not
inconsistent with this section. In any such arbitration
proceeding, the defenses provided for under section 282 of
this title shall be considered by the arbitrator if raised
by any party to the proceeding.

  (c) An award by an arbitrator shall be final and binding
between the parties to the arbitration but shall have no
force or effect on any other person. The parties to an
arbitration may agree that in the event a patent which is
the subject matter of an award is subsequently determined to
be invalid or unenforceable in a judgment rendered by a
court to competent jurisdiction from which no appeal can or
has been taken, such award may be modified by any court of
competent jurisdiction upon application by any party to the
arbitration. Any such modification shall govern the rights
and obligations between such parties from the date of such
modification.

  (d) When an award is made by an arbitrator, the patentee,
his assignee or licensee shall give notice thereof in
writing to the Commissioner. There shall be a separate
notice prepared for each patent involved in such proceeding.
Such notice shall set forth the names and addresses of the
parties, the name of the inventor, and the name of the
patent owner, shall designate the number of the patent, and
shall contain a copy of the award. If an award is modified
by a court, the party requesting such modification shall
give notice of such modification to the Commissioner. The
Commissioner shall, upon receipt of either notice, enter the
same in the record of the prosecution of such patent. If the
required notice is not filed with the Commissioner, any
party to the proceeding may provide such notice to the
Commissioner.

  (e) The award shall be unenforceable until the notice
required by subsection (d) is received by the Commissioner.

  (Added Aug. 27, 1982, Public Law 97 - 247, sec. 17(b)(1),
96 Stat. 322.)

 35 U.S.C. 295  Presumptions: Product made by patented
process.

  In actions alleging infringement of a process patent

based on the importation, sale, offered for sale, or use of
a product which is made from a process patented in the
United States, if the court finds-

  (1) that a substantial likelihood exists that the product
was made by the patented process, and

  (2) that the plaintiff has made a reasonable effort to
determine the process actually used in the production of the
product and was unable so to determine, the product shall be
presumed  to  have  been  so  made,  and  the  burden  of
establishing that the product was not made by the process
shall be on the party asserting that it was not so made.

  (Added August 23, 1988, Public Law 100 - 418, sec. 9005,
effective Feb. 23, 1989, amended Dec. 8, 1994, Public Law
103 - 465, sec. 533, 108 Stat. 4809, effective Jan. 1,
1996.)

 35 U.S.C. 296  Liability of States, instrumentalities of
States, and State officials for infringement of patents.

  (a) In General - Any State, any instrumentality of a
State,  and  any  officer  or  employee  of  a  State  or
instrumentality of a State, acting in his official capacity,
shall not be immune, under the eleventh amendment of the
Constitution  of  the  United  States  or  under  any  other
doctrine of sovereign immunity, from suit in Federal court
by any person, including any governmental or nongovernmental
entity, for infringement of a patent under section 271, or
for any other violation under this title.

  (b) Remedies - In a suit described in subsection (a) for
a  violation  described  in  that  subsection,  remedies
(including remedies both at law and in equity) are available
for the violation to the same extent as such remedies are
available for such a violation in a suit against any private
entity. Such remedies include damages, interest, costs, and
treble  damages  under  section  284,  attorney  fees  under
section 285, and the additional remedy for infringement of
design patents under section 289.

  (Added October 28, 1992, Public Law 106 - 560, sec.2, 106
Stat. 4230.)

 CHAPTER 30 - PRIOR ART CITATIONS TO OFFICE AND
  REEXAMINATION OF PATENTS

 Sec.

 301  Citation of prior art.

 302  Request for reexamination.

 303  Determination of issue by Commissioner.

 304  Reexamination order by Commissioner.

 305  Conduct of reexamination proceedings.

 306  Appeal.

 307  Certificate of patentability, unpatentability, and
claim

  cancellation.

 35 U.S.C. 301  Citation of prior art.

  Any person at any time may cite to the Office in writing
prior art consisting of patents or printed publications
which  that  person  believes  to  have  a  bearing  on  the
patentability of any claim of a particular patent. If the
person explains in writing the pertinency and manner of
applying such prior art to at least one claim of the patent,
the citation of such prior art and the explanation thereof
will become a part of the official file of the patent. At
the written request of the person citing the prior art, his
or her identity will be excluded from the patent file and
kept confidential.

  (Added Dec. 12, 1980, Public Law 96 - 517, sec. 1, 94
Stat. 3015.)

 35 U.S.C. 302  Request for reexamination.

  Any  person  at  any  time  may  file  a  request  for
reexamination by the Office of any claim of a patent on the
basis of any prior art cited under the provisions of section
301 of this title. The request must be in writing and must
be accompanied by payment of a reexamination fee established
by the Commissioner of Patents pursuant to the provisions of
section 41 of this title. The request must set forth the
pertinency and manner of applying cited prior art to every
claim for which reexamination is requested. Unless the
requesting  person  is  the  owner  of  the  patent,  the
Commissioner promptly will send a copy of the request to the
owner of record of the patent.

  (Added Dec. 12, 1980, Public Law 96 - 517, sec. 1, 94
Stat. 3015.)

 35 U.S.C. 303  Determination of issue by Commissioner.

  (a) Within three months following the filing of a request
for reexamination under the provisions of section 302 of
this  title,  the  Commissioner  will  determine  whether  a
substantial new question of patentability affecting any
claim of the patent concerned is raised by the request, with
or  without  consideration  of  other  patents  or  printed
publications. On his own initiative, and any time, the
Commissioner  may  determine  whether  a  substantial  new
question  of  patentability  is  raised  by  patents  and
publications discovered by him or cited under the provisions
of section 301 of this title.

  (b) A record of the Commissioner's determination under
subsection (a) of this section will be placed in the
official file of the patent, and a copy promptly will be
given or mailed to the owner of record of the patent and to
the person requesting reexamination, if any.

  (c) A determination by the Commissioner pursuant to
subsection (a) of this section that no substantial new
question of patentability has been raised will be final and
nonappealable. Upon such a determination, the Commissioner
may refund a portion of the reexamination fee required under
section 302 of this title.

  (Added Dec. 12, 1980, Public Law 96 - 517, sec. 1, 94

Stat. 3015.)

 35 U.S.C. 304  Reexamination order by Commissioner.

  If, in a determination made under the provisions of
subsection 303(a) of this title, the Commissioner finds that
a substantial new question of patentability affecting any
claim of a patent is raised, the determination will include
an order for reexamination of the patent for resolution of
the question. The patent owner will be given a reasonable
period, not less than two months from the date a copy of the
determination is given or mailed to him, within which he may
file a statement on such question, including any amendment
to his patent and new claim or claims he may wish to
propose, for consideration in the reexamination. If the
patent owner files such a statement, he promptly will serve
a copy of it on the person who has requested reexamination
under the provisions of section 302 of this title. Within a
period of two months from the date of service, that person
may file and have considered in the reexamination a reply to
any  statement  filed  by  the  patent  owner.  That  person
promptly will serve on the patent owner a copy of any reply
filed.

  (Added Dec. 12, 1980, Public Law 96 - 517, sec. 1, 94
Stat. 3016.)

 35 U.S.C. 305  Conduct of reexamination proceedings.

  After the times for filing the statement and reply
provided for by section 304 of this title have expired,
reexamination will be conducted according to the procedures
established for initial examination under the provisions of
sections 132 and 133 of this title. In any reexamination
proceeding under this chapter, the patent owner will be
permitted to propose any amendment to his patent and a new
claim  or  claims  thereto,  in  order  to  distinguish  the
invention as claimed from the prior art cited under the
provisions of section 301 of this title, or in response to a
decision adverse to the patentability of a claim of a
patent. No proposed amended or new claim enlarging the scope
of  a  claim  of  the  patent  will  be  permitted  in  a
reexamination  proceeding  under  this  chapter.  All
reexamination proceedings under this section, including any
appeal to the Board of Patent Appeals and Interferences,
will be conducted with special dispatch within the Office.

  (Added Dec. 12, 1980, Public Law 96 - 517, sec. 1, 94
Stat. 3016; amended Nov. 8, 1984, Public Law 98 - 622, sec.
204(c), 98 Stat. 3388.)

 35 U.S.C. 306  Appeal.

  The patent owner involved in a reexamination proceeding
under this chapter may appeal under the provisions of
section 134 of this title, and may seek court review under
the provisions of sections 141 to 145 of this title, with
respect to any decision adverse to the patentability of any
original or proposed amended or new claim of the patent.

 (Added Dec. 12, 1980, Public Law 96 - 517, sec. 1, 94 Stat.
3016.)

 35 U.S.C. 307  Certificate of patentability,
unpatentability, and claim cancellation.

  (a) In a reexamination proceeding under this chapter,
when  the  time  for  appeal  has  expired  or  any  appeal
proceeding has terminated, the Commissioner will issue and
publish a certificate canceling any claim of the patent
finally determined to be unpatentable, confirming any claim
of the patent determined to be patentable, and incorporating
in the patent any proposed amended or new claim determined
to be patentable.

  (b) Any proposed amended or new claim determined to be
patentable  and  incorporated  into  a  patent  following  a
reexamination proceeding will have the same effect as that
specified in section 252 of this title for reissued patents
on the right of any person who made, purchased, or used
within the United States, or imported into the United
States, anything patented by such proposed amended o r new
claim, or who made substantial preparation for the same,
prior to issuance of a certificate under the provisions of
subsection (a) of this section.

  (Added Dec. 12, 1980, Public Law 96 - 517, sec. 1, 94
Stat. 3016; amended Dec. 8, 1994, Public Law 103 - 465, sec.
533, 108 Stat. 4809, effective Jan. 1, 1996.)

  PART IV - PATENT COOPERATION TREATY

  CHAPTER 35 - DEFINITIONS

 Sec.

 351  Definitions.

 35 U.S.C. 351  Definitions.

  When used in this part unless the context otherwise
indicates-

  (a) The term "treaty" means the Patent Cooperation Treaty
done at Washington, on June 19, 1970.

  (b) The term "Regulations," when capitalized, means the
Regulations under the treaty, done at Washington on the same
date  as  the  treaty.  The  term  "regulations,"  when  not
capitalized,  means  the  regulations  established  by  the
Commissioner under this title.

  (c)  The  term  "international  application"  means  an
application filed under the treaty.

  (d) The term "international application originating inthe
United States" means an international application filed in
the Patent and Trademark Office when it is acting as a
Receiving Office under the treaty, irrespective of whether
or not the United States has been designated in that
international application.

  (e) The term "international application designatingthe
United States" means an international application specifying
the United States as a country in which a patent is sought,
regardless where such international application is filed.

  (f) The term "Receiving Office" means a national patent
office or intergovernmental organization which receives and
processes international applications as prescribed by the

treaty and the Regulations.

  (g) The terms "International Searching Authority" and
"International  Preliminary  Examining  Authority"  mean  a
national patent office or intergovernmental organization as
appointed under the treaty which processes international
applications  as  prescribed  by  the  treaty  and  the
Regulations.

  (h) The term "International Bureau" means the inter
national intergovernmental organization which is recognized
as  the  coordinating  body  under  the  treaty  and  the
Regulations.

  (i) Terms and expressions not defined in this part are to
be taken in the sense indicated by the treaty and the
Regulations.

  (Added Nov. 14, 1975, Public Law 94 - 131, sec. 1, 89
Stat. 685; amended Nov. 6, 1986, Public Law 99 - 616, sec.
2(a)(b)(c)(1)(2)(3), effective July 1, 1987.)

 CHAPTER 36 - INTERNATIONAL STAGE

 Sec.

 361  Receiving Office

 362  International Searching Authority and International
Preliminary Examining Authority.

 363  International application designating the United
States: Effect.

 364  International stage: Procedure.

 365  Right of priority; benefit of the filing date of a
prior application.

 366  Withdrawn international application.

 367  Actions of other authorities: Review.

 368  Secrecy of certain inventions; filing international
applications in foreign countries.

 35 U.S.C. 361  Receiving Office.

  (a) The Patent and Trademark Office shall act as a
Receiving Office for international applications filed by
nationals or residents of the United States. In accordance
with any agreement made between the United States and
another country, the Patent and Trademark Office may also
act as a Receiving Office for international applications
filed by residents or nationals of such country who are
entitled to file international applications .

  (b) The Patent and Trademark Office shall perform all
acts connected with the discharge of duties required of a
Receiving Office, including the collection of international
fees and their transmittal to the International Bureau.

  (c) International applications filed in the Patent and
Trademark Office shall be in the English language.

  (d) The international fee, and the transmittal and search
fees prescribed under section 376(a) of this part, shall
either be paid on filing of an international application or
within such later time as may be fixed by the Commissioner.

  (Added Nov. 14, 1975, Public Law 94 - 131, sec. 1, 89
Stat. 686; amended Nov. 8, 1984, Public Law 98 - 622, sec.
401(a), 98 Stat. 3391; Nov. 6, 1986, Public Law 99 - 616,
sec. 2(d), effective July 1, 1987.)

 35 U.S.C. 362  International Searching Authority and
International Preliminary Examining Authority.

  (a) The Patent and Trademark Office may act as an
International  Searching  Authority  and  International
Preliminary  Examining  Authority  with  respect  to
international applications in accordance with the terms and
conditions of an agreement which may be concluded with the
International Bureau, and may discharge all duties required
of such Authorities, including the collection of handling
fees and their transmittal to the International Bureau.

  (b) The handling fee, preliminary examination fee, and
any  additional  fees  due  for  international  preliminary
examination shall be paid within such time as may be fixed
by the Commissioner.

  (Added Nov. 14, 1975, Public Law 94 - 131, sec. 1, 89
Stat. 686; amended Nov. 6, 1986, Public Law 99 - 616, sec.
4, effective July 1, 1987.)

 35 U.S.C. 363  International application designating the
United States: Effect.

  An international application designating the United
States shall have the effect, from its international filing
date  under  article  11  of  the  treaty,  of  a  national
application for patent regularly filed in the Patent and
Trademark Office except as otherwise provided in section
102(e) of this title.

  (Added Nov. 14, 1975, Public Law 94 - 131, sec. 1, 89
Stat. 686.)

 35 U.S.C. 364  International stage: Procedure.

  (a) International applications shall be processed by the
Patent and Trademark Office when acting as a Receiving
Office, International Searching Authority, or International
Preliminary Examining Authority, in accordance with the
applicable provisions of the treaty, the Regulations, and
this title.

  (b) An applicant's failure to act within prescribed time
limits in connection with requirements pertaining to a
pending international application may be excused upon a
showing satisfactory to the Commissioner of unavoidable
delay, to the extent not precluded by the treaty and the
Regulations, and provided the conditions imposed by the
treaty and the Regulations regarding the excuse of such
failure to act are complied with.

  (Subsection (a) amended Nov. 6, 1986, Public Law 99 -
616, sec. 5, effective July 1, 1987.)

  (Subsection (b) added Nov. 14, 1975, Public Law 94 - 131,
sec. 1, 89 Stat. 686.)

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

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

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

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

  (Added Nov. 14, 1975, Public Law 94 - 131, sec. 1, 89
Stat. 686; amended Dec. 8, 1994, Public Law 103 - 465, sec.
532, 108 Stat. 4809, effective June 8, 1995.)

 35 U.S.C. 366  Withdrawn international application.

  Subject to section 367 of this part, if an international
application designating the United States is withdrawn or
considered withdrawn, either generally or as to the United
States,  under  the  conditions  of  the  treaty  and  the
Regulations, before the applicant has complied with the
applicable requirements prescribed by section 371(c) of this
part, the designation of the United States shall have no
effect after the date of withdrawal and shall be considered
as not having been made, unless a claim for benefit of a
prior filing date under section 365(c) of this section was
made  in  a  national  application,  or  an  international
application designating the United States, filed before the
date  of  such  withdrawal.  However,  such  withdrawn
international application may serve as the basis for a claim
of priority under section 365(a) and (b) of this part, if it
designated a country other than the United States.

  (Nov. 14, 1975, Public Law 94 - 131, sec. 1, 89 Stat.
687; Amended Nov. 8, 1984, Public Law 98 - 622, sec. 401(b),
98 Stat. 3391.)

 35 U.S.C. 367  Actions of other authorities: Review.

  (a) Where a Receiving Office other than the Patent and
Trademark Office has refused to accord an international
filing date to an international application designating the
United States or where it has held such application to be
withdrawn either generally or as to the United States, the
applicant  may  request  review  of  the  matter  by  the
Commissioner, on compliance with the requirements of and
within the time limits specified by the treaty and the
Regulations. Such review may result in a determination that
such application be considered as pending in the national
stage.

  (b) The review under subsection (a) of this section,
subject to the same requirements and conditions, may also be
requested  in  those  instances  where  an  international
application designating the United States is considered
withdrawn due to a finding by the International Bureau under
article 12(3) of the treaty.

  (Added Nov. 14, 1975, Public Law 94 - 131, sec. 1, 89
Stat. 687.)

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

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

  (b) In accordance with article 27(8) of the treaty, the
filing of an international application in a country other
than the United States on the invention made in this country
shall  be  considered  to  constitute  the  filing  of  an
application in a foreign country within the meaning of
chapter 17 of this title, whether or not the United States
is designated in that international application.

  (c) If a license to file in a foreign country is refused
or if an international application is ordered to be kept
secret and a permit refused, the Patent and Trademark Office
when acting as a Receiving Office, International Searching
Authority, or International Preliminary Examining Authority,
may not disclose the contents of such application to anyone
not authorized to receive such disclosure.

  (Added Nov. 14, 1975, Public Law 94 - 131, sec. 1, 89
Stat. 687; amended Nov. 6, 1986, Public Law 99 - 616, sec.
6, effective July 1, 1987.)

  CHAPTER 37 - NATIONAL STAGE

 Sec.

 371  National stage: Commencement.

 372  National stage: Requirements and procedure.

 373  Improper applicant.

 374  Publication of international application: Effect.

 375  Patent issued on international application: Effect.

 376  Fees.

 35 U.S.C. 371  National stage: Commencement.

  (a) Receipt from the International Bureau of copies of
international  applications  with  any  amendments  to  the
claims,  international  search  reports,  and  international
preliminary  examination  reports  including  any  annexes
thereto  may  be  required  in  the  case  of  international
applications designating or electing the United States.

  (b) Subject to subsection (f) of this section, the
national stage shall commence with the expiration of the
applicable time limit under article 22(1) or (2), or under
article 39(1)(a) of the treaty.

  (c) The applicant shall file in the Patent and Trademark
Office -

  (1) the national fee provided in section 41(a) of this
title;

  (2) a copy of the international application, unless not
required under subsection (a) of this section or already
communicated by the International Bureau, and a translation
into the English language of the international application,
if it was filed in another language;

  (3)  amendments,  if  any,  to  the  claims  in  the
international application, made under article 19 of the
treaty, unless such amendments have been communicated to the
Patent and Trademark Office by the International Bureau, and
a translation into the English language if such amendments
were made in another language;

  (4) an oath or declaration of the inventor (or other
person authorized under chapter 11 of this title) complying
with the requirements of section 115 of this title and with
regulations  prescribed  for  oaths  or  declarations  of
applicants;

  (5) a translation into the English language of any
annexes to the international preliminary examination report,
if such annexes were made in another language.

  (d) The requirement with respect to the national fee
referred to in subsection (c)(1), the translation referred
to  in  subsection  (c)(2),  and  the  oath  or  declaration
referred to in subsection (c)(4) of this section shall be
complied with by the date of the commencement of the
national stage or by such later time as may be fixed by the
Commissioner. The copy of the international application
referred to in subsection (c)(2) shall be submitted by the
date of the commencement of the national stage. Failure to
comply  with  these  requirements  shall  be  regarded  as
abandonment of the application by the parties thereof,
unless it be shown to the satisfaction of the Commissioner
that such failure to comply was unavoidable. The payment of
a surcharge may be required as a condition of accepting the
national fee referred to in subsection (c)(1) or the oath or
declaration referred to in subsection (c)(4) of this section
if these requirements are not met by the date of the
commencement of the national stage. The requirements of
subsection (c)(3) of this section shall be complied with by
the date of the commencement of the national stage, and
failure to do so shall be regarded as a cancellation of the

amendments to the claims in the international application
made under article 19 of the treaty. The requirement of
subsection (c)(5) shall be complied with at such time as may
be fixed by the Commissioner and failure to do so shall be
regarded  as  cancellation  of  the  amendments  made  under
article 34(2)(b) of the treaty.

  (e) After an international application has entered the
national stage, no patent may be granted or refused thereon
before the expiration of the applicable time limit under
article 28 or article 41 of the treaty, except with the
express consent of the applicant. The applicant may present
amendments to the specification, claims, and drawings of the
application after the national stage has commenced.

  (f) At the express request of the applicant, the national
stage of processing may be commenced at any time at which
the application is in order for such purpose and the
applicable requirements of subsection (c) of this section
have been complied with.

  (Subsection (a) amended Nov. 6, 1986, Public Law, 99 -
616, sec. 7(a).)

  (Subsection (b) amended Nov. 6, 1986, Public Law 99 -
616, sec. 7(b).)

  (Subsection (c) amended Nov. 6, 1986, Public Law 99 -
616, sec. 7(d).)

  (Subsection (d) amended Nov. 6, 1986, Public Law 99 -
616, sec. 7(e).)

  (Subsection (e) amended Nov. 6, 1986, Public Law 99 -
616, sec. 7(f).)

  (Subsection (f) added Nov. 14, 1975, Public Law 94 - 131,
sec. 1, 89 Stat. 688; amended Nov. 8, 1984, Public Law 98 -
622, sec. 402(b), 98 Stat. 3391.)

  (Subsection (c)(1) amended Dec. 10, 1991, Public Law 102
- 204, sec. 5, 105 Stat. 1640.)

 35 U.S.C. 372  National stage: Requirements and
procedure.

  (a ) All questions of substance and, within the scope of
the requirements of the treaty and Regulations, procedure in
an international application designating the United States
shall be determined as in the case of national applications
regularly filed in the Patent and Trademark Office.

  (b) In case of international applications designating but
not originating in, the United States - -

  (1) the Commissioner may cause to be reexamined questions
relating  to  form  and  contents  of  the  application  in
accordance with the requirements of the treaty and the
Regulations ;

  (2) the Commissioner may cause the question of unity of
invention to be reexamined under section 121 of this title,
within the scope of the requirements of the treaty and the
Regulations; and

  (3) the Commissioner may require a verification of the
translation of the international application or any other
document pertaining to the application if the application or
other document was filed in a language other than English.

  (Added Nov. 14, 1975, Public Law 94 - 131, sec. 1, 89
Stat. 689; amended Nov. 8, 1984, Public Law 98 - 622, sec.
402(e), 98 Stat. 3392.)

 35 U.S.C. 373  Improper applicant.

  An international application designating the United
States, shall not be accepted by the Patent and Trademark
Office for the national stage if it was filed by anyone not
qualified under chapter 11 of this title to be an applicant
for the purpose of filing a national application in the
United States. Such international applications shall not
serve as the basis for the benefit of an earlier filing date
under section 120 of this title in a subsequently filed
application, but may serve as the basis for a claim of the
right of priority under subsections (a) through (d) of
section 119 of this title, if the United States was not the
sole country designated in such international application.

  (Added Nov. 14, 1975, Public Law 94 - 131, sec. 1, 89
Stat. 689; amended Dec. 8, 1994, Public Law 103 - 465, sec.
532, 108 Stat. 4809, effective June 8, 1995.)

 35 U.S.C. 374  Publication of international application:
Effect.

  The publication under the treaty of an international
application shall confer no rights and shall have no effect
under this title other than that of a printed publication.

  (Added Nov. 14, 1975, Public Law 94 - 131, sec. 1, 89
Stat. 689.)

 35 U.S.C. 375  Patent issued on international
application: Effect .

  (a) A patent may be issued by the Commissioner based on
an international application designating the United States,
in accordance with the provisions of this title. Subject to
section 102(e) of this title, such patent shall have the
force  and  effect  of  a  patent  issued  on  a  national
application filed under the provisions of chapter 11 of this
title.

  (b) Where due to an incorrect translation the scope of a
patent granted on an international application designating
the United States, which was not originally filed in the
English language, exceeds the scope of the international
application in its original language, a court of competent
jurisdiction  may  retroactively  limit  the  scope  of  the
patent, by declaring it unenforceable to the extent that it
exceeds the scope of the international application in its
original language.

  (Added Nov. 14, 1975, Public Law 94 - 131, sec. 1, 89
Stat. 689.)

 35 U.S.C. 376  Fees.

  (a) The required payment of the international fee and the

handling  fee,  which  amounts  are  specified  in  the
Regulations, shall be paid in United States currency. The
Patent and Trademark Office shall charge a national fee as
provided in section 41(a), and may also charge the following
fees:

  (1) A transmittal fee (see section 361(d));

  (2) A search fee (see section 361(d));

  (3) A supplemental search fee (to be paid when required)
;

  (4) A preliminary examination fee and any additional fees
(see section 362(b)).

  (5) Such other fees as established by the Commissioner.

  (b) The amounts of fees specified in subsection (a) of
this section, except the international fee and the handling
fee, shall be prescribed by the Commissioner. He may refund
any sum paid by mistake or in excess of the fees so
specified,  or  if  required  under  the  treaty  and  the
Regulations. The Commissioner may also refund any part of
the  search  fee,  the  national  fee,  the  preliminary
examination fee and any additional fees, where he determines
such refund to be warranted.

  (Added Nov. 14, 1975, Public Law 94 - 131, sec. 1, 89
Stat. 690, amended Nov. 8, 1984, Public Law 98 - 622, sec.
402(g), 98 Stat. 3392; Nov. 6, 1986, Public Law 99 - 616,
sec. 8(a) & (b).)

  (Amended Dec. 10, 1991, Public Law 102 - 204, sec. 5, 105
Stat. 1640.)

  LAWS NOT IN TITLE 35, UNITED STATES CODE

 18 U.S.C. 1001  Statements or entries generally.

  Whoever, in any matter within the jurisdiction of any
department or agency of the United States knowingly and
willfully falsifies, conceals, or covers up by any trick,
scheme, or device a material fact, or makes any false,
fictitious or fraudulent statements or representations, or
makes or uses any false writing or document knowing the same
to contain any false, fictitious or fraudulent statement or
entry, shall be fined not more than $10,000 or imprisoned
not more than five years, or both.

 18 U.S.C. 2071  Concealment, removal, or mutilation
generally.

  (a) Whoever willfully and unlawfully conceals, removes,
mutilates, obliterates, or destroys, or attempts to

 do so, or, with intent to do so takes and carries away any
record, proceeding, map, book, paper, document, or other
thing, filed or deposited with any clerk or officer of any
court of the United States, or in any public office, or

 with any judicial or public officer of the United States,
shall be fined not more than $2,000 or imprisoned not more
than three years, or both.

  (b) Whoever, having the custody of any such record,
proceeding, map, book, document, paper, or other thing,
willfully  and  unlawfully  conceals,  removes,  mutilates,
obliterates, falsifies, or destroys the same, shall be fined
not more than $2,000 or imprisoned not more than three
years,  or  both;  and  shall  forfeit  his  office  and  be
disqualified  from  holding  any  office  under  the  United
States.

  INDEX OF PATENT LAWS

  A

  Abandoned applications, fee on petition to revive  
  41(a)7

  Abandonment of application by failure to

  prosecute  . .  133 , 371

  Abandonment of invention:

  Bar to patent  . .  102

  By violation of secrecy  . .  182

  Administrator, executor, or guardian  . .  117

  Affidavits and depositions in contested cases,

  rules for taking  . .  23

  Agreement to terminate interference  . .  135

  Agriculture, Secretary of, to furnish information,

  and detail employees to Commissioner of Patents

  and Trademarks for plant patent  . .  164

  Allowance and issue of patents  . .  153

  Allowance, notice of  . .  151

  Amendment:

  Copying claim of issued patent  . .  135

  Time for  . .  133 , 135

  Annual indexes of patents  . .  11

  Annual report of the Commissioner  . .  14

  Apostille on assignment  . .  261

  Appeals to Board of Patent Appeals

  and Interferences  . .  134

  Fee  . .  41(a)6 ,
  134

  Hearing of  . .  7

  Reexamination proceedings  . .  306

  Appeals to Court of Appeals for the Federal Circuit  
  141

  Certificate of decision of Court recorded in the

  Patent and Trademark Office  . .  144

  Determination of Appeal; revision of decision  144

  From Board of Patent Appeals and Interferences  141

  Grounds of decision to be furnished court  .  143

  Notice of appeal  . .  142

  Proceedings on appeal  . .  143

  Applicant for foreign patent, license required  184

  Applicant for international application  . .  373

  Applicant, notified of interference  . .  135

  Application:

  Abandonment of, by failure to prosecute  . .  133

  Assignment of  . .  261

  Confidential while pending  . .  122

  Continuing  . .  120

  Description; specification and claim  . .  112

  Divisional  . .  121

  Drawings  . .  113

  Effect of defective execution  . .  26

  Effective as of date of earliest foreign application

  in certain cases  . .  119

  Examination of invention  . .  131

  (Application:)

  Fee on filing  . .  41(a)1 ,
  111

  For deceased or insane inventors  . .  117

  May be made by legal representative of

  deceased or incapacitated inventor  . .  117

  Must be made within specified time after

  foreign application for right of priority  .  119

  Oath of applicant (See Oath in patent application)

  Owned by Government  . .  267

  Provisional  . .  111

  Reissue  . .  251

  Secrecy order  . .  181

  What to contain  . .  111

  When filed by other than inventor  . .  118 , 121

  Appointments, how made  . .  3

  Arbitration of interferences  . .  135

  Arbitration, voluntary  . .  294

  Article patented marked with number of patent  287

  Assignee:

  May file application in certain cases  . .  118

  May file divisional application  . .  121

  May file reissue application  . .  251

  Patent may be issued to  . .  152

  Assignments, patent  . .  261

  Establishing prima facie execution of  . .  261

  Fees for recording  . .  41(a)10

  Must be recorded in Patent and Trademark Office

  to issue patent to assignee  . .  152

  Patent may issue to assignee  . .  152

  Recording in Patent and Trademark Office  .  261

  Assistant Commissioners:

  How appointed and duties  . .  3

  Member of Board  . .  7

  Assistant Secretary of Commerce  . .  3

  Attorney fees in infringement suit  . .  285

  Attorneys and agents:

  May be refused recognition for misconduct  .  32

  Petition to District Court, DC  . .  32

  Rules for recognition made by Commissioner  31

  Suspension or exclusion from practice  . .  31 , 32

  Unauthorized practitioners  . .  33

  B

  Bars to grant of a patent  . .  102 , 103

  Benefit of earlier filing date in foreign country  119

  Benefit of earlier filing date in United States  120

  Best mode required  . .  112

  Bill in equity (See Civil action)

  Board of Patent Appeals and Interferences,

  how constituted  . .  7

  C

  Certificate of correction:

  Applicant's mistake  . .  255

  Fee for applicant's mistake  . .  41(a)8

  Office mistake  . .  254

  Certified copies:

  Fee for certification  . .  41(a)11

  Of drawings and specifications of patents issued  10

  Of records, furnished to Court of Appeals for

  the Federal Circuit in appeals  . .  143

  Citation of prior art in patent  . .  301

  Citizenship required in oath  . .  115

  Civil action:

  Election of in case of interference  . .  141

  Infringement  . .  291

  In case of interference  . .  146

  Jurisdiction, plurality of parties, foreign party  146

  To obtain patent  . .  145

  Claim of patent:

  Independent or dependent  . .  41 , 112

  Independent or dependent, validity  . .  282

  Invalid, effect of  . .  253

  Invalid, suits on patent with  . .  288

  Notice of rejection  . .  132

  Too extensive or narrow, remedy  . .  251

  What to cover  . .  112

  Classification of patents  . .  9

  Clerk of United States Court may summon witness in

  Interference cases  . .  24

  Must notify Commissioner of patent suits  .  290

  Commerce, Department of, Patent and

  Trademark Office in  . .  1

  Commerce, Secretary of:

  Appointments by  . .  3

  Commissioner under direction of  . .  6

  May vest functions  . .  3

  To approve rules  . .  6 , 31

  Commissioner:

  Annual report to Congress  . .  14

  Duties of  . .  6

  How appointed  . .  3

  May disbar attorneys  . .  32

  May establish charges  . .  41

  May make rules for taking affidavits and depositions  
  23

  Member of Board  . .  7

  Reexamination order  . .  304

  Shall cause examination to be made  . .  131

  To establish regulations  . .  6

  To furnish court with grounds of decision,

  on appeal  . .  143

  To have charge of property  . .  6

  (Commissioner:)

  To prescribe rules and regulations governing

  recognition of attorneys and agents  . .  31

  To sign patents or have name printed thereon and

  attested  . .  153

  To superintend grant of patents  . .  6

  Vacancy in office  . .  3

  Commonly owned invention and reference

  subject matter  . .  103

  Compensation, right to because of secrecy order  183

  Composition of matter:

  Patentable  . .  101

  Specimens of ingredients may be required  .  114

  Concealment of records  . . 
  18U.S.C.2071

  Confidential status of application  . .  122 , 205

  Continuing application  . .  120

  Contributory infringement  . .  271

  Copies of records, fees  . .  41

  Correction of inventors in patent  . .  256

  Correction of letters patent  . .  254 , 255

  D

  Damages for infringement  . .  284

  Day of taking any action or paying any fee falling

  on Saturday, Sunday, or holiday  . .  21

  Death or incapacity of inventor  . .  117

  Decisions in patent cases, printing of  . .  11

  Declaration in lieu of oath  . .  25

  Dedication of term  . .  253

  Defective execution of documents, effect of  26

  Defenses in action for infringement  . .  282

  Definitions  . .  100 , 351

  Deposit with United States Postal Service  .  21

  Depositions, Commissioner may establish rules for  23

  Deputy Commissioner  . .  3

  Member of Board  . .  7

  Description of invention  . .  112

  Design patents:

  Double recovery, not allowed  . .  289

  Fees  . .  41(a)3

  For what granted  . .  171

  Liability for infringement of  . .  289

  Penalty for unauthorized use of patented design  289

  Prior foreign applications  . .  172

  Right of priority  . .  172

  Subject to same provisions as other patents  171

  Term of  . .  173

  Unauthorized use of  . .  289

  Designated office  . .  363 , 366
  , 367 , 371 , 372

  Disbarment of attorneys and agents  . .  32

  Disclaimer:

  Fee  . .  41(a)5

  How filed and by whom  . .  253

  (Disclaimer:)

  Must be filed before commencement of suit

  to recover costs  . .  288

  Nature of  . .  253

  District Court for District of Columbia:

  Jurisdiction  . .  146

  Review of disbarment of attorneys and agents  32

  Division of application  . .  121

  Division of patent on reissue  . .  251

  Drawing:

  Attached to patent  . .  154

  Keeping of  . .  1

  Part of patent  . .  154

  Printing of  . .  11

  When necessary  . .  113

  Duties of Commissioner  . .  6

  E

  Elected office  . .  371 , 372

  Employees of Patent and Trademark Office  .  3

  How appointed  . .  3

  Restrictions on as to interest in patents  .  4

  English language  . .  361

  Entry into national phase in United States  371

  Error in naming inventors  . .  116

  Establishment of date of invention by reference

  to knowledge or use in foreign country  . .  104

  Establishment, Patent and Trademark Office  1

  Examination:

  Applicants shall be notified of rejection on  132

  To be made of application and alleged invention  131

  Examiner - in - chief:

  Duties of  . .  7

  How appointed  . .  3

  Pay rate  . .  3

  Qualifications  . .  7

  Temporary  . .  7

  Exchange of Patent and Trademark Office Publications

  for other publications  . .  11

  Exchange of printed copies of patents with

  foreign countries  . .  12

  Executors, administrators or guardians  . .  117

  Extension of patent term  . .  155

  Extension of time to reply fee  . .  41(a)8

  F

  Falsely making or labeling articles as patented  292

  Federal agency, defined  . .  200

  Federal Assistance, inventions made with:

  Confidentiality  . .  205

  (Federal assistance, inventions made with:)

  Definitions  . .  201

  Disposition of rights  . .  202

  Domestic and foreign protection of federally

  owned inventions  . .  207

  Educational awards  . .  212

  March - in rights  . .  203

  Policy and objective of  . .  200

  Precedence of chapter over other Acts  . .  210

  Preference for United States industry  . .  204

  Regulations governing Federal licensing  . .  208

  Relationship to antitrust laws  . .  211

  Restrictions on licensing of federally

  owned inventions  . .  209

  Uniform clauses and regulations  . .  206

  Fees:

  Amount of  . .  41

  For attorney awarded by court  . .  285

  For records, publications, and services not specified

  in statute  . .  41

  How paid and refunded  . .  42

  Independent inventor, 50% reduction  . .  41(h)

  International  . .  361 , 376

  Nonprofit organization, 50% reduction  . .  41(h)

  Payable to Commissioner  . .  42(a)

  Small business, 50% reduction  . .  41(h)

  Small entity, 50% reduction  . .  41(h)

  To witness interference cases  . .  24

  Filing application by other than inventor  .  118

  Filing date requirements  . .  111

  Filing fee: Amount of  . .  41(a)1

  Foreign applications:

  License to file required  . .  184

  Penalty for filing without license  . .  185 , 186

  Foreign countries, exchange of printed

  copies of patents with  . .  12

  Foreign country, knowledge of use in, not used to

  establish date of invention  . .  102 , 104

  Foreign patentee:

  Jurisdiction  . .  293

  Service  . .  293

  Foreign patents:

  Copies of, exchanged for United States patents  12

  Prior, effect on United States application

  for patent  . .  102

  Foreign priority  . .  119(a) -
  (d) , 365 , 373

  Fraudulent statements  . . 
  18U.S.C.1001

  Funding agreement, defined  . .  200

  G

  Government interests in patents  . .  267

  H

  Holiday, time for action expiring on  . .  21

  I

  Importation of products made by a patented process  295

  Improvements, patents may be granted for  .  101

  Indexes of patents and patentees, printing of  11

  Infringement, patent:

  Action for  . .  281

  Attorney fees  . .  285

  By United States, time limitation in suit for  286

  Clerk of court to notify Patent and

  Trademark Office of suit  . .  290

  Contributory  . .  271

  Damages for  . .  284

  Defenses in suit for  . .  282

  Defined  . .  271

  Design patent  . .  289

  Injunction  . .  283

  Notice of, necessary to recovery of damages  287

  Pleading defense and special matters to be

  proved in suit  . .  282

  Suit for, when a claim is invalid  . .  288

  Temporary presence in United States  . .  272

  Time limitation  . .  286

  Injunctions may be granted by court having

  jurisdiction  . .  283

  Insane persons, patent applications of  . .  117

  Interference, patent:

  Agreements, between parties, relating to

  termination, to be filed in Patent and

  Trademark Office  . .  135

  Appeal to court  . .  141

  Arbitration  . .  135

  Determination of priority  . .  102 , 135

  Parties to be notified of  . .  135

  Review of decision by civil action  . .  145 , 146

  Rules for taking testimony  . .  23

  International application  . .  351 , 365
  ,

 366 367 375

  Fees  . .  376

  National phase in United States  . .  371

  Priority rights  . .  365

  Interfering patent:

  How set aside  . .  291

  Jurisdiction, plurality of parties,

  foreign party  . .  146 , 291

  Relief against  . .  291

  International Bureau  . .  351 , 361
  , 362 , 371

  International Preliminary Examining

  Authority  . .  362 , 364
  , 368

  International Searching Authority  . .  351 , 362
  , 364 , 368

  International studies and program funds  . .  6

  Intervening rights on reissue  . .  252

  Invalid patent claim disclaimer  . .  288

  Invalidity of term extension  . .  282

  Invention date as affected by activity abroad  104

  Invention, defined  . .  100

  Invention made abroad  . .  104

  Inventions in outer space  . .  105

  Inventions patentable  . .  101

  Inventions previously patented abroad  . .  102

  Inventive step  . .  103

  Inventor:

  Correction of patent  . .  256

  Death or incapacity  . .  117

  May obtain patent  . .  101

  Oath for joint  . .  116

  Refuses to sign  . .  118

  To make application  . .  111

  Inventor's certificate as reference  . .  102

  Inventor's certificate priority right  . .  119

  Issue of patent  . .  151

  Issue fee  . .  41

  If not paid within three months, patent withheld  151

  Nonpayment  . .  41 , 151

  Payment of  . .  151

  J

  Joint inventors  . .  116 , 256

  Joint owners  . .  262

  Jurisdiction of District Court for District of Columbia  
  32

  K

  Knowledge or use in foreign country

  no bar to patent  . .  102

  L

  Legal representative of dead or

  incapacitated inventor  . .  117

  Liability of States  . .  296

  Libraries, public, copies of patents for  .  13 , 41

  Library  . .  8

  License for foreign filing  . .  184

  Limitation on damages  . .  286 , 287

  M

  Machines patentable  . .  100

  Maintenance fees  . .  41(b)

  Late payment  . .  41(c)

  Manufactures patentable  . .  101

  Marking articles falsely as patented  . .  292

  Marking articles patented  . .  287

  Misjoinder of inventor  . .  116 , 202
  , 256

  Mistake in patent, certificate thereof issued  254 , 255

  Model, shall be furnished if required  . .  114

  Money:

  Paid by mistake or in excess, refunded  . .  42

  Received for fees, etc, to be paid into Treasury  42

  Multiple dependent claim  . .  112

  Fee  . .  41

  Mutilation of records  . . 
  18U.S.C.2071

  N

  National stage of international application  371 , 372

  , 373

  New matter inadmissible in reissue  . .  251

  New matter, may not be introduced by amendment  132

  Nonjoinder of inventor  . .  256

  Nonobviousness  . .  103

  Nonprofit organization, defined  . .  200

  Nonresident patentee  . .  293

  Notice as regards patents:

  As to proof in infringement suits  . .  282

  Of allowance of patent  . .  151

  Of appeal to the Court of Appeals for

  the Federal Circuit  . .  142 , 143

  Of interference  . .  135

  Of patent suit, decision to be given Patent

  and Trademark Office by clerk of court  . .  290

  Of rejection of an application  . .  132

  Of suit to be entered on file of patent  . .  290

  To the public by Federal agency  . .  209

  To the public that invention is patented  .  287

  Novelty  . .  102

  O

  Oath in patent application  . .  115 , 152

  Before whom taken in foreign countries  . .  25 , 115

  Before whom taken in the United States  . .  115

  Declaration in lieu of  . .  25

  Joint inventors  . .  116

  Must be made by inventor, if living  . .  115

  Requirements of  . .  115

  To be made by legal representative if

  inventor is dead or incapacitated  . .  117

  Obviousness  . .  103

  Officer of Patent and Trademark Office

  may attest patents  . .  153

  Officers and employees:

  Of Patent and Trademark Office  . .  3

  Of Patent and Trademark Office, restrictions

  on as to interests in patents  . .  4

  Official Gazette:

  Exchange for publications  . .  11

  Printing and distribution of  . .  11

  Owners, joint  . .  262

  Ownership assignment  . .  261

  P

  Paris Convention  . .  119

  Patent and Trademark Office:

  In Department of Commerce  . .  1

  Library  . .  8

  Printing  . .  11

  Rules, authority for  . .  6

  Seal of  . .  2

  Patent Cooperation Treaty:

  Definitions  . .  351

  Patent fees  . .  41

  Disposition of  . .  42

  Patent laws, printing of  . .  11

  Patent pending, false marking as  . .  292

  Patent term extension  . .  155

  Patent term extension application  . .  156

  Patentability, conditions for  . .  102 , 103

  Patentable inventions  . .  101

  Patented article, marked as such  . .  287

  Patentee:

  Defined  . .  100

  Notified of interference  . .  135

  Patents:

  Application for  . .  111

  Assignment of  . .  261

  Based on international application  . .  375

  Certified copies of  . .  10

  Classification of  . .  9

  Contents and duration of  . .  154

  Copies supplied to public libraries  . .  13 , 41

  Copying claim of  . .  135

  Date, duration, and form  . .  154

  Design (See Design patents)

  Effect of adverse interference decision  . .  135

  Exchange of printed copies with foreign countries  12

  Fee on issuing  . .  41

  Filing application in foreign country  . .  184

  For what granted  . .  101

  Foreign knowledge or use no bar to grant of  102

  How issued, attested, and recorded  . .  153

  May be granted to assignee  . .  152

  May be withheld in certain cases  . .  181

  Obtainable by civil action  . .  145

  Personal property  . .  261

  Presumption of validity  . .  282

  Price of copies  . .  41(a)9

  Printing of  . .  11

  Reissuing of, when defective  . .  251

  Rights of invention made with

  federal assistance  . .  200 - 212

  Restrictions on officers and employees of

  Patent and Trademark Office as to interest in  4

  (Patents:)

  Surrender of, to take effect on reissue  . .  251

  Term  . .  154 , 155
  , 155A , 156

  Term extension  . .  155 , 156

  Term restoration  . .  155A

  Time of issue, payment of issue fee  . .  151

  To be authenticated by seal of Patent

  and Trademark Office  . .  2

  When to issue  . .  151

  Withheld for nonpayment of issue fee  . .  151

  Patent rights in inventions made with

  Federal assistance  . .  200 - 212

  Confidentiality  . .  205

  Definitions  . .  201

  Disposition of rights  . .  202

  Domestic and foreign protection of federally

  owned inventions  . .  207

  Educational awards  . .  212

  March - in rights  . .  203

  Policy and objective of  . .  200

  Precedence of chapter over other Acts  . .  210

  Preference for United States industry  . .  204

  Regulations governing federal licensing  . .  208

  Relationship to antitrust laws  . .  211

  Restrictions on licensing of federally

  owned inventions  . .  209

  Uniform clauses and regulations  . .  206

  Payment to international intergovernmental

  organizations  . .  6

  Period for response  . .  21 , 133

  Photolithography: Headings of drawings printed  11

  Plant patents:

  Claim  . .  162 , 164

  Description  . .  162 , 163

  Fees  . .  41

  Nature of right  . .  163

  Plants patentable  . .  161

  Secretary of Agriculture to furnish information

  and detail employees  . .  164

  Pleading and proof in action for infringement  282

  Postal Service deposit  . .  21

  Practical application, defined  . .  200

  Presumption of product made by patented process  295

  Printed publication bar to a patent  . .  102

  Presumption of validity of patents  . .  282

  Printing:

  Decisions in patent cases  . .  11

  Of papers filed  . .  22

  Patent and Trademark Office  . .  11

  Printing headings of drawings by Patent and

  Trademark Office  . .  11

  Prior art, citation of  . .  301

  Prior patenting or publication bar to patent  102

  Priority, foreign  . .  119 , 365

  Priority of invention  . .  102

  Priority of invention, determined by Board

  of Patent Appeals and Interferences  . .  135

  Priority, right of, under treaty or law  . .  119

  For design applications  . .  172

  Process defined  . .  100

  Process Patent Amendment Act of 1988  . .  287

  Process patentable  . .  101

  Product made by patent process  . .  295

  Property of Patent and Trademark Office  . .  1 , 6

  Public use or sale  . .  102

  Of invention bar to a patent  . .  102

  Publication of international application effect  374

  Publications regarding patents and trademarks  11

  R

  Receiving Office  . .  351 , 361
  , 364 , 367 , 368

  Recording of assignments  . .  261

  Records of Patent and Trademark Office:

  Keeping of  . .  1

  Reexamination order by Commissioner  . .  304

  Reexamination procedure

  Appeal  . .  306

  Certificate of patentability, unpatentability, and

  claim cancellation  . .  307

  Conduct of reexamination proceedings  . .  305

  Determination of issue by Commissioner  . .  303

  Determination of new question  . .  303

  Request  . .  302

  Special dispatch  . .  305

  Reexamination to be made after

  first rejection, if desired  . .  132

  References, to be cited on examination  . .  132

  Refund of money paid by mistake or in excess  42

  Reissue of patents:

  Application fee  . .  41(a)4

  Application may be made by assignee in certain cases  
  251

  By reason of defective claims  . .  251

  Effect of  . .  252

  For unexpired term of original patent  . .  251

  Intervening rights  . .  252

  Of defective patents  . .  251

  To contain no new matter  . .  251

  Rejection, applicant shall be notified of reasons for  
  132

  Remedy for infringement of patent  . .  281

  Removal of records  . . 
  18U.S.C.2071

  Report to Congress, annual  . .  14

  Request for reexamination proceeding  . .  302

  Restoration of patent  . .  155A

  Restrictions on officers and employees of Patent and

  Trademark Office as to interest in patents  4

  Revival if delay unavoidable  . .  133

  Right of foreign priority  . .  365

  Right to compensation because of secrecy order  183

  Rules for taking testimony, Commissioner to establish  
  23

  Rules of practice:

  Authority for  . .  6

  Printing of  . .  11

  S

  Saturday, time for action expiring on  . .  21

  Seal of Patent and Trademark Office  . .  2

  Secrecy of applications  . .  122

  Secrecy of certain inventions  . .  181 - 188

  Secrecy of international application  . .  368

  Secrecy order  . .  181

  Small business firm, defined  . .  200

  Specification(s):

  Contents of  . .  112

  If defective, reissue to correct  . .  251

  Keeping of  . .  1

  Part of patent  . .  154

  Printing of  . .  11 , 41

  Uncertified copies, price of  . .  41

  Specimens, may be required  . .  114

  Statutory invention registration  . .  157

  Subpoenas to witnesses  . .  24

  Suit against the United States  . .  286

  Suit in equity (See Civil action)

  Sunday, time for action expiring on  . .  21

  Surcharge for later filing of fee or oath  .  111

  T

  Term extension:

  For delays due to interference, secrecy orders, and/or

  appellate review  . .  154

  Regulatory review  . .  156

  Term of patent:

  Design  . .  173

  Disclaimer of  . .  253

  Extension  . .  155 , 156

  Period  . .  154

  Restoration  . .  155A

  Testimony, rules for taking  . .  23

  Time:

  Expiring on Saturday, Sunday, or holiday  .  21

  For payment of issue fee  . .  151

  For taking action in Government cases  . .  267

  Limitation on damages  . .  286

  Within which action must be taken  . .  133

  Title of invention  . .  154

  Trademark fees  . .  42(c)

  Trademarks, reference to  . .  1 , 2 , 6
  , 11

  Trademark Trial and Appeal Board pay rate  .  3

  Translation error in international application  375

  U

  Unauthorized disclosure  . .  182

  Unauthorized person may not lawfully assist persons in

  transaction of business before the Office  .  33

  United States as designated office  . .  363

  United States, defined  . .  100

  Unpatented article, penalty for deceptive marking  292

  Use in foreign countries, no bar to grant of patent  
  102

  V

  Verified translation requirement  . .  372

  Voluntary arbitration  . .  294

  W

  Withdrawal of international application  . .  366

  Withholding of patent  . .  181

  Witness:

  Failing to attend or refusing to testify  .  24

  Fees of, interference cases  . .  24

  In interference summoned by clerk of United States

  court  . .  24
  When in contempt, punishment 24

  Appendix R - Patent Rules

 Title 37 - Code of Federal Regulations Patents, Trademarks,
and Copyrights

  CHAPTER 1  -  PATENT AND TRADEMARK OFFICE, DEPARTMENT OF
  COMMERCE

  SUBCHAPTER A - GENERAL

  PATENTS

 Part

 1  Rules of practice in patent cases

 3  Assignment, Recording, and Rights of Assignee

 5  Secrecy of certain inventions and licenses to
export and file applications in foreign countries

 7  Register of Government interests in patents

  PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE

 10  Representation of others before the Patent and
Trademark Office

 15  [Removed and Reserved]

  SUBCHAPTER C - PROTECTION OF FOREIGN MASK WORKS

 150  Requests for Presidential proclamations pursuant to
17 U.S.C. 902(a)(2)

  SUBCHAPTER A - GENERAL

  PART 1 - RULES OF PRACTICE IN PATENT  CASES

  Subpart A - General Provisions

  GENERAL INFORMATION AND CORRESPONDENCE

 Sec

 1.1  Addresses for correspondence with the Patent and
Trademark Office

 1.2  Business to be transacted in writing.

 1.3  Business to be conducted with decorum and courtesy.

 1.4  Nature  of  correspondence  and  signature
requirements.

 1.5  Identification  of  application,  patent,  or
registration.

 1.6  Receipt of correspondence.

 1.7  Times for taking action; expiration on Saturday,
Sunday, or Federal holiday.

 1.8  Certificate of mailing or transmission.

 1.9  Definitions.

 1.10  Filing of correspondence by "Express Mail" with
certificate.

  RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE

 1.11  Files open to the public.

 1.12  Assignment records open to public inspection.

 1.13  Copies and certified copies.

 1.14  Patent applications preserved in confidence.

 1.15  Requests for identifiable records.

  FEES AND PAYMENT OF MONEY

 1.16  National application filing fees.

 1.17  Patent application processing fees.

 1.18  Patent issue fees.

 1.19  Document supply fees.

 1.20  Post - issuance fees.

 1.21  Miscellaneous fees and charges.

 1.22  Fees payable in advance.

 1.23  Method of payment.

 1.24  Coupons.

 1.25  Deposit accounts.

 1.26  Refunds.

 1.27  Statement of status as small entity.

 1.28  Effect on fees of failure to establish status, or
change status, as a small entity.

  Subpart B - National Processing Provisions

  PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR
  AGENT

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

 1.32  [Reserved]

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

 1.34  Recognition for representation.

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

  WHO MAY APPLY FOR A PATENT

 1.41  Applicant for patent.

 1.42  When the inventor is dead.

 1.43  When  the  inventor  is  insane  or  legally
incapacitated.

 1.44  Proof of authority.

 1.45  Joint inventors.

 1.46  Assigned inventions and patents.

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

 1.48  Correction of inventorship.

  THE APPLICATION

 1.51  General requisites of an application.

 1.52  Language, paper, writing, margins.

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

 1.54  Parts of application to be filed together; filing

receipt.

 1.55  Claim for foreign priority.

 1.56  Duty  to  disclose  information  material  to
patentability.

 1.57  [Reserved]

 1.58  Chemical and mathematical formulae and tables.

 1.59  Papers of application with filing date not to be
returned.

 1.60  Continuation  or  divisional  application  for
invention disclosed in a prior nonprovisional application.

 1.61  [Reserved]

 1.62  File wrapper continuing procedure.

 OATH OR DECLARATION

 1.63  Oath or declaration.

 1.64  Person making oath or declaration.

 1.66  Officers authorized to administer oaths.

 1.67  Supplemental oath or declaration.

 1.68  Declaration in lieu of oath.

 1.69  Foreign language oaths and declarations.

 1.70  [Reserved]

  SPECIFICATION

 1.71  Detailed  description  and  specification  of  the
invention.

 1.72  Title and abstract.

 1.73  Summary of the invention.

 1.74  Reference to drawings.

 1.75  Claim(s).

 1.77  Arrangement of application elements.

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

 1.79  Reservation clauses not permitted.

  THE DRAWINGS

 1.81  Drawings required in patent application.

 1.83  Content of drawing.

 1.84  Standards for drawings.

 1.85  Corrections to drawings.

 1.88  [ Removed and Reserved]

  MODELS, EXHIBITS, SPECIMENS

 1.91  Models  not  generally  required  as  part  of
application or patent.

 1.92  Model or exhibit may be required.

 1.93  Specimens.

 1.94  Return of models, exhibits, or specimens.

 1.95  Copies of exhibits.

 1.96  Submission of computer program listings.

 INFORMATION DISCLOSURE STATEMENT

 1.97  Filing of information disclosure statement.

 1.98  Content of information disclosure statement.

 1.99  [Reserved]

  EXAMINATION OF APPLICATIONS

 1.101  Order of examination.

 1.102  Advancement of examination.

 1.103  Suspension of action.

 1.104  Nature of examination; examiner's action.

 1.105  Completeness of examiner's action.

 1.106  Rejection of claims.

 1.107  Citation of references.

 1.108  Abandoned applications not cited.

 1.109  Reasons for allowance.

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

  ACTION BY APPLICANT AND FURTHER CONSIDERATION

 1.111  Reply by applicant or patent owner.

 1.112  Reconsideration.

 1.113  Final rejection or action.

  AMENDMENTS

 1.115  Amendment.

 1.116  Amendments after final action.

 1.117  Amendment and revision required.

 1.118  Amendment of disclosure.

 1.119  Amendment of claims.

 1.121  Manner of making amendments.

 1.122  Entry and consideration of amendments.

 1.123  Amendments to the drawing.

 1.124  Amendment of amendments.

 1.125  Substitute specification.

 1.126  Numbering of claims.

 1.127  Petition from refusal to admit amendment.

  TRANSITIONAL PROVISIONS

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

 AFFIDAVITS OVERCOMING REJECTIONS

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

 1.131  Affidavit or declaration of prior invention to
overcome cited patent or publication.

 1.132  Affidavits or declarations traversing grounds of
rejection.

  INTERVIEWS

 1.133  Interviews.

  TIME FOR RESPONSE BY APPLICANT ABANDONMENT OF APPLICATION

 1.134  Time period for response to an Office action.

 1.135  Abandonment for failure to respond within time
period.

 1.136  Filing of timely responses with petition and fee
for extension of time and extensions of time for cause.

 1.137  Revival of abandoned application.

 1.138  Express abandonment.

 1.139  Revival of provisional application.

  JOINDER OF INVENTIONS IN ONE APPLICATION; RESTRICTION

 1.141  Different inventions in one national application.

 1.142  Requirement for restriction.

 1.143  Reconsideration of requirement.

 1.144  Petition from requirement for restriction.

 1.145  Subsequent presentation of claims for different
invention.

 1.146  Election of species.

  DESIGN PATENTS

 1.151  Rules applicable.

 1.152  Design drawings.

 1.153  Title, description and claim, oath or declaration.

 1.154  Arrangement of specification.

 1.155  Issue and term of design patents.

  PLANT PATENTS

 1.161  Rules applicable.

 1.162  Applicant, oath or declaration.

 1.163  Specification.

 1.164  Claim.

 1.165  Plant drawings.

 1.166  Specimens.

 1.167  Examination.

  REISSUES

 1.171  Application for reissue.

 1.172  Applicants, assignees.

 1.173  Specification.

 1.174  Drawings.

 1.175  Reissue oath or declaration.

 1.176 Examination of reissue.

 1.177  Reissue in divisions.

 1.178  Original patent.

 1.179  Notice of reissue application.

  PETITIONS AND ACTIONS BY THE COMMISSIONER

 1.181  Petition to the Commissioner.

 1.182  Questions not specifically provided for.

 1.183  Suspension of rules.

 1.184  Reconsideration  of  cases  decided  by  former
Commissioners.

  APPEAL TO THE BOARD OF PATENT APPEALS AND  INTERFERENCES

 1.191  Appeal  to  Board  of  Patent  Appeals  and
Interferences.

 1.192  Appellant's brief.

 1.193  Examiner's answer.

 1.194  Oral hearing.

 1.195  Affidavits or declarations after appeal.

 1.196  Decision  by  the  Board  of  Patent  Appeals  and
Interferences.

 1.197  Action following decision.

 1.198  Reopening after decision.

  MISCELLANEOUS PROVISIONS

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

  PROTESTS AND PUBLIC USE PROCEEDINGS

 1.291  Protests  by  the  public  against  pending
applications.

 1.292  Public use proceedings.

 1.293  Statutory invention registration.

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

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

 1.296  Withdrawal of request for publication of statutory
invention registration.

 1.297  Publication of statutory invention registration.

  REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS BY COURT

 1.301  Appeal to U.S.C. ourt of Appeals for the Federal
Circuit.

 1.302  Notice of appeal.

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

 1.304  Time for appeal or civil action.

  ALLOWANCE AND ISSUE OF PATENT

 1.311  Notice of Allowance.

 1.312  Amendments after allowance.

 1.313  Withdrawal from issue.

 1.314  Issuance of patent.

 1.315  Delivery of patent.

 1.316  Application abandoned for failure to pay issue fee.

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

 1.318  Notification of national publication of a patent
based on an international application.

  DISCLAIMER

 1.321  Statutory  disclaimers,  including  terminal
disclaimers.

  CORRECTION OF ERRORS IN PATENT

 1.322  Certificate of correction of Office mistake.

 1.323  Certificate of correction of applicant's mistake.

 1.324  Correction of inventorship in patent.

 1.325  Other mistakes not corrected.

 ARBITRATION AWARDS

 1.331  [Reserved]

 1.332  [Reserved]

 1.333  [Reserved]

 1.334  [Reserved]

 1.335  Filing of notice of arbitration awards.

 AMENDMENT OF RULES

 1.351  Amendments to rules will be published.

 1.352  Publication of notice of proposed amendments.

  MAINTENANCE FEES

 1.362  Time for payment of maintenance fees.

 1.363  Fee address for maintenance fee purposes.

 1.366  Submission of maintenance fees.

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

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

  Subpart C - International Processing Provisions

 GENERAL INFORMATION

 1.401  Definitions of terms under the Patent Cooperation
Treaty.

 1.412  The United States Receiving Office.

 1.413  The  United  States  International  Searching
Authority.

 1.414  The United States Patent and Trademark Office as a
Designated Office or Elected Office.

 1.415  The International Bureau.

 1.416  The  United  States  International  Preliminary
Examining

  Authority.

  WHO MAY FILE AN INTERNATIONAL APPLICATION

 1.421  Applicant for international application.

 1.422  When the inventor is dead.

 1.423  When  the  inventor  is  insane  or  legally
incapacitated.

 1.424  Joint inventors.

 1.425  Filing by other than inventor.

  THE INTERNATIONAL APPLICATION

 1.431  International application requirements.

 1.432  Designation of States and payment of designation
fees.

 1.433  Physical requirements of international application.

 1.434  The request.

 1.435  The description.

 1.436  The claims.

 1.437  The drawings.

 1.438  The abstract.

 FEES

 1.445  International application filing, processing, and
search fees.

 1.446  Refund of international application filing and
processing fees.

  PRIORITY

 1.451  The priority claim and priority document in an
international application.

  REPRESENTATION

 1.455  Representation in international applications.

  TRANSMITTAL OF RECORD COPY

 1.461  Procedures for transmittal of record copy to the
International Bureau.

  TIMING

 1.465  Timing of application processing based on the
priority date.

 1.468  Delays in meeting time limits.

  AMENDMENTS

 1.471  Corrections and amendments during international
processing.

 1.472  Changes in person, name, or address of applicants
and inventors.

 UNITY OF INVENTION

 1.475  Unity  of  invention  before  the  International
Searching Authority, the International Preliminary Examining
Authority, and during the national stage.

 1.476  Determination of unity of invention before the
International Searching Authority.

 1.477  Protest to lack of unity of invention before the
International Searching Authority.

  INTERNATIONAL PRELIMINARY EXAMINATION

 1.480  Demand for international preliminary examination.

 1.482  International preliminary examination fees.

 1.484  Conduct of international preliminary examination.

 1.485  Amendments  by  applicant  during  international
preliminary examination.

 1.487  [Reserved]

 1.488  Determination of unity of invention before the
International Preliminary Examining Authority.

 1.489  Protest to lack of unity of invention before the
International Preliminary Examining Authority.

  NATIONAL STAGE

 1.491  Entry into the national stage.

 1.492  National stage fees.

 1.494  Entering the national stage in the United States of
America as a Designated Office.

 1.495  Entering the national stage in the United States of
America as an Elected Office.

 1.496  Examination of international applications in the
national stage.

 1.497  Oath or declaration under 35 U.S.C. 371(c)(4).

 1.499  Unity of invention during the national stage.

  Subpart D - Reexamination of Patents

  CITATION OF PRIOR ART

 1.501 Citation of prior art in patent files.

  REQUEST FOR REEXAMINATION

 1.510  Request for reexamination.

 1.515  Determination of the request for reexamination.

 1.520  Reexamination  at  the  initiative  of  the
Commissioner.

  REEXAMINATION

 1.525  Order to reexamine.

 1.530  Statement and amendment by patent owner.

 1.535  Reply by requester.

 1.540  Consideration of responses.

 1.550  Conduct of reexamination proceedings.

 1.552  Scope  of  reexamination  in  reexamination
proceedings.

 1.555  Information  material  to  patentability  in
reexamination

  proceedings.

 1.560  Interviews in reexamination proceedings.

 1.565  Concurrent office proceedings.

  CERTIFICATE

 1.570  Issuance  of  reexamination  certificate  after
reexamination proceedings.

  Subpart E - Interferences

 1.601  Scope of rules, definitions.

 1.602  Interest in applications and patents involved in an
interference.

 1.603  Interference between applications; subject matter
of the

  interference.

 1.604  Request for interference between applications by an
applicant.

 1.605  Suggestion of claim to applicant by examiner.

 1.606  Interference between an application and a patent;
subject matter of the interference.

 1.607  Request by applicant for interference with patent.

 1.608  Interference between an application and a patent
prima facie showing by applicant.

 1.609  Preparation of interference papers by examiner.

 1.610  Assignment of interference to examiner - in -
chief, time period for completing interference.

 1.611  Declaration of interference.

 1.612  Access to applications.

 1.613  Lead attorney, same attorney representing different
parties in an interference, withdrawal of attorney or agent.

 1.614  Jurisdiction over interference.

 1.615  Suspension of ex parte prosecution.

 1.616  Sanctions for failure to comply with rules or
order.

 1.617  Summary judgment against applicant.

 1.618  Return of unauthorized papers.

 1.621  Preliminary statement, time for filing, notice of
filing.

 1.622  Preliminary statement, who made invention, where
invention made.

 1.623  Preliminary statement; invention made in United
States.

 1.624  Preliminary statement; invention made abroad.

 1.625  Preliminary statement; derivation by an opponent.

 1.626  Preliminary statement; earlier application.

 1.627  Preliminary  statement;  sealing  before  filing,
opening of statement.

 1.628  Preliminary statement; correction of error.

 1.629  Effect of preliminary statement.

 1.630  Reliance on earlier application.

 1.631  Access  to  preliminary  statement,  service  of
preliminary

  statement.

 1.632  Notice of intent to argue abandonment, suppression,
or

  concealment by opponent.

 1.633  Preliminary motions.

 1.634  Motion to correct inventorship.

 1.635  Miscellaneous motions.

 1.636  Motions, time for filing.

 1.637  Content of motions.

 1.638  Opposition and reply, time for filing opposition
and reply.

 1.639  Evidence in support of motion, opposition, or
reply.

 1.640  Motions, hearing and decision, redeclaration of
interference, order to show cause.

 1.641  Unpatentability discovered by examiner - in -
chief.

 1.642  Addition of application or patent to interference.

 1.643  Prosecution of interference by assignee.

 1.644  Petitions in interferences.

 1.645  Extension  of  time,  late  papers,  stay  of
proceedings.

 1.646  Service of papers, proof of service.

 1.647  Translation of document in foreign language.

 1.651  Setting times for discovery and taking testimony,
parties entitled to take testimony.

 1.652  Judgment for failure to take testimony or file
record.

 1.653  Record and exhibits.

 1.654  Final hearing.

 1.655  Matters considered in rendering a final decision.

 1.656  Briefs for final hearing.

 1.657  Burden of proof as to date of invention.

 1.658  Final decision.

 1.659  Recommendation.

 1.660  Notice  of  reexamination,  reissue,  protest,  or
litigation.

 1.661  Termination of interference after judgment.

 1.662  Request for entry of adverse judgment; reissue
filed by patentee.

 1.663  Status  of  claim  of  defeated  applicant  after

interference.

 1.664  Action after interference.

 1.665  Second interference.

 1.666  Filing of interference settlement agreements.

 1.671  Evidence must comply with rules.

 1.672  Manner of taking testimony.

 1.673  Notice of examination of witness.

 1.674  Persons before whom depositions may be taken.

 1.675  Examination  of  witness,  reading  and  signing
transcript of deposition.

 1.676  Certification  and  filing  by  officer,  marking
exhibits.

 1.677  Form of a transcript of deposition.

 1.678  Transcript of deposition must be filed.

 1.679  Inspection of transcript.

 1.682  Official records and printed publications.

 1.683  Testimony in another interference, proceeding, or
action.

 1.684  Testimony in a foreign country.

 1.685  Errors and irregularities in depositions.

 1.687  Additional discovery.

 1.688  Use of discovery.

 1.690  Arbitration of interferences.

  Subpart F - Extension of Patent Term

 1.701  Extension of patent term due to prosecution delay.

 1.710  Patents subject to extension of the patent term.

 1.720  Conditions for extension of patent term.

 1.730  Applicant for extension of patent term.

 1.740  Application for extension of patent term.

 1.741  Filing date of application.

 1.750  Determination  of  eligibility  for  extension  of
patent term.

 1.760  Interim extension of patent term under 35 U.S.C.
156(e)(2).

 1.765  Duty  of  disclosure  in  patent  term  extension
proceedings.

 1.770  Express withdrawal of application for extension of
patent term.

 1.775  Calculation of patent term extension for a human
drug, antibiotic drug or human biological product.

 1.776  Calculation of patent term extension for a food
additive or color additive.

 1.777  Calculation of patent term extension for a medical
device.

 1.778  Calculation of patent term extension for an animal
drug product.

 1.779  Calculation  of  patent  term  extension  for  a
veterinary biological product.

 1.780  Certificate of extension of patent term.

 1.785  Multiple applications for extension of term of the
same patent or of different patents for the same regulatory
review period for a product.

 1.790  Interim extension of patent term under 35 U.S.C.
156(d)(5).

 1.791  Termination of interim extension granted prior to
regulatory approval of a product for commercial marketing or
use.

  Subpart G - Biotechnology Invention Disclosures

  DEPOSIT OF BIOLOGICAL MATERIAL

 1.801  Biological material.

 1.802  Need or opportunity to make a deposit.

 1.803  Acceptable depository.

 1.804  Time of making an original deposit.

 1.805  Replacement or supplement of deposit.

 1.806  Term of deposit.

 1.807  Viability of deposit.

 1.808  Furnishing of samples.

 1.809  Examination procedures.

  APPLICATION DISCLOSURES CONTAINING NUCLEOTIDE AND/OR AMINO
  ACID SEQUENCES

 1.821  Nucleotide and/or amino acid sequence disclosures
in patent applications.

 1.822  Symbols and format to be used for nucleotide and/or
amino

  acid sequence data.

 1.823  Requirements  for  nucleotide  and/or  amino  acid
sequences as part of the application papers.

 1.824  Form and format for nucleotide and/or amino acid
sequence submissions in computer readable form.

 1.825  Amendments to or replacement of sequence listing
and

  computer readable copy thereof.

 Appendix A - Sample Sequence Listing.

 Appendix B - Headings for Information Items in § 1.823.

  GENERAL INFORMATION AND CORRESPONDENCE

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

  (a)  Except  for  §  1.1(a)(3)  (i)  and  (ii),  all
correspondence intended for the Patent and Trademark Office
must be addressed to either "Commissioner of Patents and
Trademarks, Washington, D.C. 20231" or to specific areas
within the Office as set out in paragraphs (a)(1), (2) and
(3)(iii) of this section. When appropriate, correspondence
should also be marked for the attention of a particular
office or individual.

  (1) Patent correspondence.  All correspondence concerning
patent matters processed by organizations reporting to the
Assistant Commissioner for Patents should be addressed to
"Assistant  Commissioner  for  Patents,  Washington,  D.C.
20231."

  (2)  Trademark  correspondence.  All  correspondence
concerning trademark matters, except for trademark - related
documents sent to the Assignment Division for recordation
and  requests  for  certified  and  uncertified  copies  of
trademark application and registration documents, should be
addressed to "Assistant Commissioner for Trademarks, 2900
Crystal Drive, Arlington, Virginia 22202 - 3513." This
includes correspondence intended for the Trademark Trial and
Appeal Board.

  (3)  Office of Solicitor correspondence .

  (i)  Correspondence  relating  to  pending  litigation
required by court rule or order to be served on the
Solicitor shall be hand - delivered to the Office of the
Solicitor or shall be mailed to: Office of the Solicitor,
P.O. Box 15667, Arlington, Virginia 22215; or such other
address as may be designated in writing in the litigation.
See § § 1.302(c) and 2.145(b)(3) for filing a notice of
appeal to the U.S.C. ourt of Appeals for the Federal
Circuit.

  (ii) Correspondence relating to disciplinary proceedings
pending  before  an  Administrative  Law  Judge  or  the
Commissioner shall be mailed to: Office of the Solicitor,

P.O. Box 16116, Arlington, Virginia 22215.

  (iii) All other correspondence to the Office of the
Solicitor shall be addressed to: Box 8, Commissioner of
Patents and Trademarks, Washington, D.C. 20231.

  (iv) Correspondence improperly addressed to a Post Office
Box specified in paragraphs (a)(3) (i) and (ii) of this
section will not be filed elsewhere in the Patent and
Trademark Office, and may be returned.

  (b)  Letters  and  other  communications  relating  to
international applications during the international stage
and prior to the assignment of a national serial number
should be additionally marked "Box PCT."

  (c) Requests for reexamination should be additionally
marked "Box Reexam."

  (d) Payments of maintenance fees in patents and other
communications  relating  thereto  should  be  additionally
marked "Box M. Fee."

  (e)  Communications  relating  to  interferences  and
applications or patents involved in an interference should
be additionally marked "BOX INTERFERENCE."

  (f) All applications for extension of patent term and any
communications relating thereto intended for the Patent and
Trademark Office should be additionally marked "Box Patent
Ext." When appropriate, the communication should also be
marked to the attention of a particular individual, as where
a decision has been rendered.

  (g) [Reserved]

  (h) In applications under section 1(b) of the Trademark
Act, 15 U.S.C. 1051(b), all statements of use filed under
section 1(d) of the Act, and requests for extensions of time
therefor, should be additionally marked "Box ITU."

  (i) The filing of all provisional applications and any
communications  relating  thereto  should  be  additionally
marked "Box Provisional Patent Application."

  NOTE. - Sections 1.1 to 1.26 are applicable to trademark
cases as well as to national and international patent cases
except for provisions specifically directed to patent cases.
See § 1.9 for definitions of "national application" and
"international application."

  [46 FR 29181, May 29, 1981; para. (d) added, 49 FR
34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (e), 49
FR 48416, Dec.12, 1984, effective Feb. 11, 1985, para. (f)
added, 52 FR 9394, Mar. 24, 1987; para. (g) added, 53 FR
16413, May 9, 1988; para. (h) added, 54 FR 37588, Sept. 11,
1989, effective Nov. 16, 1989; para. (i) added, 60 FR 20195,
Apr. 25, 1995, effective June 8, 1995; para. (a) revised and
para. (g) removed and reserved, 61 FR 56439, Nov. 1, 1996,
effective Dec. 2, 1996]

 § 1.2 Business to be transacted in writing.

  All business with the Patent and Trademark Office should
be  transacted  in  writing.  The  personal  attendance  of

applicants or their attorneys or agents at the Patent and
Trademark Office is unnecessary. The action of the Patent
and Trademark Office will be based exclusively on the
written record in the Office. No attention will be paid to
any alleged oral promise, stipulation, or understanding in
relation to which there is disagreement or doubt.

 § 1.3  Business to be conducted with decorum and courtesy.

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

  [Amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2,
1996]

 § 1.4  Nature of correspondence and signature
requirements.

  (a) Correspondence with the Patent and Trademark office
comprises:

  (1) Correspondence relating to services and facilities of
the  Office,  such  as  general  inquiries,  requests  for
publications supplied by the Office, orders for printed
copies of patents or trademark registrations, orders for
copies  of  records,  transmission  of  assignments  for
recording, and the like, and

  (2)  Correspondence  in  and  relating  to  a  particular
application  or  other  proceeding  in  the  Office.  See
particularly  the rules relating to the filing, processing,
or other proceedings of national applications in Subpart B,
§ 1.31 to 1.378; of international applications in Subpart C,
§ 1.401 to 1.499; of reexamination of patents in Subpart D,
§ 1.501 to 1.570; of interferences in Subpart E; § 1.601 to
1.690; of extension of patent term in Subpart F, § 1.710 to
1.785; and of trademark applications § 2.11 to 2.189.

  (b) Since each application file should be complete in
itself, a separate copy of every paper to be filed in an
application should be furnished for each application to
which the paper pertains, even though the contents of the
papers filed in two or more applications may be identical.

  (c)  Since  different  matters  may  be  considered  by
different branches or sections of the Patent and Trademark
Office, each distinct subject, inquiry, or order should be
contained in a separate letter to avoid confusion and delay
in answering letters dealing with different subjects.

  (d) Each piece of correspondence, except as provided for
in paragraphs (e) and (f) of this section, filed in a patent
or trademark application, reexamination proceeding, patent
or  trademark  interference  proceeding,  patent  file  or
trademark  registration  file,  trademark  opposition
proceeding, trademark cancellation proceeding, or trademark
concurrent  use  proceeding,  which  requires  a  person's
signature, must either:

  (1) Be an original, that is, have an original signature

personally signed in permanent ink by that person; or

  (2)  Be  a  copy,  such  as  a  photocopy  or  facsimile
transmission ( § 1.6(d)), of an original. In the event that
a copy of the original is filed, the original should be
retained as evidence of authenticity. If a question of
authenticity arises, the Patent and Trademark Office may
require submission of the original.

  (e)  Correspondence  requiring  person's  signature  and
relating to registration practice before the Patent and
Trademark Office in patent cases, enrollment and disci
plinary investigations, or disciplinary proceedings must be
submitted with an original signature personally signed in
permanent ink by that person.

  (f) When a document that is required by statute to be
certified must be filed, a copy, including a photocopy or
facsimile  transmission,  of  the  certification  is  not
acceptable.

  [24 FR 10332, Dec. 22, 1959; 43 FR 20461, May 11, 1978;
para. (a), 48 FR 2707, Jan. 20, 1983, effective Feb. 27,
1983; para.(a), 49 FR 48416, Dec. 12, 1984, effective Feb.
11,  1985;  para.  (a)(2),  53  FR  47807,  Nov.  28,  1988,
effective Jan. 1, 1989; paras. (d) - (f) added, 58 FR 54494,
Oct. 22, 1993, effective Nov. 22, 1993]

 § 1.5  Identification of application, patent, or
registration.

  (a) No correspondence relating to an application should
be filed prior to receipt of the application num ber from
the Patent and Trademark Office. When a letter directed to
the Patent and Trademark Office concerns a previously filed
application for a patent, it must identify on the top page
in  a  conspicuous  location,  the  application  number
(consisting of the series code and the serial number; e.g.,
07/123,456), or the serial number and filing date assigned
to that application by the Patent and Trademark Office, or
the international application number of the international
application.  Any  correspondence  not  containing  such
identification will be returned to the sender where a return
address is available. The returned correspondence will be
accompanied with a cover letter which will indicate to the
sender that if the returned correspondence is resubmitted to
the Patent and Trademark Office within two weeks of the mail
date on the cover letter, the original date of receipt of
the correspondence will be considered by the Patent and
Trademark  Office  as  the  date  of  receipt  of  the
correspondence. Applicants may use either the Certificate of
Mailing or Transmission procedure under § 1.8 or the Express
Mail procedure under § 1.10 for resubmissions of returned
correspondence if they desire to have the benefit of the
date of deposit in the United States Postal Service. If the
returned correspondence is not resubmitted within the two -
week period, the date of receipt of the resubmission will be
considered to be the date of receipt of the correspondence.
The  two  -  week  period  to  resubmit  the  returned
correspondence will not be extended. In addition to the
application number, all letters directed to the Patent and
Trademark Office concerning applications for patent should
also state the name of the applicant, the title of the
invention, the date of filing the same, and, if known, the
group art unit or other unit within the Patent and Trademark

Office responsible for considering the letter and the name
of the examiner or other person to which it has been
assigned.

  (b) When the letter concerns a patent other than for
purposes of paying a maintenance fee, it should state the
number and date of issue of the patent, the name of the
patentee, and the title of the invention. For letters
concerning payment of a maintenance fee in a patent, see the
provisions of § 1.366(c).

  (c)  A letter relating to a trademark application should
identify it as such and by the name of the applicant and the
serial number and filing date of the application. A letter
relating to a registered trademark should identify it by the
name of the registrant and by the number and date of the
certificate.

  (d)  A letter relating to a reexamination proceeding
should identify it as such by the number of the patent
undergoing reexamination, the reexamination request control
number assigned to such proceeding, and, if known, the group
art unit and name of the examiner to which it been assigned.

  (e) When a paper concerns an interference, it should
state the names of the parties and the number of the
interference. The name of the examiner - in - chief assigned
to the interference ( § 1.610) and the name of the party
filing the paper should appear conspicuously on the first
page of the paper.

  (f) When a paper concerns a provisional application, it
should identify the application as such and include the
application number.

  [24 FR 10332, Dec 22, 1959; 46 FR 29181, May 29, 1981;
para. (a) 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984;
para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11,
1985; paras. (a) & (b), 53 FR 47807, Nov. 28, 1988,
effective Jan. 1, 1989; para. (a) revised, 58 FR 54494, Oct.
22, 1993, effective Nov. 22, 1993; para. (f) added, 61 FR
42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a)
amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996]

 § 1.6  Receipt of correspondence.

  (a) Date of receipt and Express Mail date of deposit.
Correspondence received in the Patent and Trademark Office
is stamped with the date of receipt except as follows:

  (1) The Patent and Trademark Office is not open for the
filing of correspondence on any day that is a Saturday,
Sunday, or Federal holiday within the District of Columbia.
Except  for  correspondence  transmitted  by  facsimile  as
provided  for  in  paragraph  (a)(3)  of  this  section,  no
correspondence is received in the Patent and Trademark
Office on Saturdays, Sundays, or Federal holidays within the
District of Columbia.

  (2) Correspondence filed in accordance with § 1.10 will
be stamped with the date of deposit as "Express Mail" with
the United States Postal Service.

  (3) Correspondence transmitted by facsimile to the Patent
and Trademark Office will be stamped with the date on which

the complete transmission is received in the Patent and
Trademark Office unless that date is a Saturday, Sunday, or
Federal holiday within the District of Columbia, in which
case the date stamped will be the next succeeding day which
is not a Saturday, Sunday, or Federal holiday within the
District of Columbia.

  (b) Patent and Trademark Office Post Office pouch.  Mail
placed in the Patent and Trademark Office pouch up to
midnight on any day, except Saturdays, Sundays, and Federal
holidays within the District of Columbia, by the post office
at  Washington,  D.C.,  serving  the  Patent  and  Trademark
Office, is considered as having been received in the Patent
and Trademark Office on the day it was so placed in the
pouch by the U.S. Postal Service.

  (c) Correspondence delivered by hand.  In addition to
being mailed, correspondence may be delivered by hand during
hours the Office is open to receive correspondence.

  (d)  Facsimile  transmission.  Except  in  the  cases
enumerated below, correspondence, including authorizations
to  charge  a  deposit  account,  may  be  transmitted  by
facsimile. The receipt date accorded to the correspondence
will be the date on which the complete transmission is
received in the Patent and Trademark Office, unless that
date is a Saturday, Sunday, or Federal holiday within the
District of Columbia. See § 1.6(a)(3). To facilitate proper
processing, each transmission session should be limited to
correspondence to be filed in a single application or other
proceeding before the Patent and Trademark Office. The
application number of a patent or trademark application, the
control  number  of  a  reexamination  proceeding,  the
interference  number  of  an  interference  proceeding,  the
patent number of a patent, or the registration number of a
trademark should be entered as a part of the sender's
identification  on  a  facsimile  cover  sheet.  Facsimile
transmissions are not permitted and, if submitted, will not
be accorded a date of receipt in the following situations:

  (1) Correspondence as specified in § 1.4(e), requiring an
original signature;

  (2) Certified documents as specified in § 1.4(f);

  (3) Correspondence which cannot receive the benefit of
the certificate of mailing or transmission as specified in §
1.8(a)(2)(i)(A) through (D) and (F); 1.8(a)(2)(ii)(A) and
(D); and 1.8(a)(2)(iii)(A) ;

  (4) Drawings submitted under § 1.81, 1.83 through 1.85,
1.152, 1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;

  (5) A request for reexamination under § 1.510;

  (6) Correspondence to be filed in a patent application
subject to a secrecy order under § § 5.1 through 5.8 of this
chapter and directly related to the secrecy order content of
the application;

  (7)  Requests  for  cancellation  or  amendment  of  a
registration under section 7(e) of the Trademark Act, 15
U.S.C. 1057(e); and certificates of registration surrendered
for cancellation or amendment under section 7(e) of the
Trademark Act, 15 U.S.C. 1057(e);

  (8) Correspondence to be filed with the Trademark Trial
and Appeal Board, except the notice of ex parte appeal;

  (9)  Correspondence  to  be  filed  in  an  interference
proceeding which consists of a preliminary statement under §
1.621; a transcript of a deposition under § 1.676 or of
interrogatories,  cross  -  interrogatories,  or  recorded
answers under § 1.684(c); or an evidentiary record and
exhibits under § 1. 653.

  (e) Interruptions in U.S. Postal Service .

  If interruptions or emergencies in the United States
Postal  Service  which  have  been  so  designated  by  the
Commissioner occur, the Patent and Trademark Office will
consider as filed on a particular date in the Office any
correspondence which is:

  (1) Promptly filed after the ending of the designated
interruption or emergency; and

  (2) Accompanied by a statement indicating that such
correspondence would have been filed on that particular date
if it were not for the designated interruption or emergency
in the United States Postal Service. Such statement must be
a verified statement if made by a person other than a
practitioner as defined in § 10.1(r) of this chapter.

  [48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; 48
FR 4285, Jan. 31, 1983; para. (a), 49 FR 552, Jan. 4, 1984,
effective Apr. 1, 1984; revised, 58 FR 54494, Oct. 22, 1993,
effective Nov. 22, 1993; para. (a) amended, 61 FR 56439,
Nov. 1, 1996, effective Dec. 2, 1996]

 § 1.7  Times for taking action; expiration on Saturday,
Sunday, or Federal holiday.

  Whenever periods of time are specified in this part in
days, calendar days are intended. When the day, or the last
day fixed by statute or by or under this part for taking any
action or paying any fee in the Patent and Trademark Office
falls on Saturday, Sunday, or on a Federal holiday within
the District of Columbia, the action may be taken, or the
fee paid, on the next succeeding day which is not a
Saturday, Sunday, or a Federal holiday. See § 1.304 for time
for appeal or for commencing civil action.

  [48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983;
corrected 48 FR 4285, Jan. 31, 1983]

 § 1.8 Certificate of mailing or transmission.

  (a)  Except in the cases enumerated in paragraph (a)(2)
of this section, correspondence required to be filed filed
in the Patent and Trademark Office within a set period of
time will be considered as being timely filed if the
procedure described in this section is followed. The actual
date of receipt will be used for all other purposes.

  (1) Correspondence will be considered as being timely
filed if:

  (i) The correspondence is mailed or transmitted prior to
expiration of the set period of time by being:

  (A) Addressed as set out in § 1.1(a) and deposited with
the U.S. Postal Service with sufficient postage as first
class mail ; or

  (B) Transmitted by facsimile to the Patent and Trademark
Office in accordance with § 1.6(d); and

  (ii) The correspondence includes a certificate for each
piece of correspondence stating the date of deposit or
transmission. The person signing the certificate should have
reasonable basis to expect that the correspondence would be
mailed or transmitted on or before the date indicated.

  (2) The procedure described in paragraph (a)(1) of this
section does not apply to, and no benefit will be given to a
Certificate of Mailing or Transmission on, the following:

  (i)  Relative to Patents and Patent Applications-

  (A)  The  filing  of  a  national  patent  application
specification and drawing or other correspondence for the
purpose of obtaining an application filing date;

  (B) The filing of correspondence in an interference which
an examiner - in - chief orders to be filed by hand or
"Express Mail";

  (C) The filing of agreements between parties to an
interference under 35 U.S.C. 135(c);

  (D)  The  filing  of  an  international  application  for
patent;

  (E) The filing of correspondence in an international
application before the U.S. Receiving Office, the U.S.
International Searching Authority, or the U.S. International
Preliminary Examining Authority;

  (F) The filing of a copy of the international application
and the basic national fee necessary to enter the national
stage, as specified in § 1.494(b) or § 1.495(b).

  (ii)  Relative to Trademark Registrations and Trademark
Applications-

  (A) The filing of a trademark application.

  (B) [Reserved]

  (C) [Reserved]

  (D) [Reserved]

  (E) [Reserved]

  (F) [Reserved]

  (iii)  Relative to Disciplinary Proceedings-

  (A)  Correspondence  filed  in  connection  with  a
disciplinary proceeding under part 10 of this chapter.

  (B) [Reserved.]

  (b) In the event that correspondence is considered timely
filed by being mailed or transmitted in accordance with
paragraph (a) of this section, but not received in the
Patent and Trademark Office, and the application is held to
be abandoned or the proceeding dismissed, terminated, or
decided  with  prejudice,  the  correspondence  will  be
considered  timely  if  the  party  who  forwarded  such
correspondence:

  (1) Informs the Office of the previous mailing or trans
mission of the correspondence promptly after becoming aware
that  the  Office  has  no  evidence  of  receipt  of  the
correspondence,

  (2) Supplies an additional copy of the previously mailed
or transmitted correspondence and certificate, and

  (3) Includes a statement which attests on a personal
knowledge basis or to the satisfaction of the Commissioner
to  the  previous  timely  mailing  or  transmission.  Such
statement must be a verified state ment if made by a person
other than a practitioner as defined in § 10.1(r) of this
chapter.  If  the  correspondence  was  sent  by  facsimile
transmission, a copy of the sending unit's report confirming
transmission may be used to support this statement.

  (c)  The  Office  may  require  additional  evidence  to
determine if the correspondence was timely filed.

  [41 FR 43721, Oct. 4, 1976; 43 FR 20461, May 11, 1978;
para. (a). 47 FR 47381, Oct. 26, 1982, effective Oct. 26,
1982; para. (a),48 FR 2708, Jan. 20, 1983; para. (a) 49 FR
48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a), 49
FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; 52 FR 20046,
May 28, 1987; subparas. (a)(2)(xiv) - (xvi), 54 FR 37588,
Sept. 11, 1989, effective Nov. 16, 1989; revised, 58 FR
54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a)
revised, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996]

 § 1.9  Definitions.

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

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

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

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

  (c) An independent inventor as used in this chapter means
any inventor who (1) has not assigned, granted, conveyed, or
licensed, and (2) is under no obligation under contract or

law to assign, grant, convey, or license, any rights in the
invention to any person who could not likewise be classified
as an independent inventor if that person had made the
invention, or to any concern which would not qualify as a
small business concern or a nonprofit organization under
this section.

  (d) A small business concern as used in this chapter
means any business concern as defined by the regulations of
the Small Business Administration in 13 CFR 121.1301 through
121.1305, which define a small business concern as one whose
number of employees, including those of its affiliates, does
not exceed 500 persons and which has not assigned, granted,
conveyed, or licensed, and is under no obligation under
contract or law to assign, grant, convey, or license, any
rights in the invention to any person who could not be
classified as an independent inventor if that person had
made the invention, or to any concern which would not
qualify  as  a  small  business  concern  or  a  nonprofit
organization under this section. Questions related to size
standards for a small business concern may be directed to:
Small Business Administration, Size Standards Staff, 409
Third Street, SW, Washington, DC 20416.

  (e)  A nonprofit organization as used in this chapter
means (1) a university or other institution of higher
education located in any country; (2) an organi zation of
the type described in section 501(c)(3) of the Internal
Revenue Code of 1954 (26 U.S.C. 501(c)(3)) and exempt from
taxation under section 501(a) of the Internal Revenue Code
(26  U.S.C.  501(a));  (3)  any  nonprofit  scientific  or
educational  organization  qualified  under  a  nonprofit
organization statute of a state of this country (35 U.S.C.
201(i)); or (4) any non - profit organization located in a
foreign  country  which  would  qualify  as  a  nonprofit
organization under paragraphs (e)(2) or (3) of this section
if it were located in this country.

  (f) A small entity as used in this chapter means an
independent inventor, a small business concern, or a non -
profit organization.

  (g) For definitions in interferences see § 1.601.

  (h) A Federal holiday within the District of Columbia as
used in this chapter means any day, except Saturdays and
Sundays, when the Patent and Trademark Office is officially
closed for business for the entire day.

  [43 FR 20461, May 11, 1978; 47 FR 40139, Sept. 10, 1982,
effective Oct. 1, 1982; 47 FR 43275, Sept. 30, 1982,
effective Oct. 1, 1982; para. (d), 49 FR 34724, Aug. 31,
1984, effective Nov. 1, 1984; para. (g), 49 FR 48416, Dec.
12, 1984, effective Feb. 11, 1985; para. (d) revised, 58 FR
54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a)
amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995;
para. (h) added, 61 FR 56439, Nov. 1, 1996, effective Dec.
2, 1996]

 § 1.10  Filing of papers and fees by "Express Mail"
with certificate.

  (a)  Any  correspondence  received  by  the  Patent  and
Trademark Office (Office) that was delivered by the "Express
Mail Post Office to Addressee" service of the United States

Postal Service (USPS) will be considered filed in the Office
on the date of deposit with the USPS. The date of deposit
with the USPS is shown by the "date - in" on the "Express
Mail" mailing label or other official USPS notation. If the
USPS deposit date cannot be determined, the correspondence
will be accorded the Office receipt date as the filing date.
See § 1.6(a).

  (b) Correspondence should be deposited directly with an
employee of the USPS to ensure that the person depositing
the correspondence receives a legible copy of the "Express
Mail" mailing label with the "date - in" clearly marked.
Persons dealing indirectly with the employees of the USPS
(such as by deposit in an "Express Mail" drop box) do so at
the risk of not receiving a copy of the "Express Mail"
mailing label with the desired "date - in" clearly marked.
The paper(s) or fee(s) that constitute the correspondence
should also include the "Express Mail" mailing label number
thereon. See paragraphs (c), (d) and (e) of this section.

  (c) Any person filing correspondence under this section
that was received by the Office and delivered by the
"Express Mail Post Office to Addressee" service of the USPS,
who can show that there is a discrepancy between the filing
date accorded by the Office to the correspondence and the
date of deposit as shown by the "date - in" on the "Express
Mail" mailing label or other official USPS notation, may
petition the Commissioner to accord the correspondence a
filing date as of the "date - in" on the "Express Mail"
mailing label or other official USPS notation, provided
that:

  (1) The petition is filed promptly after the person
becomes aware that the Office has accorded, or will accord,
a filing date other than the USPS deposit date;

  (2) The number of the "Express Mail" mailing label was
placed  on  the  paper(s)  or  fee(s)  that  constitute  the
correspondence prior to the original mailing by "Express
Mail;" and

  (3) The petition includes a true copy of the "Express
Mail" mailing label showing the "date - in," and of any
other official notation by the USPS relied upon to show the
date of deposit.

  (d) Any person filing correspondence under this section
that was received by the Office and delivered by the
"Express Mail Post Office to Addressee" service of the USPS,
who can show that the "date - in" on the "Express Mail"
mailing label or other official notation entered by the USPS
was incorrectly entered or omitted by the USPS, may petition
the Commissioner to accord the correspondence a filing date
as of the date the correspondence is shown to have been
deposited with the USPS, provided that:

  (1) The petition is filed promptly after the person
becomes aware that the Office has accorded, or will accord,
a filing date based upon an incorrect entry by the USPS;

  (2) The number of the "Express Mail" mailing label was
placed  on  the  paper(s)  or  fee(s)  that  constitute  the
correspondence prior to the original mailing by "Express
Mail"; and

  (3) The petition includes a showing which establishes, to
the satisfaction of the Commissioner, that the requested
filing date was the date the correspondence was deposited in
"Express Mail Post Office to Addressee" service prior to the
last scheduled pickup for that day. Any showing pursuant to
this paragraph must be corroborated by evidence from the
USPS or that came into being after deposit and within one
business day of the deposit of the correspondence in the
"Express Mail Post Office to Addressee" service of the USPS.
Any  statement  submitted  in  support  of  such  a  showing
pursuant to this paragraph must be a verified statement if
made by a person other than an employee of the USPS or a
practitioner as defined in § 10.1(r) of this chapter.

  (e) Any person mailing correspondence addressed as set
out in § 1.1(a) to the Office with sufficient postage
utilizing  the  "Express  Mail  Post  Office  to  Addressee"
service of the USPS but not received by the Office, may
petition the Commissioner to consider such correspondence
filed in the Office on the USPS deposit date, provided that:

  (1) The petition is filed promptly after the person
becomes aware that the Office has no evidence of receipt of
the correspondence;

  (2) The number of the "Express Mail" mailing label was
placed  on  the  paper(s)  or  fee(s)  that  constitute  the
correspondence prior to the original mailing by "Express
Mail;"

  (3) The petition includes a copy of the originally
deposited  paper(s)  or  fee(s)  that  constitute  the
correspondence showing the number of the "Express Mail"
mailing label thereon, a copy of any returned postcard
receipt, a copy of the "Express Mail" mailing label showing
the "date - in," a copy of any other official notation by
the USPS relied upon to show the date of deposit, and, if
the requested filing date is a date other than the "date -
in" on the "Express Mail" mailing label or other official
notation  entered  by  the  USPS,  a  showing  pursuant  to
paragraph (d)(3) of this section that the requested filing
date was the date the correspondence was deposited in
"Express Mail Post Office to Addressee" service prior to the
last scheduled pickup for that day; and

  (4) The petition includes a statement which establishes,
to  the  satisfaction  of  the  Commissioner,  the  original
deposit of the correspondence, and that the copies of the
correspondence, the copy of the "Express Mail" mailing
label, the copy of any returned postcard receipt, and any
official notation entered by the USPS are true copies of the
originally mailed correspondence and original "Express Mail"
mailing  label,  returned  postcard  receipt,  and  official
notation entered by the USPS. Such statement must be a
verified  statement  if  made  by  a  person  other  than  a
practitioner as defined in § 10.1(r) of this chapter.

  (f)  The  Office  may  require  additional  evidence  to
determine if the correspondence was deposited as "Express
Mail" with the USPS on the date in question.

  [48 FR 2708, Jan. 20, 1983, added effective Feb. 27,
1983; 48 FR 4285, Jan. 31, 1983, paras. (a) & (c), 49 FR
552, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a) - (c)
revised and paras. (d) - (f) added, 61 FR 56439, Nov. 1,

1996, effective Dec. 2, 1996]

  RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE

 § 1.11 Files open to the public.

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

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

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

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

  (e) The file of any interference involving a patent, a
statutory invention registration, a reissue application, or
an application on which a patent has been issued or which
has been published as a statutory invention registration, is
open to inspection by the public, and copies may be obtained
upon paying the fee therefor, if:

  (1) The interference has terminated or

  (2) An award of priority or judgment has been entered as
to all parties and all counts.

  [42 FR 5593, Jan. 28, 1977; 43 FR 28477, June 30, 1978;
46 FR 29181, May 29, 1981,para. (c), 47 FR 41272, Sept. 17,
1982, effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec.
12, 1984, effective Feb. 11, 1985; paras. (a), (b,) and (e),
50 FR 9278, Mar. 7, 1985, effective May 8, 1985; para. (e)
revised, 60 FR 14488, Mar. 17, 1995, effective Mar. 17,
1995]

 § 1.12  Assignment records open to public inspection.

  (a)(1) Separate assignment records are maintained in the
Patent and Trademark Office for patents and trademarks. The
assignment records, relating to original or reissue patents,
including digests and indexes, for assignments recorded on
or after May 1, 1957, and assignment records relating to
pending or abandoned trademark applications and to trademark
registrations, for assignments recorded on or after January
1, 1955, are open to public inspection at the Patent and
Trademark Office, and copies of those assignment records may
be obtained upon request and payment of the fee set forth in
§ 1.19 and § 2.6 of this chapter.

  (2) All records of assignments of patents recorded before
May 1, 1957, and all records of trademark assignments
recorded before January 1, 1955, are maintained by the
National Archives and Records Administration (NARA). The
records  are  open  to  public  inspection.  Certified  and
uncertified copies of those assignment records are provided
by NARA upon request and payment of the fees required by
NARA.

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

  (c) Any request by a member of the public seeking copies
of any assignment records of any pending or abandoned patent
application preserved in confidence under § 1.14, or any
information with respect thereto, must:

  (1) Be in the form of a petition accompanied by the
petition fee set forth in § 1.17(i); or

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

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

  [47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982;
paras. (a) and (c), 54 FR 6893, Feb. 15, 1989, effective
April 17, 1989; paras. (a) and (d), 56 FR 65142, Dec. 13,
1991, effective Dec. 16, 1991; paras. (a)(1) and (d), 57 FR
29641, July 6, 1992, effective Sept. 4, 1992; para. (a)(2)
added, 57 FR 29641, July 6, 1992, effective Sept. 4, 1992;
para. (c) amended, 60 FR 20195, Apr. 25, 1995, effective
June 8, 1995; para. (c) amended, 61 FR 42790, Aug. 19, 1996,
effective Sept. 23, 1996]

 § 1.13 Copies and certified copies.

  (a) Non - certified copies of patents and trademark
registrations and of any records, books, papers, or drawings
within the jurisdiction of the Patent and Trademark Office
and open to the public, will be furnished by the Patent and
Trademark Office to any person, and copies of other records
or papers will be furnished to persons entitled thereto,
upon payment of the fee therefor.

  (b)  Certified  copies  of  the  patents  and  trademark
registrations and of any records, books, papers, or drawings
within the jurisdiction of the Patent and Trademark Office
and open to the public or persons entitled thereto will be
authenticated by the seal of the Patent and Trademark Office
and certified by the Commissioner, or in his name attested
by an officer of the Patent and Trademark Office authorized
by the Commissioner, upon payment of the fee for the
certified copy.

  [Revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3,
1994]

 § 1.14 Patent applications preserved in confidence.

  (a)(1) Patent applications are generally preserved in
confidence pursuant to 35 U.S.C. 122. No information will be
given concerning the filing, pendency, or subject matter of
any application for patent, and no access will be given to,
or copies furnished of, any application or papers relating
thereto, except as set forth in this section.

  (2) Status information, which includes information such
as  whether  the  application  is  pending,  abandoned,  or
patented, as well as the application number and filing date,
may be supplied:

  (i) Concerning an application or any application claiming
the benefit of the filing date of the application, if the
application has been identified by application number or
serial  number  and  filing  date  in  a  published  patent
document,

  (ii) Concerning the national stage application or any
application claiming the benefit of the filing date of a
published international application, if the United States of
America has been indicated as a Designated State in the
international application, or

  (iii) When it has been determined by the Commissioner to
be necessary for the proper conduct of business before the
Office.

  (3) Access to, or copies of, an application may be
provided:

  (i) When the application is open to the public as
provided in § 1.11(b),

  (ii) When written authority in that application from the
applicant, the assignee of the application, or the attorney
or agent of record has been granted,

  (iii) When it has been determined by the Commissioner to
be necessary for the proper conduct of business before the

Office, or

  (iv) To any person on written request, without notice to
the  applicant,  when  the  application  is  abandoned  and
available and is:

  (A) Referred to in a U.S. patent,

  (B)  Referred  to  in  an  application  open  to  public
inspection,

  (C) An application which claims the benefit of the filing
date of an application open to public inspection, or

  (D) An application in which the applicant has filed an
authorization to lay open the complete application to the
public.

  (b)  Complete  applications  (  §  1.51(a))  which  are
abandoned may be destroyed and hence may not be available
for access or copies as permitted by paragraph (a)(3)(iv) of
this section after 20 years from their filing date, except
those to which particular attention has been called and
which have been marked for preservation.

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

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

  (e)  Any request by a member of the public seeking
access  to,  or  copies  of,  any  pending  or  abandoned
application preserved in confidence pursuant to paragraph
(a) of this section, or any papers relating thereto, must:

  (1) Be in the form of a petition and be accompanied by

the petition fee set forth in § 1.17(i); or

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

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

  [42 FR 5593, Jan. 28, 1977; 43 FR 20462, May 11, 1978;
para. (e) added, 47 FR 41273, Sept. 17, 1982, effective Oct.
1, 1982; para. (b), 49 FR 552, Jan. 4, 1984, effective Apr.
1, 1984; para. (d), 49 FR 48416, Dec. 12, 1984, effective
Feb. 11, 1985; para. (b), 50 FR 9378, Mar. 7, 1985,
effective May 8, 1985: 53 FR 23733, June 23, 1988; para.
(e), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989;
para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective
Jan. 3, 1994; para. (e) amended, 60 FR 20195, Apr. 25, 1995,
effective June 8, 1995; paras. (a), (b) and (e) amended, 61
FR 42790; Aug. 19, 1996, effective Sept. 23, 1996]

 § 1.15 Requests for identifiable records.

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

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

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

  [32 FR 13812, Oct. 4, 1967; 34 FR 18857, Nov. 26, 1969;
amended 53 FR 47685, Nov. 25, 1988, effective Dec. 30, 1988]

  FEES AND PAYMENT OF MONEY

 § 1.16 National application filing fees.

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

  By a small entity ( § 1.9(f)) . . $385.00

  By other than a small entity . . 770.00

  (b) In addition to the basic filing fee in an original

application, except provisional applications, for filing or
later presentation of each independent claim in excess of 3:

  By a small entity ( § 1.9(f) . . 40.00

  By other than a small entity . . 80.00

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

  By a small entity ( § 1.9(f) . . 11.00

  By other than a small entity . . 22.00

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

  By a small entity ( § 1.9(f)) . . 130.00

  By other than a small entity . . 260.00

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

  By a small entity ( § 1.9(f)) . . 65.00

  By other than a small entity . . 130.00

  (f) Basic fee for filing each design application:

  By a small entity ( § 1.9(f)) . . 160.00

  By other than a small entity . . 320.00

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

  By a small entity ( § 1.9(f)) . . 265.00

  By other than a small entity . . 530.00

  (h) Basic fee for filing each reissue application:

  By a small entity ( § 1.9(f)) . . 385.00

  By other than a small entity . . 770.00

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

  By a small entity ( § 1.9(f)) . . 40.00

  By other than a small entity . . 80.00

  (j) In addition to the basic filing fee in a reissue
application, for filing or later presentation of each claim

(whether independent or dependent) in excess of 20 and also
in excess of the number of claims in the original patent,
(Note that § 1.75(c) indicates how multiple dependent claims
are considered for fee purposes.):

  By a small entity ( § 1.9(f)) . . 11.00

  By other than a small entity . . 22.00

  (k) Basic fee for filing each provisional application:

  By a small entity ( § 1.9(f)) . . 75.00

  By other than a small entity . . 150.00

  (1) Surcharge for filing the basic filing fee or cover
sheet ( § 1.51(a)(2)(i))) on a date later than the filing
date of the provisional application:

  By a small entity ( § 1.9(f)) . . 25.00

  By other than a small entity . . 50.00

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

  (Note: See § § 1.445, 1.482, and 1.492 for international
application filing and processing fees.)

  [Added 47 FR 41273, Sept. 17, 1982, effective date Oct.
1, 1982; 50 FR 31824, Aug. 6, 1985, effective date Oct. 5,
1985; paras. (a), (b), (d) - (i), 54 FR 6893, Feb. 15, 1989,
effective Apr. 17, 1989; paras. (a) - (j), 56 FR 65142, Dec.
13, 1991, effective Dec. 16, 1991; paras. (a) - (d) and (f)
- (j), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992;
paras. (a), (b), (d) and (f) - (i), 59 FR 43736, Aug. 25,
1994, effective Oct. 1, 1994; paras. (a) - (g) amended and
paras. (k) and (1) added, 60 FR 20195, Apr. 25, 1995,
effective June 8, 1995; paras. (a), (b), (d), & (f) - (i)
amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995;
paras. (a), (b), (d), and (f) - (i) amended and para. (m)
added, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996]

 § 1.17  Patent application processing fees.

  (a)  Extension  fee  for  response  within  first  month
pursuant to § 1.136(a):

  By a small entity ( § 1.9(f)) . . $55.00 By
other than a small entity . . 110.00

  (b)  Extension  fee  for  response  within  second  month
pursuant to § 1.136(a):

  By a small entity ( § 1.9(f) . . 195.00

  By other than a small entity . . 390.00

  (c)  Extension  fee  for  response  within  third  month
pursuant to § 1.136(a):

  By a small entity ( § 1.9(f)) . . 465.00

  By other than a small entity . . 930.00

  (d)  Extension  fee  for  response  within  fourth  month
pursuant to § 1.136(a):

  By a small entity ( § 1.9(f)) . . 735.00

  By other than a small entity . . 1,470.00

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

  By a small entity ( § 1.9(f)) . . 150.00

  By other than a small entity . . 300.00

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

  By a small entity ( § 1.9(f)) . . 150.00

  By other than a small entity . . 300.00

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

  By a small entity ( § 1.9(f)) . . 130.00

  By other than a small entity . . 260.00

  (h) For filing a petition to the Commissioner under a
section listed below which refers to this para graph . .
. . 130.00

  § 1.47 - for filing by other than all the inventors or a
person not the inventor

  § 1.48 - for correction of inventorship, except in
provisional applications

  § 1.84 - for accepting color drawings or photo graphs

  § 1.182 - for decision on questions not specifically
provided for

  § 1.183 - to suspend the rules

  § 1.295 - for review of refusal to publish a statutory
invention registration

  § 1.377 - for review of decision refusing to accept and
record  payment  of  a  maintenance  fee  filed  prior  to
expiration of patent

  § 1.378(e) - for reconsideration of decision on petition
refusing to accept delayed payment of maintenance fee in
expired patent

  § 1.644(e) - for petition in an interference

  § 1.644(f) - for request for reconsideration of a

decision on petition in an interference

  § 1.666(c) - for late filing of interference settlement
agreement

  § § 5.12, 5.13 and 5.14 - for expedited handling of a
foreign filing license

  § 5.15 - for changing the scope of a license

  § 5.25 - for retroactive license

  (i) For filing a petition to the Commissioner un der a
section listed below which refers to this paragraph . .
130.00

  § 1.12 - for access to an assignment record

  § 1.14 - for access to an application

  § 1.53 - to accord a filing date, except in provisional
applications

  § 1.55 - for entry of late priority papers

  § 1.60 - to accord a filing date

  § 1.62 - to accord a filing date

  § 1.97(d) - to consider an information disclosure
statement

  § 1.102 - to make application special

  § 1.103 - to suspend action in application

  § 1.177 - for divisional reissues to issue separately

  § 1.312 - for amendment after payment of issue fee

  § 1.313 - to withdraw an application from issue

  § 1.314 - to defer issuance of a patent

  § 1.666(b) - for access to interference settlement
agreement

  § 3.81 - for patent to issue to assignee, assignment
submitted after payment of the issue fee

  (j) For filing a petition to institute a public use
proceeding under § 1.292 . . 1,470.00(k) For processing an
application filed with a specification in a non - English
language ( § 1.52(d)) . . 130.00

  (1) For filing a petition:

  (1)  For  the  revival  of  an  unavoidably  abandoned
application under 35 U.S.C. 111, 133, 364, or 371 or

  (2) For delayed payment of the issue fee under 35 U.S.C.
151:

  By a small entity ( § 1.9(f) . . 55.00

  By other than a small entity . . 110.00

  (m) For filing a petition:

  (1)  For  revival  of  an  unintentionally  abandoned
application, or

  (2) For the unintentionally delayed payment of the fee
for issuing a patent:

  By a small entity ( § 1.9(f)) . . 645.00

  By other than a small entity . . 1,290.00 (n)
For  requesting  publication  of  a  statutory  invention
registration prior to the mailing of the first examiner's
action pursuant to § 1.104 - $900.00 reduced by the amount
of the application basic filing fee paid.

  (o) For requesting publication of a statutory invention
registration after the mailing of the first examiner's ac
tion pursuant to § 1.104 - $1,790.00 reduced by the amount
of the application basic filing fee paid.

  (p)  For  submission  of  an  information  disclo  sure
statement under § 1.97(c) . . 230.00

  (q) For filing a petition to the Commissioner under a
section listed below which refers to this paragraph . .
. . 50.00

  § 1.48 - for correction of inventorship in a provisional
application

  § 1.53 - to accord a provisional application a filing
date or to convert an application filed under § 1.53(b)(1)
to a provisional application

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

  By a small entity ( § 1.9(f)) . . 385.00

  By other than a small entity . . 770.00

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

  By a small entity ( § 1.9(f)) . . 385.00

  By other than a small entity . . 770.00

  [Added 47 FR 41273, Sept. 17, 1982, effective Oct. 1,
1982 ; para. (h), 48 FR 2708, Jan. 20, 1983, effective Feb.
27, 1983; para. (h), 49 FR 13461, Apr. 4, 1984, effective
June 4, 1984; para. (h), 49 FR 34724, Aug. 31, 1984,
effective Nov. 1, 1984; paras. (e), (g), (h) and (i), 49 FR
48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (h),
(n) and (c), 50 FR 9379, Mar. 7, 1985, effective May 8,
1985;50 FR 31824, Aug. 6, 1985, effective Oct. 5, 1985;
paras. (a) - (m), 54 FR 6893, Feb. 15, 1989, 54 FR 9431,
March 7, 1989, effective Apr. 17, 1989; para. (i)(1), 54 FR
47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a) -
(o), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991;
para. (i)(1), 57 FR 2021, Jan. 17, 1992, effective March 16,
1992; para. (p) added, 57 FR 2021, Jan. 17, 1992, effective

March 16, 1992; para. (i)(1), 57 FR 29642, July 6, 1992,,
effective Sept. 4, 1992; corrected 57 FR 32439, July 22,
1992; paras. (b) - (g), (j), and (m) - (o), 57 FR 38190,
Aug. .21, 1992, effective Oct. 1, 1992; para. (h), 58 FR
38719, July 20, 1993, effective Oct. 1, 1993; paras. (b) -
(g), (j) and (m) - (p), 59 FR 43736, Aug. 25, 1994,
effective Oct. 1, 1994; paras. (h) & (i) amended and paras.
(q) - (s) added, 67 FR 20195, Apr. 25, 1995, effective June
8, 1995; paras. (b) - (g), (j), (m) - (p), (r), & (s)
amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995;
paras. (b) - (g), (j), (m) - (p), (r) and (s) amended, 61 FR
39585, July 30, 1996, effective Oct. 1, 1996]

 § 1.18 Patent issue fees.

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

  By a small entity ( § 1.9(f)) . . $645.00

  By other than a small entity . . 1,290.00

  (b) Issue fee for issuing a design patent:

  By a small entity ( § 1.9(f)) . . 220.00

  By other than a small entity . . 440.00

  (c) Issue fee for issuing a plant patent:

  By a small entity ( § 1.9(f)) . . 325.00

  By other than a small entity . . 650.00

  [Added 47 FR 41273, Sept. 17, 1982, effective Oct. 1,
1982; 50 FR 31824, Aug. 6, 1985, effective Oct. 5, 1985;
revised 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989;
revised, 56 FR 65142, Dec. 13. 1991, effective Dec. 16,
1991; paras. (a) - (c), 57 FR 38190, Aug. 21, 1992,
effective Oct. 1, 1992; revised, 59 FR 43736, Aug. 25, 1994,
effective Oct. 1, 1994; amended, 60 FR 41018, Aug. 11,
19995, effective Oct. 1, 1995; amended, 61 FR 39585, July
30, 1996, effective Oct. 1, 1996]

 § 1.19 Document supply fees.

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

  (a) Uncertified copies of patents:

  (1) Printed copy of a patent, including a design patent,
statutory invention registration, or defensive publication
document, except plant or statutory invention registration
containing color drawing:

  (i) Regular service . . $3.00

  (ii) Overnight delivery to PTO Box or overnight fax . .
. . . 6.00

  (iii) Expedited service for copy ordered by expedited
mail or fax delivery service and delivered to the customer
within two workdays . . 25.00

  (2) Printed copy of a plant patent in color . . 12.00

  (3) Copy of a utility patent or statutory inven tion
registration containing color drawing (see § 1.84(a)(2)) . .
. 24.00

  (b) Certified and uncertified copies of Office documents:

  (1) Certified or uncertified copy of patent application
as filed:

  (i) Regular service . . 15.00

  (ii) Expedited regular service . . 30.00

  (2) Certified or uncertified copy of patent - related
file wrapper and contents . . 150.00

  (3) Certified or uncertified copy of Office records, per
document except as otherwise provided in this section ...
25.00

  (4)  For  assignment  records,  abstract  of  title  and
certification, per patent . . 25.00

  (c) Library service (35 U.S.C. 13): For providing to
libraries copies of all patents issued annually, per annum .
. . . 50.00

  (d) For list of all United States patents and statutory
invention registrations in a subclass . . 3.00

  (e) Uncertified statement as to status of the payment of
maintenance fees due on a patent or expiration of a patent .
. . . 10.00

  (f) Uncertified copy of a non - United States patent
document, per document . . 25.00

  (g) To compare and certify copies made from Patent and
Trademark Office records but not prepared by the Patent and
Trademark Office, per copy of document . . 25.00

  (h) Additional filing receipts; duplicate; or corrected
due to applicant . . 25.00 [Added 47 FR 41273, Sept.
17, 1982, effective date Oct. 1, 1982; para. (b), 49 FR 552,
Jan. 4, 1984, effective date Apr. 1, 1984; paras. (f) and
(g) added, 49 FR 34724, Aug. 31, 1984, effective date Nov.
1, 1984; paras. (a) and (c), 50 FR 9379, Mar. 7, 1985,
effective date May 8.1985; 50 FR 31825, Aug. 6, 1985,
effective date Oct. 5, 1985; revised 54 FR 6893, Feb. 15,
1989, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989;
revised 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991;
paras. (b)(4), (f) and (h),57 FR 38190, Aug. 21, 1992,
effective Oct.1, 1992; para. (a)(3), 58 FR 38719, July 20,
1993,  effective  Oct.  1,  1993;  paras.  (a)(1)(ii),
(a)(1)(iii), (b)(1)(i), & (b)(1)(ii) amended, 60 FR 41018,
Aug. 11, 1995, effective Oct. 1, 1995]

 § 1.20 Post - issuance fees.

  (a)  For  providing  a  certificate  of  correction  for
applicant's mistake ( § 1.323) . . $100.00

  (b) Petition for correction of inventorship in

  patent ( § 1.324) . . 130.00

  (c) For filing a request for

  reexamination ( § 1.510(a)) . . 2,460.00

  (d) For filing each statutory disclaimer ( § 1.321):

  By a small entity ( § 1.9(f)) . . 55.00

  By other than a small entity . . 110.00

  (e) For maintaining an original or reissue patent, except
a design or plant patent, based on an application filed on
or after December 12, 1980, in force beyond four years; the
fee is due by three years and six months after the original
grant

  By small entity ( § 1.9(f)) . . 510.00

  By other than a small entity . . 1,020.00

  (f) For maintaining an original or reissue patent, except
a design or plant patent, based on an application filed on
or after December 12, 1980, in force beyond eight years; the
fee is due by seven years and six months after the original
grant

  By a small entity ( § 1.9(f)) . . 1,025.00

  By other than a small entity . . 2,050.00

  (g) For maintaining an original or reissue patent, except
a design or plant patent, based on an application filed on
or after December 12, 1980, in force beyond twelve years;
the fee is due by eleven years and six months after the
original grant

  By a small entity ( § 1.9(f)) . . 1,540.00

  By other than a small entity . . 3,080.00

  (h) Surcharge for paying a maintenance fee during the six
- month grace period following the expiration of three years
and six months, seven years and six months and eleven years
and six months after the date of the original grant of a
patent based on an application filed on or after December
12, 1980

  By a small entity ( § 1.9(f)) . . 65.00

  By other than a small entity . . 130.00

  (i) Surcharge for accepting a maintenance fee after
expiration of a patent for non - timely payment of a
maintenance fee where the delay in payment is shown to the
satisfaction of the Commissioner to have been

  (1) unavoidable . . 680.00

  (2) unintentional . . 1,600.00

  (j) For filing an application for extension of the term
of a patent

  (1) Application for extension under § 1.740 . .
. . $1,090.00

  (2) Initial application for interim extension under §
1.790 . . $410.00

  (3) Subsequent application for interim extension under §
1.790 . . $210.00

  [Added 47 FR 41273, Sept. 17, 1982, effective date Oct.
1, 1982; paras. (k), (1) and (m) added, 49 FR 34724, Aug.
31, 1984, effective date Nov. 1, 1984; paras. (c), (f), (g)
and (m), 50 FR 9379, Mar. 7, 1985, effective date May 8,
1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5,
1985; 51 FR 28057, Aug. 4, 1986; 52 FR 9394, Mar. 24, 1987;
paras. (a) - (n), 54 FR 6893, Feb. 15, 1989, 54 FR 8053,
Feb. 24, 1989, effective Apr. 17, 1989; revised 56 FR 65142,
Dec. 13, 1991, effective Dec. 16, 1991; paras. (a), (c), (e)
- (g) and (i), 57 FR 38190, Aug. 21, 1992, effective Oct. 1,
1992; para. (i), 58 FR 44277, Aug. 20, 1993, effective Sept.
20, 1993; paras. (c), (e) - (g), (i)(1) and (j), 59 FR
43736, Aug. 25, 1994, effective Oct. 1, 1994; para. (j)
revised, 60 FR 25615, May 12, 1995, effective July 11, 1995;
paras. (c), (e) - (g), (i)(2), & (j)(1) amended, 60 FR
41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a),
(e) - (g), (i)(1), (i)(2), and (j)(1) - (j)(3) amended, 61
FR 39585, July 30, 1996, effective Oct. 1, 1996]

 § 1.21  Miscellaneous fees and charges.

  The Patent and Trademark Office has established the
following fees for the services indicated:

  (a) Registration of attorneys and agents:

  (1) For admission to examination for registration to
practice:

  (i) Application fee (non - refundable) . . 40.00

  (ii) Registration examination fee . . 300.00

  (2) On registration to practice . . 100.00

  (3) For reinstatement to practice . . 40.00

  (4) For certificate of good standing as an attorney or
agent . . 10.00

  Suitable for framing . . 20.00

  (5) For review of decision of the Director of Enrollment
and Discipline under § 10.2(c) . . 130.00

  (6) For requesting regrading of an examination under §
10.7(c ):

  (i)  Regrading  of  morning  section  (PTO  Practice  and
Procedure) . . 225.00

  (ii) Regrading of afternoon section (Claim Drafting) . .
. . . 530.00

  (b) Deposit accounts:

  (1) For establishing a deposit account . . 10.00

  (2) Service charge for each month when the balance at the
end of the month is below $1,000 . . 25.00

  (3) Service charge for each month when the balance at the
end of the month is below $300 for restricted subscription
deposit accounts used exclusively for subscription order of
patent copies as issued . . 25.00

  (c) Disclosure document: For filing a disclosure

 document . . 10.00

  (d) Delivery box: Local delivery box rental, per

 annum . . 50.00

  (e) International - type search reports:: For preparing
an international - type search report of an international
type search made at the time of the first action on the
merits in a national patent application . . 40.00

  (f) [Reserved]

  (g) Self - service copy charge, per page . . 0.25(h)
For recording each assignment, agreement, or other paper
relating to the property in a patent or application, per
property . . 40.00(i) Publication in Official
Gazette: For publication in the Official Gazette of a notice
of the availability of an application or a patent for
licensing or sale, each application or patent . .
25.00

  (j) Labor charges for services, per hour or fraction
thereof . . 30.00

  (k) For items and services, that the Commissioner finds
may be supplied, for which fees are not specified by statute
or by this part, such charges as may be determined by the
Commissioner with respect to each such item or service . .
Actual cost

  (1)  For  processing  and  retaining  any  application
abandoned pursuant to § 1.53(d)(1) unless the required basic
filing fee has been paid . . 130.00

  (m) For processing each check returned "unpaid" by a bank
. . . 50.00

  (n) For handling an incomplete or improper application
under § § 1.53(c), 1.60, or 1.62 . . 130.00

  (o) Marginal cost, paid in advance, for each hour of
terminal session time, including print time, using Automated
Patent System full - text search capabilities, prorated for
the actual time used. The Commissioner may waive the payment
by an individual for access to the Automated Patent System
full - text search capability (APS - Text) upon a showing of
need or hardship and if such waiver is in the public
interest . . 40.00

  [Added 47 FR 41274, Sept. 17, 1982, effective date Oct.
1, 1982; paras. (b) and (1), 49 FR 553, Jan. 4, 1984,

effective date Apr. 1, 1984; paras. (a)(5) and (6) added, 50
FR 5171, Feb. 6, 1985, effective date Apr. 8, 1985; 50 FR
31825, Aug. 6, 1985, effective date Oct. 5, 1985; paras.
(a), (b)(1), (d) - (j), (l) - (m), 54 FR 6893, Feb. 15,
1989, 54 FR 8053, Feb. 24, 1989, 54 FR 9432, March 7, 1989,
effective Apr. 17, 1989; para. (n) added 54 FR 47518, Nov.
15, 1989, effective Jan. 16, 1990; paras. (o) - (q) added 54
FR 50942, Dec.11, 1989, effective Feb. 12, 1990; paras. (a)
- (c), (e) - (h), (j) - (l) & (n) amended, 56 FR 65142, Dec.
13, 1991, effective Dec. 16, 1991; paras. (p) and (q)
deleted, 56 FR 65142, Dec. 13, 1991, effective Dec. 16,
1991; paras. (a)(1), (a)(5), (a)(6), (b)(2), (b)(3), (e) and
(i), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992;
para. (p) added, 57 FR 38190, Aug. 21, 1992, effective Oct.
1, 1992; para. (p) deleted, 59 FR 43736, Aug. 25, 1994,
effective Oct. 1, 1994; para. (l) amended, 60 FR 20195, Apr.
25, 1995, effective June 8, 1995; para. (a)(1) amended, 60
FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras.
(a)(1), (a)(3), and (a)(6) revised, 61 FR 39585, July 30,
1996, effective Oct. 1, 1996]

 § 1.22  Fees payable in advance.

  (a) Patent and trademark fees and charges payable to the
Patent and Trademark Office are required to be paid in
advance, that is, at the time of requesting any action by
the Office for which a fee or charge is payable with the
exception that under § 1.53 applications for patent may be
assigned a filing date without payment of the basic filing
fee.

  (b) All patent and trademark fees paid to the Patent and
Trademark Office should be itemized in each indi vidual
application, patent, or other proceeding in such a manner
that it is clear for which purpose the fees are paid.

  [48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983]

 § 1.23  Method of payment.

  All payments of money required for Patent and Trademark
Office  fees,  including  fees  for  the  processing  of
international applications ( § 1.445), should be made in
U.S. specie, Treasury notes, national bank notes, post
office money orders, or by certified check. If sent in any
other form, the Office may delay or cancel the credit until
collection is made. Money orders and checks must be made
payable to the Commissioner of Patents and Trademarks.
Remittances from foreign countries must be payable and
immediately negotiable in the United States for the full
amount of the fee required. Money sent by mail to the Patent
and Trademark Office will be at the risk of the sender;
letters containing money should be registered.

  [43 FR 20462, May 11, 1978]

 § 1.24  Coupons.

  Coupons in denominations of three dollars, for the
purchase  of  patents,  designs,  defensive  publications,
statutory  invention  registrations,  and  trademark
registrations are sold by the Patent and Trademark Office
for the convenience of the general public; these coupons may
not be used for any other purpose. The three - dollar
coupons are sold individually and in books of 50 for

$150.00. These coupons are good until used; they may be
transferred but cannot be redeemed.

  [47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 48
FR 2708, Jan. 20, 1983, effective date Feb. 27, 1983; 50 FR
31825, Aug. 6, 1985, effective Oct. 5, 1985; 51 FR 28057,
Aug. 4, 1986; 56 FR 65142, Dec. 13, 1991, effective Dec. 16,
1991]

 § 1.25  Deposit accounts.

  (a) For the convenience of attorneys, and the general
public in paying any fees due, in ordering services offered
by the Office, copies of records, etc. deposit ac counts may
be established in the Patent and Trademark Office upon
payment of the fee for establishing a deposit account §
1.21(b)(1)). A minimum deposit of $1,000 is required for
paying any fee due or in ordering any services offered by
the Office. However, a minimum deposit of $300 may be paid
to establish a restricted subscription deposit account used
exclusively for subscription order of patent copies as
issued.  At  the  end  of  each  month,  a  deposit  account
statement will be rendered. A remittance must be made
promptly upon receipt of the statement to cover the value of
items or services charged to the account and thus restore
the account to its established normal deposit value. An
amount sufficient to cover all fees, services, copies, etc.,
requested must always be on deposit. Charges to accounts
with insufficient funds will not be accepted. A service
charge ( § 1.21(b)(2)) will be assessed for each month that
the balance at the end of the month is below $1,000. For
restricted subscription deposit accounts, a service charge (
§ 1.21(b)(3)) will be assessed for each month that the
balance at the end of the month is below $300 .

  (b) Filing, issue, appeal, international - type search
report, international application processing, petition, and
post - issuance fees may be charged against these accounts
if sufficient funds are on deposit to cover such fees. A
general authorization to charge all fees, or only certain
fees, set forth in § 1.16 to 1.18 to a deposit account
containing sufficient funds may be filed in an individual
application,  either  for  the  entire  pendency  of  the
application or with respect to a particular paper filed. An
authorization to charge to a deposit account the fee for a
request for reexamination pursuant to § 1.510 and any other
fees required in a reexamination proceeding in a patent may
also  be  filed  with  the  request  for  reexamination.  An
authorization to charge a fee to a deposit account will not
be  considered  payment  of  the  fee  on  the  date  the
authorization to charge the fee is effective as to the
particular fee to be charged unless sufficient funds are
present in the account to cover the fee.

  [49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; 47 FR
41274, Sept. 17, 1982, effective Oct. 1,1982; 50 FR 31826,
Aug. 6, 1985, effective Oct. 5, 1985]

 § 1.26  Refunds.

  (a) Money paid by actual mistake or in excess will be
refunded, but a mere change of purpose after the payment of
money, as when a party desires to withdraw an application,
an appeal, or a request for oral hearing, will not entitle a
party to demand such a return. Amounts of twenty - five

dollars or less will not be returned unless specifically
requested within a reasonable time, nor will the payer be
notified of such amount; amounts over twenty - five dollars
may be returned by check or, if requested, by credit to a
deposit account.

  (b) [Reserved]

  (c) If the Commissioner decides not to institute a
reexamination proceeding, a refund of $1,690 will be made to
the requester of the proceeding. Reexamination

 requesters should indicate whether any refund should be
made by check or by credit to a deposit account.

  [47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 50
FR 31826 Aug. 6, 1985, effective Oct. 5, 1985; para. (c), 54
FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (c),
56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras.
(a) and (c), 57 FR 38190, Aug. 21, 1992, effective Oct.
1,1992]

 § 1.27  Statement of status as small entity.

  (a) Any person seeking to establish status as a small
entity ( § 1.9(f) of this part) for purposes of paying fees
in an application or a patent must file a verified statement
in the application or patent prior to or with the first fee
paid as a small entity. Such a verified statement need only
be filed once in an application or patent and remains in
effect until changed.

  (b) Any verified statement filed pursuant to para graph
(a) of this section on behalf of an indepen dent inventor
must  be  signed  by  the  independent  inventor  except  as
provided in § 1.42, 1.43, or 1.47 of this part and must aver
that the inventor qualifies as an independent inventor in
accordance with § 1.9(c) of this part. Where there are joint
inventors in an application, each inventor must file a
verified statement establishing status as an independent
inventor in order to qualify as a small entity. Where any
rights have been assigned, granted, conveyed, or licensed,
or there is an obligation to assign, grant, convey, or
license, any rights to a small business concern, a nonprofit
organization, or any other individual, a verified statement
must be filed by the individual, the owner of the small
business concern, or an official of the small business
concern or nonprofit organization empowered to act on behalf
of the small business concern or nonprofit organization
averring  to  their  status.  For  purposes  of  a  verified
statement under this paragraph, a license to a Federal
agency resulting from a funding agreement with that agency
pursuant to 35 U.S.C. 202(c)(4) does not constitute a
license as set forth in § 1.9 of this part.

  (c) Any verified statement filed pursuant to paragraph
(a) of this section on behalf of a small business concern
must (1) be signed by the owner or an official of the small
business concern empowered to act on behalf of the concern;
(2) aver that the concern qualifies as a small business
concern as defined in § 1.9(d); and (3) aver that exclusive
rights to the invention have been conveyed to and remain
with the small business concern or, if the rights are not
exclusive, that all other rights belong to small entities as
defined in § 1.9. Where the rights of the small business

concern as a small entity are not exclusive, a verified
statement must also be filed by the other small entities
having rights averring to their status as such. For purposes
of a verified statement under this paragraph, a license to a
Federal agency resulting from a funding agreement with that
agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a
license as set forth in § 1.9 of this part.

  (d) Any verified statement filed pursuant to paragraph
(a) of this section on behalf of a nonprofit organization
must  (1)  be  signed  by  an  official  of  the  nonprofit
organization empowered to act on behalf of the organization;
(2) aver that the organization qualifies as a nonprofit
organization as defined in § 1.9(e) of this part specifying
under which one of § 1.9(e)(1), (2), (3), or (4) of this
part the organization qualifies; and (3) aver that exclusive
rights to the invention have been conveyed to and remain
with the organization or if the rights are not exclusive
that all other rights belong to small entities as defined in
§ 1.9 of this part. Where the rights of the nonprofit
organization as a small entity are not exclusive, a verified
statement must also be filed by the other small entities
having rights averring to their status as such. For purposes
of a verified statement under this paragraph, a license to a
Federal agency resulting from a funding agreement with that
agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a
conveyance of rights as set forth in this paragraph.

  [47 FR 40139, Sept. 10, 1982, added effective Oct. 1,
1982; para. (c) added, 47 FR 43276, Sept. 30, 1982; paras.
(b), (c), and (d), 49 FR 553, Jan. 4, 1984, effective Apr.
1, 1984]

 § 1.28  Effect on fees of failure to establish status, or 
change status, as a small entity.

  (a) The failure to establish status as a small entity ( §
§ 1.9(f) and 1.27 of this part) in any application or patent
prior to paying, or at the time of paying, any fee precludes
payment of the fee in the amount established for small
entities. A refund pursuant to § 1.26 of this part, based on
establishment of small entity status, of a portion of fees
timely paid in full prior to establishing status as a small
entity may only be obtained if a verified statement under §
1.27 and a request for a refund of the excess amount are
filed within two months of the date of the timely payment of
the full fee. The two - month time period is not extendable
under § 1.136. Status as a small entity is waived for any
fee by the failure to establish the

 status prior to paying, at the time of paying, or within
two months of the date of payment of, the fee. Status as a
small  entity  must  be  specifically  established  in  each
application or patent in which the status is available and
desired. Status as a small entity in one application or
patent does not affect any other application or patent,
including applications or patents which are directly or
indirectly dependent upon the application or patent in which
the  status  has  been  established.  A  nonprovisional
application claiming benefit under 35 U.S.C. 119(e), 120,
121, or 365(c) of a prior application may rely on a verified
statement  filed  in  the  prior  application  if  the
nonprovisional  application  includes  a  reference  to  the
verified statement in the prior application or includes a
copy of the verified statement in the prior application and

status as a small entity is still proper and desired. Once
status  as  a  small  entity  has  been  established  in  an
application  or  patent,  the  status  remains  in  that
application or patent without the filing of a further
verified statement pursuant to § 1.27 of this part unless
the Office is notified of a change in status.

  (b) Once status as a small entity has been established in
an application or patent, fees as a small entity may
thereafter be paid in that application or patent without
regard to a change in status until the issue fee is due or
any maintenance fee is due. Notification of any change in
status resulting in loss of entitlement to small entity
status must be filed in the application or patent prior to
paying, or at the time of paying, the earliest of the issue
fee or any maintenance fee due after the date on which
status as a small entity is no longer appropriate pursuant
to § 1.9 of this part. The notification of change in status
may be signed by the applicant, any person authorized to
sign on behalf of the assignee, or an attorney or agent of
record or acting in a representative capacity pursuant to §
1.34(a) of this part.

  (c) If status as a small entity is established in good
faith, and fees as a small entity are paid in good faith, in
any application or patent, and it is later discovered that
such status as a small entity was established in error or
that through error the Office was not notified of a change
in status as required by paragraph (b) of this section, the
error will be excused (1) if any deficiency between the
amount paid and the amount due is paid within three months
after the date the error occurred or (2) if any deficiency
between the amount paid and the amount due is paid more than
three months after the date the error occurred and the
payment is accompanied by a statement explaining how the
error in good faith occurred and how and when the error was
discovered. The statement must be a verified statement if
made by a person not registered to practice before the
Patent and Trademark Office. The deficiency is based on the
amount of the fee, for other than a small entity, in effect
at the time the deficiency is paid in full.

  (d)(1) Any attempt to fraudulently (i) establish status
as a small entity or (ii) pay fees as a small entity shall
be considered as a fraud practiced or attempted on the
Office.

  (2)  Improperly  and  with  intent  to  deceive  (i)
establishing status as a small entity or (ii) paying fees as
a small entity shall be considered as a fraud practiced or
attempted on the Office.

  [47 FR 40140, Sept. 10, 1982, added effective Oct. 1,
1982; para. (a), 49 FR 553, Jan. 4, 1984, effective Apr. 1,
1984; para. (d)(2), 57 FR 2021, Jan. 17, 1992, effective
Mar. 16, 1992; para. (c) revised, 58 FR 54504, Oct. 22,
1993, effective Jan. 3, 1994; para. (a) revised, 60 FR
20195, Apr. 25, 1995, effective June 8, 1995]

  PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR
  AGENT

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

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

  [50 FR 5171, Feb. 6,1985, effective Mar. 8, 1985]

 § 1.32  [Reserved]

  [Deleted 57 FR 29642, July 6, 1992, effective Sept. 4,
1992]

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

  (a)  The  residence  and  post  office  address  of  the
applicant must appear in the oath or declaration if not
stated elsewhere in the application. The applicant may also
specify and an attorney or agent of record may specify a
correspondence address to which communica tions about the
application  are  to  be  directed.  All  notices,  official
letters, and other communications in the case will be
directed to the correspondence address or, if no such
correspondence address is specified, to an attorney or agent
of record (see § 1.34(b)), or, if no attorney or agent is of
record, to the applicant, or to any assignee of record of
the entire interest if the applicant or such assignee so
requests, or to an assignee of an undivided part if the
applicant so requests, at the post office address of which
the Office has been notified in the case. Amendments and
other papers filed in the application must be signed: (1) by
the applicant, or (2) if there is an assignee of record of
an undivided part interest, by the applicant and such
assignee, or (3) if there is an assignee of record of the
entire interest, by such assignee, or (4) by an attorney or
agent of record, or (5) by a registered attorney or agent
not of record who acts in a representative capacity under
the provisions of § 1.34(a). Double correspondence with an
applicant and his attorney or agent, or with more than one
attorney or agent, will not be undertaken. If more than one
attorney or agent be made of record and a correspondence
address has not been specified, correspondence will be held
with the one last made of record.

  (b) An applicant who has not made of record a registered
attorney or agent may be required to state whether he
received assistance in the preparation or prosecution of his
application, for which any compensation or consideration was
given or charged, and if so, to disclose the name or names
of the person or persons providing such assistance. This
includes  the  preparation  for  the  applicant  of  the
specification and amendments or other papers to be filed in
the Patent and Trademark Office, as well as other assistance
in such matters, but does not include merely making drawings
by draftsmen or stenographic services in typing papers.

  (c)  All  notices,  official  letters,  and  other
communications  for  the  patent  owner  or  owners  in  a
reexamination proceeding will be directed to the attorney or
agent of record (see § 1.34(b)) in the patent file at the
address listed on the register of patent attorneys and

agents maintained pursuant to § 10.5 and § 10.11 or, if no
attorney or agent is of record, to the patent owner or
owners at the address or addresses of record. Amendments and
other papers filed in a reexamination proceeding on behalf
of the patent owner must be signed by the patent owner, or
if there is more than one owner by all the owners, or by an
attorney or agent of record in the patent file, or by a
registered attorney or agent not of record who acts in a
representative capacity under the provisions of § 1.34(a).
Double correspondence with the patent owner or owners and
the patent owner's attorney or agent, or with more than one
attorney or agent, will not be undertaken. If more than one
attorney or agent is of record and a correspondence address
has not been specified, correspondence will be held with the
last attorney or agent made of record.

  (d) A "correspondence address" or change thereto may be
filed with the Patent and Trademark Office during the
enforceable  life  of  the  patent.  The  "corre  spondence
address" will be used in any correspondence relating to
maintenance fees unless a separate "fee address" has been
specified. See § 1.363 for "fee address" used solely for
maintenance fee purposes.

  [36 FR 12617, July 2, 1971; 46 FR 29181, May 29, 1981;
para. (d) added, 49 FR 34724, Aug. 31, 1984, effective Nov.
1, 1984; para. (c), 50 FR 5171, Feb. 6, 1985, effective Mar.
8, 1985]

 § 1.34  Recognition for representation.

  (a) When a registered attorney or agent acting in a
representative capacity appears in person or signs a paper
in practice before the Patent and Trademark Office in a
patent case, his or her personal appearance or signature
shall  constitute  a  representation  to  the  Patent  and
Trademark  Office  that  under  the  provisions  of  this
subchapter and the law, he or she is authorized to represent
the particular party in whose behalf he or she acts. In
filing such a paper, the registered attorney or agent should
specify his or her registration number with his or her
signature.  Further  proof  of  authority  to  act  in  a
representative capacity may be required.

  (b) When an attorney or agent shall have filed his or her
power of attorney, or authorization, duly executed by the
person or persons entitled to prosecute an application or a
patent involved in a reexamination proceeding, he or she is
a principal attorney of record in the case. A principal
attorney or agent, so appointed, may appoint an associate
attorney or agent who shall also then be of record.

  [46 FR 29181, May 29, 1981; para. (a), 50 FR 5171, Feb.
6, 1985, effective Mar. 6, 1985]

 § 1.36  Revocation of power of attorney or
authorization; withdrawal of attorney or agent .

  A power of attorney or authorization of agent may be
revoked at any stage in the proceedings of a case, and

 an attorney or agent may withdraw, upon application to and
approval by the Commissioner. An attorney or agent, except
an associate attorney or agent whose address is the same as
that of the principal attorney or agent, will be notified of

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

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

  WHO MAY APPLY FOR A PATENT

 § 1.41  Applicant for patent.

  (a) A patent must be applied for in the name of the
actual inventor or inventors. Full names must be stated,
including the family name, and at least one given name
without abbreviation together with any other given name or
initial.

  (b) Unless the contrary is indicated the word "applicant"
when used in these sections refers to the inventor or joint
inventors who are applying for a patent, or to the person
mentioned in § § 1.42, 1.43 or 1.47 who is applying for a
patent in place of the inventor.

  (c) Any person authorized by the applicant may file an
application  for  patent  on  behalf  of  the  inventor  or
inventors, but an oath or declaration for the application (
§ 1.63) can only be made in accordance with § 1.64.

  (d) A showing may be required from the person filing the
application  that  the  filing  was  authorized  where  such
authorization comes into question.

  [48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983]

 § 1.42  When the inventor is dead.

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

  [48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983]

 § 1.43  When the inventor is insane or legally
incapacitated.

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

  [48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983]

 § 1.44  Proof of authority.

  In the cases mentioned in § § 1.42 and 1.43, proof of

the power or authority of the legal representative must be
recorded in the Patent and Trademark Office or filed in the
application before the grant of a patent.

 § 1.45  Joint inventors.

  (a) Joint inventors must apply for a patent jointly and
each must make the required oath or declaration; neither of
them alone, nor less than the entire number, can apply for a
patent for an invention invented by them jointly, except as
provided in § 1.47.

  (b) Inventors may apply for a patent jointly even though

  (1) They did not physically work together or at the same
time,

  (2) Each inventor did not make the same amount of
contribution, or

  (3) Each inventor did not make a contribution to the
subject matter of every claim of the application.

  (c) If multiple inventors are named in a nonprovisional
application,  each  named  inventor  must  have  made  a
contribution, individually or jointly, to the subject matter
of at least one claim of the application and the application
will be considered to be a joint application under 35 U.S.C.
116. If multiple inventors are named in a provisional
application,  each  named  inventor  must  have  made  a
contribution, individually or jointly, to the subject matter
disclosed in the provisional application and the provisional
application will be considered to be a joint application
under 35 U.S.C. 116.

  [paras. (b) and (c), 47 FR 41274, Sept. 17, 1982,
effective Oct. 1, 1982; 48 FR 2709, Jan. 20, 1983, effective
Feb. 27, 1983; 50 FR 9379, Mar. 7, 1985, effective May 8,
1985; para. (c) revised, 60 FR 20195, Apr. 25, 1995,
effective June 8, 1995]

 § 1.46  Assigned inventions and patents.

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

  [48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 57
FR 29642, July 6, 1992, effective Sept. 4, 1992]

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

  (a) If a joint inventor refuses to join in an application
for patent or cannot be found or reached after diligent
effort, the application may be made by the other inventor on
behalf of himself or herself and the omitted inventor. The
oath  or  declaration  in  such  an  application  must  be
accompanied by a petition including proof of the pertinent
facts and by the required fee ( § 1.17(h)) and must state
the last known address of the omitted inventor. The Patent

and Trademark Office shall forward notice of the filing of
the application to the omitted inventor at said address.
Should such notice be returned to the Office undelivered, or
should the address of the omitted inventor be unknown,
notice of the filing of the application shall be published
in  the  Official  Gazette.  The  omitted  inventor  may
subsequently join in the application on filing an oath or
declaration of the character required by § 1.63. A patent
may be granted to the inventor making the application, upon
a showing satisfactory to the Commissioner, subject to the
same rights which the omitted inventor would have had if he
or she had been joined.

  (b)  Whenever  an  inventor  refuses  to  execute  an
application for patent, or cannot be found or reached after
diligent effort, a person to whom the inventor has assigned
or  agreed  in  writing  to  assign  the  invention  or  who
otherwise  shows  sufficient  proprietary  interest  in  the
matter justifying such action may make application for
patent on behalf of and as agent for the inventor. The oath
or declaration in such an application must be accompanied by
a petition including proof of the pertinent facts and a
showing that such action is necessary to preserve the rights
of the parties or to prevent irreparable damage, and by the
required fee ( § 1.17(h)) and must state the last known
address of the inventor. The assignment, written agreement
to assign or other evidence of proprietary interest, or a
verified copy thereof, must be filed in the Patent and
Trademark Office. The Office shall forward notice of the
filing of the application to the inventor at the address
stated in the application. Should such notice be returned to
the  Office  undelivered,  or  should  the  address  of  the
inventor be unknown, notice of the filing of the application
shall be published in the Official Gazette.  The inventor
may subsequently join in the application on filing an oath
or declaration of the character required by § 1.63. A pat
ent  may  be  granted  to  the  inventor  upon  a  showing
satisfactory to the Commissioner.

  [47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; 48
FR 2709, Jan. 20, 1983, effective Feb. 27, 1983]

 § 1.48  Correction of inventorship.

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

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

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

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

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

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

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

  (2) The fee set forth in § 1.17(h).

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

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

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

  (2) the fee set forth in § 1.17(q).

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

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

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

  (3) the written consent of any assignee.

  [48 FR 270 - 9, Jan. 20, 1983, effective Feb. 27, 1983;
49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR
9379, Mar. 7, 1985, effective May 8, 1985; para. (a), 57 FR
56446, Nov. 30, 1992, effective Jan. 4, 1993; revised, 60 FR
20195, Apr. 25, 1995, effective June 8, 1995]

  THE APPLICATION

 § 1.51  General requisites of an application.

  (a)  Applications  for  patents  must  be  made  to  the
Commissioner of Patents and Trademarks.

  (1) A complete application filed under § 1.53(b)(1)
comprises:

  (i) A specification, including a claim or claims, see § §
1.71 to 1.77;

  (ii) An oath or declaration, see § § 1.63 and 1.68;

  (iii) Drawings, when necessary, see § § 1.81 to 1.85; and

  (iv) The prescribed filing fee, see § 1.16.

  (2) A complete provisional application filed under §
1.53(b)(2) comprises:

  (i) A cover sheet identifying:

  (A) The application as a provisional application,

  (B) The name or names of the inventor or inventors, (see
§ 1.41),

  (C) The residence of each named inventor,

  (D) The title of the invention,

  (E) The name and registration number of the attorney or
agent (if applicable),

  (F) The docket number used by the person filing the
application to identify the application (if applicable),

  (G) The correspondence address, and

  (H) The name of the U.S. Government agency and Government
contract number (if the invention was made by an agency of
the U.S. Government or under a contract with an agency of
the U.S. Government);

  (ii) A specification as prescribed by 35 U.S.C. 112,
first paragraph, see § 1.71;

  (iii) Drawings, when necessary, see § § 1.81 to 1.85; and

  (iv) The prescribed filing fee, see § 1.16.

  (b) Applicants are encouraged to file an information
disclosure statement in nonprovisional applications. See § §
1.97 and 1.98. No information disclosure statement may be
filed in a provisional application.

  (c) Applicants may desire and are permitted to file with,
or in, the application or authorization to charge, at any
time during the pendency of the application, any fees
required under any of § § 1.16 to 1.18 to a deposit account
established and maintained in accordance with § 1.25.

  [42 FR 5593, Jan. 28, 1977; paras. (a) and (c), 47 FR
41275, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a)
and (b), 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983;
para. (b), 57 FR 2021, Jan. 17, 1992, effective Mar. 16,
1992; paras. (a) & (b) revised, 60 FR 20195, Apr. 25, 1995,

effective June 8, 1995]

 § 1.52  Language, paper, writing, margins.

  (a)  The  application,  any  amendments  or  corrections
thereto, and the oath or declaration must be in the English
language except as provided for in § 1.69 and paragraph (d)
of this section, or be accompanied by a verified translation
of the application and a translation of any corrections or
amendments into the English language. All papers which are
to become a part of the permanent records of the Patent and
Trademark  Office  must  be  legibly  written  either  by  a
typewriter or mechanical printer in permanent dark ink or
its equivalent in portrait orientation on flexible, strong,
smooth, non - shiny, durable, and white paper. All of the
application papers must be presented in a form having
sufficient clarity and contrast between the paper and the
writing thereon to permit the direct reproduction of readily
legible  copies  in  any  number  by  use  of  photographic,
electrostatic, photo - offset, and microfilming processes
and electronic reproduction by use of digital imaging and
optical character recognition. If the papers are not of the
required quality, substitute typewritten or mechanically
printed papers of suitable quality will be required. See §
1.125 for filing substitute typewritten or mechanically
printed papers constituting a substitute specification when
required by the Office.

  (b)  Except  for  drawings,  the  application  papers
(specification,  including  claims,  abstract,  oath  or
declaration, and papers as provided for in this part) and
also papers subsequently filed, must have each page plainly
written on only one side of a sheet of paper, with the claim
or claims commencing on a separate sheet and the abstract
commencing on a separate sheet. See § § 1.72(b) and 1.75(h).
The sheets of paper must be the same size and either 21.0
cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8 1/2
by 11 inches). Each sheet must include a top margin of at
least 2.0 cm. (3/4 inch), a left side margin of at least 2.5
cm. (1 inch), a right side margin of at least 2.0 cm. (3/4
inch), and a bottom margin of at least 2.0 cm. (3/4 inch),
and no holes should be made in the sheets as submitted. The
lines of the specification, and any amendments to the
specification, must be 1 1/2 or double spaced. The pages of
the specification including claims and abstract must be
numbered consecutively, starting with 1, the numbers being
centrally located above or preferably, below, the text. See
§ 1.84 for drawings.

  (c) Any interlineation, erasure, cancellation or other
alteration of the application papers filed should be made
before the signing of any accompanying oath or declaration
pursuant to § 1.63 referring to those application papers and
should be dated and initialed or signed by the applicant on
the same sheet of paper. Application papers containing
alterations made after the signing of an oath or declaration
referring to those application papers must be supported by a
supplemental oath or declaration under § 1.67(c). After the
signing  of  the  oath  or  declaration  referring  to  the
application papers, amendments may only be made in the
manner provided by § 1.121 and 1.123 through 1.125.

  (d) An application may be filed in a language other than
English. A verified English translation of the non - English
language application and the fee set forth in § 1.17(k) are

required to be filed with the application or within such
time as may be set by the Office.

  [43 FR 20462, May 11, 1978; paras. (a) and (d), 47 FR
41275, Sept. 17, 1982, effective Oct. 1, 1982; para. (c), 48
FR 2709. Jan. 20, 1983, effective Feb. 27, 1983; para. (d),
49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (c),
57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; paras.
(a) and (b) amended, 61 FR 42790, Aug. 19, 1996, effective
Sept. 23, 1996]

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

  (a) Any application for a patent received in the Patent
and Trademark Office will be assigned an application number
for identification purposes.

  (b)(1) The filing date of an application for patent filed
under this section, except for a provisional application, is
the date on which: a specification containing a description
pursuant to § 1.71 and at least one claim pursuant to §
1.75; and any drawing required by § 1.81(a), are filed in
the Patent and Trademark Office in the name of the actual
inventor or inventors as required by § 1.41. No new matter
may be introduced into an application after its filing date
( § 1.118). If all the names of the actual inventor or
inventors are not supplied when the specification and any
required drawing are filed, the application will not be
given a filing date earlier than the date upon which the
names are supplied unless a petition with the fee set forth
in ( § 1.17(i) is filed which sets forth the reasons the
delay  in  supplying  the  names  should  be  excused.  A
continuation or divisional application (filed under the
conditions specified in 35 U.S.C. 120 or 121 and § 1.78(a))
may be filed under this section, § 1.60 or § 1.62. A
continuation - in - part application may be filed under this
section or § 1.62.

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

  (i) A provisional application must also include a cover
sheet  identifying  the  application  as  a  provisional
application. Otherwise, the application will be treated as
an application filed under § 1.53(b)(1).

  (ii) An application for patent filed under § 1.53(b)(1)
may be treated as a provisional application and be accorded
the original filing date provided that a petition requesting
the conversion, with the fee set forth in § 1.17(q), is

filed prior to the earlier of the abandonment of the §
1.53(b)(1) application, the payment of the issue fee, the
expiration of 12 months after the filing date of the §
1.53(b)(1) application, or the filing of a request for a
statutory invention registration under § 1.293. The grant of
any such petition will not entitle applicant to a refund of
the fees which were properly paid in the application filed
under § 1.53(b)(1).

  (iii) A provisional application shall not be entitled to
the right of priority under § 1.55 or 35 U.S.C. 119 or
365(a) or to the benefit of an earlier filing date under §
1.78  or  35  U.S.C.  120,  121  or  365(c)  of  any  other
application. No claim for priority under § 1.78(a)(3) may

 be made in a design application based on a provisional
application. No request under § 1.293 for a statutory
invention  registration  may  be  filed  in  a  provisional
application. The requirements of § § 1.821 - 1.825 regarding
application disclosures containing nucleotide and/or amino
acid  sequences  are  not  mandatory  for  provisional
applications.

  (c)  If  any  application  is  filed  without  the
specification, drawing or name, or names, of the actual
inventor or inventors required by paragraph (b)(1) or (b)(2)
of this section, applicant will be so notified and given a
time  period  within  which  to  submit  the  omitted
specification,  drawing,  name,  or  names,  of  the  actual
inventor, or inventors, in order to obtain a filing date as
of the date of filing of such submission. A copy of the
"Notice  of  Incomplete  Application"  form  notifying  the
applicant should accompany any response thereto submitted to
the Office. If the omission is not corrected within the time
period set, the application will be returned or otherwise
disposed of; the fee, if submitted, will be refunded less
the handling fee set forth in § 1.21(n). Any request for
review of a refusal to accord an application a filing date
must be by way of a petition accompanied by the fee set
forth in § 1.17(i), if the application was filed under §
1.53(b)(1), or by the fee set forth in § 1.17(q), if the
application was filed under § 1.53(b)(2).

  (d)(1) If an application which has been accorded a filing
date pursuant to paragraph (b)(1) of this section does not
include the appropriate filing fee or an oath or declaration
by the applicant, applicant will be so notified, if a
correspondence address has been provided and given a period
of time within which to file the fee, oath, or declaration
and to pay the surcharge as set forth in § 1.16(e) in order
to prevent abandonment of the application. A copy of the
"Notice to File Missing Parts" form mailed to applicant
should accompany any response thereto submitted to the
Office. If the required filing fee is not timely paid, or if
the processing and retention fee set forth in § 1.21(1) is
not paid within one year of the date of mailing of the
notification required by this paragraph, the application
will be disposed of. No copies will be provided or certified
by the Office of an application which has been disposed of
or in which neither the required basic filing fee nor the
processing and retention fee has been paid. The notification
pursuant to this paragraph may be made simultaneously with
any notification pursuant to paragraph (c) of this section.
If no correspondence address is included in the application,
applicant has two months from the filing date to file the

basic filing fee, oath or declaration and to pay the
surcharge as set forth in § 1.16(e) in order to prevent
abandonment of the application; or, if no basic filing fee
has been paid, one year from the filing date to pay the
processing and retention fee set forth in § 1.21(l) to
prevent disposal of the application.

  (2) If a provisional application which has been accorded
a filing date pursuant to paragraph (b)(2) of this section
does not include the appropriate filing fee or the cover
sheet  required  by  §  1.51(a)(2),  applicant  will  be  so
notified if a correspondence address has been provided and
given a period of time within which to file the fee, cover
sheet and to pay the surcharge as set forth in § 1.16(1) in
order to prevent abandonment of the application. A copy of
the "Notice to File Missing Parts" form mailed to applicant
should accompany any response thereto submitted to the
Office. If the required filing fee is not timely paid, the
application will be disposed of. No copies will be provided
or certified by the Office of an application which has been
disposed of or in which the required basic filing fee has
not been paid. The notification pursuant to this paragraph
may be made simultaneously with any notification pursuant to
paragraph (c) of this section. If no correspondence address
is included in the application, applicant has two months
from the filing date to file the basic filing fee, cover
sheet and to pay the surcharge as set forth in § 1.16(l) in
order to prevent abandonment of the application.

  (e)(1) An application for a patent filed under paragraph
(b)(1) of this section will not be placed upon the files for
examination until all its required parts, complying with the
rules relating thereto, are received, except that certain
minor informalities may be waived subject to subsequent
correction whenever required.

  (2) A provisional application for a patent filed under
paragraph (b)(2) of this section will not be placed upon the
files for examination and will become abandoned no later
than twelve months after its filing date pursuant to 35
U.S.C. 111(b)(1).

  (f) The filing date of an international application
designating the United States of America shall be treated as
the filing date in the United States of America under PCT
Article 11(3), except as provided in 35 U.S.C. 102(e).

  [48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983;
paras. (b) and (d), 49 FR 554, Jan. 4, 1984, effective Apr.
1, 1984; para. (c), 50 FR 31826, Aug. 6, 1985, effective
Oct. 5, 1985; paras. (c) and (d), 53 FR 47808, Nov. 28,
1988, effective Jan. 1, 1989; paras. (b) and (c), 54 FR
47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a) -
(e) revised, 60 FR 20195, Apr. 25, 1995, effective June 8,
1995]

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

  (a) It is desirable that all parts of the complete
application be deposited in the Office together; otherwise a
letter must accompany each part, accurately and clearly
connecting it with the other parts of the application. See §
1.53 with regard to completion of an application.

  (b) Applicant will be informed of the application number
and filing date by a filing receipt.

  [48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983;
para. (b) amended, 61 FR 42790, Aug. 19, 1996, effective
Sept. 23, 1996]

 § 1.55  Claim for foreign priority.

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

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

  [para. (b), 48 FR 41275, Sept. 17, 1982, effective Oct.
1 1982; 48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983;
para. (b), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984;
para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11,
1985; para. (a), 54 FR 6893, Feb. 15, 1989, 54 FR 9432,
March 7, 1989, effective Apr. 17, 1989; para. (a), 54 FR
47518, Nov. 15, 1989, effective Jan. 16, 1990; para. (a)
revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994;
revised, 60 FR 20195, Apr.25, 1995, effective June 8, 1995]

 § 1.56 Duty to disclose information material to

patentability .

  (a) A patent by its very nature is affected with a public
interest. The public interest is best served, and the most
effective patent examination occurs when, at the time an
application is being examined, the Office is aware of and
evaluates the teachings of all information material to
patentability. Each individual associated with the filing
and prosecution of a patent application has a duty of candor
and good faith in dealing with the Office, which includes a
duty to disclose to the Office all information known to that
individual to be material to patentability as defined in
this section. The duty to disclose information exists with
respect to each pending claim until the claim is cancelled
or withdrawn from consideration, or the application becomes
abandoned. Information material to the patentability of a
claim that is cancelled or withdrawn from consideration need
not be submitted if the information is not material to the
patentability of any claim remaining under consideration in
the application. There is no duty to submit information
which is not material to the patentability of any existing
claim. The duty to disclose all information known to be
material to patentability is deemed to be satisfied if all
information known to be material to patentability of any
claim issued in a patent was cited by the Office or
submitted to the Office in the manner prescribed by §
1.97(b) - (d) and 1.98. However, no patent will be granted
on an application in connection with which fraud on the
Office was practiced or attempted or the duty of disclosure
was violated through bad faith or intentional misconduct.
The Office encourages applicants to carefully examine:

  (1) prior art cited in search reports of a foreign patent
office in a counterpart application, and

  (2)  the  closest  information  over  which  individuals
associated with the filing or prosecution of a patent
application believe any pending claim patentably defines, to
make sure that any material information contained therein is
disclosed to the Office.

  (b)  Under  this  section,  information  is  material  to
patentability when it is not cumulative to information
already  of  record  or  being  made  of  record  in  the
application, and

  (1) It establishes, by itself or in combination with
other information, a prima facie case of unpatentability of
a claim; or

  (2) It refutes, or is inconsistent with, a position the
applicant takes in:

  (i) Opposing an argument of unpatentability relied on by
the Office, or

  (ii) Asserting an argument of patentability.

  A prima facie case of unpatentability is established
when the information compels a conclusion that a claim is
unpatentable under the preponderance of evidence, burden -
of - proof standard, giving each term in the claim its
broadest  reasonable  construction  consistent  with  the
specification, and before any consideration is given to
evidence which may be submitted in an attempt to establish a

contrary conclusion of patentability.

  (c) Individuals associated with the filing or prosecution
of a patent application within the meaning of this section
are:

  (1) Each inventor named in the application;

  (2) Each attorney or agent who prepares or prosecutes the
application; and

  (3) Every other person who is substantively involved in
the preparation or prosecution of the application and who is
associated with the inventor, with the assignee or with
anyone  to  whom  there  is  an  obligation  to  assign  the
application.

  (d)  Individuals  other  than  the  attorney,  agent  or
inventor  may  comply  with  this  section  by  disclosing
information to the attorney, agent, or inventor.

  [42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i), 47
FR 21751, May 19, 1982, effective July 1, 1982; para. (c),
48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; paras.
(b) and (j), 49 FR 554, Jan. 4, 1984, effective Apr. 1,
1984; paras. (d) and (h), 50 FR 5171, Feb. 6, 1985,
effective Mar. 8, 1985; para. (e), 53 FR 47808, Nov. 28,
1988, effective Jan. 1, 1989; 57 FR 2021, Jan. 17, 1992,
effective Mar. 16, 1992]

 § 1.57  [Reserved]

  [48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983]

 § 1.58 Chemical and mathematical formulae and tables.

  (a) The specification, including the claims, may contain
chemical and mathematical formulas, but shall not contain
drawings or flow diagrams. The description portion of the
specification may contain tables; claims may contain tables
either if necessary to conform to 35 U.S.C. 112 or if
otherwise found to be desirable.

  (b) [Reserved]

  (c) Chemical and mathematical formulae and tables must be
presented in compliance with § 1.52(a) and (b), except that
chemical and mathematical formulae or tables may be placed
in a landscape orientation if they cannot be presented
satisfactorily  in  a  portrait  orientation.  Typewritten
characters used in such formulae and tables must be chosen
from a block (nonscript) type font or lettering style having
capital letters which are at least 0.21 cm. (0.08 inch) high
( e.g. , elite type). A space at least 0.64 cm. (1/4 inch)
high should be provided between complex formulae and tables
and the text. Tables should have the lines and columns of
data closely spaced to conserve space, consistent with a
high degree of legibility.

  [43 FR 20463, May 11, 1978; para. (b) removed and
reserved, para. (c) amended, 61 FR 42790, Aug. 19, 1996,
effective Sept. 23, 1996]

 § 1.59  Papers of application with filing date not to
be returned.

  Papers in an application which has received a filing
date pursuant to § 1.53 will not be returned for any purpose
whatever. If applicants have not preserved copies of the
papers, the Office will furnish copies at the usual cost of
any application in which either the required basic filing
fee ( § 1.16) or, if the application was filed under §
1.53(b)(1), the processing and retention fee § 1.21(1)) has
been paid. See § 1.618 for return of unauthorized and
improper papers in interferences.

  [48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 49
FR 554, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416,
Dec. 12, 1984,; 50 FR 23123, May 31, 1985, effective Feb.
11, 1985; revised, 60 FR 20195, Apr. 25, 1995, effective
June 8, 1995]

 § 1.60  Continuation or divisional application for
invention disclosed in a prior nonprovisional application.

  (a) [Reserved]

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

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

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

  (3) the inventors named in the continuation or divisional
application are the same or less than all the inventors
named in the prior application; and

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

date upon which the copy and statement are filed, unless a
petition with the fee set forth in § 1.17(i) is filed which
satisfactorily explains the delay in filing these items.

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

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

  [48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 49
FR 554, Jan. 4, 1984, effective Apr. 1, 1984; 50 FR 9379,
Mar. 7, 1985, effective May 8, 1985; paras. (a), (b) and
(c), 54 FR 47519, Nov. 15, 1989, effective Jan. 16, 1990;
paras. (b) and (c) revised, para. (d) added, 57 FR 56446,
Nov. 30, 1992, effective Jan. 4, 1993; para. (b) revised, 60
FR 20195, Apr. 25, 1995, effective June 8, 1995]

 § 1.61  [Reserved]

  (Editor's note: Substance moved to § 1.494)

  [52 FR 20046, May 28, 1987, effective July 1, 1987]

 § 1.62  File wrapper continuing procedure.

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

continuation - in - part, or divisional application.

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

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

  (d) If an application which has been accorded a filing
date pursuant to paragraph (a) of this section does not
include  the  appropriate  basic  filing  fee  pursuant  to
paragraph (b) of this section, or an oath or declaration by
the applicant in the case of a continuation - in - part
application pursuant to paragraph (c) of this section,
applicant will be so notified and given a period of time
within which to file the fee, oath, or declaration and to
pay the surcharge as set forth in § 1.16(e) in order to
prevent abandonment of the application.  The notification
pursuant to this paragraph may be made simultaneously with
any notification of a defect pursuant to paragraph (a) of
this section.

  (e) An application filed under this section will utilize
the file wrapper and contents of the prior application to
constitute the new continuation, continuation - in - part,
or  divisional  application  but  will  be  assigned  a  new
application number. Changes to the prior application must be
made in the form of an amendment to the prior application as
it exists at the time of filing the application under this
section.  No  copy  of  the  prior  application  or  new
specification is required. The filing of such a copy or
specification will be considered improper, and a filing date
as of the date of deposit of the request for an application
under this section will not be granted to the application
unless a petition with the fee set forth in § 1.17(i) is
filed with instructions to cancel the copy or specification.

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

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

date granted the continuing application.

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

  (1) Title as originally filed and as last amended;

  (2) Name of applicant as originally filed and as last
amended;

  (3) Current correspondence address of applicant;

  (4) Identification of prior foreign application and any
priority claim under 35 U.S.C. 119.

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

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

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

  [47 FR 47244, Oct. 25, 1982, added effective Feb. 27,
1983; 48 FR 2710, Jan. 20, 1983, effective date Feb. 27,
1983; paras. (a) and (d), 49 FR 555, Jan. 4, 1984, effective
Apr. 1, 1984; paras. (a), (c), and (h), 50 FR 9380, Mar. 7,
1985, effective May 8, 1985; paras. (e) and (j), 54 FR
47519, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)
and (e) revised, 60 FR 20195, Apr. 25, 1995, effective June
8, 1995; para. (f) revised, 61 FR 42790, Aug. 19, 1996,
effective Sept. 23, 1996]

  OATH OR DECLARATION

 § 1.63 Oath or declaration.

  (a) An oath or declaration filed under § 1.51(a)(1)(ii)
as a part of a nonprovisional application must:

  (1) Be executed in accordance with either § 1.66 or §
1.68;

  (2) Identify the specification to which it is directed;

  (3) Identify each inventor and the residence and country
of citizenship of each inventor; and

  (4) State whether the inventor is a sole or joint
inventor of the invention claimed.

  (b) In addition to meeting the requirements of paragraph
(a), the oath or declaration must state that the person
making the oath or declaration:

  (1) Has reviewed and understands the contents of the
specification, including the claims, as amended by any
amendment  specifically  referred  to  in  the  oath  or
declaration;

  (2) Believes the named inventor or inventors to be the
original and first inventor or inventors of the subject
matter which is claimed and for which a patent is sought;
and

  (3) Acknowledges the duty to disclose to the Office all
information  known  to  the  person  to  be  material  to
patentability as defined in § 1.56.

  (c) In addition to meeting the requirements of paragraphs
(a) and (b) of this section, the oath or declaration in any
application in which a claim for foreign priority is made
pursuant to § 1.55 must identify the foreign application for
patent  or  inventor's  certificate  on  which  priority  is
claimed and any foreign application having a filing date
before that of the application on which priority is claimed,
by specifying the application number, country, day, month,
and year of its filing.

  (d) In any continuation - in - part application filed
under the conditions specified in 35 U.S.C. 120 which
discloses and claims subject matter in addition to that
disclosed in the prior copending application, the oath or
declaration must also state that the person making the oath
or declaration acknowledges the duty to disclose to the
Office all information known to the person to be material to
patentability as defined in § 1.56 which became available
between the filing date of the prior application and the
national  or  PCT  international  filing  date  of  the
continuation - in - part application.

  [48 FR 2711, Jan. 20, 1983, added effective Feb. 27,
1983; 48 FR 4285, Jan. 31, 1983; paras. (b)(3) and (d), 57
FR 2021, Jan. 17, 1992,effective  Mar. 16, 1992; para. (a)
revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

 § 1.64  Person making oath or declaration.

  (a) The oath or declaration must be made by all of the
actual inventors except as provided for in § 1.42, 1.43,
or1.47.

  (b) If the person making the oath or declaration is not
the  inventor  (  §  1.42,  1.43,  or  1.47),  the  oath  or
declaration shall state the relationship of the person to
the inventor and, upon information and belief, the facts
which the inventor is required to state .

  [48 FR 2711, Jan. 20, 1983, added effective Feb. 27,
1983]

 § 1.66  Officers authorized to administer oaths.

  (a) The oath or affirmation may be made before any person
within the United States authorized by law to administer
oaths. An oath made in a foreign country may be made before
any diplomatic or consular officer of the United States
authorized to administer oaths, or before any officer having
an official seal and authorized to administer oaths in the

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

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

  [47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982]

 § 1.67  Supplemental oath or declaration.

  (a)  A  supplemental  oath  or  declaration  meeting  the
requirements of § 1.63 may be required to be filed to
correct any deficiencies or inaccuracies present in an
earlier filed oath or declaration.

  (b)  A  supplemental  oath  or  declaration  meeting  the
requirements of § 1.63 must be filed when a claim is
presented for matter originally shown or described but not
substantially embraced in the statement of invention or
claims originally presented or when an oath or declaration
submitted in accordance with § 1.53(d)(1) after the filing
of the specification and any required drawings specifically
and improperly refers to an amend ment which includes new
matter.  No  new  matter  may  be  introduced  into  a
nonprovisional application after its filing date even if a
supplemental oath or declaration is filed. In proper cases,
the oath or declaration here required may be made on
information and belief by an applicant other than inventor.

  (c)  A  supplemental  oath  or  declaration  meeting  the
requirements of § 1.63 must also be filed if the application
was altered after the oath or declaration was signed or if
the oath or declaration was signed:

  (1) In blank;

  (2) Without review thereof by the person making the oath
or declaration; or

  (3) Without review of the specification, including the
claims, as required by § 1.63(b)(1).

  [48 FR 2711, Jan. 20, 1983, effective Feb. 27, 1983;
para. (c) added, 57 FR 2021, Jan. 17, 1992, effective Mar.
16, 1992; para. (b) revised, 60 FR 20195, Apr. 25, 1995,
effective June 8, 1995]

 § 1.68  Declaration in lieu of oath.

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

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

 § 1.69  Foreign language oaths and declarations.

  (a) Whenever an individual making an oath or declaration
cannot understand English, the oath or declaration must be
in a language that such individual can understand and shall
state that such individual understands the content of any
documents to which the oath or declaration relates.

  (b) Unless the text of any oath or declaration in a
language other than English is a form provided or approved
by the Patent and Trademark Office, it must be accompanied
by a verified English translation, except that in the case
of an oath or declaration filed under § 1.63 the translation
may be filed in the Office no later than two months from the
date applicant is notified to file the translation.

  [42 FR 5594, Jan. 28, 1977; para. (b), 48 FR 2711, Jan.
20, 1983, effective Feb. 27, 1983]

 § 1.70  [Reserved]

  (Editor's note: Substance moved to § 1.497)

  [52 FR 20046, May 28, 1987, effective July 1, 1987]

  SPECIFICATION

 § 1.71  Detailed description and specification of the
invention.

  (a) The specification must include a written description
of the invention or discovery and of the manner and process
of making and using the same, and is required to be in such
full, clear, concise, and exact terms as to enable any
person skilled in the art or science to which the invention
or discovery appertains, or with which it is most nearly
connected, to make and use the same.

  (b)  The  specification  must  set  forth  the  precise
invention for which a patent is solicited, in such manner as
to distinguish it from other inventions and from what is

old. It must describe completely a specific embodiment of
the process, machine, manufacture, composition of matter or
improvement invented, and must explain the mode of operation
or principle whenever applicable. The best mode contemplated
by the inventor of carrying out his invention must be set
forth.

  (c) In the case of an improvement, the specification must
particularly point out the part or parts of the process,
machine, manufacture, or composition of matter to which the
improvement relates, and the description should be confined
to the specific improvement and to such parts as necessarily
cooperate with it or as may be necessary to a complete
understanding or description of it.

  (d) A copyright or mask work notice may be placed in a
design or utility patent application adjacent to copyright
and mask work material contained therein. The notice may
appear at any appropriate portion of the patent application
disclosure. For notices in drawings, see § 1.84(s). The
content of the notice must be limited to only those elements
required by law. For example, " e1983  John Doe"(17 U.S.C.
401) and "*M* John Doe" (17 U.S.C. 909) would be properly
limited and, under current statutes, legally sufficient
notices of copyright and mask work, respectively. Inclusion
of a copyright or mask work notice will be permitted only if
the authorization language set forth in paragraph (e) of
this section is included at the beginning (preferably as the
first paragraph) of the specification.

  (e) The authorization shall read as follows:

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

  [paras. (d) and (e), 53 FR 47808, Nov. 28, 1988,
effective Jan. 1, 1989; para. (d), 58 FR 38719, July 20,
1993, effective Oct. 1, 1993]

 § 1.72  Title and abstract.

  (a) The title of the invention, which should be as short
and specific as possible, should appear as a heading on the
first page of the specification, if it does not otherwise
appear at the beginning of the application.

  (b) A brief abstract of the technical disclosure in the
specification must commence on a separate sheet, preferably
following the claims, under the heading "Abstract of the
Disclosure." The purpose of the abstract is to enable the
Patent and Trademark Office and the public generally to
determine quickly from a cursory inspection the nature and
gist of the technical disclosure. The abstract shall not be
used for interpreting the scope of the claims.

  [31 FR 12922, Oct. 4, 1966; 43 FR 20464, May 11, 1978;
para. (a) amended, 61 FR 42790, Aug. 19, 1996, effective
Sept. 23, 1996]

 § 1.73  Summary of the invention.

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

 § 1.74  Reference to drawings.

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

 § 1.75  Claim(s).

  (a)  The  specification  must  conclude  with  a  claim
particularly  pointing  out  and  distinctly  claiming  the
subject matter which the applicant regards as his invention
or discovery.

  (b) More than one claim may be presented provided they
differ substantially from each other and are not unduly
multiplied.

  (c) One or more claims may be presented in dependent
form, referring back to and further limiting another claim
or claims in the same application. Any dependent claim which
refers to more than one other claim ("multiple dependent
claim") shall refer to such other claims in the alternative
only. A multiple dependent claim shall not serve as a basis
for any other multiple dependent claim. For fee calculation
purposes under § 1.16, a multiple dependent claim will be
considered to be that number of claims to which direct
reference is made therein. For fee calculation purposes,
also, any claim depending from a multiple dependent claim
will be considered to be that number of claims to which
direct reference is made in that multiple dependent claim.
In  addition  to  the  other  filing  fees,  any  original
application which is filed with, or is amended to include,
multiple dependent claims must have paid therein the fee set
forth in § 1.16(d). Claims in dependent form shall be
construed to include all the limitations of the claim
incorporated  by  reference  into  the  dependent  claim.  A
multiple dependent claim shall be construed to incorporate
by reference all the limitations of each of the particular
claims in relation to which it is being considered.

  (d)(1) The claim or claims must conform to the invention
as set forth in the remainder of the specification and the
terms and phrases used in the claims must find clear support
or antecedent basis in the description so that the meaning
of the terms in the claims may be ascertainable by reference
to the description. (See § 1.58(a).)

  (2) See § 1.141 to 1.146 as to claiming different
inventions in one application.

  (e) Where the nature of the case admits, as in the case
of an improvement, any independent claim should contain in
the following order, (1) a preamble comprising a general

description of all the elements or steps of the claimed
combination which are conventional or known, (2) a phrase
such as "wherein the improvement comprises," and (3) those
elements, steps, and/or relationships which constitute that
portion of the claimed combination which the applicant
considers as the new or improved portion.

  (f) If there are several claims, they shall be numbered
consecutively in Arabic numerals.

  (g) The least restrictive claim should be presented as
claim number 1, and all dependent claims should be grouped
together with the claim or claims to which they refer to the
extent practicable.

  (h) The claim or claims must commence on a separate
sheet.

  (i) Where a claim sets forth a plurality of elements or
steps, each element or step of the claim should be separated
by a line indentation.

  [31 FR 12922, Oct. 4, 1966; 36 FR 12690, July 3, 1971;
37 FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; para.
(c), 47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982;
para. (g) amended, paras. (h) and (i) added, 61 FR 42790,
Aug. 19, 1996, effective Sept 23, 1996]

 § 1.77  Arrangement of application elements.

  (a) The elements of the application, if applicable,
should appear in the following order:

  (1) Utility Application Transmittal Form.

  (2) Fee Transmittal Form.

  (3) Title of the invention; or an introductory portion
stating  the  name,  citizenship,  and  residence  of  the
applicant, and the title of the invention.

  (4) Cross - reference to related applications.

  (5) Statement regarding federally sponsored research or
development.

  (6)  Reference  to  a  "Microfiche  appendix."  (See  §
1.96(c)). The total number of microfiche and total number of
frames should be specified.

  (7) Background of the invention.

  (8) Brief summary of the invention.

  (9)  Brief  description  of  the  several  views  of  the
drawing.

  (10) Detailed description of the invention.

  (11) Claim or claims.

  (12) Abstract of the Disclosure.

  (13) Drawings.

  (14) Executed oath or declaration.

  (15) Sequence Listing (See § § 1.821 through 1.825).

  (b) The elements set forth in paragraphs (a)(3) through
(a)(5), (a)(7) through (a)(12) and (a)(15) of this section
should appear in upper case, without underlining or bold
type, as section headings. If no text follows the section
heading, the phrase "Not Applicable" should follow the
section heading.

  [43 FR 20464, May 11, 1978; 46 FR 2612, Jan. 12, 1981;
paras. (h) and (i), 48 FR 2712, Jan. 20, 1983, effective
Feb.  27,  1983;  revised,  61  FR  42790,  Aug.  19,  1996,
effective Sept. 23, 1996]

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

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

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

  (ii) entitled to a filing date as set forth in §
1.53(b)(1), § 1.60 or § 1.62 and include the basic filing
fee set forth in § 1.16; or

  (iii) entitled to a filing date as set forth in §
1.53(b)(1)  and  have  paid  therein  the  processing  and
retention fee set forth in § 1.21(1) within the time period
set forth in § 1.53(d)(1).

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

  (3) A nonprovisional application other than for a design
patent may claim an invention disclosed in one or more prior
filed  copending  provisional  applications.  Since  a
provisional application can be pending for no more than
twelve months, the last day of pendency may occur on a
Saturday, Sunday, or Federal holiday within the District of
Columbia  which  for  copendency  would  require  the
nonprovisional  application  to  be  filed  prior  to  the

Saturday,  Sunday,  or  Federal  holiday.  In  order  for  a
nonprovisional application to claim the benefit of one or
more prior filed copending provisional applications, each
prior provisional application must name as an inventor at
least one inventor named in the later filed nonprovisional
application and disclose the named inventor's invention
claimed  in  at  least  one  claim  of  the  later  filed
nonprovisional application in the manner provided by the
first paragraph of 35 U.S.C. 112. In addition, each prior
provisional application must be:

  (i) complete as set forth in § 1.51(a)(2); or

  (ii) entitled to a filing date as set forth in §
1.53(b)(2) and include the basic filing fee set forth in §
1.16(k).

  (4) Any nonprovisional application claiming the benefit
of  one  or  more  prior  filed  copending  provisional
applications must contain or be amended to contain in the
first sentence of the specification following the title a
reference  to  each  such  prior  provisional  application,
identifying it as a provisional application, and including
the provisional application number (consisting of series
code and serial number).

  (b) Where two or more applications filed by the same
applicant contain conflicting claims, elimination of such
claims from all but one application may be required in the
absence of good and sufficient reason for their retention
during pendency in more than one application.

  (c) Where an application or a patent under reexamination
and  at  least  one  other  application  naming  different
inventors  are  owned  by  the  same  party  and  contain
conflicting claims, and there is no statement of record
indicating that the claimed inventions were commonly owned
or subject to an obligation of assignment to the same person
at the time the later invention was made, the assignee may
be called upon to state whether the claimed inventions were
commonly owned or subject to an obligation of assignment to
the same person at the time the later invention was made,
and if not, indicate which named inventor is the prior
inventor.

  [36 FR 7312, Apr. 17, 1971; 49 FR 555, Jan. 4, 1984;
paras. (a), (c) & (d), 50 FR 9380, Mar. 7, 1985, effective
May 8, 1985; 50 FR 11366, Mar. 21, 1985; para. (a) revised
58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; paras.
(a)(1) and (a)(2) revised and paras. (a)(3) and (a)(4)
added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995;
para. (c) revised and para. (d) deleted, 61 FR 42790, Aug.
19, 1996, effective Sept. 23, 1996]

 § 1.79 Reservation clauses not permitted.

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

  THE DRAWINGS

 § 1.81 Drawings required in patent application.

  (a) The applicant for a patent is required to furnish a
drawing of his or her invention where necessary for the
understanding of the subject matter sought to be patented;
this drawing, or a high quality copy thereof, must be filed
with  the  application.  Since  corrections  are  the
responsibility of the applicant, the original drawing(s)
should be retained by the applicant for any necessary future
correction.

  (b) Drawings may include illustrations which facilitate
an understanding of the invention (for example, flowsheets
in cases of processes, and diagrammatic views).

  (c) Whenever the nature of the subject matter sought to
be patented admits of illustration by a drawing without its
being necessary for the understanding of the subject matter
and the applicant has not furnished such a drawing, the
examiner will require its submission within a time period of
not less than two months from the date of the sending of a
notice thereof.

  (d)  Drawings submitted after the filing date of the
application may not be used to overcome any insufficiency of
the specification due to lack of an enabling disclosure or
otherwise inadequate disclosure therein, or to supplement
the  original  disclosure  thereof  for  the  purpose  of
interpretation of the scope of any claim.

  [43 FR 4015, Jan. 31, 1978; para. (a), 53 FR 47809, Nov.
28, 1988, effective Jan. 1, 1989]

 § 1.83 Content of drawing.

  (a) The drawing in a nonprovisional application must show
every feature of the invention specified in the claims.
However, conventional features disclosed in the description
and  claims,  where  their  detailed  illustration  is  not
essential for a proper understanding of the invention,
should be illustrated in the drawing in the form of a
graphical drawing symbol or a labeled representation (e.g.,
a labeled rectangular box).

  (b) When the invention consists of an improvement on an
old machine the drawing must when possible exhibit, in one
or more views, the improved portion itself, disconnected
from the old structure, and also in another view, so much
only of the old structure as will suffice to show the
connection of the invention therewith.

  (c) Where the drawings in a nonprovisional application do
not comply with the requirements of paragraphs (a) and (b)
of this section, the examiner shall require such additional
illustration within a time period of not less than two
months from the date of the sending of a notice thereof.
Such corrections are subject to the requirements of §
1.81(d).

  [31 FR 12923, Oct. 4, 1966; 43 FR 4015, Jan. 31, 1978;
paras. (a) and (c) revised, 60 FR 20195, Apr. 25, 1995,
effective June 8, 1995]

 § 1.84 Standards for drawings.

  (a) Drawings.  There are two acceptable categories for
presenting drawings in utility patent applications:

  (1)Black ink . Black and white drawings are normally
required. India ink, or its equivalent that secures solid
black lines, must be used for drawings, or

  (2) Color .  On rare occasions, color drawings may be
necessary as the only practical medium by which to disclose
the subject matter sought to be patented in a utility patent
application or the subject matter of a statutory invention
registration. The Patent and Trademark Office will accept
color drawings in utility patent applications and statutory
invention registrations only after granting a petition filed
under this paragraph explaining why the color drawings are
necessary. Any such petition must include the following:

  (i) The appropriate fee set forth in § 1.17(h);

  (ii) Three (3) sets of color drawings; and

  (iii)  The  specification  must  contain  the  following
language as the first paragraph in that portion of the
specification relating to the brief description of the
drawing:

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

  If the language is not in the specification, a proposed
amendment  to  insert  the  language  must  accompany  the
petition.

  (b) Photographs  .

  (1) Black and white.  Photographs are not ordinarily
permitted  in  utility  and  design  patent  applications.
However, the Office will accept photographs in utility and
design patent applications only after granting a petition
filed under this paragraph which requests that photographs
be accepted. Any such petition must include the following:

  (i) The appropriate fee set forth in § 1.17(h); and

  (ii) Three (3) sets of photographs.

  Photographs must either be developed on double weight
photographic paper or be permanently mounted on Bristol
board. The photographs must be of sufficient quality so that
all details in the drawing are reproducible in the printed
patent.

  (2)Color.  Color photographs will be accepted in utility
patent applications if the conditions for accepting

 color drawings have been satisfied. See paragraph (a)(2) of
this section.

  (c)Identification of drawings.  Identifying indicia, if
provided, should include the application number or the title
of the invention, inventor's name, docket number (if any),
and the name and telephone number of a person to call if the

Office is unable to match the drawings to the

 properapplication.  This information should be placed on
the back of each sheet of drawings a minimum distance of 1.5
cm. (5/8 inch) down from the top of the page. In addition, a
reference to the application number, or, if an application
number has not been assigned, the inventor's name, may be
included in the left - hand corner provided that the
reference appears within 1.5cm. (9/16 inch) from the top of
the sheet.

  (d)Graphic forms in drawings. Chemical or mathematical
formulae, tables, and waveforms may be submitted as drawings
and are subject to the same requirements as drawings. Each
chemical or mathematical formula must be labeled as a
separate figure, using brackets when necessary, to show that
information is properly integrated. Each group of waveforms
must be presented as a single figure, using a common
vertical axis with time extending along the horizontal axis.
Each individual wave form discussed in the specification
must  be  identified  with  a  separate  letter  designation
adjacent to the vertical axis .

  (e) Type of paper.  Drawings submitted to the Office must
be made on paper which is flexible, strong, white, smooth,
nonshiny, and durable. All sheets must be free from cracks,
creases, and folds. Only one side of the sheet shall be used
for the drawing. Each sheet must be reasonably free from
erasures and must be free from alterations, overwritings,
and interlineations. Photographs must either be developed on
double weight photographic paper or be permanently mounted
on Bristol board. See paragraph (b) of this section for
other requirements for photographs.

  (f) Size of paper.  All drawing sheets in an application
must be the same size. One of the shorter sides of the sheet
is regarded as its top. The size of the sheets on which
drawings are made must be:

 (1) 21.0 cm. by 29.7 cm. (DIN size A4), or

 (2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).

  (g) Margins.  The sheets must not contain frames around
the sight; i.e., the usable surface, but should have scan
target  points,  i.e.,  cross  -  hairs,  printed  on  two
catercorner margin corners. Each sheet must include a top
margin of at least 2.5 cm. (1 inch), a left side margin of
at least 2.5 cm. (1 inch), a right side margin of at least
1.5 cm. (9/16 inch), and a bottom margin of at least 1.0 cm.
(3/8 inch), thereby leaving a sight no greater than 17.0 cm.
by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing
sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6
15 / 16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by
11 inch) drawing sheets.

  (h)Views. The drawing must contain as many views as
necessary to show the invention. The views may be plan,
elevation, section, or perspective views. Detail views of
portions of elements, on a larger scale if necessary, may
also be used. All views of the drawing must be grouped
together and arranged on the sheet(s) without wasting space,
preferably in an upright position, clearly separated from
one  another,  and  must  not  be  included  in  the  sheets
containing the specifications, claims, or abstract. Views

must not be connected by projection lines and must not
contain center lines. Waveforms of electrical signals may be
connected by dashed lines to show the relative timing of the
waveforms.

  (1)Exploded views.  Exploded views, with the separated
parts embraced by a bracket, to show the relationship or
order of assembly of various parts are permissible. When an
exploded view is shown in a figure which is on the same
sheet as another figure, the exploded view should be placed
in brackets.

  (2)Partial views.  When necessary, a view of a large
machine or device in its entirety may be broken into partial
views on a single sheet, or extended over several sheets if
there is no loss in facility of understanding the view.
Partial views drawn on separate sheets must always be
capable of being linked edge to edge so that no partial view
contains parts of another partial view. A smaller scale view
should be included showing the whole formed by the partial
views and indicating the positions of the parts shown. When
a portion o f a view is enlarged for magnification purposes,
the view and the enlarged view must each be labeled as
separate views.

  (i) Where views on two or more sheets form, in effect, a
single complete view, the views on the several sheets must
be so arranged that the complete figure can

 be assembled without concealing any part of any of the
views appearing on the various sheets.

  (ii) A very long view may be divided into several parts
placed one above the other on a single sheet. However, the
relationship between the different parts must be clear and
unambiguous.

  (3) Sectional views.  The plane upon which a sectional
view is taken should be indicated on the view from which the
section is cut by a broken line. The ends of the broken line
should  be  designated  by  Arabic  or  Roman  numerals
corresponding to the view number of the sectional view, and
should have arrows to indicate the direction of sight.
Hatching must be used to indicate section portions of an
object,  and  must  be  made  by  regularly  spaced  oblique
parallel lines spaced sufficiently apart to enable the lines
to be distinguished without difficulty. Hatching should not
impede the clear reading of the reference characters and
lead lines. If it is not possible to place reference
characters outside the hatched area, the hatching may be
broken  off  wherever  reference  characters  are  inserted.
Hatching must be at a substantial angle to the surrounding
axes or principal lines, preferably 45  _ . A cross section
must be set out and drawn to show all of the materials as
they are shown in the view from which the cross section was
taken.  The  parts  in  cross  section  must  show  proper
material(s)  by  hatching  with  regularly  spaced  parallel
oblique strokes, the space between strokes being chosen on
the basis of the total area to be hatched. The various parts
of a cross section of the same item should be hatched in the
same manner and should accurately and graphically indicate
the nature of the material(s) that is illustrated in cross
section. The hatching of juxtaposed different elements must
be angled in a different way. In the case of large areas,
hatching may be confined to an edging drawn around the

entire inside of the outline of the area to be hatched.
Different  types  of  hatching  should  have  different
conventional meanings as regards the nature of a material
seen in cross section.

  (4) Alternate position.  A moved position may be shown by
a broken line superimposed upon a suitable view if this can
be done without crowding; otherwise, a separate view must be
used for this purpose.

  (5) Modified forms.  Modified forms of construction must
be shown in separate views.

  (i)Arrangement of views. One view must not be placed upon
another or within the outline of another. All views on the
same sheet should stand in the same direction and, if
possible, stand so that they can be read with the sheet held
in an upright position. If views wider than the width of the
sheet are necessary for the clearest illustration of the
invention, the sheet may be turned on its side so that the
top of the sheet, with the appropriate top margin to be used
as the heading space, is on the right - hand side. Words
must appear in a horizontal, left - to - right fashion  when
the page is either upright or turned so that the top becomes
the  right  side,  except  for  graphs  utilizing  standard
scientific convention to denote the axis of abscissas (of X)
and the axis of ordinates (of Y).

  (j)View forOfficial Gazette. One of the views should be
suitable for publication in the Official Gazette as the
illustration of the invention.

  (k) Scale  .

  (1) The scale to which a drawing is made must be large
enough to show the mechanism without crowding when the
drawing is reduced in size to two - thirds in reproduction.
Views of portions of the mechanism on a larger scale should
be used when necessary to show details clearly. Two or more
sheets may be used if one does not give sufficient room. The
number of sheets should be kept to a minimum.

  (2) When approved by the examiner, the scale of the
drawing may be graphically represented. Indications such as
"actual size" or "scale 1/2" on the drawings, are not
permitted, since these lose their meaning with reproduction
in a different format.

  (3) Elements of the same view must be in proportion to
each  other,  unless  a  difference  in  proportion  is
indispensable for the clarity of the view. Instead of
showing elements in different proportion, a supplementary
view may be added giving a larger - scale illustration of
the element of the initial view. The enlarged element shown
in the second view should be surrounded by a finely drawn or
"dot - dash" circle in the first view indicating its
location without obscuring the view.

  (1)  Character  of  lines,  numbers,  and  letters.  All
drawings must be made by a process which will give them
satisfactory  reproduction  characteristics.  Every  line,
number, and letter must be durable, clean, black (except for
color drawings), sufficiently dense and dark, and uniformly
thick and well - defined. The weight of all lines and
letters  must  be  heavy  enough  to  permit  adequate

reproduction. This requirement applies to all lines however
fine, to shading, and to lines representing cut surfaces in
sectional views. Lines and strokes of different thicknesses
may be used in the same drawing where different thicknesses
have a different meaning.

  (m) Shading.  The use of shading in views is encouraged
if it aids in understanding the invention and if it does not
reduce legibility. Shading is used to indicate the surface
or shape of spherical, cylindrical, and conical elements of
an object. Flat parts may also be lightly shaded. Such
shading  is  preferred  in  the  case  of  parts  shown  in
perspective, but not for cross sections. See paragraph
(h)(3)  of  this  section.  Spaced  lines  for  shading  are
preferred. These lines must be thin, as few in number as
practicable, and they must contrast with the rest of the
drawings. As a substitute for shading, heavy lines on the
shade  side  of  objects  can  be  used  except  where  they
superimpose on each other or obscure reference characters.
Light should come from the upper left corner at an angle of
45  _ . Surface delineations should preferably be shown by
proper shading. Solid black shading areas are not permitted,
except when used to represent bar graphs or color.

  (n)Symbols. Graphical drawing symbols may be used for
conventional elements when appropriate. The elements for
which such symbols and labeled representations are used must
be adequately identified in the specification. Known devices
should be illustrated by sym bols which have a uni versally
recognized conventional meaning and are generally accepted
in  the  art.  Other  symbols  which  are  not  universally
recognized may be used, subject to approval by the Office,
if  they  are  not  likely  to  be  confused  with  existing
conventional symbols, and if they are readily identifiable.

  (o)Legends. Suitable descriptive legends may be used, or
may  be  required  by  the  Examiner,  where  necessary  for
understanding of the drawing, subject to approval by the
Office. They should contain as few words as possible.

  (p) Numbers, letters, and reference characters .

  (1) Reference characters (numerals are preferred), sheet
numbers, and view numbers must be plain and legible, and
must not be used in association with brackets or inverted
commas, or enclosed within outlines, e.g., encircled. They
must be oriented in the same direction as the view so as to
avoid having to rotate the sheet. Reference characters
should be arranged to follow the profile of the object
depicted.

  (2) The English alphabet must be used for letters, except
where another alphabet is customarily used, such as the
Greek  alphabet  to  indicate  angles,  wavelengths,  and
mathematical formulas.

  (3)  Numbers,  letters,  and  reference  characters  must
measure at least .32 cm. (1/8 inch) in height. They should
not be placed in the drawing so as to interfere with its
comprehension. Therefore, they should not cross or mingle
with the lines. They should not be placed upon hatched or
shaded  surfaces.  When  necessary,  such  as  indicating  a
surface or cross section, a reference character may be
underlined and a blank space may be left in the hatching or
shading where the character occurs so that it appears

distinct.

  (4) The same part of an invention appearing in more than
one view of the drawing must always be designated by the
same reference character, and the same reference character
must never be used to designate different parts.

  (5) Reference characters not mentioned in the description
shall not appear in the drawings. Reference characters
mentioned in the description must appear in the drawings.

  (q) Lead lines.  Lead lines are those lines between the
reference characters and the details referred to. Such lines
may be straight or curved and should be as short as
possible. They must originate in the immediate proximity of
the reference character and extend to the feature indicated.
Lead lines must not cross each other. Lead lines are
required for each reference character except for those which
indicate the surface or cross section on which they are
placed. Such a reference character must be underlined to
make it clear that a lead line has not been left out by
mistake. Lead lines must be executed in the same way as
lines in the drawing. See paragraph (1) of this section.

  (r)Arrows.  Arrows may be used at the ends of lines,
provided that their meaning is clear, as follows:

  (1) On a lead line, a freestanding arrow to indicate the
entire section towards which it points;

  (2) On a lead line, an arrow touching a line to indicate
the surface shown by the line looking along the direction of
the arrow; or

  (3) To show the direction of movement.

  (s) Copyright or Mask Work Notice.  A copyright or mask
work notice may appear in the drawing, but must be placed
within the sight of the drawing immediately below the figure
representing the copyright or mask work material and be
limited to letters having a print size of .32 cm. to .64 cm.
(1/8 to 1/4 inches) high. The content of the notice must be
limited to only those elements provided for by law. For
example, "  e1983 John Doe" (17 U.S.C. 401) and "*M* John
Doe" (17 U.S.C. 909) would be properly limited and, under
current statutes, legally sufficient notices of copyright
and mask work, respectively. Inclusion of a copyright or
mask work notice will be permitted only if the authorization
language set forth in § 1.71(e) is included at the beginning
(preferably as the first paragraph) of the specification.

  (t) Numbering of sheets of drawings.  The sheets of
drawings should be numbered in consecutive Arabic numerals,
starting with 1, within the sight as defined in paragraph
(g) of this section. These numbers, if present, must be
placed in the middle of the top of the sheet, but not in the
margin. The numbers can be placed on the right - hand side
if the drawing extends too close to the middle of the top
edge of the usable surface. The drawing sheet numbering must
be clear and larger than the numbers used as reference
characters to avoid confusion. The number of each sheet
should be shown by two Arabic numerals placed on either side
of an oblique line, with the first being the sheet number
and the second being the total number of sheets of drawings,
with no other marking.

  (u) Numbering of views.

  (1) The different views must be numbered in consecutive
Arabic  numerals,  starting  with  1,  independent  of  the
numbering of the sheets and, if possible, in the order in
which they appear on the drawing sheet(s). Partial views
intended to form one complete view, on one or several
sheets, must be identified by the same number followed by a
capital  letter.  View  numbers  must  be  preceded  by  the
abbreviation "FIG." Where only a single view is used in an
application to illustrate the claimed invention, it must not
be numbered and the abbreviation "FIG." must not appear.

  (2) Numbers and letters identifying the views must be
simple and clear and must not be used in association with
brackets, circles, or inverted commas. The view numbers must
be larger than the numbers used for reference characters.

  (v) Security markings .  Authorized security markings
may be placed on the drawings provided they are outside the
sight, preferably centered in the top margin.

  (w) Corrections.  Any corrections on drawings submitted
to the Office must be durable and permanent.

  (x)Holes.  No holes should be made by applicant in the
drawing sheets.

  [24 FR 10332, Dec. 22, 1959; 31 FR 12923, Oct. 4, 1966;
36 FR 9775, May 28, 1971; 43 FR 20464, May 11, 1978; 45 FR
73657, Nov. 6,1980; paras. (a), (b), (i), (j), and (1)
amended, paras. (n), (o), and (p) added, 53 FR 47809, Nov.
28, 1988, effective Jan. 1, 1989; revised, 58 FR 38719, July
20, 1993, effective Oct. 1, 1993; paras. (c), (f), (g), and
(x) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23,
1996]

 § 1.85  Corrections to drawings.

  (a) The requirements of § 1.84 relating to drawings will
be strictly enforced. A drawing not executed in conformity
thereto, if suitable for reproduction, may be admitted for
examination but in such case a new drawing must be furnished
.

  (b) The Patent and Trademark Office will not release
drawings in applications having a filing date after January
1, 1989, or any drawings from any applications after January
1, 1991, for purposes of correction. If corrections are
necessary, new corrected drawings must be submitted within
the time set by the Office.

  (c) When corrected drawings are required to be sub mitted
at the time of allowance, the applicant is required to
submit acceptable drawings within three months from the
mailing of the "Notice of Allowability." Within that three -
month period, two weeks should be allowed for review of the
drawings by the Drafting Branch. If the Office finds that
correction is necessary, the applicant must submit a new
corrected drawing to the Office within the original three -
month  period  to  avoid  the  necessity  of  obtaining  an
extension of time and paying the extension fee. Therefore,
the applicant should file corrected drawings as soon as
possible  following  the  receipt  of  the  Notice  of

Allowability. The provisions with respect to obtaining an
extension of time relates only to the late filing of
corrected drawings. The time limit for payment of the issue
fee is a fixed three - month period which cannot be extended
as set forth in 35 U.S.C. 151.

  [47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; 53
FR 47810, Nov. 28, 1988, effective Jan. 1, 1989]

 § 1.8 8 [Removed and Reserved]

  [Deleted, 58 FR 38719, July 20, 1993, effective Oct. 1,
1993]

  MODELS, EXHIBITS, SPECIMENS

 § 1.91  Models not generally required as part of
application or patent.

  Models were once required in all cases admitting a
model, as a part of the application, and these models became
a part of the record of the patent. Such models are no
longer generally required (the description of the invention
in the specification, and the drawings, must be sufficiently
full and complete, and capable of being understood, to
disclose the invention without the aid of a model), and will
not be admitted unless specifically called for.

 § 1.9 2 Model or exhibit may be required.

  A model, working model, or other physical exhibit may be
required if deemed necessary for any purpose on examination
of the application.

 § 1.93 Specimens.

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

 § 1.94 Return of models, exhibits or specimens.

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

 § 1.95 Copies of exhibits.

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

 § 1.96 Submission of computer program listings.

  (a)  General.  Descriptions of the operation and general
content of computer program listings should appear in the

description portion of the specification. A computer program
listing for the purpose of this section is defined as a
printout  that  lists  in  appropriate  sequence  the
instructions, routines, and other contents of a program for
a computer. The program listing may be either in machine or
machine - independent (object or source) language which will
cause a computer to perform a desired procedure or task such
as solve a problem, regulate the flow of work in a computer,
or control or monitor events. Computer program listings may
be  submitted  in  patent  applications  as  set  forth  in
paragraphs (b) and (c) of this section.

  (b) Material which will be printed in the patent. If the
computer program listing is contained on ten printout pages
or less, it must be submitted either as draw ings or as part
of the specification.

  (1) Drawings. If the listing is submitted as drawings, it
must be submitted in the manner and complying with the
requirements for drawings as provided in § 1.84. At least
one figure numeral is required on each sheet of drawing.

  (2)  Specification.(i) If the listing is submitted as
part  of  the  specification,  it  must  be  submitted  in
accordance with the provisions of § 1.52, at the end of the
description but before the claims.

  (ii) Any listing submitted as part of the specification
must  be  direct  printouts  (i.e.,  not  copies)  from  the
computer`s printer with dark solid black letters not less
than 0.21 cm. high, on white, unshaded and unlined paper,
and the sheets should be submitted in a protective cover.
Any amendment must be made by way of submission of a
substitute sheet.

  (c) As an appendix which will not be printed. If a
computer program listing printout is eleven or more pages
long, applicants must submit such listing in the form of
microfiche,  referred  to  in  the  specification  (see  §
1.77(a)(6)). Such microfiche filed with a patent application
is to be referred to as a "microfiche appendix." The
"microfiche appendix" will not be part of the printed
patent. Reference in the application to the "microfiche
appendix" must be made at the beginning of the specification
at the location indicated in § 1.77(a)(6). Any amendments
thereto must be made by way of revised microfiche.

  (1)  Availability  of  appendix.  Such  computer  program
listings on microfiche will be available to the public for
in spection, and microfiche copies thereof will be available
for purchase with the file wrapper and contents, after a
patent  based  on  such  application  is  granted  or  the
application is otherwise made publicly available.

  (2)  Submission  requirements.  Except  as  modified  or
clarified in this paragraph (c)(2), computer - generated
information submitted as a "microfiche appendix" to an
application shall be in accordance with the standards set
forth in 36 CFR Part 1230 (Micrographics).

  (i) Film submitted shall be a first generation (camera
film) negative appearing microfiche (with emulsion on the
back side of the film when viewed with the images right -
reading).

  (ii) Reduction ratio of microfiche submitted should be
24:1 or a similar ratio where variation from said ratio is
required in order to fit the documents into the image area
of the microfiche format used.

  (iii) At least the left - most third (50 mm. x 12 mm.) of
the header or title area of each microfiche submitted shall
be clear or positive appearing so that the Patent and
Trademark Office can apply an application number and filing
date thereto in an eye - readable form. The middle portion
of the header shall be used by applicant to apply an eye -
readable application identification such as the title and/or
the first inventor's name. The attorney's docket number may
be  included.  The  final  right  -  hand  portion  of  the
microfiche shall contain sequence in formation for the
microfiche, such as 1 of 4, 2 of 4, etc.

  (iv) Additional requirements which apply specifically to
microfiche of filmed paper copy:

  (A) The first frame of each microfiche submitted shall
contain a test target.

  (B) The second frame of each microfiche submitted must
contain a fully descriptive title and the inventor's name as
filed.

  (C) The pages or lines appearing on the microfiche frames
should be consecutively numbered.

  (D) Pagination of the microfiche frames shall be from
left to right and from top to bottom.

  (E) At a reduction of 24:1, resolution of the original
microfilm shall be at least 120 lines per mm. (5.0 target).

  (F) An index, when included, should appear in the last
frame (lower right hand corner when data is right - reading)
of each microfiche.

  (v) Microfiche generated by Computer Output Microfilm.

  (A) The first frame of each microfiche submitted should
contain a resolution test frame.

  (B) The second frame of each microfiche submitted must
contain a fully descriptive title and the inventor's name as
filed.

  (C) The pages or lines appearing on the microfiche frames
should be consecutively numbered.

  (D) It is preferred that pagination of the microfiche
frames be from left to right and top to bottom but the
alternative, i.e., from top to bottom and from left to
right, is also acceptable.

  (E) An index, when included, should appear on the last
frame (lower right hand corner when data is right reading)
of each microfiche.

  [46 FR 2612, Jan. 12, 1981, para. (b)(1), 54 FR 47519,
Nov. 15, 1989, effective Jan. 16, 1990; revised, 61 FR
42790, Aug. 19, 1996, effective Sept. 23, 1996]

 INFORMATION DISCLOSURE STATEMENT

 § 1.97  Filing of information disclosure statement.

  (a) In order for an applicant for a patent or for a
reissue of a patent to have an information disclosure
statement in compliance with § 1.98 considered by the Office
during the pendency of the application, it must satisfy
paragraph (b), (c), or (d) of this section.

  (b)  An  information  disclosure  statement  shall  be
considered by the Office if filed by the applicant:

  (1) Within three months of the filing date of a national
application;

  (2) Within three months of the date of entry of the
national stage as set forth in § 1.491 in an international
application; or

  (3) Before the mailing date of a first Office action on
the merits,

  whichever event occurs last.

  (c)  An  information  disclosure  statement  shall  be
considered by the Office if filed after the period specified
in  paragraph  (b)  of  this  section,  provided  that  the
statement  is  accompanied  by  either  a  certification  as
specified in paragraph (e) of this section or the fee set
forth in § 1.17(p), and is filed before the mailing date of
either:

  (1) A final action under § 1.113 or

  (2) A notice of allowance under § 1.311,

  whichever occurs first.

  (d)  An  information  disclosure  statement  shall  be
considered by the Office if filed by the applicant after the
period specified in paragraph (c) of this section, provided
that the statement is filed on or before payment of the
issue fee and is accompanied by:

  (1) A certification as specified in paragraph (e) of this
section;

  (2)  A  petition  requesting  consideration  of  the
information disclosure statement; and

  (3) The petition fee set forth in § 1.17(i).

  (e) A certification under this section must state either:

  (1) That each item of information contained in the
information  disclosure  statement  was  cited  in  a
communication from a foreign patent office in a counterpart
foreign application not more than three months prior to the
filing of the statement, or

  (2)  That  no  item  of  information  contained  in  the
information  disclosure  statement  was  cited  in  a
communication from a foreign patent office in a counterpart
foreign application or, to the knowledge of the person

signing the certification after making reasonable inquiry,
was known to any individual designated in § 1.56(c) more
than three months prior to the filing of the statement.

  (f) No extensions of time for filing an information
disclosure statement are permitted under § 1.136. If a bona
fide attempt is made to comply with § 1.98, but part of the
required content is inadvertently omitted, additional time
may be given to enable full compliance.

  (g)  An  information  disclosure  statement  filed  in
accordance  with  section  shall  not  be  construed  as  a
representation that a search has been made.

  (h) The filing of an information disclosure statement
shall not be construed to be an admission

 that the information cited in the statement is, or is
considered to be, material to patentability as defined in §
1.56(b).

  (i) Information disclosure statements, filed be fore the
grant of a patent, which do not comply with this section and
§ 1.98 will be placed in the file, but will not be
considered by the Office.

  [48 FR 2712, Jan. 20, 1983, effective date Feb. 27,
1983; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992;
para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective
June 8, 1995; paras. (a) - (d) revised, 61 FR 42790, Aug.
19, 1996, effective Sept. 23, 1996]

 § 1.98  Content of information disclosure statement.

  (a) Any information disclosure statement filed under §
1.97 shall include:

  (1)  list  of  all  patents,  publications  or  other
information submitted for consideration by the Office;

  (2) A legible copy of :

  (i) Each U.S. and foreign patent;

  (ii) Each publication or that portion which caused it to
be listed; and

  (iii) All other information or that portion which caused
it to be listed, except that no copy of a U.S. patent
application need be included; and

  (3) A concise explanation of the relevance, as it is
presently understood by the individual designated in §
1.56(c)  most  knowledgeable  about  the  content  of  the
information,  of  each  patent,  publication,  or  other
information listed that is not in the English language. The
concise  explanation  may  be  either  separate  from  the
specification or incorporated therein.

  (b) Each U.S. patent listed in an information disclosure
statement shall be identified by patentee, patent number and
issue date. Each foreign patent or published foreign patent
application shall be identified by the country or patent
office which issued the patent or published the application,
an appropriate document number, and the publication date

indicated on the patent or published application. Each
publication shall be identified by author (if any), title,
relevant pages of the publication, date, and place of
publication.

  (c) When the disclosures of two or more patents or
publications listed in an information disclosure statement
are substantively cumulative, a copy of one of the patents
or publications may be submitted without copies of the other
patents or publications provided that a statement is made
that these other patents or publications are cumulative. If
a written English - language translation of a non - English
language  document,  or  portion  thereof,  is  within  the
possession, custody, or control of, or is readily available
to any individual designated in § 1.56(c), a copy of the
translation shall accompany the statement.

  (d)  A copy of any patent, publication, or other
information listed in an information disclosure statement is
not required to be provided if it was previously cited by or
submitted to the Office in a prior application, provided
that the prior application is properly identified in the
statement and relied on for an earlier filing date under 35
U.S.C. 120.

  [42 FR 5594, Jan. 28, 1977; para. (a) 48 FR 2712, Jan.
20, 1983, effective date Feb. 27, 1983; 57 FR 2021, Jan. 17,
1992, effective Mar. 16, 1992]

 § 1.99 [Reserved]

  [48 FR 2712, Jan. 20, 1983; effective date Feb. 27,
1983; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992]

  EXAMINATION OF APPLICATIONS

 § 1.101 Order of examination.

  (a) Non - provisional applications filed in the Patent
and Trademark Office and accepted as complete applications
are assigned for examination to the respective examining
groups  having  the  classes  of  inventions  to  which  the
applications relate. Non - provisional applications shall be
taken up for examination by the examiner to whom they have
been assigned in the order in which they have been filed
except for those applications in which examination has been
advanced pursuant to § 1.102. See § 1.496 for order of
examination of international applications in the national
stage.

  (b) Applications which have been acted upon by the
examiner, and which have been placed by the applicant in
condition  for  further  action  by  the  examiner  (amended
applications) shall be taken up for action in such order as
shall be determined by the Commissioner.

  [29 FR 13470, Sept. 30, 1964; para. (a), 48 FR 2712,
Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 50 FR
9381, Mar. 7, 1985, effective May 8, 1985; 52 FR 20046, May
28, 1987, effective July 1, 1987; para. (a) revised, 60  FR
20195, Apr. 25, 1995, effective June 8, 1995]

 § 1.102 Advancement of examination.

  (a) Applications will not be advanced out of turn for

examination or for further action except as provided by this
part, or upon order of the Commis sioner to expedite the
business of the Office, or upon filing of a request under
paragraph (b) of this section or upon filing a petition
under paragraphs (c) or (d) of this section with a verified
showing which, in the opinion of the Commissioner, will
justify so advancing it.

  (b) Applications wherein the inventions are deemed of
peculiar importance to some branch of the public service and
the head of some department of the Government requests
immediate action for that reason, may be advanced for
examination.

  (c) A petition to make an application special may be
filed without a fee if the basis for the petition is the
applicant's  age  or  health  or  that  the  invention  will
materially  enhance  the  quality  of  the  environment  or
materially contribute to the development or conservation of
energy resources.

  (d) A petition to make an application special on grounds
other than those referred to in paragraph (c) of this
section must be accompanied by the petition fee set forth in
§ 1.17(i).

  [24 FR 10332, Dec. 22, 1959; paras. (a), (c), and (d).
47 FR 41276, Sept.. 17, 1982, effective Oct. 1, 1982, para.
(d), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989;
para. (d) revised, 60  FR 20195, Apr. 25, 1995, effective
June 8, 1995]

 § 1.103 Suspension of action.

  (a) Suspension of action by the Office will be granted
for good and sufficient cause and for a reasonable time
specified upon petition by the applicant and, if such cause
is not the fault of the Office, the payment of the fee set
forth in § 1.17(i). Action will not be suspended when a
response by the applicant to an Office action is required.

  (b)  If  action  by  the  Office  on  an  application  is
suspended when not requested by the applicant, the applicant
shall be notified of the reasons therefor.

  (c) Action by the examiner may be suspended by order of
the Commissioner in the case of applications owned by the
United States whenever publication of the invention by the
granting of a patent thereon might be detrimental to the
public safety or defense, at the request of the appropriate
department or agency.

  (d)  Action on applications in which the Office has
accepted a request to publish a defensive publication will
be suspended for the entire pendency of these applications
except  for  purposes  relating  to  patent  interference
proceedings under Subpart E.

  [24 FR 10332, Dec. 22, 11959; 33 FR 5624, Apr. 11, 1968;
paras. (a) and (b), 47 FR 41276, Sept. 17, 1982, effective
Oct. 1, 1982; para. (d), 49 FR 48416, Dec. 12, 1984,
effective Feb. 11, 1985; para. (d), 50 FR 9381, Mar. 7,
1985, effective May 8, 1985; para. (a), 54 FR 6893, Feb. 15,
1989, effective Apr. 17, 1989; para. (a) revised, 60 FR
20195, Apr. 25, 1995, effective June 8, 1995] § 1.104

Nature of examination; examiner's action.

  (a) On taking up an application for examination or a
patent in a reexamination proceeding, the examiner shall
make a thorough study thereof and shall make a thorough
investigation of the available prior art relating to the
subject matter of the claimed invention. The examination
shall be complete with respect both to compliance of the
application  or  patent  under  reexamination  with  the
applicable statutes and rules and to the patentability of
the invention as claimed, as well as with respect to matters
of form, unless otherwise indicated.

  (b) The applicant, or in the case of a reexamination
proceeding, both the patent owner and the requester, will be
notified of the examiner's action. The reasons for any
adverse action or any objection or requirement will be
stated and such information or references will be given as
may be useful in aiding the applicant, or in the case of a
reexamination proceeding the patent owner, to judge the
propriety of continuing the prosecution.

  (c) An international - type search will be made in all
national applications filed on and after June 1, 1978.

  (d)  Any  national  application  may  also  have  an
international - type search report prepared thereon at the
time  of  the  national  examination  on  the  merits,  upon
specific  written  request  therefor  and  payment  of  the
international - type search report fee. See § 1.21(e) for
amount of fee for preparation of international - type search
report.

  NOTE. - The Patent and Trademark Office does not require
that a formal report of an international - type search be
prepared in order to obtain a search fee refund in a later
filed international application.

  (e) Copending applications will be considered by the
examiner to be owned by, or subject to an obligation of
assignment to, the same person if: (1) the application files
refer to assignments recorded in the Patent and Trademark
Office in accordance with part 3 of this chapter which
convey the entire rights in the applications to the same
person  or  organization;  or  (2)  copies  of  unrecorded
assignments  which  convey  the  entire  rights  in  the
applications to the same person or organization are filed in
each of the applications; or (3) an affidavit or declaration
by the common owner is filed which states that there is
common ownership and states facts which explain why the
affiant or declarant believes there is common ownership; or
(4) other evidence is submitted which establishes common
ownership of the applications. In circumstances where the
common owner is a corporation or other organization an
affidavit or declara tion may be signed by an official of
the corporation or organization empowered to act on behalf
of the corporation or organization.

  [43 FR 20465, May 11, 1978; 46 FR 29182, May 29, 1981;
para. (d), 47 FR 41276, Sept. 17, 1982, effective date Oct.
1, 1982; para. (e), 50 FR 9381, Mar. 7, 1985, effective May
8, 1985; para. (e), 57 FR 29642, July 6, 1992, effective
Sept. 4, 1992]

 § 1.105 Completeness of examiner's action.

  The examiner's action will be complete as to all
matters, except that in appropriate circumstances, such as
misjoinder  of  invention,  fundamental  defects  in  the
application, and the like, the action of the examiner may be
limited to such matters before further action is made.
However, matters of form need not be raised by the examiner
until a claim is found allowable.

 § 1.106 Rejection of claims.

  (a) If the invention is not considered patentable, or not
considered patentable as claimed, the claims, or those
considered unpatentable will be rejected.

  (b) In rejecting claims for want of novelty or for
obviousness, the examiner must cite the best references at
his command. When a reference is complex or shows or
describes  inventions  other  than  that  claimed  by  the
applicant, the particular part relied on must be designated
as nearly as practicable. The pertinence of each reference,
if not apparent, must be clearly explained and each rejected
claim specified.

  (c) In rejecting claims the examiner may rely upon
admissions by the applicant, or the patent owner in a
reexamination  proceeding,  as  to  any  matter  affecting
patentability and, insofar as rejections in applications are
concerned, may also rely upon facts within his or her
knowledge pursuant to § 1.107.

  (d) Subject matter which is developed by another person
which qualifies as prior art only under 35 U.S.C. 102(f) or
(g) may be used as prior art under 35 U.S.C. 103 against a
claimed invention unless the entire rights to the subject
matter and the claimed invention were commonly owned by the
same person or organization or subject to an obligation of
assignment to the same person or organization at the time
the claimed invention was made.

  (e) The claims in any original application naming an
inventor will be rejected as being precluded by a waiver in
a published statutory invention registration naming that
inventor if the same subject matter is claimed in the
application and the statutory invention registration. The
claims in any reissue application naming an inventor will be
rejected as being precluded by a waiver in a published
statutory invention registration naming that inventor if the
reissue application seeks to claim subject matter (1) which
was not covered by claims issued in the patent prior to the
date of publication of the statutory invention registration
and (2) which was the same subject matter waived in the
statutory invention registration.

  [24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969;
para. (c) added, 47 FR 21752, May 19, 1982, effective July
1, 1982; paras. (d) and (e) , 50 FR 9381, Mar. 7, 1985,
effective May 8, 1985]

 § 1.107  Citation of references.

  (a) If domestic patents are cited by the examiner, their
numbers and dates, and the names of the patentees must be
stated. If foreign published applications or patents are
cited, their nationality or country, numbers and dates, and

the names of the patentees must be stated, and such other
data must be furnished as may be necessary to enable the
applicant, or in the case of a reexamination proceeding, the
patent owner, to identify the published applications or
patents cited. In citing foreign published applications or
patents, in case only a part of the document is involved,
the particular pages and sheets containing the parts relied
upon must be identified. If printed publications are cited,
the author (if any), title, date, pages or plates, and place
of publication, or place where a copy can be found, shall be
given.

  (b) When a rejection in an application is based on facts
within the personal knowledge of an employee of the Office,
the data shall be as specific as possible, and the reference
must be supported, when called for by the applicant, by the
affidavit of such employee, and such affidavit shall be
subject to contradiction or explanation by the affidavits of
the applicant and other persons.

  [46 FR 29182, May 29, 1981; para. (a) revised, 61 FR
42790, Aug. 19, 1996, effective Sept. 23, 1996]

 § 1.108  Abandoned applications not cited.

  Abandoned applications as such will not be cited as
references except those which have been opened to inspection
by the public following a defensive publication.

  [50 FR 9381, Mar. 7, 1985, effective May 8, 1985]

 § 1.109  Reasons for allowance.

  If  the  examiner  believes  that  the  record  of  the
prosecution as a whole does not make clear his or her
reasons for allowing a claim or claims, the examiner may set
forth such reasoning. The reasons shall be incorporated into
an Office action rejecting other claims of the application
or patent under reexamination or be the subject of a
separate communication to the applicant or patent owner. The
applicant or patent owner may file a statement commenting on
the reasons for allowance within such time as may be
specified by the examiner. Failure to file such a statement
shall not give rise to any implication that the applicant or
patent owner agrees with or acquiesces in the reasoning of
the examiner.

  [46 FR 29182, May 29, 1981]

 § 1.110  Inventorship and date of invention of the 
subject matter of individual claims.

  When more than one inventor is named in an application
or patent, the Patent and Trademark Office, when necessary
for  purposes  of  an  Office  proceeding,  may  require  an
applicant, patentee, or owner to identify the inventive
entity  of  the  subject  matter  of  each  claim  in  the
application or patent. Where appropriate, the invention
dates of the subject matter of each claim and the ownership
of the subject matter on the date of invention may be
required of the applicant , patentee or owner. See also §
1.78(c) and 1.130.

  [50 FR 9381, Mar. 7, 1985, effective date May 8, 1985;
revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23,

1996]

 ACTION BY APPLICANT AND FURTHER CONSIDERATION

 § 1.111  Reply by applicant or patent owner.

  (a) After the Office action, if adverse in any respect,
the applicant or patent owner, if he or she persists in his
or her application for a patent or reexamination proceeding,
must  reply  thereto  and  may  request  reconsideration  or
further examination, with or without amendment.

  (b) In order to be entitled to reconsideration or further
examination, the applicant or patent owner must

  make  request  therefor  in  writing.  The  reply  by  the
applicant or patent owner must distinctly and specifically
point out the supposed errors in the examiner's action and
must respond to every ground of objection and rejection in
the prior Officeaction.  If the reply is with respect to an
application, a request may be made that objections or
requirements  as  to  form  not  necessary  to  further
consideration of the claims be held in abeyance until
allowable subject matter is indicated. The applicant's or
patent owner's reply must appear throughout to be a bona
fide attempt to advance the case to final action. A general
allegation that the claims define a patentable invention
without specifically pointing out how the language of the
claims patentably distinguishes them from the references
does not comply with the requirements of this section.

  (c) In amending in response to a rejection of claims in
an  application  or  patent  undergoing  reexamination,  the
applicant  or  patent  owner  must  clearly  point  out  the
patentable novelty which he or she thinks the claims present
in view of the state of the art disclosed by the references
cited or the objections made. He or she must also show how
the amendments avoid such references or objections. (See §
1.135 and § 1.136 for time for reply.)

  [46 FR 29182, May 29, 1981]

 § 1.112  Reconsideration.

  After response by applicant or patent owner ( § 1.111),
the  application  or  patent  under  reexamination  will  be
reconsidered and again examined. The applicant or patent
owner will be notified if claims are rejected, or objections
or requirements made, in the same manner as after the first
examination. Applicant or patent owner may respond to such
Office action in the same manner provided in § 1.111, with
or without amendment. Any amendments after the second Office
action must ordinarily be restricted to the rejection or to
the objections or requirements made. The application or
patent under reexamination will be again considered, and so
on repeatedly, unless the examiner has indicated that the
action is final.

  [46 FR 29182, May 29, 1981; revised, 61 FR 42790, Aug.
19, 1996, effective Sept. 23,1996]

 § 1.113  Final rejection or action.

  (a) On the second or any subsequent examination or
consideration the rejection or other action may be made

final whereupon applicant's or patent owner's response is
limited to appeal in the case of rejection of any claim ( §
1.191), or to amendment as specified in § 1.116. Petition
may be taken to the Commissioner in the case of objections
or requirements not involved in the rejection of any claim (
§ 1.181). Response to a final rejection or action must
include cancellation of, or appeal from the rejection of,
each rejected claim. If any claim stands allowed, the
response to a final rejection or action must comply with any
requirements or objections to form.

  (b) In making such final rejection, the examiner shall
repeat or state all grounds of rejection then considered
applicable to the claims in the case, clearly stating the
reasons therefor.

  [24 FR 10332, Dec. 22, 1959; 46 FR 29182, May 29, 1981]

  AMENDMENTS

 § 1.115  Amendment.

  The applicant may amend before or after the first ex
amination and action and also after the second or subsequent
examination or reconsideration as specified in § 1.112 or
when and as specifically required by the examiner. The
patent owner may amend in accordance with § 1.510(e) and
1.530(b) prior to reexamination and during reexamination
proceedings in accordance with § 1.112 and § 1.116.

  [46 FR 29183, May 29, 1981]

 § 1.116  Amendments after final action.

  (a) After final rejection or action ( § 1.113) amendments
may  be  made  cancelling  claims  or  complying  with  any
requirement  of  form  which  has  been  made.  Amendments
presenting rejected claims in better form for consideration
on appeal may be admitted. The admission of, or refusal to
admit,  any  amendment  after  final  rejection,  and  any
proceedings relative thereto, shall not operate to relieve
the application or patent under reexamination from its
condition as subject to appeal or to save the application
from abandonment under § 1.135.

  (b) If amendments touching the merits of the application
or patent under reexamination are presented after final
rejection, or after appeal has been taken, or when such
amendment  might  not  otherwise  be  proper,  they  may  be
admitted upon a showing of good and sufficient reasons why
they are necessary and were not earlier presented.

  (c) No amendment can be made as a matter of right in
appealed cases. After decision on appeal, amendments can
only be made as provided in § 1.198, or to carry into effect
a recommendation under § 1.196.

  [24 FR 10332, Dec. 22, 1959; 46 FR 29183, May 29, 1981]

 § 1.117  Amendment and revision required.

  The specification, claims, and drawings must be amended
and  revised  when  required  to  correct  inaccuracies  of
description and definition or unnecessary prolixity, and to
secure correspondence between the claims, the specification,

and the drawing.

 § 1.118  Amendment of disclosure.

  (a) No amendment shall introduce new matter into the
disclosure of an application after the filing date of the
application  (  §  1.53(b)).  All  amendments  to  the
specification, including the claims, and the drawings filed
after the filing date of the application must conform to at
least one of them as it was at the time of the filing of the
application.  Matter  not  found  in  either,  involving  a
departure from or an addition to the original disclosure,
cannot be added to the application after its filing date
even  though  supported  by  an  oath  or  declaration  in
accordance with § 1.63 or § 1.67 filed after the filing date
of the application.

  (b) If it is determined that an amendment filed after the
filing date of the application introduces new matter, claims
containing new matter will be rejected and deletion of the
new  matter  in  the  specification  and  drawings  will  be
required even if the amendment is accompanied by an oath or
declaration in accordance with § 1.63 or § 1.67.

  [48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983]

 § 1.119  Amendment of claims.

  The claims may be amended by canceling particular
claims, by presenting new claims, or by rewriting particular
claims as indicated in § 1.121. The requirements of § 1.111
must  be  complied  with  by  pointing  out  the  specific
distinctions believed to render the claims patentable over
the references in presenting arguments in support of new
claims and amendments.

  [32 FR 13583, Sept. 28, 1967]

 § 1.121  Manner of making amendments.

  (a) Erasures, additions, insertions, or alterations of
the Office file of papers and records must not be physically
entered by the applicant. Amendments to the application
(excluding the claims) are made by filing a paper (which
should conform to § 1.52) directing or requesting that
specified amendments be made. The exact word or words to be
stricken out or inserted by said amendment must be specified
and the precise point indicated where the deletion or
insertion is to be made.

  (b) Except as otherwise provided herein, a particular
claim may be amended only by directions to cancel or by
rewriting such claim with underlining below the word or
words added and brackets around the word or words deleted.
The rewriting of a claim in this form will be construed as
directing the cancellation of the original claim; however,
the original claim number followed by the parenthetical word
"amended" must be used for the rewritten claim. If a
previously rewritten claim is rewritten, underlining and
bracketing will be applied in reference to the previously
rewritten claim with the parenthetical expression "twice
amended,"  "three  times  amended,"  etc.,  following  the
original claim number.

  (c) A particular claim may be amended in the manner

indicated for the application in paragraph (a) of this
section  to  the  extent  of  corrections  in  spelling,
punctuation, and typographical errors. Additional amendments
in this manner will be admitted provided the changes are
limited to (1) deletions and/or (2) the addition of no more
than five words in any one claim. Any amendment submitted
with instructions to amend particular claims but failing to
conform to the provisions of paragraphs (b) and (c) of this
section  may  be  considered  nonresponsive  and  treated
accordingly.

  (d) Where underlining or brackets are intended to appear
in the printed patent or are properly part of the claimed
material and not intended as symbolic of changes in the
particular claim, amendment by rewriting in accordance with
paragraph (b) of this section shall be prohibited.

  (e) In reissue applications, both the descriptive portion
and the claims are to be amended by either (1) submitting a
copy of a portion of the description or an entire claim with
all matter to be deleted from the patent being placed
between brackets and all matter to be added to the patent
being underlined, or (2) indicating the exact word or words
to be stricken out or inserted and the precise point where
the deletion or insertion is to be made. Any word or words
to be inserted must be underlined. See § 1.173.

  (f) Proposed amendments presented in patents involved in
reexamination proceedings must be presented in the form of a
full copy of the text of: (1) Each claim which is amended
and (2) each paragraph of the description which is amended.
Matter deleted from the patent shall be placed between
brackets and matter added shall be underlined. Copies of the
printed  claims  from  the  patent  may  be  used  with  any
additions being indicated by carets and deleted material
being placed between brackets. Claims must not be renumbered
and the numbering of the claims added for reexamination must
follow the number of the highest numbered patent claim. No
amendment may enlarge the scope of the claims of the patent.
No new matter may be introduced into the patent.

  [32 FR 13583, Sept. 28, 1967; 46 FR 29183, May 29, 1981;
para. (e), 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984]

 § 1.122  Entry and consideration of amendments.

  (a) Amendments are "entered" by the Office by making the
proposed deletions by drawing a line in red ink through the
word  or  words  cancelled  and  by  making  the  proposed
substitutions or insertions in red ink, small insertions
being  written  in  at  the  designated  place  and  large
insertions being indicated by reference.

  (b) Ordinarily all amendments presented in a paper filed
while the application is open to amendment are entered and
considered,  subsequent  cancellation  or  correction  being
required of improper amendments. Untimely amendment papers
may be refused entry and consideration in whole or in part.
For amendments presented during an interference see § 1.664.

  [24 FR 10332, Dec. 22, 1959; para. (b), 49 FR 48416,
Dec. 12, 1984, effective Feb. 11, 1985]

 § 1.123  Amendments to the drawing.

  No change in the drawing may be made except with
permission  of  the  Office.  Permissible  changes  in  the
construction shown in any drawing may be made only by the
submission of a substitute drawing by applicant. A sketch in
permanent ink showing proposed changes, to become part of
the record, must be filed for approval by the examiner and
should be a separate paper.

  [48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; 49
FR 555, Jan. 4, 1984, effective Apr. 1, 1984; amended, 58 FR
38719, July 20, 1993, effective Oct. 1, 1993]

 § 1.124  Amendment of amendments.

  When an amendatory clause is to be amended, it should be
wholly rewritten and the original insertion canceled so that
no interlineations or deletions shall appear in the clause
as finally presented. Matter canceled by amendment can be
reinstated only by a subsequent amendment presenting the
canceled matter as a new insertion.

 § 1.125  Substitute specification.

  If the number or nature of the amendments shall render
it difficult to consider the case, or to arrange the papers
for printing or copying, the examiner may require the entire
specification, including the claims, or any part thereof, to
be rewritten. A substitute specification may not be accepted
unless it has been required by the examiner or unless it is
clear to the examiner that acceptance of a substitute
specification  would  facilitate  processing  of  the
application. Any substitute specification filed must be
accompanied by a statement that the substitute specification
includes no new matter. Such statement must be a verified
statement if made by a person not registered to practice
before the Office.

  [48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983]

 § 1.126  Numbering of claims.

  The original numbering of the claims must be preserved
throughout the prosecution. When claims are canceled, the
remaining claims must not be renumbered. When claims are
added, except when presented in accordance with § 1.121(b),
they  must  be  numbered  by  the  applicant  consecutively
beginning  with  the  number  next  following  the  highest
numbered claim previously presented (whether entered or
not). When the application is ready for allowance, the
examiner,  if  necessary,  will  renumber  the  claims
consecutively in the order in which they appear or in such
order as may have been requested by applicant.

  [32 FR 13583, Sept. 28, 1967]

 § 1.127  Petition from refusal to admit amendment.

  From the refusal of the primary examiner to admit an
amendment, in whole or in part, a petition will lie to the
Commissioner under § 1.181.

  TRANSITIONAL PROVISIONS

 § 1.129  Transitional procedures for limited
examination after final rejection and restriction practice.

  (a) An applicant in an application, other than for
reissue or a design patent, that has been pending for at
least two years as of June 8, 1995, taking into account any
reference made in such application to any earlier filed
application under 35 U.S.C. 120, 121 and 365(c), is entitled
to have a first submission entered and considered on the
merits  after  final  rejection  under  the  following
circumstances: The Office will consider such a submission,
if the first submission and the fee set forth in § 1.17(r)
are filed prior to the filing of an appeal brief and prior
to abandonment of the application. The finality of the final
rejection is automatically withdrawn upon the timely filing
of the submission and payment of the fee set forth in §
1.17(r). If a subsequent final rejection is made in the
application,  applicant  is  entitled  to  have  a  second
submission entered and considered on the merits after the
subsequent  final  rejection  under  the  following
circumstances: The Office will consider such a submis sion,
if the second submission and a second fee set forth in §
1.17(r) are filed prior to the filing of an appeal brief and
prior to abandonment of the application. The finality of the
subsequent final rejection is automatically withdrawn upon
the timely filing of the submission and payment of the
second fee set forth in § 1.17(r). Any submission filed
after a final rejection made in an application subsequent to
the fee set forth in § 1.17(r) having been twice paid will
be treated as set forth in § 1.116. A submission as used in
this  paragraph  includes,  but  is  not  limited  to,  an
information  disclosure  statement,  an  amendment  to  the
written  description,  claims  or  drawings  and  a  new
substantive  argument  or  new  evidence  in  support  of
patentability.

  (b)(1) In an application, other than for reissue or a
design patent, that has been pending for at least three
years as of June 8, 1995, taking into account any reference
made in the application to any earlier filed application
under 35 U.S.C. 120, 121 and 365(c), no requirement for
restriction or for the filing of divisional applications
shall be made or maintained in the application after June 8,
1995, except where:

  (i) the requirement was first made in the application or
any earlier filed application under 35 U.S.C. 120, 121 and
365(c) prior to April 8, 1995;

  (ii)  the  examiner  has  not  made  a  requirement  for
restriction in the present or parent application prior to
April 8, 1995, due to actions by the applicant; or

  (iii) the required fee for examination of each additional
invention was not paid.

  (2) If the application contains more than one independent
and distinct invention and a requirement for restriction or
for the filing of divisional applications cannot be made or
maintained pursuant to this paragraph, applicant will be so
notified and given a time period to:

  (i) elect the invention or inventions to be searched and
examined, if no election has been made prior to the notice,
and pay the fee set forth in 1.17(s) for each independent
and distinct invention claimed in the application in excess
of one which applicant elects;

  (ii) confirm an election made prior to the notice and pay
the fee set forth in § 1.17(s) for each independent and
distinct invention claimed in the application in addition to
the one invention which applicant previously elected; or

  (iii) file a petition under this section traversing the
requirement. If the required petition is filed in a timely
manner, the original time period for electing and paying the
fee set forth in § 1.17(s) will be deferred and any decision
on the petition affirming or modifying the requirement will
set a new time period to elect the invention or inventions
to be searched and examined and to pay the fee set forth in
§  1.17(s)  for  each  independent  and  distinct  invention
claimed in the application in excess of one which applicant
elects.

  (3) The additional inventions for which the required fee
has not been paid will be withdrawn from consideration under
§ 1.142(b). An applicant who desires examination of an
invention  so  withdrawn  from  consideration  can  file  a
divisional application under 35 U.S.C. 121.

  (c)  The  provisions  of  this  section  shall  not  be
applicable to any application filed after June 8, 1995.

  [Added, 60 FR 20195, Apr. 25, 1995, effective June 8,
1995]

 AFFIDAVITS OVERCOMING REJECTIONS

 § 1.130  Affidavit or declaration to disqualify
commonly owned patent as prior art.

  (a) When any claim of an application or a patent under
reexamination is rejected under 35 U.S.C. 103 in view of a
U.S. patent which is not prior art under 35 U.S.C. 102(b),
and the inventions defined by the claims in the application
or patent under reexamination and by the claims in the
patent are not identical but are not patentably distinct,
and  the  inventions  are  owned  by  the  same  party,  the
applicant or owner of the patent under reexamination may
disqualify the patent as prior art. The patent can be
disqualified as prior art by submission of:

  (1) A terminal disclaimer in accordance with § 1.321(c),
and

  (2) An oath or declaration stating that the application
or patent under reexamination and the patent are currently
owned by the same party, and that the inventor named in the
application or patent under reexamination is the prior
inventor under 35 U.S.C. 104.

  (b) When an application or a patent under reexamination
claims an invention which is not patentably distinct from an
invention claimed in a commonly owned patent with the same
or  a  different  inventive  entity,  a  double  patenting
rejection will be made in the application or a patent under
reexamination.  A  judicially  created  double  patenting
rejection may be obviated by filing a terminal disclaimer in
accordance with § 1.321(c).

  [Added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23,
1996]

 § 1.131  Affidavit or declaration of prior invention to
overcome cited patent or publication.

  (a)(1) When any claim of an application or a pat ent
under reexamination is rejected under 35 U.S.C. 102(a) or
(e), or 35 U.S.C. 103 based on a U.S. patent to another or
others which is prior art under 35 U.S.C. 102(a) or (e) and
which substantially shows or describes but does not claim
the same patentable invention, as defined in § 1.601(n), or
on  reference  to  a  foreign  patent  or  to  a  printed
publication, the inventor of the subject matter of the
rejected claim, the owner of the patent under reexamination,
or the party qualified under § 1.42, 1.43, or 1.47, may
submit an appropriate oath or declaration to overcome the
patent or publication. The oath or declaration must include
facts showing a completion of the invention in this country
or in a NAFTA or WTO member country before the filing date
of the application on which the U.S. patent issued, or
before the date of the foreign patent, or before the date of
the  printed  publication.  When  an  appropriate  oath  or
declaration is made, the patent or publication cited shall
not bar the grant of a patent to the inventor or the
confirmation of the patentability of the claims of the
patent,  unless  the  date  of  such  patent  or  printed
publication is more than one year prior to the date on which
the inventor's or patent owner's application was filed in
this country.

  (2) A date of completion of the invention may not be
established under this section before December 8, 1993, in a
NAFTA country, or before January 1, 1996 in a WTO member
country other than a NAFTA country.

  (b) The showing of facts shall be such, in character and
weight, as to establish reduction to practice prior to the
effective date of the reference, or conception of the
invention prior to the effective date of the reference
coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the
application. Original exhibits of drawings or records, or
photocopies thereof, must accompany and form part of the
affidavit or declaration or their absence satisfactorily
explained.

  [24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969;
para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27,
1983; para. (a), 50 FR 9381, Mar. 7, 1985, effective May 8,
1985; 50 FR 11366, Mar. 21, 1985; 53 FR 23733, June 23,
1988, effective Sept. 12, 1988; para. (a)(1) revised and
para. (a)(2) added, 60 FR 21043, May 1, 1995, effective May
31, 1995; para. (a) revised, 61 FR 42790, Aug. 19, 1996,
effective Sept. 23, 1996]

 § 1.132  Affidavits or declarations traversing grounds 
of rejection.

  When any claim of an application or a patent under
reexamination is rejected on reference to a U.S. patent
which substantially shows or describes but does not claim
the same patentable invention, as defined in § 1.601(n), on
reference to a foreign patent, on reference to a printed
publication, or on reference to facts within the personal
knowledge of an employee of the Office, or when rejected
upon a mode or capability of operation attributed to a

reference, or because the alleged invention is held to be
inoperative, lacking in utility, frivolous, or injurious to
public  health  or  morals,  affidavits  or  declarations
traversing these references or objections may be received.

  [48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983;
revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23,
1996]

  INTERVIEWS

 § 1.133 Interviews.

  (a)  Interviews with examiners concerning applications
and other matters pending before the Office must be had in
the examiners' rooms at such times, within office hours, as
the respective examiners may designate. Interviews will not
be  permitted  at  any  other  time  or  place  without  the
authority of the Commissioner. Interviews for the discussion
of the patentability of pending applications will not be had
before the first official action thereon. Interviews should
be arranged for in advance.

  (b) In every instance where reconsideration is requested
in view of an interview with an examiner, a complete written
statement of the reasons presented at the interview as
warranting favorable action must be filed by the applicant.
An interview does not remove the necessity for response to
Office actions as specified in § 1.111, § 1.135.

  TIME FOR RESPONSE BY APPLICANT; ABANDONMENT OF APPLICATION

 § 1.134 Time period for response to an Office action.

  An Office action will notify the applicant of any non -
statutory  or  shortened  statutory  time  period  set  for
response to an Office action. Unless the applicant is
notified in writing that response is required in less than
six months, a maximum period of six months is allowed.

  [47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982]

 § 1.135  Abandonment for failure to respond within time
period.

  (a) If an applicant of a patent application fails to
respond within the time period provided under § 1.134 and §
1.136, the application will become abandoned unless an
Office action indicates otherwise.

  (b)  Prosecution of an application to save it from
abandonment pursuant to paragraph (a) of this section must
include such complete and proper action as the condition of
the case may require. The admission of an amendment not
responsive to the last Office action, or refusal to admit
the same, and any proceedings relative thereto, shall not
operate to save the application from abandonment.

  (c)  When action by the applicant is a bona fide attempt
to respond and to advance the case to final action, and is
substantially a complete response to the Office action, but
consideration  of  some  matter  or  compliance  with  some
requirement has been inadvertently omitted, opportunity to
explain and supply the omission may be given before the
question of abandonment is considered.

  [paras. (a), (b), and (c), 47 FR 41276, Sept. 17, 1982,
effective Oct. 1, 1982; para. (d) deleted, 49 FR 555, Jan.
4, 1984, effective Apr. 1, 1984]

 § 1.136 Filing of timely responses with petition and 
fee for extension of time and extensions of time for cause.

  (a)(1) If an applicant is required to respond within a
nonstatutory or shortened statutory time period, applicant
may respond up to four months after the time period set if a
petition for an extension of time and the fee set in § 1.17
are filed prior to or with the response, unless:

  (i) Applicant is notified otherwise in an Office action,

  (ii) The response is a reply brief submitted pursuant to
§ 1.193(b),

  (iii)The response is a request for an oral hearing
submitted pursuant to § 1.194(b),

  (iv) The response is to a decision by the Board of Patent
Appeals and Interferences pursuant to § 1.196, § 1.197 or §
1.304, or

  (v)  The  application  is  involved  in  an  interference
declared pursuant to § 1.611,

  (a)(2)  The date on which the response, the petition,
and the fee have been filed is the date of the response and
also the date for purposes of determining the period of
extension and the corresponding amount of the fee. The
expiration of the time period is determined by the amount of
the fee paid. In no case may an applicant respond later than
the maximum time period set by statute, or be granted an
extension of time under paragraph (b) of this section when
the provisions of this paragraph are available. See §
1.136(b) for extensions of time relating to proceedings
pursuant to § 1.193(b), 1.194, 1.196 or 1.197. See § 1.304
for extension of time to appeal to the U.S.C. ourt of
Appeals for the Federal Circuit or to commence a civil
action.  See  §  1.550(c)  for  extension  of  time  in
reexamination proceedings and § 1.645 for extension of time
in interference proceedings.

  (b)  When a response with petition and fee for extension
of time cannot be filed pursuant to paragraph (a) of this
section, the time for response will be extended only for
sufficient cause and for a reasonable time specified. Any
request for such extension must be filed on or before the
day on which action by the applicant is due, but in no case
will the mere filing of the request effect any extension. In
no case can any extension carry the date on which response
to an Office action is due beyond the maximum time period
set  by  statute  or  be  granted  when  the  provisions  of
paragraph (a) of this section are available. See § 1.304 for
extension of time to appeal to the U.S.C. ourt of Appeals
for the Federal Circuit or to commence a civil action, §
1.645 for extension of time in interference proceedings, and
§  1.550(c)  for  extension  of  time  in  reexamination
proceedings.

  [47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; 49
FR 555, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416,

Dec. 12, 1984, effective Feb. 11, 1985; 54 FR 29551, July
13, 1989, effective Aug. 20, 19893; para. (a) revised, 58 FR
54504, Oct. 22, 1993, effective Jan. 3, 1994]

 § 1.137  Revival of abandoned application.

  (a) An application abandoned for failure to prosecute may
be revived as a pending application if it is shown to the
satisfaction  of  the  Commissioner  that  the  delay  was
unavoidable. A petition to revive an abandoned application
must be promptly filed after the applicant is notified of,
or otherwise becomes aware of, the abandonment, and must be
accompanied by:

  (1) a proposed response to continue prosecution of that
application, or filing of a continuing application, unless
either has been previously filed;

  (2) the petition fee as set forth in § 1.17(1); and

  (3) a showing that the delay was unavoidable. The showing
must  be  a  verified  showing  if  made  by  a  person  not
registered to practice before the Patent and Trademark
Office.

  (b) An application unintentionally abandoned for failure
to prosecute may be revived as a pending application if the
delay  was  unintentional.  A  petition  to  revive  an
unintentionally abandoned application must be:

  (1)  accompanied  by  a  proposed  response  to  continue
prosecution  of  that  application,  or  the  filing  of  a
continuing application, unless either has been previously
filed;

  (2) accompanied by the petition fee as set forth in §
1.17(m);

  (3)  accompanied  by  a  statement  that  the  delay  was
unintentional. The statement must be a verified statement if
made by a person not registered to practice before the
Patent and Trademark Office. The Commissioner may require
additional information where there is a question whether the
delay was unintentional; and

  (4) filed either:

  (i) within one year of the date on which the application
became abandoned; or

  (ii) within three months of the date of the first
decision on a petition to revive under paragraph (a) of this
section which was filed within one year of the date on which
the application became abandoned.

  (c) In all applications filed before June 8, 1995, and in
all design applications filed on or after June 8, 1995, any
petition pursuant to paragraph (a) of this section not filed
within  six  months  of  the  date  of  abandonment  of  the
application, must be accompanied by a terminal disclaimer
with fee under § 1.321 dedicating to the public a terminal
part of the term of any patent granted thereon equivalent to
the period of abandonment of the application. The terminal
disclaimer must also apply to any patent granted on any
continuing application entitled under 35 U.S.C. 120 to the

benefit of the filing date of the application for which
revival is sought.

  (d) Any request for reconsideration or review of a
decision refusing to revive an application upon petition
filed pursuant to paragraphs (a) or (b) of this section, to
be considered timely, must be filed within two months of

 the decision refusing to revive or within such time as set
in the decision.

  (e) The time periods set forth in this section cannot be
extended, except that the three - month period set forth in
paragraph (b)(4)(ii) and the time period set forth in
paragraph (d) of this section may be extended under the
provisions of § 1.136.

  [47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982;
para. (b) 48 FR 2713, Jan. 20, 1983, effective Feb. 27,
1983; paras. (a) - (c), paras. (d) & (e) added, 58 FR 44277,
Aug. 20,1993, effective Sept. 20, 1993; para. (c) revised,
60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

 § 1.138  Express abandonment.

  An application may be expressly abandoned by filing in
the Patent and Trademark Office a written declaration of
abandonment signed by the applicant and the assignee of
record,  if  any,  and  identifying  the  application.  An
application may also be expressly abandoned by filing a
written declaration of abandonment signed by the attorney or
agent of record. A registered attorney or agent acting under
the provision of § 1.34(a), or of record, may also expressly
abandon a prior application as of the filing date granted to
a continuing application when filing such a continuing
application. Express abandonment of the application may not
be recognized by the Office unless it is actually received
by appropriate officials in time to act thereon before the
date of issue.

  [47 FR 47244, Oct. 25, 1982, effective Feb. 27, 1983; 49
FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]

 § 1.139  Revival of provisional application.

  (a) A provisional application which has been accorded a
filing date and abandoned for failure to timely respond to
an Office requirement may be revived so as to be pending for
a period of no longer than twelve months from its filing
date if it is shown to the satisfaction of the Commissioner
that the delay was unavoidable. Under no circumstances will
the provisional application be pending after twelve months
from its filing date. A petition to revive an abandoned
provisional application must be promptly filed after the
applicant is notified of, or otherwise becomes aware of, the
abandonment, and must be accompanied by:

  (1) the required response unless it has been previously
filed;

  (2) the petition fee as set forth in § 1.17(1); and

  (3) a showing that the delay was unavoidable. The showing
must  be  a  verified  showing  if  made  by  a  person  not
registered to practice before the Patent and Trademark

Office.

  (b) A provisional application which has been accorded a
filing date and abandoned for failure to timely respond to
an Office requirement may be revived so as to be pending for
a period of no longer than twelve months from its filing
date if the delay was unintentional. Under no circumstances
will the provisional application be pending after twelve
months from its filing date. A petition to revive an
abandoned provisional application must be:

  (1) accompanied by the required response unless it has
been previously filed;

  (2) accompanied by the petition fee as set forth in §
1.17(m);

  (3)  accompanied  by  a  statement  that  the  delay  was
unintentional. The statement must be a verified statement if
made by a person not registered to practice before the
Patent and Trademark Office. The Commis sioner may require
additional information where there is a question whether the
delay was unintentional; and

  (4) filed either:

  (i) within one year of the date on which the provisional
application became abandoned; or

  (ii) within three months of the date of the first
decision on a petition to revive under paragraph (a) of this
section which was filed within one year of the date on which
the provisional application became abandoned.

  (c) Any request for reconsideration or review of a
decision refusing to revive a provisional application upon
petition filed pursuant to paragraphs (a) or (b) of this
section, to be considered timely, must be filed within two
months of the decision refusing to revive or within such
time as set in the decision.

  (d) The time periods set forth in this section cannot be
extended, except that the three - month period set forth in
paragraph (b)(4)(ii) of this section and the time period set
forth in paragraph (c) of this section may be extended under
the provisions of § 1.136.

  [Added, 60 FR 20195, Apr. 25, 1995, effective June 8,
1995]

  JOINDER OF INVENTIONS IN ONE APPLICATION; RESTRICTION

 § 1.141  Different inventions in one national
application.

  (a) Two or more independent and distinct inventions may
not be claimed in one national application, ex cept that
more than one species of an invention, not to exceed a
reasonable number, may be specifically claimed in different
claims in one national application, provided the application
also includes an allowable claim gen eric to all the claimed
species and all the claims to species in excess of one are
written in dependent form ( § 1.75) or otherwise include all
the limitations of the generic claim .

  (b)  Where  claims  to  all  three  categories,  product,
process of making, and process of use are included in a
national  application,  a  three  way  requirement  for
restriction can only be made where the process of making is
distinct from the product. If the process of making and the
product are not distinct, the process of using may be joined
with the claims directed to the product and the process of
making the product even though a showing of distinctness
between the product and process of using the product can be
made.

  [52 FR 20046, May 28, 1987, effective July 1, 1987]

 § 1.142  Requirement for restriction.

  (a) If two or more independent and distinct inventions
are claimed in a single application, the examiner in his
action shall require the applicant in his response to that
action to elect that invention to which his claim shall be
restricted, this official action being called a requirement
for restriction (also known as a requirement for division).
If the distinctness and independence of the inventions be
clear, such requirement will be made before any action on
the merits; however, it may be made at any time before final
action in the case at the discretion of the examiner.

  (b) Claims to the invention or inventions not elected, if
not  cancelled,  are  nevertheless  withdrawn  from  further
consideration by the examiner by the election, subject
however to reinstatement in the event the requirement for
restriction is withdrawn or overruled.

 § 1.143  Reconsideration of requirement.

  If the applicant disagrees with the requirement for
restriction, he may request reconsideration and withdrawal
or modification of the requirement, giving the reasons
therefor (see § 1.111). In requesting reconsideration the
applicant  must  indicate  a  provisional  election  of  one
invention for prosecution, which invention shall be the one
elected in the event the requirement becomes final. The
requirement for restriction will be reconsidered on such a
request. If the requirement is repeated and made final, the
examiner will at the same time act on the claims to the
invention elected.

 § 1.144 Petition from requirement for restriction.

  After  a  final  requirement  for  restriction,  the
applicant, in addition to making any response due on the
remainder of the action, may petition the Commissioner to
review the requirement. Petition may be deferred until after
final action on or allowance of claims to the invention
elected, but must be filed not later than appeal. A petition
will not be considered if reconsideration of the requirement
was not requested. (See § 1.181.)

 § 1.145  Subsequent presentation of claims for
different invention.

  If, after an office action on an application, the
applicant presents claims directed to an invention distinct
from and independent of the invention previously claimed,
the applicant will be required to restrict the claims to the
invention previously claimed if the amend ment is entered,

subject to reconsideration and review as provided in § 1.143
and § 1.144.

 § 1.146 Election of species.

  In the first action on an application containing a
generic claim and claims restricted separately to each of
more than one species embraced thereby, the examiner may
require the applicant in his response to that action to
elect that species of his or her invention to which his or
her claim shall be restricted if no generic claim is held
allowable. However, if such application contains claims
directed to more than a reasonable number of species, the
examiner may require restriction of the claims to not more
than a reasonable number of species before taking further
action in the case.

  [43 FR 20465, May 11, 1978]

  DESIGN PATENTS

 § 1.151 Rules applicable.

  The rules relating to applications for patents for other
inventions  or  discoveries  are  also  applicable  to
applications for patents for designs except as otherwise
provided.

 § 1.152  Design drawing.

  The design must be represented by a drawing that
complies with the requirements of § 1.84, and must contain a
sufficient  number  of  views  to  constitute  a  complete
disclosure of the appearance of the article. Appropriate
surface shading must be used to show the character or
contour of the surfaces represented. Solid black surface
shading is not permitted except when used to represent color
contrast.  Broken  lines  may  be  used  to  show  visible
environmental structure, but may not be used to show hidden
planes and surfaces which cannot be seen through opaque
materials.  Alternate  positions  of  a  design  component,
illustrated by full and broken lines in the same view are
not permitted in a design drawing. Photographs and ink
drawings  must  not  be  combined  in  one  application.
Photographs submitted in lieu of ink drawings in design
patent applications must comply with § 1.84(b) and must not
disclose environmental structure but must be limited to the
design for the article claimed. Color drawings and color
photographs are not permitted in design patent applications.

  [53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989;
amended, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993]

 § 1.153 Title, description and claim, oath or declaration.

  (a) The title of the design must designate the particular
article. No description, other than a reference to the
drawing, is ordinarily required. The claim shall be in
formal terms to the ornamental design for the article
(specifying name) as shown, or as shown and described. More
than one claim is neither required nor permitted.

  (b) The oath or declaration required of the applicant
must comply with § 1.63.

  [24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964;
para. (b), 48 FR 2712, Jan. 20, 1983, effective Feb. 27,
1983]

 § 1.154 Arrangement of specification.

  (a)  The  elements  of  the  design  application,  if
applicable, should appear in the following order:

  (1) Design Application Transmittal Form.

  (2) Fee Transmittal Form.

  (3) Preamble, stating name of the applicant and title of
the design.

  (4) Cross - reference to related applications.

  (5) Statement regarding federally sponsored research or
development.

  (6) Description of the figure or figures of the drawing.

  (7) Feature Description.

  (8) A single claim.

  (9) Drawings or photographs.

  (10) Executed oath or declaration (See § 1.153(b)).

  (b) [Reserved]

  [24 FR 10332, Dec. 22, 1959, para. (e), 48 FR 2713, Jan.
20, 1983, effective date Feb. 27, 1983; revised, 61 FR
42790, Aug. 19, 1996, effective Sept. 23, 1996]

 § 1.155 Issue and term of design patents.

  (a)  If,  on  examination,  it  shall  appear  that  the
applicant is entitled to a design patent under the law, a
notice of allowance will be sent to the applicant, or
applicant's attorney or agent, calling for the payment of
the issue fee ( § 1.18(b)). If this issue fee is not paid
within 3 months of the date of the notice of allowance, the
application shall be regarded as abandoned.

  (b) The Commissioner may accept the payment of the issue
fee later than three months after the mailing of the notice
of allowance as though no abandonment had ever occurred if
upon petition the delay in payment is shown to have been
unavoidable. The petition to accept the delayed payment must
be promptly filed after the applicant is notified of, or
otherwise becomes aware of, the abandonment, and must be
accompanied by:

  (1)  the  issue  fee,  unless  it  has  been  previously
submitted;

  (2) the fee for delayed payment ( § 1.17(1)); and

  (3) a showing that the delay was unavoidable. The showing
must  be  a  verified  showing  if  made  by  a  person  not
registered to practice before the Patent and Trademark
Office.

  (c) The Commissioner may, upon petition, accept the
payment of the issue fee later than three months after the
mailing of the notice of allowance as though no abandonment
had ever occurred if the delay in payment was unintentional.
The petition to accept the delayed payment must be:

  (1) accompanied by the issue fee, unless it has been
previously submitted;

  (2) accompanied by the fee for unintentionally delayed
payment ( § 1.17(m));

  (3)  accompanied  by  a  statement  that  the  delay  was
unintentional. The statement must be a verified statement if
made by a person not registered to practice before the
Patent and Trademark Office. The Commissioner may require
additional information where there is a question whether the
delay was unintentional; and

  (4) filed either:

  (i) within one year of the date on which the application
became abandoned; or

  (ii) within three months of the date of the first
decision on a petition under paragraph (b) of this section
which was filed within one year of the date on which the
application became abandoned.

  (d) Any petition pursuant to paragraph (b) of this
section  not  filed  within  six  months  of  the  date  of
abandonment of the application, must be accompanied by a
terminal disclaimer with fee under § 1.321 dedicating to the
public a terminal part of the term of any patent granted
thereon equivalent to the period of abandon ment of the
application. The terminal disclaimer must also apply to any
patent granted on any continuing application entitled under
35 U.S.C. 120 to the benefit of the filing date of the
application for which revival is sought.

  (e) Any request for reconsideration or review of a
decision  refusing  to  accept  the  delayed  payment  upon
petition filed pursuant to paragraphs (b) or (c) of this
section, to be considered timely, must be filed within two
months of the decision refusing to accept the delayed
payment or within such time as set in the decision.

  (f) The time periods set forth in this section cannot be
extended, except that the three - month period set forth in
paragraph (c)(4)(ii) and the time period set forth in
paragraph (e) of this section may be extended under the
provisions of § 1.136.

  [47 FR 41277, Sept. 17, 1982, effective date Oct. 1,
1982; paras. (b) - (d) amended, paras. (e) and (f) added, 58
FR 44277, Aug. 20, 1993, effective Sept. 20, 1993]

  PLANT PATENTS

 § 1.161  Rules applicable.

  The rules relating to applications for patent for other
inventions  or  discoveries  are  also  applicable  to
applications for patents for plants except as otherwise

provided.

 § 1.162  Applicant, oath or declaration.

  The applicant for a plant patent must be a person who
has invented or discovered and asexually reproduced the new
and distinct variety of plant for which a patent is sought
(or as provided in § 1.42, 1.43, and 1.47). The oath or
declaration required of the applicant, in addition to the
averments required by § 1.63, must state that he or she has
asexually reproduced the plant. Where the plant is a newly
found plant the oath or declaration must also state that it
was found in a cultivated area.

  [48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983]

 § 1.163  Specification.

  (a)  The specification must contain as full and complete
a  disclosure  as  possible  of  the  plant  and  the
characteristics  thereof  that  distinguish  the  same  over
related known varieties, and its antecedents, and must
particularly point out where and in what manner the variety
of plant has been asexually reproduced. In the case of a
newly found plant, the specification must particularly point
out the location and character of the area where the plant
was discovered.

  (b) Two copies of the specification (including the claim)
must be submitted, but only one signed oath or declaration
is required. The second copy of the specification may be a
legible carbon copy of the original.

  (c) The elements of the plant application, if applicable,
should appear in the following order:

  (1) Plant Application Transmittal Form.

  (2) Fee Transmittal Form.

  (3) Title of the invention.

  (4) Cross - reference to related applications.

  (5) Statement regarding federally sponsored research or
development.

  (6) Background of the invention.

  (7) Brief summary of the invention.

  (8) Brief description of the drawing.

  (9) Detailed Botanical Description.

  (10) A single claim.

  (11) Abstract of the Disclosure.

  (12) Drawings (in duplicate).

  (13) Executed oath or declaration.

  (14) Plant color coding sheet.

  (d) A plant color coding sheet as used in this section
means a sheet that specifies a color coding system as
designated in a color dictionary, and lists every plant
structure to which color is a distinguishing feature and the
corresponding color code which best represents that plant
structure.

  [24 FR 10332, Dec. 22, 1959; para. (b), 48 FR 2713, Jan.
20, 1983, effective Feb. 27, 1983; paras. (c) and (d) added,
61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]

 § 1.164 Claim.

  The claim shall be in formal terms to the new and
distinct variety of the specified plant as described and
illustrated,  and  may  also  recite  the  principal
distinguishing characteristics. More than one claim is not
permitted.

 § 1.165 Plant Drawings.

  (a) Plant patent drawings should be artistically and
competently executed and must comply with the requirements
of § 1.84. View numbers and reference characters need not be
employed unless required by the examiner. The disclose all
the distinctive characteristics of the plant capable of
visual representation.

  (b)  The drawing may be in color and when color is a
distinguishing  characteristic  of  the  new  variety,  the
drawing must be in color. Two copies of color drawings or
color photographs must be submitted.

  [24 FR 10332, Dec. 22, 1959; para. (b), 47 FR 41277,
Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (b)
amended, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993]

 § 1.166 Specimens.

  The applicant may be required to furnish specimens of
the plant, or its flower or fruit, in a quantity and at a
time in its stage of growth as may be designated, for study
and inspection. Such specimens, properly packed, must be
forwarded in conformity with instructions furnished to the
applicant.  When  it  is  not  possible  to  forward  such
specimens,  plants  must  be  made  available  for  official
inspection where grown.

 § 1.167 Examination.

  (a) Applications may be submitted by the Patent and
Trademark Office to the Department of Agriculture for study
and report.

  (b)  Affidavits  or  declarations  from  qualified
agricultural or horticultural experts regarding the novelty
and distinctiveness of the variety of plant may be received
when  the  need  of  such  affidavits  or  declarations  is
indicated.

  [24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969]

  REISSUES

 § 1.171 Application for reissue.

  An application for reissue must contain the same parts
required  for  an  application  for  an  original  patent,
complying with all the rules relating thereto except as
otherwise provided, and in addition, must comply with the
requirements of the rules relating to reissue applications.
The application must be accompanied by a certified copy of
an abstract of title or an order for a title report
accompanied by the fee set forth in § 1.19(b)(4), to be
placed in the file, and by an offer to surrender the
original patent ( § 1.178).

  [47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982;
revised, 54 FR 6893, Feb. 17, 1989, 54 FR 9432, March 7,
1989, effective Apr. 17, 1989; 56 FR 65142, Dec. 13, 1991,
effective Dec. 16, 1991]

 § 1.172 Applicants, assignees.

  (a) A reissue oath must be signed and sworn to or
declaration made by the inventor or inventors except as
otherwise provided (see § 1.42, 1.43, 1.47), and must be
accompanied by the written assent of all assignees, if any,
owning an undivided interest in the patent, but a reissue
oath may be made and sworn to or declaration made by the
assignee of the entire interest if the application does not
seek to enlarge the scope of the claims of the original
patent.

  (b) A reissue will be granted to the original patentee,
his legal representative or assigns as the interest may
appear.

  [24 FR 10332, Dec. 22, 1959, para. (a), 48 FR 2713, Jan.
20, 1983, effective Feb. 27, 1983]

 § 1.173 Specification.

  The  specification  of  the  reissue  application  must
include the entire specification and claims of the patent,
with the matter to be omitted by reissue enclosed in square
brackets; and any additions made by the reissue must be
underlined, so that the old and the new specifications and
claims  may  be  readily  compared.  Claims  should  not  be
renumbered and the numbering of claims added by reissue
should follow the number of the highest numbered patent
claim.  No  new  matter  shall  be  introduced  into  the
specification.

 § 1.174  Drawings.

  (a) The drawings upon which the original patent was
issued may be used in reissue applications if no changes
whatsoever are to be made in the drawings. In such cases,
when the reissue application is filed, the applicant must
submit a temporary drawing which may consist of a copy of
the printed drawings of the patent or a photoprint of the
original drawings of the size required for original drawing.

  (b) Amendments which can be made in a reissue drawing,
that is, changes from the drawing of the patent, are
restricted.

  [24 FR 10332, Dec. 22, 1959; para. (a), 48 FR 2713, Jan.
20, 1983, effective Feb. 27, 1983]

 § 1.175 Reissue oath or declaration.

  (a)  Applicants for reissue, in addition to complying
with the requirements of § 1.63, must also file with their
applications  a  statement  under  oath  or  declaration  as
follows:

  (1)  When the applicant verily believes the original
patent to be wholly or partly inoperative or invalid,
stating such belief and the reasons why.

  (2)  When it is claimed that such patent is so
inoperative  or  invalid  "by  reason  of  a  defective
specification  or  drawing"  particularly  specifying  such
defects .

  (3) When it is claimed that such patent is inoperative or
invalid " by reason of the patentee claiming more or less
than he had the right to claim in the patent," distinctly
specifying the excess or insufficiency in the claims.

  (4) [Reserved]

  (5) Particularly specifying the errors relied upon, and
how they arose or occurred.

  (6) Stating that said errors arose "without any deceptive
intention" on the part of the applicant.

  (7) Acknowledging the duty to disclose to the Office all
information  known  to  applicants  to  be  material  to
patentability as defined in § 1.56.

  (b) Corroborating affidavits or declarations of others
may be filed and the examiner may, in any case, require
additional  information  or  affidavits  or  declarations
concerning the application for reissue and its object.

  [24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964;
34 FR 18857, Nov. 26, 1969; para. (a), 47 FR 21752, May 19,
1982, effective July 1,1982; para. (a), 48 FR 2713, Jan. 20,
1983, effective Feb. 27, 1983; para. (a)(7), 57 FR 2021,
Jan. 17, 1992, effective Mar. 16, 1992]

 § 1.176 Examination of reissue.

  An original claim, if re - presented in the reissue
application, is subject to reexamination, and the entire
application will be examined in the same manner as original
applications,  subject  to  the  rules  relating  thereto,
excepting that division will not be required. Applications
for reissue will be acted on by the examiner in advance of
other applications, but not sooner than two months after the
announcement of the filing of the reissue application has
appeared in the Official Gazette.

  [42 FR 5595, Jan. 28, 1977]

 § 1.177 Reissue in divisions.

  The Commissioner may, in his or her discretion, cause
several patents to be issued for distinct and separate parts
of the thing patented, upon demand of the applicant, and
upon payment of the required fee for each division. Each

division of a reissue constitutes the subject of a separate
specification descriptive of the part or parts of the
invention claimed in such division; and the drawing may
represent only such part or parts, subject to the provisions
of  §  §  1.83  and  1.84.  On  filing  divisional  reissue
applications, they shall be referred to the Commissioner.
Unless otherwise ordered by the Commissioner upon petition
and payment of the fee set forth in § 1.17(i), all the
divisions of a reissue will issue simultaneously; if there
is any controversy as to one division, the others will be
withheld from issue until the controversy is ended, unless
the Commissioner orders otherwise.

  [47 FR 41278, Sept. 17, 1982, effective date Oct. 1,
1982; revised, 54 FR 6893, Feb. 15, 1989, 54 FR 9432, March
7, 1989, effective Apr. 17, 1989; revised, 60  FR 20195,
Apr. 25, 1995, effective June 8, 1995]

 § 1.178 Original patent.

  The application for a reissue must be accompanied by an
offer to surrender the original patent. The application
should also be accompanied by the original patent, or if the
original  is  lost  or  inaccessible,  by  an  affidavit  or
declaration to that effect. The application may be accepted
for examination in the absence of the original patent or the
affidavit or declaration, but one or the other must be
supplied before the case is allowed. If a reissue be
refused, the original patent will be returned to applicant
upon his request.

  [24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969]

 § 1.179 Notice of reissue application.

  When an application for a reissue is filed, there will
be placed in the file of the original patent a notice
stating that an application for reissue has been filed. When
the  reissue  is  granted  or  the  reissue  application  is
otherwise terminated, the fact will be added to the notice
in the file of the original patent.

  PETITIONS AND ACTIONS BY THE COMMISSIONER

 § 1.181 Petition to the Commissioner.

  (a) Petition may be taken to the Commissioner: (1) From
any action or requirement of any examiner in the ex parte
prosecution of an application which is not subject to appeal
to the Board of Patent Appeals and Interferences or to the
court; (2) in cases in which a statute or the rules specify
that the matter is to be determined directly by or reviewed
by the Commissioner; and (3) to invoke the supervisory
authority of the Commissioner in appropriate circumstances.
For petitions in interferences, see § 1.644.

  (b) Any such petition must contain a statement of the
facts involved and the point or points to be reviewed and
the action requested. Briefs or memoranda, if any, in
support thereof should accompany or be embodied in the
petition; and where facts are to be proven, the proof in the
form of affidavits or declarations (and exhibits, if any)
must accompany the petition.

  (c)  When a petition is taken from an action or

requirement of an examiner in the ex parte prosecution of an
application, it may be required that there have been a
proper request for reconsideration ( § 1.111) and a repeated
action by the examiner. The examiner may be directed by the
Commissioner  to  furnish  a  written  statement,  within  a
specified time, setting forth the reasons for his decision
upon the matters averred in the petition, supplying a copy
thereof to the petitioner.

  (d) Where a fee is required for a petition to the
Commissioner the appropriate section of this part will so
indicate.  If  any  required  fee  does  not  accompany  the
petition, the petition will be dismissed.

  (e)  Oral  hearing  will  not  be  granted  except  when
considered necessary by the Commissioner.

  (f)  Except as otherwise provided in these rules, any
such petition not filed within 2 months from the action
complained of, may be dismissed as untimely. The mere filing
of a petition will not stay the period for reply to an
Examiner's  action  which  may  be  running  against  an
application, nor act as a stay of other proceedings.

  (g) The Commissioner may delegate to appropriate Patent
and  Trademark  Office  officials  the  determination  of
petitions.

  [24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969;
paras. (d) and (g), 47 FR 41278, Sept. 17, 1982, effective
Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 1984,
effective Feb. 11, 1985]

 § 1.182 Questions not specifically provided for.

  All cases not specifically provided for in the regu
lations of this part will be decided in accordance with the
merits of each case by or under the authority of the
Commissioner, and such decision will be communicated to the
interested  parties  in  writing.  Any  petition  seeking  a
decision under this section must be accom panied by the
petition fee set forth in § 1.17(h).

  [47 FR 41278, Sept. 17, 1982, effective date Oct. 1,
1982]

 § 1.183 Suspension of rules.

  In an extraordinary situation, when justice re quires,
any requirement of the regulations in this part which is not
a requirement of the statutes may be suspended or waived by
the Commissioner or the Commissioner's designee, sua sponte
, or on petition of the interested party, subject to such
other requirements as may be imposed. Any petition under
this section must be accompanied by the petition fee set
forth in § 1.17(h).

  [47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982]

 § 1.184  Reconsideration of cases decided by former
Commissioners.

  Cases which have been decided by one Commissioner will
not be reconsidered by his successor except in accordance
with the principles which govern the granting of new trials.

  APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES

 AUTHORITY: Secs. 1.191 to 1.198 also issued under 35 U.S.C.
134.

 § 1.191  Appeal to Board of Patent Appeals and
Interferences.

  (a) Every applicant for a patent or for reissue of a
patent, or every owner of a patent under reexamination, any
of the claims of which have been twice rejected or who has
been given a final rejection ( § 1.113), may, upon the
payment of the fee set forth in § 1.17(e), appeal from the
decision of the examiner to the Board of Patent Appeals and
Interferences within the time allowed for response.

  (b)  The  appeal  in  an  application  or  reexamination
proceeding  must  identify  the  rejected  claim  or  claims
appealed, and must be signed by the applicant, patent owner,
or duly authorized attorney or agent.

  (c) An appeal when taken must be taken from the rejection
of all claims under rejection which the applicant or patent
owner proposes to contest. Questions relating to matters not
affecting the merits of the invention may be required to be
settled before an appeal can be considered.

  (d) The time periods set forth in § 1.191 and 1.192 are
subject to the provisions of § 1.136 for patent applications
and § 1.550(c) for reexamination proceedings. The time
periods set forth in § 1.193, 1.194, 1.196, and 1.197 are
subject  to  the  provisions  of  §  1.136(b)  for  patent
applications or § 1.550(c) for reexamination proceedings.
See § 1.304(a) for extensions of time for filing a notice of
appeal to the U.S.C. ourt of Appeals for the Federal Circuit
or for commencing a civil action.

  (e) Jurisdiction over the application or patent under
reexamination passes to the Board of Patent Appeals and
Interferences upon transmittal of the file, including all
briefs and examiner's answers, to the Board. Prior to the
entry of a decision on the appeal, the Com missioner may sua
sponte order the application remanded to the examiner.

  [46 FR 29183, May 29, 1981; para. (a), 47 FR 41278,
Sept. 17, 1982, effective Oct. 1, 1982; para. (d), 49 FR
555, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec.
12, 1984, effective Feb. 11, 1985; paras. (b) and (d)
amended, para. (e) added, 54 FR 29553, July 13, 1989,
effective Aug. 20, 1989; para. (d) revised, 58 FR 54504,
Oct. 22, 1993, effective Jan. 3, 1994]

 § 1.192  Appellant's brief.

  (a) Appellant shall, within 2 months from the date of the
notice of appeal under § 1.191 or within the time allowed
for response to the action appealed from, if such time is
later, file a brief in triplicate. The brief must be
accompanied by the requisite fee set forth in § 1.17(f) and
must set forth the authorities and arguments on which
appellant will rely to maintain the appeal. Any arguments or
authorities not included in the brief will be refused
consideration  by  the  Board  of  Patent  Appeals  and
Interferences, unless good cause is shown.

  (b) On failure to file the brief, accompanied by the
requisite fee, within the time allowed, the appeal shall
stand dismissed.

  (c) The brief shall contain the following items under
appropriate headings and in the order indicated below unless
the brief is filed by an applicant who is not represented by
a registered practitioner:

  (1) Real party in interest. A statement identifying the
real party in interest, if the party named in the caption of
the brief is not the real party in interest.

  (2)  Related  appeals  and  interferences.  A  statement
identifying by number and filing date all other appeals or
interferences known to appellant, the appellant's legal
representative, or assignee which will directly affect or be
directly affected by or have a bearing on the Board's
decision in the pending appeal.

  (3) Status of claims.  A statement of the status of all
the claims, pending or canceled, and identifying the claims
appealed.

  (4) Status of amendments.  A statement of the status of
any amendment filed subsequent to final rejection.

  (5) Summary of invention. A concise explanation of the
invention defined in the claims involved in the appeal,
which shall refer to the specification by page and line
number, and to the drawing, if any, by reference characters.

  (6) Issues. A concise statement of the issues presented
for review.

  (7) Grouping of claims. For each ground of rejection
which appellant contests and which applies to a group of two
or more claims, the Board shall select a single claim from
the group and shall decide the appeal as to the ground of
rejection  on  the  basis  of  that  claim  alone  unless  a
statement is included that the claims of the group do not
stand or fall together and, in the argument under paragraph
(c)(8) of this section, appellant explains why the claims of
the group are believed to be separately patentable. Merely
pointing out differences in what the claims cover is not an
argument as to why the claims are separately patentable.

  (8) Argument. The contentions of appellant with respect
to each of the issues presented for review in paragraph
(c)(6)  of  this  section,  and  the  basis  therefor,  with
citations of the authorities, statutes, and parts of the
record relied on. Each issue should be treated under a
separate heading.

  (i)  For  each  rejection  under  35  U.S.C.  112,  first
paragraph, the argument shall specify the errors in the
rejection and how the first paragraph of 35 U.S.C. 112 is
complied  with,  including,  as  appropriate,  how  the
specification and drawings, if any,

  (A) describe the subject matter defined by each of the
rejected claims,

  (B) enable any person skilled in the art to make and use

the subject matter defined by each of the rejected claims,
and

  (C) set forth the best mode contemplated by the inventor
of carrying out his or her invention.

  (ii) For each rejection under 35 U.S.C. 112, second
paragraph, the argument shall specify the errors in the
rejection and how the claims particularly point out and
distinctly claim the subject matter which applicant regards
as the invention.

  (iii)  For  each  rejection  under  35  U.S.C.  102,  the
argument shall specify the errors in the rejection and why
the rejected claims are patentable under 35 U.S.C. 102,
including any specific limitations in the rejected claims
which are not described in the prior art relied upon in the
rejection.

  (iv) For each rejection under 35 U.S.C. 103, the argument
shall  specify  the  errors  in  the  rejection  and,  if
appropriate, the specific limitations in the rejected claims
which are not described in the prior art relied on in the
rejection, and shall explain how such limitations render the
claimed subject matter unobvious over the prior art. If the
rejection is based upon a combination of references, the
argument shall explain why the references, taken as a whole,
do  not  suggest  the  claimed  subject  matter,  and  shall
include, as may be appropriate, an explanation of why
features disclosed in one reference may not properly be
combined with features disclosed in another reference. A
general argument that all the limitations are not described
in a single reference does not satisfy the requirements of
this paragraph.

  (v) For any rejection other than those referred to in
paragraphs (c)(8)(i) to (iv) of this section, the argument
shall specify the errors in the rejection and the specific
limitations in the rejected claims, if appropriate, or other
reasons, which cause the rejection to be in error.

  (9) Appendix. An appendix containing a copy of the claims
involved in the appeal.

  (d) If a brief is filed which does not comply with all
the requirements of paragraph (c) of this section, appellant
will be notified of the reasons for non - compliance and
provided with a period of one month within which to file an
amended brief. If appellant does not file an amended brief
during the one - month period, or files an amended brief
which does not overcome all the reasons for non - compliance
stated in the notification, the appeal will stand dismissed.

  [36 FR 5850, Mar. 30, 1971; para. (a), 47 FR 41278,
Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49 FR
556, Jan. 4, 1984, effective Apr. 1, 1984; 53 FR 23734, June
23, 1988, effective Sept. 12, 1988; para. (a), (c), and (d)
revised, 58 FR 54504, Oct. 22, 1993, effective Jan . , 1994;
paras. (a) - (c) revised, 60 FR 14488, Mar 17, 1995,
effective Apr. 21, 1995]

 § 1.193  Examiner's answer.

  (a) The primary examiner may, within such time as may be
directed by the Commissioner, furnish a written statement in

answer to the appellant's brief including such explanation
of the invention claimed and of the references and grounds
of rejection as may be necessary, supplying a copy to the
appellant. If the primary examiner shall find that the
appeal is not regular in form or does not relate to an
appealable action, he shall so state and a petition from
such decision may be taken to the Commissioner as provided
in § 1.181.

  (b) The appellant may file a reply brief directed only to
such new points of argument as may be raised in the
examiner's answer, within two months from the date of such
answer. The new points of argument shall be specifically
identified in the reply brief. If the examiner determines
that the reply brief is not directed only to new points of
argument raised in the examiner's answer, the examiner may
refuse entry of the reply brief and will so notify the
appellant. If the examiner's answer expressly states that it
includes a new ground of rejection, appellant must file a
reply thereto within two months from the date of such answer
to avoid dismissal of the appeal as to the claims subject to
the new ground of rejection; such reply may be accompanied
by any amendment or material appropriate to the new ground.
See § 1.136(b) for extensions of time for filing a reply
brief in a patent application and § 1.550(c) for extensions
of time in a reexamination proceeding.

  [24 FR 10332, Dec. 22, 1959; 34 FR 18858, Nov.26, 1969;
para. (c), 47 FR 21752, May 19, 1982, added effective July
1, 1982; para. (b), 50 FR 9382, Mar. 7, 1985, effective May
8, 1985; 53 FR 23735, June 23, 1988, effective Sept. 12,
1988;  para.  (c)  deleted,  57  FR  2021,  Jan.  17,  1992,
effective Mar. 16, 1992; para. (b) revised, 58 FR 54504,
Oct. 22, 1993, effective Jan. 3, 1994]

 § 1.194  Oral hearing.

  (a) An oral hearing should be requested only in those
circumstances  in  which  the  appellant  considers  such  a
hearing necessary or desirable for a proper presentation of
his appeal. An appeal decided without an oral hearing will
receive the same consideration by the Board of Patent
Appeals and Interferences as appeals decided after oral
hearing.

  (b) If appellant desires an oral hearing, appellant must
file a written request for such hearing accompanied by the
fee set forth in § 1.17(g) within two months after the date
of the examiner's answer. If appellant requests an oral
hearing and submits therewith the fee set forth in §
1.17(g), an oral argument may be presented by, or on behalf
of, the primary examiner if considered desirable by either
the primary examiner or the Board. See § 1.136(b) for
extensions of time for requesting an oral hearing in a
patent application and § 1.550(c) for extensions of time in
a reexamination proceeding .

  (c) If no request and fee for oral hearing have been
timely filed by the appellant, the appeal will be assigned
for  consideration  and  decision.  If  the  appellant  has
requested an oral hearing and has submitted the fee set
forth in § 1.17(g), a day of hearing will be set, and due
notice thereof given to the appellant and to the primary
examiner. Hearing will be held as stated in the notice, and
oral argument will be limited to twenty minutes for the

appellant and fifteen minutes for the primary examiner
unless otherwise ordered before the hearing begins.

  [42 FR 5595, Jan. 28, 1977; paras. (b) & (c), 47 FR
41278, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49
FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (b)
revised 53 FR 23735, June 23, 1988, effective Sept. 12,
1988; para. (b) revised, 58 FR 54504, Oct. 22, 1993,
effective Jan. 3, 1994]

 § 1.195 Affidavits or declarations after appeal.

  Affidavits, declarations, or exhibits submitted after
the case has been appealed will not be admitted without a
showing of good and sufficient reasons why they were not
earlier presented.

  [34 FR 18858, Nov. 26, 1969]

 § 1.196  Decision by the Board of Patent Appeals and
Interferences.

  (a) The Board of Patent Appeals and Interferences, in its
decision, may affirm or reverse the decision of

 the examiner in whole or in part on the grounds and on the
claims specified by the examiner or remand the application
to the examiner for further consideration. The affirmance of
the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the
examiner on that claim, except as to any ground specifically
reversed.

  (b) Should the Board of Patent Appeals and Interferences
have knowledge of any grounds not involved in the appeal for
rejecting any appealed claim, it may include in the decision
a statement to that effect with its reasons for so holding,
which statement shall constitute a new rejection of the
claims. A new rejection shall not be considered final for
purposes of judicial review. When the Board of Patent
Appeals and Interferences makes a new rejection of an
appealed claim, the appellant may exercise any one of the
following two options with respect to the new ground:

  (1) The appellant may submit an appropriate amendment of
the claims so rejected or a showing of facts, or both, and
have the matter reconsidered by the examiner in which event
the application will be remanded to the examiner. The
statement shall be binding upon the examiner unless an
amendment or showing of facts not previously of record be
made which, in the opinion of the examiner, overcomes the
new ground for rejection stated in the decision. Should the
examiner again reject the application, the applicant may
again  appeal  to  the  Board  of  Patent  Appeals  and
Interferences.

  (2)  The appellant may have the case reconsidered under
§ 1.197(b) by the Board of Patent Appeals and Interferences
upon the same record. The request for re consideration shall
address  the  new  ground  for  rejection  and  state  with
particularity  the  points  believed  to  have  been
misapprehended or overlooked in rendering the decision and
also state all other grounds upon which reconsideration is
sought. Where request for such reconsideration is made the
Board of Patent Appeals and Interferences shall reconsider

the new ground for rejection and, if necessary, render a new
decision which shall include all grounds upon which a patent
is refused. The decision on reconsideration is deemed to
incorporate the earlier decision, except for those portions
specifically withdrawn on reconsideration, and is final for
the purpose of judicial review.

  (c)  Should the decision of the Board of Patent Appeals
and Interferences include an explicit statement that a claim
may be allowed in amended form, appellant shall have the
right to amend in conformity with such statement which shall
be binding on the examiner in the absence of new references
or grounds of rejection.

  (d)  Although  the  Board  of  Patent  Appeals  and
Interferences normally will confine its decision to a review
of rejections made by the examiner, should it have knowledge
of any grounds for rejecting any allowed claim, it may
include in its decision a recommended rejection of the claim
and remand the case to the examiner. In such event, the
Board shall set a period, not less than one month, within
which  the  appellant  may  submit  to  the  examiner  an
appropriate amendment, a showing of facts or reasons, or
both, in order to avoid the grounds set forth in the
recommendation  of  the  Board  of  Patent  Appeals  and
Interferences.  The  examiner  shall  be  bound  by  the
recommendation and shall enter and maintain the recommended
rejection unless an amendment or showing of facts not
previously of record is filed which, in the opinion of the
examiner, overcomes the recommended rejection. Should the
examiner make the recommended rejection final, the applicant
may  again  appeal  to  the  Board  of  Patent  Appeals  and
Interferences.

  (e)  Whenever a decision of the Board of Patent Appeals
and Interferences includes a remand, that decision shall not
be considered a final decision. When appropriate, upon
conclusion of proceedings on remand before the examiner, the
Board of Patent Appeals and Interferences may enter an order
otherwise making its decision final.

  (f) See § 1.136(b) for extensions of time to take action
under this section in a patent application and § 1.550(c)
for extensions of time in a reexamination proceeding.

  [24 FR 10332, Dec. 12, 1959; 49 FR 29183, May 29, 1981;
49 FR 48416, Dec. 12, 1984, effective Feb. 12, 1985; para.
(b) revised 53 FR 23735, June 23, 1988, effective Sept. 12,
1988; paras. (a), (b) & (d) amended, paras. (e) & (f) added,
54 FR 29552, July 13, 1989, effective Aug. 20, 1989; para.
(f) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3,
1994]

 § 1.197  Action following decision.

  (a) After decision by the Board of Patent Appeals and
Interferences, the case shall be returned to the examiner,
subject to the appellant's right of appeal or other review,
for such further action by the appellant or by the examiner,
as the condition of the case may require, to carry into
effect the decision.

  (b) A single request for reconsideration or modification
of the decision may be made if filed within one month from
the date of the original decision, unless the original

decision is so modified by the decision on reconsideration
as to become, in effect, a new decision, and the Board of
Patent Appeals and Interferences so states. The request for
reconsideration shall state with particularity the points
believed  to  have  been  misapprehended  or  overlooked  in
rendering the decision and also state all other grounds upon
which  reconsideration  is  sought.  See  §  1.136(b)  for
extensions of time for seeking reconsideration in a patent
application and § 1.550(c) for extensions of time in a
reexamination proceeding.

  (c) Termination of proceedings.

  Proceedings are considered terminated by the dismissal
of an appeal or the failure to timely file an appeal to the
court or a civil action ( § 1.304) except: (1) where claims
stand allowed in an application or (2) where the nature of
the decision requires further action by the examiner. The
date of termination of proceedings is the date on which the
appeal is dismissed or the date on which the time for appeal
to court or review by civil action ( § 1.304) expires. If an
appeal to the court or a civil action has been filed,
proceedings are considered terminated when the appeal or
civil action is terminated. An appeal to the U.S.C. ourt of
Appeals for the Federal Circuit is terminated when the
mandate is received by the Office. A civil action is
terminated when the time to appeal the judgment expires.

  [46 FR 29184, May 29, 1981; para. (a), 47 FR 41278,
Sept. 17, 1982, effective Oct. 1, 1982; 49 FR 556, Jan. 4,
1984, effective Apr. 1, 1984; paras. (a) and (b), 49 FR
48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (b)
and (c), 54 FR 29552, July 13, 1989, effective Aug. 20,
1989; para. (b) revised, 58 FR 54504, Oct. 22, 1993,
effective Jan. 3, 1994]

 § 1.198  Reopening after decision.

  Cases which have been decided by the Board of Patent
Appeals  and  Interferences  will  not  be  reopened  or
reconsidered  by  the  primary  examiner  except  under  the
provisions of § 1.196 without the written authority of the
Commissioner, and then only for the consideration of matters
not already adjudicated, sufficient cause being shown.

  [49 FR 48416, Dec. 12, 1984, effective date Feb. 11,
1985]

  MISCELLANEOUS PROVISIONS

 § 1.248  Service of papers; manner of service; proof of
service in cases other than interferences.

  (a) Service of papers must be on the attorney or agent of
the party if there be such or on the party if there is no
attorney or agent, and may be made in any of the following
ways:

  (1) By delivering a copy of the paper to the person
served;

  (2) By leaving a copy at the usual place of business of
the person served with someone in his employment;

  (3)  When  the  person  served  has  no  usual  place  of

business, by leaving a copy at the person's residence, with
some person of suitable age and discretion who resides
there;

  (4) Transmissions by first class mail. When service is by
mail the date of mailing will be regarded as the date of
service.

  (5) Whenever it shall be satisfactorily shown to the
Commissioner that none of the above modes of obtaining or
serving the paper is practicable, service may be by notice
published in the Official Gazette

  (b) Papers filed in the Patent and Trademark Office which
are required to be served shall contain proof of service.
Proof of service may appear on or be affixed to papers
filed. Proof of service shall include the date and manner of
service. In the case of personal service, proof of service
shall also include the name of any person served, certified
by the person who made service. Proof of service may be made
by: (1) an acknowledgement of service by or on behalf of the
person served or (2) a statement signed by the attorney or
agent containing the information required by this section.

  (c) See § 1.646 for service of papers in interferences.

  [46 FR 29184, May 29, 1981; 49 FR 48416, Dec. 12, 1984,
effective Feb. 11, 1985]

  PROTESTS AND PUBLIC USE PROCEEDINGS

 § 1.291 Protests by the public against pending 
applications.

  (a) Protests by a member of the public against pending
applications will be referred to the examiner having charge
of the subject matter involved. A protest specifically
identifying the application to which the protest is directed
will be entered in the application file if:

  (1) The protest is submitted prior to the mailing of a
notice of allowance under § 1.311; and

  (2) The protest is either served upon the applicant in
accordance with § 1.248, or filed with the Office in
duplicate in the event service is not possible.

  (b) Protests raising fraud or other inequitable conduct
issues will be entered in the application file, generally
without comment on those issues. Protests which do not
adequately identify a pending patent application will be
returned to the protestor and will not be further considered
by the Office. A protest submitted in accordance with the
second sentence of paragraph (a) of this section will be
considered by the Office if the application is still pending
when the protest and application file are brought before the
examiner and it includes:

  (1) A listing of the patents, publications, or other
information relied upon;

  (2) A concise explanation of the relevance of each listed
item;

  (3) A copy of each listed patent or publication or other

item  of  information  in  written  form  or  at  least  the
pertinent portions thereof; and

  (4) An English language translation of all the necessary
and pertinent parts of any non - English language patent,
publication, or other item of information in written form
relied upon.

  (c) A member of the public filing a protest in an
application under paragraph (a) of this section will not
receive any communications from the Office relating to the
protest, other than the return of a self - addressed
postcard which the member of the public may include with the
protest in order to receive an acknowledgment by the Office
that  the  protest  has  been  received.  The  Office  may
communicate with the applicant regarding any protest and may
require the applicant to respond to specific questions
raised by the protest. In the absence of a request by the
Office, an applicant has no duty to, and need not, respond
to a protest. The limited involvement of the member of the
public filing a protest pursuant to paragraph (a) of this
section ends with the filing of the protest, and no further
submission on behalf of the protestor will be considered
unless such submission raises new issues which could not
have been earlier presented.

  [47 FR 21752, May 19, 1982, effective July 1, 1982;
paras. (a) and (c), 57 FR 2021, Jan. 17, 1992, effective
Mar. 16, 1992; paras. (a) and (b) revised, 61 FR 42790, Aug.
19, 1996, effective Sept. 23, 1996]

 § 1.292 Public use proceedings.

  (a) When a petition for the institution of public use
proceedings, supported by affidavits or declarations is
found, on reference to the examiner, to make a prima facie
showing  that  the  invention  claimed  in  an  application
believed to be on file had been in public use or on sale
more than one year before the filing of the application, a
hearing may be had before the Commissioner to determine
whether a public use proceeding should be instituted. If
instituted, the Commissioner may designate an appropriate
official to conduct the public use proceeding, including the
setting of times for taking testimony, which shall be taken
as provided by § 1.671 through 1.685. The petitioner will be
heard in the proceedings but after decision therein will not
be heard further in the prosecution of the application for
patent.

  (b) The petition and accompanying papers, or a notice
that such a petition has been filed, shall be entered in the
application file if:

  (1) The petition is accompanied by the fee set forth in §
1.17(j);

  (2) The petition is served on the applicant in accordance
with § 1.248, or filed with the Office in duplicate in the
event service is not possible; and

  (3) The petition is submitted prior to the mailing of a
notice of allowance under § 1.311.

  (c)  A  petition  for  institution  of  public  use
proceedings shall not be filed by a party to an interference

as to an application involved in the interference. Public
use and on sale issues in an interference shall be raised by
a preliminary motion under § 1.633(a).

  [42 FR 5595, Jan. 28, 1977; para. (a), 47 FR 41279,
Sept. 17, 1982; paras. (a) and (c), 49 FR 48416, Dec. 12,
1984, effective Feb. 12, 1985; paras. (a) and (b) revised,
61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]

 § 1.293  Statutory invention registration.

  (a) An applicant for an original patent may request, at
any time during the pendency of applicant's pending complete
application,  that  the  specification  and  drawings  be
published as a statutory invention registration. Any such
request must be signed by (1) the applicant and any assignee
of record or (2) an attorney or agent of record in the
application.

  (b)  Any  request  for  publication  of  a  statutory
invention registration must include the following parts:

  (1)  A waiver of the applicant's right to receive a
patent on the invention claimed effective upon the date of
publication of the statutory invention registration;

  (2) The required fee for filing a request for pub
lication of a statutory invention registration as provided
for in § 1.17(n) or (o);

  (3) A statement that in the opinion of the requester, the
application to which the request is directed meets the
requirements of 35 U.S.C. 112; and

  (4)  A statement that, in the opinion of the requester,
the application to which the request is directed complies
with the formal requirements of this part for printing as a
patent.

  (c) A waiver filed with a request for a statutory
invention registration will be effective, upon publication
of  the  statutory  invention  registration,  to  waive  the
inventor's right to receive a patent on the invention
claimed in the statutory invention registration, in any
application for an original patent which is pending on, or
filed after, the date of publication of the statutory
invention registration. A waiver filed with a request for a
statutory invention registration will not affect the rights
of any other inventor even if the subject matter of the
statutory  invention  registration  and  an  application  of
another inventor are commonly owned. A waiver filed with a
request for a statutory invention registration will not
affect any rights in a patent to the inventor which issued
prior to the date of publication of the statutory invention
registration unless a reissue application is filed seeking
to enlarge the scope of the claims of the patent. See also §
1.106(e).

  [50 FR 9382, Mar. 7, 1985, effective date May 8, 1985]

 § 1.294  Examination of request for publication of a
statutory invention registration and patent application to
which the request is directed.

  (a) Any request for a statutory invention registration

will be examined to determine if the requirements of § 1.293
have been met. The application to which the request is
directed will be examined to determine (1) if the subject
matter of the application is appropriate for publication,
(2) if the requirements for publication are met, and (3) if
the requirements of 35 U.S.C. 112 and § 1.293 of this part
are met.

  (b) Applicant will be notified of the results of the
examination set forth in paragraph (a) of this section. If
the requirements of § 1.293 and this section are not met by
the request filed, the notification to applicant will set a
period of time within which to comply with the requirements
in order to avoid abandonment of the application. If the
application does not meet the requirements of 35 U.S.C. 112,
the notification to applicant will include a rejection under
the appropriate provisions of 35 U.S.C. 112. The periods for
response established pursuant to this section are subject to
the extension of time provisions of § 1.136. After response
by the applicant, the application will again be considered
for publication of a statutory invention registration. If
the requirements of § 1.293 and this section are not timely
met, the refusal to publish will be made final. If the
requirements of 35 U.S.C. 112 are not met, the rejection
pursuant to 35 U.S.C. 112 will be made final.

  (c) If the examination pursuant to this section results
in  approval  of  the  request  for  a  statutory  invention
registration the applicant will be notified of the intent to
publish a statutory invention registration.

  [50 FR 9382, Mar. 7, 1985, effective date May 8, 1985]

 § 1.295  Review of decision finally refusing to publish
a statutory invention registration.

  (a) Any requester who is dissatisfied with the final
refusal to publish a statutory invention registration for
reasons other than compliance with 35 U.S.C. 112 may obtain
review of the refusal to publish the statutory invention
registration  by  filing  a  petition  to  the  Commissioner
accompanied by the fee set forth in § 1.17(h) within one
month or such other time as is set in

 the decision refusing publication. Any such petition should
comply with the requirements of § 1.181(b). The petition may
include a request that the petition fee be refunded if the
final refusal to publish a statutory invention registration
for reasons other than compliance with 35 U.S.C. 112 is
determined to result from an error by the Patent and
Trademark Office.

  (b) Any requester who is dissatisfied with a decision
finally rejecting claims pursuant to 35 U.S.C. 112 may
obtain review of the decision by filing an appeal to the
Board of Patent Appeals and Interferences pursuant to §
1.191. If the decision rejecting claims pursuant to 35
U.S.C.  112  is  reversed,  the  request  for  a  statutory
invention registration will be approved and the registration
published if all of the other provisions of § 1.293 and this
section are met.

  [50 FR 9382, Mar. 7, 1985, effective May 8, 1985]

 § 1.296  Withdrawal of request for publication of

statutory invention registration.

  A request for a statutory invention registration which
has been filed may be withdrawn prior to the date of the
notice of the intent to publish a statutory invention
registration issued pursuant to § 1.294(c) by filing a
request  to  withdraw  the  request  for  publication  of  a
statutory invention registration. The request to withdraw
may also include a request for a refund of any amount paid
in excess of the application filing fee and a handling fee
of $130.00 which will be retained. Any request to withdraw
the  request  for  publication  of  a  statutory  invention
registration filed on or after the date of notice of intent
to publish issued pursuant to § 1.294(c) must be in the form
of a petition pursuant to § 1.183 accompanied by the fee set
forth in § 1.17(h).

  [50 FR 9382, Mar. 7, 1985, effective date May 8, 1985;
revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989;
56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991]

 § 1.297 Publication of statutory invention registration.

  (a)  If  the  request  for  a  statutory  invention
registration  is  approved,  the  statutory  invention
registration will be published. The statutory invention
registration  will  be  mailed  to  the  requester  at  the
correspondence address as provided for in § 1.33(a). A
notice  of  the  publication  of  each  statutory  invention
registration will be published in the  Official Gazette.

  (b) Each statutory invention registration published will
include  a  statement  relating  to  the  attributes  of  a
statutory invention registration. The statement will read as
follows:

  A statutory invention registration is not a patent. It
has the defensive attributes of a patent but does not have
the enforceable attributes of a patent. No article or
advertisement or the like may use the term patent, or any
term suggestive of a patent, when referring to a statutory
invention registration. For more specific information on the
rights associated with a statutory invention registration
see 35 U.S.C. 157.

  [50 FR 9382, Mar. 7, 1985, effective May 8, 1985; 50 FR
31826, Aug. 6, 1985, effective Oct. 5, 1985]

  REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS BY COURT

 § 1.301 Appeal to U.S.C. ourt of Appeals for the Federal 
Circuit.

  Any applicant or any owner of a patent involved in a
reexamination proceeding dissatisfied with the decision of
the Board of Patent Appeals and Interferences, and any party
to an interference dissatisfied with the decision of the
Board of Patent Appeals and Interferences, may appeal to the
U.S.C.  ourt  of  Appeals  for  the  Federal  Circuit.  The
appellant must take the following steps in such an appeal:
(a) In the Patent and Trademark Office file a written notice
of appeal directed to the Commissioner (see § 1.302 and §
1.304); and (b) in the Court, file a copy of the notice of
appeal and pay the fee for appeal as provided by the rules
of the Court.

  [47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; 49
FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR
9383, Mar. 7, 1985, effective May 8, 1985; 54 FR 29552, July
13, 1989, effective Aug. 20, 1989]

 § 1.302 Notice of appeal.

  (a)  When an appeal is taken to the U.S.C. ourt of
Appeals for the Federal Circuit, the appellant shall give
notice thereof to the Commissioner within the time specified
in § 1.304.

  (b) In interferences, the notice must be served as
provided in § 1.646.

  (c) A notice of appeal, if mailed to the Office, shall be
addressed as follows: Box 8, Commissioner of Patents and
Trademarks, Washington, DC 20231.

  [24 FR 10332, Dec. 22, 1959; para. (a), 47 FR 47381,
Oct. 26, 1982, effective Oct. 26, 1982; 49 FR 48416, Dec.
12, 1984, effective Feb. 11, 1985; 50 FR 9383, Mar. 7, 1985,
effective May 8, 1985; para. (c) added, 53 FR 16414, May 8,
1988]

 § 1.303 Civil action under 35 U.S.C. 145, 146, 306.

  (a) Any applicant or any owner of a patent involved in a
reexamination proceeding dissatisfied with the decision of
the Board of Patent Appeals and Interferences, and any party
dissatisfied with the decision of the Board of Patent
Appeals and Interferences may, instead of appealing to the
the U.S.C. ourt of Appeals for the Federal Circuit ( §
1.301), have remedy by civil action under 35 U.S.C. 145 or
146, as appropriate. Such civil action must be commenced
within the time specified in § 1.304.

  (b)  If an applicant in an ex parte case or an owner of
a patent involved in a reexamination proceeding has taken an
appeal to the U.S.C. ourt of Appeals for the Federal
Circuit, he or she thereby waives his or her right to
proceed under 35 U.S.C. 145.

  (c)  If any adverse party to an appeal taken to the
U.S.C. ourt of Appeals for the Federal Circuit by a defeated
party in an interference proceeding files notice with the
Commissioner within twenty days after the filing of the
defeated party's notice of appeal to the court ( § 1.302),
that he or she elects to have all further proceedings
conducted as provided in 35 U.S.C. 146, the notice of
election must be served as provided in § 1.646.

  [47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; 49
FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (c),
54 FR 29553, July 13, 1989, effective Aug. 20, 1989]

 § 1.304 Time for appeal or civil action.

  (a)(1) The time for filing the notice of appeal to the
U.S.C. ourt of Appeals for the Federal Circuit ( § 1.302) or
for commencing a civil action ( § 1.303) is two months from
the date of the decision of the Board of Patent Appeals and
Interferences.  If  a  request  for  reconsideration  or
modification of the decision is filed within the time period

provided under § 1.197(b) or § 1.658(b), the time for filing
an appeal or commencing a civil action shall expire two
months after action on the request. In interferences, the
time for filing a cross - appeal or cross - action expires:

  (i) 14 days after service of the notice of appeal or the
summons and complaint, or

  (ii) Two months after the date of decision of the Board
of Patent Appeals and Interferences, whichever is later.

  (a)(2) The time periods set forth in this section are not
subject to the provisions of § § 1.136, 1.550(c) or 1.645(a)
or(b).

  (a)(3) The Commissioner may extend the time for filing an
appeal or commencing a civil action:

  (i) For good cause shown if requested in writing before
the expiration of the period for filing an appeal or
commencing a civil action, or

  (ii) Upon written request after the expiration of the
period for filing an appeal or commencing a civil action
upon a showing that the failure to act was the result of
excusable neglect.

  (b) The times specified in this section in days are
calendar days. The time specified herein in months are
calendar months except that one day shall be added to any
two - month period which includes February 28. If the last
day of the time specified for appeal or commencing a civil
action falls on a Saturday, Sunday, or Federal holiday in
the District of Columbia, the time is extended to the next
day which is neither a Saturday, Sunday, nor a Federal
holiday.

  (c) If a defeated party to an interference has taken an
appeal to the U.S.C. ourt of Appeals for the Federal Circuit
and an adverse party has filed notice under 35 U.S.C. 141
electing to have all further proceedings conducted under 35
U.S.C. 146 ( § 1.303(c)), the time for filing a civil action
thereafter is specified in 35 U.S.C. 141. The time for
filing a cross - action expires 14 days after service of the
summons and complaint.

  [41 FR 758, Jan. 5, 1976; para. (a) and (c), 47 FR
47382, Oct. 26, 1982; para. (a), 49 FR 556, Jan. 4, 1984,
effective Apr. 1, 1984; para. (a) 49 FR Dec. 12, 1984,
effective Feb. 11, 1985; para. (a), 50 FR 9383, Mar. 7,
1985, effective May 8, 1985; 54 FR 29553, July 13, 1989,
effective Aug. 20, 1989; paras. (a) and (c) revised 58 FR
54494, Oct. 22, 1993, effective Nov. 22, 1993]

  ALLOWANCE AND ISSUE OF PATENT

 § 1.311  Notice of Allowance.

  (a)  If,  on  examination,  it  shall  appear  that  the
applicant is entitled to a patent under the law, a notice of
allowance will be sent to applicant at the correspondence
address indicated in § 1.33 calling for the payment of a
specified sum constituting the issue fee ( § 1.18) which
shall be paid within 3 months from the date of the mailing
of the notice of allowance.

  (b) An authorization to charge the issue fee ( § 1.18) to
a deposit account may be filed in an individual application,
either before or after mailing of the notice of allowance.
Where an authorization to charge the issue fee to a deposit
account has been filed before the mailing of the notice of
allowance, the issue fee will be automatically charged to
the deposit account at the time of mailing the notice of
allowance.

  [47 FR 41279, Sept. 17, 1982, effective date Oct. 1,
1982]

 § 1.312  Amendments after allowance.

  (a) No amendment may be made as a matter of right in an
application after the mailing of the notice of allowance.
Any amendment pursuant to this paragraph filed before the
payment  of  the  issue  fee  may  be  entered  on  the
recommendation of the primary examiner, approved by the
Commissioner, without withdrawing the case from issue.

  (b) Any amendment pursuant to paragraph (a) of this
section filed after the date the issue fee is paid must be
accompanied by a petition including the fee set forth in §
1.17(i) and a showing of good and sufficient reasons why the
amendment is necessary and was not earlier presented.

  [Para.  (b)  revised,  58  FR  54504,  Oct.  22,  1993,
effective Jan. 3, 1994; para. (b) revised, 60 FR 20195, Apr.
25, 1995, effective June 8, 1995]

 § 1.313  Withdrawal from issue.

  (a) Applications may be withdrawn from issue for further
action at the initiative of the Office or upon petition by
the applicant. Any such petition by the applicant must
include  a  showing  of  good  and  sufficient  reasons  why
withdrawal of the application is necessary and, if the
reason for the withdrawal is not the fault of the Office,
must be accompanied by the fee set forth in § 1.17(i). If
the application is withdrawn from issue, a new notice of
allowance will be sent if the application is again allowed.
Any  amendment  accompanying  a  petition  to  withdraw  an
application from issue must comply with the requirements of
§ 1.312.

  (b) When the issue fee has been paid, the application
will not be withdrawn from issue for any reason except:

  (1) A mistake on the part of the Office;

  (2)  A violation of § 1.56 or illegality in the
application;

  (3)  Unpatentability of one or more claims;

  (4)  For interference; or

  (5)  For  abandonment  to  permit  consideration  of  an
information  disclosure  statement  under  §  1.97  in  a
continuing application.

  [47 FR 41280, Sept. 17, 1982, effective Oct. 1, 1982;
para. (a), 54 FR 6893, Feb. 15, 1989, 54 FR 9432, March 7,

1989, effective Apr. 17, 1989; para. (b), 57 FR 2021, Jan.
17, 1992, effective Mar. 16, 1992; para. (a) revised, 60 FR
20195, Apr. 25, 1995, effective June 8, 1995]

 § 1.314 Issuance of patent.

  If payment of the issue fee is timely made, the patent
will issue in regular course unless the application is
withdrawn from issue ( § 1.313), or issuance of the patent
is deferred. Any petition by the applicant requesting a
deferral of the issuance of a patent must be accompanied by
the fee set forth in § 1.17(i) and must include a show

 showing of good and sufficient reasons why it is necessary
to defer issuance of the patent.

  [47 FR 41280, Sept. 17, 1982, effective date Oct. 1,
1982; revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 17,
1989; revised, 60 FR 20195, Apr. 25, 1995, effective June 8,
1995]

 § 1.315  Delivery of patent.

  The patent will be delivered or mailed upon issuance to
the correspondence address of record. See § 1.33(a).

  [revised, 61 FR 42790, Aug. 19, 1996, effective Sept.
23, 1996]

 § 1.316  Application abandoned for failure to pay . . 
issue fee.

  (a) If the issue fee is not paid within 3 months from the
date of the notice of allowance, the application will be
regarded as abandoned. Such an abandoned application will
not be considered as pending before the Patent and Trademark
Office.

  (b) The Commissioner may accept the payment of the issue
fee later than three months after the mailing of the notice
of allowance as though no abandonment had ever occurred if
upon petition the delay in payment is shown to have been
unavoidable. The petition to accept the delayed payment must
be promptly filed after the applicant is notified of, or
otherwise becomes aware of, the abandonment and must be
accompanied by:

  (1)  the  issue  fee,  unless  it  has  been  previously
submitted;

  (2) the fee for delayed payment ( § 1.17(1)); and

  (3) a showing that the delay was unavoidable. The showing
must  be  a  verified  showing  if  made  by  a  person  not
registered to practice before the Patent and Trademark
Office.

  (c) The Commissioner may, upon petition, accept the
payment of the issue fee later than three months after the
mailing of the notice of allowance as though no abandonment
had ever occurred if the delay in payment was unintentional.
The petition to accept the delayed payment must be:

  (1) accompanied by the issue fee, unless it has been
previously submitted;

  (2) accompanied by the fee for unintentionally delayed
payment ( § 1.17(m));

  (3)  accompanied  by  a  statement  that  the  delay  was
unintentional. The statement must be a verified statement if
made by a person not registered to practice be fore the
Patent and Trademark Office. The Commissioner may require
additional information where there is a question whether the
delay was unintentional; and

  (4) filed either:

  (i) within one year of the date on which the application
became abandoned; or

  (ii) within three months of the date of the first
decision on a petition under paragraph (b) of this section
which was filed within one year of the date on which the
application became abandoned.

  (d) In all applications filed before June 8, 1995, any
petition pursuant to paragraph (b) of this section not filed
within  six  months  of  the  date  of  abandonment  of  the
application, must be accompanied by a terminal disclaimer
with fee under § 1.321 dedicating to the public a terminal
part of the term of any patent granted thereon equivalent to
the period of abandonment of the application. The terminal
disclaimer must also apply to any patent granted on any
continuing application entitled under 35 U.S.C. 120 to the
benefit of the filing date of the application for which
revival is sought.

  (e) Any request for reconsideration or review of a
decision  refusing  to  accept  the  delayed  payment  upon
petition filed pursuant to paragraphs (b) or (c) of this
section, to be considered timely, must be filed within two
months of the decision refusing to accept the delayed
payment or within such time as set in the decision.

  (f) The time periods set forth in this section cannot be
extended, except that the three - month period set forth in
paragraph (c)(4)(ii) and the time period set forth in
paragraph (e) of this section may be extended under the
provisions of § 1.136.

  [47 FR 41280, Sept. 17, 1982, effective date Oct. 1,
1982; paras. (b) - (d) amended, paras. (e) and (f) added, 58
FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; para. (d)
revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

 § 1.317  Lapsed patents; delayed payment of balance 
of issue fee.

  (a) If the issue fee paid is the amount specified in the
Notice of Allowance, but a higher amount is required

 at the time the issue fee is paid, any remaining balance of
the issue fee is to be paid within three months from the
date of notice thereof and, if not paid, the patent will
lapse at the termination of the three month period.

  (b) The Commissioner may accept the payment of the
remaining balance of the issue fee later than three months
after the mailing of the notice thereof as though no lapse

had ever occurred if upon petition the delay in payment is
shown to have been unavoidable. The petition to accept the
delayed payment must be promptly filed after the applicant
is notified of, or otherwise becomes aware of, the lapse,
and must be accompanied by:

  (1) the remaining balance of the issue fee, unless it has
been previously submitted;

  (2) the fee for delayed payment ( § 1.17(1)); and

  (3) a showing that the delay was unavoidable. The showing
must  be  a  verified  showing  if  made  by  a  person  not
registered to practice before the Patent and Trademark
Office.

  (c) The Commissioner may, upon petition, accept the
payment of the remaining balance of the issue fee later than
three months after the mailing of the notice thereof as
though no lapse had ever occurred if the delay in payment
was  unintentional.  The  petition  to  accept  the  delayed
payment must be:

  (1) accompanied by the remaining balance of the issue
fee, unless it has been previously submitted;

  (2) accompanied by the fee for unintentionally delayed
payment ( § 1.17(m));

  (3)  accompanied  by  a  statement  that  the  delay  was
unintentional. The statement must be a verified statement if
made by a person not registered to practice before the
Patent and Trademark Office. The Commissioner may require
additional information where there is a question whether the
delay was unintentional; and

  (4) filed either:

  (i) within one year of the date on which the patent
lapsed; or

  (ii) within three months of the date of the first
decision on a petition under paragraph (b) of this section
which was filed within one year of the date on which the
patent lapsed.

  (d) [Reserved]

  (e) Any request for reconsideration or review of a
decision  refusing  to  accept  the  delayed  payment  upon
petition filed pursuant to paragraphs (b) or (c) of this
section, to be considered timely, must be filed within two
months of the decision refusing to accept

 the delayed payment or within such time as set in the
decision.

  (f) The time periods set forth in this section cannot be
extended, except that the three - month period set forth in
paragraph (c)(4)(ii) and the time period set forth in
paragraph (e) of this section may be extended under the
provisions of § 1.136.

  [47 FR 41280, Sept. 17, 1982, effective date Oct. 1,
1982; paras. (a) - (d) amended, paras. (e) & (f) added, 58

FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; para. (d)
amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

 § 1.318  Notification of national publication of a
patent based on an international application.

  The Office will notify the International Bureau when a
patent is issued on an application filed under 35 U.S.C. 371
and there has been no previous international publication.

  [43 FR 20465, May 11, 1978]

  DISCLAIMER

 § 1.321  Statutory disclaimers, including terminal
disclaimers.

  (a) A patentee owning the whole or any sectional interest
in a patent may disclaim any complete claim or claims  in a
patent. In like manner any patentee may disclaimer dedicate
to the public the entire term, or any terminal part of the
term, of the patent granted. Such disclaimer is binding upon
the grantee and its successors or assigns. A notice of the
disclaimer is published in the Official Gazette and attached
to the printed copies of the specification. The disclaimer,
to be recorded in the Patent and Trademark Office, must:

  (1) Be signed by the patentee, or an attorney or agent of
record;

  (2) Identify the patent and complete claim or claims, or
term  being  disclaimed.  A  disclaimer  which  is  not  a
disclaimer of a complete claim or claims, or term, will be
refused recordation;

  (3) State the present extent of patentee's ownership
interest in the patent; and

  (4) Be accompanied by the fee set forth in § 1.20(d).

  (b) An applicant or assignee may disclaim or dedicate to
the public the entire term, or any terminal part of the
term, of a patent to be granted. Such terminal disclaimer is
binding upon the grantee and its successors or assigns. The
terminal disclaimer, to be recorded in the Patent and
Trademark Office, must:

  (1) Be signed:

  (i) By the applicant, or

  (ii) If there is an assignee of record of an undivided
part interest, by the applicant and such assignee, or

  (iii) If there is an assignee of record of the entire
interest, by such assignee, or

  (iv) By an attorney or agent of record;

  (2) Specify the portion of the term of the patent being
disclaimed;

  (3) State the present extent of applicant's or assignee's
ownership interest in the patent to be granted; and

  (4) Be accompanied by the fee set forth in § 1.20(d).

  (c) A terminal disclaimer, when filed to obviate a
judicially created double patenting rejection in a patent
application or in a reexamination proceeding, must:

  (1) Comply with the provisions of paragraphs (b)(2)
through (b)(4) of this section;

  (2) Be signed in accordance with paragraph (b)(1) of this
section if filed in a patent application or in accordance
with  paragraph  (a)(1)  of  this  section  if  filed  in  a
reexamination proceeding; and

  (3) Include a provision that any patent granted on that
application or any patent subject to the reexamination
proceeding shall be enforceable only for and during such
period  that  said  patent  is  commonly  owned  with  the
application  or  patent  which  formed  the  basis  for  the
rejection.

  [47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982;
section 1.321 revised, 58 FR 54504, Oct. 22, 1993, effective
Jan. 3, 1994; revised Nov. 16, 1993; para. (c) revised, 61
FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]

  CORRECTION OF ERRORS IN PATENT

 § 1.322  Certificate of correction of Office mistake.

  (a) A certificate of correction under 35 U.S.C. 254 may
be issued at the request of the patentee or the patentee's
assignee. Such certificate will not be issued at the request
or suggestion of anyone not owning an interest in the
patent, nor on motion of the Office, without first notifying
the  patentee  (including  any  assignee  of  record)  and
affording the patentee an opportunity to be heard. When the
request relates to a patent involved in an interference, the
request shall comply with the requirements of this section
and shall be accompanied by a motion under § 1.635.

  (b) If the nature of the mistake on the part of the
Office is such that a certificate of correction is deemed
inappropriate  in  form,  the  Commissioner  may  issue  a
corrected patent in lieu thereof as a more appropriate form
for  certificate  of  correction,  without  expense  to  the
patentee.

  [24 FR 10332, Dec. 22, 1959; 34 FR 5550, Mar. 22, 1969;
para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11,
1985]

 § 1.323  Certificate of correction of applicant's mistake.

  Whenever a mistake of a clerical or typographical nature
or of minor character which was not the fault of the Office,
appears in a patent and a showing is made that such mistake
occurred in good faith, the Commissioner may, upon payment
of the fee set forth in § 1.20(a), issue a certificate, if
the correction does not involve such changes in the patent
as  would  constitute  new  matter  or  would  require
reexamination. A request for a certificate of correction of
a patent involved in an interference shall comply with the
requirements of this section and shall be accompanied by a
motion under § 1.635.

  [34 FR 5550, Mar. 22, 1969; 49 FR 48416, Dec. 12, 1984,
effective Feb. 11, 1985]

 § 1.324  Correction of inventorship in patent.

  Whenever a patent is issued and it appears that the
correct inventor or inventors were not named through error
without deceptive intention on the part of the actual
inventor or inventors, the Commissioner may, on petition of
all the parties and the assignees and satisfactory proof of
the facts and payment of the fee set forth in § 1.20(b), or
on order of a court before which such matter is called in
question,  issue  a  certificate  naming  only  the  actual
inventor or inventors. A request to correct inventorship of
a patent involved in an interference shall comply with the
requirements of this section and shall be accompanied by a
motion under § 1.634.

  [47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; 48
FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR
48416, Dec. 12, 1984, 50 FR 23123, May 31, 1985, effective
Feb. 11, 1985]

 § 1.325  Other mistakes not corrected.

  Mistakes other than those provided for in § 1.322,
1.323, 1.324, and not affording legal grounds for reissue

 or for reexamination, will not be corrected after the date
of the patent.

  [48 FR 2714, Jan. 20, 1983, effective date Feb. 27,
1983]

 ARBITRATION AWARDS

 § 1.331  [Reserved]

  [24 FR 10332, Dec. 22, 1959; 43 FR 20465, May 11, 1978;
47 FR 41281, Sept. 17, 1982; deleted, 57 FR 29642, July 6,
1992, effective Sept. 4, 1992]

 § 1.332  [Reserved]

  [47 FR 41281, Sept. 17, 1982; deleted, 57 FR 29642, July
6, 1992, effective Sept. 4, 1992]

 § 1.333  [Reserved]

  [Deleted, 57 FR 29642, July 6, 1992, effective Sept. 4,
1992]

 § 1.334  [Reserved]

  [47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982;
para. (c), 54 FR 6893, Feb. 15, 1989, effective Apr. 17,
1989; deleted, 57 FR 29642, July 6, 1992, effective Sept. 4,
1992]

 § 1.335  Filing of notice of arbitration awards.

  (a) Written notice of any award by an arbitrator pursuant
to 35 U.S.C. 294 must be filed in the Patent and Trademark
Office  by  the  patentee  or  the  patentee's  assignee  or

licensee. If the award involves more than one patent a
separate notice must be filed for placement in the file of
each patent. The notice must set forth the patent number,
the names of the inventor and patent owner, and the names
and addresses of the parties to the arbitration. The notice
must also include a copy of the award.

  (b) If an award by an arbitrator pursuant to 35 U.S.C.
294 is modified by a court, the party requesting the
modification must file in the Patent and Trademark Office, a
notice of the modification for placement in the file of each
patent to which the modification applies. The notice must
set forth the patent number, the names of the inventor and
patent owner, and the names and addresses of the parties to
the arbitration. The notice must also include a copy of the
court's order modifying the award.

  (c) Any award by an arbitrator pursuant to 35 U.S.C. 294
shall  be  unenforceable  until  any  notices  required  by
paragraph (a) or (b) of this section are filed in the Patent
and Trademark Office. If any required notice is not filed by
the party designated in paragraph (a) or (b) of this
section, any party to the arbitration proceeding may file
such a notice.

  [48 FR 2718, Jan. 20, 1983, effective Feb. 8, 1983]

 AMENDMENT OF RULES

 § 1.351  Amendments to rules will be published.

  All amendments to the regulations in this part will be
published in the Official Gazette and in the  Federal
Register .

 § 1.352  Publication of notice of proposed amendments.

  (a)  Whenever  required  by  law,  notice  of  proposed
amendments to the regulations in this part will be published
in the Official Gazette and in the  Federal Register.  If
not published with the notice, copies of the text will be
furnished to any person requesting the same. All comments,
suggestions, and briefs received within a time specified in
the  notice  will  be  considered  before  adoption  of  the
proposed amendments which may be modified in the light
thereof.

  (b) Oral hearings may be held at the discretion of the
Commissioner.

  [para.  (a)  amended,  58  FR  54504,  Oct.  22,  1993,
effective Jan. 3, 1994]

  MAINTENANCE FEES

 § 1.362  Time for payment of maintenance fees.

  (a) Maintenance fees as set forth in § 1.20(e) through
(g) are required to be paid in all patents based on
applications filed on or after December 12, 1980, except as
noted in paragraph (b) of this section, to maintain a patent
in force beyond 4, 8, and 12 years after the date of grant.

  (b) Maintenance fees are not required for any plant
patents or any design patents. Maintenance fees are not

required for a reissue patent if the patent being reissued
did not require maintenance fees.

  (c) The application filing dates for purposes of payment
of maintenance fees are as follows:

  (1) For an application not claiming benefit of an earlier
application, the actual United States filing date of the
application.

  (2) For an application claiming benefit of an earlier
foreign application under 35 U.S.C. 119, the United States
filing date of the application.

  (3)  For  a  continuing  (continuation,  division,
continuation - in - part) application claiming the benefit
of a prior patent application under 35 U.S.C. 120, the
actual  United  States  filing  date  of  the  continuing
application.

  (4) For a reissue application, including a continuing
reissue  application  claiming  the  benefit  of  a  reissue
application under 35 U.S.C. 120, the United States filing
date of the original non - reissue application on which the
patent reissued is based.

  (5) For an international application which has entered
the United States as a Designated Office under 35 U.S.C.
371, the international filing date granted under Article
11(1) of the Patent Cooperation Treaty which is considered
to be the United States filing date under 35 U.S.C. 363.

  (d) Maintenance fees may be paid in patents without
surcharge during the periods extending respectively from:

  (1) 3 years through 3 years and 6 months after grant for
the first maintenance fee,

  (2) 7 years through 7 years and 6 months after grant for
the second maintenance fee, and

  (3) 11 years through 11 years and 6 months after grant
for the third maintenance fee.

  (e) Maintenance fees may be paid with the surcharge set
forth in § 1.20(h) during the respective grace periods
after:

  (1) 3 years and 6 months and through the day of the 4th
anniversary of the grant for the first maintenance fee.

  (2) 7 years and 6 months and through the day of the 8th
anniversary of the grant for the second maintenance fee, and

  (3) 11 years and 6 months and through the day of the12th
anniversary of the grant for the third maintenance fee.

  (f) If the last day for paying a maintenance fee without
surcharge set forth in paragraph (d) of this section, or the
last day for paying a maintenance fee with surcharge set
forth in paragraph (e) of this section, falls on a Saturday,
Sunday,  or  a  federal  holiday  within  the  District  of
Columbia, the maintenance fee and any necessary surcharge
may  be  paid  under  paragraph  (d)  or  paragraph  (e)
respectively on the next succeeding day which is not a

Saturday, Sunday, or Federal holiday.

  (g)  Unless  the  maintenance  fee  and  any  applicable
surcharge is paid within the time periods set forth in
paragraphs (d), (e) or (f) of this section, the patent will
expire as of the end of the grace period set forth in
paragraph (e) of this section. A patent which expires for
the failure to pay the maintenance fee will expire at the
end of the same date (anniversary date) the patent was
granted in the 4th, 8th, or 12th year after grant.

  (h) The periods specified in § 1.362(d) and (e) with
respect to a reissue application, including a continu ing
reissue application thereof, are counted from the date of
grant of the original non - reissue application on which the
reissued patent is based.

  [49 FR 34724, Aug. 31, 1984, added effective Nov. 1,
1984; paras. (a) and (e), 56 FR 65142, Dec. 13, 1991,
effective Dec. 16, 1991; paras. (c)(4) and (e) revised and
para. (h) added, 58 FR 54504, Oct. 22, 1993, effective Jan.
3, 1994]

  (Editor's note: The time periods set forth in paras.
(e)(1) - (3) are incorrect. The correct time periods for
payment of maintenance fees with surcharge are: (1) 3 years
and 6 months and through the day of the 4th anniversary of
the grant for the first maintenance fee, (2) 7 years and 6
months and through the day of the 8th anniversary of the
grant for the second maintenance fee, and (3) 11 years and 6
months and through the day of the 12th anniversary of the
grant for the third maintenance fee.)

 § 1.363  Fee address for maintenance fee purposes.

  (a)  All  notices,  receipts,  refunds,  and  other
communications relating to payment or refund of maintenance
fees will be directed to the correspondence address used
during prosecution of the application as indicated in §
1.33(a) unless:

  (1)  A  "fee  address"  for  purposes  of  payment  of
maintenance fees is set forth when submitting the issue fee,
or

  (2) A change in the correspondence address for all
purposes is filed after payment of the issue fee, or

  (3) A "fee address" or a change in the "fee address" is
filed for purposes of receiving notices, receipts, and other
correspondence relating to the payment of maintenance fees
after the payment of the issue fee, in which instance, the
latest such address will be used.

  (b) An assignment of a patent application or patent does
not result in a change of the "correspondence address" or
fee address for maintenance fee purposes.

  [49 FR 34725, Aug. 31, 1984, added effective Nov. 1,
1984]

 § 1.366  Submission of maintenance fees.

  (a)  The  patentee  may  pay  maintenance  fees  and  any
necessary surcharges, or any person or organization may pay

maintenance fees and any necessary surcharges on behalf of a
patentee. Authorization by the patentee need not be filed in
the Patent and Trademark Office to pay maintenance fees and
any necessary surcharges on behalf of the patentee.

  (b)  A  maintenance  fee  and  any  necessary  surcharge
submitted for a patent must be submitted in the amount due
on the date the maintenance fee and any necessary surcharge
are paid and may be paid in the manner set forth in § 1.23
or  by  an  authorization  to  charge  a  deposit  account
established pursuant to § 1.25. Payment of a maintenance fee
and any necessary surcharge or the authorization to charge a
deposit account must be submitted within the periods set
forth  in  §  1.362(d),  (e),  or  (f).  Any  payment  or
authorization of maintenance fees and surcharges filed at
any other time will not be accepted and will not serve as a
payment of the maintenance fee except insofar as a delayed
payment  of  the  maintenance  fee  is  accepted  by  the
Commissioner in an expired patent pursuant to a petition
filed under § 1.378. Any authorization to charge a deposit
account  must  authorize  the  immediate  charging  of  the
maintenance fee and any necessary surcharge to the deposit
account. Payment of less than the required amount, payment
in a manner other than that set forth in § 1.23, or the
filing of an authorization to charge a deposit account
having insufficient funds will not constitute payment of a
maintenance fee or surcharge on a patent. The certificate
procedures of either § § 1.8 or 1.10 may be utilized in
paying maintenance fees and any necessary surcharges.

  (c) In submitting maintenance fees and any necessary
surcharges,  identification  of  the  patents  for  which
maintenance fees are being paid must include the following:

  (1) The patent number, and

  (2) The serial number of the United States application
for the patent on which the maintenance fee is being paid.

  (d) Payments of maintenance fees and any surcharges
should identify the fee being paid for each patent as to
whether it is the 3 1/2, 7 1/2, or 11 1/2 year fee, whether
small entity status is being changed or claimed, the amount
of the maintenance fee and any surcharge being paid, any
assigned payor number, the patent issue date and the United
States application filing date. If the maintenance fee and
any necessary surcharge is being paid on a reissue patent,
the payment must identify the reissue patent by reissue
patent number and reissue application serial number as
required by paragraph (c) of this section and should also
include the original patent number, the original patent
issue date, and the original United States application
filing date .

  (e)  Maintenance  fee  payments  and  surcharge  payments
relating thereto must be submitted separate from any other
payments for fees or charges, whether submitted in the
manner set forth in § 1.23 or by an authorization to charge
a deposit account. If maintenance fee and surcharge payments
for more than one patent are submitted together, they should
be submitted on as few sheets as possible with the patent
numbers listed in increasing patent number order. If the
payment submitted is insufficient to cover the maintenance
fees and surcharges for all the listed patents, the payment
will be applied in the order the patents are listed,

beginning at the top of the listing.

  (f) Notification of any change in status resulting in
loss of entitlement to small entity status must be filed in
a patent prior to paying, or at the time of paying, the
earliest maintenance fee due after the date on which status
as a small entity is no longer appropriate. See § 1.28(b).

  (g) Maintenance fees and surcharges relating thereto will
not be refunded except in accordance with § 1.26 and §
1.28(a).

  [49 FR 34725, Aug. 31, 1984, added effective Nov. 1,
1984; para. (b) amended, 58 FR 54494, Oct. 22, 1993,
effective Nov. 22, 1993.]

 § 1.377  Review of decision refusing to accept and
record payment of a maintenance fee filed prior to
expiration of patent.

  (a ) Any patentee who is dissatisfied with the refusal of
the Patent and Trademark Office to accept and record a
maintenance fee which was filed prior to the expiration of
the patent may petition the Commissioner to accept and
record the maintenance fee.

  (b) Any petition under this section must be filed within
2 months of the action complained of, or within such other
time as may be set in the action complained of, and must be
accompanied by the fee set forth in § 1.17(h). The petition
may include a request that the petition fee be refunded if
the refusal to accept and

 record the maintenance fee is determined to result from an
error by the Patent and Trademark Office.

  (c) Any petition filed under this section must comply
with the requirements of paragraph (b) of § 1.181 and must
be signed by an attorney or agent registered to practice
before the Patent and Trademark Office, or by the patentee,
the assignee, or other party in interest. Such petition must
be in the form of a verified statement if made by a person
not registered to practice before the Patent and Trademark
Office.

  [49 FR 34725, Aug. 31, 1984, added effective Nov. 1,
1984]

 § 1.378  Acceptance of delayed payment of maintenance
fee in expired patent to reinstate patent.

  (a) The Commissioner may accept the payment of any
maintenance fee due on a patent after expiration of the
patent if, upon petition, the delay in payment of the
maintenance  fee  is  shown  to  the  satisfaction  of  the
Commissioner to have been unavoidable (paragraph (b) of this
section) or unintentional (paragraph (c) of this section)
and if the surcharge required by § 1.20(i) is paid as a
condition of accepting payment of the maintenance fee. If
the Commissioner accepts payment of the maintenance fee upon
petition, the patent shall be considered as not having
expired, but will be subject to the conditions set forth in
35 U.S.C. 41(c)(2).

  (b) Any petition to accept an unavoidably delayed payment

of a maintenance fee filed under paragraph (a) of this
section must include:

  (1) the required maintenance fee set forth in § 1.20(e) -
(g);

  (2) the surcharge set forth in § 1.20(i)(1); and

  (3) a showing that the delay was unavoidable since
reasonable care was taken to ensure that the maintenance fee
would be paid timely and that the petition was filed
promptly after the patentee was notified of, or otherwise
became aware of, the expiration of the patent. The showing
must enumerate the steps taken to ensure timely payment of
the maintenance fee, the date, and the manner in which
patentee became aware of the expiration of the patent, and
the steps taken to file the petition promptly.

  (c) Any petition to accept an unintentionally delayed
payment of a maintenance fee filed under paragraph (a) of
this section must be filed within twenty - four months after
the six - month grace period provided in § 1.362(e) and must
include:

  (1) the required maintenance fee set forth in § 1.20(e)
- (g);

  (2) the surcharge set forth in § 1.20(i)(2); and

  (3)  a  statement  that  the  delay  in  payment  of  the
maintenance fee was unintentional.

  (d) Any petition under this section must be signed by an
attorney or agent registered to practice before the Patent
and Trademark Office, or by the patentee, the assignee, or
other party in interest. Such petition must be in the form
of a verified statement if made by a person not registered
to practice before the Patent and Trademark Office.

  (e) Reconsideration of a decision refusing to accept a
maintenance fee upon petition filed pursuant to paragraph
(a) of this section may be obtained by filing a petition for
reconsideration within two months of, or such other time as
set in, the decision refusing to accept the delayed payment
of  the  maintenance  fee.  Any  such  petition  for
reconsideration must be accompanied by the petition fee set
forth in § 1.17(h). After decision on the petition for
reconsideration, no fur ther reconsideration or review of
the matter will be undertaken by the Commissioner. If the
delayed pay ment of the maintenance fee is not accepted, the
maintenance fee and the surcharge set forth in § 1.20(i)
will be refunded following the decision on the petition for
reconsideration, or after the expiration of the time for
filing such a petition for reconsideration, if none is
filed. Any petition fee under this section will not be
refunded  unless  the  refusal  to  accept  and  record  the
maintenance fee is determined to result from an error by the
Patent and Trademark Office.

  [49 FR 34726, Aug. 31, 1984, added effective Nov. 1,
1984; para. (a), 50 FR 9383, Mar.7, 1985, effective May 8,
1985; paras. (b) and (c), 53 FR 47810, Nov. 28, 1988,
effective Jan. 1, 1989; paras. (a) - (c) and (e), 56 FR
65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a) -
(c) and (e), 58 FR 44277, Aug. 20, 1993, effective Sept. 20,

1993]

  GENERAL INFORMATION

 § 1.401  Definitions of terms under the Patent
Cooperation Treaty.

  (a) The abbreviation "PCT" and the term "Treaty" mean the
Patent Cooperation Treaty.

  (b) "International Bureau" means the World Intellectual
Property Organization located in Geneva, Switzerland.

  (c) "Administrative Instructions" means that body of
instructions for operating under the Patent Cooperation
Treaty referred to in PCT Rule 89.

  (d) "Request," when capitalized, means that element of
the international application described in PCT Rules 3 and 4
.

  (e)  "International  application,"  as  used  in  this
subchapter is defined in § 1.9(b).

  (f) "Priority date" for the purpose of computing time
limits under the Patent Cooperation Treaty is defined in PCT
Art. 2(xi). Note also § 1.465.

  (g) "Demand," when capitalized, means that document filed
with the International Preliminary Examining Authority which
requests an international preliminary examination.

  (h)  "Annexes"  means  amendments  made  to  the  claims,
description  or  the  drawings  before  the  International
Preliminary  Examining Authority.

  (i) Other terms and expressions in this Subpart C not
defined in this section are to be taken in the sense
indicated in PCT Article 2 and 35 U.S.C. 351.

  [43 FR 20466, May 11, 1978; 52 FR 20047, May 28, 1987]

 § 1.412  The United States Receiving Office.

  (a) The United States Patent and Trademark Office is a
Receiving Office only for applicants who are residents or
nationals of the United States of America.

  (b) The Patent and Trademark Office, when acting as a
Receiving Office, will be identified by the full title
"United States Receiving Office" or by the abbreviation
"RO/US."

  (c) The major functions of the Receiving Office include:

  (1)  According  of  international  filing  dates  to
international applications meeting the requirements of PCT
Art. 11(1) and PCT Rule 20;

  (2) Assuring that international applications meet the
standards for format and content of PCT Art. 14(1), PCT Rule
9, 26, 29.1, 37, 38, 91, and portions of PCT Rules 3 through
11;

  (3) Collecting and, when required, transmitting fees due
for processing international applications (PCT Rule 14, 15,
16);

  (4) Transmitting the record and search copies to the
International Bureau and International Searching Authority,
respectively (PCT Rules 22 and 23); and

  (5) Determining compliance with applicable requirements
of Part 5 of this chapter.

  (6) Reviewing and, where the United States Receiving
Office  is  not  the  competent  Receiving  Office  under  §
1.421(a)  and  PCT  Rule  19.1  or  19.2,  transmitting  the
international application to the International Bureau for
processing in its capacity as a receiving Office unless
prescriptions  concerning  national  security  prevent  the
application from being so transmitted (PCT Rule 19.4).

  [Para. (c)(6) added, 60 FR 21438, May 2, 1995, effective
June 1, 1995]

 § 1.413  The United States International Searching
Authority.

  (a) Pursuant to appointment by the Assembly, the United
States Patent and Trademark Office will act as an

  International  Searching  Authority  for  international
applications filed in the United States Receiving Office and
in other Receiving Offices as may be agreed upon by the
Commissioner,  in  accordance  with  agreement  between  the
Patent and Trademark Office and the International Bureau
(PCT Art. 16(3)(b)).

  (b) The Patent and Trademark Office, when acting as an
International Searching Authority, will be identified by the
full title "United States International Searching Authority"
or by the abbreviation "ISA/US."

  (c) The major functions of the International Searching
Authority include:

  (1) Approving or establishing the title and abstract;

  (2) Considering the matter of unity of invention;

  (3) Conducting international and international - type
searches and preparing international and international -
type search reports (PCT Art. 15, 17, and 18, and PCT Rules
25, 33 to 45 and 47); and

  (4) Transmitting the international search report to the
applicant and the International Bureau.

 § 1.414  The United States Patent and Trademark Office as a
Designated Office or Elected Office.

  (a) The United States Patent and Trademark Office will
act  as  a  Designated  Office  or  Elected  Office  for
international applications in which the United States of
America has been designated or elected as a State in which
patent protection is desired.

  (b) The United States Patent and Trademark Office, when

acting as a Designated Office or Elected Office during
international processing will be identified by the full
title  "United  States  Designated  Office"  or  by  the
abbreviation "DO/US" or by the full title "United States
Elected Office" or by the abbreviation "EO/US."

  (c) The major functions of the United States Designated
Office  or  Elected  Office  in  respect  to  international
applications in which the United States of America has been
designated or elected, include:

  (1)  Receiving  various  notifications  throughout  the
international stage; and

  (2)  Accepting  for  national  stage  examination
international applications which satisfy the requirements of
35 U.S.C. 371.

  [52 FR 20047, May 28, 1987, effective July 1, 1987]

 § 1.415  The International Bureau.

  (a) The International Bureau is the World Intellectual
Property Organization located at Geneva, Switzerland. It is
the international intergovernmental organization which acts
as  the  coordinating  body  under  the  Treaty  and  the
Regulations (PCT Art. 2 (xix) and 35 U.S.C. 351(h)).

  (b) The major functions of the International Bureau
include:

  (1) Publishing of international applications and the
International Gazette;

  (2) Transmitting copies of international applications to
Designated Offices;

  (3) Storing and maintaining record copies; and

  (4) Transmitting information to authorities pertinent to
the processing of specific international applications.

 § 1.416  The United States International Preliminary 
Examining Authority.

  (a) Pursuant to appointment by the Assembly, the United
States  Patent  and  Trademark  Office  will  act  as  an
International  Preliminary  Examining  Authority  for
international  applications  filed  in  the  United  States
Receiving Office and in other Receiving Offices as may be
agreed  upon  by  the  Commissioner,  in  accordance  with
agreement between the Patent and Trademark Office and the
International Bureau.

  (b) The United States Patent and Trademark Office, when
acting as an International Preliminary Examining Authority,
will  be  identified  by  the  full  title  "United  States
International Preliminary Examining Authority" or by the
abbreviation "IPEA/US."

  (c) The major functions of the International Preliminary
Examining Authority include:

  (1) Receiving and checking for defects in the Demand;

  (2) Collecting the handling fee for the International
Bureau and the preliminary examination fee for the United
States International Preliminary Examining Authority;

  (3) Informing applicant of receipt of the Demand; (4)
Considering the matter of unity of invention;

  (5) Providing an international preliminary examination
report which is a non - binding opinion on the questions
whether the claimed invention appears to be novel, to
involve an inventive step (to be nonobvious), and to be
industrially applicable; and

  (6)  Transmitting  the  international  preliminary
examination  report  to  applicant  and  the  International
Bureau.

  [Added 52 FR 20047, May 28, 1987]

  WHO MAY FILE AN INTERNATIONAL APPLICATION

 § 1.421  Applicant for international application.

  (a) Only residents or nationals of the United States of
America may file international applications in the United
States Receiving Office. If an international application
does not include an applicant who is indicated as being a
resident or national of the United States of America, and at
least one applicant:

  (1) has indicated a residence or nationality in a PCT
Contracting State, or

  (2) has no residence or nationality indicated, applicant
will be so notified and, if the international application
includes a fee amount equivalent to that required by §
1.445(a)(5), the international application will be forwarded
for processing to the International Bureau acting as a
Receiving Office. (See also § 1.412(c)(6)).

  (b) Although the United States Receiving Office will
accept international applications filed by any resident or
national of the United States of America for international
processing, an international application designating the
United States of America will be accepted by the Patent and
Trademark Office for the national stage only if filed by the
inventor or as provided in § 1.422, 1.423 or 1.425.

  (c) International applications which do not designate the
United States of America may be filed by the assignee or
owner.

  (d) The attorney or agent of the applicant may sign the
international application Request and file the international
application  for  the  applicant  if  the  international
application when filed is accompanied by a separate power of
attorney to that attorney or agent from the applicant. The
separate  power  of  attorney  from  the  applicant  may  be
submitted after filing if sufficient cause is shown for not
submitting it at the time of filing. Note that paragraph (b)
of this section requires that the applicant be the inventor
if the United States of America is designated.

  (e)  Any  indication  of  different  applicants  for  the
purpose of different Designated Offices must be shown on the

Request portion of the international application.

  (f) Changes in the person, name, or address of the
applicant of an international application shall be made in
  bis
accordance with PCT Rule 92  .

  bis
  (g) The wording of PCT Rule 92  is as follows:

  bis - Recording of Changes in Certain
  PCT Rule 92
Indications in the Request or the Demand

  bis
  92  Recording of Changes by the International Bureau

  (a) The International Bureau shall, on the request of the
applicant or the receiving Office, record changes in the
following indications appearing in the request or demand:

  (i) person name, residence, nationality or address of the
applicant,

  (ii) person, name or address of the agent, the common
representative or the inventor.

  (b)  The  International  Bureau  shall  not  record  the
requested change if the request for recording is received by
it after the expiration:

  (i) of the time limit referred to in Article 22(1), where
Article  39(1)  is  not  applicable  with  respect  to  any
Contracting State;

  (ii) of the time limit referred to in Article 39(1)(a),
where Article 39(1) is applicable with respect to at least
one Contracting State .

  [Paras. (f) and (g), 53 FR 47810, Nov. 28, 1988,
effective Jan. 1, 1989; para. (a) amended, 60 FR 21438, May
2, 1995, effective June 1, 1995]

 § 1.422  When the inventor is dead.

  In case of the death of the inventor, the legal
representative  (executor,  administrator,  etc.)  of  the
deceased inventor may file an international application
which designates the United States of America.

 § 1.423 ¶ hen the inventor is insane or legally 
incapacitated.

  In case an inventor is insane or otherwise legally in
capacitated,  the  legal  representative  (guardian,
conservator,  etc.)  of  such  inventor  may  file  an
international application which designates the United States
of America.

 § 1.424  Joint inventors.

  Joint inventors must jointly file an international
application which designates the United States of America;
the signature of either of them alone, or less than the
entire  number,  will  be  insufficient  for  an  invention
invented by them jointly, except as provided in § 1.425.

 § 1.425  Filing by other than inventor.

  (a)  If  a  joint  inventor  refuses  to  join  in  an
international application which designates the United States
of America or cannot be found or reached after diligent
effort, the international application which designates the
United States of America may be filed by the other inventor
on behalf of himself or herself and the omitted inventor.
Such  an  international  application  which  designates  the
United States of America must be accompanied by proof of the
pertinent facts and must state the last known address of the
omitted inventor. The Patent and Trademark Office shall
forward  notice  of  the  filing  of  the  international
application to the omitted inventor at said address.

  (b)  Whenever  an  inventor  refuses  to  execute  an
international application which designates the United States
of America, or cannot be found or reached after diligent
effort, a person to whom the inventor has assigned or agreed
in writing to assign the invention or who otherwise shows
sufficient proprietary interest in the matter justifying
such action may file the international application on behalf
of and as agent for the inventor. Such an international
application which designates the United States of America
must be accompanied by proof of the pertinent facts and a
showing that such action is necessary to preserve the rights
of the parties or to prevent irreparable damage and must
state  the  last  known  address  of  the  inventor.  The
assignment, written agreement to assign or other evidence of
proprietary interest, or a verified copy thereof, must be
filed in the Patent and Trademark Office. The Office shall
forward notice of the filing of the application to the
inventor at the address stated in the application.

  THE INTERNATIONAL APPLICATION

 § 1.431  International application requirements.

  (a)  An  international  application  shall  contain,  as
specified in the Treaty and the Regulations, a Request, a
description, one or more claims, an abstract, and one or
more drawings (where required). (PCT Art. 3(2) and Section
207 of the Administrative Instructions.)

  (b) An international filing date will be accorded by the
United States Receiving Office, at the time of receipt of
the international application, provided that:

  (1) At least one applicant is a United States resident or
national and the papers filed at the time of receipt of the
international application so indicate (35 U.S.C. 361(a), PCT
Art. 11(1)(i)).

  (2) The international application is in the English
language (35 U.S.C. 361(c), PCT Art. 11(1)(ii)).

  (3) The international application contains at least the
following elements (PCT Art. 11(1)(iii)):

  (i) An indication that it is intended as an international
application (PCT Rule 4.2);

  (ii) The designation of at least one Contracting State of
the International Patent Cooperation Union ( § 1.432);

  (iii) The name of the applicant, as prescribed (note §
1.421 - 1.424);

  (iv) A part which on the face of it appears to be a
description; and

  (v) A part which on the face of it appears to be a claim.

  (c) Payment of the basic portion of the international fee
(PCT Rule 15.2) and the transmittal and search fees ( §
1.445) may be made in full at the time the international
application papers required by paragraph (b) of this section
are deposited or within one month thereafter. If the basic,
transmittal and search fees are not paid within one month
from the date of receipt of the international application,
applicant will be notified and given one month within which
to pay the deficient fees plus a late payment fee equal to
the greater of:

  (1) 50% of the amount of the deficient fees up to a
maximum amount equal to the basic fee, or

  (2) an amount equal to the transmittal fee (PCT Rule
  bis
16  ).

  The one - month time limit set in the notice to pay
deficient fees may not be extended.

  (d) If the payment needed to cover the transmittal fee,
the basic fee, the search fee, one designation fee and the
late payment fee pursuant to paragraph (c) of this section
is not timely made, the Receiving Office will declare the
international  application  withdrawn  under  PCT  Article
14(3)(a).

  [43 FR 20486, May 11, 1978; paras. (b), (c), (d) and
(e), 50 FR 9383, Mar. 7, 1985, effective May 8, 1985; para.
(d) amended 52 FR 20047, May 28, 1987; paras. (b)(1),
(b)(3)(ii), (c) and (d) amended, para. (e) deleted, 58 FR
4335, Jan. 14, 1993, effective May 1, 1993]

 § 1.432  Designation of States and payment of designation
fees.

  (a) The designation of States including an indication
that applicant wishes to obtain a regional patent, where
applicable, shall appear in the Request upon filing and must
be indicated as set forth in PCT Rule 4.9 and section 115 of
the Administrative Instructions. Applicant must specify at
least one national or regional designation on filing of the
international application for a filing date to be granted.

  (b) If the fees necessary to cover all the national and
regional designations specified in the Request are not paid
by the applicant within one year from the priority date or
within  one  month  from  the  date  of  receipt  of  the
international application if that month expires after the
expiration of one year from the priority date, applicant
will be notified and given one month within which to pay the
deficient designation fees plus a late payment fee equal to
the greater of 50% of the amount of the deficient fees up to
a maximum amount equal to the basic fee, or an amount equal
  bis
to the transmittal fee (PCT Rule 16  ). The one - month
time limit set in the notification of deficient designation

fees may not be extended. Failure to timely pay at least one
designation  fee  will  result  in  the  withdrawal  of  the
international application. The one designation fee may be
paid:

  (1) within one year from the priority date,

  (2) within one month from the date of receipt of the
international application if that month expires after the
expiration of one year from the priority date, or

  (3) with the late payment fee defined in this paragraph
within the time set in the notification of the deficient
designation fees. If after a notification of deficient
designation fees the applicant makes timely payment, but the
amount paid is not sufficient to cover the late payment fee
and all designation fees, the Receiving Office will, after
allocating payment for the basic, search, transmittal and
late payment fees, allocate the amount paid in accordance
  bis
with  PCT  Rule  16  .1(c)  and  withdraw  the  unpaid
designations. The notification of deficient designation fees
pursuant to this paragraph may be made simultaneously with
any notification pursuant to § 1.431(c).

  (c) On filing the international application, in addition
to specifying at least one national or regional designation
under PCT Rule 4.9(a), applicant may also indicate under PCT
Rule 4.9(b) that all other designations permitted under the
Treaty are made. The latter indication under PCT Rule 4.9(b)
must be made in a statement on the Request that any
designation  made  under  this  paragraph  is  subject  to
confirmation (PCT Rule 4.9(c)) not later than the expiration
of 15 months from the priority date by:

  (1)  Filing a written notice with the United States
Receiving Office specifying the national and/or regional
designations being confirmed;

  (2) Paying the designation fee for each designation being
confirmed; and

  (3)  Paying  the  confirmation  fee  specified  in  §
1.445(a)(4).

  Unconfirmed designations will be considered withdrawn.
If the amount submitted is not sufficient to cover the
designation  fee  and  the  confirmation  fee  for  each
designation  being  confirmed,  the  Receiving  Office  will
allocate the amount paid in accordance with any priority of
designations specified by applicant. If applicant does not
specify any priority of designations, the allocation of the
amount paid will be made in accordance with PCT Rule 16 bis
.1(c).

  [43 FR 20486, May 11, 1978; para. (b) amended 52 FR
20047, May 28, 1987; paras. (a), (b) amended and para. (c)
added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]

 § 1.433 Physical requirements of international 
application.

  (a)  The international application and each of the
documents that may be referred to in the check list of the
Request (PCT Rule 3.3(a)(ii)) shall be filed in one copy

only.

  (b) All sheets of the international application must be
on A4 size paper (21.0 x 29.7 cm.).

  (c)  Other  physical  requirements  for  international
applications are set forth in PCT Rule 11 and sections 201 -
207 of the Administrative Instructions.

 § 1.434 The request.

  (a) The request shall be made on a standardized form (PCT
Rules  3  and  4).  Copies  of  printed  Request  forms  are
available from the Patent and Trademark Office. Letters
requesting printed forms should be marked "Box PCT."

  (b) The Check List portion of the Request form should
indicate  each  document  accompanying  the  international
application on filing.

  (c)  All information, for example, addresses, names of
States and dates, shall be indicated in the Request as
required by PCT Rule 4 and Administrative Instructions 110
and 201.

  (d) International applications which designate the United
States of America shall include:

  (1)  The name, address and signature of the inventor,
except as provided by § 1.421(d), 1.422, 1.423 and 1.425;

  (2) A reference to any copending national application or
international application designating the United States of
America, if the benefit of the filing date for the prior
copending application is to be claimed.

  [Para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective
May 1, 1993]

 § 1.435 The description.

  (a) Requirements as to the content and form of the
description are set forth in PCT Rules 5, 9, 10, and 11 and
Administrative Instruction 204 and shall be adhered to.

  (b) In international applications designating the United
States  the  description  must  contain  upon  filing  an
indication of the best mode contemplated by the inventor for
carrying out the claimed invention.

 § 1.436  The claims.

  The requirements as to the content and format of claims
are set forth in PCT Art. 6 and PCT Rules 6, 9, 10, and 11
and shall be adhered to. The number of the claims shall be
reasonable, considering the nature of the invention claimed.

 § 1.437 The drawings.

  (a) Subject to paragraph (b) of this section, when
drawings  are  necessary  for  the  understanding  of  the
invention, or are mentioned in the description, they must be
part of an international application as originally filed in
the United States Receiving Office in order to maintain the
international filing date during the national stage (PCT

Art. 7).

  (b) Drawings missing from the application upon filing
will be accepted if such drawings are received within 30
days of the date of first receipt of the incomplete papers.
If the missing drawings are received within the 30 - day
period, the international filing date shall be the date on
which such drawings are received. If such drawings are not
timely  received,  all  references  to  drawings  in  the
interannual application shall be considered nonexistent (PCT
Art. 14(2), Administrative Instruction 310).

  (c) The physical requirements for drawings are set forth
in PCT Rule 11 and shall be adhered to.

 § 1.438 The abstract.

  (a) Requirements as to the content and form of the
abstract are set forth in PCT Rule 8, and shall be adhered
to.

  (b)  Lack of an abstract upon filing of an international
application will not affect the granting of a filing date.
However, failure to furnish an abstract within one month
from the date of the notification by the Receiving Office
will result in the international application being declared
withdrawn.

 FEES

 § 1.445  International application filing, processing, and
search fees.

  (a) The following fees and charges for international
applications are established by the Commissioner under the
authority of 35 U.S.C. 376:

  (1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule
14 . . $230.00

  (2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):

  (i) where a corresponding prior United States National
application filed under 35 U.S.C. 111(a) with the filing fee
under 37 CFR 1.6(a) has been filed . . $440.00

  (ii) For all situations not provided for in (a)(2)(i) of
this section . . $680.00

  (3)  A  supplemental  search  fee  when  required,  per
additional invention . . $200.00

  (4) A confirmation fee (PCT Rule 96) equal to 50% of the
sum of designation fees for the national and regional
designations being confirmed ( § 1.432(c)).

  (5) A fee equivalent to the transmittal fee in paragraph
(a)(1) of this section for transmittal of an international
application to the International Bureau for processing in
its capacity as a Receiving Office (PCT Rule 19.4).

  (b) The basic fee and designation fee portion of the
international fee shall be as prescribed in PCT Rule 15.

  [43 FR 20466, May 11, 1978; para. (a), 47 FR 41282,

Sept. 17, 1982, effective Oct. 1, 1982; para. (a)(4) - (6),
50 FR 9384, Mar. 7, 1985, effective May 8, 1985; 50 FR
31826, Aug. 6, 1985, effective Oct. 5, 1985; para. (a)
amended 52 FR 20047, May 28, 1987; paras. (a)(2) and (3), 54
FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989, effective
Apr. 17, 1989; para. (a), 56 FR 65142, Dec. 13, 1991,
effective Dec. 27, 1991; para. (a), 57 FR 38190, Aug. 21,
1992, effective Oct. 1, 1992; para. (a)(4) added, 58 FR
4335, Jan. 14, 1993, effective May 1, 1993; paras. (a)(1) -
(3), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994;
para. (a)(5) added, 60 FR 21438, May 2, 1995, effective June
1, 1995; para. (a) amended, 60 FR 41018, Aug. 11, 1995,
effective Oct. 1, 1995; paras. (a)(1) - (3) amended, 61 FR
39585, July 30, 1996, effective Oct. 1, 1996]

 § 1.446  Refund of international application filing and 
processing fees.

  (a) Money paid for international application fees, where
paid by actual mistake or in excess, such as a payment not
required by law or Treaty and its Regulations, will be
refunded.

  (b) [Reserved]

  (c) Refund of the supplemental search fees will be made
if  such  refund  is  determined  to  be  warranted  by  the
Commissioner or the Commissioner's designee acting under PCT
Rule 40. 2(c).

  (d) The international and search fees will be refunded if
no  international  filing  date  is  accorded  or  if  the
application is withdrawn before transmittal of the record
copy to the International Bureau (PCT Rules 15.6 and 16.2).
The search fee will be refunded if the application is
withdrawn before transmittal of the search copy to the
International Searching Authority. The transmittal fee will
not be refunded.

  (e) The handling fee ( § 1.482(b)) will be refunded (PCT
Rule 57.6) only if:

  (1) The Demand is withdrawn before the Demand has been
sent by the International Preliminary Examining Authority to
the International Bureau, or

  (2) The Demand is considered not to have been submitted
(PCT Rule 54.4(a)).

  [43 FR 20466, May 11, 1978; para. (b), 47 FR 41282,
Sept. 17, 1982, effective Oct. 1, 1982; para.(b), 50 FR
9384, Mar. 7, 1985, effective May 8, 1985; 50 FR 31826, Aug.
6, 1985, effective Oct. 5,1985; para. (d) amended and para.
(e) added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]

  PRIORITY

 § 1.451  The priority claim and priority document in an 
international application.

  (a) The claim for priority must be made on the Request
(PCT Rule 4.10) in a manner complying with sections 110 and
115 of the Administrative Instructions.

  (b) Whenever the priority of an earlier United States

national  application  is  claimed  in  an  international
application, the applicant may request in a letter of
transmittal accompanying the international application upon
filing with the United States Receiving Office, or in a
separate letter filed in the Receiving Office not later than
16 months after the priority date, that the Patent and
Trademark Office prepare a certified copy of the national
application for transmittal to the International Bureau (PCT
Art. 8 and PCT Rule 17). The fee for preparing a certified
copy is stated in § 1.19(b)(1).

  (c) If a certified copy of the priority document is not
submitted together with the international application on
filing, or if the priority application was filed in the
United States and a request and appropriate payment for
preparation of such a certified copy do not accompany the
international application on filing or are not filed within
16 months of the priority date, the certified copy of the
priority document must be furnished by the applicant to the
International Bureau or to the United States Receiving
Office within the time limit specified in PCT Rule 17.1(a).

  [43 FR 20466, May 11, 1978; 47 FR 40140, Sept. 10, 1982,
effective Oct. 1, 1982; para. (b), 47 FR 41282, Sept. 17,
1982, effective Oct. 1, 1982; paras. (b) & (c), 50 FR 9384,
Mar. 7, 1985, effective May 8, 1985, para. (b), 54 FR 6893,
Feb. 15, 1989, effective Apr. 17, 1989; para. (a) amended,
58 FR 4335, Jan. 14, 1993, effective May 1, 1993]

  REPRESENTATION

 § 1.455  Representation in international applications.

  (a)  Applicants  of  international  applications  may  be
represented by attorneys or agents registered to practice
before the Patent and Trademark Office or by an applicant
appointed as a common representative (PCT Art. 49, Rules 4.8
and 90 and § 10.10). If applicants have not appointed an
attorney or agent or one of the applicants to represent
them, and there is more than one applicant, the applicant
first named in the request and who is entitled to file in
the U.S. Receiving Office shall be considered to be the
common representative of all the applicants. An attorney or
agent having the right to practice before a national office
with which an international application is filed and for
which  the  United  States  is  an  International  Searching
Authority or International Preliminary Examining Authority
may  be  appointed  to  represent  the  applicants  in  the
international application before that authority. An attorney
or agent may appoint an associate attorney or agent who
shall also then be of record (PCT Rule 90.1(d)). The
appointment  of  an  attorney  or  agent,  or  of  a  common
representative,  revokes  any  earlier  appointment  unless
otherwise indicated (PCT Rule 90.6(b) and (c)).

  (b)  Appointment  of  an  agent,  attorney,  or  common
representative (PCT Rule 4.8) must be effected either in the
Request form, signed by all applicants, or in a separate
power of attorney submitted either to the United States
Receiving Office or to the International Bureau.

  (c) Powers of attorney and revocations thereof should be
submitted to the United States Receiving Office until the
issuance of the international search report.

  (d) The addressee for correspondence will be as indicated
in section 108 of the Administrative Instructions.

  [43 FR 20466, May 11, 1978; 50 FR 5171, Feb. 6, 1985,
effective Mar. 8, 1985; para. (a) amended, 58 FR 4335, Jan.
14, 1993, effective May 1, 1993]

  TRANSMITTAL OF RECORD COPY

 § 1.461  Procedures for transmittal of record copy to .
. . . the International Bureau.

  (a) Transmittal of the record copy of the international
application to the International Bureau shall be made by the
United States Receiving Office.

  (b) [Reserved]

  (c) No copy of an international application may be
transmitted  to  the  International  Bureau,  a  foreign
Designated Office, or other foreign authority by the United
States  Receiving  Office  or  the  applicant,  unless  the
applicable requirements of Part 5 of this chapter have been
satisfied.

  [43 FR 20466, May 11, 1978; paras. (a) and (b), 50 FR
9384, Mar. 7,1985, effective May 8, 1985]

  TIMING

 § 1.465  Timing of application processing based on the
priority date.

  (a) For the purpose of computing time limits under the
Treaty, the priority date shall be defined as in PCT Art.
2(xi).

  (b) When a claimed priority date is cancelled under PCT
Rule 4.10(d), or considered not to have been made under PCT
Rule  4.10(b),  the  priority  date  for  the  purposes  of
computing time limits will be the date of the earliest valid
remaining priority claim of the international application,
or if none, the international filing date.

  (c) When corrections under PCT Art. 11(2), Art. 14(2) or
PCT Rule 20.2(a) (i) or (iii) are timely submitted, and the
date of receipt of such corrections falls later than one
year from the claimed priority date or dates, the Receiving
Office shall proceed under PCT Rule 4.10(d).

 § 1.468  Delays in meeting time limits.

  Delays in meeting time limits during international
processing of international applications may only be excused
as provided in PCT Rule 82. For delays in meeting time
limits in a national application, see § 1.137.

  AMENDMENTS

 § 1.471  Corrections and amendments during international
processing.

  (a)  All  corrections  submitted  to  the  United  States
Receiving Office must be in the form of replacement sheets
and be accompanied by a letter that draws attention to the

differences between the replaced sheets and the replacement
sheets, except that the deletion of lines of text, the
correction of simple typographical errors, and one addition
or change of not more than five words per sheet may be
stated in a letter and the United States Receiving Office
will make the deletion or transfer the correction to the
international application, provided that such corrections do
not adversely affect the clarity and direct reproducibility
of the application (PCT Rule 26.4).

  (b) Amendments of claims submitted to the International
Bureau shall be as prescribed by PCT Rule 46.

 § 1.472  Changes in person, name, or address of applicants
and inventors.

  All requests for a change in person, name or address of
applicants and inventor should be sent to the United States
Receiving  Office  until  the  time  of  issuance  of  the
international search report. Thereafter requests for such
changes should be submitted to the International Bureau.

  [43 FR 20466, May 11, 1978; redesignated at 52 FR 20047,
May 28, 1987]

 UNITY OF INVENTION

 § 1.475  Unity of invention before the International
Searching Authority, the International Preliminary Examining
Authority, and during the national stage.

  (a) An international and a national stage application
shall relate to one invention only or to a group of
inventions so linked as to form a single general inventive
concept ("requirement of unity of invention"). Where a group
of inventions is claimed in an application, the requirement
of unity of invention shall be fulfilled only when there is
a technical relationship among those inventions involving
one or more of the same or corresponding special technical
features. The expression "special technical features" shall
mean those technical features that define a contribution
which each of the claimed inventions, considered as a whole,
makes over the prior art.

  (b) An international or a national stage application
containing claims to different categories of invention will
be considered to have unity of invention if the claims are
drawn  only  to  one  of  the  following  combinations  of
categories:

  (1) A product and a process specially adapted for the
manufacture of said product; or

  (2) A product and process of use of said product; or

  (3) A product, a process specially adapted for the
manufacture of the said product, and a use of the said
product; or

  (4) A process and an apparatus or means specifically
designed for carrying out the said process; or

  (5) A product, a process specially adapted for the
manufacture of the said product, and an apparatus or means
specifically designed for carrying out the said process.

  (c) If an application contains claims to more or less
than one of the combinations of categories of invention set
forth in paragraph (b) of this section, unity of invention
might not be present.

  (d) If multiple products, processes of manufacture, or
uses are claimed, the first invention of the category first
mentioned in the claims of the application and the first
recited invention of each of the other categories related
thereto will be considered as the main invention in the
claims, see PCT Article 17(3)(a) and § 1.476(c).

  (e) The determination whether a group of inventions is so
linked as to form a single general inventive concept shall
be made without regard to whether the inventions are claimed
in separate claims or as alternatives within a single claim.

  [Added 52 FR 20047, May 28, 1987, effective July 1,
1987; paras. (a) - (e) amended and para. (f) deleted, 58 FR
4335, Jan. 14, 1993, effective May 1, 1993]

 § 1.476  Determination of unity of invention before the
International Searching Authority.

  (a) Before establishing the international search report,
the International Searching Authority will determine whether
the international application complies with the requirement
of unity of invention as set forth in § 1.475.

  (b)  If the International Searching Authority considers
that the international application does not comply with the
requirement of unity of invention, it shall inform the
applicant accordingly and invite the payment of additional
fees (note § 1.445 and PCT Art. 17(3)(a) and PCT Rule 40).
The applicant will be given a time period in accordance with
PCT Rule 40.3 to pay the additional fees due.

  (c) In the case of noncompliance with unity of invention
and where no additional fees are paid, the international
search will be performed on the invention first mentioned
(main invention) in the claims.

  (d) Lack of unity of invention may be directly evident
before considering the claims in relation to any prior art,
or after taking the prior art into consideration, as where a
document discovered during the search shows the invention
claimed in a generic or linking claim lacks novelty or is
clearly obvious, leaving two or more claims joined thereby
without a common inventive concept. In such a case the
International Searching Authority may raise the objection of
lack of unity of invention.

  [43 FR 20466, May 11, 1978; redesignated and amended at
52 FR20047, May 28, 1987; para. (a) amended, 58 FR 4335,
Jan. 14, 1993, effective May 1, 1993]

 § 1.477  Protest to lack of unity of invention before
the International Searching Authority.

  (a) If the applicant disagrees with the holding of lack
of unity of invention by the International Searching

 Authority, additional fees may be paid under protest,
accompanied by a request for refund and a statement setting

forth  reasons  for  disagreement  or  why  the  required
additional fees are considered excessive, or both (PCT Rule
40.2(c)).

  (b) Protest under paragraph (a) of this section will be
examined by the Commissioner or the Commissioner's designee.
In the event that the applicant's protest is determined to
be justified, the additional fees or a portion thereof will
be refunded.

  (c) An applicant who desires that a copy of the protest
and the decision thereon accompany the international search
report when forwarded to the Designated Offices may notify
the International Searching Authority to that effect any
time prior to the issuance of the international search
report. Thereafter, such notifica tion should be directed to
the International Bureau (PCT Rule 40.2(c)).

  [43 FR 20466, May 11, 1978; redesignated and amended at
52 FR 20047, May 28, 1987]

  INTERNATIONAL PRELIMINARY EXAMINATION

 § 1.480  Demand for international preliminary examination.

  (a) On the filing of a Demand and payment of the fees for
international  preliminary  examination  (  §  1.482),  the
international  application  shall  be  the  subject  of  an
international  preliminary  examination.  The  preliminary
examination fee ( § 1.482(a)(1)) and the handling fee ( §
1.482(b)) shall be due at the time of filing of the Demand.

  (b) The Demand shall be made on a standardized form.
Copies of the printed Demand forms are available from the
Patent and Trademark Office. Letters requesting printed
Demand forms should be marked "Box PCT."

  (c) If the Demand is made prior to the expiration of the
19th month from the priority date and the United States of
America is elected, the provisions of § 1.495 shall apply
rather than § 1.494.

  (d) Withdrawal of a proper Demand prior to the start of
the  international  preliminary  examination  will  entitle
applicant to a refund of the preliminary examination fee
minus the amount of the transmittal fee set forth in §
1.445(a)(1).

  [52 FR 20048, May 28, 1987; para. (d), 53 FR 47810, Nov.
28, 1988, effective Jan. 1, 1989; para. (b) amended, 58 FR
4335, Jan. 14, 1993, effective May 1, 1993]

 § 1.482  International preliminary examination fees.

  (a) The following fees and charges for international
preliminary examination are established by the Commissioner
under the authority of 35 U.S.C. 376:

  (1) A preliminary examination fee is due on filing the
Demand:

  (i) Where an international search fee as set forth in §
1.445(a)(2) has been paid on the international application
to the United States Patent and Trademark Office as an
International Searching Authority, a preliminary examination

fee of . . $480.00

  (ii) Where the International Searching Authority for the
international application was an authority other than the
United States Patent and Trademark Office, a preliminary
examination fee of . . $730.00

  (2)  An  additional  preliminary  examination  fee  when
required, per additional invention:

  (i) Where the international Searching Authority for the
international application was the United States Patent and
Trademark Office . . $140.00

  (ii) Where the International Searching Authority for the
international application was an authority other than the
United States Patent and Trademark Office . .
$260.00

  (b) The handling fee is due on filing the Demand.

  (35 U.S.C. 6, 376)

  [52 FR 20048, May 28, 1987; para. (a), 54 FR 6893, Feb.
15, 1989, effective Apr. 17, 1989; para. (a), 56 FR 65142,
Dec. 13, 1991, effective Dec. 27, 1991; paras. (a)(1) and
(a)(2)(ii), 57 FR 38190, Aug. 21, 1992, effective Oct. 1,
1992; paras. (a)(2)(i) and (b) amended, 58 FR 4335, Jan. 14,
1993, effective May 1, 1993; paras. (a)(1) and (a)(2)(ii),
59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras.
(a)(1)(i), (a)(1)(ii), & (a)(2)(ii) amended, 60 FR 41018,
Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(1)(i),
(a)(1)(ii), and (a)(2)(ii) amended, 61 FR 39585, July 30,
1996, effective Oct. 1, 1996]

 § 1.484  Conduct of international preliminary examination.

  (a) An international preliminary examination will be
conducted to formulate a non - binding opinion as to whether
the claimed invention has novelty, involves inventive step
(is non - obvious) and is industrially applicable.

  (b)  International  preliminary  examination  will  begin
promptly upon receipt of a Demand which requests examination
based on the application as filed or as amended by an
amendment which has been received by the United States
International  Preliminary  Examining  Authority.  Where  a
Demand requests examination based on a PCT Article 19
amendment which has not been received, examination may begin
at 20 months without receipt of a PCT Article 19 amendment.
Where a Demand requests examination based on a PCT Article
34 amendment which has not been received, applicant will be
notified and given a time period within which to submit the
amendment. Examination will begin after the earliest of:

  (1) Receipt of the amendment;

  (2) Receipt of applicant's statement that no amendment
will be made; or

  (3)  Expiration  of  the  time  period  set  in  the
notification.

  No international preliminary examination report will be
established prior to issuance of an international search

report.

  (c) No international preliminary examination will be
conducted  on  inventions  not  previously  searched  by  an
International Searching Authority.

  (d) The International Preliminary Examining Authority
will establish a written opinion if any defect exists or if
the claimed invention lacks novelty, inventive step or
industrial applicability and will set a non - extendable
time limit in the written opinion for the applicant to
respond.

  (e) If no written opinion under paragraph (d) of this
section is necessary, or after any written opinion and the
response thereto or the expiration of the time limit for
response  to  such  written  opinion,  an  international
preliminary examination report will be established by the
International Preliminary Examining Authority. One copy will
be submitted to the International Bureau and one copy will
be submitted to the applicant.

  (f)  An  applicant  will  be  permitted  a  personal  or
telephone  interview  with  the  examiner,  which  must  be
conducted  during  the  non  -  extendable  time  limit  for
response by the applicant to a written opinion. Additional
interviews may be conducted where the examiner determines
that such additional interviews may be helpful to advancing
the  international  preliminary  examination  procedure.  A
summary of any such personal or telephone interview must be
filed by the applicant as a part of the response to the
written opinion or, if applicant files no response, be made
of record in the file by the examiner.

  [52 FR 20049, May 28, 1987; para. (b) amended, 58 FR
4335, Jan.14, 1993, effective May 1, 1993]

 § 1.485  Amendments by applicant during international
preliminary examination.

  (a) The applicant may make amendments at the time of
filing of the Demand and within the time limit set by the
International Preliminary Examining Authority for response
to any notification under § 1.484(b) or to any written
opinion. Any such amendments must:

  (1) Be made by submitting a replacement sheet for every
sheet of the application which differs from the sheet it
replaces unless an entire sheet is cancelled, and

  (2) Include a description of how the replacement sheet
differs from the replaced sheet.

  (b) If an amendment cancels an entire sheet of the
international  application,  that  amendment  shall  be
communicated in a letter.

  [Added 52 FR 20049, May 28, 1987; amended, 58 FR 4335,
Jan. 14, 1993, effective May 1, 1993]

 § 1.487  [Reserved]

  [Added 52 FR 20049, May 28, 1987, effective July 1,
1987; 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]

 § 1.488  Determination of unity of invention before the
International Preliminary Examining Authority.

  (a)  Before  establishing  any  written  opinion  or  the
international  preliminary  examination  report,  the
International Preliminary Examining Authority will determine
whether the international application complies with the
requirement of unity of invention as set forth in § 1.475.

  (b) If the International Preliminary Examining Authority
considers that the international application does not comply
with the requirement of unity of invention, it may:

  (1) Issue a written opinion and/or an international
preliminary examination report, in respect of the entire
international  application  and  indicate  that  unity  of
invention  is  lacking  and  specify  the  reasons  therefor
without  extending  an  invitation  to  restrict  or  pay
additional fees. No international preliminary examination
will be conducted on inventions not previously searched by
an International Searching Authority.

  (2) Invite the applicant to restrict the claims or pay
additional  fees,  pointing  out  the  categories  of  the
invention found, within a set time limit which will not be
extended. No international preliminary examination will be
conducted  on  inventions  not  previously  searched  by  an
International Searching Authority, or

  (3) If applicant fails to restrict the claims or pay
additional fees within the time limit set for response, the
International Preliminary Examining Authority will issue a
written  opinion  and/or  establish  an  international
preliminary examination report on the main invention and
shall indicate the relevant facts in the said report. In
case of any doubt as to which invention is the main
invention, the invention first mentioned in the claims and
previously searched by an International Searching Authority
shall be considered the main invention.

  (c) Lack of unity of invention may be directly evident
before considering the claims in relation to any prior art,
or after taking the prior art into consideration, as where a
document discovered during the search shows the invention
claimed in a generic or linking claim lacks novelty or is
clearly obvious, leaving two or more claims joined thereby
without a common inventive concept. In such a case the
International Preliminary Examining Authority may raise the
objection of lack of unity of invention.

  [52 FR 20049, May 28, 1987; para. (a) amended, 58 FR
4335, Jan. 14, 1993, effective May 1, 1993]

 § 1.489  Protest to lack of unity of invention before the 
International Preliminary Examining Authority.

  (a) If the applicant disagrees with the holding of lack
of unity of invention by the International Prelimi nary
Examining Authority, additional fees may be paid under
protest, accompanied by a request for refund and a statement
setting forth reasons for disagreement or why the required
additional fees are excessive, or both.

  (b) Protest under paragraph (a) of this section will be
examined by the Commissioner or the Commissioner's designee.

In the event that the applicant's protest is determined to
be justified, the additional fees or a portion thereof will
be refunded.

  (c) An applicant who desires that a copy of the protest
and  the  decision  thereon  accompany  the  international
preliminary examination report when forwarded to the Elected
Offices, may notify the International Preliminary Examining
Authority to that effect any time prior to the issuance of
the  international  preliminary  examination  report.
Thereafter, such notification should be directed to the
International Bureau.

  [Added 52 FR 20050, May 28, 1987, effective July 1,
1987]

  NATIONAL STAGE

 § 1.491  Entry into the national stage.

  An international application enters the national stage
when the applicant has filed the documents and fees required
by 35 U.S.C. 371(c) within the periods set in § 1.494 or
1.495.

  [Added 52 FR 20050, May 28, 1987]

 § 1.492  National stage fees.

  The following fees and charges are established for
international applications entering the national stage under
35 U.S.C. 371:

  (a) The basic national fee:

  (1) Where an international preliminary examination fee as
set forth in § 1.482 has been paid on the international
application  to  the  United  States  Patent  and  Trademark
Office:

  By a small entity ( § 1.9(f)) . . $350.00

  By other than a small entity . . $700.00

  (2) Where no international preliminary examination fee as
set forth in § 1.482 has been paid to the United States
Patent and Trademark Office, but an international search fee
as  set  forth  in  §  1.445(a)(2)  has  been  paid  on  the
international application to the United States Patent and
Trademark Office as an International Searching Authority:

  By a small entity ( § 1.9(f)) . . $385.00

  By other than a small entity . . $770.00

  (3) Where no international preliminary examination fee as
set forth in § 1.482 has been paid and no international
search fee as set forth in § 1.445(a)(2) has been paid on
the international application to the United States Patent
and Trademark Office:

  By a small entity ( § 1.9(f)) . . $520.00

  By other than a small entity . . $1,040.00

  (4) Where the international preliminary examination fee
as set forth in § 1.482 has been paid to the United States
Patent  and  Trademark  Office  and  the  international
preliminary examination report states that the criteria of
novelty, inventive step (non - obviousness), and industrial
applicability, as defined in PCT Article 33(1) to (4) have
been  satisfied  for  all  the  claims  presented  in  the
application entering the national stage (see § 1.496(b)):

  By a small entity ( § 1.9(f)) . . $48.00

  By other than a small entity . . $96.00

  (5)  Where  a  search  report  on  the  international
application has been prepared by the European Patent Office
or the Japanese Patent Office:

  By a small entity ( § 1.9(f)) . . $455.00

  By other than a small entity . . $910.00

  (b) In addition to the basic national fee, for filing or
later presentation of each independent claim in excess of
three:

  By a small entity ( § 1.9(f)) . . $40.00

  By other than a small entity . . $80.00

  (c) In addition to the basic national fee, for filing or
later presentation of each claim (whether independent or
dependent) in excess of 20 (Note that § 1.75(c) indicates
how  multiple  dependent  claims  are  considered  for  fee
calculation purposes.):

  By a small entity ( § 1.9(f)) . . $11.00

  By other than a small entity . . $22.00

  (d) In addition to the basic national fee, if the
application contains, or is amended to contain, a multiple
dependent claim(s), per application:

  By a small entity ( § 1.9(f)) . . $130.00

  By other than a small entity . . $260.00

  (If the additional fees required by paragraph (b), (c),
and (d) are not paid on presentation of the claims for which
the additional fees are due, they must be paid or the claims
cancelled by amendment, prior to the expiration of the time
period set for response by the Office in any notice of fee
deficiency.)

  (e)  Surcharge for filing the oath or declaration later
than 20 months from the priority date pursuant to § 1.494(c)
or later than 30 months from the priority date pursuant to §
1.495(c):

  By a small entity ( § 1.9(f)) . . $65.00

  By other than a small entity . . $130.00

  (f) For filing an English translation of an international
application later than 20 months after the priority date ( §

1.494(c))  or  filing  an  English  translation  of  the
international  application  or  of  any  annexes  to  the
international preliminary examination report later than 30
months after the priority date ( § 1.495(c) and (e)) . .
$130.00

  (35 U.S.C. 6, 376)

  [52 FR 20050, May 28, 1987, effective July 1, 1987;
paras. (a)(1) - (3), (b), (d) - (f), 54 FR 6893, Feb. 15,
1989, effective Apr. 17, 1989; para. (a)(5) added, 56 FR
65142, Dec. 13, 1991, effective Dec. 16, 1991; revised, 56
FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras.
(a)(1) - (a)(3), (a)(5) and (b) - (d), 57 FR 38190, Aug. 21,
1992, effective Oct. 1, 1992; para. (e) amended, 58 FR 4335,
Jan. 14, 1993, effective May 1, 1993; paras. (a), (b) and
(d), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994;
paras. (a), (b), & (d) amended, 60 FR 41018, Aug. 11, 1995,
effective, Oct. 1, 1995; paras. (a), (b), & (d) amended, 61
FR 39585, July 30, 1996, effective Oct. 1, 1996]

 § 1.494  Entering the national stage in the United
States of America as a Designated Office.

  (a) Where the United States of America has not been
elected by the expiration of 19 months from the priority
date  (see  §  1.495),  the  applicant  must  fulfill  the
requirements of PCT Article 22 and 35 U.S.C. 371 within

 the time periods set forth in paragraph (b) and (c) of this
section  in  order  to  prevent  the  abandonment  of  the
international  application  as  to  the  Unites  States  of
America.  International  applications  for  which  those
requirements are timely fulfilled will enter the national
stage and obtain an examination as to the patentability of
the invention in the United States of America.

  (b)  To  avoid  abandonment  of  the  application,  the
applicant shall furnish to the United States Patent and
Trademark Office not later than the expiration of 20 months
from the priority date:

  (1) A copy of the international application, unless it
has been previously communicated by the International Bureau
or unless it was originally filed in the United States
Patent and Trademark Office; and

  (2) The basic national fee (see § 1.492(a)). The 20 -
month time limit may not be extended.

  (c) If applicant complies with paragraph (b) of this
section before expiration of 20 months from the priority
date but omits:

  (1) A translation of the international application, as
filed, into the English language, if it was originally filed
in another language (35 U.S.C. 371(c)(2)) and/or

  (2) The oath or declaration of the inventor (35 U.S.C.
371(c)(4); see § 1.497), applicant will be so notified and
given a period of time within which to file the translation
and/or oath or declaration in order to prevent abandonment
of the application. The payment of the processing fee set
forth in § 1.492(f) is required for acceptance of an English
translation later than the expiration of 20 months after the

priority date. The payment of the surcharge set forth in §
1.492(e)  is  re  quired  for  acceptance  of  the  oath  or
declaration of the inventor later than the expiration of 20
months after the priority date. A copy of the notification
mailed to applicant should accompany any response thereto
submitted to the Office.

  (d) A copy of any amendments to the claims made under PCT
Article 19, and a translation of those amendments into
English, if they were made in another language, must be
furnished not later than the expiration of 20 months from
the priority date. Amendments under PCT Article 19 which are
not received by the expiration of 20 months from the
priority date will be considered to be cancelled. The 20 -
month time limit may not be extended.

  (e) Verification of the translation of the international
application  or  any  other  document  pertaining  to  an
international  application  may  be  required  where  it  is
considered necessary, if the international application or
other document was filed in a language other than English.

  (f) The documents and fees submitted under paragraph (b)
and (c) of this section must be clearly identified as a
submission to enter the national stage under 35 U.S.C. 371,
otherwise the submission will be considered as being made
under 35 U.S.C. 111.

  (g) An international application becomes abandoned as to
the United States 20 months from the priority date if the
requirements of paragraph (b) of this section have not been
complied with within 20 months from the priority date where
the United States has been designated but not elected by the
expiration of 19 months from the priority date. If the
requirements of paragraph (b) of this section are complied
with within 20 months from the priority date but any
required translation of the international application as
filed and/or the oath or declaration are not timely filed,
an international application will become abandoned as to the
United  States  upon  expiration  of  the  time  period  set
pursuant to paragraph (c) of this section.

  [Added 52 FR 20050, May 28, 1987; paras. (a) - (d) and
(g) amended and para. (h) deleted, 58 FR 4335, Jan. 14,
1993, effective May 1, 1993]

 § 1.495  Entering the national stage in the United
States of America as an Elected Office

  (a) Where the United States of America has been elected
by the expiration of 19 months from the priority date, the
applicant must fulfill the requirements of 35 U.S.C. 371
within the time periods set forth in paragraph (b) and (c)
of this section in order to prevent the abandonment of the
international  application  as  to  the  Unites  States  of
America.  International  applications  for  which  those
requirements are timely fulfilled will enter the national
stage and obtain an examination as to the patentability of
the invention in the Unites State of America.

  (b)  To  avoid  abandonment  of  the  application,  the
applicant shall furnish to the United States Patent and
Trademark Office not later than the expiration of 30 months
from the priority date:

  (1) A copy of the international application, unless it
has been previously communicated by the International Bureau
or unless it was originally filed in the United States
Patent and Trademark Office; and

  (2) The basic national fee (see § 1.492(a)). The 30 -
month time limit may not be extended.

  (c) If applicant complies with paragraph (b) of this
section before expiration of 30 months from the priority
date but omits:

  (1) A translation of the international application, as
filed, into the English language, if it was originally filed
in another language (35 U.S.C. 371(c)(2)) and/or

  (2) The oath or declaration of the inventor (35 U.S.C.
371(c)(4); see § 1.497), applicant will be so notified and
given a period of time within which to file the translation
and/or oath or declaration in order to prevent abandonment
of the application. The payment of the processing fee set
forth in § 1.492(f) is required for acceptance of an English
translation later than the expiration of 30 months after the
priority date. The payment of the surcharge set forth in §
1.492(e)  is  required  for  acceptance  of  the  oath  or
declaration of the inventor later than the expiration of 30
months after the priority date. A copy of the notification
mailed to applicant should accompany any response thereto
submitted to the Office.

  (d) A copy of any amendments to the claims made under PCT
Article 19, and a translation of those amendments into
English, if they were made in another language, must be
furnished not later than the expiration

 of 30 months from the priority date. Amendments under PCT
Article 19 which are not received by the expiration of 30
months from the priority date will be considered to be
cancelled. The 30 - month time limit may not be extended.

  (e) A translation into English of any annexes to the
international preliminary examination report, if the annexes
were made in another language, must be furnished not later
than the expiration of 30 months from the priority date.
Translations of the annexes which are not received by the
expiration of 30 months from the priority date may be
submitted within any period set pursuant to paragraph (c) of
this section accompanied by the processing fee set forth in
§ 1.492(f). Annexes for which translations are not timely
received will be considered cancelled. The 30 - month time
limit may not be extended.

  (f) Verification of the translation of the international
application  or  any  other  document  pertaining  to  an
international  application  may  be  required  where  it  is
considered necessary, if the international application or
other document was filed in a language other than English.

  (g) The documents submitted under paragraph (b) and (c)
of this section must be clearly identified as a submission
to enter the national stage under 35 U.S.C. 371, otherwise
the submission will be considered as being made under 35
U.S.C. 111.

  (h) An international application becomes abandoned as to

the United States 30 months from the priority date if the
requirements of paragraph (b) of this section have not been
complied with within 30 months from the priority date where
the United States has been elected by the expiration of 19
months from the priority date. If the requirements of
paragraph (b) of this section are complied with within 30
months from the priority date but any required translation
of the international application as filed and/or the oath or
declaration  are  not  timely  filed,  an  international
application will become abandoned as to the United States
upon expiration of the time period set pursuant to paragraph
(c) of this section.

  [Added 52 FR 20051, May 28, 1987, effective July 1,
1987; paras. (a) - (e) & (h) amended and para. (i) deleted,
58 FR 4335, Jan. 14, 1993, effective May 1, 1993]

 § 1.496  Examination of international applications in
the national stage.

  (a) International applications which have complied with
the requirements of 35 U.S.C. 371(c) will be taken up for
action based on the date on which such requirements were
met. However, unless an express request for early processing
has been filed under 35 U.S.C. 371(f), no action may be
taken prior to one month after entry into the national
stage.

  (b) A national stage application filed under 35 U.S.C.
371 may have paid therein the basic national fee as set
forth in § 1.492(a)(4) if it contains, or is amended to
contain, at the time of entry into the national stage, only
claims  which  have  been  indicated  in  an  international
preliminary examination report prepared by the United States
Patent and Trademark Office as satisfying the criteria of
PCT Article 33(1) - (4) as to novelty, inventive step and
industrial applicability. Such national stage applications
in  which  the  basic  national  fee  as  set  forth  in  §
1.492(a)(4) has been paid may be amended subsequent to the
date of entry into the national stage only to the extent
necessary to eliminate objections as to form or to cancel
rejected claims. Such national stage applications in which
the basic national fee as set forth in § 1.492(a)(4) has
been paid will be taken up out of order.

  [Added 52 FR 20051, May 28, 1987, effective July 1,
1987]

 § 1.497  Oath or declaration under 35 U.S.C. 371(c)(4).

  (a) When an applicant of an international application
desires to enter the national stage under 35 U.S.C. 371
pursuant to § § 1.494 or 1.495, he or she must file an oath
or declaration that:

  (1) Is executed in accordance with either § § 1.66 or
1.68;

  (2) Identifies the specification to which it is directed;

  (3)  Identifies  each  inventor  and  the  country  of
citizenship of each inventor; and

  (4) States that the person making the oath or declaration
believes the named inventor or inventors to be the original

and first inventor or inventors of the subject matter which
is claimed and for which a patent is sought.

  (b)(1) The oath or declaration must be made by all of the
actual inventors except as provided for in § § 1.42, 1.43 or
1.47.

  (2) If the person making the oath or declaration is not
the inventor, the oath or declaration shall state the
relationship of the person to the inventor, the facts
required by § § 1.42, 1.43 or 1.47, and, upon information
and belief, the facts which the inventor would have been
required to state.

  (c) If the oath or declaration meets the requirements of
paragraphs  (a)  and  (b)  of  this  section,  the  oath  or
declaration will be accepted as complying with 35 U.S.C.
371(c)(4) and § § 1.494(c) or 1.495(c). However, if the oath
or declaration does not also meet the requirements of §
1.63, a supplemental oath or declaration in compliance with
§ 1.63 will be required in accordance with § 1.67.

  [Added 52 FR 20052, May 28, 1987, effective July 1,
1987; paras. (a) and (b) revised and para. (c) added 61 FR
42790, Aug. 19, 1996, effective Sept. 23, 1996]

 § 1.499  Unity of invention during the national stage.

  If the examiner find that a national stage application
lacks unity of invention under § 1.475, the examiner may in
an Office action require the applicant in the response to
that action to elect the invention to which the claims shall
be restricted. Such requirement may be made before any
action on the merits but may be made at any time before the
final action at the discretion of the examiner. Review of
any such requirement is provided under § § 1.143 and 1.144.

  [Added 52 FR 20052, May 28, 1987, effective July 1,
1987; amended, 58 FR 4335, Jan. 14, 1993, effective May 1,
1993]

  CITATION OF PRIOR ART

 § 1.501  Citation of prior art in patent files.

  (a) At any time during the period of enforceability of a
patent, any person may cite to the Patent and Trademark
Office in writing prior art consisting of patents or printed
publications which that person states to be pertinent and
applicable to the patent and believes to have a bearing on
the patentability of any claim of a particular patent. If
the citation is made by the patent owner, the explanation of
pertinency and applicability may include an explanation of
how the claims differ from the prior art. Citations by the
patent owner under § 1.555 and by a reexamination requester
under either § § 1.510 or 1.535 will be entered in the
patent file during a reexamination proceeding. The entry in
the patent file of citations submitted after the date of an
order to reexamine pursuant to § 1.525 by persons other than
the patent owner, or a reexamination requester under either
§ § 1.510 or 1.535, will be delayed until the reexamination
proceedings have been terminated.

  (b) If the person making the citation wishes his or her

identity to be excluded from the patent file and kept
confidential, the citation papers must be submitted without
any identification of the person making the submission.

  (c) Citations of patent or printed publications by the
public in patent files should either: (1) Reflect that a
copy of the same has been mailed to the patent owner at the
address as provided for in § 1.33(c); or in the event
service is not possible (2) be filed with the Office in
duplicate.

  [46 FR 29185, May 29, 1981, effective July 1, 1981]

  REQUEST FOR REEXAMINATION

 § 1.510  Request for reexamination.

  (a) Any person may, at any time during the period of
enforceability of a patent, file a request for reexamination
by the Patent and Trademark Office of any claim of the
patent  on  the  basis  of  prior  art  patents  or  printed
publications cited under § 1.501. The request must be
accompanied by the fee for requesting reexamination set in §
1.20(c).

  (b)  Any  request  for  reexamination  must  include  the
following parts:

  (1)  A  statement  pointing  out  each  substantial  new
question of patentability based on prior patents and printed
publications.

  (2)  An  identification  of  every  claim  for  which
reexamination is requested, and a detailed explanation of
the pertinency and manner of applying the cited prior art to
every  claim  for  which  reexamination  is  requested.  If
appropriate the party requesting reexamination may also
point out how claims distinguish over cited prior art.

  (3) A copy of every patent or printed publication relied
upon or referred to in paragraph (b)(1) and (2) of this
section accompanied by an English language translation of
all the necessary and pertinent parts of any non - English
language patent or printed publication.

  (4)  The  entire  specification  (including  claims)  and
drawings of the patent for which reexamination is requested
must be furnished in the form of cut - up copies of the
original patent with only a single column of the printed
patent securely mounted or reproduced in permanent form on
one side of a separate paper. A copy of any disclaimer,
certificate  of  correction,  or  reexamination  certificate
issued in the patent must also be included.

  (5) A certification that a copy of the request filed by a
person other than the patent owner has been served in its
entirety on the patent owner at the address as provided for
in § 1.33(c). The name and address of the party served must
be indicated. If service was not possible, a duplicate copy
must be supplied to the Office.

  (c)  If  the  request  does  not  include  the  fee  for
requesting reexamination or all of the parts required by
paragraph (b) of this section, the person identified as
requesting reexamination will be so notified and given an

opportunity to complete the request within a specified time.
If the fee for requesting reexamination has been paid but
the defect in the request is not corrected within the
specified  time,  the  determination  whether  or  not  to
institute reexamination will be made on the request as it
then exists. If the fee for requesting reexamination has not
been paid, no determination will be made and the request
will be placed in the patent file as a citation if it
complies with the requirements of § 1.501(a).

  (d) The filing of the request is: (1) The date on which
the  request  including  the  entire  fee  for  requesting
reexamination  is  received  in  the  Patent  and  Trademark
Office; or (2) the date on which the last portion of the fee
for requesting reexamination is received.

  (e) A request filed by the patent owner may include a
proposed amendment in accordance with § 1.121(f).

  (f) If a request is filed by an attorney or agent
identifying another party on whose behalf the request is
being filed, the attorney or agent must have a power of
attorney from that party or be acting in a representative
capacity pursuant to § 1.34(a).

  [46 FR 29185, May 29, 1981, effective July 1, 1981;
para. (a), 47 FR 41282, Sept. 17, 1982, effective Oct. 1,
1982]

 § 1.515  Determination of the request for
reexamination.

  (a) Within three months following the filing date of a
request for reexamination, an examiner will consider the
request and determine whether or not a substantial new
question of patentability affecting any claim of the patent
is raised by the request and the prior art cited therein,
with or without consideration of other patents or printed
publications. The examiner's determination will be based on
the claims in effect at the time of the determination and
will become a part of the official file of the patent and
will be given or mailed to the patent owner at the address
as provided for in § 1.33(c) and to the person requesting
reexamination.

  (b) Where no substantial new question of patentability
has been found, a refund of a portion of the fee for
requesting reexamination will be made to the requester in
accordance with § 1.26(c).

  (c) The requester may seek review by a petition to the
Commissioner under § 1.181 within one month of the mailing
date of the examiner's determination refusing reexamination.
Any such petition must comply with § 1.181(b). If no
petition is timely filed or if the decision on petition
affirms that no substantial new question of patentability
has been raised, the determination shall be final and non -
appealable.

  [46 FR 29185, May 29, 1981, effective July 1, 1981]

 § 1.520  Reexamination at the initiative of the
Commissioner.

  The Commissioner, at any time during the period of

enforceability of a patent, may determine whether or not a
substantial new question of patentability is raised by
patents or printed publications which have been discovered
by the Commissioner or which have been brought to the
Commissioner's  attention  even  though  no  request  for
reexamination has been filed in accordance with § 1.510. The
Commissioner may initiate reexamination without a request
for reexamination pursuant to § 1.510. Normally requests
from outside the Patent and Trademark Office that the
Commissioner undertake reexamination on his own initiative
will  not  be  considered.  Any  determination  to  initiate
reexamination under this section will become a part of the
official file of the patent and will be given or mailed to
the patent owner at the address as provided for in §
1.33(c).

  [46 FR 29186, May 29, 1981, effective July 1, 1981]

  REEXAMINATION

 § 1.525  Order to reexamine.

  (a) If a substantial new question of patentability is
found pursuant to § 1.515 or § 1.520, the determination will
include  an  order  for  reexamination  of  the  patent  for
resolution of the question. If the order for reexamination
resulted  from  a  petition  pursuant  to  §  1.515(c),  the
reexamination will ordinarily be conducted by an examiner
other  than  the  examiner  responsible  for  the  initial
determination under § 1.515(a).

  (b) If the order for reexamination of the patent mailed
to the patent owner at the address as provided for in §
1.33(c) is returned to the Office undelivered, the notice
published in the Official Gazette under § 1.11(c) will be
considered to be constructive notice and reexamination will
proceed.

  [46 FR 29186, May 29, 1981, effective July 1, 1981]

 § 1.530  Statement and amendment by patent owner.

  (a) Except as provided in § 1.510(e), no statement or
other response by the patent owner shall be filed prior to
the determinations made in accordance with § 1.515 or 1.520.
If a premature statement or other response is filed by the
patent owner it will not be acknowledged or considered in
making the determination.

  (b) The order for reexamination will set a period of not
less than two months from the date of the order within which
the patent owner may file a statement on the new question of
patentability including any proposed amendments the patent
owner wishes to make.

  (c) Any statement filed by the patent owner shall clearly
point  out  why  the  subject  matter  as  claimed  is  not
anticipated or rendered obvious by the prior art patents or
printed publications, either alone or in any reasonable
combinations. Any statement filed must be served upon the
reexamination requester in accordance with § 1.248.

  (d) Any proposed amendment to the description and claims
must be made in accordance with § 1.121(f). No amendment may
enlarge the scope of the claims of the patent or introduce

new matter. No amended or new claims may be proposed for
entry in an expired patent. Moreover, no amended or new
claims will be incorporated into the patent by certificate
issued after the expiration of the patent.

  (e) Although the Office actions will treat proposed
amendments as though they have been entered, the proposed
amendments will not be effective until the reexamination
certificate is issued.

  [46 FR 29186, May 29, 1981, effective July 1, 1981]

 § 1.535  Reply by requester.

  A reply to the patent owner s statement under § 1.530
may be filed by the reexamination requester within two
months from the date of service of the patent owner's
statement. Any reply by the requester must be served upon
the patent owner in accordance with § 1.248. If the patent
owner does not file a statement under § 1.530, no reply or
other submission from the reexamination requester will be
considered.

  [46 FR 29186, May 29, 1981, effective July 1, 1981]

 § 1.540  Consideration of responses.

  The failure to timely file or serve the documents set
forth in § 1.530 or in 1.535 may result in their being
refused  consideration.  No  submissions  other  than  the
statement pursuant to § 1.530 and the reply by the requester
pursuant to § 1.535 will be considered prior to examination.

  [46 FR 29186, May 29, 1981, effective July 1, 1981]

 § 1.550  Conduct of reexamination proceedings.

  (a) All reexamination proceedings, including any appeals
to the Board of Patent Appeals and Interferences, will be
conducted with special dispatch within the Office. After
issuance of the reexamination order and expiration of the
time for submitting any responses thereto, the examination
will be conducted in accordance with § 1.104 through 1.119
and  will  result  in  the  issuance  of  a  reexamination
certificate under § 1.570.

  (b) The patent owner will be given at least 30 days to
respond to any Office action. Such response may include
further statements in response to any rejections and/or pro
posed amendments or new claims to place the patent in a
condition where all claims, if amended as proposed, would be
patentable.

  (c) The time for taking any action by a patent owner in a
reexamination  proceeding  will  be  extended  only  for
sufficient cause, and for a reasonable time specified. Any
request for such extension must be filed on or before the
day on which action by the patent owner is due, but in no
case will the mere filing of a request effect any extension.
See § 1.304(a) for exten sions of time for filing a notice
of appeal to the U.S.C. ourt of Appeals for the Federal
Circuit or for commencing a civil action.

  (d) If the patent owner fails to file a timely and
appropriate response to any Office action, the reexamination

proceeding will be terminated and the Commissioner will
proceed to issue a certificate under § 1.570 in accordance
with the last action of the Office.

  (e) The reexamination requester will be sent copies of
Office actions issued during the reexamination proceeding.
Any document filed by the patent owner must be served on the
requester in the manner provided in § 1.248. The document
must  reflect  service  or  the  document  may  be  refused
consideration by the Office. The active participation of the
reexamination requester ends with the reply pursuant to §
1.535,  and  no  further  submissions  on  behalf  of  the
reexamination requester will be acknowledged or considered.
Further, no submissions on behalf of any third parties will
be acknowledged or considered unless such submissions are
(1) in accordance with § 1.510 or (2) entered in the patent
file prior to the date of the order to reexamine pursuant to
§ 1.525. Submissions by third parties, filed after the date
of the order to reexamine pursuant to § 1.525, must meet the
requirements of and will be treated in accordance with §
1.501(a).

  [46 FR 29186, May 29, 1981, effective July 1, 1981;
para. (c), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984;
para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11,
1985; para. (c), 54 FR 29553, July 13, 1989, effective Aug.
20, 1989]

 § 1.552  Scope of reexamination in reexamination
proceedings

  (a) Patent claims will be reexamined on the basis of
patents or printed publications.

  (b)  Amended  or  new  claims  presented  during  a
reexamination proceeding must not enlarge the scope of the
claims of the patent and will be examined on the basis of
patents or printed publications and also for com pliance
with the requirements of 35 U.S.C. 112 and the new matter
prohibition of 35 U.S.C. 132.

  (c) Questions other than those indicated in paragraph (a)
and  (b)  of  this  section  will  not  be  resolved  in  a
reexamination proceeding. If such questions are discovered
during a reexamination proceeding, the existence of such
questions will be noted by the examiner in an Office action,
in which case the patent owner may desire to consider the
advisability of filing a reissue application to have such
questions considered and resolved.

  [46 FR 29186, May 29, 1981, effective July 1, 1981]

 § 1.555  Information material to patentability in
reexamination proceedings.

  (a) A patent by its very nature is affected with a public
interest. The public interest is best served, and the most
effective  reexamination  occurs  when,  at  the  time  a
reexamination proceeding is being conducted, the Office is
aware of and evaluates the teachings of all information
material to patentability in a reexamination proceeding.
Each individual associated with the patent owner in a
reexamination proceeding has a duty of candor and good faith
in dealing with the Office, which includes a duty to
disclose  to  the  Office  all  information  known  to  that

individual  to  be  material  to  patentability  in  a
reexamination proceeding. The individuals who have a duty to
disclose to the Office all information known to them to be
material to patentability in a reexamination proceeding are
the patent owner, each attorney or agent who represents the
patent  owner,  and  every  other  individual  who  is
substantively involved on behalf of the patent owner in a
reexamination  proceeding.  The  duty  to  disclose  the
information exists with respect to each claim pending in the
reex amination proceeding until the claim is cancelled.
Information material to the patentability of a cancelled
claim need not be submitted if the information is not
material to patentability of any claim remaining under
consideration in the reexamination proceeding. The duty to
disclose  all  information  known  to  be  material  to
patentability in a reexamination proceeding is deemed to be
satisfied  if  all  information  known  to  be  material  to
patentability of any claim in the patent after issuance of
the reexamination certificate was cited by the Office or
submitted  to  the  Office  in  an  information  disclosure
statement. However, the duties of candor, good faith, and
disclosure have not been complied with if any fraud on the
Office was practiced or attempted or the duty of disclosure
was violated through bad faith or intentional misconduct by,
or on behalf of, the patent owner in the reexamination
proceeding. Any information disclosure statement must be
filed with the items listed in § 1.98(a) as applied to
individuals  associated  with  the  patent  owner  in  a
reexamination proceeding, and should be filed within two
months of the date of the order for reexamination, or as
soon thereafter as possible.

  (b)  Under  this  section,  information  is  material  to
patentability in a reexamination proceeding when it is not
cumulative to information of record or being made of record
in the reexamination proceeding, and

  (1)  It  is  a  patent  or  printed  publication  that
establishes, by itself or in combination with other patents
or  printed  publications,  a  prima  facie  case  of
unpatentability of a claim; or

  (2) It refutes, or is inconsistent with, a position the
patent owner takes in:

  (i) Opposing an argument of unpatentability relied on by
the Office, or

  (ii) Asserting an argument of patentability.

  A prima facie case of unpatentability of a claim pending
in  a  reexamination  proceeding  is  established  when  the
information  compels  a  conclusion  that  a  claim  is
unpatentable under the preponderance of evidence, burden -
of - proof standard, giving each term in the claim its
broadest  reasonable  construction  consistent  with  the
specification, and before any consideration is given to
evidence which may be submitted in an attempt to establish a
contrary conclusion of patentability.

  (c) The responsibility for compliance with this section
rests upon the individuals designated in paragraph (a) of
this section and no evaluation will be made by the Office in
the reexamination proceeding as to compliance with this
section. If questions of compliance with this section are

discovered during a reexamination proceeding, they will be
noted as unresolved questions in accordance with § 1.552(c).

  [46 FR 29187, May 29, 1981, effective July 1, 1981; 47
FR 21752, May 19, 1982, effective July 1, 1982; paras. (a)
and (b), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984;
revised 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992]

 § 1.560  Interviews in reexamination proceedings.

  (a)  Interviews  in  reexamination  proceedings  pending
before the Office between examiners and the owners of such
patents or their attorneys or agents of record must be had
in the Office at such times, within Office hours, as the
respective examiners may designate Interviews will not be
permitted at any other time or place without the authority
of the Commissioner. Interviews for the discussion of the
patentability of claims in patents involved in reexamination
proceedings will not be had prior to the first official
action  thereon.  Interviews  should  be  arranged  for  in
advance. Requests that reexamination requesters participate
in interviews with examiners will not be granted.

  (b) In every instance of an interview with an examiner, a
complete written statement of the reasons presented at the
interview as warranting favorable action must be filed by
the patent owner. An interview does not remove the necessity
for response to Office actions as specified in § 1.111.

  [46 FR 29187, May 29, 1981, effective July 1, 1981]

 § 1.565  Concurrent office proceedings.

  (a) In any reexamination proceeding before the Office,
the patent owner shall call the attention of the Office to
any prior or concurrent proceedings in which the patent is
or  was  involved  such  as  interferences,  reissue,
reexaminations,  or  litigation  and  the  results  of  such
proceedings.

  (b) If a patent in the process of reexamination is or
becomes involved in litigation or a reissue application for
the patent is filed or pending, the Commissioner shall
determine whether or not to stay the reexamination or
reissue proceeding.

  (c)  If  reexamination  is  ordered  while  a  prior
reexamination  proceeding  is  pending,  the  reexamination
proceedings will be consolidated and result in the issuance
of a single certificate under § 1.570.

  (d)  If  a  reissue  application  and  a  reexamination
proceeding on which an order pursuant to § 1.525 has been
mailed are pending concurrently on a patent, a decision will
normally be made to merge the two proceedings or to stay one
of  the  two  proceedings.  Where  merger  of  a  reissue
application and a reexamination proceeding is ordered, the
merged examination will be conducted in accordance with §
1.171 through § 1.179 and the patent owner will be required
to place and maintain the same claims in the reissue
application and the reexamination proceeding during the
pendency of the merged proceeding. The examiner's actions
and any responses by the patent owner in a merged proceeding
will  apply  to  both  the  reissue  application  and  the
reexamination proceeding and be physically entered into both

files. Any reexamination proceeding merged with a reissue
application shall be terminated by the grant of the reissued
patent.

  (e) If a patent in the process of reexamination is or
becomes involved in an interference, the Commissioner may
stay reexamination or the interference. The Commissioner
will not consider a request to stay an interference unless a
motion  (  §  1.635)  to  stay  the  interference  has  been
presented to, and denied by, an examiner - in - chief and
the request is filed within ten (10) days of a decision by
an examiner - in - chief denying the motion for a stay or
such other time as the examiner - in - chief may set.

  [46 FR 29187, May 29, 1981, effective July 1, 1981;
paras. (b) and (d),, 47 FR 21753, May 19, 1982, effective
July 1, 1982; paras. (b) & (e), 49 FR 48416, Dec. 12, 1984,
50 FR 23123, May 31, 1985, effective Feb. 11, 1985]

  CERTIFICATE

 § 1.570  Issuance of reexamination certificate after 
reexamination proceedings.

  (a) Upon the conclusion of reexamination proceedings, the
Commissioner will issue a certificate in accordance with 35
U.S.C. 307 setting forth the results of the reexamination
proceeding and the content of the patent following the
reexamination proceeding.

  (b) A certificate will be issued in each patent in which
a reexamination proceeding has been ordered under § 1.525.
Any statutory disclaimer filed by the patent owner will be
made part of the certificate.

  (c) The certificate will be mailed on the day of its date
to the patent owner at the address as provided for in §
1.33(c). A copy of the certificate will also be mailed to
the requester of the reexamination proceeding.

  (d) If a certificate has been issued which cancels all of
the claims of the patent, no further Office proceedings will
be conducted with regard to that patent or any reissue
applications or reexamination requests relating thereto.

  (e) If the reexamination proceeding is terminated by the
grant of a reissued patent as provided in § 1.565(d) the
reissued  patent  will  constitute  the  reexamination
certificate required by this section and 35 U.S.C. 307.

  (f) A notice of the issuance of each certificate under
this section will be published in the Official Gazette on
its date of issuance.

  [46 FR 29187, May 29, 1981, effective July 1, 1981;
para. (e), 47 FR 21753, May 19, 1982, effective date July 1,
1982]

 § 1.601  Scope of rules, definitions.

  This  subpart  governs  the  procedure  in  patent
interferences in the Patent and Trademark Office. This
subpart shall be construed to secure the just, speedy, and
inexpensive determination of every interference. For the

meaning of terms in the Federal Rules of Evidence as applied
to interferences, see § 1.671(c). Unless otherwise clear
from the context, the following definitions apply to this
subpart:

  (a) Additional discovery is discovery to which a party
may be entitled under § 1.687 in addition to discovery to
which the party is entitled as a matter of right under §
1.673(a) and (b).

  (b) Affidavit means affidavit, declaration under § 1.68,
or  statutory  declaration  under  28  U.S.C.  §  1746.  A
transcript of an ex parte deposition may be used as an
affidavit.

  (c)  Board  means  the  Board  of  Patent  Appeals  and
Interferences.

  (d) Case - in - chief means that portion of a party's
case where the party has the burden of going forward with
evidence.

  (e) Case - in - rebuttal means that portion of a party's
case where the party presents evidence in rebuttal to the
case - in - chief of another party.

  (f)  A  count  defines  the  interfering  subject  matter
between two or more applications or between one or more
applications and one or more patents. At the time the
interference is initially declared, a count should be broad
enough to encompass all of the claims that are patentable
over the prior art and designated to correspond to the
count. When there is more than one count, each count shall
define a separate patentable invention. Any claim of an
application or patent that is designated to correspond to a
count is a claim involved in the interference within the
meaning of 35 U.S.C. 135(a). A claim of a patent or
application that is designated to correspond to a count and
is identical to the count is said to correspond exactly to
the count. A claim of a patent or application that is
designated to correspond to a count but is not identical to
the count is said to correspond substantially to the count.
When a count is broader in scope than all claims which
correspond to the count, the count is a phantom count.

  (g) The effective filing date of an application is the
filing date of an earlier application, benefit of which is
accorded to the application under 35 U.S.C. 119, 120, 121,
or 365 or, if no benefit is accorded, the filing date of the
application. The effective filing date of a patent is the
filing date of an earlier application, benefit of which is
accorded to the patent under 35 U.S.C. 119, 120, 121, or 365
or, if no benefit is accorded, the filing date of the
application which issued as the patent.

  (h) In the case of an application, filing date means the
filing date assigned to the application. In the case of a
patent, "filing date" means the filing date assigned to the
application which issued as the patent.

  (i) An interference is a proceeding instituted in the
Patent and Trademark Office before the Board to determine
any question of patentability and priority of invention
between two or more parties claiming the same patentable
invention. An interference may be declared between two or

more pending applications naming different inventors when,
in the opinion of an examiner, the applications contain
claims for the same patentable invention. An interference
may be declared between one or more pending applications and
one or more unexpired patents naming different inventors
when, in the opinion of an examiner, any application and any
unexpired patent contain claims for the same patentable
invention.

  (j) An interference - in - fact exists when at least one
claim of a party that is designated to correspond to a count
and at least one claim of an opponent that is designated to
correspond  to  the  count  define  the  same  patentable
invention.

  (k) A lead attorney or agent is a registered attorney or
agent of record who is primarily responsible for prosecuting
an interference on behalf of a party and is the attorney or
agent whom an administrative patent judge may contact to set
times and take other action in the interference.

  (1) A party is an applicant or patentee involved in the
interference or a legal representative or an assignee of
record in the Patent and Trademark Office of an applicant or
patentee involved in an interference. Where acts of a party
are normally performed by an attorney or agent, "party" may
be construed to mean the

 attorney or agent. An inventor is the individual named as
inventor in an application involved in an interference or

 the individual named as inventor in a patent involved in an
interference.

  (m) A senior party is the party with the earliest
effective filing date as to all counts or, if there is no
party with the earliest effective filing date as to all
counts, the party with the earliest filing date. A junior
party is any other party.

  (n) Invention "A" is the same patentable invention as an
invention "B" when invention "A" is the same as (35 U.S.C.
102) or is obvious (35 U.S.C. 103) in view of invention "B"
assuming  invention  "B"  is  prior  art  with  respect  to
invention  "A".  Invention  "A"  is  a  separate  patentable
invention with respect to invention "B" when invention "A"
is new (35 U.S.C. 102) and non - obvious (35 U.S.C. 103) in
view of invention "B" assuming invention "B" is prior art
with respect to invention "A".

  (o) Sworn means sworn or affirmed.

  (p) United States means the United States of America, its
territories and possessions.

  (q) A final decision is a decision awarding judgment as
to all counts. An interlocutory order is any other action
taken by an administrative patent judge or the Board in an
interference,  including  the  notice  declaring  an
interference.

  (r) NAFTA country means NAFTA country as defined in
section 2(4) of the North American Free Trade Agreement
Implementation Act, Pub. L. 103 - 182, 107 Stat. 2060 (19
U.S.C. 3301).

  (s) WTO member country means WTO member country as
defined in section 2(10) of the Uruguay Round Agreements
Act, Pub. L. 103 - 465, 108 Stat. 4813 (19 U.S.C. 3501).

  [49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50
FR 23123, May 31, 1985; para. (q) added, 58 FR 49432, Sept.
23, 1993, effective Oct. 25, 1993; paras. (f), (g), (j) -
(n), and (q) revised, paras. (r) and (s) added, 60 FR 14488,
Mar 17, 1995, effective Apr. 21, 1995]

 § 1.602  Interest in applications and patents involved
in an interference.

  (a) Unless good cause is shown, an interference shall not
be declared or continued between (1) applications owned by a
single party or (2) applications and an unexpired patent
owned by a single party.

  (b) The parties, within 20 days after an interference is
declared, shall notify the Board of any and all right,
title, and interest in any application or patent involved or
relied upon in the interference unless the right, title, and
interest  is  set  forth  in  the  notice  declaring  the
interference.

  (c) If a change of any right, title, and interest in any
application  or  patent  involved  or  relied  upon  in  the
interference occurs after notice is given declaring the
interference  and  before  the  time  expires  for  seeking
judicial review of a final decision of the Board, the
parties shall notify the Board of the change within 20 days
after the change.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985;  para.  (c)  revised,  60  FR  14488,  Mar  17,  1995,
effective Apr. 21, 1995]

 § 1.603  Interference between applications; subject
matter of the interference.

  Before an interference is declared between two or more
applications, the examiner must be of the opinion that there
is interfering subject matter claimed in the applications
which is patentable to each applicant subject to a judgment
in the interference. The interfering subject matter shall be
defined  by  one  or  more  counts.  Each  application  must
contain, or be amended to contain, at least one claim that
is patentable over the prior art and corresponds to each
count. All claims in the applications which define the same
patentable invention as a count shall be designated to
correspond to the count.

  [Added, 49 FR 48416, Dec. 12, 1984, effective Feb. 11,
1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr.
21, 1995]

 § 1.604  Request for interference between applications
by an applicant.

  (a)  An  applicant  may  seek  to  have  an  interference
declared with an application of another by,

  (1) Suggesting a proposed count and presenting at least
one claim corresponding to the proposed count or identifying

at least one claim in its application that corresponds to
the proposed count,

  (2) Identifying the other application and, if known, a
claim in the other application which corresponds to the
proposed count, and

  (3) Explaining why an interference should be declared.

  (b) When an applicant presents a claim known to the
applicant to define the same patentable invention claimed in
a  pending  application  of  another,  the  applicant  shall
identify that pending application, unless the claim is
presented in response to a suggestion by the examiner. The
examiner shall notify the Commissioner of any instance where
it appears an applicant may have failed to comply with the
provisions of this paragraph.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; para. (a)(1) revised, 60 FR 14488, Mar 17, 1995;
effective Apr. 21, 1995]

 § 1.605  Suggestion of claim to applicant by examiner.

  (a) If no claim in an application is drawn to the same
patentable  invention  claimed  in  another  application  or
patent, the examiner may suggest that an applicant present a
claim drawn to an invention claimed in another application
or patent for the purpose of an interference with another
application or a patent. The applicant to whom the claim is
suggested shall amend the applica tion by presenting the
suggested claim within a time specified by the examiner, not
less than one month. Failure or refusal of an applicant to
timely present the suggested claim shall be taken without
further action as a disclaimer by the applicant of the
invention defined by the suggested claim. At the time the
suggested claim is presented, the applicant may also call
the examiner's attention to other claims already in the
application  or  presented  with  the  suggested  claim  and
explain why the other claims would be more appropriate to be
designated to correspond to a count in any interference
which may be declared.

  (b) The suggestion of a claim by the examiner for the
purpose of an interference will not stay the period for
response to any outstanding Office action. When a suggested
claim is timely presented, ex parte proceedings in the
application  will  be  stayed  pending  a  determination  of
whether an interference will be declared.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985;  para.  (a)  revised,  60  FR  14488,  Mar  17,  1995;
effective Apr. 21, 1995]

 § 1.606  Interference between an application and a
patent; subject matter of the interference.

  Before  an  interference  is  declared  between  an
application  and  an  unexpired  patent,  an  examiner  must
determine that there is interfering subject matter claimed
in the application and the patent which is patentable to the
applicant subject to a judgment in the interference. The
interfering subject matter will be defined by one or more
counts. The application must contain, or be amended to
contain, at least one claim that is patentable over the

prior art and corresponds to each count. The claim in the
application need not be, and most often will not be,
identical to a claim in the patent. All claims in the
application and patent which define the same patentable
invention as a count shall be designated to correspond to
the count. At the time an interference is initially declared
( § 1.611), a count shall not be narrower in scope than any
application claim that is patentable over the prior art and
designated to correspond to the count or any patent claim
designated to correspond to the count. Any single patent
claim  designated  to  correspond  to  the  count  will  be
presumed, subject to a motion under § 1.633(c), not to
contain separate patentable inventions.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21,
1995]

 § 1.607  Request by applicant for interference with
patent.

  (a)  An  applicant  may  seek  to  have  an  interference
declared between an application and an unexpired patent by,

  (1) Identifying the patent,

  (2) Presenting a proposed count,

  (3)  Identifying  at  least  one  claim  in  the  patent
corresponding to the proposed count,

  (4) Presenting at least one claim corresponding to the
proposed count or identifying at least one claim already
pending in its application that corresponds to the proposed
count, and, if any claim of the patent or application
identified as corresponding to the proposed count does not
correspond exactly to the proposed count, explaining why
each such claim corresponds to the proposed count, and

  (5) Applying the terms of any application claim

  (i) Identified as corresponding to the count and

  (ii) Not previously in the application to the disclosure
of the application.

  (6) Explaining how the requirements of 35 U.S.C. 135(b)
are  met,  if  the  claim  presented  or  identified  under
paragraph (a)(4) of this section was not present in the
application until more than one year after the issue date of
the patent.

  (b) When an applicant seeks an interference with a
patent, examination of the application, including any appeal
to the Board, shall be conducted with special dispatch
within the Patent and Trademark Office. The examiner shall
determine  whether  there  is  interfering  subject  matter
claimed  in  the  application  and  the  patent  which  is
patentable to the applicant subject to a judgment in an
interference. If the examiner determines

  that  there  is  any  interfering  subject  matter,  an
interference will be declared. If the examiner determines
that there is no interfering subject matter, the examiner
shall state the reasons why an interference is not being

declared and otherwise act on the application.

  (c) When an applicant presents a claim which corresponds
exactly or substantially to a claim of a patent, the
applicant shall identify the patent and the number of the
patent claim, unless the claim is presented in response to a
suggestion by the examiner. The examiner shall notify the
Commissioner of any instance where an applicant fails to
identify the patent.

  (d) A notice that an applicant is seeking to provoke an
interference with a patent will be placed in the file of the
patent and a copy of the notice will be sent to the
patentee.  The  identity  of  the  applicant  will  not  be
disclosed unless an interference is declared. If a final
decision is made not to declare an interference, a notice to
that effect will be placed in the patent file and will be
sent to the patentee.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985,  para.  (a)  amended  53  FR  23735,  June  23,  1988,
effective Sept. 12, 1988; para. (a)(5)(i) revised, 58 FR
54504, Oct. 22, 1993, effect ive Jan. 3, 1994; para. (a)(4)
revised, para. (a)(6) added, 60 FR 14488, Mar 17, 1995;
effective Apr. 21, 1995]

 § 1.608  Interference between an application and a
patent; prima facie showing by applicant.

  (a) When the effective filing date of an application is
three months or less after the effective filing date of a
patent, before an interference will be declared, either the
applicant or the applicant's attorney or agent of record
shall file a statement alleging that there is a basis upon
which the applicant is entitled to a judgment relative to
the patentee.

  (b) When the effective filing date of an application is
more than three months after the effective filing date of a
patent,  the  applicant,  before  an  interference  will  be
declared, shall file evidence which may consist of patents
or printed publications, other documents, and one or more
affidavits which demonstrate that applicant is prima facie
entitled to a judgment relative to the patentee and an
explanation stating with particularity the basis upon which
the applicant is prima facie entitled to the judgment. Where
the basis upon which an applicant is entitled to judgment
relative  to  a  patentee  is  priority  of  invention,  the
evidence shall include affidavits by the applicant, if
possible, and one or more corroborating witnesses, supported
by documentary evidence, if available, each setting out a
factual description of acts and circumstances performed or
observed by the affiant, which collectively would prima
facie entitle the applicant to judgment on priority with
respect to the effective filing date of the patent. To
facilitate preparation of a record § 1.653(g)) for final
hearing, an applicant should file affidavits on paper which
is 21.8 by 27.9 cm. (8 « x 11 inches). The significance of
any printed publication or other document which is self -
authenticating within the meaning of Rule 902 of the Federal
Rules of Evidence or § 1.671(d) and any patent shall be
discussed in an affidavit or the explanation. Any printed
publication  or  other  document  which  is  not  self  -
authenticating shall be authenticated and discussed with
particularity in an affidavit. Upon a showing of good cause,

an affidavit may be based on information and belief. If an
examiner  finds  an  application  to  be  in  condition  for
declaration of an interference, the examiner will consider
the  evidence  and  explanation  only  to  the  extent  of
determining whether a basis upon which the application would
be entitled to a judgment relative to the patentee is
alleged and, if a basis is alleged, an interference may be
declared.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21,
1995]

 § 1.609  Preparation of interference papers by
examiner.

  When the examiner determines that an interference should
be declared, the examiner shall forward to the Board:

  (a) All relevant application and patent files and

  (b) A statement identifying:

  (1) The proposed count or counts and, if there is more
than one count proposed, explaining why the counts define
different patentable inventions;

  (2)  The  claims  of  any  application  or  patent  which
correspond  to  each  count,  explaining  why  each  claim
designated as corresponding to a count is directed to the
same patentable invention as the count;

  (3) The claims in any application or patent which do not
correspond to each count and explaining why each claim
designated as not corresponding to any count is not directed
to the same patentable invention as any count; and

  (4) Whether an applicant or patentee is entitled to the
benefit of the filing date of an earlier application and, if
so,  sufficient  information  to  identify  the  earlier
application.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; paras. (b)(1) - (b)(3) revised, 60 FR 14488, Mar 17,
1995; effective Apr. 21, 1995]

 § 1.610  Assignment of interference to administrative
patent judge, time period for completing interference.

  (a)  Each  interference  will  be  declared  by  an
administrative patent judge who may enter all interlocutory
orders in the interference, except that only the Board shall
hear oral argument at final hearing, enter a decision under
§ 1.617, 1.640(e), 1.652, 1.656(i) or 1.658, or enter any
other order which terminates the interference.

  (b) As necessary, another administrative patent judge may
act in place of the one who declared the interference. At
the discretion of the administrative patent judge assigned
to the interference, a panel consisting of two or more
members of the Board may enter interlocutory orders.

  (c) Unless otherwise provided in this subpart, times for
taking action by a party in the interference will be set on
a case - by - case basis by the administrative patent judge

assigned to the interference. Times for taking action shall
be set and the administrative patent judge shall exercise
control over the interference such that the pendency of the
interference before the Board does not normally exceed two
years.

  (d) An administrative patent judge may hold a conference
with the parties to consider simplification of any issues,
the necessity or desirability of amendments to counts, the
possibility of obtaining admissions of fact and genuineness
of  documents  which  will  avoid  unnecessary  proof,  any
limitations on the number of expert witnesses, the time and
place for conducting a deposition ( § 1.673(g)), and any
other  matter  as  may  aid  in  the  disposition  of  the
interference. After a conference, the administrative patent
judge may enter any order which may be appropriate.

  (e) The administrative patent judge may determine a
proper  course  of  conduct  in  an  interference  for  any
situation not specifically covered by this part.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21,
1995]

 § 1.611  Declaration of interference.

  (a) Notice of declaration of an interference will be sent
to each party.

  (b) When a notice of declaration is returned to the
Patent and Trademark Office undelivered, or in any other
circumstance where appropriate, an administrative patent
judge may send a copy of the notice to a patentee named in a
patent  involved  in  an  interference  or  the  patentee's
assignee of record in the Patent and Trademark Office or
order publication of an appropriate notice in the Official
Gazette.

  (c) The notice of declaration shall specify:

  (1) The name and residence of each party involved in the
interference;

  (2) The name and address of record of any attorney or
agent of record in any application or patent involved in the
interference;

  (3) The name of any assignee of record in the Patent and
Trademark Office;

  (4) The identity of any application or patent involved in
the interference;

  (5) Where a party is accorded the benefit of the filing
date of an earlier application, the identity of the earlier
application;

  (6) The count or counts and, if there is more than one
count, the examiner's explanation why the counts define
different patentable inventions;

  (7) The claim or claims of any application or any patent
which correspond to each count;

  (8) The examiner's explanation as to why each claim
designated as corresponding to a count is directed to the
same patentable invention as the count and why each claim
designated as not corresponding to any count is not directed
to the same patentable invention as any count; and

  (9) The order of the parties.

  (d) The notice of declaration may also specify the time
for:

  (1) Filing a preliminary statement as provided in §
1.621(a);

  (2) Serving notice that a preliminary statement has been
filed as provided in § 1.621(b); and

  (3) Filing preliminary motions authorized by § 1.633.

  (e) Notice may be given in the Official Gazette that an
interference has been declared involving a patent.

  [49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50
FR 23123, May 31, 1985, paras. (b), (c)(6), (c)(7), (c)(8),
(c)(9) & (d) revised, 60 FR 14488, Mar 17, 1995; effective
Apr. 21, 1995]

 § 1.612  Access to applications.

  (a) After an interference is declared, each party shall
have access to and may obtain copies of the files of any
application  set  out  in  the  notice  declaring  the
interference, except for affidavits filed under § 1.131 and
any evidence and explanation under § 1.608 filed separate
from an amendment. A party seeking access to any abandoned
or  pending  application  referred  to  in  the  opponent's
involved application or access to any pending application
referred to in the opponent's patent must file a motion
under § 1.635. See § 1.11(e) concerning public access to
interference files.

  (b) After preliminary motions under § 1.633 are decided (
§ 1.640(b)), each party shall have access to and may obtain
copies of any affidavit filed under § 1.131 and

 any evidence and explanation filed under § 1.608 in any
application  set  out  in  the  notice  declaring  the
interference.

  (c) Any evidence and explanation filed under § 1.608 in
the  file  of  any  application  identified  in  the  notice
declaring the interference shall be served when required by
§ 1.617(b).

  (d) The parties at any time may agree to exchange copies
of papers in the files of any application identified in the
notice declaring the interference.

  [49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50
FR 23124, May 31, 1985; para. (a) amended 53 FR 23735, June
23, 1988, effective Sept. 12, 1988; para. (a) revised, 60 FR
14488, Mar 17, 1995, effective Apr. 21, 1995]

 § 1.613  Lead attorney, same attorney representing
different parties in an interference, withdrawal of attorney

or agent.

  (a) Each party may be required to designate one attorney
or agent of record as the lead attorney or agent.

  (b) The same attorney or agent or members of the same
firm of attorneys or agents may not represent two or more
parties in an interference except as may be permitted in
this Chapter.

  (c) An administrative patent judge may make necessary
inquiry to determine whether an attorney or agent should be
disqualified from representing a party in

 an interference. If an administrative patent judge is of
the  opinion  that  an  attorney  or  agent  should  be
disqualified, the administrative patent judge shall refer
the matter to the Commissioner. The Commissioner will make a
final decision as to whether any attorney or agent should be
disqualified.

  (d) No attorney or agent of record in an interference may
withdraw as attorney or agent of record except with the
approval  of  an  administrative  patent  judge  and  after
reasonable notice to the party on whose behalf the attorney
or agent has appeared. A request to withdraw as attorney or
agent of record in an interference shall be made by motion (
§ 1.635).

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; para. (c) & (d) revised, 60 FR 14488, Mar 17, 1995,
effective Apr. 21, 1995]

 § 1.614  Jurisdiction over interference.

  (a) The Board acquires jurisdiction over an interference
when the interference is declared under § 1.611.

  (b) When the interference is declared the inter ference
is a contested case within the meaning of 35 U.S.C. 24.

  (c) The examiner shall have jurisdiction over any pending
application  until  the  interference  is  declared.  An
administrative  patent  judge  may  for  a  limited  purpose
restore jurisdiction to the examiner over any application
involved in the interference.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; para. (a) & (c) revised, 60 FR 14488, Mar 17, 1995;
effective Apr. 21, 1995]

 § 1.615  Suspension of ex parte prosecution.

  (a)  When  an  interference  is  declared,  ex  parte
prosecution of an application involved in the interference
is suspended. Amendments and other papers related to the
application received during pendency of the interference
will not be entered or considered in the interference
without the consent of an administrative patent judge.

  (b) Ex parte prosecution as to specified matters may be
continued  concurrently  with  the  interference  with  the
consent of the administrative patent judge.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,

1985; 50 FR 23124, May 31, 1985; revised, 60 FR 14488, Mar
17, 1995; effective Apr. 21, 1995]

 § 1.616  Sanctions for failure to comply with rules or
order or for taking and maintaining a frivolous position.

  (a) An administrative patent judge or the Board may
impose an appropriate sanction against a party who fails to
comply with the regulations of this part or any order
entered by an administrative patent judge or the Board. An
appropriate sanction may include among others entry of an
order:

  (1) Holding certain facts to have been established in the
interference;

  (2) Precluding a party from filing a paper;

  (3) Precluding a party from presenting or contesting a
particular issue;

  (4) Precluding a party from requesting, obtaining, or
opposing discovery;

  (5) Awarding compensatory expenses and/or compensatory
attorney fees; or

  (6) Granting judgment in the interference.

  (b) An administrative patent judge or the Board may
impose a sanction, including a sanction in the form of
compensatory expenses and/or compensatory attorney fees,
against a party for taking and maintaining a frivolous
position in papers filed in the interference.

  (c) To the extent that an administrative patent judge or
the Board has authorized a party to compel the

 taking of testimony or the production of documents or
things from an individual or entity located in a NAFTA
country or a WTO member country concerning knowledge, use,
or other activity relevant to proving or disproving a date
of invention ( § 1.671(h)), but the testimony, documents or
things have not been produced for use in the interference to
the same extent as such information could be made available
in the United States, the administrative patent judge or the
Board  shall  draw  such  adverse  inferences  as  may  be
appropriate under the circumstances, or take such other
action permitted by statute, rule, or regulation, in favor
of  the  party  that  requested  the  information  in  the
interference, including imposition of appropriate sanctions
under paragraph (a) of this section.

  (d) A party may file a motion ( § 1.635) for entry of an
order imposing sanctions, the drawing of adverse inferences
or other action under paragraph (a), (b) or (c) of this
section. Where an administrative patent judge or the Board
on its own initiative determines that a sanction, adverse
inference or other action against a party may be appropriate
under paragraph (a), (b) or (c) of this section, the
administrative patent judge or the Board shall enter an
order for the party to show cause why the sanction, adverse
inference or other action is not appropriate. The Board
shall take action in accordance with the order unless,
within 20 days after the date of the order, the party files

a paper which shows good cause why the sanction, adverse
inference or other action would not be appropriate.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985, 50 FR 23124, May 31, 1985; revised, 60 FR 14488, Mar
17, 1995; effective Apr. 21, 1995]

 § 1.617  Summary judgment against applicant.

  (a) An administrative patent judge shall review any
evidence filed by an applicant under § 1.608(b) to determine
if the applicant is prima facie entitled to a judgment
relative to the patentee. If the administrative patent judge
determines that the evidence shows the applicant is prima
facie entitled to a judgment relative to the patentee, the
interference shall proceed in the normal manner under the
regulations  of  this  part.  If  in  the  opinion  of  the
administrative patent judge the evidence fails to show that
the applicant is prima facie entitled to a judgment relative
to the patentee, the administrative patent judge shall,
concurrently with the notice declaring the interference,
enter an order stating the reasons for the opinion and
directing the applicant, within a time set in the order, to
show cause why summary judgment should not be entered
against the applicant.

  (b) The applicant may file a response to the order, which
may  include  an  appropriate  preliminary  motion  under  §
1.633(c), (f) or (g), and state any reasons why summary
judgment should not be entered. Any request by the applicant
for a hearing before the Board shall be made in the
response. Additional evidence shall not be presented by the
applicant or considered by the Board unless the applicant
shows  good  cause  why  any  additional  evidence  was  not
initially  presented  with  the  evidence  filed  under  §
1.608(b). At the time an applicant files a response, the
applicant shall serve a copy of any evidence filed under §
1.608(b) and this paragraph.

  (c) If a response is not timely filed by the applicant,
the Board shall enter a final decision granting summary
judgment against the applicant.

  (d) If a response is timely filed by the applicant, all
opponents  may  file  a  statement  and  may  oppose  any
preliminary motion filed under § 1.633(c), (f) or (g) by the
applicant within a time set by the administrative patent
judge. The statement may set forth views as to why summary
judgment should be granted against the applicant, but the
statement  shall  be  limited  to  discussing  why  all  the
evidence presented by the applicant does not overcome the
reasons given by the administrative patent judge for issuing
the order to show cause. Except as required to oppose a
motion under § 1.633(c), (f) or (g)

 by the applicant, evidence shall not be filed by any
opponent. An opponent may not request a hearing.

  (e) Within a time authorized by the administrative patent
judge, an applicant may file a reply to any statement or
opposition filed by any opponent.

  (f) When more than two parties are involved in an
interference,  all  parties  may  participate  in  summary
judgment proceedings under this section.

  (g) If a response by the applicant is timely filed, the
administrative  patent  judge  or  the  Board  shall  decide
whether the evidence submitted under ( § 1.608(b) and any
additional evidence properly submitted under paragraphs (b)
and (e) of this section shows that the applicant is prima
facie entitled to a judgment relative to the patentee. If
the applicant is not prima facie entitled to a judgment
relative to the patentee, the Board shall enter a final
decision granting summary judgment against the applicant.
Otherwise,  an  interlocutory  order  shall  be  entered
authorizing the interference to proceed in the normal manner
under the regulations of this subpart.

  (h) Only an applicant who filed evidence under § 1.608(b)
may request a hearing. If that applicant requests a hearing,
the Board may hold a hearing prior to entry of a decision
under paragraph (g) of this section. The administrative
patent judge shall set a date and time for the hearing.
Unless otherwise ordered by the administrative patent judge
or the Board, the applicant and any opponent will each be
entitled to no more than 30 minutes of oral argument at the
hearing.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR 23124, May 31, 1985; paras. (a), (b), (d), (e),
(g), & (h) revised, 60 FR 14488, Mar 17, 1995; effective
Apr. 21, 1995]

 § 1.618  Return of unauthorized papers.

  (a) An administrative patent judge or the Board shall
return to a party any paper presented by the party when the
filing of the paper is not authorized by, or is not in
compliance with the requirements of, this subpart. Any paper
returned  will  not  thereafter  be  considered  in  the
interference. A party may be permitted to file a corrected
paper under such conditions as may be deemed appropriate by
an administrative patent judge or the Board.

  (b) When presenting a paper in an interference, a party
shall not submit with the paper a copy of a paper previously
filed in the interference.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; amended 60 FR 14488 - 536, Mar 17, 1995]

 § 1.621  Preliminary statement, time for filing, notice of
  filing.

  (a) Within the time set for filing preliminary motions
under § 1.633, each party may file a preliminary statement.
The preliminary statement may be signed by any individual
having knowledge of the facts recited therein or by an
attorney or agent of record.

  (b) When a party files a preliminary statement, the party
shall also simultaneously file and serve on all opponents in
the  interference  a  notice  stating  that  a  preliminary
statement  has  been  filed.  A  copy  of  the  preliminary
statement  need  not  be  served  until  ordered  by  the
administrative patent judge.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR23124, May 31, 1985; revised, 60 FR 14488, Mar

17, 1995; effective Apr. 21, 1995]

 § 1.622  Preliminary statement, who made invention, 
where invention made.

  (a) A party's preliminary statement must identify the
inventor who made the invention defined by each count and
must state on behalf of the inventor the facts required by
paragraph (a) of § 1.623, 1.624, and 1.625 as may be
appropriate. When an inventor identified in the preliminary
statement  is  not  an  inventor  named  in  the  party's
application or patent, the party shall file a motion under §
1.634 to correct inventorship.

  (b) The preliminary statement shall state whether the
invention was made in the United States, a NAFTA country
(and, if so, which NAFTA country), a WTO member country (and
if so, which WTO member country), or in a place other than
the United States, a NAFTA country, or a WTO member country.
If made in a place other than the United States, a NAFTA
country, or a WTO member country, the preliminary statement
shall state whether the party is entitled to the benefit of
35 U.S.C. 104(a)(2).

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985;  para.  (b)  revised,  60  FR  14488,  Mar  17,  1995;
effective Apr. 21, 1995]

 § 1.623  Preliminary statement; invention made in
United States, a NAFTA country, or a WTO member country.

  (a) When the invention was made in the United States, a
NAFTA country, or a WTO member country, or a party is
entitled  to  the  benefit  of  35  U.S.C.  104(a)(2),  the
preliminary statement must state the following facts as to
the invention defined by each count:

  (1) The date on which the first drawing of the invention
was made.

  (2) The date on which the first written description of
the invention was made.

  (3) The date on which the invention was first disclosed
by the inventor to another person.

  (4) The date on which the invention was first conceived
by the inventor.

  (5) The date on which the invention was first actually
reduced to practice. If the invention was not actually
reduced to practice by or on behalf of the inventor prior to
the party's filing date, the preliminary statement shall so
state.

  (6) The date after the inventor's conception of the
invention  when  active  exercise  of  reasonable  diligence
toward reducing the invention to practice began.

  (b)  If  a  party  intends  to  prove  derivation,  the
preliminary statement must also comply with § 1.625.

  (c) When a party alleges under paragraph (a)(1) of this
section that a drawing was made, a copy of the first drawing
shall be filed with and identified in the preliminary

statement. When a party alleges under paragraph (a)(2) of
this section that a written description of the invention was
made, a copy of the first written description shall be filed
with and identified in the preliminary statement. See §
1.628(b) when a copy of the first drawing or written
description cannot be filed with the preliminary statement.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985;  para.  (a)  revised,  60  FR  14488,  Mar  17,  1995;
effective Apr. 21, 1995]

 § 1.624  Preliminary statement; invention made in a
place other than the United States, a NAFTA country, or a
WTO member country.

  (a) When the invention was made in a place other than the
United States, a NAFTA country, or a WTO member country and
a party intends to rely on introduction of the invention
into the United States, a NAFTA country, or a WTO member
country, the preliminary statement must state the following
facts as to the invention defined by each count:

  (1) The date on which a drawing of the invention was
first introduced into the United States, a NAFTA country, or
a WTO member country.

  (2) The date on which a written description of the
invention was first introduced into the United States, a
NAFTA country, or a WTO member country.

  (3) The date on which the invention was first disclosed
to another person in the United States, a NAFTA country, or
a WTO member country.

  (4) The date on which the inventor's conception of the
invention was first introduced into the United States, a
NAFTA country, or a WTO member country.

  (5) The date on which an actual reduction to practice of
the invention was first introduced into the United States, a
NAFTA country, or a WTO member country. If an actual
reduction to practice of the invention was not introduced
into the United States, a NAFTA country, or a WTO member
country, the preliminary amendment shall so state.

  (6)  The  date  after  introduction  of  the  inventor's
conception into the United States, a NAFTA country, or a WTO
member country when active exercise of reasonable diligence
in the United States, a NAFTA country, or a WTO member
country toward reducing the invention to practice began.

  (b)  If  a  party  intends  to  prove  derivation,  the
preliminary statement must also comply with § 1.625.

  (c) When a party alleges under paragraph (a)(1) of this
section that a drawing was introduced into the United
States, a NAFTA country, or a WTO member country, a copy of
that drawing shall be filed with and identified in the
preliminary statement. When a party alleges under paragraph
(a)(2) of this section that a written description of the
invention was introduced into the United States, a NAFTA
country, or a WTO member country, a copy of that written
description shall be filed with and identified in the
preliminary statement. See § 1.628(b) when a copy of the
first drawing or first written description introduced in the

United States, a NAFTA country, or a WTO member country
cannot be filed with the preliminary statement.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR23124, May 31, 1985; para. (a) & (c) revised, 60
FR 14488, Mar 17, 1995; effective Apr. 21, 1995]

 § 1.625  Preliminary statement; derivation by an
opponent

  (a) When a party intends to prove derivation by an
opponent from the party, the preliminary statement must
state the following as to the invention defined by each
count:

  (1) The name of the opponent.

  (2) The date on which the first drawing of the invention
was made.

  (3) The date on which the first written description of
the invention was made.

  (4) The date on which the invention was first disclosed
by the inventor to another person.

  (5) The date on which the invention was first conceived
by the inventor.

  (6)  The  date  on  which  the  invention  was  first
communicated to the opponent.

  (b) If a party intends to prove priority, the preliminary
statement must also comply with § 1.623 or § 1.624.

  (c) When a party alleges under paragraph (a)(2) of this
section that a drawing was made, a copy of the first drawing
shall be filed with and identified in the preliminary
statement. When a party alleges under paragraph (a)(3) of
this section that a written description of the invention was
made, a copy of the first written description shall be filed
with and identified in the preliminary statement. See §
1.628(b) when a first drawing or first written description
cannot be filed with the preliminary statement.

  [49 FR 48416, Dec. 12, 1984, added effective Feb.
11,1985; para. (a) revised, 60 FR 14488, Mar 17, 1995;
effective Apr. 21, 1995]

 § 1.626  Preliminary statement; earlier application.

  When a party does not intend to present evidence to
prove a conception or an actual reduction to practice and
the party intends to rely solely on the filing date of an
earlier filed application to prove a constructive reduction
to practice, the preliminary statement may so state and
identify the earlier filed application with particularity.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21,
1995]

 § 1.627  Preliminary statement; sealing before filing, 
opening of statement.

  (a) The preliminary statement and copies of any drawing
or written description shall be filed in a sealed envelope
bearing only the name of the party filing the statement and
the  style  (e.g.,  Jones  v.  Smith)  and  number  of  the
interference. The sealed envelope should contain only the
preliminary statement and copies of any drawing or written
description. If the preliminary statement is filed through
the mail, the sealed envelope should be enclosed in an outer
envelope  addressed  to  the  Commissioner  of  Patents  and
Trademarks in accordance with § 1.1(e).

  (b) A preliminary statement may be opened only at the
direction of an administrative patent judge.

  [49 FR48416, Dec. 12, 1984, added effective Feb. 11,
1985;  para.  (b)  revised,  60  FR  14488,  Mar  17,  1995;
effective Apr. 21, 1995]

 § 1.628  Preliminary statement; correction of error.

  (a) A material error arising through inadvertence or
mistake  in  connection  with  a  preliminary  statement  or
drawings or a written description submitted therewith or

 omitted therefrom, may be corrected by a motion ( § 1.635)
for leave to file a corrected statement. The motion shall be
supported by an affidavit stating the date the error was
first discovered, shall be accompanied by the corrected
statement and shall be filed as soon as practical after
discovery of the error. If filed on or after the date set by
the administrative patent judge for service of preliminary
statements, the motion shall also show that correction of
the error is essential to the interest of justice.

  (b) When a party cannot attach a copy of a drawing or a
written description to the party's preliminary statement as
required by § 1.623(c), § 1.624(c), or § 1.625(c), the party
shall  show  good  cause  and  explain  in  the  preliminary
statement why a copy of the drawing or written description
cannot be attached to the preliminary statement and shall
attach to the preliminary statement the earliest drawing or
written description made in or introduced into the United
States, a NAFTA country, or a WTO member country which is
available. The party shall file a motion ( § 1.635) to amend
its preliminary statement promptly after the first drawing,
first written description, or drawing or written description
first introduced into the United States, a NAFTA country, or
a WTO member country becomes available. A copy of the
drawing  or  written  description  may  be  obtained,  where
appropriate, by a motion ( § 1.635) for additional discovery
under § 1.687 or during a testimony period.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21,
1995]

 § 1.629  Effect of preliminary statement.

  (a) A party shall be strictly held to any date alleged in
the preliminary statement. Doubts as to definiteness or
sufficiency of any allegation in a preliminary statement or
compliance with formal requirements will be resolved against
the party filing the statement by restricting the party to
its effective filing date or to the latest date of a period
alleged in the preliminary statement, as may be appropriate.

A party may not correct a preliminary statement except as
provided by § 1.628.

  (b) Evidence which shows that an act alleged in the
preliminary statement occurred prior to the date alleged in
the statement shall establish only that the act occurred as
early as the date alleged in the statement.

  (c) If a party does not file a preliminary statement, the
party:

  (1) Shall be restricted to the party's effective filing
date and

  (2) Will not be permitted to prove that:

  (i) The party made the invention prior to the party's
filing date or

  (ii) Any opponent derived the invention from the party.

  (d) If a party files a preliminary statement which
contains an allegation of a date of first drawing or first
written description and the party does not file a copy of
the  first  drawing  or  written  description  with  the
preliminary statement as required by § 1.623(c), § 1.624(c),
or § 1.625(c), the party will be restricted to the party's
effective filing date as to that allegation unless the party
complies with § 1.628(b). The content of any drawing or
written description submitted with a preliminary statement
will not normally be evaluated or considered by the Board.

  (e) A preliminary statement shall not be used as evidence
on behalf of the party filing the statement.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; paras. (a), (c)(1) & (d) revised,60  FR 14488, Mar 17,
1995; effective Apr. 21, 1995]

 § 1.630  Reliance on earlier application.

  A party shall not be entitled to rely on the filing date
of  an  earlier  filed  application  unless  the  earlier
application is identified ( § 1.611(c)(5)) in the notice
declaring the interference or the party files a preliminary
motion under § 1.633 seeking the benefit of the filing date
of the earlier application.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21,
1995]

 § 1.631  Access to preliminary statement, service of
preliminary statement.

  (a) Unless otherwise ordered by an administrative patent
judge, concurrently with entry of a decision on preliminary
motions filed under § 1.633 any preliminary statement filed
under § 1.621(a) shall be opened to inspection by the senior
party  and  any  junior  party  who  filed  a  preliminary
statement. Within a time set by the administrative patent
judge, a party shall serve a copy of its preliminary
statement on each opponent who served a notice under §
1.621(b).

  (b) A junior party who does not file a preliminary
statement shall not have access to the preliminary statement
of any other party.

  (c)  If  an  interference  is  terminated  before  the
preliminary statements have been opened, the preliminary
statements will remain sealed and will be returned to the
respective parties who submitted the statements.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR 23124, May 31, 1985; revised, 60 FR 14488, Mar
17, 1995; effective Apr. 21, 1995]

 § 1.632  Notice of intent to argue abandonment,
suppression or concealment by opponent.

  A notice shall be filed by a party who intends to argue
that an opponent has abandoned, suppressed, or concealed an
actual reduction to practice (35 U.S.C. 102(g)). A party
will not be permitted to argue abandonment, suppression, or
concealment by an opponent unless the notice is timely
filed. Unless authorized otherwise by an administrative
patent judge, a notice is timely when filed within ten (10)
days after the close of the testimony - in - chief of the
opponent.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; revised,60  FR 14488, Mar 17, 1995; effective Apr. 21,
1995]

 § 1.633  Preliminary motions.

  A party may file the following preliminary motions:

  (a) A motion for judgment against an opponent's claim
designated to correspond to a count on the ground that the
claim is not patentable to the opponent. The motion shall
separately address each claim alleged to be unpatentable. In
deciding an issue raised in a motion filed under this
paragraph (a), a claim will be construed in light of the
specification of the application or patent in which it
appears. A motion under this paragraph shall not be based
on:

  (1) Priority of invention by the moving party as against
any opponent or

  (2) Derivation of the invention by an opponent from the
moving party. See § 1.637(a).

  (b) A motion for judgment on the ground that there is no
interference - in - fact. A motion under this paragraph is
proper only if the interference involves a design

 application or patent or a plant application or patent or
no claim of a party which corresponds to a count is
identical to any claim of an opponent which corresponds to
that count. See § 1.637(a). When claims of different parties
are presented in "means plus function" format, it may be
possible for the claims of the different parties not to
define the same patentable invention even though the claims
contain the same literal wording.

  (c) A motion to redefine the interfering subject matter
by

  (1) adding or substituting a count,

  (2) amending an application claim corresponding to a
count or adding a claim in the moving party's application to
be designated to correspond to a count,

  (3)  designating  an  application  or  patent  claim  to
correspond to a count,

  (4) designating an application or patent claim as not
corresponding to a count, or

  (5) requiring an opponent who is an applicant to add a
claim and to designate the claim to correspond to a count.
See § 1.637(a) and (c).

  (d) A motion to substitute a different application owned
by a party for an application involved in the interference.
See § 1.637(a) and (d).

  (e) A motion to declare an additional interference

  (1) between an additional application not involved in the
interference  and  owned  by  a  party  and  an  opponent's
application or patent involved in the interference or

  (2) when an interference involves three or more parties,
between less than all applications and patents involved in
the interference. See § 1.637(a) and (e).

  (f) A motion to be accorded the benefit of the fil ing
date of an earlier filed application. See § 1.637(a) and
(f).

  (g) A motion to attack the benefit accorded an opponent
in the notice declaring the interference of the filing date
of an earlier filed application. See § 1.637(a) and (g).

  (h) When a patent is involved in an interference and the
patentee has on file or files an application for reissue
under § 1.171, a motion to add the application for reissue
to the interference. See § 1.637(a) and (h).

  (i) When a motion is filed under paragraph (a), (b), or
(g) of this section, an opponent, in addition to opposing
the motion, may file a motion to redefine the interfering
subject matter under paragraph (c) of this section, a motion
to substitute a different application under paragraph (d) of
this section, or a motion to add a reissue application to
the interference under paragraph (h) of this section.

  (j) When a motion is filed under paragraph (c)(1) of this
section an opponent, in addition to opposing the motion, may
file a motion for benefit under paragraph (f) of this
section as to the count to be added or substituted.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR 23124, May 31, 1985; paras. (a), (b), (f), (g),
& (i) revised, 60  FR 14488, Mar 17, 1995; effective Apr.
21, 1995]

 § 1.634  Motion to correct inventorship.

  A party may file a motion to (a) amend its application

involved in an interference to correct inventorship as
provided by § 1.48 or (b) correct inventorship of its patent
involved in an interference as provided in § 1.324. See §
1.637(a).

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; revised,60  FR 14488, Mar 17, 1995; effective Apr. 21,
1995]

 § 1.635  Miscellaneous motions.

  A party seeking entry of an order relating to any matter
other than a matter which may be raised under § 1.633 or
1.634 may file a motion requesting entry of the order. See §
1.637(a) and (b).

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; revised,60  FR 14488, Mar 17, 1995; effective Apr. 21,
1995]

 § 1.636  Motions, time for filing.

  (a) A preliminary motion under § 1.633(a) through (h)
shall be filed within a time period set by an administrative
patent judge.

  (b) A preliminary motion under § 1.633(i) or (j) shall be
filed within 20 days of the service of the preliminary
motion  under  §  1.633(a),  (b),  (c)(1),  or  (g)  unless
otherwise ordered by an administrative patent judge.

  (c) A motion under § 1.634 shall be diligently filed
after an error is discovered in the inventorship of an
application or patent involved in an interference unless
otherwise ordered by an administrative patent judge.

  (d) A motion under § 1.635 shall be filed as specified in
this subpart or when appropriate unless otherwise ordered by
an administrative patent judge.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR 23124, May 31, 1985; revised,60  FR 14488, Mar
17, 1995; effective Apr. 21, 1995]

 § 1.637  Content of motions.

  (a) A party filing a motion has the burden of proof to
show that it is entitled to the relief sought in the motion.
Each motion shall include a statement of the precise relief
requested, a statement of the material facts in support of
the motion, in numbered paragraphs, and a full statement of
the reasons why the relief requested should be granted. If a
party files a motion for judgment under § 1.633(a) against
an opponent based on the ground of unpatentability over
prior art, and the dates of the cited prior art are such
that the prior art appears to be applicable to the party, it
will be presumed, without regard to the dates alleged in the
preliminary statement of the party, that the cited prior art
is applicable to the party unless there is included with the
motion an explanation, and evidence if appropriate, as to
why the prior art does not apply to the party.

  (b) Unless otherwise ordered by an administrative patent
judge or the Board, a motion under § 1.635 shall contain a
certificate by the moving party stating that the moving

party has conferred with all opponents in an effort in good
faith to resolve by agreement the issues raised by the
motion. The certificate shall indicate whether any opponent
plans to oppose the motion. The provisions of this paragraph
do not apply to a motion to suppress evidence ( § 1.656(h)).

  (c) A preliminary motion under § 1.633(c) shall explain
why the interfering subject matter should be redefined.

  (1) A preliminary motion seeking to add or substitute a
count shall:

  (i) Propose each count to be added or substituted.

  (ii) When the moving party is an applicant, show the
patentability to the applicant of all claims in, or proposed
to be added to, the party's application which correspond to
each proposed count and apply the terms of the claims to the
disclosure of the party's application; when necessary a
moving  party  applicant  shall  file  with  the  motion  an
amendment adding any proposed claim to the application.

  (iii) Identify all claims in an opponent's application
which should be designated to correspond to each proposed
count; if an opponent's application does not contain such a
claim, the moving party shall propose a claim to be added to
the opponent's application. The moving party shall show the
patentability of any proposed claims to the opponent and
apply the terms of the claims to the disclosure of the
opponent's application.

  (iv) Designate the claims of any patent involved in the
interference which define the same patentable invention as
each proposed count.

  (v) Show that each proposed count defines a separate
patentable invention from every other count proposed to
remain in the interference.

  (vi)  Be  accompanied  by  a  motion  under  §  1.633(f)
requesting the benefit of the filing date of any earlier
filed  application,  if  benefit  of  the  earlier  filed
application is desired with respect to a proposed count.

  (vii) If an opponent is accorded the benefit of the
filing date of an earlier filed application in the notice of
declaration of the interference, show why the opponent is
not entitled to benefit of the earlier filed application
with respect to the proposed count. Otherwise, the opponent
will be presumed to be entitled to the benefit of the
earlier filed application with respect to the proposed
count.

  (2) A preliminary motion seeking to amend an application
claim corresponding to a count or adding a claim to be
designated to correspond to a count shall:

  (i) Propose an amended or added claim.

  (ii) Show that the claim proposed to be amended or added
defines the same patentable invention as the count.

  (iii) Show the patentability to the applicant of each
claim proposed to be amended or added and apply the terms of
the claim proposed to be amended or added to the disclosure

of the application; when necessary a moving party applicant
shall file with the motion a proposed amendment to the
application amending the claim corresponding to the count or
adding the proposed additional claim to the application.

  (3)  A  preliminary  motion  seeking  to  designate  an
application or patent claim to correspond to a count shall:

  (i) Identify the claim and the count.

  (ii) Show the claim defines the same patentable invention
as another claim whose designation as corresponding to the
count the moving party does not dispute.

  (4)  A  preliminary  motion  seeking  to  designate  an
application or patent claim as not corresponding to a count
shall:

  (i) Identify the claim and the count.

  (ii) Show that the claim does not define the same
patentable invention as any other claim whose designation in
the notice declaring the interference as corresponding to
the count the party does not dispute.

  (5) A preliminary motion seeking to require an opponent
who is an applicant to add a claim and designate the claim
as corresponding to a count shall:

  (i) Propose a claim to be added by the opponent.

  (ii) Show the patentability to the opponent of the claim
and apply the terms of the claim to the disclosure of the
opponent's application.

  (iii) Identify the count to which the claim shall be
designated to correspond.

  (iv) Show the claim defines the same patentable invention
as the count to which it will be designated to correspond.

  (d) A preliminary motion under § 1.633(d) to substitute a
different application of the moving party shall:

  (1) Identify the different application.

  (2) Certify that a complete copy of the file of the
different application, except for documents filed under §
1.131 or § 1.608, has been served on all opponents.

  (3) Show the patentability to the applicant of all claims
in, or proposed to be added to, the different application
which correspond to each count and apply the terms of the
claims to the disclosure of the different application; when
necessary the applicant shall file with the motion an
amendment adding a claim to the different application.

  (e)  A  preliminary  motion  to  declare  an  additional
interference  under  §  1.633(e)  shall  explain  why  an
additional interference is necessary.

  (1) When the preliminary motion seeks an additional
interference under § 1.633(e)(1), the motion shall:

  (i) Identify the additional application.

  (ii) Certify that a complete copy of the file of the
additional application, except for documents filed under §
1.131 or § 1.608, has been served on all opponents.

  (iii) Propose a count for the additional interference.

  (iv) Show the patentability to the applicant of all
claims in, or proposed to be added to, the additional
application which correspond to each proposed count for the
additional interference and apply the terms of the claims to
the disclosure of the additional application; when necessary
the applicant shall file with the motion an amendment adding
any claim to the additional application.

  (v)  When  the  opponent  is  an  applicant,  show  the
patentability to the opponent of any claims in, or proposed
to be added to, the opponent's application which correspond
to the proposed count and apply the terms of the claims to
the disclosure of the opponent's application.

  (vi) Identify all claims in the opponent's application or
patent which should be designated to correspond to each
proposed count; if the opponent's application does not
contain any such claim, the motion shall propose a claim to
be added to the opponent's application.

  (vii) Show that each proposed count for the additional
interference defines a separate patentable invention from
all counts of the interference in which the motion is filed.

  (viii) Be accompanied by a motion under § 1.633(f)
requesting the benefit of the filing date of an earlier
filed application, if benefit is desired with respect to a
proposed count.

  (ix) If an opponent is accorded the benefit of the filing
date of an earlier filed application in the notice of
declaration of the interference, show why the opponent is
not  also  entitled  to  benefit  of  the  earlier  filed
application with respect to the proposed count. Otherwise,
the opponent will be presumed to be entitled to the benefit
of  the  earlier  filed  application  with  respect  to  the
proposed count.

  (2) When the preliminary motion seeks an additional
interference under § 1.633(e)(2), the motion shall:

  (i) Identify any application or patent to be involved in
the additional interference.

  (ii) Propose a count for the additional interference.

  (iii) When the moving party is an applicant, show the
patentability to the applicant of all claims in, or proposed
to be added to, the party's application which correspond to
each proposed count and apply the terms of the claims to the
disclosure of the party's application; when necessary a
moving  party  applicant  shall  file  with  the  motion  an
amendment adding any proposed claim to the application.

  (iv) Identify all claims in any opponent's application
which should be designated to correspond to each proposed
count; if an opponent's application does not contain such a
claim, the moving party shall propose a claim to be added to

the opponent's application. The moving party shall show the
patentability of any proposed claim to the opponent and
apply the terms of the claim to the disclosure of the
opponent's application.

  (v) Designate the claims of any patent involved in the
interference which define the same patentable invention as
each proposed count.

  (vi) Show that each proposed count for the additional
interference defines a separate patentable invention from
all counts in the interference in which the motion is filed.

  (vii)  Be  accompanied  by  a  motion  under  §  1.633(f)
requesting the benefit of the filing date of an earlier
filed application, if benefit is desired with respect to a
proposed count.

  (viii) If an opponent is accorded the benefit of the
filing date of an earlier filed application in the notice of
declaration of the interference, show why the opponent is
not  also  entitled  to  benefit  of  the  earlier  filed
application with respect to the proposed count. Otherwise,
the opponent will be presumed to be entitled to the benefit
of  the  earlier  filed  application  with  respect  to  the
proposed count.

  (f) A preliminary motion for benefit under § 1.633(f)
shall:

  (1) Identify the earlier application.

  (2) When the earlier application is an application filed
in the United States, certify that a complete copy of the
file of the earlier application, except for documents filed
under § 1.131 or § 1.608, has been served on all opponents.
When the earlier application is an application filed in a
foreign country, certify that a copy of the application has
been  served  on  all  opponents.  If  the  earlier  filed
application is not in English, the requirements of § 1.647
must also be met.

  (3) Show that the earlier application constitutes a
constructive reduction to practice of each count.

  (g) A preliminary motion to attack benefit under §
1.633(g) shall explain, as to each count, why the opponent
should not be accorded the benefit of the filing date of the
earlier application.

  (h) A preliminary motion to add an application for
reissue under § 1.633(h) shall:

  (1) Identify the application for reissue.

  (2) Certify that a complete copy of the file of the
application for reissue has been served on all opponents.

  (3) Show the patentability of all claims in, or proposed
to be added to, the application for reissue which correspond
to each count and apply the terms of the claims to the
disclosure of the application for reissue;

 when necessary a moving applicant for reissue shall file
with the motion an amendment adding any proposed claim to

the application for reissue.

  (4)  Be  accompanied  by  a  motion  under  §  1.633(f)
requesting the benefit of the filing date of any earlier
filed application, if benefit is desired.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR 23124, May 31, 1985; para. (e)(1)(vi) revised 53
FR 23735, June 23, 1988, effective Sept. 12, 1988; para. (a)
revised, 58 FR 49432, Sept. 23, 1993, effective Oct. 25,
1993; paras. (a), (b), (c)(1)(v), (c)(1)(vi), (c)(20(ii),
(c)(2)(iii),  (c)(3)(ii),  (c)(4)(ii),  (d),  (e)(1)(viii),
(e)(2)(vii), (f)(2), & (h)(4) revised, paras. (c)(2)(iv),
(c)(3)(iii),  &  (d)(4)  removed,  paras.  (c)(1)(vii),
(e)(1)(ix), & (e)(2)(viii) added, 60 FR 14488. Mar 17, 1995;
effective Apr. 21, 1995]

 § 1.638  Opposition and reply; time for filing
opposition and reply.

  (a) Unless otherwise ordered by an administrative patent
judge, any opposition to any motion shall be filed within 20
days after service of the motion. An opposition shall
identify any material fact set forth in the motion which is
in dispute and include an argument why the relief requested
in the motion should be denied.

  (b) Unless otherwise ordered by an administrative patent
judge, any reply shall be filed within 15 days after service
of the opposition. A reply shall be directed only to new
points raised in the opposition.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; revised,60  FR 14488, Mar 17, 1995; effective Apr. 21,
1995]

 § 1.639  Evidence in support of motion, opposition, or
reply.

  (a) Except as provided in paragraphs (c) through (g) of
this section, proof of any material fact alleged in a
motion, opposition, or reply must be filed and served with
the motion, opposition, or reply unless the proof relied
upon is part of the interference file or the file of any
patent or application involved in the interference or any
earlier application filed in the United States of which a
party has been accorded or seeks to be accorded benefit.

  (b)  Proof  may  be  in  the  form  of  patents,  printed
publications, and affidavits. The pages of any affidavits
filed under this paragraph shall, to the extent possible, be
given sequential numbers, which shall also serve as the
record page numbers for the affidavits in the event they are
included in the party's record ( § 1.653). Any patents and
printed publications submitted under this paragraph and any
exhibits  identified  in  affidavits  submitted  under  this
paragraph shall, to the extent possible, be given sequential
exhibit numbers, which shall also serve as the exhibit
numbers in the event the patents, printed publications and
exhibits are filed with the party's record ( § 1.653).

  (c) If a party believes that additional evidence in the
form of testimony that is unavailable to the party is
necessary to support or oppose a preliminary motion under §
1.633 or a motion to correct inventorship un der § 1.634,

the  party  shall  describe  the  nature  of  any  proposed
testimony as specified in paragraphs (d) through (g) of this
section. If the administra tive patent judge finds that
testimony is needed to decide the motion, the administrative
patent judge may grant appropriate interlocutory relief and
enter an order authorizing the taking of testimony and
deferring a decision on the motion to final hearing.

  (d) When additional evidence in the form of expert -
witness testimony is needed in support of or opposition to a
preliminary motion, the moving party or opponent should:

  (1) Identify the person whom it expects to use as an
expert;

  (2) State the field in which the person is alleged to be
an expert; and

  (3) State:

  (i) the subject matter on which the person is expected to
testify;

  (ii) the facts and opinions to which the person is
expected to testify; and

  (iii) a summary of the grounds and basis for each
opinion.

  (e) When additional evidence in the form of fact -
witness testimony is necessary, state the facts to which the
witness is expected to testify.

  (f) If the opponent is to be called, or if evidence in
the possession of the opponent is necessary, explain the
evidence sought, what it will show, and why it is needed.

  (g) When inter partes tests are expected to be performed,
describe the tests stating what they will be expected to
show.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; para. (c) revised, 58 FR 49432, Sept. 23, 1993,
effective Oct. 25, 1993; paras. (d) - (g) added, 58 FR
49432, Sept. 23, 1993, effective Oct. 25, 1993; paras. (a) -
(d)(1) revised, 60 FR 14488, Mar 17, 1995; effective Apr.
21, 1995]

 § 1.640  Motions, hearing and decision, redeclaration
of interference, order to show cause.

  (a) A hearing on a motion may be held in the discretion
of  the  administrative  patent  judge.  The  administrative
patent judge shall set the date and time for any hearing.
The length of oral argument at a hearing on a motion is a
matter within the discretion of the administrative patent
judge. An administrative patent judge may direct that a
hearing take place by telephone.

  (b) Unless an administrative patent judge or the Board is
of the opinion that an earlier decision on a preliminary
motion  would  materially  advance  the  resolution  of  the
interference, decision on a preliminary motion shall be
deferred to final hearing. Motions not deferred to final
hearing will be decided by an administrative patent judge.

An administrative patent judge may consult with an examiner
in deciding motions. An administrative patent judge may take
up motions for decision in any order, may grant, deny, or
dismiss any motion, and may take such other action which
will secure the just, speedy, and inexpensive determination
of the interference. A matter raised by a party in support
of or in opposition to a motion that is deferred to final
hearing will not be entitled to consideration at final
hearing unless the matter is raised in the party's brief at
final hearing. If the administrative patent judge determines
that the interference shall proceed to final hearing on the
issue of priority or derivation, a time shall be set for
each party to file a paper identifying any decisions on
motions  or  on  matters  raised  sua  sponte  by  the
administrative patent judge that the party wishes to have
reviewed  at  final  hearing  as  well  as  identifying  any
deferred motions that the party wishes to have considered at
final hearing. Any evidence that a party wishes to have
considered  with  respect  to  the  decisions  and  deferred
motions identified by the party or by an opponent for
consideration or review at final hearing shall be filed or,
if  appropriate,  noticed  under  §  1.671(e)  during  the
testimony - in - chief period of the party.

  (1) When appropriate after the time expires for filing
replies  to  oppositions  to  preliminary  motions,  the
administrative patent judge will set a time for filing any
amendment to an application involved in the interference and
for filing a supplemental preliminary statement as to any
new counts which may become involved in the interference if
a preliminary motion to amend or substitute a count has been
filed. Failure or refusal of a party to timely present an
amendment required by an administrative patent judge shall
be taken without further action as a disclaimer by that
party of the invention involved. A supplemental preliminary
statement shall meet the requirements specified in § 1.623,
1.624, 1.625, or 1.626, but need not be filed if a party
states that it intends to rely on a preliminary statement
previously filed under § 1.621(a). At an appropriate time in
the interference, and when necessary, an order will be
entered redeclaring the interference.

  (2)  After  the  time  expires  for  filing  preliminary
motions, a further preliminary motion under § 1.633 will not
be considered except as provided by § 1.645(b).

  (c) When a decision on any motion under § 1.633, 1.634,
or  1.635  or  on  any  matter  raised  sua  sponte  by  an
administrative patent judge is entered which does not result
in the issuance of an order to show cause under paragraph
(d) of this section, a party may file a request for
reconsideration  within  14  days  after  the  date  of  the
decision. The request for reconsideration shall be filed and
served by hand or Express Mail. The filing of a request for
reconsideration will not stay any time period set by the
decision. The request for reconsideration shall specify with
particularity  the  points  believed  to  have  been
misapprehended or overlooked in rendering the decision. No
opposition to a request for reconsideration shall be filed
unless requested by an administrative patent judge or the
Board. A decision ordinarily will not be modified unless an
opposition has been requested by an administrative patent
judge or the Board. The request for reconsideration normally
will be acted on by the administrative patent judge or the
panel of the Board which issued the decision.

  (d) An administrative patent judge may issue an order to
show cause why judgment should not be entered against a
party when:

  (1) A decision on a motion or on a matter raised sua
sponte by an administrative patent judge is entered which is
dispositive of the interference against the party as to any
count;

  (2) The party is a junior party who fails to file a
preliminary statement; or

  (3)  The  party  is  a  junior  party  whose  preliminary
statement fails to overcome the effective filing date of
another party.

  (e) When an order to show cause is issued under paragraph
(d) of this section, the Board shall enter judgment in
accordance with the order unless, within 20 days after the
date of the order, the party against whom the order issued
files a paper which shows good cause why judgment should not
be entered in accordance with the order.

  (1) If the order was issued under paragraph (d)(1) of
this section, the paper may:

  (i) Request that final hearing be set to review any
decision which is the basis for the order as well as any
other decision of the administrative patent judge that the
party wishes to have reviewed by the Board at final hearing
or

  (ii) Fully explain why judgment should not be entered.

  (2) Any opponent may file a response to the paper within
20 days of the date of service of the paper. If the order
was issued under paragraph (d)(1) of this section and the
party's paper includes a request for final hearing, the
opponent's response must identify every decision of the
administrative patent judge that the opponent wishes to have
reviewed by the Board at a final hearing. If the order was
issued under paragraph (d)(1) of this section and the paper
does not include a request for final hearing, the opponent's
response may include a request for final hearing, which must
identify every decision of the administrative patent judge
that the opponent wishes to have reviewed by the Board at a
final hearing. Where only the opponent's response includes a
request for a final hearing, the party filing the paper
shall, within 14 days from the date of service of the
opponent's response, file a reply identifying any other
decision of the administrative patent judge that the party
wishes to have reviewed by the Board at a final hearing.

  (3) The paper or the response should be accompanied by a
motion ( § 1.635) requesting a testimony period if either
party wishes to introduce any evidence to be considered at
final hearing ( § 1.671). Any evidence that a

 party wishes to have considered with respect to the
decisions and deferred motions identified for consideration
or  review  at  final  hearing  shall  be  filed  or,  if
appropriate, noticed under § 1.671(e) during the testimony
period of the party. A request for a testimony period shall
be construed as including a request for final hearing.

  (4) If the paper contains an explanation of why judgment
should not be entered in accordance with the order, and if
no party has requested a final hearing, the decision that is
the basis for the order shall be reviewed based on the
contents of the paper and the response. If the paper fails
to show good cause, the Board shall enter judgment against
the party against whom the order issued.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR 23124, May 31, 1985; paras. (a) - (e) revised,
60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995]

 § 1.641  Unpatentability discovered by administrative
patent judge.

  (a) During the pendency of an interference, if the
administrative patent judge becomes aware of a reason why a
claim designated to correspond to a count may not be
patentable, the administrative patent judge may enter an
order notifying the parties of the reason and set a time
within which each party may present its views, including any
argument and any supporting evidence, and, in the case of
the party whose claim may be unpatentable, any appropriate
preliminary motions under § 1.633(c), (d) and (h).

  (b) If a party timely files a preliminary motion in
response to the order of the administrative patent judge,
any opponent may file an opposition ( § 1.638(a)). If an
opponent files an opposition, the party may reply ( §
1.638(b)).

  (c) After considering any timely filed views, including
any  timely  filed  preliminary  motions  under  §  1.633,
oppositions and replies, the administrative patent judge
shall decide how the interference shall proceed.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21,
1995]

 § 1.642  Addition of application or patent to
interference.

  During  the  pendency  of  an  interference,  if  the
administrative patent judge becomes aware of an application
or a patent not involved in the interference which claims
the  same  patentable  invention  as  a  count  in  the
interference, the administrative patent judge may add the
application or patent to the interference on such terms as
may be fair to all parties.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; revised. 60 FR 14488, Mar 17, 1995; effective Apr. 21,
1995]

 § 1.643  Prosecution of interference by assignee.

  (a) An assignee of record in the Patent and Trademark
Office of the entire interest in an application or patent
involved  in  an  interference  is  entitled  to  conduct
prosecution of the interference to the exclusion of the
inventor.

  (b) An assignee of a part interest in an application or

patent involved in an interference may file a motion ( §
1.635) for entry of an order authorizing it to prosecute the
interference. The motion shall show the inability or refusal
of the inventor to prosecute the interference or other cause
why it is in the interest of justice to permit the assignee
of a part interest to prosecute the interference. The
administrative patent judge may allow the assignee of a part
interest to prosecute the interference upon such terms as
may be appropriate.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985;  para.  (b)  revised,  60  FR  14488,  Mar  17,  1995;
effective Apr. 21, 1995]

 § 1.644  Petitions in interferences.

  (a)  There  is  no  appeal  to  the  Commissioner  in  an
interference from a decision of an administrative patent
judge or the Board. The Commissioner will not consider a
petition in an interference unless:

  (1) The petition is from a decision of an administrative
patent judge or the Board and the administrative patent
judge or the Board shall be of the opinion that the decision
involves  a  controlling  question  of  procedure  or  an
interpretation of a rule as to which there is a substantial
ground for a difference of opinion and that an immediate
decision on petition by the Commissioner may materially
advance the ultimate termination of the interference;

  (2)  The  petition  seeks  to  invoke  the  supervisory
authority of the Commissioner and does not relate to the
merits of priority of invention or patentability or the
admissibility  of  evidence  under  the  Federal  Rules  of
Evidence;

  (3) The petition seeks relief under § 1.183.

  (b) A petition under paragraph (a)(1) of this section
filed more than 15 days after the date of the decision of
the administrative patent judge or the Board

 may be dismissed as untimely. A petition under paragraph
(a)(2) of this section shall not be filed prior to the
party's brief for final hearing (see § 1.656). Any petition
under paragraph (a)(3) of this section shall be timely if it
is filed simultaneously with a proper motion under § 1.633,
1.634, or 1.635 when granting the motion would require
waiver of a rule. Any opposition to a petition under
paragraphs (a)(1) or (a)(2) of this section shall be filed
within 20 days of the date of service of the petition. Any
opposition to a petition under paragraph (a)(3) of this
section shall be filed within 20 days of the date of service
of the petition or the date an opposition to the motion is
due, whichever is earlier.

  (c)  The  filing  of  a  petition  shall  not  stay  the
proceeding unless a stay is granted in the discretion of the
administrative patent judge, the Board, or the Commissioner.

  (d) Any petition must contain a statement of the facts
involved, in numbered paragraphs, and the point or points to
be reviewed and the action requested. The petition will be
decided  on  the  basis  of  the  record  made  before  the
administrative patent judge or the Board, and

 no new evidence will be considered by the Commissioner in
deciding the petition. Copies of documents already of record
in the interference shall not be submitted with the petition
or opposition.

  (e) Any petition under paragraph (a) of this section
shall be accompanied by the petition fee set forth in §
1.17(h).

  (f) Any request for reconsideration of a decision by the
Commissioner shall be filed within 14 days of the decision
of the Commissioner and must be accompanied by the fee set
forth  in  §  1.17(h).  No  opposition  to  a  request  for
reconsideration shall be filed unless requested by the
Commissioner. The decision will not ordinarily be modified
unless  such  an  opposition  has  been  requested  by  the
Commissioner.

  (g) Where reasonably possible, service of any petition,
opposition, or request for reconsideration shall be such
that  delivery  is  accomplished  within  one  working  day.
Service  by  hand  or  Express  Mail  complies  with  this
paragraph.

  (h) An oral hearing on the petition will not be granted
except when considered necessary by the Commissioner.

  (i) The Commissioner may delegate to appropriate Patent
and  Trademark  Office  employees  the  determination  of
petitions under this section.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR 23124, May 31, 1985; paras. (a) - (a)(2), (b) -
(g) revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21,
1995]

 § 1.645  Extension of time, late papers, stay of
proceedings.

  (a) Except to extend the time for filing a notice of
appeal to the U.S.C. ourt of Appeals for the Federal Circuit
or for commencing a civil action, a party may file a motion
( § 1.635) seeking an extension of time to take action in an
interference. See § 1.304(a) for extensions of time for
filing a notice of appeal to the U.S.C. ourt of Appeals for
the Federal Circuit or for commencing a civil action. The
motion shall be filed within sufficient time to actually
reach the administrative patent judge before expiration of
the time for taking action. A moving party should not assume
that the motion will be granted even if there is no
objection by any other party. The motion will be denied
unless the moving party shows good cause why an extension
should be granted. The press of other business arising after
an administrative patent judge sets a time for taking action
will not normally constitute good cause. A motion seeking
additional time to take testimony because a party has not
been able to procure the testimony of a witness shall set
forth the name of the witness, any steps taken to procure
the testimony of the witness, the dates on which the steps
were taken, and the facts expected to be proved through the
witness.

  (b) Any paper belatedly filed will not be considered
except upon motion ( § 1.635) which shows good cause why the

paper was not timely filed, or where an administrative
patent judge or the Board, sua sponte, is of the opinion
that it would be in the interest of justice to consider the
paper. See § 1.304(a) for exclusive procedures relating to
belated filing of a notice of appeal to the U.S.C. ourt of
Appeals for the Federal Circuit or belated commencement of a
civil action.

  (c) The provisions of § 1.136 do not apply to time
periods in interferences.

  (d) An administrative patent judge may stay proceedings
in an interference.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR 23124, May 31, 1985; paras. (a) and (b), 54 FR
29553, July 13, 1989, effective Aug. 20, 1989; paras. (a),
(b), & (d) revised, 60 FR 14488, Mar 17, 1995; effective
Apr. 21, 1995]

 § 1.646  Service of papers, proof of service.

  (a) A copy of every paper filed in the Patent and
Trademark Office in an interference or an application or
patent involved in the interference shall be served upon all
other parties except:

  (1) Preliminary statements when filed under § 1.621;
preliminary statements shall be served when service is
ordered by an administrative patent judge.

  (2) Certified transcripts and exhibits which accompany
the transcripts filed under § 1.676; copies of transcripts
shall be served as part of a party's record under §
1.653(c).

  (b) Service shall be on an attorney or agent for a party.
If there is no attorney or agent for the party, service
shall be on the party. An administrative patent judge may
order additional service or waive service where appropriate.

  (c) Unless otherwise ordered by an administrative patent
judge, or except as otherwise provided by this subpart,
service of a paper shall be made as follows:

  (1) By handing a copy of the paper or causing a copy of
the paper to be handed to the person served.

  (2) By leaving a copy of the paper with someone employed
by the person at the person's usual place of business.

  (3)  When  the  person  served  has  no  usual  place  of
business, by leaving a copy of the paper at the person's
residence with someone of suitable age and discretion then
residing therein.

  (4) By mailing a copy of the paper by first class mail;
when service is by first class mail the date of mailing is
regarded as the date of service.

  (5) By mailing a copy of the paper by Express Mail; when
service is by Express Mail the date of deposit with the U.S.
Postal Service is regarded as the date of service.

  (6)  When  it  is  shown  to  the  satisfaction  of  an

administrative patent judge that none of the above methods
of  obtaining  or  serving  the  copy  of  the  paper  was
successful,  the  administrative  patent  judge  may  order
service by publication of an appropriate notice in the
Official Gazette.

  (d) An administrative patent judge may order that a paper
be served by hand or Express Mail.

  (e) The due date for serving a paper is the same as the
due date for filing the paper in the Patent and Trademark
Office. Proof of service must be made before a paper will be
considered in an interference. Proof of service may appear
on or be affixed to the paper. Proof of service shall
include the date and manner of service. In the case of
personal service under paragraphs (c)(1) through (c)(3) of
this section, proof of service shall include the names of
any person served and the person who made the service. Proof
of service may be made by an acknowledgment of service by or
on behalf of the person served or a statement signed by the
party or the party's attorney or agent containing the
information required by this section. A statement of an
attorney or agent attached to, or appearing in, the paper
stating the date and manner of service will be accepted as
prima facie proof of service.

  [49 FR 48416, Dec. 12, 1984, added effective Feb.
11,1985; 50 FR 23124, May 31, 1985;  paras. (a)(1) - (c)(1),
(c)(4) - (c)(5) revised, para. (c)(6) added, 60 FR 14488,
Mar 17, 1995; effective Apr. 21, 1995]

 § 1.647  Translation of document in foreign language.

  When a party relies on a document or is required to
produce a document in a language other than English, a
translation of the document into English and an affidavit
attesting to the accuracy of the translation shall be filed
with the document.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; paras. (a) and (d), 56 FR 42528, Aug. 28, 1991,
effective Sept. 27, 1991; 56 FR 46823, Sept. 16, 1991;
revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21, 1995]

 § 1.651  Setting times for discovery and taking
testimony, parties entitled to take testimony.

  (a) At an appropriate stage in an interference, an
administrative patent judge shall set a time for fil ing
motions ( § 1.635) for additional discovery under § 1.687(c)
and testimony periods for taking any necessary testimony.

  (b) Where appropriate, testimony periods will be set to
permit a party to:

  (1) Present its case - in - chief and/or case - in -
rebuttal and/or

  (2) Cross - examine an opponent's case - in - chief
and/or a case - in - rebuttal.

  (c) A party is not entitled to take testimony to present
a case - in - chief unless:

  (1) The administrative patent judge orders the taking of

testimony under § 1.639(c);

  (2) The party alleges in its preliminary statement a date
of invention prior to the effective filing date of the
senior party;

  (3) A testimony period has been set to permit an opponent
to prove a date of invention prior to the effective filing
date of the party and the party has filed a preliminary
statement alleging a date of invention prior to that date;
or

  (4) A motion ( § 1.635) is filed showing good cause why a
testimony period should be set.

  (d) Testimony, including any testimony to be taken in a
place  outside  the  United  States,  shall  be  taken  and
completed during the testimony periods set under paragraph
(a) of this section. A party seeking to extend the period
for taking testimony must comply with § 1.635 and 1.645(a).

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; paras. (a) and (d), 56 FR 42528, Aug. 28, 1991,
effective Sept. 27, 1991; 56 FR 46823, Sept. 16, 1991;
paras. (a) (c)(1) - (c)(3) & (d) revised, 60 FR 14488, Mar
17, 1995; effective Apr. 21, 1995]

 § 1.652  Judgment for failure to take testimony or file
record.

  If a junior party fails to timely take testimony
authorized under § 1.651, or file a record under § 1.653(c),
an administrative patent judge, with or without a motion ( §
1.635) by another party, may issue an order to show cause
why judgment should not be entered against the junior party.
When an order is issued under this section, the Board shall
enter judgment in accordance with the order unless, within
15 days after the date of the order, the junior party files
a paper which shows good cause why judgment should not be
entered in accordance with the order. Any other party may
file a response to the paper within 15 days of the date of
service of the paper. If the party against whom the order
was issued fails to show good cause, the Board shall enter
judgment against the party.

  [49 FR 48416, Dec. 12, 1984, added effective Feb. 11,
1985; revised, 60 FR 14488, Mar 17, 1995; effective Apr. 21,
1995]

 § 1.653  Record and exhibits.

  (a)  Testimony  shall  consist  of  affidavits  under  §
1.672(b), (c) and (g), 1.682(c), 1.683(b) and 1.688(b),
transcripts of depositions under § 1.671(g) and 1.672(a)
when a deposition is authorized by an administra tive patent
judge,  transcripts  of  depositions  under  §  1.672(d),
1.682(d), 1.683(c) and 1.688(c), agreed statements under §
1.672(h),  transcripts  of  interrogatories,  cross  -
interrogatories, and recorded answers and copies of written
interrogatories  and  answers  and  written  requests  for
admissions and answers under § 1.688(a).

  (b) An affidavit shall be filed as set forth in § 1.677.
A  certified  transcript  of  a  deposition,  including  a
deposition cross - examining an affiant, shall be filed as

set forth in § 1.676, 1.677 and 1.678. An original agreed
statement shall be filed as set forth in § 1.672(h).

  (c) In addition to the items specified in paragraph (b)
of this section and within a time set by an administrative
patent judge, each party shall file three copies and serve
one copy of a record consisting of:

  (1) An index of the names of the witnesses for the party,
giving the pages of the record where the direct testimony
and cross - examination of each witness begins.

  (2) An index of exhibits briefly describing the nature of
each exhibit and giving the page of the record where each
exhibit is first identified and offered into evidence.

  (3) The count or counts.

  (4)  Each  affidavit  by  a  witness  for  the  party,
transcript, including transcripts of cross - examination of
any affiant who testified for the party and transcripts of
compelled deposition testimony by a witness for the party,
agreed statement relied upon by the party, and transcript of
interrogatories,  cross  -  interrogatories  and  recorded
answers.

  (5) [Reserved]

  (6) Any evidence from another interference, proceeding,
or action relied upon by the party under § 1.683.

  (7) Each request for an admission and the admission and
each written interrogatory and the answer upon which a party
intends to rely under § 1.688.

  (d) The pages of the record shall be consecutively
numbered to the extent possible.

  (e) The name of each witness shall appear at the top of
each page of each affidavit or transcript.

  (f) [Reserved]

  (g) The record may be produced by standard typographical
printing or by any other process capable of producing a
clear black permanent image. All printed matter except on
covers must appear in at least 11 point type on opaque,
unglazed paper. Footnotes may not be printed in type smaller
than 9 point. The page size shall be 21.8 by 27.9 cm. (8 «
by 11 inches) (letter size) with printed matter 16.5 by 24.1
cm. (6 « by 9 « inches). The record shall be bound with
covers at their left edges in such manner as to lie flat
when open to any page and in one or more volumes of
convenient size (approximately 100 pages per volume is
suggested). When there is more than one volume, the numbers
of the pages contained in each volume shall appear at the
top of the cover for each volume.

  (h) [Reserved]

  (i) Each party shall file its exhibits with the record
specified in paragraph (c) of this section. Exhibits include
documents and things identified in affidavits or on the
record during the taking of oral depositions as well as
official records and publications filed by the party under §

1.682(a). One copy of each documentary exhibit shall be
served. Documentary exhibits shall be filed in an envelope
or folder and shall not be bound as part of the record.
Physical exhibits, if not filed by an officer under §
1.676(d), shall be filed with the record. Each exhibit shall
contain a label which identifies the party submitting the
exhibit and an exhibit number, the style of the interference
(e.g., Jones v. Smith), and the interference number. Where
possible, the label should appear at the bottom right - hand
corner of each documentary exhibit. Upon termination of an
interference, an administrative patent judge may return an
exhibit to the party filing the exhibit. When any exhibit is
returned, an order shall be entered indicating that the
exhibit has been returned.

  (j) Any testimony, record, or exhibit which does not
comply with this section may be returned under § 1.618(a).

  [49 FR 48466, Dec. 12, 1984, added effective Feb. 11,
1985; paras. (a), (b), (c), (c)(1), (c)(4), (d), (g), & (i)
revised, paras. (c)(5) (f) & (h) removed, 60 FR 14488, Mar
17, 1995; effective Apr. 21, 1995]

 § 1.654  Final hearing.

  (a) At an appropriate stage of the interference, the
parties will be given an opportunity to appear before the
Board to present oral argument at a final hearing. An
administrative patent judge may set a date and time for
final hearing. Unless otherwise ordered by an administrative
patent judge or the Board, each party will be entitled to no
more than 30 minutes of oral argument at final hearing. A
party who does not file a brief for final hearing ( §
1.656(a)) shall not be entitled to appear at final hearing.

  (b) The opening argument of a junior party shall include
a fair statement of the junior party's case and the junior
party's position with respect to the case presented on
behalf of any other party. A junior party may reserve a
portion of its time for rebuttal.

  (c) A party shall not be entitled to argue that an
opponent  abandoned,  suppressed,  or  concealed  an  actual
reduction to practice unless a notice under § 1.632 was
timely filed.

  (d) After final hearing, the interference shall be taken
under advisement by the Board. No further paper shall be
filed except under § 1.658(b) or as authorized by an
administrative patent judge or the Board. No additional oral
argument shall be had unless ordered by the Board.

  [49 FR 48466, Dec. 12, 1984, added effective Feb. 11,
1985; paras. (a) & (d) revised, 60 FR 14488, Mar 17, 1995,
effective April 21, 1995]

 § 1.655  Matters considered in rendering a final
decision.

  (a) In rendering a final decision, the Board may consider
any properly raised issue, including priority of invention,
derivation  by  an  opponent  from  a  party  who  filed  a
preliminary statement under § 1.625, patenta bility of the
invention,  admissibility  of  evidence,  any  interlocutory
matter deferred to final hearing, and any other matter

necessary to resolve the interference. The Board may also
consider whether entry of any interlocutory order was an
abuse of discretion. All interlocutory orders shall be
presumed to have been correct, and the burden of showing an
abuse of discretion shall be on the party attacking the
order. When two or more interlocutory orders involve the
same issue, the last entered order shall be presumed to have
been correct.

  (b)  A  party  shall  not  be  entitled  to  raise  for
consideration at final hearing any matter which properly
could have been raised by a motion under § 1.633 or 1.634
unless the matter was properly raised in a motion that was
timely filed by the party under § 1.633 or 1.634 and the
motion was denied or deferred to final hearing, the matter
was  properly  raised  by  the  party  in  a  timely  filed
opposition to a motion under § 1.633 or 1.634 and the motion
was  granted  over  the  opposition  or  deferred  to  final
hearing, or the party shows good cause why the issue was not
properly raised by a timely filed motion or opposition. A
party that fails to contest, by way of a timely filed
preliminary motion under § 1.633(c), the designation of a
claim as corresponding to a count, or fails to timely argue
the separate patentability of a particular claim when the
ground  for  unpatentability  is  first  raised,  may  not
subsequently argue to an administrative patent judge or the
Board the separate patentability of claims designated to
correspond to the count with respect to that ground.

  (c) In the interest of justice, the Board may exercise
its discretion to consider an issue even though it would not
otherwise be entitled to consideration under this section.

  [49 FR 48466, Dec. 12, 1984, added effective Feb. 11,
1985; para. (a) revised, 58 FR 49432, Sept. 23, 1993,
effective Oct. 25, 1993; revised 60 FR 14488, Mar 17, 1995;
effective Apr. 21, 1995]

 § 1.656  Briefs for final hearing.

  (a) Each party shall be entitled to file briefs for final
hearing. The administrative patent judge shall determine the
briefs needed and shall set the time and order for filing
briefs.

  (b) The opening brief of a junior party shall contain
under appropriate headings and in the order indicated:

  (1) A statement of interest indicating the full name of
every  party  represented  by  the  attorney  in  the  inter
interference and the name of the real party in interest if
the party named in the caption is not the real party in
interest.

  (2) A statement of related cases indicating whether the
interference was previously before the Board for final
hearing and the name and number of any related appeal or
interference which is pending before, or which

 has been decided by, the Board, or which is pending before,
or which has been decided by, the U.S.C. ourt of Appeals for
the Federal Circuit or a district court in a proceeding
under 35 U.S.C. 146. A related appeal or interference is one
which will directly affect or be directly affected by or
have a bearing on the Board's decision in the pending

interference.

  (3) A table of contents, with page references, and a
table of cases (alphabetically arranged), statutes, and
other authorities cited, with references to the pages of the
brief where they are cited.

  (4) A statement of the issues presented for decision in
the interference.

  (5) A statement of the facts, in numbered paragraphs,
relevant  to  the  issues  presented  for  decision  with
appropriate references to the record.

  (6) An argument, which may be preceded by a summary,
which shall contain the contentions of the party with
respect to the issues it is raising for consideration at
final hearing, and the reasons therefor, with citations to
the cases, statutes, other authorities, and parts of the
record relied on.

  (7)  A  short  conclusion  stating  the  precise  relief
requested.

  (8) An appendix containing a copy of the counts.

  (c) The opening brief of the senior party shall conform
to the requirements of paragraph (b) of this section except:

  (1) A statement of the issues and of the facts need not
be made unless the party is dissatisfied with the statement
in the opening brief of the junior party and

  (2) An appendix containing a copy of the counts need not
be included if the copy of the counts in the opening brief
of the junior party is correct.

  (d) Unless ordered otherwise by an administrative patent
judge,  briefs  shall  be  double  -  spaced  (except  for
footnotes, which may be single - spaced) and shall comply
with the requirements of § 1.653(g) for records except the
requirement for binding.

  (e) An original and four copies of each brief must be
filed.

  (f) Any brief which does not comply with the requirements
of this section may be returned under § 1.618(a).

  (g) Any party, separate from its opening brief, but filed
concurrently therewith, may file an original and four copies
of concise proposed findings of fact and conclusions of law.
Any  proposed  findings  of  fact  shall  be  in  numbered
paragraphs and shall be supported by specific references to
the record. Any proposed conclusions of law shall be in
numbered paragraphs and shall be supported by citation of
cases, statutes, or other authority. Any opponent, separate
from its opening or reply brief, but filed concurrently
therewith, may file a paper accepting or objecting to any
proposed findings of fact or conclusions of law; when
objecting, a reason must be given. The Board may adopt the
proposed findings of fact and conclusions of law in whole or
in part.

  (h) If a party wants the Board in rendering its final

decision to rule on the admissibility of any evidence, the
party shall file with its opening brief an original and four
copies of a motion ( § 1.635) to suppress the evidence. The
provisions of § 1.637(b) do not apply to a motion to
suppress under this paragraph. Any objection previously made
to the admissibility of the evidence of an opponent is
waived unless the motion required by this paragraph is
filed. A party that failed to challenge the admissibility of
the evidence of an opponent on a ground that could have been
raised in a timely objection under § 1.672(c), 1.682(c),
1.683(b) or 1.688(b) may not move under this paragraph to
suppress the evidence on that ground at final hearing. An
original and four copies of an opposition to the motion may
be filed with an opponent's opening brief or reply brief as
may be appropriate.

  (i) When a junior party fails to timely file an opening
brief, an order may issue requiring the junior party to show
cause why the Board should not treat failure to file the
brief as a concession of priority. If the junior party fails
to show good cause within a time period set in the order,
judgment may be entered against the junior party.

  [49 FR 48466, Dec. 12, 1984, added effective Feb. 11,
1985; amended 60 FR 14488 - 536, Mar 17, 1995; paras. (a),
(b)(1) - (b)(8), (d), (e), (g), (h), & (i) revised, 60 FR
14488, Mar. 17, 1995; effective Apr., 21, 1995]

 § 1.657  Burden of proof as to date of invention.

  (a) A rebuttable presumption shall exist that, as to each
count,  the  inventors  made  their  invention  in  the
chronological order of their effective filing dates. The
burden  of  proof  shall  be  upon  a  party  who  contends
otherwise.

  (b) In an interference involving copending applications
or involving a patent and an application having an effective
filing date on or before the date the patent issued, a
junior party shall have the burden of establishing priority
by a preponderance of the evidence.

  (c) In an interference involving an application and a
patent  and  where  the  effective  filing  date  of  the
application is after the date the patent issued, a junior
party shall have the burden of establishing priority by
clear and convincing evidence.

  [49 FR 48466, Dec. 12, 1984, added effective Feb. 11,
1985; amended 60 FR 14488 - 536, Mar 17, 1995; revised, 60
FR 14488, Mar. 17, 1995; effective Apr. 21, 1995]

 § 1.658  Final decision.

  (a) After final hearing, the Board shall enter a decision
resolving the issues raised at final hearing. The decision
may  enter  judgment,  in  whole  or  in  part,  remand  the
interference to an administrative patent judge for further
proceedings, or take further action not inconsistent with
law. A judgment as to a count shall state whether or not
each party is entitled to a patent containing the claims in
the party's patent or application which correspond to the
count. When the Board enters a decision awarding judgment as
to all counts, the decision shall be regarded as a final
decision for the purpose of judicial review (35 U.S.C. 141 -

144,  146)  unless  a  request  for  reconsideration  under
paragraph (b) of this section is timely filed.

  (b) Any request for reconsideration of a decision under
paragraph (a) of this section shall be filed within one
month after the date of the decision. The request for
reconsideration shall specify with particularity the points
believed  to  have  been  misapprehended  or  overlooked  in
rendering the decision. Any opposition to a request for
reconsideration shall be filed within 14 days of the date of
service of the request for reconsideration. Service of the
request for reconsideration shall be by hand or Express
Mail. The Board shall enter a decision on the request for
reconsideration. If the Board shall be of the opinion that
the  decision  on  the  request  for  reconsideration
significantly modifies its original decision under paragraph
(a) of this section, the Board may designate the decision on
the  request  for  reconsideration  as  a  new  decision.  A
decision on reconsideration is a final decision for the
purpose of judicial review (35 U.S.C. 141 - 144, 146).

  (c) A judgment in an interference settles all issues
which (1) were raised and decided in the interference, (2)
could  have  been  properly  raised  and  decided  in  the
interference by a motion under § 1.633(a) through (d) and
(f) through (j) or § 1.634 and (3) could have been properly
raised and decided in an additional interference with a
motion under § 1.633(e). A losing party who could have
properly moved, but failed to move, under § 1.633 or 1.634,
shall be estopped to take ex parte or inter partes action in
the Patent and Trademark Office after the interference which
is inconsistent with that party's failure to properly move,
except that a losing party shall not be estopped with
respect to any claims which correspond, or properly could
have corresponded, to a count as to which that party was
awarded a favorable judgment.

  [49 FR 48467, Dec. 12, 1984, added effective Feb. 11,
1985; para. (b), 54 FR 29553, July 13, 1989, effective Aug.
20, 1989; paras. (a) & (b) revised, 60 FR 14488, Mar 17,
1995; effective Apr. 21, 1995]

 § 1.659

  (a) Should the Board have knowledge of any ground for
rejecting any application claim not involved in the judgment
of the interference, it may include in its decision a
recommended rejection of the claim. Upon resumption of ex
parte prosecution of the application, the examiner shall be
bound by the recommendation and shall enter and maintain the
recommended rejection unless an amendment or showing of
facts not previously of record is filed which, in the
opinion  of  the  examiner,  overcomes  the  recommended
rejection.

  (b) Should the Board have knowledge of any ground for
reexamination of a patent involved in the interference as to
a  patent  claim  not  involved  in  the  judgment  of  the
interference,  it  may  include  in  its  decision  a
recommendation  to  the  Commissioner  that  the  patent  be
reexamined.  The  Commissioner  will  determine  whether
reexamination will be ordered.

  (c) The Board may make any other recommendation to the
examiner or the Commissioner as may be appropriate.

  [49 FR 48467, Dec. 12, 1984, added effective Feb. 11,
1985]

 § 1.660  Notice of reexamination, reissue, protest, or
litigation.

  (a) When a request for reexamination of a patent involved
in an interference is filed, the patent owner shall notify
the Board within 10 days of receiving notice that the
request was filed.

  (b) When an application for reissue is filed by a
patentee involved in an interference, the patentee shall

 notify the Board within 10 days of the day the application
for reissue is filed.

  (c) When a protest under § 1.291 is filed against an
application involved in an interference, the applicant shall
notify the Board within 10 days of receiving notice that the
protest was filed.

  (d) A party in an interference shall notify the Board
promptly  of  any  litigation  related  to  any  patent  or
application involved in an interference, including any civil
action commenced under 35 U.S.C. 146.

  (e) The notice required by this section is designed to
assist the administrative patent judge and the Board in
efficiently handling interference cases. Failure of a party
to comply with the provisions of this section may result in
sanctions under § 1.616. Knowledge by, or notice to, an
employee of the Office other than an employee of the Board,
of the existence of the reexamination, application for
reissue, protest, or litigation shall not be sufficient. The
notice contemplated by this section is notice addressed to
the  administrative  patent  judge  in  charge  of  the
interference in which the application or patent is involved.

  [49 FR 48467, Dec. 12, 1984, added effective Feb. 11,
1985; para. (e) added, 60 FR 14488, Mar. 17, 1995, effective
Apr. 21, 1995]

 § 1.661  Termination of interference after judgment.

  After a final decision is entered by the Board, an
interference is considered terminated when no appeal (35
U.S.C. 141) or other review (35 U.S.C. 146) has been or can
be taken or had.

  [49 FR 48467, Dec. 12, 1984, added effective Feb. 11,
1985]

 § 1.662  Request for entry of adverse judgment; reissue
filed by patentee.

  (a) A party may, at any time during an interference,
request and agree to entry of an adverse judgment. The
filing by a party of a written disclaimer of the invention
defined  by  a  count,  concession  of  priority  or
unpatentability  of  the  subject  matter  of  a  count,
abandonment  of  the  invention  defined  by  a  count,  or
abandonment of the contest as to a count will be treated as
a request for entry of an adverse judgment against the

applicant or patentee as to all claims which correspond to
the count. Abandonment of an application, other than an
application for reissue having a claim of the patent sought
to be reissued involved in the interference, will be treated
as a request for entry of an adverse judgment against the
applicant as to all claims corresponding to all counts. Upon
the filing by a party of a request for entry of an adverse
judgment, the Board may enter judgment against the party.

  (b) If a patentee involved in an interference files an
application for reissue during the interference and the
reissue  application  does  not  include  a  claim  that
corresponds to a count, judgment may be entered against the
patentee. A patentee who files an application for reissue
which includes a claim that corresponds to a count shall, in
addition to complying with the provisions of § 1.660(b),
timely file a preliminary motion under § 1.633(h) or show
good cause why the motion could not have been timely filed
or would not be appropriate.

  (c) The filing of a statutory disclaimer under 35 U.S.C.
253 by a patentee will delete any statutorily disclaimed
claims from being involved in the interference. A statutory
disclaimer will not be treated as a request for entry of an
adverse judgment against the patentee unless it results in
the deletion of all patent claims corresponding to a count.

  [49 FR 48467, Dec. 12, 1984, added effective Feb. 11,
1985;  para.  (b)  amended  53  FR  23735,  June  23,  1988,
effective Sept. 12, 1988; paras. (a) 7(e) revised, 60 FR
14488, Mar 17, 1995; effective Apr. 21, 1995]

 § 1.663  Status of claim of defeated applicant after
interference.

  Whenever an adverse judgment is entered as to a count
against an applicant from which no appeal (35 U.S.C. 141) or
other review (35 U.S.C. 146) has been or can be taken or
had, the claims of the application corresponding to the
count stand finally disposed of without further action by
the examiner. Such claims are not open to further ex parte
prosecution.

  [49 FR 48467, Dec. 12, 1984, added effective Feb. 11,
1985]

 § 1.664  Action after interference.

  (a) After termination of an interference, the examiner
will promptly take such action in any application previously
involved in the interference as may be necessary. Unless
entered  by  order  of  an  administrative  patent  judge,
amendments presented during the interference shall not be
entered, but may be subsequently presented by the applicant
subject  to  the  provisions  of  this  subpart  provided
prosecution of the application is not otherwise closed.

  (b) After judgment, the application of any party may be
held  subject  to  further  examination,  including  an
interference with another application.

  [49 FR 48467, Dec. 12, 1984, 50 FR 23124, May 31, 1985,
added effective Feb. 11, 1985; revised, 60 FR 14488, Mar 17,
1995; effective Apr. 21, 1995]

 § 1.665  Second interference.

  A second interference between the same parties will not
be declared upon an application not involved in an earlier
interference for an invention defined by a count of the
earlier interference. See § 1.658(c).

  [49 FR 48468, Dec. 12, 1984, added effective Feb. 11,
1985]

 § 1.666  Filing of interference settlement agreements.

  (a) Any agreement or understanding between parties to an
interference, including any collateral agreements referred
to therein, made in connection with or in contemplation of
the termination of the interference, must be in writing and
a true copy thereof must be filed before the termination of
the interference ( § 1.661) as between the parties to the
agreement or understanding.

  (b) If any party filing the agreement or understanding
under paragraph (a) of this section so requests, the copy
will be kept separate from the file of the interference, and
made  available  only  to  Government  agencies  on  written
request, or to any person upon petition accompanied by the
fee set forth in § 1.17(i) and on a showing of good cause.

  (c)  Failure  to  file  the  copy  of  the  agreement  or
understanding under paragraph (a) of this section will
render  permanently  unenforceable  such  agreement  or
understanding and any patent of the parties involved in the
interference  or  any  patent  subsequently  issued  on  any
application of the parties so involved. The Commissioner
may, however, upon petition accompanied by the fee set forth
in § 1.17(h) and on a showing of good cause for failure to
file within the time prescribed, permit the filing of the
agreement or understanding during the six month period
subsequent to the termination of the interference as between
the parties to the agreement or understanding.

  [49 FR 48468, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR 23124, May 31, 1985; para. (b), 54 FR 6893, Feb.
15, 1989,

 effective Apr. 17, 1989; amended 60 FR 14488 - 536, Mar 17,
1995; amended 60 FR 14488 - 536, Mar 17, 1995; para. (a)
amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995;
para. (b) amended, 60 FR 20195, Apr. 25, 1995, effective
June 8, 1995]

 § 1.671  Evidence must comply with rules.

  (a)  Evidence  consists  of  testimony  and  referenced
exhibits, official records and publications filed under §
1.682,  testimony  and  referenced  exhibits  from  another
interference, proceeding, or action filed under § 1.683,
discovery relied upon under § 1.688, and the specification
(including  claims)  and  drawings  of  any  application  or
patent:

  (1) Involved in the interference.

  (2) To which a party has been accorded benefit in the
notice declaring the interference or by a preliminary motion
granted under § 1.633.

  (3) For which a party has sought, but has been denied,
benefit by a preliminary motion under § 1.633.

  (4) For which benefit was rescinded by a preliminary
motion granted under § 1.633.

  (b) Except as otherwise provided in this subpart, the
Federal  Rules  of  Evidence  shall  apply  to  interference
proceedings. Those portions of the Federal Rules of Evidence
relating to criminal actions, juries, and other matters not
relevant to interferences shall not apply.

  (c) Unless the context is otherwise clear, the following
terms of the Federal Rules of Evidence shall be construed as
follows:

  (1) Courts of the United States, U.S. Magistrate, court,
trial court, or trier of fact means administrative patent
judge or Board as may be appropriate.

  (2) Judge means administrative patent judge.

  (3) Judicial notice means official notice.

  (4) Civil action, civil proceeding, action, or trial mean
interference.

  (5) Appellate court means United States Court of Appeals
for the Federal Circuit or a United States district court
when judicial review is under 35 U.S.C. 146.

  (6) Before the hearing in Rule 703 of the Federal Rules
of Evidence means before giving testimony by affidavit or
oral deposition.

  (7) The trial or hearing in Rules 803(24) and 804(5) of
the Federal Rules of Evidence means the taking of testimony
by affidavit or oral deposition.

  (d) Certification is not necessary as a condition to
admissibility when the record is a record of the Patent and
Trademark Office to which all parties have access.

  (e) A party may not rely on an affidavit (including any
exhibits),  patent  or  printed  publication  previously
submitted by the party under § 1.639(b) unless a copy of the
affidavit, patent or printed publication has been served and
a written notice is filed prior to the close of the party's
relevant testimony period stating that the party intends to
rely on the affidavit, patent or printed publication. When
proper notice is given under this paragraph, the affidavit,
patent or printed publica tion shall be deemed as filed
under § 1.640(b), 1.640(e)(3), 1.672(b) or 1.682(a), as
appropriate.

  (f) The significance of documentary and other exhibits
identified by a witness in an affidavit or during oral
deposition  shall  be  discussed  with  particularity  by  a
witness.

  (g) A party must file a motion ( § 1.635) seeking
permission from an administrative patent judge prior to
compelling testimony or production of documents or things
under 35 U.S.C. 24 or from an opposing party. The motion

shall describe the general nature and the relevance of the
testimony, document, or thing. If permission is granted, the
party shall notice a deposition under § 1.673 and may
proceed to take testimony.

  (h) A party must file a motion ( § 1.635) seeking
permission from an administrative patent judge prior to

 compelling testimony or production of documents or things
in a foreign country.

  (1) In the case of testimony, the motion shall:

  (i) Describe the general nature and relevance of the
testimony;

  (ii) Identify the witness by name or title;

  (iii) Identify the foreign country and explain why the
party believes the witness can be compelled to testify in
the  foreign  country,  including  a  description  of  the
procedures that will be used to compel the testimony in the
foreign country and an estimate of the time it is expected
to take to obtain the testimony; and

  (iv) Demonstrate that the party has made reasonable
efforts to secure the agreement of the witness to testify in
the United States but has been unsuccessful in obtaining the
agreement, even though the party has offered to pay the
expenses of the witness to travel to and testify in the
United States.

  (2) In the case of production of a document or thing, the
motion shall:

  (i) Describe the general nature and relevance of the
document or thing;

  (ii) Identify the foreign country and explain why the
party believes production of the document or thing can be
compelled in the foreign country, including a description of
the procedures that will be used to compel production of the
document or thing in the foreign country and an estimate of
the time it is expected to take to obtain production of the
document or thing; and

  (iii) Demonstrate that the party has made reasonable
efforts to obtain the agreement of the individual or entity
having possession, custody, or control of the document to
produce the document or thing in the United States but has
been unsuccessful in obtaining that agreement, even though
the party has offered to pay the expenses of producing the
document or thing in the United States.

  (i) Evidence which is not taken or sought and filed in
accordance with this subpart shall not be admissible.

  (j) The weight to be given deposition testimony taken in
a foreign country will be determined in view of all the
circumstances, including the laws of the foreign country
governing the testimony. Little, if any, weight may be given
to deposition testimony taken in a foreign country unless
the  party  taking  the  testimony  proves  by  clear  and
convincing evidence, as a matter of fact, that knowingly
giving false testimony in that country in connection with an

interference proceeding in the

 United States Patent and Trademark Office is punishable
under the laws of that country and that the punishment in
that country for such false testimony is comparable to or
greater than the punishment for perjury committed in the
United States. The administrative patent judge and the
Board, in determining foreign law, may consider any relevant
material or source, including testimony, whether or not
submitted by a party or admissible under the Federal Rules
of Evidence.

  [49 FR 48468, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR 23124, May 31, 1985; paras. (a), (c)(1), (c)(2),
(c)(6), (c)(7), (e) - (j) revised, 60 FR 14488, Mar. 17,
1995; effective Apr. 21, 1995]

 § 1.672  Manner of taking testimony.

  (a) Unless testimony must be compelled under 35 U.S.C.
24, compelled from a party, or compelled in a foreign
country, testimony of a witness shall be taken by affidavit
in accordance with this subpart. Testimony which must be
compelled under 35 U.S.C. 24, compelled from a party, or
compelled in a foreign country shall be taken by oral
deposition.

  (b)  A  party  presenting  testimony  of  a  witness  by
affidavit shall, within the time set by the administrative
patent judge for serving affidavits, file a copy of the
affidavit or, if appropriate, notice under § 1.671(e). If
the affidavit relates to a party's case - in - chief, it
shall be filed or noticed no later than the date set by an
administrative patent judge for the party to file affidavits
for its case - in - chief. If the affidavit relates to a
party's case - in - rebuttal, it shall be filed or noticed
no later than the date set by an administrative patent judge
for than the date set by an administrative patent judge for
the party to file affidavits for its case - in - rebuttal. A
party shall not be entitled to rely on any document referred
to in the affidavit unless a copy of the document is filed
with the affidavit. A party shall not be entitled to rely on
any thing mentioned in the affidavit unless the opponent is
given reasonable access to the thing. A thing is something
other than a document. The pages of affidavits filed under
this paragraph and of any other testimony filed therewith
under § 1.683(a) and 1.688(a) shall, to the extent possible,
be given sequential numbers which shall also serve as the
record page numbers for the affidavits and other testimony
in the party's record to be filed under § 1.653. Exhibits
identified in the affidavits or in any other testimony filed
under § 1.683(a) and 1.688(a) and any official records and
printed publica tions filed under § 1.682(a) shall, to the
extent possible, be given sequential exhibit numbers, which
shall also serve as the exhibit numbers when the exhibits
are filed with the party's record. The affidavits, testimony
filed under § 1.683(a) and 1.688(a) and exhibits shall be
accompanied by an index of the names of the witnesses,
giving the number of the page where the testimony of each
witness begins, and by an index of the exhibits briefly
describing the nature of each exhibit and giving the number
of the page where each exhibit is first identified and
offered into evidence.

  (c) If an opponent objects to the admissibility of any

evidence contained in or submitted with an affidavit filed
under paragraph (b) of this section, the opponent must, no
later than the date set by the administrative patent judge
for filing objections under this paragraph, file objections
stating with particularity the nature of each objection. An
opponent that fails to object to the admissibility of the
evidence contained in or submitted with an affidavit on a
ground that could have been raised in a timely objection
under this paragraph will not be entitled to move under §
1.656(h) to suppress the evidence on that ground. If an
opponent timely files objections, the party may, within 20
days of the due date for filing objections, file one or more
supplemental  affidavits,  official  records  or  printed
publications to overcome the objections. No objection to the
admissibility of the supplemental evidence shall be made,
except as provided by § 1.656(h). The pages of supplemental
affidavits filed under this paragraph shall, to the extent
possible, be sequentially numbered beginning with the number
following the last page number of the party's testimony
submitted under paragraph (b) of this section. The page
numbers assigned to the supplemental affidavits shall also
serve as the record page numbers for the supplemental
affidavits in the party's record filed under § 1.653.
Additional exhibits identified in supplemental affidavits
and  any  supplemental  official  records  and  printed
publications  shall,  to  the  extent  possible,  be  given
sequential numbers beginning with the number following the
last number of the exhibits submitted under paragraph (b) of
this section. The exhibit numbers shall also serve as the
exhibit numbers when the exhibits are filed with the party's
record. The supplemental affidavits shall be accompanied by
an index of the names of the witnesses and an index of
exhibits of the type specified in paragraph (b) of this
section.

  (d) After the time expires for filing objections and
supplemental affidavits, or earlier when appropriate, the
administrative patent judge shall set a time within which
any opponent may file a request to cross - examine an
affiant on oral deposition. If any opponent requests cross -
examination  of  an  affiant,  the  party  shall  notice  a
deposition at a reasonable location within the United States
under § 1.673(e) for the purpose of cross - examination by
any opponent. Any redirect and recross shall take place at
the deposition. At any deposition for the purpose of cross -
examination of a witness, the party shall not be entitled to
rely on any document or thing not mentioned in one or more
of the affidavits filed under paragraphs (b) and (c) of this
section, except to the extent necessary to conduct proper
redirect. The party who gives notice of a deposition shall
be responsible for providing a translator if the witness
does not testify in English, for obtaining a court reporter,
and for filing a certified transcript of the deposition as
required by § 1.676. Within 45 days of the close of the
period for taking cross - examination, the party shall serve
(but not file) a copy of each transcript on each opponent
together with copies of any additional documentary exhibits
identified by the witness during the deposition. The pages
of the transcripts served under this paragraph shall, to the
extent possible, be sequentially numbered beginning with the
number  following  the  last  page  number  of  the  party's
supplemental affidavits submitted under paragraph (c) of
this section. The numbers assigned to the transcript pages
shall  also  serve  as  the  record  page  numbers  for  the
transcripts in the party's record filed under § 1.653.

Additional exhibits identified in the transcripts, shall, to
the extent possible, be given sequential numbers beginning
with the number following the last number of the exhibits
submitted under paragraphs (b) and (c) of this section. The
exhibit numbers assigned to the additional exhibits shall
also serve as the exhibit numbers when those exhibits are
filed with the party's record. The deposition transcripts
shall be accompanied by an index of the names of the
witnesses, giving the number of the page where cross -
examination, redirect and recross of each witness begins,
and an index of exhibits of the type specified in paragraph
(b) of this section.

  (e) [Reserved]

  (f) When a deposition is authorized to be taken within
the United States under this subpart and if the parties
agree in writing, the deposition may be taken in

 any place within the United States, before any person
authorized to administer oaths, upon any notice, and in any
manner,  and  when  so  taken  may  be  used  like  other
depositions.

  (g) If the parties agree in writing, the affidavit
testimony  of  any  witness  may  be  submitted  without
opportunity for cross - examination.

  (h) If the parties agree in writing, testimony may be
submitted in the form of an agreed statement setting forth
how a particular witness would testify, if called, or the
facts in the case of one or more of the parties. The agreed
statement shall be filed in the Patent and Trademark Office.
See § 1.653(a).

  (i) In an unusual circumstance and upon a showing that
testimony cannot be taken in accordance with the provisions
of this subpart, an administrative patent judge upon motion
( § 1.635) may authorize testimony to be taken in another
manner.

  [49 FR 48468, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR 23124, May 31, 1985; revised, 60 FR 14488, Mar.
17, 1995; effective Apr. 21, 1995]

 § 1.673  Notice of examination of witness.

  (a) A party authorized to take testimony of a witness by
deposition shall, after complying with paragraphs (b) and
(g) of this section, file and serve a single notice of
deposition stating the time and place of each deposition to
be taken. Depositions to be taken in the United States may
be noticed for a reasonable time and place in the United
States. A deposition may not be noticed for any other place
without approval of an administrative patent judge The
notice shall specify the name and address of each witness
and the general nature of the testimony to be given by the
witness. If the name of a witness is not known, a general
description  sufficient  to  identify  the  witness  or  a
particular class or group to which the witness belongs may
be given instead.

  (b) Unless the parties agree or an administrative patent
judge or the Board determine otherwise, a party shall serve,
but not file, at least three working days prior to the

conference required by paragraph (g) of this section, if
service is made by hand or Express Mail, or at least 14 days
prior to the conference if service is made by any other
means, the following:

  (1) A list and copy of each document in the party's
possession, custody, or control and upon which the party
intends to rely at any deposition and

  (2) A list of and a proffer of reasonable access to
things in the party's possession, custody, or control and
upon which the party intends to rely at any deposition.

  (c) A party shall not be permitted to rely on any witness
not listed in the notice, or any document not served or any
thing not listed as required by paragraph (b) of this
section:

  (1) Unless all opponents agree in writing or on the
record to permit the party to rely on the witness, document
or thing, or

  (2) Except upon a motion ( § 1.635) promptly filed which
is accompanied by any proposed notice, additional documents,
or  lists  and  which  shows  good  cause  why  the  notice,
documents, or lists were not served in accordance with this
section.

  (d) Each opponent shall have a full opportunity to attend
a deposition and cross - examine.

  (e) A party who has presented testimony by affidavit and
is required to notice depositions for the purpose of cross -
examination under § 1.672(b), shall, after complying with
paragraph (g) of this section, file and serve a single
notice of deposition stating the time and place of each
cross - examination deposition to be taken.

  (f) The parties shall not take depositions in more than
one place at the same time or so nearly at the same time
that reasonable opportunity to travel from one place of
deposition to another cannot be had.

  (g) Before serving a notice of deposition and after
complying with paragraph (b) of this section, a party shall
have an oral conference with all opponents to attempt to
agree on a mutually acceptable time and place for conducting
the deposition. A certificate shall appear in the notice
stating that the oral conference took place or explaining
why the conference could not be had. If the parties cannot
agree to a mutually acceptable place and time for conducting
the deposition at the conference, the parties shall contact
an administrative patent judge who shall then designate the
time and place for conducting the deposition.

  (h) A copy of the notice of deposition shall be attached
to the certified transcript of the deposition filed under §
1.676(a).

  [49 FR 48469, Dec. 12, 1984, added effective Feb. 11,
1985; paras. (a) - (e) & (g) revised, 60 FR 14488, Mar. 17,
1995; effective Apr. 21, 1995]

 § 1.674  Persons before whom depositions may be taken.

  (a)  A  deposition  shall  be  taken  before  an  officer
authorized to administer oaths by the laws of the United
States or of the place where the examination is held.

  (b) Unless the parties agree in writing, the following
persons shall not be competent to serve as an officer:

  (1) A relative or employee of a party,

  (2) a relative or employee of an attorney or agent of a
party, or

  (3) a person interested, directly or indirectly, in the
interference  either  as  counsel,  attorney,  agent,  or
otherwise.

  [49 FR 48469, Dec. 12, 1984, added effective Feb. 11,
1985; para. (a) revised, 60 FR 14488, Mar. 17, 1995;
effective Apr. ,21, 1995]

 § 1.675  Examination of witness, reading and signing
transcript of deposition.

  (a) Each witness before giving an oral deposition shall
be duly sworn according to law by the officer before whom
the deposition is to be taken.

  (b)  The  testimony  shall  be  taken  in  answer  to
interrogatories with any questions and answers recorded in
their regular order by the officer or by some other person,
who shall be subject to the provisions of § 1.674(b), in the
presence of the officer unless the presence of the officer
is waived on the record by agreement of all parties.

  (c) All objections made at the time of the deposition to
the qualifications of the officer taking the deposition, the
manner of taking it, the evidence presented, the conduct of
any party, and any other objection to the proceeding shall
be noted on the record by the officer. Evidence objected to
shall be taken subject to any objection.

  (d) Unless the parties agree in writing or waive reading
and  signature  by  the  witness  on  the  record  at  the
deposition,  when  the  testimony  has  been  transcribed  a
transcript of the deposition shall, unless the witness
refuses  to  read  and/or  sign  the  transcript  of  the
deposition, be read by the witness and then signed by the
witness in the form of:

  (1) An affidavit in the presence of any notary or

  (2) A declaration.

  [49 FR 48469, Dec. 12, 1984, added effective Feb. 11,
1985;  para.  (d)  revised,  60  FR  14488,  Mar  17,  1995,
effective Apr. 21, 1995]

 § 1.676  Certification and filing by officer, marking 
exhibits.

  (a) The officer shall prepare a certified transcript of
the  deposition  by  attaching  to  a  transcript  of  the
deposition a copy of the notice of deposition, any exhibits
to be annexed to the certified transcript, and a certificate
signed and sealed by the officer and showing:

  (1) The witness was duly sworn by the officer before
commencement of testimony by the witness.

  (2) The transcript is a true record of the testimony
given by the witness.

  (3) The name of the person by whom the testimony was
recorded and, if not recorded by the officer, whether the
testimony was recorded in the presence of the officer.

  (4) The presence or absence of any opponent.

  (5) The place where the deposition was taken and the day
and hour when the deposition began and ended.

  (6) The officer is not disqualified under § 1.674.

  (b) If the parties waived any of the requirements of
paragraph (a) of this section, the certificate shall so
state.

  (c)  The  officer  shall  note  on  the  certificate  the
circumstances under which a witness refuses to sign a
transcript.

  (d) Unless the parties agree otherwise in writing or on
the record at the deposition, the officer shall securely
seal the certified transcript in an envelope endorsed with
the style of the interference (e.g., Smith v. Jones), the
interference number, the name of the witness, and the date
of sealing and shall promptly forward the envelope to BOX
INTERFERENCE,  Commissioner  of  Patents  and  Trademarks,
Washington, D.C. 20231. Documents and things produced for
inspection during the examination of a witness, shall, upon
request of a party, be marked for identification and annexed
to the certified transcript, and may be inspected and copied
by any party, except that if the person producing the
documents and things desires to retain them, the person may:
(1) offer copies to be marked for identification and annexed
to the certified transcript and to serve thereafter as
originals  if  the  person  affords  to  all  parties  fair
opportunity to verify the copies by comparison with the
originals or (2) offer the originals to be marked for
identification, after giving each party an opportunity to
inspect and copy them, in which event the documents and
things may be used in the same manner as if annexed to the
certified

 transcript. The exhibits shall then be filed as specified
in § 1.653(i). If the weight or bulk of a document or thing
shall reasonably prevent the document or thing from being
annexed to the certified transcript, it shall, unless waived
on  the  record  at  the  deposition  of  all  parties,  be
authenticated  by  the  officer  and  forwarded  to  the
Commissioner in a separate package marked and addressed as
provided in this paragraph.

  [49 FR 48469, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR 23124, May 31, 1985; para. (a)(40 revised, 60 FR
14488, Mar 17, 1995, effective Apr. 21, 1995]

 § 1.677  Form of an affidavit or a transcript of 
deposition.

  (a) An affidavit or a transcript of a deposition must be
on opaque, unglazed, durable paper approximately 21.8 by
27.9 cm. (8 « by 11 inches) in size (letter size). The
printed matter shall be double - spaced on one side of the
paper in not smaller than 11 point type with a margin of 3.8
cm. (1 « inches) on the left - hand side of the page. The
pages of each transcript must be consecutively numbered and
the name of the witness shall appear at the top of each page
( § 1.653(e)). In transcripts of depositions, the questions
propounded to each witness must be consecutively numbered
unless paper with numbered lines is used and each question
must be followed by its answer.

  (b) Exhibits must be numbered consecutively to the extent
possible and each must be marked as required by § 1.653(i).

  [49 FR 48470, Dec. 12, 1984, added effective Feb. 11,
1985; revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21,
1995]

 § 1.678  Time for filing transcript of deposition.

  Unless otherwise ordered by an administrative patent
judge, a certified transcript of a deposition must be filed
in the Patent and Trademark Office within one month after
the date of deposition. If a party refuses to file a
certified transcript, the administrative patent judge or the
Board may take appropriate action under § 1.616. If a party
refuses to file a certified transcript, any opponent may
move for leave to file the certified transcript and include
a copy of the transcript as part of the opponent's record.

  [49 FR 48470, Dec. 12, 1984, added effective Feb. 11,
1985; revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21,
1995]

 § 1.679  Inspection of transcript.

  A certified transcript of a deposition filed in the
Patent and Trademark Office may be inspected by any party.
The certified transcript may not be removed from the Patent
and Trademark Office unless authorized by an administrative
patent judge upon such terms as may be appropriate.

  [49 FR 48470, Dec. 12, 1984, added effective Feb. 11,
1985; revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21,
1995]

 § 1.682  Official records and printed publications.

  (a) A party may introduce into evidence, if otherwise
admissible, an official record or printed publication not
identified in an affidavit or on the record during an oral
deposition of a witness, by filing a copy of the official
record or printed publication or, if appropriate, a no tice
under  §  1.671(e).  If  the  official  record  or  printed
publication relates to the party's case - in - chief, it
shall be filed or noticed together with any affidavits filed
by the party under § 1.672(b) for its case - in - chief or,
if the party does not serve any affidavits under § 1.672(b)
for its case - in - chief, no later than the date set by an
administrative patent judge for the party to file affidavits
under § 1.672(b) for its case - in - chief. If the official
record or printed publication relates to rebuttal, it shall
be filed or noticed together with any affidavits filed by

the party under § 1.672(b) for the its case - in - rebuttal
or, if the party does not file any affidavits under §
1.672(b) for its case - in - rebuttal, no later than the
date set by an administrative patent judge for the party to
file affidavits under § 1.672(b) for its case - in -
rebuttal. Official records and printed publications filed
under this paragraph shall be assigned sequential exhibit
numbers by the party in the manner set forth in § 1.672(b).
The  official  record  and  printed  publications  shall  be
accompanied by a paper which shall:

  (1) Identify the official record or printed publication;

  (2) Identify the portion thereof to be introduced in
evidence; and

  (3) Indicate generally the relevance of the portion
sought to be introduced in evidence.

  (b) [Reserved]

  (c) Unless otherwise ordered by an administrative patent
judge, any written objection by an opponent to the paper or
to the admissibility of the official record or printed
publication shall be filed no later than the date set by the
administrative  patent  judge  for  the  opponent  to  file
objections under § 1.672(c) to affidavits submitted by the
party under § 1.672(b). An opponent who fails to object to
the  admissibility  of  the  official  record  or  printed
publication on a ground that could have been raised in a
timely objection under this paragraph will not be entitled
to move under § 1.656(h) to suppress the evidence on that
ground. If an opponent timely files an objection, the party
may respond by filing one or more supplemental affidavits,
official records or printed publications, which must be
filed together with any supplemental evidence filed by the
party under § 1.672(c) or, if the party does not file any
supplemental evidence under § 1.672(c), no later than the
date set by an administrative patent judge for the party to
file supplemental affidavits under § 1.672(c). No objection
to the admissibility of the supplemental evidence shall be
made, except as provided by § 1.656(h). The pages of
supplemental affidavits and the exhibits filed under this
section shall be sequentially numbered by the party in the
manner set forth in § 1.672(c). The supplemental affidavits
and exhibits shall be accompanied by an index of witnesses
and an index of exhibits of the type required by § 1.672(b).

  (d) Any request by an opponent to cross - examine on oral
deposition the affiant of a supplemental affidavit submitted
under paragraph (c) of this section shall be filed no later
than the date set by the administrative patent judge for the
opponent to file a request to cross - examine an affiant
with respect to an affidavit served by the party under §
1.672(b)  or  (c).  If  any  opponent  requests  cross  -
examination of an affiant, the party shall file notice of a
deposition for a reasonable location within the United
States  under  §  1.673(e)  for  the  purpose  of  cross  -
examination by any opponent. Any redirect and recross shall
take place at the deposition. At any deposition for the
purpose of cross - examination of a witness, the party shall
not be entitled to rely on any document or thing not
mentioned in one or more of the affidavits filed under this
paragraph, except to the extent necessary to conduct proper
redirect. The party who gives notice of a deposition shall

be responsible for providing a translator if the witness
does not testify in English, for obtaining a court reporter,
and for filing a certified transcript of the deposition as
required by § 1.676. Within 45 days of the close of the
period for taking cross - examination, the party shall serve
(but not file) a copy of each deposition transcript on each
opponent together with copies of any additional documentary
exhibits identified by the witness during the deposition.
The pages of deposition transcripts and exhibits served
under this paragraph shall be sequentially numbered by the
party in the manner set forth in § 1.672(d). The deposition
transcripts shall be accompanied by an index of the names of
the witnesses, giving the number of the page where cross -
examination, redirect and recross of each witness begins,
and an index of exhibits of the type specified in §
1.672(b).

  [49 FR 48470, Dec. 12, 1984, added effective Feb. 11,
1985; revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21,
1995]

 § 1.683  Testimony in another interference, proceeding,
or action.

  (a) A party may introduce into evidence, if otherwise
admissible, testimony by affidavit or oral deposition and
referenced exhibits from another interference, proceeding,
or action involving the same parties by filing a copy of the
affidavit or a copy of the transcript of the oral deposition
and the referenced exhibits. If the testimony and referenced
exhibits relate to the party's case - in - chief, they shall
be filed together with any affidavits served by the party
under § 1.672(b) for its case - in - chief or, if the party
does not file any affidavits under § 1.672(b) for its case -
in - chief, no later than the date set by an administrative
patent judge for the party to file affidavits under §
1.672(b) for its case - in - chief. If the testimony and
referenced exhibits relate to rebuttal, they shall be filed
together with any affidavits served by the party under §
1.672(b) for its case - in - rebuttal or, if the party does
not file any affidavits under § 1.672(b) for its case - in -
rebuttal, no later than the date set by an administrative
patent judge for the party to file affidavits under §
1.672(b) for its case - in - rebuttal. Pages of affidavits
and deposition transcripts served under this paragraph and
any  new  exhibits  served  therewith  shall  be  assigned
sequential numbers by the party in the manner set forth in §
1.672(b). The testimony shall be accompanied by a paper
which specifies with particularity the exact testimony to be
used and demonstrates its relevance.

  (b) Unless otherwise ordered by an administrative patent
judge, any written objection by an opponent to the paper or
the admissibility of the testimony and referenced exhibits
filed under this section shall be filed no later than the
date set by the administrative patent judge for the opponent
to file any objections under § 1.672(c) to affidavits
submitted by the party under § 1.672(b). An opponent who
fails to challenge the admissibility of the testimony or
referenced exhibits on a ground that could have been raised
in a timely objection under this paragraph will not be
entitled to move under § 1.656(h) to suppress the evidence
on that ground. If an opponent timely files an objection,
the  party  may  respond  with  one  or  more  supplemental
affidavits, official records or printed publications, which

must be filed together with any supplemental evidence filed
by the party under § 1.672(c) or, if the party does not file
any supplemental evidence under § 1.672(c), no later than
the date set by an administrative patent judge for the party
to file supplemental evidence under § 1.672(c). No objection
to  the  admissibility  of  the  evidence  contained  in  or
submitted with a supplemental affidavit shall be made,
except as provided by § 1.656(h). The pages of supplemental
affidavits and the exhibits filed under this section shall
be sequentially numbered by the party in the manner set
forth  in  §  1.672(c).  The  supplemental  affidavits  and
exhibits shall be accompanied by an index of witnesses and
an index of exhibits of the type required by § 1.672(b).

  (c) Any request by an opponent to cross - examine on oral
deposition the affiant of an affidavit or supplemental
affidavit submitted under paragraph (a) or (b) of this
section shall be filed no later than the date set by the
administrative patent judge for the opponent to file a
request to cross - examine an affiant with respect to an
affidavit filed by the party under § 1.672(b) or (c). If any
opponent requests cross - examination of an affiant, the
party shall file a notice of deposition for a reasonable
location within the United States under § 1.673(e) for the
purpose of cross - examination by any opponent. Any redirect
and recross shall take place at the deposition. At any
deposition for the purpose of cross - examination of a
witness, the party shall not be entitled to rely on any
document or thing not mentioned in one or more of the
affidavits filed under this paragraph, except to the extent
necessary to conduct proper redirect. The party who gives
notice of a deposition shall be responsible for providing a
translator if the witness does not testify in English, for
obtaining a court reporter, and for filing a certified
transcript of the deposition as required by § 1.676. Within
45 days of the close of the period for taking cross -
examination, the party shall serve (but not file) a copy of
each deposition transcript on each opponent together with
copies of any additional documentary exhibits identified by
the witness during the deposition. The pages of deposition
transcripts and exhibits served under this paragraph shall
be sequentially numbered by the party in the manner set
forth in § 1.672(d). The deposition transcripts shall be
accompanied by an index of the names of the witnesses,
giving the number of the page where cross - examination,
redirect and recross of each witness begins, and an index of
exhibits of the type specified in § 1.672(b).

  [49 FR 48470, Dec. 12, 1984, added effective Feb. 11,
1985; revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21,
1995]

 § 1.684  [Reserved]

 § 1.685  Errors and irregularities in depositions.

  (a) An error in a notice for taking a deposition is
waived unless a motion ( § 1.635) to quash the notice is
filed  as  soon  as  the  error  is,  or  could  have  been,
discovered.

  (b) An objection to a qualification of an officer taking
a deposition is waived unless:

  (1) The objection is made on the record of the deposition

before a witness begins to testify.

  (2) If discovered after the deposition, a motion ( §
1.635) to suppress the deposition is filed as soon as the
objection is, or could have been, discovered.

  (c) An error or irregularity in the manner in which
testimony is transcribed, a certified transcript is signed
by a witness, or a certified transcript is prepared, signed,
certified, sealed, endorsed, forwarded, filed, or otherwise
handled by the officer is waived unless a motion ( § 1.635)
to suppress the deposition is filed as soon as the error of
irregularity is, or could have been, discovered.

  (d) An objection to the deposition on any grounds, such
as the competency of a witness, admissibility of evidence,
manner of taking the deposition, the form of questions and
answers, any oath or affirmation, or conduct of any party at
the deposition, is waived unless an objection is made on the
record at the deposition stating the specific ground of
objection. Any objection which a party wishes considered by
the Board at final hearing shall be included in a motion to
suppress under § 1.656(h).

  (e) Nothing in this section precludes taking notice of
plain errors affecting substantial rights although they were
not brought to the attention of an administrative patent
judge or the Board.

  [49FR 48471, Dec. 12, 1984, added effective Feb. 11,
1985; 50 FR 23124, May 31, 1985; amended 60 FR 14488 - 536,
Mar 17, 1995]

 § 1.687  Additional discovery.

  (a) A party is not entitled to discovery except as
authorized in this subpart.

  (b) Where appropriate, a party may obtain production of
documents and things during cross - examination of an
opponent's witness or during the testimony period of the
party's case - in - rebuttal.

  (c) Upon a motion ( § 1.635) brought by a party within
the time set by an administrative patent judge under § 1.651
or thereafter as authorized by § 1.645 and upon a showing
that the interest of justice so requires, an administrative
patent judge may order additional discovery, as to matters
under the control of a party within the scope of the Federal
Rules  of  Civil  Procedure,  specifying  the  terms  and
conditions  of  such  additional  discovery.  See  §  1.647
concerning translations of documents in a foreign language.

  (d) The parties may agree to discovery among themselves
at any time. In the absence of an agreement, a motion for
additional discovery shall not be filed except as authorized
by this subpart.

  [49 FR 48471, Dec. 12, 1984, added effective Feb. 11,
1985; paras. (d) & (e) revised, 60 FR 14488, Mar 17, 1995,
effective Apr. 21, 1995]

 § 1.688  Use of discovery.

  (a) If otherwise admissible, a party may introduce into

evidence, an answer to a written request for an admission or
an answer to a written interrogatory obtained by discovery
under § 1.687 by filing a copy of the request for admission
or the written interrogatory and the answer. If the answer
relates to a party's case - in - chief, the answer shall be
served together with any affidavits served by the party
under § 1.672(b) for its case - in - chief or, if the party
does not serve any affidavits under § 1.672(b) for its case
-  in  -  chief,  no  later  than  the  date  set  by  an
administrative  patent  judge  for  the  party  to  serve
affidavits under § 1.672(b) for its case - in - chief. If
the answer relates to the party's rebuttal, the answer shall
be served together with any affidavits served by the party
under § 1.672(b) for the its case - in - rebuttal or, if the
party does not serve any affidavits under § 1.672(b) for its
case - in - rebuttal, no later than the date set by an
administrative  patent  judge  for  the  party  to  serve
affidavits under § 1.672(b) for its case - in - rebuttal.

  (b) Unless otherwise ordered by an administrative patent
judge, any written objection to the admissibility of

 an answer shall be filed no later than the date set by the
administrative patent judge for the opponent to file any
objections under § 1.672(c) to affidavits submitted by the
party under § 1.672(b). An opponent who fails to challenge
the admissibility of an answer on a ground that could have
been raised in a timely objection under this paragraph will
not be entitled to move under § 1.656(h) to suppress the
evidence on that ground. If an opponent timely files an
objection,  the  party  may  respond  with  one  or  more
supplemental affidavits, which must be filed together with
any  supplemental  evidence  filed  by  the  party  under  §
1.672(c) or, if the party does not file any supplemental
evidence under § 1.672(c), no later than the date set by an
administrative  patent  judge  for  the  party  to  file
supplemental affidavits under § 1.672(c). No objection to
the admissibility of the evidence contained in or submitted
with a supplemental affidavit shall be made, except as
provided by § 1.656(h). The pages of supplemental affidavits
and  the  exhibits  filed  under  this  section  shall  be
sequentially numbered by the party in the manner set forth
in § 1.672(c). The supplemental affidavits and exhibits
shall be accompanied by an index of witnesses and an index
of exhibits of the type required by § 1.672(b).

  (c) Any request by an opponent to cross - examine on oral
deposition the affiant of a supplemental affidavit submitted
under paragraph (b) of this section shall be filed no later
than the date set by the administrative patent judge for the
opponent to file a request to cross - examine an affiant
with respect to an affidavit filed by the party under §
1.672(b)  or  (c).  If  any  opponent  requests  cross  -
examination of an affiant, the party shall file a notice of
deposition for a reasonable location within the United
States  under  §  1.673(e)  for  the  purpose  of  cross  -
examination by any opponent. Any redirect and recross shall
take place at the deposition. At any deposition for the
purpose of cross - examination of a witness, the party shall
not be entitled to rely on any document or thing not
mentioned in one or more of the affidavits filed under this
paragraph, except to the extent necessary to conduct proper
redirect. The party who gives notice of a deposition shall
be responsible for providing a translator if the witness
does not testify in English, for obtaining a court reporter,

and for filing a certified transcript of the deposition as
required by § 1.676. Within 45 days of the close of the
period for taking cross - examination, the party shall serve
(but not file) a copy of each deposition transcript on each
opponent together with copies of any additional documentary
exhibits identified by the witness during the deposition.
The pages of deposition transcripts and exhibits served
under this paragraph shall be sequentially numbered by the
party in the manner set forth in § 1.672(d). The deposition
transcripts shall be accompanied by an index of the names of
the witnesses, giving the number of the page where cross -
examination, redirect and recross of each witness begins,
and an index of exhibits of the type specified in §
1.672(b).

  (d) A party may not rely upon any other matter obtained
by discovery unless it is introduced into evidence under
this subpart.

  [49 FR 48471, Dec. 12, 1984, added effective Feb.11,
1985; revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21,
1995]

 § 1.690  Arbitration of interferences.

  (a) Parties to a patent interference may determine the
interference or any aspect thereof by arbitration. Such
arbitration shall be governed by the provisions of Title 9,
United States Code. The parties must notify the Board in
writing of their intention to arbitrate. An agreement to
arbitrate must be in writing, specify the issues to be
arbitrated, the name of the arbitrator or a date not more
than thirty (30) days after the execution of the agreement
for the selection of the arbitrator, and provide that the
arbitrator's award shall be binding on the parties and that
judgment thereon can be entered by the Board. A copy of the
agreement must be filed within twenty (20) days after its
execution. The parties shall be solely responsible for the
selection of the arbitrator and the rules for conducting
proceedings before the arbitrator. Issues not disposed of by
the arbitration will be resolved in accordance with the
procedures established in this subpart, as determined by the
administrative patent judge.

  (b) An arbitration proceeding under this section shall be
conducted within such time as may be authorized on a case -
by - case basis by an administrative patent judge.

  (c) An arbitration award will be given no consideration
unless it is binding on the parties, is in writing and
states in a clear and definite manner the issue or issues
arbitrated and the disposition of each issue The award may
include a statement of the grounds and reasoning in support
thereof.  Unless  otherwise  ordered  by  an  administrative
patent judge, the parties shall give notice to the

 Board of an arbitration award by filing within twenty (20)
days from the date of the award a copy of the award signed
by the arbitrator or arbitrators. When an award is timely
filed,  the  award  shall,  as  to  the  parties  to  the
arbitration, be dispositive of the issue or issues to which
it relates.

  (d) An arbitration award shall not preclude the Office
from determining patentability of any invention involved in

the interference.

  (e)  Proof  may  be  in  the  form  of  patents,  printed
publications, and affidavits.

  [Added 52 FR 13838, Apr. 27, 1987; paras. (a) - (c)
revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995]

 § 1.701  Extension of patent term due to prosecution 
delay.

  (a) A patent, other than for designs, issued on an
application filed on or after June 8, 1995, is entitled to
extension of the patent term if the issuance of the patent
was delayed due to:

  (1) interference proceedings under 35 U.S.C. 135(a);
and/or

  (2) the application being placed under a secrecy order
under 35 U.S.C. 181; and/or

  (3) appellate review by the Board of Patent Appeals and
Interferences or by a Federal court under 35 U.S.C. 141 or
145, if the patent was issued pursuant to a decision
reversing an adverse determination of patentability and if
the patent is not subject to a terminal disclaimer due to
the issuance of another patent claiming subject matter that
is not patentably distinct from that under appellate review.

  (b) The term of a patent entitled to extension under
paragraph (a) of this section shall be extended for the sum
of the periods of delay calculated under paragraphs (c)(1),
(c)(2), (c)(3), and (d) of this section, to the extent that
these periods are not overlapping, up to a maximum of five
years. The extension will run from the expiration date of
the patent.

  (c)(1) The period of delay under paragraph (a)(1) of this
section for an application is the sum of the following
periods, to the extent that the periods are not overlapping:

  (i) with respect to each interference in which the
application was involved, the number of days, if any, in the
period beginning on the date the interference was declared
or redeclared to involve the application in the interference
and ending on the date that the interference was terminated
with respect to the application; and

  (ii) the number of days, if any, in the period beginning
on the date prosecution in the application was suspended by
the  Patent  and  Trademark  Office  due  to  interference
proceedings  under  35  U.S.C.  135(a)  not  involving  the
application and ending on the date of the termination of the
suspension.

  (2) The period of delay under paragraph (a)(2) of this
section for an application is the sum of the following
periods, to the extent that the periods are not overlapping:

  (i) the number of days, if any, the application was
maintained in a sealed condition under 35 U.S.C. 181;

  (ii) the number of days, if any, in the period beginning

on the date of mailing of an examiner's answer under § 1.193
in the application under secrecy order and ending on the
date the secrecy order and any renewal thereof was removed;

  (iii) the member of days, if any, in the period beginning
on the date applicant was notified that an interference
would be declared but for the secrecy order and ending on
the date the secrecy order and any renewal thereof was
removed; and

  (iv) the number of days, if any, in the period beginning
on the date of notification under § 5.3(c) and ending on the
date of mailing of the notice of allowance under § 1.311.

  (3) The period of delay under paragraph (a)(3) of this
section is the sum of the number of days, if any, in the
period beginning on the date on which an appeal to the Board
of Patent Appeals and Interferences was filed under 35
U.S.C. 134 and ending on the date of a final decision in
favor of the applicant by the Board of Patent Appeals and
Interferences or by a Federal court in an appeal under 35
U.S.C. 141 or a civil action under 35 U.S.C. 145.

  (d) The period of delay set forth in paragraph (c)(3)
shall be reduced by:

  (1) any time during the period of appellate review that
occurred before three years from the filing of the first
national application for patent presented for examination;
and

  (2) any time during the period of appellate review, as
determined by the Commissioner, during which the applicant
for patent did not act with due diligence. In determining
the due diligence of an applicant, the Commissioner may
examine the facts and circumstances of the applicant's
actions during the period of appellate review to determine
whether the applicant exhibited that degree of timeliness as
may reasonably be expected from, and which is ordinarily
exercised by, a person during a period of appellate review.

  [Added, 60 FR 20195, Apr. 25, 1995, effective June 8,
1995]

 § 1.710  Patents subject to extension of the patent term.

  (a) A patent is eligible for extension of the patent term
if the patent claims a product as defined in paragraph (b)
of this section, either alone or in combination with other
ingredients  that  read  on  a  composition  that  received
permission for commercial marketing or use, or a method of
using such a product, or a method of manufacturing such a
product, and meets all other conditions and requirements of
this subpart.

  (b) The term "product" referred to in paragraph (a) of
this section means - -

  (1) The active ingredient of a new human drug, antibiotic
drug, or human biological product (as those terms are used
in the Federal Food, Drug, and Cosmetic Act and the Public
Health Service Act) including any salt or ester of the
active ingredient, as a single entity or in combination with
another active ingredient; or

  (2) The active ingredient of a new animal drug or
veterinary biological product (as those terms are used in
the Federal Food, Drug, and Cosmetic Act and the Virus -
Serum - Toxin Act) that is not primarily manu factured using
recombinant DNA, recombinant RNA, hybridoma technology, or
other processes including site specific genetic manipulation
techniques, including any salt or ester of the active
ingredient, as a single entity or in combination with
another active ingredient; or

  (3) Any medical device, food additive, or color additive
subject to regulation under the Federal Food, Drug, and
Cosmetic Act.

  [Added 52 FR 9394, Mar. 24, 1987, effective May 26,
1987; amended, July 20, 1989, 54 FR 30375, effective Aug.
22, 1989]

 § 1.720  Conditions for extension of patent term .

  The term of a patent may be extended if:

  (a) the patent claims a product or a method of using or
manufacturing a product as defined in § 1.710;

  (b) the term of the patent has never been previously
extended except for any interim extension issued pursuant to
§ l.760;

  (c)  an  application  for  extension  is  submitted  in
compliance with § 1.740;

  (d) the product has been subject to a regulatory review
period as defined in 35 U.S.C. 156(g) before its commercial
marketing or use;

  (e) the product has received permission for commercial
marketing or use and - -

  (1) The permission for the commercial marketing or use of
the product is the first received permission for commercial
marketing or use under the provision of law under which the
applicable regulatory review occurred, or

  (2) In the case of a patent other than one directed to
subject matter within § 1.710(b)(2) claiming a method of
manufacturing the product that primarily uses recombinant
DNA technology in the manufacture of the product, the
permission for the commercial marketing or use is the first
received permission for the commercial marketing or use of a
product  manufactured  under  the  process  claimed  in  the
patent,

  (3) In the case of a patent claiming a new animal drug or
a veterinary biological product that is not covered by the
claims in any other patent that has been extended, and has
received permission for the commercial marketing or use in
non - food - producing animals and in food - producing
animals, and was not extended on the basis of the regulatory
review period for use in non - food - producing animals, the
permission for the commercial marketing or use of the drug
or product after the regulatory review period for use in
food - producing animals is the first permitted commercial
marketing or use of the drug or product for administration
to a food - producing animal.

  (f) The application is submitted within the sixty - day
period beginning on the date the product first received
permission  for  commercial  marketing  or  use  under  the
provisions of law under which the applicable regulatory
review period occurred; or in the case of a patent claiming
a method of manufacturing the product which primarily uses
recombinant  DNA  technology  in  the  manufacture  of  the
product, the application for extension is submitted within
the sixty - day period beginning on the date of the first
permitted  commercial  marketing  or  use  of  a  product
manufactured under the process claimed in the patent; or in
the case of a patent that claims a new animal drug or a
veterinary biological product that is not covered by the
claims in any other patent that has been extended, and said
drug or product has received permission for the commercial
marketing or use in non - food - producing animals, the
application for extension is submitted within the sixty -
day period beginning on the date of the first permitted
commercial marketing or use of the drug or product for
administration to a food - producing animal;

  (g) The term of the patent has not expired before the
submission of an application in compliance with § 1.741; and

  (h) No other patent term has been extended for the same
regulatory review period for the product.

  [Added 52 FR 9395, Mar. 24, 1987, effective May 26,
1987; paras. (e) & (f) amended, July 20, 1989, 54 FR 30375,
effective Aug. 22, 1989]

 § 1.730  Applicant for extension of patent term.

  Any application for extension of a patent term must be
submitted by the owner of record of the patent or its agent
and must comply with the requirements of § 1.740.

  [Added 52 FR 9395, Mar. 24, 1987, effective May 26,
1987]

 § 1.740  Application for extension of patent term.

  (a) An application for extension of patent term must be
made  in  writing  to  the  Commissioner  of  Patents  and
Trademarks. A formal application for the extension of patent
term shall include:

  (1) A complete identification of the approved product as
by appropriate chemical and generic name, physical structure
or characteristics;

  (2) A complete identification of the Federal statute
including the applicable provision of law under which the
regulatory review occurred;

  (3) An identification of the date on which the product
received permission for commercial marketing or use under
the provision of law under which the applicable regulatory
review period occurred;

  (4) In the case of a drug product, an identification of
each active ingredient in the product and as to each active
ingredient, a statement that it has not been previously
approved for commercial marketing or use under the Federal

Food Drug and Cosmetic Act, the Public Health Service Act,
or the Virus - Serum - Toxin Act, or a statement of when the
active ingredient was approved for commercial marketing or
use (either alone or in combination with other active
ingredients) the use for which it was approved, and the
provision of law under which it was approved.

  (5) A statement that the application is being submitted
within  the  sixty  day  period  permitted  for  submission
pursuant to § l.720(f) and an identification of the date of
the last day on which the application could be submitted;

  (6) A complete identification of the patent for which an
extension is being sought by the name of the inventor, the
patent  number,  the  date  of  issue,  and  the  date  of
expiration;

  (7) A copy of the patent for which an extension is being
sought,  including  the  entire  specification  (including
claims) and drawings;

  (8) A copy of any disclaimer, certificate of correction,
receipt  of  maintenance  fee  payment,  or  reexamination
certificate issued in the patent;

  (9) A statement that the patent claims the approved
product or a method of using or manufacturing the approved
product, and a showing which lists each applicable patent
claim and demonstrates the manner in which each applicable
patent claim reads on the approved product or a method of
using or manufacturing the approved product;

  (10) A statement beginning on a new page, of the relevant
dates and information pursuant to 35 U.S.C. 156(g) in order
to enable the Secretary of Health and Human Services or the
Secretary of Agriculture, as appropriate, to determine the
applicable regulatory review period as follows:

  (i) For a patent claiming a human drug, antibiotic, or
human  biological  product,  the  effective  date  of  the
investigational new drug (IND) application and the IND
number; the date on which a new drug application (NDA) or a
Product License Application (PLA) was initially submitted
and the NDA or PLA number and the date on which the NDA was
approved or the Product License issued;

  (ii) For a patent claiming a new animal drug, the date a
major health or environmental effects test on the drug was
initiated and any available substantiation of the date or
the date of an exemption under subsection (j) of section 512
of the Federal Food, Drug, and Cosmetic Act became effective
for such animal drug; the date on which a new animal drug
application (NADA) was initially submitted and the NADA
number; and the date on which the NADA was approved;

  (iii) For a patent claiming a veterinary biological
product, the date the authority to prepare an experimental
biological product under the Virus - Serum - Toxin Act
became effective; the date an application for a license was
submitted under the Virus - Serum - Toxin Act; and the date
the license issued;

  (iv) For a patent claiming a food or color additive, the
date a major health or environmental effects test on the
additive was initiated and any available substantiation of

that date; the date on which a petition for product approval
under the Federal Food, Drug and Cosmetic Act was initially
submitted and the petition number; and the date on which the
FDA published a Federal Register notice listing the additive
for use;

  (v) For a patent claiming a medical device, the effective
date of the investigational device exemption (IDE) and the
IDE  number,  if  applicable,  or  the  date  on  which  the
applicant began the first clinical investigation involving
the device if no IDE was submitted and any available
substantiation  of  that  date;  the  date  on  which  the
application for product approval or notice of completion of
a product development protocol under section 515 of the
Federal Food, Drug and Cosmetic Act was initially submitted
and the number of the application; and the date on which the
application was approved or the protocol declared to be
completed.

  (11) A brief description beginning on a new page of the
significant activities undertaken by the marketing applicant
during the applicable regulatory review period with respect
to the approved product and the significant dates applicable
to such activities;

  (12) A statement beginning on a new page that in the
opinion of the applicant the patent is eligible for the
extension and a statement as to the length of extension
claimed,  including  how  the  length  of  extension  was
determined;

  (13) A statement that applicant acknowledges a duty to
disclose to the Commissioner of Patents and Trademarks and
the Secretary of Health and Human Services or the Secretary
of Agriculture any information which is material to the
determination of entitlement to the extension sought (see §
1.765);

  (14) The prescribed fee for receiving and acting upon the
application for extension (see § 1.20(j));

  (15) The name, address, and telephone number of the
person to whom inquiries and correspondence relating to the
application for patent term extension are to be directed;

  (16) A duplicate of the application papers, certified as
such; and

  (17) An oath or declaration as set forth in paragraph (b)
of this section.

  (b) Any oath or declaration submitted in compliance with
paragraph (a) of this section must be signed by the owner of
record of the patent or its agent, specifically identify the
papers and the patent for which an extension is sought and
aver that the person signing the oath or declaration:

  (1) Is the owner, an official of a corporate owner
authorized to obligate the corporation, or a patent attorney
or agent authorized to practice before the Patent and
Trademark Office and who has general authority from the
owner to act on behalf of the owner in patent matters.

  (2) Has reviewed and understands the contents of the
application being submitted pursuant to this section;

  (3) Believes the patent is subject to extension pursuant
to § 1.710;

  (4) Believes an extension of the length claimed is
justified  under  35  U.S.C.  156  and  the  applicable
regulations; and

  (5) Believes the patent for which the extension is being
sought meets the conditions for extension of the term of a
patent as set forth in § 1.720.

  (c) If any application for extension of patent term
submitted pursuant to this section is held to be informal,
applicant may seek to have that holding reviewed by filing a
petition with the required fee, as necessary, pursuant to §
1.181, l.182 or l.183, as appropriate, within such time as
may be set in the notice that the application has been held
to be informal, or if no time is set, within one month of
the date on which the application was held informal. The
time periods set forth herein are subject to the provisions
of 37 CFR 1.136.

  [Added 52 FR 9395, Mar. 24, 1987, effective May 26,
1987;  para.  (a)  amended  July  20,  1989,  54  FR  30375,
effective Aug. 22, 1989; para. (a)(14), 56 FR 65142, Dec.
13, 1991, effective Dec. 16, 1991]

 § 1.741  Filing date of application.

  (a) The filing date of an application for extension of a
patent term is the date on which a complete application is
received  in  the  Patent  and  Trademark  Office  or  filed
pursuant to the "Certificate of Mailing or Transmission"
provisions of 37 CFR 1.8 or "Express Mail" provisions of 37
CFR 1.10.

  A complete application shall include:

  (1) An identification of the approved product;

  (2) An identification of each Federal statute under which
regulatory review occurred;

  (3)  An  identification  of  the  patent  for  which  an
extension is being sought;

  (4) An identification of each claim of the patent which
claims  the  approved  product  or  a  method  of  using  or
manufacturing the approved product;

  (5) Sufficient information to enable the Commissioner to
determine under 35 U.S.C. 156 subsections (a) and (b )  the
eligibility of a patent for extension and the rights that
will be derived from the extension and information to enable
the Commissioner and the Secretary of Health and Human
Services or the Secretary of Agriculture to determine the
length of the regulatory review period; and

  (6) A brief description of the activities undertaken by
the marketing applicant during the applicable regulatory
review period with respect to the approved product and the
significant dates applicable to such activities.

  (b) If any application submitted pursuant to this section

is held to be incomplete, applicant may seek to have this
holding reviewed under § 1.181.

  [Added 52 FR 9396, Mar. 24, 1987, effective May 26,
1987;  para.  (a)  amended  54  FR  30375,  July  20,  1989,
effective Aug. 22, 1989; para. (a) amended, 58 FR 54494,
Oct. 22, 1993, effective Nov. 22, 1993; para. (a) correcting
amendment, 61 FR 64027, Dec. 3, 1996]

 § 1.750  Determination of eligibility for extension of
patent term.

  A determination as to whether a patent is eligible for
extension may be made by the Commissioner solely on the
basis of the representations contained in the application
for extension filed in compliance with § 1.740 or § 1.790.
This determination may be delegated to appropriate Patent
and Trademark Office officials and may be made at any time
before  the  certificate  of  extension  is  issued.  The
Commissioner or other appropriate officials may require from
applicant  further  information  or  make  such  independent
inquiries as desired before a final determination is made on
whether  a  patent  is  eligible  for  extension.  In  an
application for extension filed in compliance with § 1.740,
a  notice  will  be  mailed  to  applicant  containing  the
determination as to the eligibility of the patent for
extension and the period of time of the extension, if any.
This notice shall constitute the final determination as to
the eligibility and any period of extension of the patent. A
single request for reconsideration of a final determination
may be made if filed by the applicant within such time as
may be set in the notice of final determination or, if no
time is set, within one month from the date of the final
determination. The time periods set forth herein are subject
to the provisions of § 1.136.

  [Added 52 FR 9396, Mar. 24, 1987, effective May 26,
1987; revised, 60 FR 25615, May 12, 1995, effective July 11,
1995]

 § 1.760  Interim extension of patent term under 35
U.S.C. 156(e)(2).

  An applicant who has filed a formal application for
extension in compliance with § 1.740 may request one or more
interim extensions for periods of up to one year each
pending a final determination on the application pursuant to
§ 1.750. Any such request should be filed at least three
months prior to the expiration date of the patent. The
Commissioner may issue interim extensions, without a request
by the applicant, for periods of up to one year each until a
final determination is made. The patent owner or agent will
be notified when an interim extension is granted and notice
of the extension will be published in the Official Gazette
of the Patent and Trademark Office. The notice will be
recorded in the official file of the patent and will be
considered as part of the original patent. In no event will
the interim extensions granted under this section be longer
than the maximum period for extension to which the applicant
would be eligible.

  [Added 52 FR 9396, Mar. 24, 1987, effective May 26,
1987; heading revised, 60 FR 25615, May 12, 1995, effective
July 11, 1995]

 § 1.765  Duty of disclosure in patent term extension
proceedings.

  (a) A duty of candor and good faith toward the Patent and
Trademark Office and the Secretary of Health and Human
Services or the Secretary of Agriculture rests on the patent
owner or its agent, on each attorney or agent who represents
the patent owner and on every other individual who is
substantively involved on behalf of the patent owner in a
patent term extension proceeding. All such individuals who
are aware, or become aware, of material information adverse
to a determination of entitlement to the extension sought,
which has not been previously made of record in the patent
term extension proceeding must bring such information to the
attention of the Office or the Secretary, as appropriate, in
accordance with paragraph (b) of this section, as soon as it
is practical to do so after

  the  individual  becomes  aware  of  the  information.
Information  is  material  where  there  is  a  substantial
likelihood that the Office or the Secretary would consider
it important in determinations to be made in the patent term
extension proceeding.

  (b)  Disclosures  pursuant  to  this  section  must  be
accompanied by a copy of each written document which is
being disclosed. The disclosure must be made to the Office
or the Secretary, as appropriate, unless the disclosure is
material to determinations to be made by both the Office and
the Secretary, in which case duplicate copies, certified as
such, must be filed in the Office and with the Secretary.
Disclosures pursuant to this section may be made to the
Office or the Secretary, as appropriate, through an attorney
or agent having responsibility on behalf of the patent owner
or its agent for the patent term extension proceeding or
through a patent owner acting on his or her own behalf.
Disclosure to such an attorney, agent or patent owner shall
satisfy the duty of any other individual. Such an attorney,
agent or patent owner has no duty to transmit information
which is not material to the determination of entitlement to
the extension sought.

  (c) No patent will be determined eligible for extension
and no extension will be issued if it is determined that
fraud on the Office or the Secretary was practiced or
attempted or the duty of disclosure was violated through bad
faith or gross negligence in connection with the patent term
extension proceeding If it is established by clear and
convincing  evidence  that  any  fraud  was  practiced  or
attempted on the Office or the Secretary in connection with
the patent term extension proceeding or that there was any
violation of the duty of disclosure through bad faith or
gross  negligence  in  connection  with  the  patent  term
extension proceeding, a final determination will be made
pursuant to § 1.750 that the patent is not eligible for
extension.

  (d) The duty of disclosure pursuant to this section rests
on the individuals identified in paragraph (a) of this
section and no submission on behalf of third parties, in the
form of protests or otherwise, will be considered by the
Office. Any such submissions by third parties to the Office
will be returned to the party making the submission, or
otherwise disposed of, without consideration by the Office.

  [Added 52 FR 9396, Mar. 24 1987, effective May 26, 1987,
para. (a) amended 54 FR 30375, July 20, 1989, effective Aug.
22, 1989; para. (a) revised, 60 FR 25615, May 12, 1995,
effective July 11, 1995]

 § 1.770  Express withdrawal of application for
extension of patent term.

  An application for extension of patent term may be
expressly withdrawn before a determination is made pursuant
to § 1.750 by filing in the Office, in duplicate, a written
declaration of withdrawal signed by the owner of record of
the patent or its agent. An application may not be expressly
withdrawn after the date permitted for response to the final
determination on the application. An express withdrawal
pursuant to this section is effective when acknowledged in
writing by the Office. The filing of an express withdrawal
pursuant to this section and its acceptance by the Office
does not entitle applicant to a refund of the filing fee ( §
1.20(j)) or any portion thereof.

  [Added 52 FR 9397, Mar. 24 1987, effective May 26, 1987;
56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991]

 § 1.775  Calculation of patent term extension for a
drug, antibiotic drug, or human biological product.

  (a) If a determination is made pursuant to § 1.750 that a
patent  for  a  human  drug,  antibiotic  drug,  or  human
biological product is eligible for extension, the term shall
be extended by the time as calculated in days in the manner
indicated by this section. The patent term extension will
run from the original expiration date of the patent or any
earlier date set by terminal disclaimer ( § 1.321).

  (b) The term of the patent for a human drug, antibiotic
drug or human biological product will be extended by the
length of the regulatory review period for the product as
determined by the Secretary of Health and Human Services,
reduced as appropriate pursuant to paragraphs (d)(1) through
(d)(6) of this section.

  (c) The length of the regulatory review period for a
human drug, antibiotic drug or human biological product will
be determined by the Secretary of Health and Human Services.
Under 35 U.S.C. 156(g)(1)(B), it is the sum of - -

  (1) The number of days in the period beginning on the
date an exemption under subsection (i) of section 505 or
subsection (d) of section 507 of the Federal Food, Drug and
Cosmetic Act became effective for the approved human drug
product and ending on the date an application was initially
submitted for such product under those sections or under
section 351 of the Public Health Service Act; and

  (2) The number of days in the period beginning on the
date  the  application  was  initially  submitted  for  the
approved product under section 351 of the Public Health
Service Act, subsection (b) of section 505 or section 507 of
the Federal Food, Drug, and Cosmetic Act and ending on the
date such application was approved under such section.

  (d) The term of the patent as extended for a human drug,
antibiotic  drug  or  human  biological  product  will  be
determined by-

  (1) Subtracting from the number of days determined by the
Secretary  of  Health  and  Human  Services  to  be  in  the
regulatory review period:

  (i) The number of days in the periods of paragraphs
(c)(1) and (c)(2) of this section which were on and before
the date on which the patent issued;

  (ii) The number of days in the periods of paragraphs
(c)(1) and (c)(2) of this section during which it is
determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of
Health and Human Services that applicant did not act with
due diligence;

  (iii) One - half the number of days remaining in the
period defined by paragraph (c)(1) of this section after
that period is reduced in accordance with para graphs
(d)(1)(i) and (ii) of this section; half days will be
ignored for purposes of subtraction;

  (2) By adding the number of days determined in paragraph
(d)(1) of this section to the original term of the patent as
shortened by any terminal disclaimer;

  (3) By adding 14 years to the date of approval of the
application under section 351 of the Public Health Service
Act, or subsection (b) of section 505 or section 507 of the
Federal Food, Drug, and Cosmetic Act;

  (4) By comparing the dates for the ends of the periods
obtained pursuant to paragraphs (d)(2) and (d)(3) of this
section with each other and selecting the earlier date;

  (5) If the original patent was issued after September 24,
1984,

  (i) By adding 5 years to the original expiration date of
the patent or any earlier date set by terminal disclaimer;
and

  (ii)  By  comparing  the  dates  obtained  pursuant  to
paragraphs (d)(4) and (d)(5)(i) of this section with each
other and selecting the earlier date;

  (6) If the original patent was issued before September
24, 1984, and

  (i) If no request was submitted for an exemption under
subsection (i) of section 505 or subsection (d) of section
507 of the Federal Food, Drug and Cosmetic Act before
September 24, 1984, by-

  (A) Adding 5 years to the original expiration date of the
patent or earlier date set by terminal disclaimer; and

  (B)  By  comparing  the  dates  obtained  pursuant  to
paragraphs (d)(4) and (d)(6)(i)(A) of this section with each
other and selecting the earlier date; or

  (ii) If a request was submitted for an exemption under
subsection (i) of section 505 or subsection (d) of section
507 of the Federal Food, Drug, or Cosmetic Act before
September 24, 1984 and the commercial marketing or use of
the product was not approved before September 24, 1984, by -

  (A) Adding 2 years to the original expiration date of the
patent or earlier date set by terminal disclaimer, and

  (B)  By  comparing  the  dates  obtained  pursuant  to
paragraphs (d)(4) and (d)(6)(ii)(A) of this section with
each other and selecting the earlier filing date.

  [Added 52 FR 9397, Mar. 24 1987, effective May 26, 1987]

 § 1.776  Calculation of patent term extension for a
food additive or color additive.

  (a) If a determination is made pursuant to § 1.750 that a
patent for a food additive or color additive is eligible for
extension, the term shall be extended by the time as
calculated in days in the manner indicated by this section.
The  patent  term  extension  will  run  from  the  original
expiration date of the patent or earlier date set by
terminal disclaimer ( § 1.321).

  (b) The term of the patent for a food additive or color
additive will be extended by the length of the regulatory
review period for the product as determined by the Secretary
of  Health  and  Human  Services,  reduced  as  appropriate
pursuant  to  paragraphs  (d)(1)  through  (d)(6)  of  this
section.

  (c) The length of the regulatory review period for a food
additive  or  color  additive  will  be  determined  by  the
Secretary of Health and Human Services. Under 35 U.S.C.
156(g)(2)(B), it is the sum of -

  (1) The number of days in the period beginning on the
date a major health or environmental effects test on the
additive was initiated and ending on the date a petition was
initially submitted with respect to the approved product
under the Federal Food, Drug, and Cosmetic Act requesting
the issuance of a regulation for use of the product; and

  (2) The number of days in the period beginning on the
date a petition was initially submitted with respect to the
approved product under the Federal Food, Drug and Cosmetic
Act requesting the issuance of a regulation for use of the
product, and ending on the date such regulation became
effective or, if objections were filed to such regulation,
ending  on  the  date  such  objections  were  resolved  and
commercial  marketing  was  permitted  or,  if  commercial
marketing was permitted and later revoked pending further
proceedings as a result of such objections, ending on the
date such proceedings were finally resolved and commercial
marketing was permitted.

  (d) The term of the patent as extended for a food
additive or color additive will be determined by

  (1) Subtracting from the number of days determined by the
Secretary  of  Health  and  Human  Services  to  be  in  the
regulatory review period:

  (i) The number of days in the periods of paragraphs
(c)(1) and (c)(2) of this section which were on and before
the date on which the patent issued;

  (ii) The number of days in the periods of paragraphs

(c)(1) and (c)(2) of this section during which it is
determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of
Health and Human Services that applicant did not act with
due diligence;

  (iii) The number of days equal to one - half the number
of days remaining in the period defined by paragraph (c)(1)
of this section after that period is reduced in accordance
with paragraphs (d)(1) (i) and (ii) of this section; half
days will be ignored for purposes of subtraction;

  (2) By adding the number of days determined in paragraph
(d)(1) of this section to the original term of the patent as
shortened by any terminal disclaimer;

  (3) By adding 14 years to the date a regulation for use
of the product became effective or, if objections were filed
to  such  regulation,  to  the  date  such  objections  were
resolved and commercial marketing was permitted or, if
commercial marketing was permitted and later revoked pending
further proceedings as a result of such objections, to the
date such proceedings were finally resolved and commercial
marketing was permitted;

  (4) By comparing the dates for the ends of the periods
obtained pursuant to paragraphs (d)(2) and (d)(3) of this
section with each other and selecting the earlier date;

  (5) If the original patent was issued after September 24,
1984,

  (i) By adding 5 years to the original expiration date of
the patent or earlier date set by terminal disclaimer; and

  (ii)  By  comparing  the  dates  obtained  pursuant  to
paragraphs (d)(4) and (d)(5)(i) of this section with each
other and selecting the earlier date;

  (6) If the original patent was issued before September
24, 1984, and

  (i) If no major health or environmental effects test was
initiated and no petition for a regulation or application
for registration was submitted before September 24, 1984, by

  (A) Adding 5 years to the original expiration date of the
patent or earlier date set by terminal disclaimer, and

  (B)  By  comparing  the  dates  obtained  pursuant  to
paragraphs (d)(4) and (d)(6)(i)(A) of this section with each
other and selecting the earlier date; or

  (ii) If a major health or environmental effects test was
initiated or a petition for a regulation or application for
registration was submitted by September 24, 1984, and the
commercial marketing or use of the product was not approved
before September 24, 1984, by - -

  (A) Adding 2 years to the original expiration date of the
patent or earlier date set by terminal disclaimer, and

  (B)  By  comparing  the  dates  obtained  pursuant  to
paragraphs (d)(4) and (d)(6)(ii)(A) of this section with
each other and selecting the earlier date.

  [Added 52 FR 9397, Mar. 24, 1987, effective May 26,
1987]

 § 1.777  Calculation of patent term extension for a
medical device.

  (a) If a determination is made pursuant to § 1.750 that a
patent for a medical device is eligible for extension, the
term shall be extended by the time as calculated in days in
the manner indicated by this section. The patent term
extension will run from the original expiration date of the
patent or earlier date as set by terminal disclaimer ( §
1.321).

  (b) The term of the patent for a medical device will be
extended by the length of the regulatory review period for
the product as determined by the Secretary of Health

 and Human Services, reduced as appropriate pursuant to
paragraphs (d)(1) through (d)(6) of this section.

  (c) The length of the regulatory review period for a
medical device will be determined by the Secretary of Health
and Human Services. Under 35 U.S.C. 156(g)(3)(B), it is the
sum of

  (1) The number of days in the period beginning on the
date a clinical investigation on humans involving the device
was  begun  and  ending  on  the  date  an  application  was
initially submitted with respect to the device under section
515 of the Federal Food, Drug, and Cosmetic Act; and

  (2) The number of days in the period beginning on the
date the application was initially submitted with respect to
the device under section 515 of the Federal Food, Drug, and
Cosmetic Act, and ending on the date such application was
approved under such Act or the period beginning on the date
a notice of completion of a product development protocol was
initially submitted under section 515(f)(5) of the Act and
ending on the date the protocol was declared completed under
section 515(f)(6) of the Act.

  (d) The term of the patent as extended for a medical
device will be determined by - -

  (1) Subtracting from the number of days determined by the
Secretary  of  Health  and  Human  Services  to  be  in  the
regulatory review period pursuant to paragraph (c) of this
section:

  (i) The number of days in the periods of paragraphs
(c)(1) and (c)(2) of this section which were on and before
the date on which the patent issued;

  (ii) The number of days in the periods of paragraphs
(c)(1) and (c)(2) of this section during which it is
determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of
Health and Human Services that applicant did not act with
due diligence;

  (iii) One - half the number of days remaining in the
period defined by paragraph (c)(1) of this section after
that period is reduced in accordance with paragraphs (d)(1)
(i) and (ii) of this section; half days will be ignored for
purposes of subtraction;

  (2) By adding the number of days determined in paragraph
(d)(1) of this section to the original term of the patent as
shortened by any terminal disclaimer;

  (3) By adding 14 years to the date of approval of the
application under section 515 of the Federal Food, Drug, and
Cosmetic Act or the date a product development protocol was
declared completed under section 515(f)(6) of the Act;

  (4) By comparing the dates for the ends of the periods
obtained pursuant to paragraphs (d)(2) and (d)(3) of this
section with each other and selecting the earlier date;

  (5) If the original patent was issued after September 24,
1984,

  (i) By adding 5 years to the original expiration date of
the patent or earlier date set by terminal disclaimer; and

  (ii)  By  comparing  the  dates  obtained  pursuant  to
paragraphs (d)(4) and (d)(5)(i) of this section with each
other and selecting the earlier date;

  (6) If the original patent was issued before September
24, 1984, and

  (i) If no clinical investigation on humans involving the
device was begun or no product development protocol was
submitted under section 515(f)(5) of the Federal Food, Drug
and Cosmetic Act before September 24, 1984, by - -

  (A) Adding 5 years to the original expiration date of the
patent or earlier date set by terminal disclaimer, and

  (B)  By  comparing  the  dates  obtained  pursuant  to
paragraphs (d)(4) and (d)(6)(i)(A) of this section with each
other and selecting the earlier date; or

  (ii) If a clinical investigation on humans involving the
device was begun or a product development protocol was
submitted under section 515(f)(5) of the Federal Food, Drug,
and  Cosmetic  Act  before  September  24,  1984  and  the
commercial marketing or use of the product was not approved
before September 24, 1984, by

  (A) Adding 2 years to the original expiration date of the
patent or earlier date set by terminal disclaimer, and

  (B)  By  comparing  the  dates  obtained  pursuant  to
paragraphs (d)(4) and (d)(6)(ii)(A) of this section with
each other and selecting the earlier date.

  [Added 52 FR 9398, Mar. 24 1987, effective May 26, 1987]

 § 1.778  Calculation of patent term extension for an
animal drug product.

  (a) If a determination is made pursuant to § 1.750 that a
patent for an animal drug is eligible for extension, the
term shall be extended by the time as calculated in days in
the manner indicated by this section. The patent term
extension will run from the original expiration date

  of  the  patent  or  any  earlier  date  set  by  terminal

disclaimer ( § 1.321).

  (b) The term of the patent for an animal drug will be
extended by the length of the regulatory review period for
the drug as determined by the Secretary of Health and Human
Services, reduced as appropriate pursuant to paragraphs
(d)(1) through (d)(6) of this section.

  (c) The length of the regulatory review period for an
animal drug will be determined by the Secretary of Health
and Human Services. Under 35 U.S.C. 156(g)(4)(B), it is the
sum of - -

  (1) The number of days in the period beginning on the
earlier of the date a major health or environmental effects
test on the drug was initiated or the date an exemption
under subsection (j) of section 512 of the Federal Food,
Drug, and Cosmetic Act became effective for the approved
animal drug and ending on the date an application was
initially submitted for such animal drug under section 512
of the Federal Food, Drug, and Cosmetic Act; and

  (2) The number of days in the period beginning on the
date  the  application  was  initially  submitted  for  the
approved animal drug under subsection (b) of section 512 of
the Federal Food, Drug, and Cosmetic Act and ending on the
date such application was approved under such section.

  (d) The term of the patent as extended for an animal drug
will be determined by - -

  (1) Subtracting from the number of days determined by the
Secretary  of  Health  and  Human  Services  to  be  in  the
regulatory review period:

  (i) The number of days in the periods of paragraphs
(c)(1) and (c)(2) of this section that were on and before
the date on which the patent issued;

  (ii) The number of days in the periods of paragraphs
(c)(1) and (c)(2) of this section during which it is
determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of
Health and Human Services that applicant did not act with
due diligence;

  (iii) One - half the number of days remaining in the
period defined by paragraph (c)(1) of this section after
that  period  is  reduced  in  accordance  with  paragraphs
(d)(1)(i) and (ii) of this section; half days will be
ignored for purposes of subtraction;

  (2) By adding the number of days determined in paragraph
(d)(1) of this section to the original term of the patent as
shortened by any terminal disclaimer;

  (3) By adding 14 years to the date of approval of the
application under section 512 of the Federal Food, Drug, and
Cosmetic Act;

  (4) By comparing the dates for the ends of the periods
obtained pursuant to paragraphs (d)(2) and (d)(3) of this
section with each other and selecting the earlier date;

  (5) If the original patent was issued after November 16,
1988, by -

  (i) Adding 5 years to the original expiration date of the
patent or any earlier date set by terminal disclaimer; and

  (ii) Comparing the dates obtained pursuant to paragraphs
(d)(4) and (d)(5)(i) of this section with each other and
selecting the earlier date;

  (6) If the original patent was issued before November 16,
1988, and

  (i) If no major health or environmental effects test on
the drug was initiated and no request was submitted for an
exemption under subsection (j) of section 512 of the Federal
Food, Drug, and Cosmetic Act before November 16, 1988, by -

  (A) Adding 5 years to the original expiration date of the
patent or earlier date set by terminal disclaimer; and

  (B) Comparing the dates obtained pursuant to paragraphs
(d)(4) and (d)(6)(i)(A) of this section with each other and
selecting the earlier date; or

  (ii) If a major health or environmental effects test was
initiated or a request for an exemption under subsection (j)
of section 512 of the Federal Food, Drug, and Cosmetic Act
was submitted before November 16, 1988, and the application
for commercial marketing or use of the animal drug was not
approved before November 16, 1988, by -

  (A) Adding 3 years to the original expiration date of the
patent or earlier date set by terminal disclaimer, and

  (B) Comparing the dates obtained pursuant to paragraphs
(d)(4) and (d)(6)(ii)(A) of this section with each other and
selecting the earlier date.

  [Added July 20, 1989, 54 FR 30375, effective Aug. 22,
1989]

 § 1.779  Calculation of patent term extension for a
veterinary biological product.

  (a) If a determination is made pursuant to § 1.750 that a
patent for a veterinary biological product is eligible for
extension, the term shall be extended by the time as
calculated in days in the manner indicated by this section.
The  patent  term  extension  will  run  from  the  original
expiration date of the patent or any earlier date set by
terminal disclaimer ( § 1.321).

  (b) The term of the patent for a veterinary biological
product will be extended by the length of the regulatory
review period for the product as determined by the Secretary
of  Agriculture,  reduced  as  appropriate  pursuant  to
paragraphs (d)(1) through (d)(6) of this section.

  (c) The length of the regulatory review period for a
veterinary biological product will be determined by the
Secretary of Agriculture. Under 35 U.S.C. 156(g)(5)(B), it
is the sum of -

  (1) The number of days in the period beginning on the
date the authority to prepare an experimental biological
product under the Virus - Serum - Toxin Act became effective

and ending on the date an application for a license was
submitted under the Virus - Serum - Toxin Act; and

  (2) The number of days in the period beginning on the
date an application for a license was initially submitted
for approval under the Virus - Serum - Toxin Act and ending
on the date such license was issued.

  (d) The term of the patent as extended for a veterinary
biological product will be determined by -

  (1) Subtracting from the number of days determined by the
Secretary of Agriculture to be in the regulatory review
period:

  (i) The number of days in the periods of paragraphs
(c)(1) and (c)(2) of this section that were on and before
the date on which the patent issued;

  (ii) The number of days in the periods of paragraphs
(c)(1) and (c)(2) of this section during which it is
determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of
Agriculture that applicant did not act with due diligence;

  (iii) One - half the number of days remaining in the
period defined by paragraph (c)(1) of this section after
that  period  is  reduced  in  accordance  with  paragraphs
(d)(1)(i) and (ii) of this section; half days will be
ignored for purposes of subtraction;

  (2) By adding the number of days determined in paragraph
(d)(1) of this section to the original term of the patent as
shortened by any terminal disclaimer;

  (3) By adding 14 years to the date of the issuance of a
license under the Virus - Serum - Toxin Act;

  (4) By comparing the dates for the ends of the periods
obtained pursuant to paragraphs (d)(2) and (d)(3) of this
section with each other and selecting the earlier date;

  (5) If the original patent was issued after November 16,
1988, by - -

  (i) Adding 5 years to the original expiration date of the
patent or any earlier date set by terminal disclaimer; and

  (ii) Comparing the dates obtained pursuant to paragraphs
(d)(4) and (d)(5)(i) of this section with each other and
selecting the earlier date;

  (6) If the original patent was issued before November 16,
1988, and

  (i) If no request for the authority to prepare an
experimental biological product under the Virus - Serum -
Toxin Act was submitted before November 16, 1988, by - -

  (A) Adding 5 years to the original expiration date of the
patent or earlier date set by terminal disclaimer; and

  (B) Comparing the dates obtained pursuant to paragraphs
(d)(4) and (d)(6)(i)(A) of this section with each other and
selecting the earlier date; or

  (ii) If a request for the authority to prepare an
experimental biological product under the Virus - Serum -
Toxin Act was submitted before November 16, 1988, and the
commercial marketing or use of the product was not approved
before November 16, 1988, by - -

  (A) Adding 3 years to the original expiration date of the
patent or earlier date set by terminal disclaimer; and

  (B) Comparing the dates obtained pursuant to paragraphs
(d)(4) and (d)(6)(ii)(A) of this section with each other and
selecting the earlier date.

  [Added 54 FR 30375, July 20, 1989, effective Aug. 22,
1989]

 § 1.780  Certificate of extension of patent term.

  If a determination is made pursuant to § 1.750 that a
patent is eligible for extension and that the term of the
patent is to be extended, a certificate of extension, under
seal, or certificate of interim extension under 35 U.S.C.
156(d)(5) will be issued to the applicant for the extension
of the patent term. Such certificate will be recorded in the
official file of the patent and will be considered as part
of the original patent. Notification of the issuance of the
certificate of extension will be published in the Official
Gazette of the Patent and Trademark Office. Notification of
the issuance of the certificate of interim extension under
35 U.S.C. 156(d)(5), including the identity of the product
currently under regulatory review, will be published in the
Official Gazette of the Patent and Trademark Office and in
the  Federal Register. No certificate of extension will be
issued if the term of the patent cannot be extended, even
though the patent is otherwise determined to be eligible for
extension. In such situations the final determination made
pursuant to § 1.750 will indicate that no certificate will
issue.

  [Added 52 FR 9399, Mar. 24 1987, effective May 26, 1987;
para. (a) revised, 60 FR 25615, May 12, 1995, effective July
11, 1995]

 § 1.785  Multiple applications for extension of term of
the same patent or of different patents for the same
regulatory review period for a product.

  (a) Only one patent may be extended for a regulatory
review period for any product § 1.720(h)). If more than one
application for extension of the same patent is filed, the
certificate of extension of patent term, if appropriate,
will be issued based upon the first filed application for
extension.

  (b) If more than one application for extension is filed
by a single applicant which seeks the extension of the term
of two or more patents based upon the same regulatory review
period, and the patents are otherwise eligible for extension
pursuant to the requirements of this subpart, in the absence
of  an  election  by  the  applicant,  the  certificate  of
extension of patent term, if appropriate, will be issued
upon the application for extension of the patent term having
the earliest date of issuance of those patents for which
extension is sought.

  (c) If an application for extension is filed which seeks
the extension of the term of a patent based upon the same
regulatory review period as that relied upon in one or more
applications for extension pursuant to the requirements of
this subpart, the certificate of extension of patent term
will be issued on the application only if the patent owner
or its agent is the holder of the regulatory approval
granted with respect to the regulatory review period.

  (d) An application for extension shall be considered
complete and formal regardless of whether it contains the
identification of the holder of the regulatory approval
granted with respect to the regulatory review period. When
an application contains such information, or is amended to
contain  such  information,  it  will  be  considered  in
determining  whether  an  application  is  eligible  for  an
extension under this section. A request may be made of any
applicant  to  supply  such  information  within  a  non  -
extendable period of not less than one (1) month whenever
multiple applications for extension of more than one patent
are received and rely upon the same regulatory review
period. Failure to provide such information within the
period for response set shall be regarded as conclusively
establishing that the applicant is not the holder of the
regulatory approval.

  (e) Determinations made under this section shall be
included in the notice of final determination of eligibility
for extension of the patent term pursuant to § 1.750 and
shall be regarded as part of that determination.

  [Added 52 FR 9399, Mar. 24 1987, effective May 26, 1987;
para. (b) amended 54 FR 30375, July 20, 1989, effective Aug.
22, 1989; revised, 60 FR 25615, May 12, 1995, effective July
11, 1995]

 § 1.790  Interim extension of patent term under 35
U.S.C. 156(d)(5)

  (a) An owner of record of a patent or its agent who
reasonably expects that the applicable regula tory review
period  described  in  paragraph  (1)(B)(ii),  (2)(B)(ii),
(3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of subsection (g) that
began for a product that is the subject of such patent may
extend beyond the expiration of the patent term in effect
may submit one or more applications for interim extensions
for periods of up to one year each. The initial application
for interim extension must be filed during the period
beginning 6 months and ending 15 days before the patent term
is due to expire. Each subsequent application for interim
extension must be filed during the period beginning 60 days
before and ending 30 days before the expiration of the
preceding interim extension. In no event will the interim
extensions granted under this section be longer than the
maximum period of extension to which the applicant would be
entitled under 35 U.S.C. 156(c).

  (b) A complete application for interim extension under
this section shall include all of the information required
for a formal application under § 1.740 and a complete
application under § 1.741. Sections (a)(1), (a)(2), (a)(4),
and (a)(6) - (a)(17) of § 1.740 and § 1.741 shall be read in
the context of a product currently undergoing regulatory
review. Sections (a)(3) and (a)(5) of § 1.740 are not
applicable to an application for interim extension under

this section.

  (c) The content of each subsequent interim extension
application may be limited to a request for a subsequent
interim extension along with a statement that the regulatory
review  period  has  not  been  completed  along  with  any
materials or information required under § 1.740 and § 1.741
that are not present in the preceding interim extension
application.

  [Added 60 FR 25615, May 12, 1995, effective July 11,
1995}

 § 1.791  Termination of interim extension granted prior
to regulatory approval of a product for commercial marketing
or use.

  Any interim extension granted under 35 U.S.C. 156(d)(5)
terminates at the end of the 60 - day period beginning on
the date on which the product involved receives permission
for commercial marketing or use. If within that 60 - day
period the patent owner or its agent files an application
for extension under § 1.740 and § 1.741 including any
additional information required under 35 U.S.C. 156(d)(1)
not contained in the application for interim extension, the
patent shall be further extended in accordance with the
provisions of 35 U.S.C. 156.

  [Added 60 FR 25615, May 12, 1995, effective July 11,
1995}

  DEPOSIT OF BIOLOGICAL MATERIAL

 § 1.801  Biological material.

  For the purposes of these regulations pertaining to the
deposit of biological material for purposes of patents for
inventions under 35 U.S.C. 101, the term biological material
shall include material that is capable of self - replication
either  directly  or  indirectly.  Representative  examples
include bacteria, fungi including yeast, algae, protozoa,
eukaryotic cells, cell lines, hybridomas, plasmids, viruses,
plant tissue cells, lichens and seeds. Viruses, vectors,
cell organelles and other non - living material existing in
and reproducible from a living cell may be deposited by
deposit of the host cell capable of reproducing the non -
living material.

  [Added 54 FR 34880, Aug. 22, 1989, effective Jan. 1,
1990]

 § 1.802  Need or opportunity to make a deposit.

  (a) Where an invention is, or relies on, a biological
material, the disclosure may include reference to a deposit
of such biological material.

  (b) Biological material need not be deposited unless
access to such material is necessary for the satisfaction of
the statutory requirements for patentability under 35 U.S.C.
112. If a deposit is necessary, it shall be acceptable if
made  in  accordance  with  these  regulations.  Biological
material need not be deposited, inter alia , if it is known
and readily available to the public or can be made or

isolated without undue experimentation. Once deposited in a
depository complying with these regulations, a biological
material will be considered to be readily available even
though some requirement of law or regulation of the United
States or of the country in which the depository institution
is  located  permits  access  to  the  material  only  under
conditions imposed for safety, public health or similar
reasons.

  (c)  The  reference  to  a  biological  material  in  a
specification disclosure or the actual deposit of such
material by an applicant or patent owner does not create any
presumption that such material is necessary to satisfy 35
U.S.C.  112  or  that  deposit  in  accordance  with  these
regulations is or was required.

  [Added 54 FR 34880, Aug. 22, 1989, effective Jan. 1,
1990]

 § 1.803  Acceptable depository.

  (a) A deposit shall be recognized for the purposes of
these regulations if made in;

  (1)  any  International  Depositary  Authority  (IDA)  as
established under the Budapest Treaty on the International
Recognition of the Deposit of Micro - organisms for the
Purposes of Patent Procedure, or

  (2) any other depository recognized to be suitable by the
Office. Suitability will be determined by the Commissioner
on the basis of the administrative and technical competence,
and agreement of the depository to comply with the terms and
conditions applicable to deposits for patent purposes. The
Commissioner may seek the advice of impartial consultants on
the suitability of a depository. The depository must:

  (i) Have a continuous existence;

  (ii) Exist independent of the control of the depositor;

  (iii) Possess the staff and facilities sufficient to
examine the viability of a deposit and store the deposit in
a  manner  which  ensures  that  it  is  kept  viable  and
uncontaminated;

  (iv) Provide for sufficient safety measures to minimize
the risk of losing biological material deposited with it;

  (v) Be impartial and objective;

  (vi) Furnish samples of the deposited material in an
expeditious and proper manner; and

  (vii) Promptly notify depositors of its inability to
furnish samples, and the reasons why.

  (b) A depository seeking status under paragraph (a)(2) of
this section must direct a communication to the Commissioner
which shall:

  (1) Indicate the name and address of the depository to
which the communication relates;

  (2) Contain detailed information as to the capacity of

the depository to comply with the requirements of paragraph
(a)(2) of this section, including information on its legal
status, scientific standing, staff, and facilities;

  (3) Indicate that the depository intends to be available,
for the purposes of deposit, to any depositor under these
same conditions;

  (4) Where the depository intends to accept for deposit
only certain kinds of biological material, specify such
kinds;

  (5) Indicate the amount of any fees that the depository
will, upon acquiring the status of suitable depository under
paragraph  (a)(2)  of  this  section,  charge  for  storage,
viability statements and furnishings of samples of the
deposit.

  (c) A depository having status under paragraph (a)(2) of
this section limited to certain kinds of biological material
may extend such status to additional kinds of biological
material by directing a communication to the Commissioner in
accordance with paragraph (b) of this section. If a previous
communication under paragraph (b) of this section is of
record, items in common with the previous communication may
be incorporated by reference.

  (d) Once a depository is recognized to be suitable by the
Commissioner  or  has  defaulted  or  discontinued  its
performance under this section, notice thereof will be
published  in  the  Official  Gazette  of  the  Patent  and
Trademark Office.

  [Added 54 FR 34881, Aug. 22, 1989, effective Jan. 1,
1990]

 § 1.804  Time of making an original deposit.

  (a)  Whenever  a  biological  material  is  specifically
identified  in  an  application  for  patent  as  filed,  an
original deposit thereof may be made at any time before
filing the application for patent or, subject to § 1.809,
during pendency of the application for patent.

  (b) When the original deposit is made after the effective
filing date of an application for patent, the applicant
shall promptly submit a verified statement from a person in
a position to corroborate the fact, and shall state, that
the biological material which is deposited is a biological
material  specifically  identified  in  the  application  as
filed,  except  if  the  person  is  an  attorney  or  agent
registered to practice before the Office, in which case the
statement need not be verified.

  [Added 54 FR 34881, Aug. 22, 1989, effective Jan. 1,
1990]

 § 1.805  Replacement or supplement of deposit.

  (a)  A  depositor,  after  receiving  notice  during  the
pendency of an application for patent, application for
reissue  patent  or  reexamination  proceeding,  that  the
depository  possessing  a  deposit  either  cannot  furnish
samples thereof or can furnish samples thereof but the
deposit has become contaminated or has lost its capability

to function as described in the specification, shall notify
the Office in writing, in each application for patent or
patent affected. In such a case, or where the Office
otherwise learns, during the pendency of an application for
patent, application for reissue patent or reexamination
proceeding, that the depository possessing a deposit either
cannot  furnish  samples  thereof  or  can  furnish  samples
thereof but the deposit has become contaminated or has lost
its  capability  to  function  as  described  in  the
specification,  the  need  for  making  a  replacement  or
supplemental  deposit  will  be  governed  by  the  same
considerations governing the need for making an original
deposit under the provisions set forth in § 1.802(b). A
replacement or supplemental deposit made during the pendency
of an application for pat ent shall not be accepted unless
it meets the requirements for making an original deposit
under these regulations, including the requirement set forth
under § 1.804(b). A replacement or supplemental deposit made
in connection with a patent, whether or not made during the
pendency  of  an  application  for  reissue  patent  or  a
reexamination proceeding or both, shall not be accepted
unless a certificate of correction under § 1.323

 is requested by the patent owner which meets the terms of
paragraphs (b) and (c) of this section.

  (b) A request for certificate of correction under this
section  shall  not  be  granted  unless  the  certificate
identifies:

  (1)  The  accession  number  for  the  replacement  or
supplemental deposit;

  (2) The date of the deposit; and

  (3) The name and address of the depository.

  (c) A request for a certificate of correction under this
section shall not be granted unless the request is made
promptly after the replacement or supplemental deposit has
been made and:

  (1) Includes a verified statement of the reason for
making the replacement or supplemental deposit;

  (2) Includes a verified statement from a person in a
position to corroborate the fact, and shall state, that the
replacement or supplemental deposit is of a biological
material which is identical to that originally deposited;

  (3) Includes a verified showing that the patent owner
acted diligently - -

  (i) In the case of a replacement deposit, in making the
deposit after receiving notice that samples could no longer
be furnished from an earlier deposit, or

  (ii) In the case of a supplemental deposit, in making the
deposit after receiving notice that the earlier deposit had
become contaminated or had lost its capability to function
as described in the specification;

  (4) Includes a verified statement that the term of the
replacement or supplemental deposit expires no earlier than
the term of the deposit being replaced or supplemented; and

  (5)  Otherwise  establishes  compliance  with  these
regulations, except that if the person making one or more of
the required statements or showing is an attorney or agent
registered to practice before the Office, that statement or
showing need not be verified.

  (d) A depositor's failure to replace a deposit, or in the
case of a patent, to diligently replace a deposit and
promptly thereafter request a certificate of correction
which meets the terms of paragraphs (b) and (c) of this
section, after being notified that the depository possessing
the deposit cannot furnish samples thereof, shall cause the
application or patent involved to be treated in any Office
proceeding as if no deposit were made.

  (e) In the event a deposit is replaced according to these
regulations, the Office will apply a rebuttable presumption
of identity between the original and the replacement deposit
where a patent making reference to the deposit is relied
upon during any Office proceeding.

  (f) A replacement or supplemental deposit made during the
pendency of an application for patent may be made for any
reason.

  (g) In no case is a replacement or supplemental deposit
of a biological material necessary where the biological
material,  in  accordance  with  §  1.802(b),  need  not  be
deposited.

  (h) No replacement deposit of a biological material is
necessary where a depository can furnish samples thereof but
the  depository  for  national  security,  health  or
environmental safety reasons is unable to provide samples to
requesters outside of the jurisdiction where the depository
is located.

  (i)  The  Office  will  not  recognize  in  any  Office
proceeding a replacement deposit of a biological material
made by a patent owner where the depository could furnish
samples of the deposit being replaced.

  [Added 54 FR 34881, Aug. 22, 1989, effective Jan. 1,
1990]

 § 1.806  Term of deposit.

  A  deposit  made  before  or  during  pendency  of  an
application for patent shall be made for a term of at least
thirty (30) years and at least five (5) years after the most
recent request for the furnishing of a sample of the deposit
was received by the depository. In any case, samples must be
stored under agreements that would make them available
beyond the enforceable life of the patent for which the
deposit was made.

  [Added 54 FR 34882, Aug. 22, 1989, effective Jan. 1,
1990]

 § 1.807  Viability of deposit.

  (a) A deposit of biological material that is capable of
self - replication either directly or indirectly must be
viable at the time of deposit and during the term of

deposit. Viability may be tested by the depository. The test
must conclude only that the deposited material is capable of
reproduction. No evidence is necessarily required regarding
the  ability  of  the  deposited  material  to  perform  any
function described in the patent application.

  (b)  A  viability  statement  for  each  deposit  of  a
biological material defined in paragraph (a) of this section
not made under the Budapest Treaty on the International
Recognition  of  the  Deposit  of  Microorganisms  for  the
Purposes  of  Patent  Procedure  must  be  filed  in  the
application and must contain:

  (1) The name and address of the depository;

  (3) The date of deposit;

  (2) The name and address of the depositor;

  (4) The identity of the deposit and the accession number
given by the depository;

  (5) The date of the viability test;

  (6) The procedures used to obtain a sample if the test is
not done by the depository; and

  (7)  A  statement  that  the  deposit  is  capable  of
reproduction.

  (c) If a viability test indicates that the deposit is not
viable upon receipt, or the examiner cannot, for scientific
or other valid reasons, accept the statement of viability
received from the applicant, the examiner shall proceed as
if no deposit has been made. The examiner will accept the
conclusion set forth in a viabil ity statement issued by a
depository recognized under § 1.803(a).

  [Added 54 FR 34882, Aug. 22, 1989, effective Jan. 1,
1990]

 § 1.808  Furnishing of samples.

  (a) A deposit must be made under conditions that assure
that:

  (1) Access to the deposit will be available during
pendency of the patent application making reference to the
deposit to one determined by the Commissioner to be entitled
thereto under § 1.14 and 35 U.S.C. 122, and

  (2)  Subject  to  paragraph  (b)  of  this  section,  all
restrictions imposed by the depositor on the availability to
the public of the deposited material will be irrevocably
removed upon the granting of the patent.

  (b) The depositor may contract with the depository to
require that samples of a deposited biological material
shall be furnished only if a request for a sample, during
the term of the patent:

  (1) Is in writing or other tangible form and dated;

  (2) Contains the name and address of the requesting party
and the accession number of the deposit; and

  (3) Is communicated in writing by the depository to the
depositor along with the date on which the sample was
furnished and the name and address of the party to whom the
sample was furnished.

  (c) Upon request made to the Office, the Office will
certify whether a deposit has been stated to have been made
under conditions which make it available to the public as of
the issue date of the patent grant provided the request
contains:

  (1) The name and address of the depository;

  (2) The accession number given to the deposit;

  (3) The patent number and issue date of the patent
referring to the deposit; and

  (4) The name and address of the requesting party.

  [Added 54 FR 34882, Aug. 22, 1989, effective Jan. 1,
1990]

 § 1.809  Examination procedures.

  (a) The examiner shall determine pursuant to § 1.104 in
each application for patent, application for reissue patent
or reexamination proceeding if a deposit is needed, and if
needed, if a deposit actually made is acceptable for patent
purposes. If a deposit is needed and has not been made or
replaced  or  supplemented  in  accordance  with  these
regulations, the examiner, where appropriate, shall reject
the affected claims under the appropriate provision of 35
U.S.C. 112, explaining why a deposit is needed and/or why a
deposit actually made cannot be accepted.

  (b) The applicant for patent or patent owner shall
respond to a rejection under paragraph (a) of this section
by - -

  (1) In the case of an applicant for patent, making an
acceptable original or replacement or supplemental deposit
or assuring the Office in writing that an acceptable deposit
will be made on or before the date of payment of the issue
fee, or, in the case of a patent owner, requesting a
certificate of correction of the patent which meets the
terms of paragraphs (b) and (c) of § 1.805, or

  (2) Arguing why a deposit is not needed under the
circumstances of the application or patent considered and/or
why a deposit actually made should be accepted. Other
replies  to  the  examiner's  action  shall  be  considered
nonresponsive. The rejection will be repeated until either
paragraph  (b)(1)  of  this  section  is  satisfied  or  the
examiner is convinced that a deposit is not needed.

  (c)  If  an  application  for  patent  is  otherwise  in
condition for allowance except for a needed deposit and the
Office has received a written assurance that an acceptable
deposit will be made on or before payment of the issue fee,
the Office will mail to the applicant a Notice of Allowance
and Issue Fee Due together with a requirement that the
needed deposit be made within three months. The period for
satisfying this requirement is extendable under § 1.136.

Failure to make the needed deposit in accordance with this
requirement will result in abandonment of the application
for failure to prosecute.

  (d) For each deposit made pursuant to these regulations,
the specification shall contain:

  (1) The accession number for the deposit;

  (2) The date of the deposit;

  (3) A description of the deposited biological material
sufficient  to  specifically  identify  it  and  to  permit
examination; and

  (4) The name and address of the depository.

  [Added 54 FR 34882, Aug. 22, 1989, effective Jan. 1,
1990]

  APPLICATION DISCLOSURES CONTAINING NUCLEOTIDE AND/OR AMINO
  ACID SEQUENCES

 § 1.821  Nucleotide and/or amino acid sequence
disclosures in patent applications .

  (a) Nucleotide and/or amino acid sequences as used in §
1.821 through 1.825 is interpreted to mean an unbranched
sequence of fou r  or more amino acids or an unbranched
sequence of ten or more nucleotides. Branched sequences are
specifically excluded from this definition. Nucleotides and
amino acids are further defined as follows:

  (1)  Nucleotides  are  intended  to  embrace  only  those
nucleotides that can be represented using the symbols set
forth in § 1.822(b)(1). Modifications, e.g., methylated
bases, may be described as set forth in  § 1.822(b), but
shall not be shown explicitly in the nucleotide sequence.

  (2) Amino acids are those L - amino acids commonly found
in  naturally  occurring  proteins  and  are  listed  in  §
1.822(b)(2). Those amino acid sequences containing D - amino
acids are not intended to be embraced by this definition.
Any amino acid sequence that contains post - translationally
modified amino acids may be described as the amino acid
sequence that is initially translated using the symbols
shown in § 1.822(b)(2) with the modified positions; e.g.,
hydroxylations or glyco sylations, being described as set
forth in § 1. 822(b), but these modifications shall not be
shown explicitly in the amino acid sequence. Any peptide or
protein that can be expressed as a sequence using the
symbols in § 1.822(b)(2) in conjunction with a description
elsewhere  in  the  "Sequence  Listing"  to  describe,  for
example, modified linkages, cross links and end caps, non -
peptidyl bonds, etc., is embraced by this definition.

  (b) Patent applications which contain disclosures of
nucleotide and/or amino acid sequences, in accordance with
the definition in paragraph (a) of this section, shall, with
regard to the manner in which the nucleotide and/or amino
acid  sequences  are  presented  and  described,  conform
exclusively to the requirements of § 1.821 through 1.825.

  (c) Patent applications which contain disclosures of
nucleotide and/or amino acid sequences must contain, as a

separate part of the disclosure on paper copy, hereinafter
referred to as the "Sequence Listing," a disclosure of the
nucleotide  and/or  amino  acid  sequences  and  associated
information using the symbols and format in accordance with
the  requirements  of  §  1.822  and  1.823.  Each  sequence
disclosed must appear separately in the "Sequence Listing."
Each sequence set forth in the "Sequence Listing" shall be
assigned a separate identifier written as SEQ ID NO:1, SEQ
ID NO:2, SEQ ID NO:3, etc.

  (d)  Where  the  description  or  claims  of  a  patent
application discuss a sequence listing that is set forth in
the "Sequence Listing" in accordance with paragraph (c) of
this section, reference must be made to the sequence by use
of the assigned identifier, in the text of the description
or claims, even if the sequence is also embedded in the text
of the description or claims of the patent application.

  (e) A copy of the "Sequence Listing" referred to in
paragraph (c) of this section must also be submitted in
computer readable form in accordance with the requirements
of § 1.824. The computer readable form is a copy of the
"Sequence Listing" and will not necessarily be retained as
part  of  the  patent  application  file.  If  the  computer
readable form of a new application is to be identical with
the computer readable form of another application of the
applicant on file in the Office, reference may be made to
the other application and computer readable form in lieu of
filing  a  duplicate  computer  readable  form  in  the  new
application. The new application shall be accompanied by a
letter making such reference to the other application and
computer readable form, both of which shall be completely
identified.

  (f) In addition to the paper copy required by paragraph
(c) of this section and the computer readable form required
by paragraph (e) of this section, a statement that the
content of the paper and computer readable copies are the
same must be submitted with the computer readable form. Such
a statement must be a verified statement if made by a person
not registered to practice before the Office.

  (g) If any of the requirements of paragraphs (b) through
(f) of this section are not satisfied at the time of filing
under 35 U.S.C. 111 or at the time of entering the national
stage under 35 U.S.C. 371, applicant has one month from the
date of a notice which will be sent requiring compliance
with the requirements in order to prevent abandonment of the
application. Any submis sion in response to a requirement
under this paragraph must be accompanied by a statement that
the submission

 includes no new matter. Such a statement must be a verified
statement if made by a person not registered to practice
before the Office.

  (h) If any of the requirements of paragraphs (b) through
(f) of this section are not satisfied at the time of filing,
in the United States Receiving Office, an international
application  under  the  Patent  Cooperation  Treaty  (PCT)
applicant has one month from the date of a notice which will
be sent requiring compliance with the requirements, or such
other time as may be set by the Commissioner, in which to
comply. Any submission in response to a requirement under
this paragraph must be accompanied by a statement that the

submission does not include new matter or go beyond the
disclosure in the international application as filed. Such a
statement must be a verified statement if made by a person
not registered to practice before the Office. If applicant
fails to timely provide the required computer readable form,
the United States International Searching Authority shall
search only to the extent that a meaningful search can be
performed.

  (i) Neither the presence nor the absence of information
which is not required under § 1.821 through 1.825, in an
application  shall  create  any  presumption  that  such
information is necessary to satisfy one or more of the
requirements of 35 U.S.C. 112. Further, the grant of a
patent on an application that is subject to the requirements
of § 1.821 through 1.825 shall constitute a conclusive
presumption that said patent complies with the requirements
of § 1.821 through 1.825.

  (j)  Envelopes  containing  only  application  papers,
computer readable forms and fees filed under this section
should be marked "Box SEQUENCE."

  [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990;
para. (h) amended, 58 FR 9335, Jan. 14, 1993, effective May
1, 1993]

 § 1.822  Symbols and format to be used for nucleotide
and/or amino acid sequence data.

  (a) The symbols and format to be used for nucleotide
and/or  amino  acid  sequence  data  shall  conform  to  the
requirements of paragraphs (b) through (p) of this section.

  (b) The code for representing the nucleotide and/or amino
acid sequence characters shall conform to the code set forth
in the tables in paragraphs (b)(1) and (b)(2) of this
section. No code other than that specified in this section
shall be used in nucleotide and amino acid sequences. A
modified base or amino acid may be presented in a given
sequence as the corresponding unmodified base or amino acid
if the modified base or amino acid is one of those listed in
paragraphs  (p)(1)  or  (p)(2)  of  this  section  and  the
modification is also set forth elsewhere in the Sequence
Listing  (for  example,  FEATURES  §  1.823(b)(2)(ix)).
Otherwise,  all  bases  or  amino  acids  not  appearing  in
paragraphs (b)(1) or (b)(2) of this section shall be listed
in a given sequence as "N" or "Xaa," respectively, with
further information, as appropriate, given elsewhere in the
Sequence Listing .

  (1) Base codes:

 Symbol  Meaning

  A  A; adenine

  C  C; cytosine

  G  G; guanine

  T  T; thymine

  U  U; uracil

  M  A or C

  R  A or G

 ¶  A or T/U

  S  C or G

  Y  C or T/U

  K  G or T/U

  V  A or C or G; not T/U

  H  A or C or T/U; not G

  D  A or G or T/U; not C

  B  C or G or T/U; not A

  N  (A or C or G or T/U) or (unknown or other)

  (2) Amino acid three - letter abbreviations:

Abbreviation  Amino acid name

  Ala  Alanine

  Arg  Arginine

  Asn  Asparagine

  Asp  Aspartic Acid

  Asx  Aspartic Acid or Aspara gine

  Cys  Cysteine

  Glu  Glutamic Acid

  Gln  Glutamine

  Glx  Glutamine or Glutamic Acid

  Gly  Glycine

  His  Histidine

  Ile  Isoleucine

  Leu  Leucine

  Lys  Lysine

  Met  Methionine

  Phe  Phenylalanine

  Pro  Proline

  Ser  Serine

  Thr  Threonine

  Trp  Tryptophan

  Tyr  Tyrosine

  Val  Valine

  Xaa  Unknown or other

  (c) A nucleotide sequence shall be listed using the one -
letter code for the nucleotide bases, as in paragraph (b)(1)
of this section.

  (d) The amino acids corresponding to the codons in the
coding  parts  of  a  nucleotide  sequence  shall  be  typed
immediately below the corresponding codons. Where a codon
spans an intron, the amino acid symbol shall be typed below
the portion of the codon containing two nucleotides.

  (e) The amino acids in a protein or peptide sequence
shall be listed using the three - letter abbreviation with
the first letter as an upper case character, as in paragraph
(b)(2) of this section.

  (f)  The  bases  in  a  nucleotide  sequence  (including
introns) shall be listed in groups of 10 bases except in the
coding parts of a sequence. Leftover bases, fewer than 10 in
number, at the end of non - coding parts of a sequence shall
be grouped together and separated from adjacent groups of 10
or 3 bases by a space.

  (g) The bases in the coding parts of a nucleotide
sequence shall be listed as triplets (codons).

  (h) A protein or peptide sequence shall be listed with a
maximum of 16 amino acids per line, with a space provided
between each amino acid.

  (i) A nucleotide sequence shall be listed with a maximum
of 16 codons or 60 bases per line, with a space provided
between each codon or group of 10 bases.

  (j) A nucleotide sequence shall be presented, only by a
single strand, in the 5' to 3' direction, from left to
right.

  (k) An amino acid sequence shall be presented in the
amino to carboxy direction, from left to right, and the
amino and carboxy groups shall not be presented in the
sequence.

  (1) The enumeration of nucleotide bases shall start at
the  first  base  of  the  sequence  with  number  1.  The
enumeration shall be continuous through the whole sequence
in the direction 5' to 3'. The enumeration shall be marked
in the right margin, next to the line containing the one -
letter codes for the bases, and giving the number of the
last base of that line.

  (m) The enumeration of amino acids may start at the first
amino acid of the first mature protein, with number 1. The
amino acids preceding the mature protein, e.g., pre -
sequences, pro - sequences, pre - pro - sequences and signal
sequences, when presented, shall have negative numbers,
counting backwards starting with the amino acid next to
number 1. Otherwise, the enumeration of amino acids shall
start at the first amino acid at the amino terminal as

number 1. It shall be marked below the sequence every 5
amino acids.

  (n) For those nucleotide sequences that are circular in
configuration, the enumeration method set forth in paragraph
(1) of this section remains applicable with the exception
that the designation of the first base of the nucleotide
sequence may be made at the option of the applicant. The
enumeration method for amino acid sequences that is set
forth in paragraph (m) of this section remains applicable
for amino acid sequences that are circular in configuration.

  (o) A sequence with a gap or gaps shall be presented as a
plurality of separate sequences, with separate sequence
identifiers, with the number of separate sequences being
equal in number to the number of continuous strings of
sequence data. A sequence that is made up of one or more non
- contiguous segments of a larger sequence or segments from
different  sequences  shall  be  presented  as  a  separate
sequence.

  (p) The code for representing modified nucleotide bases
and modified and unusual amino acids shall conform to the
code set forth in the tables in paragraphs (p)(1) and (p)(2)
of this section. The modified base controlled vocabulary in
paragraph (p)(1) of this section and the modified and
unusual amino acids in paragraph (p)(2) of this section
shall not be used in the nucleotide and/or amino acid
sequences; but may be used in the description and/or the
"Sequence Listing" corresponding to, but not including, the
nucleotide and/or amino acid sequence.

  (1) Modified base controlled vocabulary:

Abbreviation  Modified base description

 ac4c  4 - acetylcytidine

 chm5u 5 - (carboxyhydroxylmethyl)uri dine

 cm  2' - O-methylcytidine

 cmnm5s2u  5 - carboxymet hylaminome thyl - 2-thiouridine

 cmnm5u  5 carboxymethylaminomethyluri dine

 d  dihydrouridine

 fm  2' - O-methylpseudouridine

 gal q  beta,D - galactosylqueosine

 gm  2' - O-methylguanosine

 i  inosine

 i6a  N6 - isopentenyladenosine

 m1a  1 - methyladenosine

 m1f  1 - methylpseudouridine

 m1g  1 - methylguanosine

 ml1  1 - methylinosine

 m22g  2,2 - dimethylguanosine

 m2a  2 - methyladenosine

 m2g  2 - methylguanosine

 m3c  3 - methylcytidine

 m5c  5 - methylcytidine

 m6a  N6 - methyladenosine

 m7g  7 - methylguanosine

 mam5u 5 - methylaminomethyluridine

 mam5s2u  5 - methoxyaminomethyl - 2- thiouridine

 manq  beta,D - mannosylqueosine

 mcm5s2u  5 - methoxycarbonylmethyluridine

 mcm5u 5 - methoxycarbonylmethyluri dine

 mo5u  5 - methoxyuridine

 ms2i6a  2 - methylthio - N6 - isopentenyladenosine

 ms2t6a  N  -  ((9  -  beta  -  D-ribofurano  syl  -
2-methylthiopurine - 6-yl)

  carbamoyl)threonine

 mt6a  N - ((9 - beta - D-ribofurano sylpurine - 6-yl)N -
methyl-

  carbamoyl)threonine

 mv  uridine - 5-oxyaceticacid - methylester

 o5u  uridine - 5-oxyacetic acid (v)

 osyw  wybutoxosine

 p  pseudouridine

 q  queosine

 s2c  2 - thiocytidine

 s2t  5 - methyl - 2-thiouridine

 s2u  2 - thiouridine

 s4u  4 - thiouridine

 t  5 - methyluridine

 t6a  N  -  ((9  -  beta  -  D-ribofurano  sylpurine  -
6-yl)carbamoyl)

  threonine

 tm  2' - O-methyl - 5-methyluri dine

 um  2' - O-methyluridine

 yw  wybutosine

 x  3 - (3 - amino - 3-carboxypro pyl)uridine, (acp3)u

  (2) Modified and unusual amino acids:

Abbreviation  Modified and unusual amino acid

 Aad  2 - Aminoadipic acid

 bAad  3 - aminoadipic acid

 bAla  beta - Alanine,beta - Aminopropionic acid

 Abu  2 - Aminobutyric acid

 4Abu  4 - Aminobutyric acid, piperi dinic - acid

 Acp  6 - Aminocaproic acid

 Ahe  2 - Aminoheptanoic acid

 Aib  2 - Aminoisobutyric acid

 bAib  3 - Aminoisobutyric acid

 Apm  2 - Aminopimelic acid

 Dbu  2,4 - Diaminobutyric acid

 Des  Desmosine

 Dpm  2,2' - Diaminopimelic acid

 Dpr  2,3 - Diaminopropionic acid

 EtGly  N - Ethylglycine

 EtAsn  N - Ethylasparagine

 Hyl  Hydroxylysine

 aHyl  allo - Hydroxylysine

 3Hyp  3 - Hydroxyproline

 4Hyp  4 - Hydroxyproline

 Ide  Isodesmosine

 aIle  allo - Isoleucine

 MeGly  N - Methylglycine, sarcosine

 MeIle  N - Methylisoleucine

 MeLys  N - Methylvaline

 Nva  Norvaline

 Nle  Norleucine

 Orn  Ornithine

  [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990]

 § 1.823  Requirements for nucleotide and/or amino acid
sequences as part of the application papers .

  (a)  The "Sequence Listing," required by § 1.821(c),
setting forth the nucleotide and/or amino acid sequences,
and associated information in accordance with paragraph (b)
of this section, must begin on a new page and be titled
"Sequence Listing" and appear immediately prior to the
claims. Each page of the "Sequence Listing" shall contain no
more than 66 lines and each line shall contain no more than
72  characters.  A  fixed  -  width  font  shall  be  used
exclusively throughout the "Sequence Listing."

  (b) The "Sequence Listing" shall, except as otherwise
indicated, include, in addition to and immediately preceding
the  actual  nucleotide  and/or  amino  acid  sequence,  the
following items of information. The order and presentation
of the items of information in the "Sequence Listing" shall
conform  to  the  arrangement  given  below,  except  that
parenthetical explanatory information following the headings
(identifiers) is to be omitted. Each item of information
shall  begin  on  a  new  line,  enumerated  with  the
number/numeral/letter in parentheses as shown below, with
the heading (identifier) in upper case characters, followed
by a colon, and then followed by the information provided.
Except as allowed below, no item of information shall occupy
more than one line. Those items of information that are
applicable for all sequences shall only be set forth once in
the "Sequence Listing." The submission of those items of
information  designated  with  an  "M"  is  mandatory.  The
submission of those items of information designated with an
"R" is recommended, but not required. The submission of
those  items  of  information  designated  with  an  "O"  is
optional.  Those  items  designated  with  "rep"  may  have
multiple responses and, as such, the item may be repeated in
the "Sequence Listing."

  (1) GENERAL INFORMATION (Application, diskette/tape and
publication information):

  (i) APPLICANT (maximum of first ten named applicants;
specify one name per line: SURNAME comma OTHER NAMES and/or
INITIALS - M/rep):

  (ii) TITLE OF INVENTION (title of the invention, as
elsewhere in application, four lines maximum - M)

  (iii) NUMBER OF SEQUENCES (number of sequences in the
"Sequence Listing" - M):

  (iv) CORRESPONDENCE ADDRESS (M):

  (A)  ADDRESSEE  (name  of  applicant,  firm,  company  or
institution, as may be appropriate):

  (B) STREET (correspondence street address, as elsewhere
in application, four lines maximum):

  (C) CITY (correspondence city address, as elsewhere in
application):

  (D)  STATE  (correspondence  state,  as  elsewhere  in
application):

  (E) COUNTRY (correspondence country, as elsewhere in
application):

  (F) ZIP (correspondence zip or postal code, as elsewhere
in application):

  (v) COMPUTER READABLE FORM (M):

  (A) MEDIUM TYPE (type of diskette/tape submitted):

  (B) COMPUTER (type of computer used with diskette/tape
submitted):

  (C) OPERATING SYSTEM (type of operating system used):

  (D) SOFTWARE (type of software used to create computer
readable form):

  (vi) CURRENT APPLICATION DATA (M, if available):

  (A) APPLICATION NUMBER (U.S application number, including
a series code, a slash and a serial number, or U.S. PCT
application number, including the letters PCT, a slash, a
two letter code indicating the U.S. as the Receiving Office,
a two digit indication of the year, a slash and a five digit
number, if available):

  (B) FILING DATE (U.S. or PCT application filing date, if
available; specify as dd - MMM - yyyy):

  (C) CLASSIFICATION (IPC/US classification or F - term
designation,  where  F  -  terms  have  been  developed,  if
assigned, specify each designation, left justified, within
an eighteen position alpha numeric field - rep, to a maximum
of ten classification designations):

  (vii) PRIOR APPLICATION DATA (prior domestic, foreign
priority or international application data, if applicable -
M/rep):

  (A) APPLICATION NUMBER (application number; specify as
two letter country code and an eight digit application
number; or if a PCT application, specify as the letters PCT,
a slash, a two letter code indicating the Receiving Office,
a two digit indication of the year, a slash and a five digit
number):

  (B) FILING DATE (document filing date, specify as dd -
MMM - yyyy):

  (viii) ATTORNEY/AGENT INFORMATION (O):

  (A) NAME (attorney/agent name; SURNAME comma  OTHER NAMES
and/or INITIALS):

  (B)  REGISTRATION  NUMBER  (attorney/agent  registration
number):

  (C) REFERENCE/DOCKET NUMBER (attorney/agent reference or
docket number):

  (ix) TELECOMMUNICATION INFORMATION (O):

  (A)  TELEPHONE  (telephone  number  of  applicant  or
attorney/agent):

  (B)  TELEFAX  (telefax  number  of  applicant  or
attorney/agent):

  (C) TELEX (telex number of applicant or attorney/ agent):

  (2) INFORMATION FOR SEQ ID NO: X (rep):

  (i) SEQUENCE CHARACTERISTICS (M):

  (A) LENGTH (sequence length, expressed as number of base
pairs or amino acid residues):

  (B) TYPE (sequence type, i.e., whether nucleic acid or
amino acid):

  (C) STRANDEDNESS (if nucleic acid, number of strands of
source organism molecule, i.e., whether single stranded,
double stranded, both or unknown to applicant):

  (D)  TOPOLOGY  (whether  source  organism  molecule  is
circular, linear, both or unknown to applicant):

  (ii) MOLECULE TYPE (type of molecule sequenced in SEQ ID
NO:X (at least one of the following should be included with
subheadings, if any, in Sequence Listing - R)):

  - Genomic RNA;

  - Genomic DNA;

  - mRNA

  - tRNA;

  - rRNA;

  - snRNA;

  - scRNA;

  - preRNA;

  - cDNA to genomic RNA;

  - cDNA to mRNA;

  - cDNA to tRNA;

  - cDNA to rRNA;

  - cDNA to snRNA;

  - cDNA to scRNA;

  - Other nucleic acid;

  (A) DESCRIPTION (four lines maximum):

  - protein and

  - peptide.

  (iii) HYPOTHETICAL (yes/no - R):

  (iv) ANTI - SENSE (yes/no - R):

  (v) FRAGMENT TYPE (for proteins and peptides only, at
least one of the following should be included in the
Sequence Listing - R):

  - N - terminal fragment;

  - C - terminal fragment and

  - internal fragment.

  (vi)  ORIGINAL  SOURCE  (original  source  of  molecule
sequenced in SEQ ID NO:X - R):

  (A) ORGANISM (scientific name of source organism):

  (B) STRAIN:

  (C)  INDIVIDUAL  ISOLATE  (name/number  of
individual/isolate):

  (D) DEVELOPMENTAL STAGE (give developmental stage of
source organism and indicate whether derived from germ -
line or rearranged developmental pattern):

  (E) HAPLOTYPE:

  (F) TISSUE TYPE:

  (G) CELL TYPE:

  (H) CELL LINE:

  (I) ORGANELLE:

  (vii) IMMEDIATE SOURCE (immediate experimental source of
the sequence in SEQ ID NO:X - R):

  (A) LIBRARY (library - type,name):

  (B) CLONE (clone(s)):

  (viii) POSITION IN GENOME (position of sequence in SEQ ID
NO:X in genome - R):

  (A)  CHROMOSOME/SEGMENT  (chromosome/segment  -
name/number):

  (B) MAP POSITION:

  (C) UNITS (units for map position, i.e., whether units
are genome percent, nucleotide number or other/specify):

  (ix)  FEATURE  (description  of  points  of  biological
significance in the sequence in SEQ ID NO:X - R/rep):

  (A) NAME/KEY (provide appropriate identifier for feature
- four lines maximum):

  (B) LOCATION (specify location according to syntaxof
DDBJ/EMBL/GenBank  Feature  Tables  Definition,  including

whether feature is on complement

 of presented sequence; where appropriate state number of
first and last bases/amino acids in feature - four lines
maximum):

  (C) IDENTIFICATION METHOD (method by which the feature
was identified, i.e., by experiment, by similarity with
known sequence or to an established consensus sequence, or
by similarity to some other pattern - four lines maximum):

  (D) OTHER INFORMATION (include information on phenotype
conferred, biological activity of sequence or its product,
macromolecules which bind to sequence or its product, or
other relevant information - four lines maximum):

  (x) PUBLICATION INFORMATION (Repeat section for each
relevant publication - O/rep):

  (A) AUTHORS (maximum of first ten named authors of
publication; specify one name per line: SURNAME comma OTHER
NAMES and/or INITIALS - rep):

  (B) TITLE (title of publication):

  (C) JOURNAL (journal name in which data published):

  (D) VOLUME (journal volume in which data published):

  (E) ISSUE (journal issue number in which data published):

  (F) PAGES (journal page numbers in which data published):

  (G) DATE (journal date in which data published; specify
as dd - MMM - yyyy, MMM - yyyy or Season - yyyy):

  (H) DOCUMENT NUMBER (document number, for patent type
citations only; specify as two letter country code, eight
digit document number (right justified), one letter and, as
appropriate, one number or a space as a document type code;
or if a PCT application, specify as the letters PCT, a
slash, a two letter code indicating the Receiving Office, a
two digit indication of the year, a slash and a five digit
number; or if a PCT publication, specify as the two letters
WO, a two digit indication of the year, a slash and a five
digit publication number):

  (I) FILING DATE (document filing date, for patent - type
citations only; specify as dd - MMM - yyyy):

  (J) PUBLICATION DATE (document publication date; for
patent - type citations only, specify as dd - MMM - yyyy):

  (K)  RELEVANT  RESIDUES  IN  SEQ  ID  NO:X  (rep):  FROM
(position) TO (position)

  (xi) SEQUENCE DESCRIPTION: SEQ ID NO:X:

  [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990]

 § 1.824  Form and format for nucleotide and/or amino
acid sequence submissions in computer readable form .

  (a) The computer readable form required by § 1.821(e)
shall contain a printable copy of the "Sequence Listing," as

defined in § 1.821(c), 1.822 and 1.823, recorded as a single
file on either a diskette or a magnetic tape. The computer
readable form shall be encoded and formatted such that a
printed copy of the "Sequence Listing" may be recreated
using the print commands of the computer/operating - system
configurations specified in paragraph (f) of this section.

  (b) The file in paragraph (a) of this section shall be
encoded in a subset of the American Standard Code for
Information Interchange (ASCII). This subset shall consist
of all the printable ASCII characters including the ASCII
space character plus line - termination, pagination and end
-  of  -  file  characters  associated  with  the
computer/operating  -  system  configurations  specified  in
paragraph (f) of this sec tion. No other characters shall be
allowed.

  (c) The computer readable form may be created by any
means,  such  as  word  processors,  nucleotide/amino  acid
sequence editors or other custom computer programs; however,
it shall be readable by one of the computer/operating -
system configurations specified in paragraph (f) of this
section,  and  shall  conform  to  the  specifications  in
paragraphs (a) and (b) of this section.

  (d) The entire printable copy of the "Sequence Listing"
shall be contained within one file on a single diskette or
magnetic tape unless it is shown to the satisfaction of the
Commissioner that it is not practical or possible to submit
the entire printable copy of the "Sequence Listing" within
one file on a single diskette or magnetic tape.

  (e) The submitted diskette or tape shall be write -
protected such as by covering or uncovering diskette holes,
removing diskette write tabs or removing tape write rings.

  (f) As set forth in paragraph (c), above, any means may
be used to create the computer readable form, as long as the
following conditions are satisfied. A submitted diskette
shall be readable on one of the computer/operating - system
configurations described in paragraphs (1) through (3),
below.  A  submitted  tape  shall  satisfy  the  format
specifications described in paragraph (4), below.

  (1) Computer: IBM PC/XT/AT, IBM PS/2 or compatibles;

  (i) Operating system: PC - DOS or MS - DOS (Versions 2.1
or above);

  (ii) Line Terminator: ASCII Carriage Return plus ASCII
Line Feed;

  (iii) Pagination: ASCII Form Feed or Series of Line
Terminators;

  (iv) End - of - File: ASCII SUB (Ctrl - Z);

  (v) Media:

  (A) Diskette - 5.25 inch, 360 Kb storage;

  (B) Diskette - 5.25 inch, 1.2 Mb storage;

  (C) Diskette - 3.50 inch, 720 Kb storage;

  (D) Diskette - 3.50 inch, 1.44 Mb storage;

  (vi) Print Command: PRINT filename.extension;

  (2) Computer: IBM PC/XT/AT, IBM PS/2 or compatibles;

  (i) Operating system: Xenix;

  (ii) Line Terminator: ASCII Carriage Return;

  (iii) Pagination: ASCII Form Feed or Series of Line
Terminators;

  (iv) End - of - File: None;

  (v) Media:

  (A) Diskette - 5.25 inch, 360 Kb storage;

  (B) Diskette - 5.25 inch, 1.2 Mb storage;

  (C) Diskette - 3.50 inch, 720 Kb storage;

  (D) Diskette - 3.50 inch, 1.44 Mb storage;

  (vi) Print Command: lpr filename;

  (3) Computer: Apple Macintosh;

  (i) Operating System: Macintosh;

  (ii) Macintosh File Type: text with line termination

  (iii) Line Terminator: Pre - defined by text type file;

  (iv) Pagination: Pre - defined by text type file;

  (v) End - of - file: Pre - defined by text type file;

  (vi) Media:

  (A) Diskette - 3.50 inch, 400 Kb storage;

  (B) Diskette - 3.50 inch, 800 Kb storage;

  (C) Diskette - 3.50 inch, 1.4 Mb storage;

  (vii)  Print  Command:  Use  PRINT  command  from  any
Macintosh Application that processes text files, such as
MacWrite or TeachText;

  (4) Magnetic tape: 0.5 inch, up to 2400 feet;

  (i) Density: 1600 or 6250 bits per inch, 9 track;

  (ii) Format: raw, unblocked;

  (iii)  Line  Terminator:  ASCII  Carriage  Return  plus
optional ASCII Line Feed;

  (iv) Pagination: ASCII Form Feed or Series of Line
Terminators;

  (v) Print Command (Unix shell version given here as
sample response - mt/dev/rmt0; lpr/dev/rmt0):

  (g ) Computer readable forms that are submitted to the
Office will not be returned to the applicant.

  (h) All computer readable forms shall have a label
permanently affixed thereto on which has been hand printed
or typed, a description of the format of the computer
readable form as well as the name of the applicant, the
title of the invention, the date on which the data were
recorded on the computer readable form and the name and type
of computer and operating system which generated the files
on the computer readable form. If all of this information
can not be printed on a label affixed to the computer
readable form, by reason of size or otherwise, the label
shall include the name of the applicant and the title of the
invention  and  a  reference  number,  and  the  additional
information may be provided on a container for the computer
readable form with the name of the applicant, the title of
the invention, the reference number and the additional
information  affixed  to  the  container.  If  the  computer
readable form is submitted after the date of filing under 35
U.S.C. 111, after the date of entry in the national stage
under 35 U.S.C. 371 or after the time of filing, in the
United States Receiving Office, an international application
under the PCT, the labels mentioned herein must also include
the date of the application and the application number,
including series code and serial number.

  [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990]
§ 1.825 Amendments to or replacement of sequence listing and
computer readable copy thereof.

  (a) Any amendment to the paper copy of the "Sequence
Listing" ( § 1.821(c)) must be made by the submission of
substitute sheets. Amendments must be accompanied by a
statement that indicates support for the amendment in the
application, as filed, and a statement that the substitute
sheets include no new matter. Such a statement must be a
verified statement if made by a person not registered to
practice before the Office.

  (b) Any amendment to the paper copy of the "Sequence
Listing," in accordance with paragraph (a) of this section
must be accompanied by a substitute copy of the computer
readable  form  (  §  1.821(e))  including  all  previously
submitted data with the amendment incorporated therein,
accompanied  by  a  statement  that  the  copy  in  computer
readable form is the same as the substitute copy of the
"Sequence Listing." Such a statement must be a verified
statement if made by a person not registered to practice
before the Office.

  (c) Any appropriate amendments to the "Sequence Listing"
in a patent; e.g., by reason of reissue or certificate of
correction must comply with the requireme nts of paragraphs
(a) and (b) of this section.

  (d) If, upon receipt, the computer readable is found to
be damaged or unreadable, applicant must provide, within
such time as set by the Commissioner, a substitute copy of
the  data  in  computer  readable  form  accompanied  by  a
statement that the substitute data is identical to that
originally filed. Such a statement must be a verified
statement if made by a person not registered to practice
before the Office.

  [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990]

 Appendix A  - SAMPLE SEQUENCE LISTING

  (1) GENERAL INFORMATION:

  (i) APPLICANT: Doe, Joan X

 Doe, John Q

  (ii) TITLE OF INVENTION: Isolation and Characterization
of a Gene Encoding a Protease from Paramecium sp.

  (iii) NUMBER OF SEQUENCES: 2

  (iv) CORRESPONDENCE ADDRESS:

  (A) ADDRESSEE: Smith and Jones

  (B) STREET: 123 Main Street

  (C) CITY: Smalltown

  (D) STATE: Any state

  (E) COUNTRY: USA

  (F) ZIP: 12345

  (v) COMPUTER READABLE FORM:

  (A) MEDIUM TYPE: Diskette, 3.50 inch, 800 Kb storage

  (B) COMPUTER: Apple Macintosh

  (C) OPERATING SYSTEM: Macintosh 5.0

  (D) SOFTWARE: MacWrite

  (vi) CURRENT APPLICATION DATA:

  (A) APPLICATION NUMBER: 09/999,999

  (B) FILING DATE: 28 - FEB - 1989

  (C) CLASSIFICATION: 999 / 99

  (vii) PRIOR APPLICATION DATA:

  (A) APPLICATION NUMBER: PCT/US 88 / 99999

  (B) FILING DATE: 01 - MAR - 1988

  (viii) ATTORNEY/AGENT INFORMATION:

  (A) NAME: Smith, John A

  (B) REGISTRATION NUMBER: 00001

  (C) REFERENCE/DOCKET NUMBER: 01 - 0001

  (ix) TELECOMMUNICATION INFORMATION:

  (A) TELEPHONE: (909) 999 - 0001

  (B) TELEFAX: (909) 999 - 0002

  (2)  INFORMATION FOR SEQ ID NO:1:

  (i) SEQUENCE CHARACTERISTICS:

  (A) LENGTH: 954 base pairs

  (B) TYPE: nucleic acid

  (C) STRANDEDNESS: single

  (D) TOPOLOGY: linear

  (ii) MOLECULE TYPE: genomic DNA

  (iii) HYPOTHETICAL: yes

  (iv) ANTI - SENSE: no

  (vi) ORIGINAL SOURCE:

  (A) ORGANISM: Paramecium sp

  (C) INDIVIDUAL/ISOLATE: XYZ2

  (G) CELL TYPE: unicellular organism

  (vii) IMMEDIATE SOURCE:

  (A) LIBRARY: genomic

  (B) CLONE: Para - XYZ2/36

  (x) PUBLICATION INFORMATION:

  (A) AUTHORS: Doe, Joan X

  Doe, John Q

  (B) TITLE: Isolation and Characterization of a Gene
Encoding a Protease from Paramecium sp.

  (C) JOURNAL: Fictional Genes

  (D) VOLUME: I

  (E) ISSUE: 1

  (F) PAGES: 1 - 20

  (G) DATE: 02 - MAR - 1988

  (K) RELEVANT RESIDUES IN SEQ ID NO:1: FROM 1 TO 954

  (xi)  SEQUENCE DESCRIPTION: SEQ ID NO:1:

  (xi) SEQUENCE DESCRIPTION: SEQ ID NO:1 :

  ATCGGGATAG TACTGGTCAA GACCGGTGGA CACCGGTTAA CCCCGGTTAA
GTACCGGTTA 60

  TAGGCCATTT CAGGCCAAAT GTGCCCAACT ACGCCAATTG TTTTGCCAAC
GGCCAACGTT 120

  ACGTTCGTAC GCACGTATGT ACCTAGGTAC TTACGGACGT GACTACGGAC
ACTTCCGTAC 180

  GTACGTACGT TTACGTACCC ATCCCAACGT AACCACAGTG TGGTCGCAGT
GTCCCAGTGT 240

  ACACAGACTG CCAGACATTC TTCACAGACA CCCC ATG ACA CCA CCT
GAA CGC CTC 295

  Met Thr Pro Pro Glu Arg Leu

  - 30

  TTC CTC CCA AGG GTG TGT GGC ACC ACC CTA CAC CTC CTC CTT
CTG GGG 343

  Phe Leu Pro Arg Val Cys Gly Thr Thr Leu His Leu Leu Leu
Leu Gly

  - 25 - 20 - 15

  CTG CTG CTG GTT CTG CTG CCT GGG GCC CAT GTGAGGCAGC
AGGAGAATGG393

  Leu Leu Leu Val Leu Leu Pro Gly Ala His

  - 10 - 5

  GGTGGCTCAG CCAAACCTTG AGCCCTAGAG CCCCCCTCAA CTCTGTTCTC
CTAG GGG 450

  Gly

  CTC ATG CAT CTT GCC CAC AGC AAC CTC AAA CCT GCT GCT CAC
CTC ATT 498

  Leu Met His Leu Ala His Ser Asn Leu Lys Pro Ala Ala His
Leu Ile

  1  5 10 15

  GTAAACATCC ACCTGACCTC CCAGACATGT CCCCACCAGC TCTCCTCCTA
CCCCTGCCTC 558

  AGGAACCCAA GCATCCACCC CTCTCCCCCA ACTTCCCCCA CGCTAAAAAA
AACAGAGGGA 618

  GCCCACTCCT ATGCCTCCCC CTGCCATCCC CCAGGAACTC AGTTGTTCAG
TGCCCACTTC 678

  TAC CCC AGC AAG CAG AAC TCA CTG CTC TGG AGA GCA AAC ACG
GAC CGT 726

  Tyr Pro Ser Lys Gln Asn Ser Leu Leu Trp Arg Ala Asn Thr
Asp Arg

  20  25 30

  GCC TTC CTC CAG GAT GGT TTC TCC TTG AGC AAC AAT TCT CTC
CTG GTC 774

  Ala Phe Leu Gln Asp Gly Phe Ser Leu Ser Asn Asn Ser Leu
Leu Val

  35  40 45

  TAGAAAAAAT AATTGATTTC AAGACCTTCT CCCCATTCTG CCTCCATTCT
GACCATTTCA 834

  GGGGTCGTCA CCACCTCTCC TTTGGCCATT CCAACAGCTC AAGTCTTCCC
TGATCAAGTC 894

  ACCGGAGCTT TCAAAGAAGG AATTCTAGGC ATCCCAGGGG ACCCACACCT
CCCTGAACCA 954

  (2) INFORMATION FOR SEQ ID NO:2:

  (i) SEQUENCE CHARACTERISTICS:

  (A) LENGTH: 82 amino acids

  (B) TYPE: amino acid

  (D) TOPOLOGY: linear

  (ii) MOLECULE TYPE: protein

  (ix) FEATURE:

  (A) NAME/KEY: signal sequence

  (B) LOCATION: - 34 to - 1

  (C) IDENTIFICATION METHOD: similarity to other signal
sequences, hydrophobic

  (D) OTHER INFORMATION: expresses protease

  (x) PUBLICATION INFORMATION:

  (A) AUTHORS: Doe, Joan X

  Doe, John Q

  (B) TITLE: Isolation and Characterization of a Gene
Encoding a Protease from Paramecium sp.

  (C) JOURNAL: Fictional Genes

  (D) VOLUME: I

  (E) ISSUE: 1

  (F) PAGES: 1 - 20

  (G) DATE: 02 - MAR - 1988

  (K) RELEVANT RESIDUES IN SEQ ID NO:2: FROM - 34 TO 48

 (xi) SEQUENCE DESCRIPTION: SEQ ID NO:2:

 Met  Thr Pro Pro Glu Arg Leu Phe Leu Pro Arg Val Cys Gly
Thr Thr

  - 30 - 25 - 20

 Leu  His Leu Leu Leu Leu Gly Leu Leu Leu Val Leu Leu Pro
Gly Ala

  - 15 - 10 - 5

 His  Gly Leu Met His Leu Ala His Ser Asn Leu Lys Pro Ala
Ala His

  1 5 10

 Leu  Ile Tyr Pro Ser Lys Gln Asn Ser Leu Leu Trp Arg Ala
Asn Thr

 15  20 25 30

 Asp  Arg Ala Phe Leu Gln Asp Gly Phe Ser Leu Ser Asn Asn
Ser Leu

  35 40 45

 Leu  Val

  [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990]

 Appendix B -  HEADINGS FOR INFORMATION ITEMS IN §
1.823

  (1) GENERAL INFORMATION:

  (i) APPLICANT:

  (ii) TITLE OF INVENTION:

  (iii) NUMBER OF SEQUENCES:

  (iv) CORRESPONDENCE ADDRESS:

  (A) ADDRESSEE:

  (B) STREET:

  (C) CITY:

  (D) STATE:

  (E) COUNTRY:

  (F) ZIP:

  (v) COMPUTER READABLE FORM:

  (A) MEDIUM TYPE:

  (B) COMPUTER:

  (C) OPERATING SYSTEM:

  (D) SOFTWARE:

  (vi) CURRENT APPLICATION DATA :

  (A) APPLICATION NUMBER:

  (B) FILING DATE:

  (C) CLASSIFICATION:

  (vii) PRIOR APPLICATION DATA:

  (A) APPLICATION NUMBER:

  (B) FILING DATE:

  (viii) ATTORNEY/AGENT INFORMATION :

  (A) NAME:

  (B) REGISTRATION NUMBER:

  (C) REFERENCE/DOCKET NUMBER:

  (ix) TELECOMMUNICATION INFORMATION:

  (A) TELEPHONE:

  (B) TELEFAX:

  (C) TELEX:

  (2) INFORMATION FOR SEQ ID NO: X:

  (i) SEQUENCE CHARACTERISTICS:

  (A) LENGTH:

  (B) TYPE:

  (C) STRANDEDNESSS:

  (D) TOPOLOGY:

  (ii) MOLECULE TYPE:

  - Genomic RNA;

  - Genomic DNA;

  - mRNA

  - tRNA;

  - rRNA;

  - snRNA;

  - scRNA;

  - preRNA;

  - cDNA to genomic RNA;

  - cDNA to mRNA;

  - cDNA to tRNA;

  - cDNA to rRNA;

  - cDNA to snRNA;

  - cDNA to scRNA;

  - Other nucleic acid;

  (A) DESCRIPTION:

  - protein and

  - peptide.

  (iii) HYPOTHETICAL:

  (iv) ANTI - SENSE:

  (v) FRAGMENT TYPE:

  (vi) ORIGINAL SOURCE:

  (A) ORGANISM:

  (B) STRAIN:

  (C) INDIVIDUAL ISOLATE:

  (D) DEVELOPMENTAL STAGE:

  (E) HAPLOTYPE:

  (F) TISSUE TYPE:

  (G) CELL TYPE:

  (H) CELL LINE:

  (I) ORGANELLE:

  (vii) IMMEDIATE SOURCE:

  (A) LIBRARY:

  (B) CLONE:

  (viii) POSITION IN GENOME:

  (A) CHROMOSOME/SEGMENT:

  (B) MAP POSITION:

  (C) UNITS:

  (ix) FEATURE:

  (A) NAME/KEY:

  (B) LOCATION:

  (C) IDENTIFICATION METHOD:

  (D) OTHER INFORMATION:

  (x) PUBLICATION INFORMATION:

  (A) AUTHORS:

  (B) TITLE:

  (C) JOURNAL:

  (D) VOLUME:

  (E) ISSUE:

  (F) PAGES:

  (G) DATE:

  (H) DOCUMENT NUMBER:

  (I) FILING DATE:

  (J) PUBLICATION DATE:

  (K) RELEVANT RESIDUES :

  (xi) SEQUENCE DESCRIPTION: SEQ ID NO:X:

  [Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990]

  PART 3 - ASSIGNMENT, RECORDING, AND RIGHTS OF ASSIGNEE

 Sec.

 3.1  Definitions.

 DOCUMENTS ELIGIBLE FOR RECORDING

 3.11  Documents which will be recorded.

 3.16  Assignability of trademarks prior to filing of use
statement.

  REQUIREMENTS FOR RECORDING

 3.21  Identification of patents and patent applications.

 3.24  Formal requirements for documents and cover sheets.

 3.26  English language requirement.

 3.27  Mailing address for submitting documents to be
recorded.

 3.28  Requests for recording.

  COVER SHEET REQUIREMENTS

 3.31  Cover sheet content.

 3.34  Correction of cover sheet errors.

 FEES

 3.41  Recording fees.

  DATE AND EFFECT OF RECORDING

 3.51  Recording date.

 3.54  Effect of recording.

 3.56  Conditional assignments.

  DOMESTIC REPRESENTATIVE

 3.61  Domestic representative.

  PROSECUTION BY ASSIGNEE

 3.71  Prosecution by assignee.

 3.73  Establishing right of assignee to prosecute.

  ISSUANCE TO ASSIGNEE

 3.81  Issue of patent to assignee.

 3.85  Issue of registration to assignee.

 § 3.1 Definitions.

  For purposes of this part, the following definitions
shall apply:

  Application means a national application for patent, an
international application that designates the United States
of America, or an application to register a trademark unless
otherwise indicated.

  Assignment means a transfer by a party of all or part of
its  right,  title  and  interest  in  a  patent  or  patent
application, or a transfer of its entire right, title and
interest in a registered mark or a mark for which an
application to register has been filed.

  Document means a document which a party requests to be
recorded in the Office pursuant to § 3.11 and which affects
some interest in an application, patent, or registration.

  Office means the Patent and Trademark Office.

  Recorded document means a document which has been
recorded in the Office pursuant to § 3.11.

  Registration means a trademark registration issued by
the Office.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

 DOCUMENTS ELIGIBLE FOR RECORDING

 § 3.11 Documents which will be recorded.

  Assignments of applications, patents, and registrations,
accompanied by completed cover sheets as specified in § 3.28
and 3.31, will be recorded in the Office. Other documents,
accompanied by completed cover sheets as specified in § 3.28
and 3.31, affecting title to applications, patents, or
registrations, will be recorded as provided in this Part or
at the discretion of the Commissioner.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

 § 3.16  Assignability of trademarks prior to filing of
use statement.

  No application to register a mark under 15 U.S.C.
1051(b) is assignable prior to the filing of the verified

statement of use under 15 U.S.C. 1051(d) except to a
successor to the business of the applicant, or portion
thereof, to which the mark pertains, if that business is
ongoing and existing.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

  REQUIREMENTS FOR RECORDIN G

 § 3.21  Identification of patents and patent
applications.

  An assignment relating to a patent must identify the
patent by the patent number. An assignment relating to a
national  patent  application  must  identify  the  national
patent application by the application number (consisting of
the series code and the serial number, e.g., 07/123,456). An
assignment relating to an international patent application
which designates the United States of America must identify
the  international  application  by  the  international
application number (e.g., PCT/US90/01234). If an assignment
of a patent application filed under § 1.53(b)(1) or § 1.62
is executed concurrently with, or subse quent to, the
execution of the patent application, but before the patent
application  is  filed,  it  must  identify  the  patent
application by its date of execution, name of each inventor,
and title of the invention so that there can be no mistake
as to the patent application intended. If an assignment of a
provisional application is executed before the provisional
application is filed, it must identify the provisional
application by name of each inventor and title of the
invention so that there can be no mistake as to the
provisional application intended.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992; amended, 60 FR 20195, Apr. 25, 1995, effective June 8,
1995]

 § 3.24  Formal requirements for documents and cover
sheets.

  The document and cover sheet must be legible. Either the
original document or a true copy of the original document,
may be submitted for recording. Only one side of each page
shall be used. The paper used should be flexible, strong
white, non - shiny, durable, and preferably no larger than
21.6 x 33.1 cm. (81/2 x 14 inches) with a 2.5 cm. (one -
inch) margin on all sides.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

 § 3.26 English language requirement.

  The Office will accept and record non - English language
documents  only  if  accompanied  by  a  verified  English
translation signed by the individual making the translation.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

 § 3.27  Mailing address for submitting documents to be
recorded.

  Documents and cover sheets to be recorded should be
addressed to the Commissioner of Patents and Trademarks, Box
Assignments, Washington, D.C. 20231, unless they are filed
together with new applications or with a petition under §
3.81(b).

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

 § 3.28 Requests for recording.

  Each document submitted to the Office for recording must
be accompanied by at least one cover sheet as specified in §
3.31 referring either to those patent applications and
patents,  or  to  those  trademark  applications  and
registrations, against which the document is to be recorded.
If a document to be recorded includes interests in, or
transactions  involving,  both  patents  and  trademarks,
separate  patent  and  trademark  cover  sheets  must  be
submitted. Only one set of documents and cover sheets to be
recorded should be filed. If a document to be recorded is
not accompanied by a completed cover sheet, the document and
any incomplete cover sheet will be returned pursuant to §
3.51 for proper completion of a cover sheet and resubmission
of the document and a completed cover sheet.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

  COVER SHEET REQUIREMENTS

 § 3.31 Cover sheet content.

  (a) Each patent or trademark cover sheet required by §
3.28 must contain:

  (1) the name of the party conveying the interest;

  (2) the name and address of the party receiving the
interest;

  (3) a description of the interest conveyed or transaction
to be recorded;

  (4)  each  application  number,  patent  number  or
registration number against which the document is to be
recorded, or an indication that the document is filed
together with a patent application;

  (5)  the  name  and  address  of  the  party  to  whom
correspondence concerning the request to record the document
should be mailed;

  (6) the number of applications, patents, or registrations
identified in the cover sheet and the total fee;

  (7) the date the document was executed;

  (8) an indication that the assignee of a trademark
application or registration who is not domiciled in the
United States has designated a domestic representative (see
§ 3.61); and

  (9) a statement by the party submitting the document that
to the best of the person's knowledge and belief, the

information contained on the cover sheet is true and correct
and any copy submitted is a true copy of the original
document; and

  (10) the signature of the party submitting the document.

  (b) A cover sheet may not refer to both patents and
trademarks.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

 § 3.34 Correction of cover sheet errors.

  (a) An error in a cover sheet recorded pursuant to § 3.11
will be corrected only if:

  (1) the error is apparent when the cover sheet is
compared with the recorded document to which it pertains and

  (2) a corrected cover sheet is filed for recordation.

  (b) The corrected cover sheet must be accompanied by the
originally recorded document or a copy of the originally
recorded document and by the recording fee as set forth in §
3.41.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

 FEES

 § 3.41 Recording fees.

  All requests to record documents must be accompanied by
the appropriate fee. A fee is required for each application,
patent  and  registration  against  which  the  document  is
recorded as identified in the cover sheet. The recording fee
is set in § 1.21(h) of this Chapter for patents and in §
2.6(q) of this Chapter for trademarks.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

  DATE AND EFFECT OF RECORDING

 § 3.51 Recording date.

  The date of recording of a document is the date the
document meeting the requirements for recording set forth in
this Part is filed in the Office. A document which does not
comply with the identification requirements of § 3.21 will
not  be  recorded.  Documents  not  meeting  the  other
requirements  for  recording,  for  example,  a  document
submitted without a completed cover sheet or without the
required fee, will be returned for correction to the sender
where a correspondence address is available. The returned
papers, stamped with the original date of receipt by the
Office, will be accompanied by a letter which will indicate
that if the returned papers are corrected and resubmitted to
the Office within the time specified in the letter, the
Office will consider the original date of filing of the
papers as the date of recording of the document. The
certification procedure under either § 1.8 or § 1.10 of this
Chapter may be used for resubmissions of returned papers to

have the benefit of the date of deposit in the United States
Postal Service. If the returned papers are not corrected and
resubmitted within the specified period, the date of filing
of the corrected papers will be considered to be the date of
recording of the document. The specified period to resubmit
the returned papers will not be extended.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

 § 3.54 Effect of recording.

  The recording of a document pursuant to § 3.11 is not a
determination by the Office of the validity of the document
or  the  effect  that  document  has  on  the  title  to  an
application, a patent, or a registration. When necessary,
the Office will determine what effect a document has,
including whether a party has the authority to take an
action in a matter pending before the Office.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

 § 3.56 Conditional assignments.

  Assignments  which  are  made  conditional  on  the
performance of certain acts or events, such as the payment
of money or other condition subsequent, if recorded in the
Office, are regarded as absolute assignments for Office
purposes until cancelled with the written consent of all
parties  or  by  the  decree  of  a  court  of  competent
jurisdiction. The Office does not determine whether such
conditions have been fulfilled.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

  DOMESTIC REPRESENTATIVE

 § 3.6 1 Domestic representative.

  If  the  assignee  of  a  trademark  application  or
registration is not domiciled in the United States, the
assignee  must  designate,  in  writing  to  the  Office,  a
domestic representative. An assignee of a patent application
or patent may designate a domestic representative if the
assignee  is  not  residing  in  the  United  States.  The
designation shall state the name and address of a person
residing within the United States on whom may be served
process or notice of proceedings affecting the application,
patent or registration or rights thereunder.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

  PROSECUTION BY ASSIGNEE

 § 3.7 1 Prosecution by assignee.

  The assignee of record of the entire right, title and
interest in an application for patent is entitled to conduct
the prosecution of the patent application to the exclusion
of the named inventor or previous assignee. The assignee of
a  registered  trademark  or  a  trademark  for  which  an
application to register has been filed is entitled to

conduct the prosecution of the trademark application or
registration to the exclusion of the original applicant or
previous assignee.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

 § 3.73 Establishing right of assignee to prosecute.

  (a) The inventor is presumed to be the owner of a patent
application, and any patent that may issue therefrom, unless
there is an assignment. The original applicant is presumed
to be the owner of a trademark application unless there is
an assignment.

  (b) When the assignee of the entire right, title, and
interest seeks to take action in a matter before the Office
with respect to a patent application, trademark application,
patent,  registration,  or  reexamination  proceeding,  the
assignee must establish its ownership of the property to the
satisfaction of the Commissioner. Ownership is established
by submitting to the Office documentary evidence of a chain
of title from the original owner to the assignee or by
specifying (e.g. reel and frame number, etc.) where such
evidence is recorded in the Office. Documents submitted to
establish ownership may be required to be recorded as a
condition to permitting the assignee to take action in a
matter pending before the Office. In addition, the assignee
of a patent application or patent must submit a statement
specifying that the evidentiary documents have been reviewed
and certifying that, to the best of assignee's knowledge and
belief, title is in the assignee seeking to take the action.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

  ISSUANCE TO ASSIGNEE

 § 3.81 Issue of patent to assignee.

  (a) For a patent application, if an assignment of the
entire right, title, and interest is recorded before the
issue fee is paid, the patent may issue in the name of the
assignee. If the assignee holds an undivided part interest,
the patent may issue jointly to the inventor and the
assignee. At the time the issue fee is paid, the name of the
assignee must be provided if the patent is to issue solely
or jointly to that assignee.

  (b) If the assignment is submitted for recording after
the date of payment of the issue fee, but prior to issuance
of the patent, the assignee may petition that the patent
issue to the assignee. Any such petition must be accompanied
by the fee set forth in § 1.17(i) of this Chapter.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992; amended, 60 FR 20195, Apr. 25, 1995, effective June 8,
1995]

 § 3.85 Issue of registration to assignee.

  The certificate of registration may be issued to the
assignee  of  the  applicant,  or  in  a  new  name  of  the
applicant, provided that the party files a written request
in the trademark application by the time the application is

being  prepared  for  issuance  of  the  certificate  of
registration, and the appropriate document is recorded in
the Office. If the assignment or name change document has
not been recorded in the Office, then the written request
must state that the document has been filed for recordation.
The address of the assignee must be made of record in the
application file.

  [Added, 57 FR 29634, July 6, 1992, effective Sept. 4,
1992]

  PART 5 - SECRECY OF CERTAIN INVENTIONS AND LICENSES TO
  EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES

  SECRECY ORDERS

 Sec.

 5.1  Defense inspection of certain applications.

 5.2  Secrecy order.

 5.3  Prosecution of application under secrecy orders;
withholding patent.

 5.4  Petition for rescission of secrecy order.

 5.5  Permit to disclose or modification of secrecy
order.

 5.6  General and group permits.

 5.7  Compensation.

 5.8  Appeal to Secretary.

  LICENSES FOR FOREIGN EXPORTING AND FILING

 5.11  License  for  filing  in  a  foreign  country  an
application on an invention made in the United States or for
transmitting international application.

 5.12  Petition for license

 5.13  Petition for license; no corresponding application.

 5.14  Petition  for  license;  corresponding  U.S.
application.

 5.15  Scope of license.

 5.16  Effect of secrecy order.

 5.17  Who may use license.

 5.18  Arms, ammunition, and implements of war.

 5.19  Export of technical data.

 5.20  Export of technical data relating to sensitive
nuclear technology.

 5.25  Petition for retroactive license.

  GENERAL

 5.31  Effect of modification, rescission or license.

 5.32  Papers in English language.

 5.33  Correspondence.

  SECRECY ORDERS

 § 5.1 Defense inspection of certain applications.

  (a) The provisions of this part shall apply to both
national and international applications filed in the Patent
and Trademark Office and, with respect to inventions made in
the United States, to applications filed in any foreign
country or any international authority other than the United
States Receiving Office. The (1) filing of a national or an
international application in a foreign country or with an
international  authority  other  than  the  United  States
Receiving Office, or (2) transmittal of an international
application  to  a  foreign  agency  or  an  international
authority other than the United States Receiving Office is
considered to be a foreign filing within the meaning of
Chapter 17 of Title 35, United States Code.

  (b) In accordance with the provisions of 35 U.S.C. 181,
patent applications containing subject matter the disclosure
of which might be detrimental to the national security are
made  available  for  inspection  by  defense  agencies  as
specified  in  said  section.  Only  applications  obviously
relating  to  national  security,  and  applications  within
fields indicated to the Patent and Trademark Office by the
defense agencies as so related, are made available. The
inspection will be made only by responsible representatives
authorized  by  the  agency  to  review  applications.  Such
representatives are required to sign a dated acknowledgment
of access accepting the condition that information obtained
from the inspection will be used for no purpose other than
the administration of 35 U.S.C. 181 - 188. Copies of
applications may be made available to such representatives
for inspection outside the Patent and Trademark Office under
conditions  assuring  that  the  confidentiality  of  the
applications will be maintained, including the conditions
that: (1) All copies will be returned to the Patent and
Trademark Office promptly if no secrecy order is imposed, or
upon rescission of such order if one is imposed, and (2) no
additional copies will be made by the defense agencies. A
record of the removal and return of copies made available
for defense inspection will be maintained by the Patent and
Trademark Office. Applications relating to atomic energy are
made available to the Department of Energy as specified in §
1.14 of this chapter.

  [43 FR 20470, May 11, 1978]

 § 5.2 Secrecy order.

  (a) When notified by the chief officer of a defense
agency that publication or disclosure of the invention by
the granting of a patent would be detrimental to the
national security, an order that the invention be kept
secret will be issued by the Commissioner of Patents and
Trademarks.

  (b) The secrecy order is directed to the applicant, his

successors,  any  and  all  assignees,  and  their  legal
representatives; hereinafter designated as principals.

  (c) A copy of the secrecy order will be forwarded to each
principal  of  record  in  the  application  and  will  be
accompanied  by  a  receipt,  identifying  the  particular
principal, to be signed and returned.

  (d) The secrecy order is directed to the subject matter
of the application. Where any other application in which a
secrecy order has not been issued discloses a significant
part of the subject matter of the application under secrecy
order, the other application and the common subject matter
should  be  called  to  the  attention  of  the  Patent  and
Trademark Office. Such a notice may include any material
such as would be urged in a petition to rescind secrecy
orders on either of the applications.

 § 5.3 Prosecution of application under secrecy orders; 
withholding patent.

  Unless specifically ordered otherwise, action on the
application by the Office and prosecution by the applicant
will proceed during the time an application is under secrecy
order to the point indicated in this section:

  (a) National applications under secrecy order which come
to  a  final  rejection  must  be  appealed  or  otherwise
prosecuted to avoid abandonment. Appeals in such cases must
be  completed  by  the  applicant  but  unless  otherwise
specifically ordered by the Commissioner will not be set for
hearing until the secrecy order is removed.

  (b)  An  interference  will  not  be  declared  involving
national applications under secrecy order. However, if an
applicant whose application is under secrecy order seeks to
provoke an interference with an issued patent, a notice of
that fact will be placed in the file wrapper of the patent.
(See § 1.607(d)).

  (c) When the national application is found to be in
condition for allowance except for the secrecy order the
applicant and the agency which caused the secrecy order to
be issued will be notified. This notice (which is not a
notice of allowance under § 1.311 of this chapter) does not
require response by the applicant and places the national
application in a condition of suspension until the secrecy
order is removed. When the secrecy order is removed the
Patent and Trademark Office will issue a notice of allowance
under § 1.311 of this chapter, or take such other action as
may then be warranted

  (d) International applications under secrecy order will
not be mailed, delivered, or otherwise transmitted to the
international authorities or the applicant. International
applications under secrecy order will be processed up to the
point where, if it were not for the secrecy order, record
and search copies would be transmitted to the international
authorities or the applicant.

  [43 FR 20470, May 11, 1978; amended 43 FR 28479, June
30, 1978; para. (b) amended 53 FR 23736, June 23, 1988,
effective Sept. 12, 1988]

 § 5.4 Petition for rescission of secrecy order.

  (a) A petition for rescission or removal of a secrecy
order may be filed by , or on behalf of, any principal
affected thereby. Such petition may be in letter form, and
it must be in duplicate. The petition must be accompanied by
one copy of the application or an order for the same, unless
a showing is made that such a copy has already been
furnished to the department or agency which caused the
secrecy order to be issued.

  (b) The petition must recite any and all facts that
purport to render the order ineffectual or futile if this is
the basis of the petition. When prior publications or
patents are alleged, the petition must give complete data as
to such publications or patents and should be accompanied by
copies thereof.

  (c) The petition must identify any contract between the
Government and any of the principals under which the subject
matter of the application or any significant part thereof
was developed or to which the subject matter is otherwise
related. If there is no such contract, the petition must so
state.

  (d)  Unless  based  upon  facts  of  public  record,  the
petition must be verified.

 § 5.5  Permit to disclose or modification of secrecy
order.

  (a) Consent to disclosure, or to the filing of an
application abroad, as provided in 35 U.S.C. 182, shall be
made by a "permit" or "modification" of the secrecy order.

  (b) Petitions for a permit or modification must fully
recite the reason or purpose for the proposed disclosure.
Where any proposed disclosee is known to be cleared by a
defense agency to receive classified information, adequate
explanation of such clearance should be made in the petition
including the name of the agency or department granting the
clearance and the date and degree thereof. The petition must
be filed in duplicate and be accompanied by one copy of the
application or an order for the same, unless a showing is
made that such a copy has already been furnished to the
department or agency which caused the secrecy order to be
issued.

  (c) In a petition for modification of a secrecy order to
permit filing abroad, all countries in which it is proposed
to file must be made known, as well as all attorneys,
agents, and others to whom the material will be consigned
prior to being lodged in the foreign patent office. The
petition should include a statement vouching for the loyalty
and integrity of the proposed disclosees and where their
clearance status in this or the foreign country is known all
details should be given.

  (d) Consent to the disclosure of subject matter from one
application under secrecy order may be deemed to be consent
to  the  disclosure  of  common  subject  matter  in  other
applications under secrecy order so long as the subject
matter is not taken out of context in a manner disclosing
material  beyond  the  modification  granted  in  the  first
application.

  (e) The permit or modification may contain conditions and
limitations.

 § 5.6 General and group permits.

  (a) Organizations requiring consent for disclosure of
applications under secrecy order to persons or organizations
in connection with repeated routine operation may petition
for such consent in the form of a general permit. To be
successful  such  petitions  must  ordinarily  recite  the
security clearance status of the disclosees as sufficient
for the highest classification of material that may be
involved.

  (b) Where identical disclosees and circumstances are
involved, and consent is desired for the disclosure of each
of a specific list of applications, the petitions may be
joined.

 § 5.7 Compensation.

  Any request for compensation as provided in 35 U.S.C.
183 must not be made to the Patent and Trademark Office but
should be made directly to the department or agency which
caused the secrecy order to be issued. Upon written request
persons having a right to such information will be informed
as to the department or agency which caused the secrecy
order to be issued.

 § 5.8 Appeal to Secretary.

  Appeal to the Secretary of Commerce, as provided by 35
U.S.C. 181, from a secrecy order cannot be taken until after
a petition for rescission of the secrecy order has been made
and denied. Appeal must be taken within 60 days from the
date of the denial, and the party appealing, as well as the
department or agency which caused the order to be issued,
will be notified of the time and place of hearing. The
appeal will be heard and decided by the Secretary or such
officer or officers as he may designate.

  LICENSES FOR FOREIGN EXPORTING AND FILING

 § 5.11  License for filing in a foreign country an
application on an invention made in the United States or for
transmitting international application.

  (a) A license from the Commissioner of Patents and
Trademarks under 35 U.S.C. 184 is required before filing any
application  for  patent  including  any  modifications,
amendments, or supplements thereto or divisions thereof or
for the registration of a utility model, industrial design,
or model, in a foreign patent office or any foreign patent
agency or any international agency other than the United
States Receiving Office, if the invention was made in the
United States and:

  (1) An application on the invention has been filed in the
United States less than six months prior to the date on
which the application is to be filed, or

  (2) No application on the invention has been filed in the
United States.

  (b) The license from the Commissioner of Patents and

Trademarks referred to in paragraph (a) would also authorize
the export of technical data abroad for purposes relating to
the preparation, filing or possible filing and prosecution
of a foreign patent application without separately complying
with the regulations contained in 22 CFR Parts 121 through
130  (International  Traffic  in  Arms  Regulations  of  the
Department of State), 15 CFR Part 379 (Regulations of the
Office  of  Export  Administration,  International  Trade
Administration, Department of Commerce) and 10 CFR Part 810
(Foreign  Atomic  Energy  Programs  of  the  Department  of
Energy).

  (c)  Where  technical  data  in  the  form  of  a  patent
application, or in any form, is being exported for purposes
related to the preparation, filing or possible filing and
prosecution of a foreign patent application, without the
license from the Commissioner of Patents and Trademarks
referred to in paragraphs (a) or (b) of this section, or on
an invention not made in the United States, the export
regulations contained in 22 CFR Parts 121 through 130
((International  Traffic  in  Arms  Regulations  of  the
Department of State), 15 CFR Part 379 (Regulations of the
Office  of  Export  Administration,  International  Trade
Administration, Department of Commerce) and10 CFR Part 810
(Foreign Atomic Energy Programs of the Department of Energy)
must be complied with unless a license is not required
because a United States application was on file at the time
of export for at least six months without a secrecy order
under § 5.2 being placed thereon. The term "exported" means
export as it is defined in 22 CFR Parts 121 through 130, 15
CFR Part 379 and 10 CFR Part 810.

  (d) If a secrecy order has been issued under § 5.2, an
application cannot be exported to, or filed in, a foreign
country (including an international agency in a foreign
country), except in accordance with § 5.5.

  (e) No license pursuant to paragraph (a) of this section
is required:

  (1) If the invention was not made in the United States,
or

  (2) If the corresponding United States application is not
subject to a secrecy order under § 5.2, and was filed at
least six months prior to the date on which the application
is filed in a foreign country, or

  (3  )  For  subsequent  modifications,  amendments  and
supplements containing additional subject matter to, or
divisions of, a foreign patent application if:

  (i)  a  license  is  not,  or  was  not,  required  under
paragraph (e)(2) of this section for the foreign patent
application;

  (ii) the corresponding United States application was not
required to be made available for inspection under 35 U.S.C.
181 and § 5.1; and

  (iii) such modifications, amendments, and supplements do
not, or did not, change the general nature of the invention
in a manner which would require any corresponding United
States  application  to  be  or  have  been  available  for
inspection under 35 U.S.C. 181 and § 5.1.

  (f) A license pursuant to paragraph (a) of this section
can be revoked at any time upon written notification by the
Patent and Trademark Office. An authorization to file a
foreign patent application resulting from the passage of six
months from the date of filing of a United States patent
application may be revoked by the imposition of a secrecy
order.

  [49 FR 13461, Apr. 4, 1984; paras. (a) and (e), 56 FR
1924, Jan. 18, 1991, effective Feb. 19, 1991]

 § 5.12 Petition for license.

  (a) Filing of an application for patent for inventions
made in the United States will be considered to include a
petition for license under 35 U.S.C. 184 for the subject
matter of the application. The filing receipt will indicate
if a license is granted. If the initial automatic petition
is not granted, a subsequent petition may be filed under
paragraph (b) of this section.

  (b) Petitions for license should be presented in letter
form and must include the required fee ( § 1.17(h)). If
expedited handling of the petition is also sought, the
petitioner's address and full instructions for delivery of
the requested license when it is to be delivered to other
than the petitioner.

  [48 FR 2714, Jan. 20, 1983; amended 49 FR 13462, Apr. 4,
1984]

 § 5.13 Petition for license; no corresponding application.

  If  no  corresponding  national  or  international
application  has  been  filed  in  the  United  States,  the
petition for license under § 5.12(b) must be accompanied by
the required fee ( § 1.17(h)), if expedited handling of the
petition is sought, and a legible copy of the material upon
which license is desired. This copy will be retained as a
measure of the license granted. For assistance in the
identification of the subject matter of each license so
issued, it is suggested that the petition be submitted in
duplicate and provide a title and other description of the
material.  The  duplicate  copy  of  the  petition  will  be
returned with the license or other action on the petition.

  [43 FR 20471, May 11, 1978; 49 FR 13462, Apr. 4, 1984]

 § 5.14  Petition for license; corresponding U.S.
application.

  (a)  Where  there  is  a  corresponding  United  States
application on file, a petition for license under § 5.12(b)
must include the required fee ( § 1.17(h)), if expedited
handling of the petition is also sought, and must identify
this application by serial number, filing date, inventor,
and title, and a copy of the material upon which the license
is desired is not required. The subject matter licensed will
be  measured  by  the  disclosure  of  the  United  States
application. Where the title is not descriptive, and the
subject matter is clearly of no interest from a security
standpoint, time may be saved by a short statement in the
petition as to the nature of the invention.

  (b) Two or more United States applications should not be
referred to in the same petition for license unless they are
to be combined in the foreign or international application,
in  which  event  the  petition  should  so  state  and  the
identification of each United States application should be
in separate paragraphs.

  (c) Where the application to be filed or exported abroad
contains  matter  not  disclosed  in  the  United  States
application or applications, including the case where the
combining  of  two  or  more  United  States  applications
introduces subject matter not disclosed in any of them, a
copy of the application as it is to be filed in the foreign
country  or  international  application  which  is  to  be
transmitted to a foreign international or national agency
for filing in the Receiving Office, must be furnished with
the petition. If, however, all new matter in the foreign or
international  application  to  be  filed  is  readily
identifiable, the new matter may be submitted in detail and
the remainder by reference to the pertinent United States
application or applications.

  [43 FR 20471, May 11, 1978; 49 FR 13462, Apr. 4, 1984]

 § 5.15 Scope of license.

  (a) Applications or other materials reviewed pursuant to
§ 5.12 through 5.14, which were not required to be made
available for inspection by defense agencies under 35 U.S.C.
181 and § 5.1, will be eligible for a license of the scope
provided in this paragraph. This license permits subsequent
modifications,  amendments,  and  supplements  containing
additional subject matter to, or divisions of, a foreign
patent application, if such changes to the application do
not alter the general nature of the invention in a manner
which would require the United States application to have
been made available for inspection under 35 U.S.C. 181 and §
5.1. This license also covers the inventions disclosed in
foreign applications which had been granted a license under
this part prior to April 4, 1984, and which were not subject
to security inspection under 35 U.S.C. 181 and § 5.1. Grant
of this license authorizes the export and filing of an
application in a foreign country or the transmitting of an
international application to any foreign patent agency or
international patent agency when the subject matter of the
foreign or international application corresponds to that of
the domestic application. This license includes authority:

  (1)  To  export  and  file  all  duplicate  and  formal
application  papers  in  foreign  countries  or  with
international agencies;

  (2) To make amendments, modifications,and supplements,
including  divisions,  changes,  or  supporting  matter
consisting of the illustration, exemplification, comparison,
or  explanation  of  subject  matter  disclosed  in  the
application; and

  (3) To take any action in the prosecution of the foreign
or international application provided that the adding of
subject matter or taking of any action under paragraphs
(a)(1) and (2) of this section which does not change the
general nature of the invention disclosed in the application
in a manner which would require such application to have
been made available for inspection under 35 U.S.C. 181 and §

5.1 by including technical data pertaining to:

  (i) Defense services or articles designated in the United
States Munitions List applicable at the time of foreign
filing, the unlicensed exportation of which is prohibited
pursuant to the Arms Export Control Act, as amended, and 22
CFR Parts 121 through 130; or

  (ii) Restricted Data, sensitive nuclear technology or
technology  useful  in  the  production  or  utilization  of
special nuclear material or atomic energy, the dissemination
of which is subject to restrictions of the Atomic Energy Act
of 1954, as amended, and the Nuclear Non - Proliferation Act
of 1978, as implemented by the regulations for Unclassified
Activities in Foreign Atomic Energy Programs, 10 CFR Part
810, in effect at the time of foreign filing.

  (b)  Applications or other materials which were required
to be made available for inspection under 35 U.S.C. 181 and
5.1 will be eligible for a license of the scope provided in
this paragraph. Grant of this license authorizes the export
and filing of an application in a foreign country or the
transmitting of an international application to any foreign
patent agency or international patent agency. Further, this
license includes authority to export and file all duplicate
and formal papers in foreign countries or with foreign and
international  patent  agencies  and  to  make  amendments,
modifications, and supplements to, file divisions of, and
take any action in the prosecution of the foreign or
international  application,  provided  subject  matter
additional to that covered by the license is not involved.

  (c) A license granted under § 5.12(b) pursuant to § 5.13
or § 5.14 shall have the scope indicated in paragraph (a) of
this section, if it is so specified in the license. A
petition, accompanied by the required fee ( § 1.17(h)), may
also be filed to change a license having the scope indicated
in paragraph (b) of this section to a license having the
scope indicated in paragraph (a) of this section. No such
petition will be granted if the copy of the material filed
pursuant to § 5.13 or any corresponding United States
application was required to be made available for inspection
under 35 U.S.C. 181 and § 5.1. The change in the scope of a
license will be effective as of the date of the grant of the
petition.

  (d) In those cases in which no license is required to
file the foreign application or transmit the international
application, no license is required to file papers in
connection  with  the  prosecution  of  the  foreign  or
international application not involving the disclosure of
additional subject matter.

  (e)  Any  paper  filed  abroad  or  transmitted  to  an
international  patent  agency  following  the  filing  of  a
foreign  or  international  application  which  changes  the
general nature of the subject matter disclosed at the time
of filing in a manner which would require such application
to have been made available for inspection under 35 U.S.C.
181 and § 5.1 or which involves the disclosure of subject
matter listed in paragraphs (a)(3)(i) or (ii) of this
section must be separately licensed in the same manner as a
foreign or international application. Further, if no license
has been granted under § 5.12(a) on filing the corresponding
United States application, any paper filed abroad or with an

international patent agency which involves the disclosure of
additional subject matter must be licensed in the same
manner as a foreign or international application.

  (f) Licenses separately granted in connection with two or
more  United  States  applications  may  be  exercised  by
combining or dividing the disclosures, as desired, provided:

  (1) Subject matter which changes the general nature of
the subject matter disclosed at the time of filing or which
involves subject matter listed in paragraphs (a)(3) (i) or
(ii) of this section is not introduced and,

  (2) In the case where at least one of the licenses was
obtained under § 5.12(b), additional subject matter is not
introduced.

  (g) A license does not apply to acts done before the
license  was  granted.  See  §  5.25  for  petitions  for
retroactive licenses.

  [49 FR 13462, Apr. 4, 1984; paras. (a) - (c), (e) and
(f), 56 FR 1924, Jan. 18, 1991, effective Feb. 19, 1991]

 § 5.16 Effect of secrecy order.

  Any license obtained under 35 U.S.C. 184 is ineffective
if the subject matter is under a secrecy order, and a
secrecy order prohibits the exercise of or any further
action under the license unless separately specifically
authorized  by  a  modification  of  the  secrecy  order  in
accordance with § 5.5.

 § 5.17 Who may use license.

  Licenses may be used by anyone interested in the export,
foreign filing, or international transmittal for or on
behalf of the inventor or the inventor's assigns.

  [49 FR 13463, Apr. 4, 1984]

 § 5.18 Arms, ammunition, and implements of war.

  (a)  The exportation of technical data relating to arms,
ammunition, and implements of war generally is subject to
the  International  Traffic  in  Arms  Regulations  of  the
Department of State (22 CFR Parts 121 through 128); the
articles designated as arms, ammunition, and implements of
war are enumerated in the U.S. Munitions List, 22 CFR
121.01.  However,  if  a  patent  applicant  complies  with
regulations  issued  by  the  Commissioner  of  Patents  and
Trademarks under 35 U.S.C. 184, no separate approval from
the Department of State is required unless the applicant
seeks to export technical data exceeding that used to
support a patent application in a foreign country. This
exemption from Department of State regulations is applicable
regardless of whether a license from the Commissioner is
required by the provisions of § 5.11 and 5.15 (22 CFR
125.04(b), 125.20(b)).

  (b) When a patent application containing subject matter
on the Munitions List (22 CFR 121.01) is subject to a
secrecy order under § 5.2 and a petition is made under § 5.5
for a modification of the secrecy order to permit filing
abroad, a separate request to the Department of State for

authority to export classified information is not required
(22 CFR 125.05(d)).

  [35 FR 6430. Apr. 22, 1970]

 § 5.19  Export of technical data.

  (a) Under regulations (15 CFR 770.10(j)) established by
the  U.S.  Department  of  Commerce,  Bureau  of  Export
Administration, Office of Export Licensing, a validated
export license is not required in any case to file a patent
application or part thereof in a foreign country if the
foreign filing is in accordance with the regulations (37 CFR
5.11 through 5.33) of the Patent and Trademark Office.

  (b) A validated export license is not required for data
contained in a patent application prepared wholly from
foreign - origin technical data where such application is
being sent to the foreign inventor to be executed and
returned to the United States for subsequent filing in the
U.S. Patent and Trademark Office (15 CFR 379.3(c)).

  (c) Inquiries concerning the export control regulations
for the foreign filing of technical data other than patent
applications  should  be  made  to  the  Office  of  Export
Administration,  International  Trade  Administration,
Department of Commerce, Washington, D.C. 20230.

  [45 FR 72654, Nov. 3, 1980; para. (a) revised, 58 FR
54504, Oct. 22, 1993, effective Jan. 3, 1994]

 § 5.20 Export of technical data relating to sensitive 
nuclear technology.

  (a) Under regulations (10 CFR 810.7) established by the
United States Department of Energy, an application filed in
accordance with the regulations (37 CFR 5.11 through 5.33)
of  the  United  States  Patent  and  Trademark  Office  and
eligible  for  foreign  filing  under  35  U.S.C.  184,  is
considered to be information available to the public in
published form and a generally authorized activity for the
purposes of the Department of Energy regulations.

  (b) Inquiries concerning the export of sensitive nuclear
technology other than related to the filing or prosecution
of a foreign patent application should be made to the
Attention: Secretary, United States Depart ment of Energy,
Office of International Security Affairs, Washington, D.C.
20858.

  [49 FR 13463, Apr. 4, 1984]

 § 5.25 Petition for retroactive license.

  (a)  A petition for retroactive license under 35 U.S.C.
184 shall be presented in accordance with § 5.13 or §
5.14(a), and shall include:

  (1) A listing of each of the foreign countries in which
the unlicensed patent application material was filed,

  (2) The dates on which the material was filed in each
country,

  (3)  A  verified  statement  (oath  or  declaration)

containing:

  (i) An averment that the subject matter in question was
not under a secrecy order at the time it was filed abroad,
and that it is not currently under a secrecy order.

  (ii) A showing that the license has been diligently
sought after discovery of the proscribed foreign filing, and

  (iii)  An  explanation  of  why  the  material  was
inadvertently  filed  abroad  through  error  and  without
deceptive intent without the required license under § 5.11
first having been obtained, and

  (4) The required fee ( § 1.17(h)).

 The above explanation must include a showing of facts
rather than a mere allegation of action through error and
without deceptive intent. The showing of facts as to the
nature of the error should include statements by those
persons having personal knowledge of the acts regarding
filing in a foreign country and should be accompanied by
copies of any necessary supporting documents such as letters
of transmittal or instructions for filing. The acts which
are alleged to constitute error without deceptive intent
should cover the period leading up to and including each of
the prescribed foreign filings.

  (b) If a petition for a retroactive license is denied, a
time period of not less than thirty days shall be set,
during which the petition may be renewed. Failure to renew
the petition within the set time period will result in a
final denial of the petition. A final denial of a petition
stands unless a petition is filed under § 1.181 within two
months of the date of the denial. If the petition for a
retroactive license is denied with respect to the invention
of a pending application and no petition under § 1.181 has
been filed, a final rejection of the application under 35
U.S.C. 185 will be made.

  (c) The granting of a retroactive license does not excuse
any violation of the export regulations contained in 22 CFR
Parts  121  through  130  (International  Traffic  in  Arms
Regulations of the Department of State), 15 CFR Part 379
(Regulations  of  Office  of  Export  Administration,
International Trade Administration, Department of Commerce)
and 10 CFR Part 810 (Foreign Atomic Energy Programs of the
Department of Energy) which may have occurred because of the
failure to obtain an appropriate license prior to export.

  [49 FR 13463, Apr. 4, 1984; para. (a), 56 FR 1924, Jan.
18, 1991, effective Feb. 19, 1991]

  GENERAL

 § 5.31 Effect of modification, rescission or license.

  Any consent, rescission or license under the provisions
of this part does not lessen the responsibilities of the
principals in respect to any Government contract or the
requirements of any other Government agency.

  [24 FR 10381, Dec. 22, 1959; Redesignated at 49 FR
13463, Apr. 4, 1984]

 § 5.32 Papers in English language.

  All papers submitted in connection with petitions must
be in the English language or be accompanied by an English
translation and a translator's certificate as to the true,
faithful, and exact character of the translation.

  [24 FR 10381, Dec. 22, 1959; Redesignated at 49 FR
13463, Apr. 4, 1984]

 § 5.33 Correspondence.

  All  correspondence  in  connection  with  this  part,
including  petitions,  should  be  addressed  to  "Assistant
Commissioner for Patents (Attention Licensing and Review),
Washington, D.C. 20231."

  [49 FR 13463, Apr. 4, 1984; amended, 61 FR 56439, Nov.
1, 1996, effective Dec. 2, 1996]

  PART 7 - REGISTER OF GOVERNMENT INTERESTS IN PATENTS

 Sec.

 7.1  Requirements.

 7.2  Assignments.

 7.3  Licenses

 7.4  Abbreviated copy.

 7.5  Instruments already on record.

 7.6  Access to register.

 7.7  Secret register.

 § 7.1 Requirements.

  (a) Executive Order 9424 (3 CFR 1943 - 1948 Comp.)
requires  the  several  departments  and  other  executive
agencies of the Government, including Government - owned or
Government - controlled corporations, to forward promptly to
the Commissioner of Patents and Trademarks for recording all
licenses, assignments, or other interests of the Government
in or under patents or applications for patents.

  (b) An instrument relating to a patent must identify the
patent by the patent number. An instrument relating to a
national  patent  application  must  identify  the  national
patent application by the application number (consisting of
the series code and the serial number, e.g.,

 07/123,456) or the serial number and filing date. An
instrument relating to an international patent application
which designates the United States of America must identify
the  international  application  by  the  international
application number (e.g., PCT/US90/01234). If an assignment
is  executed  concurrently  with,  or  subsequent  to,  the
execution of the patent application, but before the patent
application  is  filed,  it  must  identify  the  patent
application by its date of execution, name of each inventor,
and title of the invention so that there can be no mistake
as to the patent application intended.

  (c) Each instrument submitted to the Office for recording
must be accompanied by at least one cover sheet as specified
in paragraph (d) of this section referring to those patent
applications and patents against which the instrument is to
be recorded. Only one set of instruments and cover sheets to
be recorded should be filed. If an instrument to be recorded
is  not  accompanied  by  a  completed  cover  sheet,  the
instrument and any incomplete cover sheet will be returned
for proper completion of a cover sheet and resubmission of
the instrument and a completed cover sheet.

  (d) Each cover sheet required by paragraph (c) of this
section must contain:

  (1) the name of the party conveying the interest;

  (2) the name and address of the party receiving the
interest;

  (3) a description of the interest conveyed or transaction
to be recorded;

  (4) each application number or patent number against
which the instrument is to be recorded, or an indication
that  the  instrument  if  filed  together  with  a  patent
application;

  (5)  the  name  and  address  of  the  party  to  whom
correspondence  concerning  the  request  to  record  the
instrument should be mailed;

  (6) the number of applications or patents identified in
the cover sheet and the total fee;

  (7) the date the instrument was executed;

  (8) a statement by the party submitting the instrument
that to the best of the person's knowledge and belief, the
information contained on the cover sheet is true and correct
and any copy submitted is a true copy of the original
instrument; and

  (9) the signature of the party submitting the instrument.

  (e) Each patent cover sheet required by paragraph (c) of
this section seeking to record a government inter est as
provided by paragraph (a) of this section must:

  (1) indicate that the instrument is to be recorded on the
governmental  register,  and,  if  applicable,  that  the
instrument is to be recorded on the Secret Register. See §
7.7.

  (2) indicate, if applicable, that the instrument to be
recorded is not an instrument affecting title. See paragraph
(j) of this section.

  (f) An error in a cover sheet recorded pursuant to this
Part will be corrected only if:

  (1) the error is apparent when the cover sheet is
compared with the recorded instrument to which it pertains,
and

  (2) a corrected cover sheet accompanied by the recording
fee set forth in paragraph (i) of this section and either
the original recorded instrument or a copy of the original
recorded instrument is filed for recordation.

  (g) The Office will accept and record non - English
language instruments only if accompanied by a verified
English translation signed by the individual making the
translation.

  (h) Instruments and cover sheets to be recorded should be
addressed to the Commissioner of Patents and Trademarks, Box
Assignment, Washington, D.C. 20231.

  (i)  All  requests  to  record  instruments  must  be
accompanied by the appropriate fee. Except as provided in
paragraph (j) of this section, a recording fee set forth in
§  1.21(h)  of  this  chapter  fee  is  required  for  each
application and patent against which the instrument is
recorded as identified in the cover sheet.

  (j) No fee is required for each patent application and
patent against which an instrument required by Executive
Order 9424 (3 CFR 1943 - 1948 Comp.) to be filed if:

  (1) the instrument does not effect title and is so
identified in the cover sheet (see paragraph (e) of this
section); and

  (2) the cover sheet is filed in a format approved by the
Office.

  [Amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1,
1995]

 § 7.2 Assignments.

  The original of an assignment or other instrument which
conveys to the Government only the title to a patent or to
an  application  for  patent  shall  be  forwarded  to  the
Commissioner of Patents and Trademarks. The instrument will
be recorded, endorsed, and returned.

 § 7.3 Licenses.

  A copy of any license or instrument other than an
assignment which conveys to or gives the Government any
interest in or under a patent or an application for patent
shall be forwarded for recording. The copy will be retained
by the Patent and Trademark Office but, when desired, the
original will be endorsed and returned.

 § 7.4 Abbreviated copy.

  If an instrument deals with matters in addition to
rights and interests in patents or in applications for
patents, or in inventions disclosed therein, a copy of only
those portions of the instrument dealing with such rights
and interests need be forwarded. In such case, a state ment
giving the general nature of the entire instrument, the
parties involved, the date of the instrument, the place
where it is usually filed, and any docket or identifying
number, must be attached to the copy.

 § 7.5 Instruments already on record.

  Instruments which have been recorded prior to the
adoption of § § 7.1 to 7.7 and are on the general assignment
records of the Patent and Trademark Office need not be
forwarded for recording.

 § 7.6 Access to register.

  T he register will not be open to public inspection. It
will be available for examination and inspection by duly
authorized representatives of the Government, subject to the
provisions of § 7.7. Public examination will be restricted
to those instruments which the department or agency or
origin has so authorized in writing.

 § 7.7 Secret register.

  Any instrument to be recorded will be placed on a secret
record or register at the request of the department or
agency submitting the same. No information will be given
concerning any instrument in such record or register, and no
examination or inspection thereof or of the index thereto
will be permitted, except on the written authority of the
head  of  the  department  or  agency  which  submitted  the
instrument and requested secrecy, and the approval of such
authority by the Commissioner of Patents and Trademarks. No
instrument or record other than the one specified may be
examined,  and  the  examination  must  take  place  in  the
presence  of  a  designated  official  of  the  Patent  and
Trademark  Office.  When  the  department  or  agency  which
submitted an instrument no longer requires secrecy with
respect  to  that  instrument,  it  will  be  recorded  or
registered anew in the appropriate part of the register
which is not secret.

  INDEX - RULES RELATING TO PATENTS

  A

  Abandoned applications:

  Abandonment by failure to prosecute  . .  1.135

  Abandonment during Interference  . .  1.662(a)

  Abandonment for failure to pay issue fee  .  1.316

  Express abandonment  . .  1.138

  Not cited  . .  1.108

  Processing and retention fee  . .  1.21(1)

  Referred to in issued patents  . .  1.14

  Revival of  . .  1137 ,
  1.155 , 1.316

  When open to public inspection  . .  1.14

  Abandonment of application. (See also

  Abandoned applications.)

  Abstract of the disclosure  . .  1.72

  Access, petition for  . .  1.14

  Action by applicant  . .  1.111 -
  1.138

  Address for notice to Commissioner of

  appeal to Fed. Cir  . .  1.302(c)

  Address of Solicitor's Office  . .  1.1(a)

  Address of the Patent and Trademark Office  1.1

  Box FWC  . .  1.62(i)

  Box Interference  . .  1.1(e)

  Box M Fee  . .  1.1(d)

  Box Patent Ext  . .  1.1(f)

  Box PCT  . .  1.1(b)

  Box Reexam  . .  1.1(c)

  Administrator or executor, May make application

  and receive patent  . .  1.42

  Proof of authority  . .  1.44

  Admission to practice (See also Attorneys

  and agents.)

  Affidavit (see also Oath in patent applications):

  After appeal  . .  1.195

  In support of application for reissue  . .  1.175

  To disqualify commonly owned patent as prior art  
  1.130

  To overcome cited patent or publication  . .  1.131

  Traversing grounds of rejection  . .  1.132

  Agents. (See also Attorneys and agents.)

  Allowance and issue of patent:

  Amendment after allowance  . .  1.312

  Traversing grounds of rejection  . .  1.312

  Deferral of issuance  . .  1.314

  Delayed payment of issue fee  . .  1.155 ,
  1.316 , 1.317

  Delivery of patent  . .  1.315

  Forfeited application  . .  1.155 ,
  1.316

  Issuance of patent  . .  1.155 ,
  1.314

  Notice of allowance  . .  1.155 ,
  1311

  Patent to issue upon payment of issue fee  .  1.311 ,
  1.314

  Patent to lapse if issue fee is not paid in full  
  1.317

  (Allowance and issue of patent):

  Patent withheld for nonpayment of

  issue fee  . .  1.155 ,
  1.316

  Reasons for  . .  1.109

  Withdrawal from issue  . .  1.313

  Allowed claims statement of grounds for rejecting

  by Board of Patent Appeals and Interferences  1.196

  Amendment:

  Adding or substituting claims  . .  1.119

  After appeal  . .  1.116

  After decision on appeal, based on new rejection

  of Board of Patent Appeals and Interferences  1.196

  After final action  . .  1.116

  After notice of allowance  . .  1.312

  By patent owner  . .  1.530

  Copying claim of another application for

  interference  . .  1.603

  Copying claim of issued patent  . .  1.606 ,
  1.607

  Drawings  . .  1.123

  Entry and consideration of  . .  1.122

  Erasures and insertions  . .  1.121

  Involving a departure from original invention  1.118

  Manner of making  . .  1.121

  May be required  . .  1.117

  Not covered by original oath  . .  1.67

  Numbering of claims  . .  1.126

  Of amendments  . .  1.124

  Of claims  . .  1.119

  Of disclosure  . .  1.118

  Of drawing  . .  1.123

  Of specification  . .  1.118

  Paper and writing  . .  1.52

  Petition from refusal to admit  . .  1.127

  Proposed during interference  . .  1.615

  Reissue  . .  121(e) ,
  1.173 , 1.174

  Requisites of  . .  1.33 ,
  1.111 , 1.115 , 1.116

 1.121 1.123 1.124
  1.125

  Right to amend  . .  1.111 ,
  1.115 , 1.116 , 1.127

  Signature to  . .  1.33

  Substitute specification  . .  1.125

  Time for  . .  1.134

  To accompany motion to amend interference  .  1.633

  To applications in interference  . .  1.633

  To correct inaccuracies or prolixity  . .  1.117

  To correspond to original drawing or specification  
  1.118

  To preliminary statement in interference  .  1.628

  To reissues  . .  1.173 ,
  1.174

  To save from abandonment  . .  1.135

  Amino acid sequences (See also nucleotide and/or

  amino acid sequences)

  Appeal to Board of Patent Appeals and Interferences:

  Action following decision  . .  1.197

  Affidavits after appeal  . .  1.195

  (Appeal to Board of Patent Appeals and Interferences):

  Brief  . .  1.192

  Decision by Board  . .  1.196

  Examiner's answer  . .  1.193

  Fees  . .  1.17

  Hearing of  . .  1.194

  New grounds for refusing a patent  . .  1.196

  Notice of appeal  . .  1.191

  Rehearing  . .  1.197

  Reopening after decision  . .  1.198

  Reply brief  . .  1.193

  Statement of grounds for rejecting, by Board of

  Appeals  . .  1.196

  Fee provided by rules of court  . .  1301

  From Board of Patent Appeals and Interferences  
  1.301

  Notice and reasons of appeal  . .  1.302

  Time for  . .  1.302 ,
  1.304

  Applicant for patent  . .  1.41 -
  1.48

  Change  . .  1.48

  Deceased or insane inventor  . .  1.42 ,
  1.43

  Executor or administrator  . .  1.42

  Informed of serial number of application  .  1.54

  Joint changed to sole  . .  1.48

  Letters for, sent to attorney or agent  . .  1.33

  May be represented by an attorney or agent  1.31

  Personal attendance unnecessary  . .  1.2

  Required to conduct business with decorum and

  courtesy  . .  1.3

  Required to report assistance received  . .  1.33

  Sole changed to joint  . .  1.48

  Sole changed to another sole  . .  1.48

  Application for patent (See also Abandoned

  applications,Claims, Drawing, Examination of

  application, Reissues, Specification):

  Accepted and filed for examination only when

  complete  . .  1.53

  Access to  . .  1.14

  Acknowledgment of filing  . .  1.54

  Alteration after execution  . .  1.56

  Alteration before execution  . .  1.52

  Arrangement  . .  1.77

  Continuation or division, reexecute not

  required  . .  1.60 ,
  1.62

  Copies of, furnished to applicants  . .  1.59

  Cross - references of related applications  1.78

  Deceased or insane inventor  . .  1.42 ,
  1.43

  Declaration  . .  1.68

  Duty of disclosure  . .  1.56

  Execution in blank  . .  1.67

  File wrapper continuing application  . .  1.62

  Filed by other than inventor  . .  1.42 ,
  1.43 , 1.47

  Filing date  . .  1.53

  Foreign language oath or declaration  . .  1.69

  (Application for patent):

  Formulas and tables  . .  158

  General requisite  . .  1.51

  Identification required in letters concerning  1.5

  Incomplete papers not accepted and filed

  for examination  . .  1.53

  Interlineations, etc., to be indicated  . .  1.52

  Language, paper, writing, margin  . .  1.52

  Later filing of oath and filing fee  . .  1.53

  Must be made by actual inventor, with

  exceptions  . .  1.41 ,
  1.46

  Names of all inventors required  . .  1.41 ,
  1.53

  Non - English language  . .  1.52

  Owned by Government  . .  103

  Papers having filing date not to be returned  1.59

  Parts filed separately  . .  1.54

  Parts of application desirably filed together  1.54

  Parts of complete application  . .  1.51

  Processing fees  . .  1.17

  Relating to atomic energy  . .  1.14

  Retention fee  . .  1.53(d)

  Secrecy order  . .  5.1 - 5.8

  Secret while pending  . .  1.14

  Serial number and filing date  . .  1.54

  Tables and formulas  . .  1.58

  To contain but one invention unless connected  1.141

  To whom made  . .  1.51

  Two or more by same party with conflicting claims  1.78

  Application number  . .  1.5(a)

  Arbitration award filing  . .  1.335

  Arbitration in interference  . .  1.690

  Assignee:

  Correspondence held with assignee of entire

  interest  . .  3.71 ,
  3.73

  If of entire interest, patent may issue to him  1.46
  , 3.81

  If of undivided part interest, correspondence

  will be held with inventor  . .  1.33

  If of undivided part interest, must assent to

  application for reissue of patent  . .  1.171 ,
  1.172

  If of undivided part interest, patent may issue

  jointly  . .  1.46 ,
  3.81

May conduct prosecution of application  . .  3.71 ,
  3.73

May take action in interference  . .  1.643

  Assignments and recording:

  Abstracts of title, fee for  . .  1.19(b)

  Conditional assignments  . .  3.56

  Cover sheet required  . .  3.28 ,
  3.31

  Corrections  . .  3.34

  Date of receipt is date of record  . .  3.54

  Definitions  . .  1.332

  Effect of recording  . .  3.54

  Fees  . .  1.21(h)

  Formal requirements  . .  3.21 -
  3.28

  (Assignments and recording):

  If recorded before payment of issue fee, patent

  will issue to assignee  . .  3.81

  Must be recorded in Patent and Trademark Office

  to issue patent to assignee  . .  3.81

  Must identify patent or application  . .  3.21

  Orders for copies of  . .  1.12

  Patent may issue to assignee  . .  3.81

  Recording data  . .  3.51

  Records open to public inspection  . .  1.12

  Requirements for recording  . .  3.21 ,
  3.41

  What will be accepted for recording  . .  3.11

  Atomic energy applications reported to Department of

  Energy  . .  1.14

  Attorneys and agents:

  Acting in representative capacity  . .  1.33 ,
  1.34

  Advertising  . .  10.32

  Agents, registration of  . .  10.6(b)

  Assignment will not operate as a revocation of

  power  . .  1.36

  Associate  . .  1.34

  Attorneys at law, registration of  . .  10.6(a)

  Certificate of good standing  . .  1.21(a)

  Code of professional responsibility  . .  10.20

  Committee on Enrollment  . .  10.3

  Fee on admission  . .  1.21(a)

  Foreign patent attorneys and agents,

  registration of  . .  10.6(c)

  Former examiners, registration of  . .  10.6(e)

  General powers not recognized  . .  1.34

  Government officers and employees as  . .  10.6(d)

  Limited recognition  . .  10.9

  Must be refused recognition for misconduct  10.15

  Oath and registration fee  . .  10.8

  Office cannot aid in selection of  . .  1.31

  Personal interviews with examiners  . .  1.133

  Persons not registered or recognized  . .  10.10

  Power of attorney or authorization of agent  1.34

  Professional conduct  . .  10.20

  Registration of attorneys and agents  . .  10.6

  Removing names from registers  . .  10.11

  Representative capacity  . .  1.33 ,
  1.34

  Representing conflicting parties  . .  1.613

  Required to conduct business with decorum and

  courtesy  . .  1.3

  Requirements for registration  . .  10.7

  Revocation of power  . .  1.36

  Signature and certificate of attorney  . .  10.18

  Suspension or disbarment proceedings  . .  1.0.130 -
  10.170

  Who may act as  . .  10.40

  Withdrawal of  . .  1.36

  Authorization of agents. (See also Attorneys and agents.)

  Award in arbitration  . .  1.335

  B

  Balance in deposit account  . .  1.25

  Basic filing fee  . .  1.16

  Benefit of earlier application  . .  1.78

  Bill in equity (See also Civil action.)

  Board of Appeals. (See also Appeal to Board of Patent

  Appeals and Interferences)

  Box FWC  . .  1.62(I)

  Box PCT  . .  1.1(b)

  Box Reexam  . .  1.1(c)

  Briefs:

  At final hearing in interference  . .  1.656

  In petitions to Commissioner  . .  1.181

  On appeal to Board  . .  1.192

  Business to be conducted with decorum and courtesy  1.3

  Business to be transacted in writing  . .  1.2

  C

  Certificate of correction  . .  1.322 ,
  1.323

  Fees  . .  1.20

  Mistakes not corrected  . .  1.325

  Certificate of mailing (First Class) or transmission  
  1.8

  Certificate, Reexamination  . .  1.570

  Certified copies of records, papers, etc  .  1.4(f) ,
  1.13

  Fee for certification  . .  1.19(b)

  Chemical and mathematical formulae and tables  1.58

  Citation of prior art in patent  . .  1.501

  Citation of references  . .  1.107

  Civil action  . .  1303 ,
  1.304

  Claims (See also Examination of applications):

  Amendment of  . .  1.119

  Conflicting, same applicant or owner  . .  1.78

  Date of invention of  . .  1.110

  Dependent  . .  1.75

  Design patent  . .  1.153

  May be in dependent form  . .  1.75

  More than one permitted  . .  1.75

  Multiple dependent  . .  1.75

  Must conform to invention and specification  175

  Notice of rejection of  . .  1.104

  Numbering of  . .  1.126

  Part of complete application  . .  1.51

  Plant patent  . .  1.166

  Rejection of  . .  1.106

  Required  . .  1.75

  Twice or finally rejected before appeal  . .  1.191

  Color drawing  . .  1.84(p)

  Commissioner of Patents and Trademarks (See

  also Petition to Commissioner):

  Address of  . .  1.1

  Cases decided by Board reopened only by  . .  1.198

  Conduct of disbarment proceedings  . .  10.130

  Initiates reexamination  . .  1.520

  (Commissioner of Patents and Trademarks):

  May discipline attorneys and agents  . .  10.130

  Reconsideration of cases decided by former  1.184

  Reissue in divisions referred to  . .  1.177

  Return of papers in violation of rule  . .  1.3

  Complaints against examiners, how presented  1.3

  Composition of matter, specimens of ingredients may

  be required  . .  1.93

  Computer program listings  . .  1.96

  Concurrent office proceedings  . .  1.565

  Conduct of reexamination proceedings  . .  1.550

  Conflicting claims, same applicant or owner in two

  or more applications  . .  1.78

  Continuing application for invention disclosed

  and claimed in prior application  . .  1.60 ,
  1.62

  Copies of patents, records, etc  . .  1.11 ,
  1.12 , 1.13

  Copies of records, fees  . .  1.19(b) ,
  1.59

  Copyright notice in specification  . .  1.71(d)

  Copyright notice on drawings  . .  1.84(o)

  Correction, certificate of  . .  1.322 ,
  1.323

  Correction of inventorship  . .  1.48 ,
  1.324

  Correspondence:

  Addresses  . .  1.1

  Business with the Office to be transacted by  1.2

  Discourteous communications returned  . .  1.3

  Double, with different parties in interest not

  allowed  . .  1.33

  Facsimile transmission  . .  1.6(d)

  Held with attorney or agent  . .  1.33

  Identification of application or patent in letter

  relating to  . .  1.5

  May be held exclusively with assignee of entire

  interest  . .  3.81

  Nature of  . .  1.4

  Patent owners in reexamination  . .  1.33(c)

  Receipt of letters and papers  . .  1.6

  Resumed with principal, if power or authorization is

  revoked  . .  1.36

  Rules for conducting in general  . .  1.1 - 1.8

  Separate letter for each subject of inquiry  1.4

  Signature requirement  . .  1.4(d)

  When no attorney or agent  . .  1.33

  With attorney or agent after power or authorization

  is filed  . .  1.33

  Coupons sold by the Office  . .  1.24

  Court of Appeals for the Federal Circuit, appeal to (See

  also Appeal to Court of Appeals for the Federal Circuit).

  D

  Date of invention of subject matter of individual

  claims  . .  1.110

  Day for taking any action or paying any fee falling

  on Saturday, Sunday, or Federal holiday  . .  1.7

  Death or insanity of inventor  . .  1.42 ,
  1.43

  Decision by the Board of Patent Appeals and

  Interferences  . .  1.196

  Action following decision  . .  1.197

  Declaration (See also Oath in patent application):

  Foreign, language  . .  1.69

  In lieu of oath  . .  1.68

  In patent application  . .  1.68

  Definitions:

  Federal holiday within the District of Columbia  1.9

  Independent inventor  . .  1.9

  National and international applications  . .  1.9

  Nonprofit organization  . .  1.9

  Service of process  . .  Part15

  Small business concern  . .  1.9

  Small entity  . .  1.9

  Terms under Patent Cooperation Treaty  . .  1401

  Delivery of patent  . .  1.315

  Deposit accounts  . .  1.25

  Fees  . .  1.21(b)

  Deposit of biological material:

  Acceptable depositary  . .  1.803

  Deposit of computer program listings  . .  1.96

  Depositions (See also Testimony in interferences):

  Certificate of officer to accompany  . .  1.676

  Formalities to be observed in preparing  . .  1.677

  Person before whom taken  . .  1.674

  To be sealed up, addressed, and forwarded to the

  Commissioner  . .  1.676

  When taken must be filed  . .  1.678

  Description of invention. (See also Specification.)

  Design Patent Applications:

  Arrangement of specification  . .  1.154

  Claim  . .  1.153

  Drawing  . .  1.152

  Filing fee  . .  1.16(f)

  Issue and term  . .  1.155

  Issue fee  . .  1.18(b)

  Oath  . .  1.153

  Rules applicable  . .  1.151

  Title, description and claim  . .  1.153

  Determination of request for reexamination  1.515

  Disbarment of attorneys and agents  . .  10.23

  Disclaimer, statutory:

  During interference  . .  1.662(a)

  Fee  . .  1.20(d)

  Requirements of  . .  1.321

  Terminal  . .  1.321

  Disclosure, amendments to not permitted  . .  1.118

  Disclosure document fee  . .  1.21(c)

  Discovery in  . .  1.672 ,
  1.688

  Division (See also Restriction of application.)

  Division of patent on reissue  . .  1.177

  Document supply fees  . .  1.19

  Drawing:

  Amendment of  . .  1.118 ,
  1.123

  Arrangement of views  . .  1.84(i)

  Character of lines  . .  1.84(i)

  Color  . . 
  1.84(a)(2)

Content of drawing  . .  1.83

Copyright notice  . .  1.84(s)

Correction  . .  184(w) ,
  1.85(c)

Cost of copies of  . .  1.19

Design application  . .  1.152

Figure for  Official Gazette  . .  1.84(j)

Filed with application  . .  1.81

Graphics  . .  1.84(d)

Hatching and shading  . .  1.84(m)

Holes  . .  1.84(x)

Identification  . .  1.84(c)

If of an improvement, must show connection with

  old structure  . .  1.83

Inferior or defective drawings will be rejected  1.85

Informal drawings  . .  1.85

Ink  . .  184(a)(1)
  , 1.84(q)

Location of names  . .  1.84(c)

Mask work notice  . .  1.84(s)

Must be described in and referred to specification  

  174

  Must show every feature of the invention  .  1.83

  No return or release  . .  1.85(b)

  Numbering of sheets  . .  1.84(t)

  Numbering of views  . .  1.84(u)

  Original may be used with application for reissue  
  1.174

  Original should be retained by applicant  .  1.81(a)

  Paper  . .  1.84(a)

  Photographs  . .  1.84(b)

  Plant patent application  . .  1.81 ,
  1.165

  Printed and published by Office when patented  184

  Reference characters  . .  1.74 ,
  1.84(f)

  Reissue  . .  1.174

  Release not permitted  . .  1.85(b)

  Required by law when necessary for understanding  1.81

  Scale  . .  1.84(k)

  Security markings  . .  1.84(v)

  Shading  . .  1.84(m)

  Size of sheet and margins  . .  1.84(f) ,
  (g)

  Specific rules relating to preparation of drawings

  will be enforced  . .  1.85

  Standards for drawings  . .  1.84

  Symbols, legends  . .  1.84(g)

  Views  . .  1.84(h)

  When necessary, part of complete application  1.51

  Duty of disclosure  . .  1.56 ,
  1.555

  Patent term extension  . .  1.765

  E

  Election of species  . .  1.146

  Employee testimony (See also Testimony by

  Office employees)

  Establishing small entity status  . .  1.27 ,
  1.28

  Evidence. (See also Testimony in interferences.)

  Examination of applications:

  Abandoned and forfeited applications not cited in  
  1.108

  Advancement of examination  . .  1.102

  As to form  . .  1.104 ,
  1.105

  Citation of references  . .  1.107

  Completeness of examiner's action  . .  1.105

  Examiner's action  . .  1.104

  International - type search  . .  1.104

  Nature of examination  . .  1.104

  Order of examination  . .  1.101

  Reasons for allowance  . .  1.109

  Reexamination after rejection if requested  1.111

  Reexamination of original claims upon reissue  1.176

  Reissue  . .  1.176

  Rejection of claims  . .  1.106

  Suspension of  . .  1.103

  Examination of papers by attorney or agent not

  permitted without authorization  . .  1.34

  Examiners:

  Answers on appeal  . .  1.193

  Complaints against  . .  1.3

  Interviews with  . .  1.133

  Executors  . .  1.42 ,
  1.44

  Exhibits. (See also Models and exhibits.)

  Export of technical data  . .  5.19 ,
  5.20

  Express abandonment  . .  1.138

  "Express Mail"  . .  1.6 ,
  1.10

  Extension of patent term:

  Applicant for  . .  1.730

  Application for  . .  1.740

  Calculation of term:

  Animal drug product  . .  1.778

  Food or color additive  . .  1.776

  Human drug product  . .  1.775

  Veterinary biological product  . .  1.779

  Medical device  . .  1777

  Certificate  . .  1.780

  Conditions for  . .  1.720

  Determination of eligibility  . .  1.750

  Duty of disclosure  . .  1.765

  Filing date of application  . .  1.741

  Interim extension under 35 U.S.C. 156(d)(5)  1.790

  Interim extension umder 35 U.S.C. 156(e)(2)  1.760

  Extension of time  . .  1.136

  Multiple applications  . .  1.785

  Patents subject to  . .  1.710

  (Extension of time):

  Termination of interim extension granted

  under 35 U.S.C. 156(d)(5)  . .  1.791

  Withdrawal of application  . .  1.770

  Fees  . .  1.17

  Interference proceedings  . .  1.645

  Reexamination proceedings  . .  1.550(c)

  F

  Facsimile transmission  . .  1.6(d) ,
  1.8

  Federal holiday within the District of Columbia  
  1.9(h)

  Federal Register, publication of rules in  .  1351 ,
  1.352

  Fees and payment of money:

  Deposit accounts  . .  1.25

  Extension of time  . .  1.17

  Fee on appeal to the Court of Appeals for the

  Federal Circuit provided by rules of court  1.301

  Fees in case of petitions  . .  1.181

  Fees payable in advance  . .  1.22

  Foreign filing license petition  . .  1.17(h)

  For international - type search report  . .  1.21(e)

  Method of payment  . .  1.23

  Money by mail at risk of sender  . .  1.23

  Money paid by mistake  . .  1.26

  Petitions  . .  1.17

  Reexamination request  . .  1.20(c)

  Refunds  . .  1.26

  Relating to international applications  . .  1.445

  Schedule of fees and charges  . .  1.16 -
  1.21

  File wrapper continuing application procedure  1.62

  Files and papers of abandoned applications,

  disposition  . .  1.34

  Files open to the public  . .  1.11

  Filing date of application  . .  1.53

  Filing fee part of complete application  . .  1.51

Filing fees  . .  1.16

  Filing in Post Office  . .  1.10

  Filing of interference settlement agreements  1.666

  Final rejection:

  Appeal from  . .  1.191

  Response to  . .  1.113 ,
  1.116

  When and how given  . .  1.113

  Foreign application  . .  1.55

  License to file  . .  5.11 -
  5.33

  Foreign country:

  Taking oath in  . .  1.66

  Taking testimony in  . .  1.684

  Foreign mask work protection Part  . .  150

  Evaluation of request  . .  150.4

  Definition  . .  150.1

  Duration of proclamation  . .  150.5

  Initiation of evaluation  . .  150.2

  (Foreign mask work protection Part):

  Mailing address  . .  150.6

  Submission of requests  . .  150.3

  Foreign patent rights acquired by

  government  . .  101.1 -
  101.11

  Licensing  . .  102.1 -
  102.6

  Forfeited application, for nonpayment of issue

  fee  . .  1.155 ,
  1.316

  Not cited as reference  . .  1.108

  Formulas and tables in patent applications  1.58

  Fraud practiced or attempted on Office  . .  1.56

  G

  Gazette (See Official Gazette .)

  General authorization to charge deposit account  1.25

  General information and correspondence  . .  1.1 - 1.8

  Government employees, as attorney or agent  10.6

  Government interest in patent, recording of  7.1 - 7.7

  Guardian of insane person may apply for patent  1.43

  H

  Hearings:

  Before the Board of Patents Appeals and

  Interferences  . .  1.194

  Fee for appeal hearing  . .  1.17

  In disbarment proceedings  . .  10.144

  Of motions in interferences  . .  1.640

  Holiday, time for action expiring on  . .  1.6 , 1.7

  I

  Identification of application, patent or registration  
  1.5

  Independent inventor:

  Definition  . .  1.9

  Status statement  . .  1.27

  Information disclosure statement:

  At time of filing application  . .  1.51

  Content of  . .  98

  Reexamination  . .  1.555

  To comply with duty of disclosure,  . .  197

  Information, Public  . .  1.15

  Insane inventor, application by guardian of  1.43

  Interferences (See also Depositions, Motions in

  interferences, Preliminary statement in interferences):

  Abandonment of the contest  . .  1.662

  Access to applications  . .  1.612

  Access to preliminary statement  . .  1.631

  Action by examiner after interference  . .  1.664

  Action if statutory bar appears  . .  1.659

  Addition of new party by examiner - in - chief  
  1.642

  Amendment during  . .  1.615 ,
  1.633 , 1.634

  Information, Public  . .  1.15

  Appeal to the Court of Appeals for the

  Federal Circuit  . .  1.301 ,
  1.302

  (Information, Public):

  Applicant requests  . .  1.604

  Arbitration  . .  1.690

  Briefs at final hearing  . .  1.656

  Burden of proof  . .  1.657

  Civil action  . .  1.303

  Claims copied from patent  . .  1.606 ,
  1.607

  Claims of defeated parties stand finally

  disposed of  . .  1.633

  Concession of priority  . .  1.662

  Conflicting parties having same attorney  .  1.613

  Copying claims from patent  . .  1.606 ,
  1.607

  Correspondence  . .  1.5(e)

  Declaration of interference  . .  1.611

  Definition  . .  1.601

  Disclaimer to avoid interference  . .  1.662(a)

  Discovery  . .  1.671 ,
  1.688

  Dissolution of  . .  1.633

  Dissolution on motion of examiner  . .  1.641

  Extension of time  . .  1.645

  Failure of junior party to take testimony  .  1652

  Failure to prepare for  . .  1.603 -
  1.606

  Final decision  . .  1.658

  Final hearing  . .  1.654

  Final hearing briefs  . .  1.656

  Identifying claim from

  patent  . . 
  1.607(a)(3) , 1.637(e)(1)(vi)

  In what cases declared  . .  1.601

  Inspection of cases of opposing parties  . .  1.612

  Interference with a patent  . .  1.606 -
  1.608

  Junior party fails to overcome filing date of

  senior party  . .  1.640

  Jurisdiction of interference  . .  1.614

  Manner of service of papers  . .  1.646

  Matters considered in determining priority  1.655

  Motions  . .  1.633 -
  1.638

  Non - patentability argued at final hearing  1.655

  Notice and access to applications of opposing

  parties  . .  1.612

  Notice of intent to argue abandonment  . .  1.632

  Notice of reexamination, reissue, protest, or

  litigation  . .  1.660

  Notice to file civil action  . .  1.303

  Notices and statements  . .  1.611

  Order to show cause, judgment on the record  1.640

  Ownership of applications or patents involved  1.602

  Petitions  . .  1.644

  Preliminary statement contents  . .  1.622 -
  1.625

  Preparation for  . .  1.603 -
  1.605

  Presumption as to order of invention  . .  1.657

  Prosecution by assignee  . .  1.643

  (Interferences):

  Recommendation by Board of Patent Appeals and

  Interferences  . .  1.659

  Records of, when open to public  . .  1.11

  Reissue filed by patentee during  . .  1.662

  Requests by applicants  . .  1.604

  Requests for findings of fact and conclusions

  of law  . .  1.656

  Return of unauthorized papers  . .  1.618

  Review of decision by civil action  . .  1.303

  Same party  . .  1.602

  Sanctions for failure to comply with rules of order  
  1.616

  Second interference between same parties  .  1.665

  Secrecy order cases  . .  5.3(b)

  Service of papers  . .  1.646

  Statement of, from examiner to Board  . .  1.609

  Status of claims of defeated applicant after

  interference  . .  1.663

  Statutory disclaimer by patentee during  . .  1.662

  Suggestion of claims for interference  . .  1.605

  Summary judgment  . .  1.617

  Suspension of ex parte prosecution  . .  1.615

  Termination of interference  . .  1.661

  Testimony copies  . .  1.653

  Time period for completion  . .  1.610

  Times for discovery and taking testimony  .  1.651

  Translation of document in foreign language  1.647

International application. (See also Patent

  Cooperation Treaty.)

  International Preliminary Examining Authority  1.416

  Interview summary  . .  1133

  Interviews with examiner  . .  1.133 ,
  1.560

  Inventor (See also Applicant for patent; Oath in

  patent application):

  Death or insanity of  . .  142 ,
  1.43

  Refuses to sign application  . .  1.47

  To make application  . .  1.41

  Unavailable  . .  1.47

  Inventor's certificate priority benefit  . .  1.55

  Inventorship and date of invention of the subject matter

  of individual claims  . .  1.110

  Issue fee  . .  1.18

  Issue of patent (See also Allowance and issue of patent.)

  J

  Joinder of inventions in one application  .  1.141

  Joint inventors  . .  1.45 ,
  1.47 , 1.324

  Joint patent to inventor and assignee  . .  1.46 ,
  3.81

  Jurisdiction:

  After decision by Board of Patent Appeals and

  Interferences  . .  1.197 ,
  1.198

  After notice of allowance  . .  1.312

  Of contested case  . .  1.614

  L

  Lapsed patents  . .  1.317

  Legal representative of deceased or incapacitated

  inventor  . .  1.42 -
  1.43

  Letters to the Office. (See also Correspondence.)

  Library service fee  . .  1.19(c)

  License and assignment of government interest in

  patent  . .  7.1 - 7.3

  License for foreign filing  . .  5.11 -
  5.17

  List of U.S. patents classified in a subclass, cost of  
  1.19(d)

  Local delivery box rental  . .  1.21(d)

  M

  Maintenance fees  . .  1.20

  Acceptance of delayed payment of  . .  1.378

  Fee address for  . .  1.363

  Review of decision refusing to accept  . .  1.377

  Submission of  . .  1.366

  Time for payment of  . .  1.362

  Mask work notice in specification  . .  1.71(d)

  Mask work notice on drawing  . .  1.84(o)

  Mask work protection, Foreign Part 150

  Microfiche deposit  . .  1.96

  Microorganisms (See also Deposit of Biological Material)

  Minimum balance in deposit accounts  . .  1.25

  Misjoinder of inventor  . .  1.48 ,
  1.324

  Mistake in patent, certificate there of issued  
  1.322 , 1.323

  Models and exhibits:

  Copies of  . .  1.95

  If not claimed within reasonable time, may be

  disposed of by Commissioner  . .  1.94

  If on examination model be found necessary request

  therefor will be made  . .  1.91

  In contested cases  . .  1.676

  May be required  . .  1.92

  Model not generally required in application or

  patent  . .  1.91

  Not to be taken from the Office except in custody of

  sworn employee  . .  1.95

  Return of  . .  1.94

  Working model may be required  . .  1.92

  Money (See also Fees and payment of money.)

  Motions in interference  . .  1.633 -
  1.637

  To take testimony in foreign country  . .  1.684

  N

  Name of applicant  . .  1.41

  New matter inadmissible in application  . .  1.118

  New matter inadmissible in

  reexamination  . .  1.530(d)
  , 1.552(b)

  New matter inadmissible in reissue  . .  1.173

  Non - English language specification fee  .  1.17(k)

  Non - profit organization:

  Definition  . .  1.9

  Status statement  . .  1.27

  Notice:

  Of allowance of application  . .  1.311

  Of appeal to the Court of Appeals for the

  Federal Circuit  . .  1.301 ,
  1.302

  Of arbitration award  . .  1.335

  Of defective reexamination request  . .  1.510(c)

  Of interference  . .  1.611

  Of oral hearings before the Board of Patent

  Appeals and Interferences  . .  1.194

  Of rejection of an application  . .  1.104

  Of taking testimony  . .  1.673

  Of use of official records as evidence  . .  1.682

  To conflicting parties with same attorney or agent  
  1.613

  To parties in interference cases  . .  1.611

  Nucleotide and/or amino acid sequences:

  Amendments to  . .  1.825

  Disclosure in patent applications  . .  1.821

  Format for sequence data  . .  1.822

  Replacement of  . .  1.825

  Requirements  . .  1.823

  Symbols  . .  1.822

  O

  Oath in patent application: (See also Declaration)

  Apostilles  . .  1.66

  Before whom taken in foreign countries  . .  1.66

  Before whom taken in United States  . .  1.66

  By administrator or executor  . .  1.42 ,
  1.63

  By guardian of insane person  . .  1.43 ,
  1.63

  Certificate of Officer administering  . .  1.66

  Continuation - in - part  . .  1.63(d)

  Declaration  . .  1.68

  Foreign language  . .  1.69

  International application  . .  1.497

  Inventor's Certificate  . .  1.63

  Made by inventor  . .  1.41 ,
  1.63

  New oath required if original too old  . .  1.63

  Officers authorized to administer oaths  . .  1.66

  Part of complete application  . .  1.51

  Person making  . .  1.64

  Plant patent application  . .  1.162

  Requirements of  . .  1.63

  Ribboned to other papers  . .  1.66

  Sealed  . .  1.66

  Signature to  . .  1.63

  Supplemental oath for matter disclosed but not

  originally claimed  . .  1.67

  To acknowledge duty of disclosure  . .  1.63

  When taken abroad to seal all papers  . .  1.66

  Oath in reissue application  . .  1.175

  Oath or declaration

  Plant patent application  . .  1.162

  When international application enters national

  stage  . .  1.497

  Object of the invention  . .  1.73

  Office action time for response  . .  1.134

  Office fees. (See also Fees and payment of money.)

  Officers and employees, Government, acting as

  attorneys or agents  . .  10.6

  Official action, based exclusively upon the written

  record  . .  1.2

  Official business, should be transacted in writing  1.2

  Official Gazette:

  Amendments to rules published in  . .  1.351

  One view of drawing published in  . .  1.84

  Service of notices in  . .  1.646

  Oral statements  . .  1.2

  Order of examination  . .  1.101

  Order to reexamine  . .  1.525

  P

  Papers badly written, mechanical printing

  or typewriting required  . .  1.52

  Papers not received on Saturday, Sunday, or holidays  
  1.6

  Patent application (See also Application for patent.)

  Patent attorneys and agents. (See also

  Attorneys and agents.)

  Patent Cooperation Treaty:

  Amendments and corrections during international

  processing  . .  1.471

  Amendments during international preliminary

  examination  . .  1.485

  Applicant for international application  . .  1.421

  Changes in person, name or address, where

  filed  . .  1.421(f)
  , 1.472

  Conduct of international preliminary

  examination  . .  1.484

  Definition of terms  . .  1.401

  Delays in meeting time limits  . .  1.468

  Demand for international preliminary

  examination  . .  1480

  Designation of States  . .  1.432

  Entry into national stage  . .  1.491

  As a designated office  . .  1.494

  As an elected office  . .  1.495

  Examination at national stage  . .  1.496

  Fees:

  Designation fees  . .  1.432

  Due on filing of international application  1.431(c)

  Failure to pay results in withdrawal of

  application  . .  1.431(c)
  , 1.432

  Filing and processing fees  . .  1.445

  (Patent Cooperation Treaty:)

  International preliminary examining  . .  1.482

  National stage  . .  1.492

  Refunds  . .  1.446

  Filing by other than inventor  . .  1.425

  International application requirements  . .  1.431

  Abstract  . .  1.438

  Claims  . .  1.436

  Description  . .  1.435

  Drawings  . .  1.437

  Physical requirements  . .  1.433

  Request  . .  1.434

  International Bureau  . .  1.415

  International Preliminary Examining Authority  1.416

  Inventor deceased  . .  1.422

  Inventor insane or legally incapacitated  .  1.423

  Inventors, joint  . .  1.424

  National stage examination  . .  1.496

  Oath or declaration at national stage  . .  1.497

  Priority, claim for  . .  1.451

  Record copy to International Bureau, transmittal

  procedures  . .  1.461

  Representation by attorney or agent  . .  1.455

  Rule 13  . .  1.475

  Time limits for processing applications  . .  1.465 ,

  1.468

  United States as:

  Designated Office  . .  1.414 ,
  1.497

  International Searching Authority  . .  1.413

  Receiving Office  . .  1.412

Unity of invention:

  Before International Searching Authority  .  1.475 ,
  1.476

  Before International Preliminary Examining

  Authority  . .  1.487 ,
  1.488

  National stage  . .  1.475 ,
  1499

  Protest to lack of  . .  1.477 ,
  1.489

  Patent policy, government  . .  100.1 -
  100.11

  Patentee notified of interference  . .  1.602

  Patents (See also Allowance and issue of Patent):

  Available for license or sale, publication of notice  
  1.21(i)

  Certified copies of  . .  1.13

  Copying claims of  . .  1.606 ,
  1.607

  Correction of errors in  . .  1.171 ,
  1.322 , 1.323 , 1.324

  Date, duration and form  . .  1.317

  Delivery of  . .  1.315

  Disclaimer  . .  1.321

  Identification required in letters concerning  1.5

  Lapsed, for nonpayment of issue fee  . .  1.317

  Obtainable by civil action  . .  1.303

  Price of copies  . .  1.19

  Records of, open to public  . .  1.11

  Reissuing of, when defective  . .  1.171 -
  1.179

  Payment of fees  . .  1.23

  Personal attendance unnecessary  . .  1.2

  Petition for reissue  . .  1.171 ,
  1.172

  Petition to Commissioner:

  Fees  . .  1.17

  For delayed payment of issue fee  . .  1.155 ,
  1.316 , 1.317

  For license for foreign filing  . .  5.12

  For the revival of an abandoned application  1.137

  From formal objections or requirements  . .  1.113 ,
  1.181

  From requirement for restriction  . .  1.144

  General requirements  . .  1.181

  In interferences  . .  1.644

  In reexamination  . .  1.515(c)

  On refusal of examiner to admit amendment  .  1.127

  Questions not specifically provided for  . .  1.182

  Reconsideration of cases decided by former

  Commissioners  . .  1.184

  Suspension of rules  . .  1.183

  To exercise supervisory authority  . .  1.181

  To make special  . .  1.102

  Upon objection that appeal is informal  . .  1.193

  Photographs  . .  1.84(b)

  Plant patent applications:

  Applicant  . .  1.162

  Claim  . .  1.164

  Declaration  . .  1.162

  Description  . .  1.162

  Drawings  . .  1.165

  Examination  . .  1.167

  Fee for copies  . .  1.19

  Filing fee  . .  1.16(g)

  Issue fee  . .  1.18(c)

  Oath  . .  1.162

  Rules applicable  . .  1.161

  Specification  . .  1.163

  Specimens  . .  1.166

  Post issuance fees  . .  1.20

  Post Office receipt as filing date  . .  1.10

  Postal emergency or interruption  . .  1.6(d)

  Power of attorney. (See also Attorneys or agents.)

  Preliminary Examining Authority, International  
  1.416

  Preliminary statement in interferences:

  Access to  . .  1.631

  Contents to  . .  1.622 -
  1.627

  Contents of, invention made abroad  . .  1.624

  Correction of statement on motion  . .  1.628

  Effect of statement  . .  1.629

  Failure to file  . .  1.639 ,
  1.640

  In case of motion to amend interference  . .  1633

  May be amended if defective  . .  1.628

  Reliance on prior application  . .  1.630

  Requirement for  . .  1.621

  Sealed before filing  . .  1.627

  Service on opposing parties  . .  1.621

  (Preliminary statement in interferences):

  Subsequent testimony alleging prior dates

  excluded  . .  1.629

  When opened to inspection  . .  1.631

  Printing testimony  . .  1.653

  Prior art citation in patent  . .  1.501

  Prior art may be made of record in patent file  
  1.501

  Prior art statement:

  Content of  . .  1.98

  In reexamination  . .  1.555

  To comply with duty of disclosure  . .  1.97

  Priority of invention (See also Interferences.)

  Priority, right of, under treaty or law  . .  1.55

  Processing and retention fee  . .  1.21(b) ,
  1.53(d)

  Proclamation as to protection of foreign mask

  works  . .  Part150

  Protests to grants of patent  . .  1.291

  Public Information  . .  1.15

  Public use proceedings  . .  1.292

  Fee  . .  1.17(j)

  Publication:

  Of patent based on international application  1.318

  Of reexamination certificate  . .  1.570(f)

  R

  Reasons for allowance  . .  1.109

  Reconsideration of cases decided by a former

  Commissioner  . .  1.184

  Reconsideration of Office action  . .  1.112

Recording of assignments. (See also Assignments

  and recording.)

  Records of the Patent and Trademark Office  1.11 -
  1.15

  Records used as evidence in interference  .  1.682

  Reexamination:

  Amendments, manner of making  . .  1.121(f)

  Announcement in O.G  . .  1.11(c)

  Appeal to Board  . .  1.191

  Appeal to C.A.F.C  . .  1.301

  Certificate  . .  1.570

  Civil action  . .  1.303

  Concurrent office proceedings  . .  1.565

  Conduct of proceedings  . .  1.550

  Correspondence address  . .  1.33(c)

  Decision of request  . .  1.515

  Duty of disclosure  . .  1.555

  Examiner's action  . .  1.104

  Fee  . .  1.20(c)

  Fee charged to deposit account  . .  1.25

  Fee refund  . .  1.26

  Identification in letter  . .  1.5(d)

  Initiated by Commissioner  . .  1.520

  Interference  . .  1.565

  Interviews  . .  1.560

  (Reexamination):

  Open to public  . .  1.11(c)

  Order  . .  1.525

  Reconsideration  . .  1.112

  Refund of fee  . .  1.26

  Reply by requester  . .  1.535

  Reply to action  . .  1.111

  Request  . .  1.510

  Response consideration  . .  1.540

  Scope  . .  1.552

  Service  . .  1.248

  Statement of patent owner  . .  1.530

  Reference characters in drawings  . .  1.74 ,
  1.84(f)

  References cited on examination  . .  1.104 ,
  1.106 , 1.107

  Refund of money paid by mistake  . .  1.26

  Register of Government interest in patents  7.1 - 7.7

  Rehearing:

  On appeal to Board  . .  1.197

  Petition for, when time for appeal stayed  .  1.302

  Reissues:

  Applicants, assignees  . .  1.172

  Application for reissue  . .  1.171

  Application made and sworn to by inventor, if

  living  . .  1.172

  Declaration  . .  1.175

  Drawings  . .  1.174

  Examination of reissue  . .  1.176

  Filed during interference  . .  1.662(b)

  Filed during reexamination  . .  1.565

  Filing fee  . .  1.16

  Filing of announcement in  Official Gazette  1.11

  Grounds for and requirements  . .  1.171 -
  1.179

  Issue fee  . .  1.18(a)

  Loss of original patent  . .  1.178

  Notice of reissue application  . .  1.179

  Oath  . .  1.175

  Open to public  . .  1.11

  Original claims subject to reexamination  .  1.176

  Original patent surrendered  . .  1.178

  Reissue in divisions  . .  1.177

  Specification  . .  1.173

  Take precedence in order of examination  . .  1.176

  To contain no new matter  . .  1.173

  What must accompany application  . .  1.171 ,
  1.172

  When in interference  . .  1.660

  Rejection:

  After two rejections appeal may be taken from

  examiner to Board  . .  1.191

  Applicant will be notified of rejection with reasons

  and references  . .  1.104

  Based on commonly owned prior art, how overcome  

  1.130

  (Rejection):

  Examiner may rely on admissions by applicant or

  patent owner, or facts within examiner's

  knowledge  . .  1.106

  Final  . .  1.113

  Formal objections  . .  1.104 ,
  1.105

  On account of invention shown by others but not

  claimed, how overcome  . .  1.131

  References will be cited  . .  1.106

  Requisites of notice of  . .  104 ,
  1.106 , 1.107

  Reply brief  . .  1.193

  Reply by applicant or patent owner  . .  1.111

  Reply by requester  . .  1.535

  Representative capacity  . .  1.34(a)

  Request for reconsideration  . .  1.112

  Request for reexamination  . .  1.510

  Reservation clauses not permitted  . .  1.79

  Response time to Office action  . .  1.134

  Restriction of application  . .  1.141 -
  1.146

  Claims to nonelected invention withdrawn  .  1.142

  Constructive election  . .  1.145

  Petition from requirements for  . .  1.144

  Provisional election  . .  1.143

  Reconsideration of requirement  . .  1.143

  Requirement for  . .  1.142

  Subsequent presentation of claims for different

  invention  . .  1.145

  Retention fee  . .  1.21(l) ,
  1.53(d)

  Return of correspondence  . .  1.5(a)

  Return of papers having a filing date  . .  1.59

  Revival of abandoned application  . .  1.137

  Unavoidable abandonment fee  . .  1.17(l)

  Unintentional abandonment fee  . .  1.17(m)

  Revocation of power of attorney or authorization

  of agent  . .  1.36

  Rules of Practice:

  Amendments to rules will be published  . .  1.351

  Publication of notice of proposed amendments  1.352

  S

  Saturday, when last day falls on  . .  1.7

  Scope of reexamination proceedings  . .  1.552

  Secrecy order  . .  5.1 - 5.8

  Sequences:

  Amendments to sequence listing and computer

  readable copy  . .  1.825

  Disclosure requirements  . .  1.821 ,
  1.823

  Sequence data, symbols and format  . .  1.822

  Submissions in computer readable form  . .  1.824

  Serial number of application  . .  1.53

  Service of notices:

  For taking testimony  . .  1.673

  In interference cases  . .  1.611

  Of appeal to the U.S.C. ourt of Appeals for the

  Federal Circuit  . .  1.303

  Service of papers  . .  1.248

  Shortened period for response  . .  1.134

  Signature:

  Of attorney or agent  . .  10.18

  To amendments, etc., when no attorney  . .  1.33

  To express abandonment  . .  1.138

  To oath  . .  1.63

  To reissue oath or declaration  . .  1.172

  Small business concern:

  Definition  . .  1.9

  Status statement  . .  1.27

  Small entity:

  Definition  . .  1.9

  License to Federal agency  . .  1.27

  Statement  . .  1.27

  Statement in parent application  . .  1.28

  Status establishment  . .  1.27 ,
  1.28

  Status update  . .  1.28

  Solicitor's address  . .  1.1(a)

  Species of invention claimed  . .  1.141 ,
  1.146

  Specification (See also Application for

  patent, Claims):

  Abstract  . .  1.72

  Amendments to  . .  1.117 ,
  1.118 , 1.125

  Arrangement of  . .  1.77

  Best mode  . .  1.71

  Claim  . .  1.75

  Contents of  . .  1.71 -
  1.75

  Copyright notice  . .  1.71(d)

  Cross - references to other applications  .  1.78

  Description of the invention  . .  1.71

  Erasures and insertions must not be made by

  applicant  . .  1.121

  If defective, reissue to correct  . .  1.171 -
  1.179

  Mask work notice  . .  1.71(d)

  Must conclude with specific and distinct claim  1.75

  Must point out new improvements specifically  1.71

  Must refer by figures to drawings  . .  1.74

  Must set forth the precise invention  . .  1.71

  Not returned after completion  . .  1.59

  Object of the invention  . .  1.73

  Order of arrangement in framing  . .  1.77

  Paper, writing, margins  . .  1.52

  Part of complete application  . .  1.51

  Reference to drawings  . .  1.74

  Requirements of  . .  1.71 -
  1.75

  Reservation clauses not permitted  . .  1.79

  Substitute  . .  1.125

  (Specification):

  Summary of the invention  . .  1.73

  Title of the invention  . .  1.72

  To be rewritten, if necessary  . .  1.125

  Specimens (See also Models and exhibits.)

  Specimens of composition of matter to be furnished

  when required  . .  1.93

  Specimens of plants  . .  1.166

  Statement of status as small entity  . .  1.27

  Statutory disclaimer fee  . .  1.20(d)

  Statutory invention registrations  . .  1.293

  Examination  . .  1.294

  Publication of  . .  1.297

  Review of decision finally refusing to publish  
  1.295

  Withdrawal of request for publication of  .  1.296

  Sufficient funds in deposit account  . .  1.25

  Suit in equity (See also Civil action.)

  Summary of invention  . .  1.73

  Sunday, when last day falls on  . .  1.7

  Supervisory authority, petition to Commissioner to

  exercise  . .  1.181

  Supplemental oath for amendment presenting claims

  for matter disclosed but not originally claimed  1.67

  Surcharge for oath or basic filing fee filed

  after filing date  . .  1.16(e) ,
  1.53(d)

  Suspension of action  . .  1.103

  Suspension of ex parte prosecution during

  interference  . .  1.615

  Suspension of rules  . .  1.183

  Symbols for drawings  . .  1.84(n)

  T

  Tables in patent applications  . .  1.58

  Term of design patent  . .  1.155

  Terminal disclaimer  . .  1.321

  Testimony in interferences:

  Additional time for taking  . .  1.645

  Assignment of times for taking  . .  1.651

  Certification and filing by officer  . .  1.676

  Copies of  . .  1.653

  Depositions must be filed  . .  1.678

  Discovery  . .  1.687

  Effect of errors and irregularities in deposition  
  1.685

  Evidence must comply with rules  . .  1.671

  Examination of witnesses  . .  1.675

  Failure to take  . .  1.652

  Form of deposition  . .  1.677

  Formal objections to  . .  1.685

  Formalities in preparing depositions  . .  1.674 -
  1.677

  In foreign countries  . .  1.684

  Inspection of testimony  . .  1.679

  Manner of taking testimony of witnesses  . .  1.672

  (Testimony in interferences):

  Motion to extend time for taking  . .  1.645

  Not considered if not taken and filed in compliance

  with rules  . .  1.671

  Notice of examination of witnesses  . .  1.673

  Notice of intent to use records  . .  1.682

  Objections noted in depositions  . .  1.675

  Objections to formal matters  . .  1.685

  Official records and printed publications  .  1.682

  Officer's certificate  . .  1.676

  Persons before whom depositions may be taken  1.674

  Printing of  . .  1.653

  Service of notice  . .  1.673

  Stipulations or agreements concerning  . .  1.672

  Taken by depositions  . .  1.672

  Testimony taken in another interference or action,

  use of  . .  1.683

  Time for taking  . .  1651

  To be inspected by parties to the case only  1.679

  Time expiring on Saturday, Sunday, or holiday  1.7

  Time for payment of issue fee  . .  1.311

  Time for response by applicant  . .  1.135 ,
  1.136

  Time for response by patent owner  . .  1.530

  Time for response by requester  . .  1.535

  Time for response to Office action  . . 
  1.134.1.136

  Time, periods of  . .  1.7

  Timely filing of correspondence  . .  1.8 ,
  1.10

  Title of invention  . .  1.72

  Title reports, fee for  . . 
  1.19(b)(4)

  U

  Unavoidable abandonment  . .  1.137

  Unintentional abandonment  . .  1.137

  United States as

  Designated Office  . .  1.414 ,
  1.497

  Elected Office  . .  1.414

  International Preliminary Examining Authority  1.416

  International Searching Authority  . .  1.413

  Receiving Office  . .  1.412

  Unsigned continuation or divisional application  1.60
  , 1.62

  Use of file of parent application  . .  1.62

  V

  Verified statement of small entity status  .  1.27

  W

  Waiver of secrecy  . .  1.62

  Withdrawal from issue  . .  1.313

  Withdrawal of attorney or agent  . .  1.36

  Withdrawal of request for statutory invention

  registration  . .  1.296

  PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE  <"hdr
inline 1", Subcomponent = yes>  PART 10  - REPRESENTATION OF
OTHERS BEFORE THE PATENT AND TRADEMARK  OFFICE

 Sec.

 §  10.1  Definitions.

 §  10.2  Director of Enrollment and Discipline.

 §  10.3  Committee on Enrollment.

 §  10.4  Committee on Discipline.

  INDIVIDUALS ENTITLED TO PRACTICE BEFORE THE PATENT AND
 TRADEMARK OFFICE

 §  10.5 Register  of  attorneys  and  agents  in
patent cases.

 §  10.6  Registration of attorneys and agents.

 §  10.7  Requirements for registration.

 §  10.8  Oath and registration fee.

 §  10.9  Limited recognition in patent cases.

 §  10.10  Restrictions on practice in patent
cases.

 §  10.11  Removing names from the register.

 § §  10.12 - 10.13 [Reserved]

 §  10.14  Individuals who may practice before
the Office in trademark and other nonpatent cases.

 §  10.15  Refusal to recognize a practitioner.

 § §  10.16 - 10.17 [Reserved]

 §  10.18  Signature  and  certificate  of
practitioner.

 §  10.19  [Reserved]

  PATENT AND TRADEMARK OFFICE CODE OF PROFESSIONAL
  RESPONSIBILITY

 §  10.20  Canons and Disciplinary Rules.

 §  10.21  Canon 1.

 §  10.22  Maintaining integrity and competence
of the legal profession.

 §  10.23  Misconduct.

 §  10.24  Disclosure  of  information  to
authorities.

 § §  10.25 - 10.29 [Reserved]

 §  10.30  Canon 2.

 §  10.31  Communications  concerning  a
practitioner's services.

 §  10.32  Advertising.

 §  10.33  Direct  contact  with  prospective
clients.

 §  10.34  Communications  of  fields  of
practice.

 §  10.35  Firm names and letterheads.

 §  10.36  Fees for legal services.

 §  10.37  Division  of  fees  among
practitioners.

 §  10.38  Agreements restricting the practice
of a practitioner.

 §  10.39  Acceptance of employment.

 §  10.40  Withdrawal from employment.

 §  10.41 - 10.45 [Reserved]

 §  10.46  Canon 3.

 §  10.47  Aiding unauthorized practice of law.

 §  10.48  Sharing legal fees.

 §  10.49  Forming a partnership with a non -
practitioner.

 §  10.50 - 10.55 [Reserved]

 §  10.56  Canon 4.

 §  10.57  Preservation  of  confidences  and
secrets of a client.

 § §  10.58 - 10.60 [Reserved]

 §  10.61  Canon 5.

 §  10.62  Refusing  employment  when  the
interest of the practitioner may impair the practitioner's
independent professional judgment.

 §  10.63  Withdrawal  when  the  practitioner
becomes a witness.

 §  10.64  Avoiding acquisition of interest in
litigation or proceeding before the Office.

 §  10.65  Limiting business relations with a
client.

 §  10.66  Refusing  to  accept  or  continue
employment if the interests of another client may impair the
independent professional  judgment of the practitioner.

 §  10.67  Settling similar claims of clients.

 §  10.68  Avoiding influence by others than
the client.

 §  10.69 - 10.75 [Reserved]

 §  10.76  Canon 6.

 §  10.77  Failing to act competently.

 §  10.78  Limiting liability to client.

 § §  10.79 - 10.82 [Reserved]

 §  10.83  Canon 7.

 §  10.84  Representing a client zealously.

 §  10.85  Representing a client within the
bounds of the law.

 §  10.86  [Reserved]

 §  10.87  Communicating with one of adverse
interest.

 §  10.88  Threatening criminal prosecution.

 §  10.89  Conduct in proceedings.

 § §  10.90 - 10.91 [Reserved]

 §  10.92  Contact with witnesses.

 §  10.93  Contact with officials.

 § §  10.94 - 10.99 [Reserved]

 §  10.100  Canon 8.

 §  10.101  Action as a public official.

 § 10.102  Statements concerning officials.

 § 10.103  Practitioner candidate for judicial office.

 § §  10.104 - 10.109 [Reserved]

 §  10.110  Canon 9.

 §  10.111  Avoiding  even  the  appearance  of
impropriety.

 §  10.112  Preserving identity of funds and property
of client.

 § §  10.113 - 10.129 [Reserved]

  INVESTIGATIONS AND DISCIPLINARY PROCEEDINGS

 §  10.130  Reprimand, suspension or exclusion.

 §  10.131  Investigations.

 §  10.132  Initiating  a  disciplinary  proceeding;
reference to an  administrative law judge.

 §  10.133  Conference  between  Director  and
practitioner; resignation.

 §  10.134  Complaint.

 §  10.135  Service of complaint.

 §  10.136  Answer to complaint.

 §  10.137  Supplemental complaint.

 §  10.138  Contested case.

 §  10.139  Administrative law judge; appointment;
responsibili  ties; review of interlocutory orders;
stays.

 §  10.140  Representative  for  Director  or
respondent.

 §  10.141  Filing of papers.

 §  10.142  Service of papers.

 §  10.143  Motions.

 §  10.144  Hearings.

 §  10.145  Proof; variance; amendment of pleadings.

 §  10.146 - 10.148 [Reserved]

 §  10.149  Burden of proof.

 §  10.150  Evidence.

 §  10.151  Depositions.

 §  10.152  Discovery.

 §  10.153  Proposed findings and conclusions; post -
hearing  memorandum.

 §  10.154  Initial decision of administrative law
judge.

 §  10.155  Appeal to the Commissioner.

 §  10.156  Decision of the Commissioner.

 §  10.157  Review  of  the  Commissioner's  final
decision.

 §  10.158  Suspended or excluded practitioner.

 §  10.159  Notice of suspension or exclusion.

 §  10.160  Petition for reinstatement.

 §  10.161  Savings clause.

 § §  10.162 - 10.169 [Reserved]

 §  10.170  Suspension of rules.

 § 10.1  Definitions.

  This  part  governs  solely  the  practice  of  patent,
trademark, and other law before the Patent and Trademark
Office. Nothing in this part shall be construed to preempt
the authority of each State to regulate the practice of law,
except to the extent necessary for the Patent and Trademark
Office  to  accomplish  its  federal  objectives.  Unless
otherwise clear from the context, the following definitions
apply to this part:

  (a)  "Affidavit" means affidavit, declaration under 35
U.S.C. 25 (see § 1.68 and § 2.20 of this subchapter), or
statutory declaration under 28 U.S.C. 1746.

  (b) "Application" includes an application for a design,
plant, or utility patent, an application to reissue any
patent, and an application to register a trademark.

  (c) "Attorney" or "lawyer" means an individual who is a
member in good standing of the bar of any United States
court or the highest court of any State. A "non - lawyer" is
a person who is not an attorney or lawyer.

  (d) "Canon" is defined in § 10.20(a).

  (e) "Confidence" is defined in § 10.57(a).

  (f) "Differing interests" include every interest that may
adversely affect either the judgment or the loyalty of a
practitioner to a client, whether it be a conflicting,
inconsistent, diverse, or other interest.

  (g) "Director" means the Director of Enrollment and
Discipline.

  (h) "Disciplinary Rule" is defined in § 10.20(b).

  (i) "Employee of a tribunal" includes all employees of
courts, the Office, and other adjudicatory bodies.

  (j)  "Giving  information"  within  the  meaning  of  §
10.23(c)(2) includes making (1) a written statement or
representation or (2) an oral statement or representation.

  (k) "Law firm" includes a professional legal corporation
or a partnership.

  (1) "Legal counsel" means practitioner.

  (m)"Legal profession" includes the individuals who are
lawfully engaged in practice of patent, trademark, and other
law before the Office.

  (n) "Legal service" means any legal service which may
lawfully be performed by a practitioner before the Office.

  (o) "Legal System" includes the Office and courts and
adjudicatory bodies which review matters on which the Office
has acted.

  (p) "Office" means Patent and Trademark Office.

  (q) "Person" includes a corporation, an association, a
trust, a partnership, and any other organization or legal
entity.

  (r)  "Practitioner"  means  (1)  an  attorney  or  agent
registered to practice before the Office in patent cases or
(2) an individual authorized under 5 U.S.C. 500(b) or
otherwise as provided by this subchapter, to practice before
the Office in trademark cases or other non - patent cases. A
"suspended or excluded practitioner" is a practitioner who
is  suspended  or  excluded  under  §  10.156.  A  "non  -
practitioner" is an individual who is not a practitioner.

  (s)  A  "proceeding  before  the  Office"  includes  an
application,  a  reexamination,  a  protest,  a  public  use
proceeding, a patent interference, an inter partes trademark
proceeding, or any other proceeding which is pending before
the Office.

  (t) "Professional legal corporation" means a corporation
authorized by law to practice law for profit.

  (u) "Registration" means registration to practice before
the Office in patent cases.

  (v) "Respondent" is defined in § 10.134(a)(1).

  (w) "Secret" is defined in § 10.57(a).

  (x) "Solicit" is defined in § 10.33.

  (y) "State" includes the District of Columbia, Puerto
Rico, and other federal territories and possessions.

  (z) "Tribunal" includes courts, the Office, and other
adjudicatory bodies.

  (aa) "United States" means the United States of America,
its territories and possessions.

  [Added 50 FR 5172, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.2  Director of Enrollment and Discipline.

  (a)  Appointment.  The  Commissioner  shall  appoint  a
Director of Enrollment and Discipline. In the event of the
absence of the Director or a vacancy in the Office of the
Director, the Commissioner may designate an employee of the
Office  to  serve  as  acting  Director  of  Enrollment  and
Discipline. The Director and any acting Director shall be an
active member in good standing of the bar of a State.

  (b) Duties. The Director shall:

  (1) Receive and act upon applications for registration,
prepare and grade the examination provided for in § 10.7(b),
maintain the register provided for in § 10.5, and perform
such  other  duties  in  connection  with  enrollment  and
recognition of attorneys and agents as may be necessary.

  (2) Conduct investigations into possible violations by
practitioners of Disciplinary Rules, with the consent of the
Committee on Discipline initiate disciplinary proceedings
under  §  10.132(b),  and  perform  such  other  duties  in
connection with investigations and disciplinary proceedings
as may be necessary.

  (c) Review of Director's decision.  Any final decision of
the Director refusing to register an individual under §
10.6, recognize an individual under § 10.9 or § 10.14(c), or
reinstate a suspended or excluded petitioner under § 10.160,
may be reviewed by petition to the Commissioner upon payment
of the fee set forth in § 1.21(a)(5). A petition filed more
than 30 days after the date of the decision of the Director
may be dismissed as untimely. Any petition shall contain (1)
a statement of the facts involved and the points to be
reviewed and (2) the action requested. Briefs or memoranda,
if any, in support of the petition shall accompany or be
embodied therein. The petition will be decided on the basis
of the record made before the Director and no new evidence
will be considered by the Commissioner in deciding the
petition. Copies of documents already of record before the
Director shall not be submitted with the petition. An oral
hearing on the petition will not be granted except when
considered necessary by the Commissioner.

  [Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.3  Committee on Enrollment.

  (a)  The  Commissioner  may  establish  a  Committee  on
Enrollment composed of one or more employees of the Office.

  (b) The Committee on Enrollment shall, as necessary,
advise the Director in connection with the Director's duties
under § 10.2(b)(1).

  [Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.4 Committee on Discipline.

  (a)  The  Commissioner  shall  appoint  a  Committee  on
Discipline. The Committee on Discipline shall consist of at
least three employees of the Office, none of whom reports
directly or indirectly to the Director or the Solicitor.
Each member of the Committee on Discipline shall be a member
in good standing of the bar of a State.

  (b) The Committee on Discipline shall meet at the request
of the Director and after reviewing evidence presented by
the Director shall, by majority vote, determine whether
there is probable cause to bring charges under § 10.132
against a practitioner. When charges are brought against a
practitioner, no member of the Committee on Discipline,
employee under the direction of the Director, or associate
solicitor or assistant solicitor in the Office of Solicitor
shall participate in rendering a decision on the charges.

  (c) No discovery shall be authorized of, and no member of
the Committee on Discipline shall be required to testify
about, deliberations of the Committee on Discipline.

  [Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985]

  INDIVIDUALS ENTITLED TO PRACTICE BEFORE THE PATENT AND
 TRADEMARK OFFICE

 § 10.5  Register of attorneys and agents in patent
cases.

  A register of attorneys and agents is kept in the Office
on which are entered the names of all individuals recognized
as entitled to represent applicants before the Office in the
preparation and prosecution of applications for patent.
Registration in the Office under the provisions of this part
shall only entitle the individuals registered to practice
before the Office in patent cases.

  [Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.6  Registration of attorneys and agents.

  (a) Attorneys.  Any citizen of the United States who is
an attorney and who fulfills the requirements of this part
may be registered as a patent attorney to practice before
the Office. When appropriate, any alien who is an attorney,
who lawfully resides in the United States, and who fulfills
the requirements of this part may be registered as a patent
attorney  to  practice  before  the  Office,  provided  :
Registration is not inconsistent with the terms upon which
the alien was admitted to, and resides in, the United States
and further  provided : The alien may remain registered only
(1) if the alien continues to lawfully reside in the United
States and registration does not become inconsistent with
the terms upon which the alien continues to lawfully reside

in the United States or (2) if the alien ceases to reside in
the United States, the alien is qualified to be registered
under paragraph (c) of this section. See also § 10.9(b).

  (b)  Agents.  Any citizen of the United States who is not
an attorney and who fulfills the requirements of this part
may be registered as a patent agent to practice before the
Office. When appropriate, any alien who is not an attorney,
who lawfully resides in the United States, and who fulfills
the requirements of this part may be registered as a patent
agent  to  practice  before  the  Office,  provided  :
Registration is not inconsistent with the terms upon which
the alien was admitted to, and resides in, the United
States, and further  provided : The alien may remain
registered only (1) if the alien continues to lawfully
reside in the United States and registration does not become
inconsistent with the terms upon which the alien continues
to lawfully reside in the United States or (2) if the alien
ceases  to  reside  in  the  United  States,  the  alien  is
qualified to be registered under paragraph (c) of this
section. See also § 10.9(b).

  NOTE: All individuals registered prior to November 15,
1938,  were  registered  as  attorneys,  whether  they  were
attorneys or not, and such registrations have not been
changed.

  (c) Foreigners. Any foreigner not a resident of the
United States who shall file proof to the satisfaction of
the Director that he or she is registered and in good
standing before the patent office of the country in which he
or she resides and practices and who is possessed of the
qualifications stated in § 10.7, may be registered as a
patent agent to practice before the Office for the limited
purpose of presenting and prosecuting patent applications of
applicants located in such country,  provided : The patent
office  of  such  country  allows  substantially  reciprocal
privileges to those admitted to practice before the United
States Patent and Trademark Office. Registration as a patent
agent under this paragraph shall con tinue only during the
period that the conditions specified in this paragraph
obtain.

  [Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985;
paras. (d) & (e) removed 53 FR 33948, Oct. 14, 1988,
effective Nov. 4, 1988]

 § 10.7  Requirements for registration.

  (a) No individual will be registered to practice before
the Office unless he or she shall:

  (1) Apply to the Commissioner in writing on a form
supplied  by  the  Director  and  furnish  all  requested
information and material and

  (2) Establish to the satisfaction of the Director that he
or she is:

  (i) Of good moral character and repute;

  (ii) Possessed of the legal, scientific, and technical
qualifications necessary to enable him or her to render
applicants valuable service; and

  (iii)  Is  otherwise  competent  to  advise  and  assist
applicants for patents in the presentation and prosecution
of their applications before the Office.

  (b) In order that the Director may determine whether an
individual seeking to have his or her name placed upon the
register has the qualifications specified in paragraph (a)
of this section, satisfactory proof of good moral character
and repute and of sufficient basic training in scientific
and technical matters must be submitted to the Director.
Except as provided in this paragraph, each applicant for
registration must take and pass an examination which is held
from time to time. Each application for admission to take
the examination for registration must be accompanied by the
fee set forth in § 1.21(a)(1) of this subchapter. The taking
of  an  examination  may  be  waived  in  the  case  of  any
individual who has actively served for at least four years
in the patent examining corps of the Office. The examination
will not be administered as a mere academic exercise.

  (c)  Within two months from the date an applicant is
notified that he or she failed an examination, the applicant
may request regrading of the examination upon payment of the
fee set forth in § 1.21(a)(6). Any applicant requesting
regrading shall particularly point out the errors which the
applicant believed occurred in the grading of his or her
examination.

  [Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.8 Oath and registration fee.

  Before an individual may have his or her name entered on
the register of attorneys and agents, the individual must,
after his or her application is approved, subscribe and
swear to an oath or make a declaration prescribed by the
Commissioner and pay the registration fee set forth in §
1.21(a)(2) of this subchapter.

  [Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.9 Limited recognition in patent cases.

  (a) Any individual not registered under § 10.6 may, upon
a showing of circumstances which render it necessary or
justifiable, be given limited recognition by the Director to
prosecute as attorney or agent a specified application or
specified applications, but limited recognition under this
paragraph shall not extend further than the application or
applications specified.

  (b)  When  registration  of  a  resident  alien  under
paragraphs (a) or (b) of § 10.6 is not appropriate, the
resident alien may be given limited recognition as may be
appropriate under paragraph (a) of this section.

  (c) An individual not registered under § 10.6 may, if
appointed by applicant to do so, prosecute an international
application only before the U.S. International Searching
Authority and the U.S. International Preliminary Examining
Authority,  provided:  the  individual  has  the  right  to
practice  before  the  national  office  with  which  the
international application is filed (PCT Art. 49, Rule 90 and
§ 1.455 or before the International Bureau when acting as

  bis
Receiving Office pursusant to PCT Rules 83.1  and 90.1).

  [Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985;
para. (c) added, 58 FR 4335, Jan. 14, 1993, effective May 1,
1993; para. (c) amended, 60 FR 21438, May 2, 1995, effective
June 1, 1995]

 § 10.10  Restrictions on practice in patent cases.

  (a) Only practitioners who are registered under § 10.6 or
individuals given limited recognition under § 10.9 will be
permitted to prosecute patent applications of others before
the Office.

  (b) No individual who has served in the patent examining
corps of the Office may practice before the Office after
termination of his or her service, unless he or she signs a
written undertaking.

  (1) Not to prosecute or aid in any manner in the
prosecution of any patent application pending in any patent
examining group during his or her period of service therein
and

  (2) Not to prepare or prosecute or to assist in any
manner in the preparation or prosecution of any patent
application of another (i) assigned to such group for
examination and (ii) filed within two years after the date
he or she left such group, without written authorization of
the Director. Associated and related classes in other patent
examining groups may be required to be included in the
undertaking or designated classes may be excluded from the
undertaking.

  When an application for registration is made after
resignation from the Office, the applicant will not be
registered if he or she has prepared or prosecuted or
assisted in the preparation or prosecution of any patent
application  as  indicated  in  the  paragraph.  Knowingly
preparing or prosecuting or providing assistance in the
preparation  or  prosecution  of  any  patent  application
contrary  to  the  provisions  of  this  paragraph  shall
constitute misconduct under § 10.23(c)(13) of this part.

  (c) A practitioner who is an employee of the Office
cannot prosecute or aid in any manner in the prosecution of
any patent application before the Office.

  (d)  Practice before the Office by Government employees
is subject to any applicable conflict of interest laws,
regulations or codes of professional responsibility.

  [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985;
revised 53 FR 33950, Oct. 4, 1988, effective Nov. 4, 1988;
corrected 53 FR 41278, Oct. 20, 1988]

 § 10.11  Removing names from the register.

  (a)  Registered attorneys and agents shall notify the
Director of any change of address. Any notification to the
Director of any change of address shall be separate from any
notice  of  change  of  address  filed  in  individual
applications.

  (b)  A letter may be addressed to any individual on the
register, at the address of which separate notice was last
received by the Director, for the purpose of ascertaining
whether such individual desires to remain on the register.
The name of any individual failing to reply and give any
information requested by the Director within a time limit
specified will be removed from the register and the names of
individuals so  removed will be published in the Official
Gazette . The name of any individual so removed may be
reinstated on the register as may be appropriate and upon
payment of the fee set forth in § 1.21(a)(3) of this
subchapter.

  [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

 § § 10.12 - 10.13

 § 10.14  Individuals who may practice before the  Office
in trademark and other non - patent cases.

  (a) Attorneys.  Any individual who is an attorney may
represent others before the Office in trademark and other
non - patent cases. An attorney is not required to apply for
registration or recognition to practice before the Office in
trademark and other non - patent cases.

  (b) Non - lawyers.  Individuals who are not attorneys are
not recognized to practice before the Office in trademark
and other non - patent cases, except that individuals not
attorneys who were recognized to practice before the Office
in trademark cases under this chapter prior to January 1,
1957, will be recognized as agents to continue practice
before the Office in trademark cases.

  (c) Foreigners.  Any foreign attorney or agent not a
resident of the United States who shall prove to the
satisfaction of the Director that he or she is registered or
in good standing before the patent or trademark office of
the country in which he or she resides and practices, may be
recognized for the limited purpose of representing parties
located  in  such  country  before  the  Office  in  the
presentation and prosecution of trademark cases,  provided :
The patent or trademark office of such country allows
substantially reciprocal privileges to those permitted to
practice in trademark cases before the United States Patent
and Trademark Office. Recognition under this paragraph shall
continue  only  during  the  period  that  the  conditions
specified in this paragraph obtain.

  (d) Recognition of any individual under this section
shall not be construed as sanctioning or authorizing the
performance of any act regarded in the jurisdiction where
performed as the unauthorized practice of law.

  (e)  No  individual  other  than  those  specified  in
paragraphs (a), (b), and (c) of this section will be
permitted to practice before the Office in trademark cases.
Any individual may appear in a trademark or other non -
patent case in his or her own behalf. Any individual may
appear in a trademark case for (1) a firm of which he or she
is a member or (2) a corporation or association of which he
or she is an officer and which he or she is authorized to
represent, if such firm, corporation, or association is a
party to a trademark proceeding pending before the Office.

  [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.15  Refusal to recognize a practitioner.

  Any practitioner authorized to appear before the Office
may  be  suspended  or  excluded  in  accordance  with  the
provisions of this part. Any practitioner who is suspended
or excluded under this subpart or removed under § 10.11(b)
shall not be entitled to practice before the Office.

  [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

 § § 10.16 - 10.17

 §  10.18  Signature and certificate of
practitioner.

  (a)  Except  where  a  copy,  including  a  photocopy  or
facsimile transmission, of a personally signed piece of
correspondence is permitted to be filed pursuant to § 1.4 of
this chapter, every piece of correspondence filed by a
practitioner on behalf of himself or herself on representing
an applicant or a party to a proceeding in the Patent and
Trademark Office must bear an original signature personally
signed in permanent ink by such practitioner except for
correspondence  which  is  required  to  be  signed  by  the
applicant or party. The signature of a practitioner on
correspondence filed by the practitioner, regardless of
whether the correspondence has an original signature or is a
copy, including a photocopy or facsimile transmission, of
correspondence bearing an original signature, constitutes a
certificate that:

  (1) The correspondence has been read by the practitioner;

  (2) The filing of the correspondence is authorized;

  (3) To the best of practitioner's knowledge, information,
and  belief,  there  is  good  ground  to  support  the
correspondence,  including  any  allegations  of  improper
conduct contained or alleged therein; and

  (4) The correspondence is not interposed for delay.

  (b) Any practitioner knowingly violating the provisions
of this section is subject to disciplinary action. See §
10.23(c)(15).

  [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985;
para. (a) amended, 58 FR 54494, Oct. 22, 1993, effective
Nov. 22, 1993]

 § 10.19  [Reserved]

  PATENT AND TRADEMARK OFFICE CODE OF PROFESSIONAL
  RESPONSIBILITY

 § 10.20  Canons and Disciplinary Rules.

  (a) Canons are set out in § 10.21, 10.30, 10.46, 10.56,
10.61,  10.76,  10.83,  10.100,  and  10.110.  Canons  are
statements of axiomatic norms, expressing in general terms
the  standards  of  professional  conduct  expected  of
practitioners in their relationships with the public, with
the legal system, and with the legal profession.

  (b) Disciplinary Rules are set out in ww 10.22 - 10.24,
10.31 - 10.40, 10.47 - 10.57, 10.62 - 10.68, 10.77, 10.78,
10.84, 10.85, 10.87 - 10.89, 10.92, 10.93, 10.101 - 10.103,
10.111, and 10.112. Disciplinary Rules are mandatory in
character and state the minimum level of conduct below which
no  practitioner  can  fall  without  being  subjected  to
disciplinary action.

  [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.21  Canon 1.

  A  practitioner  should  assist  in  maintaining  the
integrity and competence of the legal profession.

  [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.22  Maintaining integrity and competence of the 
legal profession.

  (a) A practitioner is subject to discipline if the
practitioner has made a materially false statement in, or if
the practitioner has deliberately failed to disclose a
material  fact  requested  in  connection  with,  the
practitioner's application for registration or membership in
the bar of any United States court or any State court or his
or her authority to otherwise practice before the Office in
trademark and other non - patent cases.

  (b) A practitioner shall not further the application for
registration or membership in the bar of any United States
court, State court, or administrative agency of another
person known by the practitioner to be unqualified in
respect  to  character,  education,  or  other  relative
attribute.

  [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.23  Misconduct .

  (a) A practitioner shall not engage in disreputable or
gross misconduct.

  (b) A practitioner shall not:

  (1) Violate a Disciplinary Rule.

  (2) Circumvent a Disciplinary Rule through actions of
another.

  (3) Engage in illegal conduct involving moral turpitude.

  (4)  Engage  in  conduct  involving  dishonesty,  fraud,
deceit, or misrepresentation.

  (5)  Engage  in  conduct  that  is  prejudicial  to  the
administration of justice.

  (6) Engage in any other conduct that adversely reflects
on the practitioner's fitness to practice before the Office.

  (c) Conduct which constitutes a violation of paragraphs
(a) and (b) of this section includes, but is not limited to:

  (1) Conviction of a criminal offense involving moral
turpitude, dishonesty, or breach of trust.

  (2) Knowingly giving false or misleading information or
knowingly participating in a material way in giving false or
misleading information, to:

  (i)  A  client  in  connection  with  any  immediate,
prospective, or pending business before the Office.

  (ii) The Office or any employee of the Office.

  (3) Misappropriation of, or failure to properly or timely
remit,  funds  received  by  a  practitioner  or  the
practitioner's firm from a client to pay a fee which the
client is required by law to pay to the Office.

  (4)  Directly  or  indirectly  improperly  influencing,
attempting to improperly influence, offering or agreeing to
improperly influence, or attempting to offer or agree to
improperly influence an official action of any employee of
the Office by:

  (i)  Use of threats, false accusations, duress, or
coercion,

  (ii) An offer of any special inducement or promise of
advantage, or

  (iii) Improperly bestowing of any gift, favor, or thing
of value.

  (5)  Suspension or disbarment from practice as an
attorney or agent on ethical grounds by any duly constituted
authority of a State or the United States or, in the case of
a practitioner who resides in a foreign country or is
registered  under  §  10.6(c),  by  any  duly  constituted
authority of:

  (i) A State,

  (ii) The United States, or

  (iii) The country in which the practitioner resides.

  (6)  Knowingly  aiding  or  abetting  a  practitioner
suspended or excluded from practice before the Office in
engaging in unauthorized practice before the Office under §
10.158.

  (7)  Knowingly withholding from the Office information
identifying a patent or patent application of another from
which one or more claims have been copied. See § 1.604(b)
and 1.607(c) of this subchapter.

  (8) Failing to inform a client or former client or
failing to timely notify the Office of an inability to
notify a client or former client of correspondence received
from the Office or the client's or former client's opponent
in an inter partes proceeding before the Office when the
correspondence (i) could have a significant effect on a
matter pending before the Office, (ii) is received by the
practitioner on behalf of a client or former client and
(iii) is correspondence of which a reasonable practitioner
would believe under the circumstances the client or former

client should be notified.

  (9) Knowingly misusing a "Certificate of Mailing or
Transmission" under § 1.8 of this chapter .

  (10) Knowingly violating or causing to be violated the
requirements of § 1.56 or § 1.555 of this subchapter.

  (11)  Knowingly filing or causing to be filed an
application containing any material alteration made in the
application papers after the signing of the accompanying
oath or declaration without identifying the alteration at
the time of filing the application papers.

  (12)  Knowingly filing, or causing to be filed, a
frivolous complaint alleging a violation by a practitioner
of the Patent and Trademark Office Code of Professional
Responsibility.

  (13) Knowingly preparing or prosecuting or providing
assistance in the preparation or prosecution of a patent
application in violation of an undertaking signed under §
10.10(b).

  (14) Knowingly failing to advise the Director in writing
of any change which would preclude continued registration
under § 10.6.

  (15) Knowingly signing a paper filed in the Office in
violation  of  the  provisions  of  §  10.18  or  making  a
scandalous or indecent statement in a paper filed in the
Office.

  (16)  Willfully refusing to reveal or report knowledge
or evidence to the Director contrary to § 10.24 or paragraph
(b) of § 10.131.

  (17) Representing before the Office in a patent case
either  a  joint  venture  comprising  an  inventor  and  an
invention  developer  or  an  inventor  referred  to  the
registered practitioner by an invention developer when (i)
the registered practitioner knows, or has been advised by
the Office, that a formal complaint filed by a federal or
state agency, based on any violation of any law relating to
securities,  unfair  methods  of  competition,  unfair  or
deceptive acts or practices, mail fraud, or other civil or
criminal conduct, is pending before a federal or state court
or federal or state agency, or has been resolved unfavorably
by such court or agency, against the invention developer in
connection with invention development services and (ii) the
registered practitioner fails to fully advise the inventor
of the existence of the pending complaint or unfavorable
resolution  thereof  prior  to  undertaking  or  continuing
representation of the joint venture or inventor. "Invention
developer"  means  any  person,  and  any  agent,  employee,
officer, partner, or independent contractor thereof, who is
not a registered practitioner and who advertises invention
development services in media of general circulation or who
enters into contracts for invention development services
with customers as a result of such advertisement."Invention
development services" means acts of invention development
required or promised to be performed, or actually performed,
or  both,  by  an  invention  developer  for  a  customer.
"Invention development" means the evaluation, perfection,
marketing, brokering, or promotion of an invention on behalf

of a customer by an invention developer, including a patent
search, preparation of a patent application, or any other
act done by an invention developer for consideration toward
the end of procuring

 or attempting to procure a license, buyer, or patent for an
invention. "Customer" means any individual who has made an
invention and who enters into a contract for invention
development  services  with  an  invention  developer  with
respect to the invention by which the inventor becomes
obligated to pay the invention developer less than $5,000
(not to include any additional sums which the invention
developer  is  to  receive  as  a  result  of  successful
development  of  the  invention).  "Contract  for  invention
development  services"  means  a  contract  for  invention
development  services  with  an  invention  developer  with
respect to an invention made by a customer by which the
inventor becomes obligated to pay the invention developer
less than $5,000 (not to include any additional sums which
the invention developer is to receive as a result of
successful development of the invention).

  (18)  In  the  absence  of  information  sufficient  to
establish a reasonable belief that fraud or inequitable
conduct has occurred, alleging before a tribunal that anyone
has  committed  a  fraud  on  the  Office  or  engaged  in
inequitable conduct in a proceeding before the Office.

  (19) Action by an employee of the Office contrary to the
provisions set forth in § 10.10(c).

  (20) Knowing practice by a Government employee contrary
to  applicable  Federal  conflict  of  interest  laws,  or
regulations  of  the  Department,  agency,  or  commission
employing said individual.

  (d) A practitioner who acts with reckless indifference to
whether a representation is true or false is chargeable with
knowledge of its falsity. Deceitful statements of half -
truths or concealment of material facts shall be deemed
actual fraud within the meaning of this part.

  [Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985;
amended 50 FR 25073, June 17, 1985; 50 FR 25980, June 24,
1985; paras. (c)(13), (19) & (20), 53 FR 33950, Oct. 4,
1988, effective Nov. 4, 1988; corrected 53 FR 41278, Oct.
20, 1988; paras. (c)(10) & (c)(11), 57 FR 2021, Jan. 17,
1992, effective Mar. 16, 1992; para. (c)(a) amended, 58 FR
54494, Oct. 2, 1993, effective Nov. 22, 1993; para. (c)(9)
amended, 61 FR 56439, Nov. 1, 1996, effective Dec 2, 1996]

 § 10.24 Disclosure of information to authorities.

  (a)  A practitioner possessing unprivileged knowledge of
a  violation  of  a  Disciplinary  Rule  shall  report  such
knowledge to the Director.

  (b) A practitioner possessing unprivileged knowledge or
evidence concerning another practitioner, employee of the
Office, or a judge shall reveal fully such knowledge or
evidence  upon  proper  request  of  a  tribunal  or  other
authority empowered to investigate or act upon the conduct
of practitioners, employees of the Office, or judges.

  [Added 50 FR 5176, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.25 - 10.29

 §  10.30  Canon 2.

  A practitioner should assist the legal profession in
fulfilling its duty to make legal counsel available.

  [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.31  Communications concerning a practitioner's
services.

  (a) No practitioner shall with respect to any prospective
business before the Office, by word, circular, letter, or
advertising, with intent to defraud in any manner, deceive,
mislead, or threaten any prospective applicant or other
person having immediate or prospective business before the
Office.

  (b) A practitioner may not use the name of a Member of
either House of Congress or of an individual in the service
of the United States in advertising the practitioner's
practice before the Office.

  (c) Unless authorized under § 10.14(b), a non - lawyer
practitioner shall not hold himself or herself out as
authorized to practice before the Office in trademark cases.

  (d)  Unless  a  practitioner  is  an  attorney,  the
practitioner shall not hold himself or herself out:

  (1) To be an attorney or lawyer or

  (2) As authorized to practice before the Office in non -
patent and trademark cases.

  [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.32  Advertising.

  (a) Subject to § 10.31, a practitioner may advertise
services  through  public  media,  including  a  telephone
directory, legal directory, newspaper, or other periodical,
radio, or television, or through written communications not
involving solicitation as defined by § 10.33.

  (b) A practitioner shall not give anything of value to a
person for recommending the practitioner's services, except
that a practitioner may pay the reasonable cost of

 advertising or written communication permitted by this
section and may pay the usual charges of a not - for -
profit  lawyer  referral  service  or  other  legal  service
organization.

  (c) Any communication made pursuant to this section shall
include the name of at least one practitioner responsible
for its content.

  [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.33  Direct contact with prospective clients.

  A practitioner may not solicit professional employment

from a prospective client with whom the practitioner has no
family or prior professional relationship, by mail, in -
person, or otherwise, when a significant motive for the
practitioner's doing so is the practitioner's pecuniary gain
under  circumstances  evidencing  undue  influence,
intimidation, or overreaching. The term "solicit" includes
contact in person, by telephone or telegraph, by letter or
other writing, or by other communication directed to a
specific recipient, but does not include letters addressed
or advertising circulars distributed generally to persons
not specifically known to need legal services of the kind
provided by the practitioner in a particular manner, but who
are so situated that they might in general find such
services useful.

  [Added 50 FR 5177, Feb.6, 1985, effective Mar. 8, 1985]

 § 10.34  Communications of fields of practice.

  A registered practitioner may state or imply that the
practitioner is a specialist as follows:

  (a) A registered practitioner who is an attorney may use
the  designation  "Patents,"  "Patent  Attorney,"  "Patent
Lawyer," "Registered Patent Attorney," or a substantially
similar designation.

  (b) A registered practitioner who is not an attorney may
use the designation "Patents," "Patent Agent," "Registered
Patent  Agent,"  or  a  substantially  similar  designation,
except that any practitioner who was registered prior to
November 15, 1938, may refer to himself or herself as a
"patent attorney."

  [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.35  Firm names and letterheads.

  (a) A practitioner shall not use a firm name, letterhead,
or other professional designation that violates § 10.31. A
trade name may be used by a practitioner in private practice
if it does not imply a current connection with a government
agency  or  with  a  public  or  charitable  legal  services
organization and is not otherwise in violation of § 10.31.

  (b) Practitioners may state or imply that they practice
in a partnership or other organization only when that is the
fact.

  [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.36  Fees for legal services.

  (a) A practitioner shall not enter into an agreement for,
charge, or collect an illegal or clearly excessive fee.

  (b) A fee is clearly excessive when, after a review of
the facts, a practitioner of ordinary prudence would be left
with a definite and firm conviction that the fee is in
excess of a reasonable fee. Factors to be considered as
guides in determining the reasonableness of a fee include
the following:

  (1)  The  time  and  labor  required,  the  novelty  and
difficulty  of  the  questions  involved,  and  the  skill

requisite to perform the legal service properly.

  (2) The likelihood, if apparent to the client, that the
acceptance of the particular employment will preclude other
employment by the practitioner.

  (3)  The  fee  customarily  charged  for  similar  legal
services.

  (4) The amount involved and the results obtained.

  (5) The time limitations imposed by the client or by the
circumstances.

  (6)  The  nature  and  length  of  the  professional
relationship with the client.

  (7)  The  experience,  reputation,  and  ability  of  the
practitioner or practitioners performing the services.

  (8) Whether the fee is fixed or contingent.

  [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.3 7  Division of fees among practitioners.

  (a) A practitioner shall not divide a fee for legal
services with another practitioner who is not a partner in
or associate of the practitioner's law firm or law office,
unless:

  (1) The client consents to employment of the other
practitioner after a full disclosure that a division of fees
will be made.

  (2) The division is made in proportion to the services
performed and responsibility assumed by each.

  (3) The total fee of the practitioners does not clearly
exceed  reasonable  compensation  for  all  legal  services
rendered to the client.

  (b) This section does not prohibit payment to a former
partner or associate pursuant to a separation or retirement
agreement.

  [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.38  Agreements restricting the practice of a
practitioner.

  (a) A practitioner shall not be a party to or participate
in  a  partnership  or  employment  agreement  with  another
practitioner that restricts the right of a practitioner to
practice before the Office after the termination of a
relationship created by the agreement, except as a condition
to payment of retirement benefits.

  (b) In connection with the settlement of a controversy or
suit, a practitioner shall not enter into an agreement that
restricts the practitioner's right to practice before the
Office.

  [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.39  Acceptance of employment.

  A practitioner shall not accept employment on behalf of
a person if the practitioner knows or it is obvious that
such person wishes to:

  (a) Bring a legal action, commence a proceeding before
the Office, conduct a defense, assert a position in any
proceeding pending before the Office, or otherwise have
steps taken for the person, merely for the purpose of
harassing or maliciously injuring any other person.

  (b) Present a claim or defense in litigation or any
proceeding before the Office that it is not warranted under
existing law, unless it can be supported by good faith
argument for an extension, modification, or reversal of
existing law.

  [Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.40  Withdrawal from employment.

  (a) A practitioner shall not withdraw from employment in
a proceeding before the Office without permission from the
Office (see § 1.36 and 2.19 of this subchapter). In any
event, a practitioner shall not withdraw from employment
until the practitioner has taken reasonable steps to avoid
foreseeable prejudice to the rights of the client, including
giving due notice to his or her client, allowing time for
employment of another practitioner, delivering to the client
all papers and property to which the client is entitled, and
complying with applicable laws and rules. A practitioner who
withdraws from employment shall refund promptly any part of
a fee paid in advance that has not been earned.

  (b) Mandatory withdrawal.  A practitioner representing a
client before the Office shall withdraw from employment if:

  (1) The practitioner knows or it is obvious that the
client is bringing a legal action, commencing a proceeding
before the Office, conducting a defense, or asserting a
position in litigation or any proceeding pending before the
Office, or is otherwise having steps taken for the client,
merely for the purpose of harassing or maliciously injuring
any person;

  (2) The practitioner knows or it is obvious that the
practitioner's continued employment will result in violation
of a Disciplinary Rule;

  (3)  The  practitioner's  mental  or  physical  condition
renders it unreasonably difficult for the practitioner to
carry out the employment effectively; or

  (4) The practitioner is discharged by the client.

  (c) Permissive withdrawal. If paragraph (b) of this
section is not applicable, a practitioner may not request
permission to withdraw in matters pending before the Office
unless such request or such withdrawal is because:

  (1) The petitioner's client:

  (i) Insists upon presenting a claim or defense that is
not warranted under existing law and cannot be supported by

good faith argument for an extension, modification, or
reversal of existing law;

  (ii) Personally seeks to pursue an illegal course of
conduct;

  (iii) Insists that the practitioner pursue a course of
conduct that is illegal or that is prohibited under a
Disciplinary Rule;

  (iv) By other conduct renders it unreasonably difficult
for  the  practitioner  to  carry  out  the  employment
effectively;

  (v) Insists, in a matter not pending before a tribunal,
that the practitioner engage in conduct that is contrary to
the  judgment  and  advice  of  the  practitioner  but  not
prohibited under the Disciplinary Rule; or

  (vi) Has failed to pay one or more bills rendered by the
practitioner for an unreasonable period of time or has
failed to honor an agreement to pay a retainer in advance of
the performance of legal services.

  (2) The practitioner's continued employment is likely to
result in a violation of a Disciplinary Rule;

  (3) The practitioner's inability to work with co -
counsel indicates that the best interests of the client
likely will be served by withdrawal;

  (4)  The  practitioner's  mental  or  physical  condition
renders it difficult for the practitioner to carry out the
employment effectively;

  (5)  The  practitioner's  client  knowingly  and  freely
assents to termination of the employment; or

  (6)  The  practitioner  believes  in  good  faith,  in  a
proceeding pending before the Office, that the Office will
find the existence of other good cause for withdrawal.

  [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

 § § 10.41 - 10.45

 § 10.46  Canon 3.

  A  practitioner  should  assist  in  preventing  the
unauthorized practice of law.

  [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.47  Aiding unauthorized practice of law.

  (a) A practitioner shall not aid a non - practitioner in
the unauthorized practice of law before the Office.

  (b) A practitioner shall not aid a suspended or excluded
practitioner in the practice of law before the Office.

  (c) A practitioner shall not aid a non - lawyer in the
unauthorized practice of law.

  [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.48  Sharing legal fees.

  A practitioner or a firm of practitioners shall not
share legal fees with a non - practitioner except that:

  (a)  An  agreement  by  a  practitioner  with  the
practitioner's firm, partner, or associate may provide for
the payment of money, over a reasonable period of time after
the practitioner's death, to the practitioner's estate or to
one or more specified persons.

  (b) A practitioner who undertakes to complete unfinished
legal business of a deceased practitioner may pay to the
estate of the deceased practitioner that proportion of the
total compensation which fairly represents the services
rendered by the deceased practitioner.

  (c) A practitioner or firm of practitioners may include
non - practitioner employees in a compensation or retirement
plan, even though the plan is based in whole or in part on a
profit - sharing arrangement, providing such plan does not
circumvent another Disciplinary Rule.

  [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.49  Forming a partnership with a non -
practitioner.

  A practitioner shall not form a partnership with a
nonpractitioner if any of the activities of the partnership
consist of the practice of patent, trademark, or other law
before the Office.

  [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

 § § 10.50 - 10.55 [Reserved]

 § 10.56 Canon 4.

  A practitioner should preserve the confidences and
secrets of a client.

  [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.57  Preservation of confidences and secrets of a
client.

  (a) "Confidence" refers to information protected by the
attorney  -  client  or  agent  -  client  privilege  under
applicable law. "Secret" refers to the other information
gained in the professional relationship that the client has
requested be held inviolate or the disclosure of which would
be embarrassing or would be likely to be detrimental to the
client.

  (b) Except when permitted under paragraph (c) of this
section, a practitioner shall not knowingly:

  (1) Reveal a confidence or secret of a client.

  (2) Use a confidence or secret of a client to the dis
advantage of the client.

  (3) Use a confidence or secret of a client for the

advantage of the practitioner or of a third person, unless
the client consents after full disclosure.

  (c) A practitioner may reveal:

  (1)  Confidences or secrets with the consent of the
client affected but only after a full disclosure to the
client.

  (2)  Confidences  or  secrets  when  permitted  under
Disciplinary Rules or required by law or court order.

  (3) The intention of a client to commit a crime and the
information necessary to prevent the crime.

  (4) Confidences or secrets necessary to establish or
collect the practitioner's fee or to defend the practitioner
or the practitioner's employees or associates against an
accusation of wrongful conduct.

  (d) A practitioner shall exercise reasonable care to
prevent the practitioner's employees, associates, and others
whose  services  are  utilized  by  the  practitioner  from
disclosing or using confidences or secrets of a client,
except that a practitioner may reveal the informa tion
allowed  by  paragraph  (c)  of  this  section  through  an
employee.

  [Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

 § §  10.58 - 10.60

 § 10.61 Canon 5.

  A practitioner should exercise independent professional
judgment on behalf of a client.

  [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.62 Refusing employment when the interest  of the
practitioner may impair the practitioner's independent
professional judgment.

  (a) Except with the consent of a client after full dis
closure, a practitioner shall not accept employment if the
exercise of the practitioner's professional judgment on
behalf of the client will be or reasonably may be affected
by the practitioner's own financial, business, property, or
personal interests.

  (b) A practitioner shall not accept employment in a
proceeding before the Office if the practitioner knows or it
is obvious that the practitioner or another practitioner in
the practitioner's firm ought to sign an affidavit to be
filed in the Office or be called as a witness, except that
the  practitioner  may  undertake  the  employment  and  the
practitioner or another practitioner in the practitioner's
firm may testify:

  (1)  If  the  testimony  will  relate  solely  to  an
uncontested matter.

  (2) If the testimony will relate solely to a matter of
formality and there is no reason to believe that substantial
evidence will be offered in opposition to the testimony.

  (3) If the testimony will relate solely to the nature and
value  of  legal  services  rendered  in  the  case  by  the
practitioner or the practitioner's firm to the client.

  (4) As to any matter, if refusal would work a substantial
hardship on the client because of the distinctive value of
the practitioner or the practitioner's firm as counsel in
the particular case.

  [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.63  Withdrawal when the practitioner becomes a
witness.

  (a) If, after undertaking employment in a proceeding in
the Office, a practitioner learns or it is obvious that the
practitioner or another practitioner in the practitioner's
firm ought to sign an affidavit to be filed in the Office or
be called as a witness on behalf of a practitioner's client,
the practitioner shall withdraw from the conduct of the
proceeding and the practitioner's firm, if any, shall not
continue representation in the proceeding, except that the
practitioner  may  continue  the  representation  and  the
practitioner or another practitioner in the practitioner's
firm  may  testify  in  the  circumstances  enumerated  in
paragraphs (1) through (4) of § 10.62(b).

  (b) If, after undertaking employment in a proceeding
before the Office, a practitioner learns or it is obvious
that  the  practitioner  or  another  practitioner  in  the
practitioner's firm may be asked to sign an affidavit to be
filed in the Office or be called as a witness other than on
behalf of the practitioner's client, the practitioner may
continue the representation until it is apparent that the
practitioner's  affidavit  or  testimony  is  or  may  be
prejudicial to the practitioner's client.

  [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.64 Avoiding acquisition of interest in litigation or 
proceeding before the Office.

  (a)  A  practitioner  shall  not  acquire  a  proprietary
interest in the subject matter of a proceeding before the
Office which the practitioner is conducting for a client,
except that the practitioner may:

  (1)  Acquire  a  lien  granted  by  law  to  secure  the
practitioner's fee or expenses; or

  (2) Contract with a client for a reasonable contingent
fee; or

  (3) In a patent case, take an interest in the patent as
part or all of his or her fee.

  (b) While representing a client in connection with a
contemplated or pending proceeding before the Office, a
practitioner  shall  not  advance  or  guarantee  financial
assistance to a client, except that a practitioner may
advance or guarantee the expenses of going forward in a
proceeding before the Office including fees required by law
to  be  paid  to  the  Office,  expenses  of  investigation,
expenses of medical examination, and costs of obtaining and

presenting evidence, provided the client remains ultimately
liable for such expenses. A practitioner may, however,
advance any fee required to prevent or remedy an abandonment
of a client's application by reason of an act or omission
attributable to the practitioner and not to the client,
whether or not the client is ultimately liable for such fee.

  [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]
§ 10.65 Limiting business relations with a client.

  A  practitioner  shall  not  enter  into  a  business
transaction with a client if they have differing interests
therein and if the client expects the practitioner to
exercise professional judgment therein for the protection of
the client, unless the client has consented after full
disclosure.

  [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

 §  10.66  Refusing to accept or continue employment
if the interests of another client may impair  the
independent professional judgment of the practitioner.

  (a) A practitioner shall decline proffered employment if
the exercise of the practitioner's independent professional
judgment in behalf of a client will be or is likely to be
adversely  affected  by  the  acceptance  of  the  proffered
employment,  or  if  it  would  be  likely  to  involve  the
practitioner in representing differing interests, except to
the extent permitted under paragraph (c) of this section.

  (b) A practitioner shall not continue multiple employment
if  the  exercise  of  the  practitioner's  independent
professional judgment in behalf of a client will be or is
likely  to  be  adversely  affected  by  the  practitioner's
representation of another client, or if it would be likely
to  involve  the  practitioner  in  representing  differing
interests, except to the extent permitted under paragraph
(c) of this section.

  (c) In the situations covered by paragraphs (a) and (b)
of this section, a practitioner may represent multiple
clients  if  it  is  obvious  that  the  practitioner  can
adequately represent the interest of each and if each
consents to the representation after full disclosure of the
possible effect of such representation on the exercise of
the  practitioner's  independent  professional  judgment  on
behalf of each.

  (d) If a practitioner is required to decline employment
or to withdraw from employment under a Disciplinary Rule, no
partner, or associate, or any other practitioner affiliated
with the practitioner or the practitioner's firm, may accept
or continue such employment unless otherwise ordered by the
Director or Commissioner.

  [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.67  Settling similar claims of clients.

  A practitioner who represents two or more clients shall
not make or participate in the making of an aggregate
settlement of the claims of or against the practitioner's
clients, unless each client has consented to the settlement
after being advised of the existence and nature of all the

claims involved in the proposed settlement, of the total
amount of the settlement, and of the participation of each
person in the settlement.

  [Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.68  Avoiding influence by others than the client.

  (a) Except with the consent of the practitioner's client
after full disclosure, a practitioner shall not:

  (1)  Accept  compensation  from  one  other  than  the
practitioner's client for the practitioner's legal services
to or for the client.

  (2) Accept from one other than the practitioner's client
any  thing  of  value  related  to  the  practitioner's
representation of or the practitioner's employment by the
client.

  (b)  A  practitioner  shall  not  permit  a  person  who
recommends, employs, or pays the practitioner to render
legal services for another, to direct or regulate the
practitioner's professional judgment in rendering such legal
services.

  (c) A practitioner shall not practice with or in the form
of a professional corporation or association authorized to
practice law for a profit, if a non - practitioner has the
right to direct or control the professional judgment of a
practitioner.

  [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

 § § 10.69 - 10.75

 § 10.76  Canon 6.

  A practitioner should represent a client competently.

  [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.77  Failing to act competently.

  A practitioner shall not:

  (a) Handle a legal matter which the practitioner knows or
should know that the practitioner is not competent to
handle, without associating with the practitioner another
practitioner who is competent to handle it.

  (b) Handle a legal matter without preparation adequate in
the circumstances.

  (c) Neglect a legal matter entrusted to the practitioner.

  [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]
§ 10.78  Limiting liability to client.

  A practitioner shall not attempt to exonerate himself or
herself from, or limit his or her liability to, a client for
his or her personal malpractice.

  [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

 § § 10.79 - 10.82 [Reserved]

 § 10.83 Canon 7.

  A practitioner should represent a client zealously
within the bounds of the law.

  [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.84 Representing a client zealously.

  (a) A practitioner shall not intentionally:

  (1) Fail to seek the lawful objectives of a client
through reasonable available means permitted by law and the
Disciplinary Rules, except as provided by paragraph (b) of
this section. A practitioner does not violate the provisions
of this section, however, by acceding to reasonable requests
of opposing counsel which do not prejudice the rights of the
client, by being punctual in fulfilling all professional
commitments, by avoiding offensive tactics, or by treating
with courtesy and consideration all persons involved in the
legal process.

  (2) Fail to carry out a contract of employment entered
into  with  a  client  for  professional  services,  but  a
practitioner may withdraw as permitted under § 10.40, 10.63,
and 10.66.

  (3) Prejudice or damage a client during the course of a
professional relationship, except as required under this
part.

  (b) In representation of a client, a practitioner may:

  (1) Where permissible, exercise professional judgment to
waive or fail to assert a right or position of the client.

  (2) Refuse to aid or participate in conduct that the
practitioner believes to be unlawful, even though there is
some support for an argument that the conduct is legal.

  [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.85  Representing a client within the bounds of the
law.

  (a) In representation of a client, a practitioner shall
not:

  (1) Initiate or defend any proceeding before the Office,
assert a position, conduct a defense, delay a trial or
proceeding before the Office, or take other action on behalf
of the practitioner's client when the practitioner knows or
when it is obvious that such action would serve merely to
harass or maliciously injure another.

  (2)  Knowingly  advance  a  claim  or  defense  that  is
unwarranted under existing law, except that a practitioner
may advance such claim or defense if it can be supported by
good faith argument for an extension, modification, or
reversal of existing law.

  (3) Conceal or knowingly fail to disclose that which the
practitioner is required by law to reveal.

  (4) Knowingly use perjured testimony or false evidence.

  (5) Knowingly make a false statement of law or fact.

  (6)  Participate  in  the  creation  or  preservation  of
evidence when the practitioner knows or it is obvious that
the evidence is false.

  (7) Counsel or assist a client in conduct that the
practitioner knows to be illegal or fraudulent.

  (8) Knowingly engage in other illegal conduct or conduct
contrary to a Disciplinary Rule.

  (b)  A  practitioner  who  receives  information  clearly
establishing that:

  (1) A client has, in the course of the representation,
perpetrated a fraud upon a person or tribunal shall promptly
call upon the client to rectify the same, and if the client
refuses or is unable to do so the practitioner shall reveal
the fraud to the affected person or tribunal.

  (2) A person other than a client has perpetrated a fraud
upon a tribunal shall promptly reveal the fraud to the
tribunal.

  [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.86

 § 10.87  Communicating with one of adverse interest.

  During the course of representation of a client, a
practitioner shall not:

  (a) Communicate or cause another to communicate on the
subject of the representation with a party the practitioner
knows to be represented by another practitioner in that
matter unless the practitioner has the prior consent of the
other practitioner representing such other party or is
authorized by law to do so. It is not improper, however, for
a practitioner to encourage a client to meet with an
opposing party for settlement discussions.

  (b) Give advice to a person who is not represented by a
practitioner other than the advice to secure counsel, if the
interests  of  such  person  are  to  have  a  reason  able
possibility of being in conflict with the interests of the
practitioner's client.

  [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.88  Threatening criminal prosecution.

  A  practitioner  shall  not  present,  participate  in
presenting, or threaten to present criminal charges solely
to  obtain  an  advantage  in  any  prospective  or  pending
proceeding before the Office.

  [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.89  Conduct in proceedings.

  (a) A practitioner shall not disregard or advise a client
to disregard any provision of this Subchapter or a decision
of the Office made in the course of a proceeding before the
Office, but the practitioner may take appropriate steps in
good faith to test the validity of such provision or
decision.

  (b) In presenting a matter to the Office, a practitioner
shall disclose:

  (1) Controlling legal authority known to the practitioner
to be directly adverse to the position of the client and
which is not disclosed by opposing counsel or an employee of
the Office.

  (2) Unless privileged or irrelevant, the identities of
the client the practitioner represents and of the persons
who employed the practitioner.

  (c) In appearing in a professional capacity before a
tribunal, a practitioner shall not:

  (1) State or allude to any matter that the practitioner
has no reasonable basis to believe is relevant to the case
or that will not be supported by admissible evidence.

  (2)  Ask  any  question  that  the  practitioner  has  no
reasonable basis to believe is relevant to the case and that
is intended to degrade a witness or other person.

  (3) Assert the practitioner's personal knowledge of the
facts in issue, except when testifying as a witness.

  (4) Assert the practitioner's personal opinion as to the
justness of a cause, as to the credibility of a witness, as
to the culpability of a civil litigant, or as to the guilt
or innocence of an accused; but the practitioner may argue,
on the practitioner's analysis of the evidence, for any
position or conclusion with respect to the matters stated
herein.

  (5) Engage in undignified or discourteous conduct before
the Office (see § 1.3 of the subchapter).

  (6) Intentionally or habitually violate any provision of
this subchapter or established rule of evidence.

  [Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

 § § 10.90 - 10.91

 § 10 92  Contact with witnesses.

  (a) A practitioner shall not suppress any evidence that
the practitioner or the practitioner's client has a legal
obligation to reveal or produce.

  (b) A practitioner shall not advise or cause a person to
be secreted or to leave the jurisdiction of a tribunal for
the purpose of making the person unavailable as a witness
therein.

  (c) A practitioner shall not pay, offer to pay, or
acquiesce in payment of compensation to a witness contingent
upon the content of the witness' affidavit, testimony or the

outcome  of  the  case.  But  a  practitioner  may  advance,
guarantee, or acquiesce in the payment of:

  (1)  Expenses  reasonably  incurred  by  a  witness  in
attending, testifying, or making an affidavit.

  (2) Reasonable compensation to a witness for the witness'
loss  of  time  in  attending,  testifying,  or  making  an
affidavit.

  (3) A reasonable fee for the professional services of an
expert witness.

  [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.93  Contact with officials.

  (a) A practitioner shall not give or lend anything of
value to a judge, official, or employee of a tribunal under
circumstances which might give the appearance that the gift
or loan is made to influence official action.

  (b) In an adversary proceeding, including any inter
partes proceeding before the Office, a practitioner shall
not communicate, or cause another to communicate, as to the
merits of the cause with a judge, official, or Office
employee before whom the proceeding is pending, except:

  (1) In the course of official proceedings in the cause.

  (2) In writing if the practitioner promptly delivers a
copy of the writing to opposing counsel or to the adverse
party  if  the  adverse  party  is  not  represented  by  a
practitioner.

  (3) Orally upon adequate notice to opposing counsel or to
the adverse party if the adverse party is not represented by
a practitioner.

  (4) As otherwise authorized by law.

  [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]
§ § 10.94 - 10.9

 § 10.100  Canon 8.

  A practitioner should assist in improving the legal
system.

  [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.101 Action as a public official.

  (a) A practitioner who holds public office shall not:

  (1)  Use the practitioner's public position to obtain,
or attempt to obtain, a special advantage in legislative
matters  for  the  practitioner  or  for  a  client  under
circumstances where the practitioner knows or it is obvious
that such action is not in the public interest.

  (2)  Use  the  practitioner's  public  position  to
influence, or attempt to influence, a tribunal to act in
favor of the practitioner or of a client.

  (3) Accept any thing of value from any person when the
practitioner knows or it is obvious that the offer is for
the purpose of influencing the practitioner's action as a
public official.

  (b) A practitioner who is an officer or employee of the
United States shall not practice before the Office in patent
cases except as provided in § 10.10(c) and 10.10(d).

  [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985;
para. (b) amended, 54 FR 6520, Feb. 13, 1989]

 § 10.102 Statements concerning officials.

  (a)  A  practitioner  shall  not  knowingly  make  false
statements  of  fact  concerning  the  qualifications  of  a
candidate for election or appointment to a judicial office
or to a position in the Office.

  (b)  A  practitioner  shall  not  knowingly  make  false
accusations against a judge, other adjudicatory officer, or
employee of the Office.

  [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.103 Practitioner candidate for judicial office.

  A practitioner who is a candidate for judicial office
shall comply with applicable provisions of law.

  [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

 § § 10.104 - 10.109

 § 10.110 Canon 9.

  A practitioner should avoid even the appearance of
professional impropriety.

  [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.111  Avoiding even the appearance of impropriety.

  (a) A practitioner shall not accept private employment in
a matter upon the merits of which he or she has acted in a
judicial capacity.

  (b)  A practitioner shall not accept private employment
in a matter in which he or she had personal responsibility
while a public employee.

  (c) A practitioner shall not state or imply that the
practitioner  is  able  to  influence  improperly  or  upon
irrelevant grounds any tribunal, legislative body, or public
official.

  [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.112  Preserving identity of funds and property of
client.

  (a) All funds of clients paid to a practitioner or a
practitioner's firm, other than advances for costs and ex
penses, shall be deposited in one or more identifiable bank
accounts maintained in the United States or, in the case of

a practitioner having an office in a foreign country or
registered under § 10.6(c), in the United States or the
foreign country.

  (b)  No  funds  belonging  to  the  practitioner  or  the
practitioner's firm shall be deposited in the bank accounts
required by paragraph (a) of this section except as follows:

  (1) Funds reasonably sufficient to pay bank charges may
be deposited therein.

  (2) Funds belonging in part to a client and in part
presently  or  potentially  to  the  practitioner  or  the
practitioner's firm must be deposited therein, but the
portion belonging to the practitioner or the practitioner's
firm may be withdrawn when due unless the right of the
practitioner or the practitioner's firm to receive it is
disputed by the client, in which event the disputed portion
shall  not  be  withdrawn  until  the  dispute  is  finally
resolved.

  (c) A practitioner shall:

  (1) Promptly notify a client of the receipt of the
client's funds, securities, or other properties.

  (2) Identify and label securities and properties of a
client promptly upon receipt and place them in a safe
deposit box or other place of safekeeping as soon as
practicable.

  (3) Maintain complete records of all funds, securities,
and other properties of a client coming into the possession
of the practitioner and render appropriate accounts to the
client regarding the funds, securities, or other properties.

  (4) Promptly pay or deliver to the client as requested by
a client the funds, securities, or other properties in the
possession of the practitioner which the client is entitled
to receive.

  [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

 § § 10.113 - 10.129 [Reserved]

  INVESTIGATIONS AND DISCIPLINARY PROCEEDINGS

 § 10.130 Reprimand, suspension or exclusion.

  (a) The Commissioner may, after notice and opportunity
for a hearing, (1) reprimand or (2) suspend or exclude,
either generally or in any particular case, any individual,
attorney, or agent shown to be incompetent or disreputable,
who is guilty of gross misconduct, or who violates a
Disciplinary Rule.

  (b) Petitions to disqualify a practitioner in  ex parte
or inter partes cases in the Office are not governed by §
10.130 through 10.170 and will be handled on a case - by -
case basis under such conditions as the Commissioner deems
appropriate.

  [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.131  Investigations.

  (a)  The Director is authorized to investigate possible
violations of Disciplinary Rules by practitioners. See §
10.2(b)(2).

  (b) Practitioners shall report and reveal to the Director
any  knowledge  or  evidence  required  by  §  10.24.  A
practitioner shall cooperate with the Director in connection
with any investigation under paragraph (a) of this section
and with officials of the Office in connection with any
disciplinary proceeding instituted under § 10.132(b).

  (c)  Any  nonpractitioner  possessing  knowledge  or
information concerning a violation of a Disciplinary Rule by
a practitioner may report the violation to the Director. The
Director may require that the report be presented in the
form of an affidavit.

  [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.132 Initiating a disciplinary proceeding; reference 
to an administrative law judge.

  (a)  If  after  conducting  an  investigation  under  §
10.131(a) the Director is of the opinion that a practitioner
has violated a Disciplinary Rule, the Director shall, after
complying where necessary with the provisions of 5 U.S.C.
558(c), call a meeting of the Committee on Discipline. The
Committee on Discipline shall then determine as specified in
§  10.4(b)  whether  a  disciplinary  proceeding  shall  be
instituted under paragraph (b) of this section.

  (b)  If  the  Committee  on  Discipline  determines  that
probable cause exists to believe that a practitioner has
violated a Disciplinary Rule, the Director shall institute a
disciplinary  proceeding  by  filing  a  complaint  under  §
10.134. The complaint shall be filed in the Office of the
Director. A disciplinary proceeding may result in:

  (1) A reprimand, or

  (2)  Suspension  or  exclusion  of  a  practitioner  from
practice before the Office.

  (c) Upon the filing of a complaint under § 10.134, the
Commissioner will refer the disciplinary proceeding to an
administrative law judge.

  [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.133  Conference between Director and practitioner;
resignation.

  (a) General. The Director may confer with a practitioner
concerning possible violations by the practitioner of a
Disciplinary Rule whether or not a disciplinary proceeding
has been instituted.

  (b) Resignation.  Any practitioner who is the subject of
an investigation under § 10.131 or against whom a complaint
has been filed under § 10.134 may resign from practice
before the Office only by submitting with the Director an
affidavit stating his or her desire to resign.

  (c) If filed prior to the date set by the administrative

law judge for a hearing, the affidavit shall state that:

  (1) The resignation is freely and voluntarily proffered;

  (2) The practitioner is not acting under duress or
coercion from the Office;

  (3) The practitioner is fully aware of the implications
of filing the resignation;

  (4)  The  practitioner  is  aware  (i)  of  a  pending
investigation or (ii) of charges arising from the complaint
alleging that he or she is guilty of a violation of the
Patent  and  Trademark  Office  Code  of  Professional
Responsibility, the nature of which shall be set forth by
the practitioner to the satisfaction of the Director;

  (5) The practitioner acknowledges that, if and when he or
she applies for reinstatement under § 10.160, the Director
will  conclusively  presume,  for  the  limited  purpose  of
determining the application for reinstatement, that:

  (i) The facts upon which the complaint is based are true
and

  (ii)  The  practitioner  could  not  have  successfully
defended himself or herself against (A) charges predicated
on the violation under investigation or (B) charges set out
in the complaint filed against the practitioner.

  (d)  If  filed  on  or  after  the  date  set  by  the
administrative law judge for a hearing, the affidavit shall
make the statements required by paragraphs (b)(1) through
(4) of this section and shall state that:

  (1) The practitioner acknowledges the facts upon which
the complaint is based are true; and

  (2)  The  resignation  is  being  submitted  because  the
practitioner  could  not  successfully  defend  himself  or
herself against (i) charges predicated on the violation
under  investigation  or  (ii)  charges  set  out  in  the
complaint.

  (e) When an affidavit under paragraphs (b) or (c) of this
section is received while an investigation is pending, the
Commissioner shall enter an order excluding the practitioner
"on consent." When an affidavit under paragraphs (b) or (c)
of this section is received after a complaint under § 10.134
has been filed, the Director shall notify the administrative
law judge. The administrative law judge shall enter an order
transferring the disciplinary proceeding to the Commissioner
and the Commissioner shall enter an order excluding the
practitioner "on consent."

  (f) Any practitioner who resigns from practice before the
Office under this section and who intends to reapply for
admission to practice before the Office must comply with the
provisions of § 10.158.

  (g) Settlement.  Before or after a complaint is filed
under § 10.134, a settlement conference may occur between
the Director and a practitioner for the purpose of settling
any disciplinary matter. If an offer of settlement is made
by the Director or the practitioner and is not accepted by

the other, no reference to the offer of settlement or its
refusal shall be admissible in evidence in the disciplinary
proceeding unless both the Director and the practitioner
agree in writing.

  [Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.134  Complaint.

  (a) A complaint instituting a disciplinary proceeding
shall:

  (1) Name the practitioner, who may then be referred to as
the "respondent."

  (2) Give a plain and concise description of the alleged
violations of the Disciplinary Rules by the practitioner.

  (3) State the place and time for filing an answer by the
respondent.

  (4) State that a decision by default may be entered
against the respondent if an answer is not timely filed.

  (5) Be signed by the Director.

  (b) A complaint will be deemed sufficient if it fairly
informs the respondent of any violation of the Disciplinary
Rules which form the basis for the disciplinary proceeding
so that the respondent is able to adequately prepare a
defense.

  [Added 50 FR 5182, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.135  Service of complaint.

  (a) A complaint may be served on a respondent in any of
the following methods:

  (1) By handing a copy of the complaint personally to the
respondent,  in  which  case  the  individual  handing  the
complaint to the respondent shall file an affidavit with the
Director indicating the time and place the complaint was
handed to the respondent.

  (2) By mailing a copy of the complaint by "Express Mail"
or first - class mail to:

  (i) A registered practitioner at the address for which
separate notice was last received by the Director or

  (ii) A nonregistered practitioner at the last address for
the respondent known to the Director.

  (3) By any method mutually agreeable to the Director and
the respondent.

  (b) If a complaint served by mail under paragraph (a)(2)
of this section is returned by the U.S. Postal Service, the
Director shall mail a second copy of the complaint to the
respondent. If the second copy of the complaint is also
returned by the U.S. Postal Service, the Director shall
serve the respondent by publishing an appropriate notice in
the Official Gazette for four consecutive weeks, in which
case the time for answer shall be at least thirty days from

the fourth publication of the notice.

  (c) If a respondent is a registered practitioner, the
Director may serve simultaneously with the complaint a
letter under § 10.11(b). The Director may require the
respondent to answer the § 10.11(b) letter within a period
of not less than 15 days. An answer to the § 10.11(b) letter
shall constitute proof of service. If the respondent fails
to answer the § 10.11(b) letter, his or her name will be
removed from the register as provided by § 10.11(b).

  (d) If the respondent is represented by an attorney under
§ 10.140(a), a copy of the complaint shall also be served on
the attorney.

  [Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.136

  (a) Time for answer. An answer to a complaint shall be
filed within a time set in the complaint which shall be not
less than thirty days.

  (b)  With whom filed . The answer shall be filed in
writing with the administrative law judge. The time for
filing an answer may be extended once for a period of no
more than thirty days by the administrative law judge upon a
showing of good cause provided a motion requesting an
extension of time is filed within thirty days after the date
the complaint is filed by the Director. A copy of the answer
shall be served on the Director.

  (c) Content. The respondent shall include in the answer a
statement of the facts which constitute the grounds of
defense and shall specifically admit or deny each allegation
set forth in the complaint. The respondent shall not deny a
material allegation in the complaint which the respondent
knows to be true or state that respondent is without
sufficient information to form a belief as to the truth of
an allegation when in fact the respondent possesses that
information. The respondent shall also state affirmatively
special matters of defense.

  (d) Failure to deny allegations in complaint. Every
allegation in the complaint which is not denied by a
respondent in the answer is deemed to be admitted and may be
considered proven. No further evidence in respect of that
allegation need be received by the administrative law judge
at any hearing. Failure to timely file an answer will
constitute an admission of the allegations in the complaint.

  (e) Reply by the Director. No reply to an answer is
required by the Director and any affirmative defense in the
answer shall be deemed to be denied. The Director may,
however, file a reply if he or she chooses or if ordered by
the administrative law judge.

  [Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985;
amended 50 FR 25073, June 17, 1985, ]

 § 10.137

  False statements in an answer may be made the basis of a
supplemental complaint.

  [Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.138 Contested case.

  Upon the filing of an answer by the respondent, a
disciplinary proceeding shall be regarded as a contested
case within the meaning of 35 U.S.C. 24. Evidence obtained
by a subpoena issued under 35 U.S.C. 24 shall not be
admitted into the record or considered unless leave to
proceed under 35 U.S.C. 24 was previously authorized by the
administrative law judge.

  [Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.139  Administrative law judge; appointment;
responsibilities; review of interlocutory  orders; stays.

  (a) Appointment.  An administrative law judge, appointed
under 5 U.S.C. 3105, shall conduct disciplinary proceedings
as provided by this part.

  (b) Responsibilities.  The administrative law judge shall
have authority to:

  (1) Administer oaths and affirmations;

  (2) Make rulings upon motions and other requests;

  (3) Rule upon offers of proof, receive relevant evidence,
and examine witnesses;

  (4) Authorize the taking of a deposition of a witness in
lieu of personal appearance of the witness before the
administrative law judge;

  (5) Determine the time and place of any hearing and
regulate its course and conduct;

  (6) Hold or provide for the holding of conferences to
settle or simplify the issues.

  (7) Receive and consider oral or written arguments on
facts and law;

  (8) Adopt procedures and modify procedures from time to
time as occasion requires for the orderly disposition of
proceedings;

  (9) Make initial decisions under § 10.154; and

  (10) Perform acts and take measures as necessary to
promote the efficient and timely conduct of any disciplinary
proceeding.

  (c)  Time  for  making  initial  decision  .  The
administrative  law  judge  shall  set  times  and  exercise
control over a disciplinary proceeding such that an initial
decision under § 10.154 is normally issued within six months
of the date a complaint is filed. The administrative law
judge may, however, issue an initial decision more than six
months after a complaint is filed if in his or her opinion
there exist unusual circumstances which pre clude issuance
of an initial decision within six months of the filing of
the complaint.

  (d) Review of interlocutory orders.  An interlocutory
order of an administrative law judge will not be reviewed by
the Commissioner except:

  (1) when the administrative law judge shall be of the
opinion  (i)  that  the  interlocutory  order  involves  a
controlling question of procedure or law as to which there
is a substantial ground for a difference of opinion and (ii)
that  an  immediate  decision  by  the  Commissioner  may
materially  advance  the  ultimate  termination  of  the
disciplinary proceeding; or

  (2) in an extraordinary situation where justice requires
review.

  (e) Stays pending review of interlocutory order.  If the
Director or a respondent seeks review of an interlocutory
order of an administrative law judge under paragraph (b)(2)
of this section, any time period set for taking action by
the administrative law judge shall not be stayed unless
ordered by the Commissioner or the administrative law judge.

  [Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985;
amended 50 FR 25073, June 17, 1985]

 § 10.140  Representative for Director or respondent.

  (a) A respondent may be represented before the Office in
connection with an investigation or disciplinary proceeding
by  an  attorney.  The  attorney  shall  file  a  written
declaration that he or she is an attorney within the meaning
of § 10.1(c) and shall state:

  (1)  The  address  to  which  the  attorney  wants
correspondence related to the investigation or disciplinary
proceeding sent; and

  (2) A telephone number where the attorney may be reached
during normal business hours.

  (b)  The  Commissioner  shall  designate  at  least  two
associate solicitors in the Office of the Solicitor to act
as  representatives  for  the  Director  in  disciplinary
proceedings. In prosecuting disciplinary proceedings, the
designated  associate  solicitors  shall  not  involve  the
Solicitor or the Deputy Solicitor. The Solicitor and the
Deputy  Solicitor  shall  remain  insulated  from  the
investigation  and  prosecution  of  all  disciplinary
proceedings in order that they shall be available as counsel
to the Commissioner in deciding disciplinary proceedings.

  [Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.141 Filing of papers.

  (a) The provisions of § 1.8 of this subchapter do not
apply to disciplinary proceedings.

  (b) All papers filed after the complaint and prior to
entry of an initial decision by the administrative law judge
shall be filed with the administrative law judge at an
address or place designated by the administrative law judge.
All papers filed after entry of an initial decision by the
administrative law judge shall be filed with the Director.
The Director shall promptly forward to the Commissioner any

paper  which  requires  action  under  this  part  by  the
Commissioner.

  (c) The administrative law judge or the Director may
provide for filing papers and other matters by hand or
"Express Mail."

  [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.142 Service of papers.

  (a) All papers other than a complaint shall be served on
a respondent represented by an attorney by:

  (1) Delivering a copy of the paper to the office of the
attorney; or

  (2) Mailing a copy of the paper by first - class mail or
"Express Mail" to the attorney at the address provided by
the attorney under § 10.140(a)(1); or

  (3) Any other method mutually agreeable to the attorney
and a representative for the Director.

  (b) All papers other than a complaint shall be served on
a respondent who is not represented by an attorney by:

  (1)  Delivering a copy of the paper to the respondent;
or

  (2)  Mailing a copy of the paper by first - class mail or
"Express Mail" to the respondent at the address to which a
complaint may be served or such other address as may be
designated in writing by the respondent; or (3) Any other
method  mutually  agreeable  to  the  respondent  and  a
representative of the Director.

  (c) A respondent shall serve on the representative for
the Director one copy of each paper filed with the ad
ministrative law judge or the Director. A paper may be
served on the representative of the Director by:

  (1) Delivering a copy of the paper to the representative;
or

  (2) Mailing a copy of the paper by first - class mail or
"Express Mail" to an address designated in writing by the
representative; or

  (3)  Any  other  method  mutually  agreeable  to  the  re
spondent and the representative.

  (d) Each paper filed in a disciplinary proceeding shall
contain therein a certificate of service indicating:

  (1) The date of which service was made; and

  (2) The method by which service was made.

  (e) The administrative law judge or the Commissioner may
require that a paper be served by hand or by "Express Mail."

  (f) Service by mail is completed when the paper mailed in
the United States is placed into the custody of the U.S.
Postal Service.

  [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.143  Motions.

  Motions may be filed with the administrative law judge.
The administrative law judge will determine on a case - by -
case basis the time period for response to a motion and
whether replies to responses will be authorized. No motion
shall be filed with the administrative law judge unless such
motion is supported by a written statement by the moving
party that the moving party or attorney for the moving party
has conferred with the opposing party or attorney for the
opposing party in an effort in good faith to resolve by
agreement the issues raised by the motion and has been
unable to reach agreement. If issues raised by a motion are
resolved by the parties prior to a decision on the motion by
the administrative law judge, the parties shall promptly
notify the administrative law judge.

  [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.144  Hearings.

  (a)  The  administrative  law  judge  shall  preside  at
hearings  in  disciplinary  proceedings.  Hearings  will  be
stenographically recorded and transcribed and the testimony
of witnesses will be received under oath or affirmation. The
administrative  law  judge  shall  conduct  hearings  in
accordance with 5 U.S.C. 556. A copy of the transcript of
the hearing shall become part of the record. A copy of the
transcript  shall  be  provided  to  the  Director  and  the
respondent at the expense of the Office.

  (b) If the respondent to a disciplinary proceeding fails
to appear at the hearing after a notice of hearing has been
given by the administrative law judge, the administrative
law judge may deem the respondent to have waived the right
to a hearing and may proceed with the hearing in the absence
of the respondent.

  (c) A hearing under this section will not be open to the
public except that the Director may grant a request by a
respondent to open his or her hearing to the public and make
the record of the disciplinary proceeding available for
public inspection, provided, Agreement is reached in advance
to exclude from public disclosure information which is
privileged  or  confidential  under  applicable  laws  or
regulations.  If  a  disciplinary  proceeding  results  in
disciplinary action against a practitioner, and subject to §
10.159(c), the record of the entire disciplinary proceeding,
including any settlement agreement, will be available for
public inspection.

  [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.145  Proof; variance; amendment of pleadings.

  In case of a variance between the evidence and the
allegations in a complaint, answer, or reply, if any, the
administrative law judge may order or authorize amendment of
the complaint, answer, or reply to conform to the evidence.
Any party who would otherwise be prejudiced by the amendment
will be given reasonable opportunity to meet the allegations
in the complaint, answer, or reply, as amended, and the

administrative law judge shall make findings on any issue
presented by the complaint, answer, or reply as amended.

  [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]

 § § 10.146 - 10.148

 §  10.149  Burden of proof.

  In a disciplinary proceeding, the Director shall have
the  burden  of  proving  his  or  her  case  by  clear  and
convincing evidence and a respondent shall have the burden
of proving any affirmative defense by clear and convincing
evidence.

  [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]
§ 10.150 Evidence.

  (a)  Rules of evidence . The rules of evidence prevailing
in courts of law and equity are not controlling in hearings
in disciplinary proceedings. However, the ad ministrative
law  judge  shall  exclude  evidence  which  is  irrelevant,
immaterial, or unduly repetitious.

  (b) Depositions.  Depositions of witnesses taken pursuant
to § 10.151 may be admitted as evidence.

  (c) Government documents.  Official documents, records,
and papers of the Office are admissible without extrinsic
evidence of authenticity. These documents, records, and
papers may be evidenced by a copy certified as correct by an
employee of the Office.

  (d) Exhibits. If any document, record, or other paper is
introduced in evidence as an exhibit, the administrative law
judge may authorize the withdrawal of the exhibit subject to
any  conditions  the  administrative  law  judge  deems
appropriate.

  (e) Objections.  Objections to evidence will be in short
form, stating the grounds of objection. Objections and
rulings on objections will be a part of the record. No
exception to the ruling is necessary to preserve the rights
of the parties.

  [Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.151  Depositions.

  (a) Depositions for use at the hearing in lieu of
personal appearance of a witness before the administrative
law judge may be taken by respondent or the Director upon a
showing of good cause and with the approval of, and under
such  conditions  as  may  be  deemed  appropriate  by,  the
administrative law judge. Depositions may be taken upon oral
or written questions, upon not less than ten days' written
notice to the other party, before any officer authorized to
administer an oath or affirmation in the place where the
deposition is to be taken. The requirement of ten days'
notice may be waived by the parties and depositions may then
be taken of a witness at a time and place mutually agreed to
by the parties. When a deposition is taken upon written
questions, copies of the written questions will be served
upon the other party with the notice and copies of any
written cross - questions will be served by hand or "Express

Mail" not less than five days before the date of the taking
of  the  deposition  unless  the  parties  mutually  agree
otherwise. A party on whose behalf a deposition is taken
shall file a copy of a transcript of the deposition signed
by a court reporter with the administrative law judge and
shall serve one copy upon the opposing party. Expenses for a
court  reporter  and  preparing,  serving,  and  filing
depositions shall be borne by the party at whose instance
the deposition is taken.

  (b)  When  the  Director  and  the  respondent  agree  in
writing,  a  deposition  of  any  witness  who  will  appear
voluntarily may be taken under such terms and conditions as
may  be  mutually  agreeable  to  the  Director  and  the
respondent. The deposition shall not be filed with the
administrative law judge and may not be admitted in evidence
before the administrative law judge unless he or she orders
the deposition admitted in evidence. The admissibility of
the deposition shall lie within the discretion of the
administrative law judge who may reject the deposition on
any reasonable basis including the fact that demeanor is
involved and that the witness should have been called to
appear personally before the administrative law judge.

 .  [Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8,
1985]

 § 10.152  Discovery.

  Discovery shall not be authorized except as follows:

  (a) After an answer is filed under § 10.136 and when a
party establishes in a clear and convincing manner that
discovery is necessary and relevant, the administrative law
judge, under such conditions as he or she deems appropriate,
may order an opposing party to:

  (1) Answer a reasonable number of written requests for
admission or interrogatories;

  (2) Produce for inspection and copying a reasonable
number of documents; and

  (3) Produce for inspection a reasonable number of things
other than documents.

  (b) Discovery shall not be authorized under paragraph (a)
of this section of any matter which:

  (1) Will be used by another party solely for impeachment
or cross - examination;

  (2) Is not available to the party under 35 U.S.C. § 122;

  (3) Relates to any disciplinary proceeding commenced in
the Patent and Trademark Office prior to March 8, 1985;

  (4) Relates to experts except as the administrative law
judge may require under paragraph (e) of this section.

  (5) Is privileged; or

  (6) Relates to mental impressions, conclusions, opinions,
or legal theories of any attorney or other representative of
a party.

  (c) The administrative law judge may deny discovery
requested  under  paragraph  (a)  of  this  section  if  the
discovery sought:

  (1) Will unduly delay the disciplinary proceeding;

  (2) Will place an undue burden on the party required to
produce the discovery sought; or

  (3) Is available (i) generally to the public, (ii)
equally to the parties; or (iii) to the party seeking the
discovery through another source.

  (d) Prior to authorizing discovery under paragraph (a) of
this section, the administrative law judge shall require the
party seeking discovery to file a motion ( § 10.143) and
explain in detail for each request made how the discovery
sought is necessary and relevant to an issue actually raised
in the complaint or the answer.

  (e) The administrative law judge may require parties to
file and serve, prior to any hearing, a pre - hearing
statement which contains:

  (1)  A list (together with a copy) of all proposed
exhibits to be used in connection with a party's case - in -
chief,

  (2) A list of proposed witnesses,

  (3) As to each proposed expert witness:

  (i)  An  identification  of  the  field  in  which  the
individual will be qualified as an expert;

  (ii) A statement as to the subject matter on which the
expert is expected to testify; and

  (iii) A statement of the substance of the facts and
opinions to which the expert is expected to testify,

  (4)  The  identity  of  government  employees  who  have
investigated the case, and

  (5)  Copies  of  memoranda  reflecting  respondent's  own
statements to administrative representatives.

  (f) After a witness testifies for a party, if the
opposing party requests, the party may be required to
produce, prior to cross - examination, any written statement
made by the witness.

  [Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.153  Proposed findings and conclusions; post -
hearing memorandum.

  Except in cases when the respondent has failed to answer
the complaint, the administrative law judge, prior to making
an initial decision, shall afford the parties a reasonable
opportunity to submit proposed findings and conclusions and
a post - hearing memorandum in support of the proposed
findings and con clusions.

  [Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.154  Initial decision of administrative law judge.

  (a)  The administrative law judge shall make an initial
decision in the case. The decision will include (1) a
statement of findings and conclusions, as well as the
reasons or basis therefor with appropriate references to the
record, upon all the material issues of fact, law, or
discretion presented on the record, and (2) an order of
suspension  or  exclusion  from  practice,  an  order  of
reprimand,  or  an  order  dismissing  the  complaint.  The
administrative law judge shall file the decision with the
Director and shall transmit a copy to the representative of
the Director and to the respondent. In the absence of an
appeal  to  the  Commissioner,  the  decision  of  the
administrative law judge will, without further proceedings,
become the decision of the Commissioner of Patents and
Trademarks thirty (30) days from the date of the decision of
the administrative law judge.

  (b) The initial decision of the administrative law judge
shall explain the reason for any penalty or reprimand,
suspension or exclusion. In determining any penalty, the
following should normally be considered:

  (1) The public interest;

  (2) The seriousness of the violation of the Disciplinary
Rule;

  (3) The deterrent effects deemed necessary;

  (4) The integrity of the legal profession; and

  (5) Any extenuating circumstances.

  [Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985;
amended 50 FR 25073, June 17, 1985]

 § 10.155 Appeal to the Commissioner.

  (a) Within thirty (30) days from the date of the initial
decision of the administrative law judge under § 10.154,
either party may appeal to the Commissioner. If an appeal is
taken, the time for filing a cross - appeal expires (1) 14
days after the date of service of the appeal pursuant to §
10.142 or (2) 30 days after the date of the initial decision
of the administrative law judge, whichever is later. An
appeal or cross - appeal by the respondent will be filed and
served with the Director in duplicate and will include
exceptions to the decisions of the administrative law judge
and supporting reasons for those exceptions. If the Director
files the appeal or cross - appeal, the Director shall serve
on the other party a copy of the appeal or cross - appeal.
The other party to an appeal or cross - appeal may file a
reply brief. A respondent's reply brief shall be filed and
served in duplicate with the Director. The time for filing
any reply brief expires thirty (30) days after the date of
service pursuant to § 10.142 of an appeal, cross - appeal or
copy thereof. If the Director files the reply brief, the
Director shall serve on the other party a copy of the reply
brief. Upon the filing of an appeal, cross - appeal, if any,
and reply briefs, if any, the Director shall transmit the
entire record to the Commissioner.

  (b) The appeal will be decided by the Commissioner on the
record made before the administrative law judge.

  (c)  The  Commissioner  may  order  reopening  of  a
disciplinary proceeding in accordance with the principles
which govern the granting of new trials. Any request to
reopen a disciplinary proceeding on the basis of newly
discovered  evidence  must  demonstrate  that  the  newly
discovered evidence could not have been discovered by due
diligence.

  (d) In the absence of an appeal by the Director, failure
by the respondent to appeal under the provisions of this
section shall be deemed to be both acceptance by the
respondent  of  the  initial  decision  and  waiver  by  the
respondent  of  the  right  to  further  administrative  or
judicial review.

  [Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985;
para. (d) added, 54 FR 26026, June 21, 1989, effective Aug.
1, 1989; para. (a) amended, 60 FR 64125, Dec. 14, 1995,
effective Jan. 16, 1996]

 § 10.156 Decision of the Commissioner.

  (a)  An  appeal  from  an  initial  decision  of  the
administrative  law  judge  shall  be  decided  by  the
Commissioner.  The  Commissioner  may  affirm,  reverse,  or
modify the initial decision or remand the matter to the
administrative law judge for such further proceedings as the
Commissioner may deem appropriate. Subject to paragraph (c)
of this section, a decision by the Commissioner does not
become a final agency action in a disciplinary proceeding
until 20 days after it is entered. In making a final
decision, the Commissioner shall review the record or these
portions of the record as may be cited by the parties in
order to limit the issues. The Commissioner shall transmit a
copy of the final decision to the Director and to the
respondent.

  (b) A final decision of the Commissioner may dismiss a
disciplinary proceeding, reprimand a practitioner, or may
suspend or exclude the practitioner from practice before the
Office.

  (c)  A  single  request  for  reconsideration  or
modification of the Commissioner's decision may be made by
the respondent or the Director if filed within 20 days from
the date of entry of the decision. Such a request shall have
the effect of staying the effective date of the decision.
The decision by the Commissioner on the request is a final
agency action in a disciplinary proceeding and is effective
on its date of entry.

  [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985;
para. (a) amended and para. (c) added, 54 FR 6660, Feb. 14,
1989]

 § 10.157 Review of Commissioner's final decision.

  (a) Review of the Commissioner's final decision in a
disciplinary case may be had, subject to § 10.155(d), by a
petition filed in the United States District Court for the
District of Columbia. See 35 U.S.C. 32 and Local Rule 213 of

the  United  States  District  Court  for  the  District  of
Columbia.

  (b)  The Commissioner may stay a final decision pending
review of the Commissioner's final decision.

  [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985;
amended 53 FR 13120, Apr. 21, 1988; para. (a) amended, 54 FR
26026, June 21, 1989, effective Aug. 1, 1989]

 § 10.158 Suspended or excluded practitioner.

  (a) A practitioner who is suspended or excluded from
practice before the Office under § 10.156(b) shall not
engage in unauthorized practice of patent, trademark and
other non patent law before the Office.

  (b)  Unless otherwise ordered by the Commissioner, any
practitioner who is suspended or excluded from practice
before the Office under § 10.156(b) shall:

  (1)  Within 30 days of entry of the order of suspension
or exclusion, notify all bars of which he or she is a member
and all clients of the practitioner for whom he or she is
handling matters before the Office in separate written
communications of the suspension or exclusion and shall file
a copy of each written communication with the Director.

  (2)  Within 30 days of entry of the order of suspension
or exclusion, surrender a client's active Office case files
to (i) the client or (ii) another practitioner designated by
the client.

  (3) Not hold himself or herself out as authorized to
practice law before the Office.

  (4)  Promptly take any necessary and appropriate steps
to remove from any telephone, legal, or other directory any
advertisement,  statement,  or  representation  which  would
reasonably suggest that the practitioner is authorized to
practice patent, trademark, or other non - patent law before
the Office, and within 30 days of taking those steps, file
with the Director an affidavit describing the precise nature
of the steps taken.

  (5) Not advertise the practitioner's availability or
ability to perform or render legal services for any person
having immediate, prospective, or pending business before
the Office.

  (6) Not render legal advice or services to any person
having immediate, prospective, or pending business before
the Office as to that business.

  (7) Promptly take steps to change any sign identifying a
practitioner's  or  the  practitioner's  firm's  office  and
practitioner's or the practitioner's firm's stationery to
delete  therefrom  any  advertisement,  statement,  or
representation  which  would  reasonably  suggest  that  the
practitioner  is  authorized  to  practice  law  before  the
Office.

  (8) Within 30 days, return to any client any unearned
funds,  including  any  unearned  retainer  fee,  and  any
securities and property of the client.

  (c) A practitioner who is suspended or excluded from
practice before the Office and who aids another practitioner
in any way in the other practitioner's practice of law
before the Office, may, under the direct supervision of the
other  practitioner,  act  as  a  paralegal  for  the  other
practitioner  or  perform  other  services  for  the  other
practitioner which are normally performed by lay - persons,
provided :

  (1) The practitioner who is suspended or excluded is:

  (i) A salaried employee of:

  (A) The other practitioner;

  (B) The other practitioner's law firm; or

  (C)  A  client  -  employer  who  employs  the  other
practitioner as a salaried employee;

  (2) The other practitioner assumes full professional
responsibility to any client and the Office for any work
performed by the suspended or excluded practitioner for the
other practitioner;

  (3) The suspended or excluded practitioner, in connection
with any immediate, prospective, or pending business before
the Office, does not:

  (i) Communicate directly in writing, orally, or otherwise
with a client of the other practitioner;

  (ii) Render any legal advice or any legal services to a
client of the other practitioner; or

  (iii) Meet in person or in the presence of the other
practitioner with:

  (A)  Any  Office  official  in  connection  with  the
prosecution of any patent, trademark, or other case;

  (B) Any client of the other practitioner, the other
practitioner's law firm, or the client - employer of the
other practitioner;

  (C) Any witness or potential witness which the other
practitioner, the other practitioner's law firm, or the
other practitioner's client - employer may or intends to
call as a witness in any proceeding before the Office. The
term "witness" includes individuals who will testify orally
in a proceeding before, or sign an affidavit or any other
document to be filed in, the Office.

  (d) When a suspended or excluded practitioner acts as a
paralegal or performs services under paragraph (c) of this
section, the suspended or excluded practitioner shall not
thereafter be reinstated to practice before the Office
unless:

  (1) The suspended or excluded practitioner shall have
filed with the Director an affidavit which (i) explains in
detail the precise nature of all paralegal or other services
performed by the suspended or excluded practitioner and (ii)
shows by clear and convincing evidence that the suspended or

excluded practitioner has complied with the provisions of
this section and all Disciplinary Rules, and

  (2) The other practitioner shall have filed with the
Director a written statement which (i) shows that the other
practitioner has read the affidavit required by subparagraph
(d)(1) of this section and that the other practitioner
believes every statement in the affidavit to be true and
(ii) states why the other practitioner believes that the
suspended  or  excluded  practitioner  has  complied  with
paragraph (c) of this section.

  [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.159  Notice of suspension or exclusion.

  (a) Upon issuance of a final decision reprimanding a
practitioner or suspending or excluding a practitioner from
practice before the Office, the Director shall give notice
of the final decision to appropriate employees of the Office
and to interested departments, agencies, and courts of the
United States. The Director shall also give notice to
appropriate authorities of any State in which a practitioner
is known to be a member of the bar and any appropriate bar
association.

  (b) The Director shall cause to be published in the
Official Gazette the name of any practitioner suspended or
excluded from practice. Unless otherwise ordered by the
Commissioner, the Director shall publish in the Official
Gazette the name of any practitioner reprimanded by the
Commissioner.

  (c) The Director shall maintain records, which shall be
available  for  public  inspection,  of  every  disciplinary
proceeding where practitioner is reprimanded, sus pended, or
excluded unless the Commissioner orders that the proceeding
be kept confidential.

  [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.160  Petitioner for reinstatement.

  (a)  A  petition  for  reinstatement  of  a  practitioner
suspended for a period of less than five years will not be
considered until the period of suspension has been passed.

  (b)  A  petition  for  reinstatement  of  a  practitioner
excluded from practice will not be considered until five
years after the effective date of the exclusion.

  (c) An individual who has resigned under § 10.133 or who
has been suspended or excluded may file a petition for
reinstatement.  The  Director  may  grant  a  petition  for
reinstatement  when  the  individual  makes  a  clear  and
convincing showing that the individual will conduct himself
or herself in accordance with the regulations of this part
and that granting a petition for reinstatement is not
contrary  to  the  public  interest.  As  a  condition  to
reinstatement, the Director may require the individual to:

  (1) Meet the requirements of § 10.7, including taking and
passing an examination under § 10.7(b) and

  (2) Pay all or a portion of the costs and expenses, not

to exceed $1,500, of the disciplinary proceeding which led
to suspension or exclusion.

  (d)  Any  suspended  or  excluded  practitioner  who  has
violated the provisions of § 10.158 during his or her period
of  suspension  or  exclusion  shall  not  be  entitled  to
reinstatement until such time as the Director is satisfied
that a period of suspension equal in time to that ordered by
the Commissioner or exclusion for five years has passed
during which the suspended or excluded practitioner has
complied with the provisions of § 10.158.

  (e) Proceedings on any petition for reinstatement shall
be open to the public. Before reinstating any suspended or
excluded practitioner, the Director shall publish in the
Official Gazette a notice of the suspended or exclude d
practitioner's petition for reinstatement and shall permit
the public a reasonable opportunity to comment or submit
evidence with respect to the petition for reinstatement.

  [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985]

 § 10.161  Savings clause.

  (a) A disciplinary proceeding based on conduct engaged in
prior to the effective date of these regulations may be
instituted  subsequent  to  such  effective  date,  if  such
conduct would continue to justify suspension or exclusion
under the provisions of this part.

  (b) No practitioner shall be subject to a disciplinary
proceeding under this part based on conduct engaged in
before the effective date hereof if such conduct would not
have  been  subject  to  disciplinary  action  before  such
effective date .

  [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985]

 § § 10.162 - 10.169

 § 10.170  Suspension of rules.

  (a) In an extraordinary situation, when justice requires,
any requirement of the regulations of this part which is not
a requirement of the statutes may be suspended or waived by
the Commissioner or the Commissioner's designee, sua sponte,
or on petition of any party, including the Director or the
Director's  representative,  subject  to  such  other
requirements as may be imposed.

  (b) Any petition under this section will not stay a
disciplinary proceeding unless ordered by the Commissioner
or an administrative law judge.

  [Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985]

  INDEX - RULES RELATING TO PRACTICE BEFORE THE PATENT AND
 TRADEMARK OFFICE

  A

  Address change  . .  10.11

  Advertising  . .  10.31 ,

  10.32

  Agreements restricting practice  . .  10.38

  Aliens  . .  10.6 ,
  10.9

  Applicant for patent, Representative of  . .  1.31 ,
  10.10

  Applicant for trademark, Representative of  2.11

  Attorneys, Recognition of to practice in trademark

  cases  . .  10.14

  Attorneys, Registration of to practice in patent

  cases  . .  10.6 ,
  10.7

  B

  Breach of trust  . .  10.23

  Business transactions or relations with client  
  10.65

  C

  Candidate for judicial office  . .  10.103

  Canons and disciplinary rules  . .  10.20 -
  10.112

  Certificate of mailing  . .  1.8 ,
  10.23 , 10.141

  Circumventing a disciplinary rule, amendment  10.23

  Code of Professional Responsibility  . .  10.20 -
  10.112

  Coercion, Use of  . .  10.23

  Committee on Discipline  . .  10.4

  Committee on Enrollment  . .  10.3

  Communicating with person having adverse interest  
  10.67

  Communications concerning practitioner's service  
  10.31

  Compensation for legal services  . .  10.68

  Competence  . .  10.76 ,
  10.77

  Complaint instituting disciplinary proceedings  
  10.134

  Concealment of material information  . .  10.23

  Conduct in proceeding before Office  . .  10.89

  Conduct prejudicial to the administration of justice  
  10.23

  Conflict of interest  . .  10.66

  Conviction of criminal offense  . .  10.23

  D

  Deceit  . .  10.23

  Decisions of the Commissioner  . .  10.156 ,
  10.157

  Definitions:

  Affidavit  . .  10.1

  Agent  . .  10.6

  Application  . .  10.1

  Canon  . .  10.20

  Confidence  . .  10.57

  Differing interests  . .  10.1

  Director of Enrollment and Discipline  . .  10.1

  Disciplinary rule  . .  10.20

  (Definitions):

  Employee of a tribunal  . .  10.1

  Excessive legal fees  . .  10.36

  Excluded practitioner  . .  10.1

  Giving information  . .  10.1

  Invention development services  . .  10.23

  Law firm  . .  10.1

  Lawyer  . .  10.1

  Legal Counsel  . .  10.1

  Legal profession  . .  10.1

  Legal service  . .  10.1

  Legal system  . .  10.1

  Non - practitioner  . .  10.1

  Office  . .  10.1

  Person  . .  10.1

  Practitioner  . .  10.1

  Proceeding before the Office  . .  10.1

  Professional legal corporation  . .  10.1

  Registration  . .  10.1

  Respondent  . .  10.134

  Secret  . .  10.33 ,
  10.57

  State  . .  10.1

  Suspended practitioner  . .  10.1

  Tribunal  . .  10.1

  United States  . .  10.1

  Designation as registered attorney or agent  10.34

  Direct contact with prospective clients  . .  10.33

  Director of Enrollment and Discipline:

  Appointment  . .  10.2

  Duties  . .  10.2

  Review of decisions of the Director  . .  10.2

  Disbarment from practice on unethical grounds  10.130

  Discharge of attorney or agent by client  .  10.40

  Disciplinary proceedings and investigations:

  Administrative Law Judge  . .  10.139

  Administrative Procedures Act  . .  10.132 ,
  10.144

  Review of interlocutory orders by

  Administrative Law Judge  . .  10.139

  Amendment of complaint  . .  10.145

  Amendment of pleadings  . .  10.145

  Answer to complaint  . .  10.136

  Appeal of initial decision of Administrative

  Law Judge  . .  10.155

  Burden of proof  . .  10.149

  Certificate of mailing  . .  1.8 ,
  10.141

  Complaint  . .  10.134

  Contested case  . .  10.138

  Deliberations of Committee on Discipline  .  10.4

  Discovery (see also Discovery in Disciplinary

  Proceedings)  . .  10.152

  Exception to ruling  . .  10.150

  Filing papers after complaint filed  . .  10.141

  Hearings before Administrative Law Judge  .  10.144

  (Disciplinary proceedings and investigations):

  Initial decision of Administrative Law

  Judge  . .  10.139 ,
  10.154

  Initiating disciplinary proceeding  . .  10.132

  Investigations of violations of disciplinary rules  
  10.131

  Notice of suspension or exclusion of practitioner  
  10.159

  Objections to evidence  . .  10.150

  Post hearing memorandum  . .  10.153

  Pre - hearing statement  . .  10.153

  Reinstatement of suspended or excluded

  practitioner  . .  10.160

  Reprimand of registered attorney or

  agent  . .  10.130 ,
  10.132

  Resignation of practitioner  . .  10.133

  Review of Commissioner's final decision  . .  10.157

  Review of decision denying reinstatement of

  practitioner  . .  10.2

  Savings clause  . .  10.161

  Service of complaint  . .  10.135

  Settlement of complaint  . .  10.133

  Stay pending review of interlocutory order  10.139

  Supplemental complaint  . .  10.137

  Disciplinary rule violation

  Disclosure of  . .  10.23 ,
  10.24 , 10.84 ,

 10.85 10.131

  Discourteous conduct  . .  10.89

  Discovery in disciplinary proceedings:

  Copying of documents  . .  10.152

  Cross - examination  . .  10.152

  Deliberations of committee on enrollment  .  10.4

  Depositions  . .  10.151

  Evidence  . .  10.150 ,
  10.152

  Impeachment  . .  10.152

  Inspection of documents  . .  10.152

  Interrogatories  . .  10.152

  Motions filed with Administrative Law

  Judge  . .  10.143 ,
  10.152

  Privileged information  . .  10.152

  Undue delay in proceedings  . .  10.152

  Division of legal fees  . .  10.37

  Duress, Use of  . .  10.23

  Duty to make counsel available  . .  10.30

  E

  Employment:

  Acceptance  . .  10.39

  Failure to carry out contract  . .  10.84

  Refusing employment  . .  10.62 ,
  10.63 , 10.66

  Withdrawal from employment  . .  10.40 ,
  10.63 , 10.66

  Exception to ruling  . .  10.151

  Excessive legal fees  . .  10.36

  Exclusion of practitioner  . .  10.130 ,
  10.132 , 10.158

  F

  Failure to disclose material fact with regard to

  registration  . .  10.22

  Failure to notify client  . .  10.23

  False accusations  . .  10.23

  False statements concerning officials  . .  10.102

  Favors, Improperly bestowing  . .  10.23

  Fees:

  In general  . .  1.21

  Petition to review decision of Director of Enrollment

  and Discipline  . .  10.2

  Registration  . .  10.8

  Registration examination  . .  10.7

  Fees:

  Reinstatement  . .  10.11

  Request regrade of examination  . .  10.6

  Fees for legal services  . .  10.36

  Firm name, Use of  . .  10.35

  Fitness to practice before the Office  . .  10.23

  Foreigners  . .  10.6 ,
  10.9 , 10.14

  Former Patent and Trademark Office

  employees  . .  10.10 ,
  10.23

  Fraud or inequitable conduct  . .  10.23 ,
  10.85

  Frivolous complaint  . .  10.23

  Funds of client, Preserving identity of  . .  10.112

  G

  Gift,. Improperly bestowing  . .  10.23

  Government employees, Registration of to

  practice in patent cases  . .  10.10

  I

  Illegal conduct involving moral turpitude  .  10.23

  Illegal fees for services  . .  10.36

  Improper alteration of patent application  .  10.23

  Improper execution of oath or declaration  .  10.23

  Improper influence  . .  10.23

  Improper signature  . .  10.18 ,
  10.23

  Improperly bestowing thing of value  . .  10.23

  Incompetence  . .  10.77 ,
  10.78

  Indecent statement, Making of  . .  10.23

  Independent professional judgment,

  Exercise of  . .  10.61 ,
  10.62 , 10.66 , 10.68

  Individual unqualified in respect to character,

  education, etc  . .  10.7 ,
  10.22

  Influence by others than client  . .  10.68

  Information precluding registration, Failure to

  disclose  . .  10.22

  Initial decision of Administrative Law Judge  10.139 ,
  10.154

  Integrity and competence of the legal profession,

  Maintaining of  . .  10.22

  Interest in litigation or proceeding before Office,

  Acquiring of  . .  10.64

  Investigation of violations of disciplinary rules  
  10.131

  J

  Joint venture  . .  10.23

  Judicial office, Candidate for  . .  10.103

  L

  Legal fees:

  Division of  . .  10.37

  Failure to pay  . .  10.40

  Sharing of  . .  10.48

  Legal system, Assistance in improving the  .  10.100

  Letterheads, Use of  . .  10.35

  Limited recognition to practice in patent cases  10.9

  M

  Malpractice, Limiting client's liability  .  10.78

  Materially false statements in application for

  registration  . .  10.22

  Misappropriation of funds  . .  10.23

  Misconduct  . .  10.23

  Misrepresentations  . .  10.22 ,
  10.23

  Multiple employment  . .  10.66

  N

  Neglecting legal matters  . .  10.77

  Non - practitioner, Formation of partnership with  
  10.49

  Notice of suspension or exclusion  . .  10.159

  O

  Oath requirement  . .  10.8

  Officials, Contact with  . .  10.93

  P

  Petitions:

  Fees in general  . .  1.21

  Regrade of examination  . .  10.7(c)

  Reinstatement  . .  10.160

  Review decision of Commissioner  . .  10.157

  Review decision of Director of Enrollment and

  Discipline  . .  10.2

  Suspension of rules  . .  10.170

  Preserve secrets and confidence of client  .  10.56 ,
  10.57

  Pro - se applicant  . .  1.31 ,
  2.11

  Professional impropriety, Avoiding

  appearance of  . .  10.110 ,
  10.111

  Promise of advantage, Offer of  . .  10.23

  Property of client  . .  10.112

  Proprietary interest in subject matter  . .  10.64

  Publication in Official Gazette  . .  10.11 ,
  10.159 , 10.160

  R

  Recognition to practice before the Patent and

  Trademark Office:

  Agents  . .  10.6 ,
  10.7 , 10.14

  Aliens  . .  10.6 ,
  10.7 , 10.14

  Attorneys  . .  10.6 ,
  10.7 , 10.14

  Change of address, Requirement to notify

  Director  . .  10.11

  Contents of petition for reinstatement of:

  person not suspended or excluded  . .  10.2

  suspended or excluded practitioner  . .  10.160

  Examination of registration in patent cases  10.7

  Examination fee  . .  10.7

  Foreigners  . .  10.6 ,
  10.9 , 10.14

  Former Patent and Trademark Office

  employees  . .  10.10 ,
  10.23

  Government employees  . .  10.10 ,
  10.23

  Limited recognition in patent cases  . .  10.9

  Non - lawyers, Recognition in trademark

  cases  . .  10.10

  Patent cases  . .  10.6 -
  10.10

  Recognition for representation  . .  1.34 ,
  2.17 , 10.14

  Recognition to practice  . .  10.6 -
  10.18

  Refusal to recognize practitioner  . .  10.15

  Register of attorneys and agents in patent cases  10.5

  Registration fee  . .  10.8

  Registration number  . .  1.34

  Removal of attorneys and agents from the

  register  . .  10.11

  Representation by registered attorney or agent

  in patent cases  . .  1.31

  Request for regrade of examination  . .  10.6

  Requirements for registration  . .  10.7

  Review of Director's decision refusing registration  
  10.2

  Trademark cases  . .  10.14

  Unauthorized representation by an agent  . .  10.10 ,
  10.31

  Records, property and funds of client,

  Maintaining of  . .  10.112

  Reinstatement after removal from the register  10.2 ,
  10.11

  Reinstatement of suspended or excluded

  non - practitioner  . .  10.160

  Representing client within bounds of the law  10.85

  Reprimand of registered attorney or agent  .  10.130 ,
  10.132

  Resignation  . .  10.133

  Revocation of power of attorney in trademark case  2.19

  S

  Scandalous statements, Making of  . .  10.23

  Secrets and confidence, Preservation of clients  
  10.56 , 10.57

  Settlement of claims of clients  . .  10.67

  Sharing legal fees  . .  10.48

  Signature and certificate of practitioner  .  10.18

  Solicitation  . .  10.32 ,
  10.33

  Statement concerning officials, Making false  10.102

  Suspension of practitioner  . .  10.23 ,
  10.130 , 10.132 , 10.158

  Suspension of rules  . .  10.170

  T

  Threats of criminal prosecution  . .  10.88

  Threats, Use of  . .  10.23

  U

  Unauthorized practice  . .  10.14 ,
  10.23 , 10.31 , 10.46 , 10.47

  Undignified conduct  . .  10.89

  V

  Violating duty of candor and good faith  . .  10.23

  Violation of disciplinary rule, misconduct  10.23

  W

  Withdrawal from employment  . .  10.40

  Withdrawal material information  . .  10.22 ,
  10.23

  Witnesses  . .  10.63 ,
  10.92

  Z

  Zealously representing the client  . .  10.83 ,
  10.84

 PART 15 - [Removed and Reserved]

 [Part 15 removed and reserved, 61 FR 42807, Aug. 19, 1996]

  PART 15a  - [Removed and Reserved]

 [Part 15a removed and reserved, 61 FR 42807, Aug. 19, 1996]

 D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D
D D D

  SUBCHAPTER C - PROTECTION OF FOREIGN MASK WORKS

 PART 150 - REQUESTS FOR PRESIDENTIAL PROCLAMATIONS PURSUANT
  TO 17 U.S.C. 902(a)(2)

 Sec.

 150.1  Definitions.

 150.2  Initiation of evaluation.

 150.3  Submission of requests.

 150.4  Evaluation.

 150.5  Duration of proclamation.

 150.6  Mailing address.

  Authority: 35 U.S.C. 6; E.O. 12504, 50 FR 4049, 3 CFR
1985 Comp. p. 335.

 § 150.1  Definitions.

  (a)  "Commissioner"  means  Assistant  Secretary  and
Commissioner of Patents and Trademarks.

  (b) "Foreign government" means the duly - constituted
executive of a foreign nation, or an international or
regional  intergovernmental  organization  which  has  been
empowered by its member states to request issuance of
Presidential proclamations on their behalf under this part.

  (c)  "Interim  order"  means  an  order  issued  by  the
Secretary of Commerce under 17 U.S.C. 914.

  (d) "Mask work" means a series of related images, however
fixed or encoded -

  (1) Having or representing the predetermined, three -
dimensional  pattern  of  metallic,  insulating,  or
semiconductor material present or removed from the layers of
a semiconductor chip product; and

  (2) In which series the relation of the images to one
another is that each image has the pattern of the surface of
one form of the semiconductor chip product.

  (e) "Presidential proclamation" means an action by the
President extending to foreign nationals, domiciliaries, and
sovereign  authorities  the  privilege  of  applying  for
registrations for mask works pursuant to 17 U.S.C. 902.

  (f) "Request" means a request by a foreign government for
the issuance of a Presidential proclamation.

  (g) "Proceeding" means a proceeding to issue an interim
order  extending  protection  to  foreign  nationals,
domiciliaries, and sovereign authorities under 17 U.S.C.
Chapter 9.

  (h) "Secretary" means Secretary of Commerce.

  [Added 53 FR 24447, June 29, 1988, effective August 1,
1988]

 § 150.2  Initiation of evaluation.

  (a) The Commissioner independently or as directed by the
Secretary, may initiate an evaluation of the propriety of
recommending  the  issuance,  revision,  suspension,  or
revocation of a section 902 proclamation.

  (b) The Commissioner shall initiate an evaluation of the
propriety of recommending the issuance of a section 902
proclamation upon receipt of a request from a foreign
government.

  [Added 53 FR 24447, June 29, 1988, effective August 1,
1988]

 § 150.3  Submission of requests

  (a)  Requests  for  the  issuance  of  a  section  902
proclamation shall be submitted by foreign governments for
review by the Commissioner.

  (b)  Requests  for  issuance  of  a  proclamation  shall
include:

  (1) A copy of the foreign law or legal rulings that
provide protection for U.S. mask works which provide a basis
for the request.

  (2) A copy of any regulations or administrative orders
implementing the protection.

  (3) A copy of any laws, regulations, or administrative
orders establishing or regulating the registration (if any)
of mask works.

  (4)  Any  other  relevant  laws,  regulations,  or
administrative orders.

  (5) All copies of laws, legal rulings, regulations, or
administrative orders submitted must be in unedited, full -
text form, and if possible, must be reproduced from the
original document.

  (6) All material submitted must be in the original
language, and if not in English, must be accompanied by a
certified English translation.

  [Added 53 FR 24447, June 29, 1988, effective August 1,
1988]

 § 150.4  Evaluation.

  (a) Upon submission of a request by a foreign government
for the issuance of a section 902 proclamation, if an
interim order under section 914 has not been issued, the
Commissioner  may  initiate  a  section  914  proceeding  if
additional information is required.

  (b) If an interim order under section 914 has been
issued, the information obtained during the section 914
proceeding will be used in evaluating the request for a
section 902 proclamation.

  (c) After the Commissioner receives the request of a
foreign government for a section 902 proclamation, or after
a determination is made by the Commissioner to initiate
independently an evaluation pursuant to § 150.2(a) of this
part, a notice will be published in the Federal Register to
request relevant and material comments on the adequacy and
effectiveness of the protection afforded U.S. mask works
under the system of law described in the notice. Comments
should  include  detailed  explanations  of  any  alleged
deficiencies in the foreign law or any alleged deficiencies
in its implementation. If the alleged deficiencies include
problems  in  administration  such  as  registration,  the
respondent should include as specifically as possible full
detailed explanations, including dates for and the nature of
any alleged problems. Comments shall be submitted to the
Commissioner within sixty (60) days of the publication of

the Federal Register notice.

  (d)  The  Commissioner  shall  notify  the  Register  of
Copyrights and the Committee on the Judiciary of the Senate
and the House of Representatives of the initiation of an
evaluation under these regulations.

  (e) If the written comments submitted by any party
present relevant and material reasons why a proclamation
should not issue. The Commissioner will:

  (1) Contact the party raising the issue for verification
and any needed additional information;

  (2)  Contact  the  requesting  foreign  government  to
determine if the issues raised by the party can be resolved;
and,

  (i)  If  the  issues  are  resolved,  continue  with  the
evaluation; or,

  (ii) If the issues cannot be resolved on this basis, hold
a public hearing to gather additional information.

  (f) The comments, the section 902 request, information
obtained  from  a  section  914  proceeding,  if  any,  and
information obtained in a hearing held pursuant to paragraph
(e)(ii) of this section, if any, will be evaluated by the
Commissioner.

  (g) The Commissioner will forward the information to the
Secretary,  together  with  an  evaluation  and  a  draft
recommendation.

  (h) The Secretary will forward a recommendation regarding
the issuance of a section 902 proclamation to the President.

  [Added 53 FR 24448, June 29, 1988, effective August 1,
1988]

 § 150.5  Duration of proclamation.

  (a) The recommendation for the issuance of a proclamation
may include terms and conditions regarding the duration of
the proclamation.

  (b) Requests for the revision, suspension, or revocation
of a proclamation may be submitted by any interested party.
Requests  for  revision,  suspension,  or  revocation  of  a
proclamation will be considered in substantially the same
manner as requests for the issuance of a section 902
proclamation.

  [Added 53 FR 24448, June 29, 1988, effective August 1,
1988]

 § 150.6  Mailing address.

  Requests  and  all  correspondence  pursuant  to  these
guidelines shall be addressed to: Commissioner of Patents
and Trademarks, Box 4, Washington, D.C. 20231.

  [Added 53 FR 24448, June 29, 1988, effective August 1,
1988]
  D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D D

  Appendix T - Patent Cooperation Treaty

  Patent Cooperation Treaty

  Done at Washington on June 19,1970, amended on October 2,
1979, and modified on February 3, 1984

 (as in force on January 1, 1986  )

  TABLE OF CONTENTS

 Preamble

 Introductory Provisions

  Article 1:  Establishment of a Union
  Article 2:  Definitions
  Chapter I: International Application and International
Search

  Article 3:  The International Application
  Article 4  The Request
  Article 5  The Description
  Article 6  The Claims
  Article 7  The Drawings
  Article 8  Claiming Priority
  Article 9:  The Applicant
  Article 10  The Receiving Office
  Article 11  Filing Date and Effects of the International
  Application
  Article 12  Transmittal of the International Application to
  the International Bureau and the International
  Searching Authority
  Article 13  Availability of Copy of the International
  Application to the Designated Offices
  Article 14  Certain Defects in the International Application
  Article 15  The International Search
  Article 16  The International Searching Authority
  Article 17  Procedure Before the International Searching
  Authority
  Article 18  The International Search Report
  Article 19  Amendment of the Claims Before the International
  Bureau
  Article 20  Communication to Designated Offices
  Article 21  International Publication
  Article 22  Copy, Translation, and Fee, to Designated Offices
  Article 23  Delaying of National Procedure
  Article 24  Possible Loss of Effect in Designated States
  Article 25  Review by Designated Offices
  Article 26  Opportunity to Correct Before Designated Offices
  Article 27  National Requirements
  Article 28  Amendment of the Claims, the Description, and the
  Drawings, Before Designated Offices
  Article 29  Effects of the International Publication
  Article 30  Confidential Nature of the International
  Application
  Chapter II: International Preliminary Examination

  Article 31  Demand for International Preliminary
 Examination
  Article 32  The International Preliminary Examining Authority
  Article 33  The International Preliminary Examination
  Article 34  Procedure Before the International

 Preliminary Examining Authority
  Article 35  The International Preliminary Examination Report
  Article 36  Transmittal, Translation, and
 Communication of the International
 Preliminary Examination Report
  Article 37  Withdrawal of Demand or Election
  Article 38  Confidential Nature of the International
 Preliminary Examination
  Article 39  Copy, Translation, and Fee to Elected Offices
  Article 40  Delaying of National Examination and Other
  processing
  Article 41  Amendment of the Claims, the Description, and the
  Drawings, before Elected Offices
  Article 42  Results of National Examination in Elected
  Offices
  Chapter III: Common Provisions

  Article 43  Seeking Certain Kinds of Protection
  Article 44  Seeking Two Kinds of Protection
  Article 45  Regional Patent Treaties
  Article 46  Incorrect Translation of the International
  Application
  Article 47  Time Limits
  Article 48  Delay in Meeting Certain Time Limits
  Article 49  Right to Practice Before International
 Authorities
  Chapter IV: Technical Services

  Article 50  Patent Information Service
  Article 51  Technical Assistance
  Article 52  Relations with Other Provisions of the Treaty
  Chapter V: Administrative Provisions

  Article 53  Assembly
  Article 54  Executive Committee
  Article 55  International Bureau
  Article 56  Committee for Technical Cooperation
  Article 57  Finances
  Article 58  Regulations
  Chapter VI: Disputes

  Article 59  Disputes
  Chapter VII: Revision and Amendments

  Article 60  Revision of the Treaty
  Article 61  Amendment of Certain Provisions of the Treaty
  Chapter VIII: Final Provisions

  Article 62  Becoming Party to the Treaty
  Article 63  Entry into Force of the Treaty
  Article 64  Reservations
  Article 65  Gradual Application
  Article 66  Denunciation
  Article 67  Signature and Languages
  Article 68  Depositary Functions
  Article 69  Notifications
 The Contracting States,

 Desiring to make a contribution to the progress of science
and technology,

 Desiring to perfect the legal protection of inventions,

  Desiring  to  simplify  and  render  more  economical  the
obtaining of protection for inventions where protection is

sought in several countries,

 Desiring to facilitate and accelerate access by the public
to  the  technical  information  contained  in  documents
describing new inventions,

 Desiring to foster and accelerate the economic development
of developing countries through the adoption of measures
designed to increase the efficiency of their legal systems,
whether national or regional, instituted for the protection
of inventions by providing easily accessible information on
the availability of technological solutions applicable to
their special needs and by facilitating access to the ever
expanding volume of modern technology,

 Convinced that cooperation among nations will greatly
facilitate the attainment of these aims,

 Have concluded the present Treaty.

  Introductory Provisions

  Article 1

  Establishment of a Union

 (1) The States party to this Treaty (hereinafter called
"the Contracting States") constitute a Union for cooperation
in the filing, searching, and examination, of applications
for the protection of inventions, and for rendering special
technical  services.  The  Union  shall  be  known  as  the
International Patent Cooperation Union.

 (2) No provision of this Treaty shall be interpreted as
diminishing the rights under the Paris Convention for the
Protection  of  Industrial  Property  of  any  national  or
resident of any country party to that Convention.

  Article 2

  Definitions

 For the purposes of this Treaty and the Regulations and
unless expressly stated otherwise:

 (i) "application" means an application for the protection
of an invention; references to an "application" shall be
construed as references to applications for patents for
inventions, inventors' certificates, utility certificates,
utility  models,  patents  or  certificates  of  addition,
inventors'  certificates  of  addition,  and  utility
certificates of addition;

 (ii) references to a "patent" shall be construed as
references  to  patents  for  inventions,  inventors'
certificates, utility certificates, utility models, patents
or certificates of addition, inventors' certificates of
addition, and utility certificates of addition ;

 (iii) "national patent" means a patent granted by a
national authority;

 (iv) "regional patent" means a patent granted by a national
or an intergovernmental authority having the power to grant
patents effective in more than one State;

 (v) "regional application" means an application for a
regional patent;

 (vi) references to a "national application" shall be
construed as references to applications for national patents
and regional patents, other than applications filed under
this Treaty;

 (vii) "international application" means an application
filed under this Treaty;

 (viii) references to an "application" shall be construed as
references  to  international  applications  and  national
applications;

 (ix) references to a "patent" shall be construed as
references to national patents and regional patents;

 (x) references to "national law" shall be construed as
references to the national law of a Contracting State or,
where  a  regional  application  or  a  regional  patent  is
involved, to the treaty providing for the filing of regional
applications or the granting of regional patents;

 (xi) "priority date," for the purpose of computing time
limits, means:

 (a) where the international application contains a priority
claim under Article 8, the filing date of the application
whose priority is so claimed;

 (b) where the international application contains several
priority claims under Article 8, the filing date of the
earliest application whose priority is so claimed;

 (c) where the international application does not contain
any priority claim under Article 8, the international filing
date of such application;

 (xii) "national Office" means the government authority of a
Contracting State entrusted with the granting of patents;
references to a "national Office" shall be construed as
referring also to any intergovernmental authority which
several States have entrusted with the task of granting
regional patents, provided that at least one of those States
is a Contracting State, and provided that the said States
have authorized that authority to assume the obligations and
exercise the powers which this Treaty and the Regulations
provide for in respect of national Offices;

 (xiii) "designated Office" means the national Office of or
acting for the State designated by the applicant under
Chapter I of this Treaty;

 (xiv) "elected Office" means the national Office of or
acting for the State elected by the applicant under Chapter
II of this Treaty;

 (xv) "receiving Office" means the national Office or the

 intergovernmental organization with which the international
application has been filed;

 (xvi) "Union" means the International Patent Cooperation

Union;

 (xvii) "Assembly" means the Assembly of the Union;

  (xviii)  "Organization"  means  the  World  Intellectual
Property Organization;

 (xix) "International Bureau" means the International Bureau
of the Organization and , as long as it subsists, the United
International Bureaux for the Protection of Intellectual
Property (BIRPI);

 (xx) "Director General" means the Director General of the
Organization and, as long as BIRPI subsists, the Director of
BIRPI.

  Chapter I

  International Application and International Search

  Article 3

  The International Application

 (1) Applications for the protection of inventions in any of
the  Contracting  States  may  be  filed  as  international
applications under this Treaty.

  (2)  An  international  application  shall  contain,  as
specified in this Treaty and the Regulations, a request, a
description, one or more claims, one or more drawings (where
required), and an abstract.

 (3) The abstract merely serves the purpose of technical
information and cannot be taken into account for any other
purpose, particularly not for the purpose of interpreting
the scope of the protection sought.

 (4) The international application shall:

 (i) be in a prescribed language;

 (ii) comply with the prescribed physical requirements;

 (iii) comply with the prescribed requirement of unity of
invention;

 (iv) be subject to the payment of the prescribed fees.

  Article 4

  The Request

 (1) The request shall contain:

 (i) a petition to the effect that the international
application be processed according to this Treaty;

 (ii) the designation of the Contracting State or States in
which protection for the invention is desired on the basis
of the international application ( designated States ); if
for any designated State a regional patent is available and
the applicant wishes to obtain a regional patent rather than
a national patent, the request shall so indicate ; if, under
a treaty concerning a regional patent, the applicant cannot

limit his application to certain of the States party to that
treaty,  designation  of  one  of  those  States  and  the
indication of the wish to obtain the regional patent shall
be treated as designation of all the States party to that
treaty; if, under the national law of the designated State,
the  designation  of  that  State  has  the  effect  o  fan
application for a regional patent, the designation of the
said State shall be treated as an indication of the wish to
obtain the regional patent;

 (iii) the name of and other prescribed data concerning the
applicant and the agent (if any);

 (iv) the title of the invention;

 (v) the name of and other prescribed data concerning the
inventor where the national law of at least one of the
designated  States  requires  that  these  indications  be
furnished at the time of filing a national application.
Otherwise, the said indications may be furnished either in
the  request  or  in  separate  notices  addressed  to  each
designated Office whose national law requires the furnishing
of the said indications but allows that they be furnished at
a  time  later  than  that  of  the  filing  of  a  national
application.

 (2) Every designation shall be subject to the payment of
the prescribed fee within the prescribed time limit.

 (3) Unless the applicant asks for any of the other kinds of
protection referred to in Article 43, designation shall mean
that the desired protection consists of the grant of a
patent by or for the designated State. For the purposes of
this paragraph, Article 2(ii) shall not apply.

 (4) Failure to indicate in the request the name and other
prescribed  data  concerning  the  inventor  shall  have  no
consequence in any designated State whose national law
requires the furnishing of the said indications but allows
that they be furnished at a time later than that of the
filing of a national application. Failure to furnish the
said  indications  in  a  separate  notice  shall  have  no
consequence in any designated State whose national law does
not require the furnishing of the said indications.

  Article 5

  The Description

 The description shall disclose the invention in a manner
sufficiently clear and complete for the invention to be
carried out by a person skilled in the art.

  Article 6

  The Claims

 The claim or claims shall define the matter for which
protection is sought. Claims shall be clear and concise.
They shall be fully supported by the description.

  Article 7

  The Drawings

  (1)  Subject  to  the  provisions  of  paragraph  (2)(ii),
drawings shall be required when they are necessary for the
understanding of the invention.

 (2) Where, without being necessary for the understanding of
the  invention,  the  nature  of  the  invention  admits  of
illustration by drawings:

  (i)  the  applicant  may  include  such  drawings  in  the
international application when filed.

 (ii) any designated Office may require that the applicant
file such drawings with it within the prescribed time limit.

  Article 8

 Claiming Priority

  (1)  The  international  application  may  contain  a
declaration, as prescribed in the Regulations, claiming the
priority of one or more earlier applications filed in or for
any country party to the Paris Convention for the Protection
of Industrial Property.

 (2)(a) Subject to the provisions of subparagraph (b), the
conditions for, and the effect of, any priority claim
declared under paragraph (1) shall be as provided in Article
4 of the Stockholm Act of the Paris Convention for the
Protection of Industrial Property.

 (b) The international application for which the priority of
one  or  more  earlier  applications  filed  in  or  for  a
Contracting State is claimed may contain the designation of
that State. Where, in the international application, the
priority of one or more national applications filed in or
for a designated State is claimed, or where the priority of
an international application having designated only one
State is claimed, the conditions for, and the effect of, the
priority claim in that State shall be governed by the
national law of that State.

  Article 9

  The Applicant

 (1) Any resident or national of a Contracting State may
file an international application.

 (2) The Assembly may decide to allow the residents and the
nationals of any country party to the Paris Convention for
the Protection of Industrial Property which is not party to
this Treaty to file international applications.

 (3) The concepts of residence and nationality, and the
application of those concepts in cases where there are
several applicants or where the applicants are not the same
for  all  the  designated  States,  are  defined  in  the
Regulations.

  NOTE: The PCT Assembly has not as yet allowed residents or
nationals  of  non  -  PCT  member  countries  to  file  PCT
international applications.

  Article 10

  The Receiving Office

 The international application shall be filed with the
prescribed receiving Office, which will check and process it
as provided in this Treaty and the Regulations.

  Article 11

  Filing Date and Effects of the International Application

 (1) The receiving Office shall accord as the international
filing  date  the  date  of  receipt  of  the  international
application, provided that that Office has found that, at
the time of receipt:

 (i) the applicant does not obviously lack, for reasons of
residence or nationality, the right to file an international
application with the receiving Office,

 (ii) the international application is in the prescribed
language,

 (iii) the international application contains at least the
following elements:

 (a) an indication that it is intended as an international
application,

 (b) the designation of at least one Contracting State,

 (c) the name of the applicant, as prescribed,

 (d) a part which on the face of it appears to be a
description,

 (e) a part which on the face of it appears to be a claim or
claims.

 (2)(a) If the receiving Office finds that the international
application did not, at the time of receipt, fulfill the
requirements listed in paragraph (1), it shall, as provided
in  the  Regulations,  invite  the  applicant  to  file  the
required correction.

 (b) If the applicant complies with the invitation, as
provided in the Regulations, the receiving Office shall
accord as the international filing date the date of receipt
of the required correction.

 (3) Subject to Article 64(4), any international application
fulfilling the requirement listed in items (i) to (iii) of
paragraph (1) and accorded an international filing date
shall have the effect of a regular national application in
each designated State as of the international filing date,
which date shall be considered to be the actual filing date
in each designated State.

  (4)  Any  international  application  fulfilling  the
requirements listed in items (i) to (iii) of paragraph (1)
shall be equivalent to a regular national filing within the
meaning of the Paris Convention for the Protection of
Industrial Property.

  Article 12

  Transmittal of the International Application to the
  International Bureau and the International Searching
  Authority

 (1) One copy of the international application shall be kept
by the receiving Office ( home copy ), one copy ( record
copy ) shall be transmitted to the International Bureau, and
another copy ( search copy ) shall be transmitted to the
competent International Searching Authority referred to in
Article 16, as provided in the Regulations.

 (2) The record copy shall be considered the true copy of
the international application.

 (3) The international application shall be considered
withdrawn if the record copy has not been received by the
International Bureau within the prescribed time limit.

  Article 13

  Availability of Copy of the International Application to
  the Designated Offices

 (1) Any designated Office may ask the International Bureau
to transmit to it a copy of the international application
prior to the communication provided for in Article 20, and
the International Bureau shall transmit such copy to the
designated Office as soon as possible after the expiration
of one year from the priority date.

 (2)(a) The applicant may, at any time, transmit a copy of
his international application to any designated Office.

 (b) The applicant may, at any time, ask the International
Bureau to transmit a copy of his international application
to any designated Office, and the International Bureau shall
transmit such copy to the designated Office as soon as
possible.

 (c) Any national Office may notify the International Bureau
that it does not wish to receive copies as provided for in
subparagraph (b), in which case that subparagraph shall not
be applicable in respect of that Office.

  Article 14

  Certain Defects in the International Application

  (1)(a)  The  receiving  Office  shall  check  whether  the
international application contains any of the following
defects, that is to say:

 (i) it is not signed as provided in the Regulations;

  (ii)  it  does  not  contain  the  prescribed  indications
concerning the applicant;

 (iii) it does not contain a title;

 (iv) it does not contain an abstract;

 (v) it does not comply to the extent provided in the
Regulations with the prescribed physical requirements.

 (b) If the receiving Office finds any of the said defects,

it shall invite the applicant to correct the international
application within the prescribed time limit, failing which
that application shall be considered withdrawn and the
receiving Office shall so declare.

 (2) If the international application refers to drawings
which, in fact, are not included in that application, the
receiving Office shall notify the applicant accordingly and
he may furnish them within the prescribed time limit and, if
he does, the international filing date shall be the date on
which the drawings are received by the receiving Office.
Otherwise, any reference to the said drawings shall be
considered nonexistent

 (3)(a) If the receiving Office finds that, within the
prescribed time limits, the fees prescribed under Article
3(4)(iv) have not been paid, or no fee prescribed under
Article 4(2) has been paid in respect of any of the
designated States, the international application shall be
considered withdrawn and the receiving Office shall so
declare .

 (b) If the receiving Office finds that the fee prescribed
under Article 4(2) has been paid in respect of one or more
(but less than all) designated States within the prescribed
time limit, the designation of those States in respect of
which it has not been paid within the prescribed time limit
shall be considered withdrawn and the receiving Office shall
so declare.

 (4) If, after having accorded an international filing date
to  the  international  application,  the  receiving  Office
finds, within the prescribed time limit, that any of the
requirements listed in items (i) to (iii) of Article 11(1)
was not complied with at that date, the said application
shall be considered withdrawn and the receiving Office shall
so declare.

  Article 15

  The International Search

 (1) Each international application shall be the subject of
international search.

 (2) The objective of the international search is to
discover relevant prior art.

 (3) International search shall be made on the basis of the
claims, with due regard to the description and the drawings
(if any).

 (4) The International Searching Authority referred to in
Article 16 shall endeavor to discover as much of the
relevant prior art as its facilities permit, and shall, in
any  case,  consult  the  documentation  specified  in  the
Regulations.

 (5) If the national law of the Contracting State so
permits, the applicant who files a national application with
the national Office of or acting for such State may, subject
to the conditions provided for in such law, request that a
search

 similar to an international search (international - type

search) be carried out on such application.

 (b) If the national law of the Contracting State so
permits, the national Office of or acting for such State may
subject  any  national  application  filed  with  it  to  an
international - type search.

 (c) The international - type search shall be carried out by
the International Searching Authority referred to in A
rticle 16 which would be competent for an international
search if the national application were an international
application and were filed with the Office referred to in
subparagraphs (a) and (b). If the national application is in
a  language  which  the  International  Searching  Authority
considers it is not equipped to handle, the international -
type search shall be carried out on a translation prepared
by the applicant in a language prescribed for international
applications and which the International Searching Authority
has undertaken to accept for international applications. The
national application and the translation, when required,
shall be presented in the form prescribed for international
applications.

  Article 16

  The International Searching Authority

 (1) International search shall be carried out by an
International Searching Authority, which may be either a
national Office or an intergovernmental organization, such
as the International Patent Institute, whose tasks include
the establishing of documentary search reports on prior art
with  respect  to  inventions  which  are  the  subject  of
applications.

 (2) If, pending the establishment of a single International
Searching  Authority,  there  are  several  International
Searching  Authorities,  each  receiving  Office  shall,  in
accordance with the provisions of the applicable agreement
referred to in paragraph(3)(b), specify the International
Searching  Authority  or  Authorities  competent  for  the
searching of international applications filed with such
Office.

  (3)(a)  International  Searching  Authorities  shall  be
appointed by the Assembly. Any national Office and any
intergovernmental organization satisfying the requirements
referred  to  in  subparagraph  (c)  may  be  appointed  as
International Searching Authority.

 (b) Appointment shall be conditional on the consent of the
national Office or intergovernmental organization to be
appointed and the conclusion of an agreement, subject to
approval  by  the  Assembly,  between  such  Office  or
organization and the International Bureau. The agreement
shall specify the rights and obligations of the parties, in
particular, the formal undertaking by the said Office or
organization to apply and observe all the common rules of
international search.

 (c) The Regulations prescribe the minimum requirements,
particularly as to manpower and documentation, which any
Office  or  organization  must  satisfy  before  it  can  be
appointed and must continue to satisfy while it remains
appointed .

 (d) Appointment shall be for a fixed period of time and may
be extended for further periods.

 (e) Before the Assembly makes a decision on the appointment
of any national Office or intergovernmental organization, or
on the extension of its appointment, or before it allows any
such appointment to lapse, the Assembly shall hear the
interested Office or organization and seek the advice of the
Committee for Technical Cooperation referred to in Article
56 once that Committee has been established.

  Article 17

  Procedure Before the International Searching Authority

 (1) Procedure before the International Searching Authority
shall be governed by the provisions of this Treaty, the
Regulations,  and  the  agreement  which  the  International
Bureau shall conclude, subject to this Treaty and the
Regulations, with the said Authority.

 (2)(a) If the International Searching Authority considers:

 (i) that the international application relates to a subject
matter which the International Searching Authority is not
required, under the Regulations, to search, and in the
particular case decides not to search, or

 (ii) that the description, the claims, or the drawings,
fail to comply with the prescribed requirements to such an
extent that a meaningful search could not be carried out,
the said Authority shall so declare and shall notify the
applicant and the International Bureau that no international
search report will be established.

 (b) If any of the situations referred to in subparagraph
(a) is found to exist in connection with certain claims
only, the international search report shall so indicate in
respect of such claims, whereas, for the other claims, the
said report shall be established as provided in Article 18.

 (3)(a) If the International Searching Authority considers
that the international application does not comply with the
requirement  of  unity  of  invention  as  set  forth  in
theRegulations,  it  shall  invite  the  applicant  to  pay
additional fees. The International Searching Authority shall
establish the international search report on those parts of
the international application which relate to the invention
first  mentioned  in  the  claims  ("main  invention")  and,
provided the required additional fees have been paid within
the  prescribed  time  limit,  on  those  parts  of  the
international application which relate to inventions in
respect of which the said fees were paid.

 (b) The national law of any designated State may provide
that, where the national Office of the State finds the
invitation,  referred  to  in  subparagraph  (a),  of  the
International Searching Authority justified and where the
applicant has not paid all additional fees, those parts of
the international application which consequently have not
been searched shall, as far as effects in the State are
concerned, be considered with

 drawn unless a special fee is paid by the applicant to the

national Office of that State.

  Article 18

 The International Search Report

 (1) The international search report shall be established
within the prescribed time limit and in the prescribed form.

 (2) The international search report shall, as soon as it
has been established, be transmitted by the International
Searching Authority to the applicant and the International
Bureau.

 (3) The international search report or the declaration
referred to in Article 17(2)(a) shall be translated as
provided in the Regulations. The translations shall be
prepared by or under the responsibility of the International
Bureau.

  Article 19

  Amendment of the Claims Before the International Bureau

  (1)  The  applicant  shall,  after  having  received  the
international search report, be entitled to one opportunity
to amend the claims of the international application by
filing amendments with the International Bureau within the
prescribed time limit. He may, at the same time, file a
brief statement, as provided in the Regulations, explaining
the  amendments  and  indicating  any  impact  that  such
amendments might have on the description and the drawings.

 (2) The amendments shall not go beyond the disclosure in
the international application as filed.

 (3) If the national law of any designated State permits
amendments to go beyond the said disclosure, failure to
comply with paragraph (2) shall have no consequence in that
State .

  Article 20

  Communication to Designated Offices

 (1)(a) The international application, together with the
international  search  report  (including  any  indication
referred to in Article 17(2)(b)) or the declaration referred
to in Article 17(2)(a), shall be communicated to each
designated Office, as provided in the Regulations, unless
the  designated  Office  waives  such  requirement  in  its
entirety or in part.

 (b) The communication shall include the translation (as
prescribed) of the said report or declaration.

 (2) If the claims have been amended by virtue of Article
19(1), the communication shall either contain the full text
of the claims both as filed and as amended or shall contain
the full text of the claims as filed and specify the
amendments,  and  shall  include  the  statement,  if  any,
referred to in Article 19(1).

 (3) At the request of the designated Office or the
applicant, the International Searching Authority shall send

to the said Office or the applicant, respectively, copies of
the documents cited in the international search report, as
provided in the Regulations.

  Article 21

  International Publication

 (1) The International Bureau shall publish international
applications.

  (2)(a)  Subject  to  the  exceptions  provided  for  in
subparagraph (b) and in Article 64(3), the international
publication  of  the  international  application  shall  be
effected promptly after the expiration of 18 months from the
priority date of that application.

 (b) The applicant may ask the International Bureau to
publish his international application any time before the
expiration of the time limit referred to in subparagraph
(a). The International Bureau shall proceed accordingly, as
provided in the Regulations.

 (3) The international search report or the declaration
referred to in Article 17(2)(a) shall be published as
prescribed in the Regulations.

 (4) The language and form of the international publication
and other details are governed by the Regulations.

 (5) There shall be no international publication if the
international application is withdrawn or is considered
withdrawn before the technical preparations for publication
have been completed.

 (6) If the international application contains expressions
or drawings which, in the opinion of the International
Bureau, are contrary to morality or public order, or if, in
its  opinion,  the  international  application  contains
disparaging statements as defined in the Regulations, it may
omitsuch expressions drawings, and statements, from its
publications, indicating the place and number of words or
drawings omitted, and furnishing, upon request, individual
copies of the passages omitted.

  Article 22

  Copy, Translation, and Fee, to Designated Offices

 (1) The applicant shall furnish a copy of the international
application  (unless  the  communication  provided  for  in
Article 20 has already taken place) and a translation
thereof (as prescribed), and pay the national fee (if any),
to each designated Office not later than at the expiration
of 20 months from the priority date. Where the national law
of the designated State requires the indication of the name
of and other prescribed data concerning the inventor but
allows that these indications be furnished at a time later
than that of the filing of a national application, the
applicant shall, unless they were contained in the request,
furnish the said indications to the national Office of or
acting for that State not later than at the expiration of 20
months from the priority date.

 (2) Where the International Searching Authority makes a

declaration, under Article 17(2)(a), that no international
search report will be established, the time limit for
performing the acts referred to in paragraph (1) of this
Article shall be the same as that provided for in paragraph
(i).

 (3) Any national law may, for performing the acts referred
to in paragraphs (1) or (2), fix time limits which expire
later than the time limit provided for in those paragraphs.

  Article 23

  Delaying of National Procedure

 (1) No designated Office shall process or examine the
international application prior to the expiration of the
applicable time limit under Article 22.

 (2) Notwithstanding the provisions of paragraph (1), any
designated  Office  may,  on  the  express  request  of  the
applicant, process or examine the international application
at any time.

  Article 24

  Possible Loss of Effect in Designated States

 (1) Subject, in case (ii) below, to the provisions of
Article 25, the effect of the international application
provided for in Article 11(3) shall cease in any designated
State with the same consequences as the withdrawal of any
national application in that State:

  (i)  if  the  applicant  withdraws  his  international
application or the designation of that State;

  (ii)  if  the  international  application  is  considered
withdrawn by virtue of Articles 12(3), 14(1)(b), 14(3)(a),
or 14(4), or if the designation of that State is considered
withdrawn by virtue of Article 14(3)(b);

 (iii) if the applicant fails to perform the acts referred
to in Article 22 within the applicable time limit.

 (2) Notwithstanding the provisions of paragraph (1), any
designated Office may maintain the effect provided for in
Article 11(3) even where such effect is not required to be
maintained by virtue of Article 25(2).

  Article 25

  Review by Designated Offices

 (1)(a) Where the receiving Office has refused to accord an
international  filing  date  or  has  declared  that  the
international application is considered withdrawn, or where
the International Bureau has made a finding under Article
12(3), the International Bureau shall promptly send, at the
request of the applicant, copies of any document in the file
to any of the designated Offices named by the applicant.

 (b) Where the receiving Office has declared that the
designation of any given State is considered withdrawn, the
International Bureau shall promptly send, at the request of
the applicant, copies of any document in the file to the

national Office of such State.

 (c) The request under subparagraphs (a) or (b) shall be
presented within the prescribed time limit.

 (2)(a) Subject to the provisions of subparagraph (b), each
designated Office shall, provided that the national fee (if
any) has been paid and the appropriate translation (as
prescribed) has been furnished within the prescribed time
limit, decide whether the refusal, declaration, or finding,
referred  to  in  paragraph  (1)  was  justified  under  the
provisions of this Treaty and the Regulations, and, if it
finds that the refusal or declaration was the result of an
error or omission on the part of the receiving Office or
that the finding was the result of an error or omission on
the part of the International Bureau, it shall, as far as
effects in the State of the designated Office are concerned,
treat the international application as if such error or
omission had not occurred.

 (b) Where the record copy has reached the International
Bureau after the expiration of the time limit prescribed
under Article 12(3) on account of any error or omission on
the part of the applicant, the provisions of subparagraph
(a) shall apply only under the circumstances referred to in
Article 48(2).

  Article 26

  Opportunity to Correct Before Designated Offices

  No  designated  Office  shall  reject  an  international
application  on  the  grounds  of  noncompliance  with  the
requirements of this Treaty and the Regulations without
first giving the applicant the opportunity to correct the
said  application  to  the  extent  and  according  to  the
procedure provided by the national law for the same or
comparable situations in respect of national applications.

  Article 27

  National Requirements

  (1)  No  national  law  shall  require  compliance  with
requirements  relating  to  the  form  or  contents  of  the
international application different from or additional to
those  which  are  provided  for  in  this  Treaty  and  the
Regulations.

 (2) The provisions of paragraph (1) neither affect the
application of the provisions of Article 7(2) nor preclude
any national law from requiring, once the processing of the
international application has started in the designated
Office, the furnishing:

 (i) when the applicant is a legal entity, of the name of an
officer entitled to represent such legal entity.

 (ii) of documents not part of the international application
but which constitute proof of allegations or statements made
in that application, including the confirmation of the
international application by the signature of the applicant
when  that  application,  as  filed,  was  signed  by  his
representative or agent.

 (3) Where the applicant, for the purposes of any designated
State, is not qualified according to the national law of
that State to file a national application because he is not
the inventor, the international application may be rejected
by the designated Office.

 (4) Where the national law provides, in respect of the form
or  contents  of  national  applications,  for  requirements
which, from the viewpoint of applicants, are more favorable
than the requirements provided for by this Treaty and the
Regulations in respect of international applications, the
national Office, the courts and any other competent organs
of or acting for the designated State may apply the former
requirements,  instead  of  the  latter  requirements,  to
international  applications,  except  where  the  applicant
insists that the requirements provided for by this Treaty
and  the  Regulations  be  applied  to  his  international
application.

 (5) Nothing in this Treaty and the Regulations is intended
to be construed as prescribing anything that would limit the
freedom  of  each  Contracting  State  to  prescribe  such
substantive conditions of patentability as it desires. In
particular, any provision in this Treaty and the Regulations
concerning the definition of prior art is exclusively for
the  purposes  of  the  international  procedure  and,
consequently, any Contracting State is free to apply, when
determining the patentability of an invention claimed in an
international application, the criteria of its national law
in  respect  of  prior  art  and  other  conditions  of
patentability not constituting requirements as to the form
and contents of applications.

 (6) The national law may require that the applicant furnish
evidence  in  respect  of  any  substantive  condition  of
patentability prescribed by such law.

 (7) Any receiving Office or, once the processing of the
international application has started in the designated
Office, that Office may apply the national law as far as it
relates to any requirement that the applicant be represented
by an agent having the right to represent applicants before
the said Office and/or that the applicant have an address in
the  designated  State  for  the  purpose  of  receiving
notifications.

 (8) Nothing in this Treaty and the Regulations is intended
to be construed as limiting the freedom of any Contracting
State  to  apply  measures  deemed  necessary  for  the
preservation of its national security or to limit, for the
protection of the general economic interests of that State,
the  right  of  its  own  residents  or  nationals  to  file
international applications.

  Article 28

 Amendment of the Claims, the Description, and the Drawings,
  Before Designated Offices

 (1) The applicant shall be given the opportunity to amend
the claims, the description, and the drawings, before each
designated Office within the prescribed time limit. No
designated Office shall grant a patent, or refuse the grant
of a patent, before such time limit has expired except with
the express consent of the applicant.

 (2) The amendments shall not go beyond the disclosure in
the international application as filed unless the national
law of the designated State permits them to go beyond the
said disclosure.

 (3) The amendments shall be in accordance with the national
law of the designated State in all respects not provided for
in this Treaty and the Regulations.

 (4) Where the designated Office requires a translation of
the international application, the amendments shall be in
the language of the translation.

  Article 29

  Effects of the International Publication

 (1) As far as the protection of any rights of the applicant
in a designated State is concerned, the effects, in that
State, ofthe international publication of an international
application shall, subject to the provisions of paragraphs
(2) to (4), be the same as those which the national law of
the designated State provides for the compulsory national
publication of unexamined national applications as such.

 (2) If the language in which the international publication
has been effected is different from the language in which
publications under the national law are effected in the
designated State, the said national law may provide that the
effects provided for in paragraph (1) shall be applicable
only from such time as:

 (i) a translation into the latter language has been
published as provided by the national law, or

 (ii) a translation into the latter language has been made
available  to  the  public,  by  laying  open  for  public
inspection as provided by the national law, or

 (iii) a translation into the latter language has been
transmitted by the applicant to the actual or prospective
unauthorized  user  of  the  invention  claimed  in  the
international application, or

 (iv) both the acts described in (i) and (iii), or both the
acts described in (ii) and (iii), have taken place.

 (3) The national law of any designated State may provide
that, where the international publication has been effected,
on the request of the applicant, before the expiration of 18
months from the priority date, the effects provided for in
paragraph (1) shall be applicable only from the expiration
of 18 months from the priority date.

 (4) The national law of any designated State may provide
that the effects provided for in paragraph (1) shall be
applicable only from the date on which a copy of the
international application as published under Article 21 has
been received in the national Office of or acting for such
State. The said Office shall publish the date of receipt in
its gazette as soon as possible.

  Article 30

  Confidential Nature of the International Application

 (1)(a) Subject to the provisions of subparagraph (b), the
International  Bureau  and  the  International  Searching
Authorities  shall  not  allow  access  by  any  person  or
authority  to  the  international  application  before  the
international  publication  of  that  application,  unless
requested or authorized by the applicant.

 (b) The provisions of subparagraph (a) shall not apply to
any transmittal to the competent International Searching
Authority, to transmittals provided for under Article 13,
and to communications provided for under Article 20.

 (2)(a) No national Office shall allow access to the
international application by third parties, unless requested
or authorized by the applicant, before the earliest of the
following dates:

  (i)  date  of  the  international  publication  of  the
international application,

  (ii)  date  of  receipt  of  the  communication  of  the
international application under Article 20,

 (iii) date of receipt of a copy of the international
application under Article 22.

 (b) The provisions of subparagraph (a) shall not prevent
any national Office from informing third parties that it has
been  designated,  or  from  publishing  that  fact.  Such
information or publication may, however, contain only the
following data: identification of the receiving Office, name
of the applicant, international filing date, international
application number, and title of the invention.

 (c) The provisions of subparagraph (a) shall not prevent
any  designated  Office  from  allowing  access  to  the
international application for the purposes of the judicial
authorities.

 (3) The provisions of paragraph (2)(a) shall apply to any
receiving Office except as so far as transmittals provided
for under Article 12(1) are concerned.

 (4) For the purposes of this Article, the term "access"
covers  any  means  by  which  third  parties  may  acquire
cognizance, including individual communication and general
publication, provided, however, that no national Office
shall generally publish an international application or its
translation before the international publication or, if
international  publication  has  not  taken  place  by  the
expiration of 20 months from the priority date, before the
expiration of 20 months from the said priority date.

  Chapter II

  International Preliminary Examination

  Article 31

  Demand for International Preliminary Examination

 (1) On the demand of the applicant, his international
application  shall  be  the  subject  of  an  international

preliminary  examination  as  provided  in  the  following
provisions and the Regulations.

 (2)(a) Any applicant who is a resident or national, as
defined in the Regulations, of a Contracting State bound by
Chapter II, and whose international application has been
filed with the receiving Office of or acting for such a
State, may make a demand for international preliminary
examination.

 (b) The Assembly may decide to allow persons en titled to
file  international  applications  to  make  a  demandfor
international  preliminary  examination  even  if  they  are
residents or nationals of a State not party to this Treaty
or not bound by Chapter II.

 (3) The demand for international preliminary examination
shall be made separately from the international application.
The demand shall contain the prescribed particulars and
shall be in the prescribed language and form.

 (4)(a) The demand shall indicate the Contracting State or
States in which the applicant intends to use the results of
the international preliminary examination (elected States).
Addi  tional  Contracting  States  may  be  elected  later.
Election may relate only to Contracting States already
designated under Article 4.

 (b) Applicants referred to in paragraph (2)(a) may elect
any  Contracting  State  bound  by  Chapter  II.  Applicants
referred  to  in  paragraph  (2)(b)  may  elect  only  such
Contracting States bound by Chapter II as have declared that
they are prepared to be elected by such applicants.

 (5) The demand shall be subject to the payment of the
prescribed fees within the prescribed time limit.

 (6)(a) The demand shall be submitted to the competent
International Preliminary Examining Authority referred to in
Article 32.

  (b)  Any  later  election  shall  be  submitted  to  the
International Bureau.

 (7) Each elected Office shall be notified of its election.

  Article 32

  The International Preliminary Examining Authority

 (1) International preliminary examination shall be carried
out by the International Preliminary Examining Authority.

 (2) In the case of demands referred to in Article 31(2)(a),
the receiving Office, and, in the case of demands referred
to in Article 31(2)(b), the Assembly, shall, in accordance
with  the  applicable  agreement  between  the  interested
International Preliminary Examining Authority or Authorities
and the International Bureau, specify the International
Preliminary Examining Authority or Authorities competent for
the preliminary examination.

 (3) The provisions of Article 16(3) shall apply, mutatis
mutandis  in  respect  of  the  International  Preliminary
Examining Authorities.

  Article 33

  The International Preliminary Examination

  (1)  The  objective  of  the  international  preliminary
examination is to formulate a preliminary and non - binding
opinion on the questions whether the claimed inventions
appears to be novel, to involve inventive step (to be
nonobvious), and to be industrially applicable.

 (2) For the purposes of the international preliminary
examination, a claimed invention shall be considered novel
if it is not anticipated by the prior art as defined in the
Regulations.

  (3)  For  purposes  of  the  international  preliminary
examination, a claimed invention shall be considered to
involve an inventive step if, having regard to the prior art
as defined in the Regulations, it is not, at the prescribed
relevant date, obvious to a person skilled in the art.

 (4) For the purposes of the international preliminary
examination,  a  claimed  invention  shall  be  considered
industrially applicable if, according to its nature, it can
be made or used (in the technological sense) in any kind of
industry. Industry

 shall be understood in its broadest sense, as in the Paris
Convention for the Protection of Industrial Property.

 (5) The criteria described above merely serve the purposes
of international preliminary examination. Any Contracting
State may apply additional or different criteria for the
purpose of deciding whether, in that State, the claimed
invention is patentable or not.

 (6) The international preliminary examination shall take
into  consideration  all  the  documents  cited  in  the
international search report. It may take into consideration
any additional documents considered to be relevant in the
particular case.

  Article 34

  Procedure Before the International Preliminary Examining
  Authority

  (1)  Procedure  before  the  International  Preliminary
Examining Authority shall be governed by the provisions of
this Treaty, the Regulations, and the agreement which the
International Bureau shall conclude, subject to this Treaty
and the Regulations, with the said Authority.

 (2)(a) The applicant shall have a right to communicate
orally and in writing with the International Preliminary
Examining Authority.

 (b) The applicant shall have a right to amend the claims,
the description, and the drawings, in the prescribed manner
and  within  the  prescribed  time  limit,  before  the
international preliminary examination report is established.
The amendment shall not go beyond the disclosure in the
international application as filed.

 (c) The applicant shall receive at least one written
opinion  from  the  International  Preliminary  Examining
Authority unless such Authority considers that all of the
following conditions are fulfilled:

 (i) the invention satisfies the criteria set forth in
Article 33(1),

  (ii)  the  international  application  complies  with  the
requirements of this Treaty and the Regulations in so far as
checked by that Authority,

 (iii) no observations are intended to be made under Article
35(2), last sentence.

 (d) The applicant may respond to the written opinion.

 (3)(a) If International Preliminary Examining Authority
considers that the international application does not comply
with the requirement of unity of invention as set forth in
the Regulations, it may invite the applicant, at his option,
to restrict the claims so as to comply with the requirement
or to pay additional fees.

 (b) The national law of any elected State may provide that,
where the applicant chooses to restrict the claims under
subparagraph  (a),  those  parts  of  the  international
application which, as a consequence of the restriction, are
not  to  be  the  subject  of  international  preliminary
examination shall, as far as effects in that State are
concerned, be considered withdrawn unless a special fee is
paid by the applicant to the national Office of that State.

 (c) If the applicant does not comply with the invitation
referred to in subparagraph (a) within the prescribed time
limit, the International Preliminary Examining Authority
shall establish an international preliminary examination
report on those parts of the international application which
relate to what appears to be the main invention and shall
indicate the relevant facts in the said report. The national
law of any elected State may provide that, where its
national Office finds the invitation of the International
Preliminary Examining Authority justified, those parts of
the international application which do not relate to the
main invention shall, as far as effects in that State are
concerned, be considered withdrawn unless a special fee is
paid by the applicant to that Office.

 (4)(a) If the International Preliminary Examining Authority
considers

 (i) that the international application relates to a subject
matter on which the International Preliminary Examining
Authority is not required, under the Regulations, to carry
out  an  international  preliminary  examination,  and  an
international preliminary examination, and in the particular
case decides not to carry out such examination, or

 (ii) that the description, the claims, or the drawings, are
so unclear, or the claims are so inadequately supported by
the description, that no meaningful opinion can be formed on
the novelty, inventive step (nonobviousness), or industrial
applicability, of the claimed invention,

 the said authority shall not go into the questions referred

to in Article 33(1) and shall inform the applicant of this
opinion and the reasons therefor.

 (b) If any of the situations referred to in subparagraph
(a) is found to exist in, or in connection with, certain
claims

 only, the provisions of that subparagraph shall apply only
to the said claims.

  Article 35

  The International Preliminary Examination Report

 (1) The international preliminary examination report shall
be established within the prescribed time limit and in the
prescribed form.

 (2) The international preliminary examination report shall
not contain any statement on the question whether the
claimed  invention  is  or  seems  to  be  patentable  or
unpatentable according to any national law. It shall state,
subject to the provisions of paragraph (3), in relation to
each  claim,  whether  the  claim  appears  to  satisfy  the
criteria of novelty, inventive step (non - obviousness), and
industrial applicability, as defined for the purposes of the
international preliminary examination in Article 33(1) to
(4). The statement shall be accompanied by the citation of
the documents believed to support the stated conclusion with
such explanations as the circumstances of the case may
require. The statement shall also be accompanied by such
other observation as the Regulations provide for.

 (3)(a) If, at the time of establishing the international
preliminary  examination  report,  the  International
Preliminary Examining Authority considers that any of the
situations referred to in Article 34(4)(a) exists, that
report shall state this opinion and the reasons therefor. It
shall not contain any statement as provided in paragraph
(2).

 (b) If a situation under Article 34(4)(b) is found to
exist,  the  international  preliminary  examination  report
shall, in relation to the claims in question, contain the
statement as provided in subparagraph (a), whereas, in
relation to the other claims, it shall contain the statement
as provided in paragraph(2).

  Article 36

  Transmittal, Translation, and Communication of the
 International Preliminary Examination Report

  (1)  The  international  preliminary  examination  report,
together with the prescribed annexes, shall be transmitted
to the applicant and to the International Bureau.

 (2)(a) The international preliminary examination report and
its  annexes  shall  be  translated  into  the  prescribed
languages.

 (b) Any translation of the said report shall be prepared by
or under the responsibility of the International Bureau,
whereas  any  translation  of  the  said  annexes  shall  be
prepared by the applicant.

 (3)(a)  The  international  preliminary  examination
report, together with its translation (as prescribed) and
its  annexes  (in  the  original  language),  shall  be
communicated by the International Bureau to each elected
Office.

  (b)  The  prescribed  translation  of  the  annexes  shall
betransmitted  within  the  prescribed  time  limit  by  the
applicant to the elected Office.

 (4) The provisions of Article 20(3) shall apply, mutatis ,
to  copies  of  any  document  which  is  cited  in  the
international preliminary examination report and which was
not cited in the international search report.

  Article 37

 Withdrawal of Demand or Election

 (1) The applicant may withdraw any or all elections.

 (2) If the election of all elected States is withdrawn, the
demand shall be considered withdrawn.

  (3)(a)  Any  withdrawal  shall  be  notified  to  the
International Bureau.

 (b) The elected Office concerned and the International
Preliminary Examining Authority concerned shall be notified
accordingly by the International Bureau.

 (4)(a) Subject to the provisions of subparagraph (b),
withdrawal of the demand or of the election of a Contracting
State shall, unless the national law of that State provides
otherwise,  be  considered  to  be  withdrawal  of  the
international application as far as that State is concerned.

 (b) Withdrawal of the demand or of the election shall not
be  considered  to  be  withdrawal  of  the  international
application if such withdrawal is effected prior to the
expiration of the applicable time limit under Article 22;
however, any Contracting State may provide in its national
law that the aforesaid shall apply only if its national
Office has received, within the said time limit, a copy of
the international application, together with a translation
(as prescribed), and the national fee.

  Article 38

  Confidential Nature of the International Preliminary
  Examination

 (1)  Neither  the  International  Bureau  nor  the
International Preliminary Examining Authority shall, unless
r equested or authorized by the applicant, allow access
within the meaning, and with the proviso, of Article 30(4)
to the file of the international preliminary examination by
any person or authority at any time, except by the elected
Offices  once  the  international  preliminary  examination
report has been established.

 (2) Subject to the provisions of paragraph (1) and Articles
36(1) and (3) and 37(3)(b), neither the International Bureau
nor the International Preliminary Examining Authority shall,

unless  requested  or  authorized  by  the  applicant,  give
information  on  the  issuance  or  non  -  issuance  of  an
international preliminary examination report and on the
withdrawal or non - withdrawal of the demand or of any
election.

  Article 39

 Copy, Translation, and Fee to Elected Offices

 (1)(a) If the election of any Contracting State has been
effected prior to the expiration of the 19th month from the
priority date, the provisions of Article 22 shall not apply
to such State and the applicant shall furnish a copy of the
international application (unless the communication under
Article 20 has already taken place) and a translation
thereof (as prescribed), and pay the national fee (if any),
to each elected Office not later than at the expiration of
30 months from the priority date.

 (b) Any national law may, for performing the acts referred
to in subparagraph (a), fix time limits which expire later
than the time limit provided for in that subparagraph.

 (2) The effect provided for in Article 11(3) shall cease in
the  elected  State  with  the  same  consequences  as  the
withdrawal of any national application in that State if the
applicant fails to perform the acts referred to in paragraph
(1)(a) within the time limit applicable under paragraph
(1)(a) or (b).

 (3) Any elected Office may maintain the effect provided for
in Article 11(3) even where the applicant does not comply
with the requirements provided for in paragraph (1)(a) or
(b).

  Article 40

  Delaying of National Examination and Other Processing

 (1) If the election of any Contracting State has been
effected prior to the expiration of the 19th month from the
priority date, the provisions of Article 23 shall not apply
to such State and the national Office of or acting for that
State shall not proceed, subject to the provisions of
paragraph (2), to the examination and other processing of
the international application prior to the expiration of the
applicable time limit under Article 39.

 (2) Notwithstanding the provisions of paragraph (1), any
elected Office may, on the express request of the applicant,
proceed to the examination and other processing of the
international application at any time.

  Article 41

 Amendment of the Claims, the Description, and the Drawings,
  before Elected Offices

 (1) The applicant shall be given the opportunity to amend
the claims, the description, and the drawings, before each
elected Office within the prescribed time limit. No elected
Office shall grant a patent, or refuse the grant of a
patent, before such time limit has expired, except with the
express consent of the applicant.

 (2)  The amendments shall not go beyond the disclosure
in the international application as filed, unless the na
tional law of the elected State permits them to go beyond
the said disclosure.

 (3)  The amendments shall be in accordance with the
national law of the elected State in all respects not
provided for in this Treaty and the Regulations.

 (4)  Where an elected Office requires a translation of
the international application, the amendments shall be in
the language of the translation.

  Article 42

  Results of National Examination in Elected Offices

 No elected Office receiving the international preliminary
examination report may require that the applicant furnish
copies, or information on the contents, of any papers
connected  with  the  examination  relating  to  the  same
international application in any other elected Office.

  Chapter III

  Common Provisions

  Article 43

  Seeking Certain Kinds of Protection

 In respect of any designated or elected State whose law
provides for the grant of inventors' certificates, utility
certificates, utility models, patents or certificates of
addition, inventors' certificates of addition, or utility
certificates of addition, the applicant may indicate, as
prescribed  in  the  Regulations,  that  his  international
application is for the grant, as far as that State is
concerned,  of  an  inventor's  certificate,  a  utility
certificate, or a utility model, rather than a patent, or
that it is for the grant of a patent or certificate of
addition,  an  inventor's  certificate  of  addition,  or  a
utility certificate of addition, and the ensuing effect
shall  be  governed  by  the  applicant's  choice.  For  the
purposes of this Article and any Rule thereunder, Article
2(ii) shall not apply.

  Article 44

 Seeking Two Kinds of Protection

 In respect of any designated or elected State whose law
permits an application, while being for the grant of a
patent or one of the other kinds of protection referred to
in Article 43, to be also for the grant of another of the
said kinds of protection, the applicant may indicate, as
prescribed in the Regulations, the two kinds of protection
he is seeking, and the ensuing effect shall be governed by
the  applicant's  indications.  For  the  purposes  of  this
Article, Article 2(ii) shall not apply.

  Article 45

  Regional Patent Treaties

 (1)  Any treaty providing for the grant of regional
patents  ("regional  patent  treaty"),  and  giving  to  all
persons who, according to Article 9, are entitled to file
international applications the right to file applications
for  such  patents,  may  provide  that  international
applications designating or electing a State party to both
the regional patent treaty and the present Treaty may be
filed as applications for such patents.

 (2)  The national law of the said designated or elected
State may provide that any designation or election of such
State in the international application shall have the effect
of an indication of the wish to obtain a regional patent
under the regional patent treaty.

  Article 46

  Incorrect Translation of the International Application

  If,  because  of  an  incorrect  translation  of  the
international application, the scope of any patent granted
on that application exceeds the scope of the international
application  in  its  original  language,  the  competent
authorities  of  the  Contracting  State  concerned  may
accordingly and retroactively limit the scope of the patent,
and declare it null and void to the extent that its scope
has exceeded the scope of the international application in
its original language.

  Article 47

  Time Limits

 (1)  The details for computing time limits referred to
in this Treaty are governed by the Regulations.

 (2)(a ) All time limits fixed in Chapters I and II of this
Treaty may, outside any revision under Article 60, be
modified by a decision of the Contracting States.

 (b)  Such decisions shall be made in the Assembly or
through voting by correspondence and must be unanimous.

 (c)  The details of the procedure are governed by the
Regulations.

  Article 48

  Delay in Meeting Certain Time Limits

 (1)  Where any time limit fixed in this Treaty or the
Regulations is not met because of interruption in the mail
service or unavoidable loss or delay in the mail, the time
limit shall be deemed to be met in the cases and subject to
the  proof  and  other  conditions  prescribed  in  the
Regulations.

 (2)(a) Any Contracting State shall, as far as that State is
concerned, excuse, for reasons admitted under its national
law, any delay in meeting any time limit.

 (b)  Any Contracting State may, as far as that State is
concerned, excuse, for reasons other than those referred to
in subparagraph (a), any delay in meeting any time limit.

  Article 49

  Right to Practice Before International Authorities

 Any attorney, patent agent, or other person, having the
right to practice before the national Office with which the
international application was filed, shall be entitled to
practice before the International Bureau and the competent
International  Searching  Authority  and  competent
International Preliminary Examining Authority in respect of
that application.

  Chapter IV

 Technical Services

  Article 50

  Patent Information Service

 (1) The International Bureau may furnish services by
providing technical and any other pertinent information
available  to  it  on  the  basis  of  published  documents,
primarily patents and published applications (referred to in
this Article as "the information services").

 (2) The International Bureau may provide these information
services  either  directly  or  through  one  or  more
International Searching Authorities or other national or
international  specialized  institutions,  with  which  the
International Bureau may reach agreement.

 (3) The information services shall be operated in a way
particularly facilitating the acquisition by Contracting
States which are developing countries of technical knowledge
and technology, including available published know - how.

  (4)  The  information  services  shall  be  available  to
Governments of Contracting States and their nationals and
residents. The Assembly may decide to make these services
available also to others.

 (5)(a) Any service to Governments of Contracting States
shall  be  furnished  at  cost,  provided  that,  when  the
Government is that of a Contracting State which is a
developing country, the service shall be furnished below
cost if the difference can be covered from profit made on
services furnished to others than Governments of Contracting
States or from the sources referred to in Article 51(4).

 (b) The cost referred to in subparagraph (a) is to be
understood as cost over and above costs normally incident to
the performance of the services of a national Office or the
obligations of an International Searching Authority.

 (6) The details concerning the implementation of the
provisions of this Article shall be governed by decisions of
the Assembly and, within the limits to be fixed by the
Assembly, such working groups as the Assembly may set up for
that purpose.

 (7) The Assembly shall, when it considers it necessary,
recommend methods of providing financing supplementary to
those referred to in paragraph (5).

  Article 51

  Technical Assistance

 (1) The Assembly shall establish a Committee for Technical
Assistance (referred to in thisArticle as "the Committee").

 (2)(a) The members of the Committee shall be elected among
the  Contracting  States,  with  due  regard  to  the
representation of developing countries.

 (b) The Director General shall, on his own initiative or at
the request of the Committee, invite representatives of
intergovernmental  organizations  concerned  with  technical
assistance to developing countries to participate in the
work of the Committee.

 (3)(a) The task of the Committee shall be to organize and
supervise technical assistance for Contracting States which
are developing countries in developing their patent systems
individually or on a regional basis.

 (b) The technical assistance shall comprise, among other
things, the training of specialists, the loaning of experts,
and the supply of equipment both for demonstration and for
operational purposes.

 (4) The International Bureau shall seek to enter into
agreements, on the one hand, with international financing
organizations  and  intergovernmental  organizations,
particularly the United Nations, the agencies of the United
Nations, and the Specialized Agencies connected with the
United Nations concerned with technical assistance, and, on
the other hand, with the Governments of the States receiving
the technical assistance, for the financing of projects
pursuant to this Article.

 (5) The details concerning the implementation of the
provisions of this Article shall be governed by decisions of
the Assembly and, within the limits to be fixed by the
Assembly, such working groups as the Assembly may set up for
that purpose.

  Article 52

 Relations with Other Provisions of the Treaty

  Nothing  in  this  Chapter  shall  affect  the  financial
provisions contained in any other Chapter of this Treaty.
Such provisions are not applicable to the present Chapter or
to its implementation.

  Chapter V Administrative Provisions

  Article 53

  Assembly

 (1)(a) The Assembly shall, subject to Article 57(8),
consist of the Contracting States.

 (b)  The Government of each Contracting State shall be
represented  by  one  delegate,  who  may  be  assisted  by
alternate delegates, advisors, and experts.

 (2)(a) The Assembly shall:

 (i)  deal with matters concerning the maintenance and
development of the Union and the implementation of this
Treaty;

 (ii) perform such tasks as are specifically assigned to it
under other provisions of this Treaty;

  (iii)  give  directions  to  the  International  Bureau
concerning the preparation for revision conferences;

 (iv) review and approve the reports and activities of the
Director General concerning the Union, and give him all
necessary  instructions  concerning  matters  within  the
competence of the Union;

 (v) review and approve the reports and activities of the
Executive Committee established under paragraph (9), and
give instructions to such Committee;

 (vi) determine the program and adopt the biennial budget of
the Union, and approve its final accounts;

 (vii) adopt the financial regulations of the Union;

 (viii) establish such committees and working groups as it
deems appropriate to achieve the objectives of the Union;

 (ix) determine which States other than the Contracting
States and, subject to the provisions of paragraph (8),
which intergovernmental and international nongovernmental
organizations  shall  be  admitted  to  its  meetings  as
observers;

 (x) take any other appropriate action designed to further
the objectives of the Union and perform such other functions
as are appropriate under the Treaty.

 (b) With respect to matters which are of interest also to
other Unions administered by the Organization, the Assembly
shall make its decisions after having heard the advise of
the Coordination Committee of the Organization.

 (3) A delegate may represent, and vote in the name of, one
State only.

 (4) Each Contracting State shall have one vote.

  (5)(a)  One  -  half  of  the  Contracting  States  shall
constitute a quorum.

 (b) In the absence of a quorum, the Assembly may make
decisions but, with the exception of decisions concerning
its own procedure, all such decisions shall take effect only
if the quorum and the required majority are attained through
voting by correspondence as provided in the Regulations.

 (6)(a) Subject to the provisions of Articles 47(2)(b),
58(2)(b), 58(3) and 61(2)(b), the decisions of the Assembly
shall require two - thirds of the votes cast.

 (b) Abstentions shall be considered as votes.

 (7) In connection with matters of exclusive interest to
States bound by Chapter II, any reference to Contracting
States in paragraphs (4), (5), and (6), shall be considered
as applying only to States bound by Chapter II.

  (8)  Any  intergovernmental  organization  appointed  as
International Searching or Preliminary Examining Authority
shall be admitted as observer to the Assembly.

 (9) When the number of Contracting States exceeds forty,
the Assembly shall establish an Executive Committee. Any
reference to the Executive Committee in this Treaty and the
Regulations  shall  be  considered  as  references  to  such
Committee once it has been established,

 (10) Until the Executive Committee has been established,
the Assembly shall approve, within the limits of the program
and  triennial  budget,  the  annual  programs  and  budgets
prepared by the Director General.

 (11)(a) The Assembly shall meet in every second calendar
year in ordinary session upon convocation by the Director
General and, in the absence of exceptional circumstances,
during the same period and at the same place as the General
Assembly of the Organization.

 (b) The Assembly shall meet in extraordinary session upon
convocation by the Director General, at the request of the
Executive Committee, or at the request of one - fourth of
the Contracting States.

 (12) The Assembly shall adopt its own rules of procedure.

  Article 54

  Executive Committee

 (1)  When the Assembly has established an Executive
Committee, that Committee shall be subject to the provisions
set forth hereinafter.

 (2)(a) The Executive Committee shall, subject to Article
57(8), consist of States elected by the Assembly from among
States members of the Assembly.

 (b) The Government of each State member of the Executive
Committee shall be represented by one delegate, who may be
assisted by alternate delegates, advisors, and experts.

 (3)  The number of States members of the Executive
Committee shall correspond to one - fourth of the number of
States members of the Assembly. In establishing the number
of seats to be filled, remainders after division by four
shall be disregarded.

 (4)  In electing the members of the Executive Committee,
the  Assembly  shall  have  due  regard  to  an  equitable
geographical distribution.

 (5)(a) Each member of the Executive Committee shall serve
from the close of the session of the Assembly which elected
it to the close of the next ordinary session of the Assembl
y.

 (b) Members of the Executive Committee may be re - elected

but only up to a maximum of two - thirds of such members.

 (c) The Assembly shall establish the details of the rules
governing the election and possible re - election of the
members of the Executive Committee.

 (6)(a) The Executive Committee shall:

 (i) prepare the draft agenda of the Assembly:

 (ii) submit proposals to the Assembly in respect of the
draft program and biennial budget of the Union prepared by
the Director General:

 (iii)  [deleted]

 (iv) submit, with appropriate comments, to the Assembly the
periodical reports of the Director General and the yearly
audit reports on the accounts:

 (v) take all necessary measures to ensure the execution of
the program of the Union by the Director General, in
accordance with the decisions of the Assembly and having
regard  to  circumstances  arising  between  two  ordinary
sessions of the Assembly:

 (vi) perform such other functions as are allocated to it
under this Treaty.

 (b  With respect to matters which are of interest also
to  other  Unions  administered  by  the  Organization,  the
Executive Committee shall make its decisions after having
heard the advise of the Coordinating Committee of the
Organization.

 (7)(a) The Executive Committee shall meet once a year in
ordinary session upon convocation by the Director General,
preferably during the same period and at the same place as
the Coordination Committee of the Organization.

 (b) The Executive Committee shall meet in extraordinary
session upon convocation by the Director General, either on
his own initiative or at the request of its Chairman or one
- fourth of its members.

 (8)(a) Each State member of the Executive Committee shall
have one vote.

 (b) One - half of the members of the Executive Committee
shall constitute a quorum.

 (c) Decisions shall be made by a simple majority of the
votes cast.

 (d) Abstentions shall not be considered as votes.

 (e) A delegate may represent, and vote in the name of, one
State only.

  (9)  Contracting  States  not  members  of  the  Executive
Committee shall be admitted to its meetings as observers, as
well as any intergovernmental organization appointed as
International Searching or Preliminary Examining Authority.

 (10) The Executive Committee shall adopt its own rules of

procedure.

  Article 55

  International Bureau

 (1)  Administrative tasks concerning the Union shall be
performed by the International Bureau.

 (2)  The  International  Bureau  shall  provide  the
secretariat of the various organs of the Union.

 (3)  The Director General shall be the chief executive
of the Union and shall represent the Union.

 (4)  The International Bureau shall publish a Gazette
and other publications provided for by the Regulations or
required by the Assembly.

 (5)  The Regulations shall specify the various services
that national Offices shall perform in order to assist the
International Bureau and the International Searching and
Preliminary Examining Authorities in carrying out their
tasks under the Treaty.

 (6)  The  Director  General  and  any  staff  member
designated by him shall participate, without the right to
vote,  in  all  meetings  of  the  Assembly,  the  Executive
Committee  and  any  other  committee  or  working  group
established  under  this  Treaty  or  the  Regulations.  The
Director General, or a staff member designated by him, shall
be ex officio secretary of these bodies.

 (7)(a) The International Bureau shall, in accordance with
the directions of the Assembly and in cooperation with the
Executive Committee, make the preparations for the revision
conferences.

 (b)  The  International  Bureau  may  consult  with
intergovernmental  and  international  non  -  governmental
organizations  concerning  preparations  for  revision
conferences .

 (c)  The Director General and persons designated by him
shall  take  part,  without  the  right  to  vote,  in  the
discussions at revision conferences.

 (8)  The International Bureau shall carry out any other
tasks assigned to it.

  Article 56

  Committee for Technical Cooperation

 (1)  The  Assembly  shall  establish  a  Committee  for
Technical Cooperation (referred to in this Article as "the
Committee").

 (2)(a) The Assembly shall determine the composition of the
Committee and appoint its members, with due regard to an
equitable representation of developing countries.

 (b)  The  International  Searching  and  Preliminary
Examining Authorities shall be ex officio members of the
Committee. In the case where such an Authority is the

national Office of a Contracting State, that State shall not
be additionally represented on the Committee.

 (c)  If the number of Contracting States so allows, the
total number of members of the Committee shall be more than
double the number of ex officio members.

 (d)  The Director General shall, on his own initiative
or at the request of the Committee, invite representatives
of interested organizations to participate in discussions of
interest to them.

 (3)  The aim of the Committee shall be to contribute, by
advice and recommendations:

 (i)  to  the  constant  improvement  of  the  services
provided for under the Treaty,

 (ii)  to the securing, so long as there are several
International  Searching  Authorities  and  several
International  Preliminary  Examining  Authorities,  of  the
maximum degree of uniformity in their documentation and
working methods and the maximum degree of uniformly high
quality in their reports, and

 (iii) on the initiative of the Assembly or the Executive
Committee,  to  the  solution  of  the  technical  problems
specifically involved in the establishment of a single
International Searching Authority.

 (4)  Any  Contracting  State  and  any  interested
international organization may approach the Committee in
writing on questions which fall within the competence of the
Committee.

 (5)  The  Committee  may  address  its  advice  and
recommendations to the Director General or, through him, to
the Assembly, the Executive Committee, all or some of the
International  Searching  and  Preliminary  Examining
Authorities, and all or some of the receiving Offices.

 (6)(a) In any case, the Director General shall transmit to
the Executive Committee the texts of all the advice and
recommendations of the Committee. He may comment on such
texts.

 (b)  The Executive Committee may express its views on
any  advice,  recommendation,  or  other  activity  of  the
Committee, and may invite the Committee to study and report
on questions falling within its competence. The Executive
Committee may submit to the Assembly, with appropriate
comments, the advice, recommendations and report of the
Committee.

 (7)  Until the Executive Committee has been established,
references in paragraph (6) to the Executive Committee shall
be construed as references to the Assembly.

 (8)  The details of the procedure of the Committee shall
be governed by the decisions of the Assembly.

  Article 57

  Finances

 (1)(a) The Union shall have a budget.

 (b)  The budget of the Union shall include the income
and expenses proper to the Union and its contribution to the
budget of expenses common to the Unions administered by the
Organization.

 (c)  Expenses not attributable exclusively to the Union
but also to one or more other Unions administered by the
Organization shall be considered as expenses common to the
Unions. The share of the Union in such common expenses shall
be in proportion to the interest the Union has in them.

 (2)  The budget of the Union shall be established with
due regard to the requirements of coordination with the
budgets  of  the  other  Unions  administered  by  the
Organization.

 (3) Subject to the provisions of paragraph (5), the budget
of the Union shall be financed from the following sources:

 (i) fees and charges due for services rendered by the
International Bureau in relation to the Union;

 (ii) sale of, or royalties on, the publications of the
International Bureau concerning the Union;

 (iii) gifts, bequests, and subventions;

 (iv) rents, interests, and other miscellaneous income.

  (4)  The  amounts  of  fees  and  charges  due  to  the
International Bureau and the prices of its publications
shall be fixed that they should, under normal circumstances,
be sufficient to cover all the expenses of the International
Bureau connected with the administration of this Treaty.

 (5)(a) Should any financial year close with a deficit, the
Contracting States shall, subject to the provisions of
subparagraphs (b) and (c), pay contributions to cover such
deficit.

 (b) The amount of the contribution of each Contracting
State shall be decided by the Assembly with due regard to
the number of international applications which has emanated
from each of them in the relevant year.

 (c) If other means of provisionally covering any deficit or
any part thereof are secured, the Assembly may decide that
such deficit be carried forward and that the Contracting
States should not be asked to pay contributions.

 (d) If the financial situation of the Union so permits, the
Assembly  may  decide  that  any  contributions  paid  under
subparagraph (a) be reimbursed to the Contracting States
which have paid them.

 (e) A Contracting State which has not paid, within two
years of the due date as established by the Assembly, its
contribution under subparagraph (b) may not exercise its
right to vote in any of the organs of the Union. However,
any organ of the Union may allow such a State to continueto
exercise its right to vote in that organ as long as it is
satisfied that the delay in payment is due to exceptional
and unavoidable circumstances.

 (6) If the budget is not adopted before the beginning of a
new financial period, it shall be at the same level as the
budget of the previous year, as provided in the financial
regulations.

 (7)(a) The Union shall have a working capital fund which
shall be constituted by a single payment made by each
Contracting State. If the fund becomes insufficient, the
Assembly shall arrange to increase it. If part of the fund
is no longer needed, it shall be reimbursed.

 (b) The amount of the initial payment of each Contracting
State to said fund or its participation in the increase
thereof shall be decided by the Assembly on the basis of
principles similar to those provided for under paragraph
(5)(b).

 (c) The terms of payment shall be fixed by the Assembly on
the proposal of the Director General and after it has heard
the  advice  of  the  Coordinating  Committee  of  the
Organization.

 (d) Any reimbursement shall be proportionate to the amounts
paid by each Contracting State, taking into account the
dates at which they were paid.

 (8)(a) In the headquarters agreement concluded with the
State on the territory of which the Organization has its
headquarters,  it  shall  be  provided  that,  whenever  the
working capital fund is insufficient, such State shall grant
advances. The amount of these advances and the conditions on
which they are granted shall be the subject of separate
agreements,  in  each  case,  between  such  State  and  the
Organization. As long as it remains under the obligation to
grant advances, such State shall have an ex officio seat in
the Assembly and on the Executive Committee.

 (b) The State referred to in subparagraph (a) and the
Organization shall each have the right to denounce the
obligation  to  grant  advances,  by  written  notification.
Denunciation shall take effect three years after the end of
the year in which it has been notified.

 (9) The auditing of the accounts shall be effected by one
or more of the Contracting States or by external auditors,
as provided in the financial regulations. They shall be
designated, with their agreement, by the Assembly.

  Article 58

  Regulations

 (1) The Regulations annexed to this Treaty provide Rules:

 (i) concerning matters in respect of which this Treaty
expressly refers to the Regulations or expressly provides
that they are or shall be prescribed.

 (ii) concerning any administrative requirements, matters,
or procedures,

 (iii) concerning any details useful in the implementation
of the provisions of this Treaty.

 (2)(a) The Assembly may amend the Regulations.

 (b) Subject to the provisions of paragraph (3), amendments
shall require three - fourths of the votes cast.

 (3)(a) The Regulations specify the Rules which may be
amended

 (i) only by unanimous consent, or

 (ii) only if none of the Contracting States whose national
Office acts as an International Searching or Preliminary
Examining Authority dissents, and, where such Authority is
an intergovernmental organization, if the Contracting State
member of the organization authorized for that purpose by
the other member States within the competent body of such
organization does not dissent.

 (b) Exclusion, for the future, of any such Rules from the
applicable requirement shall require the fulfillment of the
conditions referred to in subparagraph (a)(i) or (a)(ii),
respectively.

 (c) Inclusion, for the future, of any Rule in one or the
other of the requirements referred to in subparagraph (a)
shall require unanimous consent.

 (4) The Regulations provide for the establishment, under
the control of the Assembly, of Administrative Instructions
by the Director General.

 (5) In the case of conflict between the provisions of the
Treaty and those of the Regulations, the provisions of the
Treaty shall prevail.

  Chapter VI

  Disputes

  Article 59

  Disputes

 Subject to Article 64(5), any dispute between two or more
Contracting  States  concerning  the  interpretation  or
application of this Treaty or the Regulations, not settled
by negotiation, may, by any one of the States concerned,
bebrought before the International Court of Justice by
application in conformity with the Statute of the Court,
unless the States concerned agree on some other method of
settlement.  The  Contracting  State  bringing  the  dispute
before the Court shall inform the International Bureau; the
International Bureau shall bring the matter to the attention
of the other Contracting States.

  Chapter VII

  Revision and Amendments

  Article 60

  Revision of the Treaty

 (1) This Treaty may be revised from time to time by a
special conference of the Contracting States.

 (2) The convocation of any revision conference shall be
decided by the Assembly.

  (3)  Any  intergovernmental  organization  appointed  as
International Searching or Preliminary Examining Authority
shall be admitted as observer to any revision conference.

  Article 61

 Amendment of Certain Provisions of the Treaty

 (1)(a)  Proposals for the amendment of Articles 53(5),
(9) and (11), 54, 55(4) to (8), 56, and 57, may be initiated
by any State member of the Assembly, by the Executive
Committee, or by the Director General.

 (b) Such proposals shall be communicated by the Director
General to the Contracting States at least six months in
advance of their consideration by the Assembly.

 (2)(a) Amendments to the Articles referred to in paragraph
(1) shall be adopted by the Assembly.

 (b)  Adoption shall require three - fourths of the votes
cast.

 (3)(a)  Any amendment to the Articles referred to in
paragraph (1) shall enter into force one month after written
notifications of acceptance, effected in accordance with
their  respective  constitutional  processes,  have  been
received by the Director General from three - fourths of the
States of the Assembly at the time it adopted the amendment.

 (b)  Any amendment to the said Articles thus accepted
shall bind all the States which are members of the Assembly
at the time the amendment enters into force, provided that
any amendment increasing the financial obligations of the
Contracting States shall bind only those States which have
notified their acceptance of such amendment.

 (c)  Any amendment accepted in accordance with the
provisions of subparagraph (a) shall bind all States which
become members of the Assembly after the date on which the
amendment  entered  into  force  in  accordance  with  the
provisions of subparagraph (a).

  Chapter VIII

  Final Provisions

  Article 62

  Becoming Party to the Treaty

 (1) Any State member of the International Union for the
Protection of Industrial Property may become party to this
Treaty by:

 (i) signature followed by the deposit of an instrument of
ratification, or

 (ii) deposit of an instrument of accession.

 (2) Instruments of ratification or accession shall be
deposited with the Director General.

 (3) The provisions of Article 24 of the Stockholm Act of
the  Paris  Convention  for  the  Protection  of  Industrial
Property shall apply to this Treaty.

 (4) Paragraph (3) shall in no way be understood as implying
the recognition or tacit acceptance by a Contracting State
of the factual situation concerning a territory to which
this Treaty is made applicable by another Contracting State
by virtue of the said paragraph.

  Article 63

  Entry into Force of the Treaty

 (1)(a) Subject to the provisions of paragraph (3), this
Treaty shall enter into force three months after eight
States have deposited their instruments of ratification or
accession, provided that at least four of those States each
fulfill any of the following conditions:

 (i) the number of applications filed in the State has
exceeded  40,000  according  to  the  most  recent  annual
statistics published by the International Bureau.

 (ii) the nationals or residents of the State have filed at
least 1,000 applications in one foreign country according to
the  most  recent  annual  statistics  published  by  the
International Bureau.

 (iii) the national Office of the State has received at
least 10,000 applications from nationals or residents of
foreign  countries  according  to  the  most  recent  annual
statistics published by the International Bureau.

  (b)  For  the  purposes  of  this  paragraph,  the  term
"applications" does not include applications for utility
models.

 (2) Subject to the provisions of paragraph (3), any State
which does not become party too this Treaty upon entry into
force under paragraph (1) shall be bound by this Treaty
three  months  after  the  date  on  which  such  State  has
deposited its instrument of ratification or accession.

 (3) The provisions of Chapter II and the corresponding
provisions of the Regulations annexed to this Treaty shall b
ecome applicable, however, only on the date on which three
States each of which fulfill at least one of the three
requirements specified in paragraph (1) have become party to
this Treaty without declaring, as provided in Article 64(1),
that they do not intend to be bound by the provisions of
Chapter II. That date shall not, however, be prior to that
of the initial entry into force under paragraph (1).

  Article 64

  Reservations

 (1)(a) Any State may declare that it shall not be bound by
the provisions of Chapter II.

 (b) States making a declaration under subparagraph (a)

shall not be bound by the provisions of Chapter II and the
corresponding provisions of the Regulations.

 (i) it shall not be bound by the provisions of Article
39(1) with respect to the furnishing of a copy of the
international application and a translation thereof (as
prescribed),

 (ii) the obligation to delay national processing, as
provided  for  under  Article  40,  shall  not  prevent
publication, by or through its national Office, of the
international application or a translation thereof, it being
understood, however, that it is not exempted from the
limitations provided for in Articles 30 and 38.

 (b) States making such a declaration shall be bound
accordingly.

 (3)(a) Any State may declare that, as far as it is
concerned,  international  publication  of  international
applications is not required.

 (b) Where, at the expiration of 18 months from the priority
date, the international application contains the designation
only  of  such  States  as  have  made  declarations  under
subparagraph (a), the international application shall not be
published by virtue of Article 21(2).

 (c) Where the provisions of subparagraph (b) apply, the
international application shall nevertheless be published by
the International Bureau:

 (i) at the request of the applicant, as provided in the
Regulations,

 (ii) when a national application or a patent based on the
international application is published by or on behalf of
the national Office of any designated State having made a
declaration under subparagraph (a), promptly after such
publication but not before the expiration of 18 months from
the priority date.

 (4)(a) Any State whose national law provides for prior art
effect of its patents as from a date before publication, but
does not equate for prior art purposes the priority date
claimed under the Paris Convention for the Protection of
Industrial Property to the actual filing date in that State,
may declare that the filing outside that State of an
international application designating that State is not
equated to an actual filing in that State for prior art
purposes.

 (b) Any State making a declaration under subparagraph (a)
shall to that extent not be bound by the provisions of
Article 11(3).

 (c) Any State making a declaration under subparagraph (a)
shall, at the same time, state in writing the date from
which, and the conditions under which, the prior art effect
of any international application designating that State
becomes effective in that State. This statement may be
modified at any time by notification addressed to the
Director General.

 (5) Each State may declare that it does not consider itself
bound by Article 59. With regard to any dispute between any
Contracting State having made such a declaration and any
other Contracting State, the provisions of Article 59 shall
not apply.

 (6)(a) Any declaration made under this Article shall be
made in writing. It may be made at the time of signing this
Treaty,  at  the  time  of  depositing  the  instrument  of
ratification or accession, or, except in the case referred
to in paragraph (5), at any later time by notification
addressed to the Director General. In the case of the said
notification, the declaration shall take effect six months
after the day on which the Director General has received the
notification,  and  shall  not  affect  international
applications filed prior to the expiration of the said six -
month period.

  (b)  Any  declaration  made  under  this  Article  may  be
withdrawn at any time by notification addressed to the
Director General. Such withdrawal shall take effect three
months after the day on which the Director General has
received the notification and, in the case of the withdrawal
of a declaration made under paragraph (3), shall not affect
international applications filed prior to the expiration of
the said three - month period.

 (7) No reservations to this Treaty other than the reserva
tions under paragraphs (1) to (5) are permitted.

  Article 65

  Gradual Application

 (1) If the agreement with any International Searching or
Preliminary Examining Authority provides, transitionally,
for  limits  on  the  number  or  kinds  of  international
applications that such Authority undertakes to process, the
Assembly shall adopt the measures necessary for the gradual
application of this Treaty and the Regulations in respect of
given  categories  of  international  applications.  This
provision shall also apply to requests for an international
- type search under Article 15(5).

 (2) The Assembly shall fix the dates from which, subject to
the provision of paragraph (1), international applications
may be filed and demands for international preliminary
examination may be submitted. Such dates shall not be later
than six months after this Treaty has entered into force
according to the provisions of Article 63(1), or after
Chapter  II  has  become  applicable  under  Article  63(3),
respectively.

  Article 66

  Denunciation

 (1) Any Contracting State may denounce this Treaty by
notification addressed to the Director General.

 (2) Denunciation shall take effect six months after receipt
of said notification by the Director General. It shall not
affect the effects of the international application in the
denouncing State if the international application was filed,
and, where the denouncing State has been elected, the

election was made, prior to the expiration of the said six -
month period.

  Article 67

  Signature and Languages

 (1)(a) This Treaty shall be signed in a single original in
the English and French languages, both texts being equally
authentic.

 (b) Official texts shall be established by the Director
General after consultation with the interested Governments,
in the German, Japanese, Portuguese, Russian and Spanish
languages, and such other languages as the Assembly may
designate.

  (2)  This  Treaty  shall  remain  open  for  signature  at
Washington until December 31, 1970.

  Article 68

  Depositary Functions

 (1) The original of this Treaty, when no longer open for
signature, shall be deposited with the Director General.

  (2)  The  Director  General  shall  transmit  two  copies,
certified by him, of this Treaty and the Regulations annexed
hereto to the Government of all States party to the Paris
Convention for the Protection of Industrial Property and, on
request, to the Government of any other State.

 (3) The Director General shall register this Treaty with
the Secretariat of the United Nations.

  (4)  The  Director  General  shall  transmit  two  copies,
certified by him, of any amendment to this Treaty and the
Regulations to the Government of all Contracting States and,
on request, to the Government of any other State.

  Article 69

  Notifications

 The Director General shall notify the government of all
States party to the Paris Convention for the Protection of
Industrial Property of:

 (i) signatures under Article 62,

 (ii) deposits of instruments of ratification or accession
under Article 62,

 (iii) the date of entry into force of this Treaty and the
date from which Chapter II is applicable in accordance with
Article 63(3),

 (iv) any declarations made under Article 64(1) to (5),

 (v) withdrawals of any declarations made under Article
64(6)(b),

 (vi) denunciations received under Article 66, and

 (vii) any declarations made under Article 31(4).

  - -- - -- END - -- - --

 Regulations Under the

 Patent Cooperation Treaty

 (as in force from January 1, 1994)

  Adopted on June 19, 1970, and amended on April 14, 1978,
October 3, 1978, May 1, 1979, June 16, 1980, September 26,
1980, July 3, 1981, September 10, 1982, October 4, 1983,
February 3, 1984, September 28, 1984, October 1, 1985, July
12, 1991, October 2, 1991, September 29, 1992, and September
29, 1993.

 TABLE OF CONTENTS

  Part A: Introductory Rules

  Rule 1  Abbreviated Expressions
  1.1  Meaning of Abbreviated Expressions
  Rule 2  Interpretation of Certain Words
  2.1  "Applicant"
  2.2  "Agent"
  bis
  2.2  "Common Representative"
  2.3  "Signature"
  Part B: Rules Concerning Chapter I of the Treaty

  Rule 3  The Request (Form)
  3.1  Form of Request
  3.2  Availability of Forms
  3.3  Check List
  3.4  Particulars
  Rule 4  The Request (Contents)
  4.1  Mandatory and Optional Contents; Signature
  4.2  The Petition
  4.3  Title of the Invention
  4.4  Names and Addresses
  4.5  The Applicant
  4.6  The Inventor
  4.7  The Agent
  4.8  Common Representative
  4.9  Designation of States
  4.10  Priority Claim
  4.11  Reference to Earlier Search
  4.12  Choice of Certain Kinds of Protection
  4.13  Identification of Parent Application or Parent
  Grant
  4.14  Continuation or Continuation - in - Part
  bis
  4.14  Choice of International Searching Authority
  4.15  Signature
  4.16  Transliteration or Translation of Certain
  Words
  4.17  Additional Matter
  Rule 5  The Description
  5.1  Manner of the Description
  5.2  Nucleotide and/or Amino Acid Sequence
  Disclosure
  Rule 6  The Claims
  6.1  Number and Numbering of Claims
  6.2  References to Other Parts of the International

  Application
  6.3  Manner of Claiming
  6.4  Dependent Claims
  6.5  Utility Models
  Rule 7  The Drawings
  7.1  Flow Sheets and Diagrams
  7.2  Time Limit
  Rule 8  The Abstract
  8.1  Contents and Form of the Abstract
  8.2  Figure
  8.3  Guiding Principles in Drafting
  Rule 9  Expressions, etc., Not To Be Used
  9.1  Definition
  9.2  Noting of Lack of Compliance
  9.3  Reference to Article 21(6)
  Rule 10  Terminology and Signs
  10.1  Terminology and Signs
  10.2  Consistency
  Rule 11  Physical Requirements of the International
  Application
  11.1  Number of Copies
  11.2  Fitness for Reproduction
  11.3  Material to Be Used
  11.4  Separate Sheets, Etc.
  11.5  Size of Sheets
  11.6  Margins
  11.7  Numbering of Sheets
  11.8  Numbering of Lines
  11.9  Writing of Text Matter
  11.10  Drawings, Formulae, and Tables, in Text Matter
  11.11  Words in Drawings
  11.12  Alterations, Etc.
  11.13  Special Requirements for Drawings
  11.14  Later Documents
  Rule 12  Language of the International Application
  12.1  Admitted Language
  12.2  Language of Changes in the International
  Application
  Rule 13  Unity of Invention
  13.1  Requirement
  13.2  Circumstances in Which the Requirement of
  Unity of Invention Is to Be Considered Fulfilled
  Rule 13  Unity of Invention-Con.
  13.3  Determination of Unity of Invention Not
  Affected by Manner of Claiming
  13.4  Dependent Claims
  13.5  Utility Models
  bis
  Rule 13  Microbiological Inventions

 bis
  13  .1  Definition
 bis
  13  .2  References (General)
 bis
  13  .3  References: Contents; Failure to Include
  Reference or Indication
 bis
  13  .4  References: Time of Furnishing Indications
 bis
  13  .5  References and Indications for the Purposes of
  One or More Designated States; Different Deposits for
  Different Designated States; Deposits with Depositary
  Institutions Other Than Those Notified
 bis
  13  .6  Furnishing of Samples
 bis
  13  .7  National Requirements: Notification and
  Publication
  ter
  Rule 13  Nucleotide and/or Amino Acid Sequence Listings

 ter
  13  .1  Sequence Listing for International Authorities
 ter
  13  .2  Sequence Listing for Designated Office
  Rule 14  The Transmittal Fee
  14.1  The Transmittal Fee
  Rule 15  The International Fee
  15.1  Basic Fee and Designation Fee
  15.2  Amounts
  15.3  Mode of Payment
  15.4  Time of Payment
  15.5  Fees Under Rule 4.9(c)
  15.6  Refund
  Rule 16  The Search Fee
  16.1  Right to Ask for a Fee
  16.2  Refund
  16.3  Partial Refund
  bis
  Rule 16  Extension of Time Limits for Payment of Fees
 bis
  16  .1  Invitation by the Receiving Office
 bis
  16  .2  Late Payment Fee
  Rule 17  The Priority Document
  17.1  Obligation to Submit Copy of Earlier National
  Application
  17.2  Availability of Copies
  Rule 18  The Applicant
  18.1  Residence and Nationality
  18.2  [Deleted]
  18.3  Two or More Applicants
  18.4  Information on Requirements Under National Law
  as to Applicants
  Rule 19  The Competent Receiving Office
  19.1  Where to File
  19.2  Two or More Applicants
  19.3  Publication of Fact of Delegation of Duties of
  Receiving Office
  19.4  Transmittal to the International Bureau as
  Receiving Office
  Rule 20  Receipt of the International Application
  20.1  Date and Number
  20.2  Receipt on Different Days
  20.3  Corrected International Application
  bis
  20.3  [Deleted]
  20.4  Determination under Article 11(1)
  20.5  Positive Determination
  20.6  Invitation to Correct
  20.7  Negative Determination
  20.8  Error by the Receiving Office
  20.9  Certified Copy for the Applicant
  Rule 21  Preparation of Copies
  21.1  Responsibility of the Receiving Office
  Rule 22  Transmittal of the Record Copy
  22.1  Procedure
  22.2  [Deleted]
  22.3  Time Limit under Article 12(3)
  Rule 23  Transmittal of the Search Copy
  23.1  Procedure
  Rule 24  Receipt of the Record Copy by the International
  Bureau
  24.1  [Deleted]
  24.2  Notification of Receipt of the Record Copy
  Rule 25  Receipt of the Search Copy by the International
  Searching Authority
  25.1  Notification of Receipt of the Search Copy
  Rule 26  Checking by, and Correcting before, the Receiving

  Office of Certain Elements of the International
  Application
  26.1  Time Limit for Check
  26.2  Time Limit for Correction
  26.3  Checking of Physical Requirements under
  Article 14(1)(a)(v)
  bis
  26.3  Invitation to Correct Defects under Article
  14(1)(b)
  ter
  26.3  Invitation to Correct Defects under Article
  3(4)(i)
  26.4  Procedure
  26.5  Decision of the Receiving Office
  26.6  Missing Drawings
  Rule 27  Lack of Payment of Fees
  27.1  Fees
  Rule 28  Defects Noted by the International Bureau
  28.1  Note on Certain Defects
  Rule 29  International Applications or Designations
  Considered Withdrawn under Article 14(1), (3) or (4)
  29.1  Finding by Receiving Office
  29.2  [Deleted]
  29.3  Calling Certain Facts to the Attention of the
  Receiving Office
  29.4  Notification of Intent to Make Declaration
  under Article 14(4)
  Rule 30  Time Limit under Article 14(4)
  30.1  Time Limit
  Rule 31  Copies Required under Article 13
  31.1  Request for Copies
  31.2  Preparation of Copies
  Rule 32  [Deleted]
  bis
  Rule 32 [Deleted]
  Rule 33  Relevant Prior Art for the International Search
  33.1  Relevant Prior Art for the International
  Search
  33.2  Fields to Be Covered by the International
  Search
  33.3  Orientation of the International Search
  Rule 34  Minimum Documentation
  34.1  Definition
  Rule 35  The Competent International Searching Authority
  35.1  When Only One International Searching
  Authority Is Competent
  35.2  When Several International Searching
  Authorities Are Competent
  35.3  When the International Bureau Is Receiving
  Office Under Rule 19.1(a)(iii)
  Rule 36  Minimum Requirements for International Searching
  Authorities
  36.1  Definition of Minimum Requirements
  Rule 37  Missing or Defective Title
  37.1  Lack of Title
  37.2  Establishment of Title
  Rule 38  Missing or Defective Abstract
  38.1  Lack of Abstract
  38.2  Establishment of Abstract
  Rule 39  Subject Matter Under Article 17(2)(a)(i)
  39.1  Definition
  Rule 40  Lack of Unity of Invention (International Search)
  40.1  Invitation to Pay
  40.2  Additional Fees
  40.3  Time Limit
  Rule 41  Earlier Search Other Than International Search
  41.1  Obligation to Use Results; Refund of Fee

  Rule 42  Time Limit for International Search
  42.1  Time Limit for International Search
  Rule 43  The International Search Report
  43.1  Identifications
  43.2  Dates
  43.3  Classification
  43.4  Language
  43.5  Citations
  43.6  Fields Searched
  43.7  Remarks Concerning Unity of Invention
  43.8  Authorized Officer
  43.9  Additional Matter
  43.10  Form
  Rule 44  Transmittal of the International Search Report,
  etc.
  44.1  Copies of Report or Declaration
  44.2  Title or Abstract
  44.3  Copies of Cited Documents
  Rule 45  Translation of the International Search Report
  45.1  Languages
  Rule 46  Amendment of Claims Before the International Bureau
  46.1  Time Limit
  46.2  Where to File
  46.3  Language of Amendments
  46.4  Statement
  46.5  Form of Amendments
  Rule 47  Communication to Designated Offices
  47.1  Procedure
  47.2  Copies
  47.3  Languages
  47.4  Express Request under Article 23(2)
  Rule 48  International Publication
  48.1  Form
  48.2  Contents
  48.3  Languages
  48.4  Earlier Publication on the Applicant's Request
  48.5  Notification of National Publication
  48.6  Announcing of Certain Facts
  Rule 49  Copy, Translation and Fee under Article 22
  49.1  Notification
  49.2  Languages
  49.3  Statements under Article 19; Indications under
  bis
  Rule 13  .4
  49.4  Use of National Form
  49.5  Contents of and Physical Requirements for the
  Translation
  Rule 50  Faculty under Article 22(3)
  50.1  Exercise of Faculty
  Rule 51  Review by Designated Offices
  51.1  Time Limit for Presenting the Request to Send
  Copies
  51.2  Copy of the Notice
  51.3  Time Limit for Paying National Fee and
  Furnishing Translation
  bis
  Rule 51  Certain National Requirements Allowed Under
 Article 27(1), (2), (6) and (7)

 bis
  51  .1  Certain National Requirements Allowed
 bis
  51  .2  Opportunity to Comply with National
  Requirements
  Rule 52  Amendment of the Claims, the Description, and the
  Drawings, Before Designated Offices
  52.1  Time Limit

  Part C: Rules Concerning Chapter II of the Treaty

  Rule 53  The Demand
  53.1  Form
  53.2  Contents
  53.3  The Petition
  53.4  The Applicant
  53.5  Agent or Common Representative
  53.6  Identification of the International
  Application
  53.7  Election of States
  53.8  Signature
  53.9  Statement Concerning Amendments
  Rule 54  The Applicant Entitled to Make a Demand
  54.1  Residence and Nationality
  54.2  Two or More Applicants
  54.3  International Applications Filed with the
  International Bureau as Receiving Office
  54.4  Applicant Not Entitled to Make a Demand
  Rule 55  Languages (International Preliminary Examination)
  55.1  Language of Demand
  55.2  Translation of International Application
  55.3  Translation of Amendments
  Rule 56  Later Elections
  56.1  Elections Submitted Later Than the Demand
  56.2  Identification of the International
  Application
  56.3  Identification of the Demand
  56.4  Form of Later Elections
  56.5  Language of Later Elections
  Rule 57  The Handling Fee
  57.1  Requirement to Pay
  57.2  Amount
  57.3  Time and Mode of Payment
  57.4  Failure to Pay
  57.5  [Deleted]
  57.6  Refund
  Rule 58  The Preliminary Examination Fee
  58.1  Right to Ask for a Fee
  58.2  Failure to Pay
  58.3  Refund
  Rule 59  The Competent International Preliminary Examining
  Authority
  59.1  Demands under Article 31(2)(a)
  59.2  Demands under Article 31(2)(b)
  Rule 60  Certain Defects in the Demand or Elections
  60.1  Defects in the Demand
  60.2  Defects in Later Elections
  Rule 61  Notification of the Demand and Elections
  61.1  Notification to the International Bureau and
  the Applicant
  61.2  Notification to the Elected Offices
  61.3  Information for the Applicant
  61.4  Publication in the Gazette
  Rule 62  Copy of Amendments Under Article 19 for the
  International Preliminary Examining Authority
  62.1  Amendments Made before the Demand is Filed
  62.2  Amendments Made after the Demand is Filed
  Rule 63  Minimum Requirements for International Preliminary
  Examining Authorities
  63.1  Definition of Minimum Requirements
  Rule 64  Prior Art for International Preliminary Examination
  64.1  Prior Art
  64.2  Non - Written Disclosures
  64.3  Certain Published Documents

  Rule 65  Inventive Step or Non - Obviousness
  65.1  Approach to Prior Art
  65.2  Relevant Date
  Rule 66  Procedure Before the International Preliminary
  Examining Authority
  66.1  Basis of the International Preliminary
  Examination
  66.2  First Written Opinion of the International
  Preliminary Examining Authority
  66.3  Formal Response to the International
  Preliminary Examining Authority
  66.4  Additional Opportunity for Submitting
  Amendments or Arguments
  bis
  66.4  Consideration of Amendments and Arguments
  66.5  Amendment
  66.6  Informal Communications with the Applicant
  66.7  Priority Document
  66.8  Form of Amendments
  66.9  Language of Amendments
  Rule 67  Subject Matter Under Article 34(4)(a)(i)
  67.1  Definition
  Rule 68  Lack of Unity of Invention (International
  Preliminary Examination)
  68.1  No Invitation to Restrict or Pay
  68.2  Invitation to Restrict or Pay
  68.3  Additional Fees
  68.4  Procedure in the Case of Insufficient
  Restriction of the Claims
  68.5  Main Invention
  Rule 69  Start of and Time Limit for International
  Preliminary Examination
  69.1  Start of International Preliminary Examination
  69.2  Time Limit for International Preliminary
  Examination
  Rule 70  The International Preliminary Examination Report
  70.1  Definition
  70.2  Basis of the Report
  70.3  Identifications
  70.4  Dates
  70.5  Classification
  70.6  Statement Under Article 35(2)
  70.7  Citations Under Article 35(2)
  70.8  Explanations Under Article 35(2)
  70.9  Non - Written Disclosures
  70.10  Certain Published Documents
  70.11  Mention of Amendments
  70.12  Mention of Certain Defects and Other Matters
  70.13  Remarks Concerning Unity of Invention
  70.14  Authorized Officer
  70.15  Form
  70.16  Annexes of the Report
  70.17  Languages of the Report and the Annexes
  Rule 71  Transmittal of the International Preliminary
  Examination Report
  71.1  Recipients
  71.2  Copies of Cited Documents
  Rule 72  Translation of the International Preliminary
  Examination Report
  72.1  Languages
  72.2  Copy of Translation for the Applicant
  72.3  Observations on the Translation
  Rule 73  Communication of the International Preliminary
  Examination Report
  73.1  Preparation of Copies

  73.2  Time Limit for Communication
  Rule 74  Translations of Annexes of the International
  Preliminary Examination Report and Transmittal Thereof
  74.1  Contents of Translation and Time Limit for
  Transmittal Thereof
  Rule 75  [Deleted]
  Rule 76  Copy, Translation and Fee Under Article 39(1);
  Translation of Priority Document
  76.1  [Deleted]
  76.2  [Deleted]
  76.3  [Deleted]
  76.4  Time Limit for Translation of Priority
  Document
  bis
  76.5  Application of Rules 22.1(g), 49 and 51
  76.6  Transitional Provision
  Rule 77  Faculty Under Article 39(1)(b)
  77.1  Exercise of Faculty
  Rule 78  Amendment of the Claims, the Description, and the
  Drawings, Before Elected Offices
  78.1  Time Limit Where Election Is Effected Prior to
  Expiration of 19 Months from Priority Date
  78.2  Time Limit Where Election Is Effected after
  Expiration of 19 Months from Priority Date
  78.3  Utility Models
  Part D: Rules Concerning Chapter III of the Treaty

  Rule 79  Calendar
  79.1  Expressing Dates
  Rule 80  Computation of Time Limits
  80.1  Periods Expressed in Years
  80.2  Periods Expressed in Months
  80.3  Periods Expressed in Days
  80.4  Local Dates
  80.5  Expiration on a Non - Working Day
  Rule 80  Computation of Time Limits-Con.
  80.6  Date of Documents
  80.7  End of Working Day
  Rule 81  Modification of Time Limits Fixed in the Treaty
  81.1  Proposal
  81.2  Decision by the Assembly
  81.3  Voting by Correspondence
  Rule 82  Irregularities in the Mail Service
  82.1  Delay or Loss in Mail
  82.2  Interruption in the Mail Service
  bis
  Rule 82  Excuse by the Designated or Elected State of
  Delays in Meeting Certain Time Limits

 bis
  82  .1  Meaning of "Time Limit" in Article 48(2)
 bis
  82  .2  Reinstatement of Rights and Other Provisions
  to Which Article 48(2) Applies
  ter
  Rule 82  Rectification of Errors Made by the Receiving
  Office or by the International Bureau

 ter
  82  .1  Errors Concerning the International Filing
  Date and the Priority Claim
  Rule 83  Right to Practice Before International Authorities
  83.1  Proof of Right
  bis
  83.1  Where the International Bureau Is the
  Receiving Office
  83.2  Information
  Part E: Rules Concerning Chapter V of the Treaty

  Rule 84  Expenses of Delegations

  84.1  Expenses Borne by Governments
  Rule 85  Absence of Quorum in the Assembly
  85.1  Voting by Correspondence
  Rule 86  The Gazette
  86.1  Contents
  86.2  Languages
  86.3  Frequency
  86.4  Sale
  86.5  Title
  86.6  Further Details
  Rule 87  Copies of Publications
  87.1  International Searching and Preliminary
  Examining Authorities
  87.2  National Offices
  Rule 88  Amendment of the Regulations
  88.1  Requirement of Unanimity
  88.2  [Deleted]
  88.3  Requirement of Absence of Opposition by
  Certain States
  88.4  Procedure
  Rule 89  Administrative Instructions
  89.1  Scope
  89.2  Source
  89.3  Publication and Entry into Force
  Part F: Rules Concerning Several Chapters of the Treaty

  Rule 90  Agents and Common Representatives
  90.1  Appointment as Agent
  90.2  Common Representative
  90.3  Effects of Acts by or in Relation to Agents
  and Common Representatives
  90.4  Manner of Appointment of Agent or Common
  Representative
  90.5  General Power of Attorney
  90.6  Revocation and Renunciation
  bis
  Rule 90  Withdrawals
 bis
  90  .1  Withdrawal of the International Application
 bis
  90  .2  Withdrawal of Designations
 bis
  90  .3  Withdrawal of Priority Claims
 bis
  90  .4  Withdrawal of the Demand, or of Elections
 bis
  90  .5  Signature
 bis
  90  .6  Effect of Withdrawal
 bis
  90  .7  Faculty under Article 37(4)(b)
  Rule 91  Obvious Errors in Documents
  91.1  Rectification
  Rule 92  Correspondence
  92.1  Need for Letter and for Signature
  92.2  Languages
  92.3  Mailings by National Offices and
  Intergovernmental Organizations
  92.4  Use of Telegraph, Teleprinter, Facsimile
  Machine, Etc.
  bis
  Rule 92  Recording of Changes in Certain Indications in
  the Request or the Demand

 bis
  92  .1  Recording of Changes by the International
  Bureau
  Rule 93  Keeping of Records and Files
  93.1  The Receiving Office
  93.2  The International Bureau
  93.3  The International Searching and Preliminary
  Examining Authorities

  93.4  Reproductions
  Rule 94  Furnishing of Copies by the International Bureau
  and the International Preliminary Examining Authority
  94.1  Obligation To Furnish
  Rule 95  Availability of Translations
  95.1  Furnishing of Copies of Translations
  Rule 96  The Schedule of Fees
  96.1  Schedule of Fees Annexed to Regulations
Schedule of Fees
  PART A

 Introductory Rules

  Rule 1

 Abbreviated Expressions

  1.1  Meaning of Abbreviated Expressions

 (a)  In these Regulations, the word "Treaty" means the
Patent Cooperation Treaty.

 (b)  In these Regulations, the words "Chapter" and
"Article" refer to the specified Chapter or Article of the
Treaty.

  Rule 2

 Interpretation of Certain Words

  2.1  "Applicant"

  Whenever  the  word  "applicant"  is  used,  it  shall  be
construed as meaning also the agent or other representative
of the applicant, except where the contrary clearly follows
from the wording or the nature of the provision, or the
context in which the word is used, such as, in particular,
where the provision refers to the residence or nationality
of the applicant .

  2.2  "Agent"

 Whenever the word "agent" is used, it shall be construed as
meaning an agent appointed under Rule 90.1, unless the
contrary clearly follows from the wording or the nature of
the provision, or the context in which the word is used.

  bis
 2.2  "Common Representative"

 Whenever the expression "common representative" is used, it
shall be construed as meaning an applicant appointed as, or
considered to be, the common representative under Rule 90.2.

  2.3  "Signature"

  Whenever  the  word  "signature"  is  used,  it  shall  be
understood  that,  if  the  national  law  applied  by  the
receiving Office or the competent International Searching or
Preliminary Examining Authority requires the use of a seal
instead of a signature, the word, for the purposes of that
Office or Authority, shall mean seal.

  PART B

  Rules Concerning Chapter I of the Treaty

  Rule 3

 The Request (Form)

  3.1  Form of Request

 The request shall be made on a printed form or be presented
as a computer print - out.

  3.2  Availability of Forms

 Copies of the printed form shall be furnished free of
charge to the applicants by the receiving Office, or, if the
receiving Office so desires, by the International Bureau.

  3.3  Check List

 (a)  The request shall contain a list indicating:

 (i)  the  total  number  of  sheets  constituting  the
international application and the number of the sheets of
each element of the international application (request,
description, claims, drawings, abstract);

 (ii)  whether or not the international application as
filed is accompanied by a power of attorney (i.e., a
document appointing an agent or a common representative), a
copy of a general power of attorney, a priority document, a
document relating to the payment of fees, and any other
document (to be specified in the check list);

 (iii)  the number of that figure of the drawings which the
applicant suggests should accompany the abstract when the
abstract is published; in exceptional cases, the applicant
may suggest more than one figure.

 (b)  The list shall be completed by the applicant,
failing which the receiving Office shall make the necessary
indications, except that the number referred to in paragraph
(a)(iii) shall not be indicated by the receiving Office.

  3.4  Particulars

 Subject to Rule 3.3, particulars of the printed request
form and of a request presented as a computer printout shall
be prescribed by the Administrative Instructions.

  Rule 4

 The Request (Contents)

  4.1  Mandatory and Optional Contents; Signature

 (a)  The request shall contain:

 (i) a petition,

 (ii) the title of the invention,

 (iii)  indications concerning the applicant and the agent,
if there is an agent,

 (iv)  the designation of States,

 (v)  indications  concerning  the  inventor  where  the
national law of at least one of the designated States
requires that the name of the inventor be furnished at the
time of filing a national application.

 (b)  The request shall, where applicable, contain:

 (i)  a priority claim,

 (ii)  a  reference  to  any  earlier  international,
international - type or other search,

 (iii)  choices of certain kinds of protection,

 (iv)  an indication that the applicant wishes to obtain a
regional patent,

 (v)  a reference to a parent application or parent
patent.

 (vi)  an  indication  of  the  applicant's  choice  of
competent International Searching Authority.

 (c)  The request may contain:

 (i)  indications  concerning  the  inventor  where  the
national law of none of the designated States requires that
the name of the inventor be furnished at the time of filing
a national application,

 (ii)  a request to the receiving Office to transmit the
priority document to the International Bureau where the
application whose priority is claimed was filed with the
national Office or intergovernmental authority which is the
receiving Office.

 (d)  The request shall be signed.

 4.2  The Petition

 The petition shall be to the following effect and shall
preferably be worded as follows: "The undersigned requests
that the present international application be processed
according to the Patent Cooperation Treaty."

  4.3  Title of the Invention

 The title of the invention shall be short (preferably from
two to seven words when in English or translated into
English) and precise.

  4.4  Names and Addresses

 (a)  Names of natural persons shall be indicated by the
person's family name and given name(s), the family name
being indicated before the given name(s).

 (b)  Names of legal entities shall be indicated by their
full, official designations.

 (c)  Addresses shall be indicated in such a way as to
satisfy  the  customary  requirements  for  prompt  postal
delivery at the indicated address and, in any case, shall
consist of all the relevant administrative units up to, and

including, the house number, if any. Where the national law
of the designated State does not require the indication of
the house number, failure to indicate such number shall have
no  effect  in  that  State.  In  order  to  allow  rapid
communication with the applicant, it is recommended to
indicate any teleprinter address, telephone and facsimile
machine numbers, or corresponding data for other like means
of communication, of the applicant or, where applicable, the
agent or the common representative.

 (d)  For each applicant, inventor, or agent, only one
address may be indicated, except that, if no agent has been
appointed to represent the applicant, or all of them if more
than one, the applicant or, if there is more than one
applicant,  the  common  representative,  may  indicate,  in
addition to any other address given in the request, an
address to which notifications shall be sent.

 4.5  The Applicant

 (a)  The request shall indicate the name, address,
nationality and residence of the applicant or, if there are
several applicants, of each of them.

 (b)  The applicant's nationality shall be indicated by
the name of the State of which he is a national.

 (c)  The applicant's residence shall be indicated by the
name of the State of which he is a resident.

 (d)  The request may, for different designated States,
indicate different applicants. In such a case, the request
shall  indicate  the  applicant  or  applicants  for  each
designated State or group of designated States.

 4.6  The Inventor

 (a)  Where Rule 4.1(a)(v) applies, the request shall
indicate the name and address of the inventor or, if there
are several inventors, of each of them.

 (b)  If the applicant is the inventor, the request, in
lieu of the indication under paragraph (a), shall contain a
statement to that effect.

 (c)  The request may, for different designated States,
indicate different persons as inventors where, in this
respect, the requirements of the national laws of the
designated States are not the same. In such a case, the
request  shall  contain  a  separate  statement  for  each
designated State or group of States in which a particular
person,  or  the  same  person,  is  to  be  considered  the
inventor, or in which particular persons, or the same
persons, are to be considered the inventors.

  4.7  The Agent

 If agents are designated, the request shall so indicate,
and shall state their names and addresses.

  4.8  Common Representative

 If a common representative is designated, the request shall
so indicate.

  4.9  Designation of States

 (a)  Contracting States shall be designated in the
request:

 (i) in the case of designations for the purpose of
obtaining national patents, by an indication of each State
concerned;

 (ii) in the case of designations for the purpose of
obtaining  a  regional  patent,  by  an  indication  that  a
regional patent is desired either for all Contracting States
which are party to the regional patent treaty concerned or
only for such Contracting States as are specified.

 (b)  The request may contain an indication that all
designations which would be permitted under the Treaty,
other than those made under paragraph (a), are also made,
provided that:

 (i) at least one Contracting State is designated under
paragraph (a), and

 (ii) the request also contains a statement that any
designation  made  under  this  paragraph  is  subject  to
confirmation as provided in paragraph (c) and that any
designation which is not so confirmed before the expiration
of 15 months from the priority date is to be regarded as
withdrawn by the applicant at the expiration of that time
limit.

 (c)  The confirmation of any designation made under
paragraph (b) shall be effected by

 (i) filing with the receiving Office a written notice
containing an indication as referred to in paragraph (a)(i)
or (ii), and

 (ii) paying to the receiving Office the designation fee and
the confirmation fee referred to in Rule 15.5 within the
time limit under paragraph (b)(ii).

  4.10  Priority Claim

 (a)  The declaration referred to in Article 8(1) shall
be made in the request; it shall consist of a statement to
the effect that the priority of an earlier application is
claimed and shall indicate:

 (i) when the earlier application is not a regional or an
international application, the country in which it was
filed; when the earlier application is a regional or an
international application, the country or countries for
which it was filed,

 (ii) the date on which it was filed,

 (iii) the number under which it was filed, and

 (iv) when the earlier application is a regional or an
international  application,  the  national  Office  or
intergovernmental organization with which it was filed.

 (b)  If the request does not indicate both

 (i) when the earlier application is not a regional or an
international application, the country in which such earlier
application was filed; when the earlier application is a
regional or an international application, at least one
country for which such earlier application was filed, and

 (ii) the date on which the earlier application was filed,
the priority claim shall, for the purposes of the procedure
under the Treaty, be considered not to have been made.
However,  where,  resulting  from  an  obvious  error,  the
indication of the said country or the said date is missing
or is erroneous, the receiving Office may, at the request of
the applicant, make the necessary correction. The error
shall  be  considered  as  an  obvious  error  whenever  the
correction is obvious from a comparison with the earlier
application. Where the error consists of the omission of the
indication of the said date, the correction can only be made
before  the  transmittal  of  the  record  copy  to  the
International  Bureau.  In  the  case  of  any  other  error
relating to the indication of the said date or in the case
of any error relating to the indication of the said country,
the correction can only be made before the expiration of the
time limit under Rule 17.1(a) computed on the basis of the
correct priority date.

 (c)  If  the  application  number  of  the  earlier
application is not indicated in the request but is furnished
by the applicant to the International Bureau or to the
receiving Office prior to the expiration of the 16th month
from the priority date, it shall be considered by all
designated States to have been furnished in time.

 (d)  If the filing date of the earlier application as
indicated in the request does not fall within the period of
one  year  preceding  the  international  filing  date,  the
receiving Office, or, if the receiving Office has failed to
do so, the International Bureau, shall invite the applicant
to ask either for the cancellation of the declaration made
under  Article  8(1)  or,  if  the  date  of  the  earlier
application was indicated erroneously, for the correction of
the date so indicated. If the applicant fails to act
accordingly  within  one  month  from  the  date  of  the
invitation, the declaration made under Article 8(1) shall be
cancelled ex officio .

 (e)  Where  the  priorities  of  several  earlier
applications are claimed, the provisions of paragraphs (a)
to (d) shall apply to each of them.

  4.11  Reference to Earlier Search

 If an international or international - type search has been
requested on an application under Article 15(5) or if the
applicant wishes the International Searching Authority to
base the international search report wholly or in part on
the results of a search, other than an international or
international - type search, made by the national Office or
intergovernmental organization which is the International
Searching  Authority  competent  for  the  international
application, the request shall contain a reference to that
fact. Such reference shall either identify the application
(or its translation, as the case may be) in respect of which
the earlier search was made by indicating country, date and
number,or the said search by indicating, where applicable,
date and number of the request for such search.

  4.12  Choice of Certain Kinds of Protection

 (a)  If  the  applicant  wishes  his  international
application to be treated, in any designated State, as an
application not for a patent but for the grant of any of the
other kinds of protection specified in Article 43, he shall
so indicate in the request. For the purposes of this
paragraph, Article 2(ii) shall not apply.

 (b)  In the case provided for in Article 44, the
applicant shall indicate the two kinds of protection sought,
or, if one of two kinds of protection is primarily sought,
he shall indicate which kind is sought primarily and which
kind is sought subsidiarily.

  4.13  Identification of Parent Application or Parent Grant

 If the applicant wishes his international application to be
treated, in any designated State, as an application for a
patent or certificate of addition, inventor's certificate of
addition, or utility certificate of addition, he shall
identifythe parent application or the parent patent, parent
inventor's certificate, or parent utility certificate to
which the patent or certificate of addition, inventor's
certificate of addition, or utility certificate of addition,
if granted, relates. For the purposes of this paragraph
Article 2(ii) shall not apply .

 4.14  Continuation or Continuation - in - Part

 If the applicant wishes his international application to be
treated, in any designated State, as an application for a
continuation or a continuation - in - part of an earlier
application, he shall so indicate in the request and shall
identify the parent application involved.

  bis
  4.14  Choice of International Searching Authority

 If two or more International Searching Authorities are
competent  for  the  searching  of  the  international
application, the applicant shall indicate his choice of
International Searching Authority in the request.

  4.15  Signature

 (a)  Subject to paragraph (b), the request shall be
signed by the applicant or, if there is more than one
applicant, by all of them.

 (b)  Where two or more applicants file an international
application which designates a State whose national law
requires that national applications be filed by the inventor
and where an applicant for that designated State who is an
inventor refused to sign the request or could not be found
or reached after diligent effort, the request need not be
signed by that applicant if it is signed by at least one
applicant and a statement is furnished explaining, to the
satisfac tion of the receiving Office, the lack of the
signature concerned.

  4.16  Transliteration or Translation of Certain Words

 (a)  Where any name or address is written in characters

other than those of the Latin alphabet, the same shall also
be indicated in characters of the Latin alphabet either as a
mere transliteration or through translation into English.
The applicant shall decide which words will be merely
transliterated and which words will be so translated.

 (b)  The name of any country written in characters other
than those of the Latin alphabet shall also be indicated in
English.

  4.17  Additional Matter

 (a)  The request shall contain no matter other than that
specified  in  Rules  4.1  to  4.16,  provided  that  the
Administrative Instructions may permit, but cannot make
mandatory, the inclusion in the request of any additional
matter specified in the Administrative Instructions.

 (b)  If the request contains matter other than that
specified in Rules 4.1 to 4.16 or permitted under paragraph
(a) by the Administrative Instructions, the receiving Office
shall ex officio delete the additional matter.

  Rule 5

 The Description

  5.1  Manner of the Description

 (a)  The description shall first state the title of the
invention as appearing in the request and shall:

 (i) specify the technical field to which the invention
relates;

 (ii) indicate the background art which, as far as known to
the  applicant,  can  be  regarded  as  useful  for  the
understanding, searching and examination of the invention,
and, preferably, cite the documents reflecting such art;

 (iii)  disclose the invention, as claimed, in such terms
that the technical problem (even if not expressly stated as
such) and its solution can be understood, and state the
advantageous  effects,  if  any,  of  the  invention  with
reference to the background art;

 (iv) briefly describe the figures in the drawings, if any;

 (v) set forth at least the best mode contemplated by the
applicant for carrying out the invention claimed; this shall
be done in terms of examples, where appropriate, and with
reference to the drawings, if any; where the national law of
the designated State does not require the description of the
best mode but is satisfied with the description of any mode
(whether it is the best contemplated or not), failure to
describe the best mode contemplated shall have no effect in
that State; (vi) indicate explicitly, when it is not obvious
from the description or nature of the invention, the way in
which the invention is capable of exploitation in industry
and the way in which it can be made and used, or, if it can
only be used, the way in which it can be used; the term
"industry" is to be understood in its broadest sense as in
the  Paris  Convention  for  the  Protection  of  Industrial
Property.

 (b)  The manner and order specified in paragraph (a)
shall be followed except when, because of the nature of the
invention, a different manner or a different order would
result  in  a  better  understanding  and  a  more  economic
presentation.

 (c)  Subject to the provisions of paragraph (b), each of
the parts referred to in paragraph (a) shall preferably be
preceded by an appropriate heading as suggested in the
Administrative Instructions.

  5.2  Nucleotide and/or Amino Acid Sequence Disclosure

 Where the international application contains disclosure of
a nucleotide and/or amino acid sequence, the description
shall contain a listing of the sequence complying with the
standard prescribed by the Administrative Instructions.

  Rule 6

 The Claims

  6.1  Number and Numbering of Claims

 (a)  The number of the claims shall be reasonable in
consideration of the nature of the invention claimed.

 (b)  If there are several claims, they shall be numbered
consecutively in Arabic numerals.

 (c)  The  method  of  numbering  in  the  case  of  the
amendment of claims shall be governed by the Administrative
Instructions.

  6.2  References to Other Parts of the International
  Application

 (a)  Claims  shall  not,  except  where  absolutely
necessary, rely, in respect of the technical features of the
invention, on references to the description or drawings. In
particular, they shall not rely on such references as: "as
described  in  part  ...  of  the  description,"  or  "as
illustrated in figure ... of the drawings."

 (b)  Where  the  international  application  contains
drawings, the technical features mentioned in the claims
shall preferably be followed by the reference signs relating
to such features. When used, the reference signs shall
preferably be placed between parentheses. If inclusion of
reference signs does not particularly facilitate quicker
understanding of a claim, it should not be made. Reference
signs may be removed by a designated Office for the purposes
of publication by such Office.

  6.3  Manner of Claiming

 (a)  The definition of the matter for which protection
is sought shall be in terms of the technical features of the
invention.

 (b)  Whenever appropriate, claims shall contain:

 (i) a statement indicating those technical features of the
invention which are necessary for the definition of the
claimed subject matter but which, in combination, are part

of the prior art,

 (ii) a characterizing portion - preceded by the words
"characterized in that," "characterized by," "wherein the
improvement comprises," or any other words to the same
effect - stating concisely the technical features which, in
combination with the features stated under (i), it is
desired to protect.

 (c)  Where the national law of the designated State does
not require the manner of claiming provided for in paragraph
(b), failure to use that manner of claiming shall have no
effect  in  that  State  provided  the  manner  of  claiming
actually used satisfies the national law of that State.

  6.4  Dependent Claims

 (a)  Any claim which includes all the features of one or
more other claims (claim in dependent form, hereinafter
referred  to  as  "dependent  claim")  shall  do  so  by  a
reference, if possible at the beginning, to the other claim
or claims and shall then state the additional features
claimed. Any dependent claim which refers to more than one
other claim ("multiple dependent claim") shall refer to such
claims in the alternative only. Multiple dependent claims
shall not serve as a basis for any other multiple dependent
claim. Where the national law of the national Office acting
as International Searching Authority does not allow multiple
dependent claims to be drafted in a manner different from
that provided for in the preceding two sentences, failure to
use that manner of claiming may result in an indication
under Article 17(2)(b) in the international search report.
Failure to use the said manner of claiming shall have no
effect in a designated State if the manner of claiming
actually used satisfies the national law of that State.

 (b)  Any dependent claim shall be construed as including
all the limitations contained in the claim to which it
refers or, if the dependent claim is a multiple dependent
claim, all the limitations contained in the particular claim
in relation to which it is considered.

 (c)  All dependent claims referring back to a single
previous claim, and all dependent claims referring back to
several previous claims, shall be grouped together to the
extent and in the most practical way possible.

  6.5  Utility Models

 Any designated State in which the grant of a utility model
is sought on the basis of an international application may,
instead of Rules 6.1 to 6.4, apply in respect of the matters
regulated in those Rules the provisions of its national law
concerning  utility  models  once  the  processing  of  the
international  application  has  started  in  that  State,
provided that the applicant shall be allowed at least two
months from the expiration of the time limit applicable
under  Article  22  to  adapt  his  application  to  the
requirements of the said provisions of the national law.

  Rule 7

 The Drawings

  7.1  Flow Sheets and Diagrams

 Flowsheets and diagrams are considered drawings.

  7.2 Time Limit

 The time limit referred to in Article 7(2)(ii) shall be
reasonable under the circumstances of the case and shall, in
no case, be shorter than two months from the date of the

 written invitation requiring the filing of drawings or
additional drawings under the said provision.

  Rule 8

 The Abstract

  8.1  Contents and Form of the Abstract

 (a)  The abstract shall consist of the following:

  (i) a summary of the disclosure as contained in the
description, the claims, and any drawings; the summary shall
indicate the technical field to which the invention pertains
and shall be drafted in a way which allows the clear
understanding of the technical problem, the gist of the
solution of that problem through the invention, and the
principal use or uses of the invention;

  (ii) where applicable, the chemical formula which, among
all the formulae contained in the international application,
best characterizes the invention.

 (b)  The abstract shall be as concise as the disclosure
permits (preferably 50 to 150 words if it is in English or
when translated into English).

 (c)  The abstract shall not contain statements on the
alleged merits or value of the claimed invention or on its
speculative application.

 (d)  Each  main  technical  feature  mentioned  in  the
abstract and illustrated by a drawing in the international
application shall be followed by a reference sign, placed
between parentheses.

  8.2  Figure

 (a)  If the applicant fails to make the indication
referred to in Rule 3.3(a)(iii), or if the International
Searching Authority finds that a figure or figures other
than that figure or those figures suggested by the applicant
would, among all the figures of all the drawings, better
characterize the invention, it shall, subject to paragraph
(b), indicate the figure or figures which should accompany
the  abstract  when  the  latter  is  published  by  the
International Bureau. In such case, the abstract shall be
accompanied by the figure or figures so indicated by the
International Searching Authority. Otherwise, the abstract
shall, subject to paragraph (b), be accompanied by the
figure or figures suggested by the applicant.

 (b)  If the International Searching Authority finds that
none of the figures of the drawings is useful for the
understanding  of  the  abstract,  it  shall  notify  the
International  Bureau  accordingly.  In  such  case,  the

abstract, when published by the International Bureau, shall
not be accompanied by any figure of the drawings even where
the applicant has made a suggestion under Rule 3.3(a)(iii).

  8.3  Guiding Principles in Drafting

 The abstract shall be so drafted that it can efficiently
serve as a scanning tool for purposes of searching in the
particular  art,  especially  by  assisting  the  scientist,
engineer or researcher in formulating an opinion on whether
there is a need for consulting the international application
itself.

  Rule 9

 Expressions, etc., Not To Be Used

  9.1  Definition

 The international application shall not contain:

  (i) expressions or drawings contrary to morality;

  (ii) expressions or drawings contrary to public order;

  (iii) statements disparaging the products or processes of
any particular person other than the applicant, or the
merits or validity of applications or patents of any such
person (mere comparisons with the prior art shall not be
considered disparaging, per se );

  (iv) any statement or other matter obviously irrelevant
or unnecessary under the circumstances.

  9.2  Noting of Lack of Compliance

  The  receiving  Office  and  the  International  Searching
Authority may note lack of compliance with the prescriptions
of Rule 9.1 and may suggest to the applicant that he
voluntarily  correct  his  international  application
accordingly. If the lack of compliance was noted by the
receiving Office, that Office shall inform the competent
International Searching Au thority and the International
Bureau;  if  the  lack  of  compliance  was  noted  by  the
International Searching Authority, that Au thority shall
inform the receiving Office and the International Bureau.

 9.3  Reference to Article 21(6)

 "Disparaging statements," referred to in Article 21(6),
shall have the meaning as defined in Rule 9.1(iii).

  Rule 10

 Terminology and Signs

  10.1  Terminology and Signs

 (a)  Units of weights and measures shall be expressed in
terms of the metric system, or also expressed in such terms
if first expressed in terms of a different system.

 (b)  Temperatures shall be expressed in degrees Celsius,
or also expressed in degrees Celsius, if first expressed in
a different manner.

 (c)  [Deleted]

 (d)  For indications of heat, energy, light, sound, and
magnetism,  as  well  as  for  mathematical  formulae  and
electrical units, the rules of international practice shall
be observed; for chemical formulae, the symbols, atomic
weights, and molecular formulae, in general use, shall be
employed.

 (e)  In general, only such technical terms, signs, and
symbols should be used as are generally accepted in the art.

 (f)  When  the  international  application  or  its
translation  is  in  Chinese,  English,  or  Japanese,  the
beginning of any decimal shall be marked by a period,
whereas,  when  the  international  application  or  its
translation is in a language other than Chinese, English, or
Japanese, it shall be marked by a comma.

 10.2  Consistency

  The  terminology  and  the  signs  shall  be  consistent
throughout the international application.

  Rule 11

 Physical Requirements of the International Application

  11.1  Number of Copies

 (a)  Subject to the provisions of paragraph (b), the
international application and each of the documents referred
to in the check list (Rule 3.3(a)(ii)) shall be filed in one
copy.

 (b)  Any  receiving  Office  may  require  that  the
international application and any of the documents referred
to in the check list (Rule 3.3(a)(ii)), except the receipt
for the fees paid or the check for the payment of the fees,
be filed in two or three copies. In that case, the receiving
Office shall be responsible for verifying the identity of
the second and the third copies with the record copy.

  11.2  Fitness for Reproduction

 (a)  All  elements  of  the  international  application
(i.e.,  the  request,  the  description,  the  claims,  the
drawings, and the abstract) shall be so presented as to
admit of direct reproduction by photography, electrostatic
processes, photo offset, and microfilming, in any number of
copies.

 (b)  All sheets shall be free from creases and cracks;
they shall not be folded.

 (c)  Only one side of each sheet shall be used.

 (d)  Subject to Rule 11.10(d) and Rule 11.13(j), each
sheet shall be used in an upright position (i.e., the short
sides at the top and bottom).

  11.3  Material to Be Used

 All elements of the international application shall be on

paper which shall be flexible, strong, white, smooth, non -
shiny, and durable.

  11.4  Separate Sheets, Etc.

 (a)  Each  element  (request,  description,  claims,
drawings, abstract) of the international application shall
commence on a new sheet.

 (b)  All sheets of the international application shall
be  so  connected  that  they  can  be  easily  turned  when
consulted, and easily separated and joined again if they
have been separated for reproduction purposes.

  11.5  Size of Sheets

 The size of the sheets shall be A4 (29.7 cm x 21 cm).
However,  any  receiving  Office  may  accept  international
applications on sheets of other sizes provided that the
record copy, as transmitted to the International Bureau,
and, if the competent International Searching Authority so
desires, the search copy, shall be of A4 size.

  11.6  Margins

 (a)  The minimum margins of the sheets containing the
description, the claims, and the abstract, shall be as
follows:

 - top: 2 cm

 - left side: 2.5 cm

 - right side: 2 cm

 - bottom: 2 cm

 (b)  The recommended maximum, for the margins provided
for in paragraph (a), is as follows:

 - top: 4 cm

 - left side: 4 cm

 - right side: 3 cm

 - bottom: 3 cm

 (c)  On sheets containing drawings, the surface usable
shall not exceed 26.2 cm x 17.0 cm. The sheets shall not
contain frames around the usable or used surface. The
minimum margins shall be as follows:

 - top: 2.5 cm

 - left side: 2.5 cm

 - right side: 1.5 cm

 - bottom: 1.0 cm

 (d)  The margins referred to in paragraphs (a) to (c)
apply to A4 - size sheets, so that, even if the receiving
Office accepts

 other sizes, the A4 - size record copy and, when so
required,  the  A4  -  size  search  copy  shall  leave  the
aforesaid margins.

 (e)  Subject to paragraph (f) and to Rule 11.8(b), the
margins of the international application, when submitted,
must be completely blank.

 (f)  The top margin may contain in the left - hand
corner an indication of the applicant's file reference,
provided that the reference appears within 1.5 cm from the
top  of  the  sheet.  The  number  of  characters  in  the
applicant's file reference shall not exceed the maximum
fixed by the Administrative Instructions.

  11.7  Numbering of Sheets

 (a)  All the sheets contained in the international
application  shall  be  numbered  in  consecutive  Arabic
numerals.

 (b)  The numbers shall be centered at the top or bottom
of the sheet, but shall not be placed in the margin.

  11.8  Numbering of Lines

 (a)  It is strongly recommended to number every fifth
line of each sheet of the description, and of each sheet of
claims.

 (b)  The numbers should appear in the right half of the
left margin.

  11.9  Writing of Text Matter

 (a)  The request, the description, the claims and the
abstract shall be typed or printed.

 (b)  Only graphic symbols and characters, chemical or
mathematical formulae, and certain characters in the Chinese
or Japanese languages may, when necessary, be written by
hand or drawn.

 (c)  The typing shall be 1 1/2 - spaced.

 (d)  All text matter shall be in characters the capital
letters of which are not less than 0.21 cm high, and shall
be in a dark, indelible color, satisfying the requirements
specified in Rule 11.2.

 (e)  As far as the spacing of the typing and the size of
the characters are concerned, paragraphs (c) and (d) shall
not apply to texts in the Chinese or Japanese languages.

  11.10  Drawings, Formulae, and Tables, in Text Matter

 (a)  The request, the description, the claims and the
abstract shall not contain drawings.

 (c)  The  description  and  the  abstract  may  contain
tables; any claim may contain tables only if the subject
matter of the claim makes the use of tables desirable.

 (d)  Tables and chemical or mathematical formulae may be
placed sideways on the sheet if they cannot be presented

satisfactorily in an upright position thereon; sheets on
which  tables  or  chemical  or  mathematical  formulae  are
presented sideways shall be so presented that the tops of
the tables or formulae are at the left side of the sheet.

  11.11  Words in Drawings

 (a)  The drawings shall not contain text matter, except
a single word or words, when absolutely indispensable, such
as "water," "steam," "open," "closed," "section on AB," and,
in the case of electric circuits and block schematic or flow
sheet diagrams, a few short catchwords indispensable for
understanding.

 (b)  Any  words  used  shall  be  so  placed  that,  if
translated, they may be pasted over without interfering with
any lines of the drawings.

  11.12  Alterations, Etc.

 Each sheet shall be reasonably free from erasures and shall
be free from alterations, overwritings, and interlineations.
Non - compliance with this Rule may be authorized if the
authenticity of the content is not in question and the
requirements for good reproduction are not in jeopardy.

  11.13  Special Requirements for Drawings

 (a)  Drawings shall be executed in durable, black,
sufficiently dense and dark, uniformly thick and well -
defined, lines and strokes without colorings.

 (b)  Cross - sections shall be indicated by oblique
hatching which should not impede the clear reading of the
reference signs and leading lines.

 (c)  The scale of the drawings and the distinctness of
their graphical execution shall be such that a photographic
reproduction with a linear reduction in size to two - thirds
would  enable  all  details  to  be  distinguished  without
difficulty.

 (d)  When, in exceptional cases, the scale is given on a
drawing, it shall be represented graphically.

 (e)  All numbers, letters and reference lines, appearing
on the drawings, shall be simple and clear. Brackets,
circles or inverted commas shall not be used in association
with numbers and letters.

 (f)  All lines in the drawings shall, ordinarily, be
drawn with the aid of drafting instruments.

 (g)  Each element of each figure shall be in proper
proportion to each of the other elements in the figure,
except  where  the  use  of  a  different  proportion  is
indispensable for the clarity of the figure.

 (h)  The height of the numbers and letters shall not be
less than 0.32 cm. For the lettering of drawings, the Latin
and, where customary, the Greek alphabets shall be used.

 (i)  The same sheet of drawings may contain several
figures. Where figures on two or more sheets form in effect
a single complete figure, the figures on the several sheets

shall be so arranged that the complete figure can be
assembled without concealing any part of any of the figures
appearing on the various sheets.

 (j)  The different figures shall be arranged on a sheet
or sheets without wasting space, preferably in an upright
position, clearly separated from one another. Where the
figures are not arranged in an upright position, they shall
be presented sideways with the top of the figures at the
left side of the sheet.

 (k)  The different figures shall be numbered in Arabic
numerals consecutively and independently of the numbering of
the sheets.

 (1)  Reference signs not mentioned in the description
shall not appear in the drawings, and vice versa.

 (m)  The same features, when denoted by reference signs,
shall, throughout the international application, be denoted
by the same signs.

 (n)  If the drawings contain a large number of reference
signs, it is strongly recommended to attach a separate sheet
listing all reference signs and the features denoted by
them.

  11.14  Later Documents

  Rules 10, and 11.1 to 11.13, also apply to any document -
  for example, corrected pages, amended claims - submitted
  after the filing of the international application.

  Rule 12

 Language of the International Application

  12.1  Admitted Languages

 (a)  Any international application shall be filed in the
language,  or  one  of  the  languages,  specified  in  the
agreement concluded between the International Bureau and the
International  Searching  Authority  competent  for  the
international searching of that application, provided that,
if the agreement specifies several languages, the receiving
Office may prescribe among the specified languages that
language in which or those languages in one of which the
international application must be filed.

 (b)  Notwithstanding paragraph (a), the request, any
text matter of the drawings, and the abstract need not be in
the same language as other elements of the international
application, provided that:

 (i) the request is in a language admitted under paragraph
(a)  or  in  the  language  in  which  the  international
application is to be published;

 (ii) the text matter of the drawings is in the language in
which the international application is to be published;

 (iii) the abstract is in the language in which the
international application is to be published.

 (c)  Subject  to  paragraph  (d),  where  the  official

language of the receiving Office is one of the languages
referred to in Rule 48.3(a) but is a language not specified
in  the  agreement  referred  to  in  paragraph  (a),  the
international application may be filed in the said official
language. If the international application is filed in the
said official language, the search copy transmitted to the
International Searching Authority under Rule 23.1 shall be
accompanied by a translation into the language, or one of
the languages, specified in the agreement referred to in
paragraph (a); such translation shall be prepared under the
responsibility of the receiving Office.

 (d)  Paragraph  (c)  shall  apply  only  where  the
International  Searching  Authority  has  declared,  in  a
notification addressed to the International Bureau, that it
accepts to search international applications on the basis of
the translation referred to in paragraph (c).

  12.2  Language of Changes in the International Application

 Any changes in the international application, such as
amendments and corrections, shall, subject to Rules 46.3 and
66.9, be in the same language as the said application.

  Rule 13

 Unity of Invention

 13.1  Requirement

 The international application shall relate to one invention
only or to a group of inventions so linked as to form a
single general inventive concept ("requirement of unity of
invention").

  13.2  Circumstances in Which the Requirement of Unity of
  Invention Is to Be Considered Fulfilled

 Where a group of inventions is claimed in one and the same
international  application,  the  requirement  of  unity  of
invention referred to in Rule 13.1 shall be fulfilled only
when  there  is  a  technical  relationship  among  those
inventions  involving  one  or  more  of  the  same  or
corresponding special technical features. The expression
"special technical features" shall mean those technical
features that define a contribution which each of the
claimed inventions, considered as a whole, makes over the
prior art.

  13.3  Determination of Unity of Invention Not Affected
  Manner of Claiming

 The determination whether a group of inventions is so
linked as to form a single general inventive concept shall
bemade without regard to whether the inventions are claimed
in separate claims or as alternatives within a single claim.

  13.4  Dependent Claims

 Subject to Rule 13.1, it shall be permitted to include in
the same international application a reasonable number of
dependent claims, claiming specific forms of the invention
claimed in an independent claim, even where the features of
any dependent claim could be considered as constituting in
themselves an invention.

  13.5  Utility Models

 Any designated State in which the grant of a utility model
is sought on the basis of an international application may,
instead of Rules 13.1 to 13.4, apply in respect of the
matters regulated in those Rules the provisions of its
national law concerning utility models once the processing
of the international application has started in that State,
provided that the applicant shall be allowed at least two
months from the expiration of the time limit applicable
under  Article  22  to  adapt  his  application  to  the
requirements of the said provisions of the national law .

  bis
  Rule 13

 Microbiological Inventions

  bis
  13  .1  Definition

 For the purposes of this Rule, "reference to a deposited
microorganism" means particulars given in an international
application with respect to the deposit of a microorganism
with a depositary institution or to the microorganism so
deposited.

  bis
  13  .2  References (General)

 Any reference to a deposited microorganism shall be made in
accordance  with  this  Rule  and,  if  so  made,  shall  be
considered as satisfying the requirements of the national
law of each designated State.

  bis
 13  .3  References: Contents; Failure to Include Reference
  or Indication

 (a)  A reference to a deposited microorganism shall
indicate,

 (i) the name and address of the depositary institution with
which the deposit was made;

 (ii) the date of deposit of the microorganism with that
institution;

 (iii) the accession number given to the deposit by that
institution; and

 (iv) any additional matter of which the International
  bis
Bureau has been notified pursuant to Rule 13  .7(a)(i) ,
provided that the requirement to indicate that matter was
  bis
published in the Gazette in accordance with Rule 13  .7(c)
at least two months before the filing of the international
application.

 (b)  Failure to include a reference to a deposited
microorganism or failure to include, in a reference to a
deposited microorganism, an indication in accordance with
paragraph (a), shall have no consequence in any designated
State whose national law does not require such reference or
such indication in a national application.

  bis
  13  .4  References: Time of Furnishing Indications

  bis
 If any of the indications referred to in Rule l3  .3(a) is
not included in a reference to a deposited microorganism in
the international application as filed but is furnished by
the applicant to the International Bureau within 16 months
after the priority date, the indication shall be considered
by any designated Office to have been furnished in time
unless its national law requires the indication to be
furnished at an earlier time in the case of a national
application and the International Bureau has been notified
  bis
of  such  requirement  pursuant  to  Rule  13  .7(a)(ii)  ,
provided that the International Bureau has published such
requirement  in  the  Gazette  in  accordance  with  Rule
  bis
13  .7(c) at least two months before the filing of the
international application. In the event that the applicant
makes  a  request  for  early  publication  under  Article
21(2)(b), however, any designated Office may consider any
indication not furnished by the time such request is made as
not having been furnished in time. Irrespective of whether
the applicable time limit under the preceding sentences has
been observed, the International Bureau shall notify the
applicant and the designated Offices of the date on which it
has  received  any  indication  not  included  in  the
international application as filed. The International Bureau
shall indicate that date in the international publication of
the international application if the indication has been
furnished  to  it  before  the  completion  of  technical
preparations international publication.

  bis
 13  .5  References and Indications for the Purposes of One
 or More Designated States; Different Deposits for Different
  Designated States; Deposits with Depositary Institutions
  Other Than Those Notified

 (a)  A reference to a deposited microorganism shall be
considered to be made for the purposes of all designated
States, unless it is expressly made for the purposes of
certain of the designated States only; the same applies to
the indications included in the reference.

 (b)  References  to  different  deposits  of  the
microorganism may be made for different designated States.

 (c)  Any  designated  Office  shall  be  entitled  to
disregard a deposit made with a depositary institution other
  bis
than one notified by it under Rule 13  .7(b).

  bis
  13  .6  Furnishing of Samples

 (a)  Where the international application contains a
reference to a deposited microorganism, the applicant shall,
upon the request of the International Searching Authority or
the International Preliminary Examining Authority, authorize
and assure the furnishing of a sample of that microorganism
by  the  depositary  institution  to  the  said  Authority,
provided  that  the  said  Authority  has  notified  the
International Bureau that it may require the furnishing of
samples and that such samples will be used solely for the
purposes  of  international  search  or  international
preliminary examination, as the case may be, and such
notification has been published in the Gazette.

 (b)  Pursuant to Articles 23 and 40, no furnishing of

samples  of  the  deposited  microorganism  to  which  a
referenceis made in an international application shall,
except with the authorization of the applicant, take place
before the expiration of the applicable time limits after
which national processing may start under the said Articles.
However, where the applicant performs the acts referred to
in Articles 22 or 39 after international publication but
before  the  expiration  of  the  said  time  limits,  the
furnishing of samples of the deposited microorganism may
take  place,  once  the  said  acts  have  been  performed.
Notwithstanding the previous provision, the furnishing of
samples from the deposited microorganism may take place
under the national law applicable for any designated Office
as soon as, under that law, the international publication
has the effects of the compulsory national publication of an
unexamined national application.

  bis
  13  .7  National Requirements: Notification and
  Publication

 (a)  Any national Office may notify the International
Bureau of any requirement of the national law,

 (i)  that any matter specified in the notification, in
  bis
addition to those referred to in Rule 13  .3(a)(i) , (ii)
and (iii), is required to be included in a reference to a
deposited microorganism in a national application;

 (ii)  that one or more of the indications referred to in
  bis
Rule 13  .3(a) are required to be included in a national
application as filed or are required to be furnished at a
time specified in the notification which is earlier than 16
months after the priority date.

 (b)  Each national Office shall notify the International
Bureau  of  the  depositary  institutions  with  which  the
national law permits deposits of microorganisms to be made
for the purposes of patent procedure before that Office or,
if the national law does not provide for or permit such
deposits, of that fact.

 (c)  The International Bureau shall promptly publish in
the Gazette requirements notified to it under paragraph (a)
and information notified to it under paragraph (b).

  ter
  Rule 13

 Nucleotide and/or Amino Acid Sequence Listings

  ter
  13  .1  Sequence Listing for International Authorities

 (a)  If the International Searching Authority finds that
a nucleotide and/or amino acid sequence listing does not
comply with the standard prescribed in the Administrative
Instructions under Rule 5.2, and/or is not in a machine
readable form provided for in those Instructions, it may
invite the applicant, within a time limit fixed in the
invitation, as the case may be:

 (i) to furnish to it a listing of the sequence complying
with the prescribed standard, and/or

 (ii)  to furnish to it a listing of the sequence in a

machine readable form provided for in the Administrative
Instructions or, if that Authority is prepared to transcribe
the sequence listing into such a form, to pay for the cost
of such transcription.

 (b)  Any sequence listing furnished under paragraph (a)
shall be accompanied by a statement to the effect that the
listing does not include matter which goes beyond the
disclosure in the international application as filed.

 (c)  If  the  applicant  does  not  comply  with  the
invitation within the time limit fixed in the invitation,
the International Searching Authority shall not be required
to search the international application to the extent that
such noncompliance has the result that a meaningful search
cannot be carried out.

 (d)  If the International Searching Authority chooses,
under paragraph (a)(ii), to transcribe the sequence listing
into a machine readable form, it shall send a copy of such
transcription in machine readable form to the applicant.

 (e)  The International Searching Authority shall, upon
request, make available to the International Preliminary
Examining Authority a copy of any sequence listing furnished
to it, or as transcribed by it, under paragraph (a).

 (f)  A sequence listing furnished to the International
Searching  Authority,  or  as  transcribed  by  it,  under
paragraph (a) shall not form part of the international
application.

  ter
 13  .2 Sequence Listing for Designated Office

 (a)  Once  the  processing  of  the  international
application has started before a designated Office, that
Office may require the applicant to furnish to it a copy of
any  sequence  listing  furnished  to  the  International
Searching Authority, or as transcribed by that Authority,
  ter
under Rule 13  .1(a).

 (b)  If a designated Office finds that a nucleotide
and/or amino acid sequence listing does not comply with the
standard prescribed in the Administrative Instructions under
Rule 5.2, and/or is not in a machine readable form provided
for in those Instructions, and/or no listing of the sequence
was furnished to the International Searching Authority, or
  ter
transcribed by that Authority, under Rule 13  .1(a) , that
Office may require the applicant:

 (i)  to furnish to it a listing of the sequence complying
with the prescribed standard, and/or

 (ii)  to furnish to it a listing of the sequence in a
machine readable form provided for in the Administrative
Instructions or, if that Office is prepared to transcribe
the sequence listing into such a form, to pay for the cost
of such transcription.

  Rule 14

 The Transmittal Fee

  14.1  The Transmittal Fee

 (a)  Any receiving Office may require that the applicant
pay a fee to it, for its own benefit, for receiving the
international  application,  transmitting  copies  to  the
International  Bureau  and  the  competent  International
Searching Authority, and performing all the other tasks
which it must perform in connection with the international
application  in  its  capacity  of  receiving  Office
("transmittal fee").

 (b)  The amount and the due date of the transmittal fee,
if any, shall be fixed by the receiving Office.

  Rule 15

 The International Fee

  15.1  Basic Fee and Designation Fee

 Each international application shall be subject to the
payment of a fee for the benefit of the International Bureau
("international fee") to be collected by the receiving
Office and consisting of,

 (i) a "basic fee," and

 (ii) as many "designation fees" as there are national
patents and regional patents sought under Rule 4.9(a) by the
applicant in the international application, except that,
where Article 44 applies in respect of a designation, only
one designation fee shall be due for that designation.

  15.2  Amounts

 (a)  The amounts of the basic fee and of the designation
fee are as set out in the Schedule of Fees.

 (b)  The amounts of the basic fee and of the designation
fee shall be established, for each receiving Office which,
under Rule 15.3, prescribes the payment of those fees in a
currency or currencies other than Swiss currency, by the
Director General after consultation with that Office and in
the  currency  or  currencies  prescribed  by  that  Office
("prescribed currency"). The amounts in each prescribed
currency shall be the equivalent, in round figures, of the
amounts in Swiss currency set out in the Schedule of Fees.
They shall be published in the Gazette.

 (c)  Where the amounts of the fees set out in the
Schedule of Fees are changed, the corresponding amounts in
the prescribed currencies shall be applied from the same
date as the amounts set out in the amended Schedule of Fees
.

 (d)  Where the exchange rate between Swiss currency and
any prescribed currency becomes different from the exchange
rate last applied, the Director General shall establish new
amounts in the prescribed currency according to directives
given by the Assembly. The newly established amounts shall
become  applicable  two  months  after  the  date  of  their
publication in the Gazette, provided that the interested
Office and the Director General may agree on a date falling
during the said two - month period in which case the said
amounts shall become applicable for that Office from that
date .

  15.3  Mode of Payment

 The international fee shall be payable in the currency or
currencies prescribed by the receiving Office, it being
understood that, when transferred by the receiving Office to
the International Bureau, the amount transferred shall be
freely convertible into Swiss currency.

  15.4  Time of Payment

 (a)  The basic fee shall be paid within one month from
the date of receipt of the international application.

 (b)  The designation fee shall be paid:

 (i) where the international application does not contain a
priority claim under Article 8, within one year from the
date of receipt of the international application,

  (ii)  where  the  international  application  contains  a
priority claim under Article 8, within one year from the
priority date or within one month from the date of receipt
of the international application if that month expires after
the expiration of one year from the priority date.

 (c)  Where the basic fee or the designation fee is paid
later than the date on which the international application
was received and where the amount of that fee is, in the
currency in which it is payable, higher on the date of
payment ("the higher amount") than it was on the date on
which the international application was received ("the lower
amount"),

 (i) the lower amount shall be due if the fee is paid within
one month from the date of receipt of the international
application,

 (ii) the higher amount shall be due if the fee is paid
later than one month from the date of receipt of the
international application.

 (d)  [Deleted]

  15.5  Fees Under Rule 4.9(c)

 (a)  Notwithstanding  Rule  15.4(b),  the  confirmation
under Rule 4.9(c) of any designations made under Rule 4.9(b)
shall be subject to the payment to the receiving Office of
as  many  designation  fees  (for  the  benefit  of  the
International Bureau) as there are national patents and
regional patents sought by the applicant by virtue of the
confirmation, together with a confirmation fee (for the
benefit of the receiving Office), as set out in the Schedule
of Fees.

 (b)  Where moneys paid by the applicant within the time
limit under Rule 4.9(b)(ii) are not sufficient to cover the
fees due under paragraph (a), the receiving Office shall
allocate any moneys paid as specified by the applicant or,
in the absence of such specification, as prescribed by the
Administrative Instructions.

  15.6  Refund

 The receiving Office shall refund the international fee to
the applicant:

 (i)  if  the  determination  under  Article  11(1)  is
negative, or

 (ii)  if, before the transmittal of the record copy to
the International Bureau, the international application is
withdrawn or considered withdrawn.

  Rule 16

 The Search Fee

  16.1  Right to Ask for a Fee

 (a)  Each International Searching Authority may require
that the applicant pay a fee ("search fee") for its own
benefit for carrying out the international search and for
performing  all  other  tasks  entrusted  to  International
Searching Authorities by the Treaty and these Regulations.

 (b)  The search fee shall be collected by the receiving
Office. The said fee shall be payable in the currency or
currencies prescribed by that Office ("the receiving Office
currency"), it being understood that, if any receiving
Office currency is not that, or one of those, in which the
International Searching Authority has fixed the said fee
("the  fixed  currency  orcurrencies"),  it  shall,  when
transferred by the receiving Office to the International
Searching Authority, be freely convertible into the currency
of the State in which the International Searching Authority
has its headquarters ("the headquarters currency"). The
amount of the search fee in any receiving Office currency,
other than the fixed currency or currencies, shall be
established by the Director General after consultation with
that  Office.  The  amounts  so  established  shall  be  the
equivalents, in round figures, of the amount established by
the International Searching Authority in the headquarters
currency. They shall be published in the Gazette.

 (c)  Where  the  amount  of  the  search  fee  in  the
headquarters currency is changed, the corresponding amounts
in the receiving Office currencies, other than the fixed
currency or currencies, shall be applied from the same date
as the changed amount in the headquarters currency.

 (d)  Where the exchange rate between the headquarters
currency and any receiving Office currency, other than the
fixed currency or currencies, becomes different from the
exchange rate last applied, the Director General shall
establish the new amount in the said receiving Office
currency according to directives given by the Assembly. The
newly established amount shall become applicable two months
after its publication in the Gazette, provided that any
interested receiving Office and the Director General may
agree on a date falling during the said two - month period
in which case the said amount shall become applicable for
that Office from that date.

 (e)  Where, in respect of the payment of the search fee
in  a  receiving  Office  currency,  other  than  the  fixed
currency or currencies, the amount actually received by the
International  Searching  Authority  in  the  headquarters
currency is less than that fixed by it, the difference will

be paid to the International Searching Authority by the
International  Bureau,  whereas,  if  the  amount  actually
received  is  more,  the  difference  will  belong  to  the
International Bureau.

 (f)  As to the time of payment of the search fee, the
provisions of Rule 15.4 relating to the basic fee shall
apply.

  16.2  Refund

 The receiving Office shall refund the search fee to the
applicant:

 (i) if the determination under Article 11(1) is negative,
or

 (ii) if, before the transmittal of the search copy to the
International  Searching  Authority,  the  international
application is withdrawn or considered withdrawn.

  16.3  Partial Refund

 Where the international application claims the priority of
an earlier international application which has been the
subject of an international search by the same International
Searching Authority, that Authority shall refund the search
fee  paid  in  connection  with  the  later  international
application to the extent and under the conditions provided
for  in  the  agreement  under  Article  16(3)(b),  if  the
international  search  report  on  the  later  international
application couldwholly or partly be based on the results of
the  international  search  effected  on  the  earlier
international application.

  bis
  Rule 16

 Extension of Time Limits for Payment of Fees

  bis
  16  .1  Invitation by the Receiving Office

 (a)  Where, by the time they are due under Rule 14.1(b),
Rule 15.4(a) and Rule 16.1(f), the receiving Office finds
that in respect of an international application no fees were
paid to it by the applicant, or that the amount paid to it
by the applicant is less than what is necessary to cover the
transmittal fee, the basic fee and the search fee, the
receiving Office shall invite the applicant to pay to itthe
amount required to cover those fees, together with, where
  bis
applicable, the late payment fee under Rule 16  .2 , within
one month from the date of the invitation.

 (b)  Where, by the time they are due under Rule 15.4(b),
the  receiving  Office  finds  that  in  respect  of  an
international application the payment made by the applicant
is insufficient to cover the designation fees necessary to
cover all the designations under Rule 4.9(a), the receiving
Office shall invite the applicant to pay to it the amount
required  to  cover  those  fees,  together  with,  where
  bis
applicable, the late payment fee under Rule 16  .2 , within
one month from the date of the invitation.

 (c)  Where  the  receiving  Office  has  sent  to  the

applicant an invitation under paragraph (a) or (b) and the
applicant has not, within one month from the date of the
invitation, paid in full the amount due, including, where
  bis
applicable, the late payment fee under Rule 16  .2 , the
receiving Office shall:

 (i) allocate any moneys paid as specified by the applicant
or, in the absence of such specification, as prescribed by
the Administrative Instructions,

 (ii) make the applicable declaration under Article 14(3),
and

 (iii) proceed as provided in Rule 29.

  bis
  16  .2 Late Payment Fee

 (a)  The payment of fees in response to an invitation
 bis
under Rule 16  .1(a) or (b) may be subjected by the
receiving Office to the payment to it of a late payment fee.
The amount of that fee shall be:

 (i) 50% of the amount of unpaid fees which is specified in
the invitation, or,

 (ii) if the amount calculated under item (i) is less than
the transmittal fee, an amount equal to the transmittal fee.

 (b)  The amount of the late payment fee shall not,
however, exceed the amount of the basic fee.

 (c)  [Deleted]

  Rule 17

 The Priority Document

  17.1  Obligation to Submit Copy of Earlier National Appli
  cation

 (a)  Where  the  priority  of  an  earlier  national
application is claimed under Article 8 in the international
application,  a  copy  of  the  said  national  application,
certified by the authority with which it was filed ("the
priority document"), shall, unless already filed with the
receiving  Office  together  with  the  international
application,  be  submitted  by  the  applicant  to  the
International Bureau or to the receiving Office not later
than 16 months after the priority date or, in the case
referred to in Article 23(2), not later than at the time the
processing or examination is requested.

 (b)  Where the priority document is issued by the
receiving Office, the applicant may, instead of submitting
the priority document, request the receiving Office to
transmit the priority document to the International Bureau.
Such request shall be made not later than the expiration of
the applicable time limit referred to under paragraph (a)
and may be subjected by the receiving Office to the payment
of a fee.

 (c)  If the requirements of neither of the two preceding
paragraphs are complied with, any designated State may
disregard the priority claim.

  17.2  Availability of Copies

 (a)  The International Bureau shall, at the specific
request of the designated Office, promptly but not before
the expiration of the time limit fixed in Rule 17.1(a),
furnish a copy of the priority document to that Office. No
such Office shall ask the applicant himself to furnish it
with a copy, except where it requires the furnishing of a
copy of the priority document together with a certified
translation thereof. The applicant shall not be required to
furnish a certified translation to the designated Office
before the expiration of the applicable time limit under
Article 22 .

 (b)  The International Bureau shall not make copies of
the priority document available to the public prior to the
international publication of the international application.

 (c)  Where  the  international  application  has  been
published under Article 21, the International Bureau shall
furnish a copy of the priority document to any person upon
request and subject to reimbursement of the cost unless,
prior to that publication:

 (i) the international application was withdrawn,

 (ii) the relevant priority claim was withdrawn or was
considered, under Rule 4.10(b), not to have been made, or

 (iii) the relevant declaration under Article 8(1) was
cancelled under Rule 4.10(d).

 (d)  Paragraphs (a) to (c) shall apply also to any
earlier international application whose priority is claimed
in the subsequent international application.

  Rule 18

 The Applicant

 18.1  Residence and Nationality

 (a)  Subject to the provisions of paragraphs (b) and
(c), the question whether an applicant is a resident or
national of the Contracting State of which he claims to be a
resident or national shall depend on the national law of
that State and shall be decided by the receiving Office.

 (b)  In any case,

 (i)  possession of a real and effective industrial or
commercial establishment in a Contracting State shall be
considered residence in that State, and

 (ii)  a  legal  entity  constituted  according  to  the
national law of a Contracting State shall be considered a
national of that State.

 (c)  Where the international application is filed with
the  International  Bureau  as  receiving  Office,  the
International Bureau shall, in the circumstances specified
in the Administrative Instructions, request the national
Office of, or acting for, the Contracting State concerned to
decide the question referred to in paragraph (a). The

International Bureau shall inform the applicant of any such
request. The applicant shall have an opportunity to submit
arguments directly to the national Office. The national
Office shall decide the said question promptly.

  18.2  [Deleted]

  18.3  Two or More Applicants

 If there are two or more applicants, the right to file an
international application shall exist if at least one of
them  is  entitled  to  file  an  international  application
according to Article 9.

  18.4  Information on Requirements Under National Law as to
  Applicants

 (a) and (b)  [Deleted]

 (c)  The International Bureau shall, from time to time,
publish information on the various national laws in respect
of the question who is qualified (inventor, successor in
title of the inventor, owner of the invention, or other) to
file  a  national  application  and  shall  accompany  such
information  by  a  warning  that  the  effect  of  the
international application in any designated State may depend
on  whether  the  person  designated  in  the  international
application as applicant for the purposes of that State is a
person who, under the national law of that State, is
qualified to file a national application.

  Rule 19

 The Competent Receiving Office

  19.1  Where to File

 (a)  Subject to the provisions of paragraph (b), the
international application shall be filed, at the option of
the applicant,

 (i)  with the national Office of or acting for the
Contracting State of which the applicant is a resident,

 (ii)  or with the national Office of or acting for the
Contracting State of which the applicant is a national, or

 (iii)  irrespective of the Contracting State of which the
applicant is a resident or national, with the International
Bureau.

 (b)  Any  Contracting  State  may  agree  with  another
Contracting State or any intergovernmental organization that
the  national  Office  of  the  latter  State  or  the
intergovernmental  organization  shall,  for  all  or  some
purposes, act instead of the national Office of the former
State as receiving Office for applicants who are residents
or nationals of that former State. Notwithstanding such
agreement, the national Office of the former State shall be
considered the competent receiving Office for the purposes
of Article 15(5).

 (c)  In connection with any decision made under Article
9(2), the Assembly shall appoint the national Office or the
intergovernmental organization which will act as receiving

Office for applications of residents or nationals of States
specified by the Assembly. Such appointment shall require
the  previous  consent  of  the  said  national  Office  or
intergovernmental organization.

  19.2  Two or More Applicants

 If there are two or more applicants,

 (i)  the requirements of Rule 19.1 shall be considered
to  be  met  if  the  national  Office  with  which  the
international application is filed is the national Office of
or acting for a Contracting State of which at least one of
the applicants is a resident or national;

 (ii)  the international application may be filed with the
International Bureau under Rule 19.1(a)(iii) if at least one
of the applicants is a resident or national of a Contracting
State.

  19.3  Publication of Fact of Delegation of Duties of
 Receiving Office

 (a)  Any agreement referred to in Rule 19.1(b) shall be
promptly  notified  to  the  International  Bureau  by  the
Contracting  State  which  delegates  the  duties  of  the
receiving Office to the national Office of or acting for
another  Contracting  State  or  an  intergovernmental
organization.

 (b)  The  International  Bureau  shall,  promptly  upon
receipt, publish the notification in the Gazette.

  19.4  Transmittal to the International Bureau as Receiving
  Office

 (a)  Where an international application is filed with a
national Office which acts as a receiving Ofice under the
Treaty by an applicant who is a resident or national of a
Contracting State, but that national Office is not competent
under Rule 19.1 or 19.2 to receive that international
application, that international application shall, subject
to paragraph (b), be considered to have been received by
that  Office  on  behalf  of  the  International  Bureau  as
receiving Office under Rule 19.1(a)(iii).

 (b)  Where, pursuant to paragraph (a), an international
application is received by a national Office on behalf of
the International Bureau as receiving Office under Rule
19.1(a)(iii),  that  national  Office  shall,  unless
prescriptions  concerning  national  security  prevent  the
international  application  from  being  so  transmitted,
promptly transmit it to the International Bureau. Such
transmittal may be subjected by the national Office to the
payment of a fee, for its own benefit, equal to the
transmittal fee charged by that Office under Rule 14. The
international application so transmitted shall be considered
to  have  been  received  by  the  International  Bureau  as
receiving Officeunder Rule 19.1(a)(iii) on the date of
receipt of the international application by that national
Office .

  Rule 20

 Receipt of the International Application

  20.1  Date and Number

 (a)  Upon  receipt  of  papers  purporting  to  be  an
international  application,  the  receiving  Office  shall
indelibly markmark the date of actual receipt on the request
of each copy received and the international application
number on each sheet of each copy received.

 (b)  The place on each sheet where the date or number
shall be marked, and other details, shall be specified in
the Administrative Instructions.

 20.2  Receipt on Different Days

 (a)  In cases where all the sheets pertaining to the
same purported international application are not received on
the same day by the receiving Office, that Office shall
correct the date marked on the request (still leaving
legible, however, the earlier date or dates already marked)
so that it indicates the day on which the papers completing
the international application were received, provided that

 (i) where no invitation under Article 11(2)(a) to correct
was sent to the applicant, the said papers are received
within 30 days from the date on which sheets were first
received;

 (ii) where an invitation under Article 11(2)(a) to correct
was sent to the applicant, the said papers are received
within the applicable time limit under Rule 20.6;

 (iii) in the case of Article 14(2), the missing drawings
are received within 30 days from the date on which the
incomplete papers were filed;

 (iv) the absence or later receipt of any sheet containing
the abstract or part thereof shall not, in itself, require
any correction of the date marked on the request.

 (b)  Any sheet received on a date later than the date on
which sheets were first received shall be marked by the
receiving Office with the date on which it was received.

  20.3  Corrected International Application

 In the case referred to in Article 11(2)(b), the receiving
Office shall correct the date marked on the request (still
leaving legible, however, the earlier date or dates already
marked) so that it indicates the day on which the last
required correction was received.

  bis
 20.3  [Deleted]

  20.4  Determination under Article 11(1)

 (a)  Promptly after receipt of the papers purporting to
be an international application, the receiving Office shall
determine whether the papers comply with the requirements of
Article 11(1).

 (b)  For the purposes of Article 11(1)(iii)(c), it shall
be sufficient to indicate the name of the applicant in a way
which allows his identity to be established even if the name

is misspelled, the given names are not fully indicated, or,
in the case of legal entities, the indication of the name is
abbreviated or incomplete.

 (c)  For the purposes of Article 11(1)(ii), it shall be
sufficient  that  the  elements  referred  to  in  Article
11(1)(iii)(d) and (e) be in a language admitted under Rule
12.1(a) or (c).

 (d)  If,  on  July  12,  1991,  paragraph  (c)  is  not
compatible with the national law applied by the receiving
Office, paragraph (c) shall not apply to that receiving
Office for as long as it continues not to be compatible with
that  law,  provided  that  the  said  Office  informs  the
International Bureau accordingly by December 31, 1991. The
information received shall be promptly published by the
International Bureau in the Gazette.

  20.5  Positive Determination

 (a)  If  the  determination  under  Article  11(1)  is
positive, the receiving Office shall stamp on the request
the  name  of  the  receiving  Office  and  the  words  "PCT
International Application," or "Demande internationale PCT."
If the official language of the receiving Office is neither
English nor French, the words "International Application" or
"Demande internationale" may be accompanied by a translation
of these words in the official language of the receiving
Office.

 (b)  The copy whose request has been so stamped shall be
the record copy of the international application.

 (c)  The receiving Office shall promptly notify the
applicant of the international application number and the
international filing date. At the same time, it shall send
to the International Bureau a copy of the notification sent
to the applicant, except where it has already sent, or is
sending  at  the  same  time,  the  record  copy  to  the
International Bureau under Rule 22.1(a).

  20.6  Invitation to Correct

 (a)  The invitation to correct under Article 11(2) shall
specify the requirement provided for under Article 11(1)
which, in the opinion of the receiving Office, has not been
fulfilled.

 (b)  The  receiving  Office  shall  promptly  mail  the
invitation to the applicant and shall fix a time limit,
reasonable under the circumstances of the case, for filing
the correction. The time limit shall not be less than 10
days, and shall not exceed one month, from the date of the
invitation. If such time limit expires after the expiration
of one year from the filing date of any application whose
priority is claimed, the receiving Office may call this
circumstance to the attention of the applicant.

  20.7  Negative Determination

 If the receiving Office does not, within the prescribed
time limit, receive a reply to its invitation to correct, or
if the correction offered by the applicant still does not
fulfill the requirements provided for under Article 11(1),
it shall:

 (i) promptly notify the applicant that his application is
not and will not be treated as an international application
and shall indicate the reasons therefor,

 (ii) notify the International Bureau that the number it has
marked on the papers will not be used as an international
application number,

  (iii)  keep  the  papers  constituting  the  purported
international application and any correspondence relating
thereto as provided in Rule 93.1, and

 (iv) send a copy of the said papers to the International
Bureau where, pursuant to a request by the applicant under
Article 25(1), the International Bureau needs such a copy
and specially asks for it.

  20.8  Error by the Receiving Office

  If the receiving Office later discovers, or on the basis
of the applicant's reply realizes, that it has erred in
issuing an invitation to correct since the requirements
provided forunder Article 11(1) were fulfilled when the
papers were received, it shall proceed as provided in Rule
20.5.

  20.9  Certified Copy for the Applicant

 Against payment of a fee, the receiving Office shall
furnish to the applicant, on request, certified copies of
the  international  application  as  filed  and  of  any
corrections thereto.

  Rule 21

 Preparation of Copies

  21.1  Responsibility of the Receiving Office

 (a)  Where the international application is required to
be  filed  in  one  copy,  the  receiving  Office  shall  be
responsible for preparing the home copy and the search copy
required under Article 12(1).

 (b)  Where the international application is required to
be filed in two copies, the receiving Office shall be
responsible for preparing the home copy.

 (c)  If the international application is filed in less
than the number of copies required under Rule 11.1(b), the
receiving  Office  shall  be  responsible  for  the  prompt
preparation of the number of copies required, and shall have
the right to fix a fee for performing that task and to
collect such fee from the applicant.

  Rule 22

 Transmittal of the Record Copy

  22.1 Procedure

 (a)  If  the  determination  under  Article  11(1)  is
positive,  and  unless  prescriptions  concerning  national
security prevent the international application from being

treated as such, the receiving Office shall transmit the
record copy to the International Bureau. Such transmittal
shall  be  effected  promptly  after  receipt  of  the
international  application  or,  if  a  check  to  preserve
national  security  must  be  performed,  as  soon  as  the
necessary clearance has been obtained. In any case, the
receiving Office shall transmit the record copy in time for
it to reach the International Bureau by the expiration of
the 13th month from the priority date. If the transmittal is
effected by mail, the receiving Office shall mail the record
copy not later than five days prior to the expiration of the
13th month from the priority date.

 (b)  If the International Bureau has received a copy of
the notification under Rule 20.5(c) but is not, by the
expiration  of  13  months  from  the  priority  date,  in
possession of the record copy, it shall remind the receiving
Office that it should transmit the record copy to the
International Bureau promptly.

 (c)  If the International Bureau has received a copy of
the notification under Rule 20.5(c) but is not, by the
expiration  of  14  months  from  the  priority  date,  in
possession of the record copy, it shall notify the applicant
and the receiving Office accordingly.

 (d)  After the expiration of 14 months from the priority
date, the applicant may request the receiving Office to
certify a copy of his international application as being
identical with the international application as filed and
may  transmit  such  certified  copy  to  the  International
Bureau.

 (e)  Any certification under paragraph (d) shall be free
of charge and may be refused only on any of the following
grounds:

 (i) the copy which the receiving Office has been requested
to  certify  is  not  identical  with  the  international
application as filed;

 (ii) prescriptions concerning national security prevent the
international application from being treated as such;

 (iii) the receiving Office has already transmitted the
record copy to the International Bureau and that Bureau has
informed the receiving Office that it has received the
record copy.

 (f)  Unless the International Bureau has received the
record copy, or until it receives the record copy, the copy
certified  under  paragraph  (e)  and  received  by  the
International Bureau shall be considered to be the record
copy.

 (g)  If, by the expiration of the time limit applicable
under Article 22, the applicant has performed the acts
referred to in that Article but the designated Office has
not been informed by the International Bureau of the receipt
of the record copy, the designated Office shall inform the
International Bureau. If the International Bureau is not in
possession of the record copy, it shall promptly notify the
applicant and the receiving Office unless it has already
notified them under paragraph (c).

  22.2 [Deleted]

  22.3  Time Limit under Article 12(3)

 The time limit referred to in Article 12(3) shall be three
months from the date of the notification sent by the
International Bureau to the applicant under Rule 22.1(c) or
(g).

  Rule 23

 Transmittal of the Search Copy

  23.1  Procedure

 (a)  The  search  copy  shall  be  transmitted  by  the
receiving Office to the International Searching Authority at
the latest on the same day as the record copy is transmitted
to the International Bureau unless no search fee has been
paid. In thelatter case, it shall be transmitted promptly
after payment of the search fee.

 (b)  [Deleted]

  Rule 24

 Receipt of the Record Copy by the International Bureau

  24.1  [Deleted]

  24.2  Notification of Receipt of the Record Copy

 (a)  The International Bureau shall promptly notify:

 (i) the applicant,

 (ii) the receiving Office, and

 (iii) the International Searching Authority (unless it has
informed the International Bureau that it wishes not to be
so notified), of the fact and the date of receipt of the
record  copy.  The  notification  shall  identify  the
international application by its number, the international
filing date and the name of the applicant, and shall
indicate the filing date of any earlier application whose
priority is claimed. The notification sent to the applicant
shall also contain a list of the States designated under
Rule 4.9(a) and, where applicable, of those States whose
designations have been confirmed under Rule 4.9(c).

 (b)  Each designated Office which has informed the
International  Bureau  that  it  wishes  to  receive  the
notification under paragraph (a) prior to the communication
under Rule 47.1 shall be so notified by the International
Bureau:

 (i) if the designation concerned was made under Rule
4.9(a), promptly after the receipt of the record copy;

 (ii) if the designation concerned was made under Rule
4.9(b), promptly after the International Bureau has been
informed by the receiving Office of the confirmation of that
designation.

 (c)  If the record copy is received after the expiration

of the time limit fixed in Rule 22.3, the International
Bureau shall promptly notify the applicant, the receiving
Office,  and  the  International  Searching  Authority,
accordingly.

  Rule 25

 Receipt of the Search Copy by the International Searching
Authority

  25.1 Notification of Receipt of the Search Copy

 The International Searching Authority shall promptly notify
the International Bureau, the applicant, and - unless the
International  Searching  Authority  is  the  same  as  the
receiving Office - the receiving Office, of the fact and the
date of receipt of the search copy.

  Rule 26

 Checking by, and Correcting before, the Receiving Office of
Certain Elements of the International Application

  26.1 Time Limit for Check

 (a)  The receiving Office shall issue the invitation to
correct  provided  for  in  Article  14(1)(b)  as  soon  as
possible, pref erably within one month from the receipt of
the international application.

 (b)  If the receiving Office issues an invitation to
correct the defect referred to in Article 14(1)(a)(iii) or
(iv) (missing title or missing abstract), it shall notify
the International Searching Authority accordingly.

  26.2 Time Limit for Correction

 The time limit referred to in Article 14(1)(b) shall be
reasonable under the circumstances and shall be fixed in
each case by the receiving Office. It shall not be less than
one month from the date of the invitation to correct. It may
be extended by the receiving Office at any time before a
decision is taken.

  26.3  Checking of Physical Requirements under Article
  14(1)(a)(v)

 The physical requirements referred to in Rule 11 shall be
checked only to the extent that compliance therewith is
necessary  for  the  purpose  of  reasonably  uniform
international publication.

  bis
  26.3  Invitation to Correct Defects under Article
  14(1)(b)

 The receiving Office shall not be required to issue the
invitation to correct a defect under Article 14(1)(a)(v)
where the physical requirements referred to in Rule 11 are
complied with to the extent necessary for the purpose of
reasonably un iform international publication.

  ter
  26.3  Invitation to Correct Defects under Article
  3(4)(i)

 (a)  Where any element of the international application,
other than those referred to in Article 11(1)(iii)(d) and
(e), does not comply with Rule 12.1, the receiving Office
shall invite the applicant to file the required correction.
Rules 26.1(a), 26.2, 26.5 and 29.1 shall apply mutatis
mutandis .

 (b)  If,  on  July  12,  1991,  paragraph  (a)  is  not
compatible with the national law applied by the receiving
Office, paragraph (a) shall not apply to that receiving
Office for as long as it continues not to be compatible with
that  law,  provided  that  the  said  Office  informs  the
International Bureau ac cordingly by December 31, 1991. The
information received shall be promptly published by the
International Bureau in the Gazette.

  26.4  Procedure

 (a)  Any correction offered to the receiving Office may
be stated in a letter addressed to that Office if the
correction is of such a nature that it can be transferred
from  the  letter  to  the  record  copy  without  adversely
affecting the clarity and the direct reproducibility of the
sheet on to which the correction is to be transferred;
otherwise, the applicant shall be required to submit a
replacement sheet embodying the correction and the letter
accompanying the replacement sheet shall draw attention to
the  differences  between  the  replaced  sheet  and  the
replacement sheet

 (b)  to (d)  [Deleted]

  26.5  Decision of the Receiving Office

 (a)  The  receiving  Office  shall  decide  whether  the
applicant has submitted the correction within the time limit
under Rule 26.2 and, if the correction has been submitted
within  that  time  limit,  whether  the  international
application so corrected is or is not to be considered
withdrawn, provided that no international application shall
be considered withdrawn for lack of compliance with the
physical requirements referred to in Rule 11 if it complies
with those requirements to the extent necessary for the
purpose of reasonably uniform international publication.

 (b)  [Deleted]

  26.6  Missing Drawings

 (a)  If, as provided in Article 14(2), the international
application  refers  to  drawings  which  in  fact  are  not
included in that application, the receiving Office shall so
indicate in the said application.

 (b)  The date on which the applicant receives the
notification provided for in Article 14(2) shall have no
effect on the time limit fixed under Rule 20.2(a)(iii).

  Rule 27

 Lack of Payment of Fees

  27.1  Fees

 (a)  For  the  purposes  of  Article  14(3)(a),  "fees

prescribed under Article 3(4)(iv)" means: the transmittal
fee (Rule 14), the basic fee part of the international fee
(Rule  15.1(i)),  the  search  fee  (Rule  16),  and,  where
  bis
required, the late payment fee (Rule 16  .2).

 (b)  For the purposes of Article 14(3)(a) and (b), "the
fee prescribed under Article 4(2)" means the designation fee
part of the international fee (Rule 15.1(ii)) and, where
  bis
required, the late payment fee (Rule 16  .2).

  Rule 28

 Defects Noted by the International Bureau

  28.1 Note on Certain Defects

 (a)  If, in the opinion of the International Bureau, the
international  application  contains  any  of  the  defects
referred to in Article 14(1)(a)(i), (ii), or (v), the
International  Bureau  shall  bring  such  defects  to  the
attention of the receiving Office.

 (b)  The receiving Office shall, unless it disagrees
with the said opinion, proceed as provided in Article
14(1)(b) and Rule 26.

  Rule 29

  International  Applications  or  Designations  Considered
Withdrawn under Article 14(1), (3), or (4)

  29.1  Finding by Receiving Office

 (a)  If the receiving Office declares, under Article
14(1)(b) and Rule 26.5 (failure to correct certain defects),
or under Article 14(3)(a) (failure to pay the prescribed
fees under Rule 27.1(a)), or under Article 14(4) (later
finding of noncompliance with the requirements listed in
items (i) to (iii) of Article 11(1)), that the international
application is considered withdrawn:

 (i)  the receiving Office shall transmit the record copy
(unless already transmitted), and any correction offered by
the applicant, to the International Bureau;

 (ii)  the receiving Office shall promptly notify both the
applicant  and  the  International  Bureau  of  the  said
declaration, and the International Bureau shall in turn
notify  each  designated  Office  which  has  already  been
notified of its designation ;

 (iii)  the receiving Office shall not transmit the search
copy as provided in Rule 23, or, if such copy has already
been  transmitted,  it  shall  notify  the  International
Searching Authority of the said declaration;

 (iv)  the International Bureau shall not be required to
notify the applicant of the receipt of the record copy.

 (b)  If the receiving Office declares under Article
14(3)(b) (failure to pay the prescribed designation fee
under Rule 27.1(b)) that the designation of any given State
is considered withdrawn, the receiving Office shall promptly
notify both the applicant and the International Bureau of

the said declaration. The International Bureau shall in turn
notify  each  designated  Office  which  has  already  been
notified of its designation.

  29.2 [Deleted]

  29.3  Calling Certain Facts to the Attention of the
 Receiving Office

 If the International Bureau or the International Searching
Authority considers that the receiving Office should make a
finding under Article 14(4), it shall call the relevant
facts to the attention of the receiving Office.

  29.4  Notification of Intent to Make Declaration under
  Article 14(4)

 Before the receiving Office issues any declaration under
Article 14(4), it shall notify the applicant of its intent
to issue such declaration and the reasons therefor. The
applicant may, if he disagrees with the tentative finding of
the receiving Office, submit arguments to that effect within
one month from the notification.

  Rule 30

  Time Limit under Article 14(4)

  30.1 Time Limit

 The time limit referred to in Article 14(4) shall be four
months from the international filing date.

  Rule 31

 Copies Required under Article 13

  31.1 Request for Copies

 (a)  Requests under Article 13(1) may relate to all,
some kinds of, or individual international applications in
which the national Office making the request is designated.
Requests  for  all  or  some  kinds  of  such  international
applications must be renewed for each year by means of a
notification addressed by that Office before November 30 of
the preceding year to the International Bureau.

 (b)  Requests under Article 13(2)(b) shall be subject to
the payment of a fee covering the cost of preparing and
mailing the copy.

  31.2 Preparation of Copies

 The preparation of copies required under Article 13 shall
be the responsibility of the International Bureau.

 Rule 32  [Deleted]

  bis  [Deleted]
  Rule 32

  Rule 33

 Relevant Prior Art for the International Search

  33.1 Relevant Prior Art for the International Search

 (a)  For the purposes of Article 15(2), relevant prior
art  shall  consist  of  everything  which  has  been  made
available to the public anywhere in the world by means of
written  disclosure  (including  drawings  and  other
illustrations) and which is capable of being of assistance
in determining that the claimed invention is or is not new
and that it does or does not involve an inventive step
(i.e., that it is or is not obvious), provided that the
making  available  to  the  public  occurred  prior  to  the
international filing date.

 (b)  When any written disclosure refers to an oral
disclosure, use, exhibition, or other means whereby the
contents of the written disclosure were made available to
the public, and such making available to the public occurred
on a date prior to the international filing date, the
international search report shall separately mention that
fact and the date on which it occurred if the making
available to the public of the written disclosure occurred
on a date which is the same as, or later than, the
international filing date.

 (c)  Any published application or any patent whose
publication date is the same as, or later than, but whose
filing date, or, where applicable, claimed priority date, is
earlier  than  the  international  filing  date  of  the
international  application  searched,  and  which  would
constitute relevant prior art for the purposes of Article
15(2) had it been published prior to the international
filing  date,  shall  be  specially  mentioned  in  the
international search report.

  33.2  Fields to Be Covered by the International Search

 (a)  The international search shall cover all those
technical fields, and shall be carried out on the basis of
all those search files, which may contain material pertinent
to the invention.

 (b)  Consequently, not only shall the art in which the
invention is classifiable be searched but also analogous
arts regardless of where classified.

 (c)  The question what arts are, in any given case, to
be regarded as analogous shall be considered in the light of
what appears to be the necessary essential function or use
of  the  invention  and  not  only  the  specific  functions
expressly indicated in the international application.

 (d)  The international search shall embrace all subject
matter that is generally recognized as equivalent to the
subject matter of the claimed invention for all or certain
of  its  features,  even  though,  in  its  specifics,  the
invention as described in the international application is
different.

 33.3  Orientation of the International Search

 (a)  International search shall be made on the basis of
the claims, with due regard to the description and the
drawings (if any) and with particular emphasis on the
inventive concept towards which the claims are directed.

 (b)  In  so  far  as  possible  and  reasonable,  the
international search shall cover the entire subject matter
to which the claims are directed or to which they might
reasonably be expected to be directed after they have been
amended .

  Rule 34

 Minimum Documentation

  34.1  Definition

 (a)  The definitions contained in Article 2(i) and (ii)
shall not apply for the purposes of this Rule.

 (b)  The documentation referred to in Article 15(4)
("minimum documentation") shall consist of:

  (i)  the  "national  patent  documents"  as  specified  in
paragraph (c),

 (ii)  the published international (PCT) applications, the
published regional applications for patents and inventors'
certifi  cates,  and  the  published  regional  patents  and
inventors' certificates,

 (iii) such other published items of nonpatent literature as
the International Searching Authorities shall agree upon and
which shall be published in a list by the International
Bureau when agreed upon for the first time and whenever
changed.

 (c)  Subject to paragraphs (d) and (e), the "national
patent documents" shall be the following:

 (i)  the patents issued in and after 1920 by France, the
former Reichspatentamt of Germany, Japan, the Soviet Union,
Switzerland (in French and German languages only), the
United Kingdom, and the United States of America,

 (ii)  the patents issued by the Federal Republic of
Germany,

 (iii)  the patent applications, if any, published in and
after 1920 in the countries referred to in items (i) and
(ii),

 (iv)  the inventors' certificates issued by the Soviet
Union,

 (v)  the  utility  certificates  issued  by,  and  the
published applications for utility certificates of, France,

 (vi)  such  patents  issued  by,  and  such  patent
applications published in, any other country after 1920 as
are in the English, French, German, or Spanish language and
in which no priority is claimed, provided that the national
Office of the interested country sorts out these documents
and places them at the disposal of each International
Searching Authority.

 (d)  Where an application is republished once (for
example, an Offenlegungsschrift as an Auslegeschrift) or
more than once, no International Searching Authority shall
be obliged to keep all versions in its documentation;

consequently, each such Authority shall be entitled not to
keep  more  than  one  version.  Furthermore,  where  an
application is granted and is issued in the form of a patent
or  a  utility  certificate  (France),  no  International
Searching Authority shall be obliged to keep both the
application and the patent or utility certificate (France)
in its documentation; consequently, each such Authority
shall be entitled to keep either the application only or the
patent or utility certificate (France) only.

 (e)  Any  International  Searching  Authority  whose
official language, or one of whose official languages, is
not Japanese, Russian, or Spanish is entitled not to include
in its documentation those patent documents of Japan and the
Soviet Union as well as those patent documents in the
Spanish language, respectively, for which no abstracts in
the  English  language  are  generally  available.  English
abstracts becoming generally available after the date of
entry into force of these Regulations shall require the
inclusion of the patent documents to which the abstracts
refer no later than six months after such abstracts become
generally  available.  In  case  of  the  in  terruption  of
abstracting services in English in technical fields in which
English abstracts were formerly generally available, the
Assembly shall take appropriate measures to provide for the
prompt restoration of such services in the said fields.

 (f)  For the purposes of this Rule, applications which
have only been laid open for public inspection are not
considered published applications.

  Rule 35

 The Competent International Searching Authority

  35.1  When Only One International Searching Authority Is
  Competen t

 Each receiving Office shall, in accordance with the terms
of the applicable agreement referred to in Article 16(3)(b),
inform  the  International  Bureau  which  International
Searching Authority is competent for the searching of the
international  applications  filed  with  it,  and  the
International Bureau shall promptly publish such information
.

  35.2  When Several International Searching Authorities Are
  Competent

 (a)  Any receiving Office may, in accordance with the
terms of the applicable agreement referred to in Article
16(3)(b),  specify  several  International  Searching
Authorities:

 (i)  by  declaring  all  of  them  competent  for  any
international application filed with it, and leaving the
choice to the applicant, or

 (ii) by declaring one or more competent for certain kinds
of international applications filed with it, and declaring
one  or  more  others  competent  for  other  kinds  of
international applications filed with it, provided that, for
those kinds of international applications for which several
International Searching Authori ties are declared to be
competent, the choice shall be left to the applicant.

 (b)  Any  receiving  Office  availing  itself  of  the
facultyprovided in paragraph (a) shall promptly inform the
International Bureau, and the International Bureau shall
promptly publish such information .

  35.3  When the International Bureau Is Receiving Office
  Under Rule 19.1(a)(iii)

 (a)  Where the international application is filed with
the  International  Bureau  as  receiving  Office  under
Rule19.1(a)(iii), an International Searching Authority shall
be  competent  for  the  searching  of  that  international
application  if  it  would  have  been  competent  had  that
international application been filed with a receiving Office
competent under Rule 19.1(a)(i) or (ii), (b) or (c), or Rule
19.2(i).

 (b)  Where  two  or  more  International  Searching
Authorities are competent under paragraph (a), the choice
shall be left to the applicant.

 (c)  Rules  35.1  and  35.2  shall  not  apply  to  the
International  Bureau  as  receiving  Office  under  Rule
19.1(a)(iii).

  Rule 36

  Minimum  Requirements  for  International  Searching
Authorities

  36.1  Definition of Minimum Requirements

 The minimum requirements referred to in Article 16(3)(c)
shall be the following:

 (i) the national Office or intergovernmental organization
must have at least 100 full - time employees with sufficient
technical qualifications to carry out searches;

  (ii)  that  Office  or  organization  must  have  in  its
possession,  or  have  access  to,  at  least  the  minimum
documentation referred to in Rule 34, properly arranged for
search  purposes,  on  paper,  in  microform  or  stored  on
electronic media;

 (iii) that Office or organization must have a staff which
is capable of searching the required technical fields and
which has the language facilities to understand at least
those languages in which the minimum documentation referred
to in Rule 34 is written or is translated.

  Rule 37

 Missing or Defective Title

  37.1  Lack of Title

 If the international application does not contain a title
and the receiving Office has notified the International
Searching Authority that it has invited the applicant to
correct such defect, the International Searching Authority
shall proceed with the international search unless and until
it  receives  notification  that  the  said  application  is
considered withdrawn.

  37.2  Establishment of Title

 If the international application does not contain a title
and the International Searching Authority has not received a
notification from the receiving Office to the effect that
the applicant has been invited to furnish a title, or if the
said Authority finds that the title does not comply with
Rule 4.3, it shall itself establish a title. Such title
shall  be  established  in  the  language  in  which  the
international application is published or, if a translation
was transmitted under Rule 12.1(c) and the International
Searching Authority so wishes, in the language of that
translation.

  Rule 38

 Missing or Defective Abstract

  38.1  Lack of Abstract

 If the international application does not contain an
abstract  and  the  receiving  Office  has  notified  the
International Searching Authority that it has invited the
applicant to correctsuch defect, the International Searching
Authority shall proceed with the international search unless
and until it receives notification that the said application
is considered withdrawn.

 38.2  Establishment of Abstract

 (a)  If the international application does not contain
an abstract and the International Searching Authority has
not received a notification from the receiving Office to the
effect that the applicant has been invited to furnish an
abstract, or if the said Authority finds that the abstract
does not comply with Rule 8, it shall itself establish an
abstract. Such abstract shall be established in the language
in which the international application is published or, if a
translation was transmitted under Rule 12.1(c) and the
International Searching Authority so wishes, in the language
of that translation.

 (b)  The applicant may, within one month from the date
of  mailing  of  the  international  search  report,  submit
comments on the abstract established by the International
Searching  Authority.  Where  that  Authority  amends  the
abstract established by it, it shall notify the amendment to
the International Bureau.

  Rule 39

 Subject Matter Under Article 17(2)(a)(i)

  39.1  Definition

 No International Searching Authority shall be required to
search an international application if, and to the extent to
which, its subject matter is any of the following:

 (i) scientific and mathematical theories,

 (ii) plant or animal varieties or essentially biological
processes for the production of plants and animals, other
than microbiological processes and the products of such

processes,

  (iii)  schemes,  rules,  or  methods  of  doing  business,
performing purely mental acts or playing games,

 (iv) methods for treatment of the human or animal body by
surgery or therapy, as well as diagnostic methods,

 (v) mere presentations of information,

 (vi) computer programs to the extent that the International
Searching Authority is not equipped to search prior art
concerning such programs.

  Rule 40

 Lack of Unity of Invention (International Search)

  40.1  Invitation to Pay

 The invitation to pay additional fees provided for in
Article 17(3)(a) shall specify the reasons for which the
inter national application is not considered as complying
with  the  requirement  of  unity  of  invention  and  shall
indicate the amount to be paid.

  40.2 Additional Fees

 (a)  The amount of the additional fee due for searching
under  Article  17(3)(a)  shall  be  determined  by  the
competentInternational Searching Authority.

 (b)  The additional fee due for searching under Article
17(3)(a)  shall  be  payable  direct  to  the  International
Searching Authority.

 (c)  Any applicant may pay the additional fee under
protest, that is, accompanied by a reasoned statement to the
effect that the international application complies with the
requirement of unity of invention or that the amount of the
required additional fee is excessive. Such protest shall be
examined by a three - member board or other special instance
of the International Searching Authority or any competent
higher authority, which, to the extent that it finds the
protest  justified,  shall  order  the  total  or  partial
reimbursement to the applicant of the additional fee. On the
request of the applicant, the text of both the protest and
the decision thereon shall be notified to the designated
Offices together with the international search report. The
applicant shall submit any translation thereof with the
furnishing  of  the  translation  of  the  international
application required under Article 22.

 (d)  The three - member board, special instance or
competent higher authority, referred to in paragraph (c),
shall not comprise any person who made the decision which is
the subject of the protest.

 (e)  Where the applicant has, under paragraph (c), paid
an additional fee under protest, the International Searching
Authority may, after a prior review of the justification for
the invitation to pay an additional fee, require that the
applicant pay a fee for the examination of the protest
("protest fee"). The protest fee shall be paid within one
month from the date of the notification to the applicant of

the result of the review. If the protest fee is not so paid,
the protest shall be considered withdrawn. The protest fee
shall be refunded to the applicant where the three - member
board, special instance or higher authority referred to in
paragraph (c) finds that the protest was entirely justified.

  40.3  Time Limit

 The time limit provided for in Article 17(3)(a) shall be
fixed, in each case, according to the circumstances of the
case, by the International Searching Authority; it shall not
be shorter than 15 or 30 days, respectively, depending on
whether the applicant's address is in the same country as or
in a different country from that in which the International
Searching Authority is located, and it shall not be longer
than 45 days, from the date of the invitation.

  Rule 41

 Earlier Search Other Than International Search

 41.1  Obligation to Use Results; Refund of Fee

 If reference has been made in the request, in the form
provided for in Rule 4.11, to an international - type search
carried out under the conditions set out in Article 15(5) or
to a search other than an international or international -
type search, the International Searching Authority shall, to
the extent possible, use the results of the said search in
establishing  the  international  search  report  on  the
international  application.  The  International  Searching
Authority shall refund the search fee, to the extent and
under the conditions provided for in the agreement under
Article 16(3)(b) or in a communication addressed to and
published in the Gazette by the International Bureau, if the
international search report could wholly or partly be based
on the results of the said search.

  Rule 42

 Time Limit for International Search

  42.1  Time Limit for International Search

 The time limit for establishing the international search
report or the declaration referred to in Article 17(2)(a)
shall be three months from the receipt of the search copy by
the International Searching Authority, or nine months from
the priority date, whichever time limit expires later.

  Rule 43

 The International Search Report

  43.1  Identifications

  The  international  search  report  shall  identify  the
International Searching Authority which established it by
indicating the name of such Authority, and the international
application  by  indicating  the  international  application
number, the name of the applicant, and the international
filing date.

  43.2  Dates

  The  international  search  report  shall  be  dated  and
shallindicate the date on which the international search was
actually completed. It shall also indicate the filing date
of any earlier application whose priority is claimed or, if
the  priority  of  more  than  one  earlier  application  is
claimed, the filing date of the earliest among them.

  43.3  Classification

 (a)  The international search report shall contain the
classification of the subject matter at least according to
the International Patent Classification.

 (b)  Such  classification  shall  be  effected  by  the
International Searching Authority.

  43.4  Language

 Every international search report and any declaration made
under Article 17(2)(a) shall be in the language in which the
international application to which it relates is published
or, if a translation was transmitted under Rule 12.1(c) and
the International Searching Authority so wishes,, in the
language of that translation.

  43.5  Citations

 (a)  The international search report shall contain the
citations of the documents considered to be relevant.

 (b)  The method of identifying any cited document shall
be regulated by the Administrative Instructions.

 (c)  Citations  of  particular  relevance  shall  be
specially indicated.

 (d)  Citations which are not relevant to all the claims
shall be cited in relation to the claim or claims to which
they are relevant.

 (e)  If only certain passages of the cited document are
relevant or particularly relevant, they shall be identified,
for example, by indicating the page, the column, or the
lines, where the passage appears. If the entire document is
relevant but some passages are of particular relevance, such
passages shall be identified unless such identification is
not practicable.

  43.6  Fields Searched

 (a)  The international search report shall list the
classification identification of the fields searched. If
that  identification  is  effected  on  the  basis  of  a
classification  other  than  the  International  Patent
Classification, the International Searching Authority shall
publish the classification used.

 (b)  If the international search extended to patents,
inventors'  certificates,  utility  certificates,  utility
models, patents or certificates of addition, inventors'
certificates of addition, utility certificates of addition,
or  published  applications  for  any  of  those  kinds  of
protection, of States, periods, or languages, not included
in the minimum documentation as defined in Rule 34, the
international  search  report  shall,  when  practicable,

identify the kinds of documents, the States, the periods,
and the languages to which it extended. For the purposes of
this paragraph, Article 2(ii) shall not apply.

 (c)  If the international search was based on, or was
extended to, any electronic data base, the international
search report may indicate the name of the data base and,
where considered useful to others and practicable, the
search terms used.

  43.7  Remarks Concerning Unity of Invention

 If the applicant paid additional fees for the international
search, the international search report shall so indicate.
Fur thermore, where the international search was made on the
main invention only or on less than all the inventions
(Article 17(3)(a)), the international search report shall
indicate what parts of the international application were
and what parts were not searched.

  43.8 Authorized Officer

 The international search report shall indicate the name of
the  officer  of  the  International  Searching  Authority
responsible for that report.

  43.9 Additional Matter

 The international search report shall contain no matter
other than that specified in Rules 33.1(b) and (c), 43.1 to
43.3, 43.5 to 43.8, and 44.2(a), and the indication referred
to in Article 17(2)(b), provided that the Administrative
Instructions may permit the inclusion in the international
search report of any additional matter specified in the
Administrative Instructions. The international search report
shall not contain, and the Administrative Instructions shall
not permit the inclusion of, any expressions of opinion,
reasoning, arguments, or explanations.

  43.10 Form

  The  physical  requirements  as  to  the  form  of  the
international search report shall be prescribed by the
Administrative Instructions.

  Rule 44

 Transmittal of the International Search Report, etc.

  44.1 Copies of Report or Declaration

 The International Searching Authority shall, on the same
day, transmit one copy of the international search report or
the declaration referred to in Article 17(2)(a) to the
International Bureau and one copy to the applicant.

  44.2 Title or Abstract

 (a)  The international search report shall either state
that the International Searching Authority approves the
title and the abstract as submitted by the applicant or be
accompanied by the text of the title and/or abstract as
established by the International Searching Authority under
Rules 37 and 38.

 (b) and (c)  [Deleted]

  44.3 Copies of Cited Documents

 (a)  The request referred to in Article 20(3) may be
presented any time during seven years from the international
filing date of the international application to which the
international search report relates.

 (b)  The International Searching Authority may require
that the party (applicant or designated Office) presenting
the request pay to it the cost of preparing and mailing the
copies. The level of the cost of preparing copies shall be
provided for in the agreements referred to in Article
16(3)(b) between theInternational Searching Authorities and
the International Bureau.

 (c)  [Deleted]

 (d)  Any International Searching Authority may perform
the obligations referred to in paragraphs (a) and (b)
through another agency responsible to it.

  Rule 45

 Translation of the International Search Report

  45.1 Languages

 International search reports and declarations referred to
in  Article  17(2)(a)  shall,  when  not  in  English,  be
translated into English.

  Rule 46

 Amendment of Claims Before the International Bureau

  46.1 Time Limit

 The time limit referred to in Article 19 shall be two
months from the date of transmittal of the international
search  report  to  the  International  Bureau  and  to  the
applicant by the International Searching Authority or 16
months from the priority date, whichever time limit expires
later, provided that any amendment made under Article 19
which is received by the International Bureau after the
expiration of the applicable time limit shall be considered
to have been received by that Bureau on the last day of that
time  limit  if  it  reaches  it  before  the  technical
preparations  for  international  publication  have  been
completed.

 46.2 Where to File

 Amendments made under Article 19 shall be filed directly
with the International Bureau.

  46.3 Language of Amendments

 If the international application has been filed in a
language other than the language in which it is published,
any amendment made under Article 19 shall be in the language
of publication.

  46.4 Statement

 (a)  The statement referred to in Article 19(1) shall be
in the language in which the international application is
published and shall not exceed 500 words if in the English
language or if translated into that language. The statement
shall be identified as such by a heading, preferably by
using the words "Statement under Article 19(1)" or their
equivalent in the language of the statement.

 (b)  The statement shall contain no disparaging comments
on the international search report or the relevance of of
citations contained in that report. Reference to citations,
relevant to a given claim, contained in the international
search report may be made only in connection with an
amendment of that claim.

  46.5 Form of Amendments

 (a)  The  applicant  shall  be  required  to  submit  a
replacement sheet for every sheet of the claims which, on
account of an amendment or amendments under Article 19,
differs  from  the  sheet  originally  filed.  The  letter
accompanying the replacement sheets shall draw attention to
the  differences  between  the  replaced  sheets  and  the
replacement sheets. To the extent that any amendment results
in the cancellation of an entire sheet, that amendment shall
be communicated in a letter.

 (b)  and (c)  [Deleted]

  Rule 47

 Communication to Designated Offices

  47.1 Procedure

 (a)  The communication provided for in Article 20 shall
be effected by the International Bureau.

  bis
  (a  )  The  International  Bureau  shall  notify  each
designated Office, at the time of the communication provided
for in Article 20, of the fact and date of receipt of the
record copy and of the fact and date of receipt of any
priority document. Such notification shall also be sent to
any designated Office which has waived the communication
provided for in Article 20, unless such Office has also
waived the notification of its designation.

 (b)  Such communication shall be effected promptly after
the  international  publication  of  the  international
application and, in any event, by the end of the 19th month
after the priority date. Any amendment received by the
International Bureau within the time limit under Rule 46.1
which  was  not  included  in  the  communication  shall  be
communicated promptly to the designated Offices by the
International  Bureau,  and  the  latter  shall  notify  the
applicant accordingly.

 (c)  The International Bureau shall send a notice to the
applicant  indicating  the  designated  Offices  to  which
thecommunication has been effected and the date of such
communication. Such notice shall be sent on the same day as
the communication. Each designated Office shall be informed,
separately from the communication, about the sending and the

date of mailing of the notice. The notice shall be accepted
by all designated Offices as conclusive evidence that the
communication has duly taken place on the date specified in
the notice.

 (d)  Each designated Office shall, when it so requires,
receive  the  international  search  reports  and  the
declarations referred to in Article 17(2)(a) also in the
translation referred to in Rule 45.1.

 (e)  Where  any  designated  Office  has  waived  the
requirement provided under Article 20, the copies of the
documents which otherwise would have been sent to that
Office  shall,  at  the  request  of  that  Office  or  the
applicant, be sent to the applicant at the time of the
notice referred to in paragraph (c).

  47.2 Copies

 (a)  The copies required for communication shall be
prepared by the International Bureau.

 (b)  They shall be on sheets of A4 size.

 (c)  Except to the extent that any designated Office
notifies the International Bureau otherwise, copies of the
pamphlet under Rule 48 may be used for the purposes of the
communication of the international application under Article
20.

  47.3 Languages

 The international application communicated under Article 20
shall be in the language in which it is published provided
that if that language is different from the language in
which  it  was  filed  it  shall,  on  the  request  of  the
designated Office, be communicated in either or both of
these languages.

  47.4 Express Request under Article 23(2)

  Where  the  applicant  makes  an  express  request  to  a
designated  Office  under  Article  23(2)  before  the
communication provided for in Article 20 has taken place,
the  International  Bureau  shall,  upon  request  of  the
applicant or the designated Office, promptly effect that
communication to that Office.

  Rule 48

 International Publication

  48.1 Form

 (a) The international application shall be published in the
form of a pamphlet.

 (b) The particulars regarding the form of the pamphlet and
the  method  of  reproduction  shall  be  governed  by  the
Administrative Instructions .

  48.2 Contents

 (a)  The pamphlet shall contain:

 (i) a standardized front page,

 (ii) the description,

 (iii) the claims,

 (iv) the drawings, if any,

 (v) subject to paragraph (g), the international search
report  or  the  declaration  under  Article  17(2)(a);  the
publication  of  the  international  search  report  in  the
pamphlet shall, however, not be required to include the part
of the international search report which contains only
matter referred to in Rule 43 already appearing on the front
page of the pamphlet,

 (vi) any statement filed under Article 19(1), unless the
International Bureau finds that the statement does not
comply with the provisions of Rule 46.4,

 (vii) any request for rectification referred to in the
third sentence of Rule 91.1(f),

  (viii)  any  indications  in  relation  to  a  deposited
  bis
microorganism furnished under Rule 13  separately from the
description, together with an indication of the date on
which the International Bureau received such indications.

 (b)  Subject to paragraph (c), the front page shall
include:

 (i) data taken from the request sheet and such other data
as are prescribed by the Administrative Instructions,

  (ii)  a  figure  or  figures  where  the  international
application contains drawings, unless Rule 8.2(b) applies,

 (iii) the abstract; if the abstract is both in English and
in another language, the English text shall appear first.

 (c)  Where a declaration under Article 17(2)(a) has
issued, the front page shall conspicuously refer to that
fact and need include neither a drawing nor an abstract.

 (d)  The figure or figures referred to in paragraph
(b)(ii)  shall  be  selected  as  provided  in  Rule  8.2.
Reproduction of such figure or figures on the front page may
be in a reduced form .

 (e)  If there is not enough room on the front page for
the totality of the abstract referred to in paragraph
(b)(iii), the said abstract shall appear on the back of the
front page. The same shall apply to the translation of the
abstract when such translation is required to be published
under Rule 48.3(c).

 (f)  If the claims have been amended under Article 19,
the publication shall contain either the full text of the
claims both as filed and as amended or the full text of the
claims as filed and specify the amendments. Any statement
referred to in Article 19(1) shall be included as well,
unless the International Bureau finds that the statement
does not comply with the provisions of Rule 46.4. The date
of receipt of the amended claims by the International Bureau

shall be indicated.

 (g)  If, at the time of the completion of the technical
preparations  for  international  publication,  the
international  search  report  is  not  yet  available  (for
example, because of publication on the request of the
applicant as provided in Articles 21(2)(b) and 64(3)(c)(i)),
the pamphlet shall contain, in place of the international
search report, an indication to the effect that that report
was not available and that either the pamphlet (then also
including  the  i  nternational  searchreport)  will  be
republished or the international search report (when it
becomes available) will be separately published.

 (h)  If, at the time of the completion of the technical
preparations for international publication, the time limit
for amending the claims under Article 19 has not expired,
the pamphlet shall refer to that fact and indicate that,
should  the  claims  be  amended  under  Article  19,  then,
promptly  after  such  amendments,  either  the  pamphlet
(containing the claims as amended) will be republished or
astatement reflecting all the amendments will be published.
In the latter case, at least the front page and the claims
shall be republished and, if a statement under Article 19(1)
has been filed, that statement shall be published as well,
unless the International Bureau finds that the statement
does not comply with the provisions of Rule 46.4.

 (i)  The Administrative Instructions shall determine the
cases in which the various alternatives referred to in
paragraphs (g) and (h) shall apply. Such determination shall
depend on the volume and complexity of the amendments and/or
the volume of the international application and the cost
factors.

  48.3 Languages

 (a)  If  the  international  application  is  filed  in
Chinese, English, French, German, Japanese, Russian, or
Spanish, that application shall be published in the language
in which it was filed.

 (b)  If the international application is filed in a
language  other  than  Chinese,  English,  French,  German,
Japanese, Russian, or Spanish, that application shall be
published in English translation. The translation shall be
prepared  under  the  responsibility  of  the  International
Searching Authority, which shall be obliged to have it ready
in  time  to  permit  international  publication  by  the
prescribed date, or, where Article 64(3)(b) applies, to
permit the communication under Article 20 by the end of the
19th month after the priority date. Notwithstanding Rule
16.1(a), the International Searching Authority may charge a
fee for the translation to the applicant. The International
Searching Authority shall give the applicant an opportunity
to comment on the draft translation. The International
Searching Authority shall fix a time limit reasonable under
the circumstances of the case for such comments. If there is
no time to take the comments of the applicant into account
before the translation is communicated or if there is a
difference of opinion between the applicant and the said
Authority as to the correct translation, the applicant may
send a copy of his comments, or what remains of them, to the
International Bureau and each designated Office to which the
translation was communicated. The International Bureau shall

publish the essence of the comments together with the
translation of the International Searching Authority or
subsequently to the publication of such translation.

 (c)  If the international application is published in a
language other than English, the international search report
to the extent that it is published under Rule 48.2(a)(v), or
the declaration referred to in Article 17(2)(a), the title
of  the  invention,  the  abstract  and  any  text  matter
pertaining  to  the  figure  or  figures  accompanying  the
abstract shall be published both in that language and in
English.  The  translations  shall  be  prepared  under  the
responsibility of the International Bureau.

  48.4  Earlier Publication on the Applicant's Request

 (a)  Where the applicant asks for publication under
Articles 21(2)(b) and 64(3)(c)(i) and the international
search report, or the declaration referred to in Article
17(2)(a), is not yet available for publication together with
the  international  application,  the  International  Bureau
shall collect a special publication fee whose amount shall
be fixed in the Administrative Instructions .

 (b)  Publication under Articles 21(2)(b) and 64(3)(c)(i)
shall be effected by the International Bureau promptly after
the applicant has asked for it and, where a special fee is
due under paragraph (a), after receipt of such fee.

  48.5 Notification of National Publication

 Where the publication of the international application by
the  International  Bureau  is  governed  by  Article
64(3)(c)(ii), the national Office concerned shall, promptly
after effecting the national publication referred to in the
said provision, notify the International Bureau of the fact
of such national publication.

 48.6 Announcing of Certain Facts

 (a)  If any notification under Rule 29.1(a)(ii) reaches
the International Bureau at a time later than that at which
it was able to prevent the international publication of the
ininternational application, the International Bureau shall
promptly publish a notice in the Gazette reproducing the
essence of such notification.

 (b)  [Deleted]

 (c)  If the international application, the designation
of any designated State or the priority claim is withdrawn
  bis
under  Rule  90  after  the  technical  preparations  for
international publication have been completed, notice of the
withdrawal shall be published in the Gazette.

  Rule 49

 Copy, Translation and Fee under Article 22

 49.1 Notification

 (a)  Any Contracting State requiring the furnishing of a
translation or the payment of a national fee, or both, under
Article 22, shall notify the International Bureau of:

 (i) the languages from which and the language into which it
requires translation,

 (ii) the amount of the national fee.

  bis
 (a  ) Any Contracting State not requiring the furnishing,
under Article 22, by the applicant of a copy of the
international application (even though the communication of
the  copy  of  the  international  application  by  the
International Bureau under Rule 47 has not taken place by
the expiration of the time limit applicable under Article
22) shall notify the International Bureau accordingly.

  ter
 (a  ) Any Contracting State which, pursuant to Article
24(2), maintains, if it is a designated State, the effect
provided for in Article 11(3) even though a copy of the
international application is not furnished by the applicant
by the expiration of the time limit applicable under Article
22 shall notify the International Bureau accordingly.

 (b)  Any notification received by the International
  bis ter
Bureau under paragraphs (a), (a  ) or (a  ) shall be
promptly  published  by  the  International  Bureau  in  the
Gazette.

 (c)  If the requirements under paragraph (a) change
later, such changes shall be notified by the Contracting
State to the International Bureau and that Bureau shall
promptly publish the notification in the Gazette. If the
change means that translation is required into a language
which, before the change, was not required, such change
shall  be  effective  only  with  respect  to  international
applications  filed  later  than  two  months  after  the
publication of the notification in the Gazette. Otherwise,
the effective date of any change shall be determined by the
Contracting State.

  49.2 Languages

 The language into which translation may be required must be
an official language of the designated Office. If there are
several of such languages, no translation may be required if
the international application is in one of them. If there
are several official languages and a translation must be
furnished, the applicant may choose any of those languages.
Notwithstanding the foregoing provisions of this paragraph,
if there are several official languages but the national law
prescribes the use of one such language for foreigners, a
translation into that language may be required.

  49.3 . . Statements under Article 19; Indications under
  bis
  Rule 13  .4

 For the purposes of Article 22 and the present Rule, any
statement made under Article 19(1) and any indication fur
  bis
nished under Rule 13  .4 shall, subject to Rule 49.5(c) and
(h), be considered part of the international application.

  49.4 Use of National Form

 No applicant shall be required to use a national form when
performing the acts referred to in Article 22.

  49.5  Contents of and Physical Requirements for the
  Translation

 (a) For the purposes of Article 22, the translation of the
international application shall contain the description, the
claims, any text matter of the drawings, and the abstract.
If required by the designated Office, the translation shall
  bis
also, subject to paragraphs (b), (c  ) and (e),

 (i) contain the request,

 (ii) if the claims have been amended under Article 19,
contain both the claims as filed and the claims as amended,
and

 (iii) be accompanied by a copy of the drawings.

 (b)  Any designated Office requiring the furnishing of a
translation of the request shall furnish copies of the
request form in the language of the translation free of
charge to the applicants. The form and contents of the
request form in the language of the translation shall not be
different from those of the request under Rules 3 and 4; in
particular,  the  request  form  in  the  language  of  the
translation shall not ask for any information that is not in
the request as filed. The use of the request form in the
language of the translation shall be optional.

 (c)  Where the applicant did not furnish a translation
of any statement made under Article 19(1), the designated
Office may disregard such statement.

  bis
 (c  ) Where the applicant furnishes, to a designated
Office which requires under paragraph (a)(ii) a translation
of both the claims as filed and the claims as amended, only
one of the required two translations, the designated Office
may disregard the claims of which a translation has not been
furnished or invite the applicant to furnish the missing
translation within a time limit which shall be reasonable
under  the  circumstances  and  shall  be  fixed  in  the
invitation. Where the designated Office chooses to invite
the applicant to furnish the missing translation and the
latter is not furnished within the time limit fixed in the
invitation, the designated Office may disregard those claims
of which a translation has not been furnished or consider
the international application withdrawn.

 (d)  If  any  drawing  contains  text  matter,  the
translation of that text matter shall be furnished either in
the form of a copy of the original drawing with the
translation pasted on the original text matter or in the
form of a drawing executed anew.

 (e)  Any designated Office requiring under paragraph (a)
the furnishing of a copy of the drawings shall, where the
applicant failed to furnish such copy within the time limit
applicable under Article 22, invite the applicant to furnish
such copy within a time limit which shall be reasonable
under  the  circumstances  and  shall  be  fixed  in  the
invitation.

 (f)  The expression "Fig." does not require translation
into any language.

 (g)  Where any copy of the drawings or any drawing
executed anew which has been furnished under paragraph (d)
or (e) does not comply with the physical requirereferred to
in Rule 11, the designated Office may invite the applicant
to correct the defect within a time limit which shall be
reasonable under the circumstances and shall be fixed in the
invitation.

 (h)  Where the applicant did not furnish a translation
of the abstract or of any indication furnished under Rule
  bis
13  .4 , the designated Office shall invite the applicant
to furnish such translation, if it deems it to be necessary,
within a time limit which shall be reasonable under the
circumstances and shall be fixed in the invitation.

 (i)  Information on any requirement and practice of
designated Offices under the second sentence of paragraph
(a) shall be published by the International Bureau in the
Gazette.

 (j)  No  designated  Office  shall  require  that  the
translation of the international application comply with
physical requirements other than those prescribed for the
international application as filed .

 (k)  Where  a  title  has  been  established  by  the
International Searching Authority pursuant to Rule 37.2, the
translation shall contain the title as established by that
Authority.

 bis
 (1)  If, on July 12, 1991, paragraph (c  ) or paragraph
(k) is not compatible with the national law applied by the
designated Office, the paragraph concerned shall not apply
to that designated Office for as long as it continues not to
be compatible with that law, provided that the said Office
informs the International Bureau accordingly by December 31,
1991. The information received shall be promptly published
by the International Bureau in the Gazette.

  Rule 50

 Faculty under Article 22(3)

  50.1 Exercise of Faculty

 (a)  Any  Contracting  State  allowing  a  time  limit
expiring later than the time limits provided for in Article
22(1) or (2) shall notify the International Bureau of the
time lim its so fixed.

 (b)  Any notification received by the International
Bureau under paragraph (a) shall be promptly published by
the International Bureau in the Gazette.

 (c)  Notifications concerning the shortening of the
previously fixed time limit shall be effective in relation
to international applications filed after the expiration of
three  months  computed  from  the  date  on  which  the
notification was published by the International Bureau.

 (d)  Notifications concerning the lengthening of the
previously fixed time limit shall become effective upon
publication by the International Bureau in the Gazette in

respect of international applications pending at the time or
filed after the date of such publication, or, if the
Contracting State effecting the notification fixes some
later date, as from the latter date.

  Rule 51

 Review by Designated Offices

  51.1 Time Limit for Presenting the Request to Send Copie s

 The time limit referred to in Article 25(1)(c) shall be two
months computed from the date of the notification sent to
the applicant under Rules 20.7(i), 24.2(c), 29.1(a)(ii), or
29.1(b).

  51.2 Copy of the Notice

 Where the applicant, after having received a negative
determination  under  Article  11(1),  requests  the
International Bureau, under Article 25(1), to send copies of
the file of the purported international application to any
of the named Offices he has attempted to designate, he shall
attach to his request a copy of the notice referred to in
Rule 20.7(i).

  51.3  Time Limit for Paying National Fee and Furnishing
  Translatio n

 The time limit referred to in Article 25(2)(a) shall expire
at the same time as the time limit prescribed in Rule 51.1.

  bis
  Rule 51

 Certain National Requirements Allowed Under Article 27(1),
(2), (6) and (7)

  bis
 51  .1 Certain National Requirements Allowed

 (a) The documents referred to in Article 27(2)(ii), or the
evidence referred to in Article 27(6), which the applicant
may be required to furnish under the national law applicable
by the designated Office include, in particular:

 (i) any document relating to the identity of the inventor,

 (ii) any document relating to any transfer or assignment of
the right to the application,

 (iii) any document containing an oath or declaration by the
inventor alleging his inventorship,

 (iv) any document containing a declaration by the applicant
designating the inventor or alleging the right to the
application,

 (v) any document containing any proof of the right of the
applicant to claim priority where he is different from the
appli cant having filed the earlier application the priority
of which is claimed,

 (vi) any evidence concerning non - prejudicial disclosures
or exceptions to lack of novelty, such as disclosures
resulting from abuse, disclosures at certain exhibitions,

and disclosures by the applicant during a certain period of
time .

 (b)  The national law applicable by the designated
Office may, in accordance with Article 27(7), require that

 (i) the applicant be represented by an agent having the
right to represent applicants before that Office and/or have
an address in the designated State for the purpose of
receiving notifications,

 (ii) the agent, if any, representing the applicant be duly
appointed by the applicant.

 (c)  The national law applicable by the designated
Office may, in accordance with Article 27(1), require that
the international application, the translation thereof or
any document relating thereto be furnished in more than one
copy.

 (d)  The national law applicable by the designated
Office may, in accordance with Article 27(2)(ii), require
that  the  translation  of  the  international  application
furnished by the applicant under Article 22 be verified by
the  applicant  or  the  person  having  translated  the
international application in a statement to the effect that,
to the best of his knowledge, the translation is complete
and faithful.

  bis
  51  .2 Opportunity to Comply with National Requirements

 (a)  Where any of the requirements referred to in Rule
  bis
51  .1 , or any other requirement of the national law
applicable by the designated Office which that Office may
apply under Article 27(1), (2), (6), or (7), is not already
fulfilled  during  the  same  period  within  which  the
requirements under Article 22 must be complied with, the
applicant shall have an opportunity to comply with the
requirement after the expiration of that period.

 (b)  The national law applicable by the designated
Office may, in accordance with Article 27(2)(ii), require
that  the  applicant,  upon  invitation  by  the  designated
Office, furnish a certification of the translation of the
international application by a public authority or a sworn
translator,  if  the  designated  Office  deems  such
certification  to  be  necessary  under  the  circumstances,
within a time limit which shall be reason able under the
circumstances and shall be fixed in the invitation.

 (c)  [Deleted]

  Rule 52

 Amendment of the Claims, the Description, and the Drawings,
Before Designated Offices

  52.1 Time Limit

  (a)  In  any  designated  State  in  which  processing  or
examination starts without special request, the applicant
shall, if he so wishes, exercise the right under Article 28
within one month from the fulfillment of the requirements
under Article 22, provided that, if the communication under

Rule 47.1 has not been effected by the expiration of the
time limit applicable under Article 22, he shall exercise
the said right not later than four months after such
expiration date. In either case, the applicant may exercise
the said right at any other time if so permitted by the
national law of the said State.

 (b)  In any designated State in which the national law
provides that examination starts only on special request,
the time limit within or the time at which the applicant may
exercise the right under Article 28 shall be the same as
that  provided  by  the  national  law  for  the  filing  of
amendments in the case of the examination, on special
request, of national applications, provided that such time
limit shall not expire prior to, or such time shall not come
before, the expiration of the time limit applicable under
paragraph (a).

  PART C Rules Concerning Chapter II of the Treaty

  Rule 53

 The Demand

  53.1  Form

 (a)  The demand shall be made on a printed form or be
presented as a computer printout. The particulars of the
printed form and of a demand presented as a computer
printout  shall  be  prescribed  by  the  Administrative
Instructions .

 (b)  Copies of printed demand forms shall be furnished
free  of  charge  by  the  receiving  Office  or  by  the
International Preliminary Examining Authority.

 (c)  [Deleted]

  53.2  Contents

 (a)  The demand shall contain:

 (i)  a petition,

 (ii)  indications concerning the applicant and the agent
if there is an agent,

 (iii)  indications  concerning  the  international
application to which it relates,

 (iv)  election of States,

 (v)  where applicable, a statement concerning amendments.

 (b)  The demand shall be signed.

 53.3  The Petition

 The petition shall be to the following effect and shall
preferably be worded as follows: Demand under Article 31 of
the Patent Cooperation Treaty: The undersigned requests that
the international application specified below be the subject
ofinternational preliminary examination according to the
Patent Cooperation Treaty.

  53.4  The Applicant

 As to the indications concerning the applicant, Rules 4.4
and 4.16 shall apply, and Rule 4.5 shall apply mutatis
mutandis . Only applicants for the elected States are
required to be indicated in the demand.

  53.5  Agent or Common Representative

 If an agent or common representative is designated, the
demand shall so indicate. Rules 4.4 and 4.16 shall apply,
and Rule 4.7 shall apply mutatis mutandis .

  53.6  Identification of the International Application

 The international application shall be identified by the
name  and  address  of  the  applicant,  the  title  of  the
invention, the international filing date (if known to the
applicant) and the international application number or,
where such number is not known to the applicant, the name of
the  receiving  Office  with  which  the  international
application was filed.

  53.7  Election of States

 (a)  The demand shall indicate at least one Contracting
State, from among those States which are designated and are
bound by Chapter II of the Treaty ("eligible States"), as an
elected State.

 (b)  Election of Contracting States in the demand shall
be made:

 (i)  by an indication that all eligible States are
elected, or,

 (ii) in the case of States which have been designated for
the purpose of obtaining national patents, by an indication
of those eligible States that are elected, and, in the case
of States which have been designated for the purpose of
obtaining  a  regional  patent,  by  an  indication  of  the
regional patent concerned together with either an indication
that all eligible States party to the regional patent treaty
concerned are elected or an indication of those among the
said States that are elected.

  53.8  Signature

 (a)  Subject to paragraph (b), the demand shall be
signed by the applicant or, if there is more than one
applicant, by all applicants making the demand.

 (b)  Where two or more applicants file a demand which
elects a State whose national law requires that national
applications be filed by the inventor and where an applicant
for that elected State who is an inventor refused to sign
the demand or could not be found or reached after diligent
effort, the demand need not be signed by that applicant
("the applicant concerned") if it is signed by at least one
applicant and

  (i)  a  statement  is  furnished  explaining,  to  the
satisfaction  of  the  International  Preliminary  Examining
Authority, the lack of signature of the applicant concerned,
or

 (ii) the applicant concerned did not sign the request but
the requirements of Rule 4.15(b) were complied with.

  53.9  Statement Concerning Amendments

 (a)  If amendments under Article 19 have been made, the
statement concerning amendments shall indicate whether, for
the purposes of the international preliminary examination,
the applicant wishes those amendments

 (i) to be taken into account, in which case a copy of the
amendments shall preferably be submitted with the demand, or

 (ii) to be considered as reversed by an amendment under
Article 34.

 (b)  If no amendments under Article 19 have been made
and the time limit for filing such amendments has not
expired, the statement may indicate that the applicant
wishes  the  start  of  the  international  preliminary
examination to be postponed in accordance with Rule 69.1(d).

 (c)  If any amendments under Article 34 are submitted
with the demand, the statement shall so indicate.

  Rule 54

 The Applicant Entitled to Make a Demand

 54.1  Residence and Nationality

 (a)  Subject to the provisions of paragraph (b), the
residence or nationality of the applicant shall, for the
purposes of Article 31(2), be determined according to Rule
18.1(a) and (b).

 (b)  The International Preliminary Examining Authority
shall, in the circumstances specified in the Administrative
Instructions, request the receiving Office or, where the
international application was filed with the International
Bureau as receiving Office, the national Office of, or
acting for, the Contracting State concerned to decide the
question whether the applicant is a resident or national of
the Contracting State of which he claims to be a resident or
national. The International Preliminary Examining Authority
shall  inform  the  applicant  of  any  such  request.  The
applicant shall have an opportunity to submit arguments
directly to the Office concerned. The Office concerned shall
decide the said question promptly.

  54.2  Two or More Applicants

 If there are two or more applicants, the right to make a
demand under Article 31(2) shall exist if at least one of
the applicants making the demand is

 (i) a resident or national of a Contracting State bound by
Chapter II and the international application has been filed
with a receiving Office of or acting for a Contracting State
bound by Chapter II, or

 (ii) a person entitled to make a demand under Article
31(2)(b) and the international application has been filed as
provided in the decision of the Assembly.

  54.3  International Applications Filed with the
  International Bureau as Receiving Office

  Where the international application is filed with the
International  Bureau  as  receiving  Office  under  Rule
19.1(a)(iii),  the  International  Bureau  shall,  for  the
purposes of Article 31(2)(a), be considered to be acting for
the Contracting State of which the applicant is a resident
or national.

 54.4  Applicant Not Entitled to Make a Demand

 (a)  If the applicant does not have the right to make a
demand or, in the case of two or more applicants, if none of
them has the right to make a demand under Rule 54.2, the
demand shall be considered not to have been submitted .

 (b)  [Deleted]

  Rule 55

 Languages (International Preliminary Examination)

  55.1  Language of Demand

 The demand shall be in the language of the international
application or, if the international application has been
filed in a language other than the language in which it is
published, in the language of publication. However, if a
translation of the international application is required
under Rule 55.2, the demand shall be in the language of that
translation.

 55.2  Translation of International Application

 (a)  Where the international application is neither
filed  nor  published  in  the  language,  or  one  of  the
languages, specified in the agreement concluded between the
International  Bureau  and  the  International  Preliminary
Examination  Authority  competent  for  the  international
preliminary examination of that application, that Authority
may require that, subject to paragraph (b), the applicant
furnish with the demand a translation of the international
application into the language, or one of the languages,
specified in the said agreement.

 (b)  Where  a  translation  of  the  international
application into a language referred to in paragraph (a) was
transmitted to the International Searching Authority under
Rule  12.1(c)  andthe  International  Preliminary  Examining
Authority  is  part  of  the  same  national  Office  or
intergovernmental  organization  as  the  International
Searching  Authority,  the  applicant  need  not  furnish  a
translation under paragraph (a). In such a case, unless the
applicant furnishes a translation under paragraph (a), the
international preliminary examination shall be carried out
on the basis of the translation transmitted under Rule
12.1(c).

 (c)  If the requirement of paragraph (a) is not complied
with and paragraph (b) does not apply, the International
Preliminary Examining Authority shall invite the applicant
to furnish the required translation within a time limit
which shall be reasonable under the circumstances. That time

limit shall not be less than one month from the date of the
invitation.  It  may  be  extended  by  the  International
Preliminary  Examining  Authority  at  any  time  before  a
decision is taken.

 (d)  If the applicant complies with the invitation
within  the  time  limit  under  paragraph  (c),  the  said
requirement shall be considered to have been complied with.
If the applicant fails to do so, the demand shall be
considered not to have been submitted .

 (e)  Paragraphs (a) to (d) shall apply only where the
International Preliminary Examining Authority has declared,
in a notification addressed to the International Bureau,
that it accepts to carry out international preliminary
examination on the basis of the translation referred to in
those paragraphs.

 55.3  Translation of Amendments

 (a)  Where  a  translation  of  the  international
application is required under Rule 55.2, any amendments
which are referred to in the statement concerning amendments
under Rule 53.9 and which the applicant wishes to be taken
into  account  for  the  purposes  of  the  international
preliminary examination, and any amendments under Article 19
which are to be taken into account under Rule 66.1(c), shall
be  in  the  language  of  that  translation.  Where  such
amendments have been or are filed in another language, a
translation shall also be furnished .

 (b)  Where the required translation of an amendment
referred  to  in  paragraph  (a)  is  not  furnished,  the
International Preliminary Examining Authority shall invite
the applicant to furnish the missing translation within a
time  limit  which  shall  be  reasonable  under  the
circumstances. That time limit shall not be less than one
month from the date of the invitation. It may be extended by
the International Preliminary Examining Authority at any
time before a decision is taken.

 (c)  If the applicant fails to comply with the invention
within the time limit under paragraph (b), the amendment
shall not be taken into account for the purposes of of the
international preliminary examination.

  Rule 56

 Later Elections

  56.1  Elections Submitted Later Than the Demand

 (a)  The election of States subsequent to the submission
of the demand ("later election") shall be effected by a
notice submitted to the International Bureau. The notice
shall identify the international application and the demand,
and shall include an indication as referred to in Rule
53.7(b)(ii).

 (b)  Subject to paragraph (c), the notice referred to in
paragraph (a) shall be signed by the applicant for the
elected States concerned or, if there is more than one
applicant for those States, by all of them.

 (c)  Where  two  or  more  applicants  file  a  notice

effecting a later election of a State whose national law
requires that national applications be filed by the inventor
and where an applicant for that elected State who is an
inventor refused to sign the notice or could not be found or
reached after diligent effort, the notice need not be signed
by that applicant ("the applicant concerned") if it is
signed by at least one applicant and

 (i)  a  statement  is  furnished  explaining,  to  the
satisfaction  of  the  International  Bureau,  the  lack  of
signature of the applicant concerned, or

 (ii)  the applicant concerned did not sign the request
but the requirements of Rule 4.15(b) were complied with, or
did not sign the demand but the requirements of Rule 53.8(b)
were complied with.

 (d)  An applicant for a State elected by a later
election need not have been indicated as an applicant in the
demand.

 (e)  If a notice effecting a later election is submitted
after the expiration of 19 months from the priority date,
the International Bureau shall notify the applicant that the
election does not have the effect provided for under Article
39(1)(a) and that the acts referred to in Article 22 must be
performed in respect of the elected Office concerned within
the time limit applicable under Article 22.

 (f)  If,  notwithstanding  paragraph  (a),  a  notice
effecting a later election is submitted by the applicant to
the International Preliminary Examining Authority rather
than the International Bureau, that Authority shall mark the
date of receipton the notice and transmit it promptly to the
International Bureau. The notice shall be considered to have
been submitted to the International Bureau on the date
marked.

  56.2  Identification of the International Application

  The  international  application  shall  be  identified  as
provided in Rule 53.6.

  56.3  Identification of the Demand

 The demand shall be identified by the date on which it was
submitted and by the name of the International Preliminary
Examining Authority to which it was submitted.

  56.4 Form of Later Elections

 The notice effecting the later election shall preferably be
worded  as  follows:  "In  relation  to  the  international
application  filed  with  ...  on  ...  under  No.  ...  by
...(applicant) (and the demand for international preliminary
examination submitted on ... to ...), the undersigned elects
the following additional State(s) under Article 31 of the
Patent Cooperation Treaty: ..."

  56.5  Language of Later Elections

 The later election shall be in the language of the demand.

  Rule 57

 The Handling Fee

  57.1  Requirement to Pay

 (a)  Each  demand  for  international  preliminary
examination shall be subject to the payment of a fee for the
bene fit of the International Bureau ("handling fee") to be
collected  by  the  International  Preliminary  Examining
Authority to which the demand is submitted.

 (b)  [Deleted]

  57.2  Amount

 (a)  The amount of the handling fee is as set out in the
Schedule of Fees.

 (b)  [Deleted]

 (c)  The  amount  of  the  handling  fee  shall  be
established, for each International Preliminary Examining
Authority which, under Rule 57.3(c), prescribes the payment
of the handling fee in a currency or currencies other than
Swiss currency, by the Director General after consultation

 with that Authority and in the currency or currencies
prescribed by that Authority ("prescribed currency"). The
amount in each prescribed currency shall be the equivalent,
in round figures, of the amount of the handling fee in Swiss
cur rency set out in the Schedule of Fees. The amounts in
the prescribed currencies shall be published in the Gazette.

 (d)  Where the amount of the handling fee set out in the
Schedule of Fees is changed, the corresponding amounts in
the prescribed currencies shall be applied from the same
date as the amount set out in the amended Schedule of Fees.

 (e)  Where the exchange rate between Swiss currency and
any prescribed currency becomes different from the exchange
rate last applied, the Director General shall establish the
new  amount  in  the  prescribed  currency  according  to
directives given by the Assembly. The newly established
amount  shall  become  applicable  two  months  after  its
publication in the Gazette, provided that the interested
International  Preliminary  Examining  Authority  and  the
Director General may agree on a date falling during the said
two - month period in which case the said amount shall
become applicable for that Authority from that date.

  57.3  Time and Mode of Payment

 (a)  The handling fee shall be due at the time the
demand is submitted.

 (b)  [Deleted]

 (c)  The handling fee shall be payable in the currency
or currencies prescribed by the International Preliminary
Examining Authority to which the demand is submitted, it
being understood that, when transferred by that Authority to
the International Bureau, it shall be freely convertible
into Swiss currency.

 (d)  [Deleted]

  57.4  Failure to Pay

 (a)  Where the handling fee is not paid as required, the
International Preliminary Examining Authority shall invite
the applicant to pay the fee within one month from the date
of the invitation.

 (b)  If the applicant complies with the invitation
within the one - month time limit, the handling fee shall be
considered as if it had been paid on the due date.

 (c)  If  the  applicant  does  not  comply  with  the
invitation within the prescribed time limit, the demand
shall be considered as if it had not been submitted.

  57.5  [Deleted]

  57.6  Refund

 The International Preliminary Examining Authority shall
refund the handling fee to the applicant:

 (i)  if the demand is withdrawn before the demand has
been sent by that Authority to the International Bureau, or

 (ii)  if the demand is considered, under Rule 54.4(a),
not to have been submitted .

  Rule 58

 The Preliminary Examination Fee

  58.1  Right to Ask for a Fee

 (a)  Each International Preliminary Examining Authority
may require that the applicant pay a fee ("preliminary
examina tion fee") for its own benefit for carrying out the
international preliminary examination and for performing all
other tasks entrusted to International Preliminary Examining
Authorities under the Treaty and these Regulations.

 (b)  The amount and the due date of the preliminary
examination fee, if any, shall be fixed by the International
Pre liminary Examining Authority, provided that the said due
date shall not be earlier than the due date of the handling
fee.

 (c)  The preliminary examination fee shall be payable
directly  to  the  International  Preliminary  Examining
Authority. Where that Authority is a national Office, it
shall be payable in the currency prescribed by that Office,
and  where  the  Authority  is  an  intergovernmental
organization, it shall be payable in the currency of the
State in which the intergovernmental organization is located
or in any other currency which is freely convertible into
the currency of the said State.

  58.2  Failure to Pay

 (a)  Where the preliminary examination fee fixed by the
International Preliminary Examining Authority under Rule
58.1(b) is not paid as required under that Rule, the
International Preliminary Examining Authority shall invite
the applicant to pay the fee or the missing part thereof
within one month from the date of the invitation.

 (b)  If the applicant complies with the invitation
within  the  prescribed  time  limit,  the  preliminary
examination fee will be considered as if it had been paid on
the due date.

 (c) If the applicant does not comply with the invitation
within the prescribed time limit, the demand shall be
considered as if it had not been submitted.

  58.3  Refund

 The International Preliminary Examining Authorities shall
inform the International Bureau of the extent, if any, to
which, and the conditions, if any, under which, they will
refund any amount paid as a preliminary examination fee
where the demand is considered as if it had not been
submitted,  and  the  International  Bureau  shall  promptly
publish such information.

  Rule 59

 The Competent International Preliminary Examining Authority

  59.1  Demands under Article 31(2)(a)

 (a)  For demands made under Article 31(2)(a), each
receiving Office of or acting for a Contracting State bound
by the provisions of Chapter II shall, in accordance with
the terms of the applicable agreement referred to in Article
32(2)  and  (3),  inform  the  International  Bureau  which
International Preliminary Examining Authority is or which
International  Preliminary  Examining  Authorities  are
competent for the international preliminary examination of
international applications filed with it. The International
Bureau  shall  promptly  publish  such  information.  Where
several International Preliminary Examining Authorities are
competent, the provisions of Rule 35.2 shall apply mutatis
mutandis.

 (b)  Where the international application was filed with
the International Bureau as receiving Office under Rule
19.1(a)(iii), Rule 35.3(a) and (b) shall apply mutatis
mutandis . Paragraph (a) of this Rule shall not apply to the
International  Bureau  as  receiving  Office  under  Rule
19.1(a)(iii).

  59.2  Demands under Article 31(2)(b)

 As to demands made under Article 31(2)(b), the Assembly, in
specifying the International Preliminary Examining Authority
competent  for  international  applications  filed  with  a
national  Office  which  is  an  International  Preliminary
Examining  Authority,  shall  give  preference  to  that
Authority; if the national Office is not an International
Preliminary Examining Authority, the Assembly shall give
preference  to  the  International  Preliminary  Examining
Authority recommended by that Office.

  Rule 60

 Certain Defects in the Demand or Elections

  60.1  Defects in the Demand

 (a)  If the demand does not comply with the requirements
specified in Rules 53.1, 53.2(a)(i) to (iv), 53.2(b), 53.3
to 53.8, and 55.1, the International Preliminary Examining
Authority shall invite the applicant to correct the defects
within a time limit which shall be reasonable under the
circumstances. That time limit shall not be less than one
month from the date of the invitation. It may be extended by
the International Preliminary Examining Authority at any
time before a decision is taken.

 (b)  If the applicant complies with the invitation
within the time limit under paragraph (a), the demand shall
be considered as if it had been received on the actual
filing date, provided that the demand as submitted contained
at  least  one  election  and  permitted  the  international
application to be identified; otherwise, the demand shall be
considered as if it had been received on the date on which
the International Preliminary Examining Authority receives
the correction.

 (c)  Subject to paragraph (d), if the applicant does not
comply with the invitation within the time limit under
paragraph (a), the demand shall be considered as if it had
not been submitted.

 (d)  Where, after the expiration of the time limit under
paragraph (a), a signature required under Rule 53.8 or a
prescribed indication is lacking in respect of an applicant
for a certain elected State, the election of that State con
sidered as if it had not been made.

 (e)  If the defect is noticed by the International
Bureau, it shall bring the defect to the attention of the
Inter national Preliminary Examining Authority, which shall
then proceed as provided in paragraphs (a) to (d).

 (f)  If  the  demand  does  not  contain  a  statement
concerning  amendments,  the  International  Preliminary
Examining Authority shall proceed as provided for in Rules
66.1 and 69.1(a) or (b).

 (g)  Where the statement concerning amendments contains
an indication that amendments under Article 34 are submitted
with the demand (Rule 53.9(c)) but no such amendments are,
in fact, submitted, the International Preliminary Examining
Authority  shall  invite  the  applicant  to  submit  the
amendments within a time limit fixed in the invitation and
shall proceed as provided for in Rule 69.1(e).

 60.2 Defects in Later Elections

 (a)  If the notice effecting a later election does not
comply with the requirements of Rule 56, the International
Bureau shall invite the applicant to correct the defects
within a time limit which shall be reasonable under the
circumstances. That time limit shall not be less than one
month from the date of the invitation. It may be extended by
the International Bureau at any time before a decision is
taken.

 (b)  If the applicant complies with the invitation
within the time limit under paragraph (a), the notice shall
be considered as if it had been received on the actual
filing date, provided that the notice as submitted contained
at  least  one  election  and  permitted  the  international

application to be identified; otherwise, the notice shall be
considered as if it had been received on the date on which
the International Bureau receives the correction .

 (c)  Subject to paragraph (d), if the applicant does not
comply with the invitation within the time limit under
paragraph (a), the notice shall be considered as if it had
not been submitted.

 (d)  Where, in respect of an applicant for a certain
elected State, the signature required under Rule 56.1(b) and
(c) or the name or address is lacking after the expiration
of the time limit under paragraph (a), the later election of
that State shall be considered as if it had not been made.

  Rule 61

 Notification of the Demand and Elections

  61.1  Notification to the International Bureau and the
  Applicant

 (a)  The International Preliminary Examining Authority
shall indicate on the demand the date of receipt or,
whereapplicable, the date referred to in Rule 60.1(b). The
International Preliminary Examining Authority shall promptly
send the demand to the International Bureau, and shall
prepare and keep a copy in its files.

 (b)  The International Preliminary Examining Authority
shall promptly inform the applicant in writing of the date
of  receipt  of  the  demand.  Where  the  demand  has  been
considered under Rules 54.4(a), 57.4(c), 58.2(c) or 60.1(c)
as if it had not been submitted or where an election has
been considered under Rule 60.1(d) as if it had not been
made,  the  International  Preliminary  Examining  Authority
shall notify the applicant and the International Bureau
accordingly.

 (c)  The International Bureau shall promptly notify the
applicant of the receipt, and the date of receipt, of any
notice effecting a later election. That date shall be the
actual date of receipt by the International Bureau or, where
applicable, the date referred to in Rule 56.1(f) or 60.2(b).
Where the notice has been considered under Rule 60.2(c) as
if it had not been submitted or where a later election has
been considered under Rule 60.2(d) as if it had not been
made, the International Bureau shall notify the applicant
accordingly.

  61.2  Notification to the Elected Offices

 (a)  The notification provided for in Article 31(7)
shall be effected by the International Bureau.

 (b)  The notification shall indicate the number and
filing date of the international application, the name of
the applicant, the filing date of the application whose
priority is claimed (where priority is claimed), the date of
receipt by the International Preliminary Examining Authority
of the demand, and - in the case of a later election - the
date of receipt of the notice effecting the later election.
The latter date shall be the actual date of receipt by the
International Bureau or, where applicable, the date referred
to in Rule 56.1(f) or60.2(b).

 (c)  The notification shall be sent to the elected
Office together with the communication provided for in
Article 20. Elections effected after such communication
shall be notified promptly after they have been made.

 (d)  Where the applicant makes an express request to an
elected Office under Article 40(2) before the communication
provided  for  in  Article  20  has  taken  place,  the
International Bureau shall, upon request of the applicant or
the elected Office, promptly effect that communication to
that Office.

  61.3  Information for the Applicant

 The International Bureau shall inform the applicant in
writing of the notification referred to in Rule 61.2 and of
the elected Offices notified under Article 31(7).

 61.4  Publication in the Gazette

 Where a demand has been filed prior to the expiration of
the 19th month from the priority date, the International
Bureau shall publish a notice of that fact in the Gazette
promptly after the filing of the demand, but not before the
international publication of the international application.
The notice shall indicate all designated States bound by
Chapter II which have not been elected.

  Rule 62

 Copy of Amendments Under Article 19 for the International
Preliminary Examining Authority

  62.1  Amendments Made before the Demand is Filed

 Upon receipt of a demand from the International Preliminary
Examining Authority, the International Bureau shall promptly
transmit a copy of any amendments under Article 19 to that
Authority, unless that Authority has indicated that it has
already received such a copy .

  62.2  Amendments Made after the Demand is Filed

 (a)  If, at the time of filing any amendments under
Article  19,  a  demand  has  already  been  submitted,  the
applicant shall preferably, at the same time as he files the
amendments with the International Bureau, also file a copy
of  such  amendments  with  the  International  Preliminary
Examining Authority. In any case, the International Bureau
shall promptly transmit a copy of such amendments to that
Authority.

 (b)  [Deleted]

  Rule 63

  Minimum  Requirements  for  International  Preliminary
Examining Authorities

  63.1  Definition of Minimum Requirements

 The minimum requirements referred to in Article 32(3) shall
be the following:

 (i)  the  national  Office  or  intergovernmental
organization must have at least 100 full - time employees
with  sufficient  technical  qualifications  to  carry  out
examinations;

 (ii)  that Office or organization must have at its ready
disposal at least the minimum documentation referred to in
Rule 34, properly arranged for examination purposes;

 (iii)  that Office or organization must have a staff which
is capable of examining in the required technical fields and
which has the language facilities to understand at least
those languages in which the minimum documentation referred
to in Rule 34 is written or is translated.

  Rule 64

 Prior Art for International Preliminary Examination

  64.1  Prior Art

 (a)  For  the  purposes  of  Article  33(2)  and  (3),
everything made available to the public anywhere in the
world by means of written disclosure (including drawings and
other illustrations) shall be considered prior art provided
that such making available occurred prior to the relevant
date.

 (b)  For the purposes of paragraph (a), the relevant
date will be:

 (i)  subject to item (ii), the international filing date
of  the  international  application  under  international
preliminary examination;

 (ii)  where  the  international  application  under
international preliminary examination validly claims the
priority of an earlier application, the filing date of such
earlier application.

 64.2  Non - Written Disclosures

 In cases where the making available to the public occurred
by means of an oral disclosure, use, exhibition or other non
- written means ("non - written disclosure") before the
relevant date as defined in Rule 64.1(b) and the date of
such non - written disclosure is indicated in a written
disclosure which has been made available to the public on a
date which is the same as, or later than, the relevant date,
the non - written disclosure shall not be considered part of
the prior art for the purposes of Article 33(2) and (3).
Nevertheless,  the  international  preliminary  examination
report shall call attention to such non - written disclosure
in the manner provided for in Rule 70.9.

  64.3  Certain Published Documents

 In cases where any application or any patent which would
constitute prior art for the purposes of Article 33(2) and
(3) had it been published prior to the relevant date
referred to in Rule 64.1 was published on a date which is
the same as, or later than, the relevant date but was filed
earlier than the relevant date or claimed the priority of an
earlier application which had been filed prior to the
relevant date, such published application or patent shall

not be considered part of the prior art for the purposes of
Article  33(2)  and  (3).  Nevertheless,  the  international
preliminary examination report shall call attention to such
application or patent in the manner provided for in Rule
70.10.

  Rule 65

 Inventive Step or Non - Obviousness

  65.1  Approach to Prior Art

 For the purposes of Article 33(3), the international
preliminary examination shall take into consideration the
relation of any particular claim to the prior art as a
whole. It shall take into consideration the claim's relation
not only to individual documents or parts thereof taken
separately but also its relation to combinations of such
documents or parts of documents, where such combinations are
obvious to a person skilled in the art.

  65.2  Relevant Date

 For the purposes of Article 33(3), the relevant date for
the consideration of inventive step (non - obviousness) is
the date prescribed in Rule 64.1.

  Rule 66

 Procedure Before the International Preliminary Examining
Authority

  66.1  Basis of the International Preliminary Examination

 (a)  Subject to paragraphs (b) to (d), the international
preliminary examination shall be based on the international
application as filed.

 (b)  The applicant may submit amendments under Article
34 at the time of filing the demand or, subject to Rule
  bis , until the international preliminary examination
66.4
report is established.

 (c)  Any amendments under Article 19 made before the
demand was filed shall be taken into account for the
purposes of the international preliminary examination unless
superseded, or considered as reversed, by an amendment under
Article 34.

 (d)  Any amendments under Article 19 made after the
demand  was  filed  and  any  amendments  under  Article  34
submitted  to  the  International  Preliminary  Examining
  bis , be taken into
Authority shall, subject to Rule 66.4
account for the purposes of the international preliminary
examination.

 (e)  Claims relating to inventions in respect of which
no international search report has been established need not
be the subject of international preliminary examination.

  66.2  First Written Opinion of the International
 Preliminary Examining Authority

 (a)  If  the  International  Preliminary  Examining

Authority

 (i)  considers that any of the situations referred to in
Article 34(4) exists,

 (ii)  considers  that  the  international  preliminary
examination report should be negative in respect of any of
the claims because the invention claimed therein does not
appear to be novel, does not appear to involve an inventive
step (does not appear to be non - obvious), or does not
appear to be industrially applicable,

 (iii) notices that there is some defect in the form or 
contents of the international application under the Treaty
or these Regulations,

 (iv) considers that any amendment goes beyond the 
disclosure in the international application as filed,

 (v) wishes to accompany the international preliminary
examination report by observations on the clarity of the
claims, the description, and the drawings, or the question
whether the claims are fully supported by the description,

 (vi) considers that a claim relates to an invention in
respect of which no international search report has been
established  and  has  decided  not  to  carry  out  the
international preliminary examination in respect of that
claim, or

  (vii)  considers  that  a  nucleotide  and/or  amino  acid
sequence listing is not available to it in such a form that
a meaningful international preliminary examination can be
carried out, the said Authority shall notify the applicant
accordingly in writing. Where the national law of the
national  Office  acting  as  International  Preliminary
Examining Authority does not allow multiple dependent claims
to be drafted in a manner different from that provided for
in the second and third sentences of Rule 6.4(a), the
International Preliminary Examining Authority may, in case
of failure to use that manner of claiming, apply Article
34(4)(b). In such case, it shall notify the applicant
accordingly in writing.

 (b)  The notification shall fully state the reasons for
the  opinion  of  the  International  Preliminary  Examining
Authority.

 (c)  The notification shall invite the applicant to
submit a written reply together, where appropriate, with
amendments.

 (d)  The notification shall fix a time limit for the
reply.  The  time  limit  shall  be  reasonable  under  the
circumstances. It shall normally be two months after the
date of notification. In no case shall it be shorter than
one month after the said date. It shall be at least two
months after the said date where the international search
report is transmitted at the same time as the notification.
It shall not be more than three months after the said date
but may be extended if the applicant so requests before its
expiration.

  66.3  Formal Response to the International Preliminary
  Examining Authority

 (a)  The  applicant  may  respond  to  the  invitation
referred to in Rule 66.2(c) of the International Preliminary
Examining  Authority  by  making  amendments  or  -  if  he
disagrees with the opinion of that Authority - by submitting
arguments, as the case may be, or do both.

 (b)  Any response shall be submitted directly to the
International Preliminary Examining Authority.

  66.4  Additional Opportunity for Submitting Amendments or
  Arguments

 (a)  If the International Preliminary Examining Author
ity wishes to issue one or more additional written opinions,
it may do so, and Rules 66.2 and 66.3 shall apply.

 (b)  On the request of the applicant, the International
Preliminary  Examining  Authority  may  give  him  one  or
moreadditional  opportunities  to  submit  amendments  or
arguments.

  bis
  66.4  Consideration of Amendments and Arguments

 Amendments or arguments need not be taken into account by
the International Preliminary Examining Authority for the
purposes  of  a  written  opinion  or  the  international
preliminary examination report if they are received after
that Authority has begun to draw up that opinion or report.

  66.5  Amendment

 Any change, other than the rectification of obvious errors,
in the claims, the description, or the drawings, including
cancellation  of  claims,  omission  of  passages  in  the
description, or omission of certain drawings, shall be
considered an amendment.

  66.6  Informal Communications with the Applican t

 The International Preliminary Examining Authority may, at
any time, communicate informally, over the telephone, in
writing, or through personal interviews, with the applicant.
The said Authority shall, at its discretion, decide whether
it wishes to grant more than one personal interview if so
requested by the applicant, or whether it wishes to reply to
any informal written communication from the applicant.

  66.7  Priority Document

 (a)  If  the  International  Preliminary  Examining
Authority needs a copy of the application whose priority is
claimed in the international application, the International
Bureau shall, on request, promptly furnish such copy. If
that copy is not furnished to the International Preliminary
Examining Authority because the applicant failed to comply
with  the  requirements  of  Rule  17.1,  the  international
preliminary examination report may be established as if the
priority had not been claimed.

 (b)  If the application whose priority is claimed in the
international application is in a language other than the
language or one of the languages of the International
Preliminary Examining Authority, that Authority may in vite

thethe applicant to furnish a translation in the said
language or one of the said languages within two months from
the date of the invitation. If the translation is not
furnished  within  that  time  limit,  the  international
preliminary examination report may be established as if the
priority had not been claimed.

  66.8  Form of Amendments

 (a)  The  applicant  shall  be  required  to  submit  a
replacement sheet for every sheet of the international
application which, on account of an amendment, differs from
the sheet previously filed. The letter accompanying the
replacement sheets shall draw attention to the differences
between the replaced sheets and the replacement sheets.
Where the amendment consists in the deletion of passages or
in minor alterations or additions, it may be made on a copy
of the relevant sheet of the international application,
provided that the clarity and direct reproducibility of that
sheet are not adversely affected. To the extent that any
amendment results in the cancellation of an entire sheet,
that amendment shall be communicated in a letter.

 (b)  [Deleted]

  66.9  Language of Amendments

 (a)  Subject  to  paragraphs  (b)  and  (c),  if  the
international application has been filed in a language other
than the language in which it is published, any amendment,
as well as any letter referred to in Rule 66.8(a), shall be
submitted in the language of the publication.

 (b)  If the international preliminary examination is
carried out, pursuant to rule 55.2, on the basis of a
translation of the international application, any amendment,
as well as any letter referred to in paragraph (a), shall be
submitted in the language of that translation.

 (c)  Subject to Rule 55.3, if an amendment or letter is
not submitted in a language as required under paragraph (a)
or (b), the International Preliminary Examining Authority
shall, if practicable, having regard to the time limit for
establishing  the  international  preliminary  examination
report, invite the applicant to furnish the amendment or
letter in the required language within a time limit which
shall be reasonable under the circumstances.

 (d)  If the applicant fails to comply, within the time
limit under paragraph (c), with the invitation to furnish an
amendment in the required language, the amendment shall not
be taken into account for the purposes of the international
preliminary examination. If the applicant fails to comply,
within  the  time  limit  under  paragraph  (c),  with  the
invitation to furnish a letter referred to in paragraph (a)
in the required language, theamendment concerned need not be
taken into account for the purposes of the international
preliminary examination .

  Rule 67

 Subject Matter Under Article 34(4)(a)(i)

  67.1  Definition

 No International Preliminary Examining Authority shall be
required  to  carry  out  an  international  preliminary
examination on an international application if, and to the
extent to which, its subject matter is any of the following:

 (i)  scientific and mathematical theories,

 (ii)  plant or animal varieties or essentially biological
processes for the production of plants and animals, other
than microbiological processes and the products of such
processes,

 (iii)  schemes, rules, or methods of doing business,
performing purely mental acts, or playing games,

 (iv  methods for treatment of the human or animal body
by surgery or therapy, as well as diagnostic methods,

 (v)  mere presentations of information,

 (vi)  computer  programs  to  the  extent  that  the
International  Preliminary  Examining  Authority  is  not
equipped  to  carry  out  an  international  preliminary
examination concerning such programs.

  Rule 68

 Lack of Unity of Invention (International Preliminary
Examination)

  68.1  No Invitation to Restrict or Pay

 Where the International Preliminary Examining Authority
finds that the requirement of unity of invention is not
complied with and chooses not to invite the applicant to
restrict the claims or to pay additional fees, it shall
proceed  with  the  international  preliminary  examination,
subject to Article 34(4)(b) and Rule 66.1(e), in respect of
the entire international application, but shall indicate, in
any written opinion and in the international preliminary
examination report, that it considers that the requirement
of unity of invention is not fulfilled and it shall specify
the reasons therefor.

  68.2  Invitation to Restrict or Pay

 Where the International Preliminary Examining A uthority
finds that the requirement of unity of invention is not
complied with and chooses to invite the applicant, at his
option, to restrict the claims or to pay additional fees, it
shall specify at least one possibility of restriction which,
in the opinion of the International Preliminary Examining
Authority,  would  be  in  compliance  with  the  applicable
requirement, and shall specify the amount of the additional
fees and the reasons for which the international application
is not considered as complying with the requirement of un
ity of invention. It shall, at the same time, fix a time
limit, with regard to the circumstances of the case, for
complying with the invitation; such time limit shall not be
shorter than one month, and it shall not be longer than two
months, from the date of the invitation.

  68.3  Additional Fees

 (a)  The  amount  of  the  additional  fee  due  for

international preliminary examination under Article 34(3)(a)
shall  be  determined  by  the  competent  International
Preliminary Examining Authority.

 (b)  The  additional  fee  due  for  international
preliminary examination under Article 34(3)(a) shall be
payable direct to the International Preliminary Examining
Authority.

 (c)  Any applicant may pay the additional fee under
protest, that is, accompanied by a reasoned statement to the
effect that the international application complies with the
requirement of unity of invention or that the amount of the
required additional fee is excessive. Such protest shall be
examined by a three - member board or other special instance
of the International Preliminary Examining Authority, or any
competent higher authority, which, to the extent that it
finds the protest justified, shall order the total or
partial reimbursement to the applicant of the additional
fee. On the re quest of the applicant, the text of both the
protest and the decision thereon shall be notified to the
elected Offices as an annex to the international preliminary
examination report.

 (d)  The three - member board, special instance or
competent higher authority, referred to in paragraph (c),
shall not comprise any person who made the decision which is
the subject of the protest.

 (e)  Where the applicant has, under paragraph (c), paid
an  additional  fee  under  protest,  the  International
Preliminary Examining Authority may, after a prior review of
the justification for the invitation to pay an additional
fee,  require  that  the  applicant  pay  a  fee  for  the
examination of the protest ("protest fee"). The protest fee
shall be paid within one month from the date of the
notification to the applicant of the result of the review.
If the protest fee is not so paid, the protest shall be
considered withdrawn. The protest fee shall be refunded to
the applicant where the three - member board, special
instance or higher authority referred to in paragraph (c)
finds that the protest was entirely justified.

  68.4  Procedure in the Case of Insufficient Restriction of
  the Claims

 If the applicant restricts the claims but not sufficiently
to comply with the requirement of unity of invention, the
International Preliminary Examining Authority shall proceed
as provided in Article 34(3)(c).

  68.5  Main Invention

 In case of doubt which invention is the main invention for
the  purposes  of  Article  34(3)(c),  the  invention  first
mentioned  in  the  claims  shall  be  considered  the  main
invention.

  Rule 69

 Start of and Time Limit for International Preliminary
Examination

  69.1  Start of International Preliminary Examination

 (a)  Subject to paragraphs (b) to (e), the International
Preliminary  Examining  Authority  shall  start  the
international  preliminary  examination  when  it  is  in
possession  both  of  the  demand  and  of  either  the
international search report or a notice of the declaration
by  the  International  SearchingAuthority  under  Article
17(2)(a)  that  no  international  search  report  will  be
established.

 (b)  If  the  competent  International  Preliminary
Examining Authority is part of the same national Office or
intergovernmental  organization  as  the  competent
International  Searching  Authority,  the  international
preliminary  examination  may,  if  the  International
Preliminary Examining Authority so wishes and subject to
paragraph (d), start at the same time as the international
search.

 (c)  Where the statement concerning amendments contains
an indication that amendments under Article 19 are to be
taken into account (Rule 53.9(a)(i)), the International
Preliminary  Examining  Authority  shall  not  start  the
international preliminary examination before it has received
a copy of the amendments concerned.

 (d)  Where the statement concerning amendments contains
an  indication  that  the  start  of  the  international
preliminary examination is to be postponed (Rule 53.9(b)),
the International Preliminary Examining Authority shall not
start the international preliminary examination before

 (i)  it has received a copy of any amendments made under
Article 19,

 (ii) it has received a notice from the applicant that he
does not wish to make amendments under Article 19, or

 (iii) the expiration of 20 months from the priority date,
whichever occurs first.

 (e)  Where the statement concerning amendments contains
an indication that amendments under Article 34 are submitted
with the demand (Rule 53.9(c)) but no such amendments are,
in fact, submitted, the International Preliminary Examining
Authority shall not start the international preliminary
examination before it has received the amendments or before
the time limit fixed in the invitation referred to in Rule
60.1(g) has expired, whichever occurs first.

  69.2  Time Limit for International Preliminary Examination

  The  time  limit  for  establishing  the  international
preliminary examination report shall be:

 (i) 28 months from the priority date if the demand was
filed prior to the expiration of 19 months from the priority
date;

 (ii) nine months from the start of the international
preliminary examination if the demand was filed after the
expiration of 19 months from the priority date.

  Rule 70

 The International Preliminary Examination Report

  70.1  Definition

  For  the  purposes  of  this  Rule,  "report"  shall  mean
international preliminary examination report.

  70.2  Basis of the Report

 (a)  If the claims have been amended, the report shall
issue on the claims as amended.

 (b)  If, pursuant to Rule 66.7(a) or (b), the report is
established as if the priority had not been claimed, the
report shall so indicate.

 (c)  If  the  International  Preliminary  Examining
Authority considers that any amendment goes beyond the dis
closure in the international application as filed, the
report shall be established as if such amendment had not
been made, and the report shall so indicate. It shall also
indicate the reasons why it considers that the amendment
goes beyond the said disclosure.

 (d)  Where claims relate to inventions in respect of
which no international search report has been established
and have therefore not been the subject of international
preliminary  examination,  the  international  preliminary
examination report shall so indicate.

  70.3  Identifications

 The report shall identify the International Preliminary
Examining Authority which established it by indicating the
name of such Authority, and the international application by
indicating the international application number, the name of
the applicant, and the international filing date.

  70.4  Dates

 The report shall indicate:

 (i)  the date on which the demand was submitted, and

 (ii)  the date of the report; that date shall be the date
on which the report is completed.

  70.5  Classification

 (a)  The report shall repeat the classification given
under Rule 43.3 if the International Preliminary Examining
Authority agrees with such classification.

 (b)  Otherwise, the International Preliminary Examining
Authority shall indicate in the report the classification,
at  least  according  to  the  International  Patent
Classification, which it considers correct.

  70.6  Statement Under Article 35(2)

 (a)  The statement referred to in Article 35(2) shall
consist of the words "YES" or "NO," or their equivalent in
the  language  of  the  report,  or  some  appropriate  sign
provided for in the Administrative Instructions, and shall
be  accompanied  by  the  citations,  explanations,  and
observations, if any, referred to in the last sentence of

Article 35(2).

 (b)  If any of the three criteria referred to in Article
35(2) (that is, novelty, inventive step (nonobviousness),
industrial applicability) is not satisfied, the statement
shall be negative. If, in such a case, any of the criteria,
taken separately, is satisfied, the report shall specify the
criterion or criteria so satisfied.

  70.7  Citations Under Article 35(2)

 (a)  The report shall cite the documents considered to
be relevant for supporting the statements made under Article
35(2).

 (b)  The provisions of Rule 43.5(b) and (e) shall apply
also to the report.

  70.8  Explanations Under Article 35(2)

 The Administrative Instructions shall contain guidelines
for cases in which the explanations referred to in Article
35(2) should or should not be given and the form of such
explanations.  Such  guidelines  shall  be  based  on  the
following principles:

 (i)  explanations shall be given whenever the statement
in relation to any claim is negative;

 (ii)  explanations shall be given whenever the statement
is positive unless the reason for citing any document is
easy to imagine on the basis of consultation of the cited
document;

 (iii)  generally, explanations shall be given if the case
provided for in the last sentence of Rule 70.6(b) obtains.

 70.9  Non - Written Disclosures

 Any non - written disclosure referred to in the report by
virtue of Rule 64.2 shall be mentioned by indicating its
kind, the date on which the written disclosure referring to
the non - written disclosure was made available to the
public, and the date on which the non - written disclosure
occurred in public.

  70.10  Certain Published Documents

 Any published application or any patent referred to in the
report by virtue of Rule 64.3 shall be mentioned as such and
shall be accompanied by an indication of its date of publica
tion, of its filing date, and its claimed priority date (if
any). In respect of the priority date of any such document,
the  report  may  indicate  that,  in  the  opinion  of  the
International Preliminary Examining Authority, such date has
not been validly claimed.

  70.11  Mention of Amendments

  If,  before  the  International  Preliminary  Examining
Authority, amendments have been made, this fact shall be
indicated in the report. Where any amendment has resulted in
the cancellation of an entire sheet, this fact shall also be
specified in the report.

  70.12  Mention of Certain Defects and Other Matters

  If  the  International  Preliminary  Examining  Authority
considers that, at the time it prepares the report:

 (i)  the international application contains any of the
defects referred to in Rule 66.2(a)(iii), it shall include
this opinion and the reasons therefor in the report;

 (ii)  the international application calls for any of the
observations referred to in Rule 66.2(a)(v), it may include
this opinion in the report and, if it does, it shall also
indicate in the report the reasons for such opinion;

 (iii)  any of the situations referred to in Article 34(4)
exists, it shall state this opinion and the reasons therefor
in the reports;

 (iv)  a nucleotide and/or amino acid sequence listing is
not available to it in such a form that a meaningful
international preliminary examination can be carried out, it
shall so state in the report.

  70.13 Remarks Concerning Unity of Invention

 If the applicant paid additional fees for the international
preliminary examination, or if the international application
or the international preliminary examination was restricted
under  Article  34(3),  the  report  shall  so  indicate.
Furthermore, where the international preliminary examination
was carried out on restricted claims (Article 34(3)(a)), or
on the main invention only (Article 34(3)(c)), the report
shall indicate what parts of the international application
were and what parts were not the subject of international
preliminary  examination.  The  report  shall  contain  the
indications  provided  for  in  Rule  68.1,  where  the
International Preliminary Examining Authority chose not to
invite the applicant to restrict the claims or to pay
additional fees.

  70.14 Authorized Officer

 The report shall indicate the name of the officer of the
International Preliminary Examining Authority responsible
for that report.

  70.15 Form

 The physical requirements as to the form of the report
shall be prescribed by the Administrative Instructions.

  70.16  Annexes of the Report

  Each  replacement  sheet  under  Rule  66.8(a)  and  each
replacement sheet containing amendments under Article 19
shall, unless superseded by later replacement sheets, be
annexed to the report. Amendments under Article 19 which
have been considered as reversed by an amendment under
Article 34 and letters under Rule 66.8(a) shall not be
annexed.

 70.17  Languages of the Report and the Annexes

 (a)  The report and any annex shall be in the language
in which the international application to which they relate

is  published,  or,  if  the  international  preliminary
examination is carried out, pursuant to Rule 55.2, on the
basis of a translation of the international application in
the language of that translation.

 (b)  [Deleted]

  Rule 71

 Transmittal of the International Preliminary Examination
Report

  71.1  Recipients

 The International Preliminary Examining Authority shall, on
the  same  day,  transmit  one  copy  of  the  international
preliminary examination report and its annexes, if any, to
the International Bureau, and one copy to the applicant.

 71.2  Copies of Cited Documents

 (a)  The request under Article 36(4) may be presented
any time during seven years from the international filing
date of the international application to which the report
relates .

 (b)  The International Preliminary Examining Authority
may require that the party (applicant or elected Office)
presenting the request pay to it the cost of preparing and
mailing the copies. The level of the cost of preparing
copies shall be provided for in the agreements referred to
in  Article  32(2)  between  the  International  Preliminary
Examining Authorities and the International Bureau.

 (c)  [Deleted]

 (d)  Any International Preliminary Examining Authority
may perform the obligations referred to in paragraphs (a)
and (b) through another agency responsible to it.

  Rule 72

 Translation of the International Preliminary Examination
Report

  72.1  Languages

 (a)  Any  elected  State  may  require  that  the
international preliminary examination report, established in
any language other than the official language, or one of the
official languages, of its national Office, be translated
into English.

 (b)  Any such requirement shall be notified to the
International Bureau, which shall promptly publish it in the
Gazette.

  72.2  Copy of Translation for the Applicant

  The International Bureau shall transmit a copy of the
translation referred to in Rule 72.1(a) of the international
preliminary examination report to the applicant at the same
time as it communicates such translation to the interested
elected Office or Offices.

  72.3  Observations on the Translation

 The applicant may make written observations on what, in his
opinion, are errors of translation in the translation of the
international preliminary examination report and shall send
a copy of any such observations to each of the interested
elected Offices and a copy to the International Bureau.

  Rule 73

 Communication of the International Preliminary Examination
Report

  73.1  Preparation of Copies

 The International Bureau shall prepare the copies of the
documents to be communicated under Article 36(3)(a).

  73.2  Time Limit for Communication

 The communication provided for in Article 36(3)(a) shall be
effected as promptly as possible but not earlier than the
communication under Article 20.

  Rule 74

 Translations of Annexes of the International Preliminary
Examination Report and Transmittal Thereof

  74.1  Contents of Translation and Time Limit for
  Transmittal Thereof

 (a)  Where the furnishing of a translation of the
international application is required by the elected Office
under Article 39(1), the applicant shall, within the time
limit applicable under Article 39(1), transmit a translation
of any replacement sheet referred to in Rule 70.16 which is
annexed to the international preliminary examination report
unless such sheet is in the language of the required
translation of the international application. The same time
limit shall apply where the furnishing of a translation of
the international application to the elected Office must,
because of a declaration made under Article 64(2)(a)(i), be
effected within the time limit applicable under Article 22.

 (b)  Where the furnishing under Article 39(1) of a
translation of the international application is not required
by the elected Office, that Ofice may require the applicant
to furnish, within the time limit applicable under that
Article, a translation into the language in which the
international application was published of any replacement
sheet referred to in Rule 70.16 which is annexed to the
international preliminary examination report and is not in
that language.

  Rule 75  [Deleted]

  Rule 76

 Copy, Translation, and Fee Under Article 39(1); Translation
of Priority Document

 76.1, 76.2, and 76.3  [Deleted]

  76.4  Time Limit for Translation of Priority Document

 The applicant shall not be required to furnish to any
elected Office a certified translation of the priority
documentbefore the expiration of the applicable time limit
under Article 39.

  bis
  Rules 22.1(g), 49 and 51  shall apply, provided that:

 (i)  any reference in the said Rules to the designated
Office or to the designated State shall be construed as a
reference to the elected Office or to the elected State,
respectively;

 (ii)  any reference in the said Rules to Article 22 or
Article 24(2) shall be construed as a reference to Article
39(1) or Article 39(3), respectively;

 (iii)  the words "international applications filed" in
Rule 49.1(c) shall be replaced by the words "a demand
submitted;"

 (iv)  for  the  purposes  of  Article  39(1),  where  an
international  preliminary  examination  report  has  been
established, a translation of any amendment under Article 19
shall only be required if that amendment is annexed to that
report.

  76.6  Transitional Provision

 If, on July 12, 1991, Rule 76.5(iv) is not compatible with
the national law applied by the elected Office in respect of
claims amended under Article 19, Rule 76.5(iv) shall not
apply in that respect to that elected Office for as long as
it continues not to be compatible with that law, provided
that  the  said  Office  informs  the  International  Bureau
accordingly by December 31, 1991. The information received
shall be promptly published by the International Bureau in
the Gazette.

  Rule 77

 Faculty Under Article 39(1)(b)

  77.1  Exercise of Faculty

 (a)  Any  Contracting  State  allowing  a  time  limit
expiring later than the time limit provided for in Article
39(1)(a) shall notify the International Bureau of the time
limit so fixed.

 (b)  Any notification received by the International
Bureau under paragraph (a) shall be promptly published by
the International Bureau in the Gazette.

 (c)  Notifications concerning the shortening of the
previously fixed time limit shall be effective in relation
to demands submitted after the expiration of three months
computed  from  the  date  on  which  the  notification  was
published by the International Bureau.

 (d)  Notifications concerning the lengthening of the
previously fixed time limit shall become effective upon
publication by the International Bureau in the Gazette in

respect of demands pending at the time or submitted after
the date of such publication, or, if the Contracting State
effecting the notification fixes some later date, as from
the latter date.

  Rule 78

 Amendment of the Claims, the Description, and the Drawings,
Before Elected Offices

 78.1  Time Limit Where Election Is Effected Prior To Expira
  tion of 19 Months from Priority Date

 (a)  Where the election of any Contracting State is
effected prior to the expiration of the 19th month from the
priority  date,  the  applicant  shall,  if  he  so  wishes,
exercise the right under Article 41 to amend the claims, the
description and the drawings, before the elected Office
concerned within one month from the fulfillment of the
requirements under Article 39(1)(a), provided that, if the
transmittal of the international preliminary examination
report under Article 36(1) has not taken place by the
expiration of the time limit applicable under Article 39, he
shall exercise the said right not later than four months
after such expiration date. In either case, the applicant
may exercise the said right at any other time if so
permitted by the national law of the said State.

 (b)  In any elected State in which the national law
provides that examination starts only on special request,
the national law may provide that the time limit within or
the time at which the applicant may exercise the right under
Article 41 shall, where the election of any Contracting
State is effected prior to the expiration of the 19th month
from the priority date, be the same as that provided by the
national law for the filing of amendments in the case of the
examination, on special request, of national applications,
provided that such time limit shall not expire prior to, or
such time shall not come before, the expiration of the time
limit applicable under paragraph (a).

  78.2  Time Limit Where Election is Effected after
  Expiration of 19 Months from Priority Date

 Where the election of any Contracting State has been
effected after the expiration of the 19th month from the
priority date and the applicant wishes to make amendments
under Article 41, the time limit for making amendments under
Article 28 shall apply.

  78.3  Utility Models

 The provisions of Rules 6.5 and 13.5 shall apply, mutatis
mutandis, before elected Offices. If the election was made
before the expiration of the 19th month from the priority
date, the reference to the time limit applicable under
Article 22 is replaced by a reference to the time limit
applicable under Article 39 .

  PART D

 Rules Concerning Chapter III of the Treaty Rule 79 Calendar

  79.1  Expressing Dates

  Applicants,  national  Offices,  receiving  Offices,
International  Searching  and  Preliminary  Examining
Authorities, and the International Bureau, shall, for the
purposes of the Treaty and the Regulations, express any date
in terms of the Christian era and the Gregorian calendar,
or, if they use other eras and calendars, they shall also
express any date in terms of the Christian era and the
Gregorian calendar.

  Rule 80

 Computation of Time Limits

 80.1  Periods Expressed in Years

 When a period is expressed as one year or a certain number
of years, computation shall start on the day following the
day on which the relevant event occurred, and the period
shall expire in the relevant subsequent year in the month
having the same name and on the day having the same number
as the month and the day on which the said event occurred,
provided that if the relevant subsequent month has no day
with the same number the period shall expire on the last day
of that month.

  80.2  Periods Expressed in Months

 When a period is expressed as one month or a certain number
of months, computation shall start on the day following the
day on which the relevant event occurred, and the period
shall expire in the relevant subsequent month on the day
which has the same number as the day on which the said event
occurred, provided that if the relevant subsequent month has
no day with the same number the period shall expire on the
last day of that month.

 80.3  Periods Expressed in Days

 When a period is expressed as a certain number of days,
computation shall start on the day following the day on
which the relevant event occurred, and the period shall
expire on the day on which the last day of the count has
been reached.

 80.4  Local Dates

 (a)  The date which is taken into consideration as the
starting date of the computation of any period shall be the
date which prevails in the locality at the time when the
relevant event occurred .

 (b)  The date on which any period expires shall be the
date which prevails in the locality in which the required
document must be filed or the required fee must be paid.

  80.5  Expiration on a Non - Working Day

 If the expiration of any period during which any document
or fee must reach a national Office or intergovernmental
organization  falls  on  a  day  on  which  such  Office  or
organization is not open to the public for the purposes of
the transaction of official business, or on which ordinary
mail is not delivered in the locality in which such Office
or organization is situated, the period shall expire on the
next subsequent day on which neither of the said two

circumstances exists.

  80.6  Date of Documents

 (a)  Where a period starts on the day of the date of a
document or letter emanating from a national Office or
intergovernmental organization, any interested party may
prove that the said document or letter was mailed on a day
later than the date it bears, in which case the date of
actual mailing shall, for the purposes of computing the
period, be considered to be the date on which the period
starts. Irrespective of the date on which such a document or
letter was mailed, if the applicant offers to the national
Office  or  intergovernmental  organization  evidence  which
satisfies  the  national  Office  or  intergovernmental
organization that the document or letter was re ceived more
than seven days after the date it bears, the national Office
or intergovernmental organization shall treat the period
starting from the date of the document or letter as expiring
later by an additional number of days which is equal to the
number of days which the document or letter was received
later than seven days after the date it bears.

 (b)  [Deleted]

  80.7  End of Working Day

 (a)  A period expiring on a given day shall expire at
the  moment  the  national  Office  or  intergovernmental
organization with which the document must be filed or to
which the fee must be paid closes for business on that day.

 (b)  Any Office or organization may depart from the
provisions of paragraph (a) up to midnight on the relevant
day.

 (c)  [Deleted]

  Rule 81

 Modification of Time Limits Fixed in the Treaty

  81.1  Proposal

 (a)  Any Contracting State or the Director General may
propose a modification under Article 47(2).

 (b)  Proposals made by a Contracting State shall be
presented to the Director General.

  81.2  Decision by the Assembly

 (a)  When the proposal is made to the Assembly, its text
shall be sent by the Director General to all Contracting
States at least two months in advance of that session of the
Assembly whose agenda includes the proposal.

 (b)  During the discussion of the proposal in the
Assembly, the proposal may be amended or consequential
amendments proposed .

 (c)  The proposal shall be considered adopted if none of
the Contracting States present at the time of voting votes
against the proposal.

  81.3  Voting by Correspondence

 (a)  When  voting  by  correspondence  is  chosen,  the
proposal shall be included in a written communication from
the Director General to the Contracting States, inviting
them to express their vote in writing.

 (b)  The invitation shall fix the time limit within
which the reply containing the vote expressed in writing
must reach the International Bureau. That time limit shall
not  be  less  than  three  months  from  the  date  of  the
invitation.

 (c)  Replies  must  be  either  positive  or  negative.
Proposals for amendments or mere observations shall not be
regarded as votes.

 (d)  The proposal shall be considered adopted if none of
the Contracting States opposes the amendment and if at least
one - half of the Contracting States express either approval
or indifference or abstention.

  Rule 82

 Irregularities in the Mail Service

  82.1 Delay or Loss in Mail

 (a)  Any interested party may offer evidence that he has
mailed the document or letter five days prior to the
expiration of the time limit. Except in cases where surface
mail normally arrives at its destination within two days of
mailing, or where no airmail service is available, such
evidence may be offered only if the mailing was by airmail.
In any case, evidence may be offered only if the mailing was
by mail registered by the postal authorities.

 (b)  If the mailing, in accordance with paragraph (a),
of a document or letter is proven to the satisfaction ofthe
national Office or intergovernmental organization which is
the addressee, delay in arrival shall be excused, or, if the
document or letter is lost in the mail, substitution for it
of  a  new  copy  shall  be  permitted,  provided  that  the
interested party proves to the satisfaction of the said
Office or organization that the document or letter offered
in substitution is identical with the document or letter
lost.

 (c)  In  the  cases  provided  for  in  paragraph  (b),
evidence of mailing within the prescribed time limit, and,
where the document or letter was lost, the substitute
document or letter as well as the evidence concerning its
identity with the document or letter lost shall be submitted
within one month after the date on which the interested
party noticed - or with due diligence should have noticed -
the delay or the loss, and in no case later than six months
after the expiration of the time limit applicable in the
given case.

 (d)  Any  national  Office  or  intergovernmental
organization which has notified the International Bureau
that it will do so shall, where a delivery service other
than the postal authorities is used to mail a document or
letter, apply the provisions of paragraphs (a) to (c) as if
the delivery service was a postal authority. In such a case,

the last sentence of paragraph (a) shall not apply but
evidence may be offered only if details of the mailing were
recorded by the delivery service at the time of mailing. The
notification may contain an indication that it applies only
to mailings using specified delivery services or delivery
services which satisfy specifiedcriteria. The International
Bureau shall publish the information so notified in the
Gazette.

 (e)  Any  national  Office  or  intergovernmental
organization may proceed under paragraph (d):

 (i)  even if, where applicable, the delivery service
used was not one of those specified, or did not satisfy the
criteria  specified,  in  the  relevant  notification  under
paragraph (d), or

 (ii)  even if that Office or organization has not sent to
the International Bureau a notification under paragraph (d).

  82.2  Interruption in the Mail Service

 (a)  Any interested party may offer evidence that on any
of the 10 days preceding the day of expiration of the time
limit the postal service was interrupted on account of war,
revolution, civil disorder, strike, natural calamity, or
other like reason, in the locality where the interested
party resides or has his place of business or is staying.

 (b)  If  such  circumstances  are  proven  to  the
satisfaction of the national Office or intergovernmental
organization which is the addressee, delay in arrival shall
be excused, provided that the interested party proves to the
satisfaction of the said Office or organization that he
effected the mailing within five days after the mail service
was resumed. The provisions of Rule 82.1(c) shall apply
mutatis mutandis .

  bis
  Rule 82

 Excuse by the Designated or Elected State of Delays in
Meeting Certain Time Limits

 bis
  82  .1  Meaning of "Time Limit" in Article 48(2)

 The reference to "any time limit" in Article 48(2) shall be
construed as comprising a reference:

 (i) to any time limit fixed in the Treaty or these
Regulations;

 (ii) to any time limit fixed by the receiving Office, the
International  Searching  Authority,  the  International
Preliminary Examining Authority or the International Bureau
or applicable by the receiving Office under its national
law;

 (iii) to any time limit fixed by, or in the national law
applicable by, the designated or elected Office, for the
performance of any act by the applicant before that Office.

  bis
 82  .2  Reinstatement of Rights and Other Provisions
to Which Article 48(2) Applies

 The provisions of the national law which is referred to in
Article 48(2) concerning the excusing, by the designated or
elected State, of any delay in meeting any time limit are
those provisions which provide for reinstatement of rights,
restoration, restitutio in integrum or further processing in
spite of noncompliance with a time limit, and any other
provision providing for the extension of time limits or for
excusing delays in meeting time limits.

  ter
  Rule 82

 Rectification of Errors Made by the Receiving Office or by
the International Bureau

  ter
  82  .1  Errors Concerning the International Filing Date
  and the Priority Claim

  If  the  applicant  proves  to  the  satisfaction  of  any
designated or elected Office that the international filing
date is incorrect due to an error made by the receiving
Office or that the declaration made under Article 8(1) has
been erroneously cancelled or corrected by the receiving
Office or the International Bureau, and if the error is an
error such that, had it been made by the designated or
elected Office itself, that Office would rectify it under
the national law or national practice, the said Office shall
rectify  the  error  and  shall  treat  the  international
application  as  if  it  had  been  accorded  the  rectified
international filing date or as if the declaration under
Article 8(1) had not been cancelled or corrected, as the
case may be.

  Rule 83

 Right to Practice Before International Authorities

  83.1  Proof of Right

  The  International  Bureau,  the  competent  International
Searching  Authority,  and  the  competent  International
Preliminary Examining Authority may require the production
of proof of the right to practice referred to in Article 49.

  bis Where the International Bureau Is the Receiving
  83.1
  Office

 (a) Any person who has the right to practice before the
national Office of, or acting for, a Contracting state of
which the applicant or, if there are two or more applicants,
any of the applicants is a resident or national shall be
entitled  to  practice  in  respect  of  the  international
application before the International Bureau in its capacity
as receiving Office under Rule 19.1(a)(iii).

 (b) Any person having the right to practice before the
International Bureau in its capacity as receiving Office in
respect of an international application shall be entitled to
practice  in  respect  of  that  application  before  the
International Bureau in any other capacity and before the
competent International Searching Authority and competent
International Preliminary Examining Authority.

 83.2  Information

 (a)  The  national  Office  or  the  intergovernmental
organization which the interested person is alleged to have
a right to practice before shall, upon request, inform the
International Bureau, the competent International Searching
Authority,  or  the  competent  International  Preliminary
Examining Authority, whether such person has the right to
practice before it.

 (b)  Such  information  shall  be  binding  upon  the
International Bureau, the International Searching Authority,
or the International Preliminary Examining Authority, as the
case may be.

  PART E

 Rules Concerning Chapter V of the Treaty

  Rule 84

 Expenses of Delegations

  84.1  Expenses Borne by Governments

 The expenses of each Delegation participating in any organ
established by or under the Treaty shall be borne by the
Government which has appointed it.

  Rule 85

 Absence of Quorum in the Assembly

  85.1  Voting by Correspondence

  In  the  case  provided  for  in  Article  53(5)(b),  the
International Bureau shall communicate the decisions of the
Assembly (other than those concerning the Assembly's own
procedure)  to  the  Contracting  States  which  were  not
represented and shall invite them to express in writing
their vote or abstention within a period of three months
from the date of the communication. If, at the expiration of
that period, the number of Contracting States having thus
expressed their vote or abstention attains the number of
Contracting States which was lacking for attaining the
quorum in the session itself, such decisions shall take
effect provided that at the same time the required majority
still obtains.

  Rule 86

 The Gazette

  86.1  Contents

 The Gazette referred to in Article 55(4) shall contain:

 (i)  for each published international application, data
specified by the Administrative Instructions taken from the
front page of the pamphlet published under Rule 48, the
drawing (if any) appearing on the said front page, and the
abstract,

 (ii)  the schedule of all fees payable to the receiving
Offices, the International Bureau, and the International
Searching and Preliminary Examining Authorities,

 (iii)  notices the publication of which is required under
the Treaty or these Regulations,

 (iv)  information, if and to the extent furnished to the
International Bureau by the designated or elected Offices,
on the question whether the requirements provided for in
Articles 22 or 39 have been complied with in respect of the
international  applications  designating  or  electing  the
Office concerned ,

 (v)  any other useful information prescribed by the
Administrative  Instructions,  provided  access  to  such
information is not prohibited under the Treaty or these
Regulations.

  86.2  Languages

 (a)  The Gazette shall be published in an English -
language edition and a French - language edition. It shall
also  be  published  in  editions  in  any  other  language,
provided the cost of publication is assured through sales or
subventions.

 (b)  The Assembly may order the publication of the
Gazette  in  languages  other  than  those  referred  to  in
paragraph (a).

  86.3  Frequency

 The frequency of publication of the Gazette shall be
determined by the Director General.

  86.4  Sale

 The subscription and other sale prices of the Gazette shall
be determined by the Director General.

  86.5  Title

 The title of the Gazette shall be determined by the
Director General.

  86.6  Further Details

 Further details concerning the Gazette may be provided for
in the Administrative Instructions.

  Rule 87

 Copies of Publications

  87.1  International Searching and Preliminary Examining
  Authorities

  Any  International  Searching  or  Preliminary  Examining
Authority shall have the right to receive, free of charge,
two copies of every published international application, of
the  Gazette,  and  of  any  other  publication  of  general
interest published by the International Bureau in connection
with the Treaty or these Regulations.

  87.2  National Offices

 (a)  Any  national  Office  shall  have  the  right  to
receive,  free  of  charge,  one  copy  of  every  published

international application, of the Gazette, and of any other
publication  of  general  interest  published  by  the
International Bureau in connection with the Treaty or these
Regulations.

 (b)  The publications referred to in paragraph (a) shall
be sent on special request. If any publication is available
in more than one language, the request shall specify the
language or languages in which it is desired.

  Rule 88

 Amendment of the Regulations

  88.1  Requirement of Unanimity

 Amendment of the following provisions of these Regulations
shall require that no State having the right to vote in the
Assembly vote against the proposed amendment:

 (i)  Rule 14.1 (Transmittal Fee),

 (ii)  [Deleted]

 (iii)  Rule 22.3 (Time Limit under Article 12(3)),

 (iv)  Rule 33 (Relevant Prior Art for International
Search),

 (v)  Rule 64 (Prior Art for International Preliminary
Examination),

 (vi)  Rule 81 (Modification of Time Limits Fixed in the
Treaty),

 (vii)  the present paragraph (i.e., Rule 88.1).

  88.2  [Deleted]

  88.3  Requirement of Absence of Opposition by Certain
  States

 Amendment of the following provisions of these Regulations
shall  require  that  no  State  referred  to  in  Article
58(3)(a)(ii) and having the right to vote in the Assembly
vote against the proposed amendment:

 (i)  Rule 34 (Minimum Documentation),

 (ii)  Rule 39 (Subject Matter under Article 17(2)(a)(i)),

 (iii)  Rule 67 (Subject Matter under Article 34(4)(a)(i)),

 (iv)  the present paragraph (i.e., Rule 88.3).

  88.4  Procedure

 Any proposal for amending a provision referred to in Rules
88.1 or 88.3 shall, if the proposal is to be decided upon in
the Assembly, be communicated to all Contracting States at
least two months prior to the opening of that session of the
Assembly which is called upon to make a decision on the
proposal.

  Rule 89

  Administrative Instructions

  89.1  Scope

 (a)  The  Administrative  Instructions  shall  contain
provisions:

 (i)  concerning  matters  in  respect  of  which  these
Regulations expressly refer to such Instructions,

 (ii)  concerning  any  details  in  respect  of  the
application of these Regulations.

 (b)  The Administrative Instructions shall not be in
conflict  with  the  provisions  of  the  Treaty,  these
Regulations, or any agreement concluded by the International
Bureau with an International Searching Authority, or an
International Preliminary Examining Authority.

  89.2  Source

 (a)  The Administrative Instructions shall be drawn up
and promulgated by the Director General after consultation
with the receiving Offices and the International Searching
and Preliminary Examining Authorities.

 (b)  They may be modified by the Director General after
consultation with the Offices or Authorities which have a
direct interest in the proposed modification.

 (c)  The Assembly may invite the Director General to
modify the Administrative Instructions, and the Director
General shall proceed accordingly.

  89.3  Publication and Entry into Force

 (a)  The  Administrative  Instructions  and  any
modification thereof shall be published in the Gazette.

 (b)  Each publication shall specify the date on which
the published provisions come into effect. The dates may be
different  for  different  provisions,  provided  that  no
provision may be declared effective prior to its publication
in the Gazette .

  PART F Rules Concerning Several Chapters of the Treaty

  Rule 90

 Agents and Common Representatives

  90.1  Appointment as Agent

 (a)  A person having the right to practice before the
national Office with which the international application is
filed or, where the international application is filed with
the International Bureau, having the right to practice in
respect  of  the  international  application  before  the
International Bureau as receiving Office may be appointed by
the applicant as his agent to represent him before the
receiving  Office,  the  Inter  national  Bureau,  the
International Searching Authority, and the International
Preliminary Examining Authority.

 (b)  A person having the right to practice before the
national Office or intergovernmental organization which acts
as the International Searching Authority may be appointed by
the applicant as his agent to represent him specifically
before that Authority .

 (c)  A person having the right to practice before the
national Office or intergovernmental organization which acts
as the International Preliminary Examining Authority may be
appointed by the applicant as his agent to represent him
specifically before that Authority.

 (d)  An agent appointed under paragraph (a) may, unless
otherwise indicated in the document appointing him, appoint
one or more subagents to represent the applicant as the
applicant's agent:

 (i)  before the receiving Office, the International
Bureau,  the  International  Searching  Authority,  and  the
International Preliminary Examining Authority, provided that
any person so appointed as sub - agent has the right to
practice  before  the  national  Office  with  which  the
international application was filedor to practice in respect
of the international application before the International
Bureau as receiving Office, as the case may be;

 (ii)  specifically before the International Searching
Authority  or  the  International  Preliminary  Examining
Authority, provided that any person so appointed as sub -
agent has the right to practice before the national Office
or  intergovernmental  organization  which  acts  as  the
International  Searching  Authority  or  International
Preliminary Examining Authority, as the case may be.

  90.2  Common Representative

 (a)  Where there are two or more applicants and the
applicants have not appointed an agent representing all of
them (a "common agent") under Rule 90.1(a), one of the
applicants  who  is  entitled  to  file  an  international
application according to Article 9 may be appointed by the
other applicants as their common representative.

 (b)  Where there are two or more applicants and all the
applicants have not appointed a common agent under Rule
90.1(a) or a common representative under paragraph (a), the
applicant  first  named  in  the  request  who  is  entitled
according to Rule 19.1 to file an international application
with the receiving Office shall be considered to be the
common representative of all the applicants.

  90.3  Effects of Acts by or in Relation to Agents and
  Common Representatives

 (a)  Any act by or in relation to an agent shall have
the effect of an act by or in relation to the applicant or
applicants concerned.

 (b)  If there are two or more agents representing the
same applicant or applicants, any act by or in relation to
any of those agents shall have the effect of an act by or in
relation to the said applicant or applicants.

  bis
 (c)  Subject to Rule 90  .5(a) , second sentence, any

act by or in relation to a common representative or his
agent shall have the effect of an act by or in relation to
all the applicants.

 90.4  Manner of Appointment of Agent or Common
  Representative

 (a)  The appointment of an agent shall be effected by
the applicant signing the request, the demand, or a separate
power of attorney. Where there are two or more applicants,
the appointment of a common agent or common representative
shall be effected by each applicant signing, at his choice,
the request, the demand or a separate power of attorney.

 (b)  Subject to Rule 90.5, a separate power of attorney
shall be submitted to either the receiving Office or the
International  Bureau,  provided  that,  where  a  power  of
attorney appoints an agent under Rule 90.1(b), (c), or
(d)(ii),  it  shall  be  submitted  to  the  International
Searching  Authority  or  the  International  Preliminary
Examining Authority, as the case may be.

 (c)  If the separate power of attorney is not signed, or
if the required separate power of attorney is missing, or if
the indication of the name or address of the appointed
person does not comply with Rule 4.4, the power of attorney
shall  be  considered  nonexistent  unless  the  defect  is
corrected.

  90.5 General Power of Attorney

 (a)  Appointment of an agent in relation to a particular
international application may be effected by referring in
the request, the demand, or a separate notice to an existing
separate  power  of  attorney  appointing  that  agent  to
represent the applicant in relation to any international
application which may be filed by that applicant (i.e., a
"general power of attorney"), provided that:

 (i)  the general power of attorney has been deposited in
accordance with paragraph (b), and

 (ii)  a copy of it is attached to the request, the demand
or the separate notice, as the case may be; that copy need
not be signed.

 (b)  The general power of attorney shall be deposited
with the receiving Office, provided that, where it appoints
an agent under Rule 90.1(b), (c), or (d)(ii), it shall be
deposited with the International Searching Authority or the
International Preliminary Examining Authority, as the case
may be.

  90.6  Revocation and Renunciation

 (a)  Any  appointment  of  an  agent  or  common
representative may be revoked by the persons who made the
appointment or by their successors in title, in which case
any appointment of a sub - agent under Rule 90.1(d) by that
agent shall also be considered as revoked. Any appointment
of a subagent under Rule 90.1(d) may also be revoked by the
applicant concerned.

 (b)  The appointment of an agent under Rule 90.1(a)
shall,  unless  otherwise  indicated,  have  the  effect  of

revoking any earlier appointment of an agent made under that
Rule.

 (c)  The appointment of a common representative shall,
unless otherwise indicated, have the effect of revoking any
earlier appointment of a common representative.

 (d)  An agent or a common representative may renounce
his appointment by a notification signed by him.

 (e)  Rule 90.4(b) and (c) shall apply, mutatis mutandis,
to a document containing a revocation or renunciation under
this Rule .

  bis
  Rule 90

 Withdrawals

  bis
  90  .1  Withdrawal of the International Application

 (a)  The  applicant  may  withdraw  the  international
application at any time prior to the expiration of 20 months
from the priority date or, where Article 39(1) applies,
prior to the expiration of 30 months from the priority date.

 (b)  Withdrawal shall be effective on receipt of a
notice addressed by the applicant, at his option, to the
International Bureau, to the receiving Office or, where
Article 39(1) applies, to the International Preliminary
Examining Authority.

 (c)  No international publication of the international
application shall be effected if the notice of withdrawal
sent by the applicant or transmitted by the receiving Office
or the International Preliminary Examining Authority reaches
the International Bureau before the technical preparations
for international publication have been completed.

 bis
  90  .2  Withdrawal of Designations

 (a)  The applicant may withdraw the designation of any
designated State at any time prior to the expiration of 20
months from the priority date or, where Article 39(1)
applies in respect of that State, prior to the expiration of
30  months  from  the  priority  date.  Withdrawal  of  the
designation of aState which has been elected shall entail
  bis
withdrawal of the corresponding election under Rule 90  .4.

 (b)  Where a State has been designated for the purpose
of obtaining both a national patent and a regional patent,
withdrawal of the designation of that State shall be taken
to mean withdraw al of only the designation for the purpose
of obtaining a national patent, except where otherwise
indicated .

 (c)  Withdrawal of the designations of all designated
States shall be treated as withdrawal of the international
  bis
application under Rule 90  .1.

 (d)  Withdrawal shall be effective on receipt of a
notice addressed by the applicant, at his option, to the
International Bureau, to the receiving Office or, where
Article 39(1) applies, to the International Preliminary

Examining Authority.

 (e)  No international publication of the designation
shall be effected if the notice of withdrawal sent by the
applicant or transmitted by the receiving Office or the
International Preliminary Examining Authority reaches the
International Bureau before the technical preparations for
international publication have been completed.

  bis
  90  .3  Withdrawal of Priority Claims

 (a)  The applicant may withdraw a priority claim, made
in the international application under Article 8(1), at any
time prior to the expiration of 20 months from the priority
date or, where Article 39(1) applies, 30 months from the
priority date.

 (b)  Where the international application contains more
than one priority claim, the applicant may exercise the
right provided for in paragraph (a) in respect of one or
more or all of the priority claims.

 (c)  Withdrawal shall be effective on receipt of a
notice addressed by the applicant, at his option, to the
International Bureau, to the receiving Office or, where
Article 39(1) applies, to the International Preliminary
Examining Authority.

 (d)  Where the withdrawal of a priority claim causes a
change in the priority date, any time limit which is
computed from the original priority date and which has not
already expired shall, subject to paragraph (e), be computed
from the priority date resulting from that change.

 (e)  In the case of the time limit referred to in
Article 21(2)(a), the International Bureau may nevertheless
proceed with the international publication on the basis of
the said time limit as computed from the original priority
dateif the notice of withdrawal sent by the applicant or
transmitted by the receiving Office or the International
Preliminary Examining Authority reaches the International
Bureau after the completion of the technical preparations
for international publication.

 bis
  90  .4  Withdrawal of the Demand, or of Elections

 (a)  The applicant may withdraw the demand or any or all
elections at any time prior to the expiration of 30 months
from the priority date.

 (b)  Withdrawal shall be effective upon receipt of a
notice addressed by the applicant to the International
Bureau.

 (c)  If the notice of withdrawal is submitted by the
applicant  to  the  International  Preliminary  Examining
Authority, that Authority shall mark the date of receipt on
the notice and transmit it promptly to the International
Bureau.  The  notice  shall  be  considered  to  have  been
submitted to the International Bureau on the date marked.

  bis
 90  .5  Signature

 (a)  Any notice of withdrawal referred to in Rules

  bis  bis
90  .1 to 90  .4 shall, subject to paragraph (b), be
signed by the applicant. Where one of the applicants is
considered  to  be  the  common  representative  under  Rule
90.2(b),  such  notice  shall,  subject  to  paragraph  (b),
require the signature of all the applicants.

 (b)  Where two or more applicants file an international
application which designates a State whose national law
requires that national applications be filed by the inventor
and where an applicant for that designated State who is an
inventor could not be found or reached after diligent
  bis
effort, a notice of withdrawal referred to in Rules 90  .1
  bis
to 90  .4 need not be signed by that applicant ("the
applicant concerned") if it is signed by at least one
applicant and

  (i)  a  statement  is  furnished  explaining,  to  the
satisfaction of the receiving Office, the International
Bureau,  or  the  International  Preliminary  Examining
Authority, as the case may be, the lack of signature of the
applicant concerned, or

 (ii) in the case of a notice of withdrawal referred to in
  bis  bis  bis
Rule 90  .1(b) , 90  .2(d) , or 90  .3(c) , the applicant
concerned did not sign the request but the requirements of
Rule 4.15(b) were complied with, or

 (iii) in the case of a notice of withdrawal referred to in
  bis
Rule 90  .4(b) , the applicant concerned did not sign the
demand but the requirements of Rule 53.8(b) were complied
with, or did not sign the later election concerned but the
requirements of Rule 56.1(c) were complied with.

  bis
  90  .6  Effect of Withdrawal

 bis
 (a)  Withdrawal under Rule 90  of the international
application, any designation, any priority claim, the demand
or any election shall have no effect in any designated or
elected Office where the processing or examination of the
international application has already started under Article
23(2) or Article 40(2).

 (b)  Where the international application is withdrawn
  bis
under Rule 90  .1 , the international processing of the
international application shall be discontinued.

 (c)  Where the demand or all elections are withdrawn
  bis
under Rule 90  .4 , the processing of the international
application  by  the  International  Preliminary  Examining
Authority shall be discontinued.

  bis
  90  .7  Faculty under Article 37(4)(b)

 (a)  Any Contracting State whose national law provides
for what is described in the second part of Article 37(4)(b)
shall notify the International Bureau in writing.

 (b)  The notification referred to in paragraph (a) shall
be promptly published by the International Bureau in the
Gazette, and shall have effect in respect of international
applications filed more than one month after the date of
such publication.

  Rule 91

 Obvious Errors in Documents

  91.1  Rectification

  quater
 (a)  Subject to paragraphs (b) to (g  ) , obvious
errors in the international application or other papers
submitted by the applicant may be rectified.

 (b)  Errors which are due to the fact that something
other than what was obviously intended was written in the
international application or other paper shall be regarded
as obvious errors. The rectification itself shall be obvious
in the sense that anyone would immediately realize that
nothing else could have been intended than what is offered
as rectification.

 (c)  Omissions of entire elements or sheets of the
international application, even if clearly resulting from
inattention, at the stage, for example, of copying or
assembling sheets, shall not be rectifiable.

 (d)  Rectification may be made on the request of the
applicant. The authority having discovered what appears to
be an obvious error may invite the applicant to present a
request for rectification as provided in paragraphs (e) to
  quater
(g -  ). Rule 26.4(a) shall apply mutatis mutandis to
the manner in which rectifications shall be requested.

 (e)  No rectification shall be made except with the
express authorization:

 (i)  of the receiving Office if the error is in the
request,

 (ii)  of the International Searching Authority if the
error is in any part of the international application other
than  the  request  or  in  any  paper  submitted  to  that
Authority,

 (iii) of the International Preliminary Examining Authority
if the error is in any part of the international application
other than the request or in any paper submitted to that
Authority, and

 (iv) of the International Bureau if the error is in any
paper,  other  than  the  international  application  or
amendments or corrections to that application, submitted to
the International Bureau.

 (f)  Any authority which authorizes or refuses any
rectification shall promptly notify the applicant of the
authorization or refusal and, in the case of refusal, of the
reasons  therefor.  The  authority  which  authorizes  a
rectification shall promptly notify the International Bureau
accordingly. Where the authorization of the rectification
was refused, the International Bureau shall, upon request
made by the applicant prior to the time relevant under
  bis  ter  quater
paragraph (g  ) , (g  ) , or (g  ) and subject to the
payment of a special fee whose amount shall be fixed in the
Administrative  Instructions,  publish  the  request  for
rectification together with the international application. A

copy of the request for rectification shall be included in
the communication under Article 20 where a copy of the
pamphlet is not used for that communication or where the
international application is not published by virtue of
Article 64(3).

 (g)  The authorization for rectification referred to in
  bis  ter
paragraph (e) shall, subject to paragraphs (g  ) , (g  ) ,
  quater
and (g  ) , be effective:

 (i) where it is given by the receiving Office or by the
International Searching Authority, if its notification to
the International Bureau reaches that Bureau before the
expiration of 17 months from the priority date;

 (ii) where it is given by the International Preliminary
Examining Authority, if it is given before the establishment
of the international preliminary examination report;

 (iii) where it is given by the International Bureau, if it
is given before the expiration of 17 months from the
priority date.

  bis
 (g  )  If  the  notification  made  under  paragraph
(g)(i)  reaches  the  International  Bureau,  or  if  the
rectification made under paragraph (g)(iii) is authorized by
the International Bureau, after the expiration of 17 months
from the priority date but before the technical preparations
for  international  publication  have  been  completed,  the
authorization shall be effective and the rectification shall
be incorporated in the said publication.

  ter
 (g  ) Where  the  applicant  has  asked  the
International  Bureau  to  publish  his  international
application before the ex piration of 18 months from the
priority date, any notification made under paragraph (g)(i)
must reach, and any rectification made under paragraph
(g)(iii) must be authorized by, the International Bureau, in
order for the authorization to be effective, not later than
at the time of the completion of the technical preparations
for international publication.

  quater
 (g  )  Where the international application is not
published by virtue of Article 64(3), any notification made
under paragraph (g)(i) must reach, and any rectification
made under paragraph (g)(iii) must be authorized by, the
International Bureau, in order for the authorization to be
effective, not later than at the time of the communication
of the international application under Article 20.

  Rule 92

 Correspondence

  92.1  Need for Letter and for Signature

 (a)  Any paper submitted by the applicant in the course
of the international procedure provided for in the Treaty
and  these  Regulations,  other  than  the  international
application itself, shall, if not itself in the form of a
letter,  be  accompa  nied  by  a  letter  identifying  the
international application to which it relates. The letter
shall be signed by the applicant.

 (b)  If the requirements provided for in paragraph (a)
are not complied with, the applicant shall be informed as
tothe noncompliance and invited to remedy the omission
within a time limit fixed in the invitation. The time limit
so fixed shall be reasonable in the circumstances; even
where the time limit so fixed expires later than the time
limit applying to the furnishing of the paper (or even if
the latter time limit has already expired), it shall not be
less than 10 days and not more than one month from the
mailing of the invitation. If the omission is remedied
within the time limit fixed in the invitation, the omission
shall be disregarded; otherwise, the applicant shall be
informed that the paper has been disregarded .

 (c)  Where noncompliance with the requirements provided
for in paragraph (a) has been overlooked and the paper taken
into account in the international procedure, the non -
compliance shall be disregarded.

  92.2 Languages

 (a)  Subject to Rules 55.1 and 66.9 and to paragraph (b)
of this Rule, any letter or document submitted by the
applicant to the International Searching Authority or the
International Preliminary Examining Authority shall be in
the same language as the international application to which
it relates. However,where a translation of the international
application has been transmitted under Rule 12.1(c) or
furnished under Rule 55.2(a) or (c), the language of such
translation shall be used.

 (b)  Any letter from the applicant to the International
Searching  Authority  or  the  International  Preliminary
Examining Authority may be in a language other than that of
the international application, provided the said Authority
authorizes the use of such language.

 (c)  [Deleted]

 (d)  Any letter from the applicant to the International
Bureau shall be in English or French.

 (e)  Any letter or notification from the International
Bureau to the applicant or to any national Office shall be
in English or French.

  92.3  Mailings by National Offices and Intergovernmental
  Organizations

 Any document or letter emanating from or transmitted by a
national Office or an intergovernmental organization and
constituting an event from the date of which any time limit
under the Treaty or these Regulations commences to run shall
be sent by air mail, provided that surface mail may be used
instead of air mail in cases where surface mail normally
arrives at its destination within two days from mailing or
where air mail service is not available.

 92.4 Use of Telegraph, Teleprinter, Facsimile Machine, Etc.

 (a)  A document making up the international application,
and any later document or correspondence relating thereto,
may, notwithstanding the provisions of Rules 11.14 and
92.1(a), but subject to paragraph (h), be transmitted, to

the extent feasible, by telegraph, teleprinter, facsimile
machine, or other like means of communication producing a
printed or written document.

 (b)  A signature appearing on a document transmitted by
facsimile machine shall be recognized for the purposes of
the Treaty and these Regulations as a proper signature.

 (c)  Where the applicant has attempted to transmit a
document by any of the means referred to in paragraph (a)
but part or all of the received document is illegible or
part of the document is not received, the document shall be
treated as not having been received to the extent that the
received  document  is  illegible  or  that  the  attempted
transmission  failed.  The  national  Office  or
intergovernmental organization shall promptly notify the
applicant accordingly.

 (d)  Any  national  Office  or  intergovernmental
organization may require that the original of any document
transmitted by any of the means referred to in paragraph (a)
and  an  accompanying  letter  identifying  that  earlier
transmission be furnished within 14 days from the date of
the transmission, provided that such requirement has been
notified to the International Bureau and the International
Bureau has published information thereon in the Gazette. The
notification shall specify whether such requirement concerns
all or only certain kinds of documents.

 (e)  Where the applicant fails to furnish the original
of a document as required under paragraph (d), the national
Of fice or intergovernmental organization concerned may,
depending on the kind of document transmitted and having
regard to Rules 11 and 26.3,

 (i)  waive the requirement under paragraph (d), or

 (ii)  invite the applicant to furnish, within a time
limit which shall be reasonable under the circumstances and
shall be fixed in the invitation, the original of the
document transmitted, provided that, where the document
transmitted contains defects, or shows that the original
contains defects, in respect of which the national Office or
intergovernmental organization may issue an invitation to
correct, that Office or organization may issue such an
invitation in addition to, or instead of, proceeding under
item (i) or (ii) .

 (f)  Where the furnishing of the original of a document
is not required under paragraph (d) but the national Office
or intergovernmental organization considers it necessary to
receive the original of the said document, it may issue an
in vitation as provided for under paragraph (e)(ii) .

 (g)  If the applicant fails to comply with an invitation
under paragraph (e)(ii) or (f):

 (i)  where the document concerned is the international
application, the latter shall be considered withdrawn and
the receiving Office shall so declare;

 (ii)  where  the  document  concerned  is  a  document
subsequent to the international application, the document
shall be considered as not having been submitted.

 (h)  No  national  Office  or  intergovernmental
organization  shall  be  obliged  to  receive  any  document
submitted by a means referred to in paragraph (a) unless it
has notified the International Bureau that it is prepared to
receive such a document by that means and the International
Bureau has published information thereon in the Gazette.

  bis
  Rule 92

 Recording of Changes in Certain Indications in the Request
or the Demand

  bis
  92  .1  Recording of Changes by the International Bureau

 (a)  The International Bureau shall, on the request of
the applicant or the receiving Office, record changes in the
following indications appearing in the request or demand:

 (i)  person, name, residence, nationality, or address of
the applicant,

 (ii)  person, name, or address of the agent, the common
representative, or the inventor.

 (b)  The International Bureau shall not record the
requested change if the request for recording is received by
it after the expiration:

 (i)  of the time limit referred to in Article 22(1),
where Article 39(1) is not applicable with respect to any
Contracting State;

 (ii)  of the time limit referred to in Article 39(1)(a),
where Article 39(1) is applicable with respect to at least
one Contracting State.

  Rule 93

 Keeping of Records and Files

  93.1  The Receiving Office

 Each receiving Office shall keep the records relating to
each international application or purported international
application, including the home copy, for at least 10 years
from  the  international  filing  date  or,  where  no
international filing date is accorded, from the date of
receipt.

  93.2  The International Bureau

 (a)  The International Bureau shall keep the file,
including the record copy, of any international application
for at least 30 years from the date of receipt of the record
copy.

 (b)  The basic records of the International Bureau shall
be kept indefinitely.

 93.3  The International Searching and Preliminary Examining
  Authorities

  Each  International  Searching  Authority  and  each
International Preliminary Examining Authority shall keep the

file of each international application it receives for at
least 10 years from the international filing date.

  93.4  Reproductions

 For the purposes of this Rule, records, copies, and files
shall  also  mean  photographic  reproductions  of  records,
copies,  and  files,  whatever  may  be  the  form  of  such
reproductions (microfilms or other).

  Rule 94

 Furnishing of Copies by the International Bureau and the
International Preliminary Examining Authority

  94.1  Obligation To Furnish

 At the request of the applicant or any person authorized by
the  applicant,  the  International  Bureau  and  the
International Preliminary Examining Authority shall furnish,
subject to reimbursement of the cost of the service, copies
of any document contained in the file of the applicant's
international  application  or  purported  international
application.

  Rule 95

 Availability of Translations

  95.1 Furnishing of Copies of Translations

 (a)  At the request of the International Bureau, any
designated or elected Office shall provide it with a copy of
the translation of the international application furnished
by the applicant to that Office.

 (b)  The International Bureau may, upon request and
subject to reimbursement of the cost, furnish to any person
copies of the translations received under paragraph (a).

  Rule 96

 The Schedule of Fees

 96.1  Schedule of Fees Annexed to Regulations

 The amounts of the fees referred to in Rules 15 and 57
shall  be  expressed  in  Swiss  currency.  They  shall  be
specified in the Schedule of Fees which is annexed to these
Regula tions and forms an integral part thereof.

  SCHEDULE OF FEES

  Fees  Amounts

 1.  Basic Fee: (Rule 15.2(a))

 (a)  if the international application contains not more
than 30 sheets  762  Swiss francs

 (b)  in the international application contains more than
30 sheets  762  Swiss francs plus 14 Swiss francs for
each sheet in excess of 30 sheets

 2.  Designation Fee: (Rule 15.2(a))

 (a)  for designations made under Rule 4.9(a)  185 
Swiss francs per designation, provided that any designation
made under Rule 4.9(a) in excess of 10 shall not require the
payment of a designation fee

 (b)  for  designations  made  under  Rule  4.9(b)  and
confirmed under Rule 4.9(c)  185  Swiss  francs  per
designation

 3.  Confirmation Fee: (Rule 15.5(a)) 50% of the sum of
the designation fees payable under item2(b)

 4.  Handling Fee: (Rule 57.2(a)) 233 Swiss francs

 PCT INDEX-LEGEND

 Acronym/Term

 Meaning

 Art.  Patent Cooperation Treaty Article

 A.I.  Patent  Cooperation  Treaty  Administrative
Instruction

 CFR  U.S.C. ode of Federal Regulations

 DO  Designated Office

 EO  Elected Office

 HC  Home Copy of International Application

 IA  International Application

 IB  International Bureau

 IPE  International Preliminary Examination

 IPEA  International Preliminary Examining Authority

 IPER  International Preliminary Examination Report

 Ipub  International Publication

 IS  International Search

 ISA  International Searching Authority

 ISR  International Search Report

 PCT  Patent Cooperation Treaty

 PD  Priority Date of Earlier Filed National Application

 RC  Record Copy of International Application

 RO  Receiving Office

 Rule  Patent Cooperation Treaty Rule

 SC  Search Copy of International Application

 U.S.C.  United States Code

 USPTO  United States Patent and Trademark Office

  A

 Abandonment of IA as to USPTO . . 37 CFR 1.494(g)

 37 CFR 1.495(h)

 Abbreviated expressions used in IA

 Meaning of . . A.I. 101

 37 CFR 1.401

 Codes/Indications . . A.I. 115

 Abstract . . Rule 8

 Amendment by ISA in response to applicant's comments . .
. . . A.I. 515

 Missing or defective . . Rule 38

 U.S. Rule regarding . . 37 CFR 1.438

 Absence of quorum in assembly, voting . . Rule 25

 Additional (new) matter in request, deletion of . .
A.I. 303

 Addresses of applicants, inventors and agents . . Rule
4.4

 Administrative instructions - scope, source, entry into
force . . Rule 89

 Administrative provisions of the PCT

 Assembly . . Art. 53

 Committee for technical cooperation . . Art. 56

 Executive committee . . Art. 54

 Finances . . Art. 57

 International bureau . . Art. 55

 Regulations . . Art. 58

 Agent

 See also Common representative

 See also Representative

  "Applicant"  encompasses  the  term  "agent"  in  certain
situations . . Rule 2.1

 Appointment of . . Rule 90.1

  bis
 Changes, recording of by IB . . Rule 93  .1

 In general . . Rule 2.2

 Rule 4.7

 Rule 90

 Indications concerning, In demand . . Rule 53.2

 Rule 53.5

  In request . . Art. 4

 Rule 4.1

 Rule 4.7

 National law requirements . . Art. 27

 bis
 Rule 51  .1b

 Notice of change of agent sent to IB . . A.I. 328

 Notice of change of agent sent from IB to ISA and IPEA . .
. . . A.I. 425

 Notice of change of agent sent from ISA to IB. . .A.I. 512

 Notice of change of agent sent from IPEA to IB . . A.I. 608

 Agent-Con.

 Right of agent to practice before international authorities
. . . Art. 49

 Amendment

 Copy of amendment under Article 19 for IPEA . . Rule 62

 Copy of amendment under Article 19 sent (communicated) to
DO . . Art. 20

 Rule 47.1(b)

 Definition of, before IPEA . . Rule 66.5

 Form of, before IPEA . . Rule 66.8

 Language of, before IPEA . . Rule 66.9

 Processing of Article 19 amendment by IB . . A.I. 417

 Processing of by IPEA . . A.I. 602

 Of abstract by ISA . . A.I. 515

 Of claims, description, and drawing before DO . . Rule 52

 Of claims before IB . . Art. 19

 Rule 46

 Of claims before IPEA . . Art. 34

 37 CFR 1.485

 Of claims before the elected Office . . Art. 41

 Rule 78

 Of claims Numbering and identification in amendment . .A.I.
205

 Of description before IPEA . . Art. 34

 37 CFR 1.485

 Of description before elected Office . . Art. 41

 Rule 78

 Of drawing before elected Office . . Art. 41

 Rule 78

 Of drawing before IPEA . . Art. 34

 37 CFR 1.485

 Of certain PCT provisions . . Art. 61

  See also Revision of PCT

 Of PCT regulations . . Rule 88

 Art. 58

 Sheet(s) - processing of by receiving Office . . A.I. 309

 Applicant

 Different applicants for different designated states .
.Rule 4.5

 A.I. 203

 Entitled to make a demand . . Art. 31(2)

 Rule 54

 First named used to identify international application . .
. . . A.I. 105

 Improper, in U.S. national stage . . 35 U.S.C. 373

 In general . . Art. 9

 Rule 2.1

 Rule 4.5

 Rule 18

 Recording by IB of changes regarding applicant . .Rule
  bis
92

 Applicant-Con.

 U.S. regulation regarding . . 37 CFR 1.421

 Application - See  also International application

 Assembly of PCT contracting states . . Art 53

 Executive committee established by . . Art. 54

 Assignment

 Of IA, possible requirement to furnish to a national Office
  bis
. . . Rule 51  .1

 Recording by USPTO if U.S. is a designated country in the
IA . .37 CFR 3.21

 Authorized officer . . Rule 43,8

 Rule 70.14

 A.I. 514

 A.I. 612

 Availability of translation of IA to IB . . Rule 95

  B

 Biological invention,  See also

 Microbiological invention

 Nucleotide or amino acid sequence listing

 Sequence listing

  C

 Calendar (Gregorian to express dates) . . Rule 79

 See also Dates

 Changes in person, name or address of applicants and
inventors (U.S. requirements) . . 37 CFR 1.472

 Check list (In request)

 Re documents filed with IA . . Rule 3.3

 Necessary annotations by RO . . A.I. 313

 Citations (proper) of documents in the ISR . . A.I. 503

 Claims

 Amendment before EO . . Art. 41

 Amendment before IB . . Art. 19

  Rule 46

 Amendment before IPEA . . Art. 34

 Rule 66.4

 Rule 66.8

 In general . . Art. 6

 Rule 6

 Numbering and identification upon amendment . . A.I. 205

 United States regulation regarding . . 37 CFR 1.436

 Classification of IA subject matter . . A.I. 504

 Committee established by assembly of states . . Art. 56

 bis
 Common representative . . Rule 2.2

 Rule 90.2

 Change of . . A.I. 106

 Notice of change sent from RO to IB . . A.I. 328

 Notice of change sent from IB to RO,

 ISA, & IPEA . . A.I. 425

 Common representative-Con.

 Notice of change sent by ISA to IB . . A.I. 512

 Notice of change sent by IPEA to IB . . A.I. 608

 Communication

 From IB, of IA, ISR, or any Article 17(2)(a) determination
and indication that no search will be established, to each
DO . . Art. 20

 Rule 47

 Communication transmitted electronically . . A.I. 114

 Competent international preliminary examining authority . .
. . . Rule 59

 Competent international searching authority . . Art. 16

 Rule 35

 Competent receiving Office . . Art. 11(1)(i)

 Rule 19

 Confidential nature Of IA . . Art. 30

  Of IPE . . Art. 38

 Confirmation copy of facsimile transmission (N/A in US) . .
. . .Rule 92.4

 A.I. 331

 Confirmation by RO of designation necessary annotations by
RO . . Rule 4.9(b)

 Rule 4.9(c)

 A.I. 315

 Continuation or continuation - in - part, IA treated as in
any designated state . . Rule 4.14

 Copies In general, by IB or IPEA, upon request . . Rule
94

  Making home copy and search copy from original IA
(record copy) by RO . . Rule 21

  Identifying RC, SC, and HC by RO . . A.I. 305

 Correction of request by RO ex officio . . A.I. 327

 Corrections and amendments during international processing
. . . Rule 26.4

 Rule 46

 37 CFR 1.471

 Correspondence For applicant, to whom sent . . A.I.
108

  In general . . Rule 92

  D

 Dates (using Gregorian calendar) . . Rule 79

 Format of, in IA . . A.I. 110

 Deadlines ( See also Time limit)

 Applicable to Applicants

 (1) Before the RO

 After which applicant can request RO to certify copy of IA
as identical with IA as filed and applicant can send
certified copy to IB (14 months from PD) . . Rule 22.1

 Deadlines (See also Time limit)-Con.

 To correct Article 14(1) defects in IA . . Art. 14(1)b

 (e.g., IA is not properly signed, does not contain proper
indications re applicant, has no title, has no abstract,
does not comply with physical requirements in Rule 11) . .
. . . Rule 26.2

 Extensions of time available . . Rule 26.2

 Sanction : RO declares IA withdrawn under Rule 29

  To  correct  defects  under  Article  11  to  obtain  an
international filing date . . Art. 11(2)

 Rule 20.6

 Sanctions: International filing date given IA when Article

11(1) defect is corrected in time set by RO; but RO declares
IA withdrawn if not corrected within time set.

 To provide missing drawings (30 days) . . Art. 14(2)

  Rule 26.2

 37 CFR 1.437

 Extensions of time available . . Rule 26.2

 Sanction: Drawings considered nonexistent

  To  pay  deficiencies  in  transmittal  fee  (Rule  14),
international basic fee (Rule 15.1(i)), search fee (Rule
  bis
16), late payment fee (Rule 16  .2) . . Art. 14(3)

 bis
 Rule 16  .1

 37 CFR 1.431

 Extension of time - One month set by RO when RO finds
  bis
deficiency . . Rule 16  .1

 Sanction : RO declares IA withdrawn under Rule 29.

 To pay deficiencies in the transmittal fee, basic fee
(incl. suppl. for over 30 pages) or search fee when RO finds
discrepancies before fees are due . . A.I. 304(b)

 To pay deficiencies in designation fees . . Art. 14(3)

 Rule 26.2

 37 CFR 1.432

 Extensions of time available . . Rule 26.2

 Sanction: Appropriate designations withdrawn

 To pay deficiencies in designation fees when RO finds
discrepancies before fees are due . . A.I. 304(b)

 Rule 30

 (2) Before the ISA

 To amend claims under Article 19 before IB within two
months of date of transmittal of ISR to IB, or 16 months
from priority date . . Rule 46.1

 Deadlines (See also Time limit)-Con.

 To amend claims under Article 19 - latest of 2 months from
date ISR sent to IB and Applicant or 16 months from PD or if
amendment  reaches  IB  before  completion  of  technical
preparations for international publication . . Rule 46.1

 To submit priority document, unless already filed with RO
together with IA, to IB or RO not later than 16 months after
PD, or where DO processes IA at any time on express request
of applicant (Art. 23(2)), not later than date processing or
examination is requested . . Rule 17.1

 Where lack of unity of invention is held, time limit of
between 15 and 45 days set to pay additional fees to have
additional inventions searched . . Art. 17(3)

  Rule 40.3

 37 CFR 1.476

 (3) Before the IPEA

 To amend claims, description, or drawings under Article 34
before the IPE . . Rule 66

 37 CFR 1.485

 To amend claims, description, or drawings under Article 34
before the IPEA at time of filing demand or, subject to Rule
  bis
66.4  , until IPER is established . .Rule 66.1

  bis
 Rule 66.4

 To correct defects in demand upon invitation within a time
limit not less than 1 month and which may be extended by
IPEA before a decision is made . . Rule 60.1

 To correct later elections not complying with Rule 56
within a time limit not less than 1 month and which may be
extended by IPEA before a decision is made . .
Rule 60.2

 To provide translation of priority document upon invitation
by IPEA within 2 months of invitation date . . Rule 66.7

 To respond (including Article 34 amendments) to a written
opinion within time set therein (not less than 1 month) . .
. . . Rule 66.2

 Deadlines (See also Time limit)-Con.

 Rule 66.2 permits response time set in written opinion to
be from 1 month to 3 months (plus extensions) . .
Rule 66.2

 37 CFR 1.484 permits response time set in written opinion
to be from 1 to 2 months with no extensions possible . .
. . 37 CFR 1.484

 Where lack of unity of invention is held by IPEA, time
limit of between 1 and 2 months set to pay additional fees
to have additional inventions searched . . Art. 34(3)

 Rule 68.2

 37 CFR 1.488

 When filing a demand for IPE, must pay handling fee at time
demand filed or within the 1 month deadline set when IPEA
invites applicant to pay the fee . . Rule 57

 Sanction: IPEA considers IA withdrawn

 When seeking IPE, preliminary examination fee must be paid
at time demand filed or within the 1 month deadline set when
IPEA invites applicant to pay the fee . . Rule 58.2

 Sanction: IPEA considers IA withdrawn

 (4) Before the DO/EO

 To enter the national stage under 35 U.S.C. 371 where
U.S.A. is DO . . 37 CFR 1.494

 To enter the National Stage under 35 U.S.C. 371 where the
U.S.A. is EO . . 37 CFR 1.495

 To amend claims, description, or drawing under Article 28
before the DO . . Rule 52

 For amendment of claims, description, or drawings before EO
(varies) . . Rule 78

 Applicable to the RO

 For RO to check certain elements (request is signed, has
indications re applicant, has an abstract, meets physical
requirements of Rule 11) of IA . . Rule 26.1

 For RO to transmit record copy to IB (normally 13 months or
earlier,  unless  failure  to  obtain  national  security
clearance obtained) . . Rule 22

 For RO to transmit search copy to ISA . .
Rule 23

 Deadlines (See also Time limit)-Con.

 Applicable to the IB

 IB shall promptly notify each EO of receipt and date of
receipt, of any later election, and will be sent along with
the Article 20 communication (of the IA, ISR, Article 19
amendments), if possible . . Rule 61.2

 For IB to notify applicant, RO, ISA (unless it declined to
be notified) and DO (if it asked to be notified) of fact and
date receipt of record copy of IA . . Rule 24

 International publication of IA promptly after expiration
of 18 months from PD, unless earlier publication requested
under Articles 21(2)(b) and 64(3)(c)(i) . . Art. 21

 Rule 48

 Applicable to the ISA

 For ISA to establish the ISR (or declaration that the
subject  matter  is  not  required  to  be  searched  or  is
unsearchable as per Article 17(2)) - the later of 3 months
from date of receipt of SC by ISA or 9 months from priority
date . . Rule 42

 Applicable to the IPEA

 For IPEA to establish the IPER (28 months from PD if demand
was filed prior to expiration of 19 months from PD; or 9
months from start of IPE if demand filed after expiration of
19 months from PD . . Rule 69.2

 For IPEA to start IPE (may start as early as international

search but no later than 20 months from PD) . . Rule 69.1

 IPEA shall promptly notify applicant of receipt of the
demand . . Rule 61.1

 Deceased inventor (U.S. Rule) . . 37 CFR 1.422

 Defects

 Correction

 Processing by IB . . A.I. 413

 Of indications re applicant's residence or nationality . .
. A.I. 329

 Of request, ex officio , by RO . . A.I. 327

 Of obvious defects, by RO . . A.I. 325

 IA held withdrawn because of failure to correct certain
defects . . Rule 29.1

 Deadlines (See also Time limit)-Con.

 In abstract . . Rule 38

 In certain original documents submitted to national Office
. . . Rule 92.4

 In demand . . Rule 60.1

 In drawings furnished to DO under Rule 49.5, possibly
permitting correction by invitation . . Rule 49.5(g)

 In later election . . Rule 60.2

 In power of attorney - consequences . . Rule
90.4(c)

 In the title . . Rule 37

 Invitation to correct Article 14(1)(b) defects . . Rule
  bis
26.3

 Invitation to correct Article 3(4)(i) defects . .
  ter
Rule 26.3

 Mentioned in IPER . . Rule 90.12

 Noted by IB . . Rule 28

 Definition of PCT terms . . Art. 2 37 CFR
1.401

 Delays in meeting time limits, excuse of . . Rule 82

 37 CFR 1,468

 Demand for international preliminary examination

 Applicant entitled to make demand . . Rule 54

 Copy sent by IPEA to IB . . Rule 61.1

 Defects in . . Rule 60.1

 Evidence of right to file demand . . A.I. 614

 In general . . Art. 31

 Rule 53

 Not considered to have been made: Notification by IB to
elected offices . . A.I. 418

 Notice sent by IPEA re filing after 19 months from priority
date . . A.I. 601

 Publication of notice of demand filed prior to 19 months
from priority date . . Rule 61.4

  bis
 Recording by IB of changes: . . Rule 92

  Notifications regarding this sent by IB . . A.I. 422

 United States regulation regarding . . 37 CFR 1.480

 Deposited microorganism

  bis
 Indications on separate sheet . . Rule 13

 A.I. 209

 Description

 Amendment before IPEA . . Art. 34

 Amendment before EO . . Art. 41

 Rule 78

 Headings for parts of . . A.I. 204

 In general . . Art. 5

  Rule 5

 Of nucleotide/amino acid sequence . . Rule 5.2

 ter
 Rule 13

 37 CFR 1.821

 United States regulations regarding . . 37 CFR
1.435

 Design - not mentioned as subject matter for IA . .
Art. 2(i)

 A.I. 202

 Designated Office

 Amendment of claims, description, and drawings before DO .
. . . Art. 28

 Communication of IA, ISR, or declaration under Article

17(2)(a) . . Art. 20

 Rule 47

 Notification by DO to IB of number of IAs that did not
enter the national stage timely . . A.I. 112

 Opportunity to correct IA before DO . . Art. 26

 Review by . . Art. 25

 United States regulation regarding . . 37 CFR 1.415

 Designated states

 Possible loss of effect in . . Art. 24

 Withdrawal of/held withdrawn . . Art. 24

 Rule 29

 Designation of States

 Cancellation, ex officio , by IB . . A.I. 423

 Cancellation of designations of noncontracting States by
RO, ex officio . . A.I. 318

 Confirmation of precautionary, after expiration of 15
months from priority date - considered withdrawn . .
Rule 4.9(b)

 Confirmation of precautionary, before expiration of 15
months from priority date . . Rule 4.9(b)

 Rule 4.9(c)

 37 CFR 1.432(c)

 Confirmation of precautionary, notification by RO to IB and
applicant . . A.I. 315

 Considered withdrawn . . Rule 29.1(b)

 Notice of designation sent by IB to DO . . Rule
24.2(b)

 A.I. 426

 Publication of notice of confirmation of precautionary
designation . . A.I. 427

 United States regulation regarding . . 37 CFR 1.432

 Designation fee . . Rule 15

 U.S. regulation regarding payment of . . 37 CFR 1.432

 Designation fee calculation . . A.I. 210

 Diagrams, considered as drawings . . Rule 7.1

 Disputes . . Art. 59

 Docket reference (applicant's IA file reference) . . A.I.

109

 Documents cited in ISR . . A.I. 503

 Documents filed with IA

 Manner of marking necessary annotations in checklist sent
to IB by RO with RC of IA . .A.I. 313

 Drawing(s)

 Amendment of, before DO . . Art. 34

 Amendment of, before EO . . Art. 41

 Drawing(s)-Con.

 Flowsheets and diagrams considered as . . Rule 7.1

 In general . . Art. 7

 Rule 7

 Invitation by RO to correct informal drawings . . Rule 26

 Missing - RO procedure concerning . . A.I. 310

 Time set to file where not necessary to understanding of
invention . . Rule 7.2

 Referred to, but not included in IA . . Art. 14(2)

 United States regulation regarding . . 37 CFR 1.437

  E

 Elected Office

 Notification to IB of number of applications filed after
national stage deadline . . A.I. 112

 United States as . . 37 CFR 1.414

 Election(s)

 Cancelation of ex officio by IB . . A.I. 423(b)

 Cancelation of ex officio by IPEA . . A.I. 606

 Later than demand . . Rule 56

 Defects in later elections . . Rule 60.2

 Not considered made

 Notification by IB to EO . . A.I. 418

  bis
 Indication of in demand by IPEA . . A.I. 606

 Errors

  ter
 By RO or IB, rectification of . . Rule 82

 Correction of obvious

 Ex officio by RO . . A.I. 325

 A.I. 327

 Processing by IB . . A.I. 413

 Authorization of by IPEA . . A.I. 607

 In documents . . Rule 91

 In request, ex officio, by RO . . A.I. 327

 Ex Officio correction of request by RO . . A.I. 327

 Expenses of delegations . . Rule 84

 Expressions and language, not to be used . . Rule 9

 See also Language prohibited

 Correction of . . A.I. 501

 Extension of time (one month) to pay basic fee, search fee,
designation fee, and transmittal fee - under Rules 14, 15,
  bis
and 16 . . Rule 16

  F

 Fee(s)

 Additional fees per invention where lack of unity is found
by

 ISA . . Art. 17(3)

  Rule 40

 Fee(s)-Con.

 IPEA . . Art. 34(3)

 Rule 68

 Application of money received by RO in certain cases . .
. . . A.I. 321

 Associated with request

 Transmittal fee . . Rule 14

 United States rule . . 37 CFR 1.445(a)(1)

 PCT search fee . . Rule 16

 No prior U.S. application . . 37 CFR 1.445(a)(2)(i)

 Prior U.S. national application . . 37 CFR
1.445(a)(2)(ii)

 International fee . . Rule 15

 Basic fee (first thirty pages) . . Rule 15

 Basic supplemental fee (per page over 30) . . Rule 15

 Designation fee per country (maximum fee is ten times
single country designation fee) . . Rule 96

 37 CFR 1.496(a)(3)

 United States regulation regarding . . 37 CFR 1.445

 (Where lack of unity of invention held by ISA, there is a
fee for each additional claimed invention) . . Art. 17(3)

 Rule 40

 Associated with demand

 Handling fee . . Rule 57

 (Where lack of unity of invention held by IPEA, there is a
fee for each additional claimed invention) . . Art.
34(3)

  Rule 68

 Preliminary examination fee . . Rule 58

 ISA was U.S . . 37 CFR 1. 482(a)(2)

 ISA was not U.S . . 37 CFR 1.482(a)(3)

 United States regulation regarding . . 37 CFR 1.482

 Confirmation of precautionary designation fee . .
Rule 4.9(c)

 Rule 15.5

 Rule 96

 37 CFR 1.445(a)(4)

 Designation fee . . Rule 15

 Calculation for national and regional patents . . A.I.
210

  bis
 Extension of time to pay . . Rule 16

 U.S. regulation regarding payment of . . 37 CFR 1.432

 Extension of time (one month) to pay basic fee, search fee,
designation fee, and transmittal fee - under Rules 14, 15,
  bis
and 16 . . Rule 16

 Handling fee (re demand) . . Rule 57

 Fee(s)-Con.

 IA filing, processing, and search fees, U.S. regulation . .
. 37 CFR 1.445

 International fee (basic and designation) . . Rule
15

 International search fee . . Rule 16

 37 CFR 1.445(a)(2)

 Invitation by RO to pay before date due . . A.I.
304

 Invitation by RO to request search fee refund . . A.I.
322

 Invitation to pay fees . . A.I. 320

 Invitation to request refund of fees before IPEA . .
. . . A.I. 613

 Lack of payment of . . Rule 27

 Late payment fee re basic fee, search fee,

 designation fee, and transmittal fee - under Rules 14, 15,
  bis
and 16 . . Rule 16  .2

 National stage fee to DO . . Art. 22

 U.S. statute regarding . . 35 U.S.C. 376

 U.S. regulation regarding . . 37 CFR 1.492

 National stage fee to EO . . Art. 39

 U.S. statute regarding . . 35 U.S.C. 376

 U.S. regulation regarding . . 37 CFR 1.492

 Preliminary examination fee . . Rule 58

 Refund of IA filing and processing fees . . Rule
15.6

 Rule 16.2

 Rule 40.2(c)

 United States regulation regarding . . 37 CFR 1.446

 Schedule of fees . . Rule 96

 Special fees for publication, payable to the IB . . A.I.
113

 Surcharge for filing oath or declaration later than 20
months from PD under 37 CFR 1.494(c) or later than 30 months
from PD under 37 CfR 1.495(c) . . 37 CFR 1.492(e)

 Transmittal fee . . Rule 14

 37 CFR 1.445(a)(1)

 File (IA) reference (IA docket no. of applicant) . . A.I.
109

 On IA sheets . . Rule 11.6(f)

 Filing date

 Certificate of US Postal Service Express Mail . .
Rule 20.1

 37 CFR 1.10

 Of IA . . Art. 11

 35 U.S.C. 363

 35 U.S.C. 371

 35 U.S.C. 102(e)

 37 CFR 1.496

 Finances (budget) of union of PCT states . . Art. 57

 Flowsheets, considered as drawings . . Rule 7.1

 Form(s)

 Computer generated . . A.I. 102(h) & (i)

 Request . . Rule 3.7

 Form(s)-Con.

 Demand . . Rule 53.1(a)

 PCT . .A.I. Annex A

 PCT, use of . . A.I. 102

  G

 Gazette, PCT . . Rule 86

 A.I. 407

 A.I. Annexes D and E

 Free copies of, to ISA, IPEA, national Office . . Rule 87

  H

 Handling fee for IPE (re demand) . . Rule 57

 Home copy of IA, preparation of . . Rule 21

 A.I. 305

  I

 Identification

 Of designated Office . . A.I. 107

 Of elected Office . . A.I. 107

 Of IA having two or more applicants . . A.I. 105

 Of IA file (docket reference by applicant) . . A.I. 109

 Of international authorities . . A.I. 107

 Indications (two letter codes identifying countries and
other entities) . . A.I. 115

 Industrial applicability . . Art. 34(4)

 Art. 35(2)

 Rule 70.6(b)

 Rule 66.2

 Intellectual property protected under PCT . . Art. 2(i)

 A.I. 202

 International application

 Arrangement of contents/elements . . A.I. 207

 Availability of, to DO . . Art. 13

 Certain defects in . . Art. 14

 Checking by RO and correcting parts of before RO . .
. Rule 26

 Communicated (sent) to each DO by IB . . Art. 20

 Rule 47

 Confidential nature of IA . . Rule 30

 Considered withdrawn . . Rule 29

 Rule 30

 Rule 49

 Copy of IA sent from IB to IPEA . . A.I. 420

 Copy, translation and national fee to EO . . Art. 39
Effect of IA designation of U.S . . 35 U.S.C. 364

 Filing date and effects of . . Art. 11 In general .
. . . Art. 3 International publication number of . .
. . A.I. 404 International application-Con.

 Language of . . Rule 12 Numbering - three sets: one
for request, another for description, and a third for
drawings . . A.I. 207

 Physical requirements of . . Rule 11

 37 CFR 1.433

 Purported IA, notification of receipt of, by RO . .
. . . A.I. 301

 Requirements, U.S. regulation regarding . .
37 CFR 1.431

 Numbering system of IA . .A.I. 307

 Marking each sheet of IA with . . A.I. 308

 Copy of notification of IA number and IA filing and
priority date(s) sent to IB . . A.I. 324

 Sheet numbering (separate sets for request,

 description, and drawings) . . A.I. 207

 For international publication . . A.I. 410

 Sheet(s)

 Cancellation, substitution, addition, renumbering by RO . .
. A.I. 311

 Translation of IA sent by applicant to DO . . Art. 22

 Transmittal of IA to IB and ISA . . Art. 12

 Treated as continuation or continuation - in - part . .
Rule 4.14

 Withdrawn IA, U.S. statute regarding . . 35 U.S.C.
366

 International Bureau (IB)

 In general . . Art. 55

 Patent information services provided by . . Art. 50

 U.S. regulation regarding . . 37 CFR 1.415

 International fee . . Rule 15

 International preliminary examination

 Conduct of, in United States . . 37 CFR 1.484

 Confidential nature of . . Art. 38

 Copy, translation and fee for, furnished to elected Office
. . . Art. 39

 Delay to enter national stage . . Art. 39(1)(a)

 Demand for . . Art. 31

 Withdrawal of . . Art. 37

 In general . . Art. 33

 IPEA . . Art. 32

 IPER . . Art. 35

 Rule 70

 Communication of IPER . . Rule 73

 Guidelines for explanations in . . A.I. 604

 Method of identifying documents cited in . . A.I. 611

 Start of, and time limit for . . Rule 69

 Transmittal, translation, and communication of IPER to
applicant and IB . . Art. 36

  Rule 71

 Translation of . . Rule 72

 Translation of annexes and transmittal . . Rule 74

 International preliminary examination-Con.

 Inventive step . . Rule 65

 Art. 33(3)

 Prior art for . . Rule 64

 Use of same file for ISA and IPEA . . A.I. 604

 Written opinion by IPEA . . Art. 34

 Rule 66

 Amendment of claims, description, and drawing under Article
34 in response to . . Art. 34

 International preliminary examination authority

 Competent IPEA . . Rule 59

 In general . . Art. 32

 Lack of unity determination . . Rule 68

 Minimum requirements for . . Rule 63

 Nonexaminable subject matter . . Rule 67

 Notification by IPEA of date of receipt of demand and of
election to IB and applicant . . Rule 61.1

 Procedure before . . Art. 34

 Rule 66

 United States statute regarding . . 35 U.S.C. 362

 United States regulation regarding . . 37 CFR 1.416

 International publication

 By IB of IA . . Art. 21

 Rule 48

 Copies of publications to ISA, IPEA, national offices . .
. . . Rule 87

 Effect of, in United States . . 35 U.S.C. 374

 Number . . A.I. 404

 Of IA, effects of . . Art. 29

 Publication number (WO _________) . . A.I. 404

 United States statute regarding . . 35 U.S.C. 362

 United States regulation regarding . . 37 CFR 1.413

 International search . . Art. 15

 Time limit for accomplishing . . Rule 42

 International search authority . . Art. 16

 Competent . . Rule 35

 Minimum requirements . . Rule 36

 Procedure before . . Art. 17

 International search fee . . Rule 16

 International search report

 Communicated (sent) from IB to DO . . Art. 20

 Rule 47

 Copy of IA provided by IB for ISA . . A.I. 420

 Indication of citations of relevance in . . A.I.
505

 Indications of special categories of documents cited in . .
. . . A.I. 507

 Indication of claims to which documents are relevant . .
. . . A.I. 508

 In general . . Art. 18

 International search report-Con.

 Method of Identifying documents cited in . . A.I. 503

 Subject matter not required to be searched . . Rule 39

 Time limit for establishing . . Rule 42

 Transmittal of, from ISA to IB . . Rule 44

 Translation of ISR . . Rule 45

 International - type search . . Rule 41.1

 Inventive step . . Rule 65

 Art. 33(3)

 Inventions

 Protection available under PCT . . Art. 43

 Art. 44

 A.I. 202

 Indications of kinds of protection . . Rule 4.12

 Inventor(s)

  bis
 Correction of . . Rule 92

 Deceased . . 37 CFR 1.422

 Filing of IA designating US by someone other than the
inventor(s) . . 37 CFR 1.425

 Incapacitated or insane . . 37 CFR 1.423

 Joint . . 37 CFR 1.424

  L

 Lack of unity of invention

 Examples . . A.I. Annex B

 In international preliminary examination . . Rule 68

 37 CFR 1.488

 37 CFR 1.489

 In international search . . Rule 40

 37 CFR 1.475

 37 CFR 1.476

 37 CFR 1.477

 In national stage . . 37 CFR 1.499

 Unity of invention in IA, in general . . Rule 13

 Examples . . A.I. Annex B

 Language

 Of correspondence by applicant to IB and RO . . A.I. 104

 Of demand for IPE . . Rule 55

 Of forms used by international authorities . . A.I. 103

 Of IA . . Art. 11(1)(ii)

  Rule 12

 Of international publication of IA . . Rule 48.3

 Of IPER . . Rule 72

 Of ISA . . Rule 43.4

 Of translation of IA . . Rule 49.2

 Prohibited expressions . . Rule 9

 Correction of . . A.I. 501

 Later elections (elections submitted after the demand)

 Defects in . . Rule 60.2

 Later elections (elections submitted after the demand)-Con.

 In general . . Rule 56

 Publication of notice of later elections by IB in Gazette .
. . . A.I. 428

 Later indication of priority application number by RO to IB
. . . A.I. 319

 Later submitted sheets, RO procedure . . A.I. 309

 Loss of effect of IA in designated states . . Article 24

 (Same consequences as withdrawal of IA)

  M

 Mail service

 Irregularities in . . Rule 82

  bis
 Microbiological inventions . . Rule 13

 See also Nucleotide/amino acid sequence listings

 Micro - organisms

 Deposited

 Indications as to . . A.I. 209

 Minimum documentation in ISA . . Art. 15(4)

  Rule 34

 Missing drawings, RO procedure . . Art. 14(2)

 Rule 26.6

 A.I. 310

  N

 National Office

 Right to practice before . . Art. 49

 Rule 83

 Rule 90.1

 National stage

 Amendment of claims, description, and drawings before
designated offices . . Art. 28

  Rule 52

  Before elected offices . . Art. 41

 Rule 78

  Certain  national  requirements  allowed  under  Article
27(1),(2),(6),(7) . . Art. 27

 bis
 Rule 51

 Copy of IA, translation and fee to DO . . Art. 22

 Delaying of national examination and other processing . .
. . . Art. 23

 Art. 40

 Protection available

 Other than patent protection . . Art. 43

 As well as patent protection . . Art. 44

 Requirements . . Art. 27

 Results of national examination in different countries . .
. . . Art. 42

 National stage-Con.

 United States

 Commencement in . . 35 U.S.C. 371

 Entering U.S. as designated Office . . 37 CFR 1.494

 Entering U.S. as elected Office . . 37 CFR 1.495

 Entry into U.S., time of . . 37 CFR 1.491

 Examination in . . 37 CFR 1.496

 Improper applicant . . 35 U.S.C. 373

 National U.S. patent issued on IA, effect . . 35
U.S.C. 375

 National security prescriptions . . Art. 27(8)

 Delay or prevention of transmittal of record copy to IB . .
. . . A.I. 330

 Nationality

 Qualifications . . Rule 18.2

 In demand . . Rule 54.1

  bis
 Recording of changes to by the IB . . Rule 92  .1

 Nationality or residence of applicant, correction of . .
. . . A.I. 329

 A.I. 614

 New (additional) matter

 In request, deletion of ex officio . . A.I. 303

 Nomenclature - See also Terminology and signs . . Rule 10

 Notification by IPEA of date of receipt of demand to IB and
applicant . . Rule 61

 Nucleotide and/or amino acid sequence listings . . Rule
  ter
13

 Transmitted by RO to ISA . . A.I. 313(c)

 Number and numbering of claims . . Rule 6.1

 Number of (accorded to) IA . . Rule 20.1

 Number of copies of IA to be filed . . Rule 11.1

 Numbering of amendments . . Rule 6.1

 A.I. 205

 A.I. 207

 A.I. 311

 Numbering of lines on a page of IA . . Rule 11.8

 Numbering of sheets of IA . . Rule 11.7

 Numbering of sheets for international publication . .
A.I. 410

  O

 Oath or declaration in U.S. national stage application . .
. . . 35 U.S.C. 371(c)(4)

 37 CFR 1.497

 Obvious errors in documents . . Rule 91

 Rectification of . . A.I. 511

 Obviousness/nonobviousness . . Art. 33(3)

 Rule 65

 See also Inventive step

 Opportunity to correct IA before designated Office . .
.Art. 26 P

 Pamphlets (form of publishing the IA) . . Rule 48

 Patent Cooperation Treaty

 Administrative provisions . . Arts. 53 - 58

 Amendment of certain provisions . . Art. 61

 Assembly of contracting states . . Art. 53

 Becoming a party to . . Art. 62

 Committee for technical cooperation . . Art. 56

 Denunciation . . Art. 66

 Depositary functions . . Art. 68

 Disputes . . Art. 59

 Entry into force of PCT . . Art. 63

 Executive committee of assembly . . Art. 54

 Final provisions (becoming party to treaty, entry into
force  of  treaty,  reservations,  gradual  application,
denunciation, signature and languages, depositary functions,
notifications) . . Art. 62

 Finances . . Art. 57

 Gradual application of PCT in a state . . Art. 65

 International Bureau . . Art. 55

 Notifications to states/governments re PCT issues . .
Art. 69

 Reservations by any state re Application of PCT

 provisions . . Art. 64

 Revision of PCT . . Art. 60

 Patent information services furnished by IB . . Art. 50

 Physical requirements of IA . . Rule 11

 Power of attorney

 Definition . . Rule 3.3a

 General . . Rule 90.5

 Practice before international authorities

 Right to do so . . Art. 49

 Rule 83

 Rule 90

 Precautionary designations . . Rule 4.9(b)

  Rule 4.9(c)

 Fees for . . Rule 15.5

 Form (optional) for making precautionary designations . .
PCT/DO

 Form 144

 Preliminary examination fee . . Rule 58

 Prior art

 Citation of (proper method) . . A.I. 503

 For international preliminary examination . . Rule 64

 Indications . . A.I. 505

 Of special categories of documents . . A.I. 507

 Relevant to international search . . Rule 33.1

 Priority application serial number . . A.I. 408

 Later indication of . . A.I. 319

 Priority claim in IA . . Rule 4.10

 Correction or cancellation by RO . . A.I. 314

 Correction or cancellation by IB . . A.I. 402

 Not considered to have been made . . A.I. 302

 Notice to that effect by IB, if not by RO . . A.I. 409

 U.S. regulation regarding . . 37 CFR 1.451

  bis
 Withdrawal of, by applicant . . Rule 90  .3

 Priority, right of (in U.S.) . . 35 U.S.C. 365

 Benefit of filing date of a prior application . .35
U.S.C. 365

 Priority document . . Rule 17

 Benefit of filing date of a prior application . .35
U.S.C. 365

 Copy, translation, and fee furnished to EO under Article
39(1) . . Rule 76

 Fee for certified copy of, from U.S. PTO . . 37
CFR1.19(b)(1)

 In proceedings before IPEA . . Rule 66.7

 Invitation by IB to furnish . . A.I. 421

 Receipt of by IB . . A.I. 411

 Translation and time limit to furnish to EO . . Rule 76

 Transmittal by RO to IB . . A.I. 323

 U.S. regulation regarding . . 37 CFR 1.451

 Protection available under PCT . . Art. 43

 Art. 44

 Art. 45

 A.I. 202

 Indications of kinds of protection in request . . Rule
4.12

 Protest against payment of additional fees re holding of
lack of unity . . Rule 68

 Rule 40

 A.I. 403

 A.I. 502

 Before United States IPEA . . 37 CFR 1.489

 Before United States ISA . . 37 CFR 1.477

 Publication - See International publication

  Q

 Quorum, absence of

 Voting by correspondence . . Rule 85

  R

 Receipt of IA by RO . . Rule 20

 Notification of by RO to IB . . Rule 20.5(b)

 Notification of by RO to applicant . . A.I. 301

 Receiving Office

 In general . . Art. 10

 Competent . . Rule 19

 United States RO . . 35 U.S.C. 361

 37 CFR 1.412

 Record copy (originally filed IA)

 Definition . . Rule 20.5(b)

 Transmittal to IB by RO . . Rule 22

 37 CFR 1.461

 Receipt by IB . . Rule 24

 Marking sheets of, by IB . . A.I. 401

 Rectification of obvious errors . . Rule 91

 Authorized or not by the ISA . . A.I. 511

 Authorized by IPEA . . A.I. 607

 Handling of, by RO . . A.I. 325

 Limitations/restrictions on . . Rules 91.1(b)

  quater
 to (g  )

 Refund

 If search is based in part on earlier search . . Rule 41

 Invitation by RO to request search fee refund . . A.I.
322

 Invitation to request refund of fees before IPEA . .
. A.I. 613

 Of handling fee . . Rule 57.6

 Of international fee . . Rule 15.6

 Of international preliminary examination fee . . Rule
58.3

 Of international search fee . . Rule 16

 Regional patent treaties . . Art. 45

 Regulations of the PCT . . Art. 58

  Representation/representative  See  also  Common
representative

 Appointment of . . Rule 90.4

 Notice by IB to ISA and IPEA . . A.I. 425

 Notice by IPEA to IB . . A.I. 608

 Notice by ISA to IB . . A.I. 512

 Notice by RO to IB . . A.I. 328

  bis
 Common (definition) . . Rule 2.2

 General power of attorney . . Rule 90.5

 Limited recognition in patent cases . . 37 CFR Part 10, §
10.9

 Revocation and renunciation of representative . . Rule
90.6

 U.S. regulation regarding . . 37 CFR 1.455

 Request (Part of IA)

 Contents . . Art. 4

 Rule 4

 Deletion of additional materIal . . I.A. 303

 Form . . Rule 3

 In general . . Art. 4

  bis
 Recording of changes in, by IB . . Rule 92

 Notification by IB . . A.I. 422

 Request (Part of IA)-Continued

 Rectification of, including limitations on ability to
rectify . . Rule 91.1

 U.S. regulation regarding . . 37 CFR 1.434

 Residence

 Corrections to

 Invitation by RO . . A.I. 329

 Residence-Con.

 Qualifications . . Rule 18

 In demand . . Rule 54.1

  bis
 Recording of changes to by the IB . . Rule 92  .1

 Results of national examination in elected Office . .
Art. 42

 Restriction:  See also Lack of unity of invention  See
also Unity of invention

 Revival of U.S. national stage application . . 37 CFR
1.137

 Right to practice before international authorities . .
Rule 83

 Art. 49

  Review  of  RO  determinations  by  other  international
authorities re

 Failure to accord an international filing date . . Art.
25

 Review by U.S. PTO . . 35 U.S.C. 367

 Declared an IA to be withdrawn . . Art. 25

 Review by U.S. PTO . . 35 U.S.C. 367

 Designation of a state is withdrawn . . Art. 25

 Review by U.S. PTO . . 35 U.S.C. 367

 Review by designated offices of

 Refusal to accord filing date to IA . . Art. 25

 Declaration that an IA is withdrawn . . Art. 25

 IB decided the IA is withdrawn under Article 12(3) . . Art.
25

 Revision of PCT . . Art. 60

 See also Amendment of PCT provisions

  S

 Search - See  also international search report

 Search other than international search . . Rule 41

 Search copy of IA

 Preparation of by RO . . Rule 21

 Transmittal of to IB . . Rule 23

 Receipt of by ISA . . Rule 25.1

 Notification of lack of transmittal of SC by IB . . A.I.
412

 Security measures of national Office delaying or

 preventing transmittal of RC to IB . . A.I. 330

 United States statute regarding . . 35 U.S.C. 368

 ter
 Sequence listings in machine readable form . . Rule 13

 Considered by ISA . . A.I. 513

 Considered by IPEA . . A.I. 610

 Serial no. (of international application) . . A.I. 307

 A.I. Annex C

 Indelibly marked on each sheet of IA . . A.I. 308

 Sheets

 Later submitted - RO handling of . . A.I. 309

 Deletion, addition, substitution, and renumbering of by RO
. . . A.I. 311

 Size of IA . . Rule 11.5

 Signature

 By parties to the PCT . . Art. 62 Notification by
director general re . . Art. 69 Signature-Con.

 Defective, in IA . . Art.14(1)

 IA lacking prescribed signature - RO

 procedure . . A.I. 316

 Definition (includes "seal") . . Rule 2.3

 Lacking, in demand . . Rule 60.1(d)

 Lacking, in later election . . Rule 60.2(d)

 National requirements . . Art. 27

 Of PCT in English and French . . Art. 67

 Requirements re correspondence . . Rule 92

 Requirements re demand . . Rule 53.8

 Requirements re later elections . . Rule 56.1

 Requirements re request . . Rule 4.15

  bis
 Requirements re withdrawals . . Rule 90  .5

 Signs (terminology) . . Rule 10

 Size of IA sheets . . Rule 11.5

 Subject matter that is proper in IA . . Rule 67

 Successor states . . Rule 32

 Surcharge - See also Fees: Late payment fee

  T

 Technical Services

 Patent information services furnished by IB . . Art. 50

 Technical assistance committee . . Art. 51

 Relation to other PCT provisions . . Art. 52

 Terminology and signs . . Rule 10

 Time limit

 Computation of . . Rule 80

 Delay in meeting certain . . Art. 48

 Delays due to mail service . . Rule 82

 Excuse by the designated or elected state of delays in
  bis
meeting certain time limits . . Rule 82

 Extended beyond or shortened with respect to

 Article 39 deadline for copy, translation, and fee filed
with EO . . Rule 77

  bis
 Extensions of, for payment of fees . . Rule 16

 For amendments before elected Office . . Rule 78

 For amendment of claims before the IB . . Art. 19

 Rule 46.1

 For amendment of claims, description, and drawings before
DO . . Rule 52.1

 For applicant to request IB to send files to any DO
pursuant to Article 25(1)(c) so DO can review adverse
holding by RO or IB . . Rule 51.1

 For check by RO of certain defects in the IA . . Rule
26.1

 For communication by the IB of IPER (with its translation
and annexes to each EO) . . Rule 73.2

 For considering IA withdrawn re Article 12(3) . . Rule
22.3

 For considering IA withdrawn re Article 14(4) . . Rule 30

 For correcting priority claim . . Rule 4.10

 Time limit-Con.

 For correction by applicant of certain defects found by and
invited by RO to correct . . Rule 26.2

 For establishing the international search . . Rule
42

 For establishing the IPE . . Rule 69.2

 For paying national fee and furnishing translation before
DO pursuant to Article 25(2)(a) so DO can review adverse
holding by RO or IB . . Rule 51.3

 For presenting request by applicant for IB to send copies
of IA to DO after receiving determination that IA is
withdrawn . . Rule 51

 For start of, and establishment of, IPE . . Rule 69

 For submitting priority document . . Rule 17

 For translation of priority document before EO . . Rule
76.4

  For  transmittal  by  applicant  of  translation  of  any
replacement sheet referred to in Rule 70.16 that is attached
to the IPER . . Rule 74.1

 In general . . Art. 47

 Meaning of term "Time Limit" in Article 48(2) . . Rule
  bis
82

 Modification of time limit fixed in PCT . . Rule 81

 Of application processing based on priority date  . .
. . .Rule 4.10

 37 CFR 1.465

 Timing of IA processing based on priority date . .
37 CFR 1.465

 To confirm precautionary designations . . Rule 4.9

 To furnish drawings which are not necessary for the

understanding of the invention . . Art. 7.2 Rule 7.2

 To furnish IA copy, translation, and fee to DO beyond time
limit allowed by Article 22 . . Rule 50

 To pay fees before ISA in response to a holding of lack of
unity of invention . . Rule 40.3

 To request review by DO of failure to accord international
filing date . . Art. 25

 Utility models . . Rule 6.5

 Title of invention in IA

 Content . . Rule 4.3

 Missing or defective . . Rule 37

 Translation

 Availability of translations . . Rule 95

 By applicant, international search based on . . Art. 15
Defective/incorrect of IA . . Art. 46 Draft, of IA,
prepared by ISA for publication, comments on by applicant .
. . . A.I. 506

 Of certain words not in Latin alphabet, in request . .
. . Rule 4.16

 Of IA, availability to IB . . Rule 95 Of IA,
transmittal by IB to designated offices . . Art. 22
Translation-Con.

 Of IA, transmittal by IB to elected offices . . Art. 39

 Of international preliminary examination report . . Art.
36

 Of international preliminary examination report . . Rule
72

 Of IPER annexes, and transmittal of to elected offices by
applicant . . Rule 74

  Of  international  publication,  affecting  protection  of
rights in any designated state . . Art. 29

 Of international search report . . Art. 18

 Rule 45

 Of priority document before EO . . Rule 76

 Transmittal

 Fee . . Rule 14

 Of record copy to IB by RO . . Rule 22

 37 CFR 1.461

 Of search copy to ISA by RO . . Rule 23

 Delayed . . A.I. 306

 Treaty - See also Patent Cooperation Treaty, above

  U

 Unity of invention

 During U.S. national stage . . 37 CFR 1.499

 Examples and guidelines . . A.I. Annex B

 In general . . Rule 13

 37 CFR 1.475

 Lack of unity before IPEA . . Art. 34(3)

 Rule 68

 37 CFR 1.488

 37 CFR 1.489

 Lack of unity before ISA . . Art. 17(3)

 Rule 40

 37 CFR 1.476

 37 CFR 1.477

 Compliance with Rule 13 . . A.I. 206

 Transmittal of protest to pay fees for additional claimed
inventions

 Transmittal by IB . . A.I. 403

 Transmittal by IPEA . . A.I. 603

 Transmittal by ISA . . A.I. 502

  W

 WO - See  also International publication number

  bis
 Withdrawals (by applicant), in general . . Rule 90

 A.I. 326

 Of demand or election . . Art. 37

 bis
 Rule 90  .4

 Withdrawn

 Application, U.S. statute regarding . . 35 U.S.C.
366

 Determination by RO re IA or designation . . Rule 29
Withdrawn

 Decision by RO not to hold withdrawn after notifying

applicant of intent to so hold . . A.I. 312

 Notification to IPEA by IB . . A.I. 414 Review of by
designated Office . . Art. 25 Rule 51 Determination by IB
under Article 12(3)

 Withdrawn-Con.

 Review by designated Office . . Art. 25

  Rule 51

 Written opinion by IPEA . . Art. 34

  Rule 66
  Amendment of claims, description, and drawing under Article 34 in
  response to . . Art. 34

  Appendix AI ADMINISTRATIVE INSTRUCTIONS UNDER THE PCT

  ADMINISTRATIVE INSTRUCTIONS UNDER THE PCT

  (as in force from April 1, 1995)

  TABLE OF CONTENTS

  Part 1:  Instructions Relating to General Matters
  Section 101  Abbreviated Expressions and Interpretation
  Section 102  Use of the Forms
  Section 103  Languages of the Forms Used by International
  Authorities
  Section 104  Language of Correspondence in Cases Not
  Covered by Rule 92.2
  Section 105  Identification of International Application
  with Two or More Applicants
  Section 106  Change of Common Representative
  Section 107  Identification of International Authorities
  and of Designated and Elected Offices
  Section 108  Correspondence Intended for the Applicant
  Section 109  File Reference
  Section 110  Dates
  Section 111  [Deleted]
  Section 112  Ceasing of Effect under Articles 24(1)(iii)
  and 39(2), Review under Article 25(2) and Maintaining
  of Effect under Articles 24(2) and 39(3)
  Section 113  Special Fees Payable to the International
  Bureau
  Section 114  Electronic Transmission of Notices
  Section 115  Indications of States, Territories, and
  Intergovernmental Organizations
  Part 2:  Instructions Relating to the International
  Application
  Section 201  [Deleted]
  Section 202  Kind of Protection
  Section 203  Different Applicants for Different Designated
  States
  Section 204  Headings of the Parts of the Description
  Section 205  Numbering and Identification of Claims Upon
  Amendment
  Section 206  Unity of Invention
  Section 207  Arrangement of Elements and Numbering of

  Sheets of the International Application
  1.  Table of Contents added for the convenience
of  the  reader;  it  is  not  part  of  the  Administrative
Instructions.

  Section 209  Indications as to Deposited Microorganisms on
  a Separate Sheet
  Section 210  Calculation of Designation Fee for the
  Purposes of National and Regional Patents
  Part 3:  Instructions Relating to the Receiving Office
  Section 301  Notification of Receipt of Purported
  International Application
  Section 302  Priority Claim Considered Not To Have Been
  Made
  Section 303  Deletion of Additional Matter in the Request
  Section 304  Invitation to Pay Fees Before Date on Which
  They Are Due
  Section 305  Identifying the Copies of the International
  Application
  Section 306  Delayed Transmittal of Search Copy
  Section 307  System of Numbering International Applications
  Section 308  Marking of the Sheets of the International
  Application
  Section 309  Procedure in the Case of Later Submitted
  Sheets
  Section 310  Procedure in the Case of Missing Drawings
  Section 311  Renumbering in the Case of Deletion,
  Substitution or Addition of Sheets of the
  International Application
  Section 312  Notification of Decision Not To Issue
  Declaration that the International Application Is
  Considered Withdrawn
  Section 313  Documents Filed with the International
  Application; Manner of Marking the Necessary
  Annotations in the Check List
  Section 314  Correction or Cancellation of a Priority Claim
  under Rule 4.10
  Section 315  Notification Concerning Confirmation of
  Designation
  Section 316  Procedure in the Case Where the International
  Application Lacks the Prescribed Signature
  Section 317  [Deleted]
  Section 318  Cancellation of Designations of Non -
  Contracting States
  Section 319  Later Indication of Priority Application
  Number
 bis
  Section 320  Invitation to Pay Fees under Rule 16  .1(a)
  and (b)
  Section 321  Application of Moneys Received by the
  Receiving Office in Certain Cases
  Section 322  Invitation to Submit a Request for Refund of
  the Search Fee
  Section 323  Transmittal of Priority Documents
  Section 324  Copy of Notification of the International
  Application Number and the International Filing Date
  under Rule 20.5(c)
  Section 325  Corrections of Defects under Rule 26.4(a),
  Rectifications of Obvious Errors under Rules 4.10(b
  ) and 91.1, and Corrections under Rule 9.2
  bis
  Section 326  Withdrawal by Applicant under Rule 90  .1 ,
 bis  bis
  90  .2 , or 90  .3
  Section 327  Ex Offici  o Correction of Request by the
  Receiving Office
  Section 328  Notifications Concerning Representation

  Section 329  Correction of Indications Concerning the
  Applicant's Residence or Nationality
  Section 330  Transmittal of Record Copy Prevented or
  Delayed by National Security Prescriptions
  Section 331  Receipt of Confirmation Copy
  Part 4:  Instructions Relating to the International
  Bureau
  Section 401  Marking of the Sheets of the Record Copy
  Section 402  Correction or Cancellation of a Priority Claim
  under Rule 4.10(d)
  Section 403  Transmittal of Protest Against Payment of
  Additional Fee and Decision Thereon Where
  International Application Is Considered To Lack Unity
  of Invention
  Section 404  International Publication Number of
  International Application
  Section 405  [Deleted]
  Section 406  Pamphlets
  Section 407  The Gazette
  Section 408  Priority Application Number
  Section 409  Notification of Priority Claim Considered Not
  To Have Been Made
  Section 410  Numbering of Sheets for the Purposes of
  International Publication; Procedure in Case of
  Missing Sheets or Drawings
  Section 411  Receipt of Priority Document
  Section 412  Notification of Lack of Transmittal of Search
  Copy
  Section 413  Corrections of Defects under Rule 26.4(a),
  Rectifications of Obvious Errors under Rules 4.10(b)
  and 91.1 and Corrections under Rule 9.2
  Section 414  Notification to the International Preliminary
  Examining Authority Where the International
  Application or the Designations of all Elected States
  Are Considered Withdrawn
  bis
  Section 415  Notification of Withdrawal under Rules 90  1
  bis  bis  bis
  , 90  .2 , 90  .3 , or 90  .4
  Section 416  Correction of Request in Record Copy
  Section 417  Processing of Amendments under Article 19
  Section 418  Notifications to Elected Offices Where the
  Demand or an Election Is Considered Not To Have Been
  Submitted or Made
  Section 419  [Deleted]
  Section 420  Copy of International Application and
  International Search Report for the International
  Preliminary Examining Authority
  Section 421  Invitation To Furnish a Copy of the Priority
  Document
  Section 422  Notifications Concerning Changes Recorded
  bis
  under Rule 92  .1
  Section 423  Cancellation of Designations and Elections
  Section 424  [Deleted]
  Section 425  Notifications Concerning Representation
  Section 426  Notification of Designation under Rule 24.2(b)
  Section 427  Publication of Notice of Confirmation of
  Designation
  Section 428  Publication of Notice of Later Election
  Section 429  Notice of Extension
  Section 430  Notification of Designations under Rule 32
  (Extensions)
  Part 5:  Instructions Relating to the International
  Searching Authority
  Section 501  Corrections Submitted to the International
  Searching Authority Concerning Expressions, etc., Not

  To Be Used in the International Application
  Section 502  Transmittal of Protest Against Payment of
  Additional Fee and Decision Thereon Where
  International Application Is Considered To Lack Unity
  of Invention
  Section 503  Method of Identifying Documents Cited in the
  International Search Report
  Section 504  Classification of the Subject Matter of the
  International Application
  Section 505  Indication of Citations of Particular
  Relevance in the International Search Report
  Section 506  Comments on Draft Translation of the
  International Application
  Section 507  Manner of Indicating Certain Special
  Categories of Documents Cited in the International
  Search Report
  Section 508  Manner of Indicating the Claims to Which the
  Documents Cited in the International Search Report Are
  Relevant
  Section 509  [Deleted]
  Section 510  Refund of Search Fee in Case of Withdrawal of
  International Application
  Section 511  Rectifications of Obvious Errors under Rule
  91.1
  Section 512  Notifications Concerning Representation
  Section 513  Sequence Listings
  Section 514  Authorized Officer
  Section 515  Amendment of Established Abstract in Response
  to Applicant's Comments
  Part 6:  Instructions Relating to the International
  Preliminary Examining Authority
  Section 601  Notice to Applicant of Filing of Demand After
  the Expiration of 19 Months From the Priority Date
  Section 602  Processing of Amendments by the International
  Preliminary Examining Authority
  Section 603  Transmittal of Protest Against Payment of
  Additional Fee and Decision Thereon Where
  International Application Is Considered To Lack Unity
  of Invention
  Section 604  Guidelines for Explanations Contained in the
  International Preliminary Examination Report
  Section 605  File To Be Used for International Preliminary
  Examination
  Section 606  Cancellation of Elections
  bis
  Section 606  Procedure Where Election of a State
  Considered Not To Have Been Made
  Section 607  Rectifications of Obvious Errors under Rule
  91.1
  Section 608  Notifications Concerning Representation
  bis
  Section 609  Withdrawal by Applicant under Rule 90  .1 ,
 bis  bis
  90  .2 , or 90  .3
  Section 610  Sequence Listings in Machine Readable Form
  Section 611  Method of Identification of Documents in the
  International Preliminary Examination Report
  Section 612  Authorized Officer
  Section 613  Invitation to Submit a Request for Refund of
  Fees under Rule 57.6 or 58.3
  Section 614  Evidence of Right to File Demand
 Annexes

  Annex A  Forms
  Part I:  Forms Relating to the Receiving Office
  Part II:  Forms Relating to the International Searching
  Authority

  Part III:  Forms Relating to the International Bureau
  Part IV:  Forms Relating to the International Preliminary
  Examining Authority
  Part V:  Request and Demand Forms
  Annex B  Unity of Invention
  Annex C  Format for Nucleotide and/or Amino Acid
  Sequence Listings in Machine Readable Form
  Annex D  Information from Pamphlet Front Page To Be
  Included in the Gazette under Rule 86.1(i)
 Annex E  Information To Be Published in the Gazette under
  Rule 86.1(v  )
  PART 1:  INSTRUCTIONS RELATING TO GENERAL MATTERS

  Section 101

  Abbreviated Expressions and Interpretation

 (a)  In these Administrative Instructions:

 (i)  "Treaty" means the Patent Cooperation Treaty;

 (ii)  "Regulations"  means  the  Regulations  under  the
Treaty;

 (iii)  "Article" means an Article of the Treaty;

 (iv)  "Rule" means a Rule of the Regulations;

 (v)  "International  Bureau"  means  the  International
Bureau as defined in Article 2(xix) of the Treaty;

 (vi)  "International Authorities" means the receiving
Offices,  the  International  Searching  Authorities,  the
International Preliminary Examining Authorities, and the
International Bureau;

 (vii)  "Annex" means an Annex to these Administrative
Instructions, unless the contrary clearly follows from the
wording or the nature of the provision, or the context in
which the word is used;

 (viii)  "Form" means a Form contained in Annex A;

 (ix)  "WIPO Standard" means a Standard established by the
World Intellectual Property Organization;

 (x)  "Director General" means the Director General as
defined in Article 2(xx) of the Treaty.

 (b)  The  Annexes  are  part  of  these  Administrative
Instructions.

  2. Annex A is published separately by the World
Intellectual Property Organization.

  Section 102

  Use of the Forms

 (a)  Subject to paragraphs (b) to (i) and Sections 103
and 114, the International Authorities shall use, or require
the use of, the mandatory Forms specified below:

  (i) Forms for use by the applicant:

  PCT/RO/101 (request Form) PCT/IPEA/401 (demand Form)

  (ii) Forms for use by the receiving Offices:

 PCT/RO/103  PCT/RO/113 PCT/RO/133 PCT/RO/104 PCT/RO/115
PCT/RO/136  PCT/RO/105  PCT/RO/116  PCT/RO/137  PCT/RO/106
PCT/RO/117  PCT/RO/139  PCT/RO/107  PCT/RO/118  PCT/RO/143
PCT/RO/109  PCT/RO/121  PCT/RO/147  PCT/RO/111  PCT/RO/123
PCT/RO/112 PCT/RO/126

  (iii)  Forms  for  use  by  the  International  Searching
Authorities:

 PCT/ISA/201 PCT/ISA/209  PCT/ISA/219  PCT/ISA/202
PCT/ISA/210 PCT/ISA/220 PCT/ISA/203 PCT/ISA/212 PCT/ISA/225
PCT/ISA/205 PCT/ISA/217 PCT/ISA/228 PCT/ISA/206 PCT/ISA/218

  (iv) Forms for use by the International Bureau:

 PCT/IB/301  PCT/IB/320 PCT/IB/344 PCT/IB/302 PCT/IB/321
PCT/IB/345  PCT/IB/304  PCT/IB/323  PCT/IB/346  PCT/IB/305
PCT/IB/324  PCT/IB/349  PCT/IB/306  PCT/IB/325  PCT/IB/350
PCT/IB/307  PCT/IB/329  PCT/IB/351  PCT/IB/308  PCT/IB/331
PCT/IB/352  PCT/IB/310  PCT/IB/332  PCT/IB/353  PCT/IB/313
PCT/IB/333  PCT/IB/354  PCT/IB/314  PCT/IB/334  PCT/IB/355
PCT/IB/315  PCT/IB/335  PCT/IB/356  PCT/IB/316  PCT/IB/336
PCT/IB/357  PCT/IB/317  PCT/IB/337  PCT/IB/358  PCT/IB/318
PCT/IB/338 PCT/IB/359 PCT/IB/319 PCT/IB/339 PCT/IB/360

 (v)  Forms for use by the International Preliminary
Examining Authorities:

 PCT/IPEA/402  PCT/IPEA/409  PCT/IPEA/420  PCT/IPEA/404
PCT/IPEA/412  PCT/IPEA/425  PCT/IPEA/405  PCT/IPEA/414
PCT/IPEA/431  PCT/IPEA/407  PCT/IPEA/415  PCT/IPEA/437
PCT/IPEA/408 PCT/IPEA/416 PCT/IPEA/439.

 (b)  Slight variations in layout necessary in view of
the printing of the Forms referred to in paragraph (a) in
various languages are permitted.

 (c)  Slight variations in layout in the Forms referred
to in paragraph (a)(ii) to (v) are permitted to the extent
necessary to meet the particular office requirements of the
Internatio  nal Authorities, in particular, in view of the
production of the Forms by computer or of the use of window
envelopes.

 (d)  Where  the  receiving  Office,  the  International
Searching Authority and/or the International Preliminary
Examining Authority are each part of the same Office, the
obligation to use the Forms referred to in paragraph (a)
does not extend to communications within that same Office.

 (e)  The  annexes  to  Forms  PCT/RO/106,  PCT/RO/118,
PCT/ISA/201,  PCT/ISA/205,  PCT/ISA/206,  PCT/ISA/210,
PCT/ISA/219,  PCT/IB/313,  PCT/IB/336,  PCT/IPEA/404,
PCT/IPEA/405, and PCT/IPEA/415 may be omitted in cases where
they are not used.

 (f)  The notes attached to Forms PCT/RO/101 (request
Form) and PCT/IPEA/401 (demand Form) shall be distributed by
the International Authorities concerned together with the
printed versions of those Forms. The notes attached to Form
PCT/ISA/220 shall accompany the Form when sent to the

applicant.

 (g)  The use of Forms other than those referred to in
paragraph (a) is optional.

 (h)  Where the request or the demand is presented as a
computer print - out, such print - out shall be prepared as
follows:

 (i)  the layout and contents of the request and the
demand  when  presented  as  computer  print  -  outs  shall
correspond to the format of Forms PCT/RO/101 (request Form)
and PCT/IPEA/401 (demand Form) (the printed Forms), with the
same information being presented on the corresponding pages;

 (ii)  all boxes shall be drawn by solid lines; double
lines may be presented as single lines;

 (iii)  the box numbers and box titles shall be included
even where no information is supplied therein;

 (iv)  the boxes for use by the International Authorities
shall be at least as large as those on the printed Forms;

 (v)  all other boxes shall be within one cm in size of
those on the printed Forms;

 (vi)  all text shall be 9 points or larger in size;

 (vii)  titles and other information shall be clearly
distinguished;

 (viii)  explanatory notes presented in italics on the
printed Forms may be omitted.

 (i)  Other formats permitted for the presentation of the
request and the demand as computer print - outs may be
determined by the Director General. Any such format shall be
published in the Gazette.

  Section 103

  Languages of the Forms Used by International Authorities

 (a)  The language of the Forms used by any receiving
Office shall be the same as the language in which the
international  application  is  filed,  provided  that  the
receiving  Office  may,  in  its  communications  to  the
applicant, use the Forms in any other language being one of
its official languages.

 (b)  Subject  to  Section  104(b),  the  language  or
languages of the Forms to be used by any International
Searching Authority shall be specified in the applicable
agreement referred to in Article 16(3)(b).

 (c)  Subject  to  Section  104(b),  the  language  or
languages of the Forms to be used by any International
Preliminary Examining Authority shall be specified in the
applicable agreement referred to in Article 32(3).

 (d)  The language of any Form used by the International
Bureau  shall  be  English  where  the  language  of  the
international application is English, and it shall be French
where the language of the international application is

French. Where the language of the international application
is neither English nor French, the language of any Form used
by the International Bureau in its communications to any
other International Authority shall be English or French
according to the wishes of such Authority, and in its
communications to the applicant it shall be English or
French according to the wishes of the applicant.

  Section 104

  Language of Correspondence in Cases Not Covered by Rule
  92.2

 (a)  The language of any letter from the applicant to
the receiving Office shall be the same as the language of
the international application to which such letter relates.
However, the receiving Office may expressly authorize the
use of any other language.

 (b)  The language of any letter to the International
Bureau  shall  be  English  where  the  language  of  the
international application is English, and it shall be French
where the language of the international application is
French. Where the language of the international application
is neither English nor French, the language of any letter to
the  International  Bureau  shall  be  English  or  French,
provided that any copy, sent to the International Bureau as
a notification addressed to it, of a Form sent to the
applicant  by  the  receiving  Office,  the  International
Searching  Authority  or  the  International  Preliminary
Examining  Authority,  does  not  require  translation  into
English or French.

  Section 105

  Identification of International Application with Two or
  More Applicants

 Where any international application indicates two or more
applicants, it shall be sufficient, for the purpose of
identifying that application, to indicate, in any Form or
correspondence relating to such application, the name of the
applicant first named in the request. The provisions of the
first sentence of this Section do not apply to the demand or
to a notice effecting later elections.

  Section 106

 Change of Common Representative

  bis
  Where a change is recorded under Rule 92  .1(a) in the
person of an applicant who was considered to be the common
representative under Rule 90.2(b), the new applicant shall
be considered to be the common representative under Rule
90.2(b) if he is entitled according to Rule 19.1 to file an
international application with the receiving Office.

  Section 107

  Identification of International Authorities and of
 Designated and Elected Offices

 (a)  Whenever the nature of any communication from or to
the applicant, from or to any International Authority or,

before national processing or examination has started, from
or to any designated or elected Office so permits, any
International Authority or any designated or elected Office
may be indicated in the communication by the two - letter
code referred to in Section 115.

 (b)  The  indication  of  a  receiving  Office,  an
International  Searching  Authority,  an  International
Preliminary Examining Authority or a designated or elected
Office shall be preceded by the letters "RO," "ISA", "IPEA,"
"DO," or "EO," respectively, followed by a slant (e.g.,
"RO/JP," "ISA/US", "IPEA/SE," "DO/EP," "EO/AU").

  Section 108

  Correspondence Intended for the Applicant

 (a)  For the purpose of this Section, where there are
two or more agents whose appointments are in force, "first
mentioned agent" means the agent first mentioned in the
document  containing  the  appointments  or,  where  the
appointments are contained in two or more documents, in that
which was filed first.

 (b)  Where a sole applicant has appointed an agent or
agents under Rule 90.1(a), correspondence intended for the
applicant from the International Authorities shall, subject
to paragraph (d), be addressed to the agent or, where
applicable, to the first mentioned agent.

 (c)  Where  there  are  two  or  more  applicants,
correspondence  intended  for  the  applicants  from  the
International Authorities shall, subject to paragraph (d),
be addressed:

 (i)  if no common agent has been appointed under Rule
90.1-to the common representative or, where applicable, to
his agent or first mentioned agent; or

 (ii)  if the applicants have appointed a common agent or
common agents under Rule 90.1(a)-to that common agent or,
where applicable, to the first mentioned common agent.

 (d)  Where an agent has or agents have been appointed
under Rule 90.1(b), (c) or (d)(ii), paragraphs (b) and (c)
shall apply to correspondence intended for the applicant
relating to the procedure before the International Searching
Authority  or  the  International  Preliminary  Examining
Authority, as the case may be, as if those paragraphs
referred to the agent or agents so appointed.

  Section 109

  File Reference

 (a)  Where any document submitted by the applicant
contains an indication of a file reference, that reference
shall not exceed twelve characters in length and may be
composed of either letters of the Latin alphabet or Arabic
numerals, or both.

 (b)  Correspondence  from  International  Authorities
intended for the applicant shall indicate any such file
reference.

  Section 110

  Dates

 Any date in the international application, or used in any
correspondence  emanating  from  International  Authorities
relating  to  the  international  application,  shall  be
indicated by the Arabic number of the day, by the name of
the month, and by the Arabic number of the year. The
receiving Office, where the applicant has not done so, or
the International Bureau, where the applicant has not done
so and the receiving Office fails to do so, shall, after,
above, or below any date indicated by the applicant in the
request, repeat the date, in parenthesis, by indicating it
by two - digit Arabic numerals each for the number of the
day, for the number of the month and for the last two
numbers of the year, in that order and with a period, slant,
or hyphen after the digit pairs of the day and of the month
(for example, "05 March 1992 (05.03.92)", "05 March 1992
(05/03/92)", or "05 March 1992 (05 - 03 - 92)" ).

  Section 111

  [Deleted]

  Section 112

  Ceasing of Effect under Articles 24(1)(iii) and 39(2),
 Review under Article 25(2) and Maintaining of Effect under
  Articles 24(2) and 39(3)

 (a)  Each national Office shall, in its capacity as
designated Office, notify the International Bureau once a
year of:

 (i)  the number of international applications in respect
of which, during the preceding calendar year, the time limit
applicable under Article 22 has expired;

 (ii)  the number of international applications in respect
of  which,  during  the  preceding  calendar  year,  the
requirements provided for in Article 22 have not been
complied with before the expiration of the time limit
applicable under that Article, with the consequence that the
effects of the international applications concerned have
ceased under Article 24(1)(iii).

 (b)  Each national Office shall, in its capacity as
elected Office, notify the International Bureau once a year
of:

 (i)  the number of international applications in respect
of which, during the preceding calendar year, the time limit
applicable under Article 39(1) has expired;

 (ii)  the number of international applications in respect
of  which,  during  the  preceding  calendar  year,  the
requirements provided for in Article 39(1) have not been
complied with before the expiration of the time limit
applicable under that Article, with the consequence that the
effects of the international applications concerned have
ceased under Article 39(3).

 (c)  Where, under Article 25(2), the designated Office
decides that the refusal, declaration, or finding referred

to in Article 25(1) was not justified, it shall promptly
notify the International Bureau that it will treat the
international  application  as  if  the  error  or  omission
referred  to  in  Article  25(2)  had  not  occurred.  The
notification shall preferably contain the reasons for the
decision of the designated Office.

 (d)  Where, under Article 24(2) or under Article 39(3),
the  designated  or  elected  Office  maintains  the  effect
provided for in Article 11(3), it shall promptly notify the
International Bureau accordingly. The notification shall
preferably contain the reasons for the decision of the
designated or elected Office.

  Section 113

  Special Fees Payable to the International Bureau

 (a)  The special publication fee provided for in Rule
48.4 shall be 200 Swiss francs.

 (b)  The special fee provided for in Rule 91.1(f) shall
be payable to the International Bureau and shall be 50 Swiss
francs plus 12 Swiss francs for each sheet in excess of one.
Where that fee has not been paid before the time of the
completion of the technical preparations for international
publication, the request for rectification shall not be
published. Where the last sentence of Rule 91.1(f) applies
and the said fee has not been paid before the time of the
communication of the international application under Article
20, a copy of the request for rectification shall not be
included in that communication.

  Section 114

  Electronic Transmission of Notices

 Where the Treaty, the Regulations, or these Administrative
Instructions  provide  for  a  notification  or  other
communication to be transmitted by one national Office or
intergovernmental organization to another, that notification
or communication, except where otherwise provided, may,
where so agreed by both the sender and the receiver, be
transmitted by electronic means or in electronic form.

  Section 115

  Indications of States, Territories, and Intergovernmental
  Organizations

 The indication of a State, territory, or intergovernmental
organization shall be made either by its full name, by a
generally accepted short title which, if the indications are
in English or French, shall be as appears in WIPO Standard
ST.3  (Recommended  Standard  Two  -  Letter  Code  for  the
Representation of Countries, and of Other Entities and
International  Organizations  Issuing  or  Registering
Industrial Property Titles), or by the two - letter code as
appears in that Standard.  #

  3. Published in the WIPO Handbook on Industrial
Property Information and Documentation.

  PART 2:  INSTRUCTIONS RELATING TO THE INTERNATIONAL
  APPLICATION

  Section 201

  [Deleted]

  Section 202

 Kind of Protection

  (a) Where the applicant wishes his application to be
treated in any designated State as an application not for a
patent but for the grant of another kind of protection
referred to in Article 43, he shall make the indication in
the request referred to in Rule 4.12(a) by inserting the
words  "inventor's  certificate,"  "utility  certificate,"
"utility model" (or "petty patent" for Australia), "patent
of  addition,"  "certificate  of  addition",  "inventor's
certificate  of  addition"  or  "utility  certificate  of
addition," or their equivalent in the language of the
international application, immediately after the indication
of the said State.

  (b)  Where,  in  respect  of  a  designated  State  which
provides for the granting of a patent and of a utility
model, the applicant is seeking two kinds of protection
under Article 44, he shall make the indication referred to
in  Rule  4.12(b)  by  inserting,  immediately  after  the
indication  of  that  State  and  in  the  language  of  the
international application, the words "and utility model."

  Section 203

  Different Applicants for Different Designated States

  (a) Different applicants may be indicated for different
States designated for a regional patent.

  (b) Where a particular State has been designated for both
a national patent and a regional patent, the same applicant
or applicants shall be indicated for both designations.

  Section 204

  Headings of the Parts of the Description

  The headings referred to in Rule 5.1(c) should be as
follows:

  (i) for matter referred to in Rule 5.1(a)(i), "Technical
Field";

  (ii)  for  matter  referred  to  in  Rule  5.1(a)(ii),
"Background Art ";

  (iii)  for  matter  referred  to  in  Rule  5.1(a)(iii),
"Disclosure of Invention";

  (iv) for matter referred to in Rule 5.1(a)(iv), "Brief
Description of Drawings";

  (v) for matter referred to in Rule 5.1(a)(v), "Best Mode
for Carrying Out the Invention," or, where appropriate,
"Mode (s) for Carrying Out the Invention";

  (vi)  for  matter  referred  to  in  Rule  5.1(a)(vi),

"Industrial Applicability."

  Section 205

  Numbering and Identification

  of Claims Upon Amendment

  (a)  Amendments to the claims under Article 19 or
Article 34(2)(b) may be made either by cancelling one or
more entire claims, by adding one or more new claims or by
amending the text of one or more of the claims as filed. All
the  claims  appearing  on  a  replacement  sheet  shall  be
numbered in Arabic numerals. Where a claim is cancelled, no
renumbering of the other claims shall be required. In all
cases where claims are renumbered, they shall be renumbered
consecutively.

  (b) The applicant shall, in the letter referred to in the
second and third sentences of Rule 46.5(a) or in the second
and  fourth  sentences  of  Rule  66.8(a),  indicate  the
differences between the claims as filed and the claims as
amended. He shall, in particular, indicate in the

 said letter, in connection with each claim appearing in the
international  application  (it  being  understood  that
identical  indications  concerning  several  claims  may  be
grouped), whether:

  (i) the claim is unchanged;

  (ii) the claim is cancelled;

  (iii) the claim is new;

  (iv) the claim replaces one or more claims as filed;

  (v) the claim is the result of the division of a claim as
filed.

  Section 206

 Unity of Invention

  The  determination  by  the  International  Searching
Authority, the International Preliminary Examining Authority
and  the  designated  and  elected  Offices  whether  an
international application complies with the requirement of
unity of invention under Rule 13 shall be made in accordance
with Annex B.

  Section 207

  Arrangement of Elements and Numbering of Sheets of the
  International Application

  (a) In effecting the sequential numbering of the sheets
of the international application in accordance with Rule
11.7, the elements of the international application shall be
placed in the following order: the request, the description,
the claims, the abstract, the drawings.

  (b) The sequential numbering of the sheets shall be
effected by using three separate series of numbering:

  (i) the first series applying to the request only and
commencing with the first sheet of the request,

  (ii) the second series commencing with the first sheet of
the description and continuing through the claims until the
last sheet of the abstract, and

  (iii) the third series being applicable to the sheets of
the drawings only and commencing with the first sheet of the
drawings; the number of each sheet of the drawings shall
consist of two Arabic numerals separated by a slant, the
first being the sheet number and the second being the total
number of sheets of drawings (for example, 1/3, 2/3, 3/3).

  Section 208

 Sequence Listings

  (a) Any nucleotide and/or amino acid sequence listing
("sequence  listing")  shall  be  presented  in  a  format
complying with WIPO Standard ST.23 (Recommendation for the
Presentation of Nucleotide and Amino Acid Sequence Listings
in Patent Applications and in Published Patent Documents).
4

  (b) Any machine readable form of a sequence listing shall
comply with the required format in accordance with Annex C.

  (c)  Any  sequence  listing  not  forming  part  of  the
international  application  shall,  when  furnished,  be
accompanied by a statement to the effect that the listing
does not include matter which goes beyond the disclosure in
the international application as filed.

  (d) Sheets of a sequence listing in printed form not
forming part of the international application shall be
sequentially numbered in a series separate from that used in
numbering the sheets of the international application; the
number of each sheet shall preferably consist of two Arabic
numerals separated by a slant, the first being the sheet
number and the second being the total number of such sheets
(for example, 1/3, 2/3, 3/3).

  Section 209

  Indications as to Deposited Microorganisms

  on a Separate Sheet

  (a) To the extent that any indication with respect to a
deposited microorganism is not contained in the de  4.
Published  in  the  WIPO  Handbook  on  Industrial  Property
Information and Disclosure.

 scription, it may be given on a separate sheet. Where any
such indication is so given, it shall preferably be on Form
PCT/RO/134 and, if furnished at the time of filing, the said
Form shall, subject to paragraph (b), preferably be attached
to the request and referred to in the check list referred to
in Rule 3.3(a)(ii).

  (b) For the purposes of the Japanese Patent Office when
Japan is designated, paragraph (a) applies only to the
extent that the said Form or sheet is included as one of the
sheets of the description of the international application

at the time of filing.

  Section 210

  Calculation of Designation Fee for the Purposes

 of National and Regional Patents

  designation  of  the  same  Contracting  State  with  an
indication of the wish to obtain a regional patent and the
national law of the Contracting State does not contain a
provision referred to in Article 45(2), the designation fees
shall be calculated on the basis that a separate fee is
payable in respect of the designation of the Contracting
State in addition to the designation fee payable in respect
of that Contracting State as a Contracting State or as one
of a group of Contracting States for which a regional patent
is sought.

  PART 3:  INSTRUCTIONS RELATING TO THE RECEIVING OFFICE

  Section 301

  Notification of Receipt of Purported

  International Application

  Before  the  determination  under  Article  11(1),  the
receiving Office may notify the applicant of the receipt of
the purported international application. The notification
should  indicate  the  date  of  actual  receipt  and  the
international  application  number  of  the  purported
international application referred to in Section 307 as well
as, where useful for purposes of identification, the title
of the invention.

  Section 302

  Priority Claim Considered Not To Have Been Made

  Where, owing to failure to meet the requirements of Rule
4.10(b), the priority claim is, for the purposes of the
procedure under the Treaty, considered not to have been
made, the receiving Office shall indicate that fact in the
international application by enclosing the portion of the
request which provides for the information concerning the
priority claim (or, where the priorities of several earlier
applications are claimed and not all those priority claims
are considered not to have been made, the relevant portion)
within square brackets and entering, in the margin, the
words "NOT TO BE CONSIDERED FOR PCT PROCEDURE" or their
equivalent  in  the  language  of  publication  of  the
international application, and shall notify the applicant
accordingly. If copies of the international application have
already been sent to the International Bureau and the
International  Searching  Authority,  the  receiving  Office
shall also notify that Bureau and that Authority.

  Section 303

  Deletion of Additional Matter in the Request

  Where, under Rule 4.17(b), the receiving Office deletes
ex officio  any matter contained in the request, it shall
do so by enclosing such matter within square brackets and

entering, in the margin, the words "DELETED BY RO" or their
equivalent  in  the  language  of  publication  of  the
international application, and shall notify the applicant
accordingly. If copies of the international application have
already been sent to the International Bureau and the
International  Searching  Authority,  the  receiving  Office
shall also notify that Bureau and that Authority.

  Section 304

  Invitation to Pay Fees Before Date

  on Which They Are Due

  (a) If the receiving Office finds, before the date on
which they are due, that the transmittal fee, the basic fee
(including any supplement per sheet over 30) or the search
fee are lacking in whole or in part, it may invite the
applicant to pay the missing amounts within one month from
the date of receipt of the international application.

  (b) If the receiving Office finds, before the date on
which  they  are  due,  that  the  designation  fees  for
designations made under Rule 4.9(a) are lacking in whole or
in part, it may invite the applicant to pay the missing
amount within one year from the priority date or within one
month  from  the  date  of  receipt  of  the  international
application, whichever expires later.

  (c) If the receiving Office finds that the applicant
filed a written notice under Rule 4.9(b), but failed to pay
the designation fees and/or the confirmation fee under Rule
4.9(c)(ii) or that the amount paid is not sufficient, it may
invite the applicant to pay the missing amount within 15
months from the priority date.

  Section 305

  Identifying the Copies of the

  International Application

  (a)  Where,  under  Rule  11.1(a),  the  international
application has been filed in one copy, the receiving Office
shall, after preparing under Rule 21.1(a) the additional
copies required under Article 12(1), mark,

  (i) the words "RECORD COPY" in the upper left - hand
corner of the first page of the original copy,

  (ii) in the same space on one additional copy, the words
"SEARCH COPY", and

  (iii) in the same space on the other such copy, the words
"HOME COPY,"

 or their equivalent in the language of publication of the
international application.

  (b)  Where,  under  Rule  11.1(b),  the  international
application has been filed in more than one copy, the r
eceiving Office shall choose the copy most suitable for
reproduction purposes, and mark the words "RECORD COPY," or
their equivalent in the language of publication of the
international application, in the upper left - hand corner

of its first page. After verifying the identity of any
additional copies and, if applicable, preparing under Rule
21.1(b) the home copy, it shall mark, in the upper left -
hand corner of the first page of one such copy, the words
"SEARCH COPY, " and, in the same space on the other such
copy, the words "HOME COPY," or their equivalent in the
language of publication of the international application.

  Section 306

  Delayed Transmittal of Search Copy

  Where the search copy will be transmitted to the
International Searching Authority after the date on which
the record copy is transmitted to the International Bureau,
the receiving Office shall notify the International Bureau.
The notification may be made by marking a check - box
provided for this purpose on the request.

  Section 307

 System of Numbering International Applications

  (a) Papers purporting to be an international application
under Rule 20.1(a) shall be marked with the international
application number, consisting of the letters "PCT," a
slant, the two - letter code referred to in Section 115,
indicating the receiving Office, a two - digit indication of
the last two numbers of the year in which such papers were
first received, a slant, and a five - digit number, allotted
in sequential order corresponding to the order in which the
international  applications  are  received  (e.g.,
"PCT/SE78/00001" ). Where the International Bureau acts,
pursuant to Rule 19.1(b), as receiving Office for a national
Office, the two - letter code indicating the national Office
for which the International Bureau acts as receiving Office
shall be used.

  (b) If a negative determination is made under Rule 20.7
or a declaration is made under Article 14(4), the letters
"PCT" shall be deleted by the receiving Office from the
indication of the international application number on any
papers marked previously with that number, and the said
number shall be used without such letters in any future
correspondence  relating  to  the  purported  international
application.

  Section 308

  Marking of the Sheets of the International Application

  The  receiving  Office  shall  indelibly  mark  the
international application number referred to in Section 307
in the upper right - hand corner of each sheet of each copy
of the purported international application.

  Section 309

  Procedure in the Case of Later Submitted Sheets

  (a) The receiving Office shall indelibly mark any sheet
received on a date later than the date on which sheets were
first received with the date on which it received that
sheet,  inserted  immediately  below  the  international
application number referred to in Section 307.

  (b) The receiving Office shall, in the case of later
submitted sheets received within the time limits referred to
in Rule 20.2(a)(i) and (ii):

  (i) effect the required correction of the international
filing date, or, where no international filing date has yet
been accorded, of the date of receipt of the purported
international application;

  (ii) notify the applicant of the correction effected
under item (i), above;

  (iii) where transmittals under Article 12(1) have already
been  made,  notify  the  International  Bureau  and  the
International Searching Authority of any correction effected
under item (i), above, by transmitting a copy of the
corrected first and last sheets of the request, and forward
the later submitted sheets to the said Bureau and a copy
thereof to the said Authority;

  (iv) where transmittals under Article 12(1) have not yet
been made, attach the later submitted sheets to the record
copy and a copy thereof to the search copy.

  (c) The receiving Office shall, in the case of later
submitted sheets received after the expiration of the time
limit referred to in Rule 20.2(a)(i):

  (i) notify the applicant of that fact and of the date of
receipt of the later submitted sheets;

  (ii) where transmittals under Article 12(1) have already
been  made,  forward  the  later  submitted  sheets  to  the
International Bureau with the indication on the bottom of
each sheet of the words: "NOT TO BE TAKEN INTO CONSIDERATION
FOR THE PURPOSES OF INTERNATIONAL PROCESSING" or their
equivalent  in  the  language  of  publication  of  the
international application;

  (iii) where transmittals under Article 12(1) have not yet
been made, attach the later submitted sheets to the record
copy with the indication referred to in item (ii).

  (d) The receiving Office shall, in the case of later
submitted sheets received after the expiration of the time
limit referred to in Rule 20.2(a)(ii), proceed as provided
in Rule 20.7, unless the applicant has, within the said time
limit, complied with the invitation under Article 11(2)(a)
so that an international filing date can be accorded; in the
latter case, the receiving Office shall proceed as provided
in paragraph (c)(i) to (iii).

  Section 310

  Procedure in the Case of Missing Drawings

  (a)  Where  the  international  application  refers  to
drawings which in fact are not included in that application,
the receiving Office shall make the indication referred to
in Rule 26.6(a) by marking a check - box provided for this
purpose on the request.

  (b) Section 309(a) shall apply also in the case of
drawings received by the receiving Office on a date later

than the date on which sheets were first received by that
Office.

  (c) The receiving Office shall, in the case of missing
drawings received within the time limit referred to in Rule
20.2(a)(iii):

  (i) effect the required correction of the international
filing date, or, where no international filing date has yet
been accorded, of the date of receipt of the purported
international application, and delete the indication made
under paragraph (a), above;

  (ii) notify the applicant of the correction effected
under item (i), above;

  (iii) where transmittals under Article 12(1) have already
been  made,  notify  the  International  Bureau  and  the
International Searching Authority of any correction effected
under item (i), above, by transmitting a copy of the
corrected first and last sheets of the request, and forward
the later submitted drawings to the said Bureau and a copy
thereof to the said Authority;

  (iv) where transmittals under Article 12(1) have not yet
been made, attach the later submitted drawings to the record
copy and a copy thereof to the search copy.

  (d) The receiving Office shall, in the case of missing
drawings received after the expiration of the time limit
referred to in Rule 20.2(a)(iii):

  (i) notify the applicant of the fact and of the date of
receipt of the later submitted drawings;

  (ii) where transmittals under Article 12(1) have already
been made, forward the later submitted drawings to the
International Bureau with the indication on the bottom of
each  drawing  of  the  words:  "NOT  TO  BE  TAKEN  INTO
CONSIDERATION (PCT Art. 14(2), 2nd sentence)" or their
equivalent  in  the  language  of  publication  of  the
international application;

  (iii) where transmittals under Article 12(1) have not yet
been made, attach the later submitted drawings to the record
copy with the indication referred to in item (ii).

  Section 311

  Renumbering in the Case of Deletion, Substitution or
  Addition of Sheets of the International Application

  (a) The receiving Office shall, subject to Section 207,
sequentially  renumber  the  sheets  of  the  international
application when necessitated by the addition of any new
sheet, the deletion of entire sheets, a change in the order
of the sheets, or any other reason.

  (b) The sheets of the international application shall be
provisionally renumbered in the following manner:

  (i) when a sheet is deleted, the receiving Office shall
either include a blank sheet with the same number and with
the word "DELETED," or its equivalent in the language of
publication of the international application, below the

number, or insert, in brackets, below the number of the
following sheet, the number of the deleted sheet with the
word  "DELETED"  or  its  equivalent  in  the  language  of
publication of the international application;

  (ii) when one or more sheets are added, each sheet shall
be identified by the number of the preceding sheet followed
by a slant and then by another Arabic numeral such that the
additional  sheets  are  numbered  consecutively,  starting
always with number one for the first sheet added after an
unchanged sheet (e.g., 10/1, 15/1, 15/2, 15/3, etc.); when
later additions of sheets to an existing series of added
sheets are necessary, an extra numeral shall be used for
identifying  the  further  additions  (e.g.,  15/1,  15/1/1,
15/1/2, 15/2, etc.).

  (iii) [Deleted]

  (c) In the cases mentioned in paragraph (b), it is
recommended that the receiving Office should write, below
the number of the last sheet, the total number of the sheets
of the international application followed by the words
"TOTAL OF SHEETS" or their equivalent in the language of
publication of the international application. It is further
recommended that, at the bottom of any last sheet added, the
words "LAST ADDED SHEET" or their equivalent in the language
of publication of the international application should be
inserted.

  Section 312

  Notification of Decision Not To Issue Declaration that the
  International Application Is Considered Withdrawn

  Where the receiving Office, after having notified the
applicant  under  Rule  29.4  of  its  intent  to  issue  a
declaration under Article 14(4), decides not to issue such a
declaration, it shall notify the applicant accordingly.

  Section 313

  Documents Filed with the International Application;

 Manner of Marking the Necessary Annotations in

  the Check List

  (a) Any power of attorney, any priority document, any fee
calculation sheet, and any separate sheet referred to in
Section  209(a)  containing  indications  as  to  deposited
microorganisms, filed with the international application
shall accompany the record copy; any other document referred
to in Rule 3.3(a)(ii) shall be sent only at the specific
request of the International Bureau. If any document which
is  indicated  in  the  check  list  as  accompanying  the
international application is not, in fact, filed at the
latest by the time the record copy leaves the receiving
Office, that Office shall so note on the check list and the
said indication shall be considered as if it had not been
made.

  (b) Where, under Rule 3.3(b), the receiving Office itself
completes the check list, that Office shall enter, in the
margin, the words "COMPLETED BY RO" or their equivalent in
the  language  of  publication  of  the  international

application.  Where  only  some  of  the  indications  are
completed by the receiving Office, the said words and each
indication completed by that Office shall be identified by
an asterisk.

  (c) Where a sequence listing in machine readable form, or
a sequence listing in printed form not forming part of the
international application, is furnished to the

  receiving  Office,  it  shall  be  transmitted  to  the
International Searching Authority together with the search
copy. Where such a sequence listing is received by the
receiving Office after the transmittal of the search copy,
the sequence listing shall be promptly transmitted to the
International Searching Authority.

  Section 314

 Correction or Cancellation of a

  Priority Claim under Rule 4.10

  (a) Where, in reply to an invitation by the receiving
Office to correct or cancel a priority claim under Rule
4.10(d), the applicant corrects the erroneously indicated
filing date of any earlier application, the receiving Office
shall enter the corrected date in the request, draw a line
through the previously entered date while still leaving it
legible, and enter, in the margin, the letters "RO."

  (b) Where, under Rule 4.10(d), the receiving Office
cancels the declaration claiming priority made under Article
8(1), that Office shall enclose the indication on the
request  which  contains  the  information  concerning  the
priority claim (or, where the priorities of several earlier
applications are claimed and not all those priority claims
are cancelled, the relevant part of the indication) within
square brackets, shall draw a line between the square
brackets while still leaving the indication or the relevant
part legible and shall enter, in the margin, the words
"CANCELLED ON REQUEST OF APPLICANT" or "CANCELLED EX OFFICIO
BY RO", as the case may be, or their equivalent in the
language of publication of the international application.

  (c) The applicant and, if copies of the international
application have already been sent to the International
Bureau  and  the  International  Searching  Authority,  that
Bureau and that Authority shall be notified by the receiving
Office of any correction or cancellation of a priority claim
effected under Rule 4.10(d) by the receiving Office.

  (d) Paragraphs (a) and (c) shall apply  mutatis mutandis
to the correction of an obvious error under Rule 4.10(b).

  Section 315

  Notification Concerning Confirmation of Designation

  Where a designation made under Rule 4.9(b) has been
confirmed under Rule 4.9(c), the receiving Office shall
promptly notify the applicant and the International Bureau.

  Section 316

 Procedure in the Case Where the International

  Application Lacks the Prescribed Signature

  Where, under Article 14(1)(a)(i), the receiving Office
finds that the international application is defective in
that it lacks the prescribed signature, that Office shall
send to the applicant, together with the invitation to
correct under Article 14(1)(b), a copy of the relevant sheet
of the request part of the international application. The
applicant shall, within the prescribed time limit, return
said copy after affixing thereto the prescribed signature.

  Section 317

  [Deleted]

  Section 318

  Cancellation of Designations of Non - Contracting States

  The receiving Office shall cancel  ex officio  the
designation of any State which is not a Contracting State,
shall enclose that designation within square brackets, shall
draw a line between the square brackets while still leaving
the designation legible, shall enter, in the margin, the
words "CANCELLED EX OFFICIO BY RO" or their equivalent in
the  language  of  publication  of  the  international
application,  and  shall  promptly  notify  the  applicant
accordingly. If the record copy has already been sent to the
International Bureau, the receiving Office shall also notify
that Bureau.

  Section 319

  Later Indication of Priority Application Number

  Where the application number of the earlier application
referred to in Rule 4.10(c) (priority application number) is
furnished to the receiving Office, that Office shall enter
the said number on the request or, where the record copy has
already been sent to the International Bureau, promptly
notify that Bureau of the said number, and shall notify the
International Bureau of the date on which it received the
said number.

  Section 320

  bis
  Invitation to Pay Fees under Rule 16  .1(a) and (b)

  (a) If invitations to pay fees are required to be issued
by  the  receiving  Office  under  both  paragraph  (a)  and
  bis
paragraph (b) of Rule 16  .1 , those invitations may be
issued as separate invitations unless the due dates for the
fees concerned are less than 15 days apart, in which case
those invitations shall preferably be issued as a single
invitation.

  (b) Where the receiving Office requires the payment of
  bis
the late payment fee under Rule 16  .2 , it shall calculate
the amount of that fee on the basis of the total amount of
the fees due referred to in the invitation under paragraph
(a).

  (c) When issuing an invitation under paragraph (a),the

receiving Office shall, if it received moneys from the
applicant before the due date, inform the applicant of the
fees to which those moneys have been applied.

  Section 321

  Application of Moneys Received by the

  Receiving Office in Certain Cases

  (a) The receiving Office shall, to the extent that it has
received instructions from the applicant as to the fees to
which  it  shall  apply  moneys  received  by  it  from  the
applicant, apply those moneys accordingly.

  (b) Where the receiving Office receives moneys from the
applicant which, together with any other moneys so received,
are not sufficient to cover in full the transmittal fee (if
any), the international fee and the search fee (if any), the
receiving Office shall, to the extent that it has not
received instructions from the applicant as to the fees to
which it shall apply the moneys which are available for the
purpose, apply those moneys in payment, successively, of the
fees set out below to the extent that they are due and
unpaid and in the order in which they appear below:

  (i) the transmittal fee;

  (ii) the basic fee part of the international fee;

  (iii) the search fee;

  (iv) the designation fee part of the international fee
for designations made under Rule 4.9(a).

  (c) Where, pursuant to paragraph (b), the receiving
Office allocates moneys in payment of the designation fees
to cover designations made under Rule 4.9(a), it shall apply
them to those fees as follows:

  (i) where the applicant indicates to which designation or
designations the amount is to be applied, it shall be
applied  accordingly  but,  if  the  amount  received  is
insufficient to cover the designations indicated, it shall
be  applied  in  the  order  chosen  by  the  applicant  in
indicating the designations;

  (ii) to the extent that the applicant has not given the
indications referred to in item (i), the amount, or the
balance thereof, shall be applied to the designations in the
order in which they appear in the request part of the
international application;

  (iii) where the designation of a State is for the
purposes  of  a  regional  patent,  and  provided  that  the
required designation fee is, under the preceding provisions,
available for that designation, the designation of any
further States for which the same regional patent is sought
shall be considered as covered by that fee.

  (d) Where the receiving Office receives moneys from the
  bis
applicant in response to an invitation under Rule 16  .1
which are not sufficient to cover all the unpaid fees,
including, where required, the late payment fee under Rule

  bis
16  .2 , the moneys shall be applied in the order referred
to in paragraphs (b) and (c) to as many of the fees due,
including any late payment fee, as can be covered.

  (e) Where, pursuant to Rule 15.5(b), the receiving Office
allocates moneys in payment of fees under Rule 15.5(a) in
respect  of  the  confirmation  under  Rule  4.9(c)  of
designations made under Rule 4.9(b), the receiving Office
shall apply those moneys as follows:

  (i) where the applicant indicates to which designation or
designations the amount is to be applied, it shall be
applied accordingly, but, if the amount is insufficient to
cover the designations indicated, it shall be applied to the
designations  in  the  order  chosen  by  the  applicant  in
indicating the designations;

  (ii) to the extent that the applicant has not given the
indications referred to in item (i), the amount, or the
balance thereof, shall be applied to the designations in the
order in which they appear in the notice containing the
confirmation;

  (iii) where the designation of a State is for the
purposes  of  a  regional  patent,  and  provided  that  the
required designation fee is, under the preceding provisions,
available for that designation, the designation of any
further States for which the same regional patent is sought
shall be considered as covered by that fee.

  (f) When allocating moneys as provided in paragraph (e),
both the designation fee and the confirmation fee must be
covered in respect of each designation.

  (g) Where moneys have been applied by the receiving
Office in accordance with indications given by the applicant
as mentioned in paragraph (c)(i) or (e)(i), the receiving
Office shall inform the International Bureau as to the
effect of the said indications, preferably by sending the
International  Bureau  a  copy  of  any  relevant  written
communication received from the applicant.

  Section 322

  Invitation to Submit a Request

  for Refund of the Search Fee

  The receiving Office may, before making a refund of the
search fee under Rule 16.2, first invite the applicant to
submit a request for the refund.

  Section 323

  Transmittal of Priority Documents

  (a) Any priority document which is submitted to the
receiving Office shall be transmitted by that Office to the
International Bureau together with the record copy or, if
received  after  the  record  copy  has  been  sent  to  the
International Bureau, promptly after having been received by
that Office.

  (b) Where the applicant has requested the receiving

Office to transmit a priority document under Rule 17.1(b),
the receiving Office shall, promptly after receipt of a
request for transmittal of the priority document and, where
applicable, the payment of the fee referred to in that Rule,
transmit the priority document to the International Bureau.
Where such request for transmittal has been made but the
required fee has not been paid, the receiving Office shall
promptly notify the applicant that the request under Rule
17.1(b) will be considered not to have been made unless the
fee is paid within 16 months from the priority date or, in
the case referred to in Article 23(2), not later than at the
time the processing or examination of the international
application is requested.

  (c) When transmitting a priority document, the receiving
Office shall notify the International Bureau of the date on
which it received the priority document or the request for
transmittal thereof under Rule 17.1(b).

  (d) Where a request under Rule 17.1(b) to transmit the
priority document has been considered not to have been made,
the receiving Office shall promptly inform the International
Bureau. Where the receiving Office fails to inform the
International Bureau accordingly within 17 months from the
priority  date,  the  receiving  Office  shall  prepare  and
transmit the priority document to the International Bureau
even though the required fee has not been paid by the
applicant.

  Section 324

  Copy of Notification of the International

  Application Number and the International

  Filing Date under Rule 20.5(c)

  The copy, sent to the International Bureau, of the
notification of the international application number and the
international filing date under Rule 20.5(c) shall also
include, if the priority of an earlier application is
claimed  in  the  international  application,  the  date  of
filing-as indicated in the international application-of that
earlier application. If the priority of several earlier
applications is claimed, the earliest filing date shall be
indicated.

  Section 325

  Corrections of Defects under Rule 26.4(a), Rectifications
  of Obvious Errors under Rules 4.10(b) and 91.1, and
  Corrections under Rule 9.2

  (a) Where the receiving Office receives a correction of
defects under Rule 26.4(a), makes a correction of an obvious
error under Rule 4.10(b) or authorizes a rectification of an
obvious error under Rule 91.1, it shall:

  (i) indelibly mark, in the upper right - hand corner of
each replacement sheet, the international application number
and the date on which that sheet was received;

  (ii) indelibly mark, in the middle of the bottom margin
of each replacement sheet, the words "SUBSTITUTE SHEET (RULE
26)" (where the replacement sheet contains a correction of

defects under Rule 26) or "RECTIFIED SHEET" (where the
replacement sheet contains the rectification of an obvious
error) or their equivalent in the language of publication of
the international application;

  (iii)  indelibly  mark  on  the  letter  containing  the
correction or rectification, or accompanying any replacement
sheet, the date on which that letter was received;

  (iv) keep in its files a copy of the letter containing
the correction or rectification or, when the correction or
rectification is contained in a replacement sheet, the
replaced sheet, a copy of the letter accompanying the
replacement sheet, and a copy of the replacement sheet;

  (v) subject to item (vi), promptly transmit any letter
and any replacement sheet to the International Bureau, and a
copy thereof to the International Searching Authority;

  (vi) where transmittals under Article 12(1) have not yet
been made, transmit any letter and any replacement sheet to
the International Bureau together with the record copy and,
except where the international application is considered
withdrawn and Rule 29.1(a)(iii) applies, a copy of the said
letter or replacement sheet to the International Searching
Authority together with the search copy. The record copy and
the search copy shall contain any replaced sheet.

  (b) Where the receiving Office refuses to authorize the
rectification  of  an  obvious  error  under  Rule  91.1  or
correction of an obvious error under Rule 4.10(b), it shall
proceed as indicated under paragraph (a)(i), (iii) and (iv)
and  promptly  transmit  any  letter  and  any  proposed
replacement sheet to the International Bureau. If the record
copy has not yet been sent to the International Bureau, any
letter  and  any  proposed  replacement  sheet  shall  be
transmitted together with the record copy.

  (c) Where the receiving Office receives corrections aimed
at complying with Rule 9.1, paragraphs (a) and (b) shall
apply  mutatis mutandis  , provided that, where a
sheet is marked as indicated in paragraph (a) (ii), the
words "SUBSTITUTE SHEET (RULE 9.2)" shall be used.

  Section 326

  Withdrawal by Applicant Under

  bis  bis bis
  Rule 90  .1 , 90  .2 or 90  .3

  (a) The receiving Office shall promptly transmit to the
International Bureau any notice from the applicant effecting
withdrawal of the international application under  Rule
  bis  bis
90  .1 , of a designation under Rule 90  .2 or of a
  bis
priority claim under Rule 90  .3 which has been filed with
it together with an indication of the date of receipt of the
notice. If the record copy has not yet been sent to the
International Bureau, the receiving Office shall transmit
the said notice together with the record copy.

  (b) If the search copy has already been sent to the
International  Searching  Authority  and  the  international
  bis
application is withdrawn under Rule 90  .1 or a priority

  bis
claim is withdrawn under Rule 90  .3 , the receiving Office
shall promptly transmit a copy of the notice effecting
withdrawal to the International Searching Authority.

  (c) If the search copy has not yet been sent to the
International  Searching  Authority  and  the  international
  bis
application is withdrawn under Rule 90  .1 , the receiving
Office shall not send the search copy to the International
Searching Authority and shall, subject to Section 322,
refund the search fee to the applicant unless it has already
been transferred to the International Searching Authority.
If the search fee has already been transferred to the
International  Searching  Authority,  the  receiving  Office
shall send a copy of the request and of the notice effecting
withdrawal to that Authority.

  (d) If the search copy has not yet been sent to the
International Searching Authority and a priority claim is
  bis
withdrawn under Rule 90  .3 , the receiving Office shall
transmit a copy of the notice effecting withdrawal to the
International Searching Authority together with the search
copy.

  Section 327

 Ex Officio  Correction of Request

  by the Receiving Office

  (a) Where the record copy has not yet been sent to the
International Bureau and the request requires correction
because it contains an inconsistency or a minor defect such
as noncompliance with the requirement for indications under
Section 115, the receiving Office may correct the request
ex officio.  If the receiving Office does so, it shall
notify the applicant accordingly.

  (b) When making a correction under paragraph (a), the
receiving Office shall enter, in the margin, the letters
"RO." Where any matter is to be deleted, the receiving
Office shall enclose such matter within square brackets and
shall draw a line between the square brackets while still
leaving the deleted matter legible. Where any matter is to
be replaced, both the first and second sentences of this
paragraph shall apply.

  (c) The receiving Office shall check the number of
characters of the file reference, if any, and shall delete
any characters beyond the number permitted by Section 109.

  Section 328

  Notifications Concerning Representation

  (a) Where a power of attorney or a document containing
the  revocation  or  renunciation  of  an  appointment  is
submitted to the receiving Office and the record and search
c  opies have already been transmitted, the receiving Office
shall immediately notify the International Bureau and the
International Searching Authority by sending them a copy of
the  power  of  attorney  or  document  and  request  the
International Bureau to record a change in the indications
concerning the agent or common representative under Rule

  bis
92  .1(a)(ii).

  (b) If the record copy and/or search copy have not yet
been transmitted by the receiving Office, a copy of the
power of attorney or document containing the revocation or
renunciation of an appointment shall be transmitted by the
receiving Office with the record copy and/or search copy.

  Section 329

  Correction of Indications Concerning the Applicant's
  Residence or Nationality

 Where, in response to an invitation to correct a defect
under Article 11(1)(i), evidence is submitted indicating to
the satisfaction of the receiving Office that, in fact, the
applicant had, on the date on which the international
application was actually received, the right to file an
international application with that receiving Office, the
invitation shall be considered to be an invitation to
correct a defect under Article 14(1)(a)(ii) and Rule 4.5 in
the  prescribed  indications  concerning  the  applicant`s
residence and/or nationality, and the applicant may correct
those indications accordingly. If such correction is made,
no  defect  shall  be  considered  to  exist  under  Article
11(1)(i).

  Section 330

 Transmittal of Record Copy Prevented or Delayed by National
  Security Prescriptions

  (a)  Where  prescriptions  concerning  national  security
prevent the transmittal of the record copy by the receiving
Office to the International Bureau under Rule 22.1(a), the
receiving  Office  shall  notify  the  applicant  and  the
International Bureau accordingly  .

  (b) The notifications under paragraph (a) shall be sent
before the expiration of 13 months from the priority date.
Where the receiving Office believes that national security
clearance is imminent, it may postpone the sending of the
notifications, but shall send them before the expiration of
17 months from the priority date if no clearance has been
given by that time.

  Section 331

  Receipt of Confirmation Copy

 Where, subject to Rule 92.4, the receiving Office receives
an  international  application  by  facsimile  machine
transmission and subsequently receives the original ofthat
international application, it shall mark such original with
the words "CONFIRMATION COPY" or their equivalent in the
language of publication of the international application on
the bottom of the first page of the request and on the first
page of the description. The marking under Section 325 is
not required in such a case. The international application
as  received  by  facsimile  machine  transmission  shall
constitute the record copy. The confirmation copy shall be
transmitted to the International Bureau in addition to the
record copy.

  PART 4:  INSTRUCTIONS RELATING TO THE INTERNATIONAL BUREAU

  Section 401

  Marking of the Sheets of the Record Copy

  (a) The International Bureau shall, upon receipt of the
record copy, mark the date of receipt of the record copy in
the appropriate space on the request.

  (b) If the receiving Office has failed to mark any sheet
as provided in Sections 311 and 325, the marking which has
not been made may be inserted by the International Bureau.

  Section 402

  Correction or Cancellation of a Priority Claim under Rule
  4.10(d)

  (a) Where, in reply to an invitation issued by the
International Bureau to cancel or correct a priority claim
under Rule 4.10(d), the applicant corrects the erroneously
indicated  filing  date  of  any  earlier  application,  the
International Bureau shall enter the corrected date in the
request, draw a line through the previously entered date
while still leaving it legible, and enter, in the margin,
the letters IB.

  (b)  Where,  under  Rule  4.10(d),  the  International  B
ureau cancels the declaration claiming priority made under
Article 8(1), that Bureau shall enclose the indication on
the request which contains the information concerning the
priority claim (or, where the priorities of several earlier
applications are claimed and not all those priority claims
are cancelled, the relevant part of the indication) within
square brackets, shall draw a line between the square
brackets while still leaving the indication (or its relevant
part) legible, and shall enter, in the margin, the words
"CANCELLED ON REQUEST OF APPLICANT" or "CANCELLED EX OFFICIO
BY IB," as the case may be, or their equivalent in French.

  (c)  The  applicant,  the  receiving  Office,  and  the
International Searching Authority shall be notified by the
International Bureau of any correction or cancellation of a
priority  claim  effected  under  Rule  4.10(d)  by  the
International Bureau.

  (d) Any designated Office which has been notified under
Rule 24.2(b) of the receipt of the record copy shall be
notified by the International Bureau of any correction or
cancellation of a priority claim effected under Rule 4.10(d)
by the receiving Office or the International Bureau.

  Section 403

  Transmittal of Protest Against Payment of Additional Fee
  and Decision Thereon Where International Application Is
  Considered To Lack Unity of Invention

 Where, under Rules 40.2(c) or 68.3(c), the International
Bureau receives a request from the applicant to forward to
any designated or elected Office the texts of both the
protest against payment of an additional fee as provided for
in Articles 17(3)(a) and 34(3)(a) where the international
application is considered to lack unity of invention and the

decision thereon by the International Searching Authority or
the International Preliminary Examining Authority, as the
case may be, it shall proceed according to such request.

  Section 404

  International Publication Number of International
  Application

 The International Bureau shall assign to each published
international  application  an  international  publication
number which shall be different from the international
application number. The international publication number
shall be used on the pamphlet and in the Gazette entry. It
shall consist of the two - letter code WO followed by a two
- digit designation of the last two numbers of the year of
publication, a slant, and a serial number consisting of five
digits (e.g., "WO 78 / 12345 ").

  Section 405

 [Deleted]

  Section 406

  Pamphlets

  (a) Pamphlets referred to in Rule 48.1 shall be published
on a given day of the week.

  (b) All pamphlets shall be of A4 size and shall be
reproduced  recto verso  , except that drawings shall be
reproduced  recto  only.

  (c) The form and particulars of the front page of each
pamphlet shall be decided by the Director General.

  Section 407

  The Gazette

  (a) The Gazette referred to in Rule 86 shall be of A4
size and shall be reproduced  recto verso  .

  (b) In addition to the contents specified in Rule 86, the
Gazette  shall  contain,  in  respect  of  each  published
international application, the data indicated in Annex D.

  (c) The information referred to in Rule 86.1(v) shall be
that which is indicated in Annex E.

  Section 408

  Priority Application Number

  (a) If the application number of the earlier application
referred to in Rule 4.10(c) (priority application number) is
furnished  within  the  prescribed  time  limit,  the
International Bureau shall enter the said number on the
request, unless already done by the receiving Office under
Section 319.

  (b) If the priority application number is furnished after
the  expiration  of  the  prescribed  time  limit,  the
International Bureau shall inform the applicant and the

designated Offices of the date on which the said number was
furnished.  It  shall  indicate  the  said  date  in  the
international publication by including on the front page of
the pamphlet next to the priority application number the
words "FURNISHED LATE ON ... (date)," and the equivalent of
such words in the language in which the international
application is published if that language is other than
English.

  (c) If the priority application number has not been
furnished at the time of the completion of the technical
preparations  for  international  publication,  the
International Bureau shall indicate that fact by including
on the front page of the pamphlet in the space provided for
the priority application number the words "NOT FURNISHED"
and the equivalent of such words in the language in which
the international application is published if that language
is other than English.

  Section 409

  Notification of Priority Claim Considered Not To Have Been
  Made

 Where the International Bureau notes that the receiving
Office has failed to notify the applicant as provided in
Section 302, it shall send a notification to the same effect
to  the  applicant,  the  receiving  Office,  and  the
International Searching Authority.

  Section 410

  Numbering of Sheets for the Purposes of International
Publication; Procedure in Case of Missing Sheets or Drawings

  (a)  In  the  course  of  preparing  the  international
application for international publication, the International
Bureau  shall  sequentially  renumber  the  sheets  of  the
international application only when necessitated by the
addition of any new sheet, the deletion of entire sheets or
a  change  in  the  order  of  the  sheets.  Otherwise,  the
numbering provided under Section 207 shall be maintained.

  (b) Where a sheet or a drawing has not been filed or is
not to be taken into consideration for the purposes of
international processing under Section 309(c) or Section
310(d), the International Bureau shall include an indication
to that effect in the pamphlet.

  Section 411

  Receipt of Priority Document

  (a) Subject to paragraph (b), the International Bureau
shall record the date on which the priority document has
been  received  by  it  and  shall  notify  the  applicant
accordingly.

  (b) Where the priority document has been received by the
International Bureau from the receiving Office after the
expiration of 16 months from the priority date, the date of
receipt by the receiving Office of the priority document or
of a request under Rule 17.1(b), as the case may be, shall
be recorded as the date of receipt of the priority document.

  (c) Where the date of receipt of the priority document is
later than the expiration of 16 months from the priority
date, the International Bureau shall promptly notify the
applicant. The designated Offices shall be so notified
  bis
together with the notification under Rule 47.1(a  ).

  (d) Where the International Bureau has not received,
before the expiration of 16 months from the priority date,
the priority document or information that the applicant has
made a request under Rule 17.1(b) for the receiving Office
to transmit the priority document, the International Bureau
shall promptly notify the applicant. The designated Offices
shall be  so notified together with the notification under
  bis
Rule 47.1(a  ).

  Section 412

  Notification of Lack of Transmittal of Search Copy

 If the International Bureau does not receive from the
International  Searching  Authority  a  notification  under
Rule 25.1 within two months from the date of receipt of the
record copy, the International Bureau shall remind the
receiving  Office  to  transmit  the  search  copy  to  the
International Searching Authority. A copy of the reminder
shall be sent to the International Searching Authority.

  Section 413

  Corrections of Defects under Rule 26.4(a), Rectifications
  of Obvious Errors under Rules 4.10(b) and 91.1 and
  Corrections under Rule 9.2

  (a) Where the International Bureau receives from the
receiving Office a letter containing a correction of any
defects under Rule 26.4(a), or a replacement sheet and the
letter  accompanying  it,  the  International  Bureau  shall
transfer the correction to the record copy, together with
the indication of the date on which the receiving Office
received the letter, or shall insert the replacement sheet
in the record copy. Any letter and any replaced sheet shall
be kept in the file of the international application.

  (b)  Paragraph  (a)  shall  apply  mutatis  mutandis  to
rectifications of obvious errors authorized by the receiving
Office or by the International Searching Authority under
Rule 91.1, to corrections of obvious errors made by the
receiving Office under Rule 4.10(b) and to  corrections
submitted by the applicant to the receiving Office or the
International Searching Authority aimed at complying with
the prescription of Rule 9.1 concerning certain expressions,
drawings, statements, or other matter.

  Section 414

  Notification to the International Preliminary Examining
  Authority Where the International Application or the
 Designations of All Elected States Are Considered Withdrawn

 If a demand has been submitted and the international
application or the designations of all designated States
which have been elected are considered withdrawn under
Article 14(1), (3), or (4), the International Bureau shall
promptly  notify  the  International  Preliminary  Examining

Authority, unless the international preliminary examination
report has already issued.

  Section 415

  bis  bis
  Notification of Withdrawal under Rule 90  .1 , 90  .2 ,
  bis bis
  90  .3 or 90  .4

  (a) The fact of withdrawal by the applicant of the
  bis
international  application  under  Rule  90  .1  ,  of
  bis
designations under Rule 90  .  2, or of a priority claim
  bis
under Rule 90  .3 , together with the date on which the
notice  effecting  withdrawal  reached  the  International
Bureau, the International Preliminary Examining Authority or
the receiving Office, shall be recorded by the International
Bureau and promptly notified by it to the receiving Office,
the  applicant,  the  designated  Offices  affected  by  the
withdrawal if they have already been notified of their
designation  and,  where  the  withdrawal  concerns  the
international application or a priority claim and where the
international search report or the declaration referred to
in Article 17(2)(a) has not yet issued, the International
Searching Authority. However, where the withdrawal concerns
the international application and where the notice effecting
withdrawal was filed with the receiving Office before the
sending of the record copy to the International Bureau, that
Bureau shall send the notifications referred to in the
preceding sentence and in Rule 24.2(a) to the receiving
Office and the applicant only.

  (b)  If,  at  the  time  of  the  withdrawal  of  the
  bis
international application under Rule 90  .1 , or of a
  bis
priority claim under Rule 90  .3 , a demand has already
been submitted and the international preliminary examination
report has not yet issued, the International Bureau shall,
unless the notice effecting withdrawal was submitted to the
International  Preliminary  Examining  Authority,  promptly
notify the fact of withdrawal to that Authority, together
with the date on which the notice effecting withdrawal has
reached the International Bureau or the receiving Office.

  (c) The fact of withdrawal by the applicant of the demand
 bis
or of one or more elections under Rule 90  .4 , together
with the date on which the notice effecting withdrawal was,
or  was  considered  to  have  been,  submitted  to  the
International Bureau, shall be promptly notified by that
Bureau:

  (i) to the applicant,

  (ii) to each elected Office affected by the withdrawal,
except where it has not yet been notified of its election,
and

  (iii) in the case of withdrawal of the demand or of all
elections,  to  the  International  Preliminary  Examining
Authority,  unless  the  notice  effecting  withdrawal  was
submitted to that Authority.

  Section 416

  Correction of Request in Record Copy

  (a)  Where  the  request  requires  correction  as  a
consequence of the withdrawal of a designation or of a
  bis , the International Bureau
change made under Rule 92
shall make the necessary correction in the record copy and
shall  notify  the  applicant  and  the  receiving  Office
accordingly.

  (b) When making a correction under paragraph (a), the
International Bureau shall enter, in the margin, the letters
"IB."  Where  the  correction  involves  the  deletion  or
replacement of some matter, the International Bureau shall
enclose such matter within square brackets and shall draw a
line between the square brackets while still leaving the
deleted or replaced matter legible.

  Section 417

  Processing of Amendments under Article 19

  (a) The International Bureau shall record the date on
which, under Rule 46.1, any amendment made under Article 19
was received, shall notify the applicant of that date and
indicate it in any publication or copy issued by it.

  (b) The International Bureau shall mark, in the upper
right - hand corner of each replacement sheet submitted
under Rule 46.5(a), the international application number the
date on which that sheet was received under Rule 46.1 and,
in the middle of the bottom margin, the words "AMENDED SHEET
(ARTICLE 19)." It shall keep in its files any replaced
sheet, the letter accompanying the replacement sheet or
sheets, and any letter referred to in the last sentence of
Rule 46.5(a).

  (c) The International Bureau shall insert any replacement
sheet in the record copy and, in the case referred to in the
last  sentence  of  Rule  46.5(a),  shall  indicate  the
cancellations in the record copy.

  (d) If, at the time when the demand is received by the
International Bureau, the international search report has
been established and no amendments under Article 19 have
been  made,  the  International  Bureau  shall  inform  the
International Preliminary Examining Authority accordingly.

  Section 418

  Notifications to Elected Offices Where the Demand or an
  Election Is Considered Not To Have Been Submitted or Made

 Where, after any elected Office has been notified of its
election under Article 31(7), the demand or the election is
considered  not  to  have  been  submitted  or  made,  the
International  Bureau  shall  notify  the  said  Office
accordingly.

  Section 419

 [Deleted]

  Section 420

  Copy of International Application and International Search

Report for the International Preliminary Examining Authority

 Where the International Preliminary Examining Authority is
not part of the same national Office or intergovernmental
organization as the International Searching Authority, the
International Bureau shall, promptly upon receipt of the
international search report or, if the demand was received
after the international search report, promptly upon receipt
of the demand, send a copy of the international application
and the international search report to the International
Preliminary Examining Authority. In cases where, instead of
the international search report, a declaration under Article
17(2)(a) was issued, references in the preceding sentence to
the  international  search  report  shall  be  considered
references to the said declaration.

  Section 421

  Invitation To Furnish a Copy of the Priority Document

 Where a request for a copy of the application whose
priority is claimed in the international application is made
under  Rule  66.7(a)  by  the  International  Preliminary
Examining Authority before the International Bureau has
received  the  priority  document  under  Rule  17.1,  the
International Bureau shall, unless the applicable time limit
referred to in Rule 17.1(a) has already expired, inform the
applicant of such request and remind him of the requirements
of Rule 17.1.

  Section 422

  Notifications Concerning Changes Recorded under Rule
 bis
  92  .1

  (a) The International Bureau shall give notifications
 bis
concerning changes recorded by it under Rule 92  .1(a) ,
except changes which are the subject of notifications under
Section 425:

  (i) to the receiving Office;

  (ii) as long as the international search report has not
been established, to the International Searching Authority;

  (iii) to the designated Offices, unless the change has
been  recorded  after  the  expiration  of  the  time  limit
referred to in Article 22(1) or unless the change can be
duly reflected in the pamphlet used for the purposes of the
communication of the international application under Article
20;

  (iv) as long as the international preliminary examination
report  has  not  been  established,  to  the  International
Preliminary Examining Authority;

  (v) to the elected Offices, unless the change can be duly
reflected in the pamphlet used for the purposes of the
communication of the international application under Article
20;

  (vi) to the applicant; where the change consists of a
change in the person of the applicant, the notification
shall  be  sent  to  the  earlier  applicant  and  the  new

applicant, provided that, where the earlier applicant and
the new applicant are represented by the same agent, one
notification only shall be sent to the said agent.

 bis
  (b) Where Rule 92  .1(b) applies, the International
Bureau shall notify the applicant accordingly and, if the
change was requested by the receiving Office, that Office.

  Section 423

  Cancellation of Designations and Elections

  (a) The International Bureau shall, if the receiving
Office has failed to do so, cancel  ex officio  the
designation of any State which is not a Contracting State,
shall enclose that designation within square brackets, draw
a line between the square brackets while still leaving the
designation  legible,  enter,  in  the  margin,  the  words
"CANCELLED  EX OFFICIO  " BY IB or their equivalent in
French, and notify the applicant and the receiving Office
accordingly.

  (b) The International Bureau shall cancel ex officio:

  (i) the election, in the demand or in a notice effecting
a later election, of any State which is not a designated
State;

  (ii) the election, in the demand, of any State not bound
by  Chapter  II  of  the  Treaty,  if  the  International
Preliminary Examining Authority has failed to do so;

  (iii)  the  election,  in  a  notice  effecting  a  later
election, of any State not bound by Chapter II of the
Treaty.

  (c) The International Bureau shall enclose the cancelled
election within square brackets, draw a line between the
square brackets while still leaving the election legible,
enter, in the margin, the words "CANCELLED EX OFFICIO BY IB"
or their equivalent in French, and notify the applicant and,
if  the  election  is  in  the  demand,  the  International
Preliminary Examining Authoring accordingly.

  Section 424

  [Deleted]

  Section 425

  Notifications Concerning Representation

 Where a power of attorney or a document containing the
revocation or renunciation of an appointment is submitted to
the International Bureau, the International Bureau shall
immediately notify the receiving Office, the International
Searching  Authority  and  the  International  Preliminary
Examining Authority by sending them a copy of the power of
attorney or document and shall record a change in the
indications concerning the agent or common representative
  bis
under Rule 92  . In the case of a renunciation of an
appointment, the International Bureau shall also notify the
applicant.  Where  the  International  Bureau  receives  a
notification concerning representation under Section 328, it

shall  immediately  notify  the  International  Preliminary
Examining Authority accordingly.

  Section 426

 Notification of Designation under Rule 24.2(b)

 Each designated Office having notified the International
Bureau under Rule 24.2(b) that it wishes to receive the
notification under Rule 24.2(a) shall receive periodically,
but at least once a month, a listing of the international
applications containing the designation(s) of the State(s)
for which that Office acts as a designated Office, including
designations made under Rule 4.9(a) and those made under
Rule 4.9(b) which have been confirmed under Rule 4.9(c).
Such listing shall contain, in respect of each designation:

 (i)  the international application number,

 (ii)  the international filing date,

 (iii)  the name of the applicant, and

 (iv)  the earliest priority date claimed.

  Section 427

  Publication of Notice of Confirmation of Designation

 Where an international application has been published under
Article 21(2)(b) before the confirmation of a designation
under Rule 4.9(c), a notice of that confirmation shall be
published in the Gazette.

  Section 428

  Publication of Notice of Later Election

 Where a later election is made before the expiration of 19
months from the priority date, a notice of that fact shall
be published in the Gazette.

  Section 429

  Notice of Extension

 Where a request for extension of the effects of an
international application to a successor State, made in
accordance  with  Rule  32.1(c),  is  received  by  the
International  Bureau  after  technical  preparations  for
international publication have been completed, a notice of
this fact shall be published in the Gazette.

  Section 430

  Notification of Designations under Rule 32 (Extensions)

 Where the request for extension is made under Rule 32.1(c),
the International Bureau shall promptly, but not before the
international publication of the international application,
effect the communication under Article 20 to the designated
  bis
Office concerned, notify that Office under Rule 47.1(a  ) ,
and notify it of the date of the receipt of the request for
extension.

  PART 5:  INSTRUCTIONS RELATING TO THE INTERNATIONAL
  SEARCHING AUTHORITY

  Section 501

  Corrections Submitted to the International Searching
  Authority Concerning Expressions, etc., Not To Be Used in
  the International Application

  Where the International Searching Authority receives
corrections aimed at complying with Rule 9.1, Section 511
shall apply  mutatis mutandis  , provided that, where a
sheet is marked as indicated in Section 511(a)(ii), the
words "SUBSTITUTE SHEET (RULE 9.2)" shall be used.

  Section 502

  Transmittal of Protest Against Payment of Additional Fee
  and Decision Thereon Where International Application Is
  Considered To Lack Unity of Invention

  The International Searching Authority shall transmit to
the applicant, preferably at the latest together with the
international search report, any decision which it has taken
under Rule 40.2(c) on the protest of the applicant against
payment  of  an  additional  fee  where  the  international
application is considered to lack unity of invention. At the
same time, it shall transmit to the International Bureau a
copy of both the protest and the decision thereon, as well
as any request by the applicant to forward the texts of both
the protest and the decision thereon to the designated
Offices.

  Section 503

  Method of Identifying Documents Cited in the International
  Search Report

  Identification  of  any  document  cited  in  the
international search report shall be as provided in WIPO
Standard  ST.14  (Recommendation  for  the  Inclusions  of
References Cited in Patent Documents).  5

  Section 504

  Classification of the Subject Matter of the International
  Application

  (a)  Where  the  subject  matter  of  the  international
application is such that classification thereof requires
more  than  one  classification  symbol  according  to  the
principles  to  be  followed  in  the  application  of  the
International Patent Classification to any given patent
document, the international search report shall indicate all
such symbols.

  (b) Where any national classification system is used, the
international search report may indicate all the applicable
classification symbols also according to that system.

  (c)  Where  the  subject  matter  of  the  international
application  is  classified  both  according  to  the
International Patent Classification and to any national
classification  system,  the  international  search  report

shall, wherever possible, indicate the corresponding symbols
of both classifications opposite each other.

  (d)  The  version  of  the  International  Patent
Classification applicable at the time the international
application is published under Article 21 shall be used
whenever feasible.

  Section 505

  Indication of Citations of Particular Relevance in the
  International Search Report

  (a) Where any document cited in the international search
report is of particular relevance, the special indication
required by Rule 43.5(c) shall consist of the letter(s) "X"
and/or "Y" placed next to the citation of the said document.

  (b) Category "X" is applicable where a document is such
that  when  taken  alone,  a  claimed  invention  cannot  be
considered novel or cannot be considered to involve an
inventive step.

  (c) Category "Y" is applicable where a document is such
that a claimed invention cannot be considered to involve an
inventive step when the document is combined with one or
more other such documents, such combination being obvious to
a person skilled in the art.

  Section 506

  Comments on Draft Translation of the International
  Application

  (a) Where the applicant has made comments, within the
time limits fixed by the International Searching Authority,
on the draft translation prepared under the responsibility
of  the International Searching Authority as provided in
Rule 48.3(b), that Authority shall notify the applicant
whether it has changed the draft translation and, if so, of
the changes it has made therein.

  (b) Where the applicant submits comments on the draft
translation  prepared  under  the  responsibility  of  the
International Searching Authority after the expiration of
the  time  limits  fixed  by  the  International  Searching
Authority, and that Authority changes the draft translation,
it shall notify the applicant accordingly.

  Section 507

  Manner of Indicating Certain Special Categories of
  Documents Cited in the International Search Report

  (a) Where any document cited in the international search
report refers to an oral disclosure, use, exhibition, or
other means referred to in Rule 33.1(b), the separate
indication required by that Rule shall consist of the letter
"O" placed next to the citation of the said document.

  (b) Where any document cited in the international search
report is a published application or patent as defined in
Rule 33.1(c), the special mention required by that Rule
shall consist of the letter "E" placed next to the citation
of the said document.

  (c) Where any document cited in the international search
report is not considered to be of particular relevance
requiring the use of categories "X" and/or "Y" as provided
in Section 505 but defines the general state of the art, it
shall be indicated by the letter "A" placed next to the
citation of the said document.  ^

  (d) Where any document cited in the international search
report is a document whose publication date occurred earlier
than the international filing date of the international
application, but later than the priority date claimed in
that  application, it shall be indicated by the letter "P"
next to the citation of the said document.

  (e) Where any document cited in the international search
report is a document whose publication date occurred after
the filing date or the priority date of the international
application  and  is  not  in  conflict  with  the  said
application, but is cited for the principle or theory
underlying the invention, which may be useful for a better
understanding of the invention, or is cited to show that the
reasoning  or  the  facts  underlying  the  invention  are
incorrect, it shall be indicated by the letter "T" next to
the citation of the document.

  (f) Where in the international search report any document
is cited for reasons other than those referred to in
paragraphs (a) to (e), for example:

  - a document which may throw doubt on a priority claim,
&

  - a document cited to establish the publication date of
another citation,  *

 such document shall be indicated by the letter "L" next to
the citation of the document and the reason for citing the
document shall be given.

  (g) Where a document is a member of a patent family,  (
it  shall,  whenever  feasible,  be  mentioned  in  the
international search report in addition to the one cited
belonging as well to this family and should be preceded by
the sign ampersand (&). Members of a patent family may also
be mentioned on a separate sheet, provided that the family
to which they belong shall be clearly  6.  See III.B.14 of
the PCT Guidelines.  7.  See VI, 4.3 of the PCT Search
Guidelines.  8.  See VI, 6.2 of the PCT Search Guidelines.
9.  See IV, 3.2 of the PCT Search Guidelines.

  10.  See VI, 5.2 of the PCT Search Guidelines

 identified and that any text matter on that sheet, if not
in the English language, shall also be furnished to the
International Bureau in English translation.

  (h) A document whose contents have not been verified by
the search examiner but are believed to be substantially
identical with those of another document which the search
examiner has inspected, may be cited in the international
search report in the manner indicated for patent family
members in the first sentence of paragraph (g).  10

  Section 508

  Manner of Indicating the Claims to Which the Documents
  Cited in the International Search Report Are Relevant

  (a) The claims to which cited documents are relevant
shall be indicated by placing in the appropriate column of
the international search report:

 (i)  where the cited document is relevant to one claim,
the number of that claim; for example, "2" or "17" ;

 (ii)  where the cited document is relevant to two or more
claims numbered in consecutiveorder, the number of the first
and last claims of the series connected by a hyphen; for
example, "1 - 15" or "2 - 3";

 (iii)  where the cited document is relevant to two or more
claims that are not numbered in consecutive order, the
number of each claim placed in ascending order and separated
by a comma or commas; for example, "1, 6" or "1, 7, 10";

 (iv)  where the cited document is relevant to more than
one series of claims under (ii), above, or to claims of both
categories (ii) and (iii), above, the series or

 individual claim numbers and series placed in ascending
order using commas to separate the several series, or
toseparate the numbers of individual claims and each series
of claims; for example, "1 - 6, 9 - 10, 12 - 15 or 1, 3 - 4,
6, 9 - 11" .

  (b) Where different categories apply to the same document
cited in an international search report in respect of
different claims or groups of claims, each relevant claim or
group of claims shall be listed separately opposite each
indicated category of relevance. Each category and each
relevant claim or group of claims may be separated by a
line.

  The following example illustrates the situation where a
document is of particular relevance under Section 505(b) as
to claims 1 to 3 and under Section 505(c) as to claim 4, and
indicates the general state of the art under Section 507(c)
as to claims 11 and 12:

  Category  Citation Relevant to claim No.

  GB, A 392,415 (JONES) 18 May 1933 (18.05.33)

  X  Fig.1 1 - 3

  Y  page 3, lines 5 - 7 4

  A  Fig.5, support 36 11 - 12

  [  End of example]

  Section 509

  [Deleted]

  Section 510

 Refund of Search Fee in Case of Withdrawal of International
  Application

  (a) Where the international application is withdrawn or
is considered withdrawn before the International Searching
Authority  has  started  the  international  search,  that
Authority shall, subject to paragraphs (b) and (c), refund
the search fee to the applicant.

  (b) If the refund referred to in paragraph (a) is not
compatible with the national law of the national Office
acting as International Searching Authority and as long as
it continues to be not compatible with that law, the
International Searching Authority may abstain from refunding
the search fee.

  (c) The International Searching Authority may, before
making a refund under paragraph (a), first invite the
applicant to submit a request for the refund.

  Section 511

  Rectifications of Obvious Errors under Rule 91.1

  (a)  Where  the  International  Searching  Authority
authorizes a rectification under Rule 91.1, it shall:

  (i) indelibly mark, in the upper right - hand corner of
each replacement sheet, the international application number
and the date on which that sheet was received;

  (ii) indelibly mark, in the middle of the bottom margin
of each replacement sheet, the words "RECTIFIED SHEET (RULE
91)" or their equivalent in the language of publication of
the international application as well as an indication of
the International Searching Authority as provided for in
Section 107(b);

  (iii)  indelibly  mark  on  the  letter  containing  the
rectification or accompanying any replacement sheet the date
on which that letter was received;

  (iv) keep in its files a copy of the letter containing
the rectification or, when the rectification is contained in
a replacement sheet, the replaced sheet, a copy of the
letter accompanying the replacement sheet, and a copy of the
replacement sheet;

  (v) promptly transmit any letter and any replacement
sheet to the International Bureau and a copy thereof to the
receiving Office.

  (b) Where the International Searching Authority refuses
to authorize a rectification under Rule 91.1, it shall
proceed as indicated under paragraph (a)(i), (iii), and (iv)
and  promptly  transmit  any  letter  and  any  proposed
replacement sheet to the International Bureau.

  Section 512

  Notifications Concerning Representation

  Where a power of attorney or a document containing the
revocation or renunciation of an appointment is submitted to
the International Searching Authority, that Authority shall
immediately notify the International Bureau by sending it a
copy of the power of attorney or document and request the

International Bureau to record a change in the indications
concerning the agent or common representative under Rule
  bis
92  .1(a)(ii).

  Section 513

 Sequence Listings

  (a) Where the International Searching Authority finds
that an international application contains a disclosure of a
nucleotide and/or amino acid sequence but the international
application does not contain a listing of that sequence,
that Authority may invite the applicant to furnish it with a
sequence listing which is in compliance with Section 208.

  (b)  Where  a  sequence  listing  has  been  furnished
separately  from  the  international  application  to  the
International Searching Authority or transcribed by that
Authority,  the  international  search  report  shall  so
indicate.

  (c) Where a meaningful international search cannot be
carried out because a sequence listing is not available to
the International Searching Authority in the required form,
that Authority shall so state in the international search
report.

  (d) The International Searching Authority shall indelibly
mark, in the upper right - hand corner of the first sheet,
and preferably of all sheets, of any sequence listing in
printed  form  not  forming  part  of  the  international
application,  the  words  "SEPARATELY  FURNISHED  SEQUENCE
LISTING."

  Section 514

 Authorized Officer

  The officer of the International Searching Authority
responsible for the international search report, as referred
to in Rule 43.8 means the person who actually performed the
search work and prepared the search report or another person
who was responsible for supervising the search.

  Section 515

  Amendment of Established Abstract in Response to
  Applicant's Comments

  The International Searching Authority shall inform the
applicant and the International Bureau of any amendments
made under Rule 38.2(b) to an abstract established by it
under Rule 38.2(a).

  PART 6:  INSTRUCTIONS RELATING TO THE INTERNATIONAL
  PRELIMINARY EXAMINING AUTHORITY

  Section 601

  Notice to Applicant of Filing of Demand After the
  Expiration of 19 Months From the Priority Date

  Where the demand is filed after the expiration of 19
months from the priority date, the International Preliminary

Examining Authority shall promptly notify the applicant
accordingly and direct his attention to the fact that the
time limit under Article 39(1)(a) does not apply.

  Section 602

  Processing of Amendments by the International Preliminary
  Examining Authority

  (a) The International Preliminary Examining Authority
shall:

  (i) indelibly mark, in the upper right - hand corner of
each replacement sheet submitted under Rule 66.8(a), the
international application number and the date on which that
sheet was received;

  (ii) indelibly mark, in the middle of the bottom margin
of each replacement sheet, the words "AMENDED SHEET" or
their equivalent in the language of the demand as well as an
indication  of  the  International  Preliminary  Examining
Authority as provided for in Section 107(b);

  (iii) keep in its files any replaced sheet, the letter
accompanying  any  replacement  sheet,  and  any  superseded
replacement sheet or any letter referred to in the last
sentence  of  Rule  66.8(a)  as  well  as  a  copy  of  any
replacement sheet which is annexed to the international
preliminary examination report;

  (iv) annex to the copy of the international preliminary
examination report which is transmitted to the International
Bureau any replacement sheet as provided for under Rule
70.16;

  (v) annex to the copy of the international preliminary
examination report which is transmitted to the applicant a
copy of each replacement sheet as provided for under Rule
70.16.

  (b) Section 311(b)(ii) relating to the numbering of
replacement sheets shall apply when one or more sheets are
added under Rule 66.8(a).

  (c)  Where  the  International  Preliminary  Examining
Authority receives from the applicant a copy of a purported
amendment under Article 19 submitted after the time limit
set  forth  in  Rule  46.1,  the  International  Preliminary
Examining Authority may consider such an amendment as an
amendment under Article 34 in which case it shall inform the
applicant accordingly.

  (d)  Where  the  International  Preliminary  Examining
Authority receives a copy of an amendment under Article 19,
paragraphs (a) and (b) shall apply  mutatis mutandis  .

  Section 603

  Transmittal of Protest Against Payment of Additional Fee
  and Decision Thereon Where International Application Is
  Considered To Lack Unity of Invention

  The International Preliminary Examining Authority shall
transmit to the applicant, preferably at the latest together
with the international preliminary examination report, any

decision which it has taken under Rule 68.3(c) on the
protest of the applicant against payment of an additional
fee where the international application is considered to
lack unity of invention. At the same time, it shall transmit
to the International Bureau a copy of both the protest and
the  decision  thereon,  as  well  as  any  request  by  the
applicant to forward the texts of both the protest and the
decision thereon to the elected Offices.

  Section 604

  Guidelines for Explanations Contained in the International
 Preliminary Examination Report

  (a) Explanations under Rule 70.8 shall clearly point out
to which of the three criteria of novelty, inven tive step
(nonobviousness) and industrial applicability referred to in
Article 35(2), taken separately, any cited document is
applicable and shall clearly describe, with reference to the
cited documents, the reasons supporting the conclusion that
any of the said criteria is or is not satisfied.

  (b) Explanations under Article 35(2) shall be concise and
preferably in the form of short sentences.

  Section 605

  File To Be Used for International Preliminary Examination

  Where the International Preliminary Examining Authority
is part of the same national Office or intergovernmental
organization as the International Searching Authority, the
same file shall serve the purposes of international search
and international preliminary examination.

  Section 606

  Cancellation of Elections

  The International Preliminary Examining Authority shall,
if the election is in the demand, cancel  ex officio  the
election of any State* which is not bound by Chapter II of
the  Treaty,  shall  enclose  that  election  within  square
brackets, shall draw a line between the square brackets
while shill leaving the election legible and shall enter, in
the margin, the words "CANCELLED EX OFFICIO BY IPEA" or
their equivalent in the language of the demand, and shall
notify the applicant accordingly.

  bis
  Section 606

  Procedure Where Election of a State Considered Not To Have
  Been Made

  Where under Rule 60.1(d), the election of a State is to
be considered as if it had not been made, the International
Preliminary Examining Authority shall indicate that fact in
the demand by enclosing the election of that State within
square brackets, drawing a line between the square brackets
while still leaving the election legible, and entering in
the margin the words "CONSIDERED NOT TO HAVE BEEN MADE" or
their equivalent in the language of the demand.

  Section 607

  Rectifications of Obvious Errors under Rule 91.1

  Where the International Preliminary Examining Authority
authorizes a rectification of an obvious error under Rule
91.1, Rule 70.16 and Section 602(a) and (b) shall apply
mutatis mutandis  , provided that, where a sheet is marked
as indicated in Section 602, the words "RECTIFIED SHEET
(RULE 91)" shall be used.

  Where the International Preliminary Examining Authority
authorizes a rectification of an obvious error under Rule
91.1, Rule 70.16 and Section 602(a) and (b) shall apply
mutatis mutandis  .

  Section 608

  Notifications Concerning Representation

  Where a power of attorney or a document containing the
revocation or renunciation of an appointment is submitted to
the  International  Preliminary  Examining  Authority,  that
Authority shall immediately notify the International Bureau
by sending it a copy of the power of attorney or document
and request the International Bureau to record a change in
the  indications  concerning  the  agent  or  common
  bis
representative under Rule 92  .1(a)(ii).

  Section 609

  bis  bis
  Withdrawal by Applicant under Rule 90  .1 , 90  .2 , or
 bis
  90  .3

  The International Preliminary Examining Authority
shall promptly transmit to the International Bureau any
notice  from  the  applicant  effecting  withdrawal  of  the
  bis
international application under Rule 90  .1(b) , of a
  bis
designation under Rule 90  .2(d) , or of a priority claim
  bis
under Rule 90  .3(c) which has been filed with it. The
International Preliminary Examining Authority shall mark the
notice with the date on which it was received.

  Section 610

  Sequence Listings in Machine Readable Form

  Where a nucleotide and/or amino acid sequence listing in
machine  readable  form  is  not  available  from  the
International  Searching  Authority,  the  International
Preliminary Examining Authority may request the applicant to
supply it with such listing in a format acceptable to the
International Preliminary Examining Authority in accordance
with Annex C.

  Section 611

  Method of Identification of Documents in the International
 Preliminary Examination Report

  Any document cited in the international preliminary
examination report which was not cited in the international
search report shall be cited in the same form as required
under Section 503 for international search reports. Any

document cited in the international preliminary examination
report which was previously cited in the international
search report may be cited in a shortened form, provided
that the document is unambiguous.

  Section 612

 Authorized Officer

  The officer of the International Preliminary Examining
Authority  responsible  for  the  international  preliminary
examination report, as referred to in Rule 70.14, means the
person who actually performed the examination work and
prepared the international preliminary examination report or
another person who was responsible for supervising the
examination.

  Section 613

  Invitation to Submit a Request for Refund of Fees under
 Rule 57.6 or 58.3

  The International Preliminary Examining Authority may,
before making a refund under Rule 57.6 or 58.3, first invite
the applicant to submit a request for the refund.

  Section 614

 Evidence of Right to File Demand

  Where a demand is considered as not having been made
under  Rule  61.1(b)  by  the  International  Preliminary
Examining Authority because the applicant appeared, on the
basis of the indication made in the demand, not to have the
right to file a demand with that Authority under Rule 54 but
evidence is submitted indicating to the satisfaction of the
International Preliminary Examining Authority that in fact,
an applicant had, on the date on which the demand was
received, the right to file the demand with that Authority,
the  International  Preliminary  Examining  Authority  shall
regard the requirements under Article 31(2)(a) as having
been fulfilled on the date of actual receipt of the demand.

 [Annexes follow]

  ANNEX A  11

  FORMS

  [This Annex contains all the Forms for use by applicants
and  by  the  International  Authorities,  including  those
referred  to  in  Section  102  of  these  Administrative
Instructions; it consists of five Parts as follows:

  Part I: Forms Relating to the Receiving Office

  Part II: Forms Relating to the International Searching
Authority

  Part III: Forms Relating to the International Bureau

  Part IV: Forms Relating to the International Preliminary
Examining Authority

  Part V: Request and Demand Forms]

 [Annex B follows]

  11.  Annex A is not reproduced here. Each Part is
published separately by the World Intellectual Property
Organization.

 ANNEX B

  UNITY OF INVENTION

 PART 1:

  INSTRUCTIONS CONCERNING UNITY OF INVENTION

  (a)  Unity of Invention.  Rule 13.1 deals with the
requirement of unity of invention and states the principle
that an international application should relate to only one
invention or, if there is more than one invention, that the
inclusion  of  those  inventions  in  one  international
application is only permitted if all inventions are so
linked as to form a single general inventive concept.

  (b)  Technical Relationship.  Rule 13.2 defines the
method for determining whether the requirement of unity of
invention is satisfied in respect of a group of inventions
claimed in an international application. Unity of invention
exists only when there is a technical relationship among the
claimed inventions involving one or more of the same or
corresponding special technical features. The expression
"special technical features" is defined in Rule 13.2 as
meaning those technical features that define a contribution
which each of the inventions, considered as a whole, makes
over the prior art. The determination is made on the
contents of the claims as interpreted in light of the
description and drawings (if any).

  (c)  Independent and Dependent Claims.  Unity of
invention has to be considered in the first place only in
relation to the independent claims in an international
application and not the dependent claims. By "dependent"
claim is meant a claim which contains all the features of
another claim and is in the same category of claim as that
other claim (the expression "category of claim" referring to
the classification of claims according to the subject matter
of the invention claimed for example, product, process, use
or apparatus or means, etc.).

  (i) If the independent claims avoid the prior art and
satisfy the requirement of unity of invention, no problem of
lack of unity arises in respect of any claims that depend on
the independent claims. In particular, it does not matter if
a dependent claim itself contains a further invention.
Equally, no problem arises in the case of a genus/species
situation where the genus claim avoids the prior art.
Moreover,  no  problem  arises  in  the  case  of  a
combination/subcombination  situation  where  the
subcombination  claim  avoids  the  prior  art  and  the
combination  claim  includes  all  the  features  of  the
subcombination.

  (ii) If, however, an independent claim does not avoid the
prior art, then the question whether there is still an

inventive link between all the claims dependent on that
claim needs to be carefully considered. If there is no link
remaining, an objection of lack of unity a posteriori  (that
is, arising only after assessment of the prior art) may be
raised. Similar considerations apply in the case of a
genus/species or combination/subcombination situation.

  (iii)  This  method  for  determining  whether  unity  of
invention exists is intended to be applied even before the
commencement of the international search. Where a search of
the prior art is made, an initial determination of unity of
invention, based on the assumption that the claims avoid the
prior art, may be reconsidered on the basis of the results
of the search of the prior art.

  (d)  Illustrations of Particular Situations.  There
are three particular situations for which the method for
determining unity of invention contained in Rule 13.2 is
explained in greater detail:

  (i) combinations of different categories of claims;

  (ii) so - called "Markush practice"; and

  (iii) intermediate and final products.

  Principles  for  the  interpretation  of  the  method
contained in Rule 13.2, in the context of each of those
situations are set out below. It is understood that the
principles  set  out  below  are,  in  all  instances,
interpretations of and not exceptions to the requirements of
Rule 13.2.

  Examples to assist in understanding the interpretation
on the three areas of special concern referred to in the
preceding paragraph are set out below.

  (e)  Combinations of Different Categories of Claims.
The method for determining unity of invention under Rule 13
shall  be  construed  as  permitting,  in  particular,  the
inclusion of any one of the following combinations of claims
of  different  categories  in  the  same  international
application:

 (i)  in addition to an independent claim for a given
product,  an  independent  claim  for  a  process  specially
adapted for the manufacture of the said product, and an
independent claim for a use of the said product, or

 (ii)  in addition to an independent claim for a given
process, an independent claim for an apparatus or means
specifically designed for carrying out the said process, or

 (iii)  in addition to an independent claim for a given
product,  an  independent  claim  for  a  process  specially
adapted for the manufacture of the said product and an
independent claim for an apparatus or means specifically
designed for carrying out the said process,

 it being understood that a process is specially adapted for
the manufacture of a product if it inherently results in the
product and that an apparatus or means is specifically
designed for carrying out a process if the contribution over
the prior art of the apparatus or means corresponds to the
contribution the process makes over the prior art.

  Thus, a process shall be considered to be specially
adapted for the manufacture of a product if the claimed
process inherently results in the claimed product with the
technical relationship being present between the claimed
product and claimed process. The words "specially adapted"
are not intended to imply that the product could not also be
manufactured by a different process.

  Also an apparatus or means shall be considered to be
"specifically designed for carrying out" a claimed process
if the contribution over the prior art of the apparatus or
means corresponds to the contribution the process makes over
the prior art. Consequently, it would not be sufficient that
the apparatus or means is merely capable of being used in
carrying out the claimed process. However, the expression
"specifically designed" does not imply that the apparatus or
means could not be used for carrying out another process,
nor that the process could not be carried out using an
alternative apparatus or means.

  (f)  "Markush Practice.  " The situation involving the
so - called "Markush practice" wherein a single claim
defines alternatives (chemical or non - chemical) is also
governed by Rule 13.2. In this special situation, the
requirement of a technical interrelationship and the same or
corresponding special technical features as defined in Rule
13.2, shall be considered to be met when the alternatives
are of a similar nature.

  (i) When the Markush grouping is for alternatives of
chemical compounds, they shall be regarded as being of a
similar nature where the following criteria are fulfilled:

  (A) all alternatives have a common property or activity,
and

  (B)(1) a common structure is present, i.e., a significant
structural element is shared by all of the alternatives, or

  (B)(2) in cases where the common structure cannot be the
unifying criteria, all alternatives belong to a recognized
class  of  chemical  compounds  in  the  art  to  which  the
invention pertains.

  (ii)  In  paragraph  (f)(i)(B)(1),  above,  the  words
"significant structural element is shared by all of the
alternatives" refer to cases where the compounds share a
common chemical structure which occupies a large portion of
their structures, or in case the compounds have in common
only a small portion of their structures, the commonly
shared  structure  constitutes  a  structurally  distinctive
portion in view of existing prior art. The structural
element may be a single component or a combination of
individual components linked together.

  (iii)  In  paragraph  (f)(i)(B)(2),  above,  the  words
"recognized class of chemical compounds" mean that there is
an expectation from the knowledge in the art that members of
the class will behave in the same way in the context of the
claimed invention. In other words, each member could be
substituted one for the other, with the expectation that the
same intended result would be achieved.

  (iv) The fact that the alternatives of a Markush grouping

can be differently classified shall not, taken alone, be
considered to be justification for a finding of a lack of
unity of invention.

  (v) When dealing with alternatives, if it can be shown
that at least one Markush alternative is not novel over the
prior art, the question of unity of invention shall be
reconsidered  by  the  examiner.  Reconsideration  does  not
necessarily imply that an objection of lack of unity shall
be raised.

  (g)  Intermediate and Final Products.  The situation
involving intermediate and final products is also governed
by Rule 13.2.

  (i)  The  term  "intermediate"  is  intended  to  mean
intermediate or starting products. Such products have the
ability to be used to produce final products through a
physical or chemical change in which the intermediate loses
its identity.

  (ii) Unity of invention shall be considered to be present
in the context of intermediate and final products where the
following two conditions are fulfilled:

  (A) the intermediate and final products have the same
essential structural element, in that:

 (1)  the basic chemical structures of the intermediate
and the final products are the same, or

 (2)  the chemical structures of the two products are
technically  closely  interrelated,  the  intermediate
incorporating an essential structural element into the final
product, and

  (B) the intermediate and final products are technically
interrelated,  this  meaning  that  the  final  product  is
manufactured directly from the intermediate or is separated
from it by a small number of intermediates all containing
the same essential structural element.

  (iii) Unity of invention may also be considered to be
present between intermediate and final products of which the
structures  are  not  known-for  example,  as  between  an
intermediate having a known structure and a final product
the structure of which is not known, or as between an
intermediate of unknown structure and a final product of
unknown structure. In order to satisfy unity in such cases,
there shall be sufficient evidence to lead one to conclude
that the intermediate and final products are technically
closely interrelated as, for example, when the intermediate
contains the same essential element as the final product or
incorporates an essential element into the final product.

  (iv) It is possible to accept in a single international
application  different  intermediate  products  used  in
different  processes  for  the  preparation  of  the  final
product,  provided  that  they  have  the  same  essential
structural element.

  (v) The intermediate and final products shall not be
separated, in the process leading from one to the other, by
an intermediate which is not new.

  (vi)  If  the  same  international  application  claims
different intermediates for different structural parts of
the final product, unity shall not be regarded as being
present between the intermediates.

  (vii) If the intermediate and final products are families
of compounds, each intermediate compound shall correspond to
a compound claimed in the family of the final products.
However,  some  of  the  final  products  may  have  no
corresponding compound in the family of the intermediate
products so that the two families need not be absolutely
congruent.

  (h) As long as unity of invention can be recognized
applying the above interpretations, the fact that, besides
the ability to be used to produce final products, the
intermediates  also  exhibit  other  possible  effects  or
activities  shall  not  affect  the  decision  on  unity  of
invention.

  (i) Rule 13.3 requires that the determination of the
existence of unity of invention be made without regard to
whether the inventions are claimed in separate claims or as
alternatives within a single claim.

  (j)  Rule  13.3  is  not  intended  to  constitute  an
encouragement to the use of alternatives within a single
claim, but is intended to clarify that the criterion for the
determination of unity of invention (namely, the method
contained in Rule 13.2) remains the same regardless of the
form of claim used.

  (k) Rule 13.3 does not prevent an International Searching
or  Preliminary  Examining  Authority  or  an  Office  from
objecting to alternatives being contained within a single
claim on the basis of considerations such as clarity, the
conciseness of claims or the claims fee system applicable in
that Authority or Office.

 [Annex B, Part 2, follows]

 ANNEX B

  PART 2:

  EXAMPLES CONCERNING UNITY OF INVENTION

 The application of the principles of unity of invention is
illustrated  by  the  following  examples  for  guidance  in
particular cases.

  I.  CLAIMS IN DIFFERENT CATEGORIES

  Example 1

 Claim 1:  A method of manufacturing chemical substance
X.

 Claim 2:  Substance X.

 Claim 3:  The use of substance X as an insecticide.

 Unity exists between claims 1, 2 and 3. The special

technical feature common to all the claims is substance X.

  Example 2

 Claim 1:  A process of manufacture comprising steps A
and B.

 Claim 2:  Apparatus specifically designed for carrying
out step A.

 Claim 3:  Apparatus specifically designed for carrying
out step B.

 Unity exists between claims 1 and 2 or between claims 1 and
3. There is no unity between claims 2 and 3 since there
exists no common special technical feature between the two
claims.

  Example 3

 Claim 1:  A process for painting an article in which the
paint contains a new rust inhibiting substance X including
the steps of atomizing the paint using compressed air,
electrostatically charging the atomized paint using a novel
electrode arrangement A and directing the paint to the
article.

 Claim 2:  A paint containing substance X.

 Claim 3:  An apparatus including electrode arrangement
A.

 Unity exists between claims 1 and 2 where the common
special technical feature is the paint containing substance
X or between claims 1 and 3 where the common special
technical feature is the electrode arrangement A.

 However, unity is lacking between claims 2 and 3 since
there exists no common special technical feature between
them.

  Example 4

 Claim 1:  Use  of  a  family  of  compounds  X  as
insecticides.

 Claim 2:  Compound X  belonging to family X.
  1

 Provided X  has the insecticidal activity and the special
  1 
technical feature in claim 1 is the insecticidal use, unity
is present.

  Example 5

 Claim 1:  A process for treating textiles comprising
spraying the material with a particular coating composition
under  special  conditions  (e.g.,  as  to  temperature,
irradiation).

 Claim 2:  A textile material coated according to the
process of claim 1.

 Claim 3:  A spraying machine for use in the process of
claim 1 and characterized by a new nozzle arrangement

providing a better distribution of the composition being
sprayed.

  The  process  according  to  claim  1  imparts  unexpected
properties to the product of claim 2.

 The special technical feature in claim 1 is the use of
special process conditions corresponding to what is made
necessary by the choice of the particular coating. Unity
exists between claims 1 and 2.

 The spraying machine in claim 3 does not correspond to the
above identified special technical feature. Unity does not
exist between claim 3 and claims 1 and 2.

  Example 6

 Claim 1:  A fuel burner with tangential fuel inlets into
a mixing chamber.

 Claim 2:  A process for making a fuel burner including
the step of forming tangential fuel inlets into a mixing
chamber.

 Claim 3:  A process for making a fuel burner including
casting step A.

 Claim 4:  An apparatus for carrying out a process for
making a fuel burner including feature X resulting in the
formation of tangential fuel inlets.

 Claim 5:  An apparatus for carrying out a process for
making a fuel burner including a protective housing B.

 Claim 6:  A  process  of  manufacturing  carbon  black
including the step of tangentially introducing fuel into a
mixing chamber of a fuel burner.

 Unity exists between claims 1, 2, 4, and 6. The special
technical feature common to all the claims is the tangential
fuel inlets. Claims 3 and 5 lack unity with claims 1, 2, 4,
and 6 since claims 3 and 5 do not include the same or
corresponding special technical feature as set forth in
claims 1, 2, 4, and 6. Claims 3 and 5 would also lack unity
with one another.

  Example 7

 Claim 1:  A high corrosion resistant and high strength
ferritic stainless steel strip consisting essentially of, in
percent by weight: Ni=2.0 - 5.0; Cr=15 - 19; Mo=1 - 2; and
the balance Fe having a thickness of between 0.5 and 2.0 mm
and a 0.2% yield strength in excess of 50 kg/mm squared.

 Claim 2:  A  method  of  producing  a  high  corrosion
resistant and high strength ferritic stainless steel strip
consisting essentially of, in percent by weight: Ni=2.0 -
5.0; Cr=15 - 19; Mo=1 - 2; and the balance Fe, comprising
the steps of:

 hot rolling to a thickness between 2.0 and 5.0 mm;

 annealing the hot rolled strip at 800 - 1000  _  C under
substantially no oxidizing conditions;

 cold rolling the strip to a thickness of between 0.5 and
2.0 mm; and final annealing the cold rolled strip at between
1120 and 1200  _  C for a period of 2 - 5 minutes.

 Unity exists between product claim 1 and process claim 2.
The special technical feature in the product claim is the
0.2% yield strength in excess of 50 kg/mm squared. The
process steps in claim 2 inherently produce a ferritic
stainless steel strip with a 0.2% yield strength in excess
of 50 kg/mm squared. Even if this feature is not apparent
from the wording of claim 2, it is clearly disclosed in the
description. Therefore said process steps are the special
technical feature which correspond to the limitation in the
product claim directed to the same ferritic stainless steel
with the claimed strength characteristics.

  II. CLAIMS IN THE SAME CATEGORY

  Example 8

 Claim 1:  Plug characterized by feature A.

 Claim 2:  Socket characterized by corresponding feature
A.

 Feature A is a special technical feature which is included
in both claims 1 and 2 and therefore unity is present.

  Example 9

 Claim 1:  Transmitter provided with time axis expander
for video signals.

 Claim 2:  Receiver provided with time axis compressor
for video signals received.

 Claim 3:  Transmission  equipment  for  video  signals
comprising a transmitter provided with time axis expander
for video signals and a receiver provided with time axis
compressor for video signals received.

 The special technical features are in claim 1 the time axis
expander, and in claim 2 the time axis compressor, which are
corresponding  technical  features.  Unity  exists  between
claims 1 and 2. Claim 3 includes both special technical
features and has unity with claims 1 and 2. The requirement
for  unity  would  still  be  met  in  the  absence  of  the
combination claim (claim 3).

  Example 10

 Claim 1:  Conveyor belt with feature A.

 Claim 2:  Conveyor belt with feature B.

 Claim 3:  Conveyor belt with features A + B.

 Feature A is a special technical feature and feature B is
another unrelated special technical feature. Unity exists
between claims 1 and 3 or between claims 2 and 3, but not
between claims 1 and 2.

  Example 11

 Claim 1:  Control circuit A for a d.c. motor.

 Claim 2:  Control circuit B for a d.c. motor.

 Claim 3:  An apparatus including a d.c. motor with
control circuit A.

 Claim 4:  An apparatus including a d.c. motor with
control circuit B.

 Control circuit A is a special technical feature and
control circuit B is another unrelated special technical
feature. Unity exists between claims 1 and 3 or between
claims 2 and 4, but not between claims 1 and 2 or 3 and 4.

  Example 12

 Claim 1:  A display with features A + B.

 Claim 2:  A display according to claim 1 with additional
feature C.

 Claim 3:  A display with features A + B with additional
feature D.

 Unity exists between claims 1, 2, and 3. The special
technical feature common to all the claims is features A +
B.

  Example 13

 Claim 1:  Filament A for a lamp.

 Claim 2:  Lamp B having filament A.

 Claim 3:  Searchlight  provided  with  lamp  B  having
filament A and a swivel arrangement C.

 Unity exists between claims 1, 2, and 3. The special
technical feature common to all the claims is the filament
A.

  Example 14

 Claim 1:  A  marking  device  for  marking  animals,
comprising a disc - shaped element with a stem extending
normally therefrom, the tip of which is designed to be
driven through the skin of the animal to be marked, and a
securing disk element to be fastened to the protruding tip
of the stem on the other side of skin.

 Claim 2:  An apparatus for applying the marking device
of claim 1, constructed as a pneumatically actuated gun for
driving the stem of the disc - shaped element through the
skin, and provided with a supporting surface adapted for
taking up a securing disc element, to be placed at the other
side of the body portion in question of the animal to be
marked.

 The special technical feature in claim 1 is the marking
device having a disc - shaped element with a stem and a
securing disc element to be fastened to the tip of the stem.
The corresponding special technical feature in claim 2 is
the pneumatically actuated gun for driving the marking
device and having a supporting surface for the securing disc
element. Unity exists between claims 1 and 2.

  Example 15

 Claim 1:  Compound A.

 Claim 2:  An insecticide composition comprising compound
A and a carrier.

 Unity exists between claims 1 and 2. The special technical
feature common to all the claims is compound A.

  Example 16

 Claim 1:  An insecticide composition comprising compound
A (consisting of a  1  , a  2  ...) and a carrier.

 Claim 2:  Compound a  1  .

 All compounds A are not claimed in the product claim 2 for
reasons of lack of novelty of some of them for instance.
There is nevertheless still unity between the subject matter
of claims 1 and 2 provided a  1  has the insecticidal
activity which is also the special technical feature for
compound A in claim 1.

  Example 17

 Claim 1:  Protein X

 Claim 2:  DNA sequence encoding protein X.

 Expression of the DNA sequence in a host results in the
production of a protein which is determined by the DNA
sequence.  The  protein  and  the  DNA  sequence  exhibit
corresponding  special  technical  features.  Unity  between
claims 1 and 2 is accepted.

  III. MARKUSH PRACTICE

  Example 18 - common structure:

 Claim 1:  A compound of the formula:

 **  Double Click here to see the image  **

 wherein R  1  is selected from the group consisting of
phenyl, pyridyl, thiazolyl, triazinyl, alkylthio, alkoxy,
and methyl; R  2  - R  2 are methyl, benzyl, or phenyl.
The compounds are useful as pharmaceuticals for the purpose
of enhancing the capacity of the blood to absorb oxygen.

  In  this  case  the  indolyl  moiety  is  the  significant
structural  element  which  is  shared  by  all  of  the
alternatives. Since all the claimed compounds are alleged to
possess the same utility, unity is present.

  Example 19 - common structure:

 Claim 1:  A compound of the formula:

 **  Double Click here to see the image  **

 wherein R  is selected from the group consisting of phenyl,
  1
pyridyl,  thiazolyl,  triazinyl,  alkylthio,  alkoxy,  and
methyl; Z is selected from the group consisting of oxygen
(O), sulfur (S), imino (NH), and methylene ( - CH  - ). The
 2
compounds are alleged to be useful as pharmaceuticals for
relieving lower back pain.

 In this particular case the iminothioether group - N=C -
SCH  linked  to  a  six  atom  ring  is  the  significant
  3 
structural element which is shared by all the alternatives.
Thus, since all the claimed compounds are alleged to possess
the same use, unity would be present. A six membered
heterocyclic  ring  would  not  have  been  of  sufficient
similarity to allow a Markush grouping exhibiting unity,
absent some teaching of equivalence in the prior art.

  Example 20 - common structure

 Claim 1:  A compound of the formula:

 **  Double Click here to see the image  **

 wherein R  1  is methyl or phenyl, X and Z are selected
from oxygen (O) and sulfur (S).

 The compounds are useful as pharmaceuticals and contain the
1,3  -  thiazolyl  substituent  which  provides  greater
penetrability of mammalian tissue which fact makes the
compounds useful as relievers for headaches and as topical
anti - inflammatory agents.

 All compounds share a common chemical structure, the
thiazole ring and the six atom heterocyclic compound bound
to an imino group, which occupy a large portion of their
structure. A six - membered heterocyclic ring would not have
been of sufficient similarity to allow a Markush grouping
exhibiting unity, absent some teaching of equivalence in the
prior art.

  Example 21 - common structure:

 **  Double Click here to see the image  **

 All of the above copolymers have in common a thermal
degradation resistance property, due to the reduced number
of free COOH radicals by esterification with X of the end
COOH radicals which cause thermal degradation. The chemical
structures  of  the  alternatives  are  considered  to  be
technically closely interrelated to one another. A grouping
in one claim is therefore allowed.

  Example 22 - common structure:

 **  Double Click here to see the image  **

 The compound obtained by esterifying the end COOH radical
of known polyhexamethyleneterephthalate with

 All esters covered by the claim do not have a property or
activity  in  common.  For  example,  the  product  obtained

through esterification with the "CH  = CH" vinyl compound
  2
does not have a thermal degradation resistant property. The
grouping in a single application is not allowed.

  Example 23 - No common structure:

 Claim 1:  A  herbicidal  composition  consisting
essentially of an effective amount of the mixture of A 2,4 -
D(2,4  -  dichlorophenoxy  acetic  acid)  and  B  a  second
herbicide selected from the group consisting of copper
sulfate,  sodium  chlorate,  ammonium  sulfamate,  sodium
trichloroacetate, dichloropropionic acid, 3 - amino - 2,5 -
dichlorobenzoic  acid,  diphenamid  (an  amide),  ioxynil
(nitrile), dinoseb (phenol), trifluralin (dinitroaniline),
EPTC (thiocarbamate), and simazine (triazine) along with an
inert carrier or diluent.

 The different components under B must be members of a
recognized class of compounds. Consequently in the present
case a unity objection would be raised because the members
of B are not recognized as a class of compounds, but, in
fact,  represent  a  plurality  of  classes  which  may  be
identified as follows:

  a)  inorganic salts:

  copper sulfate

  sodium chlorate

  ammonium sulfamate

  b)  organic salts and carboxylic acids:

  sodium trichloroacetate

  dichloropropionic acid

  3 - amino - 2,5 - dichlorobenzoic acid

  c)  amides:

  diphenamid

  d)  nitriles:

  ioxynil

  e)  phenols:

  dinoseb

  f)  amines:

  trifluralin

  g)  heterocyclic:

  simazine

  Example 24

 Claim 1:  Catalyst  for  vapor  phase  oxidation  of
hydrocarbons, which consists of (X) or (X + a).

 In this example (X) oxidizes RCH  into RCH  OH and (X+a)
  3  2
oxidizes RCH  further into RCOOH.
  3

 Both catalysts share a common component and a common
activity as oxidation catalyst for RCH  With (X+a) the
  3 
oxidation is more complete and goes until the carboxylic
acid is formed but the activity still remains the same.

 A Markush grouping is acceptable.

  IV.  INTERMEDIATE/FINAL PRODUCTS

  Example 25

 Claim 1:

 **  Double Click here to see the image  **

 Claim 2:

 **  Double Click here to see the image  **

 The chemical structures of the intermediate and final
product are technically closely interrelated. The essential
structural element incorporated into the final product is:

 **  Double Click here to see the image  **

 Therefore, unity exists between claims 1 and 2.

  Example 26

 Claim 1:

 **  Double Click here to see the image  **

 Claim 2:

 **  Double Click here to see the image  **

 (II) is described as an intermediate to make (I). The
closure mechanism is one well known in the art. Though the
basic  structures  of  compound  (I)  (final  product)  and
compound (II) (intermediate) differ considerably, compound
(II) is an open ring precursor to compound (I). Both
compounds share a common essential structural element which
is the linkage comprising the two phenyl rings and the
triazole ring. The chemical structures of the two compounds
are  therefore  considered  to  be  technically  closely
interrelated.

 The example therefore satisfies the requirement for unity
of invention.

  Example 27

 Claim 1: Amorphous polymer A (intermediate).

 Claim 2: Crystalline polymer A (final product).

 In this example a film of the amorphous polymer A is
stretched to make it crystalline. Here unity exists because
there is an intermediate final product relation in that
amorphous polymer A is used as a starting product to prepare
crystalline polymer A.

 For purposes of further illustration, assume that the
polymer  A  in  this  example  is  polyisoprene.  Here  the
intermediate, amorphous polyisoprene, and the final product,
crystalline polyisoprene, have the same chemical structure.

  Example 28

 Claim 1:  Polymeric compound useful as fiber material
identified by the following general formula:

 [repeating unit (X)]

 **  Double Click here to see the image  **

 Claim 2:  Compound identified by the following general
formula:

 (useful as intermediate for polymeric compound I)

 **  Double Click here to see the image  **

  (primary condensation product)

 The two inventions are in an intermediate and final product
relationship.

 Substance (II) is a raw material for substance (I).

 Meanwhile, both compounds share an essential structural
element (repeating unit (X)) and are technically closely
interrelated. The intermediate and final products therefore
satisfy the requirements for unity.

  Example 29

 Claim 1:  Novel  compound  having  structure  A
(Intermediate).

 Claim 2:  Product  prepared  by  reacting  A  with  a
substance X (Final Product).

  Example 30

 Claim 1:  Reaction product of A and B (Intermediate).

 Claim 2:  Product prepared by reacting the reaction
product of A and B with substances X and Y (Final Product).

 In examples 29 and 30 the chemical structure(s) of the
intermediate and/or the final product is not known. In (29)
the structure of the product of claim 2 (the final product)
is not known. In (30) the structures of the products of
claim 1 (the intermediate) and claim 2 (the final product)
are unknown. Unity exists if there is evidence which would
lead one to conclude that the characteristic of the final

product which is the inventive feature in the case is due to
the intermediate. For example, the purpose for using the
intermediates  in  (29)  or  (30)  is  to  modify  certain
properties of the final product. The evidence may be in the
form of test data in the specification showing the effect of
the intermediate on the final product. If no such evidence
exists  then  there  is  no  unity  on  the  basis  of  an
intermediate - final product relationship.

 [Annex C follows]

  ANNEX C

  FORMAT FOR NUCLEOTIDE AND /OR AMINO ACID SEQUENCE LISTINGS
  IN MACHINE READABLE FORM

  Australian Patent Office

 Machine readable form is not required.

 OCR format is accepted and must comply with WIPO Standard
ST.22.  12

 No requirement for electronic form but acceptable as
follows:

 (a)  Medium:

  Diskette:

  5.25 inch, 360 Kb storage

  5.25 inch, 1.2 Mb storage

  3.5 inch, 720 Kb storage

  3.5 inch, 1.44 Mb storage

  Magnetic tape: 0.5 inch, up to 2400 feet

  Density: 1600 or 6250 bits per inch, 9 track

  Format: raw, unblocked

 (b)  Character codes

  ASCII

 (c)  Computer  hardware  and  operating  systems
configuration

  Computer: IBM PC/XT/AT, IBM PS/2, or compatibles

  Operating system: PC - DOS or MS - DOS (Versions 2.1 or
above)

  Austrian Patent Office

 Machine readable form is not required.

 OCR format is accepted and must comply with WIPO Standard
ST.22.  12

  European Patent Office

 Machine readable form is not required but is recommended
until January 1993, when it is expected to become mandatory.

 Any printed form of a sequence listing is accepted; in
addition to paper, diskettes are welcome. Diskettes shall be
in ASCII character code in DOS operating system. "Patentin"
software program may be used.

  Japanese Patent Office

 The Japanese Patent Office (JPO) recommends that a listing
of sequence in an electronic form application shall be
recorded as code data complying with WIPO Standard ST.23
13  ,  but  the  recommendation  is  not  a  statutory
requirement.

 Requirements for electronic form:

 (a)  Medium:

  Floppy disk:

  8 inches both - sided double density (2d) (JIS X6201)

  5.25 inches high density (2HD) (JIS X6211)

  3.5 inches high density (2HD) (JIS 6223)

  On - line:

  ISDN (64kb/s)

  Digital Data Exchange of Packet (9600b/s)

 (b)  Character codes:

  Code of Japanese graphic character set for information
interchange (JIS X 0208 - 1983)

 (c)  Computer  hardware  and  operating  systems
configuration:

  Not  specified,  but  in  accordance  with  the  JPO's
electronic application standards

 (d)  Computer software:

  Not  specified,  but  in  accordance  with  the  JPO's
electronic application standards

 (e)  Other requirements:

  floppy disk application:

  File specification for Japanese Documents Interchange
(JIS X4004 - 1988)

  On - line application:

  OSI & CCITT T.73

  Russian Patent Office

 Machine readable form is not required.

  Swedish Patent Office

 Machine readable form is not required.

  United Kingdom Patent Office

 Machine readable form is not required.

  United States Patent and Trademark Office (USPTO)

 A sequence listing is required for all disclosures of
sequence information in which the sequence has four or more
amino acids or ten or more nucleotides. Branched sequences
and those including D - amino acids are excluded from the
rules.

 The USPTO has not adopted the use of an OCR format and it
is not expected that such a format will be adopted by the
USPTO.

 Sections 1.821 to 1.825 of title 37, Code of Federal
Regulations (37 CFR) relate to sequence listings submitted
to the USPTO. Sections 1.824 and 1.825 which set forth the
requirements for sequence listings in machine (computer)
readable form are reproduced below:

  37 CFR 1.824 Form and format for nucleotide and/or amino
acid sequence submissions in computer readable form.

 (a)  The computer readable form required by Section
1.821(e) shall contain a printable copy of the "Sequence
Listing," as defined in Sections 1.821(c), 1.822, and 1.823,
recorded as a single file on either a diskette or a magnetic
tape. The computer readable form shall be encoded and
formatted such that a printed copy of the "Sequence Listing"
may  be  recreated  using  the  print  commands  of  the
computer/operating  -  system  configuration  specified  in
paragraph (f) of this section.

 (b)  The file in paragraph (a) of this section shall be
encoded in a subset of the American Standard Code for
Information Interchange (ASCII). This subset shall consist
of all the printable ASCII characters including the ASCII
space character plus line termination, pagination, and end -
of - file characters associated with the computer/operating
- system configurations specified in paragraph (f) of this
section. No other characters shall be allowed.

 (c)  The computer readable form may be created by any
means,  such  as  word  processors,  nucleotide/amino  acid
sequence  editors,  or  other  custom  computer  programs,
however,  it  shall  be  readable  by  one  of  the
computer/operating  -  system  configurations  specified  in
paragraph (f) of this section, and shall conform to the
specifications in paragraphs (a) and (b) of this section.

 (d)  The entire printable copy of the "Sequence Listing"
shall be contained within one file on a single diskette or
magnetic tape unless it is shown to the satisfaction of the
Commissioner that it is not practical or possible to submit
the entire printable copy of the "Sequence Listing" within
one file on a single diskette or magnetic tape.

 (e)  The submitted diskette or tape shall be write -
protected such as by covering or uncovering diskette holes,
removing diskette write tabs, or removing tape write rings.

 (f)  As set forth in paragraph (c), above, any means may
be used to create the computer readable form, as long as the
following conditions are satisfied. A submitted diskette
shall be readable on one of the computer/operating - system
configurations described in paragraphs (1) through (3),
below.  A  submitted  tape  shall  satisfy  the  format
specifications described in paragraph (4), below

 (1)  Computer: IBM PC/XT/AT, IBM PS/2, or compatibles:

 Operating system: PC - DOS or MS - DOS (Versions 2.1 or
above):

 Line Terminator: ASCII Carriage Return plus ASCII Line
Feed:

 Pagination: ASCII Form Feed or Series of Line Terminators:

 End - of - File: ASCII SUB (Ctrl - Z):

  Media:

  Diskette - 5.25 inch, 360 Kb storage:

  Diskette - 5.25 inch, 1.2 Mb storage:

  Diskette - 3.50 inch, 720 Kb storage:

  Diskette - 3.50 inch, 1.44 Mb storage;

  Print Command: PRINT filename.extension;

 (2)  Computer: IBM PC/XT/AT, IBM PS/2, or compatibles;

  Operating system: Xenix;

  Line Terminator: ASCII Carriage Return

  Pagination:  ASCII  Form  Feed  or  Series  of  Line
Terminators;

  End of - File: None;

  Media:

  Diskette - 5.25 inch, 360 Kb storage;

  Diskette - 5.25 inch, 1.2 Mb storage:

  Diskette - 3.50 inch, 720 Kb storage;

  Diskette - 3.50 inch, 1.44 Mb storage;

  Print Command; lpr filename;

 (3)  Computer: Apple Macintosh;

  Operating System: Macintosh;

  Macintosh File Type: text with line termination

  Line Terminator: Predefined by text type file

  Pagination: Predefined by text type file

  Endoffile: Predefined by text type file:

  Media

  Diskette - 3.50 inch, 400 Kb storage

  Diskette - 3.50 inch, 800 Kb storage:

  Diskette - 3.50 inch, 1.4 Mb storage

  Print Command: Use PRINT command from any Macintosh

  Application that processes text files, such as MacWrite
or TeachText;

 (4)  Magnetic tape: 0.5 inch, up to 2400 feet

  Density: 1600 or 6250 bits per inch, 9 track;

  Format: raw, unblocked;

  Line Terminator: ASCII Carriage Return plus optional
ASCII Line Feed;

  Pagination:  ASCII  Form  Feed  or  Series  of  Line
Terminators

  Print Command (Unix shell version given here as sample
response - mt/dev/rmtO;lpr</dev/rmt0):

  (g) Computer readable forms that are submitted to the
Office will not be returned to the applicant.

  (h) All computer readable forms shall have a label
permanently affixed thereto on which has been handprinted or
typed, a description of the format of the computer readable
form as well as the name of the applicant, the title of the
invention, the date on which the data were recorded on the
computer readable form, and the name and type of computer
and operating system which generated the files on the
computer readable form. If all of this information can not
be printed on a label affixed to the computer readable form,
by reason of size or otherwise, the label shall include the
name of the applicant and the title of the invention and a
reference number, and the additional information may be
provided on a container for the computer readable form with
the name of the applicant, the title of the invention, the
reference number, and the additional information affixed to
the container. If the computer readable form is submitted
after the date of filing under 35 U.S.C. 111, after the date
of entry in the national stage under 35 U.S.C. 371, or after
the time of filing, in the United States Receiving Office,
an international application under the PCT, the labels
mentioned  herein  must  also  include  the  date  of  the
application and the application number, including series
code and serial number.

  37 CFR 1.825  Amendments to or replacement of
sequence listing and computer readable copy thereof.

  (a) Any amendment to the paper copy of the "Sequence

Listing" (Section 1.821(c)) must be made by the submission
of substitute sheets. Amendments must be accompanied by a
statement that indicates support for the amendment in the
application, as filed, and a statement that the substitute
sheets include no new matter. Such a statement must be a
verified statement if made by a person not registered to
practice before the Office.

  (b) Any amendment to the paper copy of the "Sequence
Listing," in accordance with paragraph (a) of this section,
must be accompanied by a substitute copy of the computer
readable form (Section 1.821(e)) including all previously
submitted data with the amendment incorporated therein,
accompanied  by  a  statement  that  the  copy  in  computer
readable form is the same as the substitute copy of the
"Sequence Listing." Such a statement must be a verified
statement if made by a person not registered to practice
before the Office.

  (c) Any appropriate amendments to the "Sequence Listing"
in a patent, e.g., by reason of reissue or certificate of
correction, must comply with the requirements of paragraphs
(a) and (b) of this section.

  (d) If, upon receipt, the computer readable form is found
to be damaged or unreadable, applicant must provide, within
such time as set by the Commissioner, a substitute copy of
the  data  in  computer  readable  form  accompanied  by  a
statement that the substitute data is identical to that
originally filed. Such a statement must be a verified
statement if made by a person not registered to practice
before the Office.

 [Annex D follows]

  ANNEX D

  INFORMATION FROM PAMPHLET FRONT PAGE TO BE INCLUDED IN THE
  GAZETTE UNDER RULE 86.1(i)

 The following information shall be extracted from the front
page  of  the  pamphlet  of  each  published  international
application and shall, in accordance with Rule 86.1(i),
appear in the corresponding entry of the Gazette:

 1. as to the international publication:

 1.1  the international publication number

 1.2  the date of the international publication

 1.3  an indication whether the following items were
published in the pamphlet:

 1.31  international search report

 1.32  declaration under Article 17(2)

 1.33  claims amended under Article 19(1)

 1.34  statement under Article 19(1)

 1.35  the essence of the comments by the applicant on the
translation of the international application as referred to
in Rule 48.3(b)

 1.36  request for rectification under the third sentence
of Rule 91.1(f)

 1.4  the language of publication of the international
application

 2. as to the international application:

 2.1  the title of the invention

 2.2  the  symbol(s)  of  the  International  Patent
Classification (IPC)

 2.3  the international application number

 2.4  the international filing date

 3. as to any priority claim:

 3.1  the application number of the earlier application

 3.2  the date of the earlier application

 3.3  the country in or for which the earlier application
was filed

 4. as to the applicant, inventor and agent:

 4.1  their name(s)

 4.2  their mailing address(es)

 5. as to the designated States:

 5.1  their names

 5.2  the indication of any wish for a regional patent

 5.3  the indication of kind of protection sought, unless
a patent is sought

 6. as to a statement concerning nonprejudicial disclosure
or exception to lack of novelty:

 6.1  the date of the disclosure

 6.2  the place of the disclosure

 6.3  the kind of the disclosure (e.g., exhibition,
scientific publication, conference reports, etc.)

 6.4  the  title  of  the  exhibition,  publication  or
conference

 7. as to any indication in relation to a deposited
  bis
microorganism furnished under Rule 13  separately from the
description:

 7.1  the fact that such indication is published

 7.2  the date on which the International Bureau received
such indication.

 [Annex E follows]

  ANNEX E

  INFORMATION TO BE PUBLISHED IN THE

  GAZETTE UNDER RULE 86.1(v)

 1.  The time limits applicable under Articles 22 and 39
in respect of each Contracting State.

 2.  The list of the nonpatent literature agreed upon by
the International Searching Authorities for inclusion in the
minimum documentation.

 3.  The names of the national Offices which do not wish
to receive copies under Article 13(2)(c).

 4.  The provisions of the national laws of Contracting
States concerning international - type search.

 5.  The text of the agreements entered into between the
International  Bureau  and  the  International  Searching
Authorities  or  the  International  Preliminary  Examining
Authorities.

 6.  The names of the national Offices which entirely or
in part waived their rights to any communication under
Article 20.

 7.  The names of the Contracting States which are bound
by Chapter II of the PCT.

 8.  Index of concordance of international application
numbers  and  international  publication  numbers,  listed
according to international application numbers.

 9.  Index of international publication numbers grouped
according to designated States, including an indication of
those States for which a "regional patent" is sought.

 10.  Index of applicants' names giving, for each name,
the corresponding international publication number(s).

 11.  Index of international publication numbers, grouped
according  to  the  International  Patent  Classification
symbols.

 12.  Indication of any subject matter that will not be
searched or examined by the various International Searching
and Preliminary Examining Authorities under Rules 39 and 67.

 13.  Requirements of designated and elected Offices
under Rules 49.5 and 76.5 in relation to the furnishing of
translations.

 14.  The names of those designated Offices wishing to
receive notifications under Rule 24.2(b).
  15.  The dates defining the period referred to in Rule 32.1(b)
  during which the international application, whose effects may be
  extended to a successor State under Rule 32.1, must have been
  filed.

  Appendix P Paris Convention

  Paris Convention for the Protection of Industrial Property

 of March 20, 1883

  as revised

  at Brussels on December 14, 1900, at Washington on June 2,
1911, at The Hague on November 6, 1925, at London on June 2,
  1934, at Lisbon on October 31, 1958, and at Stockholm on
  July 14, 1967, and as amended on October 2, 1979.

 TABLE OF CONTENTS

 Article 1:  Establishment  of  the  Union;  Scope  of
Industrial Property

 Article 2:  National Treatment for Nationals of Countries
of the Union

 Article 3:  Same  Treatment  for  Certain  Categories  of
Persons as for Nationals of Countries of the Union

 Article 4:  A. to I.  Patents, Utility Models, Industrial
Designs,  Marks,  Inventors'  Certificates;  Right  of
Priority. - G.  Patents  : Division of the Application

  bis :  Patents  : Independence of Patents
 Article 4
Obtained for the Same Invention in Different Countries

  ter
 Article 4  :  Patents  : Mention of the
Inventor in the Patent

  quater :  Patents  : Patentability in Case
 Article 4
of Restrictions of Sale by Law

 Article 5:  A.  Patents  : Importation of Articles;
Failure  to  Work  or  Insufficient  Working;  Compulsory
Licenses. - B.  Indus trial Designs  : Failure to Work ;
Importation of Articles.- C.  Marks  : Failure to Use;
Different Forms; Use by Co - proprietors.- D.  Patents,
Utility Models, Marks, Industrial Designs  : Marking

  bis
 Article 5  All  Industrial  Property  Rights:
Period of Grace for the Payment of Fees for the Maintenance
of Rights;  Patents  : Restoration

  ter :  Patents  : Patented Devices Forming
 Article 5
Part of Vessels, Aircraft, or Land Vehicles

  quater
 Article 5  :  Patents:  Importation of Products
Manufactured by a Process Patented in the Importing Country

  quinquies
 Article 5  :  Industrial Design  s

 Article 6:  Marks:  Conditions  of  Registration;
Independence  of  Protection  of  Same  Mark  in  Different
Countries

  bis
 Article 6  :  Marks  : Well Known Marks

  ter
 Article 6  Marks  : Prohibitions concerning State
Emblems,  Official  Hallmarks,  and  Emblems  of
Intergovernmental Organizations

  quater :  Marks  : Assignment of Marks
 Article 6

  quinquies
 Article 6  ;  Marks  : Protection of Marks
Registered  in  One  Country  of  the  Union  in  the  Other
Countries of the Union

  sexies :  Marks  : Service Marks
 Article 6

  septies :  Marks  : Registration in the Name
 Article 6
of the Agent or Representative of the Proprietor Without the
Latter's Authorization

 Article 7:  Mark  s: Nature of the Goods to which the
Mark is Applied

  bis :  Marks:  Collective Marks
 Article 7

 Article 8:  Trade Names

 Article 9:  Marks,  Trade  Names:  Seizure,  on
Importation, etc., of Goods Unlawfully Bearing a Mark or
Trade Name

 Article 10: False Indications  : Seizure, on
Importation, etc., of Goods Bearing False Indications as to
their Source or the Identity of the Producer

  bis
 Article 10  :  Unfair Competition

  ter
 Article 10  :  Marks,  Trade  Names,  False
Indications, Unfair Competition:  Remedies, Right to Sue

 Article 11: Inventions, Utility Models, Industrial
Designs,  Marks:  Temporary  Protection  at  Certain
International Exhibitions

 Article 12:  Special  National  Industrial  Property
Services

 Article 13:  Assembly of the Union

 Article 14:  Executive Committee

 Article 15:  International Bureau

 Article 16:  Finances

 Article 17:  Amendment of Articles 13 to 17

 Article 18:  Revision of Articles 1 to 12 and 18 to 30

 Article 19:  Special Agreements

 Article 20:  Ratification or Accession by Countries of
the Union; Entry Into Force

 Article 21:  Accession by Countries Outside the Union;
Entry Into Force

 Article 22:  Consequences of Ratification or Accession

 Article 23:  Accession to Earlier Acts

 Article 24:  Territories

 Article 25:  Implementation of the Convention on the
Domestic Level

 Article 26:  Denunciation

 Article 27:  Application of Earlier Acts

 Article 28:  Disputes

 Article 29:  Signature,  Languages,  Depositary
Functions

 Article 30:  Transitional Provisions

  Article 1

 [Establishment of the Union; Scope of Industrial Property]

 (1)  The countries to which this Convention applies
constitute  a  Union  for  the  protection  of  industrial
property.

 (2)  The protection of industrial property has as its
object  patents,  utility  models,  industrial  designs,
trademarks,  service  marks,  trade  names,  indications  of
source or appellations of origin, and the repression of
unfair competition.

 (3)  Industrial property shall be understood in the
broadest sense and shall apply not only to industry and
commerce proper, but likewise to agricultural and extractive
industries and to all manufactured or natural products, for
example,  wines,  grain,  tobacco  leaf,  fruit,  cattle,
minerals, mineral waters,  beer, flowers, and flour.

 (4)  Patents  shall  include  the  various  kinds  of
industrial patents recognized by the laws of the countries
of the Union, such as patents of importation, patents of
improvement, patents and certificates of addition, etc.

  Article 2

 [National Treatment for Nationals of Countries of the
Union]

 (1)  Nationals of any country of the Union shall, as
regards the protection of industrial property, enjoy in all
the other countries of the Union the advantages that their
respectivelaws  now  grant,  or  may  hereafter  grant,  to
nationals; all without prejudice to the rights specially
provided for by this Convention. Consequently, they shall
have the same protection as the later, and the same legal
remedy against any infringement of their rights, provided
that the conditions and formalities imposed upon nationals
are complied with.

 (2)  However,  no  requirement  as  to  domicile  or
establishment in the country where protection is claimed may
be imposed upon nationals of countries of the Union for the
enjoyment of any industrial property rights.

 (3)  The provisions of the laws of each of the countries
of  the  Union  relating  to  judicial  and  administrative
procedure and to jurisdiction, and to the designation of an
address for service or the appointment of an agent, which
may be required by the laws on industrial property are
expressly reserved.

  Article 3

 [Same Treatment for Certain Categories of Persons as for
Nationals of Countries of the Union]

 Nationals of countries outside the Union who are domiciled
or who have real and effective industrial or commercial
establishments in the territory of one of the countries of
the Union shall be treated in the same manner as nationals
of the countries of the Union.

  Article 4

 [A. to I.  Patents, Utility Models, Industrial Designs,
Marks, Inventors Certificates;  Right of Priority. - G.
Patents  : Division of the Application]

 A. - (1)  Any person who has duly filed an application
for  a patent, or for the registration of a utility model,
or of an industrial design, or of a trademark, in one of the
countries of the Union, or his successor in title, shall
enjoy, for the purpose of filing in the other countries, a
right of priority during the periods hereinafter fixed.

 (2)  Any filing that is equivalent to a regular national
filing under the domestic legislation of any country of the
Union or under bilateral or multilateral treaties concluded
between countries of the Union shall be recognized as giving
rise to the right of priority.

 (3)  By a regular national filing is meant any filing
that  is  adequate  to  establish  the  date  on  which  the
application was filed in the country concerned, whatever may
be the subsequent fate of the application.

 B. - Consequently, any subsequent filing in any of the
other countries of the Union before the expiration of the
periods referred to above shall not be invalidated by reason
of any acts accomplished in the interval, in particular,
another filing, the publication or exploitation of the
invention, the putting on sale of copies of the design, or
the use of the mark, and such acts cannot give rise to any
third - party right or any right of personal possession.
Rights acquired by third parties before the date of the
first application that serves as the basis for the right of
priority  are  reserved  in  accordance  with  the  domestic
legislation of each country of the Union.

 C. - (1)  The periods of priority referred to above
shall be twelve months for patents and utility models, and
six months for industrial designs and trademarks.

 (2)  These periods shall start from the date of filing

of the first application; the day of filing shall not be
included in the period.

 (3)  If the last day of the period is an official
holiday, or a day when the Office is not open for the filing
of applications in the country where protection is claimed,
the period shall be extended until the first following
working day.

 (4)  A  subsequent  application  concerning  the  same
subject as a previous first application within the meaning
of paragraph (2), above, filed in the same country of the
Union. shall be considered as the first application, of
which the filing date shall be the starting point of the
period of priority, if, at the time of filing the subsequent
application,  the  said  previous  application  has  been
withdrawn, abandoned, or refused, without having been laid
open to public inspection and without leaving any rights
outstanding, and if it has not yet served as a basis for
claiming a right of priority. The previous application may
not thereafter serve as a basis for claiming a right of
priority.

 D. - (1)  Any person desiring to take advantage of the
priority of a previous filing shall be required to make a
declaration indicating the date of such filing and the
country in which it was made. Each country shall determine
the latest date on which such declaration must be made.

 (2)  These  particulars  shall  be  mentioned  in  the
publications issued by the competent authority, and in
particular in the patents and the specifications relating
thereto.

 (3)  The countries of the Union may require any person
making a declaration of priority to produce a copy of the a
application (description. drawings, etc.) previously filed.
The copy, certified as correct by the authority which
received  such  application,  shall  not  require  any
authentication, and may in any case be filed, without fee,
at any time within three months of the filing of the
subsequent  application.  They  may  require  it  to  be
accompanied by a certificate from the same authority showing
the date of filing, and by a translation.

 (4)  No other formalities may be required for the
declaration  of  priority  at  the  time  of  filing  the
application. Each country of the Union shall determine the
consequences of failure to comply with the formalities
prescribed by this Article, but such consequences shall in
no case go beyond the loss of the right of priority.

 (5)  Subsequently, further proof may be required.

 Any person who avails himself of the priority of a previous
application shall be required to specify the number of that
application; this number shall be published as provided for
by  paragraph (2), above.

 E. - (1)  Where an industrial design is filed in a
country by virtue of a right of priority based on the filing
of a utility model, the period of priority shall be the same
as that fixed for industrial designs.

 (2)  Furthermore, it is permissible to file a utility

model in a country by virtue of a right of priority based on
the filing of a patent application, and vice versa.

 F. - No country of the Union may refuse a priority or a
patent application on the ground that the applicant claims
multiple priorities, even if they originate in different
countries, or on the ground that an application claiming one
or more priorities contains one or more elements that were
not  included  in  the  application  or  applications  whose
priority is claimed, provided that, in both cases, there is
unity of invention within the meaning of the law of the
country.

  With  respect  to  the  elements  not  included  in  the
application or applications whose priority is claimed, the
filing of the subsequent application shall give rise to a
right of priority u  nder ordinary conditions.

 G. - (1)  If the examination reveals that an application
for a patent contains more than one invention, the applicant
may  divide  the  application  into  a  certain  number  of
divisional applications and preserve as the date of each the
date of the initial application and the benefit of the right
of priority, if any.

 (2)  The applicant may also, on his own initiative,
divide a patent application and preserve as the date of each
divisional application the date of the initial application
and the benefit of the right of priority, if any. Each
country of the Union shall have the right to determine the
conditions under which such division shall be authorized.

 H.- Priority may not be refused on the ground that certain
elements of the invention for which priority is claimed do
not appear among the claims formulated in the application in
the  country  of  origin,  provided  that  the  application
documents as a whole specifically disclose such elements.

 I. - (1)  Applications for inventors' certificates filed
in a country in which applicants have the right to apply at
their own option either for a patent or for an inventor's
certificate  shall  give  rise  to  the  right  of  priority
provided for by this Article, under the same conditions and
with the same effects as  applications for patents.

 (2)  In a country in which applicants have the right to
a  pply at their own option either for a patent or for an
inventor s certificate, an applicant for an inventor s
certificate shall, in accordance with the provisions of this
Article relating to patent applications, enjoy a right of
priority based on an application for a patent, a utility
model, or an inventor's certificate.

  bis
  Article 4

 [  Patents  : Independence of Patents Obtained for the
Same Invention in Different Countries]

 (1)  Patents applied for in the various countries of the
Union by nationals of countries of the Union shall be
independent of patents obtained for the same invention in
other countries, whether members of the Union or not.

 (2)  The foregoing provision is to be understood in an

unrestricted sense, in particular, in the sense that patents
applied for during the period of priority are independent.
both as regards the grounds for nullity and forfeiture, and
as regards their normal duration.

 (3)  The provision shall apply to all patents existing
at the time when it comes into effect.

 (4)  Similarly, it shall apply, in the case of the
accession of new countries, to patents in existence on
either side at the time of accession.

 (5)  Patents obtained with the benefit of priority
shall, in the various countries of the Union, have a
duration equal to that which they would have, had they been
applied for or granted without the benefit of priority.

  ter
  Article 4

  [Patents  : Mention of the Inventor in the Patent]

 The inventor shall have the right to be mentioned as such
in the patent.

  quater
  Article 4

 [  Patents  : Patentability in Case of Restrictions of
Sale by Law]

 The grant of a patent shall not be refused and a patent
shall not be invalidated on the ground that the sale of the
patented product or of a product obtained by means of a
patented process is subject to restrictions or limitations
resulting from the domestic law.

  Article 5

 [A.  Patents:  Importation of Articles; Failure to Work
or  Insufficient  Working;  Compulsory  Licenses.  -  B.
Industrial Designs  : Failure to Work; Importation of
Articles. - C.  Marks:  Failure to Use; Different Forms;
Use by Co - proprietors. - D.  Patents, Utility Models,
Marks, Industrial Design  s: Marking]

 A. - (1)  Importation by the patentee into the country
where the patent has been granted of articles manufactured
in any of the countries of the Union shall not entail
forfeiture of the patent.

 (2)  Each country of the Union shall have the right to
take legislative measures providing for the grant of compuls
ory licenses to prevent the abuses which might result from
the exercise of the exclusive rights conferred by the pa
tent, for example, failure to work.

 (3)  Forfeiture of the patent shall not be provided for
except in cases where the grant of compulsory licenses would
not have been sufficient to prevent the said abuses. No
proceedings for the forfeiture or revocation of a patent may
be instituted before the expiration of two years from the
grant of the first compulsory license.

 (4)  A compulsory license may not be applied for on the
ground of failure to work or insufficient working before the

expiration of a period of four years from the date of filing
of the patent application or three years from the date of
the grant of the patent, whichever period expires last; it
shall be refused if the patentee justifies his inaction by
legitimate reasons. Such a compulsory license shall be non -
exclusive and shall not be transferable, even in the form of
the grant of a sub - license, except with that part of the
enterprise or goodwill which exploits such license.

 (5) The foregoing provisions shall be applicable, mutatis
mutandis, to utility models.

 B. - The protection of industrial design shall not, under
any circumstance, be subject to any forfeiture, either by
reason of failure to work or by reason of the importation of
articles corresponding to those which are protected.

 C. - (1)  If, in any country, use of the registered mark
is compulsory, the registration may be cancelled only after
a reasonable period, and then only if the person concerned
does not justify his inaction.

 (2) Use of a trademark by the proprietor in a form
differing in elements which do not alter the distinctive
character of the mark in the form in which it was registered
in one of the countries of the Union shall not entail
invalidation of the registration and shall not diminish the
protection granted to the mark.

 (3) Concurrent use of the same mark on identical or similar
goods by industrial or commercial establishments considered
as co - proprietors of the mark according to the provisions
of the domestic law of the country where protection is
claimed shall not prevent registration or diminish in any
way the protection granted to the said mark in any country
of the Union, provided that such use does not result in
misleading the public and is not contrary to the public
interest.

 D. - No indication or mention of the patent, of the utility
model, of the registration of the trademark, or of the
deposit of the industrial design, shall be required upon the
goods  as  a  condition  of  recognition  of  the  right  to
protection.

  bis
  Article 5

 [  All Industrial Property Right  s: .Period of Grace for
the  Payment  of  Fees  for  the  Maintenance  of  Rights;
Patents  : Restoration]

 (1)  A period of grace of not less than six months shall
be allowed for the payment of the fees prescribed for the
maintenance of industrial property rights, subject, if the
domestic legislation so provides, to the payment of a
surcharge.

 (2)  The countries of the Union shall have the right to
provide for the restoration of patents which have lapsed by
reason of non - payment of fees.

  ter
  Article 5

 [  Patents:  Patented Devices Forming Part of Vessels,

Aircraft, or Land Vehicles]

 In any country of the Union the following shall not be
considered as infringements of the rights of a patentee  :

 l. the use on board vessels of other countries of the Union
of devices forming the subject of his patent in the body of
the  vessel,  in  the  machinery,  tackle,  gear  and  other
accessories, when such vessels temporarily or accidentally
enter the waters of the said country, provided that such
devices are used there exclusively for the needs of the
vessel;

 2. the use of devices forming the subject of the patent in
the construction or operation of aircraft or land vehicles
ofother countries of the Union, or of accessories of such
aircraft or land vehicles, when those aircraft or land
vehicles temporarily or accidentally enter the said country.

  quater
  Article 5

 [  Patents  : Importation of Products Manufactured by a
Process Patented in the Importing Country]

 When a product is imported into a country of the Union
where  there  exists  a  patent  protecting  a  process  of
manufacture of the said product, the patentee shall have all
the rights, with regard to the imported product, that are
accorded to him by the legislation of the country of
importation, on the basis of the process patent, with
respect to products manufactured in that country.

  quinquies
 Article 5

 [  Industrial Design  s]

 Industrial designs shall be protected in all the countries
of the Union.

  Article 6

 [  Marks:  Conditions of Registration; Independence of
Protection of Same Mark in Different Countries]

 (1) The conditions for the filing and registration of
trademarks shall be determined in each country of the Union
by its domestic legislation.

 (2) However, an application for the registration of a mark
filed by a national of a country of the Union in any country
of the Union may not be refused, nor may a registration be
invalidated, on the ground that filing, registration, or
renewal, has not been effected in the country of origin.

 (3) A mark duly registered in a country of the Union shall
be regarded as independent of marks registered in the other
countries of the Union, including the country of origin.

  bis
  Article 6

 [  Marks  : Well Known Marks]

 (1)  The countries of the Union undertake,  ex officio
if their legislation so permits, or at the request of an

interested party, to refuse or to cancel the registration,
and to prohibit the use, of a trademark which constitutes a
reproduction, an imitation, or a translation, liable to
create confusion, of a mark considered by the competent
authority of the country of registration or use to be well
known in that country as being already the mark of a person
entitled to the benefits of this Convention and used for
identical or similar goods.

 These provisions shall also apply when the essential part
of the mark constitutes a reproduction of any such well -
known mark or an imitation liable to create confusion
therewith.

 (2)  A period of at least five years from the date of
registration  shall  be  allowed  for  requesting  the
cancellation of such a mark. The countries of the Union may
provide for a period within which the prohibition of use
must be requested.

 (3)  No time limit shall be fixed for requesting the
cancellation  or  the  prohibition  of  the  use  of  marks
registered or used in had faith.

  ter
  Article 6

 [  Marks  : Prohibitions concerning State Emblems,
Official  Hallmarks,  and  Emblems  of  Intergovernmental
Organizations]

 (1) (a)  The countries of the Union agree to refuse or
to  invalidate  the  registration,  and  to  prohibit  by
appropriate measures the use, without authorization by the
competent authorities, either as trademarks or as elements
of trademarks, of armorial bearings, flags, and other State
emblems, of the countries of the Union, official signs and
hallmarks indicating control and warranty adopted by them,
and any imitation from a heraldic point of view.

  (b  )  The provisions of subparagraph (a), above,
shall apply equally to armorial bearings, flags, other
emblems,  abbreviations,  and  names,  of  international
intergovernmental  organizations  of  which  one  or  more
countries of the Union are members, with the exception of
armorial bearings, flags, other emblems, abbreviations, and
names,  that  are  already  the  subject  of  international
agreements in force, intended to ensure their protection.

  (c)  No country of the Union shall be required to
apply the provisions of subparagraph (b), above, to the
prejudice of the owners of rights acquired in good faith
before the entry into force, in that country, of this
Convention. The countries of the Union shall not be required
to apply the said provisions when the use or registration
referred to in subparagraph (a), above, is not of such a
nature as to suggest to the public that a connection exists
between  the  organization  concerned  and  the  armorial
bearings, flags, emblems, abbreviations, and names, or if
such use or registration is probably not of such a nature as
to mislead the public as to the existence of a connection
between the user and the organization.

 (2) Prohibition of the use of official signs and hallmarks
indicating control and warranty shall apply solely in cases

where the marks in which they are incorporated are intended
to be used on goods of the same or a similar kind.

 (3) (a)  For the application of these provisions, the
countries of the Union agree to communicate reciprocally,
through the intermediary of the International Bureau, the
list of State emblems, and official signs and hallmarks
indicating control and warranty, which they desire, or may
hereafter desire, to place wholly or within certain limits
under the protection of this Article, and all subsequent
modifications of such list. Each country of the Union shall
in due course make available to the public the lists so
communicated.

  Nevertheless  such  communication  is  not  obligatory  in
respect of flags of States.

  (b  )  The  provisions  of  subparagraph  (b)  of
paragraph (1) of this Article shall apply only to such
armorial bearings, flags, other emblems, abbreviations, and
names, of international intergovernmental organizations as
the latter have communicated to the countries of the Union
through the intermediary of the International Bureau.

 (4)  Any country of the Union may, within a period of
twelve months from the receipt of the notification, transmit
its objections, if any, through the intermediary of the
International  Bureau,  to  the  country  or  international
intergovernmental organization concerned.

 (5)  In the case of State flags, the measures prescribed
by  paragraph  (1),  above,  shall  apply  solely  to  marks
registered after November 6, 1925.

 (6)  In the case of State emblems other than flags, and
of official signs and hallmarks of the countries of the
Union, and in the case of armorial bearings, flags, other
emblems,  abbreviations,  and  names,  of  international
intergovernmental  organizations,  these  provisions  shall
apply only to marks registered more than two months after
receipt of the communication provided for in paragraph (3),
above.

 (7)  In cases of bad faith, the countries shall have the
right  to  cancel  even  those  marks  incorporating  State
emblems, signs, and hallmarks, which were registered before
November 6, 1925.

 (8)  Nationals of any country who are authorized to make
use of the State emblems, signs, and hallmarks, of their
country may use them even if they are similar to those of
another country.

 (9)  The countries of the Union undertake to prohibit
the unauthorized use in trade of the State armorial bearings
of the other countries of the Union, when the use is of such
a nature as to be misleading as to the origin of the goods.

 (10)  The  above  provisions  shall  not  prevent  the
countries from exercising the right given in paragraph (3)
  quinquies  ,  Section  B,  to  refuse  or  to
of  Article  6
invalidate the registration of marks incorporating, without
authorization,  armorial  hearings,  flags,  other  State
emblems, or official signs and hallmarks adopted by a

country of the Union, as well as the distinctive signs of
international intergovernmental organizations referred to in
paragraph (1), above.

  quater
  Article 6

 [  Marks  : Assignment of Marks]

 (1)  When, in accordance with the law of a country of
the Union, the assignment of a mark is valid only if it
takes place at the same time as the transfer of the business
or goodwill to which the mark belongs, it shall suffice for
the recognition of such validity that the portion of the
business or goodwill located in that country be transferred
to the assignee, together with the exclusive right to
manufacture in the said country, or to sell therein, the
goods bearing the mark assigned.

 (2)  The foregoing provision does not impose upon the
countries of the Union any obligation to regard as valid the
assignment of any mark the use of which by the assignee
would, in fact, be of such a nature as to mislead the
public, particularly as regards the origin, nature, or
essential qualities, of the goods to which the mark is
applied.

  quinquies
 Article 6

 [  Marks  : Protection of Marks Registered in One Country
of the Union in the Other Countries of the Union]

 A. - (1) Every trademark duly registered in the country of
origin shall be accepted for filing and protected as is in
the  other  countries  of  the  Union,  subject  to  the
reservations indicated in this Article. Such countries may,
before  proceeding  to  final  registration,  require  the
production of a certificate of registration in the country
of  origin,  issued  by  the  competent  authority.  No
authentication shall be required for this certificate.

 (2)  Shall be considered the country of origin the
country of the Union where the applicant has a real and
effective industrial or commercial establishment, or, if he
has no such establishment within the Union, the country of
the Union where he has his domicile, or, if he has no
domicile within the Union but is a national of a country of
the Union, the country of which he is a national.

 B. - Trademarks covered by this Article may be neither
denied registration nor invalidated except in the following
cases:

 1.  when they are of such a nature as to infringe
rights acquired by third parties in the country where
protection is claimed;

 2.  when they are devoid of any distinctive character,
or consist exclusively of signs or indications which may
serve, in trade, to designate the kind, quality, quantity,
intended purpose, value, place of origin, of the goods, or
the time of production, or have become customary. in the
current  language  or  in  the  bona  fide  and  established
practices of the trade of the country where protection is
claimed;

 3.  when they are contrary to morality or public order
and, in particular, of such a nature as to deceive the
public. It is understood that a mark may not be considered
contrary to public order for the sole reason that it does
not conform to a provision of the legislation on marks,
except if such provision itself relates to public order.

 This provision is subject, however, to the application of
Article 10bis.

 C. - (1) In determining whether a mark is eligible for
protection, all the factual circumstances must be taken into
consideration, particularly the length of time the mark has
been in use.

 (2)  No  trademark  shall  be  refused  in  the  other
countries of the Union for the sole reason that it differs
from the mark protected in the country of origin only in
respect of elements that do not alter its distinctive
character and do not affect its identity in the form in
which it has been registered in the said country of origin.

 D. - No person may benefit from the provisions of this
Article if the mark for which he claims protection is not
regi  stered in the country of origin.

 E. - However, in no case shall the renewal of the
registration of the mark in the country of origin involve an
obligation to renew the registration in the other countries
of the Union in which the mark has been registered.

 F. - The benefit of priority shall remain unaffected for
applications for the registration of marks filed within the
period fixed by Article 4, even if registration in the
country of origin is effected after the expiration of such
period.

  sexies
  Article 6

  [Marks  : Service Marks]

 The countries of the Union undertake to protect service
marks. They shall not be required to provide for the
registration of such marks.

  septies
  Article 6

 [  Marks  : Registration in the Name of the Agent or
Representative  of  the  Proprietor  Without  the  Latter's
Authorization]

 (1) If the agent or representative of the person who is the
proprietor of a mark in one of the countries of the Union
applies, without such proprietor s authorization, for the
registration of the mark in his own name, in one or more
countries of the Union, the proprietor shall be entitled to
oppose  the  registration  applied  for  or  demand  its
cancellation or, if the law of the country so allows, the
assignment in his favor of the said registration, unless
such agent or representative justifies his action.

 (2)  The proprietor of the mark shall, subject to the
provisions of paragraph (1), above, be entitled to oppose

the use of his mark by his agent or representative if he has
not authorized such use.

 (3)  Domestic legislation may provide an equitable time
limit within which the proprietor of a mark must exercise
the rights provided for in this Article.

  Article 7

 [  Marks  : Nature of the Goods to which the Mark is
Applied]

 The nature of the goods to which a trademark is to be
applied  shall  in  no  case  form  an  obstacle  to  the
registration of the mark.

  bis
  Article 7

  [Marks  : Collective Marks]

 (1)  The countries of the Union undertake to accept for
filing  and  to  protect  collective  marks  belonging  to
associations the existence of which is not contrary to the
law of the country of origin even if such associations do
not possess an industrial or commercial establishment.

 (2)  Each country shall be the judge of the particular
conditions under which a collective mark shall be protected
and may refuse protection if the mark is contrary to the
public interest.

 (3)  Nevertheless, the protection of these marks shall
not be refused to any association the existence of which is
not contrary to the law of the country of origin, on the
ground that such association is not established in the
country where protection is sought or is not constituted
according to the law of the latter country.

  Article 8

 [  Trade Names  ]

 A trade name shall be protected in all the countries of the
Union without the obligation of filing or registration,
whether or not it forms part of a trademark.

  Article 9

 [  Marks, Trade Names  : Seizure, on Importation, etc.,
of Goods Unlawfully Bearing a Mark or Trade Name]

 (1)  All goods unlawfully bearing a trademark or trade
name shall be seized on importation into those countries of
the Union where such mark or trade name is entitled to legal
protection.

 (2)  Seizure shall likewise be effected in the country
where the unlawful affixation occurred or in the country in
to which the goods were imported.

 (3)  Seizure shall take place at the request of the
public prosecutor, or any other competent authority, or any
interested party, whether a natural person or a legal
entity, in conformity with the domestic legislation of each

country.

 (4)  The authorities shall not be bound to effect
seizure of goods in transit.

 (5)  If the legislation of a country does not permit
seizure  on  importation,  seizure  shall  be  replaced  by
prohibition of importation or by seizure inside the country.

 (6)  If the legislation of a country permits neither
seizure on importation nor prohibition of importation nor
seizure inside the country, then, until such time as the
legislation is modified accordingly, these measures shall be
replaced by the actions and remedies available in such cases
to nationals under the law of such country  .

  Article 10

 [  False Indication  s: Seizure, on Importation, etc., of
Goods Bearing False Indications as to their Source or the
Identity of the Producer]

 (1)  The provisions of the preceding Article shall apply
in cases of direct or indirect use of a false indication of
the source of the goods or the identity of the producer,
manufacturer, or merchant.

 (2)  Any producer, manufacturer, or merchant, whether a
natural person or a legal entity, engaged in the production
or manufacture of or trade in such goods and established
either in the locality falsely indicated as the source, or
in the region where such locality is situated, or in the
country falsely indicated, or in the country where the false
indication of source is  used, shall in any case be deemed
an interested party.

  bis
  Article 10

 [  Unfair  Competition  ]

 (1)  The countries of the Union are bound to assure to n
ationals of such countries effective protection against
unfair competition.

 (2)  Any act of competition contrary to honest practices
in industrial or commercial matters constitutes an act of
unfair competition.

 (3)  The following in particular shall be prohibited:

 l.  all acts of such a nature as to create confusion by
any means whatever with the establishment, the goods, or the
industrial or commercial activities, of a competitor;

 2.  false allegations in the course of trade of such a
nature as to discredit the establishment, the goods, or the
industrial or commercial activities, of a competitor;

 3.  indications or allegations the use of which in the
course of trade is liable to mislead the public as to the
nature, the manufacturing process, the characteristics, the
suitability for their purpose, or the quantity, of the
goods.

  ter
  Article l0

  [  Marks,  Trade  Names,  False  Indications,  Unfair
Competition:  Remedies, Right to Sue]

 (1)  The countries of the Union undertake to assure to
nationals of the other countries of the Union appropriate
legal remedies effectively to repress all the acts referred
  bis
to in  Articles 9, 10, and 10  .

 (2)  They undertake, further, to provide measures to
permit federations and associations representing interested
industrialists, producers, or merchants, provided that the
existence  of  such  federations  and  associations  is  not
contrary to the laws of their countries, to take action in
the courts or before the administrative authorities, with a
view to the repression of the acts referred to in Articles
  bis
9, 10, and 10  , in so far  as the law of the country in
which  protection  is  claimed  allows  such  action  by
federations and associations of that country.

  Article 11

 [  Inventions, Utility Models, Industrial Designs, Marks
: Temporary Protection at Certain International Exhibitions]

 (1)  The countries of the Union shall, in conformity
with their domestic legislation, grant temporary protection
to  patentable  inventions,  utility  models,  industrial
designs, and trademarks, in respect of goods exhibited at
official  or  officia  lly  recognized  international
exhibitions held in the territory of any of them.

 (2)  Such temporary protection shall not extend the
periods provided by Article 4. If, later, the right of
priority is in voked, the authorities of any country may
provide that the period shall start from the date of
introduction of the goods into the exhibition.

 (3)  Each country may require, as proof of the identity
of  the  article  exhibited  and  of  the  date  of  its
introduction, such documentary evidence as it considers
necessary.

  Article 12

 [Special National Industrial Property Services]

 (1)  Each country of the Union undertakes to establish a
special industrial property service and a central office for
the communication to the public of patents, utility models,
industrial designs, and trademarks.

 (2)  This service shall publish an official periodical
journal. It shall publish regularly:

 (a)  the names of the proprietors of patents granted,
with a brief designation of the inventions patented;

  (b)  the reproductions of registered trademarks.

  Article 13

 [Assembly of the Union]

 (1)  (a  )  The  Union  shall  have  an  Assembly
consisting of those countries of the Union which are bound
by Articles 13 to 17.

  (b)  The Government of each country shall be
represented  by  one  delegate,  who  may  be  assisted  by
alternate delegates, advisors, and experts.

  (c)  The expenses of each delegation shall be borne
by the Government which has appointed it.

 (2) (a)  The Assembly shall:

 (i)  deal with all matters concerning the maintenance
and development of the Union and the implementation of this
Convention;

 (ii)  give directions concerning the preparation for
conferences of revision to the International Bureau of
Intellectual  Property  (hereinafter  designated  as  the
International  Bureau)  referred  to  in  the  Convention
establishing the World Intellectual Property Organization
(hereinafter designated as the Organization), due account
being taken of any comments made by those countries of the
Union which are not bound by Articles 13 to 17;

 (iii)  review and approve the reports and activities of
the Director General of the Organization concerning the
Union, and give him all necessary instructions concerning
matters with in the competence of the Union;

 (iv)  elect the members of the Executive Committee of the
Assembly; (v) review and approve the reports and activities
of its Executive Committee, and give instructions to such
Committee;

 (vi)  determine the program and adopt the biennial budget
of the Union, and approve its final accounts;

 (vii)  adopt the financial regulations of the Union;

 (viii) establish such committees of experts and working
groups as it deems appropriate to achieve the objectives of
the Union;

 (ix)  determine which countries not members of the Union
and  which  intergovernmental  and  international
nongovernmental  organizations  shall  be  admitted  to  its
meetings as observers;

 (x)  adopt amendments to Articles 13 to 17;

 (xi)  take any other appropriate action designed to
further the objectives of the Union;

 (xii)  perform such other functions as are appropriate
under this Convention;

 (xiii) subject to its acceptance, exercise such rights as
are  given  to  it  in  the  Convention  establishing  the
Organization.

  (b)  With respect to matters which are of interest
also to other Unions administered by the Organization, the

Assembly shall make its decisions after having heard the
advice of the Coordination Committee of the Organization.

 (3) (a)  Subject to the provisions of subparagraph (b),
a delegate may re present one country only.

  (b)  Countries of the Union grouped under the terms
of a special agreement in a common office possessing for
each of them the character of a special national service of
industrial property as referred to in Article 12 may be
jointly represented during discussions by one of their
number.

 (4) (a)  Each country member of the Assembly shall have
one vote.

  (b)  One.half of the countries members of the
Assembly shall constitute a quorum.

  (c)  Notwithstanding the provisions of subparagraph
(b), if, in any session, the number of countries represented
is less than one - half but equal to or more than one -
third of the countries members of the Assembly, the Assembly
may make decisions but, with the exception of decisions
concerning its own procedure, all such decisions shall take
effect only if the conditions set forth hereinafter are
fulfilled. The International Bureau shall communicate the
said decisions to the countries members of the Assembly
which were not represented and shall invite them to express
in writing their vote or abstention within a period of three
months from the date of the com munication. If, at the
expiration of this period, the number of countries having
thus expressed their vote or abstention attains the number
of countries which was lacking for attaining the quorum in
the  session  itself,  such  decisions  shall  take  effect
provided that at the same time the required majority still
obtains.

  (d)  Subject to the provisions of Article 17(2),
the decisions of the Assembly shall require two - thirds of
the votes cast.

  (e)  Abstentions shall not be considered as votes.

 (5) (a)  Subject to the provisions of subparagraph (b),
a delegate may vote in the name of one country only.

  (b  )  The countries of the Union referred to in
paragraph (3)  (b)  shall, as a general rule, endeavor to
send their own delegations to the sessions of the Assembly.
If, however, for exceptional reasons, any such country
cannot  send  its  own  delegation,  it  may  give  to  the
delegation of another such country the power to vote in its
name, provided that each delegation may vote by proxy for
one country only. Such power to vote shall be granted in a
document signed by the Head of State or the competent
Minister.

 (6)  Countries of the Union not members of the Assembly
shall  be  admitted  to  the  meetings  of  the  latter  as
observers.

 (7) (a)  The Assembly shall meet once in every second
calendar year in ordinary session up on convocation by the
Director  General  and,  in  the  absence  of  exceptional

circumstances, during the same period and at the same place
as the General Assembly of the Organization.

  (b  )  The  Assembly  shall  meet  in  extraordinary
session upon convocation by the Director General, at the
request of the Executive Committee or at the request of one
- fourth of the countries members of the Assembly.

 (8)  The  Assembly  shall  adopt  its  own  rules  of
procedure.

  Article 14

 [Executive Committee]

 (1)  The Assembly shall have an Executive Committee.

 (2) (a)  The  Executive  Committee  shall  consist  of
countries elected by the Assembly from among countries
members of the Assembly. Furthermore, the country on whose
territory  the  Organization  has  its  headquarters  shall,
subject to the provisions of Article 16(7)(b), have an  ex
officio  seat on the Committee.

  (b)  The Government of each country member of the
Executive Committee shall be represented by one delegate,
who may be assisted by alternate delegates, advisors, and
experts.

  (c)  The expenses of each delegation shall be borne
by the Government which has appointed it.

 (3) The number of countries members of the Executive
Committee shall correspond to one - fourth of the number of
countries members of the Assembly. In establishing the
number of seats to be filled, remainders after division by
four shall be disregarded.

 (4)  In electing the members of the Executive Committee,
the  Assembly  shall  have  due  regard  to  an  equitable
geographical distribution and to the need for countries
party to the Special Agreements established in relation with
the  Union  to  be  among  the  countries  constituting  the
Executive Committee.

 (5) (a)  Each member of the Executive Committee shall
serve from the close of the session of the Assembly which
elected it to the close of the next ordinary session of the
Assembly.

  (b)  Members of the Executive Committee may be ree
lected but only up to a maximum of two - thirds of such
members.

  (c)  The Assembly shall establish the details of
the rules  governing the election and possible reelection
of the members of the Executive Committee.

 (6) (a)  The Executive Committee shall:

 (i)  prepare the draft agenda of the Assembly;

 (ii)  submit proposals to the Assembly in respect of the
draft program and biennial budget of the Union prepared by
the Director General;

 (iii)  [deleted]

 (iv)  submit, with appropriate comments, to the Assembly
the periodical reports of the Director General and the
yearly audit reports on the accounts;

 (v)  take all necessary measures to ensure the execution
of the program of the Union by the Director General, in
accordance with the decisions of the Assembly and having
regard  to  circumstances  arising  between  two  ordinary
sessions of the Assembly;

 (vi)  perform such other functions as are allocated to it
under this Convention.

  (b  )  With respect to matters which are of interest
also to other Unions administered by the Organization, the
Executive Committee shall make its decisions after having
heard the advice of the Coordination Committee of the
Organization.

 (7)  (a  )  The Executive Committee shall meet once a
year in ordinary session upon convocation by the Director
General, preferably during the same period and at the same
place as the Coordination Committee of the Organization.

  (b  )  The  Executive  Committee  shall  meet  in
extraordinary  session  upon  convocation  by  the  Director
General, either on his own initiative, or at the request of
its Chairman or one - fourth of its members.

 (8) (a)  Each country member of the Executive Committee
shall have one vote.

  (b)  One - half of the members of the Executive
Committee shall constitute a quorum.

  (c)  Decisions shall be made by a simple majority
of the votes cast.

  (d  )  Abstentions shall not be considered as votes.

  (e)  A delegate may represent, and vote in the name
of, one country only.

 (9)  Countries of the Union not members of the Executive
Committee shall be admitted to its meetings as observers.

 (10)  The Executive Committee shall adopt its own rules
of procedure.

  Article 15

 [International Bureau]

 (1) (a)  Administrative  tasks  concerning  the  Union
shall be performed by the International Bureau, which is a
continuation of the Bureau of the Union united with the
Bureau  of  the  Union  established  by  the  International
Convention for the Protection of Literary and Artistic
Works.

 (b)  In  particular,  the  International  Bureau  shall
provide the secretariat of the various organs of the Union.

 (c)  The Director General of the Organization shall be
the chief executive of the Union and shall represent the
Union.

 (2)  The International Bureau shall assemble and publish
information  concerning  the  protection  of  industrial
property.  Each  country  of  the  Union  shall  promptly
communicate to the International Bureau all new laws and
official  texts  concerning  the  protection  of  industrial
property. Furthermore, it shall furnish the International
Bureau with all the publications of its industrial property
service of direct concern to the protection of industrial
property which the International Bureau may find useful in
its work.

 (3)  The International Bureau shall publish a monthly
periodical.

 (4)  The International Bureau shall, on request, furnish
any  country  of  the  Union  with  information  on  matters
concerning the protection of industrial property.

 (5)  The International Bureau shall conduct studies, and
shall  provide  services,  designed  to  facilitate  the
protection of industrial property.

 (6) The Director General and any staff member designated by
him shall participate, without the right to vote, in all
meetings of the Assembly, the Executive Committee, and any
other committee of experts or working group. The Director
General, or a staff member designated by him, shall be  ex
officio  secretary of these bodies.

 (7)  (a  )  The  International  Bureau  shall,  in
accordance with the directions of the Assembly and in
cooperation  with  the  Executive  Committee,  make  the
preparations  for  the  conferences  of  revision  of  the
provisions of the Convention other than Articles 13 to 17.

  (b)  The International Bureau may consult with
intergovernmental  and  international  non  -  governmental
organizations concerning preparations for conferences of
revision.

  (c)  The Director General and persons designated by
him shall take part, without the right to vote, in the
discussions at these conferences.

 (8)  The International Bureau shall carry out any other
tasks assigned to it.

  Article 16

 [Finances]

 (1) (a)  The Union shall have a budget.

  (b  )  The budget of the Union shall include the
income and expenses proper to the Union, its contribution to
the budget of expenses common to the Unions, and, where
applicable, the sum made available to the budget of the
Conference of the Organization.

  (c)  Expenses not attributable exclusively to the

Union but also to one or more other Unions administered by
the Organization shall be considered as expenses common to
the Unions. The share of the Union in such common expenses
shall be in proportion to the interest the Union has in
them.

 (2)  The budget of the Union shall be established with
due regard to the requirements of coordination with the
budgets  of  the  other  Unions  administered  by  the
Organization.

 (3)  The budget of the Union shall be financed from the
following sources:

 (i)  contributions of the countries of the Union;

 (ii)  fees and charges due for services rendered by the
International Bureau in relation to the Union;

 (iii)  sale of, or royalties on, the publications of the
International Bureau concerning the Union;

 (iv)  gifts, bequests, and subventions;

 (v)  rents, interests, and other miscellaneous income.

 (4) (a)  For  the  purpose  of  establishing  its
contribution towards the budget, each country of the Union
shall  belong  to  a  class,  and  shall  pay  its  annual
contributions on the basis of a number of units fixed as
follows:

  Class I . . 25

 Class II . . 15

 Class III . . 15

 Class IV . . 10

  Class V . . 5

  Class VI . . 3

 Class VII . . 1

  (b  )  Unless it has already done so, each country
shall  i  ndicate,  concurrently  with  depositing  its
instrument of ratification or accession, the class to which
it wishes to belong. Any  country may change class. If it
chooses a lower class, the country must announce such change
to the Assembly at one of its ordinary sessions. Any such
change shall take effect at the beginning of the calendar
year following the said session.

  (c)  The annual contribution of each country shall be
an amount in the same proportion to the total sum to be
contributed to the budget of the Union by all countries as
the number of its units is to the total of the units of all
contributing cou  ntries.

  (d)  Contributions shall become due on the first of
Jan  uary of each year.

  (e)  A country which is in arrears in the payment of

its contributions may not exercise its right to vote in any
of the organs of the Union of which it is a member if the
amount of its arrears equals or exceeds the amount of the
contributions due from it for the preceding two full years.
However, any organ of the Union may allow such a country to
continue to exercise its right to vote in that organ if, and
as long as, it is satisfied that the delay in payment is due
to exceptional and u  navoidable circumstances.

  (f)  If the budget is not adopted before the
beginning of a new financial period, it shall be at the same
level as the budget of the previous year, as provided in the
financial regulations.

 (5)  The amount of the fees and charges due for services
rendered by the International Bureau in relation to the
Union shall be established, and shall be reported to the
Assembly  and  the  Executive  Committee,  by  the  Director
General.

 (6) (a)  The Union shall have a working capital fund
which shall be constituted by a single payment made by each
country of the Union. If the fund becomes insufficient, the
Assembly shall decide to increase it.

  (b)  The amount of the initial payment of each
country to the said fund or of its participation in the
increase thereof shall be a proportion of the contribution
of  that  country  for  the  year  in  which  the  fund  is
established or the decision to increase it is made.

  (c)  The proportion and the terms of payment shall be
fixed by the Assembly on the proposal of the Director
General  and  after  it  has  heard  the  advice  of  the
Coordination Co  mmittee of the organization.

 (7) (a)  In the headquarters agreement concluded with
the country on the territory of which the Organization has
its headquarters, it shall be provided that, whenever the
working capital fund is insufficient, such country shall
grant  advances.  The  amount  of  these  advances  and  the
conditions on which they are granted shall be the subject of
separate agreements, in each case, between such country and
the Organization. As long as it remains under the obligation
to grant advances, such country shall have an  ex officio
seat on the Executive Committee.

  (b)  The country referred to in subparagraph(a) and
the Organization shall each have the right to denounce the
obligation  to  grant  advances,  by  written  notification.
Denunciation shall take effect three years after the end of
the year in which it has been notified.

 (8)  The auditing of the accounts shall be effected by
one or more of the countries of the Union or by external
auditors, as provided in the financial regulations. They
shall be designated, with their agreement, by the Assembly.

  Article 17

 [Amendment of Articles 13 to 17]

 (1)  Proposals for the amendment of Articles 13, 14, 15,
16, and the present Article, may be initiated by any country
member of the Assembly, by the Executive Committee, or by

the Director General. Such proposals shall be communicated
by the Director General to the member countries of the
Assembly  at  least  six  months  in  advance  of  their
consideration by the Assembly.

 (2)  Amendments to the Articles referred to in paragraph
(1) shall be adopted by the Assembly. Adoption shall require
three - fourths of the votes cast, provided that any
amendment to Article 13, and to the present paragraph, shall
require four - fifths of the votes cast.

 (3) Any amendment to the Articles referred to in paragraph
(1) shall enter into force one month after written noti
fications of acceptance, effected in accordance with their
respective constitutional processes, have been received by
the Director General from three - fourths of the countries
members  of  the  Assembly  at  the  time  it  adopted  the
amendment. Any amendment to the said Articles thus accepted
shall bind all the countries which are members of the
Assembly at the time the amendment enters into force, or
which become members thereof at a subsequent date, provided
that any amendment increasing the financial obligations of
countries of the Union shall bind only those countries which
have notified their acceptance of such amendment.

  Article 18

 [Revision of Articles 1 to 12 and 18 to 30]

 (1)  This Convention shall be submitted to revision with
a view to the introduction of amendments designed to improve
the system of the Union.

 (2)  For  that  purpose,  conferences  shall  be  held
successively in one of the countries of the Union among the
delegates of the said countries.

 (3) Amendments to Articles 13 to 17 are governed by the
provisions of Article 17.

  Article 19

 [Special Agreements]

 It is understood that the countries of the Union reserve
the right to make separately between themselves special
agreements for the protection of industrial property, in so
far as these agreements do not contravene the provisions of
this Convention.

  Article 20

 [Ratification or Accession by Countries of the Union; Entry
Into Force]

 (1) (a)  Any country of the Union which has signed this
Act may ratify it, and, if it has not signed it, may accede
to it. Instruments of ratification and accession shall be
deposited with the Director General.

  (b  )  Any country of the Union may declare in its
instrument  of  ratification  or  accession  that  its
ratification or accession shall not apply:

 (i)  to Articles 1 to 12, or

 (ii)  to Articles 13 to 17.

  (c  )  Any country of the Union which, in accordance
with subparagraph (b), has excluded from the effects of its
ratification or accession one of the two groups of Articles
referred to in that subparagraph may at any later time
declare that it e  xtends the effects of its ratification
or accession to that group of Articles. Such declaration
shall be deposited with the Director General.

 (2) (a)  Articles 1 to 12 shall enter into force, with
respect to the first ten countries of the Union which have
deposited instruments of ratification or accession without
making the declaration permitted under paragraph (1)(b)(i),
three  months  after  the  deposit  of  the  tenth  such
instrument of ratification or accession.

  (b)  Articles 13 to 17 shall enter into force, with
respect to the first ten countries of the Union which have
deposited instruments of ratification or accession without
making the declaration permitted under paragraph (1)(b)(ii),
three months after the deposit of the tenth such instrument
of ratification or accession  .

  (c)  Subject to the initial entry into force,
pursuant to the provisions of subparagraphs (a) and (b), of
each of the two groups of Articles referred to in paragraph
(1)(b)(i)  and  (ii),  and  subject  to  the  provisions  of
paragraph (1)(b), Articles 1 to 17 shall, with respect to
any country of the Union, other than those referred to in
subparagraphs (a) and (b), which deposits an instrument of
ratification or accession or any country of the  Union
which deposits a declaration pursuant to paragraph (1)  (c)
,  enter  into  force  three  months  after  the  date  of
notification by the Director General of such deposit, unless
a subsequent date has been indicated in the instrument or
declaration deposited. In the latter case, this Act shall
enter into force with respect to that country on the date
thus indicated.

 (3) With respect to any country of the Union which deposits
an instrument of ratification or accession, Articles 18 to
30 shall enter into force on the earlier of the dates on
which any of the groups of Articles referred to in paragraph
(1)  (b)  enters into force with respect to that country
pursuant to paragraph (2)  (a), (b),  or  (c)  .

  Article 21

 [Accession by Countries Outside the Union; Entry Into
Force]

 (1)  Any country outside the Union may accede to this
Act and thereby become a member of the Union. Instruments of
accession shall be deposited with the Director General.

 (2) (a)  With respect to any country outside the Union
which deposits its instrument of accession one month or more
before the date of entry into force of any provisions of the
present Act, this Act shall enter into force, unless a
subsequent date has been indicated in the instrument of
accession, on the date upon which provisions first enter
into force pursuant to Article 20(2)(a) or (b); provided
that:

 (i)  if Articles 1 to 12 do not enter into force on that
date, such country shall, during the interim period before
the entry into force of such provisions, and in substitution
therefor, be bound by Articles 1 to 12 of the Lisbon Act,

 (ii)  if Articles 13 to 17 do not enter into force on
that date, such country shall, during the interim period
before the entry into force of such provisions, and in
substitution therefor, be bound by Articles 13 and 14(3),
(4), and (5), of the Li  sbon Act.

 If a country indicates a subsequent date in its instrument
of accession, this Act shall enter into force with respect
to that country on the date thus indicated.

  (b  )  With respect to any country outside the Union
which deposits its instrument of accession on a date which
is subsequent to, or precedes by less than one month, the
entry into force of one group of Articles of the present
Act, this Act shall, subject to the proviso of subparagraph
(a), enter into force three months after the date on which
its accession has been notified by the Director General,
unless  a  subsequent  date  has  been  indicated  in  the
instrument of accession. In the latter case, this Act shall
enter into force with respect to that country on the date
thus indicated.

 (3)  With respect to any country outside the Union which
deposits its instrument of accession after the date of entry
into force of the present Act in its entirety, or less than
one month before such date, this Act shall enter into force
three months after the date on which its accession has been
notified by the Director General, unless a subsequent date
has been indicated in the instrument of accession. In the
latter case, this Act shall enter into force with respect to
that country on the date thus indicated.

  Article 22

 [Consequences of Ratification or Accession]

 Subject to the possibilities of exceptions provided for in
Articles 20(1) (b) and 28(2), ratification or accession
shall a  utomatically entail acceptance of all the clauses
and admission to all the advantages of this Act.

  Article 23

 [Accession to Earlier Acts]

 After the entry into force of this Act in its entirety, a
cou  ntry may not accede to earlier Acts of this Convention.

  Article 24

 [Territories]

 (1)  Any country may declare in its instrument of
ratification  or  accession,  or  may  inform  the  Director
General by written notification any time thereafter, that
this Convention shall be applicable to all or part of those
territories, designated in the declaration or notification,
for the external relations of which it is responsible.

 (2)  Any country which has made such a declaration or
given such a notification may, at any time, notify the
Director General that this Convention shall cease to be
applicable to all or part of such territories.

 (3) (a)  Any declaration made under paragraph (1) shall
take  effect  on  the  same  date  as  the  ratification  or
accession in the instrument of which it was included, and
any notification given under such paragraph shall take
effect three months after its notification by the Director
General.

  (b)  Any notification given under paragraph (2)
shall take effect twelve months after its receipt by the
Director General.

  Article 25

 [Implementation of the Convention on the Domestic Level]

 (1) Any country party to this Convention undertakes to
adopt, in accordance with its constitution, the measures
necessary to ensure the application of this Convention.

 (2) It is understood that, at the time a country deposits
its instrument of ratification or accession, it will be in a
position under its domestic law to give effect to the
provisions of this Convention.

  Article 26

 [Denunciation]

 (1)  This Convention shall remain in force without
limitation as to time.

 (2)  Any country may denounce this Act by notification
addressed to the Director General. Such denunciation shall
constitute also denunciation of all earlier Acts and shall
affect only the country making it, the Convention remaining
in full force and effect as regards the other countries of
the Union.

 (3)  Denunciation shall take effect one year after the
day  on  which  the  Director  General  has  received  the
notification.

 (4)  The right of denunciation provided by this Article
shall not be exercised by any country before the expiration
of five years from the date upon which it becomes a member
of the Union.

  Article 27

 [Application of Earlier Acts]

 (1)  The present Act shall, as regards the relations
between the countries to which it applies, and to the extent
that it applies, replace the Convention of Paris of March
20, 1883. and the subsequent Acts of revision.

 (2) (a)  As regards the countries to which the present
Act does not apply, or does not apply in its entirety, but
to which the Lisbon Act of October 31, 1958, applies, the
latter shall remain in force in its entirety or to the

extent that the present Act does not replace it by virtue of
paragraph (1).

 (b)  Similarly,  as  regards  the  countries  to  which
neither the present Act, nor portions thereof, nor the
Lisbon Act applies, the London Act of June 2, 1934, shall
remain in force in its entirety or to the extent that the
present Act does not replace it by virtue of paragraph (1).

 (c)  Similarly,  as  regards  the  countries  to  which
neither the present Act, nor portions thereof, nor the
Lisbon Act, nor the London Act applies, The Hague Act of
November 6, 1925, shall remain in force in its entirety or
to the extent that the present Act does not replace it by
virtue of paragraph (1).

 (3)  Countries outside the Union which become party to
this Act shall apply it with respect to any country of the
Union not party to this Act or which, although party to this
Act, has made a declaration pursuant to Article 20(1)(b)(i).
Such countries recognize that the said country of the Union
may apply, in its relations with them, the provisions of the
most recent Act to which it is party.

  Article 28

 [Disputes]

 (1)  Any dispute between two or more countries of the
Union concerning the interpretation or application of this
Convention, not settled by negotiation, may, by any one of
the countries concerned, be brought before the International
Court of Justice by application in conformity with the
Statute of the Court, unless the countries concerned agree
on some other method of settlement. The country bringing the
dispute before the Court shall inform the International
Bureau; the International Bureau shall bring the matter to
the attention of the other countries of the Union.

 (2)  Each country may, at the time it signs this Act or
deposits  its  instrument  of  ratification  or  accession,
declare that it does not consider itself bound by the
provisions of paragraph (1). With regard to any dispute
between such country and any other country of the Union, the
provisions of paragraph (1) shall not apply.

 (3)  Any country having made a declaration in accordance
with the provisions of paragraph (2) may, at any time,
withdraw its declaration by notification addressed to the
Director General.

  Article 29

 [Signature, Languages, Depositary Functions]

 (1) (a)  This Act shall be signed in a single copy in
the  French  language  and  shall  be  deposited  with  the
Government of Sweden.

  (b  )  Official texts shall be established by the
Director General, after consultation with the interested Go
vernments, in the English, German, Italian, Portuguese,
Russian and Spanish languages, and such other languages as
the Assembly may designate.

 (c)  In  case  of  differences  of  opinion  on  the
interpretation of the various texts, the French text shall
prevail.

 (2)  This  Act  shall  remain  open  for  signature  at
Stockholm until January 13, 1968.

 (3)  The Director General shall transmit two copies,
certified by the Government of Sweden, of the signed text of
this Act to the Governments of all countries of the Union
and, on request, to the government of any other country.

 (4)  The Director General shall register this Act with
the Secretariat of the United Nations.

 (5)  The Director General shall notify the Governments
of all countries of the Union of signatures, deposits of
instruments  of  ratification  or  accession  and  any
declarations included in such instruments or made pursuant
to Article 20(1)(c), entry into force of any provisions of
this Act, notifications of denunciation, and notifications
pursuant to Article 24.

  Article 30

 [Transitional Provisions]

 (1)  Until the first Director General assumes office,
references in this Act to the International Bureau of the
Organization or to the Director General shall be deemed to
be refer  ences to the Bureau of the Union or its Director,
respectively.

 (2)  Countries of the Union not bound by Articles 13 to
17 may, until five years after the entry into force of the
Convention establishing the Organization, exercise, if they
so desire, the rights provided under Articles 13 to 17 of
this Act as if they were bound by those Articles. Any
country desiring to exercise such rights shall give written
notification to that effect to the Director General; such
notification  shall  be  effective  from  the  date  of  its
receipt. Such countries shall be deemed to be members of the
Assembly until the expiration of the said period.

 (  3)  As long as all the countries of the Union have not
become Members of the Organization, the International Bureau
of the Organization shall also function as the Bureau of the
Union, and the Director General as the Director of the said
Bureau.

 (4)  Once all the countries of the Union have become
Members of the Organization, the rights, obligations, and
property, of the Bureau of the Union shall devolve on the I
nternational Bureau of the Organization.

  - -- - -- END - -- - --D

  INDEX

  A

  A4 size paper  . .  601 , 608.01 ,
  608.02 , 1825

  A.I. series of patents  . .  901.04

  Abandoned Application. (See also Abandonment.)

 Accessability to public  . .  103

 Counting, when processed  . .  711.04(a)

 Definition  . .  203.05

 Destruction of  . .  711.04

 Disposal  . .  103 , 711.04

 Fee on petition to revive  . .  711.03(c)

 Issue fee, failure to pay  . .  203.07 , 712

 Listed  . .  1302.04

 Matter reproduced in substitute  . .  201.09

 Ordering  . .  711.04(b) ,
  905.03

 Papers received, handling  . .  508.02

 Petition, Period for response after  .  1002

 Provisional application  . .  201.04(b) ,
  201.11

 Reference use  . .  901.02 , 2127

 Referred to in issued patent  . .  103 , 1302.04

 Retention Fee  . .  202.01 , 506 ,
  601.01(a)

 Retention label  . .  1302.07

 Revival  . .  711.03(c) ,
  1893.02

  Provisional application  . .  711.03(e)

 Storage  . .  711.04(b)

 When open to the public  . .  103

  Abandoned file. (See Abandoned Application; Abandonment.)  
  1302.07

  Abandoned Files Repository  . .  608.02(c) ,
  707.13 ,

 711.01, 711.03(c), 711.04(a),

 711.04(b), 1302.07

  Abandonment (see also Abandoned application)  711

 After allowance  . .  711.05

 Amendment late  . .  711.02 , 714.17
  , 2305.03

 Appeal dismissal  . .  1215.04

 Appeal withdrawal  . .  1215.01 to
  1215.03

 Assignee must consent  . .  711

 Change of address  . .  711.03(c)

 Court case  . .  1216

 Date of  . .  711.04(a)

 Destroys continuity  . .  201.11

 Express  . .  711 , 711.01

  . .  Counted as
  action  . .  1705

  File wrapper continuation (FWC) Rule 1.62  
  201.06(b)

  Issue fee not paid  . .  712

  Issue fee paid  . .  711.05

 Failure to file property rights statement  150

 Failure to pay Issue fee  . .  712

 Failure to prosecute  . .  711.02

 Formal  . .  711 , 711.01

 Forwarding  . .  711.04(a)

 Incomplete response  . .  711.03(a)

 Incomplete response, Review by Primary  1004

 Invention abandoned  . .  706.02(d)

 No response  . .  711 , 711.02

 Notification of  . .  711.02 ,
  711.04(c)

 Of appeal  . .  1210

 Of invention  . .  706.02(d) ,
  2138.03

 Papers received after  . .  508.02

 Petition to revive  . .  711.03(c) ,
  711.04(c)

 Petition to withdraw holding of

  Examiner's statement  . .  711.03(c) ,
  711.03(d)

 Prior application  . .  201.06(a)

 Provisional application  . .  201.04(b) ,
  201.11

 Pulling  . .  711.04(a)

 Reconsideration  . .  711.03 ,
  711.03(c)

  Failure to respond  . .  711.03(b)

  Insufficiency of response  . .  711.03(a)

 Reissue  . .  1416

 Revival  . .  711.03 ,
  711.03(c) , 712

  Rule 1.60  . .  201.06(a)

 S hortened statutory period

  expired  . .  710.02(d) ,
  711.04(a)

 Special situations  . .  711.02(b)

 Termination of proceedings  . .  201.11 ,

 711.02(c), 712

 Undelivered action  . .  707.13

 Unintentional  . .  711.03(c)

 Withdrawal of holding  . .  711.03(c) ,
  711.04(c)

  Abbreviation, Periodical citation  . .  707.05(e)

  Abbreviature and Abstract publication  . .  711.06

 Citation  . .  711.06(a)

 Publication opens file to inspection  103

  Abstract for Defensive Publication  . .  711.06

  Abstract of international application  . .  1826

  Abstract of the disclosure  . .  608.01(b) ,

 1302.01,1302.04

  Abstract publication  . .  711.06

  Accelerated Examination  . .  708.02

  Access (see also Inspection; Power of attorney):

 Attorney not of record  . .  402 , 405

 Authorized by Commissioner  . .  104

 Disbarred attorney  . .  105

 International application  . .  110

 Pending application  . .  101 , 103 , 104
  , 106

 Petition  . .  103

 Protested application  . .  1901.07

 Provisional application  . .  103 , 104

  Accident or inadvertence (see also Reissue application)  1401
  , 1414

  Accounts, Deposit  . .  509.01

  Acknowledgment of protest  . .  1901.05

  Act. (See Statutes; Statutes, revised.)

  Action (see also Letter, Examiner's):

 Advisory action  . .  706.07(f) ,
  714.13

 After another examiner's action  . .  706.04

 After Board decision  . .  1214.01 to
  1214.07

 After Board decision reversing Examiner  .  1214.04

 After Board decision sustaining Examiner  1214.06

 After interference  . .  2363

 Amendment after final rejection  . .  706.07(f) ,

 714.12, 714.13

 Citation of references  . .  705.05 , 710.06

 Claim summary  . .  707.07(i)

 Claims in excess of filing fee  . .  714.10

 Completeness  . .  707.07 ,
  707.07(a)

 Copy to applicant  . .  707.12

 Copies of references  . .  707.05(a)

 Correctness, Period for response  . .  710.06

 Counted  . .  1705

 Crosses amendment  . .  714.05

 Date  . .  707.11

 Examiner's  . .  707

 File wrapper endorsement  . .  707.10 , 719.01

 File wrapper entry  . .  707.10

 Final rejection  . .  706.07 to
  706.07(f) , 713.09

 Foreign priority determination  . .  201.13 to 201.16

 Formal matter  . .  707.07(a) ,
  707.07(e) ,

 707.07(j), 714.02

 Forms used  . .  707

 Incorrect citation of references  . .  710.06

 Informal Application  . .  702.01

 Mailing  . .  707.12

 Original in file wrapper  . .  707.10 , 707.12

 Patentability report  . .  705 , 705.01(c)

 Piecemeal examination  . .  707.07(a) ,
  707.07(g)

 Primary Examiner's personal attention  707.01 , 1004

 Priority determination, foreign  . .  201.13 - 201.1

 Reopening prosecution  . .  1003

 Response time computation  . .  710.01(a) ,
  710.05

 Restriction requirement  . .  Chapter 800

 Returned  . .  707.13

 Review  . .  Introduction

 Shortened statutory period  . .  710.02 ,
  710.02(b)

 SPE's personal attention  . .  707.02(a)

 Supplemental  . .  710.06 , 714.05

 Suspension  . .  709

 Suspension, Primary's Attention  . .  1004

 Suspension, Group Director's attention  1003

 Third, SPE reviews  . .  707.02(a)

 Time limit  . .  710.02 ,
  710.02(c)

  Additional Improvement series of patents  .  901.04

  Address, Change of Correspondence  . .  601.03 ,
  711.03(c)

  Address, Correspondence  . .  403

  Address of applicant  . .  605.03

  Address of Patent and Trademark Office  . .  501 , 502

  Address of patent owner  . .  2222

  Address of unavailable inventor  . .  409.03(e)

  Address to file reexamination  . .  2224

  Administration, Letters of  . .  409.01(b) ,
  409.01(c) ,

 409.01(e)

  Administration of oath  . .  604

  Administrative Instructions, PCT  . .  AppendixAI

  Administrator or executor  . .  409.01

 Allowance and Issue  . .  409.01(f)

 Application by, After discharge  . .  409.01(c)

 Assigned application, Inventor dies  .  409.01(e)

 Authority  . .  409.01(b)

 Consular certificate  . .  409.01(d)

 Foreign country  . .  409.01(d)

 Heir  . .  409.01 ,
  409.01(a) , 409.01(d)

  Prosecution by  . .  409.01(a)

 Intervention not required  . .  409.01(f)

 Refuses to sign  . .  409.03(c)

 Specification form  . .  605.05

  Admissions by applicant  . .  706.02(c) ,
  2129 ,

 2133.03(c)

 Jepson Claim  . .  2129

  Admissions in Reexamination  . .  2217 , 2258

  Advantages over prior art  . .  707.07(f) ,
  1302.14

  Adverse recommendation under 37 CFR 1.312  .  714.16(d) ,
  714.16(e) , 714.19

  Advisory action  . .  706.07(f) ,
  714.13

  Affidavit. (See Oath.)

  Affidavit, swearing back of reference (37 CFR 1.131)

 706.02(k), 715, 2133.01, 2133.02, 2133.03(c)

 Acts relied upon  . .  715.07(c)

  NAFTA/WTO/this country  . .  706.02(c) ,
  715.07(c)

 Best mode, failure to disclose  . .  715.10

 Coauthorship  . .  715.01(c)

 Common assignee, reference and application  715.01(b) ,
  718

 Compared to Rule 132 Affidavit  . .  715.01

 Completion of invention  . .  715 , 2133.03(c)

 Conception (see also Conception)  . .  2138.01

 Copies from prior applications  . .  201.06(a)

 Dedication to public  . .  715

 Derivation  . .  715.07(c)

 Diligence (see also Diligence)  . .  715.07(a) ,
  2138.01

 Effective filing date  . .  715

 Exhibit, Disposition  . .  715.07(d)

 Formal requirements  . .  715.04

  Facts and documentary evidence  .  715.07

  Timely presented  . .  715.09

 Genus-species  . .  715.03

 Generic claim  . .  715.02

 Interference testimony equivalent to  715.07(b)

  NAFTA/WTO/this country  . .  715.07(c)

 Overcome patent  . .  715

 Prior public use/sale  . .  715.10

 Priority time charts  . .  2138.01

 Proper use of  . .  715

 Reduction to practice (see also Reduction to Practice)  
  2138.01

 Reference date to be overcome  . .  715

 Reference is:

  Common assignee  . .  715.01(b) , 718

  Joint patent to applicant and another  715.01(a)

  Patent claiming same invention  .  715.05 , 2138.01

  Publication of applicant's own invention  
  715.01(c)

 Sufficiency of  . .  715.08

 Uruguay Round Agreements Act (URAA)  .  715

 When used  . .  706.02(b) ,
  706.02(k) , 715 , 2132.01

 Who may make affidavit  . .  706.02(b) ,

 706.02(k), 715.04

 Withdrawn rejection  . .  715

  Affidavits, traversing rejections (37 CFR 1.132)  716

 Attorney arguments  . .  716.01(c)

  Inoperability of references  . .  716.07 , 2145

  Reference attributed to applicant  716.10

 Attribution, of reference to applicant  716.10

 Commercial success, evidence  . .  716.03

  Commensurate in scope with claimed invention  
  716.03(a)

  Derived from claimed invention  .  716.03(b)

  Design applications  . .  716.03(b)

  Sales figures  . .  716.03(b)

 Commonly owned patent  . .  718

 Comparison with closest prior art  . .  716.02(e)

 Copying, evidence  . .  716.06

 Computer programming cases  . .  2106.02

 Disclosure, sufficiency  . .  716.09

 Disclosure, utility and operability  .  716.08

 Evidence:

  Consideration of  . .  716.01

  Publications  . .  716.02(g)

  Objective  . .  716.01(a)

  Compared to opinion evidence  .  716.01(c)

  Probative value  . .  716.01(c)

  Weighing against prima facie case  .  716.01(d) ,

 716.05

  Secondary  . .  716.01(b)

  Timeliness  . .  716.01

 Failure of others (see Long-felt need)

 Long-felt need  . .  716.04

 Reference attributed to applicant  . .  716.10

 Sufficiency of  . .  716.09

 Synergism  . .  716.02(a)

 Skepticism of experts  . .  716.05

 Timeliness  . .  716.01

 Unexpected Results, allegations  . .  716.02

 Unexpected Results, evidence  . .  716.02(a)

  Advantages not disclosed or inherent  716.02(f)

  Burden on applicant  . .  716.02(b)

  Commensurate in scope with claimed invention  
  716.02(d)

  Genus or species  . .  716.02(d)

  Range, claimed  . .  716.02(d)

  Weighing evidence of  . .  716.02(c)

  Affidavits in prior art citations  . .  2205

  After final practice in reexamination  . .  2272

  Affirmation. (See Oath.)

  After final practice  . .  706.07(f)

 In transitional application  . .  706.07(g)

 In reexamination  . .  2272

  Agent. (See Attorney; Power of attorney.)

  Agent for international application  . .  1807 , 1864.04

  Aggregation  . .  2173.05(k)

  Agriculture, Department of, Plant patents  .  1608

  Agriculture Research Service  . .  1609

  Algorithms  . .  706.03(a) ,
  2106 , 2106.02

  Alien Property Custodian publication  . .  901.06(c)

  Allowance and issue (see also Allowed application)  1300

 Abandonment after  . .  711.05

 All claims allowed, Shortened period  710.02(b)

 Amendment, Examiner's  . .  1302.04

 Amendment, Examiner's, Case in issue,

  Rule 312  . .  714.06 , 1305

 Amendment, Examiner's, Printer Waiting  1302.04 ,
  1309.02

 Amendment after

  (See Amendment: After allowance.)

 Amendment after allowance of all claims  .  714.14 ,
  1303.01

 Amendment after D-10 notice  . .  107.02 , 1304.01

 Amendment at time of  . .  714.15

 Amendment crossing  . .  714.15

 Assigned application  . .  307

 Assignment Division  . .  409.01(b) ,
  1302.11

 Blue Slip  . .  903.07 ,
  903.07(b)

 Cancellation of claims after appeal  .  1302.04(e)

 Cancellation of claim lost in interference  1302.04(d)

 Cancellation on nonelected claim by

  Examiner's amendment  . .  821.01 , 821.02

 Cancellation of nonstatutory claim  .  1302.04(b)

 Claim copied from patent  . .  2307.03

 Claim for Official Gazette  . .  1203.10 ,
  1302.09

 Claim renumbering  . .  608.01(j) ,
  1302.01 , 1302.04(g)

 Claim renumbering, Dependent claim  .  608.01(n) ,

 1302.01

 Classification  . .  903.07 ,
  903.07(b)

 Classification change after allowance  903.07

 Classification in other Group  . .  903.07(b)

 Classification slip notation  . .  1302.10

 Companion application referred to  . .  1302.04 ,

 1302.07

 Copending Application:

  File wrapper notations  . .  202.02 , 1302.09

  Parent case data  . .  1302.04(f)

  Retention label  . .  1302.07

 Correction of error after allowance  .  714.16

 Cross-reference  . .  903.07(a)

 D-10 notice  . .  130 , 1304

 D-10 notice, Amendment after  . .  1304.01

 Deceased inventor, Notice of allowance  1303.03

 Definition  . .  203.04

 Design application  . .  1505

 Disclosure restriction  . .  1302.01

 Drawing, class & subclass notation  .  903.07

 Drawing, Draftsman's stamp  . .  608.02(o)

 Drawing correction  . .  608.02(z) ,
  1302.04

 Drawing in patented file  . .  608.02(i) ,
  905.03

 Drawing notations  . .  1302.10

 Erasure of markings  . .  1302.01

 Examiner's amendment.

  (See Examiner's amendment.)

 File wrapper notation  . .  1302.09

 Final review  . .  1302

 First action-cite pertinent art  . .  1302.12

 Foreign application  . .  1302.06

 Forfeited application  . .  712

 Formal matters  . .  714.16 , 1302.01

 Formal matters, Examiner's amendment and changes  714.16
  , 1302.04

 Formal matters, Specification rewritten  .  1302.02

 Full first or middle name required  .  605.04(b)

 General review  . .  1302.01

 Interference  . .  2305.04 ,
  2307.03

 Interference, Notation  . .  2301.01(b) ,
  2305.04

 Interference search  . .  1302.08

 International classification  . .  903.09

 Intervention by executor  . .  409.01(f)

 Issue Division  . .  1309

 Issue Division, Jurisdiction of case  1305

 Issue in another Group without transfer  .  903.07(b)

 Jurisdiction of case  . .  1305

 Listing of references  . .  1302.12

 Nonelected claims, Canceled by Examiner's amendment  
  821.01 , 821.026

 Notice of allowance (see also Notice

  of allowance  . .  1303

 Patentability report, Print disposal  608.02(n) ,
  705.01(d)

 Plant application  . .  1611

 "Printer Waiting"  . .  1302.04 ,
  1309.02

 Pro se  . .  707.07(j)

 Protest against issue  . .  1901

 Record room  . .  905.03

 Reference listing  . .  1302.12

 Reissue application  . .  1455

 Rejection after allowance  . .  706.04 , 706.05
  ,

 1308.01

 Related applications File wrapper notations  202.02 ,

 1302.09

 Related applications, Parent case data  1302.04(f)

 Related applications, retention label  1302.07

 Reopening prosecution  . .  1303.01 ,
  1308.01

 Retention labels  . .  1302.07

 Review by Examiner  . .  1302.01 ,
  1302.13

 Review by Primary  . .  903.07

 Rewritten specification requirement  .  1302.02

 Secret case  . .  130 , 1304

 Signature inconsistent  . .  605.04(b)

 Signing file wrapper  . .  1302.13

 Slip  . .  903.07

 Special  . .  908.01 ,
  710.02(b) , 1301

 Specification, Clean copy required  .  1302.02

 Statement of invention  . .  1302.01

 Status letter of allowability  . .  1302.03

 Suggestion of claims  . .  2305.04

 Supplemental oath after  . .  603.01

 Terminology correspondence of specification and claims  
  1302.01

 Title of invention  . .  1302.01 ,
  1302.04(a)

 Title change by Examiner  . .  606.01 ,
  1302.04(a)

 Title search, Continuing application  306

 Transfer  . .  903.08

 Undelivered notice of allowance  . .  1303.02

 Withdrawal from issue. (See Withdrawal from issue.)

 Withholding from issue, Secrecy order case  1304

  Allowance, Reasons for  . .  1302.14

  Allowed application (see also Allowance and issue):

 Custody of Patent Issue Division  . .  203.04

 Definition  . .  203.04

 File wrapper data  . .  1302.09 , 1303

 Rejection  . .  1308.01

 Suggesting claim for reference  . .  1003 , 2305.04

  Allowed claim, rejection  . .  706.04

 By Board of Patent Appeals and Interferences  
  1213.02

  Alpha subclass  . .  903.02(c)

  Alteration of application after execution  .  605.04

  Alteration of application before execution 506 ,

 601.01(a), 608.01

  Alteration of patent application  . .  506

  Alternative phrase in claim  . .  2173.05(h)

  Amended application (definition)  . .  203.03

  Amended application, Inspection for transfer  903.08(c)

  Amendment (see also Response)  . .  714

 Accidental entry  . .  714.21

 Adding excess claims  . .  714.10

 After abandonment  . .  711.02 , 714.17

 After all claims allowed  . .  714.14

 After allowance:

  Approval  . .  714.16

  Canceling claim  . .  714.16

  Claim copied from patent  . .  714.16(a) ,
  2307.03

  Entry in part  . .  714.16(e)

  Examiner's action  . .  714.16 ,

  714.16(d) , 714.16(e)

  Excess claims  . .  714.16(c)

  Formal matters  . .  714.16 ,
  714.16(d)

  Handling  . .  714.16(d)

  Mailed before allowance  . .  714.15

  Motion under § 1.633(c)(2)  . .  714.16(b) ,

 2333, 2363.03

  Order 3311  . .  714.16(d)

  Patentability pointed out  . .  714.16

  Petition as to refusal  . .  1102.02(c)

  Reason for adverse action  . .  714.16 ,
  714.16(d)

  Renumbering claims  . .  714.16(e)

  "Secrecy order" case  . .  130

  Supplemental oath  . .  603.01 , 714.16

 After Examiner's answer  . .  1210

 After appeal, Before Examiner's answer  1207

 After Board decision  . .  1204.01 -
  1214.07

 After death of attorney  . .  406

 After final rejection  . .  706.07(f) ,
  714.12 , 714.13

 After final rejection, Entered in part  714.20

 Amendment of  . .  714.24

 Appeal, After Examiner's answer  . .  1210

 Appeal before or with  . .  1207

 Applicants must sign  . .  714.01(a)

 At allowance  . .  714.15

 Attorney not of record  . .  405

 Basis in disclosure  . .  608 , 706.03(c)
  ,

 2163.03, 2163.07

 Before first action  . .  608.04(b) ,
  707.04 , 714.09

 Board rejection avoided  . .  1214.01

 Brackets required  . .  714.22

 Canceled matter restored  . .  608.01(s)

 Canceling all claims  . .  711.01 , 714.19

 Canceling appealed claims  . .  1215.01 to
  1215.03

 Claim added, Terminology basis  . .  608.01(o) ,

 2163.03, 2163.07

 Claim numbering  . .  608.01(j) ,
  1302.01 , 1302.04(g)

 Claims added in excess of filing fee  714.10 ,

 714.16(c)

 Complete response required  . .  714.02 , 714.04

 Conditional  . .  1302.04

 "Copier" copies  . .  714.07

 Copying patent claim. (See Claim copied from patent.)

 Crossing allowance  . .  714.15

 D-10 notice preceding  . .  130 , 1304

 Date of receipt  . .  505 , 710.01(a)
  , 714.18

 Date stamp:

  Group receipt  . .  714.18

  Office date  . .  505 , 710.01(a)
  , 714.18

 Declaration  . .  602.01

 Defective directions for entry  . .  714.20 , 714.23

 Delivered to wrong group  . .  508.01

 Depositing  . .  502

 Directions for entry  . .  714.22 , 714.23

 Discharged attorney  . .  714.19

 Discourteous  . .  714.19 , 714.25

 Drawing  . .  608.02(p) ,
  608.02(q) , 1302.05

 Drawing, Disposition  . .  608.02(x)

 Drawing, New matter  . .  608.04 , 714.19

 Duplicate  . .  719.01(a)

 Easily erasable paper forbidden  . .  714.07 , 714.19

 Entered in part  . .  714.20

 Entered in part, After allowance, 37 CFR 1.312  
  714.16(e)

 Entry  . .  714.18 ,
  719.01(a) , 1303.01

 Entry denied  . .  714.17 , 714.19
  , 714.21

  Appeal case  . .  1207 , 1214.07

  Defective directions  . .  714.23

  Drawing correction  . .  608.02(x)

  Drawing new matter  . .  608.04

  List  . .  714.19

  Paper number  . .  714.21

  Period for response expired  . .  714.17

  Substitute specification

  unnecessary  . .  714.19 , 714.20

 Entry directions  . .  714.22 , 714.23

 Entry inadvertent  . .  714.21

 Entry in reexamination  . .  2234

 Entry of amendment filed in connection with motions in
  interference  .  2364

 Examiner's (see also Examiner's amendment)  706.07(f) ,
  1302.04

 Excess claims added  . .  714.10 ,
  714.16(c)

 Facsimile  . .  502.01

 Fees, additional  . .  710.02(c)

 File wrapper endorsement  . .  714.18 , 719.01

 Formal matters, compliance with  . .  714.02

 Fully responsive  . .  714.02

 Heading  . .  502

 Immediate inspection  . .  714.05

 Improper signature  . .  502.02 ,
  714.01(a) to 714.01(d)

  Ratification  . .  714.01(a) ,
  714.08

 Inaccurate  . .  707.07(h) ,
  714.23

 Incomplete response  . .  711.02(a) ,
  711.03(a) ,

 714.02 to 714.04

  Time for completing  . .  710.02(c) ,
  714.03

 Increasing claims in excess of fee under 37 CFR 1.312  
  714.10 , 714.16(c)

 Ink, Not permanent  . .  714.07

 Inspection by examiner  . .  714.05

 Interference  . .  2364.01

 Inventorship (See Inventor-Change of)

 Joint to sole, Interference  . .  2334

 Jurisdiction of case not with Examiner  714.16 ,

 714.19, 1305

 Late  . .  710.02(d) , 711
  , 714.17

 Literature citation in specification  608.01(p)

 Motion under 37 CFR 1.633(c)(2),

  Case in issue  . .  714.16(b)

 Name change on file wrapper  . .  605.04(c) ,
  719.02(b)

 New matter  . .  608.04 ,
  706.03(o) , 2163.06

 Nonentry (see also Amendment,

  entry denied)  . .  607 , 714.19

 Nonresponsive  . .  714.02 to 714.04

 Nonresponsive, Time to

  perfect response  . .  710.02(c) ,
  714.03

 "Not entered"  . .  714.19 , 714.21

 Oath, Original  . .  602.01

 Objectionable remarks  . .  714.19 , 714.25

 Office date stamp  . .  505 , 710.01(a)

  , 714.18 , 1303

 Paper number  . .  714.18

 Patentability pointed out  . .  714.02 , 714.04

 Period for response ends Sunday

  or holiday  . .  505 , 710.01(a)
  , 710.05

 Permanent ink required  . .  714.07 , 714.19

 Plant application  . .  1610

 Post Office address, Applicant  . .  605.03

 Preliminary  . .  506 , 714.09

  Excess claims  . .  506 , 714.10

  New matter  . .  608.04(b)

 Ratification:

  Signature defective  . .  714.01(a)

  Telegram  . .  714.08

 Receipt  . .  501 to 505 , 511
  , 512

 Received after allowance  . .  714.15 , 1303.01

 Recommendation by Board  . .  1213.01

 Reexamination  . .  2250

 Reinstatement of canceled matter  . .  714.24

 Reissue  . .  1453

 Request by patent owner  . .  2221

 Requirements of  . .  714.02

 Residence change  . .  719.02(b)

 Responsive  . .  714.02 , 714.04

 Return, After entry on file wrapper  .  719.01

 Ribbon copy  . .  719.01(a)

 Rule 1.312 (see also Amendment

  after allowance)  . .  714.16 , 1303.01

 Several same day  . .  714.18

 Signature improper  . .  714.01(a) to
  714.01(d)

 Signature missing  . .  714.01(a)

 Signature required  . .  605.04 to 605.05
  , 714.01

 Signed by applicant, Not by

  attorney of record  . .  714.01(d)

 Signed by attorney not of record  . .  405 , 714.01(c)

 Supervisory primary examiner  . .  714.13 , 714.16
  , 714.18

 Support by original claim  . .  608.01(l)

 Telegram  . .  714.08

 Telephone number  . .  713.01 , 714.01

 Unsigned  . .  714.01(a)

  Ratification of  . .  710.02(c) ,
  714.01(a)

 Wrong Group  . .  508.01

  Analogous art  . .  904.01(c) ,
  1302.14 , 2131.05 ,

 2141.01(a)

  Analysis of claims  . .  904.01

  Answer all matters traversed  . .  707.07(f)

  Answer on remand  . .  1212

  Antecedent lacking  . .  706.03(d) ,
  1302.01 , 2173.05(e)

  Anticipation  . .  706.02(a) ,
  707.07(d) , 2131 , 2133.06

 Affidavit to overcome  . .  2132.01

 Analogous art  . .  2131.05

 Definition of  . .  2131

 Genus-species  . .  2131.02

 Generic chemical formula  . .  2131.02

 Meaning of:

  "By others"  . .  2132

  "In this country"  . .  2132

  "Known or used"  . .  2132 ,
  2133.03(a)

  "Patented in this or a foreign country"  2132

 Multiple references, circumstances where

  permitted  . .  2131.01

 One-year grace period  . .  2133

 On sale (see On Sale)

 Ranges  . .  2131.03

 Rejections based on publications and patents  
  2133.02

 Prima facie case  . .  2132.01

 Public Use (see Public Use)

 Secondary considerations, evidence of  2131.04

  Apostille  . .  602.04(a)

  Apparatus, Process or product and  . .  806.05(e) to
  806.05(g)

  Appeal  . .  Chapter 1200

 Abandonment  . .  1210

 Actions subsequent to Examiner's answer  .  1210

 Administrative handling  . .  1204

 Affidavit after appeal  . .  1212

 Affidavit after Board decision  . .  1214.01 ,
  1214.07

 Amendment after Examiner's answer  . .  1210 ,

 1211,1211.01

 Amendment before Examiner's answer  .  1207

 Amendment for purpose of  . .  714.12 , 714.13

 Amendment makes case allowable  . .  1207

 Answer, Examiner's  . .  1208

 Better reference before brief  . .  1208.01

 Board remands case to Examiner  . .  1200 , 1210 ,

 1211, 1212, 1302.14

 Brief  . .  1206

 Brief in reexamination  . .  2274

 Cancellation of withdrawn claims  . .  1214.05

 Civil Suits  . .  1216.02

 Claims copied from patent, Time limit  710.02(c)

 Claims included  . .  1205

 Clerk, Group  . .  1204

 Concurrently with Interference  . .  1210 , 2315

 Concurrently with prosecution before Examiner  1210

 Conference  . .  1208 , 1302.14

 Constitution of the Board  . .  1203

 Court  . .  1216

 Court, C.A.F.C  . .  1216.01

 Decision by Board  . .  1213

 Dismissal  . .  1215.04

 Examiner reversed  . .  1214.04

 Examiner sustained  . .  1214.06

 Examiner's answer  . .  1208

 Failure to prosecute appeal  . .  1215.04

 Fee  . .  1205

 From Board Decision  . .  1216 to 1216.02

 Hearing  . .  1209

 Introduction  . .  1201

 Jurisdiction  . .  1210

 Matter subject to  . .  Introduction ,
  706.01

 Multiplicity rejection  . .  2173.05(n)

 New ground of rejection by Board  . .  1214.01

 New ground of rejection by Examiner in Examiner's answer
  . .  1207 , 1208.01

 New matter affecting claim  . .  608.04(c)

 New rejection by Board  . .  1214.01

 Notice of  . .  1205

 Oral hearing  . .  1209

 Reexam  . .  2276

 Patentability report case  . .  705.01(a)

 Prerequisite  . .  1205

 Primary Examiner's attention  . .  1004

 Procedure after decision  . .  1214.01

 Protestor participation  . .  1904

 Publication of decision  . .  1213.03

 Real Party in Interest  . .  1206 , 1208

 Recommendation of Board  . .  1213.01

 Reconsideration by Board  . .  1212 , 1214.01 ,
  1214.03

 Reexamination  . .  2273

 Remand by Board  . .  1208 , 1210 ,
  1211 ,

 1211.01, 1212, 1302.14

 Remand by CAFC  . .  1216.01

 Remanded case special  . .  708.01

 Reopening of prosecution  . .  1214.07

 Reply brief to Examiner's answer  . .  1208.03

 "Secrecy order" case  . .  130

 Supplemental examiner's answer  . .  1208.04

 Suspension pending civil action or CAFC appeal in related
  case  . .  1213

 Suspension pursuant to 37 CFR 1.56(d)  1213

 Time for filing brief  . .  512 , 1206

 Withdrawal  . .  711.02(b) ,
  1215.01 , 1215.02

 Withdrawal of final rejection  . .  1208.02

 Withdrawal, Partial  . .  1214.05 ,
  1215.03

  Appealable matter not petitionable  . .  1002 , 1201

  Appendix, computer program listing  . .  608.05

  Applicant (see also Inventor)  . .  605

 Abandonment notification  . .  711.04(c)

 Administrator or executor  . .  409 - 409.01(f)
  , 605.05

 Age, Special Status  . .  708.02

 Citizenship  . .  605.01

 Common, at least one  . .  201.06 ,

 706.02(f), 706.02(k)

 Discourtesy  . .  714.19 , 714.25

 Health, Special Status  . .  708.02

 Heir  . .  409.01(a) ,
  409.01(d)

 International application  . .  1820.02 ,
  1820.09 ,

 1820.10

 Joint  . .  201.02 , 201.03
  , 605 , 2137.01

 Name change  . .  605.04(c) ,
  719.02(b)

 Other than inventor  . .  409 - 409.01(f)
  , 409.03(b)

 Post Office address  . .  605.03

 Power to inspect  . .  104 , 106

 Reply. (See Amendment, Response)

 Requirements  . .  2137.01

 Residence  . .  605.02

 Self prosecuted case  . .  707.07(j) ,
  713.01

 Signature  . .  605.04

 Small entity  . .  509.02

 Sole  . .  201.01

  Application:

 Abandoned. (See Abandoned application.)

 Abstract of the disclosure  . .  608.01(b)

 Acceptance of § 1.47  . .  409.03(h)

 Allowable except as to form  . .  706 , 710.02(b)

 Allowed:

  Custody of Patent Issue Division  203.04

  Definition  . .  203.04

  File wrapper data  . .  1302.09

  Rejection  . .  706.05 , 1308

  Suggesting claim for interference  2305.04

 Amended (definition)  . .  203.03

 APS  . .  902.03(e)

 Arrangement  . .  608.01(a)

 Assigned. (see also Assignee; Assignment.)

  Access  . .  106

  Allowance  . .  307

  Conflicting subject matter  . .  706.02(f) ,
  706.02(k) ,

 706.02(l), 706.03(k), 822, 2302

  Inventor applies for  . .  605

  Inventor deceased  . .  409.01(e)

 Assignment for Examination,

  Application Division  . .  504

 Assignment to Examiner for examination  903.08(b)

 Assignment to Group for examination  .  504 , 903.08 ,
  903.08(e)

 Background of the invention  . .  608.01(c)

 Best mode  . .  608.01(h) ,
  706.03(c)

 Brief description of the drawings  . .  608.01(f)

 Brief summary of the invention  . .  608.01(d)

 Claim terminology  . .  608.01(o)

 Claims  . .  608.01(i) -
  608.01(n) , 706.03(k)

 Clarity and completeness, Examiner's action  707.07

 Classification in examining Group  . .  903.08(b)

 Common ownership  . .  305 , 706.02(f)
  , 706.02(k) ,

 706.02(l), 709.01, 822, 2302

 Completeness  . .  201.03 , 506 ,
  601.01 ,

 601.01(g), 608.01(p)

 Conflicting, same applicant  . .  709.01 , 804 ,

 822, 822.01

 Content  . .  601

 Continuation (see also Continuation)  201.07

 Continuation-in-part

  (see also Continuation-in-part)  .  201.08

 Continuity between applications  . .  201.11

 Control of access  . .  101 , 103 , 106

 Copendency  . .  201.11

 Copending, Design  . .  1504

 Correction of inventorship  . .  201.03

 Cross-noting:

  Data of parent application on file wrapper  202.02
  , 1302.09

  Data of related application brought up to date  
  1302.04(f)

  Data of related application in specification  201.11
  , 202.01

  Foreign application, Application oath  202.04

  Foreign application, File wrapper  202.03

 Depositing  . .  502

 Description of the related art  . .  608.01(c)

 Design (see also Design application)  201 , 1503

 Detailed description  . .  608.01(g)

 Distribution  . .  508

 Division (see also Divisional application)  201.06

 Drawings, necessary  . .  601.01(f)

  Missing figures  . .  601.01(g)

 Effective filing date  . .  706.02 ,
  706.02(a)

 English language  . .  608.01

 Examples  . .  707.07(l)

 Facsimile  . .  605.04

 Fee, filing  . .  607

 Field of the invention  . .  608.01(c)

 File wrapper continuing (FWC)  . .  201.06(b)

 Filing date  . .  201.11 , 503 ,
  505 , 511

 Filing receipt  . .  503

 Five-year pendency  . .  707.02(a) ,
  708.01

 Foreign (see also Foreign

  application)  . .  201.13 - 201.15

 Form  . .  601

 Government-owned:

  Completed  . .  506

  Drawing  . .  507

  Return  . .  506.01

  Return of filing fee  . .  503

  Special  . .  708.01

 Incomplete  . .  203.06 , 506 ,
  601.01(d) ,

 (e), and (f), 608.01(u)

  Definition  . .  203.06 , 506

 Informal  . .  506 , 702.01

  Definition  . .  203.06 , 506

  Primary's attention required  . .  1004

  Search  . .  702.01 , 704

  Special  . .  708.01

 Inspection  . .  103

 International. (See International application.)

 International Convention (35 U.S.C. 119)  201.13

 Invalid oath  . .  604.06

 Issue, Definition  . .  203.04

 Issue fee not paid (abandoned)  . .  203.07 , 712

 Issue simultaneously with another application  
  1306.02

 Joint  . .  201.02

 Joint to sole  . .  201.03

 Joint to sole, Interference  . .  2334

 Jurisdiction  . .  1305

 Mode of operation  . .  608.01(h)

 National application  . .  201

 National stage application  . .  201

 New definition  . .  203.01

 Nonprovisional  . .  201.04(a) , 506
  , 601

 Old (definition)  . .  203.03

 Omitted Items  . .  601.01(d) , (f)
  ,  and (g)

 Ordered examination  . .  707.02 , 708 ,
  708.01

 Original  . .  201.04(a) , 506
  , 601

 Overlapping, Common ownership  . .  706.02(f) ,
  706.02(k) ,

 706.02(l), 709.01, 715.01(b),

 804.03, 822, 2302, 2315.01

 Overlapping, Same applicant  . .  709.01 , 804 ,

 822, 822.01, 2315.01

 Pages missing  . .  601.01(d)

 Papers, Arrangement  . .  719.01(a)

 Parent  . .  904

 Parts  . .  Chapter 600

 Pending five years  . .  707.02(a)

 Plant (see also Plant application)  .  201 ,

 Chapter 1600

 Prior art  . .  2121 to 2129

 Priority

  Foreign application  . .  201.13 , 706.02

  US application  . .  201.11 , 706.02

 Protest  . .  1901

 Provisional (see also Provisional

  Application)  . .  201.04(b) , 601
  , 601.01 ,

 601.01(b), 706.02

  Warning  . .  505 , 510

 Public inspection  . .  103

 Publication of abstract  . .  711.06 ,
  711.06(a)

 Receipt and handling  . .  Chapter 500

 Recording in examining Group  . .  1704

 Referred to in Patent, Information as to status  102

 Refile  . .  201.10

 Reissue (see also Reissue

  application)  . .  Chapter 1400

 Rejected definition  . .  203.02

 Relating to atomic energy  . .  115 , 150 , 151

 Requisites  . .  702

 Returning papers  . .  506.01 , 601

 Review  . .  506

 Right to inspect  . .  103

 Right of priority, foreign application  201.13

 Rule 1.60  . .  201.06(a)

 Rule 1.62  . .  201.06(b)

 "Secrecy order"  . .  120 , 130

 Serial number  . .  503

 Sole  . .  201.01

 Sole to joint  . .  201.03

 Special  . .  707.02(a) , 708
  to 708.03

  List  . .  708.01

 Status  . .  102 , 203

  Inquiries  . .  203.08

 Substitute:

  Definition  . .  201.09

  Does not carry ownership from parent  201.12 ,
  306

  File wrapper notation  . .  202.02

  Reference to parent application  .  201.09

  Refile  . .  201.10

 Terminology, Claim  . .  608.01(o)

 Title of invention  . .  606

 Title of invention, Change  . .  606.01 , 1302.01
  ,

 1302.04

 Transitional (see also Transitional

  Application)  . .  706.07(g) ,
  803.03

 Types  . .  201

 Utility  . .  201

 Wrong Group  . .  508.01

  Application Division  . .  201.03 ,
  201.06(a) , 402 ,

 402.01, 409.03, 409.03(h),

 502-506.01, 508.03, 601.01,

 605.04(b), 605.04(c), 605.04(g),

 607, 608.01(f), 608.02,

 608.02(h), 608.02(i), 702.01, 707.07(a),

 719.02, 719.02(b), 903.08(a), 1431

 Status inquiries  . .  203.08

  Arbitration awards notice  . .  311

  Arbitration, interference  . .  2390

  Argument for allowability lacking in amendment  714.04

  Arrangement of application  . .  608.01(a)

  Arrangement of art in examining groups  . .  901.07

  Arrangement, Papers in file wrapper  . .  719.01(a)

  Art Unit number on papers  . .  502

  Asexual Plants  . .  Chapter 1600

  Assigned application:

 Access  . .  104 , 106

 Allowance  . .  307

 Conflicting subject matter  . .  706.03(k) , 822
  ,

 2302, 2315.01

 Endorsing assignments  . .  303

 Inventor applies for  . .  605

 Inventor deceased  . .  409.01(e)

 Nonprovisional claiming benefit of provisional  306.01

 Provisional application  . .  302.03

  Assignee. (See also Assigned application, Assignment.)

 Address  . .  302.05

 Affidavits under 37 CFR 1.131  . .  715.04

 Certificate of correction  . .  307 , 1480

 Change of inventorship, consent  . .  201.03

 Common  . .  706.02(f) ,
  706.02(k) , 706.02(l) ,

 709.01, 822, 2302, 2315.01

 Double patenting, Same assignee  . .  706.03(k) ,

 804, 822

 Duty of disclosure  . .  2001.01

 Entire interest, Control  . .  106 , 324 ,
  402.07

 Foreign  . .  302.04

 Interfering cases,

  Same assignee  . .  709.01 , 2302 ,
  2315.01

 Intervention  . .  106 , 324 ,
  402.07

 Part interest  . .  106.01

 Patent issues to  . .  307

 Power to inspect  . .  104

 Reissue application  . .  1420

 Revocation of power of attorney  . .  324 , 402.07

 Small entity  . .  509.02

  Assignment  . .  Chapter 300

 Access  . .  301.01

 Allowance of application  . .  307

 Assignment identification requirements  302.03

 Change of name  . .  314

 Continuing application  . .  201.12 , 306

 Copy  . .  302.01

 Corrections in recorded assignment  .  323

 Cover sheet  . .  302.07

  Corrections  . .  317.02 , 323.01

 Date of recording  . .  317.01

 Effect of recording  . .  317.03

 File wrapper endorsement  . .  303 , 318

 Foreign language translation  . .  302.02

 Indexing  . .  315

 International application  . .  301

 Licenses  . .  313

 Mailing address  . .  302.08

 Mergers  . .  314

 Nonprovisional claiming benefit of provisional  306.01

 One of several overlapping applications  .  709.01 ,
  715.01(b)

 Parent application  . .  201.12 , 306

 Part interest  . .  106.01 ,
  706.02(l)

 Patent  . .  301 , 302.03

 Pending applications  . .  301 , 302.03 ,
  706.02(l)

 Plural items  . .  301.01

 Printing on patent  . .  307 , 1309

 Proof of  . .  706.02(l)

 Provisional application  . .  302.03

 Recording  . .  302 , 313 , 314
  , 706.02(l)

 Recording fee  . .  302.06

 Security Interests  . .  313

 Transfer of rights from/to small entity  .  509.02

 Translation  . .  302.02

  Assignment Division  . .  605.04(c) ,
  719.02

 Administrator and executor authority checked  
  409.01(b)

 Allowance and issue  . .  307 , 1302.11

 File wrapper endorsement  . .  303

 Title search  . .  319 , 320

  Assignment of Application for Examination, Application Division
 504

  Assignment of reexamination  . .  2236

  Assignment to Examiner for examination  . .  903.08(b)

  Assistant Commissioner for Patents (see also Office of Assistant
  Commissioner for Patents)  . .  201.06(a) ,
  409.01(b) , 409.03 ,

 409.03(h), 409.03(i),409.03(j), 708.01,

 720.01, 720.02, 720.03, 1002.02

 Petitions decided by  . .  1002.02(b)

  Assistant Commissioner for Trademarks, Petition decided by  
  1002.02(i)

  Associate attorney  . .  402.02 , 406

  Associate attorney, Correspondence with  . .  403.01

  Associate of unregistered attorney  . .  402

  Atomic Energy Act of 1954  . .  120 ,
  706.03(a) and (b)

  Atomic energy application  . .  150

  Attorney:

 Appointment by assignee of entire interest  106

 Associate  . .  402 , 402.02 ,
  406

 Associate of unregistered  . .  402

 Conflicting parties have same  . .  404

 Correspondence with  . .  402 , 403 ,
  403.1

 Correspondence with associate  . .  403.01

 Death  . .  406

 Disbarred  . .  105 , 407 ,
  714.01(a)

 Disbarred, Inspection by  . .  105

 Disbarred, Interview  . .  105 , 713.05

 Discourtesy  . .  714.25

 Duty of disclosure  . .  2001.01

 Excluded from practice  . .  105

 Inspection  . .  104

 Interfering cases  . .  402.08 ,

 2305, 2309.02, 2313

 International Application  . .  402.09 , 1807 ,

 1808, 1820

 Interview  . .  408 , 713 to
  713.10 , 1302.14

 Limited recognition  . .  402.01

 More than one for same applicant  . .  403.02

 Name on patent  . .  1309

 Name on reexamination certificate  . .  2287

 Not of record  . .  402 , 405

 Notarizing oath  . .  604.06

 Office cannot aid in selection  . .  401

 Post Office address  . .  601.02

 Power (see also Power of attorney)  .  402 , 406

 Reexamination  . .  2222

 Registration  . .  401 , 402

 Roster of attorneys  . .  601.03 , 2205

 Same in conflicting cases  . .  2305 , 2309.02

 Selection  . .  401

 Signature of  . .  402

 Suggested  . .  401

 Suspended  . .  105

 Telephone number on letters  . .  713.01 , 714.01

 Telephoned by Examiner  . .  408 , 713.01 ,
  1302.14

 Unregistered  . .  402

 Washington representative  . .  408

 Withdrawal  . .  402.06

 Withdrawal after patent granted  . .  2223 , 2560

 Withdrawal in patent  . .  2223

  Authentication of oath  . .  604.04(a)

  Authority of Administrator or Executor  . .  409.01(b)

  Authority of Commissioner, Delegation  . .  1001.01

  Authority of Commissioner, Statutory  . .  1001

  Authority to inspect pending application  .  103

  Authorization  . .  402

  Authorization, Deposit Accounts  . .  509.01

  Authorship  . .  715.01(c) ,
  716.10

  Avoiding double patenting rejection  . .  706.02(k) ,

 804.02, 2129

  B

  Background of the invention  . .  608.01(c)

  Bacteria  . .  1601

  Bar, Statutory  . .  706.02(a) ,
  2133 to 2133.03(e)(7)

 Overcoming  . .  706.02(b)

  Base claim canceled  . .  608.01(n)

  Base claim rejected  . .  608.01(n)

  Batch Number, Issue  . .  203.04 , 503 ,
  1303.01

  Benefit of foreign priority (see Foreign application)  
  201.13

  Benelux Designs Convention  . .  201.13

  Best mode  . .  608.01(h) ,
  2165 to 2165.04

 Affidavit or declaration  . .  715.10

 Compared to Enablement  . .  2165.02

 Computer cases  . .  2106.01

 Considerations relevant to  . .  2165.01

 Evidence of concealment  . .  2165 , 2165.04

 Form paragraphs used to reject  . .  706.03(c)

 Requirements for rejection for lack of  2165.03

  Biological material  . .  2164.06 , 2402
  , 2403

  Biotechnology  . .  2164.06 , 2400

 Special status for small entity  . .  708.02

  Biotechnology process claims  . .  706.02(n)

  Blue slip  . .  903.07 ,
  1302.10

  Blue slip, Digests on  . .  903.07

  Blue slip, Signatures  . .  903.07(b)

  Board of Patent Appeals and Interferences (see also Appeal,
  Interference)  . .  706.03(v) ,

 706.03(w), 707.07(f), 707.06, 708.01,

 711.02(b), 2284, 2300.01

 Allowed claim rejection statement  . .  1213.02

 Appeal from  . .  1216 to 1216.02

 Constitution and duties  . .  1203

 Decision, Appeal  . .  1213

 Decision, Dissemination of  . .  1720

 Decision, Treatment of  . .  1721

 Duty of disclosure to  . .  2001.03

 Hearing  . .  1209 , 2354

 Interference  . .  2355 , 2358

 Jurisdiction  . .  706.01 ,
  706.07(c) ,

 1210, 2300.02

 New ground of rejection by  . .  1214.01

 Petitions  . .  1002(f) ,
  1002.02(j) , 2344

 Protestor participation  . .  1904

 Recommendation by  . .  1213.01 , 2359

 Reconsideration and rehearing by  . .  1214.01 ,

 1214.03, 2358

 Service Branch  . .  103 , 104

  Books in library  . .  901.06(a)

  Borrowed publications  . .  901.06(a) ,
  901.06(b)

  Borrowing references from Examining Group  .  901.08

  Box at Office for depositing papers  . .  502

  Box FWC  . .  201.06(b) ,
  501

  Box Interference  . .  501

  Box M. Fee  . .  501 , 2510

  Box Patent Ext  . .  501

  Box PCT  . .  501 , 1845

  Box Reexam  . .  501 , 2225

  Box 7  . .  1404 , 1901.03

  Box 8  . .  501

  Breadth, Undue  . .  2163.05 ,
  2173.04

  Brief, Filed on appeal  . .  1206

 Extension of time  . .  1215.04

 Reexamination  . .  2274

  Brief description of the drawings  . .  608.01(f)

  Brief on motion  . .  2300.02 , 2356

  Brief summary of invention  . .  608.01(d) ,
  1302.01

  Briefs for final hearing  . .  2356

  British patent with exponent, Citing  . .  901.05(b)

  British specification, Provisional, Complete  201.15

  Broadening claims in reissue  . .  1412.03

  Budapest Treaty depositories  . .  2405

  Bulletin, Classification  . .  902.04

  Burden of Proof  . .  2112 , 2112.01
  , 2113

  Business hours  . .  510

  C

  C.A.F.C., Appeal to  . .  1216 , 1216.01

  Canadian patent agent  . .  402

  Canceled matter, Before papers executed  . .  608.01

  Canceled matter, cannot be recaptured in reissue  1412.02

  Canceled matter, Restoring  . .  608.01(s) ,
  714.24

  Canceled matter in patented file  . .  901.01

  Canceling claim after issue  . .  714.16 ,
  1302.04(b)

  Canceling claim withdrawn after appeal  . .  1214.05

  Canceling drawing  . .  608.02(t)

  Cancellation of drawing figures  . .  608.02(t)

  Candor, Duty of  . .  2000 , 2001

  Carbon copy, Application papers  . .  608.01 ,
  1302.10

  Carbon copy of amendment  . .  714.07

  Card catalog in library  . .  901.06(a)

  Caricatures, Offensive  . .  608 , 1504

  Case action record worksheets  . .  1705

  Cashier's window  . .  502

  CASSIS  . .  902.03(d)

  Catalog and circulars  . .  901.06(a)

  Certificate, Reexamination  . .  2288

  Certificate format in reexamination  . .  2290

  Certificate of correction  . .  1480

 Applicant's mistake  . .  1481

 Assignee's name  . .  307

 Copy required in reexamination  . .  2214

 Foreign priority  . .  201.16

 Form  . .  1485

 Handling  . .  1485

 Reissue  . .  1411.01 , 1480 ,
  1481 , 1485

 Report by Examiner  . .  1485

  Certificate of Mailing or Transmission (Rule 1.8)  512 , 513
  , 711.03(c)

  Certificate of Mailing in reexamination  . .  2224

  Certificate of service  . .  2220

  Certified copies of assignment documents  .  303

  Certified copy of foreign application  . .  201.14

  Certiorari  . .  1202

  Change from small entity status  . .  509.03

  Change of Correspondence Address  . .  601.03 ,
  711.03(c)

  Changing joint to sole  . .  201.03

 In interference  . .  2334

 Reissue  . .  1402

  Charge for pending applications (PALM)  . .  101 , 905.05

  Check, accompanying hand-delivered paper  .  502

  Chemical abstracts  . .  708.02

  Chemical compound  . .  608.01(p)

  Chemical practice:

 Enablement  . .  2164.02(b) ,
  2164.06(b)

 Generic chemical formula  . .  2131.02 ,
  2144.08

 Markush  . .  2173.05(h) ,
  2173.05(o)

  Circulars, Purpose  . .  Introduction

  Citation:

 A.P.C. publication  . .  901.06(c)

 Abbreviatures  . .  711.06 ,
  711.06(a)

 Abstract  . .  711.06 ,
  711.06(a)

 Allowance, Listing at  . .  1302.12

 Applicant's  . .  707.05(b) ,
  707.05(d) , 1302.12

 Complete data  . .  707.05(e)

 Correction  . .  707.05(g)

 Correction, Period for response  . .  710.06

 Cross references  . .  707.05(e)

 Data used  . .  706.02(a) ,
  707.05(e)

 Decisions, Orders, Notices, Memorandums  .  707.06

 Defensive publications  . .  711.06 ,
  711.06(a)

 Examiner's answer  . .  1208

 Foreign patent data  . .  707.05(e) ,
  901.05(a)

 Foreign printed applications  . .  901.05(b)

 Form 892  . .  707.05

 Incorrect  . .  707.05(g) ,
  710.06 , 1302.04

 Literature, In specification  . .  608.01(p)

 Mailing copy to patent owner  . .  2202 , 2206 ,
  2208

 Memorandum  . .  707.06

 Notices  . .  707.06

 Order of listing  . .  707.05(c)

 Orders  . .  707.06

 Patents, U.S  . .  901.04

 Periodical  . .  707.05(e) ,
  901.06

 Prior Art  . .  1302.12

  Handling  . .  2206

  Time for filing  . .  2204

 Prior Art by applicant  . .  707.05(b)

 Prior art in patent  . .  1920

 Publications  . .  707.05(e)

 References  . .  707.05

  Allowance in first action  . .  1302.12

  By applicant  . .  707.05(b) ,

  1302.12

 Reexamination:

  Citation of prior art  . .  2202

  Confidential  . .  2202 , 2203

  Handling  . .  2206

  Sample letter  . .  2205

  Service  . .  2208

  Time for handling  . .  2204

  U.S. patent data  . .  901.04 , 1302.04

  Citizenship of applicant  . .  605.01

  Civil action under 35 U.S.C. 145  . .  1214.01 ,
  1215.05 ,

 1216.02

  Civil action under 35 U.S.C. 146  . .  1216 , 2357 ,
  2358 ,

 2360, 2361

  Claim  . .  608.01(i) ,
  608.01(k)

 Added by amendment  . .  608.01(o)

  Results in change of inventorship  201.03

 Added in excess of filing fee  . .  714.10

 After prosecution closed  . .  714.16 , 714.19

 After prosecution closed,

  Near end of time period  . .  714.20

 Aggregative  . .  2173.05(k)

 All allowed  . .  710.02(b)

 All canceled  . .  711.01

 Allowable except as to form  . .  706 , 707.07(a)
  ,

 707.07(j)

 Allowed, Rejection of  . .  706.04 , 706.05

 Allowed, Withdrawn appeal  . .  1215.02

 Alternative phrase  . .  2173.01 ,
  2173.05(h)

 Analysis  . .  904.01

 Antecedent Basis  . .  2173.05(e)

 Basis in description  . .  608.01(o) , 2171

 Basis in disclosure  . .  608 , 2163.03

 Breadth  . .  2163.05 ,
  2164.08 , 2173.04

 Cancelation by Examiner after appeal  1214.05

 Cancelation results in change of inventorship  201.03

 Change After Board recommendation  . .  1213.01

 Combination, old  . .  2173.05(j)

 Combination and subcombination  . .  806.04(c) ,
  806.05(a)

 Comprising  . .  2111.03 ,
  2173.05(h)

 Considered in deciding reexamination request 2243

 Consisting essentially of  . .  2111.03

 Consisting of  . .  2111.03 ,
  2173.05(h)

 Construed in light of specification  .  608.01(o)

 Copied from Patent. (See Claim presented

  corresponding to claim of patent.)

 Correspondence with disclosure  . .  2173.03

 Dependent  . .  608.01(n)

 Dependent, Objected to when improper  608.01(n) ,
  706.01

 Dependent on canceled or rejected claim  .  706.01 ,
  707.07(j)

 Design application  . .  1503.01

 Differing only by functional statement  2173.05

 Diminishing scope  . .  2173.05(h)

 Disclaimer  . .  706.03(u) ,
  710.02(d)

 Double inclusion  . .  2173.05(o)

 Duplicate  . .  706.03(k) ,
  2173.05(o)

 Each mentioned in letter  . .  707.07(i)

 Equivalence  . .  2183

 Excess over fee added by preliminary amendment  714.10

 Excess over fee after notice of allowance  714.16(c)

 Fees, dependent  . .  608.01(n)

 File wrapper notation  . .  1302.09

 Filing fee insufficient  . .  506

 For priority (see Foreign application)  201.13 , 201.14

 Form  . .  608.01(m)

 Function of machine  . .  2173.05(v)

 Functional  . .  2114 ,
  2173.05(g)

 Generic (see also Generic Claim)  . .  806.04(d) ,

 2173.05(h)

 Illustrated by drawing  . .  608.02(d) ,
  2173.05(s)

 Improvement (i.e., Jepson claim)  . .  2129

 Inaccurate  . .  2173.03

 Incomplete  . .  707.07(j) ,
  2173.05(l)

 Indefinite  . .  706.03(d) ,
  2173.06

 Independent  . .  608.01(n)

 Index  . .  719.04

 Indirect limitation  . .  706.03(d) ,
  2173.05(f)

 Informal  . .  702.01

 Interference, Construed  . .  2301.01

 International application  . .  1824

 Interpretation  . .  2111 , 2111.01 ,
  2111.02 , 2111.03

 Jepson  . .  2129

 Linking  . .  809 , 809.02 ,
  809.03 , 809.04

 Linking, Generic  . .  809.02

 Linking, Traverse of rejection  . .  818.03(d)

 "Markush"  . .  2173.05(h) ,
  2173.05(o)

 "Markush," Generic  . .  803.02

 "Markush," Support  . .  608.01(p)

 Means (see also Means)  . .  2181

 Multiple dependent  . .  608.01(n)

 Multiplicity  . .  2173.05(h) ,
  2173.05(n)

 Negative limitation  . .  2173.05(i)

 New matter  . .  608.04 ,
  706.03(o) , 2163.06

 Nonelected invention  . .  706.03(m) ,
  809.02(c) ,

 809.04, 821.01, 821.02

 Nonelected invention, Added  . .  821.03

 Nonstatutory  . .  706.03(a) ,
  706.03(a)(1) ,

 2105 to 2107

 Nonstatutory, Cancellation  . .  1302.4(b)

 Numbering  . .  608.01(j)

 Objection contrasted with rejection  .  706.01

 "O.G."  . .  1302.09

 Omnibus claim  . .  2173.05(r)

 Original  . .  608.01(l)

 Patentably distinct  . .  706.03(k)

 Plant application  . .  1605 , 1610

 Plural  . .  706.03(k)

 Priority (see Foreign application)  .  201.13 ,

 201.14(b)

 Product, Functional  . .  2114

 Product by process  . .  2113 ,
  2173.05(p)

 Prolix  . .  2173.05(m)

 Reference numerals included  . .  608.01(m) ,
  2173.05(s)

 Reissue application:

  Numbering  . .  1411

  Original claim subject to reexamination  1440

  Printed  . .  1455

  Same invention as original patent  1412.01

 Rejection  . .  706 , 2121 to
  2186

 Relative terminology  . .  2173.05(b)

 Renumbering at issue  . .  608.01(j) ,
  1302.01

 Renumbering dependent  . .  608.01(n) ,
  1302.01

 Single means  . .  2164.08(a) ,
  2181

 Single sentence  . .  608.01(m)

 Species, How recognized  . .  806.04(e) ,
  806.04(f)

 Species  . .  (Plural)added

 Statutory requirement  . .  608.01(k)

 Subgenus ("Markush" type)  . .  2173.05(h)

 Suggested for interference  . .  2305 to 2305.04

  Failure to make  . .  706.03(u)

  Time limit  . .  710.02(c)

 Summary of invention, consistent  . .  608.01(d)

 Terminology basis in description  . .  608.01(o) ,

 2173.01, 2173.05(a)

 Unsupported  . .  2163.01 ,
  2173.03

 "Use" claims  . .  2173.05(q)

 Vague  . .  706.03 , 2171 to
  2173

 Varying scope  . .  608.01(m)

 With motion granted in part  . .  714.20

 Withdrawal of appealed claim  . .  1214.05 ,
  1215.03

  Claim presented corresponding to claim of patent  710.04(a)
  , 2306 to 2308.03

 After allowance  . .  2307.03

 Appeal of rejection  . .  1205 , 1210

 Commissioner's approval if outside time limit  1003

 Disclaimer rejection  . .  706.03(u)

 Interference pending  . .  2364.01

 Late amendment  . .  714.19

 Not a response to Office action  . .  711.02(b) ,

 2307.01

 Origin must be stated  . .  2307.05

 Patent filing date later than that of application  
  2308.03

 Patent in different Group  . .  2306

 Period for response  . .  710.02(c) ,
  710.04(a)

 Prosecution closed  . .  714.19 , 2307.03

 Rejection  . .  2307.02

 Rejection Failure to respond to  . .  706.03(u)

 Rejection, Primary's attention  . .  1004

 Special  . .  708.01

 Time limit for response  . .  710.02(c)

  Claiming same invention  . .  706.02(f) ,
  706.02(k) ,

 706.02(l), 715

  Class, Scope  . .  903.02(b) ,
  1302.14

  Class, Transfer  . .  903.05

  Class definitions  . .  902.02

  Classification:

 Application (See Classification of application.)

 Basis  . .  903.02

 Bulletin  . .  902.04

 Definitions  . .  902.02 ,
  902.02(a)

 Examiner (See Classification examiner.)

 Foreign patents  . .  903.03

 Index to U.S. Patent Classification  .  902.01(a)

  Classification, International  . .  903.09

 Indices  . .  902.03

 Information  . .  902.03(a)

 International  . .  903.09

 Mandatory  . .  903.07

 Manual  . .  902.01

 Master Classification File  . .  902.03(a) ,
  903.06

 Nonpatent literature  . .  901.06

 Numerical index  . .  902.03(c)

 Orders  . .  902.04

 Patent, Change of  . .  903.05

 Patent Index  . .  902.03(b)

 Principles  . .  903.02

 Revision  . .  903.02(a) ,
  903.02(b)

 Rules governing applications  . .  903.08(e)

 Slip  . .  903.07 , 1302.10

 Statutory authority  . .  903.01

 Subclass lists  . .  902.03(c)

  Classification examiner:

 Decision on classification  . .  903.08(d) to
  903.08(f)

 Patentability report  . .  705.01(a)

  Classification of application:

 Allowed application  . .  903.07 to
  903.07(b) ,

 1004, 1302.10

 Amendment affecting  . .  903.08(c)

 Borderline  . .  903.08(a)

 By applicant  . .  601

 Cross-referencing  . .  903.07(a)

 Decision of classification Examiner  .  903.08(f)

 Disputed  . .  903.08(a) ,
  903.08(d) ,

 903.08(f), 903.08(g)

 File wrapper data  . .  719.03

 Improperly classified  . .  903.08(a)

 In another Group at allowance  . .  903.07(b) ,

 903.08(a)

 New application, By Application Division  903.08 ,

 903.08(e)

 New application, By Primary  . .  903.08(b)

 Post classifier  . .  903.10

 Preliminary  . .  601

 Rules governing  . .  903.08(e)

 Transfer to another Group  . .  803.08(a) ,
  803.08(g) ,

 903.08(d)

  Classifier, Post  . .  903.10

  Clean copy  . .  608.01(q) ,
  1302.02

  Clearance for new law interpretation  . .  1208

  Clerk, Duties. (See the Manual of Clerical Procedure.)

  Close of prosecution  . .  130

  Closed prosecution except for formal matters  710.02(b) ,
  714.14

 Prosecution not closed  . .  707.07(j)

  Closing of Patent and Trademark Office  . .  201.13

  Code of Federal Regulations  . .  Introduction

 Title 13 CFR 121.12  . .  509.02

 Title 15 CFR 4.8  . .  103

 Title 37. (See Rules of Practice.)  .  AppendixR

 Title 41 CFR subpart 101-20.3 cited  .  510

  Coinventor, Power of attorney  . .  402.01

  Collateral estoppel  . .  2012.01

  Collateral estoppel in reexamination  . .  2259

  Combination, Old (Restriction)  . .  806.05(b) ,
  820.01

  Combination and aggregation  . .  2173.05(j) ,

  2173.05(k)

  Combination and subcombination  . .  806.04(c) ,

 806.05(a) to 806.05(c), 903.02(b)

  Comments on tests or examples  . .  707.07(l) ,
  1302.14

  Commercial activity as on sale (see also On Sale)  706.02(c)
  , 2133.03 to 2133.03(e)

  Commercial exploitation as on sale (See also On Sale)  
  706.02(c) , 2133.03(e)(1)

  Commercial success of invention, affidavit alleging (see also
  Affidavits, traversing rejections)  . .  716.03

  Commissioner, action requiring attention of:

 Failure to identify claim as copied from a patent  
  2307.05

 Petition for access  . .  103

 Reissue application of patent in interference  1449

  Commissioner initiates reexamination  . .  2239

  Commissioner's:

 Approval of power to inspect  . .  104

 Authority and functions  . .  706.03(b) ,
  708.01 , 709 ,

 711.02, 714, 719.01, 1001, 1002

 Decisions  . .  Introduction

 Notices, Purpose  . .  Introduction ,
  707.06

 Orders, Purpose  . .  Introduction ,
  707.06

  Committee on Enrollment, Petition to  . .  1002.02(m)

  Common applicants  . .  715.01(a) ,
  706.02(f) , 706.02(k) ,

 706.02(l), 709.01, 2137

  Common disclosure, Parent and continuing applications  120
  , 201.11

  Common ownership  . .  706.02(k) ,
  706.02(l) , 2137

 Conflicting applications  . .  303 , 706.02(f)
  ,

 706.03(k), 709.01, 822, 2302

  Common Representative for international application  1807

  Communication with disbarred attorney  . .  105

  Communications, official mailing address for  501

  Companion case, Retention label  . .  1302.07

  Comparative tests (see also Unexpected Results) 716.02(b)

  Comparison of new drawings  . .  608.02(b)

  Complete application  . .  201.03 , 506 ,

 601.01-601.01(g)

  "Complete" specification, British  . .  201.15

  "Comprising" as transitional phrase  . .  2111.03

  "Comprising" in Markush claim  . .  2173.05(h)

  Computer Programs  . .  608.05 ,
  706.03(a) , 2106 ,

 2106.01, 2106.02

  Concealment  . .  608.01(h) ,
  2138.03

  Conception  . .  715.07 , 2138
  , 2138.04

  Concordance, International and United States classification  
  903.09

  Concurrent Office proceedings  . .  2282

  Conditional petition to revive  . .  711.03(c)

  Conduct of reexamination proceedings  . .  2254

  Confidential citation of prior art  . .  2202 , 2203

  Confidential material  . .  121 , 724 to
  724.05

  Confidential material submission  . .  121 , 724.02

  Confidential party of interest  . .  2202 , 2203

  Confidential status of application  . .  101 ,
  706.02(f)

 Same applicant  . .  706.02 ,
  706.02(c) , 706.03(k) ,

 709.01, 804, 822, 822.01

  Confidentiality, pending applications  . .  Chapter 100

  Confidentiality of international applications  110

  Conflicting applications, Same assignee  . .  303 ,

 706.02(f), 706.02(k), 709.01,

 715.01(b), 804.03, 822, 2302

  Conflicting applications, Same attorney  . .  2309.02 ,

 2305

  Congress, Inquiry on status of application by member of  
  203.08(a)

  Conservator, Authority recorded  . .  409.02

  Conservator, Insane inventor  . .  409.02

  "Consisting essentially of" as transitional phrase  2111.03

  "Consisting of" as transitional phrase  . .  2111.03

  "Consisting of" in Markush claim  . .  2173.05(h)

  Constitutional basis for patents  . .  Introduction

  Constructive election  . .  818.02(a) ,
  818.02(c)

  Constructive notice to patent owner  . .  2230

  Constructive reduction to practice  . .  715.07

  Consular certificate  . .  604.04

  Consular certificate, Executor or administrator, Foreign  
  409.01(b) , 409.01(d)

  Consular certificate, Omission  . .  604.04(a)

  Consular officer  . .  604.04

  Content of reexamination request  . .  2214

  Continuation  . .  201.07

 Assignment carried from parent  . .  201.12 , 306

 Copendency  . .  201.11

 Definition  . .  201.07

 Effective date  . .  201.11

 File wrapper continuing (FWC)  . .  201.06(b)

 File wrapper notation  . .  202.02

 Final rejection on first action  . .  706.07(b)

 Identification on letter of transmittal  .  506

 Inspection of parent  . .  103

 International application  . .  1817.02

 International application as parent  .  201.11(a) , 1895

 Inventor, at least one in common  . .  201.11

 New matter  . .  201.07 ,
  608.04(b)

 Oath, Delayed filing  . .  602.05(a)

 Ownership  . .  201.12

 Parent case data in specification  . .  202.01

 Parent case data noted on file

  wrapper  . .  202.02 , 1302.04

 Reference to parent case  . .  201.11

 Restriction  . .  819

 Rule 60 application  . .  201.06(a)

 Rule 62 application  . .  201.06(b)

 Secrecy order in parent case  . .  120

 Sole from joint  . .  201.07

 Streamlined  . .  201.07

 Time for filing  . .  201.11

 Title  . .  201.12

 When patented, Opens parent application to public
  inspection  . .  103

  Continuation-in-part  . .  201.08

 Assignment check  . .  306

 Copendency  . .  201.11

 Definition  . .  201.08

 Effective date  . .  201.11 , 706.02
  , 2133.01

 File wrapper continuing (FWC)  . .  201.06(b)

 File Wrapper Notation  . .  202.02

 Identification on letter of transmittal  .  506

 Inspection of parent  . .  103

 International application  . .  1817.02

 International application as parent  .  201.11(a)

 Inventor, at least one in common  . .  201.11

 Ownership  . .  306

 Reference to parent case  . .  201.11

 Rejection over published priority document  2133.01

 Rule 62  . .  201.06(b)

 Sole from joint  . .  201.08

 Time for filing  . .  201.11

 Title  . .  201.12

  When patented, Opens parent application to public
  inspection  . .  103

  Continuing application  . .  120 , 201.11 ,

 1302.12, 1302.04

  Continuing data (see cross-noting)  . .  202.02

  Continuity between applications  . .  201.11

  Control of inspection by assignee  . .  106

  Convention, International  . .  201.13

  Converting inventorship joint to sole  . .  201.03 ,
  201.06 ,

 201.07, 201.08

  Converting inventorship sole to joint  . .  201.03

  Converting nonprovisional application to provisional  
  201.04(b) , 601.01(c)

  Copendency  . .  201.11

  Copending application, Reference brought up to date  
  1302.04(f)

  Copending U.S. application, Duty of disclosure in  
  2001.06(b)

 Common ownership  . .  706.02(l)

 Different inventive entities  . .  706.02(f) ,
  706.02(k)

  Copied patent claim. (See Claim copied from patent.)

  "Copier" copies  . .  714.07

  Copies of prior art in reexamination request  2218

  Copy of foreign application, Certified  . .  201.14

  Copy of printed patent in reexamination  . .  2219

  Copy Orders  . .  905.01

  Copyrights  . .  608.01(v)

  Correction of drawing  . .  608.02(p)

 Approval by Examiner  . .  608.02(x) ,

  1302.05

 "Corrected" stamp  . .  608.02(o)

 Deferrable  . .  608.02(b) ,
  608.02(p)

 New matter  . .  608.04

 Not approved  . .  608.02(x)

 Order for  . .  608.02(x)

 Required by draftsman  . .  707.07(c)

 Separate letter  . .  608.02(r)

 Sketch  . .  608.02(v)

  Correction of inventorship  . .  201.03

 in patent  . .  1481

  Correction of name  . .  605.04(b) ,
  605.04(c)

  Correction of patent  . .  Chapter 1400

 Certificate of correction  . .  1480

 Reissue (see reissue application.)  .  1401

 Statutory disclaimer  . .  1490

  Correction of printer's proof  . .  1309.02

  Correction of reference citation  . .  707.05(g) ,
  710.06

  Correspondence:

 Address of PTO  . .  501 , 502

 Address in secrecy order cases  . .  120

 Address, official mailing  . .  501

 Address, When power is to a firm  . .  403

 Associate attorney  . .  403.01

 Boxes  . .  501

 Crossing  . .  714.05

 Double  . .  403 , 714.01(a)

 Facsimile transmission  . .  502.01

 In reexamination  . .  2224

 Maintenance fee  . .  2542

 Plural attorneys  . .  403.02

 Receipt and handling  . .  Chapter 500

 Signature requirements  . .  502 , 502.02

 With whom held  . .  403

  Correspondence and Mail Division  . .  203.08 , 501 ,
  503 , 508.02 ,

 1416, 1706, 2206

  Counter terrorism inventions, special status  708.02

  Counting actions  . .  1705

  Countries for foreign priority  . .  201.13

  Country codes  . .  1851

  Coupons  . .  509

  Court decision, certificate of  . .  1216.01

  Court decision, Citation  . .  707.06

  Court decision, Dissemination of  . .  1720

  Court decision, Treatment of  . .  1721

  Court decision entry in patent file  . .  2207

  Court of Appeals for the Federal Circuit  .  711.02(b)

  Court papers, Service on Commissioner  . .  1216

  Cover sheet-provisional application  . .  201.04(b)

  Criteria for deciding reexamination request  2242

  Cross-noting:

 Data of parent application on file

  wrapper  . .  202.02 , 1302.09

 Data of provisional application in

  specification  . .  1302.04

 Data of provisional application on file

  wrapper  . .  202.02

 Data of related application brought up

  to date  . .  1302.04(f)

 Data of related application in specification 201.11
  , 202.01 , 1302.04

 Foreign application, Application oath  202.04

 Foreign application, File wrapper  . .  202.03

 In original patent file of reissue

  application  . .  202.05

  Cross-reference:

 Addition of patent  . .  905.02

 Another application

  (see cross-noting)  . .  202.01 ,
  608.01(p) , 1302.04

 Art Collection  . .  903.02(c)

 At allowance  . .  903.07 , 1302.04

 Citing  . .  707.05(e)

 Establishing new  . .  903.06(a)

 Noted during examination  . .  903.07(a)

 Ordering  . .  903.06

 Required for all claimed disclosure  .  903.07(a)

  Crossed mailings  . .  714.05

  Customer numbers  . .  403 , 2540

  Customer Services Division  . .  104 , 508 ,
  608.02(c) ,

 608.02(h), 707.05(a),

 719.01(b), 719.05(a),

 905.02, 905.03, 2232

  Customer Service Window  . .  502 , 714.13

  D

  D-10 Notice  . .  130 , 1304 ,
  1304.01

  Damage, Proof Irreparable  . .  409.03(g)

  Data Bases for search  . .  901.06(a)

  Date:

 Amendment  . .  502 , 505 , 511
  , 512 ,

 710.01(a), 710.05, 714.18

 Citation of foreign patent  . .  901.05(a) ,
  901.05(b)

 Convention  . .  201.13 , 201.14

 Filing  . .  201.11 , 502 ,
  503 , 505 ,

 506.02, 1002.02(b)

 Filing, refusal to accord  . .  506.02 , 605 ,
  2133

 Foreign Application

  (priority)  . .  201.13 , 201 ,
  14 , 201.15

 Group stamp  . .  714.18

 Invention  . .  2137 , 2138

 Maintenance fees due  . .  2506

 Office action  . .  707.11

 Office stamp  . .  502 , 505 , 506
  , 714.18

 Reference  . .  706.02 ,
  707.05(e) , 707.05(f) ,

 715, 715.01, 715.01(c)

  Date entered on drawing  . .  608.02(o)

  Date of execution of oath  . .  602.05

  Date stamp, Examining Group  . .  714.18 , 1303

  Death of attorney  . .  406

  Death of inventor (see also Administrator or executor)  409
  to 409.01(f)

  Deceased inventor, Allowance not withdrawn 1303.03

  Deceased inventor, Legal representative refuses to sign  
  409.03(c)

  Deceptive intention in reissue  . .  1414.04 , 2012

  Decision:

 By Board of Patent Appeals and

  Interference  . .  1213 , 1302.14

  Dissemination of  . .  1720

  Treatment of  . .  1721

 By Classification Examiner  . .  903.08(f)

 By Primary on interference motion  . .  1004

 Citation  . .  707.06

 Governs Examiner's action  . .  Introduction

 Listed  . .  AppendixII

 On interference motion  . .  2340

 Ordering reexamination  . .  2246

 Public availability  . .  103

 Publication of  . .  707.06

 Reconsideration of Board  . .  1214.03

 Reexamination request  . .  2240

 Submission in reexamination  . .  2282

  Decision by Certificate of Correction Branch  1485 , 1490

  Declaration  . .  602

 Amendment  . .  602.01

 "Attached"  . .  605.04(a)

 Change of inventorship  . .  201.03

 Copies from prior application  . .  201.06(a) ,

 605.04(a)

 Date of execution  . .  602.05

 Defective  . .  602.03

 Delayed Filing  . .  506

 Facsimile  . .  502.01 , 502.02
  , 605.04(a)

 Foreign priority applications listed  201.14 ,
  201.14(c) , 202.04

 International application  . .  1893.01(a)(1) ,

 1893(b)(1), 1893(e)

 Inventor refuses to sign or cannot be found  603

 Non-English  . .  602.06

 Reissue application  . .  706.03(x) , 1414
  , 1414.03 ,

 1444,

 Rule 60 application  . .  201.06(a)

 Substitute  . .  602.02

  Declassified matter  . .  707.05(f)

  Dedication  . .  715 , 1490

  Defective oath  . .  602.03

  Defects, correction of in request  . .  2231

  Defense, Applications affecting  . .  115 , 120 ,
  130 , 140

  Defensive publication citation  . .  711.06(a) ,
  1304 ,

 1304.01

  Defensive publication program  . .  202.02 ,
  711.06

  Definition of class  . .  902.02

  Delayed filing of original oath  . .  602.05

  Delegation of Commissioner's authority  . .  1001.01 , 1002
  , 1002.02

  Delgar  . .  711.03(c)

  Demonstration at interview  . .  713.08

  Denial of request for reexamination  . .  2247

  Department of Energy  . .  115 , 150 ,
  157 , 706.03(b)

  Department of Commerce, Organization Orders:

 30-3A cited  . .  510

 30-3B cited  . .  510

  Dependent claim  . .  608.01(n)

 Reissue  . .  1455

 Rejected when base claim is canceled  608.01(n) ,
  707.07(j)

  Dependent claim, objected to when improper 608.01(n) ,
  706.01

  Deposit accounts  . .  509.01

  Deposit of microorganisms  . .  608.01(p) ,
  1605 , 2402

  Deposit of correspondence  . .  502

  Deposition, Examiner  . .  1701.01

  Deposit Rules  . .  2400 , 2401 ,
  2402

 Acceptable depository  . .  2405

 Background information  . .  2401

 Biological material, definition  . .  2403

 Biological material, made or isolated without

  undue experimentation  . .  2404.02

 Budapest Treaty  . .  2402

 Budapest Treaty depositories  . .  2405

 Depositories, current list of Budapest Treaty  2405

 Effective Date  . .  2401 , 2402

 Examination procedures  . .  2411

  After grant  . .  2411.04

  Application in condition for allowance

  except for deposit  . .  2411.03

  Certificate of correction  . .  2411.04

  Content of application regarding

  deposited material  . .  2411.05

  Need for 37 CFR 1.312 amendment  .  2411.03

  Reissue  . .  2411.04

  Rejections based on deposit issue  2411.01

  Responses from applicant  . .  2411.02

 Furnishing of samples  . .  2410

  Access to deposits  . .  2410.01

  Certification of accessibility of deposit  
  2410.02

  Conditions of deposit  . .  2410.01

  Exception to removal of restrictions  2410.01

  Restrictions removed upon grant  .  2410.01

 Known and readily available biological

  material  . .  2404.01

  Budapest Treaty deposit  . .  2404.01

  Continuity of access  . .  2404.01

  Deposits certified as available  .  2404.01

  Health, safety restrictions  . .  2404.01

  Indicia of "known and readily available"  
  2404.01

 Lundak application  . .  2404.03 ,
  2406.01

 Material capable of self-replication  2403.01

  Direct self-replication  . .  2403.01

  Indirect self-replication  . .  2403.01

 Need for a deposit  . .  2402 , 2404

 Plant material  . .  2403.02

 Plant Patent Act, relation to  . .  2403.02

 Prior practice  . .  2402 ,
  608.01(p)(C)

 Reference to deposit in application  .  2404 , 2404.03

  Implication, presumption  . .  2404 , 2404.03

  Requirements of 35 U.S.C. 112  . .  2164.06 , 2404 ,

 2404.03

 Replacement or supplement of deposit  2407

  After a patent has issued  . .  2407.02

  Exemption from replacement  . .  2407.05

  Failure to replace  . .  2407.03

  In a pending application/reexamination

  proceeding  . .  2407.01

  Reason for replacement  . .  2407.04

  Replacement not recognized  . .  2407.06

  Treatment of replacement, presumption of identity  
  2407.04

 Seeds  . .  2403.02

 Term of deposit  . .  2408

  Budapest Treaty term  . .  2408

  Enforceable life of patent  . .  2408

 Time for making original deposit  . .  2406

  Assurance redeposit before payment

  of issue fee  . .  2406 , 2411.03

  Corroboration  . .  2406.02

  Description in application specification  
  2406.01

  During application pendency  . .  2406

  Loss of U.S. filing date in other countries  
  2406.03

  New matter  . .  2406.01

  Patent Cooperation Treaty applications  2406

  Post-issuance deposits  . .  2406

  Viability of deposit  . .  2409

  Viability statement  . .  2409

 35 U.S.C. 112 requirements  . .  2402 , 2403 ,
  2404

  Deputy Commissioner of Patents and Trademarks  1001 ,
  1002.02(o) , 1203

  Derogatory remark regarding prior art  . .  608.01(r)

  Description, Basis for claim  . .  608.01(o) ,
  706.03(c) ,

 2161, 2163

  Description, Computer Programming  . .  2106.01

  Description, Detailed  . .  608.01(g)

  Description-International Application  . .  1823

  Design  . .  201 ,  Chapter
  1500

 Allowance  . .  1505

 Analogous Art  . .  1504.02 ,
  1504.03

 Appearance of object  . .  1502

 Application  . .  1503

 Characteristic feature  . .  1503.01

 Claim  . .  1503 , 1503.01

 Computer Generated Icons  . .  1504.01

 Convention date  . .  201.13 , 1503.03

 Copending applications  . .  1504.06 ,
  1504.20

 Copyright, relationship  . .  1520

 Definition  . .  1502

 Delay of issuance  . .  1505

 Description  . .  1503 , 1503.01

 Disclaimer  . .  1503.01

 Disclosure  . .  1503.02 ,
  1504.04

 Dominant feature  . .  1503.01

 Double patenting  . .  1504.06

 Drawing  . .  1503 , 1503.02 ,
  1503.03

 Examination  . .  1504 , 1504.01 ,
  1504.02

 1504.03, 1504.04

 Feature emphasized  . .  1503.01

 Fee  . .  1306 , 1505

 Foreign priority  . .  201.13 , 1504.02
  , 1504.10

 Indicia  . .  1503.02 ,
  1504.01

 Indefiniteness  . .  1504.04

 Invention  . .  1501 , 1504.01

 Library  . .  901.06(a)

 Modification, description  . .  1503.01

 New matter  . .  1503 , 1503.02 ,
  1504.04

 Novelty  . .  1504.02

 Object, Design for  . .  1502

 Patent Cooperation Treaty  . .  1501

 Patentability  . .  1504.01 ,
  1504.02 , 1504.03 , 1504.04

 Photograph  . .  1503.02 ,
  1503.03

 Preamble  . .  1503 , 1503.01

 Priority under 35 U.S.C. 119  . .  1504.10

 Priority under 35 U.S.C. 120  . .  1504.20

 References supplied  . .  707.05(a) , 1513

 Registration abroad  . .  1504.02 ,
  1504.10

 Requirement for Information  . .  1504.04

 Requirement for restriction  . .  1504.05

 Reproducible, Article (35 U.S.C. 171)  1502 , 1504.01

 Restriction  . .  1504.05

 Rules applicable  . .  1501

 Sample  . .  1503.01 ,
  1503.03

 Search  . .  1504.02 ,
  1504.03

 Simulation  . .  1504

 Specification  . .  1503.01

 Statutory bar, Foreign application  .  201.13 ,

 1504.02, 1504.10

 Subject matter  . .  1502 , 1504

 Term of  . .  1505

 Title  . .  1503.01

 Trademark, relationship  . .  1520

 Type fonts  . .  1504.01

 Unobviousness  . .  1504.03

 Visual characteristics  . .  1502

  Design patent series  . .  901.04

  Designated Office  . .  601.04 , 1801
  , 1893.01(a)

  Designation fee-PCT  . .  1817.01 , 1827

  Designation of States  . .  1817.01

  Determination of public use or on sale  . .  706.02(c) ,

 2133.03

  Differences between:

 Chemical and other practice (see Chemical practice)

 Objection and rejection  . .  706.01 ,
  710.02(d)

 Shortened statutory period and time

  limit  . .  710.02(d)

  Digest  . .  903.02(c)

  Diligence

 Charts for Priority  . .  2138.01

 In correcting inventorship  . .  201.03

 In application  . .  2138.06

 In filing reissue  . .  1403

 In interference practice  . .  2138.01

 Of status inquiry  . .  203.08

 Reasonable  . .  2138.06

 Shown in 37 CFR 1.131 oath  . .  715.07 ,
  715.07(a)

 To overcome a rejection  . .  2136.05

  Director's functions  . .  1003

 Group 2200  . .  710

  Disbarred attorney  . .  105 , 407 ,
  714.01(a) , 714.19

  Disclaimer:

 Co-author of publication  . .  715.01(c)

 Copy required in reexamination  . .  2214

 Defensive Publication  . .  711.06

 Forms  . .  1490

 Interference  . .  2305 , 2305.04 ,
  2307.02 , 2337 , 2362

 Rejection  . .  706.02(k) ,
  710.02(d) ,

 Statutory  . .  1490 , 2362

 Terminal  . .  706.02(k) ,
  804.02 , 1490

  Disclosure (see also Specification)  . .  608

 Abstract  . .  608.01(b)

 Aids  . .  2004

 Amendment  . .  608.04 , 1302.02

 Amendment, Preliminary  . .  608.04(b)

 Best Mode (see also Best Mode)  . .  608.01(h) ,

 2165

 By whom and how made  . .  2004

 By whom made  . .  2002.01

 Chemical compound  . .  608.01(p)

 Claimed  . .  901.03

 Common, Parent and continuing

  application  . .  201.11

 Completeness  . .  608.01(p) , 2164

 Computer Programming cases  . .  2106.02

 Correspondence with claims  . .  2163.05 ,
  2173.03

 Detailed description  . .  608.01(g)

 Document  . .  1706

 Duty of  . .  2000 , 2001

  Reexamination  . .  2280

 Enablement (see also Enablement)  . .  2164

 Foreign application  . .  201.15

 Implicit  . .  2144.01

 Incomplete  . .  608.01(p) ,
  706.03(c) , 2161 to 2165

 Incomprehensible  . .  702.01

 Incorporation by reference  . .  608.01(p)

 Insufficient  . .  608.01(p) ,
  702.01 , 706.03(c)

 Later filed application  . .  608.01(p)

 Litigation information  . .  2001.06(c)

 Materiality  . .  2001.05

 Operability  . .  716.07 ,
  2164.08(b)

 Original claim  . .  608.01(1) ,
  2163.06

 Preliminary amendment  . .  608.04(b)

 Related applications  . .  608.01(p) ,
  1302.04

 Requirements for  . .  2161

 Reservation clause  . .  608.01(e)

 Restricted to claimed subject matter  1302.01

 Secrecy order, material subject to  .  120

 Sources of information  . .  2001.06

 Specification (See also Specification)  608.01

 Sufficiency for continuity  . .  201.11

 Sufficiency of, Affidavit  . .  716

 Support for claims  . .  2163.01

 To whom owed  . .  2001.03

 Trade name  . .  608.01(v)

 Trademark  . .  608.01(v)

 Utility  . .  608.01(p) ,
  706.03(a)

 When made  . .  2003

 Written  . .  (seealsoWritten

  Description)  . .  2002.02 , 2163

  Disclosure Document Program  . .  1706

 Evidence under 37 CFR 1.131  . .  715.07

  Discourtesy  . .  714.19 ,
  714.25 , 1003

  Dismissal of Appeal  . .  1215.04

  Disposals counted  . .  1705

  "Distinct," Definition  . .  802.01

  "Distinct" inventions  . .  802 , 802.01 ,
  803 , 806.05

 Apparatus and product made  . .  806.05(g)

 Process and apparatus for its practice  806.05(e)

 Process and product made  . .  806.05(f)

  Distribution of mail  . .  501

  Distribution of papers  . .  508

  Division (see Restriction; Election; Election of species;
  Divisional Application)  . .  Chapter 800

  Divisional Application  . .  201.06

 Applicant, one common  . .  201.06

 Assignment carried from parent  . .  201.12

 Assignment check  . .  306

 Copendency  . .  201.11

 Delayed filing of oath  . .  602.05(a)

 Design application  . .  201.06

 Drawing, Transfer to  . .  608.02(i)

 Effective date  . .  201.11

 File wrapper continuation (FWC)  . .  201.06(b)

 File wrapper notation  . .  202.02 , 1302.04

 Inspection of parent application  . .  103

 Inventor, at least one in common  . .  201.11

 New matter  . .  201.06

 Oath  . .  201.06(a) ,
  602.05(a)

 Ownership carried from parent  . .  201.12

 Parent case data notation in specification  202.02

 Patented, Opens parent to inspection  103

 Reference to parent application  . .  201.11 , 1302.04

 Reissue  . .  1451

 Rule 60 application  . .  201.06(a) ,
  1302.04

 Rule 62 application  . .  201.06(b)

 Signature omitted  . .  201.06(a)

 Sole from joint  . .  201.06

 Time for filing  . .  201.11

  DNA, Recombinant, related Special status  .  708.02

  Docket clerk  . .  707.05(a)

  Docket Record card  . .  2233 , 2237

  Docket report  . .  1704

  Doctrine of Equivalents  . .  2186

  Document:

 Disclosure  . .  1706

 Legal proceedings  . .  1701.01

  Domestic Representative  . .  302.04

  Double correspondence  . .  403 ,
  714.01(a)

  Double inclusion in claim  . .  2173.05(o)

  Double patenting:

 Avoiding rejection  . .  706.02(k) ,
  804.02

 Basis  . .  804

 Claimed subject matter  . .  806.01

 Copending applications  . .  706.02(k) , 804

 Definition  . .  804

 Design applications/patents  . .  804

 Different inventive entities  . .  706.02(k) ,
  804.03

 Distinct and independent inventions  .  804.01

 Domination  . .  804

 International applications  . .  804

 Plant cases  . .  1601

 Reexamination  . .  804 , 2217 ,
  2258

 Rejection  . .  804

  Nonstatutory  . .  804

  Nonobvious  . .  804

  Obvious  . .  804

  Prohibition, 35 U.S.C. 121  . .  804.01

  Provisional  . .  706.02(k) , 804

  Specification, use of  . .  804

  Statutory  . .  804

 Rejection nullification  . .  804.01

 Same assignee  . .  706.02(k) ,
  706.02(k) ,

 804.03, 822

 Same inventor  . .  806.04(h) to

 806.04(j), 806.05, 822, 822.01

 Species and genus  . .  806.04(h) to
  806.04(j)

 Submissions to Group Director  . .  804.04

 Terminal disclaimer effect  . .  706.02(k) ,

 804.02, 1490

  Drafting Division  . .  507 , 608.02 ,

 608.02(h), 608.02(t), 707.07(a)

  Draftsman's notation  . .  507 ,
  608.02(a) , 707.07(a) ,

 707.07(c)

  Draftsman's stamp  . .  507 ,
  608.02(b) , 608.02(o)

 1302.10

  Drawing  . .  507 , 608.02

 Additional  . .  608.02(h)

 Allowance, Notation on  . .  608.02(z) ,
  903.07 ,

 1302.09, 1302.10

 Amendment  . .  608.02(p)

 Amendment, Direction for  . .  608.02(q)

 Amendment, Disposition  . .  608.02(x)

 Amendment support by original claim  .  608.04(a)

 Approval stamp  . .  608.02 ,
  608.02(h) ,

 1302.10

 Brief description  . .  608.01(f)

 Canceled figure  . .  608.02(t)

 Canceled sheet  . .  608.02(t)

 Canceled sheet, Patent  . .  608.02(i)

 Canceled sheet, transfer  . .  608.02(i)

 Color  . .  608.02

 Colored plant  . .  1606

 Comparison  . .  608.02(a)

 Complete illustration  . .  608.02(d)

 Completeness  . .  608.02(e)

 Computer lists  . .  608.05

 Content of  . .  608.02(d)

 Correction (see also Correction of Drawing)  608.02(p) ,
  1302.05

 Corresponds with description  . .  608.02(f)

 Date entered on back  . .  608.02(o)

 Delivered to wrong group  . .  508.01

 Denied admission  . .  608.02(h)

 Design application  . .  1503.01 ,
  1503.02

 Disclosure  . .  608

 Divisional application  . .  608.02(j)

 Draftsman's criticism included in

  first Office action  . .  707.07(a) ,
  707.07(c)

 Draftsman's notation  . .  507 , 608.02(a)

 Draftsman's stamp  . .  608.02(b) ,
  608.02(o) ,

 1302.10

 Duplicate  . .  608.02(h)

 Examiner determines completeness  . .  608.02(e)

 Illustrates claim  . .  608.02(e)

 Inartistic arrangement  . .  608.02(t)

 Informal  . .  507 , 608.02(b)

 Informality, Determined by draftsman  608.02(a)

 International application  . .  1825

 Kept in application  . .  608.02(c)

 Kept in Examining Group  . .  1302.05(a)

 Mail Section stamp  . .  608.02(o)

 Modification illustrated  . .  608.02(f)

 Necessary for filing date  . .  506 , 608.02

 New drawings required  . .  608.02(a)

 New, Handling  . .  608.02(a)

 New matter  . .  608.04 ,
  706.03(o)

 New, When required  . .  608.02(a)

 Not received  . .  608.02(h) , 1825

 Not required  . .  608.02

 Not returned  . .  608.02(y)

 Objection  . .  507

 O.G. figure  . .  1302.10

 Omitted drawings  . .  601.01(g)

 Patented case  . .  905.03

 Photographs  . .  608.02

 Photoprint  . .  608.02

 Plant application  . .  1606

 Print (see Print of drawing)  . .  506 , 508 ,
  608.02(m)

 Prior art  . .  608.02(g) , 2125

 Provisional application  . .  608.02

 Reference characters  . .  608.02(e)

 Reference characters, Change  . .  608.02(w)

 Reissue application  . .  1413

 Removal from Group  . .  608.02(c)

 Required by Examiner  . .  608.02

 Return  . .  608.02(y)

 Section lines  . .  608.02(f)

 Security markings  . .  121

 Sketch for correction  . .  608.02(v) ,
  608.02(w)

 Substitute  . .  608.02(h)

 Sufficiency, Determined by Examiner  .  608.02(e)

 Symbols  . .  608.02

 Transfer in Rule 60  . .  201.06(a) , 506
  , 608.02(i)

 Transfer to reissue  . .  1413

 Use in reissue  . .  1413

 Yellow tag  . .  608.02(z)

  Drawing correction  . .  608.02(p)

 Approval by Examiner  . .  608.02(x) ,
  608.02(q) ,

 1302.05

 Deferrable  . .  608.02(b)

 New matter  . .  608.04

 Order for  . .  608.02(x)

 Required  . .  707.07(a) ,
  707.07(c)

 Separate letter  . .  608.02(r)

 Sketch  . .  608.02(v)

  Drawings:

  Allowance, Notation on  . .  903.07 , 1302.10

  Drug disclosure guidelines  . .  608.01(p)

  Dual correspondence  . .  403 ,
  714.01(d)

  Duplicate amendments  . .  719.01(a)

  Duplicate claims  . .  706.03(k)

  Duplicate foreign patents  . .  903.03

  Duplicate papers, Plant application  . .  1603 , 1605 ,
  1606 , 1609 , 1610

  Duty of disclosure:

 After patent grant  . .  2003.01

 Aids  . .  2004

 Candor and good faith  . .  2001

 Checklist  . .  2004

 Litigation information  . .  2001.06(c)

 Questionnaire  . .  2004

 Reexamination  . .  2280

 Reissue  . .  1414.05

 Sources of information  . .  2001.06

 To whom owed  . .  2001.03

 Violation  . .  1448

 When made  . .  2003

 Who has  . .  2001.01

  E

  "Easily Erasable" paper  . .  608.01 ,
  714.05 , 714.07 ,

 714.19

  Effective date:

 Declassified matter  . .  707.05(f)

 Reference patent  . .  706.02 ,
  706.02(a) , 707.05(e) ,

 707.05(f), 715, 901.05(b)

  Effective filing date:

 Continuing application  . .  201.11 , 706.02
  , 708

 Continuation-in-part  . .  2133.01

 Foreign Priority Effect  . .  706.02

 International Convention

  (see Foreign application)  . .  201.13 , 201.14
  ,

 201.15

 Provisional Application  . .  706.02

 Publication  . .  715.01(c)

  Election (see also Restriction; Election of species)  
  Chapter 800

 Action on nonelected claims,

  Election not waived  . .  819

 After multiplicity rejection  . .  2173.05(n)

 After restriction  . .  818

 After restriction,

  Treatment of nonelected claims  .  706.03(m) ,

 821 to 821.03

 Applicant must make  . .  818.03(e)

 Between applications, Conflicting claims  804 , 822 ,
  822.01

 Constructive  . .  818.02(a) ,
  818.02(c)

 Fixed by action on merits  . .  818.01 ,
  818.02(a)

 Implied  . .  818.02(a) ,
  818.02(c)

 Interference  . .  820.02

 Old combination  . .  820.01

 Optional cancellation  . .  818.02(c)

 Original presentation  . .  818.02(a)

 Shift  . .  819.01 , 820

 Traverse  . .  818 , 818.03 ,
  818.03(b) , 818.03(c) , 821.01

 Without traverse  . .  821.02

  Election of species:

 Action after  . .  809.02(c)

 Allowable generic claim lacking  . .  809.02(a)

 Basis  . .  808.01(a) ,
  809.02

 Canceling species claims  . .  818.02(c) ,
  821.01 , 821.02

 Design application  . .  1504

 Implied  . .  818.02(a) ,
  818.02(c)

 Reissue application  . .  1450

 Requirement  . .  809.02(a) ,
  809.02(b)

 Requirement, Prior to search  . .  808.01(a)

 Species claims lacking  . .  809.02(d) ,
  818.02(b)

 Withdrawal of nonelected species  . .  809.02(c)

  Employee No  . .  711.04(b)

  Employees of Patent and Trademark Office, Property interest in
  patent  . .  309

  Enablement  . .  706.03(c) ,
  2164

 Burden on the examiner  . .  2164.04

 Commensurate in scope with claims  . .  2164.08

  Critical feature not claimed  . .  2164.08(c)

  Inoperative subject matter  . .  2164.08(b)

  Single means claim  . .  2164.08(a)

 Compared to Utility  . .  2164.07

 Evidence of  . .  2164.05

 Examples of enablement issues  . .  2164.06

 Form paragraphs used to reject  . .  706.03(c)

 Reduction to practice  . .  2164.02

 Relationship of predictability  . .  2164.03

 Specification must be enabling:

  As of the filing date  . .  2164.05(a)

  To persons of ordinary skill  . .  2164.05(b)

 Test of enablement  . .  2164.01

  Energy, Department of  . .  706.03(b)

  Energy, related applications, Special status  708.02

  English language faulty, New specification 608.01(q)

  English language required  . .  302.02 , 140 ,
  608.01

  Entity, small, claiming status as  . .  509.03

  Entry of amendment (see also Amendment)  . .  714.18

  Entry of "Contents" of file wrapper  . .  719.01

  Entry on Face of file wrapper  . .  719.02 ,

 719.02(b), 1302.09

  Environmental Quality Program  . .  708.02 ,
  1002.02(c)

  Equity (civil action):

 Under 35 U.S.C. 145  . .  1216 , 1216.02

 Under 35 U.S.C. 146  . .  1216 , 2358

  Equivalents in art  . .  904.01(b) ,
  2144.06

  Erasable (specially coated) paper  . .  608.01

  Erasure in specification, Before allowance 1302.01

  Erasure in specification, Before Execution 608.01

  Error in recording title documents  . .  323

  Error without deceptive intention  . .  140 , 2022.05

  Essential material  . .  608.01(p)

  Establishing subclasses  . .  903.02(c)

  Estoppel, Collateral  . .  2012.01

  Estoppel, Defensive publication  . .  711.06

  Estoppel, Interference  . .  2358 , 2363.03

  Evidence, for public use or on sale  . .  2133.03 to
  2133.03(b)

  Evidence submitted with protest  . .  1901.02

  Examination of application:

 Confidentiality during  . .  101

 Order of  . .  707.02(a) , 708
  to 708.03

 Piecemeal  . .  707.07(a) ,
  707.07(g)

 Purpose  . .  701

 Reissue  . .  1440

 Request for SIR  . .  1103

 "Secrecy order" case  . .  130 , 1304

 Statutory authority  . .  701

  Examiner:

 Action  . .  707

 Actions counted  . .  1705

 Affidavit  . .  2144.03

 Assignment of application for

  examination  . .  903.08(b)

 Classification (see also Classification examiner)  
  903

 Disposals  . .  1705

 Expressing Opinion of Validity  . .  1701

 Name  . .  503

 New, Action indicated by Primary  . .  707.01

 Previous action by another examiner:

  Allowed claims  . .  706.04

  Interview  . .  713.01

  Search  . .  704

 Primary

  Actions requiring personal attention  707.01 ,

 714.16, 715.08, 1004

  Name on file wrapper  . .  1302.13

 Reasons for allowance  . .  1302.14

 Resigns  . .  708.03 , 1702

 Resigns, old cases special  . .  708.03

 Suggestion of allowable claims  . .  707.07(j)

 Telephoning attorney  . .  408 , 1302.14

 Testimony as patent expert  . .  1701.01

 Treatment of protest  . .  1901.06

 Work Report  . .  1705

  Examiner docket time, time and activity recording  1705

  Examiner's action (see also Action; Letter, Examiner's)  707

  Examiner's amendment  . .  1302.04

 Abstract changed by  . .  608.01(b) ,
  1302.01 , 1302.04

 By initialing  . .  1302.04

 Claim, Nonstatutory, Canceled  . .  1302.04(b)

 Claim, Numbers identifying  . .  1302.01 ,
  1302.04(g)

 Claim lost in interference, Canceled  2363.03

 Claims, Nonelected invention, Canceled  821.01 ,

 821.02

 Copending application data brought up to date  201.11
  , 1302.01

 Defensive Publication  . .  711.06

 Deposit Account charge  . .  1302.04

 Drawing correction  . .  608.02(w) ,
  1302.04 , 1302.05

 Extension of time required for  . .  706.07(f)

 Formal matters  . .  1302.01 ,
  1302.04

 Patented copending application data  .  1302.04(f)

 Plant patent practice  . .  1610

 "Printer Waiting"  . .  1302.04 ,
  1309.02

 Reference citation corrected  . .  707.05(g)

 Title of application  . .  606.01 ,
  1302.04(a)

  Examiner's answer:

 Appeal brief  . .  1208

 New ground of rejection  . .  1208.01

 Petition  . .  1002

 Print of drawing  . .  1204

 Reexamination  . .  2275

 Reply brief  . .  1208

 Special status  . .  708.01

  Examiner's letter (see also Action; Letter, Examiner's)  707

  Examiner's statement. (See Examiner's answer.)

  Examining Group Search Facilities Use Regulations  510

  Example, Comments on  . .  707.07(l)

  Example, Operative  . .  608.01(p) ,
  2164.02

  Excess number of claims for fee, After notice of allowance  
  714.16(c)

  Excess number of claims for filing fee  . .  714.10

  Execution of oath  . .  604 , 605.04

  Executive Order No. 5464  . .  1608

  Executor or Administrator  . .  409.01 ,
  605.05

 Allowance and Issue  . .  409.01(f)

 Application by, After discharge  . .  409.01(c)

 Assigned application, Inventor dies  .  409.01(e)

 Authority  . .  409.01(b)

 Consular certificate  . .  409.01(b)

 Foreign country  . .  409.01(b) ,
  409.01(d)

 Heir  . .  409.01 ,
  409.01(a) , 409.01(b) , 409.01(d)

 Intervention not required  . .  409.01(f)

 Joint inventors, inventor dies  . .  409.01(f)

 Specification form  . .  605.05

  Exhibit  . .  608.03

  Exhibit, Affidavit under 37 CFR 1.131  . .  715.07 ,

 715.07(d)

  Exhibit at interview  . .  713.08

  Exhibit, Handling  . .  608.03(a)

  Ex parte questions  . .  713.06

  Experimental use (see also Public Use)  . .  2133.03 ,
  2133.03(e)

 Commercial exploitation  . .  2133.03(e)(1)

 Completeness of the invention  . .  2133.03(e)(3)

 Factors indicative of  . .  2133.03(e)(4) ,
  2133.03(e)(5)

 Intent to experiment  . .  2133.03(e)(2)

 Reduction to practice  . .  2133.03(e)(3)

 Testing by Third party  . .  2133.03(e)(5) ,
  2133.03(e)(7)

 Testing, developmental  . .  2133.03(e)(6)

 When experimental use ends  . .  2133.03(e)(3)

  Experimentation, Disclosure requiring  . .  608.01(g)

  Export control of patent applications  . .  120 , 140

  Exposure of papers during interviews  . .  101 , 713.07

  Expounding patent law  . .  713.02

  Express abandonment  . .  711 , 711.01

  Express Mail Deposit  . .  513

  Express Mail Service  . .  502 , 506.02 ,
  513 , 711.03(c)

  Expunge trade secret material  . .  724.05 ,
  1002.02(b)

  Extension of shortened response period  . .  710.02(e)

  Extension of time  . .  710.02(e) ,
  1002.02(c) , 1302.04

 For filing brief  . .  1206 , 1208.01 ,
  1215.04

 General fee authorization, not petition  .  714.17

 Hand delivered  . .  502

 Protest interview  . .  1902 , 1902.01 ,
  1902.01(a)

 Reexamination  . .  2265

 Request  . .  710.02(e) ,
  1002.02(c)

  Extension, patent term  . .  1309.01

  F

  Facsimile:

 Correspondence  . .  502.01

 Declaration or oath  . .  502.02

 PCT international application  . .  1834.01

 Maintenance fees  . .  2511

  Federal Holiday within DC  . .  201.04(b) ,
  201.11 , 201.13

 505

  Federal license rights  . .  310

  Federal Telecommunications System  . .  408 , 713.01

  Fee

 Appeal  . .  1205

 Assignment recording  . .  302.06

 Examiner Amendments  . .  706.07(f)

 Extensions of time  . .  706.07(f)

 Filing  . .  607

  Claims in excess of  . .  506 , 607 ,
  714.10

  Dependent claims  . .  608.01(n)

  Deposit Account  . .  509.01

  Design application  . .  1505

  Inadequate  . .  506

  International application  . .  1810 , 1827

  Reduction for small entities  . .  509.02

  Return  . .  503 , 607.02

  Small Entity  . .  509.03

 Issue:

  Deposit Account  . .  509.01

  Failure to pay  . .  712

  Interfering case, Not applied  . .  2305.04

  Petition to accept  . .  712

  Reduction for small entities  . .  509.02

  Reissue  . .  1455

 Maintenance  . .  2500

  Time for payment  . .  2506

  After expiration of patent  . .  2509

  Patents subject to  . .  2504

  Fee, no requirement for in citation  . .  2205

  Fee, Petition to revive  . .  711.03(c)

  Fee for requesting reexamination  . .  2215

  Fees, Insufficient payment  . .  509

  Fees, Payment of  . .  509

  Fees, Reduction for small entities  . .  509.02

  Field of search  . .  708.03 ,
  904.01(d) , 1701

  Field of search, Notation by Examiner  . .  705.01(a) ,

 719.05, 904.01(d)

  File wrapper  . .  719

 Action entered  . .  707.10

 Allowed case data entered  . .  1302.09

 Amendment endorsed  . .  710.05 , 714.18

 Arrangement of papers  . .  719.01(a) ,
  1302.12

 Assignment endorsement  . .  303

 Civil action  . .  1216.02

 Classification data  . .  719.03

 Completeness  . .  724.01

 "Contents", Entry in  . .  719.01

 Continuing Rule 62 (FWC)  . .  201.06(b) ,
  201.07

 Correction of error  . .  719.02

 Data entered on  . .  710.05 , 719.02
  , 1302.09

 Drawings secured to  . .  508

 Field of search  . .  719.05

 Field of search, Patentability report  705.01(a)

 Foreign application cross-noting  . .  202.03

 Foreign filing date entered on  . .  719.06 , 1302.06

 Index of claims  . .  719.04

 Interference notation  . .  2301.01(b)

 "Licensing and Review" stamp  . .  140

 Name of applicant changed  . .  719.02(b)

 Notation for

  continuing application  . .  201.11 , 202.02

  foreign application  . .  202.03

  provisional application  . .  202.02

 Notes to application of another party  101

 Papers in  . .  719.01

 Parent case notation on  . .  202.02 , 1302.09

 Print of drawing  . .  508 , 719.01(b)

 Relation of application noted on  . .  202.02 , 719.07

 Residence changed  . .  719.02(b)

 Return of paper entered on  . .  719.01

 Signing and dating by Primary  . .  1302.13

 Statutory period ends on nonworking day  .  710.05

  Files Repository  . .  711.04(b)

  Filing date  . .  502 , 503 ,
  505 , 506 , 506.02

 Effective, prior application  . .  201.11 ,

 706.02, 2133.01

 Express Mailing date  . .  506.02 , 513

 Foreign application, Convention date (see Foreign
  application)  .  201.13 , 201.14
  , 201.15

 International application  . .  506 , 1810

 Later filed application as disclosure  608.01(p)

 Patent Cooperation Treaty  . .  506 , 1810

 Petition  . .  506.02 , 601.01
  , 601.01(b)

 Refusal to Accord  . .  506.02 , 605

 Review by Office of Petitions  . .  201.06(a)

 Review of Refusal to Accord  . .  506.02

 Subsequent publication as disclosure  608.01(p)

  Filing date of reexamination request  . .  2215

  Filing fee  . .  607

 Claims in excess of  . .  506 , 714.10

 Deposit Account  . .  509.01

 Design application  . .  1505

 Inadequate  . .  506

 Reduction for small entities  . .  509.02

 Reexamination  . .  2215

 Reissue application  . .  1415

 Return  . .  140 , 503 ,
  607.02

  Filing receipt  . .  502 , 503

  Final action. (See Allowance and issue; Final rejection.)

  Final action, Special nature of  . .  708.01

  Final fee. (See Issue fee.)

  Final rejection  . .  706.07

 Amendment after  . .  714.12 , 714.13

 Amendment after, Entered in part  . .  714.20

 First action  . .  706.07(b)

 Interview  . .  713.09

 Letter  . .  706.07

 Patentability report  . .  705.01(a)

 Petition to vacate  . .  1002.02(c)

 Premature  . .  706.07(c)

 Premature, Withdrawal  . .  706.07(d)

 Primary's attention required  . .  1004

 Reexamination  . .  2271

 "Secrecy order" application  . .  130

 Special  . .  708.01

 Time for response  . .  706.07(f)

 Transitional procedure  . .  706.07(g)

 When proper  . .  706.07 ,
  706.07(a) , 706.07(b)

 Withdrawal  . .  706.07(e)

 Withdrawal, Primary's attention  . .  1004

 Withdrawal of premature  . .  706.07(d)

 Withdrawal prior to hearing on appeal  1208.02

  Final restriction requirement  . .  818.03

  First action final rejection  . .  706.07(b)

  First action form  . .  707

  First foreign application (see Foreign application)  
  201.13

  Fissionable material  . .  706.03(b)

  Five year pendency  . .  707.02(a) ,
  708.01

  Flowchart for examination of computer-related inventions  
  2106

  Flowchart of reexamination  . .  2201

  Flowsheet  . .  608.02

  Foreign application:

 As prior art  . .  2127

 Certificate of correction to perfect

  priority  . .  201.16

 Certified copy to avoid reference  . .  201.14 , 706.02

 Cross-noting on file wrapper  . .  202.03

 Date, Entitled to  . .  201.13 to 201.15

 Determination of priority  . .  201.14 , 201.15

 Disclosure  . .  201.15

 English language translation for benefit of date  201.15
  , 706.02

 Filing in foreign country  . .  140

 First  . .  201.13

 Form of request  . .  201.14(b)

 German design applications  . .  201.14(b)

 Great Britain  . .  201.15

 Identification  . .  201.14(d)

 License to file  . .  140 , 706.03(s)

 Listed on oath  . .  201.14 , 602

 More than one  . .  201.14

 No claim for priority  . .  201.14(c)

 No reference made in declaration  . .  201.14(c)

 Noting earliest date on file wrapper  202.03 , 1302.06

 Overcoming reference which is  . .  201.15 , 715

 Prior art cited in related  . .  2001.06(a)

 Priority  . .  201.13 , 706.02

 Papers not filed  . .  201.14(c)

 Priority document in parent application  .  201.14(b) ,
  201.14(c)

 Ribboned  . .  602.04(a)

 Same invention  . .  201.15

 Seal  . .  602.04(a)

 Statutory bar

  (See Foreign application)  . .  201.13 ,
  706.02(e) ,

 2135.01

 Time limits to submission  . .  201.14 ,
  201.14(a)

  Certificate of correction  . .  201.16

  Reissue  . .  201.14 ,
  201.14(b) , 201.16

 Translation required  . .  201.15

  Foreign countries recognized for priority  .  201.13

  Foreign executed oath  . .  602.04

  Foreign filing, Proving for priority  . .  201.14 ,
  706.02

  Foreign filing date,

 Entitled to  . .  201.13 , 719.06

 On file wrapper  . .  202.03 , 1302.06

  Foreign filing license  . .  140

 For PCT  . .  115 , 1832

  Foreign language

 Application  . .  608.01

 Names  . .  901.05(a)

 Oath or declaration  . .  602.06

  Foreign patent:

 Art collection  . .  901.07

 Citation  . .  707.05(e) ,
  901.05(a)

 Citation dates and information  . .  901.05(a) ,
  901.05(b) , 1871

 Classification  . .  903 , 903.03

 Country Codes  . .  1851

 Document cases, PCT  . .  1851

 Duplicates  . .  903.03

 Effective Date  . .  901.05(b)

 Family of (INPADOC)  . .  901.06(a)

 In prior art statement  . .  609

 Journals  . .  901.06(a)

 Law  . .  901.05

 Library  . .  901.06(a)

 Listing at allowance  . .  1302.12

 Oppositions  . .  901.05

 Ordering  . .  901.05(c)

 Print of, Where obtained  . .  901.05(c)

 Reference  . .  901.05

 Statutory bar (see Foreign application)  .  201.13 ,
  706.03(s)

 Transfer  . .  903.05

 Translation of  . .  901.05(d)

 Unlicensed, Same applicant  . .  706.03(s)

  Foreign priority (see Foreign application) 201.13 -
  201.15

 U.S. filing date computed  . .  201.13 , 706.02
  , 2136.03

  Foreword  . .  III

  Forfeited application  . .  712

 Prior art  . .  901.02

 Retention label  . .  1302.07

  Forfeiture (see failure to pay issue fee)  .  712

  Formal drawings Rule 60  . .  201.06(a)

  Formal matter:

 Allowance and issue  . .  1302.01 ,
  1302.02 , 1302.04

 Amendment of case in issue  . .  714.16

 Claim allowable except for  . .  706 , 707.07(j)

 Response to objection  . .  14.02

 Review of action involving  . .  Introduction

 Right of priority

  Prior Foreign application  . .  201.13 - 201.15

  Prior U.S. application  . .  201.11

 Specification format  . .  608.01

 When taken up  . .  707.07(a) ,
  707.07(e) ,

 707.07(j), 714.02

  Former examiner restrictions  . .  1702

  Forms and form letters:

 . .  Abandonment  
  711.04(c)

 . .  Advisory  
  706.07(f) , 714.13 , 2265

 . .  Allowability  
  1302.03

 . .  Amendment
  received after allowance  
  608.02(z) ,

 714.16(d), 714.16(e), 2307.03

 . .  Amendment after
  Board decision, refused entry  
  1214.07

 . .  Amendment
  nonresponsive  .  714.03

 . .  Amendment not
  entered  . .  714.22

 . .  Amendment
  unsigned  . .  714.01(a)

 . .  Certificate
  under 37 CFR 3.73(b) PTO/SB/96  
  324

 . .  Change of
  Correspondence Address, Application
  PTO/SB/122  . .  403

 . .  Change of
  Correspondence Address, Patent
  PTO/SB/123  . .  403

 . .  Change of power
  of attorney or correspondence address
  in patent  . .  2222

 . .  Correction of
  Formal Matters after Board Decision
  Sustaining Examiner in Whole or in
  Part  . .  1214.06

 . .  Correction of
  Formal Matters after Dismissal of
  Appeal  . .  1215.04

 . .  Correspondence
  Address Indication PTO/SB/121  
  403

 . .  Cover sheet,
  assignment document  302.07

 . .  Cover sheet,
  provisional application

  Reproduced  . .  201.04(b)

  Cited  . .  601

 D-10  . .  130 , 1304 ,
  1304.01

 . .  DD Form 441  
  120

 . .  Death of
  Attorney, case ready for allowance  
  406

 . .  Declaration  
  602

 . .  Disclaimer in
  Patent PTO/SB/43  1490

 . .  Disclosure
  Document Program  1706

 . .  Election of
  species  . .  809.02(a)

 . .  Examiner's
  letter or action PTOL-326  707

 . .  Examiner's
  answer  . .  1208

 . .  Examiner's
  Biweekly Time Worksheet PTO-690E  
  1704 , 1705 , 2238

 . .  Examiner's Case
  Action Worksheet PTO-1472  1705

 . .  Examiner's
  statement on appeal  1208

 "Fee Address" Indication PTO/SB/47

  Reproduced  . .  2595

  Cited  . .  2540

 . .  Final rejection
  . .  706.07

 . .  45-day Letter  
  150

 . .  Incorrect
  Citation of References, Correction  
  707.05(g)

 . .  Information
  disclosure statement  609

  1418, 1893.03(g), 1901.03, 2001.04

 2003, 2004, 2214, 2280, 2287

 . .  Interference  
  2309.02

 . .  Interfering
  Subject Matter, "Secrecy Order" cases
  . .  2309.06

 . .  International
  application transmittal 1830

 . .  Interview
  Summary PTOL-413  706.07(f) ,

 713.04

 . .  Issue

  Classification PTO-270

  Reproduced  . .  903.09

  Cited  . .  903.07 ,
  903.07(b) , 903.09

  . .  1107 , 1302.10 ,
  1455 , 1611

 . .  Issue
  Classification, Designs PTO-328  
  903.07 , 1107

 . .  Issue Fee
  Transmittal PTOL-85B  307 , 324

  502.02, 512, 1306.01,

 1306.02, 1309, 1481

 . .  Maintenance Fee
  Transmittal PTO/SB/45 Reproduced  
  2595

  Cited  . .  2515

 . .  Notice of
  Abandonment PTOL-1432  711.04(c)

 . .  Notice of
  Allowability PTOL-37  602.03 ,

  608.02, 608.02(a),

 608.02(b), 608.02(q),

 608.02(z), 609, 710.02(e),

 714.13, 714.16(d),812.01,

 1002.02(d), 1205, 1207,

 1302.03, 1302.04, 1416

 . .  Notice of
  Allowance and Issue Fee Due PTOL-85
  . .  115 , 201.06(a)
  ,

 203.04, 203.07,

  203.08, 406, 502,

  602.03, 606.01,

 608.01(v), 608.02(b),

  608.02(x), 608.02(z),

 609, 708.02, 710.02(e),

 711.01, 711.02, 711.03(c),

  711.06, 712, 714.15,

 714.16, 714.16(a),

  714.16(d), 804,

 812.01, 1002.02(c),

  1002.02(d), 1303,

 1303.01, 1303.02,

  1303.03, 1304.01, 1305,

 1306, 1306.02, 1306.03,

  1308, 1308.01, 1308.03,

 1309,  1481, 1505,

 1512, 1705, 1711,

 1893.01(e), 1901.07(a),

 2001.04, 2307.03, 2364,

 2406,  2411, 2411.03, 2575

 . .  Notice of
  allowance, "Secrecy Order" cases D-10
  . .  130 ,

 1304, 1304.01

 . .  Notice of appeal
  . .  1205 , 2273

 . .  Notice of
  Draftperson's Patent Drawing Review
  PTO-948  . .  507 ,

 608.02,  608.02(b),

 608.02(h), 608.02(q),

  707, 707.07(a)

 . .  Notice of entry
  or report PTOL-271 608.02(z) ,
  714.16(d) ,

 714.16(e), 2307.03

 . .  Notice of
  Incomplete Application PTO-1123  
  506 , 601.01(d)

 . .  Notice of Intent
  to Publish Statutory Invention
  Registration PTO-1364  1107

 . .  Notice of
  references cited PTO-892  707 ,
  707.05(a) ,

 707.05(c), 707.05(d), 707.05(e)

 . .  Office Action
  Summary PTOL-326  608.02(b) ,
  608.02(h)

 . .  PCT forms (See
  Patent Cooperation Treaty)

 . .  Petition for
  Revival of an Application for Patent
  Abandoned Unavoidably PTO/SB/61  
  711.03(c)

 . .  Petition for
  Revival of an Application for Patent
  Abandoned Unintentionally PTO/SB/64
  . .  711.03(c)

 . .  Plant Color
  Coding Sheet PTO/SB/20  1605

 . .  Potential
  interference, same attorney or agent
  . .  2305

 . .  Provisional
  application cover sheet  
  201.04(b)

 . .  PTO-14A
  Reproduced  . .  905.02

 . .  PTO-14B  
  903.06 , 905.02 , 2287

 . .  PTO-14C
  Reproduced  . .  901.09

  Cited  . .  901.09 ,
  905.02

 . .  PTOL-37  
  203.08 , 602.03 , 608.02 ,

  608.02(a), 608.02(b), 608.02(q),

 608.02(z), 609, 707.05(g),

 710.02(e), 714.13, 714.16(d),

  812.01, 1207, 1302.03,

 1302.04, 1302.12, 1302.14

 . .  PTOL-85  
  203.08 ,

 502, 608.02(z),

 714.16(d), 1306.02, 1308.03

 . .  PTOL-85B  
  307 , 324 , 512 , 1306.01 ,

 1306.02, 1309, 1481

 . .  PTOL-90  
  608.02 , 609 , 714.16 ,

  1206, 1208, 1208.03,

  1208.04, 1210, 2427.01

 . .  PTO-97  
  1302.04

 . .  PTO-150  
  1302.07 , 1706

 . .  PTO-152  
  409.01(b) , 506 , 601.01(h) ,

 602.03,  604.02, 605.02,

 605.03, 707, 707.07(a)

 . .  PTO-250  
  905.01

 . .  PTO-262  
  1204

 . .  PTO-270
  Reproduced  . .  903.09

  Cited  . .  903.07 ,
  903.09 , 1107 ,  . . 

  . .  1302.10 , 1455 ,
  2287

 . .  PTOL-271  
  608.02(z) , 714.16(d) ,

  714.16(e), 2307.03

 . .  PTOL-303  
  706.07(f) , 708.02 ,

 711.03(c), 714.13, 2265

 . .  PTO-306  
  1485

 . .  PTOL-316  
  707.05(g)

 . .  PTOL-319  
  714.03

 . .  PTOL-326
  Reproduced  . .  707

  Cited  . .  201.14(b) ,

  . .  201.14(c) ,
  608.02(a) , 608.02(b) ,

  . .  608.02(h) , 609
  , 706.07 ,

  . .  707 , 710.02(b)
  , 812.01

 . .  PTOL-327  
  708.02 , 710.02(e) , 714.17

 . .  PTO-328  
  903.07 , 1107 , 2287

 . .  PTOL-404  
  1485

 . .  PTOL-413  
  713.04 , 714.13 , 1903.01

 . .  PTO-436L  
  201.14(c)

 . .  PTOL-442  
  1103

 . .  PTOL-444  
  1103

 . .  PTO-445  
  1431

 . .  PTOL-445  
  1103

 . .  PTOL-446  
  1103

 . .  PTOL-447  
  1103 , 1109

 . .  PTO-447A  
  903.08(a) , 903.08(d) ,

  903.08(e), 2237

 . .  PTOL-448  
  1103

 . .  PTOL-449  
  1103

 . .  PTOL-450  
  1109

 . .  PTOL-451  
  1101

 . .  PTOL-452  
  1103

 . .  PTO-457  
  601.01(h)

 . .  PTOL-461  
  1215.04

 . .  PTOL-462  
  1206

 . .  PTOL-465  
  2264

 . .  PTOL-472  
  2232

 . .  PTOL-474  
  2281

 . .  PTO-690E  
  903.03 , 1704 , 2238

 . .  PTO-850
  Reproduced  . .  2309.02

  Cited  . .  1002.02(d) ,
  1705 ,

  . .  2305.04 ,
  2308.01 ,

  . .  2309.01 ,
  2309.02 , 2311

 . .  PTO-875  
  608.01(n)

 . .  PTO-892
  Reproduced  . .  707.05(a)

  Cited  . .  201.15 , 609 ,
  707 ,

  . .  707.05 ,
  707.05(a) ,

  . .  707.05(c) ,
  707.05(d) ,

  . .  707.05(e) ,
  707.05(g) ,

  . .  901.06 , 1208 ,
  1208.01 ,

  . .  1302.04 ,
  1302.12 ,

  . .  1901.06 , 2246 ,
  2257 ,

  . .  2287 , 2290

 . .  PTO-948  
  507 , 608.02 ,

  608.02(b), 608.02(h), 608.02(q),

  707, 707.07(a)

 . .  PTO-1050  

  1485

 . .  PTO-1101  
  1309

 . .  PTO-1123  
  506 , 601.01(d) , 601.01(h)

 . .  PTO-1305  
  115

 . .  PTO-1360  
  608.01(n)

 . .  PTO-1364  
  608.02(z) , 1107

 . .  PTO-1382  
  1830 , 1832 , 1840.01

 . .  PTOL-1432  
  711.01 , 711.02 , 711.03(c) ,

 711.04(c)

 . .  PTO-1445  
  2214

 . .  PTO-1449
  Reproduced  . .  609

  Cited  . .  609 ,
  707.05(d) ,

  . .  1302.12 ,
  1901.03 , 1901.06 ,

  . .  2214 , 2246 ,
  2257 , 2287 , 2290

 . .  PTO-1465  
  2214

 . .  PTO-1472  
  1705

 . .  PTO-1516  
  2287

 . .  PTO-1517  
  2287

 . .  PTO-1532  
  601.01(h)

 . .  PTO-1533  
  601.01(h)

 . .  PTO-1534  
  601.01(h)

 . .  PTO-1547  
  1107

 . .  PTO-1595  
  324

 . .  PTO-1604  
  717.05

 . .  PTO-1605  
  717.05

 . .  PTO-1607  
  601.01(h)

 . .  PTO-1608  
  601.01(h)

 . .  PTO-1669  
  601.01(h)

 . .  PTO-1672  
  601.01(h)

 . .  PTO/SB/01  
  602

 . .  PTO/SB/08  
  609

 . .  PTO/SB/09  
  509.03

 . .  PTO/SB/10  
  509.03

 . .  PTO/SB/11  
  509.03

 . .  PTO/SB/13  
  201.06(a)

 . .  PTO/SB/14  
  201.06(b)

 . .  PTO/SB/16  
  201.04(b)

 . .  PTO/SB/20  
  1605

 . .  PTO/SB/25  
  1490

 . .  PTO/SB/26  
  1490

 . .  PTO/SB/43  
  1490

 . .  PTO/SB/45
  Reproduced  . .  2595

  Cited  . .  2515

 . .  PTO/SB/47
  Reproduced  . .  2595

  Cited  . .  2540

 . .  PTO/SB/56  
  1415

 . .  PTO/SB/57  
  2214

 . .  PTO/SB/61  
  711.03(c)

 . .  PTO/SB/63  
  711.03(c)

 . .  PTO/SB/64  
  711.03(c)

 . .  PTO/SB/83  
  402.06

 . .  PTO/SB/94  
  1101

 . .  PTO/SB/96  
  324

 . .  PTO/SB/121  
  403

 . .  PTO/SB/122  
  403

 . .  PTO/SB/123  
  403

 . .  PTO/SB/124  
  403

 . .  PTO/SB/125
  Reproduced  . .  403

  Cited  . .  403 , 2540

 . .  Recordation Form
  Cover Sheet PTO-1595  324

 . .  Reexamination
  decision  . .  2246

 . .  Reexamination
  request  . .  2214

 . .  Reissue
  Application Fee Determination Record
  PTO/SB/56  . .  1415

 . .  Rejection of
  claim copied from patent  
  2307.02

 . .  Request for
  Customer Number PTO/SB/125  403

 . .  Request for

  Customer Number Data Change
  PTO/SB/124  . .  403

 . .  Request for
  Filing a Patent Application under 37
  CFR 1.60 PTO/SB/13 201.06(a)

 . .  Request for
  Filing a Patent Application under 37
  CFR 1.62 PTO/SB/14 201.06(b)

 . .  Request for
  Reexamination Transmittal PTO/SB/57
  . .  2214

 . .  Request for
  Statutory Invention Registration
  PTO/SB/94  . .  1101

 . .  Request for
  Withdrawal as Attorney or Agent
  PTO/SB/83  . .  402.06

 . .  Restriction
  requirement  . .  817

 . .  Rule 60 filing
  . .  201.06(a)

 . .  Rule 62 filing
  . .  201.06(b)

 . .  Small entity
  statements  . .  509.03

 . .  Statements to
  DOE or NASA  . .  151

 . .  Subject matter
  admits of illustration  
  608.02(a)

 . .  Terminal
  Disclaimer to Accompany Petition
  PTO/SB/63  . .  711.03(c)

 . .  Terminal
  Disclaimer to Obviate a Double
  Patenting Rejection over a Prior
  Patent PTO/SB/26  1490

 . .  Terminal
  Disclaimer to Obviate a Provisional
  Double Patenting Rejection over a
  Pending Second Application PTO/SB/25
  . .  1490

 . .  Withdrawal from
  issue  . .  1002.02(c)

 . .  Yellow tag
  PTO-1364 Reproduced  608.02(z)

  Cited  . .  608.02(z) ,
  1107 ,

  . .  1302.05(a)

  Form paragraphs: (Reproduced)

 2.01  . .  201.06

 2.02  . .  201.06(a)

 2.03  . .  201.06(a)

 2.04  . .  201.06(a)

 2.05  . .  201.07

 2.06  . .  201.08

 2.07  . .  201.09

 2.08  . .  201.10

 2.09  . .  201.11

 2.10  . .  201.11

 2.11  . .  201.11

 2.12  . .  201.11

 2.13  . .  201.03

 2.13.01  . .  201.03

 2.13.02  . .  201.03

 2.14  . .  201.03

 2.14.01  . .  201.03

 2.15  . .  201.11

 2.16  . .  201.11

 2.17  . .  201.11

 2.18  . .  201.13

 2.19  . .  201.15

 2.20  . .  201.14(b)

 2.21  . .  201.14(c)

 2.23  . .  201.14(c)

 2.24  . .  201.14(c)

 2.25  . .  201.14(c)

 2.26  . .  201.14(c)

 2.27  . .  201.14(c)

 2.28  . .  201.06(b)

 2.29  . .  201.14

 4.01  . .  403

 4.02  . .  406

 4.03  . .  406

 4.04  . .  406

 4.05  . .  409.01(b)

 4.06  . .  407

 4.07  . .  407

 4.08  . .  407

 5.01  . .  502

 5.02  . .  512

 5.03  . .  903.08

 5.04  . .  512

 5.05  . .  512 , 513

 6.01  . .  608.01(a)

 6.02  . .  608.01(a)

 6.02.01  . .  605.04(a)

 6.02.02-6.02.04  . .  608.05

 6.03  . .  602.01

 6.05  . .  602 , 602.04(a)
  , 604.01 , 605.01

 6.05.01  . .  602

 6.05.02  . .  605.02

 6.05.03  . .  605.01

 6.05.04  . .  602

 6.05.05  . .  602

 6.05.06  . .  602

 6.05.07  . .  602

 6.05.08  . .  602

 6.05.09  . .  602

 6.05.10  . .  602.05

 6.05.11  . .  604.01

 6.05.12  . .  604.01

 6.05.13  . .  602.04

 6.05.14  . .  602.04(a)

 6.05.15  . .  602

 6.05.16  . .  602

 6.05.17  . .  602

 6.06  . .  603

 6.07  . .  604.02

 6.08  . .  604.04(a)

 6.09  . .  605.02

 6.09.01  . .  605.03

 6.09.02  . .  605.03

 6.10  . .  605.04(b)

 6.11  . .  606.01

 6.11.01  . .  606.01

 6.12  . .  608.01(b)

 6.13  . .  608.01(b)

 6.14  . .  608.01(b)

 6.15  . .  608.01(b)

 6.16  . .  608.01(b)

 6.17  . .  608.01(j)

 6.18  . .  608.01(n)

 6.18.01  . .  608.01(m)

 6.19  . .  608.01(p)

 6.19.01  . .  608.01(p)

 6.20  . .  608.01(v)

 6.21  . .  608.02

 6.22  . .  608.02

 6.22.01-6.22.07  . .  608.02

 6.23  . .  608.02

 6.23.01  . .  608.02

 6.24  . .  608.02 ,
  608.02(b)

 6.24.01  . .  608.02

 6.25  . .  608.02(z)

 6.25.01  . .  608.02

 6.26  . .  608.02

 6.27  . .  608.02

 6.28  . .  608.01(q)

 6.28.01  . .  608.01(q)

 6.28.02  . .  608.01(q)

 6.28.03  . .  608.01(q)

 6.29  . .  608.01

 6.30  . .  608.01

 6.31  . .  608.01

 6.32  . .  608.01

 6.33  . .  608.01(m) ,
  714.22

 6.34  . .  608.01(m) ,
  714.22

 6.36  . .  608.02(d)

 6.36.01  . .  608.02(g)

 6.37  . .  608.02(h)

 6.38  . .  608.02

 6.38.01  . .  608.02

 6.38.02  . .  608.02

 6.39  . .  608.02

 6.40  . .  608.02

 6.41  . .  608.02

 6.42  . .  608.02

 6.43  . .  608.02

 6.44  . .  608.02

 6.45  . .  608.02(a)

 6.46  . .  602.03

 6.47  . .  608.02

 6.48  . .  608.02(z) ,
  714.16(d)

 6.49  . .  609

 6.49.01-6.49.09  . .  609

 6.51  . .  609

 6.52  . .  609

 7.01  . .  702.01

 7.02  . .  702.01

 7.03  . .  702.01

 7.04  . .  701 , 706.03(a)

 7.05  . .  706.03(a)

 7.05.01  . .  706.03(a)

 7.05.02  . .  706.03(a)

 7.05.03  . .  706.03(a)

 7.05.04  . .  706.03(a)

 7.07  . .  706.02(i)

 7.08  . .  706.02(i)

 7.09  . .  706.02(i)

 7.10  . .  706.02(i)

 7.11  . .  706.02(i)

 7.12  . .  706.02(i)

 7.13  . .  706.02(i)

 7.14  . .  706.02(i)

 7.15  . .  706.02(i) ,
  804.03

 7.15.01  . .  706.02(f) ,
  706.02(i) , 804.03

 7.15.02  . .  706.02(i) ,
  804.03

 7.15.03  . .  706.02(i)

 7.16  . .  706.02(i)

 7.17  . .  706.02(i)

 7.18  . .  706.02(i)

 7.19  . .  706.02(i) ,
  804.03

 7.20  . .  706.02(m)

 7.20.01  . .  706.02(m)

 7.20.02  . .  706.02(m)

 7.21  . .  706.02(m) ,
  804.03

 7.21.01  . .  706.02(m) ,
  804.03

 7.21.02  . .  706.02(m) ,
  804.03

 7.22  . .  706.02(m)

 7.23  . .  706.02(m)

 7.27  . .  706.02(m)

 7.28  . .  706.03(o)

 7.29  . .  608.01

 7.29.01  . .  608.01(m)

 7.29.02  . .  608.01(m)

 7.29.03  . .  608.01(m)

 7.30  . .  706.03(c)

 7.30.01  . .  706.03(c)

 7.30.02  . .  706.03(d)

 7.31.01-7.31.04  . .  706.03(c)

 7.33.01  . .  706.03(c)

 7.34  . .  706.03(d)

 7.34.01 to 7.34.14  . .  706.03(d)

 7.35 to 7.35.01  . .  706.03(d)

 7.36  . .  608.01(n)

 7.37 to 7.37.13  . .  707.07

 7.38  . .  707.07

 7.39  . .  706.07

 7.40  . .  706.07(a)

 7.40.01  . .  706.07(a)

 7.41  . .  706.07(b)

 7.41.01  . .  706.07(g)

 7.41.02  . .  706.07(g)

 7.42  . .  706.07(d)

 7.42.01  . .  706.07(g)

 7.42.02  . .  706.07(g)

 7.42.03  . .  706.07(g)

 7.43  . .  608.01(n) ,
  707.07(j)

 7.43.01  . .  707.07(j)

 7.43.02  . .  707.07(j)

 7.43.03  . .  707.07(a)

 7.44  . .  608.01(o)

 7.45  . .  608.01(n)

 7.48  . .  706.03(u)

 7.49  . .  706.03(u)

 7.50  . .  706.04

 7.51  . .  714.14

 7.52  . .  709

 7.53  . .  709

 7.54  . .  709

 7.56  . .  709

 7.57  . .  715

 7.58  . .  715 , 715.05

 7.59  . .  715 , 715.07

 7.60  . .  715

 7.61  . .  715

 7.62  . .  715 , 715.07(a)

 7.63  . .  715 , 715.07

 7.64  . .  715

 7.65  . .  716

 7.66 to 7.66.05  . .  716

 7.67  . .  714.13

 7.67.01  . .  706.07(f) ,
  714.13

 7.67.02  . .  706.07(f) ,
  714.13

 7.68  . .  714.13

 7.69  . .  714.13

 7.70  . .  714.13

 7.71  . .  714.13

 7.72  . .  714.13

 7.73  . .  714.13

 7.75  . .  714.13

 7.76  . .  714.13

 7.78  . .  714.13

 7.79  . .  714.13

 7.80  . .  714.13

 7.81  . .  707.05(g)

 7.82  . .  707.05(g)

 7.82.01  . .  707.05(g)

 7.83  . .  707.05(g)

 7.84  . .  713.04

 7.84.01  . .  714.01(a)

 7.85  . .  714.16(d)

 7.86  . .  714.16(e)

 7.87  . .  714.16(d)

 7.88  . .  711.01

 7.89  . .  711.01

 7.90  . .  711.02

 7.91  . .  711.02(a)

 7.95  . .  714.03

 7.96  . .  707.05

 7.97  . .  707.07(j)

 7.98  . .  710.02(e)

 7.99  . .  1002

 7.100  . .  707

 7.101  . .  707 , 707.08

 7.102  . .  707 , 707.08

 7.103  . .  707

 7.104  . .  706.02(c)

 7.200  . .  2427.01

 7.201  . .  2427.01

 7.202  . .  2427.01

 7.203  . .  2427.01

 8.01  . .  809.02(a)

 8.02  . .  809.02(a)

 8.03  . .  809.02(c)

 8.04  . .  821.03

 8.05  . .  821.01

 8.06  . .  821.02

 8.07  . .  821.02

 8.08  . .  817

 8.09  . .  817

 8.10  . .  817

 8.11  . .  817

 8.12  . .  809.03

 8.13  . .  806.04(b)

 8.14  . .  806.04(b)

 8.15  . .  806.05(c)

 8.16  . .  806.05(d)

 8.17  . .  806.05(e)

 8.18  . .  806.05(f)

 8.19  . .  806.05(g)

 8.20  . .  806.05(g)

 8.20.01  . .  806.05(i)

 8.20.02  . .  808.01

 8.21  . .  817

 8.22  . .  818.03(b)

 8.23  . .  812.01

 8.23.01  . .  812.01

 8.23.02  . .  817

 8.24  . .  821.01

 8.25  . .  821.01

 8.25.01  . .  810.03

 8.25.02  . .  818.03(c)

 8.26  . .  821.03

 8.27  . .  804.03

 8.28  . .  804.03

 8.28.01  . .  804.03

 8.29  . .  822

 8.30  . .  804

 8.31  . .  804

 8.32  . .  804

 8.33  . .  804

 8.34  . .  804

 8.35  . .  804

 8.36  . .  804

 8.37  . .  804

 8.38  . .  804

 8.39  . .  804

 8.41  . .  803.03

 10.01  . .  1002.02(c)

 10.02  . .  1002.02(c)

 10.10  . .  201.03

 10.11  . .  201.03

 10.12  . .  201.03

 10.13  . .  1481

 10.14  . .  1481

 10.15  . .  1481

 10.16  . .  1481

 10.17  . .  1481

 10.18  . .  1481

 12.01  . .  1205

 12.02  . .  1205

 12.03  . .  1205

 12.04  . .  1205

 12.05  . .  1205

 12.06  . .  1205

 12.07  . .  1205

 12.08  . .  1206

 12.09 to 12.13  . .  1206

 12.16, 12.17  . .  1206

 12.19  . .  1214.07

 12.20  . .  1214.06

 12.46  . .  1208.03

 12.47  . .  1208.04

 12.48  . .  1208.03

 12.50 to 12.63  . .  1208

 12.69 to 12.78  . .  1206

 12.79  . .  1208

 13.01  . .  1302.02

 13.02  . .  1302.04

 13.02.01  . .  1302.04

 13.02.02  . .  706.07(f) ,
  1302.04

 13.03  . .  1302.14

 13.04  . .  1308.03

 13.05  . .  1308.03

 13.06  . .  1302.04

 13.07  . .  1302.01

 13.08  . .  1302.01

 13.09  . .  609

 13.10  . .  714.16

 14.01  . .  1414.01

 14.02  . .  1414.01

 14.03  . .  1414.03

 14.04  . .  1414.04

 14.04.01  . .  1444

 14.05  . .  1416

 14.05.01  . .  1416

 14.06  . .  1442.01

 14.07  . .  1442.03

 14.08  . .  1442.02

 14.09  . .  1442.02

 14.10  . .  1442.02

 14.11  . .  1442.02

 14.11.01  . .  1418

 14.12  . .  1412.03

 14.13  . .  1412.03

 14.14  . .  1444

 14.15  . .  1410.01

 14.20  . .  1453

 14.21  . .  1453

 14.22  . .  1448

 14.22.01  . .  1411.02

 14.23-14.39  . .  1490

 15.01 to 15.04  . .  1504.10

 15.05, 15.05.01  . .  1503.01

 15.08 to 15.10  . .  1504.01

 15.11 to 15.17  . .  1504.02

 15.18, 15.19, 15.19.01  . .  1504.03

 15.20 to 15.22  . .  1504.04

 15.23 to 15.25  . .  1504.06

 15.26  . .  1504.20

 15.27 to 15.31,15.34, 15.36, 15.37  .  1504.05

 15.41  . .  1504.01

 15.43  . .  1502

 15.44  . .  1504.01

 15.45  . .  1503.03

 15.47  . .  1503.01

 15.52  . .  1504.10

 15.56  . .  1504.04

 15.57  . .  1503.03

 15.58  . .  1504.03

 15.59 to 15.61  . .  1503.01

 15.66  . .  1504.04

 17.01  . .  401

 17.11  . .  512

 18.01  . .  1878

 18.02-18.02.02  . .  1878

 18.03  . .  1878

 18.04  . .  1878

 18.05  . .  1875.01

 18.06  . .  1875.01

 18.06.01  . .  1875.01

 18.06.02  . .  1875.01

 18.07  . .  1875.01

 18.08  . .  1878

 18.08.01  . .  1878

 18.09  . .  1878

 18.10  . .  1878

 18.11 to 18.15  . .  1878

 18.16 to 18.21  . .  1875.01

 19.01  . .  1901.06

 19.02  . .  1901.06

 22.01  . .  2246

 22.02  . .  2247

 22.03  . .  2258

 22.04  . .  2260

 22.05  . .  2258

 22.11  . .  2258

  Fraud

 Argued in protest  . .  1901.02 ,
  1901.03 , 1901.05

 In reissue  . .  1442.04 , 1448 ,
  2012

  Fraud on the Patent and Trademark Office  .  509.03 ,

 2001.06(c)

  Fraudulent  . .  706.03(a)

  Frivolous invention  . .  706.03(a)

  Full faith and credit in prior Examiner's action:

 Allowed claims  . .  706.04

 Interview  . .  713.01

 Search  . .  704

  Full name  . .  605.04(b)

  Full signatory authority  . .  1004

  Function of machine rejection  . .  2173.05(v)

  Functional claim, Rejection  . .  2114 ,
  2173.05(g)

  Functional equivalents  . .  2144.06

  FWC

 Public access  . .  103

 Rule 62  . .  201.06(b)

  G

  Gazette, Official  . .  1703

  Gazette, PCT  . .  1801 , 1857

  Gebrauchsmuster  . .  201.13 ,
  201.14(d) , 202.03 , 901.05(b)

  "General Information Concerning Patents" booklet  
  Introduction , 703

  General power of attorney for international application  1807

  Generic claim:

 Allowable  . .  808.01(a) ,

  809.02(b) , 809.02(e)

  Transitional application  . .  803.03(b)

 Definition  . .  806.04(d)

 Informal  . .  809.02(e)

 Markush group  . .  2173.05(h)

 Patentably distinct over other species  806.04(h)

 Presented after issue of patent  . .  806.04(i)

 Rejection  . .  809.02(a)

 Species claims lacking  . .  809.02(d) ,
  818.02(b)

 Subcombination  . .  806.04(c)

 Support for scope of  . .  706.03(c) ,
  2164.08

 Traverse of rejection in lieu of election  818.03(b) ,

 818.03(d)

  Genetic sequence information  . .  2420

  Genus and species  . .  806.04(a) to
  806.04(j) ,

 808.01(a), 809.02

 Anticipation of  . .  2131.02

 Obviousness of  . .  2144.08

  German priority document  . .  901.05(10)

  Geschmacksmuster  . .  201.14(b)

  Good faith  . .  2000 , 2001

  Government license clause  . .  310

  Government-owned application: Special  . .  708.01

  Graphic symbols  . .  608.02

  Great Britain, Complete specification  . .  201.15

  Great Britain, Provisional specification  .  201.15

  Greek letter Phi usage  . .  608.01(g)

  Group Art Unit Number  . .  502

  Group date receipt and stamp  . .  714.18

  Group Director  . .  201.03 ,
  201.14(c) , 402.06 ,

 708.02, 714.01(a),714.13,714.25,

 715.08, 720.01,804.04, 1002.02(c),

 1206, 1207,1208.01, 1214.04,1448,

 1901.06, 1901.07(b),1902.01, 1902.01(a),

 1906, 2248, 2249,2265, 2274,

 2283-2286,2301.01(b),2303, 2305.04,

 2306, 2307.02, 2307.03, 2309.02,

  Group Director's functions  . .  1002.02(c) ,
  1003

  Group Director, Group 1800  . .  1002.02(c)(2)

  Group Director, Group 2200  . .  1002.02(c)(1)

  Group Director, Group 2900  . .  1002.02(c)(3)

  Group, International Classification  . .  903.09

  Guardian, Authority recorded  . .  409.02

  Guardian of insane inventor  . .  409.02

  Guidelines for conducting inter partes interviews  1903

  Guidelines for drafting an application  . .  601

  Guidelines for drug disclosures  . .  2107 , 2107.02

  Guidelines for handling of citation in patent  1922

  Guidelines, examination of computer-related inventions  2106

  Guidelines, Utility  . .  706.03(a)(1)

 Legal precedent for  . .  2107 - 2107.02

  H

  Hand delivery of papers  . .  502 , 714.13

  Handling of citation of prior art  . .  2206

  Handling of inappropriate or untimely papers  2267

  Handling of mail and papers  . .  Chapter 500

  Handling of protest  . .  1901.05

  Hearing on appeal  . .  1209

  Heir as applicant (see also Administrator or executor)  
  409.01 , 409.01(a) , 409.01(d) , 1303.03

  Holiday, Effect on reference  . .  706.02(a)

  Holiday, Papers not received  . .  502

  Holiday, Period for response ending on  . .  505 , 710.05

  Holiday in District of Columbia  . .  502 , 505 ,
  710.05

  I

  ICIREPAT country codes  . .  201.14(d) ,
  901.05(d)(f)

  ICIREPAT identification numbers  . .  901.04 ,
  901.05(d)(f)

  Identification of papers  . .  502 , 503

  Identification of priority application  . .  201.14(d)

  Identity of inventors under 35 U.S.C. 119  .  201.13

  Idiomatic English  . .  608.01(q)

  Implied election  . .  818.02 ,
  818.02(a) , 818.02(c)

  Improper joinder, Effect on patent  . .  805

  Improper multiple dependent claim  . .  608.01(n)

  Improvement (Jepson claim)  . .  2129

  Inaccurate claim  . .  2173.03

  Incomplete amendments, Time for completing 710.02(c) ,
  714.03

  Incomplete application  . .  506 ,
  601.01(d) , 601.01(e) ,

 601.01(f)

 Completed  . .  506.01

 Definition  . .  203.06

 Drawing  . .  507

 Invalid oath  . .  604.06

 Return  . .  506

 Return of filing fee  . .  506

 Using again  . .  506.01 ,
  608.01(u)

  Incomplete claim, Rejection  . .  706.03(c) ,

 706.03(d), 2173.05(l)

  Incomplete protest  . .  1901.03

  Incomplete requests for reexamination  . .  2227

  Incomplete response  . .  711.03(a) ,
  714.03

 Time for completing  . .  710.02(c) , 711
  , 714.03

  Incorporation by reference  . .  608.01(p) ,
  2163.07(b) ,

 2173.05(s)

  Incorrect citation of reference  . .  707.05(g) ,
  710.06

  Indefinite claim  . .  706.03(d) ,
  2173.06

  Independent claim  . .  608.01(n)

  "Independent" definition  . .  802.01

  "Independent" inventions  . .  802 , 802.01 ,
  803 , 803.02 , 806 ,

 806.04, 808.01, 808.01(a)

  Index of claims  . .  707.07(i) ,
  719.04

  Index of patents, Classification, Numerical  902.03(a)

  Index to the U.S. Patent Classification  . .  902.01(a)

  Inequitable conduct  . .  2001.06(c)

 Reissue  . .  1443 , 1446

  Informal application  . .  506 , 702.01

 Primary Examiner's attention required  1004

 Search  . .  702.01 , 704

  Informal drawing  . .  507 ,
  608.02(b)

  Informal requests for reexamination  . .  2228

  Informality, Action calling attention to  .  707.07(a) ,

 707.07(j),710.02(b), 714.14

  Information Center (see Scientific Technical Information Center)
 901.06(a)

  Information Disclosure Statements  . .  609

  Information on status of application referred to in patent  
  102

  Information, Requirements for  . .  2001.04

  Information retrieval from PALM  . .  1704

  Information sent to applicant for his guidance  703

  Information submitted with protest  . .  1901.02

  Information which must be disclosed  . .  2001.04

  INID codes  . .  901.04 ,
  901.05(b) , 2290

  Initial examiner review of reissue  . .  1443

  Ink:

 Color,

  Black  . .  707.10 , 719.02
  , 719.05

  Red  . .  714.18 , 719.02

 Permanent  . .  608.01 , 714.07
  , 714.19

  Inoperativeness  . .  608.01(p) ,
  2164.07 , 2164.08(b)

 Affidavit  . .  716.07

  INPADOC  . .  901.06(a)

  Inquiries, Official and Congressional  . .  203.08(a)

  Inquiries regarding patent search examination or validity  
  1701

  Inquiry as to status of application  . .  203.08

  In re Bass type rejection  . .  2217

  Insane  . .  409 , 409.02

  Inspection:

 Amendment  . .  714.05

 Application  . .  103 , 104

 Approval of power  . .  104

 Assignment  . .  301.01

 Authorization  . .  402

 By assignee  . .  104 , 106 ,
  106.01

 By disbarred attorney  . .  105

 By inventor  . .  106

 By licensee  . .  106.01

 Control of, By assignee  . .  106

 International application  . .  110

 Patent file  . .  103

 Petition  . .  103

 Record Room  . .  103

 Reissue application  . .  103

 Right of  . .  103 , 104 , 106

  Insufficient disclosure  . .  608.01(p) ,
  706.03(c) , 2161

  Insufficient response  . .  710.02(c) ,
  711.02(a) ,

 711.03(a), 714.03

  Intent to claim  . .  706

  Inter-American Convention  . .  201.13

  Interference  . .  Chapter 2300

 Abandonment, suppression or concealment, notice  2138 ,
  2332

 Access to files  . .  2312

 Action after  . .  2363

 Action after reexamination  . .  2284

 Action made when suggesting claims  .  2305.01

 Action suggesting claims  . .  2305 , 2305.04

 Addition of new party  . .  2342

 Adverse judgment, request for entry  .  2362

 Affidavits, sealed by Board  . .  2309.03

 After notice of allowance  . .  2307.03

 All parties claiming invention to be included  2303

 Allowance of losing party's application  .  2363.03

 Amendment filed during  . .  2364.01

 Applicant requests interference with patent  2304 , 2307

 Application already in interference  .  2305.04

 Application and patent in different groups  2306

 Applications in different groups  . .  2301.01(a)

 Arbitration  . .  2390

 Assignee, prosecution by  . .  2343

 Attorney, parties have same  . .  2305 , 2309.02 ,
  2313

 Basis of practice  . .  2138.01 ,
  2300.01

 Between application and patent  . .  2306 to 2308.03

 Between applications  . .  2303 , 2304

 Briefs for final hearing  . .  2356

 Burden of proof  . .  2357

 Cancellation of losing party's claims  2363.03

 Change from old to new rules  . .  2300.01

 Claim of foreign priority by patentee not considered  
  2308.01

 Claim interpretation  . .  2301.01

 Claim presented corresponding to patent claim  2306
  to 2308.03

 Claims, not identical  . .  2303

 Claims, overlapping in two applications of same party  
  2315.01

 Claims, suggesting  . .  2305 to 2305.04

 Claims, unpatentable over suggested claim  2305.01

 Claims corresponding to count support in specification  
  2163.03

 Claims corresponding to patent claims, rejection  
  2307.02

 Common ownership  . .  2302

 Conception  . .  2138.01 ,
  2138.04

 Concession of priority  . .  2362

 Concurrent with appeal  . .  2315

 Consultation with examiner  . .  2340

 Consultation with Examiner-in-Chief  .  2309.05 ,

 2363.03

 Conversion of inventorship  . .  2334

 Copending reexamination  . .  2284

 Copied patent claim not identified  .  2305

 Count, defined  . .  2301.02

 Counts, formulation of  . .  2163.03(d) ,
  2309.01

 Dates, difference in effective filing  2303

 "Decision Noted"  . .  2363

 Decision on motion  . .  2340

 Declaration  . .  2311

 Definitions  . .  2301.02

 Depositions  . .  2374 , 2376 ,
  2377 , 2378

 Depositions, errors in  . .  2385

 Determining priority  . .  2138.01

 Diligence, reasonable  . .  2138.01 ,
  2138.06

 Disclaimer, statutory  . .  706.03(u) ,
  710.02(d) , 2362

 Discovery  . .  2351 , 2387 ,
  2388

 Drawing, losing party's obtaining copy of  2363.03

 Election of invention not affected  .  820.02

 Entry of amendment filed in connection with motion  
  2364

 Estoppel  . .  2358 , 2363.03

 Evidence  . .  2138.04 , 2371 ,
  2382

 Examiner's entry on interference file  2363

 Examiner-in-Chief handles  . .  2310

 Exceptions to applicability of new rules  2300.01

 Exhibits  . .  2353

 Extension of time  . .  2345

 Failure to identify patent when claims presented  2305 ,
  2307.05

 Failure to present suggested claim  .  2305.01

 Federal Rules of Evidence  . .  2300.02 , 2371

 File wrapper notation  . .  2301.01(b)

 Filing of papers  . .  2301.03

 Final decision  . .  2355 , 2356 ,
  2358

 Final hearing  . .  2354

 Foreign application, benefit  . .  2309.02 ,
  2333.02

 Foreign country, testimony in  . .  2384

 Foreign language, translation  . .  2347

 Generic claims  . .  2303

 Group Director approval required  . .  2303 , 2305.04 ,

 2306, 2307.02, 2309.02

 Identification of patent, corresponding claims presented
  . .  2307.05

 Initial memorandum  . .  2309.02

 Inspection of affidavits and declarations  2309.03

 Inter partes questions not to be discussed ex parte  
  2314

 Interpretation of claims  . .  2301.01

 Interview prohibited  . .  2314

 Judicial review  . .  1216 , 1216.01

 Jurisdiction over interference  . .  2314

 Lead attorney  . .  2313

 Litigation, notice of  . .  2360

 Losing party, may obtain copy of opponent's application  
  2363.03

 Losing party, treatment of  . .  2363.03

 Lost counts  . .  715 , 2138.01

 Memorandum, initiating  . .  2309.02

 Motions:

  Applications not involved in interference  
  2333.01

  Benefit of foreign filing date  .  2333.02

  Content  . .  2337

  Correct inventorship  . .  2334

  Decision  . .  2340

  Declare additional interference  .  2337

  Evidence in support  . .  2339

  For judgment, prior art applicable to movant  2333

  Hearing  . .  2340

  Miscellaneous  . .  2335

  Opposition  . .  2338

  Preliminary  . .  2333 to 2333.02
  , 2336 to 2340

  Reconsideration  . .  2340

  Reply  . .  2338

  Time for filing  . .  2336

 Multiple dependent claims  . .  2309.02

 Multiple patents involved  . .  2306

 New reference found  . .  2341

 New rules, applicability  . .  2300.01

 No interference in fact  . .  2301.02 ,
  2363.01

 Nonelected claims  . .  2303

 Notation on file wrapper, allowed application  
  2305.04

 Notation on file wrapper, possible interference  
  2301.01(b)

 Notification of patentee, attempt to provoke interference
  . .  2307.06

 Order to show cause:

  After decision on motions  . .  2333 , 2340

  Insufficient showing under 37 CFR 1.608(b)  2317

  No opening brief for final hearing  2356

 Outline of procedure  . .  2300.02

 Overlapping applications  . .  2315.01

 Patent date earlier than application date  2308.01 ,
  2308.02

 Patent date later than application date  .  2308.03

 Patent in different group  . .  2306

 Patent Law Amendments Act of 1984  . .  2300.01

 Petitions  . .  2344

 Power of attorney filed  . .  402.08

 Preliminary motions  . .  2333 to 2333.02
  , 2336 to 2340

 Preliminary statement  . .  2321 to 2329

 Preliminary statement, access to  . .  2331

 Preparation of papers by examiner  . .  2309 , 2309.02

 Priority time charts  . .  2138.01

 Prosecution by assignee  . .  2343

 Protest, notice of  . .  2360

 Public use proceeding  . .  706.03(v)

 Publishing Division notified  . .  2305.04

 Reconsideration of decision on motion  2340

 Reconsideration of final decision  . .  2358

 Record in each interference complete  2309.04

 Reduction to practice  . .  2138.01 ,
  2138.05

 Reexamination, copending with interference  2284

 Reexamination, notice of  . .  2360

 Reexamination, presentation of claims for interference with
  patent under  .  2307.04

 Reference found during interference  .  2341

 References pertinent to motions, made of record  
  1302.12

 Reinstatement of action  . .  2307.01 ,
  2363.02 , 2363.03

 Reissue application  . .  2301.01 , 2358 ,
  2360 , 2362

 Reissue application, notice of  . .  2360

 Rejection of claims corresponding to patent claims  
  2307.02

 Rejection of claims unpatentable over suggested claim  
  2305.01 , 2305.02

 Requirements for interference  . .  2303 , 2306

 Response to suggestion for claims  . .  710.02(c) , 2305
  ,

 2305.03

 Return of papers  . .  2318

 Revocation of power of attorney  . .  402.08

 Rule correlation table  . .  2300.01

 Sanctions  . .  2316

 Search  . .  1302.08 ,
  2301.01(b)

 Second interference  . .  2365

 Secrecy order case  . .  2309.06

 Service of papers  . .  2346

 Settlement agreements  . .  2366

 Showing under 37 CFR 1.608(b)  . .  2308.02

 Special dispatch  . .  708.01 , 2307 ,
  2307.02 , 2311

 Statutory basis  . .  708.01 , 2300.01

 Subpoena  . .  2371

 Subsidiary of corporation, common ownership  2302

 Suggestion of claims  . .  2305 to 2305.04

 Suggestion of claims, time limit  . .  710.02(c) ,
  2305.02

 Summary judgment  . .  2317

 Suspension of action pending outcome of reexamination  
  2284

 Suspension of ex parte prosecution  .  709.01 , 2315 ,

 2315.01

 Terminated open to public  . .  103

 Termination  . .  2361

 Testimony  . .  715.07(b) ,
  2300.02 , 2351 , 2352 ,

 2372, 2383, 2384

 Time limit for reply  . .  2305.02 ,
  2307.02

 Time schedule, two-party interference  2300.02

 Title reports  . .  2309.02

 Transcript of deposition  . .  2378 , 2379

 Transfer of application  . .  2301.01(a) ,
  2306

 Translation of documents  . .  2347

 Two periods for response running  . .  2307.02

 Unauthorized papers, return  . .  2318

 Winning party  . .  710.02(b) ,
  2363.02

 Withdrawal of application from issue  2305.04 ,

 2307.03

 Withdrawal of outstanding action  . .  2307.01

 Witness, examination of  . .  2373 , 2375

  Interlibrary Loans  . .  901.06(a)

  Interlineation in specification before execution  608.01

  International application:

 Abstract  . .  1826

 Access  . .  101 , 110

 Agent  . .  1807 , 1864.04

 Amendment before the Designated  . .  Office

 Amendment of Claims before International Bureau  1853

 Amino acid sequence  . .  1823.02

 Applicant  . .  1810

 Applicants Different for Different Designated States  
  1817.01

 Assignment Document  . .  301

 Attorney  . .  1807

 Attorney File Number  . .  1821

 Claims  . .  1824

 Common Representative  . .  1807

 Confidential Status  . .  101 , 110

 Content  . .  1812

 Continuation  . .  1817.02

 Continuation of  . .  1895

 Continuation-in-part  . .  1817.02

 Correspondence  . .  1834

 Declaration  . .  1893.01(e)

 Definition  . .  201

 Deposit Accounts  . .  509.01

 Description  . .  1823

 Designated Office  . .  1801 ,
  1893.01(a)

 Designated Office Receipt  . .  1890

 Designation fee  . .  1817.01 , 1827

 Designation of States  . .  1817.01

 Drawings  . .  1825 ,
  1893.03(f)

 Drawings missing  . .  1825

 Early Processing National Stage  . .  1893.01

 Elements  . .  1812

 Errors, rectification of  . .  1836

 Fees  . .  1827 ,
  1893.01(c)

 Filing date  . .  1810

 Foreign Filing License  . .  1832

 Formal Requirements  . .  1810

 Forms:

  PCT/ISA/210  . .  1844

  PCT/IPEA/401  . .  1865

  PCT/IPEA/408  . .  1878

  PCT/IPEA/409  . .  1879

  PCT/IPEA/416  . .  1879

 Home copy  . .  1842

 International Preliminary Examination  1860

 International Search  . .  1843

 International Searching Authority  . .  1840

 Inventor  . .  1817.01 , 1820 ,
  1893.01(e)

 Inventors Different for Different Designated States  
  1817.01

 Kinds of Protection  . .  1817.01

 Mail Service  . .  1834 , 1834.02

 Member States  . .  1817

 Microorganism Deposit  . .  1823.01

 National Stage  . .  1893 , 1896

 Numbering  . .  1812

 Oath  . .  1893.01(e)

 Parent to national application  . .  201.11(a) ,
  1817.02

 Power of Attorney  . .  1807

 Precautionary designations  . .  1817.01

 Prior Art Effect  . .  1895.01 , 2127

 Priority  . .  201.13(b) , 1830

 Priority Document  . .  201.13(b) , 1828

 Publication  . .  1857

 Record Copy  . .  1842

 Rectification of obvious errors  . .  1836

 Refund of fees  . .  1827 , 1847

 Representation  . .  402.09

 Request  . .  1821

 Search Copy  . .  1842

 Search Fee  . .  1827

 Search Report  . .  707.05 , 1844

 Secrecy Order  . .  110 , 120 , 1832

 Signature of Applicant  . .  1820

 Time Limits  . .  1844.01 ,
  1879.01

 Title  . .  1821

 Translation Before the Designated Office  1893.01(d)

 Transmittal Fee  . .  1827

 Transmittal Letter  . .  1830

 Unity of Invention  . .  823 ,  , 1850 ,
  1875 , 1893.03(d)

 Withdrawal  . .  1859 , 1880

  International classification  . .  903.09

  International Convention  . .  201.13

 Date  . .  201.14

  International fee  . .  1827

  International Patent Classification  . .  719.05

  International Searching Authority  . .  1840

  International Trade Commission  . .  724

  International-type search  . .  707 , 1852

  Inter partes interviews guidelines  . .  1903

  Inter partes questions  . .  713.06

  Interpretation of law, New  . .  1208

  Intervening rights in reexamination  . .  2293

  Intervention by assignee  . .  106

  Interviews:  . .  713

 Advance indication of issues to be discussed 713.01

 Allowed application  . .  713.05 , 713.10

 Appointment in advance  . .  713.01

 Attorney not of record  . .  402

 Authority to conduct  . .  713.05

 Before filing  . .  713.02

 Before filing amendment under 37 CFR 1.312  713.10

 Before first action  . .  706.07(b) ,
  713.01 , 713.02

 Demonstration  . .  713.08

 Disbarred attorney  . .  105 , 713.05

 During working days only  . .  713.01

 Exhibit  . .  713.08

 Exposure of other cases during  . .  101 , 713.07

 Extension of time in protest  . .  1902.01(d)

 Field of search  . .  713.02

 Finally rejected application  . .  706.07(f) ,
  713.09

 How conducted  . .  713.01

 Inter partes guidelines  . .  1902.01 ,
  1902.01(a) , 1903

 Inter partes questions  . .  713.06 , 2314

 Interview Summary Form  . .  713.04

 Local attorney  . .  713.03 , 713.05

 Made of record  . .  713.01 , 713.04

 Model  . .  713.08

 Notice in protest  . .  1902.01(c)

 Oral agreement not binding  . .  713.04

 Patentability report cases  . .  713.01

 Prior to first Office action  . .  706.07(b) ,
  713.02

 Prohibited  . .  713.05

 Protestor participation  . .  1902

 Question of patent validity  . .  1701

 Record of, Inter partes  . .  1903.01

 Record of substance required  . .  713.01 , 713.04

 Reexamination  . .  2281

 Refused  . .  713.01 , 713.02
  , 713.05 ,

 713.10, 2314

 Requested in continuing application  .  706.07(b)

 Requested in Office action  . .  707

 Sounding out  . .  713.03

 Special situations  . .  713.05

 Substance made of record  . .  713.04

 Telephone  . .  408 , 713.01 ,
  713.05 , 812.01

 Time allowed  . .  713.01

 Video conference  . .  713.01 , 713.04

 Videotape showing  . .  713.01

 Where held  . .  713.01

  Introduction  . .  I

  Invention (See Patent; Rejection.)

  Invention, Brief summary  . .  608.01(d)

 Detailed description  . .  608.01(g)

 Made in this country  . .  2138.02

 Mode of operation  . .  608.01(h)

  Invention, Not originally claimed  . .  603

  Inventive entity, Different  . .  706.02(l)

  Inventive entity, Same (overlapping subject matter)  804
  , 804.03 , 822 , 822.01

  Inventor (see also Applicant)  . .  605

 Common, at least one  . .  201.06 , 201.11
  , 706.02(k) ,

 2137.01

 Correction  . .  201.03 ,
  1002.02(f) , 1002.02(l) ,

 1002.02(q), 1481

 Deceased  . .  409 to 409.01(f)
  , 1820

 Duty of disclosure  . .  2001.01

 Foreign priority  . .  201.13 , 2133.01

 Heirs  . .  409.01(a) ,
  409.01(d)

 Insane  . .  409 , 409.02

 International application  . .  1812

 Name change  . .  605.04(c) ,
  719.02(b)

  Correction  . .  201.03 ,
  605.04(g)

  Order  . .  605.04(f)

  Typographical, translation error  201.03

 None available  . .  409 , 409.03(b)
  , 603

  Proof  . .  409.03(d)

  Proof of irreparable damage  . .  409.03(g)

  Proof of proprietary interest  . .  409.03(f)

 Order of  . .  201.03 ,
  605.04(g)

 Pro se  . .  707.07(j) ,
  713.01

 Refuses to sign  . .  409 , 409.03(d)
  , 603

 Representative  . .  400 , 401 , 1706

 Requirements  . .  2137.01

 Residence  . .  605.02

 Rule  . .  60

 Rule 62  . .  201.03 ,
  201.06(b)

 Self-prosecuted case  . .  707.07(j) ,
  713.01

 Small entity status  . .  509.02

 Unavailable  . .  409 , 409.03 ,
  603

  At least one joint inventor available  409.03(a)

  Last known address  . .  409.03(e)

  Proof  . .  409.03(d)

  Proof of irreparable damage  . .  409.03(g)

  Proof of proprietary interest  . .  409.03(f)

  Inventor's Certificate:

  Priority benefit  . .  201.13(a)

  Rejection based on  . .  706.02(e)

  IPC (International Patent Classification)  .  903.09

  Irreparable damage, Proof of  . .  409.03(g)

  Issue (See Allowance and issue.)

  Issue Batch Number  . .  502 , 1303.01

  Issue Fee:

 Calculation  . .  1306

 Failure to pay  . .  203.07 , 712 ,
  1306

 Interfering case, Not applied  . .  2305.04

 Late payment  . .  712

 Petition to accept  . .  712 , 1002.02(b)

 Reissue  . .  1455

 Termination of applicant's rights  . .  1306.03

  Issue of patent  . .  1309

  Issue of patent to assignee  . .  307

  Issue slip  . .  903.07

  Issuing in another Group without transfer  .  903.07(b)

  J

  Jacket (see also File wrapper)  . .  719

  Japanese year system  . .  901.05(a)

  Jepson claim  . .  2129

  Joinder, Linking claim allowed  . .  809.04

  Joinder of inventors  . .  409.03(j)

  Joint application, Definition  . .  201.02

  Joint application, Original oath  . .  602

  Joint application, Signatures  . .  605.04(f)

  Joint inventor:

 Oath  . .  602

 Power of attorney to  . .  402.01

 Refuses to sign application  . .  409.03 ,
  409.03(a)

 Rights of nonsigning  . .  409.03(i)

  Joint inventors  . .  201.02 ,
  201.03 , 605 , 605.07 , 2137.01

 Change in order of names  . .  605.04(f)

 Provisional application  . .  605.07

  Joint owners  . .  605

  Joint to Joint  . .  201.03

  Joint to sole, changing  . .  201.03 ,
  201.06 ,

 201.07, 201.08, 1481

 File forwarded to Application Division  201.03

 Interference pending  . .  2188.01 , 2300

  Joint venture  . .  706.02(l)

  Journal, Patent Office Society  . .  707.06

  Judicial notice  . .  2144.03

  Jumbo patents  . .  707.05(a)

  Jurisdiction:

 Allowed application  . .  714.16 , 1305

 Appealed application  . .  1210

 Application before court  . .  1216

 Application in interference  . .  2314

 Interference  . .  2314

  Jurisdiction of notary  . .  604.03

  K

  Kinds of application  . .  201

  Kinds of protection under the Patent Cooperation Treaty  
  1817.01

  L

  Lack of good faith  . .  2000 , 2001

  Lack of unity of invention  . .  803 , 923

  Lack of utility  . .  608.01(p) ,
  706.03(a)

  Language, Offensive  . .  608 , 1504

  Language of papers  . .  608.01

  Late payment of issue fee  . .  712

  Law, New interpretation of  . .  1208

  Laws, Patent (see also Statutes)  . .  Introduction

  Legal effect of amendments  . .  2234

  Legal representative refuses to sign  . .  409.03(c)

  Letter (see also Action; Forms and form letters; Letter,
  Examiner's):

 Abandoned after allowance  . .  711.05

 Congressional inquiry  . .  203.08(a)

 Drawing correction, Approval by Examiner  608.02(q)

 Drawing correction, Separate letter  .  608.02(r)

 Drawing transfer  . .  608.02(i)

 Official inquiry  . .  203.08(a)

 Status  . .  203.08

  Letter, Examiner's (see also Action; Forms and form letters)  
  707

 Abandonment  . .  711.02

 Advisory action  . .  706.07(f) ,
  714.13

 Amendment after final rejection  . .  714.13

 Arguments answered  . .  707.07(f)

 Cancellation of nonelected claim  . .  821.01 , 821.02

 Claim allowable except as to form  . .  707.07(a) ,

 707.07(j), 710.02(b), 714.1

 Claim summary  . .  707.07(i)

 Complete and clear  . .  707.07

 Copies of references  . .  707.05(a)

 Copy to applicant  . .  707.12

 Correction, Period for response  . .  707.05(g) ,
  710.06

 Correction of citation  . .  707.05(g)

 Date stamped  . .  707.11

 Decisions, cited  . .  707.06

 Draftsman's criticism in first Office action  
  608.02(a) , 707.07(c)

 Election of species required, Concluding paragraph  
  809.02(a) , 809.02(b)

 Examiner signature at end of letter  .  707.09

 Examiner's Amendments  . .  706.07(f) ,
  1302.04

 File wrapper entry  . .  707.10 , 719.01

 Final rejection, Clearly stated  . .  706.07

 Final rejection, Concluding statement  706.07

 Final rejection, Patentability report  705.01(a)

 First action, Includes Draftsman's comments  608.02(a) ,
  707.07(c)

 Formal drawing required  . .  608.02(b)

 Formal matters  . .  707.07(a) ,
  707.07(e) , 707.07(j) ,

 714.02

 Full anticipation, Expressions used  .  706.02(c) ,

 706.07(d)

 Informal application  . .  702.01

 Initialed by Examiner  . .  707.08

 Interference forms  . .  2300 , 2309.02

 Language in rejecting  . .  707.07(d)

 Mailing  . .  707.12 , 1303

 Memorandum cited  . .  707.06

 New Examiner, Primary indicates  . .  707.01

 Notices cited  . .  707.06

 Numbering of paragraphs  . .  707.07(k)

 Omnibus rejection  . .  707.07(d)

 Orders cited  . .  707.06

 Outstanding requirements  . .  707.07(e)

 Personal matter excluded  . .  707.07(d)

 Piecemeal prosecution  . .  707.07(g)

 Power of attorney invalid or lacking  402

 Preliminary amendment in new case  . .  707.04 , 714.09

 Primary signs  . .  706.07 , 707.01
  , 707.09

 Primary's attention required, List  .  1004

 References, Citation  . .  707.05 to
  707.05(g) ,

 901.04, 901.05(a)

 Refusing entry of amendment after Board decision  
  1214.07

 Rejection of claim corresponding to claim of patent  
  2307.02

 Remailing  . .  707.13 , 710.06
  , 1303.02

 Requirement for information  . .  706.02(c)

 Restriction requirement  . .  803 , 817

 Returned  . .  707.13

 Reviewed by Examiner  . .  707.08

 Shortened time for reply  . .  710.02

 Signature  . .  707.09 , 707.10
  , 1302.13

 Statement of rejection  . .  707.07(d)

 Status letter reply  . .  203.08

 Statutory basis  . .  707.07(d)

 Summary  . .  707.07(i)

 Supplemental  . .  710.06

 Undelivered  . .  707.13 , 1303.02

  Letters, Receipt and handling  . .  Chapter 500

  Letters of administration  . .  409.01(b) ,
  409.01(c) ,

 409.01(e)

  Letters testamentary  . .  409.01(b)

  Library, Scientific (See Scientific and

  Technical Information Center)  . .  706.02(e) ,
  707.05(e) ,

 719.05, 901.06(a)

  Library Services  . .  901.06(a)

  License agreements under patent, recording 310 , 313

  License rights clause  . .  310

  License to file Foreign Application  . .  115 , 140 ,
  706.03(s)

  License to file international application  .  110 , 140 ,
  1832

  Licensee, Access  . .  106.01

  Licensing and Review Section  . .  115 - 151 ,

 706.03(b), 706.03(s)

  Limited time for reply  . .  2307.02

  Linking claim  . .  809 , 809.02 ,
  809.03 , 809.04

 Transitional application  . .  803.03(a)

 Traverse of rejection  . .  818.03(d)

  List of countries giving right of priority 201.13

  List of decisions  . .  AppendixII

  List of forms. (See Forms and form letters.)

  List of prior art in reexamination  . .  2257

  List of PTO mail boxes (see Box)

  Literature citation in specification  . .  608.01(p)

  Lithographic and drafting firms, Access  . .  101

  Litigation information, Duty to disclose  .  2001.06(c)

  Litigation involving patent  . .  1442.04

  Litigation not stayed in reissue  . .  1442.02

  Litigation-Reexamination copending  . .  2286

  Litigation related reissue  . .  1404 , 1442.01
  , 1442.02

  Litigation, Stays considered in  . .  1442.05

  Litigation, Stays denied  . .  1442.05(b)

  Litigation, Stays granted  . .  1442.05(a)

  Litigation, Suspension of action  . .  2021.02

  Living matter  . .  2105

  Local representative of attorneys  . .  408

  M

  Machine, Process or product  . .  806.05(e) ,

 806.05(f), 806.05(g)

  Mail:

 Address  . .  501

 Boxes for PTO (see Box)

 Depositing correspondence  . .  502

 Distribution  . .  501

 Express  . .  502 , 513 ,
  711.03(c)

 Identification  . .  502 , 503

 Receipt and handling  . .  Chapter 500

 Undelivered  . .  707.13 , 1303.02

 Zip Code  . .  502

  Mail date as filing date  . .  513

  Mailing action  . .  707.12 , 1303

 In reexamination  . .  2264

  Mailing, Certificate of  . .  512 ,
  711.03(c)

  Maintenance Fees

 Attorney or Agent

  Handling of Requests to Withdraw  2560

  Revocation of Power of Attorney  .  2560

 Change of correspondence address  . .  2541

 Due Dates for payment  . .  2506

 Facsimile transmission  . .  2511

 Fee address  . .  2540

 Fee amounts  . .  2520

 Information required with payment  . .  2515

 Intervening rights in reinstated patents  2591

 Mailing address for maintenance fee documents  2510

 Method of payment  . .  2522

 Notices

  Reminder, Receipt, Expiration  . .  2575

 Patents subject to payment of  . .  2504

 Payment Informalities  . .  2530

 Refusal to accept and record payments, Review of  2580

 Reinstatement, delayed payment  . .  2590

  Unavoidable delay basis  . .  2590

  Unintentional delay basis  . .  2590

 Small Entity Status requirements  . .  2550

 Status Requests  . .  2570

  Maintenance Fees (See Fees, Maintenance)  .  2500

  Mandatory Classification  . .  903.07

  Manual, Authority of  . .  foreward

  Manual, Subscription address  . .  titlepage

  Manual of Classification  . .  902.01

  Manuscript decision  . .  707.06

  Margin, Application papers  . .  608.01

  Mark of applicant  . .  605.04(d)

  Marking in application, erasing at allowance  1302.01

  Marking patent copy  . .  905.04

  Marking, Security  . .  121

  Markush claim  . .  803.02 ,
  2173.05(h) , 2173.05(o)

 Antedating reference for  . .  715.03

 Supporting disclosure  . .  608.01(p) ,
  2163.05 , 2164.03

  Materiality of information disclosed  . .  2001.05

  Mathematical Algorithms  . .  706.03(a) ,
  2106 , 2110

  Matter not in original disclosure  . .  608.04(a)

  Matter not original claimed  . .  603

  MCF (Master Classification File)  . .  902.03(a)

  Means  . .  2181

 Broadest reasonable interpretation  .  2181

 Equivalent compared to Doctrine of Equivalents  2186

 Obviousness  . .  2183

 Prima facie case of equivalence  . .  2183 , 2184

 Related issues under 35 U.S.C. 112, first or second
  paragraphs  . .  2185

 Scope of the identification of prior art  2182

 Single means claim  . .  2181

  Mechanical search  . .  719.05

  Memorandum, citation  . .  707.06

  Merger of reexamination and reissue  . .  2285

  Merits, Appeal to Board of Patent Appeals and Interferences  
  Introduction

  Method and apparatus or product  . .  806.05(e) ,

 806.05(f), 820

  Metric (S.I.) system usage  . .  608.01

  Microorganisms, Deposit of  . .  608.01(p) ,
  1823.01

  Microorganisms, Patentability of  . .  706.03(a) ,
  2105 ,

 2164.06

  Military Officer Notary  . .  604.03(a)

  Misjoinder, Effect on patent  . .  805

  Misjoinder of Inventors  . .  201.03 , 1481

  Missing patent copy, Replacement  . .  901.09

  Mode, best  . .  608.01(h)

  Mode of operation  . .  608.01(h)

  Model  . .  608.03

  Model, Return  . .  608.03(a)

  Model at interview  . .  713.08

  Model filed in priority country  . .  201.14(b)

  "Months", Foreign language names  . .  901.05(a)

  Motion (Interference):

 Add or subtract application  . .  2333

 Amend  . .  2333

 Burden of proof  . .  2300

 Content  . .  2337

 Decision requires Primary's attention  2300

 Dissolve  . .  2300

 Miscellaneous  . .  2335

 Notice in application  . .  2333.01

 Preliminary  . .  2333

 Reconsideration  . .  2340

 Substitute sole for joint  . .  2334

  Multiple dependent claims:

 Fee calculation  . .  607 , 608.01(n)

 Handling  . .  608.01(n)

 Restriction practice  . .  608.01(n)

  Multiple papers on same issue in protest  .  1901.07(b)

  Multiplicity of claims, Rejection  . .  2173.05(n)

  N

  NAFTA  . .  715.07(c)

  Name:

 Change  . .  605.04(c) ,
  719.02(b)

  Correction  . .  201.03 ,
  605.04(g)

  Order  . .  605.04(f)

  Translation, typographical error  201.03

 Change, File sent to Application Division  605.04(c)

 Corrected by amendment  . .  605.04(g)

 Full first or middle  . .  605.04(a) ,
  605.04(b)

 Mark  . .  605.04(d)

 Order  . .  605.04(f)

 Signature (See Signature.)

 Uniformity with signature  . .  605.04(b)

  Names used in trade  . .  608.01(v)

  National Aeronautics and Space Administration  115 , 150 ,
  151

  National application  . .  201

  National security, Application affecting  .  115 to 140

  National stage application (35 U.S.C. 371) 201 ,

 1893.03, 1893.03(a)

 Compared with National Application  .  1896

 Continuation or continuation-in-part  1895 ,

 1895.01, 1896

 Drawings  . .  1893.03(f)

 Filing date  . .  1893.03(b)

 Information disclosure statement  . .  609 ,

 1893.03(g)

 Petitions related to  . .  1002.02(b) ,
  1002.02(p)

 Priority  . .  1893.03(c)

 Unity of Invention  . .  1893.03(c)

  Naturally occurring article  . .  706.03(a)

  Negative limitation  . .  2173.05(i)

  Negotiation authority  . .  713.05

  New application (definition)  . .  203.01

 Assignment to assistant Examiner for examination  
  903.08(b)

 Assignment to Examining Group for examination  903.08
  , 903.08(a) , 903.08(e)

 Classification by Primary  . .  903.08(b)

 Examiner review for completeness  . .  702

 Inspection  . .  903.08(a)

 Transfer  . .  903.08(a)

 Transfer refused  . .  903.08(d)

  New Examiner, Letters of  . .  707.01

  New ground of rejection by the Board of Appeals 1214.01

  New ground of rejection on appeal  . .  1208.01

  New matter  . .  706.03(o) ,
  2163.06

 Amendment of disclosure  . .  608.04 , 2163.03
  , 2163.04

 Appealable  . .  608.04(c)

 Claim  . .  608.04 ,
  706.03(o) , 2163.03

 Claim, Appealable  . .  608.04(c)

 Claim terminology  . .  608.01(o)

 Continuing application  . .  201.07 , 2163.03

 Design application  . .  1503.02

 Disclosure  . .  608.04 , 2163.06

 Divisional application  . .  201.06

 Drawing  . .  608.04 ,
  706.03(o)

 File wrapper continuation (FWC)  . .  201.06(b)

 Inherent characteristics  . .  608.04(a) ,
  2163.07(a)

 Objection  . .  706.03(o) ,
  2163.07

 Petitionable  . .  608.04(c) ,
  2163.06

 Preliminary amendment  . .  608.04(b)

 Priority  . .  2163.03 ,
  2163.05

 Reissue application  . .  1411.02

 Rejection  . .  608.04 ,
  706.03(o) , 2163.06

 Rule 60 application  . .  201.06(a)

 Rule 62 application  . .  201.06(b)

 Specification, Petitionable  . .  608.04(c)

 Substitute specification  . .  714.20

 Supplemental oath  . .  603

 Trademark definition  . .  608.01(v)

 When entered  . .  714.19 , 714.20

  Nonanalogous Art  . .  904.01(c) ,
  1302.14 , 2131.05

  Nonelected invention:

 Claims to-

  Added  . .  821.03

  Canceled  . .  821.01 , 821.02
  , 1302.04(c)

  Withdrawn  . .  821.01 , 821.02

 Interference  . .  2303

  Nonelected species:

 Claims to-

  Canceled  . .  821.01 , 821.02
  , 1302.04(c)

  Withdrawn  . .  809.02(c) ,
  821.01 , 821.02

  Non-English oath or declaration  . .  602.06

  Nonnaturally occurring manufacture or composition of matter  
  2105

  Nonpatent literature  . .  901.06

  Nonprofit organization, claiming status as 509.03

  Nonprofit organizations  . .  509.02

  Nonprovisional application  . .  201.01(a) ,
  506 , 601

  Nonreceipt of Office letter  . .  711.03(c)

  Nonresponsive amendment  . .  714.02

  Non sequitur  . .  706.03(c)

  Nonsigning inventor's rights  . .  409.03(i)

  Nonstatutory claim  . .  706.03(a) ,
  2107

  Nonstatutory claim, Canceled  . .  1302.04(b)

  Nonstatutory subject matter  . .  706.03(a) ,
  706.03(a)(1) ,

 2105 to 2107

  Notary jurisdiction  . .  604.03

  Notary jurisdiction, Military officer  . .  604.03(a)

  Notary jurisdiction, Venue agreement  . .  604.02

  Notary seal  . .  604.01

  Notation of possible interference  . .  2301.01(b)

  Notation on file wrapper:

 of foreign application  . .  202.03

 of parent application  . .  201.11 , 202.02

  Notice, Citation  . .  707.06

  Notice of allowability  . .  1302.03

  Notice of allowance (see Allowance and issue)  502 ,

 1303

 Assigned application  . .  308

 Deceased inventor  . .  1303.03

 Reissue application  . .  1455

 Secrecy order application  . .  120 , 130 , 1304

 Undelivered  . .  1303.02

  Notice of appeal  . .  1205

 Reexamination  . .  2273

  "Notice of informal patent application" form (PTO-152)  
  707.07(a)

  "Notice of references cited" form (PTO-892)  707.05(b) ,
  (c) , (e)

  Notice of reissue application  . .  1431

  Notices, maintenance fees  . .  2575

  Notices, Purpose  . .  Introduction

  Notices, maintenance fees  . .  2575

  Nuclear material application  . .  150 , 151 ,
  706.03(b)

  Nucleotide sequences  . .  803.04 , 1850

  Nullification of double patenting rejection  804.01

  Number, Drawing reference character  . .  608.01(g)

  Numbering of papers in file wrapper  . .  719.01(a)

  Numbering paragraphs of letter  . .  707.07(k)

  O

  Oath:

 After appeal  . .  1212

 Antedating patent for interference (Rule 608)  2308
  to 2308.02

 Antedating reference. (See also Affidavit, Antedating
  reference, Rule 131.)  715

 Inspection during interference (Rules 131, and 608(b)  
  2312

 Non-English  . .  602.06

 Original (see also Oath, Original, Rule 63)  602

 Plant application (Rule 62)  . .  1604

 Reissue (Rule 175)  . .  706.03(x) , 1414
  , 1444

 Supplemental  . .  603

 Supplemental and allowance  . .  603.01

 Traversing rejection (Rule 132)  . .  716

  Oath, Antedating reference (see also Affidavit,

 Antedating reference, Rule 131)  . .  715

  Oath, International application  . .  1893.01(e)

  Oath, Original, Rule 63  . .  602

 Administering  . .  604

 Amendment  . .  602.01

 Attorney administers  . .  604.06

 Consular certificate  . .  604.04

 Date of execution  . .  602.05

 Declaration in lieu of, Rule 68  . .  602

 Defective  . .  602.01 , 602.02
  , 602.03

 Delayed filing  . .  506 , 602.05

 Divisional application  . .  602.05(a)

 Execution  . .  604

 Facsimile  . .  605.04

 Foreign execution  . .  602.04

 Foreign filed applications listed  . .  201.14 ,
  201.14(c) ,

 202.04

 Invalid, By attorney in case  . .  604.06

 "Joint"  . .  602 , 605.07

 Jurisdiction of notary  . .  604.03

 New required  . .  602.01 , 602.02

 Notary  . .  604.03

 Notary certificate  . .  602.01

 Notary jurisdiction  . .  604.03

 Old at time of filing  . .  602.05

 Seal  . .  604.01

 Seal, Foreign application  . .  602.04(a)

 Seal, Not required  . .  604.01 ,
  604.03(a)

 "Sole"  . .  602

 Stale  . .  602.05

 Substitute  . .  602.02

 Venue  . .  604.02

  Oath, Supplemental, Rule 67  . .  603

 After allowance  . .  603.01 , 714.16

 Change of inventorship  . .  201.03

 New matter  . .  608.04

 Rule 60 application  . .  201.06(a)

  Object of invention  . .  608.01(d)

  Objection contrasted with rejection  . .  706.01

  Objection, Dependent claims  . .  608.01(n)

  Objection to formal matters, When made  . .  707.07(a) ,
  707.07(j) ,

 710.02(b), 714.14

  Obvious error, Correction  . .  1302.04 , 1305

  Obviously informal application  . .  702.01 , 704

  Obviousness  . .  706.02 ,
  706.02(j) , 2141 - 2146

 Age of reference  . .  2145

 Analogous prior art  . .  2141.01(a) ,
  2145

 Form paragraphs used for rejection  .  706.02(m)

 Number of references  . .  2145

 Ordinary skill, level of  . .  2141.03

 Prima facie case  . .  2142 - 2143.03 ,
  2144.02

  Predictability  . .  2143.02

  Rebuttal against  . .  2145

 Process claims, nonobvious product  .  2116.01

 Provisional rejection  . .  706.02(k)

 Ranges  . .  2144.05

 Rationale for  . .  2144 - 2144.09

  Adjustable, making  . .  2144.04

  Aesthetic design changes  . .  2144.04

  Automating manual activity  . .  2144.04

  Duplication of parts  . .  2144.04

  Elimination of element or step  .  2144.04

  Equivalence, art-recognized  . .  2144.06

  Genus-species  . .  2144.08

  Integral, making  . .  2144.04

  Omission of element or step  . .  2144.04

  Portable, making  . .  2144.04

  Proportion changes  . .  2144.04

  Purifying old product  . .  2144.04

  Ranges  . .  2144.05

  Rearrangement of parts  . .  2144.04

  Reversal of parts  . .  2144.04

  Separable, making  . .  2144.04

  Sequence, change in  . .  2144.04

  Shape changes  . .  2144.04

  Size changes  . .  2144.04

  Species-genus  . .  2144.08

 Rebuttal arguments by applicant  . .  2145

 Teaching away in prior art  . .  2141.02 , 2145

  Offenlegungsshriften  . .  901.05(b)

  Offensive language  . .  608 , 1504

  Offer to sell  . .  706.02(c) ,
  2133.03(b)

  Offer to surrender original patent  . .  1416

  Office action  . .  707

  Office action in reexamination  . .  2260 , 2262

  Office date stamp  . .  505 , 506 ,
  710.01(a) , 714.18

  Office hours  . .  510

  Office of Assistant Commissioner for Patents  409.01(b) ,
  409.03 ,

 409.03(h), 409.03(i),

 409.03(j), 506.02, 1448, 1449,

 1451, 1901.03, 1901.05, 1901.06,

 1901.07(a), 1902.01, 2000, 2001.03,

 2013, 2283-2286

  Office of Deputy Assistant Commissioner for Patents  2239

  , 2268 , 2281

  Office of Enrollment and Discipline  . .  406 ,
  714.01(a)

  Office of Finance  . .  502 , 2248

  Office of National and International Application Review  2226

  Office of Patent Classification  . .  903 , 903.05 ,
  903.09 ,

 905.02

  Office of Petitions  . .  1002.02(b)

  Office of Publications  . .  101 , 2283 ,
  2287

  Office of Quality Review  . .  1302.04 ,
  1308.03

  Office of Solicitor  . .  2220

  Office, Special Program Law  . .  201.03 ,
  506.02 , 720 ,

 720.01, 1002.02(b)

  Office proceedings, Concurrent  . .  2282

  Office Services Division  . .  608.02

  Official action  . .  707

  Official cross-reference, Order of  . .  903.06

  Official Gazette  . .  103 , 707.06 ,
  1703

  Official Gazette, Claim  . .  1302.09

  Official Gazette, Drawing figure  . .  1302.10

  Official Gazette, Notice of certificate  . .  2288 , 2291

  Official Gazette, Notice of reexamination  .  2229

  Official Gazette , Status of oldest application 203.08

  Official inquiries  . .  203.08(a)

  Official Notice  . .  2144.03

  Old application (definition)  . .  203.03

  Old combination  . .  2173.05(j)

  Old combination, Restriction  . .  806.05(b) ,
  820.01

  Omission in response, inadvertent  . .  710.02(c)

  Omnibus claim  . .  706.03(d) ,
  2173.05(r)

 Cancellation  . .  1302.04(b)

  On Sale  . .  706.02(c) ,
  2133.03 , 2133.03(b)

 Affidavit or declaration  . .  715.10

 Anticipation  . .  2133.03(b)

 Buyer  . .  2133.03(b)

 Commercial activities  . .  2133.03 ,
  2133.03(c) ,

 2133.03(e), 2133.03(e)(1)

 Completion of the invention  . .  2133.03 ,
  2133.03(b) ,

 2133.03(c), 2133.03(e)(1),

 2133.03(e)(3)

  Admission of completion by 37 CFR 1.131 affidavit  
  2133.03(c)

 Definition of  . .  2133.03(b)

  Conditional sale  . .  2133.03(b)

  Nonprofit sale  . .  2133.03(b)

  Sale of rights  . .  2133.03(b)

  Single sale  . .  2133.03(b)

 Delivery of offered goods  . .  2133.03(b)

 Evidence of (none-prior art publications)  2133.03(b)

 Experimental use (see also Experimental Use)  
  2133.03 , 2133.03(e)

 Goods "on hand"  . .  2133.03(b)

 "In this country"  . .  2133.03(d)

 Invention  . .  2133.03(c)

 Intent to sell  . .  2133.03(b) ,
  2133.03(e)(2)

 Offer for sale  . .  2133.03(b)

 Policy considerations  . .  2133.03

 Reduction to practice  . .  2133.03(c) ,
  2133.03(e)

 Sale by Inventor or associate  . .  2133.03(b)

 Sale by Third party  . .  2133.03(b)

  Testing by Third party  . .  2133.03(e)(5) ,

 2133.03(e)(7)

 Secrecy  . .  2133.03 ,
  2133.03(b)

 Supervision and control over invention  2133.03(e)(5) ,
  2133.03(e)(7)

 Test for determining if impermissible sale occurred  
  2133.03(b)

  Operative  . .  2164.07 ,
  2164.08(b)

  Operative example  . .  608.01(p)

  Operative, Showing  . .  608.03 , 716

  Opposition to issue of patent  . .  1901

  Oral hearing in reexamination  . .  2276

  Oral hearing on appeal  . .  1209

  Order 3311  . .  714.16(d)

  Order 3311 amendments  . .  714.16 ,
  714.16(d)

  Order, Citation of  . .  707.06

  Order, Classification  . .  902.04

  Order of examination  . .  707.02 , 708
  to 708.03

 Patentability report  . .  705.01(c)

  Order of papers in file wrapper  . .  719.01(a)

  Ordering:

 Abandoned file  . .  711.04(b) ,
  905.03

 Cross-references  . .  903.06

 Foreign patent  . .  901.05(c)

 Patented file  . .  711.04(b) ,
  905.03

 Photocopy  . .  905.01

 Publication  . .  901.06(b)

 Reexamination, decision  . .  2246 , 2247

 Soft copy  . .  905.02

 Subclass list  . .  902.03(c)

  Orders, Purpose  . .  Introduction

  Original application (See also Nonprovisional)  201.04(a)
  , 506 , 601

  Original carries title to some continuing applications  
  201.12

  Original disclosure, Inherent characteristics  608.04(a)

  Outstanding requirements  . .  707.07(e)

  Overcoming a reference, Right of priority  .  201.15 ,

 706.02(b)

  Overlapping applications, Same applicant  .  709.01 ,
  715.01(a) , 804 ,

 804.02, 822, 822.01, 2315.01

  Overlapping applications, Same assignee  . .  706.02(f) ,
  706.02(k) , 706.02(l) ,

 709.01, 715.01(b), 822,

 2315.01, 2302

  Overlapping claims  . .  804.02

  Owner's representative  . .  Chapter 400

  Ownership and assignment  . .  Chapter 300 ,
  706.02(l)

  Ownership at time invention made  . .  706.02(k) ,
  706.02(l)

  Ownership carried over by assignment  . .  201.12

  P

  PALM  . .  102 , 508.01 ,
  508.03 , 711.04(b) ,

 1704, 1705, 2229, 2232, 2233, 2235, 2237

 Application Location  . .  905.05

  Paper Correlating Office  . .  508.03

  Paper, "Easily Erasable"  . .  608.01 ,
  714.05 , 714.07 , 714.19

  Paper number  . .  714.18 ,
  714.21

  Paper number of print  . .  719.01(b)

  Papers:

 Associated with file  . .  101

 Depositing  . .  502

 Distribution  . .  508

 File wrapper  . .  719.01 ,
  719.01(a)

 Identification  . .  502 , 503

 Receipt and handling  . .  Chapter 500

 Received after patenting and handling  508.02

 Signature required  . .  402

 Submitted in reissue litigation  . .  1403

 Unmatched  . .  508.03

 Wrong Group  . .  508.01

  Parent application  . .  201.04

  Parent application data, Cross-noting  . .  201.11 ,

 202.01, 202.02

  Parent application inspected  . .  904

  Parent carries assignment to some continuing applications  
  201.12

  Paris Convention  . .  201.13 ,
  509.02

 Article 4 Cited  . .  201.13 ,
  201.13(b) , 201.14(b)

  Partial signatory authority  . .  1005

  Patent:

 1836 (present) series  . .  901.04

 A.I. series  . .  901.04

 Arrangement in Group  . .  901.07

 Assignment  . .  301

 Borrowing from Group  . .  901.08

 Citation handling  . .  1922

 Citation of prior art in  . .  1920 , 2202

 Citation service on patentee  . .  2208

 Claim copied (See Claim copied from patent.)

 Classification change  . .  903.05

 Classification indices  . .  902.03 ,
  902.03(a)

 Copy, Reexamination certificate on  .  2292

 Copy in reexamination request  . .  2219

 Cost of copy  . .  905.02

 Design series  . .  901.04

 Design vs. Utility  . .  1502 , 1508

 Effective date  . .  706.02(a) , 715
  , 715.01 , 2133.01

 Expiration  . .  2211 , 2250

 Files  . .  905.03

 Foreign. (See Foreign patent.)

 Index  . .  902.03(b)

 Interference  . .  2306 to 2308.03

 Joint to sole  . .  1481

 Jurisdiction  . .  1305

 Law, opinions not given  . .  713.02

 Laws (see also Statutes; Statutes Revised) Introduction

 Litigation relating to reissue  . .  1442.04

 Marking Examiner's copy  . .  905.04

 Missing copy  . .  901.09

 Ordering soft copy  . .  905.02

 Owner, service of citation on  . .  2205 , 2206

 Owner's address in reexamination  . .  2222

 Pamphlet  . .  703

 Papers received  . .  508.02

 Plant  . .  901.04 ,
  Chapter 1600

 Post-issuance information updating  .  2501

 Prior art citation in  . .  2003.01

 Printing priority  . .  1309

 Reference (See Reference.)

 Reissue series  . .  901.04

 Simultaneous issue  . .  1306.02

 Soft copy  . .  905.02

 Sole to joint  . .  1481

 Statutory types of subject matter  . .  706.03(a)

 Surrender  . .  1416

 Statutes (see also Statutes;

  Statutes Revised)  . .  Introduction

 System, Constitutional basis for  . .  Introduction

 Terms and extensions  . .  1309.01

 Transfer  . .  903.05

 Transfer of rights in  . .  509.02

 Type; design vs. utility  . .  1502 , 1508

 Utility series  . .  901.04

 Utility vs. Design  . .  1502 , 1508

 X series  . .  901.04

  Patent Academy  . .  713.01

  Patent and Trademark Office:

 Address  . .  501 , 502

 Business hours  . .  510

 Employees, Property Interest in patent  309

 Publications  . .  Introduction

  Development and Use of Patent

  Classification System s  . .  903.02

  Directory of Attorneys and Agents  1706

  Official Gazette  . .  1703

  Patent Classifier's decision  . .  903.08(f)

  Patent Cooperation Treaty (see also International Application):

 Administrative Instructions  . .  AppendixAI

 Agent  . .  1807

 Amendment before the Designated Office..1893.01(b)(2)

 Amendment of claims before

  International Bureau  . .  1853

 Applicant  . .  1810

 Applicant for United States Receiving Office 1805

 Basic flow  . .  1842

 Classification of Application  . .  903.08(d)

 Classification of Subject Matter  . .  1879

 Common Representative  . .  1807

 Concepts, Major  . .  1801

 Country codes  . .  1851

 Definitions  . .  1802

 Design patents  . .  1501

 Designated Office  . .  1893.01(a)

 Designation of States  . .  1817.01

 Fees  . .  1827 ,
  1893.01(c)

 Filing date requirements  . .  1810

 Foreign filing license  . .  1832

 Foreign Patent Citation Codes  . .  1851

 Form PCT/ISA/210  . .  1844

 Form PCT/IPEA/401  . .  1865

 Form PCT/IPEA/408  . .  1878

 Form PCT/IPEA/409  . .  1879

 Form PCT/IPEA/416  . .  1879

 Gazette  . .  1801

 International Bureau  . .  1801

 International Preliminary Examination  1860

 International Preliminary

  Examination Report  . .  1879

  Written opinion  . .  1878

 International Publication  . .  1857

 International Search Report  . .  1844

 International Searching Authority  . .  1840

 Member Countries  . .  1817

 National procedure  . .  1893

 Nucleotide sequences  . .  1850

 Numbering  . .  1812

 Priority  . .  201.13(b) , 1828
  , 1893.03(c) , 1895

 Priority document  . .  201.13(b)1828

 Publication  . .  1857

 Receiving Office  . .  1801

 Receiving Office Procedure  . .  1801

 Record Copy Transmittal  . .  1801

 Regular Filing in Each Designated State  .  1801

 Representation before the Designated Office  402

 Response to Invitation Concerning Lack

  of Unity of Invention  . .  1850 , 1875.02 ,
  1893.03(d)

 Response to written opinion  . .  1878.02

 Revocation of agent  . .  1808

 Schedule of Fees  . .  1827

 Search Report  . .  707.05 , 1844

 Sequence Listings  . .  1823.02 , 1848

 Signature missing  . .  1820

 Unity of Invention  . .  823 , 1850 ,
  1875 , 1893.03(d)

  Patent Cooperation Treaty, Administrative Instructions:

 101 Cited  . .  1802

 102 Cited  . .  1821

 103 Cited  . .  1862

 105 Reproduced  . .  1834

 204 Reproduced  . .  1823

 205 Reproduced  . .  1824 , 1853

 207 Cited  . .  1812 , 1826

 208 Reproduced  . .  1823.02

 209 Reproduced  . .  1823 , 1823.01

 303 Cited  . .  1821

 310 Reproduced  . .  1825

 326 Reproduced  . .  1859

 404 Reproduced  . .  1857

 414 Reproduced  . .  1859

 502 Reproduced  . .  1850

 503 Cited  . .  1851 , 1878 ,
  1879

 505 Cited  . .  1844

 507 Cited  . .  1844 , 1879

 508 Cited  . .  1844 , 1879

 513 Reproduced  . .  1847

 603 Reproduced  . .  1875.02

 604 Reproduced  . .  1879

 605 Reproduced  . .  1872

 606 Reproduced  . .  1880

 607 Reproduced  . .  1876

 610 Cited  . .  1877

 611 Cited  . .  1851 , 1879

  Patent Cooperation Treaty Articles:

 2 Cited  . .  1802

 3 Reproduced  . .  1812

  Cited  . .  1850

 5 Reproduced  . .  1823

 6 Reproduced  . .  1824

 7 Reproduced  . .  1825

  Cited  . .  1812

 8 Cited . . 201.13(b) ,
  1826

 9 Cited  . .  1805

 11 Reproduced  . .  1810 , 1825

  Cited  . .  601.01(a)1801 ,
  1810 , 1825 ,

 1893.03(b), 1896

 12 Cited  . .  1801 , 1823 ,
  1840

 14 Cited  . .  1801 , 1820

 15 Cited  . .  1801 , 1840 ,
  1843

 16 Cited  . .  1801 , 1840

 17 Reproduced  . .  1843

  Cited  . .  1840.01 , 1844 ,
  1850 , 1871

 18 Reproduced  . .  1844

  Cited  . .  1840

 19 Reproduced  . .  1853

  Cited  . .  1801 , 1840 ,
  1844.01 , 1853 , 1871

 1878, 1879, 1893.01(a)(2), 1893.01(b)(2)

 20 Cited  . .  1801 , 1810 ,
  1857 , 1893.03(f)

 21 Reproduced  . .  1857

  Cited  . .  1801

 23 Cited  . .  201.13(b)

 27 Cited  . .  1801 , 1805 ,
  1832

 28 Cited  . .  1801

 29 Reproduced  . .  1857

 31 Reproduced  . .  1864.02 ,
  1864.03 ,

 1865, 1869, 1873

  Cited  . .  1864.03

 32 Reproduced  . .  1862

 33 Reproduced  . .  1878.01(a) ,
  1878.01(a)(1) ,

 1878.01(a)(2), 1878.01(a)(3)

  Cited  . .  1860

 34 Reproduced  . .  1862 , 1874 ,
  1875 , 1878 , 1878.02

  Cited  . .  1847 , 1860 ,
  1864.01 , 1871 , 1875 ,

 1878, 1878.02, 1879, 1893.01(b)(2)

 35 Reproduced  . .  1879

 36 Reproduced  . .  1879.02 ,
  1879.03

 37 Reproduced  . .  1880

 38 Reproduced  . .  1879.04

 49 Cited  . .  1864.04

 64 Cited  . .  1803

  Patent Cooperation Treaty Rules:

 2 Cited  . .  1802

 4 Cited  . .  1817 , 1821 ,
  1864.02

 4.1 Cited  . .  201.13(b)

 4.3 Cited  . .  1821

 4.9 Cited  . .  1817.01

 4.10 Cited  . .  1893.03 , 1896

 4.11 Reproduced  . .  1819

 4.14 Reproduced  . .  1817.02

  Cited  . .  1893.03

 4.15 Reproduced  . .  1820

  Cited  . .  1820

 5 Reproduced  . .  1823 , 1823.02

  Cited  . .  1826

 6 Reproduced  . .  1824

 7 Reproduced  . .  1825

 8 Reproduced  . .  1826

 11 Cited  . .  1812 ,
  1893.03(f)

 13 Reproduced  . .  1823.01 ,
  1823.02

  Cited  . .  1850 , 1877 ,
  1893.03(d)

 17 Reproduced  . .  201.13(b)

 17 Cited  . .  201.13 , 1801 ,
  1879

 18 Cited  . .  1805

 19 Cited  . .  1805

 20 Cited  . .  1805

 22 Cited  . .  1801 , 1832

 23 Cited  . .  1801 , 1840

 24 Cited  . .  1890

 26 Cited  . .  1820 , 1876.01 ,
  1893.01(d)

 33 Reproduced  . .  1843

 Cited  . .  1843

 34 Cited  . .  1801 , 1843

 35 Cited  . .  1840

 36 Cited  . .  1840

 37 Cited  . .  1801

 38 Cited  . .  1801 , 1826

 39 Reproduced  . .  1843

 40 Reproduced  . .  1850

 41 Reproduced  . .  1852

 42 Cited  . .  1801 , 1844 ,
  1844.01

 43 Cited  . .  1801 , 1840 ,
  1844 , 1878 , 1879

 44 Cited  . .  1801

 46 Reproduced  . .  1853

  Cited  . .  1801 , 1871 ,
  1878

 47 Cited  . .  1801 , 1890 ,
  1893.01(a)(1) , 1883.01(b)(1)

 48 Cited  . .  1801

 52 Cited  . .  1801

 53 Cited  . .  1860 , 1868 ,
  1871

 54 Reproduced  . .  1864.02

  Cited  . .  1860

 55 Cited  . .  1860 , 1868

 56 Reproduced  . .  1873

 57 Cited  . .  1860 , 1867 ,
  1868

 58 Cited  . .  1860 , 1862 ,
  1867

 59 Cited  . .  1862

 60 Reproduced  . .  1868

 61 Reproduced  . .  1881

  Cited  . .  1869

 62 Reproduced  . .  1871

 63 Cited  . .  1862

 64 Reproduced  . .  1878.01(a)

  Cited  . .  1879

 65 Reproduced  . .  1877.01(a)(2)

 66 Reproduced  . .  1864.01 , 1870 ,
  1878.02

  Cited  . .  1860 , 1871 ,
  1878 , 1878.02 , 1879

 68 Cited  . .  1875 , 1875.01

 69 Reproduced  . .  1879.01

 70 Cited  . .  1875 , 1878.01 ,
  1878.02

 71 Reproduced  . .  1879.02

 72 Reproduced  . .  1879.03

  Cited  . .  1862

 75 Cited  . .  1862

 77 Cited  . .  1862

 80 Cited  . .  1834.02

 81 Reproduced  . .  1834.02

 82 Reproduced  . .  1834.02

 83 Cited  . .  1864.04

 86 Cited  . .  1801

 22 Cited  . .  1801

 90 Reproduced  . .  1808 , 1880

 91 Reproduced  . .  1836

  Cited  . .  1876.01 ,
  1893.01(d)

 92 Reproduced  . .  1834

  Cited  . .  1834 , 1834.01 ,
  1878.02

  Patentability (See Rejection.)

  Patentability report  . .  705 to 705.01

 Allowance or abandonment  . .  705.01(d)

 Appeal  . .  705.01(a)

 Count  . .  705.01(c)

 Date status  . .  705.01(c)

 Dispute between examiners  . .  705.01(a)

 Drawing  . .  608.02(n)

 Final action  . .  705.01(a)

 Forms for action  . .  705.01(a)

 Improper  . .  705.01(e)

 Initiate  . .  705.01

 Interviews  . .  713.01

 Limitation as to use  . .  705.01(e)

 Practice suspended  . .  705

 Primary decides propriety  . .  1004

 Print of drawing  . .  608.02(n) ,
  705.01(d)

 Purpose  . .  705.01(e)

 Recording  . .  705.01(c)

 Restriction, Effect on  . .  807

 Search  . .  705.01(a) ,
  705.01(b)

 Sequence of examination  . .  705.01(b)

 Transfer of appeal  . .  705.01(a)

  Patentability Statement  . .  609 , 1302.14

  Patentable novelty, pointed out  . .  714.04

  Patentable Subject Matter

 Computer Programs  . .  2106

 Disclosed but not claimed  . .  706

 Living Subject Matter  . .  2105

 Mathematical Algorithms  . .  2106

  Patented file  . .  905.03

  Patented file, ordering  . .  711.04(b)

  Patented file, Reissue application notice  .  1431

  PatentIn computer program  . .  2430

  Patents of addition, foreign  . .  901.05(b)

  Payment of fees  . .  509

  PCT (see Patent Cooperation Treaty) Classification of
  application  . .  903.08(d)

  Pencil notations, Erased at allowance  . .  1302.01

  Pending application as prior art  . .  706.02(f) ,

 706.02(k), 901.03

  Pending application charge location  . .  905.05

  Pending application preserved in confidence  101

  Pending applications as references  . .  706.02(f)

 706.02(k), 901.03

  Period for response  . .  710

 After Board decision  . .  1214.01

 After final  . .  706.07(f)

  In transitional application  . .  706.07(g)

 After interference  . .  710.02(b) ,
  2363.02

 Amendment after  . .  714.17

 Claim copied from patent  . .  710.04(a)

 Claims all allowed  . .  707.07(a) ,
  710.02(b) , 714.14

 Computed  . .  710.01(a) ,
  710.05

 Copying claim from patent does not extend statutory period
  . .  710.04(a)

 Correction of citation  . .  707.05(g) ,
  710.06

 Date of receipt of amendment  . .  710.01(a) ,
  710.05

 Defective Office action  . .  707.05(g) ,
  710.06

 Difference between shortened statutory period and time

  limit  . .  710.02(d)

 Extension  . .  710.02(d) ,
  710.02(e) , 1003

 Holiday, Saturday, or Sunday expiration of time  505 ,
  710.05 , 710.01(a)

 Incomplete response  . .  710.02(c) ,
  711.02(a) , 714.03

 Less than six months  . .  710.02 to
  710.02(e)

 Miscellaneous factors  . .  710.06

 Petition  . .  1002

 Property rights under AEC and NASA Acts  .  150

 Remailing  . .  707.13 , 710.06

 Restarting  . .  710.06

 Saturday, Expiration of time  . .  505 , 710.01(a)
  , 710.05

 Secrecy order application  . .  130

 Shortened, Approval  . .  1003

 Shortened, Extension  . .  710.02(d) ,
  710.02(e)

 Shortened statutory period  . .  710.02 ,
  710.02(b) ,

 710.02(e)

 Shortened statutory period,

  Distinguished from time limit  . .  710.02(d)

 Shortened statutory period, When used  710.02(b)

 Statutory period  . .  710.01

  How computed  . .  710.01(a)

 Suggesting claims  . .  710.02(c) ,
  2305.02

 Sunday, Expiration of time  . .  505 , 710.01(a)
  , 710.05

 Supplemental action  . .  710.06

 Time computation  . .  710.01(a) ,
  710.05

 Time limit action  . .  710.02

 Time limit action, When used  . .  710.02(c)

 Two periods running  . .  710.04 ,

  710.04(a)

 Withdrawal of attorney or agent during  402.06

  Periodicals  . .  901.06 ,
  901.06(a)

  Period of enforceability  . .  2204 , 2211

  Permanent ink  . .  608.01 ,
  714.07 , 714.19

  Perpetual motion  . .  608.03 ,
  706.03(a) , 2164.07

  Persons who may cite prior art in reexam  .  2203

  Pertinent prior art  . .  904.02

  Petition:

 Abandonment holding  . .  711.02 ,
  711.03(c) , 711.03(d)

 Abandonment holding, Examiner's statement  711.03(d)

 Accepting late issue fee  . .  712 , 1002.02(b)

 Access to application  . .  103 , 1002.02(b)

 Access to interference case  . .  1002.02(f)

 Add inventor in provisional application  .  1002.02(q)

 After forfeiture  . .  712

 Amend after appeal decision  . .  1002.02(c)

 Amend with appeal  . .  1207

 Attorney withdrawal  . .  1002.02(b) ,
  1002.02(c) ,

 1002.02(p)

 Biotechnology processes under 35 U.S.C. 103(b)  
  706.02(n)

 Board of Patent Appeals and Interferences involved  
  1002.02(f) , 1002.02(g) ,

 1002.02(j)

 Cancer  . .  1002.02(c)

 Certificate of Correction  . .  1002.02(d) ,
  1002.02(l)

 Change in inventorship  . .  1002.02(d) ,
  1002.02((e) ,

 1002.02(l), 1002.02(p),

 1002.02(q)

 Commissioner's duties  . .  Introduction ,
  1002

 Common ownership situation  . .  706.02(k)

 Conditional, to revive  . .  711.03(c)

 Converting a nonprovisional to provisional  1002.02(b)
  , 1002.02(c) ,

 1002.02(p), 1002.02(q)

 Correction of inventorship  . .  201.03 ,
  1002.02(d) ,

 1002.02(e), 1002.02(l),

 1002.02(p), 1002.02(q)

 Counter terrorism inventions  . .  708.02 ,
  1002.02(c)

 Defer issuance  . .  1002.02(b)

 Delegation of Commissioner's authority  1001.01

 Denial of reexamination request  . .  2248

 Divisional Reissue  . .  1002.02(b)

 Entry of Amendment  . .  1002.02(d) ,
  1207

 Express abandonment after payment

  of issue fee  . .  1002.02(b)

 Expunge papers from file  . .  1002.02(b)

 Expunge trade secret material  . .  724.05 ,
  1002.02(b)

 Extension of time  . .  710.02(e) ,
  714.17 , 1002.02(c) ,

 1002.02(q)

 Filing date  . .  506.02 , 601.01
  , 601.01(b) , 1002.02(b)

 Final rejection  . .  1002.02

 Foreign filing license  . .  140

 HIV/AIDS  . .  1002.02(c)

 Inspection  . .  103

 Interference  . .  1002.02(f) and
  (g) , 2344

 Late paper in reexamination  . .  1002.02(b) ,
  2268

 Late payment of issue fee  . .  1002.02(b)

 Late priority papers  . .  1002.02(b)

 Maintenance fees, accept and record  .  1002.02(b) ,

 2580

 Maintenance fees, delayed payment/reinstatement  
  1002.02(b) , 2590

 Make special  . .  708.02 ,
  1002.02(c)

 Matter subject to  . .  Introduction ,
  706.01 , 1002

 Merge reexaminations  . .  2283

 Modification of secrecy order  . .  120

 New matter  . .  608.04(c)

 Nonsigning inventor  . .  409.03 ,
  1002.02(b) ,

 1002.02(p)

 Patent term extension  . .  1002.02(b)

 Period for filing  . .  1002

 Premature final rejection  . .  706.07(c)

 Procedure  . .  1002.01

 Public use proceedings  . .  1002.02(b)

 Publication Division  . .  1002.02(r)

 Recision of secrecy order  . .  120

 Reconsideration of decision on motion  1005.07 ,

 2340

 Refused assignment  . .  313 , 317

 Relating to PCT international application and/or national
  stage application  .  1002.02(p)

 Restriction requirement holding  . .  821.01

 Retroactive foreign filing license  .  140

 Revival  . .  711.03(c) ,
  1002.02(b)

 Revival, Conditional  . .  711.03(c)

 Sequence rules  . .  1002.02(c)(2)

 Special status  . .  708.02 ,

 1002.02(c)

 Strike issue deferred  . .  2021.01

 Supervisory authority  . .  1002.02(b) , (c)

 Suspend rules  . .  1002.02(b)

 Rule 48 (inventorship)  . .  201.03

 Trademark related  . .  1002.02(i)

 Withdrawal from issue, after issue  .  feepaid

 Withhold from issue, before issue fee paid  1002.02(c)

  Petitionable matter  . .  706.01

  Phi, Greek letter usage  . .  608.01(g)

  Philippines-United States search exchange  .  1711

  Photocopy Orders  . .  905.01

  Photograph as drawing  . .  608.02

  Photoprint, Ordering  . .  905.01

  Piecemeal prosecution  . .  707.07(g)

  Plant Convention, UPOV  . .  1612

  Plant patent application  . .  201 ,  Chapter
  1600

 Action  . .  1610

 Advertising  . .  1610

 Affidavit  . .  1610

 Agricultural Research Service  . .  1608 , 1609

 Allowance  . .  1611

 Asexual reproduction  . .  1601 , 1605

 Bacteria  . .  1601

 Claim  . .  1605 , 1610

 Color drawing  . .  1606

 Color identified  . .  1605

 Definitions  . .  1601

 Department of Agriculture  . .  1608

 Deposit  . .  1605

 Description  . .  605

 Duplicate papers  . .  1603 , 1605 ,
  1610

 Elements of application  . .  1603

 Examination  . .  1608

 Examiner's amendment  . .  1610

 Executive Order  . .  1608

 Issue  . .  1611

 Laudatory expressions  . .  1610

 Letter of transmittal  . .  1608

 Method claim  . .  1605

 Oath  . .  1604

 Original and duplicate files  . .  1603 , 1610

 Parts  . .  1603

 Plant varieties excluded  . .  1601

 Report of Agricultural Research Service  .  1609 , 1610

 Rules applicable  . .  1602

 Signature  . .  1603

 Specification  . .  1605 , 1610

 Specimens  . .  1607

 Statutory basis  . .  1601

 Tubers  . .  1601

  Plant patent series  . .  901.04

  Postcard, self-addressed  . .  503 ,
  719.01(a)

  Post classifier  . .  903.02(c) ,
  903.08(d) , 903.08(e) , 903.10

 Requesting consideration by  . .  903.08(d)

  Post Office, Depositing papers in  . .  502

  Post Office address:

 Applicant  . .  605.03 ,
  719.02(b)

 Attorney  . .  601.02

 Petitioner  . .  103

  Postal Emergency (Public Law 92-34)  . .  511

  Postal Service Emergency Contingency Plan  .  511

  Power of attorney  . .  402

 Application in interference  . .  402.08

 Application oath or declaration includes  601.02

 Assignee revokes  . .  402.07

 Associate attorney  . .  402 , 402.02 ,
  406

 Attorney not of record  . .  714.01(c)

 Canadian patent agent  . .  402

 Change in plurality of applications or patents  402

 Coinventor  . .  402.01

 Death of applicant  . .  409 to 409.01(f)

 Death of principal attorney  . .  406

 Exception as to registration  . .  402.01

 General for international application  1807

 Invalid  . .  402

 Joint applicant  . .  402.01

 Limited recognition  . .  402.01

 Notice of revocation  . .  402.05

 Post Office address  . .  601.02

 Revocation  . .  402.05 , 402.07
  , 402.08

 Secrecy order cases  . .  120

 Unregistered attorney  . .  402 , 402.01

 Withdrawal of attorney  . .  402.06

 Withdrawn in patent  . .  2223

  Power to inspect  . .  104 , 402 ,
  713.05

  Power to inspect, approval  . .  104

  Power to inspect, Disbarred attorney  . .  105

  Practitioner's names on patents  . .  1309

  Preamble, Design application  . .  1503

  Preamble, Jepson claim  . .  2129

  Preamble, Weight given  . .  2111.02

  Preliminary amendment  . .  506 , 714.09

  Preliminary amendment:

 Excess claims  . .  506 , 714.10

 New matter  . .  608.04(b)

  Preliminary handling of public use or on sale  2122

  Preliminary hearing, Public use proceeding 720.03

  Preliminary Statement  . .  2321 to 2329 ,
  2331

  Premature final rejection  . .  706.07(c)

  Prima facie showing, Public use proceeding 720.02

  Primary Examiner  . .  705.01(a) ,
  706.07(c) ,

 707.01, 707.04, 710.02(b), 711.03(a),

 713.02, 713.10, 714.16(d), 1901.07(c),

 1902.01(b),1903, 1903.01, 2271

  Primary Examiner, Actions requiring

 personal attention  . .  705.01(a) ,
  707.01 ,

 707.09, 710.02(b), 713.02, 714.16(d), 1004

  Primary Examiner, name on file wrapper  . .  1302.13

  Print of drawing  . .  608.02(m)

 Additional  . .  608.02(m)

 Alteration  . .  608.02(m)

 Colored  . .  608.02(m)

 Distribution  . .  508

 Examiner's notation on  . .  608.02(m)

 File wrapper  . .  508 , 719.01(b)

 Kept in examining group  . .  608.02(c)

 Marking  . .  608.02(m)

 New application  . .  508

 New or substitute drawings  . .  508

 Patentability report  . .  705.01(d)

 Returned drawing  . .  608.02(y)

 Sketch  . .  608.02(v)

  Printed matter nonstatutory  . .  706.03(a)

  Printer Waiting  . .  708.01 ,

  1302.04 , 1305 , 1309.02

  Printing date, declassified material  . .  707.05(f)

  Printing practitioners names on patents  . .  1309

  Printing priority  . .  1309

  Prior Art (see also Reference)  . .  901

 Admissions as  . .  2129

 Analogous  . .  2141.01(a)

 Equivalents  . .  2144.06

 Foreign application as  . .  2135.01

 Level of ordinary skill  . .  2141.03

 Patents as  . .  706.02(a) , 2126
  , 2132 , 2136

 Scope and content of  . . 
  2141.01for"means"limitations

 Statutory Invention Registrations as  2136

 Suitability of  . .  2144.07

 Well-known in the art  . .  2144.03

  Prior art citation in patent:  . .  2202

 Content  . .  2205

 Copies of prior art  . .  2205

 English Translations  . .  2205

 Explanation of pertinence  . .  2205

 Flowcharts  . .  2206

 Handling  . .  2206

 Sample letter  . .  2205

 Service on patent owner  . .  2205 , 2206

 Time for filing  . .  2204

  Prior art copies in reexamination request  .  2218

  Prior art filed by protestor  . .  1901.02 ,
  1901.03

  "Prior art" on drawing  . .  608.02(g)

  Prior Art Statement  . .  609 ,
  1893.03(g)

  Prior Art Statement in provisional application  609

  Prior Art Statement in reissue application 1418

  Prior Art Statement Updating  . .  2003.03(a)

  Prior art used in determining reexamination request  

  Prior Examiner's action  . .  704 , 706.04 ,
  713.01

  Priority:

 Foreign application (see Foreign application)  201.13

  Proper identification  . .  201.14(d)

 Formal requirements  . .  201.14

 International application  . .  1828 ,
  1893.03(c)

 Inventor's certificate  . .  201.13(a)

 Overcoming reference  . .  201.15

 Patent printing  . .  1309

 Prior U.S. application  . .  201.11

  Provisional application  . .  706.02

 Time charts  . .  2138.01

 Time for filing  . .  201.13

  Priority document, International application  1828

  Priority practice  . .  201.14(b) ,
  201.14(c) , 706.02

  Priority right  . .  201.13

  Private use (See also Public Use)  . .  2133.03(a)

  Proceedings, Termination of  . .  201.11 ,
  711.02(c)

  Process in examining group of reexamination  2233

  Process of making and product made  . .  806.05(f)

  Product and process of using  . .  806.05(h) ,
  2173.05(p)

  Processing and Retention Fee  . .  202.01 , 506 ,
  601.01(a)

  Product by process  . .  2113 ,
  2173.05(p)

  Product of human ingenuity  . .  2105

  Product of nature  . .  706.03(a)

  Program Management System (PMS)  . .  2238

  Prolix claim  . .  2173.05(m)

  Proof Burden of  . .  2112 , 2112.01
  , 2113

  Proof, Printer waiting  . .  1309.02

  Proof of authority of Administrator or Executor 409.01(b)

  Proof of foreign filing  . .  201.14

  Proof of irreparable damage  . .  409.03(g)

  Proof of unavailability or refusal to sign 409.03(d)

  Proofreading of action  . .  707.08

  Proper identification of foreign priority  .  201.14(d)

  Proper multiple dependent claim  . .  608.01(n)

  Property rights statement  . .  150

 Contents of  . .  151

  Property rights under AEC and NASA Acts  . .  115 , 150 ,
  151

  Proprietary interest, Proof of  . .  409.03(f)

  Pro se applicant  . .  401 , 707 ,
  707.07(j) , 713.01

  Prosecution, Piecemeal  . .  707.07(g)

  Prosecution, Reopening after allowance  . .  1308.01

  Prosecution, Reopening after appeal decision  1214.07

  Prosecution, closed, Application allowable except for form  
  707.07(j) ,

 710.02(b), 714.14

  Prosecution of Secrecy Order application  .  130

  Prosecution reopened after court decision  .  1216.01

  Protective order material  . .  724 - 724.05

  Protective order material submission  . .  724.02

  Protest

 Access by protestor  . .  1901.05

 Acknowledgment of protest  . .  1901.05

 Against issuance of patent  . .  1901

 Appeal by protestor  . .  1904

 Certificate of service  . .  1901.03

 Clarification from protestor with access  1901.06

 Comments of applicant  . .  1901.06

 Complete  . .  1901.03

 Copies of documents  . .  1901.03

 Examination  . .  1901.07

 Examiner treatment  . .  1901.06

 Filed in reissue where patent is in interference  1449 ,
  1901.06

 Handling  . .  1901.05

 Improper protest  . .  1901.03

 Information which can be relied on  .  1901.02

 Interview  . .  1902 , 1902.01 ,
  1902.01(a) ,

 1902.01(b), 1903.01

 Involving fraud, good faith, lack of candor or violation of
  duty of disclosure issue  
  1901.06 ,

 2013

 Multiple papers on same issue  . .  1901.07(c)

 New protest  . .  1901.07(o)

 Notice of interview  . .  1902.01(c)

 Office handling  . .  1901.05

 Oral communication with protestor  . .  1907

 Public filed  . .  1901

 Reissue application  . .  1901.04

 Reissue litigation  . .  1901.03 ,
  1901.04

 Requirement for Information  . .  1901

 Review of adverse decision  . .  1906

 Service of Copies  . .  1901.07(a)

 Service on patentee or applicant  . .  1901.03

 Timeliness of protest  . .  1901.04

 Trade secret information  . .  724 , 1901.02

 Treatment by examiner  . .  1901.06

 Under Rule  . .  1901

 When submitted  . .  1901.04

 Who can file  . .  1901.01

  Protestor response  . .  1901.07(b)

  Protestor participation in examination  . .  1901.07

  Protestor participation in interview  . .  1902

  Protestor-Service of copies on  . .  1901.07(a)

  Provisional application  . .  201.04(b) ,
  201.11 ,

 601, 601.01(b), 706.02

 Abandonment  . .  201.04(b) ,
  711.03(e) , 201.11

 Access  . .  103 , 104

 Assignment of  . .  302.03

 Assignment of application claiming benefits of  306.01

 Completeness  . .  506 , 601.01(b)

 Conversion to  . .  601.01(c) ,
  201.04(b)

 Correction of inventorship  . .  201.03

 Cover sheet for  . .  201.04(b)

 Data, on file wrapper of  . .  202.02 , 1302.09

 Data, in specification of  . .  1302.04

 Drawing  . .  608.02

 Effective filing date  . .  706.02

 Filing receipt  . .  503

 Information disclosure statement  . .  609

 Joint inventors in  . .  605.07

 Ordering of abandoned  . .  905.03

 Revival  . .  711.03(e)

 Statutory Invention Registration  . .  1101

 Small entity  . .  509.03

 Specification  . .  601.01

 WARNING  . .  505 , 510

  PTO employee restrictions, assignment  . .  309

  Public access to reexamination file  . .  2232

  Public inspection, Application file  . .  103

  Public inspection of assignments  . .  301.01

  Public Law (see also Statutes)

 Public Law 92-34 (Postal Emergency)  .  511

 Public Law 96-517  . .  509.02

 Public Law 97-247  . .  509.02 ,
  711.03(c)

 Public Law 98-622  . .  201.03

 Public Law 103-465  . .  201.03 , 201.11

  Public policy  . .  706.03(a)

  Public right to inspect files  . .  103

  Public sale (See also On Sale and Public Use)  2133.03

  Public search room  . .  2229

 Hours  . .  510

 Regulations for Public Use  . .  510

  Public searchers  . .  101

  Public Use (see also On Sale)  . .  706.02(c) ,

 2133.03, 2133.03(a)

 Affidavit or declaration  . .  715.10

 Anticipation  . .  2133.03(a)

 Commercial exploitation  . .  2133.03(e)(1)

 Commercial use  . .  2133.03(a)

 Completion of the invention  . .  2133.03 ,

 2133.03(c), 2133.03(e)(1)

 Definition of  . .  2133.03(a)

 Evidence  . .  706.02(c)

 Experimental use (see also Experimental Use)  
  2133.03 , 2133.03(e)

 "In this country"  . .  706.02(c) ,
  2133.03(d)

 Intent to experiment  . .  2133.03(e)(2) ,
  2133.03(e)(3)

 Invention  . .  2133.03(c)

 Policy considerations  . .  2133.03

 Public knowledge or on display  . .  2133.03(a)

 Secrecy  . .  2133.03(a)

 Single use  . .  2133.03(a)

  Control over invention  . .  2133.03(a) ,

 2133.03(e)(5), 2133.03(e)(7)

 Testing by third party  . .  2133.03(e)(5) ,
  2133.03(e)(7)

 Use with expectation of privacy  . .  2133.03(a)

 Use by inventor or associates  . .  2133.03(a)

 Use by independent third parties  . .  2133.03(a)

  Public use proceedings  . .  720

 Affidavits  . .  720.01

 Final decision  . .  720.05

 Oral argument  . .  720.04

 Petitions  . .  1002.02(b)

 Preliminary handling  . .  720.01

 Preliminary hearing  . .  720.03

 Prima facie showing  . .  720.02

 Rejections after  . .  706.03(v)

 Rejections on  . .  706.03(v) ,
  720.05

 Testimony  . .  720.04

  Publication, Defensive  . .  711.06 ,
  711.06(a) , 1111

  Publication of Statutory Invention Registration 1111

  Publication date  . .  706.02(a) ,
  707.05(f)

  Publication of abstracts  . .  711.06 ,
  711.06(a)

  Publications:

 Board Decisions  . .  1213.03

 Citing  . .  705.05(e) ,
  901.06

 Date of  . .  706.02(a)

 Declassified  . .  707.05(f)

 Own, as reference  . .  715.01(c) ,
  2132.01

 Patent and Trademark Office  . .  Introduction

  Publishing Division  . .  104 , 203.04 ,

 203.08, 508.01,

 508.03, 603.01, 608.02(o),

 711.01, 711.05, 714.16(d),

 724.05, 1302.09, 1302.10,

 1303, 1308.01, 1309,

 1451, 1455, 1901.07(a), 2235

 Petitions  . .  1002.02(r)

  Pulling abandonments  . .  711.04(a)

  Q

  Quality Control Program  . .  1308.03

  Quality review  . .  2283 , 2287

  Quality review in reexamination  . .  2289

  Quayle practice  . .  710.02(b) ,
  714.14

 After final  . .  706.07(f)

 Copies of references  . .  707.05(a)

  R

  Ranges, anticipation of  . .  2131.03

  Ranges, obviousness of  . .  2144.05

  Ratification of papers filed:

 Death of attorney  . .  406

 Death of inventor  . .  409.01

 Signature improper or lacking  . .  714.01(a)

 Telegram amendment  . .  714.08

  Real Party in Interest  . .  1206 , 1208

  Reasons for allowance  . .  1302.14

  Recapture of matter in reissue  . .  1412.02

  Receipt, Office date stamp  . .  502 , 505 ,

  710.01(a) , 714.18

  Receipt for papers filed  . .  502 , 503 ,
  719.01(a)

  Receipt of mail and papers  . .  Chapter 500

  Receiving Office PCT procedure  . .  1801

 International Bureau  . .  1805

  Reciprocal legislation  . .  201.13

  Reclassification

 Classes  . .  903.02(a)

 Patents  . .  903.05

 Subclasses  . .  903.02(c)

  Recognized countries for foreign priority  .  201.13

  Recombinant DNA related, Special status  . .  708.02

  Recommendation by Board of Patent Appeals & Interferences  
  1213.01

  Reconsideration by Board of Patent Appeals & Interferences  
  1214.01 , 1214.03 , 1214.04

  Reconsideration in reexamination  . .  2269

  Reconsideration of abandonment  . .  711.03 ,
  711.03(c)

 Based on insufficient response  . .  711.03(a)

 Based on failure to respond within period  711.03(b)

  Record of interview  . .  713.01 ,
  713.04

  Record Room  . .  508.03 , 1431
  , 2232 , 2235

  Record Services Branch  . .  101 , 102

  Record system for reexamination  . .  2235

  Recording assignment  . .  302 , 317

  Recording change of business name  . .  314

  Recording license agreement  . .  313

  Recording of other documents  . .  313 to 317

  Recording security interest  . .  313

  Records, Examining Group  . .  1704

  Reduction to practice  . .  715.07 ,
  2133.03(c) , 2138.05

  Reexamination:

 Actions following Board decision  . .  2278

 Address of patent owner  . .  2222

 Admissions  . .  2217 , 2258

 Affidavits in reexamination  . .  2216 , 2217 ,
  2258 , 2266

 After final practice  . .  2272

 Amendment  . .  2234 , 2250

  Entry under Rule 312  . .  2287

 Amendment in request  . .  2221

 Ancillary Issues  . .  2217 , 2258

 Appeal  . .  2273

 Appeal brief  . .  2274

 Appeals to courts  . .  1216 , 1216.01 ,
  2279

 Assignment  . .  2236

 Attorney or agent  . .  2213

  Name on certificate  . .  2287

 Basic characteristics  . .  2209

 Certificate  . .  2288

 Certificate attached to patent copy  .  2292

 Certificate distribution  . .  2292

 Certificate format  . .  2290

 Certificate of mailing  . .  2224

 Certificate of prior reexamination in later request  
  2214

 Certificate of service  . .  2220

 Charge and procedures  . .  2232

 Citation of Prior Art  . .  2202

 Claim numbering  . .  2250

 Claims considered  . .  2243

 Claims presented for interference  . .  2307.04

 Clerical handling  . .  2270

 Collateral estoppel  . .  2259

 Commissioner's initiative  . .  2239

 Conclusion  . .  2287

 Concurrent proceedings  . .  2282

 Conduct of proceedings  . .  2254

 Consideration of responses  . .  2252 , 2253

 Consolidated proceedings  . .  2283

 Constructive notice to patent owner  .  2230

 Content of request  . .  2214

 Copending proceedings  . .  2283

 Copy of patent in request  . .  2219

 Copying of file  . .  2232

 Correction of inventorship  . .  2258

 Correction processing  . .  2231

 Correspondence  . .  2224

 Cost code  . .  2238

 Criteria for deciding request  . .  2242

 Decision of Board of Appeals  . .  2277

 Decision on request  . .  2240 , 2244

 Decision ordering reexamination  . .  2246

 Decision processing  . .  2245

 Denied  . .  2247

 Dependent claims  . .  2260.01

 Double correspondence  . .  2224

 Double patenting  . .  804 , 2258

 Drawing correction  . .  2250.01

 Duty of disclosure  . .  2280

 Effective date  . .  2201

 Entry of amendments  . .  2234

 Entry of court decisions in patent file  .  2207

 Examiner  . .  2255

 Examiner's answer  . .  2275

 Expiration of patent  . .  2250

 Explanation of prior art  . .  2217

 Extension of time  . .  2265

 Failure to timely respond to Office action  2266

 Fees  . .  2215 , 2233

 Final action  . .  2271

 Flow chart  . .  2201

 Grounds of rejection  . .  2217

 Identity of requester  . .  2212

 Inappropriate papers  . .  2267

 Incomplete request  . .  2227

 Informal request  . .  2228

 Initial processing  . .  2226

 Interference copending  . .  2284

 Intervening rights  . .  2293

 Interviews in  . .  2281

 Introduction  . .  2201

 Listing of prior art  . .  2257

 Litigation copending  . .  2286

 Litigation review  . .  2240 , 2287

 Mailing of Office actions  . .  2264

 Merger  . .  2283

 New matter  . .  2270

 Office action  . .  2260 , 2262

 Official Gazette notice of certificate  2291

 Official Gazette notice of request  .  2229

 Oral hearing  . .  2276

 Patent copy in request  . .  2219

 Patent owner's address  . .  2222

 Patent owner's statement  . .  2249

 Petition for entry of late papers  . .  2268

 Petition from denial  . .  2248

 Power of attorney, withdrawal  . .  2223

 Preprocessing Unit  . .  2206 , 2225 ,
  2226 ,

 2228, 2229, 2232, 2239

 Printing of certificate  . .  2288

 Prior art  . .  2218

 Prior art considered  . .  2244 , 2256

 Proceedings  . .  2209

 Processing in group  . .  2233 , 2245

  Clerical handling  . .  2270

 Project code  . .  2238

 Public access  . .  103 , 2232

 Quality review  . .  2289

 Reasons for allowance  . .  2247 , 2262

 Reconsideration of Office action  . .  2269

 Record System  . .  2235

 Refund of denial  . .  2247

 Regulations  . .  2201

 Reissue copending  . .  2285

 Rejections  . .  2258

 Reminders  . .  2287

 Reply by requester  . .  2251

 Reports  . .  2235

 Representative of requester  . .  2213

 Request  . .  2210

 Request content  . .  2214

 Request correction processing  . .  2231

 Request decision  . .  2240 , 2244

 Request decision criteria  . .  2242

 Request denied  . .  2247

 Request during interference  . .  2284

 Request filing address  . .  2224

 Response to Office action  . .  2266

 Return of papers  . .  2267

 Review  . .  2289

 Sample letter requesting reexamination  2214

 Scope  . .  2258

 Search  . .  2240 , 2244

 Second request  . .  2240 , 2283

  Prior art considered  . .  2240 , 2242

 Special Status for action  . .  2261

 Statement applying prior art  . .  2217

 Statement by owner  . .  2249

 Statutory basis  . .  2201

 Stay  . .  2283

 Substantial new question of patentability  2216 , 2242
  , 2244

 Suspension  . .  2283

 Terminated files  . .  2294

 Tickler reports  . .  2235

 Time for filing  . .  2210

 Time for request decision  . .  2241

 Time for requesting  . .  2211

 Time for response to actions  . .  2263

 Time reporting  . .  2238

 Title report  . .  320 , 2287

 Transfer  . .  2237

 Translation required  . .  2218

 Untimely filed paper prior to order  .  2225

 Untimely filed papers  . .  2267

 Untimely responses  . .  2252

 Use of transmittal form  . .  2264

 Who may file request for  . .  2212

 Withdrawal of attorney during  . .  402.06 , 2223

 Withdrawal of power of attorney  . .  2223

  Reference:

 A.I. Series patent  . .  901.04

 A.P.C. publication  . .  901.06(c)

 Abandoned application  . .  901.02 , 2127

 Abbreviatures  . .  901.06(d)

 Abstracts  . .  901.06(d)

 Additional  . .  707.05(d)

 Admissions  . .  2129

 Analogous art  . .  904.01(c) ,
  1302.14 , 2132.05

 Antedating (see also Affidavit, Antedating reference, Rule
  131)  . .  715 , 2132.01

 Applications, domestic and foreign  .  2127

 Arrangement in Examining Group  . .  901.07

 As evidence of inherency  . .  2131.01

 As evidence in multiple reference, 35 U.S.C. 102 rejection
  . .  2131.01

 Assigned application as  . .  804.03

 Between applicant's priority date and U.S. filing date  
  201.15 , 706.02(b)

 Borrowing from Group  . .  901.08

 Citation  . .  707.05 to
  707.05(g) , 901.04 , 901.05(a)

  After allowance  . .  1302.12 ,
  1308.01

  After appeal  . .  1208.01

  By applicant  . .  707.05(b) ,
  707.05(c) , 1302.12

  Correction  . .  707.05(g)

  Period for response  . .  710.06

 Claims foreign date  . .  715.01

 Combination of references  . .  706.02(j)

 Copending  . .  706.02(f) ,
  706.02(k) , 706.02(l) , 709.01

 Copies  . .  707.05(a)

 Cross, How cited  . .  707.05(e)

 Cross reference addition  . .  905.02

 Date, determination of  . .  707.05(f) , 2124
  ,

 2126, 21282128.02

 Date, exception to the rule  . .  2124

 Declassified printed matter  . .  707.05(f)

 Defensive publications  . .  901.06(d)

 Design application  . .  707.05(a)

 Disclosure, broad  . .  2123

 Drawings as prior art  . .  2125

 Effective date:

  Patent  . .  707.05(f) ,
  706.02 , 706.02(a) ,

 707.05(e), 715

  Publication  . .  706.02(a) ,
  715.01(c)

 Enabled disclosure  . .  2131.01

 Enabling, plant genetics  . .  2121.03

 Enabling, compounds and compositions  2121.02

 Enabling, apparatus and articles  . .  2121.04

 Equivalents  . .  904.01(b)

 Every element rule for anticipation  .  2131

 Evidencing the meaning of a term used in the primary
  reference  . .  2131.01

 Foreign patent  . .  707.05(e) ,
  901.05(a) , 901.05(b)

 Forfeited application  . .  901.02

 From interference  . .  1302.12

 Incorrect citation  . .  707.05(g) ,
  710.06 , 1302.12

 Inoperability  . .  716

 Internal documents, Confidential  . .  2128.01

 Joint patent to applicant and another  715.01(a) ,
  715.01(c)

 Listing at allowance  . .  1302.12 , 1455

 Lost counts in interference  . .  2138.01

 Multiple reference rejections under 35 U.S.C. 102  

  2131.01

 Newly discovered after allowance  . .  1302.14 ,
  1308.01

 Nonanalogous art (See Reference: Analogous Art)  
  2131.05

 None cited by examiner  . .  707.05 ,
  707.05(a)

 Operability  . .  2121

 Ordering official cross  . .  903.06

 Overcome:

  Under Rule 1.130  . .  718

  Under Rule 131 (see also Affidavit,

  Antedating reference, Rule 131)  706.02(a) ,

 706.02(f), 706.02(k), 715,

 1302.14, 2132.01, 2133.02

  Under Rule 132  . .  706.02(f) ,
  706.02(k) ,

 716, 2132.01

 Overcoming under 35 U.S.C. 119

  (foreign filing)  . .  201.15

 Paper, orally presented  . .  2128.01

 Patent  . .  901.04 , 2126

 Patent, date available  . .  2126.01

 Patent, Foreign  . .  901.05 , 2126.02

 Patent, Official number lacking  . .  901.04

 Patent claiming same invention  . .  715.05 , 2308.01

 Pending application  . .  901.03

 Publication of applicant's invention  715.01(a)

 715.01(c), 2132.01, 2133.01

 Publication, date available  . .  2128.02

 Publication, printed  . .  2128

 Publications  . .  706.02 ,
  707.05(e) , 901.06 ,

 2131.01, 2132.01, 2133.01

 Published abstracts of application  .  711.06(a) ,

 2131.01, 2133.01

 Rejection over broad disclosure instead of preferred
  embodiments  . .  2123

 Replacement of missing  . .  901.09

 Same assignee  . .  706.02(f) ,
  706.02(k) , 706.02(l) ,

 709.01, 715.01(b)

 Selection of pertinent  . .  904.02

 Statutory bar  . .  706.02(a) ,
  201.13 , 2133.02

 Statutory section to use  . .  706.02(a)

 Supply procedure  . .  707.05(a) ,
  707.05(g) , 710.06

 Swearing back (see also Affidavit, Antedating reference,
  Rule 131)  . .  706.02(k) ,

 715, 2132.01, 2133.02

 Thesis  . .  2128.01

 U.S. patent issuing from PCT application  1895.01

 Utility  . .  2122

 "Well known in the art," Supported by  2144.03

  Reference characters  . .  608.01(g)

  Reference to foreign application  . .  202.03 ,
  202.04

  Reference to prior patent  . .  608.01(c) ,
  608.01(p) ,

 608.01(r)

  Reference to related application (See Crossnoting.)

  Reference to related application for disclosure 608.01(p)

  Refile application  . .  201.10

  Refund of fees  . .  503 , 509 ,
  607.02

  Refund of search fee  . .  1867

  Refund section  . .  607.02

  Refusal to publish SIR  . .  1105

  Registration, Attorney or agent  . .  402 , 1702

  Regulations, Examining Group Search Facilities  510

  Regulations, Public Search Room  . .  510

  Rehearing by Board of Appeals  . .  1214.01 ,
  1214.03

  Rehearing by C.A.F.C  . .  1216.01

  Reinstituting interference  . .  2300

  Reissue application  . .  1401

 Access  . .  103

 Acknowledgment of protest  . .  1901.05

 Additional Information Required  . .  1447

 Additions underlined  . .  1411

 Adjudication of Original Patent  . .  1442.01

 Affidavit  . .  1447

 Affidavit, Patent not available  . .  1416

 Allowance  . .  1455

 Allowance, Drawing transfer  . .  1413

 Amendment  . .  1411

 Announcement in Official Gazette  . .  1430

 Broadened  . .  706.03(x) ,
  1412.03 , 1414.01

 Certificate of Correction  . .  1411.01 , 1480

 Claim, Numbering  . .  1411

 Claim, Oath requirement  . .  1414

 Claim, Original claim subject to reexamination  1440

 Claim, Same invention as original patent  1412.01

 Claim format  . .  1411 , 1412

 Claiming foreign priority  . .  201.14 , 201.16

 Claim too narrow  . .  1402

 Content  . .  1410

 Copending application reference  . .  1402

 Copending reexamination proceedings  .  2285

 Correct inadequacies  . .  1402

 Court decision involving original patent  1442.01

 Deceptive intention  . .  1414.04

 Declaration  . .  1414 , 1414.03 ,
  1444

 Defective oath, Ground for rejection  706.03(x) ,

 1414.01

 Dependent claim  . .  1455

 Diligence  . .  1403

 Divisional application  . .  1002.02(c)(27) ,
  1451

 Drawing  . .  1413

 Effect of reissue  . .  1460

 Election of species  . .  1450

 Error in original patent  . .  1401 , 1414.03

 Examination  . .  1440 , 1445

 Filed during interference  . .  2358 , 2360

 Filing Fee  . .  1415

 Foreign priority claim  . .  201.14(b) , 1417

 Fraud  . .  2012

 Grounds for filing  . .  1402

 Inequitable conduct  . .  1448

 Initial examiner review  . .  1443

 Inoperative, Oath requirement  . .  1414.01

 Inspection  . .  103

 Interference of original patent involved  2360

 Inventorship error  . .  1402

 List of references  . .  1455

 Litigation involved  . .  1403 , 1404 ,
  1422 , 1442.01 ,

 1442.02, 1442.03, 1442.04, 1442.05

 Litigation protest  . .  1901.03

 Narrowed  . .  1414.01

 New matter  . .  1411.02

 Notice in original file  . .  202.05 , 1431

 Notice of allowance  . .  1455

 Numbering of claims  . .  1411

 Oath  . .  1414 , 1414.03 ,
  1414.04 , 1444

  Primary's decision  . .  1004

  Rule 175(a)(1),(2), & (3) type  .  1414.01

 Offer to surrender patent  . .  1416

 Official Gazette, claim to be printed  1455

 Official Gazette filing notice  . .  1430

 Omission of feature  . .  1411.02

 Omissions bracketed  . .  1411

 Open to public  . .  103 , 1430

 Ordering copies  . .  1430

 Ownership  . .  201.12

 Patent returned  . .  1416

 Patent series  . .  901.04

 Print of drawing  . .  608.02(k)

 Prior Art consideration  . .  1402

 Prior Art Statement  . .  1418

 Priority correction  . .  1402

 Protest  . .  1901

 Protest filed in reissue where patent is in interference
  . .  1449

 Recapture of matter  . .  1412.02

 Reexamination  . .  1449.01

 Reexamination proceedings copending  .  2285

 Rejection  . .  706.03(x)

 Requirement for information  . .  1447

 Restriction  . .  1450

 Return of original patent  . .  1416

 Same invention as original patent  . .  1412.01

 "Special" for examination  . .  708.01 , 1441 ,
  1442 ,

 1442.03

 Specification  . .  1411 , 1451

 Statutory basis  . .  1401

 Statutory disclaimer  . .  1455

 Suit on original patent  . .  1442.01

 Transfer of original drawing  . .  608.02(k) , 1413

 Treatment of protest  . .  1901.06

 Twice reissued  . .  1411

 Two month delay period  . .  1441

  Rejected application (definition)  . .  203.02

  Rejection  . .  706

 Abandonment of invention  . .  706.02(d) ,
  706.03(s)

 Admission by applicant  . .  706.02(c) ,
  2133.03(c)

 After allowance of application  . .  706.04 , 706.05

 1308.01

 After allowance of claim  . .  706.04

 After allowance of claim, Primary review  1004

 After appeal, New rejection  . .  1208.01

 After termination of interference  . .  2363.03

 Against public policy  . .  706.03(a)

 Aggregation  . .  2173.05(k)

 All valid grounds  . .  707.07(g)

 Allowed claim, by Board of Appeals  .  1213.02

 Alternative phrases  . .  2173.05(h)

 Anticipation (See also Anticipation)  706.02(a) ,

 707.07(d) , 2131
  , 2133.06

 Art (See also Prior Art)  . .  706.02

 Assigned applications, Same applicant  804.03

 Atomic Energy Act  . .  706.03(b)

 Authorship  . .  2137

 Backup rejections  . .  706.02

 Bar, Statutory  . .  706.02(a) , 2133
  to 2133.03(e)(7)

  Overcoming  . .  706.02(b)

 Board of Appeals introduces  . .  1214.01

 Board of Appeals statement on

  allowed claim  . .  1213.02

 Breadth  . .  2173.04

 Broader than the disclosure  . .  2173.03

 Chemical practice:

  Markush  . .  2173.05(h) ,
  2173.05(o)

  Nonchemical  . .  2173.05(i)

  Undue breadth  . .  2163.05 ,
  2173.04 , 2173.05(h)

 Claim presented corresponding to claim of patent  706.06
  , 2307.02

 Claim presented corresponding to claim of patent, Failure
  to respond  . .  706.03(u)

 Claims  . .  706

 Combination of references  . .  706.02(j) ,
  707.07(d) ,

 2131.01

 Common knowledge  . .  2144.03

 Commonly assigned  . .  2146

 Computer programming cases  . .  2106 , 2106.01

 Conflicting applications  . .  706.02(f) ,
  706.02(k) ,

 706.02(l), 709.01,

 715.01(b), 804,

 804.01, 804.02,

 822, 822.01

 Contrasted to objection  . .  706.01

 Copending applications, different inventive entities  
  706.02(k) , 706.02(l)

 Cumulative  . .  706.02 ,
  707.07(d)

 Dedication  . .  715 , 1490

 Defective reissue oath  . .  706.03(x) , 1444

 Dependent claim  . .  608.01(n)

 Derivation of invention  . .  2137

 Disclaimer  . .  706.02(k) ,
  710.02(d)

 Double patenting (See Double patenting.)

 Duplicate claims  . .  706.03(k)

 Estoppel, Defensive publication  . .  711.06

 Estoppel, Interference  . .  2363.03

 Final (see also Final rejection)  . .  706.07 to
  706.07(f)

 Foreign application, Statutory bar  .  706.02(e)

 Form Paragraphs used  . .  706.02(i) ,
  706.02(m)

 Forms used  . .  707

 Fraud upon public  . .  706.03(a)

 Frivolous invention  . .  706.03(a)

 Full anticipation, Expression recommended  706.02(i) ,
  707.07(d)

 Function of machine  . .  2173.05(v)

 Functional claim  . .  2114 ,
  2173.05(g)

 Functional equivalents  . .  2144.06

 Generic claim  . .  715.02 , 809.02
  , 809.02(a) , 809.02(e)

 Genus and species  . .  806.04(h) to
  806.04(j) , 2131.02

 Ground clearly stated  . .  706.02(j) ,
  707.07(d)

 Inaccurate  . .  2173.03

 Incomplete  . .  706.03(c) ,
  707.07(j)

 Indefinite  . .  706.03(d)

 Inoperativeness  . .  2164.08(b)

 Insufficient disclosure  . .  706.03(c)

 Insufficient disclosure, Trademark  .  608.01(v)

 Interference, Estoppel  . .  706.02(h) ,
  2363.03

 Interference terminated  . .  706.03(v) ,
  2363.03

 Judicial notice  . .  2144.03

 Language used  . .  706.02(j) ,
  707.07(d)

 Linking claim  . .  809 to 809.04

 Markush, Improper  . .  2173.05(h) ,
  2173.05(o)

 Multiplicity  . .  2173.05(n)

 Negative limitation  . .  2173.05(i)

 New, After appeal  . .  1208.01

 New, After appeal brief  . .  1002.02(d)

 New, After final rejection  . .  706.07(e)

 New matter  . .  706.03(o) ,
  2163.06

 Nonelected invention  . .  706.03(m)

 Nonstatutory claim  . .  706.03(a) ,
  706.03(a)(1)

 Nonstatutory subject matter  . .  706.03(a)

 Not based on prior art  . .  706.03

 Not inventor  . .  706.02(g)

 Not readable on disclosure  . .  2173.03

 Oath, Defective reissue  . .  706.03(x)

 Objection distinguished  . .  706.01

 Obviousness (See also Obviousness)  .  706.02 ,

 706.02(j), 707.07(d)

 Official Notice  . .  2144.03

 Old combination  . .  2173.05(j)

 Omnibus claim  . .  706.03(d) ,
  2173.05(r)

 Omnibus rejection  . .  707.07(d)

 Overcoming 35 U.S.C. 102 rejection  .  706.02(b)

 Overlapping applications  . .  706.02(f) ,
  706.02(k) ,

 709.01, 715.01(b), 804,

 804.01, 804.02 , 822, 822.01

 Perpetual motion  . .  706.03(a)

 Personal remarks avoided  . .  707.07(d)

 Previously allowed claim  . .  706.04 , 1004

 Prima facie case of obviousness  . .  706.02(j)

 Printed matter  . .  706.03(a)

 Prior art  . .  706.02

 Prior art between applicant's foreign priority

  date and U.S. filing date  . .  201.15 ,
  706.02(b)

 Product by process  . .  2113 ,
  2173.05(p)

 Product of nature  . .  706.03(a)

 Prolix  . .  2173.05(m)

 Provisional rejection  . .  706.02(f) ,
  706.02(k)

 Public sale (See also On Sale and Public Use)  
  706.02(c)

 Public use (See also Public Use)  . .  706.02(c)

 Public use proceeding  . .  706.03(v) ,
  720.05

 Ranges  . .  706.03(c) ,
  2131.03 , 2144.05

 Reissue application,

 Broadened claims  . .  706.03(x) ,
  2163.05

  Defective oath  . .  706.03(x) , 1444

  Rejected  . .  707.07(d)

  Repeated  . .  707.07(f)

 Res judicata  . .  706.03(w)

 Scientific principle  . .  706.03(a)

 Secondary considerations  . .  2131.04

 Single means claim  . .  2164.08(a)

 Species and genus  . .  806.04(h) to
  806.04(j) , 2131.02 ,

 2144.08

 Statement of  . .  707.07(d)

 Statutory bar  . .  706.02(a) , 2133
  to 2133.03(e)(7)

 Suggested claims not made  . .  706.03(u)

 Technical  . .  706.03

 Trademark or trade name  . .  608.01(v)

 Undue breadth  . .  2163.05 ,
  2173.04

 Unpatentable over other claim  . .  706.02(f) ,

 706.03(k), 709.01

 Utility  . .  706.03(a)

 Vague  . .  706.03(d)

 "Well known in the art"  . .  2144.03

  Rejoinder  . .  806.05(c) ,
  806.05(e) , 809 , 821.04

  Related inventions  . .  802.01 ,
  806.04(b) , 806.05 ,

 808.02, 809.03

  Related inventions, Species  . .  806.04(b)

  Remailing Office action  . .  707.13 ,
  710.06

  Remand by Board:

 Affidavit  . .  1212

 Amendment  . .  1211.01

 Special  . .  708.01

  Removal of application from Office  . .  101

  Renumbering claims  . .  1302.01

  Reopening after allowance  . .  1308.01

  Reopening after court decision  . .  1216.01

  Reply brief  . .  1208 , 1208.03

  Representative capacity  . .  402 , 405 ,
  714.01(c)

 Cannot expressly abandon  . .  711 , 711.01

  Representative of foreign assignee  . .  302.04

  Representative of inventor or owner Chapter  400

  Representative of requester  . .  2213

  Representatives of out-of-town attorneys  .  408

  Request for reexamination:

 Decision criteria  . .  2242

 Notice of request in Official Gazette  2229

 Requester's representative  . .  2243

 Time for filing  . .  2210 , 2211

 Time to decide  . .  2241

  Request Form for international application 1820

  Requests for identifiable records  . .  103

  Requests for reconsideration of Board

 decision  . .  1214.01 ,
  1214.03 , 1214.04

  Requirement for information  . .  706.02(c) ,
  710.02(d) ,

 1504, 1901.06, 2001.06(d),

 2122, 2123, 2307.05

  Requirements must be repeated  . .  707.07(e)

  Requisites of the application  . .  702

  Res judicata  . .  706.03(w) ,
  707.07(g)

  Reservation clause in application  . .  608.01(e) ,
  608.01(t)

  Residence, Applicant's  . .  605.02

  Resignation of Examiner  . .  1702

  Resignation of Examiner, Old cases special 708.03

  Response (see also Amendment; Period for response)

 After abandonment  . .  714.17

 After Board decision  . .  1214.01 ,
  1214.06

 After final rejection  . .  714.12 , 714.13

  Within 2 months  . .  706.07(f)

 Attorney arguments  . .  716.01(c) , 2145

 Complete  . .  714.02 to 714.04

 Copying claim from patent

  not a response  . .  711.02(b)

 Election requirement  . .  809.02(a) ,
  809.02(b) ,

 818.03(a), 818.03(b), 818.03(c)

 Formal matters  . .  714.02

 Incomplete  . .  710.02(c) ,
  711.02 , 711.02(a) ,

 711.03(a),714.02 to 714.05

 In reexamination  . .  2210 , 2214 ,
  2266

 Incomplete, Election of species lacking  .  809.02(a) ,

 818.03(b)

 Incomplete, Proceedings not stayed by petition  1002

 Incomplete, Time for completing  . .  710.02(c) , 711
  ,

 714.03

 Late  . .  711 , 711.02

 Late, Excused  . .  710.02(d)

 Patentability pointed out  . .  706.02(b) ,
  714.02 , 714.04

 Restart period for response  . .  710.06

 Restoration of cancelled matter  . .  608.01(s) ,
  714.24

 Restriction requirement  . .  818 to 820.02

 Signed by all applicants  . .  714.01(a)

 Statutory period  . .  710.01

  Restriction (see also Election: Election of species)  
  Chapter 800

 Action, Examiner's  . .  814 to 817

 Action after, Special  . .  708.01

 Action on the merits  . .  810 - 810.03

 Apparatus and process or product  . .  806.05(e) to
  806.05(g)

 Basis  . .  802

 Burden, without serious  . .  803

 Case referred to second Examiner  . .  815

 Claimed subject matter  . .  806.01

 Claims to divisible inventions added before action  
  818.02(a)

 Combination and subcombination  . .  806.05(a) to

 806.05(c), 809.03

 Continuation  . .  819

 Definition  . .  802.02

 "Distinct" invention  . .  802.01 , 806 ,
  806.05

 Election other than express  . .  818.02

 Election fixed by action on claim  . .  818.01

 Final requirement  . .  821.01

 Grouped in parent case  . .  811.04

 Improper  . .  803 , 806 ,
  808.02

 Independent embodiments  . .  806.04 , 806.05

 Independent inventions  . .  802.01 , 803 ,
  806 ,

 806.04, 808.01, 808.01(a), 818.03

 Introduction  . .  801

 Linking claim  . .  809 , 809.02 ,
  809.03 , 809.04

 Linking claim, Traverse of rejection  818.03(d)

 Markush type claims  . .  803 , 803.02

 Nonelected claims, Treatment of  . .  821 to 821.03

 Nonelected invention  . .  706.03(m) ,
  809.04

 Nucleotide sequences  . .  803.04

 Old combination and subcombination  .  806.05(b) ,

 820.01

 Patentability over prior art  . .  806.02 , 809 ,
  809.03

 Patentability report, Effect  . .  807

 Petition from requirement  . .  809.04 ,
  818.03(c)

 Process and product or apparatus  . .  806.05(e) ,

 806.05(g), 820

 Product and process of using  . .  806.05(h)

 Product, process of making and using  806.05(i)

 Reissue application  . .  1450 , 1451

 Rejection of nonelected claims  . .  821 to 821.03

 Rejoinder  . .  806.05(c) ,
  806.05(e) , 809 , 821.04

 Related inventions  . .  802.01 , 803 ,
  806 , 806.04(b) ,

 808.02, 809.03

 Requirement  . .  812 to 817

  Additional  . .  811.02

  By Group where examinable  . .  812

  Completeness  . .  815

  Concluding paragraph  . .  817 , 818.03(b)

  Consult other Group  . .  812.01 , 815

  Election, after  . .  818

  Election, after; Shift of invention/species  819.01

  Election, after; With traverse  .  818.03(b) ,
  821.01

  Election, after; Without traverse  21.02

  Final  . .  810.03 , 818.03

  First action  . .  811

  Patentability  . .  810 to 810.03

  Petition from  . .  809.04 ,
  818.03(c)

  Reasons for insisting upon  . .  808

  Rejection on double patenting following  804.01

  Repeated after withdrawal  . .  811.03

  Response to  . .  818 to 818.03(e)

  Review by Primary Examiner  . .  803.01

  Submission to Group Director  . .  804.04

  Second requirement  . .  811.02

  Sequences  . .  803.04

  Single claim  . .  803

  Single embodiment  . .  806.03

  Species-Genus  . .  806.04(a)

  Species may be related inventions  806.04(b)

  Species of unclaimed genus  . .  808.01(a)

  Subcombination, Combination and  .  806.05(a) to
  806.05(c)

  When made  . .  811 , 811.02

  Withdrawal  . .  819

 Telephone  . .  812.01

 Transitional application  . .  803.03

 Traverse of requirement  . .  818 , 818.03(c)
  , 821.01

  Restrictions on former examiner  . .  1702

  Restrictions upon employees of Office  . .  309

  Retention of an Abandoned Application  . .  601

 Retention Fee  . .  202.01 , 506 ,
  601.01(a)

  Retention label  . .  1302.07

  Retroactive foreign filing license  . .  140

  Return of Papers:

 Discourteous matter  . .  714.19 , 714.25
  , 1003

 Entered on file wrapper  . .  201.14(c) ,
  719.01

 Return of complete application  . .  601

 Return of drawing  . .  608.02(y)

 Return of filing fee  . .  506.01 , 607.02

 Return of incomplete application  . .  506.01

 Return of oath  . .  604.04(a)

 Return of patent  . .  1416

 Return of postcard  . .  503

  Returned Office action  . .  707.13

  Review at allowance  . .  1302.01

  Review for national security  . .  115

  Review for property rights  . .  115

  Revised Statutes (See Statutes.)

  Revival of abandoned application  . .  203.08 ,
  711.03 ,

 711.03(c), 1002.02(b)

 Conditional petition  . .  711.03(c)

 Delgar  . .  711.03(c)

  Revocation of agent under PCT  . .  1808

  Revocation of power of attorney  . .  402.05 ,
  402.07

  Rewritten specification  . .  608.01(q)

  Ribboned application  . .  602.04(a)

  Right of priority (see Foreign application)  201.13

 Form paragraphs  . .  201.14(c)

 Formal requirements  . .  201.14

 Overcoming a reference  . .  201.15 ,
  706.02(b)

 Papers required  . .  201.14(b)

 Time for filing papers  . .  201.14(a)

 U.S. application  . .  201.11

  Right of priority, Determination by Examiner  201.15

  Rights, Transfer of patent or application  .  509.02

  Roster of attorneys  . .  601.03 , 2205

  Rules of practice: (37 CFR)  . .  Introduction

 1.1 Reproduced  . .  501 , 2224

  Cited  . .  513 , 2302.02 ,
  2302.03

 1.2 Reproduced  . .  713.04

  Cited  . .  2002.02 , 2345

 1.3 Reproduced  . .  714.25

  Cited  . .  608 , 714.19 ,
  714.21 , 1504

 1.4 Reproduced  . .  501 , 502.02

  Cited  . .  502.01 ,
  601.01(a) , 710.02(e) ,

  . .  714.01(a) ,
  714.07 , 1820 ,

  . .  1834.01 ,
  2002.02 , 2302.03

 1.5 Reproduced  . .  502

  Cited  . .  710.02(e) , 1893

 1.6 Reproduced  . .  502 , 502.01 ,
  505 , 511 , 513

  Cited  . .  201.13 , 506.02
  , 512

  . .  608.02 , 1805 ,
  1820 , 1834.01 ,

  . .  1893.01(a)(1) ,
  1893.01(b)(1) ,

  . .  2224 , 2321 ,
  2366 , 2376 , 2384

 1.7 Reproduced  . .  710.05

  Cited  . .  201.13 , 512

 1.8 Reproduced  . .  502.02 , 512

  Cited  . .  201.06(b) ,
  317.02 , 324 , 501 , 502 ,

  . .  513 , 605.04 ,
  609 , 710.06 , 711.03(c) ,

  . .  714.17 , 1216 ,
  1216.01 , 1805 ,

  . .  1834 , 1834.01 ,
  1865 , 1893.01(a)(1) ,

  . .  1893.01(b)(1) ,
  2224

 1.9 Cited  . .  201.13 , 509.03

 1.9(a) Reproduced  . .  201 , 201.04(b)
  , 509.02 , 1893

 1.9(b) Reproduced  . .  201 , 509.02

  Cited  . .  201.06(a)

 1.9(c) Reproduced  . .  509.02

  Cited  . .  509.03

 1.9(d) Reproduced  . .  509.02

  Cited  . .  509.03

 1.9(e) Reproduced  . .  509.02

  Cited  . .  509.03

 1.9(f) Reproduced  . .  509.02

  Cited  . .  509.03

 1.9(h) Reproduced  . .  509.02

 1.9(g) Reproduced  . .  509.02

 1.10 Reproduced  . .  513

  Cited  . .  201.13 ,
  201.06(b) , 201.13 , 317.01 ,

  . .  317.02 , 501 ,
  502 , 502.02 , 503 ,

  . .  505 , 506.02 ,
  510 , 511 , 512 , 513 ,

  . .  609 , 710.06 ,
  711.03(c) , 714.17 ,

  . .  1216.01 , 1805 ,
  1834 , 1865 , 2224 ,

  . .  2265 , 2266 ,
  2510

 1.11 Reproduced  . .  103 , 2229

  Cited  . .  104 , 724.04 ,
  724.04(b) - (c) ,

  . .  901.03 , 1216 ,
  1216.01 ,

  . .  1216.02 , 1430 ,

  . .  1443 , 1901.05 ,
  1901.07 , 2127 , 2254 ,

  . .  2300.02 , 2387

 1.12 Reproduced  . .  301.01

 1.14 Cited  . .  104 , 201.06(b)
  , 203.08 , 301.01 ,

  . .  502.02 , 509 ,
  713.05 ,

  . .  1002.02(b) ,
  2410.01

 1.14(a) Reproduced  . .  101 , 102 , 103

  Cited  . .  103 , 901.02 ,
  901.03 , 2127

 1.14(b) Reproduced  . .  711.04

  Cited  . .  103 , 2127

 1.14(c) Reproduced  . .  150

  Cited  . .  706.03(b)

 1.14(d) Reproduced  . .  103

  Cited  . .  104 , 608.01(p)
  , 1213.03

 1.14(e) Reproduced  . .  103

  Cited  . .  104

 1.15 Reproduced  . .  103

 1.15(a) Reproduced  . .  1701.01

 1.16 Cited  . .  201.04(b) ,
  201.06(a) , 201.06(b) ,

  . .  509.01 , 509.02
  , 601 , 601.01(a) ,

  . .  601.01(b) , 607
  , 608.01(i) , 608.01(n) ,

  . .  609 , 710.02(e)
  , 1415 , 1505 , 1509 ,

  . .  1893.01(c) ,
  1896

 1.16(e) Cited  . .  201.06(a) ,
  201.06(e) , 403 ,

  . .  409.01(a) , 502
  , 506 , 509.01 ,

  . .  601.01(a)1410.01

 1.17 Cited  . .  509.01 , 509.02
  , 601 ,

  . .  607 , 706.07(a)
  , 706.07(f) , 710.02 ,

  . .  710.02(e) ,
  711.03(c) , 714.13 ,

  . .  724.02 , 1205 ,
  1206 , 1209 , 1505

 1.17(a)-(d)  . .  710.02(e)

 1.17(e) Cited  . .  706.07(g)

 1.17(h) Cited  . .  140 , 201.03 ,
  207 , 307 , 409.03 ,

  . .  503 , 506.02 ,
  509.02 , 513 ,

  . .  601.01(a) , (d)
  ,  and (g) ,

  . .  607.02 , 608.01
  , 608.02 , 724.02 ,

  . .  724.05 , 817 ,
  1002 , 1410.01 ,

  . .  1441 , 1442.03 ,
  1481

 1.17(i) Cited  . .  201.03 ,
  201.06(a) , 201.06(b) ,

  . .  201.13 ,
  201.14(a) , 301.01 ,

  . .  307 , 506.02 ,
  509.02 , 601.01 ,

  . .  601.01(d) , (f)
  ,  and (g) , 609 ,

  . .  708.01 , 708.02
  , 709 , 714.16 ,

  . .  1306.01 , 1308 ,
  1451

 1.17(j) Cited  . .  509.02 , 720 ,
  714.16

 1.17(k) Cited  . .  509.02 , 608.01

 1.17(l) Cited  . .  203.07 ,
  711.03(c) , 712

 1.17(m) Cited  . .  203.07 ,
  711.03(c) , 712

 1.17(p) Cited  . .  609 , 706.07(a)

 1.17(q) Cited  . .  201.03 ,
  201.04(b) , 506 ,

  . .  601.01 ,
  601.01(b) , (c) ,

  . .  (d) , (f) ,  and
  (g)

 1.17(r) Cited  . .  706.07(g)

 1.17(s) Cited  . .  803.03 ,
  803.03(a) , 803.03(b) , 821.04

 1.18 Cited  . .  509.01 , 509.02
  , 601 ,

  . .  1303 , 1306 ,
  1505 , 1509

 1.19  . .  Reproduced

  Cited  . .  103 , 201.13(b)
  , 301.01 , 303 ,

  . .  320 , 409.03(i)
  , 509.01 , 509.02 ,

  . .  608.05 , 1410 ,

  1430 , 1485

 1.20 Cited  . .  103 , 509.01 ,
  509.02 , 607 , 804.02 ,

  . .  1481 , 1490 ,
  1502.01 ,

  . .  2209 , 2210 ,
  2214 , 2215

  . .  2227 , 2228 ,
  2229 , 2501 ,

  . .  2504 , 2520 ,
  2590

 1.21 Cited  . .  201.06(a) ,
  201.06(b) , 202.01 , 301.01 ,

  . .  302.06 , 323 ,
  402 , 506 , 509.01 , 509.02 ,

  . .  601 , 601.01 ,
  601.01(a) , 601.01(b) ,

  . .  707 , 1453 ,
  1706 , 1852

 1.22 Reproduced  . .  509

 1.23 Reproduced  . .  509

  Cited  . .  2515 , 2522

 1.24 Reproduced  . .  509

 1.25 Reproduced  . .  509.01

  Cited  . .  601 , 710.02(e)
  , 2515 , 2522

 1.26 Reproduced  . .  509 , 607.02

  Cited  . .  503 , 509.03 ,
  821.04 , 1002.02(p) ,

  . .  2214 , 2215 ,
  2240 , 2247 , 2248 , 2515 , 2520

 1.27 Reproduced  . .  509.03

  Cited  . .  201.06(a) ,
  201.06(b) , 509.02

 1.28 Reproduced  . .  509.03

  Cited  . .  201.06(a) ,
  1002.02(p) , 2515 ,

  . .  2520 , 2550

 1.31 Reproduced  . .  401

 1.33 Reproduced  . .  403 , 2222

  Cited  . .  120 ,
  409.03(b)605.03 , 714.01(d) ,

  . .  1111 , 1303 ,
  2202 , 2205 , 2208 , 2210 ,

  . .  2213 , 2214 ,
  2220 , 2224 , 2239 , 2240 ,

  . .  2246 , 2267 ,
  2288 , 2311 , 2540

 1.34 Reproduced  . .  402

  Cited  . .  402.02 , 403 ,
  407 , 711.01 ,

  . .  713.05 ,
  714.01(c) , 2222

 1.34(a) Cited  . .  104 , 201.03 ,
  201.06(a) , 201.06(b) ,

  . .  405 , 407 , 408
  , 510.03 , 711 , 711.01 ,

  . .  1215.01 , 1306 ,
  2210 , 2213 , 2222 , 2224

 1.36 Reproduced  . .  402.05

  Cited  . .  402.06 , 402.07
  ,

  . .  1002.02(b) , (c)
  , (g) ,  and (p) , 2542

 1.41 Reproduced  . .  605

  Cited  . .  201.04(b) , 503
  , 506 ,

  . .  601 , 601.01 ,
  605.04(b)

 1.41(a) Cited  . .  201.03 , 403 ,
  505 ,

  . .  506.02 ,
  601.01(a) , 605

 1.42 Reproduced  . .  409.01(a)

  Cited  . .  409 , 409.01(b)
  , 409.03(c) , 509.03 ,

  . .  605 , 605.04(a)
  , 608.01 , 715 ,

  . .  1002.02(b) ,
  1002.02(p) , 1410.01 ,

  . .  1504.05 , 1604 ,

  1893.01(e)

 1.43 Reproduced  . .  409.02

  Cited  . .  409 , 409.01(b)
  , 509.03 ,

  . .  605 , 605.04(a)
  , 608.01 ,

  . .  715 , 1410.01 ,
  1604 , 1893.01(e)

 1.44 Reproduced  . .  409.01(b)

  Cited  . .  409 ,
  409.01(f)409.03(c) , 1002.02(b) ,

  . .  1002.02(p) ,
  1893.01(e)

 1.45 Reproduced  . .  605 , 605.07

  Cited  . .  409 , 1402

 1.46 Reproduced  . .  605

  Cited  . .  409

 1.47 Reproduced  . .  409.03

  Cited  . .  102 , 104 ,
  201.03 , 201.06(a) , 324 ,

  . .  402.07 , 402.10
  , 409 , 409.03(a) to (j) ,

  . .  509.03 , 605 ,
  605.03 , 605.04(a) , 608.01 ,

  . .  715 , 1002.02(b)
  , 1002.02(c)(3)

  . .  1002.02(p) ,
  1410.01 , 1604 ,

  . .  1893.01(e) ,
  2311

 1.48 Reproduced  . .  201.03

  Cited  . .  151 , 201.06(a)
  , 601.01(a) , 605.04(g) ,

  . .  605.07 , 717.02
  , 817 ,

  . .  1002 ,
  1002.02(e) and (q) ,

  . .  1004 , 1481 ,
  2137.01 , 2334

 1.51 Reproduced  . .  601

  Cited  . .  201.03 ,
  201.04(b) , 201.06(a)

  . .  201.06(b) ,
  202.01 , 501 , 506 , 601.01 ,

  . .  601.01(b) ,
  601.01(d) , 601.01(e) ,

  . .  602 , 608.02 ,
  711.04 , 1101

 1.52 Reproduced  . .  608.01

  Cited  . .  201.06(a) , 601
  , 602 , 605.04(a) ,

  . .  608.01 ,
  608.01(q) , 608.05 ,

  . .  714.07 , 714.22
  , 2163.07

 1.53 Reproduced  . .  506 , 601.01

  Cited  . .  201 , 201.03 ,
  201.11 , 201.11(a) ,

  . .  202.01 , 324 ,
  503 , 505 , 506 ,

  . .  506.01 , 509 ,
  601 , 601.01 - 601.01(g) ,

  . .  603 , 605 ,
  608.02 , 608.04 ,

  . .  608.04(b) ,
  711.03(c) , 1002.02(b) ,

  . .  1002.02(c) ,
  1002.02(c)(3) , 1403 , 1410 ,

  . .  1410.01 , 1414 ,
  1893.01(a)(1) ,

  . .  1893.01(b)(1) ,
  1895.01 , 2163.06

 1.53(b)(1) Reproduced  . .  506 , 601.01

  Cited  . .  201.03 ,
  201.04(b) , 201.06 ,

  . .  201.06(a) ,
  201.06(b) , 201.07 , 201.08 ,

  . .  201.11(a) ,
  202.01 , 302.03 , 403 , 409.03(h) ,

  . .  505 , 506.02 ,
  601 , 601.01(a) and (c) ,

  . .  1002.02(b) , (c)

  , (p) ,  and (q) , 1410.01

 1.53(b)(2) Reproduced  . .  201.04(b) , 506
  , 601.01

  Cited  . .  503 , 506 ,
  506.02 , 601 ,

  . .  601.01(b) , (c)
  , (e) ,  and (h) ,

  . .  1002.02(b) , (c)
  , (p) ,  and (q)

 1.54 Reproduced  . .  503

 1.55 Cited  . .  201.14 ,
  201.14(c) , 506 , 601.01 , 602 ,

  . .  706.02(b) ,
  1002.02(b) , 2305.04 , 2309.02

 1.55(a) Reproduced  . .  201.13 ,
  201.14(a)

  Cited  . .  201.14(c) ,
  201.16

 1.55(b) Reproduced  . .  201.13(a)

  Cited  . .  201.13 , 403 ,
  509

 1.56 Reproduced  . .  2001.01 ,
  2001.04 , 2001.05 , 2002

  Cited  . .  201.03 , 201.11
  , 602 , 602.05 , 605.07 ,

  . .  609 , 706.02(l)
  and (m) , 711.01 ,

  . .  724 , 724.01 ,
  724.03 , 1308 , 1414 ,

  . .  1418 , 1442.04 ,
  1448 , 1504.04 ,

  . .  1893.03(g) ,
  1901.02 , 2000 , 2001 ,

  . .  2001.03 ,
  2001.06 , 2001.06(a) - (d) ,

  . .  2002.01 ,
  2002.02 , 2004 ,

  . .  2010 , 2012.01 ,
  2280 , 2390

 1.58 Reproduced  . .  608.01

  Cited  . .  608.01(i) ,
  2173.05(a)

 1.59 Reproduced  . .  601

  Cited  . .  503

 1.60 Reproduced  . .  201.06(a)

  Cited  . .  201 , 201.03 ,
  201.06 ,

  . .  201.06(b) ,
  201.07 , 201.11 ,

  . .  201.16 , 202.01
  , 324 , 502 , 502.02 ,

  . .  506 , 512 ,
  601.01 , 601.01(h)

  . .  602.05(a) ,
  608.02 , 711.01 ,

  . .  711.03(c) ,
  714.09 , 717.02 ,

  . .  1002.02(b) ,
  1002.02(c)(3) , 1302.04 ,

  . .  1430 , 1504.20 ,
  1895.01

  . .  2165.01 , 2271 ,
  2272 ,

 1.62 Reproduced  . .  201.06(b)

  Cited  . .  103 , 201 ,
  201.03 , 201.06 ,

  . .  201.06(a) ,
  201.07 , 201.08 , 201.11 ,

  . .  201.14 , 202.01
  , 302.03 , 324 ,

  . .  409.03(j) , 502
  , 506 , 512 ,

  . .  601.01 ,
  601.01(a) , 602.05(a) ,

  . .  608.04(b) , 609
  , 707.05 , 711.01 ,

  . .  711.02(b) ,
  711.03(c) , 714.09 , 819 ,

  . .  1002.02(b) ,
  1002.02(c)(3) ,

  . .  1302.04 , 1430 ,
  1443 ,

  . .  1895.01 , 2271 ,

  2272

 1.63 Reproduced  . .  602

  Cited  . .  102 , 201.03 ,
  201.06(b) , 201.13 ,

  . .  201.14 ,
  201.14(a) , 201.14(c) ,

  . .  201.15 , 202.04
  , 409.03 ,

  . .  409.03(a) ,
  409.03(b) , 409.03(i) ,

  . .  409.03(j) ,
  502.02 , 601 , 601.01(a) , (d) ,

  . .  (e) , (f) ,  and
  (g) , 602.06 , 603 , 605 ,

  . .  605.02 ,
  605.04(a) , 608.01 , 608.04 ,

  . .  608.04(b) , 1410
  , 1414 ,

  . .  1444 , 1503.01 ,
  1604 ,

  . .  1893.01(a)(1) ,
  1893.01(b)(1) ,

  . .  1893.01(e) ,
  1896 , 2137.01 , 2163.06

 1.64  . .  Reproduced

  Cited  . .  409.03(a) ,
  409.03(b) ,

  . .  601.01(d) , (e)
  , (f) ,  and (g) , 605

 1.66(a) Reproduced  . .  604

  Cited  . .  602.04 ,
  602.04(a)

 1.66(b) Reproduced  . .  602.04(a)

 1.66 Cited  . .  602 , 602.04 ,
  602.04(a) , 604.04 ,

  . .  604.06

 1.67 Reproduced  . .  603

  Cited  . .  201.06(a) ,
  502.02 , 601.01(a) , 602 ,

  . .  602.03 ,
  602.04(a) ,

  . .  604.01 , 605.01
  , 605.04(a) ,

  . .  608.01 , 608.04
  , 2163.06

 1.68 Reproduced  . .  602

  Cited  . .  201.03 , 601 ,
  602.04(a) ,

  . .  604.04(a) , 609
  , 711.02 ,

  . .  715.04 ,
  2301.022428

 1.69(b) Cited  . .  509.03

 1.71 Reproduced  . .  608.01 ,
  608.01(v)

  Cited  . .  403 , 506 ,
  506.02 , 601 , 601.01 ,

  . .  601.01(a) ,
  608.01(a) , 608.01(g) ,

  . .  608.01(h) ,
  608.02 , 702.01 ,

  . .  1302.01 ,
  1503.01 , 1504.01

 1.72 Cited  . .  601 ,

 1.72(a) Reproduced  . .  606

  Cited  . .  601 , 608.01(a)

 1.72(b) Reproduced  . .  608.01(b)

  Cited  . .  601

 1.73 Reproduced  . .  608.01(d)

  Cited  . .  601 , 603 ,
  608.01(a) , 1302.01

 1.74 Reproduced  . .  608.01(f)

  Cited  . .  601 , 608.01(a)

 1.75 Reproduced  . .  608.01(i) ,
  2173.05(n)

  Cited  . .  403 , 506 ,
  506.02 , 601 ,

  . .  601.01 ,
  601.01(a) , 607 , 608.01(a)

  . .  608.01(g) ,
  608.01(m) ,

  . .  608.01(n) ,
  608.01(o) ,

  . .  802 , 1503.03 ,
  2129

 1.76 Cited  . .  601

 1.77 Reproduced  . .  608.01(a)

  Cited  . .  601 , 608.05

 1.78 Cited  . .  201.03 , 201.07
  , 201.08 , 201.11 , 506

  . .  601 , 601.01 ,
  601.01(a) ,

  . .  608.01 , 1504.10

 1.78(a)  . .  Reproduced

  Cited  . .  201.04(b) ,
  201.06(a) , 201.11 ,

  . .  310 , 505 , 506
  , 510 ,

  . .  512 , 601.01 ,
  706.02(b) , 1504.10

 1.78(b) Reproduced  . .  822

  Cited  . .  822.01

 1.78(c) Reproduced  . .  804.03

  Cited  . .  2302

 1.78(d) Cited  . .  804 , 804.03

 1.79 Reproduced  . .  608.01(e)

  Cited  . .  202.01 ,
  608.01(t)

 1.81 Reproduced  . .  608.02

  Cited  . .  201.04(b) , 403
  , 502 , 502.01 , 506 ,

  . .  506.02 , 601 ,
  601.01 , 601.01(a) , 608.01 ,

  . .  608.02(a) ,
  608.02(d) , 1503.02 , 1504.01

 1.82 Cited  . .  601 , 1503.02 ,
  1504.01

 1.83 Reproduced  . .  608.02(d)

  Cited  . .  502 , 502.01 ,
  601 ,

  . .  608.02 ,
  608.02(a) ,

  . .  1451 , 1503.02 ,
  1504.01

 1.84 Reproduced  . .  608.02

  Cited  . .  121 , 502 ,
  502.01 , 509 , 601 , 608.01 ,

  . .  608.01(f) ,
  608.01(v) , 608.02(b) , 608.05 ,

  . .  1002.02(c) ,
  1451 , 1503.02 , 1503.03 ,

  . .  1504.01 , 1512 ,
  1606

 1.85 Reproduced  . .  608.02(b)

  Cited  . .  502 , 502.01 ,
  601 , 608.02 ,

  . .  1503.02 ,
  1504.01

 1.91 Reproduced  . .  608.03

  Cited  . .  601

 1.92 Reproduced  . .  608.03

  Cited  . .  601

 1.93 Reproduced  . .  608.03

  Cited  . .  601

 1.94 Reproduced  . .  608.03(a)

 1.95 Reproduced  . .  608.03(a)

 1.96 Reproduced  . .  608.05

  Cited  . .  608.01(a)

 1.97 Reproduced  . .  601 , 609

  Cited  . .  502.02 , 601 ,
  608.01(a) ,

  . .  608.01(c) ,
  706.07(a) and (g) ,

  . .  707.05 , 709 ,
  711.01 ,

  . .  1002.02(d) ,
  1308 , 1418 , 1504.04 ,

  . .  2001 , 2001.04 ,

  2242

 1.98 Reproduced  . .  609

  Cited  . .  601 , 608.01(a)
  , 608.01(c) ,

  . .  706.07(a) ,
  707.05 , 719.05 , 1418 ,

  . .  1893.03(g) ,
  1901.03 , 2001 ,

  . .  2001.04 ,
  2002.03 , 2242 , 2244 ,

  . .  2256 , 2257 ,
  2280

 1.101 Reproduced  . .  708

  Cited  . .  709 , 1504.04

 1.102 Reproduced  . .  708.01 , 708.02

  Cited  . .  708 , 1002.02(b)
  and (c) , 1204

 1.103 Reproduced  . .  709

  Cited  . .  803.03 , 1002 ,
  1002.02(c) ,

  . .  1002.02(c)(1) ,
  1003

 1.104 Reproduced  . .  706.02(l) , 707
  , 1852 , 2260

  Cited  . .  702.01 ,
  706.02(c) , 821.04 , 901 ,

  . .  1504.04 , 1819 ,
  2254 , 2411

 1.105 Reproduced  . .  707.07

  Cited  . .  821.04 , 2254

 1.106 Reproduced  . .  706 , 706.02(l)

  Cited  . .  707 , 821.04 ,
  904.02 , 1101 ,

  . .  1111 , 2254 ,
  2258

 1.107 Reproduced  . .  707.05

  Cited  . .  706 , 706.02(l)
  , 707.05(e) ,

  . .  1610 , 2144.03 ,
  2254

 1.108 Reproduced  . .  901.02 , 2127

  Cited  . .  2254

 1.109 Reproduced  . .  1302.14

  Cited  . .  720.05 , 1213.02
  , 2254

 1.111 Reproduced  . .  714.02

  Cited  . .  608.01(b) ,
  608.02(b) , 706 , 707 ,

  . .  707.07(a) ,
  708.02 ,

  . .  710.02(b) ,
  710.02(e) , 711.03(c) , 713.01 ,

  . .  713.04 , 714.04
  ,

  . .  714.16 , 818 ,
  818.03 ,

  . .  818.03(a) , 1002
  , 1302.14 ,

  . .  1893.01(a)(2) ,
  2254 , 2266 , 2269 , 2281

 1.112 Reproduced  . .  706

  Cited  . .  714 , 714.02 ,
  2254 , 2269

 1.113 Reproduced  . .  706.07

  Cited  . .  203.08 , 609 ,
  710.02(e) , 711.03(c) ,

  . .  714.12 ,
  1002.02(c) , 1205 , 2254

 1.115 Reproduced  . .  714

  Cited  . .  821.04 , 2254

 1.116 Reproduced  . .  714.12

  Cited  . .  201.06(b) , 512
  , 706.07 , 706.07(e) ,

  . .  706.07(f) , 714
  , 714.13 , 715.09 ,

  . .  716.01 , 821.04
  , 1207 , 1214.07 , 2254 ,

  . .  2260 , 2262 ,
  2272 , 2411.02

 1.117 Cited  . .  2254

 1.118 Reproduced  . .  608.04

  Cited  . .  506 , 601.01 ,
  608 , 608.02 ,

  . .  1504.04 ,
  2163.06 , 2254

 1.119 Reproduced  . .  714.02

  Cited  . .  1302.14 , 2254

 1.121 Reproduced  . .  714.22 ,

  Cited  . .  608.01 ,
  608.01(j) and (m) , 714.02 ,

  . .  719.04 , 1206 ,
  1302.04

  . .  1411 ,
  1893.01(a)(2) ,

  . .  1893.01(b)(2)
  and (d)

 1.121(e) Reproduced  . .  1453

  Cited  . .  1411 , 2285

 1.121(f) Reproduced  . .  2234 , 2250

  Cited  . .  714.22 , 2210 ,
  2221 , 2249 ,

  . .  2253 , 2270 ,
  2287

 1.123 Reproduced  . .  608.02(p)

  Cited  . .  608.01

 1.124 Reproduced  . .  714.24

  Cited  . .  608.01 ,
  608.01(s)

 1.125 Reproduced  . .  608.01(q)

  Cited  . .  608.01 , 714.19
  , 714.20 ,

  . .  1302.02 ,
  2422.07 , 2426

 1.126 Reproduced  . .  608.01(j)

  Cited  . .  1302.01

 1.127 Cited  . .  1002.02(c)

 1.129(a) Reproduced  . .  706.07(g)

  Cited  . .  706.07(f) ,

  714.13 , 715.09 ,

  . .  716.01 , 803.03

 1.129(b) Reproduced  . .  803.03

  Cited  . .  821.04 ,
  1002.02(c)

 1.129(c) Reproduced  . .  803.03

 1.130 Reproduced  . .  718 , 804.03

  Cited  . .  706.02(k) ,
  706.02(m) , 715 , 715.05

 1.130(b) Reproduced  . .  804.02 , 804.03

 1.131 Reproduced  . .  715

  Cited  . .  201.06(a) , 324
  , 706.02 ,

  . .  706.02(b) , (f)
  , (i) , (k) ,  and (m) ,

  . .  707.05(f) ,
  714.13 , 715 to 715.10 ,

  . .  716.10 , 718 ,
  724.03 , 804 , 804.02 ,

  . .  804.03 , 904.02
  , 1002.02(c) , 1004 ,

  . .  1005 , 1208 ,
  1214.01 , 1302.14 ,

  . .  2132.01 ,
  2133.02 , 2133.03(c) , 2136.05 ,

  . .  2137 , 2138 ,
  2138.01 , 2138.06 , 2141.01 ,

  . .  2258 , 2266 ,
  2271 , 2272 , 2308.01 ,

  . .  2309.03 , 2312 ,
  2333.01 , 2337 , 2371

 1.132 Reproduced  . .  716

  Cited  . .  201.06(a) ,
  706.02(b) ,

  . .  706.02(i) , (k)
  ,  and (m) , 706.03(a)(1) ,

  . .  714.13 , 715.01
  , 715.01(a) ,

  . .  715.01(b) ,
  715.01(c) , 716.01 ,

  . .  716.02(e) ,
  716.10 , 724.03 ,

  . .  804 , 804.03 ,
  1002.02(c) , 1004 , 1005 ,

  . .  1214.01 ,
  2106.02 , 2107.01 ,

  . .  2132.01 ,
  2136.05 , 2137 , 2164.05 ,

  . .  2172 , 2184 ,
  2258 , 2266 ,

  . .  2271 , 2272 ,
  2333 , 2371

  . .  1.133Reproduced

  Cited  . .  713.02 , 1302.14

 1.134 Cited  . .  710.01 , 711 ,
  2307.02

 1.135 Reproduced  . .  710.01 , 711

  Cited  . .  710.02(c) , (d)
  ,  and (e) ,

  . .  711.02 , 713.01
  ,

  . .  713.04 ,
  714.01(a) ,

  . .  714.02 , 714.03
  , 714.12 , 1002.02(f) ,

  . .  2421.03 ,
  2422.07 , 2427.01

 1.136 Reproduced  . .  710.02 ,
  710.02(e)

  Cited  . .  201.03 ,
  201.11(a) , 402.06 , 403 ,

  . .  502 , 509.03 ,

  . .  601.01(a) , (b)
  ,  and (d) , 602.03 ,

  . .  608.01(m) ,
  608.02 , 608.02(a) , 609 ,

  . .  706.07 ,
  706.07(a) , 706.07(b) , 706.07(f) ,

  . .  706.07(g) , 709
  , 710.01 ,

  . .  710.01(a) ,
  710.02(c) , 710.02(d) ,

  . .  711 , 711.02 ,
  711.02(a) , 711.03(c)

  . .  and (e) ,
  711.04(a) , 712 , 713.04 ,

  . .  714.01(a) ,
  714.02 , 714.03 , 714.08 ,

  . .  714.13 , 714.17
  , 714.22 , 720.04 ,

  . .  803.03 ,
  809.02(a) and (c) , 821.03 ,

  . .  1002 ,
  1002.02(b) , (c) ,  and (q) ,

  . .  1005 , 1103 ,
  1205 , 1206 , 1208 ,

  . .  1208.03 , 1209 ,
  1213.02 ,

  . .  1214.01 ,
  1214.03 , 1214.06 ,

  . .  1215.04 , 1216 ,
  1302.04 , 1442.01 ,

  . .  1442.02 ,
  1442.03 , 1453 , 1505 ,

  . .  1893.01(a)(1) ,
  1893.01(b)(1) ,

  . .  1893.01(d) ,
  1893.01(e) , 1895 ,

  . .  2246 , 2247 ,
  2265 , 2305 , 2305.04 ,

  . .  2345 , 2411 ,
  2411.03 , 2421.03 ,

  . .  2422.07 ,
  2427.01

 1.137 Reproduced  . .  711.03(c)

  Cited  . .  513 , 710.02(d)
  and (e) ,

  . .  711.03 ,
  711.03(e) , 711.04(c) ,

  . .  1002.02(b) ,
  1002.02(c)(3) ,

  . .  1002.02(p) ,
  1206 , 1893.02

 1.138 Reproduced  . .  711

  Cited  . .  201.06(a) , 503
  , 607.02 , 711.01 ,

  . .  1215.01 , 2285

 1.139 Reproduced  . .  711.03(e)

  Cited  . .  201.11 ,
  1002.02(b)

 1.141 Reproduced  . .  802

  Cited  . .  608.01(i) ,
  710.02(c) , 802.01 , 803.04 ,

  . .  806 , 806.04(a)
  , 806.04(h) ,

  . .  808.01(a) ,
  809.02 ,

  . .  809.02(a) ,
  809.02(b) ,

  . .  809.02(c) , 820
  , 1850 , 1896 , 2173.05(n)

 1.141(b) Reproduced  . .  806.05(i)

  Cited  . .  1850

 1.142 Reproduced  . .  802

  Cited  . .  608.01(i) , 609
  , 707.07(i) ,

  . .  803.03 , 803.04
  , 809.02(c) , 811 ,

  . .  812.01 ,
  818.03(e) , 821.01 to 821.04 ,

  . .  1504.05 , 1896 ,
  2173.05(n)

 1.143 Reproduced  . .  818.03

  Cited  . .  608.01(i) ,
  810.03 , 818.03(a) ,

  . .  818.03(b) ,
  818.03(e) , 821.03 , 1504.05 ,

  . .  1893.03(d) ,
  1896 , 2173.05(n)

 1.144 Reproduced  . .  818.03(c)

  Cited  . .  608.01(i) ,
  710.02(c) , 809.02(c) ,

  . .  809.04 , 812.01
  , 818.03(d) , 821 ,

  . .  821.01 , 821.02
  , 821.03 , 1002.02(c) ,

  . .  1201 ,
  1893.03(d) , 1896 , 2173.05(n)

 1.145 Reproduced  . .  821.03

  Cited  . .  608.01(i) , 1896

 1.146 Reproduced  . .  809.02

  Cited  . .  608.01(i) ,
  707.07(i) , 803.03 ,

  . .  1896 ,
  2173.05(n)

 1.147 Cited  . .  201.06(a)

 1.151 Reproduced  . .  1501

  Cited  . .  1502.01

 1.152 Reproduced  . .  1503.02

  Cited  . .  502 , 502.01 ,
  608.02 , 1501 , 1504.01

 1.153 Reproduced  . .  1503.01

  Cited  . .  1501 , 1503.03 ,
  1504.01

 1.154 Reproduced  . .  1503.01

  Cited  . .  601.01(f) , 1501
  , 1503 , 1504.01

 1.155 Reproduced  . .  1505

  Cited  . .  711.03(c) , 1501

 1.161 Reproduced  . .  1602

  Cited  . .  1610 , 1611

 1.162 Reproduced  . .  1604

 1.163 Reproduced  . .  1605

  Cited  . .  1603

 1.164 Reproduced  . .  1605

 1.165 Reproduced  . .  1606

  Cited  . .  502 , 502.01 ,
  608.02 , 1603

 1.166 Reproduced  . .  1607

  Cited  . .  608.03(a)

 1.171 Reproduced  . .  706.03(c) , 1410

  Cited  . .  320 , 1440 ,
  2285 , 2333

 1.172 Reproduced  . .  1410.01

  Cited  . .  1440 , 1443 ,
  2285

 1.173 Reproduced  . .  1411

  Cited  . .  714.22 , 1440 ,
  1453 , 1455 , 2285

 1.174 Reproduced  . .  1413

  Cited  . .  502 , 502.01 ,
  608.02 , 1440 , 2285

 1.175 Reproduced  . .  1414

  Cited  . .  409.03(a) ,
  409.03(b) , 706.02(c) ,

  . .  1410 , 1412.03 ,
  1414.01 ,

  . .  1414.03 ,
  1414.04 , 1414.05 ,

  . .  1418 , 1440 ,
  1442.01 , 1442.04 ,

  . .  1444 , 1447 ,
  1901.05 ,

  . .  2012 , 2022.05 ,
  2285

 1.176 Reproduced  . .  1440

  Cited  . .  708.01 , 720.01
  , 1418 , 1441 ,

  . .  1442.03 , 1443 ,
  1445 , 1450 ,

  . .  1901.04 , 2003 ,
  2285

 1.177 Reproduced  . .  1451

  Cited  . .  1002.02(b) ,
  1306.01 , 1306.02 ,

  . .  1440 , 1450 ,
  2285

 1.178 Reproduced  . .  1416

  Cited  . .  1410 , 1440 ,
  2285

 1.179 Reproduced  . .  1431

  Cited  . .  202.05 , 1440 ,
  2285

 1.181 Reproduced  . .  1002

  Cited  . .  Introduction ,
  140 , 313 ,

  . .  317 , 601.01(d)
  ,

  . .  601.01(g) ,
  608.01(v) ,

  . .  608.02(a) ,
  608.04(c) ,

  . .  706.07 ,
  706.07(c) , 711.03(c) ,

  . .  711.03(d) ,
  714.13 , 720.05 ,

  . .  803.04 ,
  818.03(c) , 1001.01 ,

  . .  1002.01 ,
  1002.02 ,

  . .  1002.02(b) , (c)
  , (f) ,  and (p) , 1105 ,

  . .  1206 , 1208 ,
  1208.03 , 1210 ,

  . .  1906 , 2163.06 ,
  2240 , 2246 , 2248 , 2580

  . .  1.182Reproduced

  Cited  . .  201.06(a) ,
  402.10 ,

  . .  601.01(d) ,
  601.01(g) ,

  . .  605.04(b) , (c)
  ,  and (f) , 608.01(t) ,

  . .  608.02(i) ,
  706.02(n) , 724.02 , 724.05 ,

  . .  1002.02(b) , (f)
  , (p) ,  and (q) ,

  . .  1490 , 1901.04 ,
  2233 , 2285 , 2287

 1.183 Reproduced  . .  1002 , 1901.04

  Cited  . .  201.03 , 307 ,
  503 , 513 , 601.01(a)

  . .  603 , 607.02 ,
  706.02(b) and (k) , 711.01 ,

  . .  711.03(c) ,
  711.05 , 715.05 ,

  . .  720.01 ,
  1002.02(b) , (f) ,  and (p)

  . .  1109 , 1306.03 ,
  1410.01 , 1441 ,

  . .  1442.03 , 1481 ,
  1505 ,

  . .  1901.04 , 2233 ,
  2248 , 2265 ,

  . .  2344 , 2421.01

 1.184 Reproduced  . .  1002

 1.191 Reproduced  . .  1205

  Cited  . .  Introduction ,
  608.04(c) , 706.07 ,

  . .  714.13 ,
  1002.02(c) , 1105 , 1206 , 1904 ,

  . .  2201 , 2233 ,
  2273 , 2285 , 2315

 1.192 Reproduced  . .  1206

  Cited  . .  512 , 706.07(g)
  , 710.02(e) , 711.03(c) ,

  . .  714.13 , 1204 ,
  1205 , 1207 , 1208 ,

  . .  1215.01 ,
  1215.04 ,

  . .  2233 , 2273 ,
  2274

 1.193 Reproduced  . .  1208

  Cited  . .  710.02(e) ,
  1002.02(c) , 1205 ,

  . .  1208.03 ,
  1211.01 , 2273

 1.194 Reproduced  . .  1209

  Cited  . .  710.02(e) , 1205
  , 2233 , 2273

 1.195 Reproduced  . .  1212

  Cited  . .  710.02(e) ,
  715.09 , 716.01 , 1208 , 2273

 1.196 Cited  . .  710.02(e) ,
  714.12 , 1205 ,

  . .  1214.07 , 2273

 1.196(a) Reproduced  . .  1213

 1.196(b) Reproduced  . .  1214.01

  Cited  . .  1212 , 1213 ,
  1214.06 , 1214.07 , 1904

 1.196(c) Reproduced  . .  1213.01

 1.196(d) Reproduced  . .  1213.02

  Cited  . .  1214.06

 1.196(e) Reproduced  . .  1213.02

 1.196(f) Reproduced  . .  1214.01

  Cited  . .  1213.02

 1.197 Reproduced  . .  1214.03

  Cited  . .  710.02(e) , 1205
  , 2273

 1.197(a) Reproduced  . .  1214

 1.197(b) Cited  . .  1002.02(j) ,
  1214.01 , 1216

 1.197(c) Reproduced  . .  1214.06

  Cited  . .  1206 , 1215.04 ,
  1216.01 , 1216.02

 1.198 Reproduced  . .  1214.07

  Cited  . .  714.12 ,
  1002.02(c) , 1214.01 ,

  . .  1214.04 , 1216 ,
  2273

 1.201 Cited  . .  708.01 ,
  1002.02(f) , 2300.01 ,

  . .  2300.02 , 2302

 1.204 Cited  . .  2300.01 , 2308 ,
  2317

 1.228 Cited  . .  2317

 1.231 Cited  . .  2300.01 , 2333 ,
  2337 , 2340

 1.244 Cited  . .  1002.02(f) ,

  2300.01 , 2340

 1.245 Cited  . .  2300.01 , 2390

 1.248 Reproduced  . .  1901

  Cited  . .  720 , 720.04 ,
  1901.04 ,

  . .  1901.05 , 2249 ,
  2251 ,

  . .  2254 , 2267

 1.257 Cited  . .  2300.01 , 2358

 1.266 Cited  . .  513 , 2300.01

 1.287 Cited  . .  2300.01 , 2372

 1.288 Cited  . .  1002.02(f) ,
  2300.01 , 2300.02

 1.291 Reproduced  . .  1901

  Cited  . .  724 , 724.03 ,
  1404 , 1901.01 to 1901.07 ,

  . .  1901.07(a) ,
  1901.07(b) , 1902 , 1904 ,

  . .  1906 , 1907 ,
  2001.04 ,

  . .  2012.01 , 2013 ,
  2360

 1.292 Reproduced  . .  720

  Cited  . .  706.03(v) ,
  720.01 , 720.02 ,

  . .  1002.02(b) ,
  1901.02 ,

  . .  2360

 1.293 Reproduced  . .  1101

 1.295 Reproduced  . .  1105

  Cited  . .  1002.02(c)(1) ,
  1109 , 1513

 1.296 Reproduced  . .  1109

  Cited  . .  1002.02(c)(1) ,
  1513

 1.297 Reproduced  . .  1111

  Cited  . .  1513

 1.301 Reproduced  . .  1216

  Cited  . .  1216.01

 1.302 Reproduced  . .  1216.01

  Cited  . .  501 , 1216

 1.303 Reproduced  . .  1216

 1.304 Reproduced  . .  1216

  Cited  . .  710.02(e) ,
  710.05 , 1002.02(o) , 1205 ,

  . .  1213.01 ,
  1214.03 , 1214.06 , 1216.01 ,

  . .  1216.02 , 2265 ,
  2345

 1.311 Reproduced  . .  1303

  Cited  . .  609 , 720 ,
  720.01 , 1901 , 1901.04

 1.312 Reproduced  . .  714.16

  Cited  . .  201.03 , 603.01
  , 608.01(v) , 608.02(z) ,

  . .  706.02(n) ,
  706.07(f) , 711.03(c) ,

  . .  713.10 , 714.15
  , 714.16 ,

  . .  714.16(a) - (e)
  , 714.20 , 821.04 , 1002 ,

  . .  1002.02(c) ,
  1002.02(d) , 1005 , 1302.04 ,

  . .  1303.01 , 1305 ,
  1308 , 1309.02 ,

  . .  1512 , 1705 ,
  2287 , 2411.03

 1.313 Reproduced  . .  1308

  Cited  . .  201.06(a) ,
  201.06(b) , 201.08 ,

  . .  609 , 711.01 ,
  711.05 , 1002 ,

  . .  1002.02(c) and
  (r) , 1306.01 , 2001.04

 1.314 Reproduced  . .  1306.01

  Cited  . .  1002.02(b) ,
  1306.01

 1.316 Reproduced  . .  712

  Cited  . .  203.04 , 203.07
  ,

  . .  711.03(c) ,
  1002.02(b)

 1.317 Cited  . .  711.03(c) ,
  1002.02(b)

 1.318 Reproduced  . .  1857

 1.321 Reproduced  . .  1490

  Cited  . .  706.02(k) ,
  706.02(m) , 711.03(c) , 712 ,

  . .  718 , 804 ,
  804.02 , 804.03 , 821.04 ,

  . .  1411.01 , 1490 ,
  1505 , 2258

 1.321(b) Reproduced  . .  1490

 1.322 Reproduced  . .  1480

  Cited  . .  1002.02(d) , (f)
  ,  and (l)

 1.323 Reproduced  . .  1481

  Cited  . .  201.06 , 307 ,
  608.01(g) ,

  . .  1002.02(d) , (f)
  ,  and (l) , 1485 , 2407

 1.324 Reproduced  . .  1481

  Cited  . .  201.03 ,
  1002.02(d) , (f) ,  and (l) ,

  . .  1402 , 1485 ,
  2334

 1.335 Reproduced  . .  311

 1.344 Cited  . .  2313

 1.347 Cited  . .  714.01(a)

 1.348 Cited  . .  714.01(a)

 1.351 Reproduced  . .  Introduction ,
  1001

 1.352 Reproduced  . .  Introduction ,
  1001

 1.362 Reproduced  . .  2504

 1.362(d) Cited  . .  2506 , 2515 ,
  2522

 1.362(e) Cited  . .  2506 , 2515 ,
  2522 , 2530 , 2590

 1.362(f) Cited  . .  2515 , 2522

 1.363 Reproduced  . .  2540

  Cited  . .  403 , 2515 ,
  2575

 1.366 Reproduced  . .  2515

  Cited  . .  502

 1.366(b) Cited  . .  2510 , 2511 ,
  2522

 1.366(c) Cited  . .  2580

 1.366(e) Cited  . .  2522

 1.366(f) Cited  . .  2550

 1.366(g) Cited  . .  2520

 1.377 Reproduced  . .  2580

  Cited  . .  1002.02(b) ,
  2515 , 2530

 1.378 Reproduced  . .  2590

  Cited  . .  509.03 ,
  1002.02(b) , 2515 , 2522

  . .  2530 , 2540 ,
  2590

 1.378(e) Cited  . .  2590

 1.401 Cited  . .  1802

 1.412 Cited  . .  1805

 1.413 Reproduced  . .  1840

 1.415 Reproduced  . .  1853

 1.416 Reproduced  . .  1862

 1.421 Cited  . .  1805 , 1810 ,
  1817.01 , 1821

 1.422 Reproduced  . .  1820

  Cited  . .  409.01 , 1805 ,
  1821

 1.423 Cited  . .  409 , 1805 ,
  1821

 1.424 Cited  . .  1805 , 1810

 1.425 Reproduced  . .  1820

  Cited  . .  1002.02(p) ,
  1805 , 1820

 1.431 Reproduced  . .  1810

  Cited  . .  1817.01

 1.432 Reproduced  . .  1817.01

  Cited  . .  1810 , 1817

 1.433 Cited  . .  1812

 1.434 Reproduced  . .  1821

 1.435 Reproduced  . .  1823

 1.436 Reproduced  . .  1824

 1.437 Reproduced  . .  1825

  Cited  . .  502 , 502.01 ,
  1805 , 1834.01

 1.438 Reproduced  . .  1826

 1.445 Cited  . .  509 , 509.02 ,
  1810 , 1817.01 , 1864

 1.446 Reproduced  . .  1847

  Cited  . .  1002.02(p)

 1.451 Reproduced  . .  201.13(b)

  Cited  . .  1830

 1.455 Reproduced  . .  402.09 , 1807 ,
  1808

 1.475 Reproduced  . .  1850 , 1875.01

  Cited  . .  324 , 803.04 ,
  1850 , 1875 , 1875.01 ,

  . .  1893.03 ,
  1893.03(d) , 1895.01 , 1896

 1.476 Cited  . .  1850 , 1875.01

 1.477 Reproduced  . .  1850

  Cited  . .  1847

 1.480 Reproduced  . .  1864

 1.482 Cited  . .  1847 , 1864 ,
  1867

 1.484 Reproduced  . .  1878

  Cited  . .  1864.01 ,
  1878.02

 1.485 Reproduced  . .  1864.01 ,
  1878.02

  Cited  . .  1871

 1.488 Reproduced  . .  1875

 1.489 Reproduced  . .  1875.02

 1.491 Reproduced  . .  1893.01

  Cited  . .  609 ,
  1893.01(a)(1) , 1893.01(b)(1)

 1.492 Cited  . .  1893.01(a) ,
  1893.01(b) ,

  . .  1893.01(c) ,
  1896

 1.494 Reproduced  . .  1893.01(a)

  Cited  . .  201 , 201.11(a)
  , 502.01 , 512 , 1834.01 ,

  . .  1864 , 1893.01 ,
  1893.01(a)(1) ,

  . .  1893.01(e) ,
  1893.02 ,

  . .  1893.03(a) ,
  1895.01

 1.495 Reproduced  . .  1893.01(b)

  Cited  . .  201 , 201.11(a)
  , 502.01 , 512 , 1834.01 ,

  . .  1864 , 1879.03 ,
  1893.01 ,

  . .  1893.01(a) ,
  1893.01(b)(1) ,

  . .  1893.01(b)(2) ,
  1893.01(e) , 1893.02 ,

  . .  1893.03(a) ,
  1895.01

 1.496 Cited  . .  708 , 1893.01(d)
  , 1893.03(b)

 1.497 Reproduced  . .  1893.01(e)

  Cited  . .  605.04 ,
  1893.01(a)(1) , 1893.01(b)(1)

 1.499 Reproduced  . .  1893.03(d)

  Cited  . .  803.04 , 1850 ,
  1895.01 , 1896

 1.501 Reproduced  . .  2202

  Cited  . .  609 , 1920 ,
  2003.01 , 2201 , 2204 ,

  . .  2205 , 2206 ,
  2210 , 2214 , 2215 , 2225 ,

  . .  2227 , 2244 ,
  2246 , 2254 , 2256 ,

  . .  2257 , 2267

 1.510 Reproduced  . .  2210

  Cited  . .  324 , 502 ,
  502.01 , 509.01 , 714 ,

  . .  2003.01 , 2201 ,
  2202 , 2204 ,

  . .  2211 - 2219 ,
  2221 , 2225 , 2227 ,

  . .  2228 , 2239 ,
  2249 , 2250.01 , 2254 , 2256 ,

  . .  2257 , 2258 ,
  2262 , 2267 , 2284

 1.515 Reproduced  . .  2240

  Cited  . .  1002.02(c) ,
  2201 , 2241 ,

  . .  2243 , 2244 ,
  2246 ,

  . .  2248 , 2249 ,
  2255 , 2265 , 2283 - 2286

 1.520 Reproduced  . .  2239

  Cited  . .  103 , 1002.02(b)
  , 2201 , 2212 ,

  . .  2229 , 2241 ,
  2246 , 2249

 1.525 Reproduced  . .  2246

  Cited  . .  1449.01 , 2201 ,
  2202 , 2254 , 2268 ,

  . .  2283 , 2284 ,
  2285 , 2286 , 2288

 1.530 Reproduced  . .  2249

  Cited  . .  714 , 2201 ,
  2221 , 2248 , 2250 , 2251 ,

  . .  2252 , 2253 ,

  2256 ,

  . .  2257 , 2260 ,
  2261 , 2262 , 2263 ,

  . .  2265 , 2267 ,
  2268 , 2271 , 2280 , 2281 ,

  . .  2283 - 2286

 1.535 Reproduced  . .  2251

  Cited  . .  2201 , 2202 ,
  2204 , 2249 , 2252 , 2253 ,

  . .  2254 , 2256 ,
  2257 , 2258 , 2260 , 2261

  . .  2262 , 2265 ,
  2267 , 2268 ,

  . .  2281 , 2283 -
  2286

 1.540 Reproduced  . .  2252

  Cited  . .  2201 , 2267

 1.550 Reproduced  . .  2254 , 2265

  Cited  . .  710.02 ,
  710.02(e) , 1002.02(c) ,

  . .  1205 , 1206 ,
  1208 , 1208.03 ,

  . .  1209 , 1214.01 ,
  1214.08 ,

  . .  1216 , 2201 ,
  2221 , 2246 , 2247 , 2248 ,

  . .  2249 , 2266 ,
  2267 , 2283 - 2287

 1.552 Reproduced  . .  2258

  Cited  . .  2201 , 2246 ,
  2247 , 2253 ,

  . .  2262 , 2280 ,
  2285

 1.555 Reproduced  . .  2280 ,

  Cited  . .  724 , 724.03 ,
  2001.04 , 2014 ,

  . .  2201 , 2202 ,
  2206 , 2256 , 2257

 1.560 Reproduced  . .  2281

  Cited  . .  2201

 1.565 Cited  . .  1449.01 , 2201

  . .  2267 , 2286 ,
  2288

 1.565(a) Reproduced  . .  2282

  Cited  . .  2207

 1.565(b) Reproduced  . .  2284

 1.565(c) Reproduced  . .  2283

 1.565(d) Reproduced  . .  2285

 1.565(e) Reproduced  . .  2284

 1.570 Reproduced  . .  2288

  Cited  . .  1205 , 1206 ,
  2201 , 2254 ,

  . .  2283 , 2285 ,
  2287

 1.601 Reproduced  . .  2301.02

  Cited  . .  509.02 ,
  706.02(b) , 715 , 718 , 720.04 ,

  . .  1002.02(c) and
  (g) , 715.05 , 2138.01 ,

  . .  2300.01 , 2303 ,
  2305 , 2305.04 , 2306 ,

  . .  2309.01 , 2333 ,
  2339 , 2363 ,

  . .  2363.03 , 2387

 1.602 Reproduced  . .  2302

 1.603 Reproduced  . .  2303

  Cited  . .  1002.02(d)

 1.604 Reproduced  . .  2304

  Cited  . .  2305

 1.605 Reproduced  . .  2305

  Cited  . .  706.03(u) ,
  710.02(c) ,

  . .  2305.03 ,
  2305.04

 1.606 Reproduced  . .  2306

  Cited  . .  2307.02 ,
  2309.01

 1.607 Reproduced  . .  2307

  Cited  . .  120 , 2001.06(d)
  , 2284 , 2305 , 2305.04

  . .  2306 , 2307.02 ,
  2307.04 ,

  . .  2307.05 ,
  2307.06 , 2309.06

 1.608 Reproduced  . .  2308

  Cited  . .  715.05 , 1208 ,
  2306 ,

  . .  2308.01 ,
  2308.02 , 2309.03 ,

  . .  2312 , 2317 ,
  2333.01 , 2337 , 2339 , 2371

 1.609 Reproduced  . .  2309

  Cited  . .  2305

 1.610 Reproduced  . .  2310

  Cited  . .  502 , 1002.02(f)
  , 2300.01 ,

  . .  2316 , 2345 ,
  2355

 1.611 Reproduced  . .  2311

  Cited  . .  710.02 ,
  710.02(e) , 2300.02 , 2302 ,

  . .  2306 , 2307.06 ,
  2314 , 2330 , 2390

 1.612 Reproduced  . .  2312

  Cited  . .  103 , 720 ,
  1002.02(f) , 2309.03 , 2314

 1.613 Reproduced  . .  2313

  Cited  . .  402.05 ,
  1002.02(f) and (g) , 2309.02

 1.614 Reproduced  . .  2314

 1.615 Reproduced  . .  2315

  Cited  . .  1002.02(f) and
  (g) , 2307.01

 1.616 Reproduced  . .  2316

  Cited  . .  2300.01 , 2378 ,
  2387 , 2390

 1.617 Reproduced  . .  2317

  Cited  . .  2308.02 , 2310 ,
  2312 , 2384

 1.618 Reproduced  . .  2318

  Cited  . .  601 , 2353 ,
  2356

 1.621 Reproduced  . .  2321

  Cited  . .  502 , 502.01 ,
  2300.02 , 2301.03 , 2311 ,

  . .  2331 , 2340 ,
  2346

 1.622 Reproduced  . .  2322

  Cited  . .  2362

 1.623 Reproduced  . .  2323

  Cited  . .  2322 , 2325 ,
  2328 , 2329 , 2340

 1.624 Reproduced  . .  2324

 1.625 Reproduced  . .  2325

  Cited  . .  2355

 1.626 Reproduced  . .  2326

  Cited  . .  2340

 1.627 Reproduced  . .  2327

 1.628 Reproduced  . .  2328

  Cited  . .  2323 , 2324 ,
  2325 , 2329

 1.629 Reproduced  . .  2329

  Cited  . .  2321

 1.630 Reproduced  . .  2330

  Cited  . .  201.13 ,
  201.14(a)

 1.631 Reproduced  . .  2331

  Cited  . .  1002.02(g) ,
  2300.02 , 2326

 1.632 Reproduced  . .  2332

  Cited  . .  2321 , 2354

 1.633 Reproduced  . .  2333

  Cited  . .  714.16(b) , 720
  , 2300.02 , 2301.02 ,

  . .  2302 , 2305.01 ,
  2306 , 2309.01 ,

  . .  2309.02 ,
  2903.03 , 2311 , 2312 , 2314 ,

  . .  2321 , 2330 ,
  2331 , 2333.01 , 2333.02 ,

  . .  2335 , 2336 ,
  2337 , 2339 , 2340 , 2344 ,

  . .  2355 , 2358 ,
  2360 , 2362 ,

  . .  2363.03 , 2371 ,
  2390

 1.634 Reproduced  . .  2334

  Cited  . .  201.03 ,
  1002.02(g) , 1481 , 1485 , 2322 ,

  . .  2335 , 2336 ,
  2339 , 2340 , 2344 ,

  . .  2355 , 2358 ,
  2363.03

 1.635 Reproduced  . .  2335

  Cited  . .  1002.02(g) ,
  1480 , 1481 , 2312 , 2284 ,

  . .  2300.02 , 2313 ,
  2316 , 2328 , 2336 , 2337 ,

  . .  2340 , 2343 ,
  2344 , 2345 , 2351 ,

  . .  2352 , 2356 ,
  2371 , 2373 , 2383 ,

  . .  2384 , 2385 ,
  2387

 1.636 Reproduced  . .  2336

 1.637 Reproduced  . .  2337

  Cited  . .  2312 , 2333 ,
  2334 , 2335 , 2356 , 2364

 1.638 Reproduced  . .  2338

  Cited  . .  2300.02 , 2344 ,
  2384

 1.639 Reproduced  . .  2339

  Cited  . .  2351 , 2371

 1.640 Reproduced  . .  2340

  Cited  . .  1002.02(f) ,
  2300.02 , 2310 , 2312 , 2333 ,

  . .  2337 , 2355 ,
  2385 , 2390

 1.641 Reproduced  . .  2341

  Cited  . .  1004 , 2284 ,
  2307.02

 1.642 Reproduced  . .  2342

 1.643 Reproduced  . .  2343

 1.644 Reproduced  . .  2344

  Cited  . .  1002 ,
  1002.02(f) and (o) , 2340 , 2364

 1.645 Reproduced  . .  2345

  Cited  . .  710.02 ,
  710.02(e) , 720.04 , 1216 ,

  . .  2311 , 2387 ,
  2390

 1.646 Reproduced  . .  2346

  Cited  . .  720.01 , 1216 ,
  1216.01 , 1901

 1.647 Reproduced  . .  2347

  Cited  . .  2337

 1.651 Reproduced  . .  2351

  Cited  . .  2300.02 , 2311 ,
  2333 , 2340 , 2352 , 2387

 1.652 Reproduced  . .  2352

  Cited  . .  2310 , 2390

 1.653 Reproduced  . .  2353

  Cited  . .  502.01 , 2300.02
  , 2301.03 , 2308 , 2346 ,

  . .  2352 , 2353 ,
  2356 , 2371 ,

  . .  2372 , 2376 ,
  2377

 1.654 Reproduced  . .  2354

  Cited  . .  2302.02 , 2332

 1.655 Reproduced  . .  2355

  Cited  . .  2340

 1.656 Reproduced  . .  2356

  Cited  . .  2300.02 , 2310 ,
  2332 , 2337 ,

  . .  2382 , 2383 ,
  2385

 1.657 Reproduced  . .  2357

  Cited  . .  2311

 1.658 Reproduced  . .  2358

  Cited  . .  1216 , 2300.02 ,
  2310 , 2333 ,

  . .  2354 , 2363.03 ,
  2365

 1.659 Reproduced  . .  2359

 1.660 Reproduced  . .  2360

  Cited  . .  2284

 1.661 Reproduced  . .  2361

  Cited  . .  706.03(u) , 2366

 1.662 Reproduced  . .  2362

  Cited  . .  2358 , 2360 ,
  2364

 1.663 Reproduced  . .  2363.03

  Cited  . .  706.03(u) , 1206
  , 2364

 1.664 Reproduced  . .  2363

 1.665 Reproduced  . .  2365

 1.666 Reproduced  . .  2366

  Cited  . .  1002.02(f) ,
  2301.03

 1.671 Reproduced  . .  2371

  Cited  . .  720 , 2301.02 ,
  2308 , 2339 , 2344 ,

  . .  2372 , 2382

 1.672 Reproduced  . .  2372

  Cited  . .  720.04 , 2300.02
  , 2317 , 2339 , 2353 ,

  . .  2371 , 2373 ,
  2384 , 2390

 1.673 Reproduced  . .  2373

  Cited  . .  103 , 2301.02 ,
  2310 , 2371 ,

  . .  2372 , 2384 ,
  2385

 1.674 Reproduced  . .  2374

  Cited  . .  2375 , 2376 ,
  2384

 1.675 Reproduced  . .  2375

  Cited  . .  2385

 1.676 Reproduced  . .  2376

  Cited  . .  502 , 502.01 ,
  2301.03 , 2346 , 2353 ,

  . .  2372 , 2373

 1.677 Reproduced  . .  2377

 1.678 Reproduced  . .  2378

 1.679 Reproduced  . .  2379

 1.682 Reproduced  . .  2382

  Cited  . .  2353 , 2371

 1.683 Reproduced  . .  2383

  Cited  . .  2353 , 2371

 1.684 Reproduced  . .  2384

  Cited  . .  502 , 502.01 ,
  2301.03 , 2348 , 2353 , 2373

 1.685 Reproduced  . .  2385

  Cited  . .  720

 1.687 Reproduced  . .  2387

  Cited  . .  103 , 2300.02 ,
  2301.02 ,

  . .  2328 , 2351 ,
  2388

 1.688 Reproduced  . .  2388

  Cited  . .  1002.02(g) ,
  2300.01 , 2309.01 , 2353

  . .  2363 , 2363.03 ,

  2371

 1.689 Cited  . .  1002.02(f)

 1.690 Reproduced  . .  2390

  Cited  . .  501

 1.701 Cited  . .  1002.02(b) ,
  1309.01

 1.710 Cited  . .  501 , 1002.02(b)

 1.785  . .  501 , 1002.02(b)

 1.801 Reproduced  . .  2403

  Cited  . .  1605 , 2401 ,
  2402

 1.802 Reproduced  . .  2404

  Cited  . .  1605 , 2401 ,
  2402 , 2404.03 , 2407 ,

  . .  2407.01

 1.803 Reproduced  . .  2405

  Cited  . .  1605 , 2401 ,
  2402 , 2409

 1.804 Reproduced  . .  2406

  Cited  . .  1605 , 2401 ,
  2402 , 2406.01 , 2406.02 ,

  . .  2407 , 2407.01

 1.805 Reproduced  . .  2407

  Cited  . .  1605 , 2401 ,
  2402 , 2407.01 ,

  . .  2407.02 ,
  2407.03 , 2407.04 ,

  . .  2407.05 ,
  2407.06 , 2411 , 2411.04

 1.806 Reproduced  . .  2408

  Cited  . .  1605 , 2401 ,
  2402 , 2411.01

 1.807 Reproduced  . .  2409

  Cited  . .  1605 , 2401 ,
  2402

 1.808 Reproduced  . .  2410

  Cited  . .  1605 , 2401 ,
  2402 , 2404.01 ,

  . .  2410.01 ,
  2411.01

 1.809 Reproduced  . .  2411

  Cited  . .  1605 , 2401 ,
  2402 , 2406 , 2407.04 ,

  . .  2411.02 ,
  2411.03 , 2411.05

 1.821 Reproduced  . .  2422

  Cited  . .  506 , 601 ,
  601.01 , 1002.02(c)(3) ,

  . .  1823.02 , 2401 ,
  2420 ,

  . .  2421.02 ,
  2422.01 ,

  . .  2422.02 ,
  2422.03 , 2422.04 ,

  . .  2422.05 ,
  2422.06 , 2422.07 , 2422.08 ,

  . .  2422.09 , 2424 ,
  2424.01 , 2425 ,

  . .  2426 , 2427.01 ,
  2427.02 , 2428 , 2429

 1.822 Reproduced  . .  2423

  Cited  . .  506 , 601 ,
  601.01 , 1002.02(c)(2) ,

  . .  1823.02 , 2401 ,
  2420 , 2421.02 , 2421.04 ,

  . .  2422 , 2422.01 ,
  2422.03 , 2422.07 ,

  . .  2423.01 ,
  2423.02 , 2423.03 ,

  . .  2425 , 2427.02

 1.823 Reproduced  . .  2424

  Cited  . .  506 , 601 ,
  601.01 , 1002.02(c) , 1823.02 ,

  . .  2421.02 , 2401 ,
  2420 , 2422 , 2422.03 ,

  . .  2422.07 , 2423 ,
  2423.01 ,

  . .  2424.01 ,
  2424.02 , 2424.03 ,

  . .  2425 , 2427.02 ,
  2429

 1.824 Reproduced  . .  2425

  Cited  . .  506 , 601 ,
  601.01 , 1002.02(c) , 1823.02 ,

  . .  2401 , 2420 ,
  2421.02 , 2421.04 ,

  . .  2422 , 2422.07 ,
  2422.09 , 2429

 1.825 Reproduced  . .  2426

  Cited  . .  506 , 601 ,
  601.01 , 1002.02(c)(2) ,

  . .  1823.02 , 2401 ,
  2420 , 2421.02 ,

  . .  2422 , 2422.07 ,
  2422.08 ,

  . .  2427.01 ,
  2427.02 , 2428 , 2429

 2.145 Cited  . .  501 , 1002.02(o)

 2.146 Cited  . .  513

 2.148 Cited  . .  513

 2.6 Cited  . .  301.01 , 302.06

 2.66(a) Cited  . .  513

 3.1 Reproduced  . .  301

 3.11 Reproduced  . .  302

  Cited  . .  301 , 313 ,
  317.03 , 323.01

 3.21 Reproduced  . .  302.03

  Cited  . .  315 , 317.01

 3.24 Reproduced  . .  302.01

 3.26 Reproduced  . .  302.02

 3.27 Reproduced  . .  302.08

 3.28 Reproduced  . .  302.07

  Cited  . .  302

 3.31 Reproduced  . .  302.07

  Cited  . .  302

 3.34 Reproduced  . .  323.01

 3.41 Reproduced  . .  302.06

  Cited  . .  323.01

 3.51 Reproduced  . .  317.01

  Cited  . .  302.07 , 317.02

 3.54 Reproduced  . .  317.03

 3.56 Reproduced  . .  317.03

 3.61 Reproduced  . .  302.04

  Cited  . .  302.07

 3.71 Reproduced  . .  402.07

  Cited  . .  106 , 324 , 2560

 3.73 Reproduced  . .  502.02 , 324

  Cited  . .  201.03 , 402.07
  , 409.03(f) ,

  . .  502.02 , 509.03
  , 706.02(l) , 804 , 1410.01 ,

  . .  1490 , 2287 ,
  2542 , 2560 , 2580 , 2590

 3.81 Reproduced  . .  307

  Cited  . .  302.08 , 605 ,
  1002.02(b) , 1309 , 1481

 5.1 Reproduced  . .  115

  Cited  . .  140 , 502 ,
  502.01 , 1832

 5.2 Reproduced  . .  120

  Cited  . .  140 , 502 ,
  502.01

 5.3 Reproduced  . .  120 , 2309.06

  Cited  . .  502 , 502.01 ,
  1832

 5.4 Reproduced  . .  120

  Cited  . .  502 , 502.01 ,
  1002.02(c)(1)

 5.5 Reproduced  . .  120

  Cited  . .  140 , 502 ,
  502.01 , 1002.02(c)(1)

 5.6 Reproduced  . .  120

  Cited  . .  502 , 502.01

 5.7 Reproduced  . .  120

  Cited  . .  502 , 502.01

 5.8 Reproduced  . .  120

  Cited  . .  502 , 502.01

 5.11 Reproduced  . .  140

  Cited  . .  1832

 5.12 Reproduced  . .  140

  Cited  . .  115 ,
  1002.02(c)(1) , 1832

 5.13 Reproduced  . .  140

 5.14 Reproduced  . .  140

  Cited  . .  1832

 5.15 Reproduced  . .  140

 5.16 Reproduced  . .  140

 5.17 Reproduced  . .  140

 5.18 Reproduced  . .  140

 5.19 Reproduced  . .  140

 5.20 Reproduced  . .  140

 5.25 Reproduced  . .  140

  Cited  . .  1002.02(c)(1)

 5.31 Reproduced  . .  140

 5.32 Reproduced  . .  140

 5.33 Reproduced  . .  140

  Cited  . .  120

 10.1(r) Cited  . .  502 , 511 , 513

 10.2 Cited  . .  1002.02(o)

 10.5 Cited  . .  403

 10.6 Cited  . .  401 , 402.01 ,
  1702

 10.6(c) Cited  . .  402

 10.7 Cited  . .  1002.02(m)

 10.9 Reproduced  . .  402.01

  Cited  . .  401 , 1002.02(m)
  , 1702

 10.10 Reproduced  . .  1702

  Cited  . .  402.09 ,
  1002.02(m) , 1807 , 1808

 10.11 Reproduced  . .  402 ,

  Cited  . .  403 , 601.03 ,
  2205 , 2220 , 2222

 10.18 Reproduced  . .  402

 10.23 Cited  . .  1702 , 2222

 10.23(c)(18) Cited  . .  402 , 2333

 10.30 Cited  . .  1002.02(f)

 10.40 Cited  . .  402.06

 10.66 Cited  . .  404

 10.131 Cited  . .  402

 10.160 Cited  . .  1002.02(m)

 10.170  . .  1002.02(m)

 41 CFR 101 Cited  . .  510

  S

  Sale, On (see On Sale)

  Same attorney, Interfering applications  . .  2305 , 2309.02

  Same invention, Comparing foreign application  201.15

  Sample letter on citation of prior art in patent  2205

  Saturday, Effect on time for response  . .  502 , 505 ,

 710.05, 2506

  Scientific and Technical Information Center (Library)  
  706.02(e) , 707.05(e) ,

 719.05, 901.06(a)

  Scientific principle not patentable  . .  706.03(a)

  Scope of claims  . .  904.01(a) ,
  2163.05 , 2164.08

  Scope of class  . .  903.02(b)

  Scope of reexamination  . .  2258

  Screening new application for security review  115 ,
  706.03(b)

 Seal  . .  604.01

 Foreign application  . .  602.04(a)

 Not required  . .  604.01 ,
  604.03(a)

 Venue  . .  604.02

  Sealing oaths for interference, Primary's attention  1004

  Search:

 After reversal by Board of Appeals  .  1214.04

 Aids in Scientific and Technical Information Center  
  901.06(a)

 Analogous art areas  . .  904.01(c)

 APS  . .  902.03(e)

 Cards, Subclass definitions  . .  902.02(b)

 Claim analysis  . .  904.01

 Computer  . .  719.05

 Fee-PCT  . .  1827

 Field of  . .  904.01(d) , 1701

 File wrapper notation  . .  705.01(a) ,
  719.05 , 904.01(d)

 Incomprehensible disclosure  . .  702.01

 In Group, by member of public  . .  713.02

 Informal application  . .  702.01 , 704

 INPADOC  . .  901.06(a)

 Interference  . .  2301.01(b)

 Mechanized  . .  719.05

 Notes in classification definitions  .  902.02(a)

 Notes in file wrapper  . .  705.01(a) ,
  719.05 , 903.07(a)

 Online Database  . .  901.06(a)

 Outlining  . .  904.01(d)

 Patentability report  . .  705.01(a) ,
  705.01(b)

 Prior examiner's  . .  704

 Procedure  . .  704 , 904

 Report  . .  1844

 Restriction requirement  . .  808.02

 Scope  . .  2112

 Selecting pertinent references  . .  904.02

 Title  . .  306

 Unduly extensive and burdensome  . .  808.01(a) ,

 809.02(d) ,
  818.02(b)

  Search exchange, United States-Philippines 1711

  "Search Notes" box entries  . .  719.05

  Search Room, Examiner's use  . .  510

  Search Room hours  . .  510

  "Searched" box entries  . .  719.05

  Secret sale (see On Sale)

  Secrecy of international applications  . .  120

  "Secrecy Order" application  . .  115 , 120 ,
  130

 Allowance  . .  130 , 1304

 Final rejection  . .  130

 Interference  . .  130 , 2309.06

 Prosecution  . .  130

 Review for Secrecy Order  . .  115 , 140

 Security, Application affecting  . .  120 to 140

  Security Group, Cases submitted  . .  120 , 121 ,

 706.03(b)

  Security interest in patent, recording  . .  313

  Security markings  . .  121 , 130 ,
  140 , 724 ,

  Security screening of new applications  . .  115 , 140

  Self-addressed postcard  . .  503

  Sequence rules  . .  2400 , 2420

 Amendments to sequence listing and computer readable form
  . .  2426

 Amino acid definition  . .  2424.01

 Applications affected, "new" applications  2421.01

 Background information  . .  2401 , 2420

 Bona fide response  . .  2421.03

 Box sequence  . .  2422.09

 Changes to rules  . .  2421.04

 Coding regions, Depiction of  . .  2423.02

 Compliance requirement  . .  2422.07

 Computer readable form requirement  .  2422.04 , 2425

 Definitions for nucleotides/amino acids  .  2422.01

 Effective date  . .  2401 , 2420

 Exclusive conformance requirement  . .  2422.02

 Extensions of time  . .  2421.03

 Format and symbols  . .  2423 , 2423.01

 Form paragraphs and notice to comply  2427

 Hand-delivery of sequence listings and computer readable
  forms  . .  2422.09

 Headings for sequence listings  . .  2432 , 2433

 Helpful hints for compliance  . .  2429

 Informational requirements for sequence listings  2424 ,
  2424.01 , 2424.02

 Mandatory information items  . .  2433

 Miscellaneous requirements, information  .  2424.03

 "New" applications  . .  2421.01

 Notification of failure to comply  . .  2421.03 , 2427

 Nucleotide definition  . .  2422.01

 Numbering of sequences  . .  2423.02

 Official copy of sequence listing  . .  2422.04

 PatentIn information, training  . .  2430

 Presumptions regarding compliance  . .  2422.08

 Previously filed identical computer readable form,
  Reference to  .  2422.05

 Replacement of sequence listing and computer readable form
  . .  2426

 Sample sequence listing  . .  2431

 Sample statements  . .  2428

 Sanctions for failure to comply  . .  2422.07

 Sequence identifier requirement  . .  2422.03

 Sequence listing requirement  . .  2422.03

  Patent Cooperation Treaty  . .  1823.02 , 1848

 Sequence presentation  . .  2423.03

 Sequences embedded in application text  2422.03

 Sequences in drawings  . .  2422.02

 Statement regarding content of paper and computer readable
  copies  . .  2422.06 , 2428

 Statement regarding new matter  . .  2422.07 , 2428

 Summary of requirements  . .  2421.02

 Variants of a presented sequence  . .  2422.03

 Voluntary compliance  . .  2421.01

  Sequences, restriction  . .  803.04

  Serial Number  . .  502 , 503

  Series of dependent claims  . .  608.01(n)

  Service in reexamination  . .  2220

  Service of citation in patent  . .  1921

  Service of court papers on Commissioner  . .  1216

  Shift of election  . .  819

  Shortened statutory period  . .  710.02 to
  710.02(e)

 Distinction from time limit for reply  710.02(d) ,

 2307.02

  Signatory Authority, Full  . .  1004

  Signatory Authority, Partial  . .  1005

  Signature:

 Alteration in specification signed  .  608.01

 Amendment  . .  714.01

  Signature improper  . .  714.01(a) to
  714.01(d)

  Signature missing  . .  714.01(a)

  Signed by applicant, Not by attorney of record  
  714.01(d)

  Signed by attorney not of record  405

 Applicant  . .  605.04

 Applicant changes name  . .  201.03 ,
  605.04(c) , 719.02(b)

 Applicant, International application  1820

 Applicant unable to write  . .  605.04(d)

 Application completeness  . .  506

 Application papers  . .  605.04

 Attorney not of record  . .  405

 Correction of name  . .  605.04(c)

 Divisional application, Omitted  . .  201.06(a)

 Express abandonment  . .  711 , 711.01

 Facsimile  . .  502.01 , 502.02
  , 506 , 605.04

 Full, first or middle name  . .  605.04 ,
  605.04(b)

 Joint applications  . .  605.04(f)

 Legal representative  . .  605.05

 Omitted from an application filed under Rule 60  
  201.06(a)

 Required on every paper  . .  402 , 502.02

 Title with  . .  605.04(e)

 Uniformity with name  . .  605.04(b) , 1503

  Signing Examiner's letter  . .  706.07 ,
  707.08 , 707.09

  Signing, File Wrapper  . .  1302.13

  Simultaneous issue of patents  . .  1306.02

  Single means claim  . .  2164.08(a) ,
  2181

  Single signature form, Design application  .  1503

  Sketch of proposed drawing change  . .  608.02(v)

  Sketch of subject matter of claims  . .  904.01(a)

  Small Business Act  . .  509.02

  Small Business Administration  . .  509.02

  Small Entity Status  . .  509.02

  Small Entity Status, Claiming  . .  509.03

  Small Entity Status, for maintenance fees  .  2550

  Soft copy, Ordering  . .  905.02

  Sole in original oath  . .  602

  Sole inventor application  . .  201.01

 Changed from joint  . .  201.03

 Changed to joint  . .  201.03

 Changed to other sole inventor  . .  201.03

 Continuation of joint  . .  201.07

 Continuation-in-part of joint  . .  201.08

 Division of joint  . .  201.06

 Reissue application, Joint to sole  .  1481

  Sole patent to joint patent  . .  1481

  Solicitor's Office  . .  302.04 , 311 ,
  601.03 ,

 1216.01, 1216.02, 1701.01, 2207

 Petitions decided  . .  1002.02(k)

 Service of court papers on  . .  1216

  Sources of information to disclose  . .  2001.06

  Special Assistant to the Assistant

 Commissioner for Patents  . .  1701.01

  Special case  . .  708 to 708.03

 Accelerated examination  . .  708.02

 Allowable application, Except for form  707.07(j) ,

 710.02(b), 714.14, 1301

 Appealed case  . .  1204

 Applicant's age, health  . .  708.02

 Biotechnology case, small entry  . .  708.02

 Cancer  . .  708.02

 Counter terrorism inventions  . .  708.02

 DNA  . .  708.02

 Energy  . .  708.02

 Five year pendency  . .  707.02(a)

 HIV/AIDS  . .  708.02

 Infringement  . .  708.02

 List  . .  708.01

 Manufacture  . .  708.02

 Petition to make  . .  708.02 ,
  1002.02(c)

 Reexamination  . .  2261

 Reissue application  . .  706.03(x) , 1442

 Rejected patent claim  . .  2307.02

 Remanded  . .  708.01

 Revived applications  . .  711.03(c)

 Superconductivity  . .  708.02

  Special examining procedure  . .  708.02

  Special Program Law Office  . .  201.03 , 720 ,
  720.01 ,

 1002.02(b)

  Special Program Examiner  . .  103

  Species  . .  802.01 ,
  806.04(a) to 806.04(j)

 Anticipation by a generic chemical formula  2131.02

 Anticipation of a genus by the species  2131.02

 Cancellation of Species claims  . .  821.01 , 821.02

 Claims restricted to  . .  806.04(e)

 Election (See Election of species.)

 How recognized  . .  806.04(f)

 Independent inventions  . .  802.01 ,
  808.01(a)

 Mutually exclusive characteristics  .  806.04(f)

 Obviousness of  . .  2144.08

 Patentability distinct  . .  806.04(h)

 Patentability over genus  . .  806.04(h)

 Plural  . .  706.03(k) ,
  808.01(a) , 809.02

 Reissue  . .  1450

 Rejection  . .  806.04(h) ,
  2131.02

 Related  . .  806.04(b)

 With allowable generic claim  . .  809.02(b)

 Withdrawal of species claims  . .  809.02(c) ,
  821.01 ,

 821.02

  Specification (see also Disclosure)  . .  608.01 , 2161

 Amendment, Instructions for entry  . .  714.22 , 714.23

 Arrangement  . .  608.01(a)

 Best Mode (see also Best Mode)  . .  2165

 British "provisional" and complete  .  201.15

 Changes prior to filing  . .  601.01(a) ,
  608.01

 Completeness  . .  608.01(p) , 2161
  , 2163 - 2165

 Computer Lists  . .  608.05

 Confused by amendments  . .  608.01(q) ,
  1302.02

 Content of  . .  608.01(a)

 Correction by Examiner's amendment  .  1302.04 to
  1302.04(g)

 Correction by initialing  . .  1302.04

 Cross-noting of related applications  202.01 , 1302.04

 Derogatory remarks prohibited  . .  608.01(r)

 Description  . .  608.01(g) , 2163
  , 2163.02

 Design application  . .  1503.01

 Enablement (see also Enablement)  . .  2164

 English language  . .  608.01

 Format  . .  608.01

 Illustrations in  . .  608.01

 Incorporation by reference  . .  2163.07

 Interlineation prior to filing  . .  608.01

 Language faulty  . .  608.01

 Missing pages  . .  601.01(d)

 New matter  . .  608.04 ,
  706.03(o) , 2163.06

 Omitted pages  . .  601.01(d)

 Parts  . .  608.01(a)

 Provisional application  . .  601.01(b)

 Reference to copending application brought up to date  
  1302.04(f)

 Reference to prior patent or application  202.01

 Reissue application  . .  1411

 Requirements for  . .  2161

 Return  . .  608.01

 Rewritten  . .  608.01(q) ,
  1302.02

 Signature  . .  605.04

 Substitute, Amendment including  . .  714.19 , 714.20

 Substitute, New matter  . .  714.20

 Substitute specification  . .  608.01(q) ,
  714.19 , 714.20

 Summary of invention  . .  608.01(d)

 Terminology basis for claims  . .  608.01(o) ,
  2163.07

 Title of invention  . .  606

 Title of invention, Changed  . .  606.01

 Transfer  . .  608.01(t)

 Written description (see also Written Description)  
  2163

  Specimen, Composition of matter  . .  608.03

  Specimen, Handling  . .  608.03(a)

  Specimen, Plant application  . .  1607

  Stale oath or declaration  . .  602.05

  Stamp:

 Draftsman's  . .  608.02(a) ,
  608.02(o)

 Group date  . .  714.18

 Office date  . .  502 , 505 , 506
  , 710.01(a) , 714.18

 Seal  . .  604.01

  Starting material, Chemical compound  . .  608.01(p)

  Statement, Examiner's:

 New ground of rejection  . .  1208.01

 Petition  . .  1002.02(c)

 Petition from abandonment  . .  711.03(d)

 Reply brief  . .  1208

 Special status  . .  708.01

  Statement by inventors when changing inventorship  201.03

  Statement by owner in reexamination  . .  2249

  Statement of invention, Coextensive with claims 608.01(d)

  Statement of invention, Review on allowance  1302.01

  Statement, Prior Art  . .  609

  Status inquiries  . .  203.08

 Congressional  . .  203.08(a)

  Status letter  . .  203.08 , 1705

  Status of application  . .  102 , 203

 Abandoned  . .  203.05

 Abandoned for failure to pay issue fee  203.07

 Allowed or in issue  . .  203.04

 Amended  . .  203.03

 Incomplete  . .  203.06

 New  . .  203.01

 Parent patent application  . .  102 , 201.11

 Referred to in foreign patent  . .  102 , 203.08

 Rejected  . .  203.02

  Statute, Citation  . .  Introduction

  Statutes:

 Atomic Energy Act Cited  . .  120 , 140 , 150
  ,

 706.03, 706.03(a)-(b)

 Public Law 87-333 Cited  . .  201.13

 Public Law 94-131  . .  608.01(n)

 Public Law 96-517  . .  509.02 , 2201 ,
  2209 , 2501

 Public Law 97-247  . .  509.02 , 509.03
  , 511 , 513 ,

 601.01(a) ,
  711.03(c) , 2265 , 2501

 Public Law 98-622  . .  201.03 , 605.07
  , 706.02(k)

 804, 2217, 2258, 2300.01,

 2300.02, 2308.02, 2501

 Public Law 100-418, Section 9101(c),(d)  .  140

 Public Law 103-465  . .  201.03 , 201.11
  , 601.01(d) ,

 706.07(g), 707.05, 715, 715.07(c),

 803.03, 1460, 2132, 2138.02

 Public Law 506 (81st Cong.)

  Article 136 Cited  . .  604.03(a)

 Revised Statute of 1874  . .  Introduction

 5 U.S.C. 552(a)(2)  . .  103

 5 U.S.C. 6103 Cited (Office closings)  710.05

 9 U.S.C. 10, 11 Reproduced  . .  2390

 10 U.S.C. 140(c)  . .  120

 15 U.S.C. 15(b) Cited  . .  101

 15 U.S.C. 1057 Cited  . .  502 , 502.01

 15 U.S.C. 1058 Cited  . .  512

 15 U.S.C. 1059 Cited  . .  512

 15 U.S.C. 1062 Cited  . .  512 , 513

 15 U.S.C. 1064 Cited  . .  512

 18 U.S.C. 1001 Reproduced  . .  602

  Cited  . .  151 ,
  201.06(a) ,

  . .  711.03(c) ,
  715.04 ,

  . .  716.02(g) , 2428

 18 U.S.C. 1905 Cited  . .  101

 18 U.S.C. 2071 Reproduced  . .  101

 18 U.S.C. 2331  . .  708.02

 26 U.S.C. 501  . .  509.02

 28 U.S.C. 1292(b) Cited  . .  2344

 28 U.S.C. 1745  . .  901.05

 28 U.S.C. 1746 Reproduced  . .  602

  Cited  . .  201.03 ,
  602.03 , 2301.02

 35 U.S.C. 1 Reproduced  . .  Introduction

 35 U.S.C. 2 Reproduced  . .  1309

 35 U.S.C. 3 Reproduced  . .  1001

 35 U.S.C. 4 Reproduced  . .  309

 35 U.S.C. 6 Reproduced  . .  1001

 35 U.S.C. 6 Cited  . .  Introduction ,
  710.02 , 710.02(c) ,

  . .  2000 , 2344

 35 U.S.C. 7 Reproduced  . .  1203

  Cited  . .  1002.02(f)

 35 U.S.C. 8 Reproduced  . .  901.06(a)

 35 U.S.C. 9 Reproduced  . .  903.01

 35 U.S.C. 21 Reproduced  . .  710.05

  Cited  . .  201.13 , 510 ,
  511 , 512 ,

  . .  513 , 1805 ,
  2506

 35 U.S.C. 21(a) Reproduced  . .  511 , 513

 35 U.S.C. 22 Reproduced  . .  608.01

 35 U.S.C. 24 Cited  . .  2300.02 , 2314 ,
  2335 ,

 2371, 2372, 2387

 35 U.S.C. 25 Reproduced  . .  602

  Cited  . .  602.03 ,
  716.02(g) , 2301.02

 35 U.S.C. 26 Reproduced  . .  602

 35 U.S.C. 32 Cited  . .  1002.02(o) ,
  2313

 35 U.S.C. 41 Reproduced  . .  1205 , 2501

  Cited  . .  201.06(b) ,
  509.02 , 509.03 , 607 ,

  . .  608.01(n) ,
  710.02 , 710.02(e) ,

  . .  711.03(c) , 712
  , 714.16(c) , 1205 ,

  . .  1306 , 2265 ,
  2274 , 2506 ,

  . .  2520 , 2590 ,
  2591

 35 U.S.C. 100 Reproduced  . .  701

  Cited  . .  706.03(a) ,
  2106 , 2301.02

 35 U.S.C. 101 Reproduced  . .  701 , 706.03(a)
  ,

 804, 2107

  Cited  . .  201 ,
  608.01(p) , 706 ,

  . .  706.02(g) ,
  706.03(a) , 706.03(a)(1) ,

  . .  706.03(c) ,
  706.03(d) , 707.07(l) ,

  . .  716 , 716.08 ,
  804 , 804.02 ,

  . .  821.04 , 1206 ,
  1502.01 ,

  . .  1503 , 1504.04 ,
  1601 , 1605 , 1608 ,

  . .  1902.01(b) ,
  2105 , 2106 , 2107 ,

  . .  2107.01 ,
  2107.02 , 2111 ,

  . .  2133.03(e)(6) ,
  2138 , 2138.01 ,

  . .  2164.04 ,
  2164.07 , 2173.05(k) ,

  . .  2173.05(p) ,
  2173.05(q) , 2217 ,

  . .  2258 , 2300.02 ,
  2403 , 2403.02

 35 U.S.C. 102 Reproduced  . .  706.02 , 2134 ,

  2135

  Cited  . .  201.03 ,
  201.11 , 201.13 ,

  . .  201.13(b) ,
  409.03(g) ,

  . .  601.01(a) ,
  605.04(a) , 605.07 , 701 ,

  . .  706 , 706.02(a -
  i) , 706.02(k - n)

  . .  706.03(u) ,
  707.05(f) , 707.07(d) ,

  . .  711.06(a) , 715
  , 715.01 , 715.01(b) ,

  . .  715.01(c) ,
  715.05 , 715.07 , 715.10 ,

  . .  716.10 , 718 ,
  720 , 720.02 , 720.04 ,

  . .  720.05 , 804 ,
  804.02 , 804.03 ,

  . .  821.04 , 901.01
  , 901.04 , 901.05 ,

  . .  901.06(a) , 1111
  , 1206 ,

  . .  1208 , 1302.14 ,
  1504.02 , 1504.03 ,

  . .  1608 , 1803 ,
  1843 , 1893 , 1893.03

  . .  1895.01 , 1896 ,
  1901.02 ,

  . .  2004 , 2105 ,
  2106 , 2111 ,

  . .  2112 , 2112.02 ,
  2113 , 2121 ,

  . .  2121.01 ,
  2121.02 ,

  . .  2126 , 2126.02 ,
  2127 , 2128 ,

  . .  2131 -
  2133.03(e)(1) ,

  . .  2133(e)(3) -
  (e)(7) , 2134 - 2138.03 ,

  . .  2138.06 ,

  2141.01 , 2144.05 , 2146 ,

  . .  2173.04 , 2181 ,
  2183 , 2185 , 2205 ,

  . .  2209 , 2214 ,
  2217 , 2258 ,

  . .  2300.02 ,
  2301.02 , 2305.01 , 2305.04 ,

  . .  2306 , 2308.01 ,
  2308.02 ,

  . .  2309.02 ,
  2315.01 , 2332 ,

  . .  2333 , 2363.03 ,
  2390

 35 U.S.C. 103 Reproduced  . .  706.02 ,
  706.02(m) ,

 706.02(n)

  Cited  . .  605.07 , 701 ,
  706 ,

  . .  706.02(j - n) ,
  706.03(u) ,

  . .  707 , 707.07(d)
  , 711.06(a) , 715 ,

  . .  715.01 ,
  715.01(b) , 715.02 ,

  . .  715.05 , 716 ,
  716.01(a) ,

  . .  716.02(a) ,
  716.02(e) ,

  . .  716.03 , 718 ,
  720 , 720.02 , 720.04 ,

  . .  803 , 803.02 ,
  804 , 804.02 , 804.03 ,

  . .  806.04(b) ,
  809.02(a) , 821.04 ,

  . .  901.06(a) , 1206
  , 1208 ,

  . .  1302.14 ,
  1412.01 , 1412.02 , 1504.03 ,

  . .  1608 , 1843 ,
  1901.02 , 2004 ,

  . .  2105 , 2106 ,
  2112 , 2112.02 , 2113 ,

  . .  2116.01 , 2121 ,

  2121.01 ,

  . .  2127 , 2131.03 ,
  2133.01 ,

  . .  2133.03 ,
  2133.03(b) , 2135.01 ,

  . .  2136.01 ,
  2136.02 , 2136.03 ,

  . .  2136.04 ,
  2136.05 , 2137.01

  . .  2137.02 , 2138 ,
  2138.01 , 2138.03 ,

  . .  2138.05 , 2141 ,
  2141.01 , 2141.01(a) ,

  . .  2141.02 , 2142 ,
  2143.03 , 2144 ,

  . .  2144.02 ,
  2144.05 , 2144.06 , 2146 ,

  . .  2173.04 ,
  2173.05(k) , 2173.06 ,

  . .  2181 , 2183 ,
  2185 , 2209 , 2214 ,

  . .  2217 , 2258 ,
  2262 , 2300.02 , 2301.02 ,

  . .  2305.01 ,
  2305.04 , 2306 , 2308.01 ,

  . .  2309.02 ,
  2315.01 , 2333 ,

  . .  2363.03 , 2390

 35 U.S.C. 104 Reproduced  . .  715.07(c)

  Cited  . .  706.02(l) ,
  706.02(m) , 715 ,

  . .  715.01(c) ,
  715.07(c) , 718

  . .  2132 , 2138.02 ,
  2322 , 2323

 35 U.S.C. 111 Reproduced  . .  201 , 601

  Cited  . .  201 , 201.03 ,
  201.04(b) ,

  . .  201.06(b) ,
  201.11 , 201.11(a) ,

  . .  203.05 , 403 ,

  409.03(a) ,

  . .  409.03(b) , 506
  , 509.02 , 601 ,

  . .  601.01 ,
  601.01(a) , (b) , (e) ,  and (f) ,

  . .  605.04(a) ,
  608.01 , 609 ,

  . .  702 , 706.07(g)
  , 711.03(e) , 715 ,

  . .  801 , 804 ,
  904.04 ,

  . .  1002.02(p) ,
  1410.01 ,

  . .  1850 , 1893 ,
  1893.01(a) ,

  . .  1893.01(b) ,
  1893.03(a) , 1893.03(c) ,

  . .  1893.03(d) ,
  1895 , 1895.01 , 1896 ,

  . .  2138.01 , 2422 ,
  2422.07 , 2425

 35 U.S.C. 111(b) Reproduced  . .  201 , 201.04(b)

  Cited  . .  201.11 ,
  203.05 , 506 ,

  . .  509.02 , 601 ,
  601.01 ,

  . .  601.01(b) , (e)
  ,  and (f) , 608.01 , 609

  . .  711.03(e) , 715
  , 901.04 , 1893 ,

  . .  1895.01 ,
  2422.07

 35 U.S.C. 112 Reproduced  . .  706.03(c) ,
  706.03(d) ,

 2161, 2171

  Cited  . .  201.04(b) ,
  201.06 , 201.08 ,

  . .  201.11 ,
  201.14(b) , 201.15 ,

  . .  202.01 , 506 ,
  601 , 601.01 , 601.01(d) ,

  . .  601.01(e)608.01
  , 608.01(b) ,

  . .  608.01(h) ,
  608.01(k) , 608.01(n) ,

  . .  608.01(p) ,
  608.02 , 608.02(a) ,

  . .  608.04 , 702.01
  , 706.02 ,

  . .  706.02(b) ,
  706.02(k) , 706.02(m) ,

  . .  706.03 ,
  706.03(a)(1) ,

  . .  706.03(c) ,
  706.03(d) ,

  . .  706.03(o) ,
  706.07(a) , 707.07(d) ,

  . .  707.07(j) ,
  707.07(l) , 715.10 ,

  . .  716 , 716.01(c)
  , 716.09 ,

  . .  821 , 821.04 ,
  1004 , 1101 , 1103 ,

  . .  1105 , 1109 ,
  1206 , 1208 , 1411.02 ,

  . .  1503.01 ,
  1503.02 , 1504.01 ,

  . .  1504.04 ,
  1504.20 , 1605 , 1608 , 1824 ,

  . .  1901.02 ,
  1902.01(b) , 2105 , 2106 ,

  . .  2106.01 ,
  2106.02 , 2107 , 2107.01 ,

  . .  2111.01 , 2124 ,
  2133.03(e)(6) ,

  . .  2136.03 ,
  2136.05 , 2138 ,

  . .  2138.05 ,
  2143.03 , 2161 ,

  . .  2162 , 2164 ,
  2164.01(b) , 2164.01(c) ,

  . .  2164.02 ,
  2164.04 , 2164.05(a) ,

  . .  2164.06(a) ,
  2164.06(b) , 2164.07 ,

  . .  2164.08 ,
  2164.08(a) , 2164.08(c) ,

  . .  2165 , 2165.02 ,
  2171 ,

  . .  2172 , 2172.01 ,
  2173 , 2173.01 ,

  . .  2173.02 ,
  2173.04 , 2173.05 ,

  . .  2173.05(a) - (d)
  , (f) - (k) ,

  (p)-(r), and (t)-(v)

  . .  2173.06 , 2174 ,
  2181 ,

  . .  2183 , 2184 ,
  2185 , 2186 , 2205 ,

  . .  2217 , 2258 ,
  2270 , 2300.02 , 2306 ,

  . .  2308.02 , 2333 ,
  2363.03 , 2390 ,

  . .  2402 , 2403 ,
  2403.02 , 2404 ,

  . .  2404.01 ,
  2404.03 , 2405 , 2406 ,

  . .  2406.01 ,
  2406.02 , 2406.03 , 2407.01 ,

  . .  2407.03 , 2411 ,
  2411.01 , 2411.02 ,

  . .  2411.04 , 2422 ,
  2422.03 ,

  . .  2422.08 , 2429

 35 U.S.C. 113 Reproduced  . .  608.02

  Cited  . .  506 , 601 ,

  . .  601.01(d) , (f)
  ,  and (g) , 608.02(a)

 35 U.S.C. 114 Reproduced  . .  608.03

 35 U.S.C. 115 Reproduced  . .  602

  Cited  . .  201.06(a) ,
  409.03(a) , 409.03(b) ,

  . .  601 , 604.06 ,
  605.01 , 1893.01(e)

 35 U.S.C. 116 Reproduced  . .  409.03 , 605.07

  Cited  . .  201.03 ,
  409.03(a) , 409.03(i) ,

  . .  605 , 804 , 1402
  , 2132.01 , 2137.01

  . .  2138.01

 35 U.S.C. 117 Reproduced  . .  409.01(a)

  Cited  . .  409.03(c)

 35 U.S.C. 118 Reproduced  . .  409.03

  Cited  . .  409.03(b) ,
  409.03(f) and (i)

 35 U.S.C. 119 Reproduced  . .  201.13

  Cited  . .  201.03 ,
  201.04(b) , 201.06 ,

  . .  201.06(a) ,
  201.06(b) , 201.07 ,

  . .  201.08 , 201.11
  , 201.13 , 201.13(a) ,

  . .  201.13(b) ,
  201.14 , 201.14(a) - (c) ,

  . .  201.16 , 202.03
  , 306.01 , 409.03(d) ,

  . .  409.03(g) ,
  502.02 , 506 ,

  . .  509.03 , 510 ,
  601 , 601.01 ,

  . .  605.07 ,
  608.01(p) , 706.02 , 706.02(a) ,

  . .  706.02(b) ,
  706.02(l) , 715 ,

  . .  715.07(c) , 720
  , 1302.04 , 1309.01 ,

  . .  1402 , 1417 ,
  1502.01 , 1504.021504.10 ,

  . .  1893.03(c) ,
  1895.01 , 1896 , 2136.03 ,

  . .  2136.05 ,
  2137.01 , 2138 , 2138.06 ,

  . .  2163.03 ,
  2163.07 , 2165.01 , 2258 ,

  . .  2301.02 ,

  2305.04 , 2308.01 , 2333.02 ,

  . .  2363.03 , 2429 ,
  2504

 35 U.S.C. 119(e) Reproduced  . .  201.11

  Cited  . .  201 , 201.03 ,
  201.04(b) , 201.06 ,

  . .  201.06(a) ,
  201.07 , 201.08 , 201.11 ,

  . .  306.01 , 509.03
  , 601 , 706.02 ,

  . .  706.02(a) ,
  706.02(b) , 715 , 1302.04 ,

  . .  1309.04 ,
  1504.10 , 1895.01 ,

  . .  2136.03 ,
  2163.03

 35 U.S.C. 120 Reproduced  . .  201.11

  Cited  . .  103 , 140 ,
  201 ,

  . .  201.03 ,
  201.04 , 201.04(b) ,

  . .  201.06 ,
  201.06(a) - (b) , 201.07 ,

  . .  201.08 ,
  201.11(a) , 201.13 ,

  . .  201.13(b) ,
  201.16 , 306.01 , 409.03(g) ,

  . .  506 , 509.03 ,
  601.01 , 602 ,

  . .  605.07 ,
  608.01(p) , 609 , 706.02 ,

  . .  706.02(k) ,
  706.07(g) , 707.05 ,

  . .  710.02(e) ,
  711.02(c) , 711.03(c) ,

  . .  711.06 , 712 ,
  719.02 ,

  . .  720 , 802 ,
  803.03 , 1216.01 ,

  . .  1302.04 ,
  1302.09 , 1309.01 , 1490 ,

  . .  1502.01 ,
  1503.02 , 1504.20 ,

  . .  1893.03(c) ,
  1895 , 1895.01 ,

  . .  1896 , 2136.03 ,
  2137.01 , 2138.05 ,

  . .  2138.06 ,
  2163.03 , 2165.01 , 2172 ,

  . .  2217 , 2258 ,
  2301.02 , 2308 , 2363.03 ,

  . .  2421.01 , 2429 ,
  2504

 35 U.S.C. 121 Reproduced  . .  802 , 804

  Cited  . .  140 , 201 ,
  201.04(b) ,

  . .  201.06 ,
  201.06(a) , 201.07 ,

  . .  201.08 , 201.11
  , 409.03(g) ,

  . .  506 , 509.03 ,
  601 , 601.01 , 605.07 ,

  . .  706.02(k) ,
  706.07(g) , 707.05 , 719.02 ,

  . .  802.01 , 803.01
  , 803.03 ,

  . .  803.04 , 804.01
  , 804.04 , 805 ,

  . .  806.04(a) ,
  808.02 , 809.02(a) , 817 ,

  . .  821.04 , 1302.09
  , 1309.01 ,

  . .  1502.01 ,
  1504.05 , 1895.01

 35 U.S.C. 122 Reproduced  . .  101

  Cited  . .  103 ,
  201.06(b) , 402 , 405 ,

  . .  706.02(f) ,
  706.02(k) , 706.02(l)

  . .  724.04 ,
  724.04(a) , 804 , 1208 ,

  . .  1901.05 ,
  1901.07 , 2307.06 ,

  . .  2410 , 2410.01 ,

  2422.04

 35 U.S.C. 131 Reproduced  . .  701

  Cited  . .  2000

 35 U.S.C. 132 Reproduced  . .  706.03(o)

  Cited  . .  201.06(a) ,
  608.01 , 608.01(b) ,

  . .  608.01(n) ,
  608.02 , 608.04 ,

  . .  706.02(c) ,
  706.07(g) , 707 ,

  . .  804.03 , 1411.02
  , 1504.01 ,

  . .  1504.04 , 1605 ,
  2000 ,

  . .  2163 , 2163.06 ,
  2165.01 ,

  . .  2254 , 2258 ,
  2404.03 ,

  . .  2406.01 ,
  2411.01 , 2422.07

 35 U.S.C. 133 Reproduced  . .  710

  Cited  . .  201.13 , 510 ,
  513 , 706.02(c) ,

  . .  710.01 , 710.02
  , 710.02(b) ,

  . .  710.02(d) ,
  711.03(c) , 1002.02(b) ,

  . .  2233 , 2254 ,
  2268 , 2411.03 , 2590

 35 U.S.C. 134 Reproduced  . .  1205

  Cited  . .  720.05 , 1216
  , 1701.01 ,

  . .  1904 , 2273 ,
  2340

 35 U.S.C. 135 Reproduced  . .  2300.01 , 2390

  Cited  . .  502.01 , 512 ,
  711.01 ,

  . .  715.05 , 804.03
  , 1002.02(f) ,

  . .  1216.01 , 1305 ,
  2138.01 , 2301.02 ,

  . .  2301.03 ,
  2305.04 , 2306 , 2307.02 ,

  . .  2308.01 ,
  2308.02 , 2333 , 2342 , 2344 ,

  . .  2361 , 2363.03 ,
  2366 , 2390

 35 U.S.C. 137 Cited  . .  150

 35 U.S.C. 141 Reproduced  . .  1216

  Cited  . .  720.05 ,
  1214.07 ,

  . .  1216.01 ,
  1216.02 , 2273 , 2355 ,

  . .  2358 , 2361 ,
  2363.03

 35 U.S.C. 142 Reproduced  . .  1216.01

  Cited  . .  720.05 ,
  1002.02(k) , 1216

 35 U.S.C. 143 Reproduced  . .  1216.01

  Cited  . .  720.05

 35 U.S.C. 144 Reproduced  . .  1216.01

  Cited  . .  720.05

 35 U.S.C. 145 Reproduced  . .  1216

  Cited  . .  720.05 ,
  1002.02(k) , 1214.07 ,

  . .  1216 , 1216.02 ,
  1701.01 , 2279

 35 U.S.C. 146 Reproduced  . .  1216

  Cited  . .  1002.02(k) ,

  . .  1216 , 2355 ,
  2358 ,

  . .  2360 , 2361 ,
  2363.03 , 2371

 35 U.S.C. 151 Cited  . .  201.13 , 203.07
  , 510 ,

  . .  608.02(b) , 710
  , 710.02(e) ,

  . .  711.03(c) , 712
  , 1306 , 1308

 35 U.S.C. 152 Reproduced  . .  307

 35 U.S.C. 153 Reproduced  . .  1309

 35 U.S.C. 154 Reproduced  . .  1309.01

  Cited  . .  201.04(b) ,
  201.06 , 201.07 ,

  . .  201.08 , 201.11
  , 601.01(d) , 707.05

 35 U.S.C. 157 Reproduced  . .  1101

  Cited  . .  1111 , 1513

 35 U.S.C. 161 Reproduced  . .  1601

  Cited  . .  201 , 609 ,
  804 , 1612 , 2105 ,

  . .  2403.02

 35 U.S.C. 162 Reproduced  . .  1605

  Cited  . .  601.01(e) ,
  1612 , 2105 ,

  . .  2403.02

 35 U.S.C. 163 Reproduced  . .  1601

  Cited  . .  1612 , 2105 ,
  2403.02

 35 U.S.C. 164 Reproduced  . .  1608

  Cited  . .  1612 , 2105 ,
  2403.02

 35 U.S.C. 171 Reproduced  . .  1501

  Cited  . .  201 ,
  601.01(e) ,

  . .  609 , 804 ,
  1502.01 ,

  . .  1503.02 ,
  1504.01 , 1504.06

 35 U.S.C. 172 Reproduced  . .  1504.10

  Cited  . .  201.13 ,
  201.14(a) , 1504.02

 35 U.S.C. 173 Reproduced  . .  1505

  Cited  . .  1502.01

 35 U.S.C. 181 Cited  . .  115 , 120 , 140
  , 1002.02(c)(1)

 35 U.S.C. 182 Reproduced  . .  706.03(s)

  Cited  . .  115 , 120 ,

  140

 35 U.S.C. 183 Cited  . .  120

 35 U.S.C. 184 Reproduced  . .  140 , 706.03(s)

  Cited  . .  115 ,
  1002.02(c)(1)

 35 U.S.C. 185 Reproduced  . .  140 , 706.03(s)

  Cited  . .  115

 35 U.S.C. 186 Reproduced  . .  140

  Cited  . .  115

 35 U.S.C. 187 Reproduced  . .  140

  Cited  . .  115

 35 U.S.C. 188 Reproduced  . .  140

  Cited  . .  115

 35 U.S.C. 201 Cited  . .  509.02

 35 U.S.C. 202 Cited  . .  509.02 , 509.03

 35 U.S.C. 251 Reproduced  . .  1401

  Cited  . .  608.04 , 609 ,
  706.03(x) ,

  . .  1305 , 1402 ,
  1403 ,

  . .  1410.01 ,
  1411.02 , 1412.01 ,

  . .  1412.03 , 1414 ,
  1414.01 ,

  . .  1444 , 1448 ,
  1450 , 1490 ,

  . .  1902.01(b) ,
  2012 , 2012.01 ,

  . .  2022.05 , 2163 ,
  2163.06 ,

  . .  2165.01 , 2250 ,
  2422.07

 35 U.S.C. 252 Reproduced  . .  1460

  Cited  . .  1305 , 2293

 35 U.S.C. 253 Reproduced  . .  1490

  Cited  . .  711.06 ,
  804.02 , 1305 , 2362

 35 U.S.C. 254 Reproduced  . .  1480

  Cited  . .  1305

 35 U.S.C. 255 Reproduced  . .  1481

  Cited  . .  201.16 , 1305
  , 1490

 35 U.S.C. 256 Reproduced  . .  1481

  Cited  . .  201.03 , 1305
  , 1402

 35 U.S.C. 261 Reproduced  . .  301

  Cited  . .  706.02(j)

 35 U.S.C. 262 Reproduced  . .  301

 35 U.S.C. 267 Reproduced  . .  710

  Cited  . .  1002.02(c)(1)

 35 U.S.C. 282 Cited  . .  706 , 706.02(j)
  , 706.02(n) ,

 716.07, 1701, 2258

 35 U.S.C. 290 Cited  . .  2207

 35 U.S.C. 293 Reproduced  . .  302.04

 35 U.S.C. 294 Reproduced  . .  311

 35 U.S.C. 301 Reproduced  . .  2202

  Cited  . .  2201 , 2203 ,
  2204 , 2205 , 2206 ,

  . .  2210 , 2240 ,
  2254

 35 U.S.C. 302 Reproduced  . .  2210

  Cited  . .  1305 , 2201 ,
  2212 , 2214 , 2217 ,

  . .  2240 , 2246 ,
  2286 , 2308.02

 35 U.S.C. 303 Reproduced  . .  2240

  Cited  . .  1305 , 2201 ,
  2209 , 2214 , 2217 ,

  . .  2241 , 2242 ,
  2244 , 2246 , 2248 , 2258

 35 U.S.C. 304 Reproduced  . .  2246

  Cited  . .  1305 , 2201 ,
  2214 , 2216 , 2246 ,

  . .  2249 , 2251 ,
  2254 , 2263 , 2285

 35 U.S.C. 305 Reproduced  . .  2254

  Cited  . .  1305 , 1490 ,
  2201 , 2209 , 2214 ,

  . .  2217 , 2246 ,
  2250 , 2254 , 2258 , 2261 ,

  . .  2265 , 2268 ,
  2284 , 2285

 35 U.S.C. 306 Reproduced  . .  1216 , 2273

  Cited  . .  1205 , 1305 ,
  2201 , 2214

 35 U.S.C. 307(a) Reproduced  . .  2288

 35 U.S.C. 307(b) Reproduced  . .  2293

 35 U.S.C. 307 Cited  . .  1305 , 2201 ,
  2214 , 2250 ,

  . .  2285 , 2287 ,
  2293

 35 U.S.C. 351 Cited  . .  1802 , 1853

 35 U.S.C. 361 Reproduced  . .  1805

  Cited  . .  1801 , 1810 ,
  1862

 35 U.S.C. 362 Reproduced  . .  1840

  Cited  . .  1862

 35 U.S.C. 363 Reproduced  . .  1810

  Cited  . .  201.11(a) ,
  605.04(a) ,

  . .  715 ,
  1309.011803 , 1893.03(b) ,

  . .  1895 , 1895.01 ,
  1896 , 2136.03 , 2504

 35 U.S.C. 364 Cited  . .  1862

 35 U.S.C. 365 Reproduced  . .  201.13(b)

  Cited  . .  201 ,
  201.04(b) , 201.06 , 201.07 ,

  . .  201.08 , 201.11
  , 201.11(a) , 201.13 ,

  . .  502.02 , 506 ,
  509.03 , 601.01 ,

  . .  706.02(l) ,
  706.07(g) , 707.05 ,

  . .  715.07(c) ,
  719.02 , 803.03 ,

  . .  1002.02(p) ,
  1302.09 , 1309.01 ,

  . .  1502.01 ,
  1893.03(c) , 1895 ,

  . .  1895.01 ,
  2301.02

 35 U.S.C. 368 Reproduced  . .  110

  Cited  . .  1832

 35 U.S.C. 371 Reproduced  . .  1893.01

  Cited  . .  120 , 201 ,
  201.03 , 201.04(b) ,

  . .  201.11(a) ,
  409.01(b) , 509.02 ,

  . .  601.01(a) ,
  605.04(a) , 609 ,

  . .  706.02(a) ,
  706.07(g) , 715 ,

  . .  801 , 802 ,
  803.04 , 1002.02(p) ,

  . .  1309.01 , 1805 ,
  1828 , 1832 , 1850 ,

  . .  1857 , 1879.03 ,
  1893 ,

  . .  1893.01(a) ,
  1893.01(a)(1) ,

  . .  1893.01(a)(2) ,
  1893.01(b) ,

  . .  1893.01(b)(1) ,
  1893.01(b)(2) ,

  . .  1893.01(d) ,
  1893.01(e) , 1893.02 ,

  . .  1893.03(a) - (e)
  , 1893.03(g) ,

  . .  1895 , 1895.01 ,
  1896 , 2136.03 ,

  . .  2422 , 2422.07 ,
  2425 , 2504

 35 U.S.C. 373 Reproduced  . .  1810

  Cited  . .  1805

 35 U.S.C. 374 Reproduced  . .  1857

 40 U.S.C. 486 Cited  . .  510

 42 U.S.C. 141 Cited  . .  120

 42 U.S.C. 2014  . .  706.03(b)

 42 U.S.C. 2181 Cited  . .  120 , 706.03(b)

 42 U.S.C. 2182 Reproduced  . .  150

  Cited  . .  115 , 151 ,

  . .  706.03(b) ,
  1002.02(c)(1)

 42 U.S.C. 2185 Cited  . .  706.03(b)

 42 U.S.C. 2457 Reproduced  . .  150

  Cited  . .  115 , 151 ,

  . .  1002.02(c)(1)

  Statutory authority of Commissioner  . .  1001

  Statutory bar  . .  706.02(a) ,
  2133 to 2133.03(e)(7)

  Statutory bar, Rule 131 not available  . .  715

  Statutory classes of invention  . .  706.03(a)

  Statutory disclaimer  . .  1490

  Statutory Invention Registration, SIR  . .  706.02(l) ,

 711.06, 1100

 Provisional application  . .  1101

  Statutory period (see also Period for response) 710.01

  Stay of reexamination  . .  2285

  Stay of reissue  . .  2285

  Stockholm Revision, Paris Convention  . .  201.13(a)

  Strasbourg Agreement  . .  903.09

  Stays considered in litigation  . .  1442.05

  Stays denied  . .  1442.05(b)

  Stays granted  . .  1442.05(a)

  STIC  . .  901.05 ,
  901.06(a)

  Streamlined continuation application  . .  201.07

  Subclass, List of patent numbers  . .  902.03(c)

  Subcombination:

 Aggregation and  . .  806.05(a)

 Combination and  . .  802.01 ,
  806.04(c) , 806.05(b)

 Not generic  . .  806.04(c)

 Species  . .  806.04(b)

  Subgeneric Markush claims  . .  2173.05(h)

  Subject matter, Nonstatutory  . .  706.03(a)

  Subject Matter Combinations  . .  903.02(b)

  Submission to Classification Group:

 Cancellation of Figures  . .  608.02(t)

 Classification of application  . .  903.08(d) ,
  903.08(e)

 Patentability report  . .  705.01(a)

  Submission to Drafting Branch:

 Cancellation of figures  . .  608.02(t)

 Rearrangement of Figures  . .  608.02(t)

 Return of drawing  . .  608.02(y)

  Submission of Prior art by applicant  . .  707.05(b)

  Submission to Patent Security Group:

 Atomic Energy, security review  . .  115

 Confidential application or papers  .  121

 Defense invention, security review  .  115

 Secrecy Order case  . .  120 , 130

 Secret application or papers  . .  121

 Security determination  . .  115 , 140

  Subpoena by court, Application file  . .  1216.02

  Subscription correspondence address  . .  titlepage

  Substantial new question of patentability  .  2216 , 2242

  Substitute application:

 Assignment  . .  306

 Copendency lacking  . .  201.11

 Definition  . .  201.09

 Does not carry ownership from parent  201.11

 File wrapper notation  . .  202.02

 Reference to parent application  . .  201.11

 Refile  . .  201.10

  Substitute attorney  . .  406

  Substitute for missing hard copy  . .  901.09

  Substitute oath  . .  602.02

  Substitute page  . .  714.20

  Substitute specification  . .  608.01(q) ,
  714.19 , 714.20

 Amendment incorporating  . .  714.19 , 714.20

 New matter  . .  714.20

  Sufficiency of disclosure affidavit  . .  716

  Suggested claims, Failure to make  . .  706.03(u)

  Suggested claim made after end of statutory period  2305.03

  Suggestion of allowable claims by Examiner 707.07(j) ,
  713.01

  Suggestion of claims for interference  . .  2305 to
  2305.04

  Suggestion of claims for interference, Time limit  710.02(c)

  Summary of action PTOL-326  . .  707

  Summary of interview  . .  713.04

  Summary of invention  . .  608.01(d)

  Sunday or holiday, Effect on time for response  502 ,

 505, 710.05

  Sunday or holiday, Effect on reference  . .  706.02(a)

  Supervisory Applications Clerk  . .  714.13

  Supervisory Patent Assistant  . .  707 ,
  707.02(a)

  Supervisory Primary Examiner  . .  705.01 , 707 ,
  707.02(a) ,

 713.01 , 708.03
  , 713.08 , 714.05 , 714.13 ,

 714.16 ,

  714.16(d) , 714.18 , 903.08(b) ,

 1214.07,1448, 1901.06, 1903,

 2233 , 2237 ,
  2238 , 2248

  Supervisory Primary Examiner, Requests decided by  
  1002.02(d)

  Supervisory review, Rule 181  . .  711.03(d)

  Supplemental action  . .  710.06 ,
  714.05

  Supplemental examiner's answer  . .  1208.01

  Supplemental oath or declaration  . .  603

 After allowance  . .  603.01 , 714.16

 New matter  . .  608.04

  Surcharge for late payment of fees in international application
 1827

  Surrender of patent  . .  1416

  Suspension:

 Action because of litigation  . .  1213

 Action, By Office  . .  709

 Applicant's request for  . .  709

 Decided by  . .  709 , 1002.02(c)
  , 1004

 Ex parte prosecution during interference  2315

 Not permitted if outstanding Office action  709

 Overlapping application  . .  709.01 , 2315.01

 Reexamination  . .  2283 , 2284 ,
  2307.04

 Rules  . .  1002 ,
  1002.02(c)

 "Secrecy Order" application  . .  2309.06

  Swearing back of reference (see also Affidavit, Antedating
  Reference  . .  706.02(b) ,
  706.02(f) ,

 706.02(k), 715

  Symbols, Drawing  . .  608.02

  T

  Technical documents  . .  901.06(a)

  Technical rejections  . .  706.03

  Telegraphic amendment  . .  714.08

  Telephone call, Multiplicity rejection  . .  2173.05(n)

  Telephone number

 For PTO closings  . .  201.13(a)

 Of attorney  . .  408 , 713.01 ,
  714.01

 Of Examiner  . .  707.08

  Telephoning of attorney to Examiner  . .  408 , 713.01

  Term, extensions  . .  1309.01

  Term, patent  . .  1309.01

  Terminal disclaimer  . .  1490

 Avoiding double patenting rejection  .  706.02(k) ,

 804.02, 806.04(i)

 Format  . .  711.03(c) , 1490

 Required for revival  . .  711.03(c) , 712

 Routing  . .  508.01 , 1490

 Situations where not applicable  . .  804.03

 Withdrawal of  . .  1490

  Terminology in application  . .  608.01(g) ,
  608.01(o) ,

 706.03(d), 1302.01

  Termination of proceedings  . .  201.11 ,
  711.02(c) , 712

  Test comments  . .  707.07(l)

  Testamentary, Letters  . .  409.01(b)

  Testimony, Examiner  . .  1701.01

  Testimony, Public Use Proceeding  . .  720.04

  Tests, comparative (see also Unexpected Results)  716.02(b)

  Third action cases  . .  707.02(a)

  Time and activity report  . .  1704

  Time for deciding Commissioner initiated reexamination  2241

  Time for deciding reexamination request  . .  2241

  Time for filing papers, Right of priority  .  201.14(a)

  Time for requesting reexamination  . .  2211

  Time for response (See also Period for response.)  702.01 ,
  710

  Time for response to action in reexamination  2263

  Time limit action  . .  710.02 ,
  710.02(c) , 710.02(d)

 Permanent ink copy  . .  714.07

  Time limit for making suggested claims  . .  710.02(c)

  Time limit for transfer of application  . .  903.08(d)

  Time limits under the PCT  . .  1844 , 1879.01

  Time period for owner's statement  . .  2248

  Time reporting in reexamination  . .  2238

  Time to complete incomplete requests  . .  2227

  Time to file citation of prior art  . .  2204

  Time to pay maintenance fees  . .  2506

  Timely submission of protest  . .  1901.04

  Title (ownership) conveyed by assignment  .  201.12 ,
  Chapter 300

  Title documents, handling  . .  317

  Title of design application  . .  1503.01

  Title of international application  . .  1821

  Title of invention  . .  606

  Title of invention, change by Examiner  . .  1302.04(a)

  Title of invention, Plant patent application  1610

  Title of invention, Reviewed at issue  . .  606.01 ,
  1302.01

  Title report  . .  303 , 319 ,
  320 , 2287

  Title report in decisions for consideration by Board 303

  Title report, Interference  . .  2301.01

  Title report, reexamination  . .  2287

  Title with signature  . .  605.04(e)

  Trade secret material  . .  724 - 724.05

 Completeness of file wrapper  . .  724.01

 Materials submitted Covered by 35 U.S.C. 122  
  724.04(a)

 In reissue under 37 CFR 1.11(b)  . .  724.04(b)

 In reexam under 37 CFR 1.11(d)  . .  724.04(c)

 Method of submitting  . .  724.02

 Office treatment and handling  . .  724.04

 Petition to expunge materials  . .  724.05

 Types of  . .  724.03

  Trade secret submission label  . .  724.02

  Trademark and trade name  . .  608.01(v) ,
  706.03(d) ,

 2173.05(u)

  Trademark Manual of Examining Procedure  . .  Foreword

  Trademarks, Partial listing of  . .  AppendixI

  Transfer of application:

 After amendment  . .  903.08(c)

 After Classification decision  . .  903.08(g)

 Allowable application  . .  903.07(b) ,
  1302.05 , 1305

 Decision of Classification Examiner  .  903.08(f)

 Divisible inventions  . .  812

 Interference  . .  2306

 New  . .  903.08(a)

 Notification of applicant  . .  903.08

 Outside Group  . .  903.08(d)

 Primary Examiner's authority  . .  903.08

 Procedure  . .  903.08(a) ,
  903.08(d) , 903.08(g)

 Secrecy order application  . .  130

 Submitted to Classification Examiner  903.08(d)

 Within Group  . .  903.08(d)

  Transfer of class or subclass  . .  903.05

  Transfer of drawing  . .  201.06(a) ,
  608.02(i)

  Transfer of reexamination  . .  2237

  Transfer of rights to patent or application  509.02

  Transfer of specification prohibited  . .  608.01(t)

  Transfer of U.S. patent  . .  903.05

  Transitional application

 After final practice  . .  706.07(g)

 Generic claim allowable  . .  803.03(b)

 Linking claim allowable  . .  803.03(a)

 Patent term  . .  1309.01

 Restriction practice  . .  803.03

  Transitional phrases  . .  2111.03

  Translation, Foreign application or foreign priority document
 201.15

  Translations, available, index  . .  901.06(a)

  Translator, Patent and Trademark Office  . .  901.05(d) ,

 901.06(a)

  Transmittal Fee-PCT  . .  1827

  Traverse-Answer all matters  . .  707.07(f)

  Traverse, Division or species requirement  .  818 ,

 818.03 to 818.03(d), 821.01, 821.02

  Traverse, Rejection of linking claim  . .  818.03(d)

  Treaties  . .  201.13

  Trial Voluntary Protest Program  . .  202.02

  Tubers  . .  1601

  Two month delay period in reissues  . .  1441

  Two periods for response running  . .  710.04

  Type of applications  . .  201

  U

  Unavailable inventor  . .  409 , 409.03

  Unclaimed disclosure, Reservation  . .  608.01(e)

  Undelivered mail  . .  707.13 ,
  1303.02

  Undue breadth rejection  . .  2163.05 ,
  2173.04

  Unexpected results (see also Affidavits, Traversing rejection)
 716.02 to 716.02(g)

  United Kingdom priority document  . .  201.15

  United States Code (see also Statutes)  . .  Introduction

  "United States of America" foreign language names  901.05(a)

  Unity of invention  . .  803 , 823 ,
  1850 , 1875 , 1893.03(d)

  University or other institution of higher learning  509.02

  Unmatched papers  . .  508.03

  Unofficial subclasses and digests  . .  903.02(c)

  Unscheduled closing  . .  201.13

  Unsigned amendment  . .  711 ,
  714.01(a)

  Untimely filed paper prior to Order for Reexamination  2225

  Untimely response to reexamination  . .  2266

  Updating prior art statement  . .  2003.03(a)

  UPOV Convention  . .  612

  Uruguay Round Agreements Act  . .  201.04(b) ,
  715

  "Use" claims  . .  2173.05(q)

  Use, Public (see Public Use)

  "User" pass  . .  510

  Utility-disclosure in drug cases  . .  608.01(p) ,
  2164.06 ,

 2164.07

  Utility guidelines  . .  706.03(a)(1)

 Legal precedent for  . .  2107 - 2107.02

  Utility lacking, Rejection  . .  706.03(a)

  Utility model  . .  201.13 ,
  202.03 , 901.05(b)

  Utility patent  . .  201 , 901.04

  Utility required  . .  608.01(p) ,
  2164.07

  V

  Vague and indefinite rejection  . .  706.03(d)

  Validity, Examiner comments  . .  1701

  Venue  . .  604.02

  Verification  . .  201.03

  Verified statement of facts (Rule 48)  . .  201.03

  Verified statement, small entity status  . .  509.03

  Video Conference Center  . .  713.01

  Video tapes  . .  713.01

  Violation of duty of disclosure  . .  1901.03

 Argued in protest  . .  1901.02 ,
  1901.05

  Visitors to Office  . .  510

  W

  Waived patent rights-defensive publication 711.06

  "Walk-up" window  . .  502

  Warning to inventors  . .  1706

  Washington representatives of attorneys  . .  408

  West Germany priority document  . .  901.05(b)

  When disclosure is made  . .  2003

  Who has duty to disclose  . .  2001.01

  WIPO  . .  201.13 ,
  901.04 , 1801

  Withdrawal from issue  . .  1308

 Amendment crossing allowance  . .  714.15

 Claim presented corresponding to claim of patent  
  2307.03

 Commissioner's approval  . .  1003 , 1308

 Interference purposes  . .  1308.02

 Petition for  . .  1002.02(b) ,
  1002.02(c) , 1308

 Quality Review  . .  1308.03

 Rejection  . .  706.04 , 1308.01

 Suggesting claims for interference  .  2305.04

  Withdrawal of appeal  . .  1215.01

  Withdrawal of appeal claim  . .  1214.05 ,
  1215.03

  Withdrawal of attorney  . .  402.05 ,
  402.06 ,

 2223, 2560

  Withdrawal of claims:

 To nonelected invention  . .  821.01 , 821.02
  , 821.03

 To species  . .  809.02(c) ,
  821.01 , 821.02

  Withdrawal of final rejection  . .  706.07(e)

 Before appeal hearing  . .  1208.02

 Premature final  . .  706.07(d)

 Primary decides  . .  1004

  Withdrawal of holding of abandonment  . .  711.03(c) ,

 711.04(c)

  Withdrawal of power of attorney in patent  .  2223

  Withdrawal of SIR request  . .  1109

  Withdrawal of terminal disclaimer  . .  1490

  Withhold from issue petition  . .  1002.02(c)

  Witness, Examiner as  . .  1701.01

  Wrapper (see also File wrapper)  . .  719

  Writing, Disclosures must be in  . .  2002.02

  Written Description  . .  706.03(c) ,
  2163

 Amendments supported by original description  
  2163.07

  Inherent function, theory or advantage  2163.07(a)

  Incorporation by reference  . .  2163.07(b)

 Burden on the examiner  . .  2163.04

 Changes to scope of claims  . .  2163.05

 Circumstances when issues arise  . .  2163.03

 Form paragraphs used to reject  . .  706.03(c)

 New matter  . .  2163.06

 Requirements for compliance  . .  2163.02

 Support for claimed subject matter  .  2163.01

  Corresponding to count in interference  2163.03

  Wrong Group, Papers sent to  . .  508.01

  X

  X-series of patents  . .  901.04
